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Blakeney, Michael; Macmillan, Fiona --- "Bringing Australian Copyright Law into the Global Age" [1998] MurdochUeJlLaw 11; (1998) 5(1) Murdoch University Electronic Journal of Law

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End of Article

Bringing Australian Copyright Law into the Global Age

Authors: Michael Blakeney BA, LLB, LLM., Hons (Syd), MA, Hons (UNSW)
Fiona Macmillan BA, LLB, LLM
Issue: Volume 5, Number 1 (March 1998)


Contents

Introduction
  1. Australian copyright law is currently undergoing a number of significant changes. Three influences for change can be identified. First, there is the periodic modification of copyright law in response to technological change. Secondly, the domestic Australian law is required to be brought into line with changes in the international copyright regime. Thirdly, Australian copyright law, based as it is upon principles derived from the English legal tradition, has, since its inception, been under a constant pressure to effect a rapprochement with copyright principles derived from the Continental European copyright tradition. This paper will examine some of these developments together with some of the principal recent cases which emphasize these developments.

  2. Changes in the international copyright regime have been precipitated both by technological change and by the identification of inadequacies in protection. Within the last eighteen months there have been two new World Intellectual Property Organization Treaties[1] which impact in the area of copyright liability. The WIPO Copyright Treaty is a first attempt to deal with digital technologies. An attempt is also made to deal with digital issues in the WIPO Performances and Phonograms Treaty. The way in which the provisions of these treaties on digital matters impact on Australian copyright law is considered in the second part of this paper (Reforming Australia's Copyright Law). The third part of the paper (Moral Rights Protection Under Australian Copyright Law) looks at proposals to harmonize Australian copyright principles with those derived from the European tradition by the introduction into Australian copyright law of a wide ranging concept of moral rights. An interesting counterpoint to these Australian proposals is also provided by the WIPO Performances and Phonograms Treaty which deals, not only with digital technologies but also confers expanded performer's rights, both moral and economic. These proposed new performer's rights are dealt with in the fourth part of this paper (Performers' Rights).


    3. Reforming Australia's Copyright Law for the Digital Age

    Introduction
  3. The WIPO Copyright Treaty, which operates as a special agreement under the Berne Convention for the Protection of Literary and Artistic Works of 1886, seeks to deal with general questions of copyright infringement and liability in the digital era. As is the nature of international diplomatic compromise, the Treaty expresses the obligations of contracting states in broad terms which leave room for national idiosyncrasies. The Australian proposals for implementation of the Treaty obligations are contained in a Commonwealth Government Discussion Paper, Copyright Reform and the Digital Agenda.[2] When these proposals, or an amended version of them,[3] come into legislative effect they will remove the particular legislative provisions which caused the trouble in the recent High Court case of Telstra v APRA[4], the "music on hold" case.

  4. The paper proceeds to examine copyright liability for Internet transmissions by examining first the international obligations imposed on the contracting parties to the Berne Convention and the two new WIPO Treaties. The next part of the paper focusses on the Australian proposals for the implementation of the WIPO Copyright Treaty. The potential copyright liability of operators of bulletin boards, Internet service providers (ISPs) - both carriage providers and content providers - and communications carriers are considered.


    5. Exclusive Rights under the Berne Convention
  5. Prior to the 1996 WIPO Copyright Treaty, the main international treaty provision likely to affect the liability of communications facilitators was Article 11bis(1) of the Berne Convention.[5] In broad terms this provision requires member states to give an exclusive right to the copyright owner of literary and artistic works to do or authorise four different classes of acts: wireless broadcasting, cable transmission of a broadcast, rebroadcasting of a broadcast, and the communication to the public of works which had been broadcast. The Convention contains no definition of "broadcast". To some extent the meaning of the expression is evident from the terms of Article 11bis(1) in the sense that a broadcast is something which the provision suggests occurs "by wireless diffusion of signs, sounds or images". This means, of course, that the provisions on broadcasting appear to have little direct application to transmissions via the Internet which, so far, has been largely by the use of terrestrial telephone lines and, therefore, does not involve "wireless diffusion".

  6. The second paragraph of Article 11bis(1) does catch communications to the public by wire, but only where that involves the communication of broadcast material containing copyright works. Clearly, where material containing the copyright works has been directly and unambiguously communicated to the public by the original broadcaster, the picking up and rediffusing of such work to the public after that broadcast has been made amounts to a breach of the copyright owner's exclusive rights. However, it is difficult to see how a diffusion by wire to the public of something which did not amount to a broadcast in the first place would be caught at all under this Article. Accordingly, it seems that the paragraph would not cover the transmission of copyright material via the Internet unless transmission of that material had previously taken place by wireless means and the transmission on the Internet was effectively a rediffusion. Thus, it seems unlikely in most cases that any of the various parties involved in facilitating Internet communications would be caught under Article 11bis(1).[6]

  7. However, one must also add into the concoction Articles 11(1), 11ter(1), 14(1) and 14bis(1). Article 11(1) confers on copyright holders of dramatic and/or musical works the right to authorise a communication to the public of performances to their works.[7] While this provision catches the diffusing of certain types of unauthorised works to the public by wire where the material has not first been broadcast by someone else[8] it is limited in scope. This is because the provision only addresses itself to "performances" and does not address the issue of diffusions of, amongst other things, literary and artistic works. So far as literary works are concerned, Article 11ter(1) then steps in to confer on copyright holders the right to authorise communications to the public of the recitation of those works.[9] Again the provision is limited. Where literary or artistic works are adapted or reproduced for the purpose of a film then Article 14(1) is to similar effect, although it only applies to communications by wire.[10] Article 14bis(1) gives the same rights in relation to films, as Article 14(1) gives to literary and artistic works.[11] None of these provisions mention the concept of broadcasting, and Article 11bis(1) only addresses the issue of broadcasts containing literary and artistic works. Thus, these other articles are complementary to each other and to Article 11bis(1) but they hardly fit together seamlessly, nor do they comprehensively cover all the different types of diffusions to the public of different types of copyright works.


