Journal of Law, Information and Science
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Journal of Law, Information and Science |
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ARTHUR HOYLE, EUGENE CLARK AND GEORGE CHO*
The concept of risk management as applied to the development and commercialisation of Geographic Information systems (GIS) was analysed previously in this journal.[1] This article focuses on intellectual property issues facing both governments and GIS producers in securing commercial advantage and return for their labour. As GIS and their use of spatial databases are relatively new and without significant case law, this article examines the related and objectively similar computer program piracy case law as a pointer to future judicial and legislative trends in relation to GIS. Although the article focuses on Australian intellectual property law, it also examines the developments in other jurisdictions including the European Union and particularly those in the USA, reputedly the largest producer and user of GIS.
GIS is a technology that uses geographic data and information. A GIS is a tool to assist in decision-making in land use planning, environmental management and local government. In a GIS there is a set of data which are referenced to geographical locations as well as text to describe items in the data. The information system gives procedures for the collection, updating, processing, distributing and storage of these data. In Australia, nearly every major government department, local government and public utility makes use of a GIS of one kind or another. Price Waterhouse Urwick consultants have estimated that in 1993 the total expenditure on spatial information related services was between $385 million and $493 million and is projected to grow at a rate of 25 per cent per annum.[2]
One cloud on this economic silver lining of GIS development is uncertainty in relation to intellectual property rights related to the development, use and commercialisation of GIS. In examining this problem, this article commences with an overview of the uncertainties regarding the intellectual property rights and responsibilities in relation to GIS. We stress the point that there is an urgent need for international action to help resolve uncertainties in the law and policy. Possessing an advanced GIS technology, Australia has been one of the first nations to tackle such uncertainties and therefore Australian developments should be of interest to the larger community of GIS developers and users in other countries. Copyright issues are then discussed and compared to developments in the USA and European Union. The final part of the article considers other intellectual property issues such as design law, patent, trade mark protection, trade secrets, unfair competition and other laws which may impact upon the ownership and use of GIS.
The advent of digital technology coupled with the revolution in communications represented by the Internet has placed copyright law under enormous pressure to adapt or languish in legal uncertainty. This information revolution is no respecter of jurisdictional boundaries, making it an international problem requiring speedy international solutions either through a co-ordinated approach between affected countries or through international organisations.
Unfortunately, it appears that technology is advancing at such a pace that legislatures, traditionally slow to adapt to new and revolutionary ideas, have proven ineffective in providing legal certainty to those who seek legitimately to develop and commercialise their GIS expertise. Neither have laws been effective at controlling those who would use technology to illegally trade in the property of others. It may be fair to observe that these legislatures had barely come to grips with computer technology when the new and more fundamental change represented by the Internet demanded attention. The result is that courts have been left to “adapt” relatively recently introduced legislation aimed at controlling software theft to meet the challenges of the new technology. In Australia this means that we can look to a limited number of superior court cases dealing with the alleged misuse of proprietary computer programs for guidance, although for specific application to GIS products it is instructive to look to the US Superior Courts’ hard line on the misuse of `reverse engineering’ techniques (to ascertain and then use the source codes of copyrighted computer programs). At first the US Supreme Court’s decision in Feist seemed something of an aberration, but it has since been followed in Atari Games[3] and similar cases. Feist should therefore be regarded more as an indication of judicial understanding that information gathered or developed by others is not available for anyone to take and use as their own simply because of the confluence of availability in digital form and the technology to transform it into another product.
There are however signs that legislatures throughout the developed world are coming to grips with the problem and a coordinated international response to the problem is beginning to emerge. We believe that this can be expected to reinforce these common law initiatives, and serve to strengthen controls over the exploitation of intellectual property in GIS products worldwide. In Australia, protection of data embedded in computer programs has had to traverse a rocky road since the first instance Federal Court 1983 decision in Computer Edge[4] which denied the plaintiffs copyright, with the High Court of Australia responding in 1986 with the creation of two classes of stored data.[5] Continuing in this vein, the High Court in its 1992 Autodesk decision indicated judicial sympathy for the extension of copyright protection to data lists or compilations which otherwise fail the creativity (often expressed as originality) test. This protection applies, even if the data or compilation is simply embedded in another program and stored in a non-sensate form. Any thoughts that this decision indicated an Australian movement towards the philosophy expressed in Feist, were quickly dismissed, as the court, in an unusual move rehearing the matter, indicated a retreat to its previous position. It held instead that the reproduction of a table or compilation amounts to reproduction of something which is itself unoriginal and not therefore copyrighted, thus denying protection under the present legislation.
As the findings of the High Court are binding on all Australian courts, it is clear that for an opening up of this narrow application of copyright protection with respect to electronically stored data, there will need to be legislative change, either from within Australia itself, or in response to international action.
In 1993, Professor Donald S Chisholm[6] observed that:
"This area of the law is seeing unprecedented growth, in spite of the recession, and it's just getting started. Today, more than ever before, the products of the mind -aesthetic, technological and organizational - are humankind’s most valuable assets."
Reuben[7] went further, saying that responsibility for the legal protection and encouragement of all of these efforts “falls on the shoulders of intellectual property lawyers”. As the digital revolution is a truly global phenomenon, if we are to understand the full extent of this responsibility, it is instructive to examine the development not only of Australian, but also US and European legislation and case law.
Intellectual property (IP) is frequently described as relating to intangible property rights such as patents, designs and copyright which are the product of intellectual activity,[8] and is frequently claimed by the developers of GIS. That IP protection is an important and indeed pressing issue is evidenced by recent policy initiatives in the USA and in Europe. In August 1996, the European commission issued a Green Paper entitled Copyright and Related Rights in the Information Society, and two months later in the USA the Clinton Administration issued its White Paper on Intellectual Property and the National Information Infrastructure, matching broadly similar initiatives in Australia and Canada, while the Japanese are reported to be still working on their own version.[9] This high level of international interest is somewhat undermined by the looming evidence of diverging approaches and radically different solutions based on national perceptions and the precedent[10] of individual jurisdictions, the result of which is a failure adequately to deal with the global phenomenon which is the digital revolution.[11]
The advent of very large and complex databases incorporating both raw and processed digitised GIS data has revealed the limitations in relevant legislation and the case law developed around it relating to the creation of intellectual property and the ability of its creators to seek protection under the law for what constitutes valuable and marketable property. This problem exists whatever the size or complexity of the finished product, as typical GIS use ranges from the simple (such as the use of a satellite photograph to establish variations which have occurred to the course of a river in order to upgrade an existing map), to complex compilations of data from a number of different digitised sources (such as the development of risk assessment maps for insurance providers)[12]. A further limitation may be that a GIS developer may not be entitled to sole ownership of the intellectual property rights associated with the GIS.[13]
Growing recognition of the significance of the growth of GIS is evidenced by the fact that jurisdictions in both the developed world and the emerging technically advanced countries of Asia, are re-examining existing notions of ownership law. This response has included the creation of new categories of law and procedures to be adopted in its application, including not only the issue of whether data has been misappropriated, but also assessing the relative importance of the appropriated material and the necessity of its use in the defendant’s work.[14]
The making of intellectual products readily available in digital form, such as constitute the raw material for GIS, has had a revolutionary effect on traditional concepts of intellectual property. Pamela Samuelson,[15] writing in 1990, listed six of the characteristics which make this so:
"a. the ease with which works in digital form can be replicated;
b. the ease with which they can be transmitted;
c. the ease with which they can be modified and manipulated;
d. the equivalence of works in digital form;
e. the compactness of works in digital form; and
f. the capacity they have for creating new methods of searching digital space and linking words together."
Of these characteristics, it is the suitability of digital media for transmission and multiple use which makes it both so attractive as a basic GIS tool, while at the same time posing the most direct challenge to the traditional notions of patent and copyright protection.
Writing in the Harvard Journal of law and Public Policy, Judge Frank Easterbrook observed that
"to give someone a patent is to give him the right to control output, with the associated overcharge. This means not only a transfer of wealth but also a short-term loss in allocative efficiency,[16] (and that) intellectual property is no less the fruit of one’s labor than is physical property."[17]
Easterbrook added that any attempt at a trade-off between disclosure in return for protection leaves out any consideration of incentives to invent in the first place and ignores the fact that the trade-off is rather of `dynamic gains in return for allocative losses’[18]. He argued that intellectual property is in a fundamentally different category to other patented ideas in that “it can be used by many at once without being used up”.[19]
The US Intellectual Property Antitrust Protection Act of 1989 assimilated intellectual property to other property, recognising that “the right to exclude others from using your idea is no more a monopoly than is the right to exclude others from using your barn”.[20]
In the 1994 case of Galoob v Nintendo[21], Nintendo challenged the sale of Galoob’s game “Genie” claiming that it constituted a `derivative work’ from one of its own. The Appellate Court’s ruling allowing Galoob to value-add to digital resources maintained by others (in this case Nintendo) would seem to support similar utilisation of digital information by GIS users, although as the finding was not definitive in its treatment of the derivative work issue,[22] the way is not yet completely clear for such unfettered use in GIS works. In Australia, Computer Edge Pty Ltd v Apple Computer Inc[23] at the first instance denied intellectual property protection for components of computer programs,[24] and this approach would seem to have been continued in the more recent Autodesk[25] case.
Litigation involving alleged unauthorised use of intellectual property ordinarily takes the form of an action in breach of copyright owned by the plaintiff/proprietor of the property, with the form of the action being determined by the jurisdiction in which it takes place.
There is an intrinsic conflict involved with administration of copyright legislation, with the public policy underlying it which encourages the wide dissemination of information clashing with the private interest in sole exploitation for profit. This problem of the need to reconcile competing interests can be seen as being “rights based”, with a contest between an inherent private right (the right to own the product of one’s own creative spirit) and the public interest in the widest possible dissemination of knowledge and information.[26] This tension between private protection and public use is reflected in GIS creation, wherein original data producers utilise copyright legislation in order to gain protection for their intellectual property, and “downstream” GIS producers seek to have as wide access at as little cost as possible.
The Australian copyright legislation defines copyright as personal property.[27] As with the US legislation, the granting of Australian copyright does not confer right of ownership over facts or ideas expressed in the work concerned.[28] This can be contrasted with patent law which grants exclusive rights to exploit ideas - the distinction being one between an exclusive right over contents rather than form.[29]
If the GIS producer is to avoid becoming mired in expensive (and worse still, unsuccessful) litigation regarding breach of copyright when they use data which is the intellectual property gathered or produced by others, they will need to be cognisant of the dangers involved with even simple adoption (or adaptation) of that information.[30] Being unaware that particular information is subject to a valid ownership claim by others is not ordinarily sufficient to escape the reach of copyright law,[31] whatever the jurisdiction in which the alleged infringement takes place.
