In this edition #30…

July 29, 2011

A hugely influential English magazine published between 1865 and 1954, our namesake the original Fortnightly Review was a progressive, sometimes partisan, but highly distinguished organ, whose contributors included nigh every renowned English author or critic of the time. Famous as much for its schismatic renunciation of authorial anonymity as its highbrow and panoramic content, the Fortnightly fortified the careers of numerous lettered figures including some giants of 19th and 20th century literature. Our earnest hope was that our humble derivative, the Fortnightly Review of IP and Media Law, would follow the same traditions of superlative contributions with incalculable benefit to the careers of its authors. For that and other reasons, in our introduction we explicitly referenced our august progenitor.

And like our progenitor, who published fortnightly for one year then found monthly editions a more suitable configuration, we too have extended the period of anticipation between issues to four weeks. We hope you’ll forgive our seemingly retrograde strategy in a time where technological speed is obsession, in exchange for greater contemplation of issues with more than mere fortnightly currency. With that, we present edition #30…

- The Editors

In this edition #30…

Megan Richardson addresses the recent political discussion on introducing a statutory privacy cause of action with reference to the recent Murdoch empire ‘phone-hacking’ scandal.

For full article click here.

And David Brennan brings a new angle on the international intellectual property debate surrounding Australia’s tobacco plain packaging proposal to our attention, a possible non-violation complaint under the Australia-US Free Trade Agreement.

For full article click here.

Leave a Comment » | Uncategorized | Permalink
Posted by clarissaterry

Phone hacking and privacy torts

July 29, 2011

By Megan Richardson

Who before last week would have predicted there would be serious talk of a statutory privacy tort in Australia with politicians coming out openly in support of it?  But then who would have predicted a phone hacking scandal engulfing the Murdoch press?

The Australian’s senior legal writer Chris Merritt last weekend dismissed the connection saying we have criminal law to deal with phone hacking plus defamation and other laws to protect individuals, and questioning the need for a privacy tort – especially one as draconian in its treatment of the Australian media as that recommended by the Australian Law Reform Commission. What this discussion sidesteps, as much of the discussion I have read to date in the press, is that we already have common law protection of privacy fashioned through case law, which does or should constrain the media.

A problem, I think, is that our main source of common law protection goes by the antiquated name of ‘breach of confidence’. This gives the false impression of a confider and confidant. In reality the compass is far broader – and the doctrine is really one of misuse of confidential information, including information of a private character. In the defence papers case Commonwealth v John Fairfax Mason J referred to breach of confidence as a doctrine restraining ‘the publication of confidential information improperly or surreptitiously obtained’, citing Swinfen Eady LJ in Lord Ashburton v Pape (1913) 2 Ch 469. More recently, in the possum abattoir case Australian Broadcasting Corporation v Lenah Game Meats, Gleeson CJ quoted Laws J in Hellewell v Chief Constable of Derbyshire [1995] 1 WLR 804 at 807 as saying:

If someone with a telephoto lens were to take from a distance and with no authority a picture of another engaged in some private act, his subsequent disclosure of the photograph would, in my judgment, as surely amount to a breach of confidence as if he had found or stolen a letter or diary in which the act was recounted and proceeded to publish it. In such a case, the law would protect what might reasonably be called a right of privacy, although the name accorded to the cause of action would be breach of confidence. It is, of course, elementary that, in all such cases, a defence based on the public interest would be available.

Gleeson CJ agreed with that proposition, adding that to adapt it to the Australian context account should also be taken of the freedom of political communication which the High Court has held implicit in the democratic principles of the Australian Constitution. This suggests that the defence is particularly stringent where that implied freedom applies.

Lenah itself was a surreptitious filming case. Animal rights activists secretly entered the game meat abattoir’s property to film its possum slaughter processes then handed the film (through an intermediary) to the ABC who proposed to show on its 7.30 Report. Lenah sought an interlocutory injunction to stop this but did not claim breach of confidence, conceding rather that the information as to its animal slaughter methods was not confidential. Instead it argued the High Court should recognise a new tort of privacy to cover their case. Gleeson CJ said that breach of confidence would have been adequate to cover the case if ‘the activities filmed were private’. Even if so, the Chief Justice’s references to the public interest defence and constitutional freedom of communication suggests the ABC might have had a good defence. As Kirby J pointed out in his judgment, this was a government licensed abattoir and the public is entitled to know that the government is concerned to ensure that animals at the abattoir are being treated humanely (so far as an abattoir designed to kill animals can do so). The Australian government’s recent action over live meats exports shows it accepts this responsibility, and the ABC’s role in uncovering the problems there is worth noting and preserving.

We only need to imagine a slightly different fact situation to see Lenah as a strong authority on breach of confidence’s protection of privacy. Although some judges in the High Court questioned whether a corporation concerned about its public reputation was the best privacy claimant (Gummow and Hayne JJ especially), it was clear that the situation would have been different if the claimant had been an individual filmed or photographed while engaged in a private activity. For instance, Gleeson CJ said, ‘a film of a man in his underpants in his bedroom would ordinarily have the necessary quality of privacy to warrant the application of the law of breach of confidence’ – as would ‘information relating to health, personal relationships, or finances’. If the information was surreptitiously or otherwise improperly obtained, there is a good argument that its publication could be restrained or a remedy granted after the fact on the basis of breach of confidence, unless a public interest could be shown to justify the publication.

These are not just hypothetical scenarios that could never arise in Australia. In fact, the prospect of an improperly obtained video recording of a man in his underpants being aired on Australian television was very real in Donnelly v Amalgamated Television Services, where an interlocutory injunction was obtained (although, as often occurs in cases where other grounds are available, breach of confidence as such was not relied on). Lara Bingle’s objection to publication of the infamous shower picture in Woman’s Day is one example and in my view she had a potential claim that might have succeeded if she had chosen to pursue her action. Certainly, there are English cases where confidentiality claims against the media have succeeded involving weaker arguments of privacy and stronger arguments of free speech than were apparent in the Bingle scenario.