    8. The New WIPO Treaties
  8. Much of the impetus for change to the broadcasting and performance rights in the Berne Convention is evident from the foregoing discussion. The peculiar relationship between Articles 11(1), 11bis(1), 11ter(1) and 14(1) makes life difficult in an environment where the whole range of copyright works can be diffused or performed to the public with or without the aid of wires. The Convention's failures in this respect are all the more noticeable because of the global nature[12] of broadcasting and communications technology. Technological developments serve only to exacerbate the shortcomings of the pre 1996 Convention as a tool of legal harmonisation.

  9. In the present context, there are two related areas of technological development since the 1967 and 1971 Stockholm and Paris Revisions of the Convention which have precipitated amendment to the Berne Convention. These are, first, the ability to produce copyright works in digital form; and secondly, the new means of transmitting or delivering copyright works, in particular, the development and widespread use of the Internet.[13] Not only is digitisation creating a world of intangibles ("the virtual world"), it has also made it extremely cheap, easy and quick to make excellent copies of works and distribute them widely. This means that the scope for economic loss to the copyright owner is considerably increased. When one adds in the width and speed of distribution on the Internet, then this economic loss may increase exponentially.

  10. The potential for this type of behaviour to damage the ability of authors and creators to control the communication of their work and to gain financial recompense as the result of the exploitation of their work strikes at the heart of some of commonly asserted values of copyright law.[14] These values are partly to do with a conception of human rights and partly to do with the more utilitarian concern to encourage creativity and the dissemination of the fruits of that creativity. The former has it that people have a basic right to the protection of their literary or artistic productions,[15] while the latter proceeds upon the basis that financial reward is needed in order to encourage creativity because creativity is essential to social development.[16] If copyright law is unable to protect these values then it is in a parlous state.

  11. The development of the Internet and other similar forms of transmission has also had implications for copyright law which go beyond its abilities to achieve rapid and widespread delivery. In particular, while such services involve mass distribution, they involve a move away from concepts traditionally associated with broadcasting. Rather than someone in the position of the broadcaster composing a broadcast to be sent out to the public at a particular time selected by the broadcaster, material is made available to individual users to access at will. The facilitation of all this interactivity has largely relied, so far, on the use of terrestrial telephone lines and thus greatly increased the role which communications carriers have in transmitting copyright works. It has also spawned a new cast member in the form of the ISP. It should be noted, however, that ISPs are not a homogenous bunch. Some are merely access providers and in that capacity provide a technological bridge between communications carriers and individual users. Others, in addition to the access function, place the material in question on servers and thus also provide content.

  12. In response to the existing difficulties in the Berne Convention and the difficulties caused by rapid technological development WIPO established a Committee of Experts on a Possible Protocol to the Berne Convention in 1991, and in 1992 it established a Committee of Experts on a Possible Instrument for the Protection of the Rights of Performers and Producers of Phonograms. The new treaties, which are the work of these Committees of Experts, do not solve all the problems in this area in the Berne Convention. To do so would have been a very tall order and would arguably have required the deletion of some of the existing provisions of the Berne Convention. This sort of task is not the aim of the WIPO Copyright Treaty which supplements the Berne Convention rather than revising it. The Treaty operates as a special agreement under Article 20 of the Berne Convention and only binds those members of the Berne Union which ratify it. Subscribing states that are not members of Berne are required to comply with the substantive provisions of the Berne Convention.[17] According to Article 20, this new Treaty will come into effect three months after instruments of ratification or accession have been deposited with the Director General of WIPO by thirty states.[18]

  13. In the context of the present inquiry into the possible liability for copyright infringement of those facilitating Internet communications, the important provision of the new Treaty is Article 8, which provides as follows:

      14. Without prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii). 11ter(1)(ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and artistic works shall enjoy the exclusive right of authorising any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them.
  14. The Article appears to add to the coverage already provided by the Berne Convention in at least two ways. First, it supplements Article 11bis(1) by giving exclusive rights in respect of diffusion of literary and artistic works by wire. Secondly, it gives exclusive rights with respect to the communication to the public of text and images, which extends the protection for literary and artistic works in Articles 11ter(1) and 14(1). The Article also brings within the notion of communication to the public, the making available of literary and artistic works so that they may be accessed at any time by individual members of the public. This is clearly intended to deal with the storage of copyright works on such things as the World Wide Web.

  15. The WIPO Performances and Phonograms Treaty splits the concepts in Article 8 of the Copyright Treaty into two free standing rights, rather than conceptualising the rights of making available to the public as an aspect of communication to the public. Articles 10 and 14 of the Performances and Phonograms Treaty give phonogram performers and producers, respectively, the right to authorise the making available to the public of their performances and recordings at a time chosen by individual members of the public.[19] Article 15(1) gives performers and producers of phonograms the right to a single equitable remuneration in respect of broadcasts and communications to the public.[20] The divorce of the two concepts is a pity. On its own Article 8 of the WIPO Copyright Treaty might have suggested an international consensus to the effect that making available to the public at a time chosen by individual members of the public was an aspect of communicating to the public. This might have cast light on, for example, the exclusive rights which the Berne Convention confers on dramatic and/or musical works in Article 11(1)(ii). These types of copyright works are not covered by Article 8 of the WIPO Copyright Treaty, but it might have been helpful to know whether or not the making available on line of such works would be regarded as communicating them to the public within the meaning of Article 11(1)(ii).

  16. Bearing in mind the crucial role which communications carriers play at present in communicating material to the public and, particularly, in making material available to be accessed by members of the public at a time chosen by the individual member of the public in question, there was concern expressed about their exposure under Article 8 of the new WIPO Copyright Treaty.[21] As a result the Diplomatic Conference adopted an Agreed Statement in relation to Article 8 which reads as follows:

      17. It is understood that the mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Treaty or the Berne Convention.[22]
  17. It should be noted that this is not a blanket exemption from liability for communication carriers. It would only exempt them from liability in respect of the provision of "physical facilities". The exact meaning of the expression "physical facilities" is unclear. The interpretation of this expression in the Australian Government's paper on Copyright Reform and the Digital Agenda suggests that this exemption would not protect communications carriers if they extended their operations to other activities more akin to those of a network or service provider.[23] This is a somewhat problematic juxtaposition since a case may be made that ISPs which are not content providers are also merely providers of physical facilities. Another aspect of the Agreed Statement which is of considerable concern is the fact that the Agreed Statement only provides that provision of facilities does not amount to a communication. It does not address the question of liability for authorising an infringement. This issue is addressed in the next section, which also looks at the Australian proposals for implementing the new Treaty provisions.


