Cases 2001 to 2005

This page supplements the Intellectual Property Guide elsewhere on this site.

It identifies major copyright and competition law rulings by courts and tribunals since 2000,
along with pointers to selected academic studies -
• ACCC v Universal Music Australia
• Panel Case
• DtMS v Telstra
• Henley Arch v Tamawood
• Sony v University of Tasmania
• Universal Music Australia Pty Ltd v ACCC
• MP3 WMA Land
• Sony v Stevens
• Universal Music v Hendy Petroleum
• Seven Network v Media Entertainment & Arts Alliance
• BP plc v Woolworths
• MP3sforfree.net and Com-Cen
• Universal Music v Sharman (Kazaa)

ACCC v Universal Music Australia

2001 Justice Hill of the Federal Court held in Australian Competition & Consumer
Commission v Universal Music Australia Pty Ltd that the record companies breached sections
46 and 47 of the Trade Practices Act 1974 by ceasing to supply particular retailers engaged
in parallel importation of CDs and indicating that other retailers might also face supply
problems. Penalties of $450,000 were imposed on each record company, with $45,000
penalties for each of three of company executives. | (2001) FCA 1800.

Panel Case

2001 TCN Channel Nine Pty Ltd v Network Ten Ltd ('Panel Case') - Federal Court ruling on
fair dealing in broadcast television, with claims that commercial broadcaster Network Ten
infringed copyright in Channel Nine broadcasts when re-broadcasting extracts of Nine's
programme 'The Panel'. | FCAFC 146 (2002)

There is a cogent exploration by Michael Handler in 'A Real Pea Souper: The Panel Case &
the Development of the Fair Dealing Defences to Copyright Infringement in Australia' in
Melbourne University Law Review 27 (2003) and 'Before the High Court: The Panel Case &
Television Broadcast Copyright ' in Sydney Law Review 25 (2003)

On 11 April 2003 the High Court granted Network Ten leave to appeal against the decision
of the Full Court of the Federal Court and in September 2003 heard arguments on the
operation of ss 14, 25(4) and s 87 of the Copyright Act 1968 regarding the claimed
infringement.
 DtMS v Telstra

2002 Desktop Marketing Systems Pty Ltd v Telstra Corporation Limited - Federal Court
decision and High Court decision about originality (protection for telephone alphabetical
white pages and colour pages directories). The Federal Court held that common law
historically granted copyright in directory and other 'list' cases on the basis of sweat of the
brow, irrespective of any "creative" element in arrangement/selection of the list.

It upheld Telstra's copyright in the directories on the basis of effort and expense in
compilation, despite criticism by publisher Desktop Marketing Systems that there was no
selective or creative effort and claims that Telstra's statutory obligation to compile the
directories removed the incentive that is generally regarded as a public policy justification
for recognition of copyright.

Henley Arch v Tamawood

2003 Henley Arch Pty Ltd v Tamawood Pty Ltd - Federal Court decision regarding copyright
in architects' plans. The Court held that the defendant had infringed copyright in the
architectural plans and drawings of a project home, purchased from a developer and
subsequently adapted for construction by another builder. | FCA 204 (14 March 2003)

Sony v University of Tasmania

2003 Sony Music Entertainment (Australia) Ltd v University of Tasmania - Federal Court
decision on discovery application by record companies against three universities for alleged
use of the universities' computer networks for reproduction and communication of MP3 files,
infringing copyright in music and sound recordings. The companies sought access to
university records to identify alleged infringers and to determine whether there are grounds
to seek relief for infringement.

The universities resisted on grounds that included privacy. The Federal Court agreed to
grant the orders on certain conditions, primarily regarding preservation of confidentiality
and privilege. | FCA 532 (30 May 2003)

Universal Music Australia Pty Ltd v ACCC

In its 22 August 2003 decision in the appeal by Universal, Warner and their executives
regarding Australian Competition & Consumer Commission v Universal Music Australia Pty
Ltd (above) the Full Federal Court overturned the finding that the companies had abused
their market power in breach of section 46 of the Trade Practices Act.

It held that neither Universal Music nor Warner held a 'substantial' degree of power in the
market for wholesale recorded music in Australia but increased penalties imposed on the
companies to $1 million each in upholding the finding that the companies breached section
47 of the Trade Practices Act by engaging in exclusive dealing. Failure to achieve a
"substantial effect on the market" by witholding supply from parallel importers was no
defence. The Court ordered the companies and four executives to pay one half of the
ACCC's costs of the trial and of the appeals. | FCAFC 193
 Sony v Stevens

2003 Kabushiki Kaisha Sony Computer Entertainment v Stevens - full Federal Court decision
regarding anticircumvention. The Court overturned the decision regarding circumvention of
technological protection measures ("mod chips" in Sony playstations).

