Skip to main content Link Menu Expand (external link) Document Search Copy Copied
Wikijuris

Edit this page

Copyright Infringement

  1. Overview
  2. The Exclusive Rights
  3. Part III Original works
    1. Infringement - Reproduce the Work in a Material Form
    2. Infringement - Publish the Work
    3. Infringement - Perform the Work in Public
    4. Infringement - Communicate to the Public
    5. Infringement - Make an Adaptation of the Work
  4. Direct infringement of Part IV subject matter
    1. Sound Recordings
    2. Cinematographic Films
    3. Television and Sound Broadcasts
    4. Published Editions of Works
  5. Substantial Part
  6. Indirect Infringement
    1. Entry into Commercial Rental Arrangement
    2. Importation of Infringing Articles
    3. Parallel Importation
    4. Sale of Infringing Articles

Copyright affords the copyright owner exclusive rights over their work. This means that the rights belong exclusively to the copyright owner and they may choose to exclude others from exercising the rights. The only people who can exercise one of the rights are: the right holder; a person who has the permission of the right holder; and anyone acting under a legal exception to copyright infringement.

Overview

The most common rights of copyright owners are:

Right to copy or reproduce

This includes photocopying, recording and scanning. However, for literary, artistic, musical and dramatic works, the right to reproduce is not limited to instances of just exact copying. It also covers instances of copying that produce something substantially, though not exactly, similar to the original work. The test for determining whether a work has been copied is to look not just at how much has been copied (quantity), but also the importance of what has been copied (quality).

Australian courts have said that quality will be more important than quantity. For example, it may be an infringement of copyright to copy two lines from a song, if those lines are the most memorable and important in the song, even though two lines are only a small quantitative part of the song.

Right to publish

Allows the work to be made available to the public for the first time.

Right to publicly perform

Allows the work to be performed in public either live or for recording (for example, so that it can be included as part of a film). This is the right that governs performances at concerts and theatres and in any public space.

Right to ‘communicate to the public’

This is the right that allows the work to be electronically distributed through various mediums such as internet and broadcast. When a work is shared online, such as on a website or via peer-to-peer (p2p) file sharing, the communication right is used.

Right to adapt

Allows the work to be translated or adapted into a different form. For example, an adaption would include translating a literary work into another language, or writing a screenplay for a movie (a cinematographic work) based on a novel (a literary work). There is no right of adaptation for artistic works.

Right to use for economic gain either by selling or licensing

Allows the owner to either transfer (commonly known as “assign”) or license (give permission for) all or any one of their rights. Assignments and licences are often granted for monetary payment. In the case of an assignment, the rights transfer to the purchaser/new owner, and the creator is not left with any residual rights. In the case of a licence, the copyrighted material can be used for the purpose for which the licence is granted, while ownership continues to remain with the creator/owner.

The purpose of copyright is to protect and promote creativity. The law does not permit the copying of a copyrighted work without the permission of its owner or without a legal exception. Copying (or publishing, performing, or communicating) without permission or excuse is known as “infringement” of copyright. If a copyright is infringed either knowingly or unknowingly, the owner has a right to stop further use and/or claim compensation under the law.

Intent is not an element of copyright infringement, so it is possible to infringe copyright without intending to.

The Exclusive Rights

The exclusive rights of copyright holders are set out in the table below:

Part III Works Reproduce Publish Perform in Public Communicate to the public (generally electronic, s 10(1)) Adapt (defined s 10)
Literary works s 31(1)(a) s 31(1)(a) s 31(1)(a) s 31(1)(a) s 31(1)(a)
Dramatic works s 31(1)(a) s 31(1)(a) s 31(1)(a) s 31(1)(a) s 31(1)(a)
Musical works s 31(1)(a) s 31(1)(a) s 31(1)(a) s 31(1)(a) s 31(1)(a)
Artistic works s 31(1)(b) s 31(1)(b)   s 31(1)(b)  
Part IV Subject Matter (other than works) Copy Play in public   Communicate Commercial rentals  
Sound recordings s 85 Heard in public: s 85   Communicate the recording to the public: s 85 Right to enter into: s 85  
Cinematograph films s 86 Seen/heard in public: s 86   Communicate the film to the public s 86    
Broadcasts make a film or sound recording of the broadcast, or a copy of such a film or recording: s 87     Communicate or rebroadcast to the public: s 87    
Published editions Facsimiled copy: s 88          
  • See ss 31(1)(c) and (d) and 31(4)-(7) for specific rights for commercial rental arrangements for Part III works. The exclusive rights of copyright owners are outlined in the below table.

