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Newspaper fails to prove copyright infringement by news service

Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd [2010] FCA 984

In a judgment delivered on 7 September 2010, the Federal Court of Australia found that a business publisher did not infringe copyright by providing a subscription service containing abstracts of articles published in the Australian Financial Review (AFR).

The applicant in the case, Fairfax, publishes the AFR nationally in both print and digital form. The respondent, Reed, who trades as LexisNexis, provides the “ABIX” subscriber service consisting of abstracts of articles from the AFR and other newspapers and magazines. Each abstract includes the headline of the subject article, the byline of the journalist authors, and a short summary written by an employee of Reed.

Fairfax alleged that, by providing the abstracts as part of the ABIX service, Reed infringed Fairfax’s copyright in each of the following original literary works:

1. each individual headline in an AFR edition;
2. each AFR article, including its headline and byline;
3. the compilation consisting of all of the articles in an AFR edition; and
4. each entire edition of the AFR.

Subsistence of copyright

An Australian Court had not previously decided whether the headlines of newspaper articles were literary works in which copyright subsisted under the Copyright Act 1968 (Cth) (Act). In this case, the Court held that Fairfax’s ten sample headlines did not qualify for copyright protection as literary works as they were generally lacking in originality. It did not matter whether the headlines were interesting and clever, or merely conveyed a fact or idea; more than mere authorship was required.

Justice Bennett said that headlines are generally too insubstantial and short to be literary works capable of copyright protection, as a headline functions as an article title and a brief statement of its subject. “It is, generally, too trivial to be a literary work much as a logo is held to be too trivial to be an artistic work, even if skill and labour has been expended on creation”.

The public interest in referencing articles by their headlines was also relevant. Her Honour stated that: “In my view, to afford published headlines, as a class, copyright protection as literary works would tip the balance too far against the interests of the public in the freedom to refer or be referred to articles by their headlines”.

It was not in dispute that the text of the AFR articles and each AFR edition were literary works within the meaning of the Act. The Court also confirmed that copyright can subsist in a subset of a published work, holding that the AFR article compilation was a literary work separate to the full AFR edition because discrete skill and labour was expended in the compilation’s preparation.

Joint authorship in the article/headline combinations

Fairfax submitted that each article/headline combination published in the AFR was a work of joint authorship as it was produced by collaboration, with the contributions of journalist and sub-editor inseparable from each other. The Court rejected this argument, citing the byline as supporting the general proposition that straightforward editing for style and length is not sufficient to attract joint authorship. The contributions of each author were found to be distinct.

Did Reed infringe copyright by reproducing AFR headlines and bylines in the ABIX abstracts?

Reed’s use of the AFR headlines in the ABIX abstracts was held not to be a reproduction of a substantial part of the AFR articles, compilation or edition because the headlines were not original literary works.

With respect to the article/headline combinations, the Court referred to the 2009 High Court case of IceTV Pty Limited v Nine Network Australia Pty Ltd, finding that part of a work cannot be said to be a substantial part if the part itself has no originality and would not attract protection alone. Even if an article/headline combination had been a discrete literary work (which it was not) the headline itself was not original and could not therefore be a substantial part of the work. Therefore its use by Reed did not amount to infringement.

Reed was held not to have taken a substantial part of either the AFR article compilation or the AFR edition, because Reed did not take any part of Fairfax’s original skill and labour in selecting, coordinating and arranging either compilation. The Court particularly noted that the ABIX abstracts differ in appearance and arrangement to the original AFR articles and the headlines do not appear in the same order as they appear in the AFR.

Fair dealing defence

Although it was not necessary to decide the issue, the Court held that Reed’s conduct in reproducing and communicating AFR headlines in ABIX abstracts was a fair dealing for the purpose of reporting news under s 42(1)(b) of the Act, and therefore Reed could not have infringed copyright. The fair dealing defence does not require reported news to be current. Although the headlines were used in full, they accompanied abstracts in which Reed invested substantial skill and labour, and were used to cite the summarised articles. Importantly, the commercial nature of the ABIX service did not preclude the Court’s finding that Reed’s use of the headlines was a fair dealing.

Care needed in ‘unlimited’ broadband advertising

The Australian Competition and Consumer Commission (ACCC) took action earlier this year against SingTel Optus Pty Limited (Optus) for alleged breaches of the Trade Practices Act 1974 (Cth).

The ACCC alleged that Optus engaged in misleading and deceptive conduct and made false representations in relation to the advertising of certain broadband plans as part of its ‘Think Bigger’ and ‘Supersonic’ campaigns.

