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Digital Technology Law Journal |
Anna Thuc-Anh Tran
LLB (Hons) (Melb, 1997)
LLM Student
University of Melbourne
This article attempts to critique prevailing judicial formulations of the `substantial part' requirement in section 14 of the Australian Copyright Act 1968, an oft-litigated but rarely resolved point of law in copyright infringement. The author argues that, given the predominance of ad hoc judicial analysis, the issue of substantiality is often either conveniently disregarded, or formalistically abstracted for the purpose of justifying copyright protection on proprietary grounds. This is done invariably at the expense of tackling policy issues which may be highly relevant if not contentious. The article explores the potential impact of this on Australian artists and musicians wishing to challenge legal and artistic norms through their work using digital technology. By hypothetically applying the existing legal framework to digital sampling (of music and images), the author suggests that what results is contrary to the public policy of encouraging the creation and dissemination of new works. The article closes with a proposal for legislative change.
1 Introduction & background
1.1 Introduction
[1] This article explores the ways in which the phenomenon of cut-and-paste is analysed in the law of copyright. Conceptually, the author intends to investigate legal formulations of tangibility and insubstantiality, examining thereby ideas integral to legal constructions of `substance', `essence' and `materiality'. Structurally, the article focuses on section 14 of the Australian Copyright Act 1968, which embodies a requirement for actionable copyright infringement to be in relation to a `substantial part' of the work allegedly infringed. In this way, the article develops a critique of the methodology utilised by common law courts when analysing copyright infringement, particularly those of a non-literal nature. It is hoped that through an understanding of the current legal framework, new ones may be developed that are better suited to the needs of contemporary culture in the digital age.
[2] Part 1 of the article explores the background and application of the requirement of `substantiality' in relation to copyright infringement. The author points out that the discretionary nature of section 14 of the Copyright Act 1968 leaves the courts entirely free to make final determinations on the question whether or not an infringing act is sufficiently `substantial' to warrant liability. Arguably, these decisions are often premised on an underlying policy of protecting the copyright owner's monopoly as `property'. The author argues that this may produce outcomes that are potentially inconsistent with the rationale for copyright law, assuming that this rationale incorporates a balancing of the private interest in remuneration for owners, and the public interest in the dissemination of information and works. Selected case-law demonstrates the many instances whereby courts have simply bypassed or assumed facts crucial to disputing or establishing `substantiality'. Thus, it may be argued, the requirement of substantiality is potentially a linguistic cloak for ad hoc, if not selective, assessments of the merits of the defendant's case.
[3] Part 2 of the article applies the existing requirement of substantiality to a hypothetical problem located in the context of digital sampling. [1] A technology which allows for cheaper and more effective cutting-and-pasting in the production of artworks and music, digital sampling raises interesting problems and implications for the `doctrine' of substantiality. Certainly the problems posed by digital cut-and-paste ask fundamental questions about the role of copyright law within contemporary culture. However, although they may be easily disposed of by courts ready to protect the property of copyright owners, these questions are as yet unresolved among the general public and particularly among the creators of copyright material themselves.
[4] In Part 3 of the article, the author outlines a suggestion for statutory reform in Australia which, taking into account both private and public interests, might resolve the problem of `substantiality' being used as a linguistic cloak for ad hoc judicial decision-making. Broadly speaking, reform would involve widening the existing fair dealing provisions in the Copyright Act in the following two ways: firstly, to incorporate the section 14 requirement of substantiality within the defence of fair dealing (in which the concept of `fairness' is formulated in a similar but more structured way); and secondly, to include `comment' as a defensible fair dealing purpose. A measure of structured discretion may then be injected into the problem of substantiality, allowing courts to more effectively balance the interests of owner and infringer through a policy of encouraging, by private reward, creativity for public good.
[5] The background concerning cut-and-paste, digital sampling, and the requirement of substantiality will now be briefly explored.
1.2 Background
1.2.1 Digital cut-and-paste: general implications for art, music and law
[6] In the visual arts as in music, cut-and-paste has been a widely debated mode of artistic practice and expression since at least the turn of this century. [2] Known in various guises and in diverse artistic mediums as `collage' or `multimedia', popularly known in music as `sampling', and often theorized under the umbrella term `appropriation art' [3] , cut-and-pasting is a representational and conceptual tool for exploring the oft-hailed `multiplicity' of post-industrial modernity. When collage, for example, emerged during the early decades of the century as a serious art form (through the works of such artists as Georges Braque, Pablo Picasso and Juan Gris), it also `carved a place for an all-embracing cultural and social revolt against nineteenth century attitudes-
`for the purpose of attacking the bourgeoisie with distortions of its own communications imagery. The man on the street would be shocked to see the components of his newspapers and posters running amuck.' [4]
[7] Today, underlying the use of cut-and-paste in contemporary music and art is the argument that in these contexts the `quotation mark' - so vital a device for understanding human communication - is nowhere to be found when needed. [5] However for `appropriation artists', the justification for cut-and-paste is more explicitly political. Centered on notions of conflict between private and public property (perhaps, after all, the question underlying copyright law), it critically seeks to `challenge the historical copyright norm that attached value to works because they were created by the `independent', `individual' artist.' [6]
[8] The emergence of digital technology compounds the problem of placing cut-and-paste art and music in a legal context. Already, digital technology has not only allowed for new forms of expression and communication, but more importantly it has subtly fused the once distinct relationship between `creator and `consumer'. [7] Whereas copyright law was developed in a cultural context in which artistic representations were more or less fixed [8] , in a digital environment on the other hand, any work is potentially capable of instant transfiguration, fragmentation or manipulation. As the nature of music and images evolves from an essentially fixed materiality into information capable of endless displacements, [9] copyright law must grapple with challenges of a twofold nature. First, the challenge posed by new technological products that do not easily fit within existing paradigms; [10] and second, practical and ideological questions surrounding the application of law to `traditional' art practices which, by utilising those very technologies, have become `foreign' to copyright discourse.
1.2.2 Historical development of the `substantial part' requirement
[9] Early copyright law prohibited only the wholesale reprinting of books, its principal aim being the protection of the book publishing industry. [11] When the question arose as to whether copying of a part only of a work could amount to infringement (and later, to what extent could an author make use of copyright material to produce a new work) copyright had to be conceptually modified. In the case of Chatterton v Cave, [12] the House of Lords found it necessary to construe an implied requirement of `substantiality' into English copyright statutes, without which the concept of infringement would be `plainly absurd' [13] . Thus, long before the requirement of `substantial part' was codified, [14] common law judges had begun to formulate their own notions about the scope of copyright infringement.
[10] These notions were sometimes mercurial and often nebulous. Significantly, `substantial' was (and remains) a word which no statute has yet defined. The courts had therefore to resort to synonyms such as `essential', `vital' or `material' to supplement their definition of `substantial'. [15] In the process, a word which by definition connotes corporeality (`substance') [16] , and by its natural usage means a quantitative amount relative to the whole of another amount (a `substantial part' of something), came to acquire in copyright law a discourse of its own, and a meaning over and beyond its dictionary definition.
[11] As the judicial search for the meaning of substantiality broadened into other areas of inquiry, the courts began to quantify `substantiality' by reference to the `materiality' of such things as the ideas or expressions in the plaintiff's work, [17] the degree of originality evinced by the part allegedly taken, [18] and the effect of the taking on the market for, or value of, the original work. [19] Thus a multi-faceted calculus evolved which justified a finding or otherwise of liability via an abstracted judicial characterisation of the `quality' of the plaintiff's work and the `nature' of the defendant's appropriation. And although, in some early cases, the requirement of substantial part was used as a rough guide for determining whether the defendant's appropriation amounted to `unfair' or `unconscientous' [20] use of the plaintiff's work, later decisions were to focus more consistently on copyright as, above all, a tangible right of property, [21] and as such enforceable - provided a `substantial part' of the work has been taken - even if the use was not unfair.
