mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Woodtree Pty Ltd v Zheng [2007] FCA 1922
Outcome: cited
In the substantive judgment on the appeal from the Federal Magistrates Court ( Woodtree Pty Ltd v Zheng [2007] FCA 1922) I upheld the appellant's appeal insofar as it was based on its claims under the Trade Practices Act 1974 (Cth) but rejected its claims for copyright infringement. I assessed damages at $3684.20. The questions of interest under s 51A of the Federal Court of Australia Act 1976 (Cth) and costs were adjourned. The parties have now filed written submissions.
Case: Fotheringham v Fotheringham (No2) [1999] NSWCA 21 ; (1999) 46 NSWLR 194
Outcome: cited
There remains the issue as to what significance is to be given to the fact that the rejection of the Calderbank offer was followed by a successful appeal by the offeree, albeit one which produced an outcome less favourable than the offer. This situation has been considered by a number of decisions of the New South Wales Court of Appeal. Some of these were reviewed in by a five member bench of that Court in Fotheringham v Fotheringham (No2) [1999] NSWCA 21 ; (1999) 46 NSWLR 194. The general effect of that decision is that while an offer of compromise continues to have cost consequences for an appeal ( Ettingshausen v Australian Consolidated Press Ltd (1995) 38 NSWLR 404 at 410), the appellate court retains its own discretion. In the words of Stein JA at [28] (with whom the other members of the Court agreed): by the time Judgment [at trial] comes to be delivered, it will no longer be open to a party to whom an offer of compromise has earlier been directed to accept that offer, it following that, in the event of the Judgment being affected by error, the only means of seeking to have that error corrected which, in the absence of a further offer of compromise, will be open to the recipient of the original offer of compromise, will be by way of appeal. His Honour said (ibid) that the fact that the appeal was upheld was not only relevant to costs but would "in the normal course, justify the relevant court otherwise ordering" for the purpose of the applicable New South Wales Supreme Court rule. The present case arises under the general discretionary power of this Court over costs and not under any rule of Court. Nevertheless, the New South Wales cases provide an important analogy.
Case: Ettingshausen v Australian Consolidated Press Ltd (1995) 38 NSWLR 404
Outcome: cited
There remains the issue as to what significance is to be given to the fact that the rejection of the Calderbank offer was followed by a successful appeal by the offeree, albeit one which produced an outcome less favourable than the offer. This situation has been considered by a number of decisions of the New South Wales Court of Appeal. Some of these were reviewed in by a five member bench of that Court in Fotheringham v Fotheringham (No2) [1999] NSWCA 21 ; (1999) 46 NSWLR 194. The general effect of that decision is that while an offer of compromise continues to have cost consequences for an appeal ( Ettingshausen v Australian Consolidated Press Ltd (1995) 38 NSWLR 404 at 410), the appellate court retains its own discretion. In the words of Stein JA at [28] (with whom the other members of the Court agreed): by the time Judgment [at trial] comes to be delivered, it will no longer be open to a party to whom an offer of compromise has earlier been directed to accept that offer, it following that, in the event of the Judgment being affected by error, the only means of seeking to have that error corrected which, in the absence of a further offer of compromise, will be open to the recipient of the original offer of compromise, will be by way of appeal. His Honour said (ibid) that the fact that the appeal was upheld was not only relevant to costs but would "in the normal course, justify the relevant court otherwise ordering" for the purpose of the applicable New South Wales Supreme Court rule. The present case arises under the general discretionary power of this Court over costs and not under any rule of Court. Nevertheless, the New South Wales cases provide an important analogy.
Case: Estate of Virgona v De Lautour (No 2) [2007] NSWCA 323
Outcome: cited
The point has arisen in a number of subsequent New South Wales Court of Appeal cases, the most recent being Estate of Virgona v De Lautour (No 2) [2007] NSWCA 323. Ultimately of course the issue remains one for discretionary judgement dependent on the particular circumstances of the case.
Case: Australasian Performing Right Association Ltd v Metro on George Pty Ltd (2004) 210 ALR 244
Outcome: cited
Accepting that there is no reproduction or substantial reproduction of the Weekly Schedule on the hard drives of subscribers' PCs or Media Centres, authorisation does not arise. If there is such reproduction, the facts support the contention that Ice "authorises" the reproduction of the Weekly Schedule by users of the IceGuide within the meaning of s 36 of the Act. It "sanctions, approves and countenances" such activity ( The University of New South Wales v Moorhouse [1975] HCA 26 ; (1975) 133 CLR 1 at 12-13 per Gibbs J and at 20-21 per Jacobs J). Ice encourages use of the IceGuide and is, at best, indifferent as to whether the Weekly Schedule is reproduced on the hard drives of subscribers' PCs or Media Centres ( Australasian Performing Right Association Ltd v Metro on George Pty Ltd (2004) 210 ALR 244). Ice has the power to prevent such reproduction and takes no steps to do so. The actions of Ice are not dissimilar to those of the proprietor of software made available from websites enabling copying and communication of sound recordings ( Universal Music Australia Pty Ltd v Sharman License Holdings Ltd (2005) 220 ALR 1).