The ACCC argued that while the broadband plans were advertised as ‘unlimited’, they actually included a number of limitations. For example, the fact that their broadband speed would be slowed to 64 kilobits per second once the customer reached their monthly peak data allowance was not sufficiently or clearly disclosed, and in some cases not disclosed at all.

Earlier this month the Court adjourned the trial until 26 October to give Optus the opportunity to investigate other plans on the market and gather evidence of whether consumers were constrained by the limitations on services that were sold as ‘unlimited’. Optus has also stopped using the word ‘unlimited’ in its advertising.

The case is another example of the need to be extremely careful when making assertions about the quality of products where those assertions are based on unstated assumptions or without sufficient qualifications as to the product’s characteristics.

Advertisers beware: subsistence of copyright in advertisements

Budget Eyewear Australia Pty Ltd v Specsavers Pty Ltd [2010] FCA 507

On 19 May 2010, the Federal Court granted an interlocutory injunction preventing Specsavers Pty Ltd (Specsavers) from publishing certain advertising content which substantially reproduced the advertising content of a competitor, Budget Eyewear Australia Pty Ltd (Budget Eyewear).

The facts

The applicant in the proceedings, Budget Eyewear, and the respondent, Specsavers, are competitors engaged in the business of selling optical frames and lenses in Australia.

Budget Eyewear alleged that Specsavers infringed its copyright in each of four advertising materials, and sought interlocutory relief for infringement of that copyright. The materials were two versions of a print advertisement, a radio script and a set of terms and conditions under which the offer in the advertisements were made (together, the Works). Each of the Works provided that if a consumer purchased glasses from Budget Eyewear which were faulty, Budget Eyewear would replace them with a new pair from the Budget Eyewear range free of charge.

Two weeks after Budget Eyewear launched its advertising campaign, Specsavers launched a campaign using the same idea, but substituting some of the words.

The question to be determined by the Court was whether Budget Eyewear had made out a prima facie case that there was a probability that at a trial of the action Budget Eyewear would be entitled to relief and whether the balance of convenience weighed in favour of interlocutory relief being granted.

Subsistence of copyright

Budget Eyewear contended that each Work constituted an original work in which copyright subsists, that the substitutions in the text made by Specsavers represented only minor departures from the precise words used in the Works and that Specsavers had taken a substantial part of each of the Works.

Specsavers claimed that the Works were not works of a kind in which copyright can subsist, that the evidence of authorship and assignment of copyright was confusing and inadequate, that there was no clear evidence before the court of originality in the Works and that there was no evidence of damage arising by reason of the alleged breach of copyright.

According to her Honour, Justice Bennett, there was sufficient evidence of authorship in the Work for the purposes of the court application. The advertising agency for Budget Eyewear, BMF Advertising Pty Limited, had assigned to Budget Eyewear all advertising materials in whatever form created for the campaign, including but not limited to any literary works and specific phrases used in the advertisements and radio script.

Justice Bennett held that Budget Eyewear had an arguable case that the way in which a concept is expressed in an advertisement may involve originality that attracts copyright protection. According to Justice Bennett, it is necessary for the creator of the advertisement to choose words and expressions carefully and to put those words and expressions together in a particular considered way. The fact that words used in advertisements may be ordinary or commonplace does not mean that the way in which they are put together cannot have a degree of originality.

Her Honour held that rather than merely copying the concept owned by Budget Eyewear, Specsavers chose to adopt the same expression of the concept. Accordingly, Her Honour was satisfied that Specsavers reproduced a substantial part of the Budget Eyewear’s advertisements.

Her Honour was satisfied that there was sufficient strength in the probability of ultimate success on the part of Budget Eyewear in establishing copyright in the advertising. Her Honour held that the balance of convenience favoured Budget Eyewear’s right to use the Works without the use by Specsavers.

Advertisers take note

According to the Court, Specsavers was not precluded from copying the concept behind Budget Eyewear’s advertisements, but it should have exercised its imagination to express the concept in a different language. Advertisers should take care when using competitors’ concepts and ideas for their own advertising campaigns. Using the same expressions when copying an advertising concept may be an infringement of copyright, even if certain words are substituted.

Legal liability surrounding hyperlinks

As businesses increasingly use the internet as a means to provide information and access to customers, this gives rise to diverse legal issues that businesses need to consider. The use of hyperlinks is one such issue.

Hyperlinks are active images, symbols or text that internet users can “click” on to be immediately transferred to another web page. The widespread use and ease of linking means that the legal consequences can be overlooked. Businesses need to be cautious when placing hyperlinks on their website as they can give rise to claims of copyright and trademark infringement or defamation.