[12] Below, the author argues that underlying the present judicial framework is an emphasis on the `materiality' of the appropriation in terms of abstract property rather than the actual harm caused by the defendant. Founded on the premise that intellectual property can be equated with other forms of corporeal property such as land - which could be `profitted' from, `reaped' and/or `trespassed' upon [22] - the courts' inquiry into `substantiality' thus frequently overlooks the true nature and circumstances of the appropriation. In this way, the labour and capital expended in the creation of copyrighted works is protected but sometimes at the expense of judicial consistency, and the wider public interest in fostering the creation and dissemination of works. [23]
2 How is Substantiality Determined?
[13] In any infringement action, the plaintiff must show that the defendant's copying [24] of a work or subject matter (copyright in which being owned [25] by the plaintiff) amounts to an infringing act in relation to a `substantial part' of the plaintiff's work. [26]
[14] The factual question whether the defendant has reproduced [27] a `substantial part' of the plaintiff's work is to be determined having regard to the circumstances of the case. [28] However, although the question is rarely answered by reference to a determinative fact or factor, `substantiality' does not seem to require that the court examines all the factual circumstances. As Drummond J states in A-One v Off- Road, [29]
`[w]hether a substantial part of the copyright material has been copied depends not merely on the physical amount of the reproduction but on the substantial significance of that which is taken. That is, it depends on the quality of the portions copied.' [30]
[15] Characterising this `quality' necessarily involves an exercise of judicial discretion; hence, the question of substantiality is often said to be `a question of degree' [31] .
[16] More often than not, an assumption of `substantiality' precedes legal analysis of this very issue, especially where it appears that the defendant has taken a `free ride' on the plaintiff's work. The method of reasoning used by courts when addressing the issue of substantiality also tends to abstract notions of `substance' and `quality' without considering other relevant (but often highly contentious) issues and circumstances surrounding the infringing act. In this respect, although the factors analysis approach - which looks to the `nature' of the plaintiff's work, similarities between the works, and the nature of the defendant's taking - seems sufficiently detailed to comprehend the context of the infringement, its ad hoc application allows for too much discretion in favour of preserving property over granting access to works. Thus, instead of limiting the plaintiff's ability to enforce copyright, the requirement of substantiality may effectively extend copyright protection. This argument is examined below in relation to each of the `factors' that are usually considered by the courts in infringement cases.
2.1 Substantiality by reference to the quality of the part taken
[17] Integral to the notion of a work's (or a part of that work's) `quality' are numerous things, among them aesthetic merit, quantity [32] or value, and originality. The last of these has proved a significant problem for the application of the substantial part requirement. In particular, the present approach raises two questions relating to originality: the first being whether originality of the `part' (as opposed to originality for copyright subsistence of the whole work) is required in order for infringement to be actionable; and the second being whether originality of ideas (as opposed to expression) is considered relevant. At present it is not uncommon for courts to characterise the `quality' of an allegedly infringed part as `substantial', notwithstanding that it is neither `original' nor `expressive' as such.
2.1.1 Originality of the part taken
[18] Whilst issues relating to a work's originality are most often encountered in the context of copyright subsistence, it is also commonly asserted in the context of copyright infringement that `there is no copyright in some unoriginal part of a whole that is copyright.' [33] Consequently, there can be no infringement if a clearly unoriginal (albeit quantitatively substantial) part of a work is taken; [34] and conversely, if the part taken is considered `highly original' it may be regarded as a substantial part notwithstanding that, quantitatively, it forms only a small part of the work. [35] Whilst there is consensus that the quantum of originality required for copyright subsistence in Australia is minimal, [36] some confusion does remain as to how much more `original' (if at all) the fragments themselves need to be in order to attract protection, on their own, against infringement. In this regard, difficulties in analysing originality are compounded by the fact that the plaintiff's work often consists of a combination of independently created and copied material.
[19] Notwithstanding that legal formulations of originality do not necessarily correspond with popular or artistic notions of novelty or creativity, [37] in Ladbroke v William Hill, [38] Lord Reid suggested that the test for originality where the defendant has taken only a part of the work `may be whether the part is novel or striking' [39] . The implication here is that the requisite degree of originality may be higher than that required for establishing copyright subsistence where a part only of the plaintiff's work has been copied. Citing Ladbroke in Re Greenfield Products, [40] Pincus J of the Australian Federal Court held that,
`a feature of a drawing which does not display any particular originality or other merit is unlikely to support a case of infringement unless the corresponding feature in the allegedly infringing work is very similar to it.' [41]
[20] In Bauman v Fussell [42] , the English Court of Appeal used a similar reasoning in holding that the defendant's painting, which was admittedly based on the plaintiff's photograph of a cockfight, did not substantially infringe copyright in the photograph. The central issue in the case was whether the attitude of the birds relative to one another constituted a substantial part of the photograph. The majority considered it did not, upholding the trial judge's finding that the positioning of the birds was `merely commonplace'. [43] Further, for the reason that the photographer `did not himself arrange the positions of the fighting cocks but had merely chosen the most appropriate moment to take the photograph', [44] the Court considered there to be no particular originality in the compositional element of the photograph. As such, `composition' was held not to be a substantial part of the plaintiff's work in this case.
[21] Lord Reid's formulation in the Ladbroke case, however, has been qualified as a `short cut only', the `more correct' approach (as his Honour himself pointed out) being,
`first to determine whether the plaintiffs' work as a whole is `original' and protected by copyright, and then to inquire whether the part taken by the defendant is substantial.' [45]
[22] In effect, this approach renders the originality of the part practically irrelevant to the inquiry into its substantiality: it is the originality of the whole work that is looked to first, then the substantiality of the part is determined but not necessarily by reference to its originality. The `more correct approach' was recently applied by Drummond J in A-One v Off-Road [46] . Refusing to distinguish between `originality' in subsistence and infringement contexts, his Honour overlooked the obvious difficulty with the `more correct' approach which is, of course, its logical circularity. At some stage, certainly, the question of the originality of the part must be addressed since, by the Court of Appeal's own admission, `there can be no copyright in some unoriginal part of a whole that is copyright.' [47] Merely to characterise the part as substantial or insubstantial would be, arguably, to refuse to come to terms with the `nature' or `quality of the work' infringed.
[23] A-One v Off Road is current authority, it seems, for the proposition that a plaintiff who has copied earlier works may nevertheless successfully protect his/her appropriation against infringement by a subsequent copier, since,
`a relatively small alteration or addition quantitatively may suffice to convert that which is copied from an earlier work into a new and original work which... deserve[s] protection.' [48]
[24] Even though Drummond J applied the `more correct' test in Ladbroke, he is nonetheless implying here that the part infringed by the defendant `deserves protection' by virtue of plaintiff's expenditure of labour and capital in making `original' alterations and additions to the manufacturer's catalogue. Arguably, invoking `originality' in this context was no more than an attempt to justify copyright protection on an essentially economic basis, not on any consideration of the `quality' of the plaintiff's work (or part therein infringed) as such.
