Response to Question 4: (“Should the suggested requirements be included in regulations? Should there be any other information requirements and why?”)

One of the most critical issues in determining whether IP infringement has occurred is proving the complainant’s rights to the IP in question. The suggested requirements do not adequately address this critical issue.

Sections 122D(2)(a) and 122E(2)(a) simply require a notice to “identify the rights owner”. Paragraph 13(e) simply proposes that a notice include “name of copyright work and name of owner of that work”. This is inadequate. Because there is no “register of copyright works”, and because of complex international IP rights management, it is generally impossible for an account holder or IPAP to confirm whether a complainant is in fact the rights owner of the relevant work.

For the complaint to have a desirable level of integrity, the complainant should be required to provide more than a mere “identification” or “description” of the work allegedly infringed. The complainant should be required to provide an affidavit confirming they are the owner of the identified work, or the duly authorised agent of the owner of the work, at the date of the alleged infringment.

This is a simple requirement, and would allow the IPAP, the account holder, and (if necessary) the Tribunal to proceed on the basis that the ostensible rights owner does in fact own (or have the necessary rights in) the work at the centre of the alleged infringing activity (in the absence of evidence to the contrary).

I therefore propose amending paragraph 13(h) of the Discussion Document requirements to read:

h. an affidavit from the rights owner that they are the owner of that work, or the duly authorised agent of the owner of the work, at the date of the alleged infringment, and to the best of their knowledge, the information provided to the IPAP is true and correct.

While the Bill is being passed under urgency  – with the reason for the indecent haste unexplained and unjustified – it will have an easy ride through, with 111 of 122 MPs voting for it. Only the Greens, Chris Carter and Hone Harawira opposed passing the Bill under urgency. The move was supported by National, ACT, the Maori Party, United Future, Labour and Progressives.

So the substance of the Bill was uncontroversial for most MPs, despite some semantic gymnastics from Labour MPs attempting to explain why they originally supported it in harsher form than present, then opposed a more reasonable version, and are now supporting it again.

There is no question that the use of urgency for this Bill is an abuse of process. The file sharing reforms have kicked around for several years, since controversy erupted after first being introduced (in more draconian form) by the previous Labour Government. There is no explanation for the sudden need to race it through now.

It is also clear that some MPs still have a poor understanding of the issues. For example, in the House last night National MP Katrina Shanks made bizzare comments suggesting that any file sharing was illegal, and that people who choose to install file-sharing software on their computers must be doing so to infringe copyright. I just so happened to be downloading the latest version of LibreOffice using µTorrent when she said that…

On the substance of the bill, there is no question that it is a substantial improvement over the original proposal. In particular, the original draconian termination provision is now only available to a Court, and only if the judge considers:

“suspension of the account holder’s account is justified and appropriate in the circumstances, given the seriousness of the infringing”

This and other changes mitigate much of the “guilt on accusation” stance of the original Bill (and I do wonder whether many of the Twitterati realise this, given some of the incorrect and alarmist comments flying around), although it remains less than ideal.

Barrister Toby Futter recently wrote a handy update on originality, authorship, and copyright in compilations. He discusses the en banc Australian Federal Court appeal of last year’s Telstra ruling that there was no copyright in a White Pages or Yellow Pages telephone directory (see my post A Feisty copyright ruling on the original decision). The Court followed the Australian High Court IceTV decision and dismissed the appeal, meaning that the original finding of no copyright stands. As Toby says:

The big question in New Zealand is whether that approach will be adopted here, and, if so, in what form.

We may find out this year – as his article notes, Toby is involved in two cases currently before the High Court in which copyright in compilations is at issue.

My colleague Stuart Bradshaw also commented on the Telsra appeal here:

“‘The case is a reminder that copyright law does not protect everything you can’t put under lock and key and unless such a law comes along, and is actually enforceable, businesses will need to figure out how to add value to their directories and data-collections that cannot be duplicated.”