"Typically, a user with a personal computer will make a connection to another computer using the public switched telephone network. Many “works” within the meaning ascribed to the term in the Copyright Act 1968 (C’th) are able to be stored, transferred, amended, transmitted and reproduced via the Internet."[32]
The principal issues here for GIS producers are those relating to the twin issues of when a compilation of data becomes copyrightable as a “work”, and when does unauthorised use of such data transmitted via an electronic medium (and thereby able to be freely accessed and collected by others) constitute a breach of that copyright. Derick Martin[33] has observed that initially most jurisdictions went through a period of doubt as to how far computer programs can be regarded as “literary works”, but that by the 1980s most jurisdictions had accepted this as fact, with the debate shifting to how far it is possible or desirable to control the electronic transmission or use of material. In the USA, while a liberal interpretation of the “fair use” doctrine was approved in 1984 in Sony Corporation of America v Universal City Studios Inc[34], allowing limited software copying, by 1994 the downloading of pirated versions of computer software was rejected in Sega Enterprises Ltd v Maphia.[35]
A radical view is that protection against “copying” is outmoded in the digital era, and that there needs to be a “transmission” or “access” right, but commentators such as Charlesworth dispute this, claiming that recent statutory/common law developments mean that such a fundamental departure from past methods is unnecessary.[36] Developments in the USA and Europe have changed the focus of existing copyright law towards recognising and catering for the new digital recording and copying. [37]
Arguably, such an issue is adequately catered for with respect to conventional publication through relevant domestic Copyright legislation and through the implementation of appropriate international treaties supported by significant case-law. However, the situation with respect to GIS data protection is less clear. It is instructive for Australian users or prospective users to take note of the restrictions and freedoms which the debate in the USA over copyright protection of intellectual property in the electronic age has generated.
The rapid growth of “multi-media” publishing around the world has had the effect of further confusing this situation by blurring the traditional distinction between classes of protected published works. This may arguably have rendered the hitherto important distinction between protected and unprotected works meaningless. Some would-be “free” users of information which the Australian Copyright Act 1968 has been amended to cater for in 1984 by deeming the copyright in a computer product to be the property of its originator, have claimed that the act of publishing on the Internet or other publicly available databases gives the user of such resources an implied licence. The test of whether an implied licence exists is an objective one,[38] with the onus being on the defendant to prove the licence.[39]
A fundamental and perennial copyright question is the issue of when a work with an objective similarity to another, using the same or objectively similar facts, ceases to be a copy and become a new and therefore copyrightable work? It is in this area, perhaps more than any other, that the advantages conferred by the electronic digital revolution cause as many problems as they solve. It is deceptively easy for a person accessing a digitally produced identical copy of a work to inadvertently or unintentionally misappropriate large sections, and by means of electronic manipulation, turn them into another and new work, containing either little or no creative input of their own.
Jurisdictional limitations and complexities abound in the field of copyright. For example, when a work having copyright in one country is accessed from another through the territory of a third (such as often happens when an electronic data transmission goes through a remote server which in turn keeps at least a transient copy in its electronic files), the potential exists for a three-way litigation.
Following the adage that every cloud has a silver lining, although this has had the effect of encouraging multi-jurisdictional forum shopping, with its attendant added complication and expense, it has arguably afforded intellectual property owners a very powerful set of tools[40] with which to prosecute GIS pirates.
In Australia, attempts to address the problems posed by the revolution in digital data storage and dissemination have been piecemeal and relatively uncoordinated. [41] An overall review of copyright issues undertaken by the Copyright Law Review Committee (CLRC) gives some indication that the Australian government has “acknowledged that a major change in the form, relation and scope of traditional principles may be required”[42] to meet the challenges of the new technology. Van Caenegem described the Australian Copyright Act as “a complex, particularistic, wide-ranging and much amended statutory balance between the rights of authors or copyright owners and the rights of users”, which has achieved “a muddled complexity which only a clean sweep can now remedy (and which) cannot sustain any more incremental amendments”. [43]
In Computer Edge Pty Ltd v Apple Computer Inc[44] the High Court held that under the Copyright Act prior to its 1984 amendment (which gave specific definitions to the terms “literary work” “computer program” and “ material form”), two classes of computer programs had been established, with only one being accorded copyright protection.[45]
The notion of objective similarity of computer programs and data compilations such as are the stock and trade of GIS was followed in the 1993 rehearing of Autodesk[46] when Mason CJ observed that
"it is curious, particularly in the light of Computer Edge Pty. Ltd. v. Apple Computer Inc., that the draftsman of the 1984 amendments to the Act added the words "whether or not in a visible form" when amending the reference to a table or compilation in the definition of "literary work", but did not do so when including a computer program or compilation of computer programs in the same definition. But the definition of "computer program" makes it plain that a reproduction of a computer program need not be visible."
In its current form therefore, Australian copyright law confers a copyright on any original work created by a qualified person, that is to say, an Australian national, a resident or a citizen of one of a number of countries which have signed the international copyright conventions, specifically defining a “computer program” as “an expression, in any language, code or notation” of a set of instructions of the designated kind rather than the set of instructions itself.[47] Alternatively, the work must have been first or simultaneously published in Australia or one of the convention countries.[48]
Presently, exclusive rights which are reserved for the creators of works are conferred by Section 31 of the Copyright Act (1968), which states inter alia that
"(1) For the purposes of this Act, unless the contrary intention appears, copyright in relation to a work is the exclusive right:
(d) in the case of a computer program, to enter into a commercial rental arrangement in respect of the program;
(7) Paragraph (1) (d) does not extend to entry into a commercial rental arrangement in respect of a computer program if:
(a) the copy of the computer program was purchased by a person ("the program owner") before the commencement of Part 2 of the Copyright (World Trade Organization Amendments) Act 1994; and
(b) the commercial rental arrangement is entered into in the ordinary course of a business conducted by the program owner; and
(c) the program owner was conducting the same business, or another business that consisted of, or included, the making of commercial rental arrangements in respect of computer programs, when the copy was purchased."
Reproduction of a work so protected may only be either with express authorisation of the copyright owner or under the limited fair dealing provisions, which severely limit copying to the purposes of research or study (s40), criticism or review (s41) or for the purpose of reporting news (s42). Assessment of whether a particular act falls within any of these categories depends on the purpose and character of the dealing, and the nature of the work or adaptation, meaning that for all practical purposes the defence of fair dealing is not available to any GIS producer using or adapting data properly classified as the works of others.
It can be argued that when a work is translated into digital form as an ordered collection of binary data, it creates a “literary work” provided the creation of such a collection of data involves skill and labour and is original.[49] Notwithstanding that somewhat restricted copyright may be created in GIS works in this traditional manner, in 1992 the High Court of Australia held in Autodesk Inc v Dyason [50] that
“the definition should be understood as conferring protection upon the set of instructions itself but as doing so in a way which is adapted to the nature of copyright. That is to say, the stored set of instructions in a non-sensate form such as electronic impulses is itself protected on the basis that copyright actually subsists in any expression of it which can theoretically be made in any language, code or notation.”
The fundamental problem to be faced by Australian GIS users and regulators, and which arises in respect of spatial digital data reproduction through accessing of a database via a computer, is what exactly constitutes an act of infringement, and whether the infringing act has been authorised?
In a separate judgment delivered in the 1992 Autodesk decision,[51] Dawson J held that input “in binary digital form, that is, a string of digits, or bits, with the value of either zero or one” constitutes a copyrightable work under the Act. Given the objective similarity between this and source GIS data in digital form, it is arguable that GIS data even in its simplest form enjoys Australian copyright protection, although the use of that data must be such that it creates a “new work” as defined in the Act if a breach of copyright is to occur.[52]
Where the data accessed has already been incorporated into a work with the express approval of the owner of the copyright in that work, but no such approval has been given for incorporation of the data into another work of the type created by GIS producers, authorisation for this action may be held by the courts to not have been given. This could occur when for example a GIS map draws its factual information from a variety of photographs, surveys and satellite imagery each having individual copyright held by different owners. In this case, reliance on authorisation of the copying or use of data given by the intermediate user/producer will founder on s 13(2) of the Copyright Act 1968 which provides for such an action to amount to an infringement.[53] A more significant problem yet to be satisfactorily addressed is the fact that, once data becomes available on the Internet or becomes incorporated into any database which is readily accessible to the public, then it is virtually impossible to remove that data from the public domain.
In Autodesk Inc v Dyason, the court held that even “the use of an oscilloscope to read the output of a stimulated AutoCAD lock involved an indirect copying” and that it “constituted reproduction in a material form such that it infringed copyright.[54] However, in his 1993 Autodesk judgment, Mason CJ reversed this, holding that “in the light of the more elaborate arguments presented in this application, it is arguable that the respondents have not infringed the appellant’s copyright”, with the result that there is no clear definitive Australian judicial authority in the field.
Although it is possible for a user accused of copying information from a publicly available on-line source to plead the existence of an implied licence (as discussed previously), and the onus of proof of such a licence is on the defendant asserting it, the High Court has held that it is for plaintiff to prove that the acts in question were done without licence.[55] The implication of this position for the GIS data producer alleging copyright infringement is that they will need to have significant proof that it is their original data which has been incorporated into the new work - a task which is often well nigh impossible given the highly processed nature of much of that data.
Dawson J, in his concurring but separate judgment in Autodesk, commented that “in my view, it is not necessary that the reproduction of a substantial part of a computer program should itself be a computer program within the meaning of `computer program’ in the Act (which) includes reproduction of a substantial part in any form (whether visible or not) of storage from which a substantial part of the work can be reproduced”.[56]
The importance of Autodesk as a pointer towards judicial recognition of the need to properly classify computer programs and data compilations under the Act cannot be understated, with Mason CJ observing in the 1993 reopening of the matter that “the present case is a pioneering step into a technically and conceptually complex world”. His Honour indicated the Court’s support for the notion of extension of the protection traditionally given to `artistic’ works to computer programs and compilations, summarising the 1992 decision as
"confirm(ing) two fundamental principles. First, the definition of a "computer program" by reference to "an expression ... of a set of instructions" should be understood as conferring protection upon the set of instructions itself - which must be identified with some precision - but as doing so in a way which is adapted to the nature of copyright. Thus, the protection of computer programs is to conform to the dominant principle of copyright law that protection is given not for ideas, but only for the form of expression."[57]
However, as the judgment of Mason C.J., Brennan and Deane JJ. makes clear, this distinction must not be applied too strictly (Autodesk (1992) 173 CLR, at pp 335-336). A distinction needs to be drawn between the relevant set of instructions and the form of storage or representation of the instructions, so that a person who reproduces a set of instructions in a different form - such as by turning source code into object code - does not escape infringement. The object of protection is the computer program, not just the particular form of storage or representation chosen by the author.