[25] Although minimal originality should to some degree be recognised (by preventing exact copying of the plaintiff's `trivial variations'), it is arguable that an approach whereby the first appropriator is given a monopoly over the material - such that others are subsequently prevented from similarly re-using the non-original material - would be inconsistent with the rationales for copyright law. Whilst the decision in A-One v Off-Road has left little doubt that, in Australia, `copyright can exist in a compilation even though the compilation consists of partly pirated material and partly non-pirated material', [49] the question is left open whether, if the defendant `substantially' copies material which the plaintiff had previously copied (but trivially altered), infringement would be found. The `short-cut' approach in Ladbroke would be likely to support a negative answer, particularly where the material is neither `striking' nor `novel' but copyrighted, for example, only by virtue of its collocation. On the other hand, the `more correct approach' would leave discretion to the judge as to whether it should be protected as a `substantial part' of an original work notwithstanding that it evinces only a low degree of originality. At present, it seems the latter judicial approach is likely to be preferred.
2.1.2 The idea/expression dichotomy
[26] The axiom that `copyright protection is given only to the form in which ideas are expressed, not to the ideas themselves' [50] applies to exclude from the scope of infringement any ideas which the defendant may have appropriated from the plaintiff's work notwithstanding that such ideas may form a substantial (or even `original') part of the work. A cornerstone of copyright law, the dichotomy between idea and expression is said to serve the `two masters of copyright law' - authors and the public - by protecting individual expression without restricting the free exchange of knowledge. In the US, this axiom is codified in section 102(b) of the Code (entitled `Copyrights'). [51] In the Commonwealth however, and particularly with the advent of increasingly sophisticated computer technology, it has become common for judges to construe an `idea' in such a way as to render it sufficiently `substantial' to warrant copyright protection. This may be so, moreover, whether or not the idea forms a `substantial part' of the plaintiff's work as a whole.
[27] A recent example of this approach can be seen in the controversial decision of the High Court in Autodesk v Dyason. [52] The case involved copyright infringement of a `locking mechanism' which was designed to prevent piracy of a well-known computer drafting program, AutoCAD. The locking mechanism consisted of a plug-in `lock' which operated in conjunction with a program called Widget C. One of numerous other programs which made up AutoCAD, Widget C consisted of a component known as a `look-up table' (essentially a `pseudo random sequence' of 127 binary numbers). The question was whether this look-up table, which functioned more or less as a security code - trespassing which the lock could effectively shut down the operations of AutoCAD - could be protected as an `expression' constituting a `substantial part' of Widget C. [53]
[28] The High Court accepted the plaintiff's argument that, Widget C being characterised as a `literary' work, the look-up table could, by analogy, be considered an element of its `expression'. In other words, it constituted a form of,
`actual or theoretical "expression" in binary "notation" of the "set of instructions" constituting Widget C.' [54]
[29] In order to justify this somewhat epic simile, Dawson J reasoned that the traditional idea/expression dichotomy cannot logically apply to works which primarily exist to fulfil a function (idea) only:
`There is a particular difficulty in distinguishing an idea from its expression in the case of a utilitarian work, such as a computer program, which, in contrast to literary works of an artistic kind, is intended to be useful rather than to please. But it has been held that the idea of the utilitarian work is its purpose or function and that the method of arriving at the purpose or function is the expression of the idea.' [55]
[30] On this basis, copyright protection was extended to the work's `method' of achieving its function, which was seen as being analogous to `expression'. The ramifications here for `artistic' works `intended to please' are problematic and will be discussed later. [56]
[31] In Autodesk, the Court rejected the defendant's argument that the look-up table did not form a `substantial part' of AutoCAD or of Widget C. [57] Dawson J noted that whilst substantiality forms an important element of copyright infringement, nevertheless, a part of a work may be considered `substantial' notwithstanding that it does not possess `substance' as such, and therefore notwithstanding that it forms a structural or functional element of the work only:
`It is not, in my view, necessary that the reproduction of a substantial part of a computer program should itself be a computer program... For Widget C is a computer program and a substantial, indeed essential, part of that program is the look-up table by reference to which Widget C processes the information which it receives from the AutoCAD lock.' [58]
[32] His Honour clearly implies that, by reference to its function as the gatekeeper of AutoCAD, the look-up table had to be `a substantial' or `essential' part of Widget C if not of AutoCAD itself. Gaudron J added in the subsequent appeal that the table was `undoubtedly' the `linchpin' [59] of the product. Thus, by the court's acknowledgment of the need to prevent unauthorised access to computer programs, [60] `substantial part' thereby came to be construed as a part `essential' to not just the operation of the program but to its success in the all too `material' marketplace.
[33] A construction of `substantial part' which does not confront issues of the part's originality or expressivity arguably obfuscates the reasons for granting it intellectual property protection. As it is, the existing framework clearly enables the courts to overlook the real issues in contention - such as whether a pseudo random number sequence could truly be considered an `expressive' element of the plaintiff's work - and instead to use formalistic legal abstractions in order to reinforce traditional assumptions about the need to protect `property'. Applying this framework within an artistic context, the possibility that ideas and methods may be protected, even if neither original nor expressive in themselves, is certainly not a remote one.
2.2 Substantiality by reference to the similarities between the works
[34] The issue of similarity between the plaintiff's and defendant's works is usually considered in relation to the question whether or not there has been copying. In many cases, however, the courts have tended also to determine `substantial part' by reference to perceived `substantial similarities' between the works, [61] although strictly speaking this approach is confined to US jurisdictions where the doctrine of `substantial similarity' [62] operates in place of the `substantial part' requirement.
[35] The common law inquiry is said to rest on whether `any similarity attributable to copying which is to be found in the defendant's [work] amounts to the copying of a substantial part' of that work. [63] At common law the assessment is left for the court as to whether, in its `original opinion', the alleged similarities exist to a degree sufficiently substantial to warrant liability. [64] Because the admission of expert evidence is thus minimized, [65] the degree of recognisability (of the plaintiff's work) and the courts's ability to so recognise similarities, become key factors in decision making.
[36] Instead of requiring objective proof that similarities were `attributable to copying' (or at least objectively indicate that the defendant's work has been derived from the plaintiff's) some courts seem prepared to protect any part of the plaintiff's work which it has been able to substantially `recognise' in the defendant's alleged copy. [66] Thus, rather than examining as a matter of law the issue of whether copying alone (or some other reason or circumstances) explained for the similarities found, the courts' approach has been to accept, on the recognition of similarities per se, that a `substantial part' may have been appropriated.
[37] In Hawkes & Son v Paramount [67] this approach - which ignores the wider context of the infringement and, particularly, relevant issues which may account for the similarities as such - resulted in a decision which even the court admitted was reached `with some regret'. [68] In this case, a significant fact contended by the defendants was that the musical march had been incidentally reproduced on the defendant's newsreel: that is, it was not reproduced from a separate soundtrack but was actually played by the school-band as part of the spectacle and recorded on the defendant's newsreel together with all the other sights and sounds [69] of the event. The defendants neither intended to copy nor, they argued, could they have avoided reproducing the march if they were to faithfully reproduce the spectacle as a whole. [70] Notwithstanding that the judges reserved `sympathy' for the defendants, [71] the case was decided on the basis that,
`anyone hearing it would know that it was the march called "Colonel Bogey," and though it may be that it was not very prolonged in its reproduction, it is clearly, in my view, a substantial, a vital and essential part which is there reproduced.' [72]
[38] The court, deliberately overlooking the very reason accounting for the similarities - ie., it was not attributable to copying, but to the circumstance of the defendants reporting the fact that `the boys marched to the tune of Colonel Bogey' - found infringement on the basis that factual similarities between the work and reproduction were sufficiently `substantial' to warrant liability. [73]
[39] Thus an approach which assesses substantiality by reference to the factual similarities per se between the plaintiff's and defendant's works is bound to create incongruous factual contexts for analysing substantiality. Furthermore, in a difficult case, it may be that in choosing to disregard the circumstances surrounding the infringement, a court could thereby more readily direct its focus on the question whether the fruits of labour of an author ought to be protected against unauthorised access.