That many of those English cases have arisen in the wake of the Human Rights Act 1998 makes their authority in the Australian context more debatable. The Act brings into English law the European Convention on Human Rights, including the right to privacy in Article 8 along with the right to free speech in Article 10, and gives English courts the responsibility to develop its law in accordance with those rights. Perhaps it may be argued that the absence of an equivalent Bill of Rights at the Australian level means that privacy is not, or need not be, so highly valued here. But can this be said of private phone hacking? I would think many Australians would consider this a breach of their privacy.

And it would likely be a breach of confidence as well. Well before the Human Rights Act, the English case of Francome v Mirror Group Newspapers Ltd (1984) 2 ALL ER 408 concerned an illegal ‘bug’ placed on the jockey John Francome’s private telephone line. The tapes had been offered for sale to the Daily Mirror whose reporters approached Francome to confirm their authenticity. Francome and his wife promptly brought an action in breach of confidence seeking an interlocutory injunction to stop its publication of the transcripts, or extracts. The defendants denied liability and argued, alternatively, that publication was justified in the public interest as exposing Francome’s breaches of racing rules. Thus, they said, the balance of convenience lay in their favour, so the injunction should not be granted. However, the Court of Appeal held that the unlawful telephone tap was improper obtaining, the newspaper which had notice of the wrongdoing would also be liable as a third party for breach of confidence if it went ahead with its publication, and the public interest did not justify this since the tapes could have been given to the police or jockey club to deal with through official channels. Surely this case shows that in Australia as well as the United Kingdom unlawful telephone tapping by the media would be a prima facie breach of confidence, and that given the unlawfulness of the conduct the burden on the media to show the public interest supports its action is very high – although a court might allow an argument that there is good ground to suspect misconduct and the police could not be left to handle the investigation.

But to revert to my earlier point, the significance of breach of confidence in cases such as Francome is not widely known. In answer, then, to the question of whether there would be any advantage in a new statutory tort of privacy, I suggest transparency is one. If even The Australian’s senior legal reporter does not refer to breach of confidence what is the rest of Australia’s population to make of their legal rights in the (hopefully unlikely) scenario they find their telephones tapped for media reporting on some current story?

That said, there may be better ways to acknowledge the importance of freedom of speech and the media than in the Australian Law Reform Commission’s proposed statutory tort (where it is a matter to be ‘taken into account’ in a court’s determination of invasion of privacy). I was part of an expert group of the New South Wales Law Reform Commission whose proposed statutory cause of action for invasion of privacy tries to give more explicit account to freedom of speech and the media. The Victorian Law Reform Commission in its recent proposal for a cause of action for misuse of private information has gone further still, providing a full public interest defence. To me that seems the best approach to date. As Michael Kirby was quoted in an article in last weekend’s Australian, privacy may be a human right but so equally is freedom of speech and the media. Rather than giving either automatic precedence both should be acknowledged in any privacy cause of action and if need be they should be ‘reconciled’ in cases.

So, in the end, the judge’s central role in deciding privacy cases seems inescapable. In other words, we rely on the media to report freely but in cases where media seems too intrusive of individual privacy we should trust judges to exercise appropriate oversight.

Megan Richardson is a professor at the Melbourne Law School

An edited version of this piece has featured at theconversation.edu.au

(return to the top of this edition)

Leave a Comment » | Bingle, breach of confidence, defamation, Media law, privacy, Uncategorized | Tagged: , , , , , , , , , , , , , , | Permalink
Posted by clarissaterry

Could plain tobacco packaging laws ground a non-violation complaint under the Australia-US FTA?

July 29, 2011

By David Brennan

In the debate surrounding the Commonwealth’s proposed plain tobacco packaging laws an aspect of Australia’s international intellectual property obligations, aside from those set out in World Trade Organization (WTO) rules, has not been addressed. That aspect is the possibility of a non‐violation complaint by the US against Australia under the Australia-US Free Trade Agreement (FTA).

A non‐violation complaint occurs when, because of the application of a measure which in itself does not violate a minimum standard set by a trade agreement, the measure nevertheless causes the nullification or impairment of a benefit that a party reasonably expects should arise from the agreement.

In this instance a minimum standard article found in Chapter Seventeen of the FTA – Intellectual Property Rights – requires that parties confer upon trade mark owners certain exclusive rights in relation to their marks. The article reads in part that ‘[e]ach Party shall provide that the owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs.’

This minimum standard is not violated by plain packaging laws if one accepts the logic that the standard merely requires the creation of a negative right (a right to exclude), and that plain packaging laws are not inconsistent with that requirement. This is because, under that logic, the laws simply deny affected trade mark owners a positive entitlement to themselves use certain of their registered trade marks in typical ways, but does not remove their right to prevent third parties from using those trade marks. This is a key point made by Mark Davison, a plain packaging enthusiast, in arguing that such laws do not violate WTO rules.

However a dispute settlement article in Chapter 21 of the FTA raises the minimum standard in an important way, by creating the possibility of a non-violation complaint. It states that ‘except as otherwise provided in this Agreement or as the Parties otherwise agree’ the dispute settlement regime of the FTA applies when a Party considers that ‘a benefit the Party could reasonably have expected to accrue to it under … [Chapter Seventeen – Intellectual Property Rights] is being nullified or impaired as a result of a measure that is not inconsistent with this Agreement.’

This creates the possibility of a non‐violation complaint by the US against Australia on the basis that plain packaging laws deny a reasonably expected benefit to US trade mark owners. In this respect the US might also argue the plain packaging measure should be considered in conjunction with another measure: State and Territory law banning of the display of tobacco products at point of retail sale. Together, the measures might be argued to cause heightened impairment or nullification of a reasonably expected benefit to US tobacco trade mark owners.