Aussie ISP liability

Another Federal Court decision has, in a 2-1 majority, dismissed the film industry’s appeal against last year’s ruling that Aussue ISP iiNet was liable for copyright infringment on its network. While the decision is welcome news for iiNet, which has spent over AUD$6m defending itself, the Court did rightly leave the door open for liability to exist:

It does not necessarily follow from the failure of the present proceeding that circumstances could not exist whereby iiNet might in the future be held to have authorised primary acts of infringement on the part of users of the services provided to its customers under its customer service agreements.

The case turned to a large extent on the process by which the studios notified iiNet of the alleged copyright infringment, and if further steps had been taken by the studios, iiNet may have been liable for failing to disconnect users. Also, it may not be the end of the road, with the movie studios fairly likely to appeal the decision to the High Court.

The full judgment is here.

Facebook photos fair game?

The Herald reports:

The Press Council has rejected a complaint against the Herald on Sunday by a man upset a picture off the social networking site Facebook was used in print… In its decision, the Press Council said using a photo off the website was not a breach of its rules.

While the Press Council was not making any comment about copyright, the situation does of course raise copyright issues.

It may be increasingly common for media organisations to reproduce social networking content without permission of the copyright owner. There is a copyright exception for news reporting, however this is limited to “current events”. Care must be taken when copying Facebook images (and other content) without permission. The copyright in material uploaded to Facebook remains with the owner. While users cannot expect privacy in social networking sites, using copyright material without permission is more black and white.

Android includes infringing class libraries and documentation. Approximately one third of Android’s Application Programmer Interface (API) packages are derivative of Oracle America’s 19 copyrighted Java API packages and corresponding documents.

The infringed elements of Oracle America’s copyrighted work include Java method and class names, definitions, organization, and parameters; the structure, organization and content of Java class libraries; and the content and organization of Java’s documentation.

Examples of this copying are illustrated in Exhibit I to this complaint. In at least several instances, Android computer program code also was directly copied from copyrighted Oracle America code. For example, as may be readily seen in Exhibit J, the source code in Android’s “PolicyNodeImpl.java” class is nearly identical to “PolicyNodeImpl.java” in Oracle America’s Java, not just in name, but in the source code on a line-for-line basis.

Copyright claims are quite a different beast from patent infringement claims. Generally, copyright infringement requires there is (a) a copyright work; and (b) unauthorised copying of a substantial part of that work. While Oracle is alleging outright copying of code, it is the recent addition of more novel categories of “works” highlighted above that sparks interest.

The first question that arises is, does copyright subsist in “works” such as:

• Method and class names
• Parameters of methods
• The “structure, organisation and content” of class libraries
• The “content and organisation” of documentation.

These are quite different concepts from software code itself. Code is recognised as literary work for the purpose of copyright, and is protected as such. But what about related aspects and “concepts” such as the method names?

Copyright attaches to certain “original works” involving some independent intellectual effort. Clearly this will apply to the code comprising most human-authored non-trivial methods. The method could possibly be copyright as an individual work, or (more likely) as a part of a larger work (like a chapter in a novel). The name of the method may be included as part of the copyright work; to borrow the novel analogy again, in the same way as a chapter heading would probably be included as part of the novel’s copyright, albeit a very minor part.

An important distinction with a novel’s chapter headings, however, is that most method names are purely functional. In fact, good software design dictates that methods follow a logical and obvious naming convention. “Creativity” should be kept to a minimum (for the sanity of future developers!) For that reason, an individual method name is unlikely to attract copyright protection on its own, and would only constitute a very “thin” part of the overall work. Another developer, seeing the method name alone and copying it, would probably not have infringed copyright because the method name was not a substantial part of the copyright work.

The Oracle claims are not about copying just one or two method names, but rather about copying all (or most) of the Java methods, classes and parameters in order to replicate the Java API. If one method name is not copyrightable, what about all method names in an API? Compilations of works (or parts of works) are certainly copyrightable, but again there needs to be a minimum level of intellectual effort. And beside method names, does an entire API – consisting of method names, class names, return types, parameter names and types, access levels, namespaces and so on – have copyright protection?

How the US court answers this question could have important implications for developers.

