Wednesday, July 11, 2012

7th Gikii 2012 - call for papers!!

Call for Papers: 7th Gikii Workshop, 17-18 September 2012

UEA London

102 Middlesex Street

London E1 7EZ UK

It’s harder than it used to be to write a Call for Papers for GikII, the so-cool-it-hurts blue skies workshop for papers exploring the interstices between law, technology and popular culture. Back in the day, you could dazzle the noobs just by mentioning past glories like the first paper on Facebook and privacy, Harry Potter and the Surveillance of Doom, regulation of autonomous agents according to the Roman law of slavery, edible technologies and copyright in Dalek knitting patterns. But nowadays we live in a world where we routinely encounter unmanned surveillance drones used to deliver tacos or made out of cats , commercial asteroid mining with Richard Branson, 3d printers used to create human organs and the fact that Jeremy Hunt still has a job.

Still, if any of these or the other many phenomena of the digital age in desperate need of legal attention are digging a tunnel out of your brain, then send us an abstract for the 7th Gikii workshop! Maybe this year it will be your paper which contributes the seminal GikII meme following in the honoured footsteps of LOLcats, flying penises, and knitted Daleks.

Gikii has run since 2006 in venues such as Edinburgh, Oxford, London, Amsterdam and Gothenberg with attendees coming from Europe, the US, Canada, Australia, Japan, India and Latin America. There is no conference fee, but attendees may be asked to contribute to the conference dinner on 17th September. If desired, we can suggest London accommodation ranging from cheap to more expensive. This year’s Gikii is run with the kind assistance of the Law School, University of East Anglia at their London centre, and will commence at lunchtime Sep 17th running through to end September 18th. These dates also offer an opportunity to combine GikII with the 7th SCL Policy Forum (details at ) in what has been termed the “week of geek”.

Abstracts of no longer than 500 words should be sent to and "Karen Mc Cullagh (LAW)" by August 13th 2012. Acceptances will be announced shortly thereafter. A limited number of places will be available for participants not giving papers, and preference will be given for these to scholars (including postgraduate students) who have not previously attended GikII. Registration for these places will open at when acceptance of abstracts is notified.

Shamelessly reposted from panGloss

Monday, June 11, 2012

Australasian Intellectual Property Academics Conference 2012

Date: 13 & 14 July 2012

Time: 8.30am-6.00pm and 9.00am -12.00pm
Venue: National Wine Centre of Australia

Thursday 12 July
Adelaide Law Library Drinks Reception for Professor W.R. Cornish
Adelaide Law School Moot Court (free event)

Friday 13 July
Opening Session
Professor Cornish
Ass Prof David Brennan, Melbourne Law School

Morning Tea

Session 2: Trade Marks, Patents and Counterfeit Goods
Amanda Scardamaglia, Swinburne University of Technology
'The Colonial Trade Mark Regime: Opening up the Australian Archives on Colonial Trade Mark Registrations'
Chris Dent, University of Melbourne
‘Empirical Evidence of the Patenting of Pharmaceutical Innovations’
Michael Blakeney, University of Western Australia
'Weapons of Mass Deception? The role of terrorists in counterfeiting and piracy’


Session 3: Copyright
Graham Greenleaf and Catherine Bond, University of New South Wales
'Public rights in copyright: What makes up the public domain?’
Elizabeth Adeney, Deakin University
‘Fair dealing for the purposes of quotation: What is a quotation exception and
should Australia have one?’
David Lindsay, Monash University
'What does iiNet mean and what happens now?'