    18. Australian Proposals For Reform
  18. The Australian proposals for implementing Article 8 of the WIPO Copyright Treaty,[24] contained in the Discussion Paper Copyright Reform and the Digital Agenda, bifurcate the provisions of Article 8. However, the proposed draft amendments to the Copyright Act 1968 announced by the Attorney General on 30 April 1998 will remove this bifurcation and substitute a single exclusive right which mirrors that in Article 8. The proposed new right is intended to replace the Copyright Act's existing wireless broadcasting and diffusion rights[25] which received so much attention in Telstra v APRA. The new right proposed is the right of communication to the public.[26] This is intended to be a "broadly based technology neutral ... right[27], which would be separate from the existing public performance rights in the Act. The right seems likely to encompass those areas covered by the bifurcated rights originally envisaged by the Digital Agenda Discussion Paper. The two rights provided for in the Discussion Paper were a transmission right and a right of making available. The Discussion describes the transmission right as follows:

      19. The proposed transmission right would apply to transmissions to the public in the traditional non interactive sense of "broadcasting", that is the emitting of signals from a transmitter to a receiving device at a time chosen by the person making the transmission. The person receiving a broadcast can only receive it at a time when the person making the broadcast chooses to make the transmission.[28]
  19. It should be noted that it is intended to amend the definition of "broadcast" so that it covers transmissions with or without wires. The right of making available to the public also applies to activities engaged in with or without wires. The Discussion Paper describes this right as follows:

      20. In contrast to the proposed transmission right, the right of making available to the public would be exercised when copyright material was made available to the public in such a way that it could be accessed at a time and a place chosen by members of the public. This right is designed to cover interactive on-demand services.[29]
  20. This right is intended to cover transmissions on the Internet. While the new right of communication to the public will subsume these two rights, it is thought likely that the areas of coverage of the rights will be unaffected by this recently announced change. The Discussion Paper notes the potential overlap between the new rights and the exclusive right of copyright holders to authorise any reproduction of their work. It gives, as an example of such an overlap, the uploading of a copy of an article onto an Internet site which may be accessed by the public.[30] On the other hand, the paper argues that there are activities which might breach the new making available right without breaching the reproduction right. The example given by the paper is the connection of a file server containing copyright material to a publicly accessible network.[31] It seems unlikely, however, that the making available right would catch the linking of sites in a situation where the material which had been linked was already available to the public by an alternative route.[32]

    21. Table 1 of the Discussion Paper gives some examples of the way in which the new rights might work and the possible overlap between the new rights (now subsumed into one right) and the existing reproduction right:

    Use of copyright material Exercise of proposed transmission right? Exercise of proposed making available right? Exercise of right of reproduction (with proposed exception)?
    Subscription broadcasting (wireless and wired) Yes No No
    Non-subscription broadcasting (wireless and wired) Yes No No
    Linking a server (with copyright material) to the WWW No Yes No
    Uploading a document to a World Wide Web (WWW) site No Yes Yes
    Downloading a document from the WWW No No Yes
    Emailing an article as part of a commercial service Yes No Yes
    Emailing an article to mailing list Depends on the list No Yes
    Emailing an article to a friend (outside business/work) No No Yes
    Browsing the WWW No No No
    Making temporary copies in the course of browsing No No No
    Making temporary copies in the course of transmission No No No
    Posting an article to a newsgroup Depends - comment invited on this issue Yes Yes

  21. A matter of particular concern in fixing copyright liability is the question of the availability of the fair dealing defences.[33] This matter is raised by the Discussion Paper,[34] but only in order to state that as things stand the defences would apply in relation to the proposed new transmission right and right of making available. The Attorney General has since confirmed that the fair dealing defences will apply to the new right of communication to the public.[35] Also the same exceptions as currently exist for libraries and educational institutions will apply.[36]


    22. Communications Carriers and ISPs
  22. A particular concern of the Discussion Paper is the issue of the liability of communications carriers and ISPs under this proposed new regime. In accordance with the Agreed Statement on this topic in the proceedings of the Diplomatic Conference[37], the Discussion Paper adopts the position that communications carriers should not be liable for a breach of the proposed new transmission right when they are acting in their traditional role as providers of infrastructure and generators of the impulses travelling along that infrastructure. It seems that the Government is still committed to this result in relation to its newly proposed right of communication to the public.[38] This end is to be achieved, it seems, by providing that the person who makes the transmission is the person responsible for its content. The Discussion Paper takes the line that, provided they cannot be said to be responsible for the content of material which may be accessed by the public, ISPs would also be immune from primary liability.[39] This approach to the primary liability of communications carriers and ISPs seems workable, although of course much will depend on the care with which the eventual statutory provisions are drafted, especially those dealing with the concept of responsibility for content. Much more contentious, is the Discussion Paper's approach to the issue of liability for authorising infringement.


    23. Liability for Authorising Infringement
  23. The Discussion Paper accepts the conclusion in the earlier report of the Copyright Convergence Group[40] that communications carriers could not be held liable, on the basis of present law, for authorising an infringement.[41] According to the Discussion Paper this law may, however, catch some of the activities of ISPs,[42] although the paper invites submissions on whether or not ISPs should be exempted from such liability where they provide copyright notices warning subscribers about copyright and the permitted uses of copyright material.[43] While it is possible that ISPs might become liable as authorisers of infringement, it seems very dangerous to be so sanguine about the immunity of communications carriers in this respect.