Facebook is attempting to assert ownership over use of the word “book” in domain names, by filing a lawsuit in the US against unrelated site Teachbook.com. It has also been reported that Facebook is attempting to claim the word “face” as well. The “book” complaint alleges:

Misappropriating the distinctive book portion of Facebook’s trademark, defendant has created its own competing online networking community in a blatant attempt to become a Facebook for teachers.

It is not uncommon for trade mark owners to take action to stop “similar” names being used by another party, even where the other is innocently using them in an unrelated manner. A recent local example being designer Trelise Cooper’s unsuccessful attempt to stop another New Zealand designer from registering her own actual name, “Tamsin Cooper” as a trade mark. Facebook will not succeed in gaining a monopoly over either “face” or “book”, but may be seeking to force a lesser-resourced start-up into a settlement. Teachbook has said it will fight the suit.

ISP or not to ISP

Computerworld reports on ongoing concern over the very broad definition of “ISP” in the Copyright Act (see my post here). Submitters have suggested that the definition be modified to only apply to organisations that allocate IP addresses. While that would be a significant improvement, it would still leaves some organisation as unintended or unwilling ISPs. For example the University of Auckland has submitted:

The University currently controls a range of 65,534 unique IP addresses which it allocates to access points in the University and to halls of residence… The University thus has serious concerns about its status and the definitions of an ISP as drafted in the Bill. It will be apparent from the information provided that the University has essentially all the characteristics of an ISP and will be the entity that is contacted if illegal file sharing is alleged.

Government Open Access and Licensing

The Minister of State Services recently announced the release of the NZ Government Open Access and Licensing Framework – a series of Govt-approved licensing models that advocate the use of liberal Creative Commons licenses. The policy is available here. It applies to all public service departments and Crown entities, except (somewhat curiously) for tertiary institutes.

We called out for another drink, the waiter brought a cease-and-desist

Can you copyright a cocktail? The Atlantic reports on a Manhattan bar that may yet find out. For the record, a recipe can be copyright, but for heaven’s sake can’t they just settle it over a Long Island Iced Tea?

InfoWorld has an article on lurking legal gotchas (and how to avoid them) for IT pros. Its list includes:

• Confidentiality and privacy violations
• Pornography use
• Copyright and source code violations
• “Financial shenanigans” – essentially fraud or other criminal activity.

The article is based on US law, but the above list is applicable in New Zealand. However an important distinction not made entirely clear is that between intentional (i.e. malicious) activity and accidental contravention. Also, in most cases employees who are honestly carrying out their job are entitled to be indemnified by their employer for any liability arising against them personally (subject to employment contracts and other factors). Independent contractors are generally liable for their own actions, however, and insurance is an important risk management practice for contractors.

Open source wrangling

Computerworld reports on a controversy over whether a US company has breached the GPL terms of the R statistical software (developed out of Auckland University and the original version of which I used in stage-1 stats). The company, Revolution Analytics, denies breaching the GPL. It uses the increasingly popular (but sometimes controversial) “open core” model where (for example) the core program remains licensed on open terms, but other components and add-ons are under proprietary licenses. The situation highlights the sometimes murky issue of copyright ownership, assignment and licensing in large open source projects. Another example, involving OpenOffice, is reported here.

Copyright vs Contract law

A UK government advisory board, the Strategic Advisory Board for Intellectual Property, has completed a lengthy report (182 pages, 6MB pdf) on “the relationship between copyright and contract law”. The highly academic report appears to be a last hurrah for the quango, which is to be axed. The report is based on extensive research into “creator contracts” – i.e. supply side contracts such as those entered into by authors, musicians, artists, etc – and “user contracts” – i.e. demand side contract typically involving licensing of IP to end users. A summary of the fairly impenetrable report is here.

In short, a customer had engaged an engineering firm to produce designs for an industrial machine. Unfortunately the terms of the engagement were unclear, and a dispute arose (some years later) between the customer and the engineering firm as to who actually owned the designs. The customer claimed that because it had commissioned those works, and provided an implied agreement to pay for them, and the designs were made pursuant to that commission, it (the customer) owned the copyright, by virtue of the commissioning rule. The engineering firm denied there had been a commissioning as defined in the Copyright Act, and that it therefore remained the owner of the designs.

