Case: Skybase Nominees Pty Ltd v Fortuity Pty Ltd (1996) 36 IPR 529
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). 184 The underlying principle is that the law of copyright does not give an exclusive right to state or describe particular facts ( Victoria Park at 498 per Latham CJ). Substantial reproduction and causal connection are separate and cumulative requirements for a finding of infringement ( Desktop at [399] per Sackville J). If a causal connection is shown, it is then necessary to assess whether the allegedly infringing work can fairly be said to be so sufficiently similar to the first that it is but a reproduction ( Skybase at 533 per Hill J, with whom French J agreed). While copying is an essential element in providing the requisite causal connection between the copyright work and the alleged infringement, copying does not, of itself, determine whether or not there has been the taking of a substantial part. Not every act of copying is an infringement of copyright. It is also necessary to establish the appropriate subject matter for copyright, what is original and whether there has been a taking of a substantial part ( Network Ten [2004] HCA 14 ; 218 CLR 273 at [14] [17] per McHugh A-CJ, Gummow and Hayne JJ).