How would the US identify a reasonably expected benefit, arising from the FTA minimum standard of requiring a right in owners to prevent others from using their marks in trade? It might be identified as the benefit described by Frank Schechter in his 1927 Harvard Law Review article, “The Rational Basis of Trademark Protection”. Schechter there explained: ‘The fact that through his trademark the manufacturer or importer may reach over the shoulder of the retailer and across the latter’s counter straight to the consumer cannot be over-emphasized, for therein lies the key to any effective scheme of trademark protection. To describe a trademark merely as a symbol of good will, without recognizing in it an agency for the actual creation and perpetuation of good will, ignores the most potent aspect of the nature of a trademark and that phase most in need of protection.’

Importantly, a non-violation complaint assumes that the measure in issue is not inconsistent with the FTA. That is to say such a complaint could be made even with the US accepting the argument that a measure denying an owner use of its mark does not violate a FTA minimum standard guaranteeing the trade mark owner a right to exclude others from using its mark.

In relation to ‘except as otherwise provided in this Agreement’ in the FTA dispute settlement article, it should be pointed out that exceptions for measures such as those ‘necessary to protect human, animal or plant life or health’ are not expressly incorporated to apply to Chapter Seventeen – Intellectual Property Rights. However, the FTA dispute settlement article recognizes that the parties may ‘otherwise agree’ in relation to a measure such as the plain packaging mandate. Unlike the position under bilateral investment treaties, private parties cannot bring a complaint under the FTA, only the countries party to the agreement are competent to take action. Would the US bring a non-violation FTA complaint against Australia about the plain packaging laws? Of course I do not know. Recently the US Food and Drug Administration (FDA) has prescribed (commencing in September 2012) the types of graphic health warnings on tobacco packaging that Australia adopted long ago. These must appear on the top 50 percent of both the front and rear panels of each cigarette package distributed in the US, however the FDA regulations do not mandate plain labelling for the remaining branded portion of the package. At the same time seven US peak commerce bodies – including the US Chamber of Commerce – have expressed joint opposition to Australia’s proposed plain packaging laws, while at the same time recognizing Australia’s right to regulate more fundamental control over the supply of tobacco products.

I conclude with a couple of riders.

Non‐violation complaints are regarded by many (albeit not the US) as being ill‐suited to intellectual property minimum trade standards; this controversy has been responsible for the moratorium on such complaints under WTO rules.

While I am an intellectual property enthusiast, I am personally opposed to the tobacco trade.  I favour the suggestion made last year to ban the supply of tobacco to individuals born in or after the year 2000.

David Brennan in an Associate Professor at the Melbourne Law School

(return to the top of this edition)

Leave a Comment » | economics, Intellectual Property, Trade Mark, Uncategorized | Tagged: , , , , , , , | Permalink
Posted by clarissaterry

In this edition #29

June 30, 2011

Melissa de Zwart gives another example of the conflict between social media and the judicial system, with a juror and defendant in a UK High Court case both being found guilty of contempt of court for illicitly communicating with Facebook.

For full article click here.

And Dr Simon Longstaff and Jake Goldenfein write from two angles about the recent Intelligence Squared debate in Sydney, questioning whether ‘WikiLeaks is a force for good?’

For full article click here.

Finally, Paul Jensen and Beth Webster have responded to David Brennan’s article in the previous edition concerning the economic arguments behind the assessment of damages for on-line copyright infringement.

Leave a Comment » | Uncategorized | Permalink
Posted by clarissaterry

In this edition #28

June 16, 2011

David Brennan analyses the economic arguments behind the assessment of damages for on-line copyright infringement, specifically whether infringements not leading to lost sales should be actionable, and the consequences of that belief for copyright doctrine.

And Sarah Lux provides an outline of the recent Hargreaves Review of UK Intellectual Property which considered whether extant copyright laws were having a detrimental effect on innovation and economic growth.

Leave a Comment » | Uncategorized | Permalink
Posted by clarissaterry

A reply to the sentiment that copyright infringement not resulting in lost sales is benign

June 16, 2011

By Assoc. Prof. David Brennan

A view is held (in both expert and non-expert circles) that unless an infringement of copyright causes proven lost sales, that infringement should not be actionable. Under the logic of this view, to award damages for infringements that do not cause proven lost sales would be vindicating intellectual property rights without triggering incentive effects.

In relation to the damages award in the now famous Larrikin v EMI litigation (comprising a notional usage price of 5% of APRA׀AMCOS royalties paid to the infringers) two of our economists Beth Webster and Paul Jensen have supplied this critique of the law – emphasis in the original:

The sales of ‘Kookaburra’ were not affected in any way shape or form by the success of ‘Down Under’.  Quite simply, Larrikin should not be due any damages at all.

It is worthwhile to think more about (in law and economics) the creation of property rights – including those rights’ remedial scope – for copyright subject matter. A fine vehicle to do this is infringing file-sharing.

Research undertaken at the University of Ballarat in April 2010 reveals something of the global extent of infringing file-sharing. The University’s Internet Commerce Security Laboratory (ICSL) – which is funded by the State Government of Victoria, IBM, Westpac, the Australian Federal Police and the University – was commissioned by Village Roadshow to measure the volume and nature of BitTorrent file-sharing global traffic. It estimated that 97.9% of files made available encoding non-pornographic content were clearly not authorised by the copyright owner. Under the BitTorrent system the term ‘seeders’ refers to people who have completed their download and then make the file available for others to download. That is to say, a seeder is a person who is making that content available online to the public. The ICSL produced a list of what was estimated to be the top 100 seeded files as at April 2010. The top 10 in that list were:

1. The Incredible Hulk[2008]DvDrip-aXXo97065494792.4447: 1,112,628

2. Indiana Jones And The Kingdom Of The Crystal Skull[2008]-aXXo: 1,029,695

3. College[2008]DvDrip-aXXo339166021846.017: 509,576

4. Sherlock Holmes (2009) DVDSCR XviD-MAX: 479,655

5. Avatar (2009) PROPER TS XviD-MAX889790305026.795: 332,665

6. Meet Dave[2008]DvDrip-aXXo: 311,894

7. Lady GaGa – The Fame Monster 2CDRip 2009 [Cov+2CD][Bubanee]: 308,117

8. The Andromeda Strain[2008]DvDrip-aXXo: 284,221

9. Shutter Island (2010) R5 DVDRip XviD-MAX851029283088.936: 282,628

10. 2012 (2009) R5 DVDRip XviD-MAX883775626338.402: 277,043

With this list it should be pointed out that a title like Avatar reappeared twice again in the top 100 list under different file names – i.e. Avatar 2009 DVDScr H264 AAC-SecretMyth (Kingdom-Release) 94,781 seeders and Avatar TS XviD-IMAGiNE(No Rars) 82,977 seeders.