Afternoon Tea

Session 4: New Developments
Nicolas Suzor, Queensland University of Technology
'Access, progress, and fairness: rethinking exclusivity in copyright'
Kylie Pappalardo, PhD Candidate QUT Law School
'Understanding the role of users in intermediary liability: theory, rhetoric and
Robert Cunningham, University of Western Australia
'Should the Public Domain Have Standing? Applying the Ecology Analytical
Framework to Intellectual Property Rights'

Conference Dinner

Saturday 14 July

Session 5: ALRC - Copyright Review
Prof Jill McKeough, University of Technology Sydney
ALRC Commissioner

Morning Tea

Session 6: Research Directions and Planning Ahead

For registrations:

Monday, April 30, 2012

NRL v Optus in the Full Federal Court: victory for Telstra

In a rapid piece of work, the Full Federal Court (Finn, Emmett and Bennett JJ) handed down a unanimous judgment in the Telstra v Optus dispute over recording of AFL and NRL games, National Rugby League Investments Pty Limited v Singtel Optus Pty Ltd, [2012] FCAFC 59, on 27 April 2012. As reported by Bram in February  Optus had since July 2011, been offering its subscribers access to the TV Now service, which (subject to payment of the relevant fee) allowed users to select to record TV programs being shown on free-to-air TV, provided  that the 'record' button was selected prior to the commencement of the relevant show. The AFL and NRL had an exclusive deal with Telstra regarding the broadcast of footage of AFL and NRL games via the internet and mobile phones (a deal which is both lucrative and an important source of fudning for both codes). The Optus model was seriously and deliberately 'disruptive' of this licensing arrangement.

The Full Federal Court focused on the meaning of  'make' and 'maker' in the Copyright Act, concluding the Optus, or Optus together with the subscriber, was the maker of the film, sound recording or copy of the game (Rares J at first instance had found this was the subscriber, thus immunising Optus against liability through reliance upon s111). Following on from this finding, the FFC concluded that Optus was not entitled to rely upon the 'private and domestic use' exception under s111. This is consistent with Bram's own thoughts on the intended scope of that provision (which was introduced for time shifting, a practice which had previously been an unauthorised use under Australian law, it was never intended as a foundation stone of a commercial business model).

The Court held: 'Optus could be said to be the maker in that the service it offered to, and did, supply a subscriber was to make and to make available to that person a recording of the football match he or she selected. Alternatively Optus and the subscriber could be said to be the maker for Copyright Act purposes as they acted in concert for the purpose of making a recording of the particular broadcast which the subscriber required to be made and of which he or she initiated the automated process by which copies were produced. In other words, they were jointly and severally responsible for the act of copying.' [para 4]
Looking at the question of who does the copying, the Court noted that the TV Now service was designed, provided and marketed by Optus to enable programmes to be received, copied, stored and streamed to a subscriber's mobile or PC device. The Court considered the correct characterisation of the 'maker' of the copies in the context, noting the four possible alternatives:
'(i) they were made by Optus but as agent for the subscriber;
(ii) they were made by the subscriber as a principal using a facility made available by Optus pursuant to its contract with the subscriber;
(iii) they were made by Optus as a principal using its own technology but subject to its contractual obligation to store and to allow subscriber viewing of the recordings so made at the time(s) of his or her choosing; or (iv) they were made jointly by Optus and the subscriber both of whom, consistent with their contract, acted in concert with one another pursuant to a common design to have a broadcast copied on Optus’ technology and made available to be viewed by the subscriber.' [para 53]
Looking at the provisions of s 86(a) and s 87(b), the Court concluded that the term 'make' is directed to the creation of a physical thing  ie the embodiment of the copyright subject matter. This action is undertaken by the automated copying system: a system 'configured designedly so as to respond to a third party command to make that copy' [para 64]. 

