Warner Bros, a tattoo artist, a film about hangovers and Australian copyright

Posted by Kate Rintoul and Paul Kallenbach

S. Victor Whitmill - the tattoo artist who designed and applied the tattoo gracing the left side of Mike Tyson's face - caused a stir in Hollywood last week when he launched proceedings against Warner Bros for copyright infringement. The film giving rise to those proceedings, The Hangover: Part Two, was released in the US (and elsewhere) as originally scheduled after Whitmill failed to convince a US District Court judge that its release should be injuncted. Mr Whitmill is, however, proceeding with a damages claim against the studio.

Whitmill applied what he calls the 'Tribal Tattoo' to Tyson's face in 2003. He is suing Warner Bros in relation to scenes in the film in which one of the characters wakes up - badly hungover - with a tattoo etched on the left side of his face. That tattoo, according to Whitmill, infringes his copyright in 'Tribal Tattoo'. Significantly, Judge Catherine Perry appears to have indicated (in the injunction proceedings) that Whitmill's claim has a reasonable prospect of success.

So, if there is a chance that Whitmill might succeed in the United States, how might an equivalent case be decided in Australia?

Are tattoos protected by copyright in Australia?

The Australian Copyright Act 1968 confers a range of exclusive rights on the creators of original literary, dramatic, musical and artistic works (as well as certain other subject matter, such as films and published editions). These exclusive rights are afforded to the copyright owner for the duration of the copyright, which varies according to the item under consideration and its publication status (but is generally 70 years after the death of the author). The exclusive rights include the right to reproduce, publish and adapt the author's work.

Therefore, in order for copyright to subsist in a tattoo under Australian copyright law, the tattoo must (amongst a few other things):

• fall within one of the classes of works or other subject matter that are protected under the Copyright Act; and
• be 'original'.

A tattoo appears to fall within the ambit of 'artistic work' (defined under the Copyright Act to mean 'a painting, sculpture, drawing, engraving or photograph'). 'Painting' is defined in the Macquarie Dictionary to mean 'a picture or design executed in paints' - and this would seem to describe a tattoo quite nicely. However, there is no Australian case law directly on point, so a court would need to finally determine this.

In the UK, the English Court of Appeal rejected the idea that distinctive facial make-up is a painting (within the meaning of the UK copyright legislation); however, this was largely on the basis that the make-up in question (applied to the face of Adam Ant) lacked permanency. By contrast, a tattoo (one could argue) is just as permanent as if the artist had rendered their design on paper or canvas or etched it into wood or stone. (And even if there is some doubt on that point, the artist may have made paper-based drawings or sketches of their tattoo design, each of which would separately be protected by copyright, and therefore form the basis of an infringement claim.)

In relation to originality, there seems little doubt that a tattoo such as 'Tribal Tattoo' would be 'original' in Australia for the purposes of the Copyright Act, as the threshold for originality is not that high. As long as Whitmill applied intellectual effort in coming up with the design, and did not copy it from somewhere else, it will be 'original' under the Copyright Act.

Would Warner Bros infringe copyright in Australia?

The first thing Warner Bros did was to reproduce the tattoo on the face of the actor who appeared in the film. The second thing they did was to film that actor (including the tattoo) and thus reproduce the tattoo on film.

If copyright protects tattoo in Australia (as we suspect it does), then reproducing the tattoo on the face of an actor using make-up would likely constitute copyright infringement.

In contrast, there is some scope to argue that filming the actor wearing the tattoo design on the side of his character's face for some portion of the film does not constitute copyright infringement in Australia.  This is because there is an exception to copyright infringement (under section 67 of the Copyright Act) in relation to the filming of an artistic work that happens to only be incidental to the principal matters is included in the film.

Although the filming of the tattoo was certainly deliberate, it could still be incidental (the Federal Court has previously found that a deliberate filming of a work may still be merely incidental in the context of what was filmed). Although the tattoo is the focus of a particular segment of the film and has been prominently displayed in various advertisements for the movie, it could nevertheless be argued that, in the context of a feature length film, the reproduction of the tattoo is merely an incidental element.

What could Whitmill do about the copyright infringement?

So, at least under Australian law, there may very well only be one act of infringement here: the reproduction of the tattoo on the actor's face. It has already happened, so Whitmill would not be able to seek an injunction. He would be left with a claim for damages or an account of profits. Both would be difficult to quantify.

