Posted by Nicholas Petrie
On 23 September 2011 the Commonwealth government released an issues paper (issues paper) seeking views as to whether it should create a right for individuals to seek redress from another person who seriously invades their privacy.
The issues paper follows an extensive 28-month inquiry into privacy law by the Australian Law Reform Commission (ALRC), which tabled its Report in Parliament in August 2008. One of the ALRC recommendations was that a statutory cause of action be enacted for serious invasions of the privacy of natural persons. Since then, the Victorian and New South Wales Law Reform Commissions have recommended substantially similar legislation be enacted, although the Victorian report recommended two causes of action – for both misuse of information and interference with seclusion.
The publication of this issues paper is sure to reignite debate about the need or otherwise for a statutory cause of action for serious invasions of privacy in Australia. However, it does not substantially add to the debate. Rather, the issues paper summarises the key findings in the 2008 ALRC Report and its Victorian and New South Wales counterparts.
The issues paper notes that there is currently no statutory cause of action and ‘scant common law’ for invasion of privacy in Australia. This is contrasted with the position in the United States, the European Union, the United Kingdom, Canada and New Zealand, which each have varying degrees of privacy protection under common law or statute.
Arguments for and against the need of a statutory cause of action for serious invasion of privacy in Australia are canvassed in the issues paper. However, the paper tends to support the notion that development in the law would be best served by legislative change, rather than incrementally under the common law.
The issues paper considers how a new cause of action should operate, if it were enacted. For example, the paper cites wide support for a ‘reasonable expectation of privacy’ requirement in any new privacy cause of action. Further elements to such a cause of action, including an objective test of seriousness or offensiveness, are also discussed in the paper.
A range of other matters are raised in the issues paper, such as the interaction between a new cause of action for privacy and other public interests, including freedom of expression; the availability of class actions under such a cause of action; and potential defences and remedies that would be available.
Interestingly, the issues paper raises the possibility of an ‘offer of amends’ process, that could be used as an alternative to litigation under a new cause of action.
The focus of this issues paper is the form that a new statutory cause of action should take, if it were enacted; rather than on the actual need for legislation, in light of various protections of privacy that currently exist in Australia under common law and statute.
The central question of whether new legislation to protect privacy is necessary should not be lost in the ensuing debate, particularly as the High Court of Australia has not ruled out the existence of a common law cause of action for invasion of privacy. To the contrary, in Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2001) 208 CLR 199, the High Court left that question open to be determined. Furthermore, the continued expansion of the 'breach of confidence' doctrine (as seen in cases such as Giller v Procopets [2008] VSCA 236) has led many commentators to question the need for a separate privacy tort. There are arguments that the development of Australian breach of confidence has resulted in outcomes not all that different to those achieved via privacy developments in the UK and New Zealand. These arguments are not adequately addressed in the government's issues paper.
Some may also consider it surprising that the government has chosen to now advance its consideration of a statutory privacy tort, when it has not yet introduced the first suite of amendments to the Privacy Act 1988 which was foreshadowed following the ALRC Report in 2008. The government has also not responded to a Senate Committee report into online privacy, which made a series of recommendations in April 2011, concerning the collection and use of personal information via the Internet, including the potential erosion of the 'small business' exemption under the Privacy Act.[1]
The Department of Premier and Cabinet has requested responses to the issues paper by 4 November 2011. Responses can be submitted by email to privacycauseofaction@pmc.gov.au.
Partner: Charles Alexander
[1] The report by the Senate Standing Committee on Environment, Communications and the Arts: The adequacy of protections for the privacy of Australians online, did recommend that the government adopt the ALRC recommendation for a statutory tort of privacy, but the government is yet to respond to any of its other recommendations, which arguably have a more immediate relevance to the proposed amendments to the Privacy Act which have already been announced (http://www.aph.gov.au/senate/committee/eca_ctte/online_privacy/info.htm).
26 September 2011
23 September 2011
Trading Post (but not Google) advertising misleading or deceptive
Posted by Simone Knight
The Federal Court has found that Trading Post Australia Pty Ltd (Trading Post) engaged in misleading or deceptive conduct by publishing an advertisement on Google's search engine website that linked searches for the words 'Kloster Ford' to Trading Post's website.
In ACCC v Trading Post Australia [2011] FCA 1086, the Federal Court dismissed allegations by the ACCC that Google engaged in practices likely to mislead consumers. The ACCC had alleged that by failing to adequately distinguish advertisements from search results, Google had engaged in misleading or deceptive conduct.
Google provides an advertising service known as a 'sponsored link', which advertises a link to a paying customer's website in response to particular word searches. Trading Post paid Google for a sponsored link to its website for the words 'Kloster Ford'. Kloster Ford is a car dealership in Newcastle that competes with Trading Post for car sales.
The Federal Court said that the Kloster Ford advertisement falsely represented that Trading Post was associated or affiliated with Kloster Ford and that Trading Post's website contained information regarding Kloster Ford. Accordingly, Trading Post contravened sections 52 and 53 of the Trade Practices Act.
The Court found, however, that Google had not engaged in misleading or deceptive conduct as it had merely communicated the representations made by Trading Post without adopting or endorsing those representations.
