Additional damages for copyright infringement

Home Table of Contents Under Australian law, victims of copyright infringement may be entitled to an account of profits or compensatory damages under s.115 (2) of the Copyright Act 1951 (Cth) (Copyright Act). Additional damages may also be available under section 115(4) of the Copyright Act.  That section provides: (4)Where, in an action under this section: (a)an infringement of copyright is established; and (b)the court is satisfied that it is proper to do so, having regard to: (i)the flagrancy of the infringement; and (ia)the need to deter similar infringements of copyright; and (ib)the conduct of the defendant after the act constituting the infringement or, if relevant, after the defendant was informed that the defendant had allegedly infringed the plaintiff’s copyright; and (ii)whether the infringement involved the conversion of a work or other subject‐matter from hardcopy or analog form into a digital or other electronic machine‐readable form; and (iii)any benefit shown to have accrued to the defendant by reason of the infringement; and (iv)all other relevant matters; the court may, in assessing damages for the infringement, award such additional damages as it considers appropriate in the circumstances. The purpose of additional damages is to deter copyright infringement. The amount of additional damages awarded will depend on the facts of the case, such as the nature and extent of the infringement, the level of harm suffered by the copyright owner, and any aggravating or mitigating factors. It is worth noting that the award of additional damages is discretionary and not automatic, and that the copyright owner must prove their entitlement to such damages. Additionally, courts may consider other factors such as the infringer’s conduct, their level of knowledge of the infringement, and any steps taken to remedy the infringement when determining whether to award additional damages. Top Plus Pty Ltd v Mix Entertainment Pty Ltd [2022] FEDCFAMC2G 981 This case concerned Top Plus Pty Ltd who were applying for summary judgment against the first respondent, Mix Entertainment Pty Ltd, and the second respondent, Mr Yiren Wang, for infringement under ss 115 and 116 of the Copyright Act1968 (Cth) of copyright in certain cinematograph films owned by the second applicant, Universal Music Limited, and exclusively licensed to the first applicant, Top Plus Pty Ltd. The cinematograph films were karaoke music videos (KMVs). They comprised approximately 6,214 Chinese (both Mandarin and Cantonese) and English KMVs, and new releases of KMVs added from time to time, owned and controlled by Universal Music, released in Hong Kong and Australia, and/or supplied commercially in Australia in VCD/DVD format or electronic form (collectively, the KMV Films). Mix Entertainment had previously been accused of alleged unlicensed use of copyright in the KMV Films in infringement of applicants’ rights. That earlier dispute was resolved in 2012 prior to the commencement of suit by entry into a written non‐exclusive licence agreement between Top Plus and Mix Entertainment, signed by Mr Wang in his capacity as sole director of Mix Entertainment on 30 April 2012 (2012 Agreement). Pursuant to the 2012 Agreement, Top Plus permitted Mix Entertainment to offer the licensed content — the KMV Films — for viewing and singing by customers in up to 13 rooms at Mix Entertainment’s karaoke outlet ‘Mix Karaoke’ for the period of the licence. The 2012 Agreement expired on 31 December 2012. Compensatory damages which applied the licence fee test were awarded in the sum of $179,616.70. Principles governing an award of additional damages under s.115(4) of the Copyright Act 1951 (Cth) Reference was made to a summary of the principles relating to an award of additional damages at [717] – [721] of Microsoft Corporation v CPL Notting Hill Pty Ltd (No 7) [2022] FedFamC2G 590.  In short, the principles are: First, it is not necessary that any amount of additional damages be proportionate to any award of compensatory damages.  Secondly, an award of additional damages involves an element of penalty.  Thirdly, part of the [function] of an award of additional damages is to mark the Court’s disapproval or opprobrium of the infringing conduct.  Fourthly, the matters set out in sub‐s 115(4)(b) of the Copyright Act are not preconditions to an award of such damages.  Fifthly, conduct that may properly be seen as flagrant (per s 115(4)(b), Copyright Act) includes conduct which involves a deliberate and calculated infringement, a calculated disregard of an applicant’s rights, or a cynical pursuit of benefit In addition: If additional damages are appropriate, the amount of damages to be awarded must operate as a sufficient deterrent to ensure that the conduct will not occur again. It should also be noted that, whilst additional damages encompass, they are not the same as aggravated or exemplary damages at common law.  Specific deterrence has a role to play, including general deterrence. It is not always the case, however, that additional damages must be given, nor that they be such as to be given in an award and an amount as claimed by an applicant. Additional damages may be seen as encompassing broad concepts not always readily amenable to precise measurement or quantification. This includes having regard to capturing aspects of loss that have not been able to be ascertained because of the imperfect nature of litigation and evidence gathering in reflecting all aspects of wrongdoing and the total damaging effect of infringing or contravening conduct. It also entails giving a dollar figure to otherwise intangible considerations of punishment, giving effect to judicial disapproval and sanction and future‐looking considerations of specific and general deterrence. A key consideration when deciding to exercise the discretion afforded to the Court under s 115(4) of the Copyright Act is whether the infringement was flagrant.  As noted by Beach J in Henley Arch Pty Ltd v Lucky Homes Pty Ltd [2016] FCA 1217; 120 IPR 137 at [244] (citations omitted): [244]…in this context flagrancy means more than copying. It also means more than mere mistakes or carelessness. It connotes reprehensible conduct or scandalous conduct which may be demonstrated by deliberate and calculated acts of infringement. But it is not necessary to demonstrate a consciousness of copyright infringement. A consciousness of wrongdoing may be sufficient. In Truong Giang Corporation v Quach [2015] FCA 1097; (2015) 114 IPR 498 , discussing the relevant principles in the trade mark context, applicable also to the copyright context, per s 115(4)(b)(ib), Copyright Act) Wigney J said at [138]–[139]: [138]Sixth, post‐infringement conduct within s 126(2)(c) of the [Trade Mark Act 1995 (Cth) (TM Act)] is unlikely to include the respondent’s conduct