For a damages claim, Whitmill could seek compensatory damages (for loss or damage caused by the infringement, which might include the licence fee Whitmill would have charged for use of his copyright work) and additional damages (for example, having regard to the flagrancy of the infringement and benefit shown to have accrued to Warner Bros as a result of the infringement). It is, however, open to question whether Whitmill would be able to bring up the subsequent reproduction of the tattoo on the face of the character in film if that conduct did not itself amount to copyright infringement.

For a claim based on an account of profits, Whitmill would have to show a connection with the infringing conduct and the profits made by Warner Bros as a result of it. This would not get him far if he were not able to bring up the reproduction of the tattoo in the film. Even if he could bring it up, it is not certain how a court would apportion the total profit generated by the film compared with the profit generated by the depiction of the tattoo.

Has there been an infringement of Whitmill's moral rights?

If Whitmill is found to be the author of an artistic work, then under the Copyright Act, he has certain 'moral rights' - which include the right to be attributed as author of that work, and the right not to have his work subject to derogatory treatment (that is, treatment prejudicial to his honour or reputation).

We haven't seen the film, so we don't know if the depiction of the tattoo would be prejudicial to Whitmill's honour or reputation. But perhaps, as a result of the right of attribution of authorship, he would at least be able to get his name added to the long list of credits?

As interesting as this scenario is for us copyright lawyers, film producers may wish to consider obtaining the permission of any tattoo copyright owner before including their designs in a multi-million dollar film.

Partner: Paul Kallenbach

New UK cookie laws now in force

Posted by Siobhan Doherty and Veronica Scott

Image by ssoosay

From 26 May 2011, new UK laws require website operators to obtain a user's consent before using (eg by storing or accessing) a cookie (a text file saved by the site to a user's computer to store information such as user preferences) or a similar technology, unless the cookie is strictly necessary for the operation of the website.

Australian companies operating websites with UK (or other EU) users should also be mindful of these changes.

Background to the new cookie laws

The EU Privacy and Electronic Communications Directive (2002/58), known as the e-Privacy Directive, regulates data protection and privacy in relation to digital technologies and electronic communications sector. The Directive has, until now, required website operators to tell users how their sites use cookies and how users can 'opt out' of the use of cookies. Most websites commonly inform users of their cookies policy via the website privacy policy or terms and conditions. The policy generally explains whether the website uses cookies, for what purposes, how users can de-activate cookies and what this could mean for their website experience. Users can opt out of (stop) receiving cookies by de-activating them via their browser settings. By
informing users that the website will use cookies, the continued use by the user of the website implies their consent to the use of cookies.

The UK Privacy and Electronic Communications Regulations 2003 implemented the e-Privacy Directive. However, as a result of amendments to the e-Privacy Directive (by Directive 2009/136) to include the new requirements for informed user consent to the use of cookies, Member States are required to implement the amendments in local law. The UK has done this by way of amendments to the Regulations.

What are the new cookie laws?

Under the amended Regulations a cookie can be placed on a user's computer only where the user has given consent, unless the cookie is strictly necessary for the operation of the website.

'Strictly necessary' exception

The UK Information Commissioner's Office's (ICO's) Guidance on the amendments to the Regulations states that the 'strictly necessary' exception will be interpreted narrowly and will apply only where the cookie's application is limited to a small range of activities and where the use of the cookie relates to a service requested by the user.

The Guidance suggests, for example, that the 'strictly necessary' exception will apply where a cookie is used to ensure that where a user has chosen goods for purchase and then clicks the 'add to basket' (or similar) button, the site remembers what the user chose for purchase on the previous pages. According to the Guidance the exception will not, however, apply where an operator decides that its website will be more attractive if it remembers users' preferences or where cookies are used to collect statistical information about use of the website.

User consent

If the 'strictly necessary' exception does not apply, a website operator may be able to obtain the necessary user consent. The ICO advises website operators not to rely on a user's browser settings for consent to cookie use because most browser settings are not yet sufficiently sophisticated to indicate the required consent and, in any event, not all users may visit the site via a browser.

Therefore website operators must consider appropriate methods for obtaining express consent to their continued use of cookies. This will depend on the nature of website and what it offers, how it interacts with its users and the impact on the usability of the site. Options might be:

• using pop-ups - though this could adversely affect the user experience
• amending the website terms and conditions - but consider how and whether users' attention can be drawn to the website terms and conditions or privacy policy so that a new cookies policy can be read and understood before users proceed to use the website
• using settings-led or feature-led consent.

Further details about consent options are set out in the Guidance.

Non-EU websites

It is not clear whether websites hosted outside the EU, such as in Australia, but which target and interact with users who are residents of an EU country, may be subject to the laws of that country which implement the Directive's new cookie rules.