Case: Autospin (Oil Seals) Ltd v Beehive Spinning (a firm) [1995] RPC 683
Outcome: cited
The question is one of protection of the relevant skill and labour ( Desktop at [235] per Lindgren J citing Laddie J in Autospin (Oil Seals) Ltd v Beehive Spinning (a firm) [1995] RPC 683 at 697-8). Once sufficient skill and effort have been expended in working out the information and writing it down, the compilation so created is a literary work and protected by copyright. As put by Lindgren J at [238]: ' [t] he relevant principle is that where copyright protection is attracted to a compilation of factual information by the labour of collecting, verifying, recording and assembling the data and not by reference to the form of the compilation, reproduction does not require formal resemblance, and the notion of a substantial part of the compilation is not defined by reference to its form.' (emphasis added) It follows that where the relevant skill and labour is referable also to the form of the compilation, the notion of a substantial part of the compilation is also defined by reference to its form. 201 It is not disputed that Nine's employees expend skill and labour in the content and arrangement of the Weekly Schedule in the form in which it is sent to the Aggregators. 202 Nine contends that, once Mr Healy has decided on the order of the programs best to suit Nine's commercial and strategic interests, the time and title information in the Weekly Schedule is, in the words of Lindgren J in Desktop at [21], a "whole of universe case" a case where there was no selection of the subscribers to be included in the directory and where the directory permitted only one mode of arrangement of the factual information and only one mode of expression of the individual entries. In such a case, anyone exploring the same universe would discover the same factual information and would, inescapably, produce a directory relevantly identical in form, as well as in content, to Telstra's (at [22] [24]).
Case: Avel Pty Ltd v Intercontinental Grain Importers Pty Ltd (1996) 65 FCR 154
Outcome: cited
The history of the section suggests that it was concerned to deter unjustified threats themselves, threats that did not result in infringement proceedings or could not be justified by actual infringement; threats made to ' frighten away competitors or to damage such persons less directly, by threatening to sue their customers or suppliers as joint tortfeasors ' (Ricketson S and Creswell C, The Law of Intellectual Property: Copyright, Designs &amp; Confidential Information (Lawbook Co., subscription service) at [2.195]; Avel Pty Ltd v Intercontinental Grain Importers Pty Ltd (1996) 65 FCR 154 at 159)). It is a right extended to the threatened person not generally available to those threatened with an action for a civil wrong. 233 Section 202 does not specifically provide for a cross-claim in an infringement action, only for the commencement of an action. However, by O 5 r 1(1) of the Federal Court Rules , a respondent: 'may cross-claim against an applicant for any relief to which the respondent would be entitled against the applicant if the applicant were a respondent in a separate proceeding commenced in the Court by the respondent for that purpose.' 234 Ice did not bring its action when the threats were current. Had it brought the action, Nine would have undoubtedly availed itself of the entitlement in s 202(4) of the Act to bring an action for infringement by way of cross-claim. I do not see that Ice would have been precluded from bringing a cross-claim under s 202(1) just because Nine filed its proceedings first. It is important, however, to make it clear that Ice at no time has the right under s 202 to claim for any remedy that is not based upon the threats. To the extent that those threats were directed to Ice, they ceased upon the commencement of proceedings by Nine. Section 202 does not entitle Ice to claim damages resulting from the commencement of these proceedings.
Case: Avel Proprietary Ltd v Multicoin Amusements [1990] HCA 58 ; (1990) 171 CLR 88
Outcome: cited
There are a number of indicia in s 202 that assist in determining the scope of application of the section: &#8226; The threat is of an action or proceeding. The action or proceeding cannot have commenced before the threat is made. Once the proceedings for infringement are commenced, the threat no longer exists. &#8226; The threat must be unjustifiable, that is the acts in respect of which the complaint is made do not constitute an infringement of copyright. &#8226; The words ' threatens ' and ' making the threats ' in s 202(1) are in the present tense. &#8226; An action for groundless threats may be commenced by a "person aggrieved", that is, standing to bring the action is not restricted to the recipient of the threat. In Avel Proprietary Ltd v Multicoin Amusements [1990] HCA 58 ; (1990) 171 CLR 88 at 118 McHugh J observed that the evident object of the section is to enable a "person aggrieved" by the threat of legal proceedings to obtain a determination as to whether the activities in respect of which an action or proceeding is threatened are an infringement; it prevents the "Sword of Damocles" hanging over the head of the threatened person ( Avel Proprietary Ltd [1990] HCA 58 ; (1990) 171 CLR 88 at 104 per Dawson J). &#8226; The remedies provided for are a declaration that the threats are unjustifiable, an injunction against the continuation of the threats and damages. These remedies relate to the threats and not to any action or proceeding for infringement of copyright. &#8226; The remedies are not available if the acts do constitute an infringement of copyright. &#8226; Not only is it a defence that the acts constituted infringement, a defendant in an action for unjustifiable threats may counterclaim, effectively as an action for infringement (s 202(4)). &#8226; There is no provision for an action or a cross-claim for the unjustified or unjustifiable commencement of an action for infringement of copyright.