Partner: Geoff Carter
The Federal Court has found that Trading Post Australia Pty Ltd (Trading Post) engaged in misleading or deceptive conduct by publishing an advertisement on Google's search engine website that linked searches for the words 'Kloster Ford' to Trading Post's website.
In ACCC v Trading Post Australia [2011] FCA 1086, the Federal Court dismissed allegations by the ACCC that Google engaged in practices likely to mislead consumers. The ACCC had alleged that by failing to adequately distinguish advertisements from search results, Google had engaged in misleading or deceptive conduct.
Google provides an advertising service known as a 'sponsored link', which advertises a link to a paying customer's website in response to particular word searches. Trading Post paid Google for a sponsored link to its website for the words 'Kloster Ford'. Kloster Ford is a car dealership in Newcastle that competes with Trading Post for car sales.
The Federal Court said that the Kloster Ford advertisement falsely represented that Trading Post was associated or affiliated with Kloster Ford and that Trading Post's website contained information regarding Kloster Ford. Accordingly, Trading Post contravened sections 52 and 53 of the Trade Practices Act.
The Court found, however, that Google had not engaged in misleading or deceptive conduct as it had merely communicated the representations made by Trading Post without adopting or endorsing those representations.
Partner: Geoff Carter
20 September 2011
BTW, UR SACKED
Posted by Rory Jolley
Fair Work Australia has upheld the dismissal of a worker in circumstances where the dismissal was communicated by way of text message.
Brett Martin worked for DecoGlaze Pty Ltd from September 2006 until his dismissal in May 2011. In February 2011, he had been promoted to the position of a spray painter/foreman.
DecoGlaze Pty Ltd manufactures glass splash backs including for kitchens. To help the paint adhere to glass, an additive, Silane is typically added to the paint. It was Mr Martin's job to maintain stock levels of Silane and, in March 2011, he noticed that stocks were getting low. He ordered more, but there was a delay in receiving the additive.
Mr Martin's evidence was that he was left with a tough decision to make. He either had to cease production on those jobs which required the additive or continue without adding the Silane. Unfortunately for him, and for his employer, he chose the latter option.
Some weeks later, on 13 May 2011, Mr Martin was about to fly out of Australia on a holiday when he received a telephone text message from his managing director, Jason Hedges. Mr Hedges chastised Mr Martin for not using Silane and referred to several jobs coming back defective. A subsequent text message from Mr Hedges referred to $74,000 needing to be outlaid to replace defective painted glass.
And then, a third text message was sent informing the Applicant that he had been instantly dismissed.
Mr Martin claimed that he had not given him an opportunity to defend himself, and raised the inappropriateness of being terminated whilst on leave and by text message.
On 15 September 2011, Fair Work Australia found there was a valid reason for the termination, namely the misconduct of Mr Martin. As to the novel use of technology to dismiss Mr Martin, Commissioner Raffaelli stated:
As always, the facts of these cases are important. We have summarised them here. No doubt there is more to the story.
The point of this post is to note yet another way in which modern technology is impacting upon the employment relationship.
Partner: Michael Tehan
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| Image courtesy of edans |
Fair Work Australia has upheld the dismissal of a worker in circumstances where the dismissal was communicated by way of text message.
Brett Martin worked for DecoGlaze Pty Ltd from September 2006 until his dismissal in May 2011. In February 2011, he had been promoted to the position of a spray painter/foreman.
DecoGlaze Pty Ltd manufactures glass splash backs including for kitchens. To help the paint adhere to glass, an additive, Silane is typically added to the paint. It was Mr Martin's job to maintain stock levels of Silane and, in March 2011, he noticed that stocks were getting low. He ordered more, but there was a delay in receiving the additive.
Mr Martin's evidence was that he was left with a tough decision to make. He either had to cease production on those jobs which required the additive or continue without adding the Silane. Unfortunately for him, and for his employer, he chose the latter option.
Some weeks later, on 13 May 2011, Mr Martin was about to fly out of Australia on a holiday when he received a telephone text message from his managing director, Jason Hedges. Mr Hedges chastised Mr Martin for not using Silane and referred to several jobs coming back defective. A subsequent text message from Mr Hedges referred to $74,000 needing to be outlaid to replace defective painted glass.
And then, a third text message was sent informing the Applicant that he had been instantly dismissed.
Mr Martin claimed that he had not given him an opportunity to defend himself, and raised the inappropriateness of being terminated whilst on leave and by text message.
On 15 September 2011, Fair Work Australia found there was a valid reason for the termination, namely the misconduct of Mr Martin. As to the novel use of technology to dismiss Mr Martin, Commissioner Raffaelli stated:
In most situations, termination of employment by telephone texting is not appropriate. However, in this case I am not prepared to be too critical of [DecoGlaze Pty Ltd]. Indeed, even if there had been a face to face meeting, the outcome would probably have been the same.In our view, the termination of an employee by way of text message would almost always be unreasonable, bearing in mind the personal nature of the employment relationship. The formalities of the employment relationship – the desirability of a written contract (short if necessary) setting out the key terms – need to be matched at the end of the relationship with a degree of process.
As always, the facts of these cases are important. We have summarised them here. No doubt there is more to the story.
The point of this post is to note yet another way in which modern technology is impacting upon the employment relationship.