The second fundamental proposition confirmed in Autodesk derives from the first. Functionality is not the proper object of copyright protection. As Dawson J. stated in Autodesk, the purpose or function of a utilitarian work is its idea, while the method of arriving at that purpose or function is the expression of the idea.
Mason CJ went on[58] to endorse traditional notions[59] by defining the phrase “substantial part” as referring to the quality of what is taken, rather than the quantity, citing Ladbroke (Football) Ltd v William Hill (Football) Ltd per Lord Pearce , who stated[60]
"Whether a part is substantial must be decided by its quality rather than its quantity. The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected. For that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial part of the copyright and therefore the courts will not hold its reproduction to be an infringement. It is this, I think, which is meant by one or two judicial observations that there is no copyright in some unoriginal part of a whole that is copyright."
In finding that there had been no breach of Australian copyright law Mason CJ held that reproduction of the part of the computer program which was alleged to have been infringed in Autodesk “may conceivably be akin to the reproduction of the material simpliciter in a table or compilation or the reproduction of something that is itself largely unoriginal.” It is submitted that the GIS user of part of a work (such as part of a map or orthophotograph) which has itself little or no discernible originality in a new work may not breach Australian copyright law.
As discussed above, with the findings of the High Court being binding on all Australian courts, it is clear that for an opening of this narrow application of copyright protection with respect to electronically stored data to occur, there will need to be legislative change, either from within Australia itself, or in response to international action.
The obverse of the problem faced by GIS producers wishing to ensure that their use of data produced by others does not constitute a breach of copyright is that of ensuring that others do not, either unwittingly or deliberately, violate one's own intellectual property rights in a GIS product.
Security of databases and data transmission is an issue of growing concern to spatial data producers and database proprietors seeking to protect their investment. The growth of the Internet with its ready access via telephone and data lines has served only to exacerbate the problem created by what Diana Sharp has described as a “converging telecommunications industry”.[61]
"Today, information technology is fundamental to the operation of most businesses, whether they are small companies or multinational corporations. In recent times, the implementation of local and wide area networks (has resulted in) an increasing dependence on the integrity and confidentiality of information stored and processed by these systems."[62]
This need for protection may be driven by a range of threats from such as “hackers”, competitors, disgruntled employees or ex-employees. There has been intense debate in the USA and to a lesser extent in Australia over the ready availability of “unbreakable” encryption codes to protect data sent on public telephone or data lines between a GIS source and its user from interception by third parties. The US government has been active in its efforts in this regard,[63] with official concern over one class of criminal activity using on-line encryption clearly taking precedence over the need to address the legitimate need to protect the intellectual property of law abiding corporate and individual citizens. Ironically, it may well be the depressing effect which the lack of readily available encryption to support use of the Internet as a retail sales medium is having on private citizens rather than concerns over this threat to a major and growing industry, which results in a reversal of this policy, making possible the protected transmission of spatial data for GIS producers.
Denicola[64] has argued that civil copyright law represents a compromise between competing social policies - the predominant one favoring the widest possible dissemination of new ideas and new forms of expression, and the other aimed at giving writers and artists sufficient monopoly over their works to ensure their receipt of fair material rewards for their efforts. The justification for such a policy is to be found in the US Constitution[65], granting Congress power to
"promote the progress of Science and useful Arts, by securing for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."
Denicola further commented that “since progress in science and the arts is often a process of creative accretion, this mandate embraces a tension between economic incentives to produce, which are provided through the recognition of exclusive rights, and unfettered access to creative works in order to maximise dissemination and to enable past inventiveness to serve as the foundation for future contributions”.[66] The Constitutionally conferred copyright power of Congress conflicts fundamentally with the right to free expression guaranteed by the First Amendment to that Constitution, which provides that no law shall be made having the effect of “abridging the freedom of speech”. The rapid advances in digital technology in the fields of copying and communication have forced these two guarantees, which had previously co-existed uneasily, into conflict as evidenced by the proliferation of litigation involving alleged theft of intellectual property.
The issue of both the creation of copyright in GIS works and the possible infringement of that held by others through the adoption or incorporation of published GIS data represents a major challenge to the viability of the industry which has grown up around digital data. The ready availability of digital data gathered from a very wide range of sources, including earth orbiting satellites, conventionally surveyed maps, aerial photographs and radar images, census and weather data has led to a number of ground breaking court decisions, particularly in the USA (and discussed below) where GIS has found a niche at all levels of public services, and has become a basic tool for countless business enterprises. The common denominator in these instances is the incorporation of digital data gained from several sources into what is, arguably by any objective standard, a new work. The US Copyright Act 1976 states[67] that although copyright protection confers on the author an exclusive right to “reproduce” the work, to “distribute copies” and to “prepare derivative works”, this protection does not extend to “any idea, procedure, process, system, method of operation, concept, principle or discovery”,[68] in so doing codifying the critical distinction[69] between an “idea” and an “expression”.[70]
As can be seen from the discussion above, there is persuasive argument that equating computer programs to GIS products is possible under Australian Copyright legislation as interpreted in cases such as Autodesk, in which Mason CJ cited English precedent[71] that
"the act of reproducing (a non-material part of the programme) may conceivably be akin to the reproduction of the material simpliciter in a table or compilation or the reproduction of something which is unoriginal."
There is however considerable confusion amongst the US Courts[72] over the extent to which computer programs are copyrightable, with several important cases ruling that they are[73], and others holding the opposite view.[74]
In Atari Games,[75] the US Federal Circuit court held that
"The author does not acquire exclusive rights to a literary work in its entirety. Under the Act, society is free to exploit facts, ideas, processes, or methods of operation in a copyrighted work. The Copyright Act permits an individual in rightful possession of a copy of a work to undertake necessary efforts to understand the work’s ideas, processes and methods of operation."
The relevance of this with respect to the use of GIS information is that there exists an objective similarity between the two processes. This is because through the process of “reverse engineering”, computer software developers can disassemble a particular computer program to ascertain its constituent elements and then reassemble them into an objectively different final product without violating the copyright over the first one.[76] As digital GIS products have at least an objective similarity to computer programs, it is arguable that the holding in Atari Games can be applied to prevent exploitation of ordinarily commercially protected data by a person who has, through `reverse engineering’ accessed that data. Following the decision in Atari Games, the rights of users are confined to learning and using the unprotected ideas and processes contained in the original works.[77]
There is however an expectation in expert circles that the growth of a similarly confused situation to that which presently exists over the need for a “sweat of the brow”[78] component to establish copyright, is to be expected[79]. In Australia, this is somewhat lessened by the automatic creation of copyright whenever a new work is created, and this is discussed further below.
Responsibility for the protection of copyright in the USA falls within the ambit of the Patent and Trademark Office, and the pressure created by a massive upsurge in patent infringement appeals caused by widespread misuse of digital data became such that in 1980, the US Congress created the Federal Circuit in Washington DC with a limited but exclusive jurisdiction over patent infringement appeals from all of the nation’s federal district courts. By 1991, such appeals constituted more than fifty percent of the court’s 709 case load for that year.[80]
Central to deciding if particular data are copyrightable is deciding whether it simply records facts, or whether it incorporates sufficient originality to constitute a new and original work. The US Supreme Court, in the landmark case of Feist Publications Inc v Rural Telephone Service[81] held that there is a distinction “between creation and discovery: the first person to find and report a particular fact has not created the fact; he or she has merely discovered its existence”. In coming to this conclusion, the Court cited the US Constitutional requirement for originality[82] as mandating this approach,[83] with the result that the decision is of only limited assistance in interpreting Australian law relating to use of compiled facts such as those which are a feature of GIS when viewed in the light of relevant Australian cases such as Autodesk. It can be argued that the very fact that GIS users typically aggregate data gathered from multiple sources means that the new product is sufficiently removed from its data source to mean that the initial “vehicle itself dissolves into an unprotected idea as protection is sought for succeedingly higher levels of generality and abstraction”,[84] making it difficult for the owners of the original works to continue to enforce their copyright.
A fundamental issue therefore is firstly whether the particular data in its original form used in this manner contained sufficient originality to constitute a copyrightable work, making its unacknowledged adoption a breach of the original author’s copyright, to an extent which is actionable, and secondly, if that is the case, whether such copyright has survived the transformation process into a new work. This particular difficulty arises from the fact that, as opposed to fictional works, GIS works contain little if any detectable originality due to their nature as data compilations. Professor Denicola likens the protection granted to compilations of data under traditional notions of copyright to that “conferred on the plot or structure of a novel or play - isolated incidents or scenes may be appropriated provided the literal expression is not lifted”,[85] concluding that any recognition of collections of facts as copyrightable expression permits abandonment of the traditional “arrangement rhetoric” in favour of a rational analysis of the character and effect of the defendant’s use.[86] In GIS works, substantially the whole published work may be incorporated into a new work without any substantial modification capable of being defined as “original”, as they comprise “facts” as opposed to “expressions” typical of literary works.
Until Feist, US Courts[87] held that the test of creativity and therefore copyrightable originality residing in any particular work was whether the subject work was generated through “industrial collection” or by “sweat of the brow”[88] as opposed to the aggregation of available data provided through the efforts of others.
The definition[89] of `author’ had undergone little change until the landmark decision in Feist. In that case, the court held that the unapproved and unacknowledged incorporation by that firm of Rural Telephone’s white pages listing of its telephone customers did not constitute a breach of copyright, as the creation of such a list by Rural Telephone failed this stricter test for creativity.[90] In a comment which serves both to simultaneously illustrate the problem facing compilers of computerised databases seeking copyright protection and the ease with which GIS users can make sufficient “creative” alteration to the data in order to avoid those claims, the Court ruled that
"to qualify for copyright protection, a work must be original to the author. Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works, and that it possesses at least some minimal degree of creativity. To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, “no matter how crude, humble or obvious” it might be. A work may be original even though it closely resembles other works, as long as the similarity is fortuitous, not the result of copying."[91]
It is arguable that it is the presence of this “creative spark” which provides the test of originality in GIS matters, particularly where the work in dispute is the product of the intermingling, however skilfully done, of information gleaned from other sources: that is to say, where the end product falls within “a narrow category of works in which the creative spark is utterly lacking or so trivial as to be virtually non-existent”.[92] It can be argued that in Feist, dealing as it does with telephone number listings and being devoid of anything by way of comment or even remotely editorial, the Supreme Court had before it a particularly `black and white’ situation which may itself be atypical of the sort of situation with which a lower court could find itself faced in matters involving GIS data. Notwithstanding the preceding argument, Feist remains the definitive interpretation of US Copyright law, and as such could well constitute the light at the end of the tunnel for GIS compilers and users desirous of adopting and processing raw data provided by others. That is not to say that Feist can be expected to remain unchallenged, as it represents a major departure from the Courts’ previous position and, as Reuben puts it “given the billions of dollars at stake, and the irreconcilable split between the circuits, Supreme Court intervention seems inevitable”.[93] He cites “one practitioner” as observing that one reason for the court’s silence may be that “the justices are afraid to take technical cases for fear they may look stupid”.[94]
In Australia, however, the relevant legislation[95] confers protection on a “literary work” which includes
"(a) a table, or compilation, expressed in words, figures or symbols (whether or not in a visible form); and
(b) a computer programme or compilation of computer programmes."