However, it would be open to data protection regulators and courts in that EU country to require the websites to conform to the new rules. Neither the UK Regulations 2003 nor the amended Regulations say whether a website operator outside the UK must comply. The ICO's latest press release on the amended Regulations refers to them as applying to UK businesses and organisations running websites in the UK.

Next steps for website operators

The ICO recognises that website operators have had little time to comply with the new laws.

While the ICO expects there to be a period of non-compliance following the implementation of the amended Regulations, it expects website owners to have considered the Guidance and to have a realistic plan to achieve compliance with the new laws.

The ICO will be issuing separate guidance on how it intends to enforce the revised Regulations. In the meantime, the Guidance advises website operators to take a number of steps. These are explained below (with some additional suggestions), effectively amounting to a 'cookie audit':

• identify the cookies currently used by their website and the purpose of those cookies - consider if any are unnecessary or obsolete and can be removed
• determine whether any of the cookies fall within the 'strictly necessary' exception from the user consent requirement 
• decide whether there are particular cookies which collect personal information and are more privacy sensitive - the more intrusive the cookie the more likely you will need express consent or you will need to consider changing how you use it
• be aware of third party cookies which your website may allow
• decide on a method for obtaining the necessary user consent for the remaining cookies 

As the Directive is implemented in the various EU countries, the national privacy regulators will no doubt provide further guidance on how compliance can be achieved, as well as how the amendments to the e-Privacy Directive will be enforced and complaints about cookies dealt with. For example, as explained above, the UK Government's view is that there should be a 'phase-in' approach to the implementation of the changes required (and, to this end, the ICO has announced that website operators will have a year's grace in which to comply with the amended regulations).

New technologies are also likely to be developed that will allow users to opt-in to use of cookies in a way that has minimum impact on their website experience. And the industry may also develop its own measures for self-regulation.

Partner: Michael Whalley

Facebook, photos, journalists and privacy – some legal issues arising from the Ben Grubb affair

Posted by Veronica Scott & Kate Ballis

Image by cambodia4kidsorg

Ben Grubb’s arrest raises many questions about the law. In this post, we look at two of them:

• what rights do users have over information they upload to social networking sites?
• what can journalists publish? 

You may recall that Chris Gatford’s wife set her Facebook photo privacy settings to the highest level, but security expert Christian Heinrich was still able to access them without her permission. Heinrich demonstrated how he accessed her photos in order to demonstrate that not everything a person posts to a social networking site is secure. Grubb obtained the photo, and with legal advice, the Sydney Morning Herald (SMH) published the photo alongside Grubb’s article.

Who is looking at your photos?

While users may ‘own’ the information and content they post to social networking sites, once posted, that ownership may become meaningless. Users of social networking sites are responsible for deciding what they upload for sharing. The issue then becomes: who can see and use that information? Even though they may not read it, when a user registers with Facebook (or any other social networking website) they are bound by its terms and conditions (including its privacy policy). Facebook users are given the responsibility of monitoring their own privacy settings. Facebook provides privacy controls by which users can customise settings to control which people, websites and applications can see their information. The default setting is “everyone”.

Facebook’s Privacy Policy states that if the user leaves the default privacy settings as “everyone”, then the information becomes publicly available information, and may be accessed by everyone on the internet (not just Facebook users), be indexed by search engines, and imported, exported, distributed and redistributed by anyone without any privacy limitations in place.  Similarly, Facebook's Statement of Rights and Responsibilities provides that when you publish content or information using the "everyone" setting, it means that the user allows everyone (including people outside of Facebook) to access and use that information, and to associate it with them.  In copyright terms, the "everyone" setting appears to gives rise to a broad licence, granted by the user, to all of the world.  And it is not clear whether (and on what terms) this licence may be revoked.  Can, for example, a grocery chain in the Czech Republic use your family photo on a billboard advertisement?     

And even if the user deletes information from Facebook that was once viewable by “everyone”, the information may still be at large on the internet, beyond the user's practical control.

Who is using your information?

Monitoring privacy settings on all the types of information posted to social networking sites is the first step to protecting personal information. But, as Heinrich demonstrated, privacy settings are not necessarily watertight.

For instance, Facebook’s Privacy Policy provides that anyone can use copy and paste functionality to capture any information from Facebook. This means that even if the user’s content is set to private, anyone who gains access to a photo, for instance, could copy it to their computer and paste it into an email and send to anyone else on the internet (although this does raise its own legal issues, principally copyright). Even if a user deletes their account, copies of information may remain viewable elsewhere to the extent it has been shared with others, or was copied or stored by other users.