It is commonly considered that unless an infringing file-sharer, but for infringing, would have paid for the relevant content then there is no harm to the copyright owner arising from the infringement. Consider these three published readers’ comments to Asher Moses’s essay-style article ‘Piracy – are we being conned?’ (Fairfax Media, 22 March 2011)

  • Why would they assume that an unpaid download is a lost sale? Kale – Sydney
  • The figures are obviously predicated on the presumption that each illegal download would convert into a legitimate purchase, which is a palpably fatuous assumption to make. The ghost of common sense - My bedroom
  • So are they counting every movie i have downlaoded then as lost revenue? cos i have a surpirse for you, you never were gong to get the money in the first place! [sic] Danny – Melbourne

The commonality of this sentiment is so pervasive that a survey-based analysis of direct loss to the film industry conducted in Australia by IPSOS Media CT and Oxford Economics for the Australian Federation Against Copyright Theft (AFACT) made explicit allowance for it. Deducted from ranks of loss-causing Australian infringers were those who would never have paid to watch the film. That is someone like Danny above. Danny might have unlawfully downloaded Avatar using BitTorrent, but never would have paid to obtain a copy. The AFACT-commissioned survey estimated that 23% of Australian infringers were in Danny’s boat, and so a 23% deduction was made in arriving at the final figure of $575m direct loss to the film industry for the 12 months Nov 2009-Sept 2010.

Is it correct, as our economists Beth and Paul say, that infringement not causing proven lost sales should yield zero damages? Or is it correct, as the Fairfax readers imply, that an infringing download not substituting for an actual purchase should be removed in the calculation of owner harm? And is it therefore correct to make that 23% deduction?  Or, to put it another way, is infringement not resulting in a proven material loss benign?

In economic analysis of copyright law as it applies to (say) the film industry, copyright is justifiable to the extent that it provides an effective promise to film producers and creators that if investment and risk is undertaken to make a film, some of the value that film generates is capable of market appropriation through the conferral of property rights. Avatar is a good case-in-point.  Would it have been created without the promise of copyright? It is difficult to imagine this type of content being produced through non-market means such as philanthropy or public funding. Market demand stimulates such content’s creation. In copyright, property rights in creative expression are deployed as an instrumental device to permit that market demand to induce productive endeavour. This is the incentive effect of intellectual property. It does not mean that those property rights per se generate economic value – the film could be an unmitigated box-office flop. Rather, the rights simply provide a way for a film copyright owner to capture some of the market demand for its film.

Given that copyright in economic theory is a promise of appropriability what, in private law, does that promise mean by taking the form of a property right?  Property as an owner’s right to exclude forges a special norm which governs relations between the owner of the property and users of the property. When relations are governed by a property norm violation by a user means that the owner receives less than the owner deserves, and that the user obtains more than the user deserves. Restitution scholarship regards this as an ‘expense’ to the owner mirroring a ‘gain’ to the user. The expense and the gain are de jure rather than de facto concepts. This restitutionary idea has been applied in intellectual property cases since as long ago as the 1867 patents decision of Penn v Jack where Page Wood VC assessed damages by asking: ‘What would have been the condition of the Plaintiff if the Defendants had acted properly, instead of acting improperly. That condition, if it can be ascertained, will, I apprehend, be the proper measure.’ Here, ‘acted properly’ meant to have paid a reasonable usage price for the use of the intellectual property.

Subsequent UK, US and Australian authority has assessed the lower-end quantum of monetary relief in copyright and patent cases to be the reasonable price for the use of the IP regardless of whether the particular defendant user would have agreed to pay. Indeed this approach is seen in the Larrikin v EMI case itself, where evidence was before the court that a lead member of Men at Work would have resisted paying anything for use of the Kookaburra copyright. But why should at least usage price damages be paid in the Larrikin v EMI litigation, and indeed by people such as Danny in the unlikely event that they are sued for downloading Avatar? For instrumental reasons society has promised the conferral of copyright property. That promise is one of appropriability which entails a particular norm governing relations between owners and users. Failure to at least award usage price damages (or recognise a legal entitlement to such a usage price) represents breach of that promise. It does so by creating the perverse situation of rewarding users who infringe rather than act lawfully. Moreover, why should anyone pay for the enjoyment of Avatar if the law accepts as benign the consumption of ‘you never were gong to get the money in the first place’ Danny?

Stripped away, the point made by the above economists and the Fairfax readers seems to resolve to a more fundamental matter of property delineation. The infringements of the 23% of users identified in the AFACT-commissioned survey should be removed from the copyright promise. That is, removed from the definition of property rights in copyright. Arguably, it presents us with this stunning new conception: copyright is the legal entitlement to exclude the whole world from the exercise of certain defined rights – except those people who would never have paid for the exercise of those rights.

David Brennan is an Associate Professor at the Melbourne Law School

(return to the top of this edition)

1 Comment | Copyright, damages, iiNet, Intellectual Property, Internet, Men at Work, piracy, Uncategorized | Tagged: , , , , , , | Permalink
Posted by clarissaterry

Digital Opportunity: the Hargreaves Review of UK Intellectual Property and Growth

June 16, 2011

By Sarah Lux

Last month, Professor Ian Hargreaves of Cardiff University released the much-anticipated Hargreaves Review, officially entitled Digital Opportunity, A Review of Intellectual Property and Growth. This independent report on the state of the UK’s intellectual property regime and its impact on economic development was commissioned in November 2010 by Prime Minister David Cameron. It was a response to the perceived risk that the UK intellectual property framework may not be succeeding in promoting innovation and growth in the national economy. Professor Hargreaves was tasked with answering what he calls the “exam question” set by the Prime Minister: “Could it be true that laws designed more than three centuries ago with the express purpose of creating economic incentives for innovation by protecting creators’ rights are today obstructing innovation and economic growth?” The short answer, Hargreaves says, is resoundingly yes.