This legislative inclusion of the concept of compilation as being copyrightable as a literary work reflects the findings of the High Court in Victoria Park Racing and Recreation Grounds Co Ltd v Taylor[96] in which Dixon J held that “no doubt the expression `literary work’ includes compilation”. However, His Honour adds the rider “but some original result must be produced; this does not mean that new or innovative ideas must be produced.” (emphasis added)
This combination of Australian legislative policy and case law applying a broad definition to `authorship’ arguably works against the application of the principles espoused in Feist to GIS data compilation in Australia. For that decision to have any impact in Australia, the 1993 finding in Autodesk will need to be reversed, as that case can be regarded as powerful argument in support of the notion that unacknowledged incorporation of digital source data in GIS applications even in its most basic form constitutes a breach of copyright.
European Union (EU) competition law ostensibly caters for the protection of intellectual property rights within its jurisdiction,[97] and all members have relevant copyright protection laws. This is however complicated by the fact that only the UK and Eire have legislation based on common law principles such as is the case with both Australia and the Unites States and therefore being concerned with the exploitation of the economic rights in expressive works,[98] with the other countries of the EU deriving from the principles of authors’ rights.[99] The potential for conflict between the common law based system and EU law is illustrated by the Commission’s decision in Magill TV Guide/ITP,BBC and RTE[100] which argued that even though the Irish Court had held that copyright existed in the television program listings in question, “the relevant policies and practices of the applicant are not covered by copyright protection as recognised in Community Law”.[101] Reed observes that the effect of the European Community law position is having an effect on Irish law, with the court of first instance holding that the “essential function” of copyright is “to protect the moral rights in the work and ensure a reward for creative effort”.[102]
The European Commission issued a Green Paper on Intellectual Property and Information Highways in an attempt to develop its attempts to update the computer software laws of members states commenced with its Software Directive. The Brussels Convention on Jurisdiction and enforcement of judgments prescribes almost automatic enforcement of judgments in other EU countries, even in the UK with its common law system[103], meaning that anyone seeking unauthorised incorporation of data which is the legal property of others will find it extremely difficult to find a forum within the EU which will protect it from an unfavourable judgment in another EU jurisdiction.[104]
Notwithstanding these efforts to create an even European playing field, there exist significant differences in national interpretation. In England and Wales, as discussed above, there is a concentration on the test of sufficiency of skill and labour involved in the compilation concerned. Dutch law, theoretically at least, has a similar originality requirement, although this has been coming under some strain. In Van Dale v Romme[105] which involved straight copying of a 230,000 entry Dutch language dictionary, this requirement was actually applied against the plaintiff, or originator of the dictionary. In this instance, the Supreme Court of the Netherlands held that there was insufficient originality in the dictionary as produced by Van Dale to warrant granting its creators copyright protection - it was adjudged as being simply a list of words or compilation[106] and thereby not warranting protection against those who would wish to make use of it.
The German courts have demonstrated a strict approach in applying the test of originality,[107] as indicated in Inkassoprogramm[108] which denied copyright coverage to collections of data (such as is the raw material for GIS works) which have not required “more than average programming skills to develop”.
The French interpretation is believed to lie somewhere between the extremes represented by the English and the German approaches, as does the Dutch.[109]
Spoor[110] argues that present day copyright law is ill-equipped for protecting data collections, agreeing with Ginzberg that
"the inhospitability of the personality concept of copyright to fact protection creates uncertain and inconsistent adjudication of claims involving low authorship works."[111]
In an attempt to meet this problem, both the Dutch and German governments have enacted legislation providing at least basic protection[112] for the publishers of “even those (publications which are) devoid of originality - especially all kinds of lists, directories and so forth ...although this is limited to `writings’ only. Nevertheless, the prevailing view is that it also applies to data in electronic form, as long as this too can be seen as writings.[113]
Two international conventions, Berne Convention for the Protection of Literary and Artistic Works of 1886 and the Universal Copyright Convention of 1952, give Australians copyright protection in those countries which are signatories to the Conventions. Both the UK and the USA are signatories to the Universal Copyright Convention, and since 1989, when the latter finally acceded, members of the Berne Convention. This guarantees protection to two of the most important markets for Australian creators of literary, dramatic, musical and artistic works. The Australian legislation incorporates the provisions of the Berne and Universal Copyright Conventions in ss 184-188 of the Copyright (International Protection) Regulations 1969.
Several other international conventions and agreements have an impact upon copyright protection. For example, Article 15 of the International Covenant on Economic, Social and Cultural Rights 1966 requires respect for the rights of authors so that they may enjoy the benefits of the 'moral and material interest resulting from their works'. The Universal Declaration of Human Rights protects the moral and material interests from any scientific invention, literary work or artistic production of which a person is the author or creator. Finally, the GATT Treaty also requires signatories not to apply intellectual property laws in a discriminatory fashion.
In the international arena, the World Intellectual Property Organisation (WIPO) addressed the issue of changing copyright legislation at its World Computer Conference in 1991, concluding that “national copyright laws and the international conventions administered by the inter governmental organisations are in fact part of the life-blood for large segments of the computer industry because they provide the protection that the industry needs for marketing its products”.[114] Unfortunately, the pace of change already evident at that time has now increased to the point at which it is becoming clear that the placatory approach adopted by WIPO at that time has been left behind by the sheer pace of Internet and on-line database development and availability.
The persistent problem represented by some developing countries which are either unwilling or unable to control the activities of those within their jurisdictions who seek to appropriate digital data, remains largely unaddressed. In such instances, recourse to the rule of international law would seem to be ineffective no matter how developed that law may be. The solution adopted recently by the USA of the application of overt bilateral economic pressure is an undesirable result. WIPO’s mission statement lists the devoting of a substantial part of its activities and resources to development cooperation with developing countries in an effort to address this problem, which has been exacerbated by the ease with which they can access the Internet and other digital communications.
Although the distinction is not always a clear one, patents are concerned with the invention or creation of new forms, while designs are concerned with the adaptation of existing forms to present constraints. Design law gives the designer a monopoly in the appearance of a particular article. Thus, while a car was once the subject of a patent and something like a new orbital engine is clearly within the province of patent law, the design of a new car or house to fit present environmental constraints such as cost and availability of materials will be the subject matter for the law of designs. The law of designs is governed by the Designs Act 1906 (Cth). It is important that the design not involve a 'method or principle of construction' so as to overlap with the patent system. Design law is concerned with, and a design refers to, the appearance of an item, its shape, configuration, pattern, or ornamentation. The design must be 'to an 'article' of manufacturer so that without the design the article still retains its essential character, for example, as a chair, a knife, a dress, a toy, a wash basin, jewellery[115].
The purpose of the design law is twofold: (a) to encourage and reward invention by giving the registered owner of a design a monopoly for a limited period so that it may be commercially exploited; and (b) to prevent confusion between articles bearing the registered design and infringing articles.
In contrast to copyright, a design in order to receive protection must be registered. This requires completion of the appropriate form and provision of the required drawings, sketches etc to the Designs Office. The Registrar of Designs will then decide if the design qualifies for registration. To be registrable a design must be new or original. The requirement of novelty for the registration is not very arduous and even the combination of a series of known features in a different way may qualify. At the same time, as noted in U.P.I. Group Ltd v. Dux Engineers Ltd[116]:
"If there is substantial novelty or originality small variations in the article alleged to infringe will be unlikely to save the defendant. On the other hand if the features of novelty or originality are but little removed from prior art small differences may avoid infringement".
Thus, the court may take into account the relative merit of a design in determining the extent of protection afforded by intellectual property law.
Registration will be refused (s 17(1)) if a design differs only in immaterial details or features commonly used in the relevant trade from a design that was previously published, used or registered in Australia in respect to the same article, or if it is an obvious adaptation of a design that previously was registered, published or used in respect of any other article. Upon refusal of registration, the applicant is entitled to a hearing. '[W]hat the proprietor of a design gets by its registration is a monopoly for one thing only, and that is one particular individual and specific appearance'; Re Wolanski[117].
Registration of a design gives protection for one year from the date of application. During this year any person is free to formally notify the Registrar of any matter that has been published which shows that the design was not new or original. Protection may be extended for another six year period followed by two further five year extension (giving a total 16 years). After this period the design may be used freely by anyone.
As with patents, Australian designs can be registered in other countries. Most Australian designs registered in other countries involve: Japan, USA, UK, Germany and New Zealand. The UK registration has a particular importance to Australians interested in the Asian market because Singapore, Hong Kong and Malaysia do not have their own register for designs but will accept designs registered in the UK.
Note that designs which are primarily literary or artistic (e.g. involving calendars, book jackets, greeting cards, certificates, dressmaking patterns, leaflets, medals and stamps) are excluded from the Designs Act (Regulation 11) but are eligible for protection under the Copyright Act. Also, to prevent double coverage under the Copyright and Designs Acts there is no copyright protection provided in respect to a design which is registered under the Designs Act. In other words, the owner is only given relief under the Designs Act. In addition, the new Copyright Amendment Act 1989 with limited exceptions removed three dimensional industrial products from copyright protection by providing that if they are to receive protection at all, it must be under the Designs Act.
Registration of the design gives its owner a legal monopoly over the use of the design. Thus, anyone without permission imitating, copying, importing for sale or use, hiring, etc any article imitating a design registered under the Act is guilty of an infringement.
Remedies for infringement of this legal monopoly include damages, injunctive relief and an accounting of profits. However, a defence is possible where the defendant can show that the infringement was innocent, and that all reasonable steps were taken to determine its existence ( s 32B).