The Court noted the orthodox position that:

Whether a work is “commissioned”; what the scope of that commission is; and the date on which the commission arises are all necessarily questions of fact in each case.

And it offered the following sage advice:

Patently, the better practice is to have a written agreement, and software developers and purchasers would be well advised to see that sound industry contracting procedures are put in place.

The critical issue was whether or not the customer had agreed to pay for the works – a requirement of the commissioning rule. Normally, payment (or an agreement to pay) is not in question, but was complicated in this case by the engineering firm claiming that it had provided a “free design service” in order to attract new customers. Because the designs had been provided for free, it claimed, the customer had not agreed to pay for the work and there could not have been a “commissioning” as defined in the Copyright Act.

The Court of Appeal rejected the engineering firm’s argument (which had been accepted in the High Court). It said that the engineering firm had offered “free design” on the basis that it would get to do the subsequent manufacturing work (which wasn’t free), and this was sufficient to create an intended-to-pay commissioning. The Court said it was “everyday commercial sense” that such an arrangement would be regarded as two parts of the same deal, and the customer had “agreed to pay” for the design work as part of the overall design-and-manufacture arrangement. It would be artificial to divide the “free design” and the subsequent intended manufacturing into two separate transactions. The Court therefore ruled that the copyright in the works was owned by the customer.

This is a useful case that demonstrates a pragmatic and commercially realistic substance-over-form approach to what was a murky factual situation. But, as the Court noted, these very costly disputes are easily avoidable by having a simple, appropriate agreement in place.

The Independent has an update on YPG’s legal battles to uphold the copyright in its Yellow Pages listings (see my post earlier this year). The outcome of the latest Court proceedings – expected very soon – could be of interest to all database or “compilation” rightsholders.

One such group may be New Zealand television networks seeking to restrict use of their TV listings by third parties. In Australia, this was the subject of the landmark IceTV case – which confirmed there is no copyright in basic, factual TV listings. Recently, Sky Television’s lawyers sent out cease-and-desist letters to people who had written programs allowing its listings to be “screen-scraped”, on the flimsy grounds that such actions breached its copyright in those listings (assuming such copyright even exists).

Google Street View WiFi drama

Errata Security has a good technical explanation of Google’s WiFi sniffing controversy, which is the subject of a preliminary criminal investigation in New Zealand (see my post here). From the post:

Although some people are suspicious of their explanation, Google is almost certainly telling the truth when it claims it was an accident. The technology for WiFi scanning means it’s easy to inadvertently capture too much information, and be unaware of it… It’s really easy to protect your data: simply turn on WPA. This completely stops Google (or anybody else) from spying on your private data (assuming you haven’t done something stupid like chosen an easily guessed password, or chosen WEP instead of WPA). If you don’t encrypt your traffic, then by implication, you don’t care if people eavesdrop on it.

Meanwhile, details are emerging that the captured data included passwords and emails. This is hardly surprising given that a huge amount of computer activity involves these two things, and it doesn’t change the “case” against Google. As I wrote earlier, intention is a key issue, as is whether the captured data is “reconstructed into a communication that indicates confidentiality” and made use of.

Luke Appleby gave his take on the Google WiFi drama here. While my post looked at the criminal acts, Luke rightly points out that Google could also have run foul of s 133A of the Radiocommunications Act 1989. That is certainly worth a look by the Privacy Commissioner (not the police; and there is still a need for intention which has yet to be established), although substantive privacy issues should be the focus of any investigation, if warranted – a case which has yet to be made.

Copyright Amendment Bill submissions

Internet NZ has published its submission on the Copyright Amendment Bill. It includes a great detailed analysis by lawyer Rick Shera. While I have different views on some aspects, I support a good many parts of the submission. Paragraphs 86 and 87 of Rick’s analysis in particular raise key questions that need to be addressed by the Committee.