Case: British Broadcasting Company v Wireless League Gazette Publishing Company [1926] 1 Ch 432
Outcome: considered
Nine relies on the decisions in which British courts have found infringement of copyright in television or radio guides. In British Broadcasting Company v Wireless League Gazette Publishing Company [1926] 1 Ch 432, the British Broadcasting Company ('BBC') began publishing its own daily programs for the ensuing week each Friday in the Radio Times . The published material gave the day and hour of each performance and certain additional information. The preparation, arrangement and editing of the actual programs involved considerable time, skill and labour, although the preliminary work of fixing the times, engaging the artists and choosing the items had been done some time beforehand. Justice Astbury held that there was copyright in the compilation of the seven advance daily programs from which the defendants selected and deliberately copied items. His Lordship found that the defendants had, by copying the published program listings, infringed copyright in the Radio Times . Justice Astbury observed that there was still infringement where less than the whole of the compilation was taken but did not give this aspect any detailed consideration because there had been "wholesale copying" (at 443). 181 In neither of these two cases was there not only an absence of wholesale copying but also the checking of information against a third party aggregated guide, the checking of a selection of listed items and that selection being of the information for a given entry and the number of entries in the compilation. The cases illustrate that copying is an important factor and that it is a matter of fact and degree to ascertain whether there has been a taking of a substantial part. Each case turns on its own facts. While Independent Television Publications and Wireless League Gazette are examples that have fallen on one side of the line, they are not determinative of these proceedings.
Case: Cambridge University Press v University Tutorial Press (1928) 45 RPC 335
Outcome: cited
Where there is skill and labour not only in the obtaining or collection of the material but also in the form of arrangement, or where there may be more than one arrangement of the obtained material, it does not follow that any form of arrangement will infringe. Cambridge University Press v University Tutorial Press (1928) 45 RPC 335 is illustrative of this principle. In Cambridge , there was no infringement of a collection of 13 essays where the collection was included in a later work with an additional seven essays, in different order and with different notes and introductions.
Case: Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112 ; (2002) 119 FCR 491
Outcome: applied
Nine asserts that copyright subsists in the Nine Schedules as compilation literary works within the meaning of s 10(1) of the Copyright Act 1968 (Cth) ('the Act'). It submits that any doubt as to whether copyright so subsists was extinguished by the Full Court decision in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112 ; (2002) 119 FCR 491. The infringement allegations are founded on the assertion that Ice appropriates the ' skill and labour of authorship ' of Nine in compiling the Nine Schedules by reproducing program time, title and date of broadcast information from the publicly available Aggregated Guides. 6 Nine alleges that the IceGuide includes a close to 100% reproduction of the time and title information in the Nine Schedules, as updated by any late changes and that the activities of Ice in producing and disseminating the IceGuide involve five acts of infringement of the copyright in the Nine Schedules. The second respondent ('Ice Holdings') is said to be jointly liable for those acts of infringement. 7 The allegations are denied by Ice. Ice does not dispute that copyright subsists in the Weekly Schedule. Ice asserts that it did not (and does not) copy the Weekly Schedule in creating and updating the IceGuide. It denies taking all or a substantial part of the Weekly Schedule. It denies that Nine owns independent copyright in components of the Weekly Schedule and submits that other Nine Schedules are not relevant to the proceedings. Ice also seeks leave to file a cross-claim alleging that Nine has made unjustified threats of copyright infringement ('the second cross-claim'). An earlier cross-claim was discontinued.
Case: Donoghue v Allied Newspapers, Limited [1938] Ch 106
Outcome: cited
The originality of a compilation may lie in the selection or arrangement of the information. It also may reflect the skill and labour of gathering the facts. As already noted, in the present case, the Weekly Schedule reflects both. It is only the originality of expression that is relevant, not the originality of the idea the subject of the expression ( Donoghue v Allied Newspapers Limited [1938] Ch 106 at 110 per Farwell J). It must be determined whether the part that is taken is an essential or material feature of the whole work, regarded as a copyright work; that is, ' whether the part or parts taken represent a substantial part of the labour, skill and judgment of the author that made the whole work "original" ' ( Tamawood Ltd v Henley Arch Pty Ltd (2004) 61 IPR 378 at [55] per Wilcox and Lindgren JJ). As one should not dissect a work to determine if a part could be protected by copyright standing alone ( Ladbroke at 277 per Lord Reid), so it is inappropriate to dissect the work for the purposes of infringement. The correct approach is to decide whether the work as a whole is protected by copyright and then to determine whether the work or a substantial part of the work as a whole has been taken.