  24. The main Australian law on authorising infringement was laid down by the High Court in University of NSW v Moorhouse[44]. That case famously held that "authorise" in this context means "sanction, approve or countenance". The University of NSW were held liable as authorisers for providing photocopy machines for general use by patrons of the library, without adequate notices warning against use of the machines to infringe copyright. It is quite clear from the case, as is noted in the Discussion Paper[45], that actual knowledge of the infringements taking place using the apparatus supplied by the authoriser is not required in order for authorisation liability to arise. It does seem that some ability to control infringement is required before liability for authorisation is required. If, on the basis of the mere supply of a photocopying machine without adequate monitoring or warnings, a library can become liable as for authorising infringement, it is quite unclear why the person who provides the infrastructure for a transmission, including generating the relevant electro-magnetic impulses or other signals, would be in the clear. The argument that the communications carrier would be immune seems to depend upon two assertions: first, the assertion that the carrier does not have the power to prevent infringement; and secondly, the lack of proximity between the communications carrier and the primary infringer. However, communications carriers do have the power to prevent infringements. It is the same power which university libraries have to prevent infringements on their photocopying machines. This is the power to prevent the equipment being used at all for anything which has the capacity to infringe copyright. As to the issue of proximity between the communications carrier and the actual infringer, it is true that there is not the same possibility of immediate physical proximity. Nevertheless communications carriers might well be regarded as digitally proximate to the broadcasters whose programmes they cause to be diffused through their infrastructure and to the Internet service providers, content providers and billboard services which use the infrastructure to make material available to the public. The point here is not to show conclusively that communications carriers will become liable as authorisers of infringement, it is to show that there is the possibility that they may do so under present law. This possibility ought to be taken seriously by legislators because the desirability of communications providers as defendants means that some plaintiff (probably a collecting society) will try to make it a reality.[46]


    25. Moral Rights Protection Under Australian Copyright Law

    Copyright Amendment Bill, 1997 - Legislative History
  25. The protection of moral rights is provided for in Article 6bis Berne Convention, 1886, to which Australia acceded in 1928. Article 6bis of the Convention, provides that "Independently of the author's economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to the said work, which would be prejudicial to his honour and reputation". To date, the only provision of moral rights under Australian copyright law was the prohibition in s.190 against the false attribution of the authorship of a work. The section provided that "A person (in this subsection referred to as 'the offender') is by virtue of this section, under a duty to the author of a work not to:

  26. insert or affix another person's name in or on the work, in such a way as to imply that the other person is the author of the work". Other paragraphs deal with the publishing, sale, hire, offer for sale, exhibition, distribution and reproduction of works carrying an unauthorised attribution. Under the Act, s.194 conferred a right of action for damages and injunction, in respect of an unauthorized attribution.

  27. Beyond these provisions, there was no enactment in Australia of moral rights. In 1983 the then Attorney General, Gareth Evans, referred the issue of moral rights to the Copyright Law Review Committee. In October 1984 the Committee issued a discussion paper and after considering submissions, reported to the new Attorney, Lionel Bowen in January 1988. The Committee recommended by a majority of 5:4 against the introduction of moral rights. The majority and minority views divided on the issue of the practicality of the implementation of moral rights protection. Notwithstanding this report, the debate continued with the 1993 Labor policy statement Distinctly Australian, which identified moral rights as an area of copyright to be reviewed. In June 1994, the then Ministers for Justice and for Communication and the Arts issued the Discussion Paper: Proposed Moral Rights Legislation for Copyright Creators. This Discussion Paper proposed a possible moral rights legislative regime for Australia, based on amendments to the Copyright Act,

  28. On 18 June 1997, Attorney General, Daryl Williams, introduced the Copyright Amendment Bill 1997 to Parliament, which largely enacted the scheme proposed in the 1994 Discussion Paper. The Bill replaces Part IX of the Copyright Act, 1968, with a series of provisions which grants to the authors of literary, dramatic, musical or artistic works and directors and producers of cinematographic films rights of attribution and integrity.


    29. Prohibition of Unauthorized Attribution
  29. The right to attribution of authorship, provided in Division 2 of new Part IX of the Copyright Act, confers upon authors the positive right to be named as author (s.192) in "a clear and reasonably prominent" way (s.195). Authors can prevent others from falsely claiming authorship (s.195AB). The Bill defines acts of false attribution of literary, dramatic and artistic works (s.195AC), artistic works (s.195AD) and of cinematographic films (s.195AE).

  30. A recent example of the sort of action which may be brought under the false attribution provisions is Clark v Associated Newspapers Limited[47] a decision of the Chancery Court, dated 21 January 1998. The plaintiff was Mr Alan Clark, the well known Conservative Party politician and former Cabinet Minister. In 1992, Alan Clark briefly retired from politics. In the year of his retirement Alan Clark published with Weidenfeld and Nicholson his Diaries. These sold very well, about 240,000 copies between 1992 and 1996, after which they were selling at 20,000 per year.

  31. In January 1996 Alan Clark entered into an Agreement with the News of the World to provide a weekly column of at least 1000 words at L2,840 per column, totalling some L130,000 per annum. In 1996, he decided to stand again for parliament. On 23 January 1997 he was selected as the Conservative candidate for the seat of Kensington and Chelsea.

  32. The case brought by Alan Clark against Associated Newspapers arose out of incidents occurring in the run up to the 1997 General Election. On 24 January, the day after Clark's preselection for the Tories had been announced, the London Evening Standard, a daily had published a one off article written by a journalist, Peter Bradshaw, parodying the Diaries. No complaint was made by Alan Clark about this. On 28th January Alan Clark was approached by the Evening Standard and offered L60,000 per annum to contribute a weekly column. Alan Clark responded by demanding L100,000. The gap could not be bridged and these negotiations came to an end.

  33. The date of the General Election was announced on 17 March 1997. On 27 March the Evening Standard commenced a series of articles entitled "Alan Clark's Secret Election diary". The first contribution commenced with the following standfirst: "it will be a sad loss if the great diarist Alan Clark does not eventually publish a record of his campaign to retain Kensington and Chelsea for the Tories. Meanwhile PETER BRADSHAW, who recorded Mr Clark's capture of the nomination in January, again imagines what a new diary might contain' Then followed the heading Alan Clark's Secret Election Diary, with Alan Clark's mugshot. Below this was the heading "Tricky night in the Fuhrerbunker" followed by the content of the article.