Copyright to adapt to the digital environment

UK copyright law does not fare especially well in the report card given by Professor Hargreaves. The Review finds that the copyright framework in the UK is failing to keep up with the emergence of digital communications technologies that involve routine copying of text, images and data. In particular, Hargreaves is concerned by the possibility that copyright law hurts the growing online services economy. He warns that legal rules designed to deal with the needs and rights of artists and authors should not be allowed to unduly restrict emerging business sectors completely removed from the creative industries.

Hargreaves’ predominant suggestion for bringing UK copyright law into the 21st century is the creation of the world’s first Digital Copyright Exchange (DCE), a central platform for copyright licensing. Participation in this national clearinghouse should, according to Hargreaves, be “genuinely voluntary”, but motivated by “a range of incentives and disincentives” provided by the government. The Review does not suggest that the UK government should itself create the DCE, due to Hargreaves’ view that this would cause “a nightmare of IT procurement followed by the birth of a white elephant.” Rather, Hargreaves’ recommendation is that government put its weight behind assisting parties interested in creating the exchange, and strongly encouraging rightsholder participation. The Review suggests that a central platform for automatic licensing is inevitable even if the issue is left entirely to the market to resolve, and recommends that the UK government take the opportunity to get involved in a leadership capacity rather than waiting for a strong market player or group of players to “impose their own rules.”

Orphan works

The Review describes the problem of orphan works as “the starkest failure of the copyright framework.” Under Hargreaves’ recommended model for dealing with the issue, works would be automatically licensed for use if no author was found after a ”diligent search” of the DCE (prompting some scepticism as to the “genuinely voluntary” nature of participation). Any fees paid would be held by the relevant collecting society until the owner was identified or a reasonable period of time passed, at which point the money would be used “for social or cultural purposes, or perhaps as a contribution to the running costs of the Digital Copyright Exchange.”

Exceptions to copyright infringement

In his announcement of the Review in 2010, Prime Minister Cameron stated that the founders of Google felt they could never have started their company in Britain because the copyright laws are “not as friendly” to innovation. In particular, Google praised the “breathing space” provided by the fair use provisions in the US and suggested that this facilitated their entrepreneurial activity. The Review notes that most submissions from UK business were “implacably hostile” to the idea of adopting a fair use exception in the UK on the basis that this would cause disruptive legal uncertainty, cause increases in costly litigation and create confusion for buyers and sellers of copyright goods. The Review rejects the idea of a wholesale adoption of US-style fair use doctrines, arguing this would not be legally viable. However, Hargreaves takes the view that the UK can enjoy many of the benefits of the American exception by adopting other exceptions already permitted under EU law (such as those for format-shifting, parody, non-commercial research and library archiving).  In addition, the Review recommends that the UK government should lobby at EU level for a new exception for “non-consumptive” use, being use enabled by technology that does not directly trade on the creative and expressive purpose of the work in question (for example certain uses in data mining and search engine indexing).

Importance of evidence

A recurring motif throughout the report is the need for IP policy to be grounded in economic evidence of the impact of regulatory mechanisms on competition and innovation. Hargreaves notes that to date, empirical data on the impact of IP (particularly with regard to the relationship between copyright and creative innovation) has come predominantly from private parties and lobbyists, and has not been subjected to independent analysis. The Review emphasises at several points the importance of grounding law and policy in fact rather than spin.  Hargreaves does, however, note the practical difficulties associated with collecting such empirical data. This is especially the case in the context of unregistered copyright and designs and in areas such as biosciences and computing, which involve new markets and technologies with characteristics that can be hard to measure.

Clarification of copyright law

Another theme in the Review is the need to clarify copyright law for those affected by it, particularly small companies.  Recommended measures include provision of greater access to low cost legal and commercial IP advice and the empowerment of the UK Intellectual Property Office to publish formal opinions clarifying copyright law.

Enforcement

The Review notes the importance of enforcement but warns against reliance on ever-tougher enforcement mechanisms to solve the problem of copyright infringement. Rather, Hargreaves recommends a multi-faceted approach to infringement, which involves the modernisation of copyright law, better education about copyright issues and the creation of open and competitive markets in licensed digital content.

Patents, designs and trade marks

Although the Review focuses heavily on copyright law, Hargreaves strongly recommends, as a matter of ”highest immediate priority,” that the UK should increase its focus on its international IP interests by pressing for a unified EU patent court and EU patent system. The Review identifies patent office backlogs and the emergence of patent thickets as potential barriers to innovation, particularly for small enterprises. To clear and prevent backlogs, the review recommends increased international collaboration between patent offices. To deal with the problem of thickets, Hargreaves recommends the UK work with its international partners to create disincentives for the maintenance of lower value patents.

Designs were not included in the Terms of Reference for the Review, a fact about which Hargreaves expresses surprise. The Review states that designs are an important branch of the creative economy that have been neglected in the UK, recommending an evidence-based assessment of the relationship between designs and innovation. No specific recommendations are made in respect of trade marks, which are largely absent from the Review.

Relevance to Australia

The Review is, in essence, an exposition of principle rather than a detailed roadmap for reform. Professor Hargreaves acknowledges from the outset that he has “focused upon the main issues, at the risk of ignoring important points of detail.” Major recommendations, such as the creation of the DCE, will require substantial legal, governmental and commercial analysis and consideration before they have a real shot at faring better than those Gowers recommendations that have remained in the “too hard” basket since 2006.