Unauthorised use of the copyright owner’s work may amount to infringement.

Video overview by Kylie Pappalardo on Exclusive Rights in Copyright.

Part III Original works

It is an infringement of copyright to do or authorise any of the exclusive rights comprised in copyright without the permission of the copyright owner.1

  • The exclusive rights are set out in s 31(1):

    • For literary, dramatic and musical works:2

      • to reproduce the work in a material form;

      • to publish the work;

      • to perform the work in public;

      • to communicate the work to the public;

      • to make an adaptation of the work.

    • For artistic works:3

      • to reproduce the work in a material form;

      • to publish the work;

      • to communicate the work to the public.

Infringement - Reproduce the Work in a Material Form

There is an exclusive right to reproduce the work in material form.4 Reproduction involves some element of copying; it does not include cases where the author or compiler produces a substantially similar result by independent work without copying.5

Unlike infringement under Part IV, reproduction does not require direct copying, but includes creating new works that are substantially similar to the source work. The notion of reproduction involves two elements6

  1. Causal connection – the defendant’s work must be derived directly or indirectly from the plaintiff’s copyright work (that is, there must be some causal connection between the two works); and

  2. Objective similarity– there must be a sufficient degree of objective similarity between the plaintiff’s and the defendant’s work (that is, the defendant must have produced a work which closely resembles the plaintiff’s work).

Video overview by Kylie Pappalardo on Infringement by Reproduction of Works.

Deemed Reproductions

A literary, dramatic or musical work is deemed to have been reproduced in a material form if a sound recording or film is made of the work7 Copyright in an artistic work in two-dimensional form will be infringed by its reproduction in a three dimensional form and vice versa.8 The simpler and more commonplace the design is, the more closely the defendant’s plans must follow the plaintiff’s.9

The copyright in a building or a model of a building is not infringed by the making of a painting, drawing, engraving or photograph of the building or model or by the inclusion of the building or model in a cinematograph film or in a television broadcast.10

Element 1 - Causal Connection

An infringement may be indirect.11 In order to prove a causal link it will generally be a requirement that the plaintiff show the defendant had access to the plaintiff’s work.12

This will not always be the case, because causal links may be established indirectly. Copyright could exist in the artistic work of a dress design drawing. A person may infringe this copyright without access to the artistic work. The could do so by copying the dress fashioned from the design drawing.13

Subconscious copying is sufficient provided there is evidence of copying.14

Francis Day & Hunter v. Bron15

In the case of Francis Day & Hunter v. Bron the plaintiff sued alleging the defendant’s infringed copyright in a musical work.

  • As a question of law, it is possible to infringe by subconscious copying.
  • Held, similarities probably coincidental, and there was no evidence that the defendant had copied or heard the song. The Plaintiff was unable to infer that there was sufficient knowledge and memory for conscious or subconscious copying.

Video overview by Olivia Steele on Subconscious Copying in Francis Day & Hunter v Bron.

Video overview by John Herbet on Francis Day & Hunter v Bron.

Element 2 - Objective Similarity

The test for reproduction requires both a causal connection and objective similarity. Literal copying of expressive elements is relatively straightforward. The courts have a difficult task in determining whether a copier has taken copyright expression or the underlying unprotected ideas. It is difficult to express a general rule as to when copying of non-literal elements will infringe.

Video overview by Greg Travers on Objective Similarity.

Zeccola v Universal City Studios Inc (1982) 46 ALR 189

In the case of Zeccola v Universal City Studios Inc Universal owned copyright in film Jaws, screenplay Jaws, and novel Jaws. Zeccola made a film about man eating sharks called Great White. Universal sued for copyright infringement.

The court held that Zeccola had not infringed copyright in the “film” as there was no copy of the visual images.