The Court places a heavy emphasis on the creation, promotion and operation on the TV Now system being designed solely to be in constant readiness to respond to subscriber demands. This resulted in the Court finding that Optus was a 'maker' of the recordings. The Court then considered if the subscribers were also makers of the copies. They concluded: 'The subscriber, by selecting the programme to be copied and by confirming that it is to be copied, can properly be said to be the person who instigates the copying. Yet it is Optus which effects it. Without the concerted actions of both there would be no copy made of a football match for the subscriber. Without the subscriber’s involvement, nothing would be created; without Optus’ involvement nothing would be copied. They have needed to act in concert to produce – they each have contributed to – a commonly desired outcome. The subscriber’s contributing acts were envisaged by the contractual terms and conditions. How they were to be done were indicated by the prompts given on the Optus TV Now TV guide page. The common design – the production of the selected programme for transmission to the subscriber – informed the solicitation and the taking of a subscription by the subscriber; it was immanent in the service to be provided.' [para 76]

On this basis, both Optus and the subscriber could 'both properly be said to be jointly and severally responsible for the act of making the copies'. [para 77] The preferred view of the Court was that both Optus and the subscriber, acting together, were the makers of the copies.

With respect to s 111 the Court observes that: 'There is nothing in the language, or the provenance, of s 111 to suggest that it was intended to cover commercial copying on behalf of individuals. Moreover, the natural meaning of the section is that the person who makes the copy is the person whose purpose is to use it as prescribed by s 111(1). Optus may well be said to have copied programmes so that others can use the recorded programme for the purpose envisaged by s 111. Optus, though, makes no use itself of the copies as it frankly concedes. It merely stores them for 30 days. And its purpose in providing its service – and, hence in making copies of programmes for subscribers – is to derive such market advantage in the digital TV industry as its commercial exploitation can provide. Optus cannot invoke the s 111 exception.' [para 89] Bram agrees that the position argued for by Optus was way outside the envisaged scope of s111 and the system as developed and marketed by Optus goes beyond the analogy of a home video recording device, not the least because it allows platform as well as time shifting (a commercial advantage clearly not lost on Optus). The Court observed that analogies are not particularly helpful in this context (noting the differing outcomes in US cases dealing with indirect liability, such as Cartoon Network LP, LLLP v CSC Holdings Inc 536 F 3d 121 (2nd Cir 2008))

Given the joint and several liability, Optus having alone been sued, it was liable as the person who did the acts of copying.

It is likely, although unknown at this time, that Optus will appeal.

Friday, April 20, 2012

iiNet in the High Court: A long march from "indifference" to "authorisation"

And so, finally, we reach the end of this saga, which commenced in the Federal Court in 2009 (with the gathering of data by AFACT commencing in 2008), Roadshow Films Pty Ltd v iiNet [2012] HCA 16.
In two joint judgments, (French CJ, Crennan and Kiefel JJ and Gummow and Hayne JJ) the High Court unanimously held that iiNet had not authorised the infringement of copyright by its customers who were distributing and accessing films using BitTorrent.
Both judgments focus specifically and narrowly on the concept of authorisation. The judgments avoid becoming entangled or distracted by questions such as what all those overlapping sections (s101(1), s 101(1A) and s112E) actually mean!  The Gummow and Hayne JJ judgment does observe that s112E "seems to have been enacted from an abundance of caution" [para 113]. They also leave the safe harbour provisions alone given their defeat in the Full Federal Court.
The judgments both progress on the basis that the test is to apply the questions from s101(1A):

"In determining, for the purposes of subsection (1), whether or not a person has authorised the doing in Australia of any act comprised in a copyright subsisting by virtue of this Part without the licence of the owner of the copyright, the matters that must be taken into account include the following:
(a) the extent (if any) of the person's power to prevent the doing of the act concerned;
(b) the nature of any relationship existing between the person and the person who did the act concerned;
(c) whether the person took any other reasonable steps to prevent or avoid the doing of the act, including whether the person complied with any relevant industry codes of practice."