  34. Further articles were published on the 9th 11th 17th 23rd 28th April and the 2nd May, all with the same format. The standfirst referring to Peter Bradshaw imagining how the plaintiff might have recorded the events followed in larger text by the title of the article and then in smaller print by purported content of the diary. There were then three print sizes. Largest was the title, next largest was the standfirst, with Peter Bradshaw's name in block caps and then the content of the diary.

  35. The General Election concluded on 1 May, but the evening standard decided to persist with the series in much the same format, but under the heading "Alan Clark's Secret Political Diaries". The first article in the new format was published on 8th May. The second article was published on 15th May and was followed on 19th May by a letter from the plaintiff enclosing a writ. The defendants continued publishing the series for the several months up to and including the trial of the action. The action by Alan Clark sought remedies for breach of the Copyright and Designs Act 1988 (UK) and for passing off. The Copyright Action was based on s.84 of the English Act prohibiting the false attribution of a literary work by an author. Infringement occurs when "a person ...issues to the public copies of a work...in or on which there is a false attribution". The leading English case on unauthorised attribution was Moore v News of the World Ltd[48] which concerned an article entitled "The girl who lost the Saint. When love turns sour by Dorothy Squires talking to Weston Taylor". The words attributed in this article to Dorothy Squires were actually provided by the journalist. The question for the court was whether the article pretended to be written by Dorothy Squires. The trial judge directed the jury to make up their minds what the impression was to the reader. The jury found that the article did pretend to be written by Dorothy Squires and found for the plaintiff. The Court of Appeal approved the trial judge's direction to the jury and affirmed the decision granting damages for the plaintiff. The Court of Appeal was particularly influenced by the style of the article. For example, the opening line read "When I saw those placards, screaming out, 'Roger Moore weds', I knew it was the worst day of my life. Everywhere I looked my ex-husband's name was on newspaper bills in the streets of London". This was placing words in the mouth of Dorothy Squires. Damages of L100 were awarded to Ms Squires.

  36. In determining whether there had been false attribution, Lightford J. in Clarke v Associated Newspapers Ltd applied the defamation test of determining "the single meaning which the literary work conveys to the notional reasonable reader".[49] In deciding what this meaning was, the judge referred to the evidence led by the plaintiff identifying a number of categories of person who had been deceived. These were: 1) politicians, 2) porters, 3) lawyers, 4) miscellaneous and 5) experts. The conclusion reached by the judge was as follows: "I finally look at the articles as a whole and the totality of the messages and counter-messages. In my view the dominant message in the defendant's presentation of the articles is of the plaintiff's authorship; and the counter messages can be expected to be insufficient to disabuse a substantial number of unsuspecting readers of the Evening Standard who tend to skim-read; and accordingly, a substantial number of readers would be left (as were the plaintiff's witnesses) with the impression that the plaintiff was the author."

  37. The trial judge relied upon the same evidence inn finding actionable passing off. He observed that "the plaintiff has a substantial reputation as a diarist and his identity as an author of the articles would plainly be of importance to readers of the Evening Standard in deciding whether to read the articles. This, as it seems to me, is reflected in the choice of the format adopted, and most particularly in the design of the heading, which is calculated to exploit the public recognition enjoyed by the plaintiff as author of the Diaries and the public interest which any diary written by the plaintiff may be expected to generate."


    38. Right of Integrity of Authorship
  38. Section 195AH of the Copyright Amendment Bill 1997 confers a right of an author to "integrity of authorship" in "not having a work "subjected to derogatory treatment". "Derogatory treatment is defined in s.195AI as "the doing of anything, in relation to the work, that results in a material distortion of, the mutilation of, or a material alteration to the work itself that is prejudicial to the author's honour or reputation", or the "doing of anything else in relation to the work that is prejudicial to the author's honour or reputation". The 1994 Discussion Paper distinguishes between honour and reputation in the following way: "the term 'honour' is generally associated with personal integrity and how a person considers he or she is perceived, 'reputation' on the other hand, is associated more in the defamation context, as relating to a person's professional, business or personal standing in the community".[50]


    39. Subsistence, Duration and Exercise of Moral Rights and Contracting Out
  39. Section 195AL provides that moral rights are co-terminous with copyright. Section 195Azh provides that moral rights apply in respect of the whole or a substantial part of a work. In relation to works of joint authorship, s.195AJI provides that each author will be able to assert moral rights in respect of the work. Apart from the exercise of moral rights by the legal personal representative of an author, s.195AM (2) provides that a moral right in respect of a work "is not transmissible by assignment, by will or by devolution by operation of law".

  40. Section 195AZG (1) permits a person to waive, by writing, "all or any of his or her moral rights". Sub-section (3) permits the waiver to relate to "future works that are made in the course of employment". Sub-section (6) provides that an assignment of copyright does not, by that act alone, constitute a waiver of moral right in respect of the work and sub-section (5) permits a waiver to be unconditional or subject to conditions. Section 195AZI provides that in the case of joint authorship, the waiver of moral rights by one author does not affect the moral rights of the other author(s).

  41. Section 195AZD provides for the presumption of the subsistence of moral rights, where copyright is proved or presumed to subsist in a work. The presumption of subsistence of moral rights is rebuttable on proof of waiver.


    42. Infringement of Moral Rights
  42. Division 6 of new Part IX provides that the right of attribution of authorship and the right of integrity of authorship is infringed where an unattributed, falsely attributed or derogatorily treated work is reproduced in material form, published, performed, transmitted or adapted.

  43. Section 195AQ exonerates a failure to attribute authorship where this is reasonable. Similarly, s.195AR permits derogatory treatment which, in all the circumstances, is reasonable. Matters to be taken into account in determining reasonableness are
      44. (a) the nature of the work;
      (b) the purpose for which the work is used;
      (c) the manner in which the work is used;
      (d) the context in which the work is used;
      (e) any practice in the industry in which the work is used, that is relevant to the work or the use of the work;
      (f) whether the work was made in the course of an author's employment.
  44. Additionally, in relation to a failure to attribute a work, whether nay difficulty or expense would be incurred as a result of identifying an author.