As to whether Zeccola had infringed copyright in the novel and screenplay, the primary judge watched both films (“with some degree of fortitude”) and held there was such a marked degree of similarity between the two films that there was an inescapable inference of copying.

There is no copyright in the central idea: the idea of a shark terrorising a community cannot be protected. However, in this case, there was significant overlap in situations, characters, and location (even though the dialogue was different). The Full Federal Court wasn’t as certain, but did not find fault with the primary judge’s opinion.

Telstra Corp Ltd v Royal & Sun Alliance Insurance Ltd (2003) 57 IPR 453

In the case of Telstra Corp Ltd v Royal & Sun Alliance Insurance Ltd Shannons car insurance ran a parody advertisement appropriating the format, story, and character of Telstra’s Goggomobil advertisements.

It was held that there was no infringement of the script or dramatic works.

“The scripts for the two advertisements bear little resemblance to each other. The only expressions of any significance common to both scripts are those relating to the Goggomobil. Not surprisingly, there is a similar lack of resemblance between the script for the first Goggomobil advertisement and the film of the first Shannons advertisement. While the resemblances in the scripts and films relating to the Goggomobil are significant, the copying that has occurred relates more to the concept or theme employed in relation to the Goggomobil than to the expression of that concept or theme. In my view the script for and film constituting the first Shannons advertisement fall well short of constituting a reproduction of a substantial part of the script for the first Goggomobil advertisement. Whether viewed qualitatively or quantitatively the lack of resemblance to which I have referred is such that I am satisfied there is no substance in the claim of infringement based on the script of the first Goggomobil advertisement.”

The court found that:

“A comparison between the series of “dramatic” events comprising both advertisements results in the same outcome. … The common concepts or themes feature a memorable character (“Mr Goggomobil”), an unusual and distinctive motor vehicle (a Goggomobil), the use of the telephone to help solve an obscure problem in relation to that vehicle and the telling of that story in a humorous manner. However, those resemblances relate to the ideas and concepts copied rather than to their expression**, and are not sufficient to constitute the “reproduction” of a substantial part of the first Goggomobil advertisement. Plainly, the first Shannons advertisement conjures up the first Goggomobil advertisement and its ideas and concepts but does not reproduce a substantial part of the substance or expression of the “dramatic” events comprising that advertisement. Put another way, there has been an “evoking or conjuring up of recollection” of the first Telstra advertisement, but there has not been a taking of a “substantial portion of the applicant’s work by the respondent[s]”.

Baigent v Random House Group Ltd [2007] All ER (D) 456 (Mar

Authors and publishers of “The Holy Blood and the Holy Grail” alleged that Dan Brown had copied the “central theme” of the book in “The Da Vinci Code”. The “central theme” was argued to be a series of claims including that Jesus was of royal blood and Mary Magdalene carried his child.

It was held that Brown had taken ideas, but not expression from HBHG. Therefore, there could be no copyright infringement.

EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd [2011] FCAFC 47

In the case of EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd it was held that the flute riff in Men at Work’s song “Down Under” reproduced two bars of the old song “Kookaburra sits in the old gum tree”

“There are limited features of similarity between Kookaburra and Down Under in terms of key, harmony, tempo and rhythm. Kookaburra was written in a major key. The relevant bars in the Impugned Recordings appear as part of an overall work in a minor key. The harmony in Kookaburra arises both from its character as a round, and the implied harmonies suggested by casting its melody in a specific key. The versions of Down Under in the Impugned Recordings have a highly distinctive harmony, arising from the voice of Mr Hay, singing very different lyrics, and the mix of instruments. While, as a result, the bars in question in the Impugned Recordings may, in some sense, sound different from Kookaburra, the melody is nevertheless clearly recognisable. Dr Ford described the change in underlying harmony as “a bit like shining a different light” on the relevant melodic phrase. Although, as the primary judge observed, that might differentiate the listener’s impressions of the same notes in the two works, I do not consider that it meaningfully detracts from the objective similarity between the works”. ([90])

Infringement - Publish the Work

There is an exclusive right to publish the work16. Publish means to make available to the public in Australia something which has not previously been made available.17 The definitions of published in s 29(1)(a) do not control the meaning of the words ‘to publish’ in s 31(1)(a)(ii) for the purposes of infringement. This is the right of first publication.

