Case: Gold Peg International Pty Ltd v Kovan Engineering (Aust) Pty Ltd (2005) 225 ALR 57
Outcome: cited
Copyright in a literary work is infringed where a person, not being the owner of the copyright and without licence, does or authorises the doing in Australia of any act comprised in the copyright (s 36(1) of the Act). The owner of the copyright in a literary work has the exclusive right to do the acts set out in s 31(1)(a) of the Act. These acts relevantly include ' to reproduce the work in a material form ' (s 31(1)(a)(i)) and ' to communicate the work to the public ' (s 31(1)(a)(iv)). An ' infringing copy ' is defined in s 10(1) to mean, relevantly, a reproduction of the work, or of an adaptation of the work '. Infringement by reproduction is usually said to require first, a "sufficient degree" of similarity between the two works and, secondly, that there is a "causal connection" between the two works ( Gold Peg International Pty Ltd v Kovan Engineering (Aust) Pty Ltd (2005) 225 ALR 57 at [173]-[174] per Crennan J; Skybase Nominees Pty Ltd v Fortuity Pty Ltd (1996) 36 IPR 529 at 531 per Hill J; Desktop at [220] per Lindgren J). A reproduction of the whole or a substantial part of the work is an infringement (s 14(1)(b)) of the Act). 182 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). 185 In Gold Peg , Crennan J discussed the assessment of infringement. The first inquiry was to look to the similarities between two works, " which is a question of degree, taking into account the originality and essential nature of the elements which are found " (at [174]). The second inquiry was whether there had been actual copying. Her Honour considered it "instructive" whether the products would compete in the market. If actual copying were found, the next step was to ask whether a "substantial part" was copied (at [179]). The taking of a substantial part may occur in circumstances where quite small portions of a work are taken (at [188]); it is a question of quality rather than quantity. The quality of what is taken reflects the importance which the part taken bears in relation to the copyright work as a whole. It is not relevant to have regard to the importance that the part taken forms of the defendant's work (at [189]). Justice Crennan considered the factors relevant to determining substantial part to include originality, whether the purpose of the taking was to save labour and the effect of the taking in the market for the plaintiff's work (at [191] [192]). 186 The Weekly Schedule and the IceGuide are each similar in the time and title content for Nine programs but are not similar in the totality of the information included nor in the form of presentation of the data. Ice did not copy the whole of the information for insertion into the IceGuide but there has been the taking of time and title information from the Aggregated Guides by checking and updating of the IceGuide. Ice staff access those guides and choose whether to replace the time and/or title information in the starting template for each day with information from the Aggregated Guides.