Partner: Michael Tehan
15 September 2011
ACIP releases Review of the Innovation Patent System
Posted by Christina Ilinkovski
On 17 August 2011, the Advisory Council on Intellectual Property (ACIP) released a 'Review of the Innovation Patent System' (the Review) to assess the effectiveness of the innovation patent system in stimulating innovation by small to medium business enterprises in Australia. The Review also sets out a number of perceived problems with the innovation patent system and invites comments from interested stakeholders.
The innovation patent system was designed to provide patent protection for lower-level inventions that did not meet the 'inventive step' threshold required for a standard patent and could not be protected as a registered design. An innovation patent must satisfy a lower 'innovative step' threshold (as opposed to an 'inventive step'), namely that the difference between the claimed invention and what was previously known makes a substantial contribution to the working of the invention. Innovation patents are granted following a formalities check (with no substantive examination prior to grant required) and provide protection for a maximum of eight years (as opposed to 20 years for a standard patent). However, an innovation patent must undergo substantive examination and obtain certification before being enforced - this can be requested by the patentee or a third party or commenced at the Commissioner of Patent's decision.
It was hoped that this process would provide patent owners with a right that is quick and cheap to obtain, is relatively simple and lasts for a sufficient time to encourage investment. The Review notes that this is the first comprehensive review to assess whether the objectives of the system remain appropriate for Australia today and in the future.
The Review identifies a number of concerns with the innovation patent system, including:
(a) whether the innovation patent system remains relevant to Australia and continues to meet its original objectives;
(b) whether innovation patents are too easy to obtain and overly difficult to invalidate;
(c) that the innovation patent system is overly generous: this is based on its lower inventive threshold (particularly in light of the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (the IP Bill), which proposes to raise the degree of inventiveness required for standard patents to match the standards set by Australia's major trading partners) and the availability of identical remedies for infringement as a standard patent. Further, an innovation patent may be in existence for several years before it is examined and certified (and patentees may deliberately seek to delay this). This causes uncertainty in the market as other parties wishing to enter the market may find it difficult to determine whether they would infringe a valid claim of an innovation patent. The Review therefore questions whether the remedies for infringement of an innovation patent are appropriate;
(d) the issue of a significant proportion of applicants (particularly large corporate companies) using an innovation patent as a form of quick interim protection while they also pursue a standard patent. This arguably undermines the objective of providing for SMEs protection for lower level inventions;
(e) the abuse of the divisional application process, whereby applicants file a divisional innovation patent based on a standard patent application. This enables patentees to 'fast track' the grant of a certified innovation patent and subsequently, to commence infringement proceedings. This mechanism avoids the pre-grant opposition period (available in respect of standard patents) and may result in a competitor being driven out of the market before the merits of the standard patent have been properly assessed; and
(f) the issue of 'evergreening', whereby patentees seek to extend the period of patent protection beyond the initial patent term by applying for secondary patents (often covering only minor incremental developments). The Review considers that this practice has been most prevalent in the pharmaceutical industry. As a result, it proposes to exclude innovation patents from covering chemical or pharmaceutical compositions.
Currently, the pending IP Bill proposes to amend the Patents Act 1990, including certain provisions relating to the innovation patent system. These proposals include:
ACIP is seeking written submissions on the Review by 14 October 2011. ACIP will then undertake further consultation with key stakeholders to develop reform proposals to address the findings of the Review.Click here to access the Review by ACIP.
Partner: Charles Alexander
On 17 August 2011, the Advisory Council on Intellectual Property (ACIP) released a 'Review of the Innovation Patent System' (the Review) to assess the effectiveness of the innovation patent system in stimulating innovation by small to medium business enterprises in Australia. The Review also sets out a number of perceived problems with the innovation patent system and invites comments from interested stakeholders.
The innovation patent system was designed to provide patent protection for lower-level inventions that did not meet the 'inventive step' threshold required for a standard patent and could not be protected as a registered design. An innovation patent must satisfy a lower 'innovative step' threshold (as opposed to an 'inventive step'), namely that the difference between the claimed invention and what was previously known makes a substantial contribution to the working of the invention. Innovation patents are granted following a formalities check (with no substantive examination prior to grant required) and provide protection for a maximum of eight years (as opposed to 20 years for a standard patent). However, an innovation patent must undergo substantive examination and obtain certification before being enforced - this can be requested by the patentee or a third party or commenced at the Commissioner of Patent's decision.
It was hoped that this process would provide patent owners with a right that is quick and cheap to obtain, is relatively simple and lasts for a sufficient time to encourage investment. The Review notes that this is the first comprehensive review to assess whether the objectives of the system remain appropriate for Australia today and in the future.