These are treated largely as questions of fact, with the answer to be drawn from the findings on these facts. See para 63:
"The appeal can be determined by asking interrelated questions informed by s 101(1A). Did iiNet have a power to prevent the primary infringements and, if so, what was the extent of that power (s 101(1A)(a))? Did reasonable steps to prevent those infringements (after receipt of the AFACT notices) include warnings and subsequent suspension or termination of the accounts of all customers identified as infringing the appellants' copyrights (s 101(1A)(c)), if such customers failed to cease communicating infringing material using the BitTorrent system? How does the relationship between iiNet and its customers (s 101(1A)(b)) bear on each of those questions? It will be observed that these are largely questions of fact and the ultimate question of whether iiNet authorised the infringements will be an inference to be drawn from those facts." [see also para 135 for Gummow and Hayne JJ judgement].

The French judgment then considers the contractual and factual relationship between iiNet and its subscribers. Noting the lack of an industry code which would given iiNet greater guidance regarding how to act in the face of infringement notices, their Honours conclude that iiNet in fact had little power to prevent infringement. Termination on the basis of an AFACT notice was not regarded as sufficient to require termination of a user's service and terminated customers could easily obtain their internet services from elsewhere. iiNet's refusal to act was not indifference but rather a recognition of their own limited power and the limitations of the AFACT notices.

Drawing upon tort law, Gummow and Hayne JJ consider the scope of "authorisation" in this context. They conclude that the arguments for authorisation liability seek to impose a positive duty of care on iiNet which could only be discharged by taking active steps regarding infringement by customers [para 115]. They conclude that: "the power of iiNet as an ISP with respect to the use of facilities provided to subscribers was limited by the nature of their commercial relationship; iiNet could not control the choice of its subscribers and other users to utilise the BitTorrent software, nor could iiNet modify the BitTorrent software or take down the appellants' films which were made available online." [para 137]

The provision by iiNet of internet connection, combined with its technical and contractual controls, and its lack of response to the AFACT notices did not constitute a case of authorisation of primary infringement: "The progression urged by the appellants from the evidence, to "indifference", to "countenancing", and so to "authorisation", is too long a march."[para 143] It was not unreasonable for iiNet to refuse to take the steps to disconnect users on the basis of the AFACT notices.

This decision leaves the way open for a statutory response to the secondary liability question: see para 79.

Thursday, February 9, 2012

CFP: Journal of Virtual Worlds Research: Law and Virtual Worlds

CFP Journal of Virtual Worlds Issue on Law and Virtual Worlds 

A Special Issue edited by:

Melissa de Zwart, Adelaide Law School, Australia
Greg Lastowka, Rutgers School of Law-Camden, USA
Dan Hunter, New York Law School. USA

created by nyx breen for the faculty of law uwa
The University of Western Australia (UWA) presence on Second Life

The Journal of Virtual Worlds Research ( is an online, open access academic journal that engages a wide spectrum of scholarship and welcomes contributions from the many disciplines and approaches that intersect virtual worlds research. The field of virtual worlds research is a continuously evolving area of study that spans across many disciplines and the JVWR editorial team looks forward to engaging a wide range of creative and scholarly work.

Motivation and Scope

This special issue will focus on legal questions generated by the creation, regulation and participation in virtual worlds. We are looking for papers that explore beyond the basics of ‘the magic circle’ (asserting that virtual worlds are immune from external laws and norms) and consider emerging legal issues that may encourage or inhibit the uptake of virtual worlds. In particular, we are interested in papers that adopt a multi-jurisdictional focus and which propose new ways that the legal issues may be approached by developers and regulators. Innovative and creative papers are encouraged.

Given the audience and nature of the JVWR we are looking for papers which are accessible to a non-legal readership. They should demonstrate a good awareness of the nature of virtual worlds.

Authors are invited to submit papers that are innovative, original, and contribute to the advancement of understanding of law as it applies to virtual worlds. Papers will be considered by the Guest Editorial Board and reviewed by expert referees using our double -open policy. Double-open policy means that in general, authors do not need to anonymize their papers, and reviewers identity is also known to authors. For more details about see JVWR site --> About JVWR --> For Authors --> Our double-Open Policy.