FirmChecker 2021 ‘Best Law Firms in Sydney 2021’ Award Winners

Heathfield Grosvenor Lawyers has been recognised as ‘a highly rated firm’ by FirmChecker (don’t know what that is? It is equivalent to Tripadvisor in the tourism industry), Australia’s leading site for professional service reviews. Do we work for the accolades and the recognition? Absolutely not. Thankfully, these recognitions come with the ardent work that we pride ourselves in. But, as a law firm, we are always thankful for the recognition given, and most importantly, knowing that our clients receive the best and just outcome. Survey results, as published by Lawyers Weekly show that ‘NZ lawyers are more trustworthy than Australian Lawyers’ – now that is another point to add onto Australia’s long-standing scoreboard with New Zealand! But, the point being is that we aim to restore the integrity and trust between clients and lawyers through our firm. For us, it is not about competition because we distinguish ourselves with our inherent ability to achieve just outcomes, and a pleasant and professional experience for our clients. Serving justice is a privilege and a duty for us, and nothing else. Just leave it with us. See the full FirmChecker article below: https://www.firmchecker.com.au/news/best-rated-law-firms-in-sydney-cbd Lawyers Weekly Article: https://www.lawyersweekly.com.au/biglaw/25220-nz-lawyers-more-trustworthy-than-australian-research-shows