Who is liable for breaches?

Facebook disclaims responsibility for breaches of privacy. The Facebook Privacy Policy states:

... no security measures are perfect or impenetrable. We cannot control the actions of other users with whom you share your information. We cannot guarantee that only authorised persons will view your information. We cannot ensure that information you share on Facebook will not become publicly available.

In addition, Facebook reserves the right to disclose any user information pursuant to subpoenas, court orders, or other requests from companies, lawyers courts or government entities, if it has a good faith belief that the response is required by law in the relevant jurisdiction. This includes the email address of the Facebook user, their profile contact information, status update history, user photos (including those uploaded by other users), and private messages.

The Brocial Network

How does the Heinrich demonstration (and subsequent SMH publication) compare with the recent Brocial Network controversy?

The Brocial Network was a private Facebook group of more than 8,000 male members, set up two weeks ago to circulate and comment on photos of scantily clad women the men had copied from the Facebook profiles of their 'friends'. While the Facebook page has since been taken down, it raises related legal issues.

The photo of Gatford’s wife was arguably unlawfully obtained (in contravention of section 478.1 of the Commonwealth Criminal Code), as Heinrich “hacked” the Facebook site in order to obtain it.  But the men in the Brocial Network were Facebook “friends” with the women whose photos they have copied and posted on the network.

Facebook’s Privacy Policy states that users can use the copy and paste functions to capture any information from Facebook. The men in the Brocial Network group may have infringed the privacy rights of the women whose photos they had appropriated, but the property was not unlawfully obtained. Presently, there is no right to privacy at common law or under legislation in Australia. Companies like Facebook are subject to the Commonwealth Privacy Act 1988 which governs the use, disclosure, collection and storage of personal data of Australian residents by companies. The Privacy Act does not, however, apply to individuals, and there is also an exemption for the media (though there is a set of Privacy Standards which have been developed by the Australian Press Council which its member media organisations are committed to observe). You can read more about privacy rights in Australia in our post on the St Kilda schoolgirl saga.

Can journalists report on social media content?

So, if all this personal information is available from social networking sites (and the internet in general), what is in the public domain? And more importantly, what can journalists report on and what can news sources publish?

In February this year, the UK’s Press Complaints Commission (PCC) - which is similar to the Australian Press Complaints Commission - ruled that journalists can report on tweets.

The UK’s Daily Mail had reported on a woman’s tweets and she took her case to the PCC, claiming that her privacy had been violated. The woman insisted that her tweets were private, as she only had 700 followers. The PCC, however, held that 'the potential audience for the information is actually much larger than the 700 people who followed the complainant directly, not least because any message could easily be re-tweeted'.  In that case, the material posted by the complainant was open to public view, and the fact that the information was publicly accessible was key to the PCC's assessment as to whether or not the tweets were private. The PCC stated that the applicant should have restricted her privacy settings if she did not want such a large audience to view her tweets. The PCC's decision to allow publication was also based on the fact that they considered the tweets to be in the public interest. Although this was a UK decision (by a self-regulatory body) and does not carry any legal precedent for courts in Australia, in an online world that crosses jurisdictional barriers, decisions like this at least suggest the direction the Australian privacy regulator and courts might take.

The PCC's ruling raises the question of what information obtained from social networking sites journalists can report on. If the user has numerous “friends” or the information privacy settings are set to “everyone”, according Facebook’s Privacy Policy, this constitutes publicly available information.

Many media organisations have social media policies about how they use social networking sites for work and research. A clear policy should be in place to guide journalists as to how they report information from these sites.

What precautions should journalists take?

Even if journalists are reporting on social media content that is in the public domain, there are situations where private information retains its private nature, even after it has entered the public domain. For instance, even though the photo of Pippa Middleton, topless on a yacht in Spain, was published in newspapers (in the public domain), the photo still contains information of a private nature.

In a 2006 decision of the Victorian Supreme Court (in a case brought by the AFL and Players Association against a variety of media organisations), Justice Kellam held that, notwithstanding the disclosure of confidential information about three AFL players’ drug tests on online football forums and on a pay TV program known as “Fox Footy,” the confidential information (eg their names) had not entered the public domain, and therefore had not lost its confidential nature. In that case, the media was permanently restrained from publishing the identities of the three AFL players. Justice Kellam said that whether or not confidential material has entered the public domain is a matter of fact, determined by the accessibility of the information, the size of the audience, whether limited publication would become known to an 'ever-widening group of people', and whether the information referring to the confidential information is merely speculation or has some authority. If a journalist obtains confidential information from social networking sites, then they must consider these factors to determine whether, although available on the internet, the information has actually entered the public domain and whether there are other reasons why the law would allow them to publish information which is otherwise confidential.