It is not an infringement of the right to republish something that has already been made public. It may however, be an infringement of the reproduction right. It is also an infringement to communicate the work without permission or legal excuse. This will be discussed below in the ‘Infringement - Communicate to the Public’ section of this chapter.

Video overview by Kylie Pappalardo on Direct Infringement.

Infringement - Perform the Work in Public

There is an exclusive right to perform the work in public.18 A performance of a work given to members of the public is a performance “in public” unless it is shown to be domestic in character.

Video overview by Tom Gardner on Telstra v APRA.

Infringement - Communicate to the Public

There is an exclusive right to communicate the work to the public.19 This right was introduced by the Copyright Amendment (Digital Agenda) Act 2000 (Cth), replacing and extending the former “broadcasting” right.

“Communicate” is defined as meaning to “make available online or electronically transmit (whether over a path, or a combination of paths, provided by a material substance or otherwise) a work or other subject-matter”.20 Communication other than broadcast is taken to have been made by the person responsible for determining the content of the communication.21

This right includes cable transmissions and making available of copyright material online. For example, uploading material onto the Internet.

Infringement - Make an Adaptation of the Work

There is an exclusive right to make an adaptation of the work.22 Adaptation includes:23

  • the dramatisation of a non-dramatic literary work;
  • a translation;
  • a pictorial version of a literary work;
  • an arrangement of a musical work.

Direct infringement of Part IV subject matter

Where Part IV copyright is concerned, direct infringement is a much more restricted concept than in relation to works. This is because the exclusive right granted for Part IV subject matter in sound recordings and films is the right to make a copy not the right of reproduction. In practice, this means that only actual copies in the same form will infringe copyright.24

Video overview by Kylie Pappalardo Direct infringement of Part IV subject matter.

Video overview by Thomas Ryan on The Difference Between ‘Copy’ and ‘Reproduce’.

Sound Recordings

Sound recordings are protected under s 85 of the Act. This section affords the copyright owner the exclusive rights to:

  • make a copy of the recording;

  • cause the recording to be heard in public;

  • communicate the record to the public; and

  • enter into commercial rental agreements.25

This is one of the few right that allows the owner to control rental agreements (the other is computer programs).

This right allows owners to control the renting of music CDs but not films.

Exclusive right to make a copy of the recording:25

“Copy” means “a record embodying a sound recording …”.26

Making a “sound alike” version of a popular song does not infringe copyright in the sound recording, although it may in the underlying works (the lyrics and music).

CBS Records Australia v Telmak Teleproducts (Aust) Pty Ltd27

In the case of CBS Records Australia v Telmak Teleproducts (Aust) Pty Ltd, Telmak produced recordings and compilation of chart hits by cover bands. CBS, who owned the sound recording copyright, sued for infringement of sound recording copyright.

It was held that copyright only protects the actual embodiment of the very sounds on the original record.

Cinematographic Films

Pursuant to s 86 of the Act, films are provided copyright protection. Copyright owners of films have exclusive rights to:28

  • make a copy of the film;

  • cause the film to be seen/heard in public;

  • communicate the film to the public.

Australian Video Retailers Association Ltd v Warner Home Video Pty Ltd29

In the case of Australian Video Retailers Association Ltd v Warner Video Pty Ltd Warner Home Video argued that DVD movies are also computer programs. They argued this because there are no commercial rental right in films, but there are in computer programs,30

It was held that the commands which controlled the flow of the DVD were computer programs, but that the audiovisual content was not part of the program. Accordingly, when a video store hires out a movie, the essential object of the rental is not the computer program, but the film.

Although computer programs can be “films”, films do not suddenly become programs when put on a DVD.

Television and Sound Broadcasts

Pursuant to s 87 of the Act television and sound broadcasts are protected. This section afford the copyright owner the exclusive right to:31

  • make a film of a television broadcast;

  • make a sound recording of a broadcast; and

  • re-broadcast or communicate to the public.

</div>

Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (“The Panel”) [2002] FCAFC 146

In the case of Network Ten Pty Ltd v TCN Channel Nine Pty Ltd Ten’s show broadcast clips taken from other networks. Nine sued under right to re-broadcast.