Possible topics include, but are not limited to:
  • Jurisdiction and rule-making
  • Governance and community management
  • Player rights
  • Virtual property
  • Dispute resolution
  • Intellectual property, modding, user-generated content
  • Privacy, identity and data collection
  • Security and hacking
  • Crime
  • Freedom of speech, freedom of expression, discrimination, access and hate speech

Submission Instructions

Authors are invited to submit papers of up to 6000 words (including footnotes and references) via the JVWR publishing system (see> about > for authors). Accepted papers will be published online in the Volume 6, Number 2 of the Journal, 2013. 

Deadlines and Timeline

Authors can submit a 600 word abstract as of the publication of the call.
Please use the Journal publishing system (login at the top right of the journal site, state that your submission is for the Legal issue.) 
Abstract submission will give authors quick feedback on the relevance and appropriateness of their topic and allow editors to identify reviewers as soon as possible. 
  • Final deadline for Authors to submit abstracts for Editors’ comments: 30 June 2012
  • Editors submit comments on the Abstracts to Authors: 30 Aug 2012
  • Authors submit full paper: 30 Dec 2012
  • Editors send Reviewers’ feedback on the paper, and indication of acceptance or rejection: 15 February 2013
  • Submission of revised paper (if necessary): 30 April 2013
  • Editors’ decision and comments for accepted papers: 20 May 2013
  • Authors Submission of final version: 15 June 2013
  • Staff editors & authors work till planned Publication Date: 15 July 2013

Further Information

Please contact:
Melissa de Zwart, Adelaide Law School, melissadez AT
Greg Lastowka, Rutgers School of Law-Camden, lastowka AT
Dan Hunter, New York Law School, USA

Wednesday, February 8, 2012

Singtel Optus Pty Ltd v National Rugby League Investments Pty Ltd (No 2) [2012] FCA 34

Proving yet again that copyright law in Australia is shaped by sport...

In July 2011, Optus began offering its subscribers access to the TV Now service, which (subject to payment of the relevant fee) allowed users to select to record TV programs being shown on free-to-air TV, provided  that the 'record' button was selected prior to the commencement of the relevant show. The AFL and NRL, together with Telstra, the exclusive licensee of broadcasts of the footage of AFL and NRL games via the internet and mobile phones (I am avoiding the terms devices here as this seems to be a point of contention in this instance) claimed that such recordings (and the necessary playback) were an infringement of copyright. The action was actually brought on the basis of  groundless threats of infringement under s 202 Copyright Act.

On 1 February 2012, Rares J in the Federal Court held that the TV Now service did not infringe copyright in the broadcasts of certain AFL and NRL games in 2011, Singtel Optus Pty Ltd v National Rugby League Investments Pty Ltd (No 2) [2012] FCA 34 .

The Optus subscriber using the TV Now service 'could select a program to record from an electronic program guide that would appear on any one of ...four kinds of device': a PC, Apple devices, Android devices or other 3G devices. Thus, once a program was selected to 'record' by a user, four individual copies would be made to support each of these platforms. Each individual user would also have a unique set of files made for their use ie multiple copies were made, each corresponding to an individual and unique request. These files were stored by Optus for 30 days, for playback by the user. who accessed the content via streaming. Users of Apple devices could view the content 'almost' live, ie subject to a two minute delay, due to differences in Apple file saving requirements. Each user has an allocated amount of recording time, depending on which 'plan' they had purchased. Users could only record TV shows shown in their 'home' region.

Optus relied upon s 111 Copyright Act, which (relevantly for our purposes) provides:

(1) This section applies if a person makes a cinematograph film or sound recording of a broadcast solely for private and domestic use by watching or listening to the material broadcast at a time more convenient than the time when the broadcast is made.

Note: Subsection 10(1) defines broadcast as a communication to the public delivered by a broadcasting service within the meaning of the Broadcasting Services Act 1992 .