The Committee Inquiring into Intellectual Property Protection for Industrial Designs has recently released a report for public comment. [118] The Report contains a number of recommendations in regard to the adequacy of legal protection of various industrial designs as well as the relationship between the Designs Act and Copyright Act. For example, a major problem is that of characterisation. For example, should a design for a particular construction such as a building be protected by copyright law? Registered as a design? Or, to the extent it involves a particular method of construction even possibly registered as a patent? Such issues highlight the need for greater legislative guidance so that developers and users of GIS can be sure in the protection of their IP rights and the avoidance of the infringements of rights of others.
Although GIS development will rarely involve the production of a patent, it is possible, especially in relation to some software applications of a novel kind and for that reason patent law is mentioned briefly here. The law regarding patents is found principally in the Patents Act 1990 (Cth). A patent is a legal monopoly for a limited period of time which the law confers on the patent owner. It authorises an inventor to make, use, transfer, withhold from use, or exclude others from making, selling, or using the patented item. A major purpose of patent law is to encourage the development and use of inventions. Innovation is encouraged by giving inventors a designated period in which they can be rewarded for their creativity. By giving the holder of letters patent the exclusive rights in their invention other competitors are prevented from 'free riding' - unfairly appropriating the inventors' developmental efforts. The availability of patent protection also encourages investors to advance capital in the promotion of new inventions. The public receives a benefit in that the price which the patent holder pays is the disclosure of the invention to the public who can learn from and perhaps even improve upon the invention by subsequent patents. In Australia, the need to formally disclose the details of the item to be patented makes this significantly more cumbersome than simple use of the automatically available (on creation of a copyrightable work) copyright legislation to afford protection from unauthorised use.
Section 18(1) of the Patents Act 1990 (Cth) provides that an invention is patentable if it is a 'manner of manufacture’ which, compared to the prior art base existing before the claim, is novel and involves an inventive step; is useful; and was not secretly used before the priority date of that claim. The priority date is the date in which, as part of the patent application, the complete specifications of the invention are lodged.
The word 'manufacture' is not capable of precise definition. Indeed in Australia the important High Court decision, National Research Development Corp. v. Commissioner of Patents,[119] clearly disapproved any attempt to treat the words as a rigid statutory formula. Examples of inventions which are patentable, assuming they are novel, are: medicines, a stove, a new type of game, improved strains of tulips or other plants, a telescope or an engine or some part of an engine or instrument, a new process to be carried on by known implements or elements acting upon known substances and ultimately producing some other known substance, but producing it in a cheaper, better or more expeditious manner.
What is regarded as patentable has evolved over time and continues to change. In the case of computers, for example, software programs were viewed by the patent law, until very recently, as a mere set of instructions for calculation and consequently were not patentable. This logic extended to computers themselves unless the machine itself was novel. Thus the anomaly occurred that a new computer hardware solution to a problem was patentable, yet the same result obtained by the development of new software was not patentable. However, recent court decisions in the United States[120] and Australia[121] have permitted the acquisition of a patent for a software invention as long as the final result is of some usefulness in terms of economic endeavour.[122]
The Act provides for injunctive relief (order from the court restraining further infringement), an accounting for profits made from the unauthorised use of the invention and/or for damages sustained by the patentee.
The Act provides that the effect of a patent is to grant to the patentee the 'exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to exploit the invention' (s 13(1)). Moreover, the exclusive rights are personal property and are capable of assignment and devolution of law (s 13(3)). The effect of the patent extends throughout the patent area. An assignment of a patent 'must be in writing and signed by or on behalf of the assignor and assignee' (s 14).
A patent is a personal property right and as such may be assigned and is capable of devolution. In order to protect the holder of these rights and give notice to third parties, the Act establishes a patent register requiring a mortgagee, licensee or any other interest in a patent to be registered; and while equitable rights are preserved, if no entry of an assignment or other interest is made in the register, it is generally inadmissible in evidence of proof of title (ss 186-197).
It is also important to realise that an Australian patent will only enjoy a legal monopoly in Australia. If legal protection is sought in other countries the patent must be registered in those countries. To aid this process many countries have signed the Patent Cooperation Treaty which allows an Australian patent holder to file a single international application which will be effective in each of the signatories to the convention. The effect of the international register is to give Australian patent holders an 18 month period before they have to formally register their patents in the particular countries indicated on the international application. This is an important product testing time to determine the strength of the market, obtain further backing, set up distribution channels and so on.
There exist a number of other forms of protection beyond the regimes discussed above, based on such concepts as trademarks and trade names, unfair competition and trade secret protection, or provided for in special national legislation,[123] which are also relevant to the protection of IP rights in relation to GIS. These issues are discussed briefly in this section.
Due to their importance as an alternative method of trade information protection, trademarks and trade names deserve a special mention. This sector of the law complements that dealing with the ownership of intellectual property and copyright in original works, although it is significantly narrower in both its reach and its application. In Australia, the Trade Marks Act (1995) provides protection against unauthorised usage of signs used or intended to be used to distinguish goods or services dealt with or provided in the course of trade by a person, provided that the “trade mark” has been duly registered.[124] Use of a sign which is substantially identical or deceptively similar to the trade mark is prohibited (s120(1)), with significant implications for the publishers of World Wide Web pages who include, for example the Windows 95 trademark (the property of the Microsoft Corporation) as a marketing tool designed to convey no more than software compatibility.
Each Australian jurisdiction has a Business Names Act which is substantially identical. The purpose of business name legislation is to protect the public by requiring persons who conduct business in a name other than their own to register their names, addresses and nature of the business carried on, etc. Business name legislation also gives limited protection against passing off by denying registration for names which are identical or substantially similar to a previously registered name. As to company names, s. 374 of the Corporations Law requires a company to be registered under a chosen name which must be used in virtually all company transactions. A name must be applied for two months prior to registration of the company and the Australian Securities Commission must confirm whether the name is available (s. 367). With the establishment of the Australian Securities Commission, each company is allocated an individual company number--the Australian Company Number (ACN).
In practice, business name legislation suffers from a number of serious drawbacks. Firstly, business name legislation and the registration of a particular name does not confer any proprietary rights over the name. In order to protect a business name, in addition to registering it under the Corporations Act , one should also try to get the name registered as a trade mark under the Trade Marks Act. Still other protection against particular forms of misconduct and misappropriation by others is available under the Trade Practices Act (for example s. 52, engaging in misleading or deceptive conduct, and s. 53 misrepresentations) or in common law remedies such as the tort of passing off or the tort of deceit. These are discussed below.
Secondly, not only does business name legislation fail to grant any proprietary rights in a name, but the Acts which do confer such rights (e.g. Trade Marks Act ) are not without their inconsistencies in that conflicts may exist when a registered trade mark is used as part of a registered company, business, or association name or when a company, business or association name is used as part of a registered trade mark.
Example: Ocean Pacific Sunwear Ltd v Ocean Pacific Enterprises Pty Ltd.[125] This case featured a conflict between Ocean Pacific Enterprises whose registered business name included the words 'Ocean Pacific') and Ocean Pacific Sunwear which was the owner of the trade mark 'Ocean Pacific'. Among other activities, Ocean Pacific Enterprises was involved in the manufacturer and sale of women's clothing under the name 'ROSENGLA BY OCEAN PACIFIC'. It was held that Ocean Pacific Enterprises had to either change its company name or cease its association with clothing goods. Doussa J. stated:
"The mere incorporation of the words 'Ocean Pacific' in the respondent's name, without more, would not infringe any legal right of the applicant; . . . .however, as soon as the respondent engages in trade and commerce, the presence of those words in its name has the potential to do so. It is clear the use of the words 'Ocean Pacific', in relation to the distribution for sale of clothing apparel in those sections of the clothing industry in which the applicant sells goods will infringe the applicant's registered trade marks, will contravene ss 52, 53(c) and 53(d) of the Trade Practices Act, and will amount to passing off."[126]
The lesson from the Ocean Pacific case is that in establishing a new business, for example in relation to a GIS, and considering a particular company name, one must simultaneously be aware of several legal regimes: business name legislation, trade mark legislation, Trade Practices Act, and the common law tort of passing off (see discussion below).
IP rights do not exist in a vacuum. The commercialisation of GIS brings into play two major sections of the Trade Practices Act (TPA), the consumer protection provisions of Part V of the TPA; and the unfair competition provisions of Part IV. Because these issues were dealt with in some detail in the risk management article in the previous issue of this journal, they will only be mentioned briefly here.
In violating another's IP rights, especially in a commercial context, it is often the case that the infringer also engages in misleading or deceptive conduct. Such conduct brings into play, not only Copyright and laws directly related to IP protection, but also more general laws such as the Trade Practices Act. Section 52 the Trade Practices Act (and its counterpart in the Fair Trading Act of each State/Territory) establishes a minimum standard of commercial behaviour. A corporation (in the case of the TPA) or a person (in the case of the Fair Trading Legislation) "shall not in trade or commerce engage in conduct which is misleading or deceptive or likely to mislead or deceive." In an action under the Act it is unnecessary to prove the existence of business reputation or the intention of the defendant to mislead. If the plaintiff is seeking injunctive relief (an order stopping defendant from engaging in the offending conduct) it is also unnecessary to show that the plaintiff has suffered or is likely to suffer actual loss and damage as a result of the defendant's conduct. The plaintiff, under the Trade Practices Act only must show that the defendant engaged in conduct which was misleading or deceptive or likely to mislead or deceive and that the plaintiff has suffered loss as a consequence.
Part IV of the TPA is designed to promote competition. It does so by prohibiting such conduct as uncompetitive mergers (s 50), resale price maintenance (s 48), misuse of market power (s 46) and anti-competitive arrangements, understandings or agreements (s 45) and anti-competitive vertical structures which give exclusive-dealing rights to suppliers and others (s 47). Because a GIS may involve information which is vital to infrastructure development and because, in a small market such as Australia, GIS developments have a tendency toward a monopoly in relation to the provision of such information, Part IV provisions must be carefully considered, especially given the substantial penalties (up to $10 million for each offence) which may be imposed.[127] Finally, to the extent that a GIS involves essential information available to a wide range of users, including competing commercial interests, the GIS provider must be careful to deal with such parties fairly and equitably. Fair dealing and an open process must also exist in relation to tendering and contracting out aspects of the GIS development and service delivery.
IP rights do not depend solely on protection through copyright or patent. In many contexts, IP rights in relation to the development or commercialisation of GIS technology will be asserted against a former employee, a licensee or some other party. Accordingly, it is important to realise that in addition to statutory protection, other doctrines exist which have been developed by courts to protect IP rights in particular contexts and on several grounds, including: (a) breach of contract; and (b) equitable duty of fidelity owed by an employer to an employee; (c) duties imposed on third parties not to induce a breach of contract; (d) the restraint of trade doctrine in contract law; and so on. Four of the most important of these legal theories are breach of contract, breach of confidence, breach of an equitable duty of fidelity and the tort of passing off. The whole area involving the protection of trade secrets and confidential information is one which has grown rapidly in recent years and has special relevance in a marketing context in which a business person wishes to protect the trade secrets, special databases, customer lists, new designs, promotion plans, financial reports - almost any information connected with a GIS which may be of a commercial benefit or contain the risk of harm should the information be revealed. It is especially important in those areas, such as the marketing and development of computer software, in which patent and other statutory protections will often be inadequate because the item is not novel enough, or registration under the statute takes too long, or the company does not wish to disclose the information to the public as required in the case a patent.