2.3 Substantiality by reference to the nature of the defendant's taking
[40] Whether an appropriation constitutes a `substantial part' depends significantly on the `nature of the taking'. [74] Two main factors contribute to the court's analysis here: first, the manner and purpose for which the allegedly infringed work was used; and second, the effect of the defendant's taking on the potential value of the plaintiff's work. [75] Case law reveals that, in both areas of inquiry, there is a strong judicial tendency to equate unauthorised reproduction with appropriation of property.
2.3.1 Purpose of the taking, or character of the use
[41] In Blackie v Lothian Book, [76] the High Court suggested that the point of departure may be to inquire whether `an unfair or undue use [has been made] of the work protected by copyright' [77] . In particular, if the plaintiff and defendant were using the allegedly infringed part for the same purpose, then this may suggest the defendant has unfairly used the plaintiff's work for the purpose of saving him/herself labour and independent research. [78] On this basis, substantiality would be sufficiently established to find liability even where, as in Blackie v Lothian Book, `the defendant's book is by no means a "servile imitation" of the plaintiff's work' [79] .
[42] In this respect, the extent of the defendant's own contributions to the work may be considered, but only once the court has satisfied itself that there has been no unfair use or animus furandi (`a mind to steal') on the part of the defendant. [80] Accordingly, in Joy Music Ltd v Sunday Pictorial Newspapers, [81] McNair J held that the defendant's appropriation of the phrase `Rock-a-billy, rock' (from the plaintiff's popular song by the same title) was not a substantial reproduction on the basis that it was the defendant's `purpose and intention' to `parody' [82] the work and not to make `unfair use of...the plaintiff's original copyright'. [83] Similarly in Bauman v Fussell the majority held that since the defendant had used the plaintiff's photograph as a source of `inspiration' only, no infringement occurred. [84]
[43] The use of the phrase animus furandi clearly reflects the court's anti-freeriding attitude, which is essentially derived from a conception of intellectual property as corporeal property. It is also clear that, where the defendant succeeds, it is on the basis that his or her intellectual property is somehow `superior' to the plaintiff in terms of being of more `value'. For example, implicit in Bauman v Fussell was perhaps the suggestion that a photograph published in a magazine was not to be worth the same as a painting auctioned at an art gallery. The idea of a work's `value' in relation to the requirement of `substantiality' will be explored below and, in the concluding part of this section, the author will briefly discuss the need for the adoption of a broader policy- (not property-) based framework which addresses the balance between the awarding protection to creators and promoting wider public interests.
2.3.2 The effect of the taking on the market for/value of the work
[44] Competition with, and consequently damage to, the plaintiff's monopoly has always been considered an important factor contributing to the substantiality of the part allegedly taken. Accordingly, an intention on the part of the defendant to `usurp' the plaintiff's monopoly could readily support a finding that the infringement was in relation to a `substantial part' of the work. [85] In this respect, some courts have looked on the fact of interference upon the copyright monopoly (even if inadvertent) as so objectionable, in itself, that a defendant will not be excused by contending or proving that no actual damage has occurred:
`The right of the owner of copyright is not determined or measured by the amount of actual damage to him by reason of the infringement; copyright is a right of property, and he is entitled to come to the Court for the protection of that property.' [86]
[45] The absence of a requirement of economic harm to the plaintiff in establishing infringement arguably defeats the twin logic behind the rationale for copyright. [87] If the purpose of granting intellectual property rights is to offer incentives for authors and inventors to create and disseminate works, then to construe copyright as just another form of `property' is judicial policy-making at a fundamentally incongruous level. [88] Some critics argue that, logically, if the actions of the defendant cause no loss to the plaintiff, then making the defendant stop will not only be of very little real benefit to the plaintiff, but consequently there will be no incentive to create on either party. This at least is the case where the plaintiff seeks only injunctive relief. [89] On the other hand, if damages are sought, then receiving money is arguably always a benefit and therefore awarding money is one means of offering an incentive to create. However, insofar as no real harm has been suffered by the plaintiff, the award of damages in these circumstances may be a random windfall to the copyright holder, and moreover unjustly harsh on the defendant. [90]
[46] In more difficult cases involving the introduction of new technologies, the courts have been reluctant to `open the floodgates' to infringers and so have tended to invoke substantiality by reference to the `property ` in the plaintiff's work. A classic example of this was seen in Hawkes v Paramount, [91] where the introduction of sound to cinematography was considered a potentially `dangerous' thing for those whose living depended on the control and production of sounds, [92] such as composers or the recording industry. In this case, the Court of Appeal may be seen to have characterised `substantial part' as a valuable (but not necessarily valued) part of the plaintiff's work which, when threatened by the merest possibility of trespass or infringement, `materialises' as a form of property.
2.4 Concluding remarks on the existing framework
[47] The discussion above highlights certain aspects of the inquiry into `substantiality' which suggest, first and foremost, the absence of an objective and consistent judicial framework for defining how much copying is too much. Where the inquiry focuses on the `quality' or `nature' of the plaintiff's work, the obfuscation of such concepts as `originality', `idea' and `expression' has resulted in conflicting interpretations of precedents. Consequently, case law on `substantiality' does not reflect a consistent judicial standard but rather an abstracted set of assumptions which operates by way of unstructured discretion and without regard to all the circumstances or the entire facts. Ultimately, instead of limiting the plaintiff's ability to enforce copyright, the requirement of substantiality as it is applied actually provides a means for courts to maintain a policy of property protection skewered towards the owner's interest rather than the public's.
3 The Substantial Part Requirement for Digital Art and Music
[48] The fact that digitised art or music may be stored, transmitted and manipulated with astonishing ease raises problematic issues for the `substantial part' requirement. Copyright questions arising from these particular applications of digital technology (such questions, for example, as: how much of the work must be sampled in order for the appropriation to constitute infringement?; does digital alteration affects the `substantiality' of the reproduction?; how `original' need the portions sampled be?; are `ideas' in samples protected?, etc) are by no means novel problems in the law of copyright. However, they are certain to emerge with greater frequency and in increasing complexity as digital technology becomes a pervasive element of artistic and musical expression.
[49] As distinct from literary copyright, those copyright problems encountered in the visual arts or music are less easily solved, and yet the stakes `higher' because, unlike copied words which can be `severed' (or rewritten) if found infringing, [93] severing parts from a piece of music or art can effectively destroy the texture of the work entirely. The courts must, therefore, be all the more careful when translating copyright concepts borrowed from other contexts onto a music or visual arts environment.
3.1 A hypothetical case
[50] There are as yet no judicial precedent in Australian copyright law relating to the digital sampling of music or art. As such, a hypothetical case can be constructed - modelled on the American experience [94] and based on informal interviews with amateur `samplers' in Melbourne - which will likely present the following facts for analysis:
[51] As digital sampling becomes more pervasive in Australia, musicians and artists on both sides of litigation are likely to be concerned about its legality. An understanding of the existing legal framework as it applies to the hypothetical problem above may thus be useful, both for potential application in a real-life context, and for critical examination of the conceptual shortcomings of the law.
3.2 The statutory framework pursuant to the Copyright Act 1968
[52] In order to secure `exclusive rights' under the Act, a plaintiff engaged in a sampling dispute needs to first prove copyright subsistence in, and ownership of, the work (or other subject matter) allegedly infringed: s. 31(1) and s. 35(2). The Act then provides that `infringement' consists of doing any act comprised in the copyright without permission: s. 36(1) (works) and s. 101(1) (subject matters). What rights are comprised in the copyright, in turn, depends on a characterisation of the work or subject matter under sections 31 (literary, dramatic musical and artistic works), section 85 (sound recordings), or section 86 (cinematographic films). Note that since digitisation does not alter the material embodiment of the work or subject matter, [95] this will not be considered a significant issue in a sampling problem.