The Review identifies a number of concerns with the innovation patent system, including:
(a) whether the innovation patent system remains relevant to Australia and continues to meet its original objectives;
(b) whether innovation patents are too easy to obtain and overly difficult to invalidate;
(c) that the innovation patent system is overly generous: this is based on its lower inventive threshold (particularly in light of the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (the IP Bill), which proposes to raise the degree of inventiveness required for standard patents to match the standards set by Australia's major trading partners) and the availability of identical remedies for infringement as a standard patent. Further, an innovation patent may be in existence for several years before it is examined and certified (and patentees may deliberately seek to delay this). This causes uncertainty in the market as other parties wishing to enter the market may find it difficult to determine whether they would infringe a valid claim of an innovation patent. The Review therefore questions whether the remedies for infringement of an innovation patent are appropriate;
(d) the issue of a significant proportion of applicants (particularly large corporate companies) using an innovation patent as a form of quick interim protection while they also pursue a standard patent. This arguably undermines the objective of providing for SMEs protection for lower level inventions;
(e) the abuse of the divisional application process, whereby applicants file a divisional innovation patent based on a standard patent application. This enables patentees to 'fast track' the grant of a certified innovation patent and subsequently, to commence infringement proceedings. This mechanism avoids the pre-grant opposition period (available in respect of standard patents) and may result in a competitor being driven out of the market before the merits of the standard patent have been properly assessed; and
(f) the issue of 'evergreening', whereby patentees seek to extend the period of patent protection beyond the initial patent term by applying for secondary patents (often covering only minor incremental developments). The Review considers that this practice has been most prevalent in the pharmaceutical industry. As a result, it proposes to exclude innovation patents from covering chemical or pharmaceutical compositions.
Currently, the pending IP Bill proposes to amend the Patents Act 1990, including certain provisions relating to the innovation patent system. These proposals include:
- expanding the possible grounds for revoking an innovation patent during re-examination;
- expanding the common general knowledge (CGK) against which innovative step is assessed, by removing the requirement that CGK is in Australia only;
- permitting the Commissioner of Patents to consider information made publicly available through the doing of an act when assessing both novelty and innovative step; and
- introducing a 'balance of probabilities' type test when the Commissioner of Patents decides whether to certify or revoke a granted innovation patent.
ACIP is seeking written submissions on the Review by 14 October 2011. ACIP will then undertake further consultation with key stakeholders to develop reform proposals to address the findings of the Review.Click here to access the Review by ACIP.
Partner: Charles Alexander
09 September 2011
Born in the USA: recording artists in America fight for their copyright termination rights
Posted by Mark Adair
It's the hot sticky summer of 1978 in New Jersey. Standing on the boardwalk is a young, hungry 20-something guitar hero, singing his songs about love and fast cars and the raging fire of youth. A major record label comes along and offers him a cash advance to record an album – what does he do? Of course he signs the record contract. Even if it’s a bad deal. He's hungry for fame and has no leverage or negotiating skills.
Copyright termination rights in America
Luckily for such naïve recording artists, s203 of the US Copyright Act of 1976 (Act) affords a way to regain copyright in both sound recordings and authorship of songs registered on or after 1 January 1978 through what are known as 'copyright termination rights'. Copyright termination rights are an equitable remedy enabling an author to terminate previous grants of copyright and renegotiate prior contracts to more accurately reflect the true value of the work, notwithstanding any prior agreement to the contrary.
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| Image courtesy of notsogoodphotography |
Copyright termination rights in America
Luckily for such naïve recording artists, s203 of the US Copyright Act of 1976 (Act) affords a way to regain copyright in both sound recordings and authorship of songs registered on or after 1 January 1978 through what are known as 'copyright termination rights'. Copyright termination rights are an equitable remedy enabling an author to terminate previous grants of copyright and renegotiate prior contracts to more accurately reflect the true value of the work, notwithstanding any prior agreement to the contrary.
08 September 2011
Copyright (Infringing File Sharing) Amendment Act commences
Posted by Christina Ilinkovski
The New Zealand Copyright (Infringing File Sharing) Amendment Act (Act) commenced operation on 1 September 2011 (except that it will not apply to services provided by a cellular mobile network until 1 October 2013). The Act introduces a new 'three notice' regime to deal with online copyright infringements, in particular illegal file sharing (both uploading and downloading infringing materials). It also extends the jurisdiction of the New Zealand Copyright Tribunal to provide a low-cost means of resolving disputes where an alleged infringer ignores the three notices. This remains an unsettled area of law in Australia – with the 2:1 split decision of the Federal Court in the iiNet case (discussed below) currently on appeal to the High Court of Australia.
The Act amends the New Zealand Copyright Act 1994 in response to widespread concerns as to which internet service providers (ISPs) would be covered by the requirements. The Act introduces new requirements for a specific type of ISP, namely Internet protocol address providers (IPAPs). An IPAP is defined under the Act as:
'a person that operates a business that, other than as an incidental feature of its main business activities:
(i) offers the transmission, routing, and providing of connections for digital online communications, between or among points specified by a user, of material of the user's choosing;
(ii) allocates IP addresses to its account holders;
(iii) charges its account holders for its services; and
(iv) is not primarily operated to cater for transient users'.
The Act sets out a process by which illegal file sharing by users of IPAPs can be detected, brought to the attention of the user and subsequently handled if the user ignores that notification. Copyright owners may notify an IPAP of an IP address where they suspect an alleged infringement of copyright has occurred by file sharing. File sharing is defined in the Act as being where 'material is uploaded via, or downloaded from, the Internet using an application or network that enables the simultaneous sharing of material between multiple users' (uploading and downloading may, but need not, occur at the same time).
Once an IPAP receives a notification, it is required to co-operate with the rights holder by:
1. matching the IP address with the related account holder; and
2. within seven days of receiving the notification, issuing a detection notice (see below) to inform the account holder of the alleged infringement.