An employer may impose, for example, as part of the employment contract, either expressly or by implication, an obligation of confidence on an employee in regard to development, plans, customer lists, accounting information and so on. Similarly, a person contracting for the development of computer software or a GIS may insist on limitations regarding the number of people who work on the project, the right to obtain a profile on the background of all employees on the project and the right to veto any particular employee from working on the project. When based upon a breach of contract, the court may apply all the common law and equitable remedies normally associated with contracts which include damages as well as an injunction to stop the employee or other contracting party from disclosing the information. As an equitable matter, the court may also in a breach of confidence action, grant damages, injunctive relief, orders for delivery up or destruction, Anton Piller orders or an account of profits.
However, even in the absence of a contract between the parties, a court has the equitable jurisdiction to remedy a breach of confidential information. In order to bring an equitable action for a breach of confidence: (a) the information must be secret, ie have the relevant quality of confidence; (b) the information must have been imparted to or obtained by the defendant in circumstances importing an obligation of trust and confidence; and (c) the information must have been used without the consent or authority of the owner and to the owner's detriment.[128]
The nature of this equitable power was discussed in Moorgate Tobacco Co. Ltd v. Phillip Morris Ltd[129] in which the High Court affirmed that the basis of the court's equitable power to address a breach of confidential information "lies on the obligation of conscience arising from the circumstances in or through which the information was communicated or obtained".[130] His Honour Justice Deane noted that as long as the information is confidential it is not necessary that it be shown to be "commercially valuable" but only that 'its confidentiality or secrecy is of substantial concern' to the aggrieved party.[131]
This means that government secrets as well as trade secrets are capable of protection, though in the latter case a defence of public interest is possible. The scope of protection is quite broad and applies equally to oral as well as written communications of confidential information. Thus, it was held in Johnson and Bloy (Holdings) Ltd. v. Wolstenholme Rink Plc[132] that an ex-employee could be restrained not only from the disclosure of information on documents but also from the disclosure of information which the employee heard and only had in his head. Indeed, in one case confidential information was held to extend even to the unauthorised appropriations of cuttings from a fruit tree; Franklin v. Giddins.[133] Finally, the equitable duty to respect confidential information also applies if the confidential information comes from a third party and the person who receives the information learns, or has reason to suspect, that the information received was imparted in a breach of someone-else's confidence.
The obligation in regard to confidential information lasts as long as the information remains "relatively secret". Thus, something like the secret formula for Coca Cola may endure indefinitely. In Ansell Rubber v. Allied Rubber[134] Gowans J considered the following factors in deciding whether or not information is and remains confidential: extent of measures taken to guard and maintain the secret; the value of the information to the owner and potential value to competitors; amount of time, effort and expertise expended in developing the information; the ease with which the information could be acquired or developed by others; the extent to which the information is known to employees and others involved in the business; and the extent to which the information is known outside the owner's business.
Regarding possible defences, it is open to the defendant to show that the disclosure of information is in the public interest, notwithstanding the breach of confidence. For example, a disclosure may be justified where there is a crime or civil wrong in which case it is in the interest of the public to permit disclosure. Another defence could relate to the disclosure of confidential matters which are "medically dangerous to the public", or disclosure in regard to conduct which has misled the public.[135] Also, protection is granted to the defendant who is a bona fide, good faith purchaser, for value, and without notice of the breach of confidence. There is arguably no breach of confidential information should the defendant independently discover the information for itself, for example by reverse engineering. It may also be a defence that the information merely constitutes the general system and "know-how" of a business in that industry and is therefore not strictly speaking a trade secret. As illustrated by the examples below, much depends upon the facts and circumstances of each case.
Example: Secton v Delawood[136] in which two world-class engineers were sued for breach of confidence by their employer. Subsequent to leaving their employment the engineers continued their research and developed additional products. Their former employer claimed that these new products were the result of confidential information belonging to him. The court held for the defendants. In these circumstances, it was the defendants who developed the confidential information which they shared with their employer as per their employment contract. However, perhaps different contractual language and slightly different circumstances could have given a different result as suggested by the next case.
Example: Cranleigh Precision Engineering Limited v Bryant[137] where the defendant was the manager of plaintiff's business and a designer of swimming pools. Defendant resigned his position and set up a rival company. Plaintiff sought an injunction stopping the defendant from using confidential information gained while in the employment of the plaintiff, despite the fact that the information had largely been developed by the defendant. The court granted the injunction.
Yet another possible basis on which to protect confidential information is the equitable duty of fidelity, whether it arises out of the employment relationship or a fiduciary relationship (ie one of trust and confidence) which existed between the parties. The nature of this equitable doctrine is still evolving, but the leading case in this area is Hospital Products Ltd v United States Surgical Corporation.[138] It involved a dispute between a US company which manufactured surgical products and contracted with the defendant to be its Australian distributor. The defendant, however, copied plaintiff's products and set up its own company to manufacturer and supply products to former customers of the plaintiff. Plaintiff then sued defendant alleging, among other things: passing off, breach of the Trade Practices Act, breach of copyright, breach of confidence and breach of a fiduciary relationship. On the question of a fiduciary relationship, a majority of the High Court held that it was unlikely to exist in the present case where the parties negotiated at arm's length and on an equal footing. In coming to this conclusion Gibbs, CJ, noted:
"However, an actual relation of confidence--the fact that one person subjectively trusted another--is neither necessary for nor conclusive of the existence of a fiduciary relationship; on the one hand a trustee will stand in a fiduciary relationship to a beneficiary notwithstanding that the later at no time reposed confidence in him, and on the other hand an ordinary transaction for sale and purchase does not give rise to a fiduciary relationship simply because the purchaser trusted the vendor and the latter defrauded him."[139]
The dissent, led by Mason J, as he then was, stressed that contractual and fiduciary relationships may co-exist and indeed the existence of a basic contractual relationship has in many situations provided a foundation for the erection of a fiduciary relationship. In conclusion, there does not appear to be any definite formulation of what constitutes a fiduciary duty. Perhaps this is as it should be, given the need for equity to be flexible and account for the circumstances of each case.
Passing off is concerned with protecting against losses caused when a person conducts their affairs in such a way that customers are led to mistake a second person's goods for the first person's. The aim is to protect a trader's goodwill and reputation. The action of passing off thus may be used to prevent misappropriation of trade marks and business names as well as copying of a product's get up and packaging, or any conduct which would tend to wrongly associate plaintiff's business with that of the defendant's. However, with the advent of the trade practice legislation, passing off actions are utilised far less frequently today. Nevertheless, the tort of passing off represents the principal common law protection against the misuse of industrial property rights.
Many other laws may come into play depending on the context in which GIS development and commercialisation take place.
To date, the major developers of GIS have been government organisations. In Australia, as elsewhere,[140] governments facing tighter budgets have responded by using cost recovery[141] and even commercial gain[142] to meet financial needs. This blurring of public and private goals has further muddied the waters in relation to IP rights which must be balanced against the public's desire for free access to information which has often been collected at the taxpayers' expense.[143] While it is beyond the scope of this article to discuss such issues in any depth, it is important to realise that IP rights must in certain contexts give way to public accountabilities.[144] Thus, in the case of a government GIS, various statutory provisions (eg confidentiality) in relation to the collection of information by government departments and administrative law provisions such as the Freedom of Information Act and Privacy Act,[145] may be paramount.[146]
It is beyond the scope of this article to discuss criminal law, but in some cases there may even be criminal sanctions as well as civil remedies available to address infringements of intellectual property rights. Criminal laws such as theft, embezzlement, secret commissions, computer theft, fraudulent conversion and false accounting are among the provisions which may be relevant.[147] While 'white-collar' crime has largely gone undetected, the National Crimes Authority, Trade Practices Commission, National Companies and Securities Commission and other bodies are beginning to take action to address this area.
Although beyond the scope of this article, other legal uncertainties exist regarding the legal implications of the use of the Internet or an intranet to distribute spatial data from suppliers to users. Copyright issues, rights of access, questions of which law applies, and privacy are just a few questions which remain to be answered. Revenue and customs law may also come into play in circumstances where an organisation seeks to make a commercial gain from the distribution of such data to suppliers.
The international implications of the digital revolution with its borderless nature and ease of interception can be expected to accelerate moves already afoot to bring a harmonisation of international law, including new cooperative agreements and multi-jurisdictional investigations.[148] This has significant implications for the Australian producer and spatial data user, with developments in the USA and Europe likely to have a significant influence on decisions of whether to publish electronically, to use particular raw or value added spatial data sources or even to maintain databases of their own with Internet interconnectivity.
It seems clear that, such is the pace of technological change and the exponential growth in the scope of use of GIS digital data that copyright and patent law, both in Australia and elsewhere, has little hope of establishing a satisfactory and implementable regulatory regime. Although the encryption of data is seen by both supporters of unrestricted dissemination of information electronically and by the regulatory arms of government (especially those involved in law enforcement) as being anathema, that seems to be emerging as the only realistic method of preventing information piracy reaching epidemic proportions.
In the face of the historic inability of either legislators or the courts to curb this tendency, it is in this way (through the creators of works controlling the publishing of works electronically, or at least encrypting it so that only those whom they wish to access the information can do so) that these particular authors and publishers will be able to receive value for their work and to control who is able to utilise it for further processing and republication as developed GIS products.
Although the High Court of Australia’s 1992 decision in Autodesk seemed to demonstrate the intent of the Australian judiciary to come to grips with the problem, its subsequent retreat into its previous position of denial of copyright protection for users of data compiled by others seemingly dashed the hopes it raised. It would seem that, other than through encryption, legislative amendment combined with international moves to combat the transborder problems caused by the explosion of on-line availability world-wide would seem to offer the best avenue for getting the protection GIS producers claim.
As this article went to press, the implications of the decision[149] handed down by the High Court of Australia on an appeal by Telstra (the principal telecommunications carrier in Australia) against a Federal court ruling on copyright over data and works transmitted over the internet were beginning to emerge. The judicial comments made in the decision call for attention to be given to the implications of the technological revolution on traditional notions of copyright, and have potentially significant implications for the use of the internet as a data transmission medium[150]. In particular, Kirby, J in his separate judgment indicated considerable dissatisfaction, perhaps even frustration with clearly inadequate existing Australian legislation, and his comments seem sure to stimulate public discussion at a level of intensity seldom seen before in the copyright arena when he observed that
“Parliament may need to consider these questions - and others arising - and to formulate a legislative response to them”.