Case: Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 138 ; (1999) 87 FCR 415
Outcome: cited
Where the manner of presentation is the basis for the attraction of copyright, it may be that a presentation of the same information in different form would not infringe ( Victoria Park per Dixon J at 511). In such circumstances there may not have been a taking of a "substantial part", which is assessed by reference to the quantity and the quality of what is taken and the inter-relationship between them ( Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 138 ; (1999) 87 FCR 415 at [70] per Lindgren J, cited in Gold Peg at [170]). It is a question of fact and degree (Crennan J in Gold Peg at [190]; also emphasised by McHugh and Kirby JJ in dismissing an application for special leave to appeal from the Full Court in Network Ten Pty Limited v TCN Channel Nine Pty Limited [2005] HCATrans 842). A defendant may rework the work of a plaintiff, capturing the ideas used or facts referred to but in a way that does not infringe because it is not a substantial reproduction. It may constitute a new original work. The taking of a substantial part of a copyright work will vary depending on the nature of the work and the degree of originality of the original work ( Skybase at 532 per Hill J, with whom French J agreed). The ' originality of that part of the work taken by the alleged infringer ' is critical ( Desktop at [409] per Sackville J).
Case: Feist Publications Inc v Rural Telephone Service Co Inc (1991) 499 US 340
Outcome: cited
Nine relies on what it describes as the high level of protection in Australia afforded to ' industrious collection [s] of facts ' or ' "sweat of the brow" compilations organised in an orthodox or natural manner (cf the position in the United States of America as outlined in Feist Publications Inc v Rural Telephone Service Co Inc (1991) 499 US 340). Nine submits that the preparatory skill of the thinking and the planning and the skill of setting down the program time and title in material form as a compilation are not to be separated. That may be the case where, as in Desktop , the skill and labour was in the collection of the data and the form of the compilation followed from that collection and the nature of the work. It does not follow where the skill and labour of collection of information was preparatory to the further exercise of skill and labour of creation of the arrangement of that information in the Weekly Schedule. Nine's submission also ignores the correct characterisation of the skill and labour employed in the creation of the Weekly Schedule, as the arranging in a single document of not only the order of the programs and their time and title which followed from the creation of the Nine Programming, but also the additional program information and the synopses and the arrangement of the different sets of data. 56 Accordingly: (a) Where sufficient skill and labour is expended in gathering the material for inclusion in the compilation, but not in the form of presentation or arrangement of the material because the form is dictated by the nature of the material, that skill and labour is protected. This was the relevant skill and labour protected in Desktop . (b) Where the form of presentation or arrangement of a compilation is a product of the skill and labour of the author, it is that form that is protected. (c) Copyright subsists in the Weekly Schedule as an original work by reason of both "types" of skill and labour. 57 As I have said, the Weekly Schedule is not issued to the public. It is relevantly sent to HWW, eBroadcast and Pagemasters, the Aggregators who aggregate the information therein with comparable information obtained from other television broadcasters, from 17 (Pagemasters) to 14 (eBroadcast and HWW) days before the start of the broadcast week. The Aggregated Guides are published in: &#8226; print (eg, magazine TV Week and newspaper The Sydney Morning Herald ); &#8226; online (eg, &lt;yourtv.com.au&gt; ('the YourTV Guide')); &#8226; mobile phone content services (eg, the Vodaphone Mobile Phone Guide ); &#8226; the Channel 4 Digital Guide ; and &#8226; an EPG provided by Foxtel to its subscribers ('the Foxtel Digital Guide').
Case: Incentive Dynamics Pty Ltd (In Liquidation) v Robins [1998] FCA 1046
Outcome: cited
While the second cross-claim would not prolong the existing application by Nine, permitting Ice to file the second cross-claim would prolong the proceedings between the parties. The injustice to Nine if the second cross-claim were filed would, it seems to me, to be out of proportion to the injustice to Ice if leave is refused ( Incentive Dynamics Pty Ltd (In Liquidation) v Robins [1998] FCA 1046 per Mansfield J). Ice contends that, if leave is refused, it could commence separate proceedings under s 202. That is, of course, a matter for Ice. Such a right lessens the injustice that Ice might otherwise suffer if it were totally precluded from exercising its rights under the section. 238 In the circumstances and in the exercise of my discretion, I decline to grant leave to Ice to file the second cross-claim. 239 For the reasons I have given, the application should be dismissed. For convenience only, a summary of my findings follows.