The Full Federal Court held that any unauthorised rebroadcasting of a broadcast would be an infringement of copyright (subject to any defence of fair dealing that Ten might have had).

The case was appealed to the High Court. It was held that copyright is only infringed if you rebroadcast the program, or a substantial part of the program. Otherwise broadcast makers would get much more protection than other copyright owners.

Published Editions of Works

Section 88 of the Act protects published editions of works by providing the copyright owner the exclusive right to make a facsimile copy of a published edition of one or more literary, dramatic, musical, or artistic works.32

The appellants owned the majority of Australian newspapers and a significant proportion of magazines. The respondent, Copyright Agency Limited (CAL), was a collecting society representing copyright owners of literary, dramatic and artistic works. Separate from its statutory functions as a collecting society, CAL entered into voluntary licenses with educational institutions for the copying of articles from newspapers and magazines, passing royalties back to the authors. The appellants claimed that this infringed their rights in the published edition.

It was held that the newspaper and magazine owners had rights to published editions, but that infringement must copy a substantial part of the published edition as a whole. More relevant when the aim of copying is to utilise the “typography, layout or presentation of the published edition”. As the intention was to copy the articles (which are owned by the authors), and not the presentation, there was no infringement.

Substantial Part

An infringing act need not be done in relation to the whole of the work or other subject-matter. It is sufficient if it is done in relation to a substantial part of the work.33

Video overview by Kylie Pappalardo on Substantial Part.

“Substantial” is a question of fact to be determined in the circumstances – requires a consideration of the quality of the work taken in relation to the work as a whole.

Quality is the most important factor, not quantity:

“Whether a part is substantial must be decided by its quality rather than its quantity. The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected”.34

Folsom v Marsh 9 Fed Cas 342, 348 (Mass 1841) (US)

“It is certainly not necessary, to constitute an invasion of copyright, that the whole of the work should be copied, or even a large portion of it, in form or in substance. If so much is taken, that the value of the original is sensibly diminished, or the labors of the original author are substantially to an injurious extent appropriated by another, that is sufficient, in point of law, to constitute a piracy pro tanto … Neither does it necessarily depend upon the quantity taken … [i]t is often affected by other considerations, the value of the materials taken, and the importance of it to the sale of the original work … In short, we must often, in deciding questions of this sort, look to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work.”

Substantial part is assessed in respect to the work as a whole34 and by reference to originality of the part taken.35

IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14 (22 April 2009)

In the High Court Case of IceTV Pty Limited v Nine Network Australia Pty Limited Channel 9 created a Weekly Schedule of television programmes to be broadcast each week. They alleged that each Weekly Schedule was a compilation, and therefore a literary work under the* Copyright Act 1968*, and that IceTV had infringed copyright by taking part of the time and title information from the Aggregated Guides (guides produced by third party Aggregators, authorised by Nine and to whom Nine provides the Weekly Schedule) and including it in their own (electronic) guide, the “IceGuide”. Nine alleged that this constituted a reproduction of a substantial part of the copyright work. IceTV denied that they had reproduced in a material form a substantial part of any Weekly Schedule and denied that reproduction from any Aggregated Guide was a reproduction of any Weekly Schedule.

“… in order to assess whether material copied is a substantial part of an original literary work, it is necessary to consider not only the extent of what is copied:** the quality of what is copied is critical**”. (French CJ, Crennan and Kiefel JJ)

It was held that there is no infringement when unprotected facts are taken, or when expression whose form is dictated by the facts is copied.

Time and title information lacked the requisite originality: “… the expression of the time and title information, in respect of each programme, is not a form of expression which requires particular mental effort or exertion. The way in which the information can be conveyed is very limited. Expressing a title of a programme to be broadcast merely requires knowledge of the title, generally bestowed by the producer of the programme rather than by a broadcaster of it. Expressing the time at which a programme is broadcast, for public consumption, can only practically be done in words or figures relating to a 12 or 24-hour time cycle for a day”. (French CJ, Crennan and Kiefel JJ)

“in assessing the quality of the time and title information, as components of the Weekly Schedule, baldly stated matters of fact or intention are inseparable from and co-extensive with their expression. It is difficult to discern the expression of thought in statements of which programmes will be broadcast and when this will occur. If the facts be divorced from the other elements constituting the compilation in suit, as is the case with the use by IceTV of the time and title information, then it is difficult to treat the IceGuide as the reproduction of a substantial part of the Weekly Schedule in the qualitative sense required by the case law”. ( Gummow, Hayne, Heydon JJ)

Substantiality is always a question of fact and degree.