Automation, artificial intelligence and legal issues

Home Table of Contents By Newyorka Musabelliu and Chris Chang – January 2020 It is not surprising that the law cannot keep up with the growth in artificial intelligence.  Patent applications have already been filed on behalf of and in the name of a machine called Dabus that used AI to design two products[1].  Nevertheless, progress is being made regarding law reform in this space. In December 2019 the Australian Law Reform Commission released a report for law reform in connection with artificial intelligence over the next five years[2] and the World Intellectual Property Organization (WIPO) announced a public consultation process on artificial intelligence and intellectual property policy[3]. Below are some of the associated legal issues[4]. Key takeaways The implementation of different types of permanent controls, checks and balances on the AI which cannot be overridden is important given the different types of risks. The ALRC report notes recent commentary and states “appropriate design choices are crucial for automated systems to achieve consistency with concepts such as transparency and accountability; predictability and consistency; and equality before the law” and calls for effective regulation of technological developments. There are doubts as to whether mere principle based regulation will suffice and therefore the task of drafting such legislation will be both challenging and interesting. IP Law There are a multitude of issues to consider in view of the current landscape but, in summary, it is important to ensure the retention of personal control over the creative process and provide the input to at least a substantial part of the end result. Otherwise the risk is that you will lose rights in works authored by AI or jointly authored with AI unless reform addresses this. Reform debate primarily focuses on ownership where the work has been created by AI. Who should own the intellectual property rights (1) no-one (2) the AI, or (3) an interested party such as the producer.  The latter is in our opinion the preferred option.  In any other scenario this would be unsatisfactory to many businesses who have invested in AI and the fruits of the AI’s labour, including adaptations and compilations etc of those works.  If left unaddressed, questions as to whether inventions presently created by AI can be registered as patents by persons other than the AI[5], or whether future applications based on such inventions are in fact already part of the prior art base and do not constitute inventive steps may also arise, and so forth. Who should be responsible for infringement by AI? We suggest the principles of agency law should apply. This question also opens the doors to liability for other positive acts of AI and questions concerning torts to the person for example which, given current advances in AI, is a possibility. Admin Law Even when automated systems are deployed carefully and effectively by government agencies, questions remain as to their compatibility with core administrative law principles and the rule of law.  In particular, it is not yet clear whether (or how) such systems can be said to act with procedural fairness.  The legality of actions and decisions by public bodies is called into question as is transparency and accountability of government decisions (in particular, whether automated decision-making software can provide adequate reasons that would in turn facilitate access to judicial and merits review where appropriate)[6].  The independent scrutiny of automated systems prior to implementation is already envisaged by the ALRC e.g. by way of algorithmic impact assessment[7] and therefore creators of AI are no doubt already focusing upon how to demonstrate compliance such tests if they havnt already done so. Privacy Law Information handled about individuals may not satisfy the definition of personal information under the Privacy Act 1988 (Cth) if the relevant person is for example allocated a code and is therefore not identifiable. Collection by AI may also occur without knowledge or consent (both of the public and the owner of the AI).  Permanent checks and balances are likely to already be in place. Directors’ duties and defences It is important for directors to understand the technology upon which they place any reliance, and any limitations if they intend to rely on the safe harbor provisions contained in s.189 of the Corporations Act 2001 (Cth). Discrimination Studies have shown that inadvertent discrimination may occur in the AI’s implementation of its algorithms. Misuse of big data Other issues raised include the propensity for improper use of big data in the financial sector, and consumer law. The WIPO statement of issues goes into greater detail[8]. Discussion BACKGROUND AND STATUS OF AI As the phrase suggests, “artificial intelligence” (AI) is designed with the objective of imitating human intelligence artificially (and as has been proven, exceeding human intelligence in many ways, in the same way traditional computers have served us for so many years). Human intelligence includes accurate perception, analysis, logic / rationale, the ability to make calculated decisions based on objectives and, ultimately, solve problems.  It also includes creativity.  Machine learning has been available for years (e.g. for the purposes of electronic discovery in litigation).  Algorithms are programmed in machines designed to learn both from large amounts of historic data and through their own, “personal”, experience and evolution, to make accurate predictions. Aside from significant advances in the use of artificial intelligence in the legal sector, we note some other examples of developments in recent times: The advanced use of AI as applied to gastrointestinal diagnostics. In particular, AI has been used in the “automated detection of disease and differentiation of pathology subtypes and disease severity[9]”; In October 2011, Takahiro Yamaguchi and So Kanno explored the link between the machine and art. The “Senseless Drawing Bot” is an autonomous device that sits on a skateboard which draws abstract lines using many colors. The robot moves from side to side, riding the wave of today’s modern graffiti. The lines drawn are complex and create abstract modern graffiti and one would have a difficult time arguing that the same work, if originally created by a

Do I Need a Privacy Policy on My Website in Australia?