[53] The focus, then, will be on the main exclusive right granted by the Act being the right of reproducing the work or the subject matter. The Act provides for liability should the doing of the infringing act be `in relation to a substantial part' of the plaintiff's work or subject matter: s.14(1). It appears that the onus is on the plaintiff to satisfy the requirement, as the provision arguably limits liability to reproduction that is substantial. [96] Nevertheless, because the phrase `substantial part' is nowhere defined in the Act, and also because the trier of fact is likely to be the trial judge, the issue of substantiality will at this point be determined by reference to case law.
3.3 Substantiality by reference to the nature or quality of the sampled work
[54] The hypothetical facts above raise interesting questions relating to the `nature' of the plaintiff's work. In particular, conceptual difficulties are invariably encountered when the idea of `originality' is applied to musical works, and significantly more so when digital sampling is involved. On the other hand, the `idea/expression dichotomy' is peculiarly problematic when considered in relation to artistic works (especially those using collage techniques). This section identifies the difficulties which may confront a court when analysing the `quality' or `nature' of the plaintiff's work in a digital sampling case.
3.3.1 Originality in a musical work
[55] In a music sampling context, the defendant's taking may amount to a single note or a chord progression only, or it may comprise of a motif (such as a bass line) or a melody from the plaintiff's work. If Lord Reid's `short cut' test in Ladbroke is adopted, the court will assess the plaintiff's allegedly infringed passage for `originality' by comparing it to material already in the public domain in order to ascertain whether it is sufficiently `novel or striking' [97] to deserve protection. This approach may leave, for example, the plaintiff's chord progression unprotected, particularly if it amounts to no more than a simple variation on a musical `building block'. [98] However, a melody or motif may well be held to be a substantial part even if consisting of only a few notes. [99]
[56] If, on the other hand, the `more correct approach' unanimously adopted by the House of Lords in Ladbroke - and endorsed by Drummond J of the Federal Court - is applied, protection may extend even to the plaintiff's chord progression in the case that it is held to constitute a `substantial part', whether quantitatively or qualitatively, of the plaintiff's musical work as a whole.
[57] In a sampling context, however, copyright protection may be better determined by applying a combination of both approaches found in Ladbroke: that is, protection should be limited not only to the extent of the part's originality but also to the extent to which that part constitutes a `substantial' or integral element in the overall originality of plaintiff's work. In this way, a striking but short motif should not warrant protection. [100] It is difficult to see how a de minimis taking could amount to the taking of an `integral part' of the plaintiff's work, and it is certainly conceivable that any musician might stumble upon such a motif unawares, considering that musical notes and structures are, by their nature, parts of a finite system. In this respect, the test for copying - whereby it is sufficient for an inference of copying if there exists `objective similarity' between the works and some causal connection - could otherwise prove an considerable burden on the defendant's part to refute.
[58] With respect to musical tunes, a familiar argument raised in favour of sampling is that `certain sounds exist in the public soundscape, we are compelled to listen to them whether we like them or not, and we should therefore also have the right to use them to our own ends' [101] . In this argument, `public' tunes and melodies are considered `found sounds', such that `originality' no more attaches to them as to dog barks or police sirens. Although compelling, this argument obviously ignores the broader aim of copyright protection, which is to reward those who created the sounds to be `found' in the `public soundscape' in the first place. To some extent, therefore, applying the suggested `merged' test as derived from Ladbroke may enable the courts to balance the need to protect a part integral to the plaintiff's original work, whilst leaving free access to musical building blocks and found sounds for future creative endeavours.
3.3.2 The idea/expression dichotomy in artistic works
[59] Placing copyright law within the context of what is generally termed `post-modern art' is, at least from such an artist's point of view, a highly problematic exercise. Yet copyright law necessarily imposes itself upon an artist who takes a substantial expressive element from another without permission. How can this expressive element be defined?
[60] As discussed above, the legal framework in Australia is built on a less rigid distinction between idea and expression than that found in the United States. The High Court, opting for an approach which emphasises the material value of ideas, has (at least in the context of computer programs) indicated that it may be prepared to extend protection to an idea even where it is not strictly a substantial part of an overall work. Such an approach, it was made clear in Autodesk v Dyason, could validly emphasise the `utility' of the idea without offending the common law principle that copyright protection extends to authors' `expressions' only.
[61] Judicial extensions of the definition of `idea' could well make it more difficult for second- generation artists who, as defendants in copyright litigation, may wish to argue that the part allegedly infringed embodies the `idea' only and not `expression' in the first artist's work. Based on the decision in Autodesk v Dyason, basic visual elements of an artistic work such as the subject matter [102] , setting, perspective [103] , and possibly even type of materials used, may now be accorded protection if considered `useful', `material' or `substantial' in some sense.
[62] If this seems to be an overstatement of the High Court's position, according to Dawson J it may be possible to distinguish artistic works from utilitarian ones, and hence, presumably, the decision in Autodesk would apply only to the latter category of works. This approach appears problematic, arguably because much of art produced in this century has consciously sought (theoretically if not practically) to blur the traditional line separating `art' and `reality' in order to define a `place', or `function', for art. Hence, the rather simplistic dichotomy between `works intended to be useful [and]...works intended to please' may no longer be valid in a context where representation and abstraction (or `fact' and `fancy') have ceased to operate as dichotomies. In this context, defining what is an `idea' - ie., what it is that a visual image or artistic expression is `about' - may be difficult if not impossible.
[63] Some writers have argued for the development of the doctrine of `merger', hitherto an accepted principle of American computer law, to facilitate for the legal analysis of artistic works. [104] In its original form the principle states that where there are only limited ways of expressing an idea, the form of expression used by the first author will not be protected since to do so would be to protect the ideas, said to be `merged' with the expressions. [105] With respect to artistic works, Professor Nimmer has suggested a variation on the concept of merger which acknowledges that, for limited purposes, some works may be considered an `idea' only. Citing the example of wartime photographs, such as those taken of the My Lai massacre during the Vietnam War, he argues that,
`No amount of words describing the `idea' of the massacre could substitute for the public insight gained through the photographs. The photographic expression, not merely the idea, became essential if the public was to fully understand what occurred in that tragic episode.' [106]
[64] In such a case, it is argued, copying may be excused on the basis that `the expression must be copied along with the idea not because it is onerous for an idea copier to create his own expression, but rather because the idea cannot be conveyed unless the expression as well is copied.' [107] Conceivably then, Andy Warhol's `Campbell Tomato Soup' cans may, in a similar way, be considered `ideas' which now litter the postmodern `signscape', and which should be free for other artists (indeed, for anyone wishing to refer to their visual environment) to depict. [108]
[65] An assumption underlying this approach is that, because of a certain work's social or cultural status as embodying a significant `idea', such works enable us as a society to reach a fuller understanding of ourselves - in much the same way, perhaps, that Einstein's theory of relativity, as an `idea', provides modern physics with the means of further understanding the universe. Proponents of sampling thus argue for the inclusion of such ideas into the public domain, particularly for the purpose of social comment or criticism. [109] Ultimately, however, emphasis must be placed on the need to develop, within legal analysis, a practical means of distinguishing between ideas and expression in the visual arts, and with that a methodology which will enable courts to recognise whether, in a particular work, the two are in fact merged or not.