Three Notice Regime
Three types of notice can be issued successively to account holders:
1. Detection notice: (current for nine months) issued the first time the IPAP matches the account holder with an IP address at which an alleged infringement has occurred.
2. Warning notice: (current for nine months) issued when an IPAP matches the account holder with an IP address at which an alleged infringement has occurred and the infringement occurred 28 days after the date of a detection notice and that detection notice is still current.
3. Enforcement notice: (current for 35 days) issued when an IPAP matches the account holder with an IP address at which an alleged infringement has occurred and the infringement occurred 28 days after the date of a warning notice and that warning notice is still current.
Notices may be challenged by Account Holders
It is possible for an account holder to challenge a notice by notifying the IPAP of the challenge within 14 days of the issue of the notice. The IPAP is then required to send the challenge to the copyright owner who can either reject or accept the challenge as follows:
(i) If the rights owner rejects the challenge, it must send a response to the IPAP setting out its reasons for doing so within 28 days of the date of the infringement notice. The IPAP is required to send this to the account holder. If a challenge is rejected, it may be raised again by the account holder if the copyright owner commences enforcement proceedings.
(ii) If the rights owner accepts the challenge, or does not respond within the required 28 days, the notice is cancelled and treated as if it had not been issued. For warning and enforcement notices, if the challenge relates only to an infringement that was not an infringement that triggered a notice, the notice is not cancelled but the infringement is treated as if it were not included in the notice.
Enforcement and Remedies
If an enforcement notice has been issued (that is, three notices have been given) and the account holder continues to infringe, the copyright owner is entitled to take an enforcement action to the New Zealand Copyright Tribunal. The Tribunal has the power to award up to NZ$15,000 in damages. Account holders can make submissions to the Tribunal and the Tribunal can decline to make an order for damages if satisfied this would be 'manifestly unjust' to an account holder.
At this stage, proposed provisions to allow a District Court to suspend an internet account for up to six months have not been brought into force. This provision will be reconsidered in 2013 and only brought into force if the three notice process and remedies available from the Copyright Tribunal prove to be ineffective.
The Act has been the subject of both positive appraisal and criticism in New Zealand. Rights holders will welcome the ability to challenge infringement and it is expected that there will be prompt action taken. As stated by New Zealand Commerce Minister Simon Power, 'this legislation will discourage illegal file sharing and provide more effective measures to help our creative industries enforce their copyright'.
However, there has also been continued opposition to the Act. One of the disputed aspects of the Act has centred on which party should be responsible to pay for the costs of sending the infringement notices to account holders: copyright owners or internet users. The Act provides that an IPAP may charge a copyright owner for performing the functions required of the IPAP.
The liability of ISPs for the actions of their subscribers remains a live issue in Australia. In a spilt decision, the Federal Court of Australia in Roadshow Films v iiNet Limited [2001] FCAFC 23 recently found in favour of rights holders – ie. ISPs can be obliged to take action against their customers. At the date of writing this article, this decision is on appeal to the High Court of Australia. Therefore the success of the new New Zealand regime in dealing with illegal file sharing, particularly the three notice process, will be closely watched in Australia.
Partner: Charles Alexander
The New Zealand Copyright (Infringing File Sharing) Amendment Act (Act) commenced operation on 1 September 2011 (except that it will not apply to services provided by a cellular mobile network until 1 October 2013). The Act introduces a new 'three notice' regime to deal with online copyright infringements, in particular illegal file sharing (both uploading and downloading infringing materials). It also extends the jurisdiction of the New Zealand Copyright Tribunal to provide a low-cost means of resolving disputes where an alleged infringer ignores the three notices. This remains an unsettled area of law in Australia – with the 2:1 split decision of the Federal Court in the iiNet case (discussed below) currently on appeal to the High Court of Australia.
The Act amends the New Zealand Copyright Act 1994 in response to widespread concerns as to which internet service providers (ISPs) would be covered by the requirements. The Act introduces new requirements for a specific type of ISP, namely Internet protocol address providers (IPAPs). An IPAP is defined under the Act as:
'a person that operates a business that, other than as an incidental feature of its main business activities:
(i) offers the transmission, routing, and providing of connections for digital online communications, between or among points specified by a user, of material of the user's choosing;
(ii) allocates IP addresses to its account holders;
(iii) charges its account holders for its services; and
(iv) is not primarily operated to cater for transient users'.
The Act sets out a process by which illegal file sharing by users of IPAPs can be detected, brought to the attention of the user and subsequently handled if the user ignores that notification. Copyright owners may notify an IPAP of an IP address where they suspect an alleged infringement of copyright has occurred by file sharing. File sharing is defined in the Act as being where 'material is uploaded via, or downloaded from, the Internet using an application or network that enables the simultaneous sharing of material between multiple users' (uploading and downloading may, but need not, occur at the same time).
Once an IPAP receives a notification, it is required to co-operate with the rights holder by:
1. matching the IP address with the related account holder; and
2. within seven days of receiving the notification, issuing a detection notice (see below) to inform the account holder of the alleged infringement.
Three Notice Regime
Three types of notice can be issued successively to account holders:
1. Detection notice: (current for nine months) issued the first time the IPAP matches the account holder with an IP address at which an alleged infringement has occurred.