  45. The Discussion Paper Proposed Moral Rights Legislation for Copyright Creators gives the following examples of where the attribution of authorship is reasonable: the reproduction of a poem in an anthology; an extract from an author's work is projected from a transparency slide onto a screen for the benefit of an audience.[51] The Discussion Paper suggests that attribution might not be reasonable where: several authors contribute to a database; an employee of the government writes a speech or paper; an author's collective work is published in an encyclopaedia or other collective work; the author has written the script for an advertisement; and the work is of a purely utilitarian nature, eg instructions for the operation of a machine or directions for the use of pharmaceutical products.[52]

  46. The Discussion Paper gives the following examples of where the treatment of a literary work which may not be derogatory: in respect of a translation; the re-editing by an employer of a draft document; and where a work is used for parody or burlesque.[53] Examples where the treatment of a literary work may be derogatory include: where a substantial part of an article is deleted to alter its context and where the remaining part is reproduced in a publication without consent; where a person edits or substantially alters a poem with an intention to make a mockery of the poet or to change the intended meaning of the poet; and where a script for a film or play is substantially altered for another purpose which the author would find offensive.[54]

  47. A problematical area, illustrated by the Alan Clark case, is the limits of permissible parody. The Discussion Paper specifically exonerates burlesque and parody as "valued practices in society because they are part of free speech...."[55] However, as with defamation, the boundaries of the tort are difficult to delineate.

  48. The US cases in the area of trade mark parody, provide some case examples of derogatory use. Most of these cases concern the suggestion of an unwholesome, or unsavoury association. For example 'Miami Mice' was a reasonable parody of 'Miami Vice', when used on a T-shirt Universal City Studios v T-Shirt Gallery[56] In Coca Cola v Gemini Rising[57] whereas Coca Cola was able to satisfy the court that a poster with the words "enjoy cocaine" produced in the style of Coca Cola's trade mark went beyond parody and was injurious to its reputation. In American Express v Vibra Approved Laboratories[58] the defendant's novelty America Express condom card, with its slogan "Never Leave home without it" was held to be a clear infringement of the plaintiff's trade marks. Similarly in Dallas Cowboys Cheerleaders v Pussycat Cinema[59], which concerned the movie "Debbie Does Dallas", involved the star of the film occasionally clad in the uniform of the Dallas Cowboys. In response to a defence of parody raised in relation to an action for trade mark infringement the Court referred to the movie as "a gross and revolting sex film" which "hardly qualified as a parody".

  49. This case brings us back to the consideration of parody as a literary form. If a literary evaluation is to be made about whether a parody is derogatory, this is similar to the consideration under s.55(2) of the Copyright Act 1968 which permits the manufacturer of a phonogram record to make a recording of an adaptation of a musical work upon payment of a statutory royalty, provided that the adaptation does not debase the work.

  50. A recent consideration of what constituted debasement was considered in Schoot Musik International GMBH & Ors v Colossal Records of Australia (1997) which concerned the use of Carl Orff's work "Carmina Burana" by a techno rock group. The group took the "O Fortuna Chorus" from the work and remixed it in the techno style "particularly favoured at all night dance sessions (raves) where loud pulsating music is played". Expert evidence in the case by the composer Richard Meale and by the Chair of the Musicology Department at the Sydney Conservatorium was of the view that the techno adaptation was debasing. The Appeal Court applied an objective test for debasement and examined "whether it is a consequence of the adaptation ...that a reasonable person will be led to think less of the original work". Applying this test, the Court ruled that debasement had not occurred. Hill J. indicated that it would probably be rare for an adaptation to be debasing, but mentioned the circumstance where the rearrangement of a work and its use by a racist or terrorist organization might be considered debasing. His Honour, considered that this relieved the court from being an arbiter of taste. The techno version was considered to be a new work, but one which would not detract from the original.


    51. Remedies for Infringement of Moral Rights
  51. Section 195AZ provides the following remedies for the infringement of moral rights: injunction, damages and a declaration that an author's moral rights have been infringed and orders that the defendant make a public apology and that the false attribution of authorship, or the derogatory treatment be removed or reversed.

  52. In exercising its discretion as to the appropriate relief to be granted, the court is enjoined by s.195AZ (2) to take into account:
      53. (a) whether the defendant was aware, or ought reasonably to have been aware, of the author's moral rights;
      (b) the extent of any damage to the work;
      (c) the number and categories, of people who have seen or heard the work;
      (d) anything done by the defendant to mitigate the effects of the infringement;
      (e) if the moral right was infringed was a right of attribution of authorship- any cost or difficulty associated with identifying the author;
      (f) any cost or difficulty in removing or reversing any false attribution of authorship, or derogatory treatment of the work.

    Performers' Rights
  53. Chapter II of the WIPO Performances and Phonograms Treaty[60] introduces, in addition to moral rights for performers, a range of new economic rights in both unfixed and fixed performances.[61] In relation to unfixed performances, Article 6 provides:

      54. Performers shall enjoy the exclusive right of authorizing, as regards their performances:
        (i) the broadcasting and communication to the public of their unfixed performances except where the performance is already a broadcast performance; and
        (ii) the fixation of their unfixed performances.
  54. In relation to fixed performances, Article 7 provides:

      55. Performers shall enjoy the exclusive right of authorizing the direct or indirect reproduction of their performances fixed in phonograms, in any many or form.
  55. Rights of distribution and rental in relation to fixed phonogram performances are provided for in Articles 8 and 9, respectively. Article 10, as noted above, extends the right of making available to fixed phonogram performances.

  56. The Australian government has produced a Discussion Paper entitled Performers' Intellectual Property Rights: Scope of extended rights for performers under the Copyright Act 1968[62]. The paper considers three main issues. The first is whether or not Australia should accede to the new Treaty. Secondly, the paper considers what changes to the existing performers' rights in Part XIA of the Copyright Act 1968[63] would be necessary in order to comply with the Treaty obligations. Thirdly, the paper raises the issue of whether or not Australian reform in this area should go further than the Treaty obligations.