[66] In Autodesk v Dyason, however, the Australian High Court did not appear to see the issue in this way, indicating as it did that if the `merger principle' applied to Australian law, it would only be considered in relation to utilitarian works. [110] In Apple Computer Inc v Mackintosh Computers Ltd, Canadian judge Reed criticised any application of the principle to an artistic context, for the reason that it appeared to her there were no conceptual limit to such an argument:
`[M]any works which are clearly copyrightable exhibit a merger of the idea they convey and the expression thereof: a poem, a play, a painting, a map, a chart. It is only if the idea communicated by such works is described in highly abstract, remote and general terms that one could say there is no merger of the idea they convey and the expression in which that idea is conveyed. In addition, the word "idea" itself is of varying definition.' [111]
[67] In conclusion, it remains to be seen in a real sampling dispute whether Australian courts will consider `substantiality' by utilising a framework which clearly distinguishes ideas from expression, and which recognises that in some instances a merger between the two may occur. It appears, however, that the judicial trend has been to extend protection to `useful' ideas, whilst the merger doctrine remains of uncertain status.
3.4 Substantiality by reference to the similarities between the works
[68] Another key question in a sampling dispute will be whether the defendant has so changed the appearance or sound of the sample that it can no longer be recognised or considered `substantially similar' to the allegedly infringed part in the original. [112]
[69] In relation to sound recordings, the Copyright Act 1968 provides that the holder of copyright has exclusive rights, inter alia, to `make a copy of the sound recording': s. 85(1). Following CBS v Telmak, [113] this right has been confined to an exclusive right to reproduce the `actual sounds embodied in the recording' only, and does not extend to the making of such `sounds alike' as, for example, a cover version of an original song. [114] The issue to be resolved when applying CBS v Telmak in a digital sound sampling context, then, is whether, by application of the requirement of `substantial part', a court might effectively rule out infringement where the sounds reproduced cannot be considered to a substantial degree to be the `actual sounds' embodied in the recording. Arguably, even minor manipulations of the sound could thus effectively transfigure it beyond the point where it can be realistically be considered a `substantial part' of the original aggregation of actual sounds.
[70] Because the line between `mere copying' and `substantial copying' has yet to be defined, this scenario may be applicable also to musical works (including those that underlie the sound recording) or even artistic works. In a sampling context, for example, are complex signature-type melodies or images protected if they are copied but nonetheless `morphed' to a degree where most ordinary people will not recognise that they were derivations of the plaintiff's work? In other words, could the copying here be considered of a substantial part of the plaintiff's work, notwithstanding that it does not remotely look or sound like what was alleged to have been copied in the first place? As argued previously, perhaps this is a question the answer to which depends on whether the courts are willing to leave behind the assessment of substantiality by reference to the similarities or dissimilarities per se, or instead to approach the issue by looking at the overall context of infringement, including the reasons accounting for the similarities or dissimilarities as such.
[71] Arguably digital sampling, as a form of cut-and-paste with applications in potentially diverse mediums, should not be assumed analogous to simple piracy. Instead, the court's approach should begin by questioning whether the similarities are truly `attributable to copying' or, as in the case of Hawkes v Paramount, merely the result of a process which is aimed at achieving some other purpose. And although it is arguable that artists who cut-and-paste using material from previous works are themselves conscious of the very fact of copying, the mere existence of similarities between the works should not, alone, be conclusive of an intention to `steal' [115] . In this respect, perhaps the use of expert evidence from art and music critics or practitioners could be better developed, [116] so as to enable a more progressive understanding of the nature of sampling as an infringing act.
3.5 Substantiality by reference to the nature and purpose of the sampler's taking
[72] Whilst the creation of art or music premised solely on the copying of older works may, in the end, amount to no more than a rationalised form of theft, the notion of legal appropriation seems somehow inapposite in this context, particularly when one considers that much of art functions as a complex form of mimicry anyway. As a means by which second-generation artists comment on, or build from, what came before, the nature of artistic and musical appropriations should perhaps be analysed through a legal framework which recognises a need to comment, to make references to, to parody and ultimately to understand past works. In traditional collage as in multimedia works and music sampling, the need to access a wide range of cultural material should be seen as part of a basic need to articulate a cultural stance. And whereas the direct quotation of other works is a norm in literary practices, in the visual art as in music this cannot be done without cut-and-pasting techniques.
[73] Yet the consequences of such appropriations are difficult to analyse in legal terms. How, for example, can one validly distinguish between a `genuine' attempt at comment and a commercial swindle? Should the court impose here a standard of `good faith'? Such a standard could be helpful but in practical terms may be impossible to enforce. Take, for example, Marcel Duchamp's now famous collage depicting a moustached Mona Lisa and entitled `LHOOQ'. Should this be considered a legitimate expression of a critical position or merely a `sophisticated form of artistic rip-off'? Arguably, considerations of this kind are apt to be too time-consuming for the limited resources of the judiciary.
[74] Perhaps the potential effect of sampling on a work could be looked to as some indication of whether the plaintiff ought to be protected against infringement. In cases where the iconic status of the plaintiff's work cannot be doubted, it should be an acceptable argument that no actual damage in this case could potentially be caused, especially where the intended audience/observer would have no difficulties relating to the `substantial parts' as icons. Equally convincing, however, is the argument that unauthorised use even of `icons' created by a plaintiff may have a potentially degrading effect (practically or intellectually) on such works, and should be restrained. [117]
[75] Underlying the `battle for authority' between older and newer art, then, is a question of policy: should the courts continue to equate intellectual property with corporeal property? As argued above, the requirement of substantiality is judicially analysed in a context where the plaintiff's work is viewed as property and as such protected against `trespass' even where no real damage has been suffered.
`It is not for the court to make the way of the taker of copyright matter easy. It is a sound principle of copyright law that the Court should not allow one man to take away the result "of another man's labour, or, in other words, his property," unless it is satisfied that the part taken is "so slight, and the effect upon the total composition so small", "as to render the taking perfectly immaterial".' [118]
[76] However, it is arguable that a framework which essentially defines the `substantiality' of an infringing act by reference to the `materiality' of its consequences, yet which does not require that the harm to a plaintiff be actual or `real' in a material sense, is apt to be inconsistently if not selectively applied and may ultimately render the notion of `substance' meaningless.
[77] Thus whilst the struggle over property will no doubt remain a significant albeit problematic backdrop against which the law of copyright is interpreted and applied, it is crucial for the courts now to acknowledge - at least at a policy level - that the rationale for copyright is premised on a balancing of public and private interests. Rather than resolving disputes through a property analysis, the courts should address the issue of substantiality, perhaps in conjunction with fair dealing, in a way which accommodates for such a balance. In this regard, judicial formalism may need to be tempered by a change in the legislative framework of copyright law.
4 Suggestions for Legislative Change
[78] In the United States, the rationale for copyright law is codified in both the Constitution and the Copyright Code. [119] This has not been the case in Australia and the United Kingdom, where judges and the legislature have gone no further in defining the purpose of granting a copyright monopoly than to say that:
`we have to consider the statute upon broad lines; to bear in mind the necessity for the protection of authors...The Acts have to be construed with reference to that purpose, and they are not to be made the instruments of oppression and extortion.' [120]
[79] If `oppression and extortion' are rarely instrumental considerations behind the formation of policies regarding copyright, then perhaps the political, moral and economic complexities behind the law ought now to be openly re-examined.
