Posts Tagged ‘HCA’

HCA iiNet wins in HCA (20 April 2012)

In Copyright, HCA on 30 April 2012 at 21:14

Roadshow Films Pty Ltd & Ors v iiNet Ltd

The High Court of Australia (“HCA”) has unanimously dismissed an appeal in a case against internet service provider (“ISP”) iiNet. The case concerned ‘authorization’ to infringe within the meaning of section 101(1A) of the Australian Copyright Act 1968.

Roadshow Films and other members of the Australian Federation Against Copyright Theft (‘AFACT’) had alleged that iiNet ‘authorised’ its subscribers to engage in copyright-infringing downloading of material owned by AFACT members. Their appeal to the HCA followed iiNet’s majority victory before a Full Bench of the Federal Court of Australia, and its win at first instance.

The HCA found that iiNet was not technically in control of the BitTorrent system used by its subscribers to download infringing content, and that it did not authorize infringement. A summary issued by the HCA stated:

“The Court observed that iiNet had no direct technical power to prevent its customers from using the BitTorrent system to infringe copyright in the appellants’ films. Rather, the extent of iiNet’s power to prevent its customers from infringing the appellants’ copyright was limited to an indirect power to terminate its contractual relationship with its customers. Further, the Court held that the information contained in the AFACT notices, as and when they were served, did not provide iiNet with a reasonable basis for sending warning notices to individual customers containing threats to suspend or terminate those customers’ accounts. For these reasons, the Court held that it could not be inferred from iiNet’s inactivity after receiving the AFACT notices that iiNet had authorised any act of infringement of copyright in the appellants’ films by its customers.”

The HCA decision leaves open the possibility that ISPs could still be found to have authorized infringement in situations in which a rights-holder provided an ISP with more specific information.

It also paves the way for legislative change in this area of copyright law. The decision of French CJ, Crennan and Kiefel JJ noted:

“This final conclusion shows that the concept and the principles of the statutory tort of authorisation of copyright infringement are not readily suited to enforcing the rights of copyright owners in respect of widespread infringements occasioned by peer-to-peer file sharing, as occurs with the BitTorrent system.” (para.79)

In a Press Release issued shortly after the HCA’s judgment was delivered, AFACT Managing Director Neil Gane called for legislative change, stating:

“Both judgements in this case recognise that copyright law is no longer equipped to deal with the rate of technological change we have seen since the law of authorisation was last tested. They both point to the need for legislation to protect copyright owners against P2P infringements… Now that we have taken this issue to the highest court in the land, it is time for Government to act. We are confident the Government would not want copyright infringement to go on unabated across Australian networks especially with the rollout of the NBN.”


HCA iiNet decision out 10am Friday 20 April 2012

In Copyright on 17 April 2012 at 07:04

Roadshow Films Pty Ltd & Ors v iiNet Ltd

The High Court of Australia will deliver its judgment at 10am on Friday 20 April 2012, iiNet has told the Australian Stock Exchange (‘ASX’).

The case considers ‘authorization’ to infringe in Australian copyright law. Roadshow Films and other members of the Australian Federation Against Copyright Theft (‘AFACT’) allege that internet service provider (‘ISP’) iiNet ‘authorised’ its subscribers to engage in copyright-infringing downloading of material owned by AFACT members.

iiNet won at first instance and, arguably narrowly, on appeal before the Federal Court of Australia. Roadshow Films appealed to the High Court of Australia, which heard the case in late 2011.

HCA decisions are made available on the AustLII website on the day judgment is delivered.

Useful references:

FCA: the trial decision (Cowdroy J)

FCA: the Full Court’s appellate decisions (Emmett & Nicholas JJ, Jagot J dissenting)

HCA: submissions to the Court

A brief summary of the saga from ArtsLaw Centre

Govt submissions filed in HCA tobacco packaging case (5 April 2012)

In Trademarks on 6 April 2012 at 19:26

British American Tobacco Australasia Limited and Ors v. The Commonwealth of Australia

The Australian government has filed written submissions in the case brought by British American Tobacco (‘BAT’) challenging the Tobacco Plain Packaging Act 2011.

The legislation received Assent on 1 December 2011 and  will require uniform packaging of tobacco products from December 2012. Cigarette packaging will have to be a standard olive green colour, devoid of logos and most other distinctive branding (brand names will be carried in a standard font), and carry graphic health warnings. For example, Section 20 of the Act states: “(1)  No trade mark may appear anywhere on the retail packaging of tobacco products, other than as permitted by subsection (3)... (3)  The following may appear on the retail packaging of tobacco products:  (a)  the brand, business or company name for the tobacco products, and any variant name for the tobacco products; (b)  the relevant legislative requirements; (c)  any other trade mark or mark permitted by the regulations.”  The Act prescribes the manner in which the permitted markings may be presented. An example of the prescribed packaging can be viewed here.