2. Warning notice: (current for nine months) issued when an IPAP matches the account holder with an IP address at which an alleged infringement has occurred and the infringement occurred 28 days after the date of a detection notice and that detection notice is still current.
3. Enforcement notice: (current for 35 days) issued when an IPAP matches the account holder with an IP address at which an alleged infringement has occurred and the infringement occurred 28 days after the date of a warning notice and that warning notice is still current.
Notices may be challenged by Account Holders
It is possible for an account holder to challenge a notice by notifying the IPAP of the challenge within 14 days of the issue of the notice. The IPAP is then required to send the challenge to the copyright owner who can either reject or accept the challenge as follows:
(i) If the rights owner rejects the challenge, it must send a response to the IPAP setting out its reasons for doing so within 28 days of the date of the infringement notice. The IPAP is required to send this to the account holder. If a challenge is rejected, it may be raised again by the account holder if the copyright owner commences enforcement proceedings.
(ii) If the rights owner accepts the challenge, or does not respond within the required 28 days, the notice is cancelled and treated as if it had not been issued. For warning and enforcement notices, if the challenge relates only to an infringement that was not an infringement that triggered a notice, the notice is not cancelled but the infringement is treated as if it were not included in the notice.
Enforcement and Remedies
If an enforcement notice has been issued (that is, three notices have been given) and the account holder continues to infringe, the copyright owner is entitled to take an enforcement action to the New Zealand Copyright Tribunal. The Tribunal has the power to award up to NZ$15,000 in damages. Account holders can make submissions to the Tribunal and the Tribunal can decline to make an order for damages if satisfied this would be 'manifestly unjust' to an account holder.
At this stage, proposed provisions to allow a District Court to suspend an internet account for up to six months have not been brought into force. This provision will be reconsidered in 2013 and only brought into force if the three notice process and remedies available from the Copyright Tribunal prove to be ineffective.
The Act has been the subject of both positive appraisal and criticism in New Zealand. Rights holders will welcome the ability to challenge infringement and it is expected that there will be prompt action taken. As stated by New Zealand Commerce Minister Simon Power, 'this legislation will discourage illegal file sharing and provide more effective measures to help our creative industries enforce their copyright'.
However, there has also been continued opposition to the Act. One of the disputed aspects of the Act has centred on which party should be responsible to pay for the costs of sending the infringement notices to account holders: copyright owners or internet users. The Act provides that an IPAP may charge a copyright owner for performing the functions required of the IPAP.
The liability of ISPs for the actions of their subscribers remains a live issue in Australia. In a spilt decision, the Federal Court of Australia in Roadshow Films v iiNet Limited [2001] FCAFC 23 recently found in favour of rights holders – ie. ISPs can be obliged to take action against their customers. At the date of writing this article, this decision is on appeal to the High Court of Australia. Therefore the success of the new New Zealand regime in dealing with illegal file sharing, particularly the three notice process, will be closely watched in Australia.
Partner: Charles Alexander
05 September 2011
UK Government endorses the Hargreaves Review
Posted by Christina Ilinkovski
The United Kingdom Government has released a formal written response broadly endorsing the recommendations and criticisms made by Professor Hargreaves in his review of UK intellectual property laws earlier this year (reported in our June edition of IP News).
The Government intends to release a 'White Paper' early next year setting out how it will address the issues raised by Professor Hargreaves. In the meantime, the Government's latest response provides a preliminary indication of their plans for action. Given that Australia is also in the process of reviewing its IP laws (eg. the pending Intellectual Property Laws Amendment (Raising the Bar) Bill 2011), it is timely to consider the relevance to Australia of the issues before the UK Government.
General Endorsements
The Government accepted Professor Hargreaves' overall conclusion that IP is important to growth. It also agreed that in some cases IP laws (particularly copyright laws) were obstructing growth and failing to adapt to new forms of technology and creativity.
Echoing Professor Hargreaves' concerns, the Government noted that past policy decisions on IP were, at times, based on a lack of high-quality evidence and an overabundance of lobbying. Accordingly, future policy decisions will focus on 'open and transparent' evidence and the United Kingdom Intellectual Property Office (UKIPO) will work with organisations to help them offer good-quality evidence.
Digital Copyright Exchange
The Government supports the creation of a Digital Copyright Exchange (DCE) to be used by sellers and purchasers of IP rights to '[enable] a functioning digital market in rights clearance and [act] as a source of information about rights ownership'. The Government believes it is important for the DCE to be commercially attractive to rights owners, and to this end suggests that participation in the DCE should not be compulsory; and that the rights owners can set the prices for their IP (subject to controls on unfair competition).
The Government proposes that the DCE will be self-funded through fees charged on licensing transactions made through the exchange (rather than fees for the upload or searches of rights data). The Government appears to be optimistic about the prompt implementation of the DCE, stating that a functioning licensing system should be in place by the end of 2012.
Modernising copyright licensing
Of particular interest to Australia are the UK Government's comments regarding orphan works – copyright works whose authors cannot be found by those wanting to use the works. The UK Government acknowledged orphan works as posing a significant economic problem. Similar problems also arise in Australia – for example, recently 16,000 radio plays at the Australian National Film and Sound Archive could not be released because the copyright owner could not be located.
