Copyright
Australian Copyright Law: a Hypothetical Case
Please be advised that this copyright articule is based
entirely on a hypothetical case study.
Author: Kingsley OkaforIgwe
Intellectual property – Copyright- possible infringement –
whether script was reproduced Copyright Act 1968(Cth)
Obligation of confidence –
whether received information was imparted in confidence
Breach of Contract –
in the event of copyright infringement, whether it constitutes breach of contract.
You have requested that I find out whether you are liable to a lawsuit in relation to a possible breach of the contract that you entered into with Wolf Network.
You informed me that you met with one scriptwriter, Harrison Cruise, on a number of occasions in 2007, and discussed an idea that he had for a Television drama, provincially titled ‘Melbourne at Law’. You liked the general ideas that he proposed but did not enter into contract with him.
A broadcasting company known as Wolf Network who was developing a new show based on the lives of lawyers and police in New South Wales subsequently invited you to join them, the invitation of which you accepted. Upon joining the Network, you suggested that the show be titled ‘Sydney at Law’. A number of the scenarios and details that Cruise had suggested ended up being incorporated into “Sydney at Law”, but was adapted to the New South Wales context.
You signed a contract with Wolf Network which specified that all copyright in work developed under the contract would be passed to Wolf Network, and agreed that any material that you brought, or developed for the Network was free of any obligation or liability to any other party.
You are now concerned that Wolf Network may sue you for possible breach of contract. You therefore sought my advice as to what, if any, legal liability you may owe to Wolf Network.
The answers to your concerns are that you have no legal liability to Wolf Network. The reasons are as follow:
Copyright:
Pursuant to s. 32(1) (a) of the Copyright Act 1968 (Cth) copyright subsists in the work that you have produced for the Wolf Network. Even though copyright may also subsist in Cruise’s work, he could not claim that your creation was a reproduction of his work. Although similarities may exist in terms of idea, or the theme, there is no copyright in an 1 idea or central concept, therefore any possible claim of copyright infringement based on idea or concept by Cruise may not sustain vigorous examination in court should he elect to pursue a case of copyright infringement for the following reasons:
1. when Cruise approached you, his script was not complete and the provincial title –Melbourne at law had not been produced or broadcasted by any Television Network, or any producer
2. the characteristics-that is the location, the characters (and so forth ) portrayed in Sydney at Law, were dissimilar to the expression made by Cruise,
3. intended to be titled Melbourne at Law
4. there is no sufficient resemblance between the structure and the events portrayed in Sydney at Law that would support any claim that there was a substantial reproduction of Cruise’s expression in Melbourne at Law
5. although you recommended that the program be called Sydney at Law, Wolf Network had commenced the process of producing the program before you were consulted
6. despite having similar themes and titles substantial differences exist between Cruise’s 20 page summary treatment and Wolf Network’s near final television series.
2 In Zeccola v Universal Studios Inc (1982) 67 FLR 225, 228, see also Peters v Coulter (1995) 33 IPR 50; Telmak products Pty Ltd v Bond International (1986) 65 ALR 319 the court held that adopting the idea behind a work and then creating a work based on the copied idea is not an infringement of copyright. 3 In Nine Films & Television Pty Ltd v Ninox Television Ltd (2005) FCA 1404 the court dismissed the cross-claim of copyright infringement by Ninox who produced the prior show, “The Block”. The court found that there was no substantial copying of “The Block” by Nine Films who produced the “Australian Dream Home” in the sense that the two shows were very different in many features such as theme, style, mood and the varied characters involved.
At the time of your initial contact with Cruise, his work had not been published and it would appear that the title that he proposed for his work may not have had a trade mark at that time. Even if the work had been published, or broadcasted, or that trade mark did subsist on the title, Melbourne at Law, Sydney at Law was produced in a different environment, with different characters, and under different circumstances in the sense that it was produced in many locations in New South Wales and depicted the lives, and subcultures of lawyers and police officers in New South Wales.
It would appear that your work may have been informed by Cruise’s ideas. On the other hand, there is no evidence that the work you created did copy or reproduce substantially any parts of Cruise’s work. For this reason, the only avenue that Cruise may exploit to challenge the genuineness of your work is that of obligation of confidence and fiduciary.
Obligation of confidence and fiduciary:
4 Obligation of confidence arises when two parties have contractual relationship as in employment or in contract to provide services. Courts have described this as a special relationship in the sense that an employer and employee have a form of special relationship through which the employer put trust in the employee that the information made available to him or her in the course of employment or to aid the employee to perform his or her duties effectively may be imparted in confidence, therefore, in any event, the person is bound by the dictates of the employment contract not to use the information in a way that may be detrimental to the confider, or exploit, or expropriate such information for personal gain. 5 In Arklow Investments Ltd. and Another v Maclean and Others (1999) UKPC 51 the plaintiff who was a customer of the respondent (a merchant bank) appealed to the Privy Council seeking to overturn the decision of the Court of Appeal of New Zealand which held that the respondent did not owe fiduciary obligation to the customer that it had offered to assist and that it had not misused any confidential information. The Privy Council concurred with the decision of the Court of Appeal and therefore dismissed the appeal.