Journalists reporting on social media content that is in the public domain must also be mindful of whether the material breaches any other laws, particularly defamation or copyright laws.

If a tweet or a statement made on Facebook is defamatory, and the journalist quotes it and the newspaper publishes it, then subject to the usual defences, the journalist and the newspaper could be liable for defamation.  Similarly, publishing a photo or other content that a user has posted to a social networking site may infringe that user's copyright. 

Finally, journalists should be aware that, under the new shield laws (which recently amended the Commonwealth Evidence Act 1995), in any Commonwealth legal proceedings, the law will favour the journalist not disclosing the identity of the sources of their information if the journalists have promised their source that they will not.  Journalists are also bound by their Code of Ethics to keep the identity of their sources confidential if they have agreed to do so. Importantly, these shield laws did not apply to Ben Grubb, who was "arrested" under Queensland law.

What can social networking site users do to protect their information?

Users of social networking sites should, in the first instance, actively monitor the privacy settings in respect of information they post to social networking sites. It is the user’s responsibility to do this, and if there is any disclosure of their private information, a decision about liability and their rights may hinge upon the fact that the user has not controlled their own privacy settings so as to prevent disclosure.

But, as discussed above, in a world of hackers, privacy settings are not watertight, and social networking sites such as Facebook make no promises that anything a user uploads will be secure and be prevented from entering the public domain. And whether lawful or not, the simple “copy, paste” or “save as” functions can quickly take a user’s content from a social networking site and publish it to the world. Aspiring artists, photographers, cinematographers, poets and musicians should also be wary of the fact that uploading content on Facebook means giving Facebook a non-exclusive license to use that copyright in any way.

So users should think carefully before uploading a photo or other content, posting their status, or even writing a private message to another user. As the law currently stands, once the information is on the internet, the user's practical ability to stem any damage arising from the dissemination of that information - and its use by third parties - may be very limited indeed.

Partner: David Poulton

How reporting on an IT security conference can get you arrested and your iPad confiscated

Posted by Veronica Scott & Amanda Smorgon

The arrest of Fairfax technology journalist Ben Grubb by Queensland Police highlights the confusion over the legal status of digital data, as well as the inadequacy of legal protection for online content and the freedom of the media to report on public events.

Grubb's arrest, which was reported in the Sydney Morning Herald, followed an article he wrote on a presentation at the AusCERT security conference in Brisbane on Sunday 15 May 2011 by security expert Christian Heinrich, in which Heinrich displayed a private photo he obtained from a Facebook page without being a 'friend' of the user.

In his presentation, Heinrich demonstrated that even where Facebook account settings are set at the highest level of privacy, information can still be extracted from Facebook's content delivery network (CDN). CDNs replicate content across the globe, so that when a user looks at a photo, it is retrieved from the closest computer server – rather that from the server on which the photo was originally posted.

Fairfax Media did not attend the conference session, but was given a private presentation of the security breach by Heinrich later in the day. Grubb then included the photo in an article published on smh.com.au about the security breaches. (The photo has since been removed.)

Grubb was still at the AusCERT conference when he was telephoned by Queensland Police requesting a meeting to discuss a complaint made by Chris Gatford (the husband of the woman whose Facebook photo Heinrich accessed and SMH published) about how the private account was accessed. In a pivotal move, Grubb requested to record the entire conversation on his iPhone – and later published the transcript!

In the interview, Detective Senior Constable Errol Coultis explained the complaint like this:

that [Gatford's] wife's Facebook account has been unlawfully accessed without either his or her permission. His MySpace account has been unlawfully accessed without his permission. And his Flickr account has been accessed without his permission. He has nominated a person by the name of Christian Heinrich who has done this. And he has done this and brought it into Queensland and displayed it for other people to view at a conference.

Why Grubb was questioned over this incident, rather than Heinrich himself, is rather strange. Although it was later discovered that Heinrich was on a plane at the time of questioning and had left the jurisdiction, the incident shows that the journalist is the easy target – a matter of shooting the messenger.

In fact, during his interview, Grubb repeatedly urged the police to contact Heinrich himself rather than continue asking him unanswerable questions:

... you're better off asking Christian these questions, I mean I've got his mobile number if you want. I seem to be the informant here rather than, you should be contacting Christian if you want to go straight to the horse's mouth.