The court, in a 3-2 verdict, held that internet network providers are liable in copyright for the content which passes through their service, and it is this aspect which has drawn the attention of all manner of users and which has potentially significant implications for GIS producers and user.
The President of the Australian Internet Alliance, Kevin Dinn, has made the observation that “it could open the floodgates on all kinds of copyright, like images and text”[151], a notion which is drawing support from media commentators[152], and which must surely add to the urgency of substantial legislative reform if Internet Service Providers (ISPs) are to be given the degree of protection they argue is essential if they are to operate as the transmission medium of choice for users such as GIS producers.
Another, and no less significant aspect of the decision is that raised by Paul McNab of Coopers & Lybrand[153] that any payment received by an internet provider in return for use of its internet server could be considered a royalty, in effect reinforcing notions that the internet provider is an effective, if temporary owner of the work being transmitted, with obvious economic implications for them and their users.
This new twist in the legal and technological framework in which GIS operates will be examined in detail in a future article in the JLIS.
* Arthur Hoyle is a Lecturer in Law, researcher and PhD candidate; Eugene Clark is Professor of Law and Head of School; George Cho is Associate Professor of Geographic Information Systems and the Law. All three authors work at the University of Canberra as part of a GIS Research team. We would also like to thank and acknowledge the assistance of our other research team members who include Lecturer and Researcher, Kate Reid and Researcher Kerrin Stewart.
[1] See K Reid, E Clark & G Cho, "Legal Risk Management in Geographic Information Systems", 1996, Vol 7(2) Journal of Law and Information Science pp 169-207, and Earthwatch Environment Assessment Programme Technical Report A Survey of Geographic Information System and Image Processing Software 1995 at http://grid2.cr.usgs.gov/survey/introduction.html. Geographical Information Systems (GIS) come in a number of specialist guises, and typically include one or more of the following components: data (both raw and value added), products, services and specialised computer software.
[2] P. Oosthuizen, 1994 AISIST Spatial Information Survey. Price Waterhouse Urwick. 1994, AURISA News, No. 53 p. 14.
[3] Atari Games Corp v Nintendo of America Inc [1992] USCAFED 794; 975 F.2d 832 (1992).
[5] One of which could be considered `literary works’ and were therefore entitled to copyright protection, and one which, being `embedded in the ROMs’, was not.
[6] Cited in R. C. Reuben, "What’s New in Intellectual Property", January 1993, ABA Journal p72.
[7] R.C. Reuben, ibid, at 73.
[8] CCH Macquarie Dictionary of Law 1993, 2nd Edition Sydney p90.
[9] P. Samuelson, "Intellectual Property Rights and the Global Information Economy", January 1996, Communications of the ACM Volume 39 Number 1 p 23.
[10] For example, the EU’s efforts in this regard are undermined by the differences in domestic law in its member states, especially those of the UK and Eire and those of Continental Europe.
[11] The widespread availability of desk-top personal computers and the relative ease of connection to the Internet has meant that copying and using digital information has required little more effort than to simply view material on the computer - as to do so is to copy digital bits from a remote computer into one’s own. Chapman, G Los Angeles Times/Innovation gary.chapman@mail.utexas.edu p.2
[12] See further a general description at http://grid2.cr.usgs.gov/survey/introduction.html, parts 1.2 and 1.3.
[13] For example under copyright law, if a GIS developer jointly develops a component of the GIS with another party, the other party may constitute a joint author of that component and as such may be entitled to independently exploit the component without infringement. David L Haynes 1992, Acquiring and Protecting Technology: The Intellectual Property Audit, cited in K Reid et al op cit.
[14] An issue examined and considered of significance in New York Times Co. v Roxbury Data Interface Inc 434 F.Supp.217 (D.N.J. 1977), when the court concluded that the substance of the plaintiff’s copyright lay in an aspect of the work which had not been copied by the defendant, thus negating the allegation of infringement. From Denicola, R.C., "Copyright in Collections of facts: A Theory for the Protection of Nonfiction Literary Works", Columbia Law Review Vol LXXXI 1981 p.533
[15] P. Samuelson, "Digital Media and the Changing Face of Intellectual Property Law", Rutgers Computer & Technology Law Journal, Volume 16, Number 2, 1990, p.324
[16] F.H. Easterbrook, "Intellectual Property is Still property", Winter 1990, Harvard Journal of Law and Public Policy Volume 13 Number 1, p.108
[17] Ibid p.113
[18] Ibid p.110
[19] Ibid p.110
[20] Ibid p.113.
[21] Nintendo of America Inc v Lewis Galoob Toys Inc US Court of Appeals for the 9th Circuit [1994] USCA9 522; 16 F.3d 1032 1994.
[22] P. Samuelson op cit p.28.
[23] Computer Edge Pty Ltd v Apple Computer Inc [1986] HCA 19; (1986) 161 CLR 171.
[24] This prompted an amendment to the Copyright Act 1968 (Cth).
[25] Autodesk Inc v Dyason [1992] HCA 2; (1992) 173 CLR 330 FC 92/001.
[26] W.A. Van Caenegem Copyright, Communication and New Technologies p.3.
[27] “A GIS work will generally qualify as a `literary work’, as a table or compilation, or as a `computer program’, or even possibly as an `artistic work”; K Reid et al, op cit.
[28] Van Caenegem goes further, observing that the “rapidly changing nature of communications technology, the structural limitations on copyrights and the application of the idea/expression dichotomy, and the fundamental aims of copyright which they express, have come under renewed pressure”; Copyright, Communication and New Technologies p.4.
[29] W.A. Van Caenegem op cit, p.4.
[30] An imaginative and pro-active option is for the GIS producer to secure liability insurance for intellectual property infringement and product liability insurance. K Reid et al op cit
[31] Although the onus of proof of breach of copyright of course ordinarily lies with the party asserting it.
[32] S.G Burley, "Some Intellectual Property Aspects of the Internet", Sydney 1996, College of Law Seminar Papers 96/50.
[33] D. Martin, "Internet Law Comes of Age", 1996, Internet Research: Electronic Networking Applications and Policy Vol. 6 No. 1 p.13.
[35] (1994) 857 F. Supp 697 (ND Cal).
[36] H. Small, "Enforcement of Intellectual Property Rights on the Internet", 1966, Internet Research: Electronic Networking Applications and Policy Vol. 6, No. 1, p.46.
[37] For a detailed discussion on the legal issues involved with publishing and transmitting data provided by others on the Internet, focusing on English law, see Andrew Charlesworth, "Legal Issues of Electronic Publishing on the World Wide Web," December 1995, The Law Librarian Vol 26, No 4.
[38] S.G. Burley op cit, p.32.
[39] Computermate Products (Aust) Pty Ltd v Ozi-Soft Pty Ltd (1988) 83 ALR 492.
[40] H. Small op cit, p.46.
[41] D. Sharpe, "Issues of Law and Policies in the Global Information Infrastructure: Meeting Public Concerns". 10 July 1996, The College of Law Seminar Issues of Law and Policies in the Global Information Infrastructure: Meeting Public Concerns 96/50 p.17.
[42] D. Sharpe, ibid, p.18.
[43] W.A. Van Caenegem op cit, p.2.
[44] [1986] HCA 19; (1986) 161 CLR 171.
[45] Autodesk Inc v Dyason [1992] HCA 2; (1992) 173 CLR 330, FC 92/001 per Dawson J.
[46] Autodesk Inc and Another v Dyason and Others [1993] HCA 6; (1993) 176 CLR 300, FC 92/001.
[47] Copyright Act 1986 (Cth) as amended in 1986, section 10(1).
[48] G. Wood, Copyright: The Digital Dilemma, April, 1996, internet au p49.
[49] H. Small, op cit, p.47.
[50] Autodesk Inc v Dyason [1992] HCA 2; (1992) 173 CLR 330, FC 92/001 per Mason CJ, Brennan and Deane JJ (Downloaded from Australian Legal Information Institute web site http://www.austlii.edu.au/).
[51] Autodesk Inc v Dyason [1992] HCA 2; (1992) 173 CLR 330, FC 92/001 per Dawson J para 12 (Downloaded from the Australian Legal Information Institute web site http://www.austlii.edu.au/).
[52] Autodesk Inc v Dyason [1992] HCA 2; (1992) 173 CLR 330, FC 92/001 per Dawson J para 19 (Downloaded from Australian Legal Information Institute web site. http://www.austlii.edu.au/).
[53] This was supported by the High Court of Australia in University of NSW v Moorhouse and Angus & Robertson (Publishers) Pty Ltd [1975] HCA 26; (1975) 133 CLR 1, which held that it was not necessary that the person alleged to have authorised the act should know that the particular act will be done if a general permission or invitation may be implied from the circumstances. See also S.G. Burley, "Some Intellectual Property Aspects of the Internet", 1996, College of Law Seminar Paper 96/50 p.29.
[54] Autodesk Inc v Dyason [1992] HCA 2; (1992) 173 CLR 330, FC 92/001 per Mason CJ, Brennan and Deane JJ para 4.
[55] Computermate Products (Aust) Pty Ltd v Ozi-Soft Pty Ltd (1988) 83 ALR 492.
[56] Autodesk Inc per Dawson J para 27.
[57] Described as "trite law" by Lord Hailsham of St Marylebone in LB. (Plastics) Limited v. Swish Products Limited (1979) RPC 551, at p 629.
[58] Autodesk (1993) per Mason CJ para 10
[59] Hawkes and Son (London) Ltd. v.Paramount Film Service Ltd. (1934) Ch 593; Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. (1964) 1 WLR 273; Greenfield v. Rover-Scott Bonnar (1990) 17 IPR 417, at p 436; Dixon Investments v. Hall [1990] FCA 117; (1990) 18 IPR 481.
[60] (1964) 1 WLR, at p 293.
[61] D. Sharpe, op cit, p.18.
[62] G.R. Doddrell, "Information Security and the Internet". 1996, Internet Research: Electronic Networking Applications and Policy Volume 6: Number 1, p.5.
[63] The intense efforts of the US government to prevent the widespread use of PGP (Pretty Good Privacy) encryption technology through export controls and its “Clipper Chip” and “Digital telephony” initiatives evidence this trend, seeking to reserve privacy tools for Government use. J.Ubois, Hero or Villain? August 1995, Internet World August p.79.