Because substantiality is a question of fact, there is no precise test. A number of rough guides were used in The Panel: is it an ‘essential part’? A ‘highlight’? The ‘heart’ of the copyright work? A particularly ‘memorable’ part? “an important ingredient”? “central to the programme in which it appeared”? Those segments were more likely to constitute a substantial part of the source material than segments which were ‘insignificant’ or ‘trivial, inconsequential or insignificant’.

Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (“The Panel”)

“Questions of quality … as well as quantity arise both in respect of Pt IV copyrights and those copyrights in original works to which Pt III applies.” (McHugh ACJ, Gummow and Hayne JJ)

Examples:

The Inaugural Allan Border Medal Dinner: Ten copied 10 seconds of the programme.36

“The programme centred upon the dinner and presentation of the inaugural Allan Border Medal for the Australian cricket player of the year. The extract was of Glen McGrath’s reaction to the announcement that he was the winner of the award, his displayed emotion and the congratulations from his surrounding team mates. The cameras were trained on the winner to capture that moment. The cameras then followed Mr McGrath as he moved towards the stage. The excerpt was plainly a material and important part of the programme. The evidence of Mr Burns was that the announcement of Glen McGrath as the Australian cricketer of the year was ‘the highlight of the dinner’”. (Finkelstein J)

“this Panel Segment takes a portion of a live Nine broadcast during which a number of awards are presented. The particular segment re-broadcast shows the passage of the winner of the inaugural Allan Border medal, Mr Glen McGrath, from his seat to the stage. The Panel re-broadcast 10 seconds of a source work that was 2 hours 11 minutes 44 seconds in length. The portion taken does not include any critical moments or highlights of the original broadcast such as Mr McGrath receiving the award or giving his acceptance speech. The material used by the Panel is only incidental to the source broadcast, and the part taken is trivial, inconsequential or insignificant in terms of the source broadcast”. (Hely J)

Wide World of Sports (Grand Final Celebration/Glen Lazarus cartwheel): Ten copied eight seconds of the programme.

“Wide World of Sports (Grand Final Celebration/Glen Lazarus cartwheel): Ten copied eight seconds of the programme. The footage of the Glen Lazarus cartwheel was, on any view, a “highlight”. Mr Lazarus was a prop (affectionately known as “the brick with eyes”). He was playing his very last game of rugby league and was able to celebrate it with a win in the 1999 grand final”. (Finkelstein J)

“this Panel Segment takes a portion of Nine’s live broadcast of the National Rugby League grand final. The particular portion taken features one of the players, Mr Glen Lazarus, performing a cartwheel as part of the post-match celebrations. He was not the only player to do so, and the footage taken does not show that there were other players following suit doing cartwheels of their own. The part taken is fleeting in character, and is not in any sense a highlight of the broadcast. Even if it be accepted that the original broadcast had as its subject matter both the grand final itself as well as the post-match presentations, the footage taken was only incidental to the source broadcast, and was trivial, inconsequential or insignificant in terms of that broadcast”. (Hely J)

The Today Show (child yawning): Ten copied nine seconds of the programme.

“The footage rebroadcast involved part of an interview by Richard Wilkins with Alex Breden, and his mother. Alex was a child celebrity who featured on the HBA health insurance advertisements. The extract showed Alex yawning while being interviewed. It is a memorable part of the interview”. (Finkelstein J) “The particular part taken is nine seconds in length during which a child is shown yawning in an interview with the presenter, Mr Richard Wilkins. The part taken is fleeting in nature and on the periphery of the original broadcast, making little, if any, contribution to the subject matter of that broadcast. The footage taken is only incidental to the source broadcast, and is trivial, inconsequential or insignificant in terms of that broadcast”. (Hely J)

Not a substantial part:

“There has been no infringement by taking extracts from the following programmes: A Current Affair (brothel masquerading as introduction agency); The Today Show (Boris Yeltsin); The Crocodile Hunter (scuba diving); The Today Show (Prasad interview); and Nightline (Kevin Gosper interview). In each case the extracts were very short, but as I have previously said quantity does not dictate the answer. I have found that these extracts have not infringed Nine’s copyright because the extracts were insignificant (de minimis is another description) in the context of Nine’s programme. … Moreover, as the judge pointed out, the taking of these extracts caused absolutely no injury to Nine’s interests”. (Finkelstein J)

Ten appealed to the High Court, but special leave was denied. Justices Kirby and McHugh reiterated that the identification of whether a substantial part has been taken is a question of “fact and degree”.

EMI Songs Australia Pty Limited v Larrikin Music Publishing Pty Limited [2011] FCAFC 47

A two-bar flute riff in Men at Work’s Down Under was held to be a substantial part of the old tune “Kookaburra sits in the old gum tree”.

The “the reproduction of the melody of Kookaburra … is a reproduction of that which constitutes Kookaburra as an original work, or gives it its creativity”.

“It is … true that there is only a limited similarity of notes. Only five of the ninety-three bars in the … Recording contain notes in the flute phrases that are similar to any part of Kookaburra. … However, in assessing objective similarity, quantity is secondary to quality. When one compares the relevant bars … there is a very close similarity, if not a complete identity. While the appearances of phrases … may be sparse in the overall context of the Impugned Recordings, the flute is the dominant musical element when the phrases do appear”. ([93], Emmett J)

The piece taken was qualitatively important to the original – it could be described as its ‘signature’, although that description is not determinative.

Indirect Infringement

The main forms of indirect infringement involve infringing copies. These include importing for the purposes of trade without the license of the copyright owner;37 selling or hiring out or otherwise made the subject of trade;38 and renting.

Video overview by Kylie Pappalardo on Indirect Infringement of Copyright.

As a general rule it is necessary to establish that a defendant knew or ought to have reasonably known that the article in which they were dealing had been made in breach of copyright, or in the case of an imported article, that it would have been an infringing copy if it had been made in Australia by the importer.39

Entry into Commercial Rental Arrangement

There is an exclusive right to enter into a commercial rental arrangement, but is limited to:

  • a sound recording (for example, a CD or tape);40
  • a literary, musical or dramatic work reproduced in sound recording;41 and
  • a computer program.42

Importation of Infringing Articles

It is an infringement of copyright in any work in which copyright subsists to import an article into Australia for sale, hire or other commercial purpose, without the license of the copyright owner. This is on the basis that the importer knew, or ought reasonably to have known, that if the article had been made by the importer in Australia, it would have constituted an infringement of copyright.37

Milpurrurru v Indofurn Pty Ltd [1994] FCA 975

A company imported carpets from Vietnam which reproduced Aboriginal artworks made by the applicant.

Held, the importing company had infringed the applicant’s copyright - managing director either knew or should have known (one director’s knowledge was sufficient).

Parallel Importation

Parallel importation is where an overseas supplier who has legally acquired copies of the works, imports these works into Australia without a license of the copyright holder.

Video overview by Jordan Gregory on Section 44C and Parallel Importation.

However, parallel importation of books is now allowed in certain circumstances.43 These circumstances include:

  • When book is first published outside Australia and not published in Australia within 30 days;

  • Where the copyright owner is unable to meet an order for supply of the book within 90 days;

  • With respect to an order for a single copy for non-commercial purposes; and

  • An order for multiple copies from a non-profit library.

  • Note also that there have been other relaxations on parallel importation:

    • Labels – provisions of the Copyright Amendment Act (No. 1) 1998 (Cth) now prevent an overseas copyright owner controlling the distribution of goods in Australia by reliance on copyright in, for example, the label on a product.44

  • New provisions came into operation 18 months after 30 July 1998 – that is 1 February 2000.

    • Sound recordings – the Copyright Amendment Act (No. 2) 1998 effectively removed the restriction on the parallel importation of legitimate “sound recordings” as from 30 July 1998.45
  • Amendments dealing with the seizure of imported copies of copyright material make it easier for copyright owners to use the Notice of Objection scheme and are consistent with the Trade Marks Notice of Objection scheme under the Trade Marks Amendment Act 2006.
Interstate Parcel Express Co Pty Ltd v Time-Life International (Nederlands) B.V.