Although Grubb did provide answers to the police questioning on how the photos were accessed, he did manage to dodges a few bullets:

Detective Coultis: But is the fact that the accounts are requiring a log-on and a password and that there are privacy settings within these individual websites to secure the photographs that are being placed or the content – it's not the photographs I suspect. Is that not an attempt to secure the property? Those particular items?

Grubb: I don’t need to answer that one. That's not my responsibility.

Detective Coultis: No. Ok. Alright. You don't think that that is the case?

Grubb: That's your job to figure out.

From reading the transcript, it seems that eventually the only reason for holding Grubb was to ascertain whether he had or has a copy of the Facebook photo that Heinrich gave him. Even after explaining that the image was publicly available on the SMH website, and that 'it's in the cloud', the police continued to press questions of how the photo was received (USB, CD or email). Grubb finally acknowledged that he had a personal copy of the file on 'an electronic device that he owns or can access' – namely, his iPad.

And this is where the case gets messy …

The police inform him that 'we believe Christian has committed an offence here, in fact a number of offences here in Queensland and we will be investigating that matter further'. They then ask Grubb a series of leading questions, which led him to reveal his source – 'Heinrich gave it to me'. And once Grubb confirms that he had kept notes of his conversation with Heinrich on his iPad, the police seize this as the grounds they need to place him under arrest for the purpose of retaining the device. Section 443 of the Police Powers and Responsibilities Act 2000 (Qld) states that

Police Officer May Search Person in Custody: a police officer may seize from the person anything found during the search that the police officer reasonably suspects may provide evidence of the commission of an offence.

The arrest and detention of the iPad are timely reminders about the importance of journalist/source confidentiality and the ability of police to seize journalist's property containing confidential information. The Commonwealth Evidence Act was amended in April 2011 so that:

If a journalist has promised an informant not to disclose the informant’s identity, neither the journalist nor his or her employer is compellable to answer any question or produce any document that would disclose the identity of the informant or enable that identity to be ascertained.

Although this incident is subject to Queensland law, and the Evidence Act amendment only covers Commonwealth proceedings, there is still huge potential for conflict with the new Shield Laws, which protect anyone who publishes information revealed to them by a source, from not having to disclose the identity of that source.

Grubb did inform police that 'as I think you'll probably understand, I'm a journalist and I write about maybe even you – and I talk with other people …  I talk with people and I have sources and I write notes'. The iPad was nevertheless retained.

Since being released from custody, Grubb said:

I feel like I have been unfairly targeted. Journalists must be able to report what they observe – that's what they've been doing for ages and so to see this kind of policing occurring is very alarming. I believed that, as a journalist, I had protections. But it seems not. And to lose a device that contains not only private but work-related information is also another seriously alarming development for a journalist.

What is also interesting about the incident is the use of Twitter by Queensland police – who originally tweeted:

We can find no reference to an arrest of @bengrubb. If anyone can provide more info, we can chase up further?

@The_Knuckle @bengrubb no, police talk to people for a range of reasons. We interview witnesses all the time

Police can legally seize material which may be evidence of a crime. It will be returned as soon as we can do so

And then later:

Our bad @bengrubb was arrested for questioning briefly Our tweet last night was based on information provided at the time Apologies #Auscert

And in a complete 360:

This morning’s tweet was simply an attempt to frankly and openly admit we got it wrong in our previous response, provide updated information, apologise for the mistake, and use the appropriate hashtag, all within 140 characters. Our earlier tweet responding to questions about the arrest were made after seeking information and clearance from the appropriate section. The information was provided in good faith as being accurate. When we became aware that the information we were provided was incorrect, we took steps to immediately correct it at the first available opportunity, as we always do in cases where we inadvertently provide incorrect information. It was relating simply to our previous tweet, not the arrest, and was no way intended to be flippant or unprofessional – just a mea culpa.

At the time of publishing this blog, Heinrich still hadn’t been questioned, arrested or charged, and Grubb still hadn't received his iPad back! We will be updating this as the matter progresses and looking, in more detail, at the various legal issues this bizarre and worrying incident has raised.

Partner: Paul Kallenbach

Super injunctions, privacy and the media

Posted by Marina Cornish

Image:
'Andrew Marr super injunction'
by ssoosay

English privacy law and the effectiveness of 'super injunctions' have been brought into question recently.

What are super injunctions?

Super injunctions are injunctions granted by the court that place an indefinite ban on the reporting of a legal dispute; not only of the parties involved but of the fact that such restrictions exist. Super injunctions are not against any one media organisation or person but against everyone.