[64] R.C. Denicola, "Copyright in Collections of facts: A Theory for the Protection of Nonfiction Literary Works", 1981, Columbia Law Review Vol LXXXI, p.519.
[65] US Constitution Article 1, Section 8, Clause 8.
[66] R.C. Denicola, op cit, p.519.
[68] 17 USC app, S102(b) (1976).
[69] There is significant confusion over traditional copyright concepts, which were described by Dennis as being “notoriously vague”.
[70] R.C. Denicola, op cit, p.523.
[71] Autodesk Inc and Another v Dyason and Others [1993] HCA 6; (1993) 176 CLR 300, FC 92/001.
[72] R.C. Reuben,"What’s New in Intellectual Property", ABA Journal January 1993, p75.
[73] Lotus Development Corp v Paperback Software International F.Supp 87 (D.Mass, 1990), Computer Associates v Altai 1992 US App LEXIS 14385 (2nd Circuit).
[74] Wheelan Associates Inc v Jaslow Dental Laboratory Inc [1986] USCA3 976; 797 F2d 1222 (1986) (3rd Circuit), and the important case of Apple v Microsoft C88-20149 (VRW).
[75] Atari Games Corp v Nintendo of America Inc [1992] USCAFED 794; 975 F.2d 832 (1992).
[76] Sega Enterprises Ltd v Accolade Inc 1992 US App LEXIS 26645 and Atari Games Corp v Nintendo of America Inc [1992] USCAFED 794; 975 F.2d 832 (1992).
[77] D. Karjala, "Recent US and International Development in Software Protection", 1994, European IP Review Vol.16 1 EIPR p18.
[78] A long accepted concept in US law whereby the test of ownership for copyright purposes depends on the creation of the work through intellectual or other exertion.
[79] R.C. Reuben, op cit, p7.
[80] Iibid, p73.
[81] III S.Ct. 1282 (1991) at 1288 which dealt with the inclusion of a telephone book listing in another publication, and turned on whether this listing constituted factual information.
[82] III S.Ct. 1282 (1991) at 1287-88, Constitution Art 1, s8 cl8.
[83] Although fourteen years earlier a more liberal interpretation of this Constitutional constraint had been foreshadowed in New York Times Co. v Roxbury Data Interface Inc 434 F.Supp. at 221(D.N.J.1977), when it was held that since compilations are works of diligence rather than inventiveness, defendants have greater licence under the fair use doctrine than is customary with respect to more creative works.
[84] R.C. Denicola, op cit, p.523.
[85] Ibid, p.531.
[86] Ibid, p.534.
[87] III S.Ct. 1282 (1991).
[88] R.A. Gorman, "The Feist case: Reflections on a Pathbreaking Copyright Decision", 1992, Rutgers Computer and Technology Law Journal, Vol 18 No.1, p731.
[89] In Burrow-Giles Lithographic Co v Sarony [1884] USSC 105; 111 US 53 at 58 (1884); accord, Goldstein v California [1973] USSC 142; 412 US 546 at 561 (1973), the US Supreme Court defined an author as “he to whom anything owes its origin; maker”.
[90] In doing so, the Court reversed a consistent trend to rule in favour of the original compiler of lists of numbers, such as in Leon v Pacific Telephone and Telegraph Co 91 F. 2d 484 (9th Cir 1937) which also involved telephone books.
[91] III S.Ct. 1282 (1991) at 1287-88.
[92] III S.Ct. 1282 (1991) at 1292.
[93] R.C. Reuben, op cit, p76.
[94] Ibid, p76.
[95] Copyright Amendment Act 1984 (Cth) s10(1).
[96] [1937] HCA 45; (1937) 58 CLR 479 at 511.
[97] Articles 85 and 86 of the Treaty of Rome.
[98] Set down by Lord Wilberforce in LB (Plastics) Ltd v Swish Products Ltd (1979) FSR 145 at 149.
[99] C. Reid, "EC Antitrust Law and the Exploitation of Intellectual Property Rights in Software", Fall 1991, Jurimetrics Journal Vol 32, Number 1, p442.
[100] OJ L78 21/3/1989 p.43.
[101] 4 CMLR 745 at 758.
[102] C. Reid, op cit, p.443.
[103] Civil Jurisdiction and Judgements Act 1982 (UK).
[104] See P. Blume, "An EEC Policy for Data Protection" 1992, Computer Law Journal 399-422.
[105] Supreme Court of the Netherlands HR 4 January 1991 RvdW 1991.
[106] Ibid.
[107] J.H. Spoor, "Protecting Expert Systems, In Particular Expert System Knowledge: A Challenge for Lawyers", 1992, European Intellectual Property Review p.11.
[108] Supreme Court of the FRG 9 May 1985 GRUR 1985 at 1041.
[109] J.H. Spoor, op cit, p.11.
[110] Ibid, p.11.
[111] J.C. Ginzberg, "Creation and Commercial Value: Copyright Protection of Works of Information", Columbia Law Review 11/90 Vol 90, No.7 at 1865.
[112] J.H. Spoor op cit p.11.
[113] These are generally obtained without formalities, giving full protection against copying, but hardly any against more remote exploitation forms, such as adaptation to a different form, such as in GIS applications.
[114] Report by H. Olsson to the World Intellectual Property Organization International Organizations and Changing National Copyright Legislation: What it all means for the Software and Data Base Industries World Computer Law Congress Los Angeles April 18-20 1991.
[115] Section 4(1) of the Designs Act 1906 (Cth).
[116] (1989) 13 I.P.R. 15 at p. 20.
[117] [1953] HCA 72; (1953) 88 C.L.R. 278 at 279 per Kitto J.
[118] See Australian Law Reform Commission Report No. 58, Designs, August 1994.
[119] [1959] HCA 67; (1959) 102 C.L.R. 252 (Dixon C.J. Kitto and Windeyer JJ).
[120] In Re Alappat 31 USPQ2d 1545 (1994), In Re Warmerdam, [1994] USCAFED 719; 31 USPQ2d 1754 (1994) and In Re Lowry 32 USPQ2d 1031 (1994)).
[121] CCOM v. Jiejing [1994] FCA 396; (1994) 28 IPR 481; see also, J. Houghton, "Computer Software Protection", 1993, Journal of Law and Information Science, Vol 4(2), p. 242; A. M. Fitzgerald, "Square Pegs in Round Holes: Recent US Developments in Copyright Protection for Computer Software", 1993, Journal of Law and Information Science, Vol 4(1), p. 142.
[122] See J V Swinson, "Software Patents in the United States", 1993, Journal of Law and Information Science, Vol 4(1), p. 116; A. Christie, "Re-writing the Rules on the Form of Protection for Computer Software," 1993, Journal of Law and Information Science, Vol 4(2), p. 224.
[123] J.H. Spoor, op cit, p.12.
[124] Generally the first person to register a trade mark is entitled to proprietorship and to protect it from removal or from challenge by a later arrival in the country Seven-Up Company v O T Ltd [1947] HCA 59; (1947) 75 CLR 203.
[126] (1989) 17 IPR 405, at 408.
[127] See further K. Reid, E. Clark & G. Cho Legal Risk Management for Geographical Information Systems Journal of law and Information Science 1996, Vol.7(2), p 193ff.
[128] Coco v. AN Clark (Engineers) Ltd [1969] RPC 41.
[129] [1984] HCA 73; (1984) 56 A.L.R. 193.
[130] Ibid, at 208 per Deane J.
[131] Ibid.
[132] [1989] F.S.R. 135 (C.A.).
[134] [1967] VicRp 7; [1967] V.R. 37.
[135] Hubbard v. Vosper [1972] 2 QB 84.
[137] [1964] 3 All ER 289.
[138] [1984] HCA 64; (1984) 156 CLR 41.
[139] Ibid, at p.68.
[140] See eg, D.Rhind "Spatial Databases and Information Policy: A British Perspective", http://www.spatial.maine.edu/tempe/rhind.html.
[141] See W.S.Holland, "Copyright, Licensing and Cost Recovery for Geographic and Land Information Systems Data: A Legal, Economic and Policy Analysis," (21 Nov,1996).
URL: http://www.spatial.maine.edu/tempe/holland.html.
[142] D. Rhind, "Data Access, Charging and Copyright and the Implications for Geographic Information systems" (1992) International Journal of Geographic Information systems,6(1), pp 13-30; Salin, Patrick, "Proprietary Aspects of Commercial Remote Sensing Imagery" (1992) Northwestern Journal of International Law and Business vol 13, pp 349-373.
[143] See, S. Bibas, "A Contractual Approach to Data Privacy" (1993) Harvard Journal of Law and Public Policy Vol 17(2), pp 591-611.
[144] See J. Bing "Privacy and Surveillance Systems: Balancing Competing Interests" (1993) The International Computer Lawyer 1(10) pp 17-23. T. Brennan, & M. Macauley, "Remote Sensing Satellites and Privacy: A Framework for Policy Assessment", (1995) Law Computers & Artificial Intelligence 4(3), pp 233-248; X. Lopez," Information Privacy and the Use of Geographic Information Systems," Proceedings of Conference and Exhibition of the International Cartographic Association (ICA), September 4-8, 1995, Barcelona, Spain.
[145] See generally, H. Onsrud, J. Johnson and X. Lopez, "Protecting Personal Privacy in Using Geographic Information Systems" (1997).
URL: http://www.spatial.maine.edu/tempe/onsrud.html.
[146] See J. Reidenberg, "Privacy in the Information Economy: a Fortress or Frontier for Individual Rights" (1992) Federal Communications Law Journal 44(2), pp 195-932. P.Machamer and B.Boylan, "Freedom, Information and Privacy", (1992) Business & Professional Ethics Journal 12(3), pp 47-68.
[147] See for example, Crimes Legislation Amendment Act 1989 (Cth) which created a series of offences involving either: 1) deliberate unauthorised access to data, or 2) gaining access with intend to defraud. Similarly, the Acts Interpretation Act (Cth) has been amended in s 25 so that "record" includes information stored or recorded by means of a computer. Many Australian States and Territories have also amended their criminal provisions to catch computer crime.
[148] A. Charlesworth, "Legal Issues of Electronic Publishing on the World Wide Web", December 1995, The Law Librarian Vol 26, No.4, p.538.
[149] Telstra Corporation ltd v Australasian Performing Rights Association Ltd 97 FC 9735 Scaleplus at http://scaleplus.law.gov.au/
[150] See David Crowe, Australian Financial Review 15 August 1997 and Bernard Lane The Australian 15 August 1997.
[151] Quoted by D Crowe, ibid p 5.
[152] For example, Deborah Brewster, Sydney Morning Herald 15 August 1997.
[153] D Crowe, op cit p 5.
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