  57. Overall, the paper is non-committal on the question of whether or not Australia should accede to the Treaty, although it notes that it appears that the Treaty will receive wide support and that it has already been acceded to by major players such the US and the EC. On the second issue, the paper concludes that the accession by Australia to the Treaty would involve the augmentation of existing rights which performers have over their sound recordings (that is, fixed performances) by the addition of exclusive rights over reproduction, distribution, and the making available of material to the public over the Internet or any similar form of communication which allows users to access material at a time chosen by the user. So far as the third and possibly most interesting issue is concerned, the paper notes that the rights in the Treaty in relation to fixed performances are limited to sound recordings. This was a consequence of the failure to achieve political consensus at the diplomatic conference. At the diplomatic conference, the US (with the support of India)[64] argued for a system of audiovisual performers' rights which would permit it to leave its current performers' contract system unaffected. This was unacceptable to a number of parties, including the EC and the EU countries, which were lobbying for a system in which performers' intrinsic rights would transcend their contractual rights. The Australian government's discussion paper raises the question of whether or not Australia should go further than the Treaty by also granting exclusive rights in fixed audiovisual performances. The paper does not, however, take a strong line on this one way or the other, but merely calls for submissions on the point.[65]

  58. At this stage, the future of performers' rights in Australia is unclear. Given the widespread and significant international support for the WIPO Treaty, it seems likely that the Australian government will accede to the Treaty and make the necessary changes to the regime of performers' rights in audio works. It is, however, much more difficult to predict whether or not the Australian proposals will go wider and embrace reform in relation to performers' rights in audio-visual works. The international pressures which argue in favour of accession to the Treaty may also argue against a broader scheme of rights. A watching brief is recommended.
Notes

[1] The WIPO Copyright Treaty <http://www.wipo.org/eng/diplconf/distrib/94dc.htm> and the WIPO Performances and Phonograms Treaty <http://www.wipo.org/eng/diplconf/distrib/95dc.htm> , both adopted on 20 December 1996.

[2] Commonwealth of Australia, Copyright Reform and the Digital Agenda: Proposed Transmission Right, right of Making Available and Enforcement Measures (July 1997) <http://law.gov.au/publications/digital.htm> .

[3] On 30 April 1998, the Federal Attorney General announced that the government had agreed on a set of proposals to reform the Copyright Act 1968: see The Honourable Daryl Williams, "Copyright and the Internet: New Government Reforms", 30 April 1998, Murdoch University, Perth <http://wwwlaw.murdoch.edu.au/apipli/events/Agseminar-April98.html> . In general, the proposals conform with those in the Digital Agenda Discussion Paper, n 2 supra, although there are some changes which are noted, where relevant, below.

[4] [1997] HCA 41; (1997) 146 ALR 649. For a discussion of the significance of this case in the context of the proposed amendments to copyright law, see Macmillan & Blakeney, "The Internet and Communications Carriers' Copyright Liability" [1998] European Intellectual Property Law Review 52, 56-57.

[5] Article 11bis(1), as inserted by the Brussels Act (of the Berne Convention) of 1948, provided:
Authors of literary and artistic works shall enjoy the exclusive right of authorizing:

(i) the broadcasting of their works or the communication thereof to the public by any other means of wireless diffusion of signs, sounds or images;
(ii) any communication to the public by wire or by rebroadcasting of the broadcast of the work, when this communication is made by an organization other than the original one;
(iii) the public communication by loudspeaker or any other analogous instrument transmitting, by signs, sounds or images, the broadcast of the work.

[6] As noted in the introduction to this part of the paper, the particular parties on whom attention is likely to be fixed with respect to copyright infringements on the Internet are the operators of bulletin boards, Internet service providers (ISPs) - both carriage providers and content providers - and communication carriers. It seems that any of these parties might conceivably be regarded as a "broadcaster" for the purpose of the Berne obligations. Even though some may think it doubtful, there seem to be some good reasons for assuming that the characterisation of communications carriers as broadcasters is possible. Certainly, the majority of judges sitting in the Full Federal Court of Australia ((1995) [1995] FCA 1476; 60 FCR 221; 131 ALR 141) and the High Court of Australia in Telstra v APRA, note 1 supra, thought so. See further on this point, Macmillan & Blakeney, "The Copyright Liability of Communications Carriers" 1997 (3) Journal of Information Law and Technology <http://elj.warwick.ac.uk/jilt/commsreg/97_3macm/> .

[7] Article 11(1) provides:
Authors of dramatic, dramatico-musical and musical works shall enjoy the exclusive right of authorising: (i) the public performance of their works, including such public performance by any means or process; (ii) any communication to the public of the performance of their works.
[8] See also Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886-1986 (1987), 451.

[9] Article 11ter(1) provides:
Authors of literary works shall enjoy the exclusive right of authorising: (i) the public recitation of their works, including such public recitation by any means or process; (ii) any communication to the public of the recitation of their works.
[10] Article 14(1) provides:
Authors of literary or artistic works shall have the exclusive right of authorising: (i) the cinematographic adaptation and reproduction of these works, and the distribution of the works thus adapted or reproduced; (ii) the public performance and communication to the public by wire of the works thus adapted or reproduced.
[11] Article 14bis(1) provides:
Without prejudice to the copyright in any work which may have been adapted or reproduced, a cinematograph work shall be protected as an original work. The owner of copyright in a cinematograph work shall enjoy the same rights as the author of an original work, including the rights referred to in the preceding Article.
[12] We use "global" in this paper to refer to those matters with respect to which national boundaries are irrelevant; "international" activities, on the other hand, are those conducted across national borders by essentially national actors: see further, Walker, Mellor, Fox and Francis, "The Concept of Globalisation" (1996) 14 Company and Securities Law Journal 59.

[13] See also, Dixon & Hansen, "The Berne Convention Enters the Digital Age" [1996] 11 EIPR 604, 605-607.