The Government proposes to introduce a 'clearance' scheme within the next few months, under which prospective users of orphan works are required to conduct a diligent search for the owner. If no owner is identified, then the orphan work can be used subject to paying a license fee set by the Government (or its agent) based on market rates (in contrast, Professor Hargreaves recommended that the licence fee be set at a nominal rate only). If the owner of the orphan work is subsequently found, future use of the work would be subject to negotiation, but previous use would be subject only to the licence fee set by the Government.
These proposals will be monitored carefully in Australia, where there have been many calls for legislative reform in the area of orphan works.
Recognising the good work done by certain UK collecting societies, the Government plans to publish in early 2012 a set of minimum standards for voluntary codes and to consult with collecting societies to implement those codes. Further, the Government has also accelerated a proposal for extended collective licensing (ECL), with the aim of benefiting smaller creative firms and individual creators. The proposal is based on a Nordic model, whereby, once a collecting society has critical mass (eg. a majority) of people in a particular sector, the collecting society is granted the right to licence works owned by non-members unless they expressly opt-out of the ECL scheme.
The ECL scheme would also apply to orphan works included within a collection of copyright works. After a diligent search to check whether the orphan works are in fact owned and opted-out of the ECL scheme, the relevant collecting society would be entitled to issue a licence to use the orphan work. The collecting society would hold the licensing fees until either the owner is identified or a reasonable period of time lapses. In the latter case, the fees would then be used for social or cultural purposes.
Copyright Exceptions
The Government acknowledges that 'copyright currently over-regulates to the detriment of the UK', for example by restricting activities in a way that creates no direct commercial benefit and may even impede desirable activities. The proposed solution is to introduce broader exceptions to copyright infringement to permit:
(i) limited format-shifting of legally obtained copyright works for personal use;
(ii) parody of another's work without authorisation; and
(iii) wider non-commercial research also covering text and data mining (eg. to give scientific researchers greater freedom to analyse published research).
The aim of removing perceived obstacles to growth under current copyright laws appears a sensible one. However, proposals to extend copyright exceptions are not new (see the earlier Gowers Report on UK IP laws in 2005), and it remains to be seen whether these proposals are in fact implemented.
Patent and Design Law
The Government shares Professor Hargreaves' concern that, in some business areas, patents are anti-competitive and may stifle innovation. It therefore intends to resist extending patents into sectors which are currently excluded unless there is clear evidence of a benefit to innovation and growth. This higher threshold will likely be tested by those lobbying the Government to make the UK more 'patentee friendly' by broadening patentable subject matter (eg. to allow software patents) to mirror developments in other countries.
To further the objective of encouraging research and innovation, the UKIPO will publish findings by November 2012 on the scale and prevalence of patent thickets (the practice of filing a number of overlapping patents); and set out plans later this year to improve accessibility to the IP system.
In relation to designs, the Government accepted Professor Hargreaves' concerns that the UK's design rights system is not adequate for the needs of business and is a 'patchwork of provisions'. The UKIPO is tasked with researching the level of design registration and its impact on UK competitiveness. By the end of the year, the UKIPO will publish its findings on the proposed simplification of the design rights system, including whether there is need for a separate UK registered design right alongside the current pan-European registered design right system.
Further issues on the Government's agenda
The Government's response to Professor Hargreaves' report is an encouraging one and indicates a commitment by the Government to address the concerns raised in the report. There will be considerable interest in the Government's 'White Paper' due early next year and the various research and reports due over the coming year. Will the report prompt meaningful changes to UK's IP laws or will it share the fate of the similar Gowers Report of 2005?
Click here to access the UK Government's Response.
Partner: Charles Alexander
The United Kingdom Government has released a formal written response broadly endorsing the recommendations and criticisms made by Professor Hargreaves in his review of UK intellectual property laws earlier this year (reported in our June edition of IP News).
The Government intends to release a 'White Paper' early next year setting out how it will address the issues raised by Professor Hargreaves. In the meantime, the Government's latest response provides a preliminary indication of their plans for action. Given that Australia is also in the process of reviewing its IP laws (eg. the pending Intellectual Property Laws Amendment (Raising the Bar) Bill 2011), it is timely to consider the relevance to Australia of the issues before the UK Government.
General Endorsements
The Government accepted Professor Hargreaves' overall conclusion that IP is important to growth. It also agreed that in some cases IP laws (particularly copyright laws) were obstructing growth and failing to adapt to new forms of technology and creativity.
Echoing Professor Hargreaves' concerns, the Government noted that past policy decisions on IP were, at times, based on a lack of high-quality evidence and an overabundance of lobbying. Accordingly, future policy decisions will focus on 'open and transparent' evidence and the United Kingdom Intellectual Property Office (UKIPO) will work with organisations to help them offer good-quality evidence.
Digital Copyright Exchange
The Government supports the creation of a Digital Copyright Exchange (DCE) to be used by sellers and purchasers of IP rights to '[enable] a functioning digital market in rights clearance and [act] as a source of information about rights ownership'. The Government believes it is important for the DCE to be commercially attractive to rights owners, and to this end suggests that participation in the DCE should not be compulsory; and that the rights owners can set the prices for their IP (subject to controls on unfair competition).