However, the Review provides a useful high-level analysis of IP law, policy and industry attitudes in the UK, particularly in the copyright context.  It emphasises decisions that need to be made by governments as to how intellectual property frameworks might be utilised to promote economic development in an increasingly networked world. The increasing necessity for international cooperation, while not a new concept, is nicely underlined in the Review and is as relevant in Australia as it is in the UK. And Hargreaves’ emphasis on the importance of economic evidence comes at a time when Australian consumers, like their overseas counterparts, are feeling restless under the restrictions of copyright law and are demanding better evidence of the economic impacts of music and film piracy, among other types of infringement.

This report on the UK intellectual property landscape does not directly touch on Australian law or policy. However, at the level of principle, there can be no doubt that Hargreaves’ findings will be considered closely by those charged with the review of Australian copyright.

Sarah Lux is a lawyer at Allens Arthur Robinson and a sessional lecturer at the University of New South Wales.

(return to the top of this edition)

Leave a Comment » | Copyright, economics, Intellectual Property, Uncategorized | Tagged: , , , , , , , , | Permalink
Posted by clarissaterry

In this edition # 27

June 2, 2011

Katy Barnett reflects on the media law issues surrounding the recent violations of celebrity super injunctions in the UK by Twitter users.

Vicki Huang gives copyright, competition and trademarks highlights from the Fordham IP conference in New York City at the end of April.

And Rebecca Mouy reports on a seminar organised by Melbourne Law School’s CMCL and IPRIA on Human Rights and Intellectual Property by Graeme Austin and Larry Helfer.

1 Comment | Uncategorized | Permalink
Posted by clarissaterry

Twitter Undoes UK Super Injunctions

June 2, 2011

By Katy Barnett

The law is generally unsuccessful when its ability to prevent the flow of information is pushed to the limit. As I’ve described in an earlier post, the Spycatcher case is a primary example: the more the British government attempted to prevent Peter Wright from publishing his book on MI5, the more publicity they gave it. And the English government met very little sympathy from courts in other jurisdictions when it attempted to suppress Spycatcher in Australia, New Zealand and Hong Kong, even though those jurisdictions were former colonial outposts.

The latest iteration of this particular battle has occurred on Twitter in the UK. A user named @InjunctionSuper set up an account which made a number of allegations against a variety of celebrities. Among other allegations, a prominent footballer (later outed as Manchester United’s Ryan Giggs) was accused of having an affair with a reality television star (an injunction preventing publication of allegations had been awarded by Eady J in CTB v News Group Ltd [2011] EWHC 1232 in April); an actor was said to have used the services of a prostitute named Helen Wood; and it was alleged that Jeremy Clarkson had an injunction preventing the publication or mention of intimate photographs of himself with Jemima Khan.

All these people were said to have had “super injunctions” which prevent not only publication of the details of the allegations and the identity of those concerned, but even prevent people and media outlets from reporting on the existence of the injunction itself. Importantly, to breach the injunction, or to knowingly assist in or permit a breach of the injunction, constitutes contempt of court. People who breach such injunctions may be imprisoned, fined or have their assets seized. In the event, some of the celebrities in question did not have “super injunctions”, but merely anonymity injunctions (which prevent disclosure of confidential information and the identity of one or both of the parties, but do not prevent discussion of their existence).

Ironically, the story broke when Khan responded to the tweet, vehemently denying it:

Only minutes after the claims were published on Sunday, 37-year-old Mrs Khan denied having an affair with Clarkson, saying the allegation was ‘untrue and upsetting’.

‘OMG – Rumour that I have a super injunction preventing publication of “intimate” photos of me and Jeremy Clarkson. NOT TRUE!’ she tweeted.

A minute later she added: ‘I have no super injunction and I had dinner with Jeremy and his wife last night. Twitter, Stop!’

She added: ‘The proof that I haven’t got a super injunction is that the papers have printed my name (and no one else’s – for fear of being sued).’

The socialite received supportive text messages from both Clarkson and his wife Francie after the allegations emerged.

Clarkson used humour to dismiss the claims. In a text to Mrs Khan he said: ‘It’s odd. I’m sure I’d remember if any photos of us existed.’

Khan is correct: the media showed no compunction in mentioning her name, whereas it has been cautious about mentioning other people.

Of course, “super injunctions” and anonymised injunctions are very expensive to obtain, and as media lawyer Mark Stephens commented to The Independent: ‘It’s the beginning of the end. Even a rather thick footballer is going to think twice before handing £100,000 to a greedy lawyer if the greedy lawyer can’t guarantee that it will actually stay secret.” The Daily Mail reported that Giggs had spent £150,000 on lawyers to keep the details of his affair secret, but paradoxically, the greater his efforts to keep the affair secret, the more publicity it received (a clear instance of the ‘Streisand effect‘ at work yet again). As publicist Max Clifford noted in the Mail article linked above, Giggs might have been better off not to resort to the law at all. He is now alleged to have started proceedings against Twitter and “persons unknown”, using the initials ‘CTB’. This rather nice graph at the Guardian shows how mentions of Giggs’ name spiked on Twitter on 20 May once his proceedings against Twitter were announced:

Could those who mention Giggs’ name in the UK be the subject of legal proceedings? It is estimated that about 30,000 Twitter users have breached injunctions by tweeting the identities of various people covered by those injunctions. It has also been reported that the Attorney-General is considering whether to prosecute a journalist for breaching a privacy order involving a different footballer. Meanwhile, a Scots newspaper published details about Giggs, arguing that English law did not extend to Scotland, although — despite the recent success of the SNP in elections — this would seem doubtful.

With impeccable timing, the Master of the Rolls of the UK Court of Appeal, recently released report about “super injunctions”. In summary, the Committee concluded:

  • The principle of open justice is a fundamental constitutional principle which should only be derogated from where “strictly necessary in order to secure the proper administration of justice”;
  • There is a difference between super injunctions (which restrain a person from publishing confidential and private information about the claimant where the very existence of the injunction may not be disclosed) and anonymised injunctions (which merely restrain a person from publishing confidential and private information about the claimant where the names of either or both of the parties to the proceedings are not stated);
  • Since Terry v Persons Unknown [2010] 1 FCR 659, as far as the Committee is aware, only two known super-injunctions have been granted to protect information said to be private or confidential;
  • ‘As they incorporate derogations from the principle of open justice, super-injunctions and anonymised injunctions can only be granted when they are strictly necessary. They cannot be granted so as to become in practice permanent. Where super-injunctions and anonymised injunctions are granted they should be kept under review by the court’ and they should have clear return dates (pursuant to Terry);
  • In the recent past, super-injunctions and anonymised injunctions have also sometimes been more widely used than is strictly necessary by UK courts; and
  • A new procedure should be developed which allows the media to be informed of such injunctions in advance, although there may be times when this is not appropriate.