(2) The making of the film or recording does not infringe copyright in the broadcast or in any work or other subject-matter included in the broadcast.
Note: Even though the making of the film or recording does not infringe that copyright, that copyright may be infringed if a copy of the film or recording is made.

The parties agreed that the Court should answer the following questions before proceeding to consider any further matters:
  1. Who did the acts involved in recording the broadcasts?
  2. Did s 111 mean there was no infringement of copyright? If there was infringment of copyright, was Optus liable for authorisation of copyright infringement?
  3. When the recording was viewed, who did the acts of electronically transmitting the copyright workks?
  4. Is streaming a communication 'to the public'?
  5. Was Optus responsible for 'making the works available' online?
  6. Was this 'to the public'?
Rares J concluded that the user of the TV Now service (rather than Optus)  'makes each of the films in the four formats when he or she clicks on the "record" button on the TV Now electronic program guide. This is because the user is solely responsible for the creation of those films.' [para. 63] Optus did not do any of the acts involved in recording the works, see para 68:  drawing the comparison with the photocopier in UNSW library in the Moorhouse case: 'it was impossible to say that the University did the act of photocopying by providing the photocopier, just as, in my opinion, it is impossible to say that Optus makes any of the films in the four formats that are created when a user clicks "record" and its datacentre carries out that instruction.' Perhaps this analogy is a little overstated given that the technology required to undertake the recording was entirely operated by Optus. All the user had to do was press a button, with no regard as to how this command would be achieved. In addition, in order to offer the service at all a considerable investment had to be made in receiving, recording and hosting equipment.

At para 80-81 Rares J emphasises that all that is achieved by the service is the outcome of time shifting as contemplated by s 111. See, in particular, para 81:

'If a person can watch a broadcast “near live”, away from a television, that may enable him or her to do something else. For example, the person may want to finish a task at work in the time it would take to travel home, because he or she knows that, once he or she finishes the task, he or she can view the broadcast “near live” when travelling home late or while still at work. Such a purpose is consistent with the definition of “private and domestic use”. Moreover, the rightholders accepted that pausing the contemporaneous recording of a broadcast to allow a user to do something else, even momentarily, can entail that the recording is made for use immediately after the viewer finishes the distracting event because that is a time more convenient than the time when the broadcast is made.'

These paragraphs seem to gloss over the point that what is really being talked about here is format rather than time shifting, and this is in essence, what is at the heart of the Optus business model, to get a slice of the internet and mobile devices market, which is exclusively licensed, for a large sum, to Telstra.

In response to the other questions, Rares J concluded that the user did the act of electronically transmitting the film, despite the use of Optus's equipment and services [para 95], and the communication was made to the user only and not 'to the public' [para 100] . Rares J also had to deal with the conclusion in Telstra Corporation Ltd v APRA (1997 HC) (the music on hold case) that if a work is communicated in circumstances where the copyright owner can expect a fee, the communication is made "to the public" regardless of whether it is made to only one person at a time'. [para 101] Rares J correctly recognises that: The TV Now service is part of Optus’ service that it offers to the market in order to attract and retain customers. As the business case for Optus’ decision to invest in the TV Now service recognised, the service would give it the significant market benefit of a leading position in the digital television industry and “delivers the customer value proposition ‘record and watch my favourite TV shows on the go’”. [para. 102] However, Rares J concludes that the communication of the recording to the user's device 'lacks the element of commercial detriment to the rightsholders' that had been present in the Telstra case. Thus, it could not constutite a communication to the public.

Finally, the digital file of the recording was not an 'article' or 'article or thing' withing the meaning of s 103 or s111(3)(d).

The Apple streaming technology was held to give rise to different issues to be considered separately.

Bram believes that there is plenty of scope to argue that whilst s 111 enables users to record material for viewing 'at a time more convenient than the time when the broadcast is made', time is not the only, nor perhaps even the main, matter to be considered here. Section 111 did not contemplate format shifting, that is dealt with in other sections of the Act.

The case has been appealed to the Full Federal Court.