[80] In an area of law which has to grapple with conflicting social theories, it is surprising to find that unlike the position in the United States where the defence of `comment' forms part of the doctrine of fair use, in Australia the word is not recognised as part of copyright discourse. [121] In Australia, the fair dealing provisions of the Copyright Act are applicable only to activities for the purpose of `research or study', `criticism or review', `reporting of news', `legal advice' or some other non-related uses. It is suggested that, as a `purpose', `comment' may be capable of broader definition than existing fair dealing purposes such as `criticism' or `review' - both of which, after De Garis' case,
`indicate a private purpose behind [the activity] on the part of the user of the material, not the supplying of copyright matter to a customer'.
[81] The word `comment' potentially bridges the gap between `private' and `public' purposes, by allowing (particularly in an artistic context) for individual expressions, whether aesthetic or political, to take shape in a public realm. And whereas `criticism' (sometimes confused with `comment') is institutional - in the sense that the activity implies some form of worded articulation and a systematic method for analysis of particular subjects - `comment' is social, not necessarily verbal or literary, and available to a wider number of participants with potentially diverse interests and agendas.
[82] The fact, however, that the defendant was engaged in `comment' alone should not automatically excuse the infringement: certainly, under the existing fair dealing provisions, other criteria (`matters') for determining the degree of `fairness' of the appropriation will need to be considered. [122] Already, some of these criteria appear to duplicate the common law factors for determining `substantiality' - examples being the `nature of the work' and the `purpose and character of the dealing'- but it is arguable that the very codification of such factors may ensure a more consistent approach which, at any rate, considers the wider context of the infringing act. Arguably, the built-in framework of structured discretion embodied in the fair dealing provisions may enable judges to resolve conflicts more sensitively, and with regard to all the circumstances of the defendant's taking. Should this be so, it is suggested that the substantial part requirement in section 14 of the Act be subsumed under the fair dealing provisions.
[83] In this way, the codification of `comment' as a defensible fair dealing purpose could radically change the existing judicial approach in relation to the substantial part requirement in both structural and substantive terms. This is because fair dealing ultimately looks to whether the infringement as such should be excused on policy grounds, whereas the prevailing approach looks to whether the appropriation legally or `objectively' warrants liability on the basis of its `substantiality'.
5 Conclusion
[84] As an important factual element of copyright infringement, the question of `substantiality' is often litigated but rarely satisfactorily resolved. Significantly, the predominance of an ad hoc method of analysis encourages inconsistent and widely discretionary decision-making. Further, by blurring the line between the `reality' of the infringing act and legal abstractions of it, the courts have been able to characterise `substantiality' by reference to proprietary notions of copyright which have little basis in `real-life' terms.
[85] In this regard, the absence of a requirement of harm to the plaintiff, the extension of protection to `ideas', and the assessment of `substantial similarity' without regard to the context of the infringement - are all discernible aspects of a judicial framework which abstracts the notion of `substantiality' for the purpose of justifying copyright protection on proprietary grounds. When the existing framework is applied to digital sampling of music and art - one example only of numerous cultural practices affected by the operation of copyright law - the results are confusing, restrictive and in some instances contrary to the public policy of encouraging the creation and dissemination of works.
[86] If, in a digital environment, `the analogy of the copy...has ceased to exist' [123] , then correspondingly our legal conceptions of `substance' and `substantiality' will need to change. One way of achieving reform may be to transpose the `substantial part' inquiry onto a policy-based framework, such as that currently operating under the fair dealing provisions of the Copyright Act. By inserting a broad defence of `comment', and thereby enabling the fair dealing provisions to take over, some measure of structured discretion may be introduced into the existing methodology. This may allow, potentially, for a re-definition of `substantiality' which bears a more immediate relationship to the infringing act. More importantly, however, it may well pave the way a more satisfactory balance between the need to protect artists' livelihoods and the socially desirable goal of allowing access to cultural artefacts as a means of enabling people to understand the connection between themselves and their environment.
2 In Western art, the piecing together of recognisable objects to make a new work (`collage') was born during the Cubist movement (c. 1906- 1925). However, `agricultural and technologically advanced ancient societies' are also known to have practised a form of `picture-making and image building' similar to the collage of today. See Wolfram, E, History of Collage (New York: Macmillan, 1975) 7. In classical music, direct `borrowing' was a common practice during each of the periods of the Western musical canon. JS Bach, for example, borrowed extensively from his contemporaries, who included Corelli, Albinoni and Vivaldi. See Carrell, N, Bach the Borrower (London: Allen & Unwin, 1967) 227-365. More recently music sampling, developed more than a decade ago, has taken the popular music world by storm. For a general discussion on the debate surrounding this practice, see Sanjek, D, `Don't have to DJ No More: Sampling and the "Autonomous" Creator' (1992) 10 Cardozo Arts & Entertainment Law Journal 607. Back to Text.
3 See generally Carlin, J, `Culture Vultures' (1988) 13 Columbia-VLA Journal of Law & the Arts 103 (`Appropriation' is not only an artistic technique by which artists copy/borrow/quote elements from another's work: it is also a philosophical position from which artists critique social values and boundaries `deliberately set up as a more or less permanent feature of the environment all of us inhabit'.) Back to Text.
4 Rubin, W, Dada, Surrealism and their Heritage (1967) 49; quoted in del Peral, S, `Comment-Using Copyrighted Visual Works in Collage: a fair use analysis' (1989) 54 Albany Law Review 147. Back to Text.
5 `Jazz musicians do not wiggle two fingers of each hand in the air, as lecturers sometimes do, when cross-referencing during their extemporisations, as on most instruments this would present some technical difficulties'. Oswald, J, `Bettered by the Borrower: The Ethics of Musical Debt', (Winter, 1987) Whole Earth Review 104; quoted in Sanjek, above n. 2, 607. Back to Text.
6 Hamilton, M, `Appropriation Art and the Imminent Decline in Authorial Control over Copyrighted Works' (1994) 42 Journal of the Copyright Society of the USA, 93-95. Back to Text.
7 For example in the case of Lewis Galoob Toys v Nintendo 964 F2d 965 (9th Cir 1992), the device at the heart of the dispute - the Game Genie - enabled the player of the game (the consumer) to also be the `creator' in the sense that s/he controlled the environment of the game, but at the same time could also, theoretically, be liable for infringement. Other successful computer games, such as the classic `Load Runner', have literally adopted this consumer/creator concept as have `virtual reality' products generally. Similarly in music, digital technology afford `the consumers of recorded music...a range of options for the recontextualisation of preexisting compositions: they can take material from one format and transfer it from a given context to another, thereby creating their own `mixes'; alter speed or pitch or juxtapose distinct recordings through mixers or filters; or manipulate the recording on an adaptable turntable.' D Sanjek, above n 2, 608. Back to Text.
8 For example, copyright in a landscape painting would protect the `fixed gaze' manifested therein, although it also required that the physical painting be a fixed object (`in a material form'). Back to Text.
9 Professor Sam Ricketson eloquently explains the transition thus: `The original manifestation of the "work" will have little, if any immediate meaning to humans in this context...and, even where this occurs, it will often only be through the transient means of a flickering screen. The analogy of the copy, so central to...traditional copyright doctrine, ceases to exist, although there can be no doubt that the work is still "there", in its digital embodiment, and can be recalled in human-readable form in an instant.' Ricketson, S, `The International Legal Environment: National Laws and the Berne Convention, Enforcement and Sanctions', Copyright in the Asia Pacific Region: Reprography and Digital Copying (IFRRO Conference Paper, January1995) 24. Back to Text.