Interestingly, the Committee did not consider new media or the difficulties associated with controlling it in any detail. One of the key questions is whether such orders can effectively be enforced against entities such as Google and Twitter. Giggs’ case may represent a testing ground in this regard. Another difficulty is that many users are anonymous, making it difficult to find out who they are. Further, it is difficult to restrain publications outside the jurisdiction (as the Spycatcher cases showed in an earlier era).

As was noted in The Independent, the anonymised injunctions which Twitter users breached are only those involving the alleged sexual indiscretions of celebrities. Recently, UK Twitter users have been banned from identifying a brain-damaged woman whose mother wishes to remove life-support, but no one has breached this order. Since 2000, with the enactment of Article 8 of the ECHR (protecting privacy) into UK law, there has been an expanding use of breach of confidence in the UK to restrain breaches of privacy (see Campbell v Mirror Groups Newspapers Ltd and Douglas v Hello! (No. 3)). Perhaps the public are reacting by reasserting the sentiments of Lord Denning in Woodward v Hutchins, a case dealing with unsavoury allegations in the Daily Mirror newspaper about the private life of Tom Jones and other pop stars. Denning LJ said:

If a group of this kind seek publicity which is to their advantage, it seems to me that they cannot complain if a servant or employee of theirs afterwards discloses the truth about them. If the image which they fostered was not a true image, it is in the public interest that it should be corrected … In this case the balance comes down in favour of the truth being told, even if it should involve some breach of confidential information. As there should be ‘truth in advertising’, so there should be truth in publicity. The public should not be misled.

Celebrities seek publicity in the press in exchange for public adulation, but audiences often want a more “true” picture than the highly managed images the celebrities want to project. Perhaps this is why Twitterers are particularly wont to breach injunctions relating to celebrity privacy. Perhaps they dislike hypocrisy (self-presented “family man” turns out to be a serial philanderer etc). Or perhaps it’s simply the Streisand effect writ large – the very fact that the information is prohibited is what makes it attractive and interesting to people.

Ken Parish at Club Troppo has a good summary of the legal and practical issues involved with these kind of cases:

My own view is that there is a distinct difference between the “public interest and stuff that is interesting to the public” (as Richard Ackland succinctly phrases it) from a privacy viewpoint, so that privacy should be protected by the law where the public’s interest in knowing stuff is overwhelmingly prurient.  Where that is the case I don’t see that the public interest in freedom of speech has much force, irrespective of the degree of fame of the subject of salacious information.  The fact that a person is famous does not mean they forfeit all moral claim to personal privacy in my view.

On the other hand, the “outing” of Ryan Giggs suggests that, whatever we might think as individuals about whether a right to privacy should exist, the borderless and almost universal nature of the Internet means that a court in any given country is unlikely to be able effectively or for very long to prevent disclosure of information about the identity of a person about whom salacious rumours are circulating.  In one sense I suppose that’s not very different from the social situation in western societies before the urbanisation of the 18th and 19th centuries.  Most people lived in villages and knew everyone else’s business anyway.  Rights to privacy in that sense are just an artefact of a short period of history when the practical anonymity conferred by large urban agglomerations of people had not yet been rendered ineffective by Wikileaks, Twitter, blogs and Facebook and the underlying Internet architecture that makes it almost impossible for the courts of a single country to keep information confidential.

Like Ken, I feel that we do not have a right to prurient information about celebrities: but whether the law can actually control the dissemination of such information in the present climate is quite another question.

Katy Barnett is a Lecturer at the University of Melbourne Law School

(return to the top of this edition)

Leave a Comment » | breach of confidence, defamation, Intellectual Property, Internet, Media law, privacy, Twitter, Uncategorized | Tagged: , , , , , , , , , | Permalink
Posted by clarissaterry

Fordham IP Conference 2011, New York City

June 2, 2011

By Vicki Huang

The Fordham IP conference – “Learn, Debate, Have Fun” – was held on 28 – 29th April 2011 in New York City.  The conference attracted many academics, practitioners, government officials, and members of the judiciary from Europe, the USA and of course Australasia.  This combination triggered a lot of informed debate and it was refreshing to hear input from all sides of contentious issues including views from the bench.

Many of the sessions have been covered by our friends at IPKAT here, here, here, here, here and here.  In addition to those sessions, the Fortnightly Review was lucky to attend several specific sessions on copyright and trade mark law and highlights are outlined below.

In a session on “US Copyright Developments”, Thomas Kjellberg updated the audience on copyright cases against “suburban” downloaders where damages peaked at over $1 million dollars. These cases such as Capital Records v Thomas Rassett have sparked a debate as to whether such awards violate due process.  Kjellberg also discussed the case of Penguin v American Buddha. In that case, American Buddha (a religious not-for-profit), posted ebooks on its website. One of the issues for the court was locating the site of the injury. Was it in New York (home of the plaintiff), or Arizona (the site of the uploader) or Texas (the site of the server)?  The court held that because the location of the infringer may be remote, it would not be fair to use the infringer’s location as the locus of harm. Therefore, even though there was no downloading evidence in New York, that was not to say there was “no injury” in New York.  Rather the test should assess the intent of the infringer.

