International Trade and Business Law Review: Volume XI

Gabriel Moens, Roger Jones

• Publisher: Routledge-Cavendish
• Year: 2012
• ISBN:
  9781136025983
• Edition: 1
• Topic: Business
• Subtopic: Business Law
• Index: Business

The International Trade and Business Law Review publishes leading articles, comments and case notes, as well as book reviews dealing with international trade and business law, arbitration law, foreign law and comparative law. It provides the legal and business communities with information, knowledge and understanding of recent developments in international trade, business and international commercial arbitration.

The Review contributes in a scholarly way to the discussion of these developments while being informative and having practical relevance to business people and lawyers. It also devotes a section to the Willem C. Vis International Commercial Arbitration Moot and publishes the memoranda prepared by teams coached by Professor Gabriël A. Moens.

The Review is edited at the Murdoch University School of Law in Perth, Australia. The Editors-in-Chief are Mr Roger Jones, Partner, Latham & Watkins LLP, Chicago and Gabriël A. Moens, Dean and Professor of Law, Murdoch Law School. It is an internationally-refereed journal. The Review is supervised by an international board of editors that consists of leading international trade law practitioners and academics from the European Union, the United States, Asia and Australia. The Student Editors for Volume XI are Adam Totaro and Peter Clay from the Murdoch Law School.

Articles

Copyright enforcement in Australia

Sam Luttrell

Abstract

The purpose of this article is to provide a short survey of the Australian copyright enforcement regime. It is intended to inform foreign copyright owners of their substantive and procedural enforcement rights in Australia. The writer will commence with a brief summary of the origins and general nature of Australian copyright law. Then the role of criminal sanctions in copyright enforcement, and the procedure by which criminal action may be initiated by Australian copyright owners, will be discussed. Close attention will be paid to recent amendments that have been made to the criminal provisions of the Copyright Act 1968 (Cth) by the passage of the Copyright Amendment Act 2006 (Cth). This focus will be followed by a summary of the various civil causes of action open to aggrieved authors and owners. The writer will then close by making certain observations and recommendations regarding copyright infringement and enforcement in Australia.

Copyright law in Australia

Copyright piracy² has been the subject of legislation in Australia since 1828, at which time Australia received the wider body of British law by virtue of the passage of the Australia Courts Act 1828.³ The Statute of Anne 1709,⁴ the oldest and broadest of the English copyright statutes, was thereby delivered to Australian shores. The effect of this statute in the colonies was uncertain for some time. The Australian colonies, as the states then were, initially had the power to make their own copyright laws. Four states did so,⁵ and there was a degree of confusion as to what copyright law applied until Federation in 1901, at which time the Commonwealth Constitution came into effect and the colonies became federated states.

With the promulgation of the Constitution, intellectual property became a federal matter. Under section 51(xviii), the Commonwealth⁶ has the power to make laws in respect of ‘copyrights, patents of inventions and designs, and trade marks’. While the states still have power to make laws on this subject, the operation of section 109 – under which federal law will defeat state law on the same subject to the extent that the two are inconsistent – is such that comprehensive federal laws have all but excluded the states from the process of intellectual property law-making in Australia.⁷ In this way, copyright formed part of the broader package of legislative subject matter that was ‘centralised’ at Federation. Commonwealth Parliament passed a series of copyright laws, beginning with the Copyright Act 1905 (Cth) and including subsequent sui generis statutes in 1912 and 1958, until the current legislation, the Copyright Act 1968 (Cth),⁸ was enacted.

The Act mirrors the substantive provisions of the International Convention for the Protection of Literary and Artistic Works (the ‘Berne Convention’),⁹ to which the Australian colonies acceded in 1886.¹⁰ Previous Australian copyright Acts also reflected the substantive norms established by the Berne Convention, most notably those pertaining to the protection of the economic rights of authors of literary and artistic works.¹¹ The current Act recognises the subsistence of copyright in two main categories of subject matter – Part III ‘works’, and Part IV ‘subject matter other than works’. Section 32¹² of the Act identifies Part III ‘works’ as:

1 original literary works;¹³

2 original dramatic works;

3 original musical works; and

4 original artistic works.¹⁴

Part IV, ‘subject matter other than works’ covers:

1 sound recordings (s. 85);

2 cinematographic films (s. 86);

3 television and sound broadcasts (s. 87); and

4 published editions of works (s. 88).