Time Inc., which owned copyright in Australia and US, granted to Time-Life an exclusive license to distribute the books in countries outside US and Canada. Rather than buy from Time-Life Angus and Robertson imported copies cheaply from the US. Time-Life sought an injunction to restrain sale of the books.

Held, infringement by importation.

Sale of Infringing Articles

Copyright in a work is infringed by a person who sells or hires an article if the person knew, or ought reasonably to have known, that the making of the article constituted an infringement of the copyright or, in the case of an imported article, would, if the article had been made in Australia by the importer, have constituted such an infringement.38

Raben Footwear Pty Ltd v Polygram Records Inc [1997] FCA 370

Raben imported 1000 copies of a Cher CD from Germany. Polygram sued for infringement of copyright. Raben argued that he had no knowledge – Raben had asked the supplier about licensing for the CDs and received a guarded reply.

Held, Raben had infringed copyright – supplier’s response ought reasonably have led the defendant to assume the true position and therefore reasonably knew that making the CD in Australia would have constituted an infringement of copyright.

  1. CA s 36 ↩

  2. CA s 31(1)(a) ↩

  3. CA s 31(1)(b) ↩

  4. CA ss 31(1)(a)(i) and 31(1)(b)(i) ↩

  5. Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 ↩

  6. SW Hart & Co. v Edwards Hot Water Systems (1985) 159 CLR 466, 472; Francis Day & Hunter v Bron [1963] Ch 587, 614 ↩

  7. CA s 21(1) ↩

  8. CA s 21(3) ↩

  9. Dixon Investments Pty Ltd v Hall [1990] FCA 477 ↩

  10. CA s 66 ↩

  11. LED Builders Pty Ltd v Eagle Homes [1999] FCA 584 ↩

  12. Barret Property Group Pty Ltd v Dennis Family Homes Pty Ltd (2011) 91 IPR 1 ↩

  13. Burke & Margot Burke Ltd v Spicers Dress Designs [1936] Ch 400 ↩

  14. Francis Day & Hunter v. Bron [1963] Ch 587 per Willmer J ↩

  15. [1963] Ch 587 ↩

  16. CA ss 31(1)(a)(ii) and 31(1)(b)(ii) ↩

  17. Avel Pty Ltd v Multicoin Amusement Pty Ltd [1990] HCA 58 ↩

  18. s 31(1)(a)(iii) ↩

  19. CA ss 31(1)(a)(iv) and s 31(1)(b)(iii) ↩

  20. CA s 10(1) ↩

  21. CA s 22(6) ↩

  22. CA s 31(1)(a)(vi) ↩

  23. CA s 10 ↩

  24. CBS Records Australia Ltd v Telmak Teleproducts (Aust) Pty Ltd (1987) 9 IPR 440 ↩

  25. CA s 85 ↩ ↩2

  26. CA s 10(3)(c) ↩

  27. [1987] FCA 138 ↩

  28. CA s86 ↩

  29. [2001] FCA 1719 ↩

  30. See CA s 30A ↩

  31. CA s 87 ↩

  32. CA s 88 ↩

  33. CA s 14(1) ↩

  34. Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 ↩ ↩2

  35. _ IceTV Pty Limited v Nine Network Australia Pty Limited_ [2009] HCA 14 ↩

  36. TCN Channel Nine Pty Limited v Network Ten Pty Limited (No 2) [2005] FCAFC 53 ↩

  37. CA ss 37 and 102 ↩ ↩2

  38. CA ss 38 and 103 ↩ ↩2

  39. Raben Footwear Pty Ltd v Polygram Records Inc [1997] FCA 370 ↩

  40. CA s 85(1)(d) ↩

  41. CA s 31(c) ↩

  42. CA s 31(d) ↩

  43. CA ss 44A and 112A ↩

  44. CA s 44C

    * See definition of "accessory" and “non-infringing accessory”.[^AUTOREPLACEDs101ENDREPLACE]

    ↩

  45. CA ss 44D and 112D ↩