When could linking amount to copyright infringement?

In general, including a hyperlink to a website containing copyright work that is published on the internet is unlikely to amount to copyright infringement, as there is no actual copying involved. By clicking on a link, a user is simply transferred to the web page of the original author and no reproduction is involved.

Although the law in this area is still largely unresolved, linking could amount to copyright infringement in the following circumstances:

• A linker may infringe copyright by linking to a work that is published to a restricted audience.

 This could occur where the linker makes subscriber-only content available to non-subscribers by circumventing a pay wall, or where the link is to a consolidated version of a work, such as a film, that would otherwise only be accessible through many different files that would be difficult or time-consuming for an internet user to locate, access and consolidate.

• Linking could infringe copyright in a work where it amounts to a linker authorising acts of copyright infringement by internet users.

This might occur where hyperlinks authorise, allow or make it easier for internet users to copy an infringing or pirated copy of a work, or commercially exploit a work where this is prohibited in the linked website’s terms of use.

Can linking give rise to liability for defamation?

An action for defamation can be brought against the original publisher as well as anyone who is involved in publishing, re-publishing or distributing the defamatory material.

Even though the case law is not definitive, a website which links to a web page publishing defamatory material may give rise to a claim for defamation. This is because a hyperlink may be interpreted as directing users to defamatory content which is sufficient to amount to publication of that defamatory material. This can be likened to the classic example of a person sitting beside a defamatory poster on the road and pointing to it whenever someone passes, which was held to amount to defamation.

Conversely, in Metropolitan v Google a link to defamatory material generated by an automated search engine system without any direct human involvement was not sufficient to amount to publication of defamatory material.

Can linking amount to trademark infringement?

When a symbol or word that forms part of the hyperlink is the registered trademark of another party this may raise issues of trademark infringement. In Australia, there has not yet been any litigation over this issue.

A view that is commonly held is that a trademark used as a hyperlink will not amount to trademark infringement, if the context of its use precludes the likelihood of confusion. For example, if a beverage retailer’s website placed a hyperlink button to a fast food retailer’s logo, this would probably not be an infringement because it would accurately indicate that clicking on that button would immediately move the user to the genuine fast food retailer’s website.

However, a claim of trademark infringement may arise in a situation where a website owner uses the trademark hyperlink to indicate some connection with the other website or its operator to his or her own goods or services.

What are the issues surrounding “deep linking”?

Deep-linking refers to where a hyperlink transfers a browser to the internal pages of a website rather than simply the homepage. Some website operators object to deep-linking on the basis that users may not see and comply with terms and conditions contained on a linked website’s homepage (which may result in a claim of authorising copyright infringement).

Deep linking is a hotly contested issue in the United States as evidenced by cases such as Ticketmaster v Microsoft and Ticketmaster v Tickets.com, which have still left the issue unresolved. The fact that deep linking is now common practice in Australia and overseas suggests that it is acceptable conduct, but as there is still currently no legislation or case law in Australia dealing with this, it is important for website operators to be aware that there are legal issues surrounding deep linking.

When could a linker be liable for linking to objectionable or unlawful material?

In Australia the law is not settled in this area, however case law in the United States suggests that a linker could, in certain circumstances, be liable for linking to unlawful material. For instance, linking to content that breaches privacy or confidentiality, is in contempt of the court, incites racial or religious hatred, is obscene, or encourages or induces terrorism may result in a website operator being found to be in breach of the law.

Managing your liability

• Keep hyperlinks simple and avoid logos, trademarks and slogans where possible.
• Include provisions in website terms and conditions excluding liability for hyperlinks.
• Include an acknowledgement of the source website.
• Link directly to the home page of the website and not to the internal pages.
• Use a written hyperlink agreement if another party requests a hyperlink to or from your website.

Hyperlinks offer a powerful tool for a business’ website as their use can attract customers to the website, generate advertising revenue and add value to the website. As such, their use will only continue to grow over time. Accordingly, it is important for all website owners to be aware of the potential liability surrounding the use of hyperlinks and adopt measures to limit their risk.

Contact details

Melbourne

Dan Pearce
Partner
T: +61 (0)3 9321 9841
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Sydney

Ian Robertson
Partner
T: +61 (0)2 8083 0401
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Brisbane

Paul Venus
Partner
T: +61 (0)7 3135 0613
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 Disclaimer
The information in this publication is of a general nature and is not intended to address the circumstances of any particular individual or entity. Although we endeavour to provide accurate and timely information, we do not guarantee that the information in this newsletter is accurate at the date it is received or that it will continue to be accurate in the future.