[14] See also van Caenegem, "Copyright, Communication and New Technologies" (1995) 23 Federal Law Review 322, 325: "[I]f uncompensated, this form of access would leave a copyright owner with possibly inadequate rewards, and the balance between risk and incentive will be disturbed to a degree which will result in less than optimal production of copyright works."

[15] This is reflected in, eg, Article 27(2) of the Universal Declaration of Human Rights, which provides: "Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author."

[16] This is reflected in, eg, the Preface to WIPO's Guide to the Berne Convention for the Protection of Literary and Artistic Works (WIPO Publication No 615(E), 1978) which states:
Copyright, for its part, constitutes an essential element in the development process. Experience has shown that the enrichment of the national cultural heritage depends directly on the level of protection afforded to literary and artistic works. The higher the level, the greater the encouragement for authors to create; the greater the number of a country's intellectual creations, the higher its renown; the greater the number of productions in literature and the arts, the more numerous their auxiliaries in the book, record and entertainment industries; and indeed, in the final analysis, encouragement of intellectual creation is one of the basic prerequisites of all social, economic and cultural development.
For further discussion of the underlying values/rationales of copyright law, see Macmillan Patfield, "Legal Policy and the Limits of Literary Copyright" in Parrinder and Chernaik (eds), Textual Monopolies: Literary Copyright and the Public Domain (1997).

[17] This same device was used in the World Trade Organisation Agreement on Trade Related Aspects of Intellectual Property Rights, Article 9(1): see Blakeney, Trade Related Aspects of Intellectual Property Rights (1996), ch 4.

[18] For the ratification status of the Treaty see, WIPO Website; "Signatories of Treaties Administered by WIPO Not Yet in Force" <http://www.wipo.org/eng/ratific/s-copy.htm> . For the ratification status of the WIPO Performances and Phonograms Treaty, see ibid. <http://www.wipo.org/eng/ratific/s-perf.htm> .

[19] Article 10 provides:
Producers of phonograms shall enjoy the exclusive right of authorising the making available to the public of their phonograms, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them.
[20] Article 15(1) provides:
Performers and producers of phonograms shall enjoy the right to a single equitable remuneration for the direct or indirect use of phonograms published for commercial purposes for broadcasting or for any communication to the public.
[21] Copyright Reform and the Digital Agenda, note 2 supra, para 3.22.

[22] Agreed Statements Concerning the WIPO Copyright Treaty <http://www.wipo.org/eng/diplconf/distrib/96dc.htm> .

[23] Copyright Reform and the Digital Agenda, note 2 supra, para 3.25: "However, the Agreed Statement does not provide a blanket exclusion from all liability for carriers or carriage service providers. For example, if a company is engaged in the provision of Internet services, it may also be liable for unauthorised transmissions in the same way as other ISPs ... are according to the relevant provisions in the implementing legislation in the relevant jurisdiction."

[24] Which, it seems, indicate an intention on the part of the Australian Government to accede to the Treaty, notwithstanding the fact that, at the time of writing it had not yet done so; nor had it acceded to the WIPO Performances and Phonograms Treaty: note 17 supra.

[25] Note 2 supra, para 1.10.

[26] See Williams, note 3 supra, para 28.

[27] Note 2 supra., para 4.9; see also, Williams, note 3 supra, para 28.

[28] Ibid., para 4.11.

[29] Ibid., para 4.14.

[30] Ibid., para 4.16.

[31] Ibid., para 4.17.

[32] Cf. Shetland Times v Dr Jonathan Wills and Zetnews Ltd [1997] FSR. See also Ticketmaster Corp v Microsoft Corp (presently before the US courts).

[33] At present the fair dealing defences encompass fair dealing for research or study (Copyright Act 1968, ss 40 & 103C), fair dealing for criticism or review (Copyright Act 1968, ss 41 & 103A), fair dealing for the reporting of the news (Copyright Act 1968, ss 42 & 103B).

[34] Note 2 supra, paras 4.62 - 4.64.

[35] Williams, note 3 supra, paras 31-32.

[36] Ibid., para 34.

[37] See text accompanying note 22 supra.

[38] Williams, note 3 supra, paras 37-39.

[39] Note 2 supra, para 4.72.

[40] Copyright Convergence Group, Highways to Change: Copyright in the New Communications Environment (1994)

[41] Note 2 supra, para 4.71.

[42] Ibid., paras 4.72 & 4.80.

[43] Ibid., paras 4.74 & 4.83.

[44] (1975) 133 CLR 1.

[45] Note 2 supra, para 4.79.

[46] As to the question of whether there should be legislative intervention to protect communications carriers, see Macmillan & Blakeney, note 4 supra, 59-60.

[47] Unreported

[48] [1972] 1 QB 441

[49] See e.g. Charleston v News Group Newspapers Ltd [1995] UKHL 6; [1995] 2 AC 65.

[50] Proposed Moral Rights Legislation for Copyright Creators, June 1994, para.3.49.

[51] Ibid., para.3.26.

[52] Ibid., para.3.28.

[53] Ibid., para. 3.51.

[54] Ibid., para. 3.52.

[55] Ibid., para. 3.66.

[56] 634 F. Supp. 1648 (SDNY 1986).

[57] 346 F. Supp. 1183 (EDNY 1972).

[58] 10 USPQ 2d 2006 (SDNY, 1989).

[59] [1979] USCA2 653; 604 F. 2d 200 (2d Cir. 1979).

[60] Note 1, supra

[61] "Performers" are defined in Article 2 of the Treaty as "actors, singers, musicians, dancers, and other persons who act, sing, deliver, declaim, play in, interpret, or otherwise perform literary and artistic works or expressions of folklore".

[62] December 1997 <http://www.dca.gov.au/pubs/performers.html> .

[63] This scheme is described in ibid., Attachment B

[64] These countries have two of the world's largest film making sectors: ibid.

[65] A stronger line was however taken on this in a paper prepared for the previous government: see Sherman and Bentley, Performers' Rights: Options for Reform (October 1995). This paper, the contribution of which is acknowledged in the discussion paper presently under consideration, takes the view that audio performers and audio-visual performers should be governed by a common regime.

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