In a session on “EU and US Initial Interest Confusion in Trade Mark Law”, The Hon. Mr Justice Arnold discussed the development of the doctrine and its actionability under Article 9(1)(b).  He went on to discuss several cases including the recent case of Och-Ziff Management Europe Ltd.  Daniel Glazer discussed US developments with a focus on the expansion of the doctrine to the internet, where trademarks are used in domain names or in meta tags or keywords.  The panel discussed the fine line between confusion and diversion and the fact that US courts are really trying to protect senior mark good will and against unfair competition.  The panel debated what was permissible and indeed healthy free riding.  They also debated the merits of using the initial interest confusion doctrine to police domain names.  The panel agreed that in the current era, consumers are used to deceitful metatags and more wary of commercialised hyperlinks so confusion is a lot less likely. Professor Anne Bartow argued that one can no longer assume that consumers are unsophisticated.  She went on to query whether the law should remedy a situation where there is confusion that is cured before the point of sale.

In a session discussing dilution Law in the European Union & the United States, Trevor Cook (Bird and Bird) began with a discussion of the EU’s approach.  He noted the over-intellectualisation of simple legal tests which was a common complaint in several other panels.  Professor Marshall Leaffer discussed US developments in dilution and the case of Visa v JSL Corp.  In that case, Professor Leafer argued that the question of likelihood of confusion – which is a question of fact – was approached in a fast and loose manner. He also said that the case highlighted that the evidence required to prove a dilution case was very unclear. A European speaker helpfully reminded the audience that reconciling EU and US policy and legal approaches was not simple as there is no unfair competition law in the UK and some other EU states.

The well-attended sunrise seminar on “Rule of Law on the Internet: Feasible or Fantasy”, started with views from Richard Cotton of NBC Universal Media.  He stated that the question was not “whether” we should have a rule of law on the internet, but rather “when” and “how”.  He discussed a fundamental problem being one of attitude, with many downloaders thinking that “if it’s so easy to pirate, it can’t be wrong”.  Piracy is moving from being treated as a nuisance, to a problem that the FBI and homeland security are now enforcing against.

In terms of legitimizing tools, he discussed the development of ancillary markets and goods such as Netflix, and Xbox live which are robust and legitimate markets that rely on internet streaming technologies.  In his view, encouragement of these delivery models will give illegal downloaders a legitimate alternative.  However, he emphasised that the challenge will be to create a culture that will accept copyright piracy as a wrong and likened this to being a parent training a recalcitrant child.

Justice Peter Charleton commented that the EU has compulsory anonymity on internet. And that a cultural problem was that anti-globalism is a big movement so that theft from “anonymous capitalist” was thought to be ok. The panel agreed that IP theft was like drug addiction where demand generates supply.

In the session, “Enforcement Issues Including New Government Initiatives”, Stevan Mitchell (the ESA) and Peter Fowler (USPTO Enforcement) discussed the extent of the enforcement problem.  Twenty five per cent of all internet traffic globally involves unauthorized distribution of copyright files.  One assessment had 43 illegal downloading websites register 146 million hits per day.  Bottom line is that there is a huge appetite for TV and film downloading.  Peter Fowler emphasised the need for cultural change akin to the shift that led to seatbelt wearing.  He also discussed the US “Operation in our Sites” which had been seizing domain names of illegal download sites.  He emphasized that the academic debate over whether creative adaptations should be free was moot as copyright infringement is illegal and a crime.  For enforcement officers there was no debate.  He also highlighted a shift in counterfeiting.  Counterfeiters are now trying to make higher profits by making goods as close as possible to the real luxury item and selling goods on deceptive websites at matching prices (as opposed to a severely discounted price that would indicate a “fake”) in order the maximise profits.

Other paths of enforcement include cooperative agreements between registries to seize domain names.  Importantly it is also to target 3rd party providers eg agents for service and paypal.  If money supply can be cut off, then enforcement agencies will try to do so.

In the session “Trademark Law: Smell and Look-a-likes: a Comparative Analysis” Anna Carboni presented an update on smell and look alike cases including the controversial L’Oreal v Bellure case.  Carboni highlighted the fact that the British Brands study showed the customers can be easily confused by look alike packaging. The panel including Robert Burrell pointed out that surveys used in the British Brands study and other surveys used to support a senior mark owner are flawed due to the prevalence of leading questions.  On another point, Jane Ginsburg re-emphasised that “lured” does not mean confused.  Consumers learn for example, that supermarket shelves are stocked with similar looking house brands.  The Hon. Justice Robin Jacobs agreed saying that judges shop and are also aware of brand generics.  The question should be whether reasonable customers are likely to be confused and whether the company intended to confuse consumers.  Justice Jacobs observed that brand owners are now scared to sue “home brands” which are put out by supermarkets because supermarkets may retaliate and not stock the senior brand.

In the session “Adwords: a Comparative Analysis” Professor Marshall Leaffer discussed the proposition that after the case of Rescue.com, selling trademarks as keywords is “use in commerce” and subject to the Lanham Act.  Professor Barton Beebe discussed the increase in consumer sophistication and that the legal question had moved on from “use” to “likelihood of confusion” and in the future will be preoccupied with predicting levels of consumer sophistication.

Prof. Dr. Peter Ruess presented a convincing case for protection of well-known brands.  Interestingly calling it naïve to use the phrase “comparative advertising” in cases that were clearly “bait and switch”.  The panel seemed divided on the line between “genuine” comparative advertising and the misappropriation of goodwill.  Ruess argued that using the goodwill of a senior mark to lure a customer is not comparative advertising and is not in the public interest.  Professor Beebe argued that encouraging free competition is in the public interest.  The panel seemed divided between recognising the property rights of high investing brand owners and free competition.

Overall this was a fascinating and informative conference.  The program and list of speakers can be found here.  Proceedings of the conference will also be published in an upcoming volume.

Vicki Huang is a Research Associate with IPRIA and a Lecturer at Deakin Law School

(return to the top of this edition)

Leave a Comment » | Copyright, counterfeit, Intellectual Property, Internet Law, piracy, Trade Mark, Uncategorized | Tagged: , , , , , | Permalink
Posted by clarissaterry

« Previous Entries
Next Entries »
Follow

Get every new post delivered to your Inbox.

Join 403 other followers