The answer is mostly likely “yes”, even if you are a small business with annual turnover of less than $3,000,000. Under the Privacy Act 1988 (Cth) (Privacy Act), various types of entities are, in summary, required to comply with a prescribed set of 13 “Australian Privacy Principles”.  The first principle requires a clearly expressed and up to date privacy policy, so that personal information is managed in an open and transparent manner. Government agencies, private and not for profit organisations including individuals (e.g. sole traders), companies, partnerships, unincorporated associations, and trusts are all required to comply.  There are exemptions.  For example, small businesses (i.e. those with annual turnover of less than $3,000,000 and which are not for example related to a larger company that is subject to the Privacy Act) might be exempt in limited circumstances. However, the practical reality is that as soon as small businesses handle any personal information and trade in personal information, they will be caught under the Privacy Act.  Various other scenarios may also render small businesses liable to compliance with the Australian Privacy Principles (for example, small businesses who provide services to or on behalf of government agencies, those who are “reporting entities” (a broad category) under the Anti-Money Laundering and Counter-Terrorism Financing Act 2006 (Cth), or those who operate residential tenancy databases etc).  Furthermore, as soon as a business receives Tax File Number information about an individual (for example in a Tax File Number declaration upon the commencement of employment), certain obligations arise under the Privacy (Tax File Number) Rule 2015 (issued under s.17 of the Privacy Act).  Employers for example would be best advised to ensure that they have a privacy policy (and consent covering purpose of collection, use, disclosure, storage etc) in place, compliant contractual clauses, and provide collection notices where appropriate.  Non compliance with the Privacy Act can lead to significant fines. As a bare minimum, a privacy policy needs to cover the following: (a)       the kinds of personal information that the entity collects and holds; (b)       how the entity collects and holds personal information; (c)       the purposes for which the entity collects, holds, uses and discloses personal information; (d)       how an individual may access personal information about the individual that is held by the entity and seek the correction of such information; (e)       how an individual may complain about a breach of the Australian Privacy Principles, or a registered APP code (if any) that binds the entity, and how the entity will deal with such a complaint; (f)        whether the entity is likely to disclose personal information to overseas recipients; (g)       if the entity is likely to disclose personal information to overseas recipients, the countries in which such recipients are likely to be located if it is practicable to specify those countries in the policy.

Protecting your brand & trade mark registration

Before choosing your brand: We have previously discussed important considerations when choosing the name of your business.  Before you decide upon your brand (which may consist of a letter, word, name, number, logo, aspect of packaging, shape, colour, sound or scent) and launch it (including before you register your domain name) a trade mark availability search should be conducted by a professional to determine whether there are any existing registered or unregistered rights which may exist in similar brands. Benefits of trade mark registration: The mere registration of your company name or business name with the Australian Securities and Investments Commission (ASIC) does not protect your brand identity, or provide registered trade mark rights in your brand.  Registration with ASIC is a legal obligation.  However, registration as a trade mark with the Australian Trade Marks Office can provide your business with: an exclusive statutory monopoly to use your registered brand identity in respect of the goods and/or services for which it is registered in Australia; an easy way to prevent cybersquatting (the registration of a domain name which incorporates your brand by others); much easier and cheaper enforcement of your rights in your brand if someone else infringes your rights, for example, by using a brand which is either substantially identical or deceptively similar to your brand in respect of the same or similar goods and/or services; and a registered “asset” which can be licensed, assigned, and monetised. Only registered trade marks can apply the ® symbol.  This puts others on notice that your brand is registered, and that you are likely to prosecute infringement. Costs: Your brand is your identity.  It is valuable property to which your goodwill and reputation are attached.  People who infringe your brand may derive benefits from your hard work or diminish your brand’s value through their actions (e.g. by selling inferior goods or services). Registration as a trade mark is typically a fairly inexpensive exercise if your brand does not currently infringe the rights of others (please refer to our earlier article here for further information).  Goods and services are divided into “classes”.  It is possible to obtain protection with IP Australia in one class for $330.  This is a drop in the ocean when compared to the potential costs to your business of non-registration.  Registration lasts for 10 years and is renewable. We provide trade mark registration advice and assistance at cost effective fixed fee rates.