On the other hand, in Bristol and West Building Society v Matthew (1998) CH 1, 18 the court states that fiduciary obligation arises 6 “when someone has undertaken to act for and on behalf of another in a particular matter in circumstances which give rise to a relationship of trust and confidence”. In any event, there must be an expression to act on behalf of another for obligation of confidence or fiduciary to arise, in which case, if there is a dispute or misunderstanding that one owes obligation of confidence to another, the confider must adduce evidence tending to show that confidential information was misused.
In your dealings with Cruise, you did not sign a contract to act on his behalf, to produce, or aid him in dealing with a production company for the purpose of publishing or broadcasting his ideas. Therefore it could be argued strongly that Cruise did not impart such information in a circumstance that would give rise to obligation of confidence. To determine whether or not any information was imparted in confidence, the confider would have to demonstrate that he or she made every possible attempt to keep the information secret, and that such information is confidential. 8 In Bluescope Steel Ltd v Kelly (2007) 72 IPR 289, the court found that the first respondent breached obligation of confidence on the basis of his special relationship, that is employment. The first respondent was an employee of the applicant therefore obligation of confidence arose from his special relationship with the employer and contract which specifically expressed that any information disclosed in the course of the respondent’s employment was confidential.
To successfully execute a breach of confidence case, the plaintiff must demonstrate to the court that the recipient of confidential information owed the plaintiff an obligation to keep the information confidential. Cruise would have to do just that if he elects to allege that you owed obligation of confidence or fiduciary to him.I am therefore satisfied that you do not owe either obligation of confidence or fiduciary to Cruise for the following reasons:
1. you did not sign any contract with Cruise
2. you therefore do not have a special relationship with him
3. Cruise did not expressly inform you that the information he disclosed to you was confidential.
4. even if he informed you that the information was confidential, there is no evidence to suggest that you misused such information to his detriment.
Having considered that you did not infringe on Cruise’s copyright pursuant to 10 s. 32(1) (a) of the Copyright Act 1968 (Cth), and that you do not owe either fiduciary or obligation of confidence to Cruise, there exists one other avenue through which Wolf Network may take legal action against you, and that is breach of contract.
Liability to Wolf Network; Breach of Contract:
When you signed the contract with Wolf Network, you made an undertaking that you were free of obligation to any third party. Your liability to Wolf Network therefore depends on whether or not you owed a prior obligation to another party. Having considered the Copyright Act 1968(Cth) and the basis of your contact with Cruise, there is no evidence that suggests that your contributions to Sydney at Law were not free of obligation to anyone, or any third party because of the fact that you authored your contributions to the Wolf Network.
Under s.35(2) of the Copyright Act 1968 (Cth) the author is the first owner of copyright if the work is a text work, music, a dramatic work, a computer program or an artistic work, and therefore entitled under s. 31(1) to enter into contractual relationship to produce or reproduce the work in material form. For the purpose of Copyright Act, 10 an author is a person who expressed an idea or information in a material form. 11 A person who has ideas or suggestions, but does not contribute in the creation of a particular work in issue is not the author of that work, and therefore, would not claim copyright infringement so long as there are substantial differences between the first expression in material form and any other subsequent production. For example, 12 in Donoghue v Allied Newspapers Ltd (1938) Ch 106 the plaintiff claimed to have authored articles titled “ghost written” because the articles were based on his account of his racing career. The plaintiff was contracted by the owners of the newspaper to produce information about his racing career, and was interviewed by an employee of the newspaper, Felstead. The information that the plaintiff revealed to Felstead was subsequently published as though the plaintiff had written it. A few years later, Felstead updated the articles without the consent of the plaintiff and titled it “my Racing Secrets. By Steve Donoghue”. The plaintiff therefore sued for copyright infringement. The court held that Felstead was the author of the articles and therefore has copyright to the articles. Farwell J., who adjudicated in the case noted that:
A person may have a brilliant idea for a story, or for a picture, or for a play, and one which appears to him to be original; but if he communicates that idea to the author or an artist or a playright, the production which is the result of the communication of the idea to the author or the artist or the playright is the copyright of the person who has clothed the idea in form, whether by means of picture, a play, or a book, and the owner of the idea has no rights in the product.