The genesis of the super injunction lies in the European Convention on Human Rights, which at Article 8 states 'everyone has the right to respect for his private and family life, his home and his correspondence'. This instrument was codified in English law under the 1998 Human Rights Act. The reasoning behind super injunctions is that if a court has ruled that a matter should not be in the public domain, the reporting of that ruling will itself make the matter public and thus defeat the purpose of the injunction.

Who is being granted super injunctions?

It has been reported in the last few weeks that the most common applicants for super injunctions are high profile people seeking to prevent their (often extra-marital) indiscretions from reaching the press. The reported price of £100,000 to obtain such an injunction means that this is an instrument of damage control available only to those with significant financial resources.

In mid-April, a BBC journalist, Andrew Marr, revealed that he had taken out a super injunction against a woman with whom he believed he had fathered a child following an extra-marital affair. Marr admitted that he had abandoned the injunction after becoming embarrassed by the hypocrisy of obtaining a gagging order against members of his own profession, and concerns that the use of super injunctions were 'running out of control'. Due to their very nature, it is not known how many super injunctions are currently in place; however the Guardian has reported being served with no less than twelve so far in 2011 alone, while the BBC stated that it believed thirty or more are currently in place.

Twitter and contempt of court

Controversy erupted when a Twitter account called 'superinjunctions' was created which purported to reveal the identities of several celebrities that had taken out super injunctions, along with the reasons for the injunctions. Some of the public figures named have strenuously denied the allegations made against them on the site; it was reported last week, however, that a well-known actor was prompted to admit a dalliance with a prostitute to his wife following his identity being revealed on Twitter.

Although the relevant information has now been redacted from the account's feed, news outlets across the world have been freely reporting the information published on the feed, prompting questions as to the validity and effectiveness of purportedly far-reaching injunctions in an age where information can be broadcast instantaneously across international borders by anonymous sources.

The 'superinjunction' account holder is arguably in contempt of court on several counts, as is anyone who 'retweets' (ie re-posts) any tweets that repeat restricted information. However, the logistical difficulty of tracking down each offender creates complications. Although Twitter, in its privacy policy, reserves the right to disclose the personal information of account holders if it is reasonably necessary to comply with a law, regulation or legal request, it has so far maintained silence on the issue, beyond stating that it 'doesn't comment on individual accounts'.

Twitter's terms of service (which all Twitter users are taken to have agreed to and be bound by) are governed by Californian law and state that all claims brought in connection with Twitter must be brought solely in that jurisdiction. The Twitter terms include a limitation of liability in favour of Twitter for, amongst other things, any conduct or content of any user, including any defamatory, offensive or illegal conduct. The terms also provide that users may not utilise the service for any unlawful purpose or for the promotion of illegal activities, and that international users agree to comply with all local laws regarding online conduct and acceptable conduct.

It seems clear that any Twitter account holder who breaches a super injunction has also breached Twitter's terms of service; yet it remains to be seen whether Twitter will intervene, either by cancelling the offending users' accounts or handing the identity information of the 'superinjunction' account holder to the English courts.

Effects on English privacy law

In a country renowned for the ferocity of its press, and in the wake of the Daily Mail phone tapping scandal, a battle is being waged between the papers and the people who grace their front pages.  Former Formula One chief Max Mosley recently had a case rejected by the European Court of Human Rights (ECHR) in which he argued that newspapers and other media outlets should pre-notify an individual who was the subject of a story that impeded on that person's privacy. The ECHR described the effect of such a pre-notification requirement as 'chilling'. Mosley has subsequently stated that he intends to appeal the decision to the Grand Chamber of the European Court of Human Rights.

David Cameron has argued that it is Parliament, not judges, who should decide on the balance between press freedom and privacy.  Whether it is through legislation or the courts, the past few weeks have shown that privacy laws need to be updated to address the formidable issues raised by new media.

Partner: Paul Kallenbach

US judge rejects Google Books settlement

Posted by Peter Kearney

The controversial settlement between Google and representatives of authors and publishers has been rejected by US Federal Court Judge Denny Chin after a contentious two year debate, stalling Google's plans to create the world's largest digital library, and sparking further criticism of the copyright regime's application to the digital era.

What happened?

In 2004, Google began a mass book-scanning project which involved scanning and indexing texts to be made available for online searching, allowing users to view 'snippets' in its digital library. The Authors Guild and the Association of American Publishers subsequently brought a class action in 2005 for copyright infringement.