Legal Considerations When Choosing A Business Name in Australia

When it comes to choosing the name of your business, there are various key legal factors that you should consider. Existing registered and unregistered rights may already exist in similar names. The mere registration of a business or company name with the Australian Securities & Investments Commission (ASIC) does not avoid any of the following issues, and you should consider these key points before registration of any business, company, or domain name: 1. Existing registered trade marks under the Trade Marks Act 1995 (Cth) A trade mark is, in summary, a sign (e.g. a letter, word, name, number, brand, logo, aspect of packaging, shape, colour, sound or scent) that is used to distinguish the goods or services of a trader from those of others. Words that describe the goods or services (e.g. lawyers in relation to a law firm) are difficult to protect because they are words which various traders in the ordinary course of their business would use in connection with their goods or services. As such they are not therefore distinctive. Make sure your name / sign is distinctive if you want more protection. Trade marks can be registered with the Australian Trade Marks Office (ATMO). Registration of the trade mark gives the trader a monopoly right over that trade mark in relation to the goods or services, or similar goods or services, in respect of which the trade mark is registered. Importantly, this protection extends to trade marks which are substantially identical or deceptively similar to the registered trade mark. Therefore, if your chosen name / logo / sign is substantially identical or deceptively similar to an existing trade mark, and you use your sign in relation to the same or similar goods or services, you run the risk of infringement and a claim for damages (unless a defence applies). A search of the Australian Trade Marks Office Online Search System should be conducted by a professional. 2. Passing off In addition, even if a trade mark has not been registered with the ATMO, business reputation is protected under the common law tort of passing off. Passing off involves the misappropriation by deception of a trader’s reputation and goodwill. Any deceptive conduct (for example a representation or name that falsely suggests some connection with another person’s product or business) where there is at least the threat of damage to a trader’s reputation and goodwill could constitute passing off. A trader’s reputation may attach to various means by which the public recognise their product or services from those of others such as their name, get-up / packaging, colour schemes, etc. You may be required to account for your profits in an action for passing off. Again, words that describe the product or service or other indicia such as packaging which are purely functional are much harder to protect. You should conduct a search of the marketplace to ascertain whether any existing businesses have reputation in your proposed name or sign. 3. Misleading and deceptive conduct under the Australian Consumer Law The Australian Consumer Law is found in Schedule 2 of the Competition and Consumer Act 2010 (Cth). Most relevantly, a person (which includes a corporation) must not engage in conduct that is misleading or deceptive or which is likely to mislead or deceive. Once you have decided upon a name that is available and which will not offend any of the above principles, you should register it as a trade mark with the ATMO in respect of your goods and services and also with ASIC without delay.

Online copyright infringement of movies and website blocking by CSPs: Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503 (15 December 2016)

The Federal Court of Australia has made the first reported orders under the new s.115A of the Copyright Act 1958 (Cth) by requiring numerous Australian carriage service providers to disable access[1], for up to 3 years[2], to various websites whose “primary purpose” is the infringement or facilitation of infringement of copyright. The Copyright Amendment (Online Infringement) Act 2015 (Cth) amended the Copyright Act 1958 (Cth) by introducing s.115A. s.115A provides that the Federal Court of Australia may, on application by the owner of a copyright, grant an injunction to require a carriage service provider to take reasonable steps to disable access to an online location if: a carriage service provider provides access to an online location outside Australia; the online location infringes, or facilitates the infringement of, the copyright; and the primary purpose of the online location is to infringe, or to facilitate the infringement of, copyright (whether or not in Australia). The purpose of the scheme under the new s.115A is to allow a specific and targeted remedy to prevent online locations which flagrantly disregard the rights of copyright owners from facilitating access to infringing copyright content. Knowledge or intention on the part of the carriage service provider is not required; the specific and targeted remedy exists simply to bring an end to access to such online locations without the need for lengthy factual enquiries associated with copyright infringement actions of the kind seen in Roadshow Films Pty Ltd v iiNet Ltd [2012] HCA 16. There is a high threshold test to be satisfied, namely, that the “primary purpose” of the online location must be to infringe. The case[3] provides guidance on the evidence that will satisfy a Court in this regard. The time at which the Court must be satisfied of the elements in s.115A is the time of granting of the injunction. The making of the application for an injunction must be notified to both the carriage service provider and the person operating the alleged infringing online location (unless their identity cannot be ascertained despite reasonable efforts). The rights owners were required to pay the arguably nominal compliance costs of the carriage service providers in complying with the orders (calculated as a sum per domain name), in addition to the carriage service providers’ legal costs. The carriage service providers were not awarded / not all of them sought their costs of setting up and configuring the necessary systems (i.e. website blocking systems) in order to comply with s.115A. s.115A (9) provides that the carriage service provider is not liable for any costs in relation to the proceedings unless the provider enters an appearance and takes part in the proceedings. It would seem that such costs should be quantifiable by reference to “the proceedings”, if considered commercial to spend time undertaking that exercise. ………………………… [1] By implementing DNS blocking, IP address blocking, URL blocking or any other alternative technical means of disabling access to the online locations (outside Australia) of various websites whose primary purpose is the infringement or facilitation of the infringement of copyright [2] Capable of extension for another 3 years in the case of continued infringement [3] As does the revised explanatory memorandum to the Copyright Amendment (Online Infringement) Bill 2015