BAT argues that legislation denying the ability of an intellectual property proprietor to use its intellectual property amounts to an acquisition of property without compensation, and is thus constitutionally invalid.  Section 51(xxxi) of the Australian Constitution states: “The Parliament shall, subject to this Constitution, have power to make laws for the peace, order, and good government of the Commonwealth with respect to: (xxxi)  the acquisition of property on just terms from any State or person for any purpose in respect of which the Parliament has power to make laws“.

BAT’s submissions were filed on 26 March 2012 and their argument can be outlined as follows:

  • Cl.37: “For there to be an acquisition of property within the meaning of s 51 (xxxi), it is necessary, but not sufficient, for the owner of the property in question to demonstrate that legislation “adversely affects or terminates a pre-existing right that [he or she] enjoys in relation to his [or her] property”.* In this case… the plaintiffs will be unable to use or exploit their trade marks, patents, designs, copyright and get-up in connection with the sale of cigarettes or in any meaningful or substantive fashion, or to exercise any meaningful or substantive control over the appearance of cigarette packets and cigarettes owned by them.” [* Tasmanian Dam Case(1983) 158 CLR 1 at 145 per  Mason)].
  • Cl.39: “It follows that, even though the plaintiffs have not been formally deprived of their trade marks, patent, design, copyright, get-up, goodwill and rights in their packaging, they have been” in a real sense, although not formally, stripped of the possession and control” of their property.” The Commonwealth has, in other words, deprived the plaintiffs of the “reality of proprietorship”* or “everything that made [that property] worth having.”** The extent of the restriction on the plaintiffs’ use of their property is plainly, it is submitted, capable of characterization as an acquisition.***” [* Bank of NSW v.  Commonwealth {1948) 76 CLR 1 at 349 per Dixon J] ; ** Minister of State for the Army v Dalziel (1944) 68 CLR 261  at  286 per Rich J; *** See Trade Practices Commission v Tooth &  Co Ltd (1979)  142 CLR 397 at 415 per Stephen]
  • Cl.47: “In the result, the Commonwealth has assumed control over a substantial aspect of the plaintiffs’ property, business, goodwill and reputation. That description of the benefits accruing to the Commonwealth (and others) by reason of the prohibition of all practical uses of the plaintiffs’ intellectual property makes clear, however, that there is yet a further dimension to the benefit accruing to the Commonwealth. By securing the benefit of the plaintiffs’ rights to use their property by refraining from deploying it in particular ways or for certain purposes , the Commonwealth has been able to assume complete control over the get-up and appearance of BAT’ s cigarettes and their packaging.”

BAT’s submissions go on to explain its claim that this constitutes a taking that is not on just terms.

The Australian government’s 49-page submissions counter these claims, arguing that:

  • Cl.1;  Section 51(xxxi) protects property, not the general commercial and economic position of traders;
  • Cl2: the Act does not effect an unjust acquisition of property.
  • Cl.5: tobacco companies’ statutory rights to trademarks, patents, registered designs and copyright do not include a positive right to use the intellectual property. Further, these statutory rights are inherently subject to statutory modification or extinguishment without compensation.
  • Cl.6: the Act does not confer upon the Commonwealth, or anyone else, a benefit of a property-like nature.
  • Cl.8: “The TPP Act restricts the use of property no more than is appropriate and adapted to reduce harm to members of the public and public health. The TPP Act otherwise allows tobacco companies to continue to use their brand names and variant names on retail packaging to indicate trade origins of their tobacco products and not to use trade marks and registered designs through non-use.” It argues that this does not amount to acquisition on unjust terms.

The government’s submissions go on to elaborate on its arguments, characterising the Act as involving “regulation” not “acquisition” (Cl.79ff). Cl.36 argues that plain retail packaging will reduce the appeal of tobacco products, increase the effectiveness of health warnings, reduce the potential for retail packaging to mislead, and thus improve public health and comply with Australia’s obligations under the World Health Organization Framework Convention on Tobacco Control (“FCTC”).

The Hearing before the HCA is due to commence on 17 April 2012.

Useful documents:

HCA: PPCA v Cth (28 March 2012)

In Copyright on 1 April 2012 at 16:11

Phonographic Performance Company of Australia Limited (PPCA) & Ors v Commonwealth of Australia & Ors

The High Court handed down its decision confirming the constitutional validity of the 1% (of the broadcaster’s gross earnings) cap on royalties payable for the radio broadcast of sound recordings.