This goes to show that Cruise may not be successful in any claim of copyright in work that you produced independently. Such copyright in any event is vested in you. However, s. 35(6)Act 1968 (Cth) states that with regards to 15 an author who produced work as part of his or her employment, copyright subsists on the employer. In this case, Wolf Network may have such title. From this proposition; if any legal action is to be taken by Cruise, such action would be directed to Wolf Network. However, since you were contracted as a consultant, not as an employee, your relationship with Wolf Network is that of a contract of service not of services. 16 A person who is providing service on contract of service terms is assumed to be an independent contractor rather than an employee. You would not be bound by terms of employment for the fact that your relationship with Wolf Network is not one of an employer and employee relationship but is instead, one of contract of service. In University of London Press Ltd v University Tutorial Pres Ltd (1916) 2 Ch 601 the court found that 17 the examiners who were appointed by the University of London were engaged under contract of service and therefore were not bound by employment contract.
Your work may have been informed by Cruise’s ideas, but that is not to say that there is striking similarity between your work and that of Cruise, due to the fact that your work has different characteristics and adaptation. Since your work is free of any obligation, and you have not infringed on any copyright that subsists in someone else’s work, I am therefore satisfied that you did not breach the contract that you entered into with Wolf Network. If Wolf Network were to go to the expense of pursuing you for breach of contract, they would have to wait until there is a successful outcome of any litigation that Cruise may institute.
In summary, Wolf Network would not have any concern about your contribution to Sydney atLaw if Cruise did not bring any legal action tending to show that you have infringed on his copyright, or that you owe him obligation of confidence and that you abused such confidence. The decision of the Court in all the cases that I have referred to, more especially, 18 Nine Films & Television Pty Ltd v Ninox Television Ltd (2005) FCA 1404 goes to show that courts understand that although there may be similarities in themes, or ideas, those themes or ideas are not protected by the Copyright Act.
The decision of the Court in Donoghue v Allied Newspapers Ltd (1938) Ch 106 is a strong authority in this respect, in the sense that the Court held that although 19 the articles in issue were an account of the plaintiff’s racing career which the plaintiff provided to Felstead, an employee of the respondent, the Court held that Felstead was the author and therefore had copyright of the articles.It is unlikely that Cruise would institute any legal challenge tending to claim copyright infringement, or obligation of confidence, given that any copyright infringement that he may claim would not stand, due to the fact that the work that you had produced for Wolf Network differs substantially to the work that he has produced.If Wolf Network elects to take any action against you for beach of contract, the onus would be on them to prove that you have breached the contract in the absence of any copyright infringement or obligation of confidence. In addition, they would have to adduce evidence to show that you are actually an employee rather than a consultant in order to prove that you breached such terms.
Bibliography:
Arklow InvestimentsLtd.and Another v Maclean and Others(1999)UKPC 51
Bluescope Steel Ltd v Kelly(2007) 72 IPR 289
Bristol and West Building Society v Mathew(1998) Ch 1, 18
Copyright Act 1968 (Cth)
Donoghue v Allied Newspapers Ltd(1938) Ch 106
IP Commentary ‘ Copyright’ retrived 28 Febuary 2008:
LexisNexis: ‘Obligation of Confidence and Special Relationship’ retrieved 23 February 2008 :
Nine Films & Television Pty Ltd v Ninox Television Ltd (2005) FCA 1404
Peters v Coulter (1995) 33 IPR 50
Telmak Products pty Ltd v Bond International (1986) 65 ALR 319
University of London Press Ltd v University Tutorial Press Ltd (1916) 2 Ch 601
1. Donoghue v Allied Newspapers Ltd (1938) Ch 106
2. Zeccola v Universal Studios Inc (1982)
3. Nine Films & Television Pty Ltd v Ninox Television Ltd (2005) FCA 1404
4. LexisNexis: ‘Obligation of Confidence and Special Relationship’
5. Arklow Investments Ltd. and Another v Maclean and Others (1999) UKPC 51
6. Bristol and West Building Society v Matthew (1998) CH 1, 18
7. LexisNexis: ‘Obligation of Confidence and Special Relationship’ p.1
8. Bluescope Steel Ltd v Kelly (2007) 72 IPR 289
9. LexisNexis: ‘Obligation of Confidence and Special Relationship’ p. 1 &2
10. Section 32(1) (a) of the Copyright Act 1968 (Cth),
11. Section 35(2) of the Copyright Act 1968 (Cth)
12. IP Commentary ‘ Copyright’, p. 2; see also section 35(2) Copyright Act 1968 (Cth)
13. Donoghue v Allied Newspapers Ltd (1938) Ch 106
14. ibid. p. 106
15. Section 35(6)Act 1968 (Cth)
16. IP Commentary ‘ Copyright- Works produced in the course of employment- contract of service’, P. 11
17. University of London Press Ltd v University Tutorial Pres Ltd (1916) 2 Ch 601
18. Nine Films & Television Pty Ltd v Ninox Television Ltd (2005) FCA 1404
19 .Donoghue v Allied Newspapers Ltd (1938) Ch 106