Google argued a defence of fair use under §107 of the US Copyright Act, which allows copying without permission from the copyright owner for a limited and 'transformative' purpose, such as for commentary, criticism or parody.

In 2009, after a revision of an original proposed settlement, the parties executed an amended settlement agreement (ASA).

The settlement agreement

The terms of what Google called the 'groundbreaking' agreement included the following:

• Google is authorised to continue to scan works, sell subscriptions to the database, sell online access to individual books, and sell advertising on pages from books;
• Google would pay to copyright holders 63 per cent of revenues received from these uses;
• Google would pay out over $45 million to copyright holders whose works have already been digitised.

Importantly, the ASA distinguished between in-print (commercially available) and out-of-print (not commercially available) books:

• Prior express authorisation would be required before Google could display in-print books.
• Prior express authorisation would not be required before Google could display out-of-print books, but a copyright holder could direct Google to stop. Thus, copyright holders would be required to 'opt-out'.

Judge Chin's decision

US law requires court approval for the settlement of a class action, which is granted only if the court determines that the settlement is 'fair, adequate, and reasonable'.

In denying the motion for final approval, Judge Chin acknowledged the cultural, intellectual and educational benefits to be derived from a universal digital library, including the accessibility of books and the generation of new audiences. However, he nevertheless concluded:

… the ASA would simply go too far. It would permit this class action ... to implement a forward-looking business arrangement that would grant Google significant rights to exploit entire books, without permission of the copyright owners.  Indeed, the ASA would give Google a significant advantage over competitors, rewarding it for engaging in wholesale copying of copyrighted works without permission, while releasing claims well beyond those presented in the case.

The 'opt-out' clause

Judge Chin found the 'opt-out' clause described above to be troubling, particularly with regard to 'orphan works' (that is, where the owner of a work cannot be identified or located). As the onus was being placed on copyright holders to come forward to protect their rights, the ASA would, in effect, transfer copyrights without the consent of the owners in violation of US copyright law.

Furthermore, the ASA would give Google a 'de facto monopoly over unclaimed works' and potential control over the search market.

Judge Chin noted that guardianship over 'orphan books' and the adaptation of copyright laws in response to changes in technology was a matter best left to Congress.

'Forward-looking business arrangement'

The ASA would, according to His Honour, release Google from claims 'well beyond those contemplated by the pleadings'. Although the original challenge was to the use of 'snippets', the ASA would grant Google the right to sell full access to copyrighted works, thus implementing a 'forward-looking business arrangement' that went far beyond the dispute before the court.

Other concerns

Judge Chin also concluded that the class plaintiffs did not adequately represent the class to which they belonged, and that there were privacy concerns about Google's ability to accumulate and disclose information about the reading behaviour of its users (although he noted that privacy protections could be addressed in a further revision of the ASA).

Judge Chin's full 48 page decision can be found here.

What now?

It remains to be seen where Google will go from here. Apart from appealing the court's decision, Google could attempt to scale down the settlement; as Judge Chin noted, many of the objections to the ASA could be effectively addressed if the ASA were converted to an 'opt-in' settlement. However this would remove 'orphan books' from the database and therefore lessen the value of the library significantly.

Should Google choose to litigate its original fair use defence, the display uses of the works would once again be restricted to 'snippets' as opposed to the sale of entire books.

Interestingly, had the case occurred in Australia, Google would be on even more unstable ground. Unlike the expansive US definition of fair use, the Australian 'fair dealing' defences are much narrower, as they are limited to certain specific purposes, principally, research or study, criticism or review, parody or satire, reporting news and the giving of professional advice.

Implications for Australian copyright owners

The ASA changed the definition of 'books' covered by the settlement to exclude many foreign works in response to numerous concerns raised by international entities. However, the ASA continued to apply to works published in the UK, Canada and Australia up to 5 January 2009, and works from other countries that were registered with the US Copyright Office by that date.

Although the ASA has been rejected, the decision left open the possibility of a revised settlement and provided guidance as to the modifications required for its approval. Therefore, should the parties revise the provisions of the ASA to create an 'opt-in' settlement and address privacy concerns, it is possible that Australian works may be included. However, as a result of Judge Chin's ruling, it is unlikely that Australian works, including 'orphan books', will be subject to the involuntary transfer of rights in relation to those works.

No matter what the outcome, the case has certainly emphasised the inadequacy of current copyright law. The value of a universal digital library was never in question; what this case (and others, such as iiNet) expose is the need for legislatures to adapt copyright regimes to these rapid and profound changes in technology.

Partner: Paul Kallenbach