The Act provides, either directly or indirectly, for all of the norms of the Berne Convention: protection for the expressions of ideas and not the ideas themselves; the requirements of originality and human authorship; and the absence of registration formalities. The requirement of ‘material form’, optional under Berne,¹⁵ is imposed on Part III works indirectly by virtue of the interaction of sections 32 and 22(2) of the Act.¹⁶ The minimum protection periods for Economic Rights in works provided for at Article 7 of the Berne Convention are enshrined in the Act,¹⁷ as are the periods for the subsistence of moral rights.¹⁸ Significant statutory additions have recently been made to the Berne protection periods as a result of the Commonwealth’s signing of the Australia-United States Free Trade Agreement.¹⁹ The moral right of attribution²⁰ lasts for the same period as the standard term of copyright protection, being 70 years for Part III works and 70 years from first publication for films.²¹ The right to integrity²² continues until the expiration of copyright,²³ except in the case of films where it ends with the death of the author.²⁴ Part IV broadcasts and sound recordings remain subject to the original 50-year term of protection.²⁵.

Australia’s copyright laws are, therefore, consistent with Berne standards, and comparable with those of most industrialised states. As with all industrialised states, Australia’s intellectual property laws are not stagnant. Given that intellectual property issues are closely related to technological progress, legislative review and amendment must be embarked upon regularly if the regime is to remain relevant and effective. Legislative activity in the field of intellectual property generally, and copyright specifically, is close to constant. In Australia, Federal Government awareness of the impact of technological advances on intellectual property rights is fostered through the reports of specialised advisory committees. The principal bodies concerned with copyright are the Copyright Law Review Committee (CLRC) and the Advisory Council on Intellectual Property (ACIP). The advice of these specialised bodies, coupled with the submissions of industry experts and respresentatives, is an essential aspect of this process of legislative upkeep.²⁶

Australian federal legislative activity in the area of intellectual property is also driven by international obligations. As a member of the World Trade Organisation (WTO), Australia is a signatory to the Agreement on the Trade Related Aspects of Intellectual Property (TRIPs).²⁷ Where the Berne Convention was silent on enforcement, TRIPs obliges WTO member states not only to provide effective regimes for the enforcement of intellectual property rights, but also to attach criminal sanctions to infringements of copyright and trade mark rights.²⁸ TRIPs Article 61 states:

Members shall provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale. Remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent …²⁹

Criminal sanctions for copyright infringement have been in force in Australia since the beginning of last century.³⁰ The Copyright Act 1905 (Cth)³¹ was the first statute to make dealing in infringing copies a criminal offence. Sections 132 and 133A of the current Act extend the range of dealings to which criminal sanctions apply. Section 132(1) provides that:

a person shall not, at a time when copyright subsists in a work:

(a) make an article for sale or for hire;

(b) sell or let for hire, or by way of trade offer or expose for sale or hire, an article;

(c) by way of trade exhibit an article in public, or;

(d) import an article into Australia for the purpose of:

(i) selling, letting for hire, or by way of trade offering or exposing for sale or hire, the article;

(ii) distributing the article for the purpose of trade, or for any other purpose to an extent that will affect prejudicially the owner of the copyright in the work; or

(iii) by way of trade exhibiting the article in public;

if the person knows, or ought reasonably to know, the article to be an infringing copy of the work.

Section 132, in conjunction with section 133, gives statutory effect to Australia’s obligations under TRIPs Article 61.³² It is comprehensive in its scope, deeming acts of selling, distributing, advertising and possessing for commerce infringing copies to be criminal offences. The criminal provisions of the Act have been the subject of repeated amendments. Section 133A was inserted in 1984 to include the offence of advertising infringing copies of a computer program.³³ Amendments in 1986 were directed at piracy in audiovisual materials.³⁴ Further amendments to the offence provisions of the Act were prompted by Australia’s signature of the 1996 WIPO ‘internet treaties’. The WIPO Copyright Treaty 1996³⁵ saw the addition of subsections (5A) to (5D) to section 132. These subsections make dealing in circumvention devices for technology protection measures (TPMs)³⁶ an offence.³⁷ The Commonwealth’s obligation to ‘bring copyright into the digital age’ – the leitmotif of the WCT – is also upheld by the inclusion of digitisation³⁸ as an aggravating circumstance under section 132AK(1).³⁹ This subsection was introduced with the passage of the Copyright Amendment Act 2006 (Cth).⁴⁰ Also attributable to that amending Act are the ‘c...

Table of contents

• Cover
• Title
• Copyright
• Contents
• Articles
• Comments
• International Arbitration Moot
• Book reviews