In overturning the decision that the chip was not a technological protection measure within
the meaning of the Copyright Act the Full Court agreed that there was no reproduction or
copying in RAM when the game was played. | FCAFC 157 (30 July 2003)

Universal Music v Hendy Petroleum

The Federal Magistrates Court of Australia decision in Universal Music & Ors v Hendy
Petroleum & Ors concerned a successful action under the Copyright Amendment (Parallel
Importation) Act 2003 for damages and punitive damages against a service station selling
infringing CDs. | FMCA 373

MP3 WMA Land

The 2003 MP3 WMA Land case, which featured prison terms for supplying and distributing
unlawful copies of copyrighted music via the eponymous site, is discussed here.

Seven Network v Media Entertainment & Arts Alliance

The Federal Court May 2004 decision in Seven Network (Operations) Limited v Media
Entertainment & Arts Alliance concerns the MEAA's infringement of copyright when it used a
Seven Network internal telephone directory for polling Seven's employees on a proposed
enterprise agreement.

Justice Gyles held that Seven owned copyright in the compilation of the directory and that
MEAA annotation of the directory was a reproduction of the directory in material form, with
development by the MEAA agent of a database using the annotated directory was also an
infringement of copyright. | FCA 637 (21 May 2004)

BP plc v Woolworths

A 2004 decision by the Federal Court of Australia in October 2004 confirmed that 'colours or
colour combinations give rise to valid trade marks' under the Trade Marks Act 1995.

The case followed three applications in 1991 and 1995 by BP for registration of 'the colour
green' in the Australian Register of Trade Marks under the Trade Marks Act 1955. The 1995
amendments to the Act recognised 'colour, shape, sound and smell' as trademarks. The oil
company sought registration of a specific shade of green for goods in class 4 (eg oils),
services in class 37 (eg maintenance) and in class 42 (eg retailing relating to petrol
stations).The applications were eventually accepted for registration in 1997 but were
successfully opposed by Woolworths before AIPO. BP appealed to the Federal Court, with
Justice Finkelstein - in finding that registerability of a colour mark is to be approached in the
same way as registerability of any other mark (with acceptance of colour marks in the US
and EU) - directing that the applications proceed to registration.
BP successfully established that in the public's mind the green identified petroleum products
or services as originating from a particular (albeit not necessarily identified) trader and that
it had used the specific green as its mark over several years. | FCA 1362 (2004)

Universal Music, MP3s4free.net and Com-cen

The 2005 MP3s4free.net case considered the responsibility of a site operator and an internet
service provider in breaching Australian law by creating hyperlinks to sites that had
infringing sound recordings.

The ruling by Justice Tamberlin in Universal Music Australia Pty Ltd v Cooper that ComCen
was liable through hosting the MP3s4free.net website was the first decision of its kind in
Australia.

Tamberlin J's ruling was upheld by the Full Federal Court in December 2006, with Cooper
and ISP E-Talk Cooper, being found guilty of authorising copyright infringement.

The case is discussed in more detail here.

Universal Music Australia v Sharman License Holdings

In September 2005 Justice Wilcox of the Federal Court ruled that Sharman Networks, the
Australian company behind Kazaa, had breached music copyright by authorising its users to
swap songs illegally and had exhorted users to "Join the Revolution", encouraging "visitors
to think it 'cool' to defy the record companies by ignoring copyright constraints". Sharman
was ordered to modify Kazaa so that users can access only licensed music files and to pay
most of the legal costs. A spokesman for the 30 record companies that sued Sharman
indicated that they would seek damages.

Wilcox found that Sharman and Brilliant Digital Entertainment had acted in "common
design" and allowed Kazaa users to infringe copyright. The court indicated that a total stop
to online music piracy might not be possible and - given the importance of "freedom of
speech and communication" - was anxious that any orders did not shut down legitimate file
sharing of "licensed music, photographs and recipes".

Sharman was ordered to fit Kazaa with one of two filter technologies (one stopping users
from sharing files that match a list provided by record companies, the other showing only
licensed works) and to put "maximum pressure" on current users to upgrade to the filtered
version. | FCA 1242 (5 September 2005)