The submission also emphasises the range of business and government activities reliant on internet access. This is a point I submitted on earlier, and it will be interesting to see if other business sectors pick up on this. For example, do banks and online shops really want their customers to be disconnected for transgressions against another industry group? I’m sure the recording industry would not want their online customers disconnected because one of their kids is caught shoplifting at the local dairy.

Aussie net filter to be back-burnered

The Australian government’s daft plan to impose mandatory internet filtering, which only recently was being pushed ahead, is now likely to be shelved until after the election.

• Protecting IP in a post-software patent environment, Computerworld 10 May 2010

The article briefly summarises some of the ways developers can protect valuable intellectual property if, as expected, New Zealand bans software from patentability. I avoided the pros-vs-cons debate, because the decision has been made (after an 8 year long review). For developers operating in New Zealand, software patents will not be an option. Software patents in other countries still are, though.

Meanwhile in a new development, a German appeals court has reversed a lower court and upheld a software patent:

… the highest German appeals court in matters of civil and criminal law overruled the country’s highest patent-specialized court and decided that a client-server software for the automatic generation of structured documents (such as XML or HTML) is an example of a patentable software invention… This decision has the effect that in Germany, a country in which software patents were previously only considered valid under relatively strict criteria, all software ideas are now potentially patentable as long as they are innovative from a purely formal point of view, meaning they’re at least marginally different from how a technical problem was solved before.

If this is a change in position (change being the only constant), does it represent a change in European policy? No – Courts do not (or should not) make policy. They interpret and apply law.  But if Europe does change its position (politically or judicially) on software patents, will New Zealand need to follow suit and reverse its expected software patent ban? Pressure to conform with international norms (if one emerges) and trading partner requirements may force a change down the track, but the New Zealand decision was born of widely supported policy, not judicial opinion (or judicial fiat for that matter).

Another judicial development still pending is the US Supreme Court’s ruling in Bilski, expected to be released in the near future. That decision could impact on the ability to patent business methods, which underlie many software patents (and vice versa).

A US court has ruled that LimeWire, one of the early popular file-sharing sites, induced copyright infringement (Eric Goldman has an excellent summary here of the “intention” issue). While this outcome was really inevitable, what is more relevant is that the Judge also ruled that the founder and sole director, Mark Gorton, is personally liable. This is a clear warning that peer-to-peer operators potentially face personal liability – which some say could have a chilling effect of P2P services.

In New Zealand, section 92B of the Copyright Act provides a limited safe harbour from copyright infringement (see my Computerworld article here) [Note: this part of the Copyright Act is due to be amended] . Whether this would protect a LimeWire-like operation in New Zealand is debatable – s92B does not protect intended infringement.

The US decision also involved liability under trade practices laws. In New Zealand, personal liability can attach to directors of companies under the Fair Trading Act 1986.

50,000 Hurt Locker downloaders to be sued

It is being reported that upwards of 50,000 people are in the process of being sued for pirating the Hurt Locker movie. The movie was leaked to the internet several months before its release, which potentially cost it dearly in ticket revenue. The lawsuits are aimed at generating settlements. Since the first lawsuits were filed in January 2010, about 40% have already settled.

There are no reports of proceedings outside of the US. Class actions in New Zealand are not facilitated by the legal system, and are very difficult to bring (a failing of our legal system) and it is therefore unlikely that proceedings will be brought against New Zealand users due to the high cost of doing so.

iiNet appeal set down

The legal appeal of iiNet’s total victory over anti-piracy group AFACT ’s claims of copyright infringement liability in Australia has been set down for August this year. As with the first ruling, this appeal will be closely watched – enormous resources are being put into heavyweight IP litigation around the world to determine just where the line should lie for ISP / third-party liability for copyright infringement. Several decisions have recently gone against rights-holders, while others (such as the Newzbins case in the UK and the LimeWire case above) went the other way. The iiNet appeal will be heard in the Federal Court. If iiNet wins again, it is likely that AFACT will seek a further appeal to the High Court of Australia.