The Government proposes that the DCE will be self-funded through fees charged on licensing transactions made through the exchange (rather than fees for the upload or searches of rights data). The Government appears to be optimistic about the prompt implementation of the DCE, stating that a functioning licensing system should be in place by the end of 2012.
Modernising copyright licensing
Of particular interest to Australia are the UK Government's comments regarding orphan works – copyright works whose authors cannot be found by those wanting to use the works. The UK Government acknowledged orphan works as posing a significant economic problem. Similar problems also arise in Australia – for example, recently 16,000 radio plays at the Australian National Film and Sound Archive could not be released because the copyright owner could not be located.
The Government proposes to introduce a 'clearance' scheme within the next few months, under which prospective users of orphan works are required to conduct a diligent search for the owner. If no owner is identified, then the orphan work can be used subject to paying a license fee set by the Government (or its agent) based on market rates (in contrast, Professor Hargreaves recommended that the licence fee be set at a nominal rate only). If the owner of the orphan work is subsequently found, future use of the work would be subject to negotiation, but previous use would be subject only to the licence fee set by the Government.
These proposals will be monitored carefully in Australia, where there have been many calls for legislative reform in the area of orphan works.
Recognising the good work done by certain UK collecting societies, the Government plans to publish in early 2012 a set of minimum standards for voluntary codes and to consult with collecting societies to implement those codes. Further, the Government has also accelerated a proposal for extended collective licensing (ECL), with the aim of benefiting smaller creative firms and individual creators. The proposal is based on a Nordic model, whereby, once a collecting society has critical mass (eg. a majority) of people in a particular sector, the collecting society is granted the right to licence works owned by non-members unless they expressly opt-out of the ECL scheme.
The ECL scheme would also apply to orphan works included within a collection of copyright works. After a diligent search to check whether the orphan works are in fact owned and opted-out of the ECL scheme, the relevant collecting society would be entitled to issue a licence to use the orphan work. The collecting society would hold the licensing fees until either the owner is identified or a reasonable period of time lapses. In the latter case, the fees would then be used for social or cultural purposes.
Copyright Exceptions
The Government acknowledges that 'copyright currently over-regulates to the detriment of the UK', for example by restricting activities in a way that creates no direct commercial benefit and may even impede desirable activities. The proposed solution is to introduce broader exceptions to copyright infringement to permit:
(i) limited format-shifting of legally obtained copyright works for personal use;
(ii) parody of another's work without authorisation; and
(iii) wider non-commercial research also covering text and data mining (eg. to give scientific researchers greater freedom to analyse published research).
The aim of removing perceived obstacles to growth under current copyright laws appears a sensible one. However, proposals to extend copyright exceptions are not new (see the earlier Gowers Report on UK IP laws in 2005), and it remains to be seen whether these proposals are in fact implemented.
Patent and Design Law
The Government shares Professor Hargreaves' concern that, in some business areas, patents are anti-competitive and may stifle innovation. It therefore intends to resist extending patents into sectors which are currently excluded unless there is clear evidence of a benefit to innovation and growth. This higher threshold will likely be tested by those lobbying the Government to make the UK more 'patentee friendly' by broadening patentable subject matter (eg. to allow software patents) to mirror developments in other countries.
To further the objective of encouraging research and innovation, the UKIPO will publish findings by November 2012 on the scale and prevalence of patent thickets (the practice of filing a number of overlapping patents); and set out plans later this year to improve accessibility to the IP system.
In relation to designs, the Government accepted Professor Hargreaves' concerns that the UK's design rights system is not adequate for the needs of business and is a 'patchwork of provisions'. The UKIPO is tasked with researching the level of design registration and its impact on UK competitiveness. By the end of the year, the UKIPO will publish its findings on the proposed simplification of the design rights system, including whether there is need for a separate UK registered design right alongside the current pan-European registered design right system.
Further issues on the Government's agenda
The Government's response to Professor Hargreaves' report is an encouraging one and indicates a commitment by the Government to address the concerns raised in the report. There will be considerable interest in the Government's 'White Paper' due early next year and the various research and reports due over the coming year. Will the report prompt meaningful changes to UK's IP laws or will it share the fate of the similar Gowers Report of 2005?
Click here to access the UK Government's Response.
Partner: Charles Alexander
02 September 2011
Codifying customer care
Posted by Jessica Newman
Under the new draft of the Telecommunications Consumer Protections Code (TCP Code), the telecommunications industry's peak representative body, the Communications Alliance (CA), has moved to address recommendations made by the Australian Communications and Media Authority (ACMA) in its Reconnecting the Customer report for improved customer care.
The draft revision to the TCP Code has been prompted by many telecommunications service providers welcoming the opportunity to address ACMA's recommendations within the TCP Code. And, because compliance with the TCP Code is mandatory for all telecommunications service providers under the Telecommunications Act 1997 (Cth), all industry participants will need to be ready to implement measures to comply with new obligations and standards under a revised TCP Code.
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| Image courtesy of Bob Goyetche |
The draft revision to the TCP Code has been prompted by many telecommunications service providers welcoming the opportunity to address ACMA's recommendations within the TCP Code. And, because compliance with the TCP Code is mandatory for all telecommunications service providers under the Telecommunications Act 1997 (Cth), all industry participants will need to be ready to implement measures to comply with new obligations and standards under a revised TCP Code.
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