10 For example, how would a `digital museum' such as that being built by the Museum of Sydney using digital imaging technology, police break-ins and enforce the copyright of those artists exhibited? From photocopiers to computer software to the information superhighway, copyright law has historically had difficulties with the characterisation of new technologies to be included within its borders. At present, these problems are only partly being solved by the enactment of legislation, reform in this area `being made all the more difficult because of the historic avoidance of elaboration of copyright principles, that started with the uneasy denial of a common law basis to the law.' Bowrey, K, `Copyright Law Reform - dealing with the unfamiliar' (1995) 18(2) University of NSW Law Journal 23, 26. Back to Text.
11 It was not prohibited, for example, under the Literary Copyright Act 1842 (UK), to make multiplications of parts of books `except in the single instance of "parts of a volume."'See Copinger, W, Copinger & Skone James on Copyright 11th ed (London: Sweet & Maxwell, 1971) 8-25. Back to Text.
12 (1878) 3 App Cas 483. Back to Text.
14 In the UK, the requirement of `substantial part' first appeared in statute in the Copyright Act 1911: see Hawkes & Son (London) v Paramount Film Service Ltd [1934] 1 Ch 593, 605. Back to Text.
15 See Blackie & Sons Ltd v Lothian Book Publishing Pty Ltd [1921] HCA 27; (1921) 29 CLR 396 at 403, Joy Music Ltd v Sunday Pictorial Newspaper Ltd [1960] 2 WLR 645 at 648, and Hawkes v Paramount at 595. Back to Text.
16 The Macquarie Dictionary defines `substance' as: `that of which a thing consists, matter or material'; the actual matter of a thing, as opposed to the appearance or shadow'. A dictionary definition, however, has never been used in any judgments thus far. Back to Text.
17 Blackie v Lothian Book, above n 15, 400. See discussion below n 52-61 and accompanying text. Back to Text.
18 Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273, Bauman v Fussell & Ors [1978] RPC 485. See discussion below, n 35-51 and accompanying text. Back to Text.
19 See n 77-94 below and accompanying text. Back to Text.
20 Blackie v Lothian Book, above n 15, 402. Back to Text.
21 `The defendant is not at liberty to.take away the result of another man's labour or, in other words, his property': Harman Pictures v Osborne [1967] 1 WLR 723, 732. Rejecting the argument that the copyright monopoly may, in some instances, unfairly restrict trade, Lord Devlin in Ladbroke v William Hill (above n 18, at 291) stated that `The law does not impinge upon freedom of trade; it protects property. It is no more an interference with trade than is the law against larceny. Free trade does not require that one man should be allowed to appropriate without payment the fruits of another's labour, whether they are tangible or intangible. The law has not found it possible to give full protection to the intangible, but it can...protect the intangible when it is expressed in words and print.' Back to Text.
22 One example of a judgement sprinkled with such words is Ravenscroft v Herbert [1980] RPC 193, 203-7. Back to Text.
23 Recently, the property-based approach appears to have been justified in the context of computer software copyright, where conventional interpretations of copyright law cannot adequately protect such works. However, as some critics point out, judicial caution must be exercised when applying these decisions (and policies) in an artistic context lest we create `a Procrustean bed that could have computer copyright law cut artists off at the knees'. Versteeg, R, `Jurimetric Copyright: Future Shock for the Visual Arts' (1994) 13 Cardozo Arts and Entertainment Law Journal 125. Back to Text.
24 Copying may be circumstantially proved by establishing the existence 'objective similarities' and some `causal connection' between the works (for example, `access'). This is sufficient to establish a prima facie inference of copying: Francis Day & Hunter Ltd v Bron [1963] Ch 587. Back to Text.
25 The vesting of ownership of copyright in a work involves a complex fusion of copyright and contract law, and thus outside the scope of this essay. Back to Text.
26 Section 14 of the Copyright Act 1968. Back to Text.
27 `Reproduction' is not identical to `copying': reproduction is only one of a number of potentially infringing acts but not, as `copying', an essential element of copyright infringement. However, the definition of reproduction is very similar to that of circumstantial copying: `The notion of reproduction involves two elements - that the infringing work sufficiently resembles the copyright work and that it was produced by the use of the copyright work Computer Edge Pty Limited v Apple Computer Inc (1986) 60 ALJR 313, 317 (per Gibbs CJ). Note also that the requirement of substantiality extends beyond reproduction to apply to adaptations and derivative works as well (but not to the definition of `publication' of a work): s.14(2). Back to Text.
28 Autodesk v Dyason, see below n 53. Back to Text.
29 A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1996) 34 IPR 306. Back to Text.
31 Hawkes v Paramount, above n 14, 603; Blackie v Lothian Book, above n 15, 403. Back to Text.
32 However the courts have always been reluctant to determine liability for infringement by reference to the quantity of the taking: `When it comes to quantity, it must be very vague...It is not only quantity but value that is always looked to. It is useless to refer to any particular cases as to quantity'. Bramwell v Halcombe (1836) 3 My & Cr 737, 738 (per Lord Cottenham LC). Back to Text.
33 Ladbroke v William Hill, above n 18, 293 (per Lord Pearce). Back to Text.
34 See, eg., Re Greenfield Products Pty Ltd (1990) AIPC para. 90-667 (clutch plates and pulleys forming a large part of the plaintiff's work were `objects of a fairly commonplace kind' and therefore unprotected against infringement); Dixon Investments Pty Ltd v Hall (1990) 18 IPR 490, 496 (`the courts are less ready to find infringement when the subject matter of the work in which copyright subsists and its representation are of a simple and straightforward nature'). Back to Text.
35 Ladbroke v William Hill, above n 18, 293. Back to Text.
36 Ricketson, S, `The International Legal Environment: National Laws and the Berne Convention' Copyright in the Asia Pacific Region: Reprography and Digital Copying (IFRRO Conference Papers, 1995), 20-21 (comparing levels of originality/creativity require, by various countries within the Asia-Pacific region, for copyright subsistence). Back to Text.
37 The difference between legal `originality' and artistic `creativity' is demonstrated by the case of Bauman v Fussell & Ors [1978] RPC 485. The Court of Appeal held there that the defendant painter had not infringed copyright in the plaintiff's photograph depicting a cock fight, even though it was accepted that the plaintiff had copied the relative positions of the birds. Yet photographers would no doubt argue that the element of `composition' (accidental or otherwise) alone forms a large part of the `originality' of any photograph. Romer LJ accepted this view and argued for a finding of infringement on the ground that, in this case, the positioning of the birds was striking enough to captivate and `inspire' the painter and should therefore be considered `original'. Back to Text.
38 [1964] 1 WLR 273. Back to Text.
40 Re: Greenfield Products Pty Ltd and: Rover- Scott Bonnar Limited (Federal Court of Australia, Pincus J, 1990) [Internet] URLhttp://www.austlii.edu.au/do2/disp.pl/au/cases/cth/federal_ct/ unrep4166.html. Back to Text.
41 Ibid para 89. Back to Text.
42 [1978] RPC 485. Back to Text.
43 Ibid 492 (Romer LJ, dissenting, quoting Dale J at first instance). The majority added that the positioning of the birds was `nothing more than the presentation of an idea or conception', and that `the birds are interlocked in a way very similar to the photo - but any birds fighting would get similarly interlocked' (at 488). Back to Text.
45 [1964] 1 WLR 273, 277. Back to Text.
46 A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1996) 34 IPR 306, 318. The facts involved an alleged taking by Off Road of parts of A-One's motorcycle spare-parts catalogue, which was itself a pirated but reworked and updated version of the manufacturer's catalogue. A significant portion of Drummond J's judgement focused on the argument that copyright subsisted in A-One's catalogue notwithstanding that it consisted mostly of copied material (306-318). The question of infringement was dealt with in much less detail, his Honour reaching the conclusion that because copying was conclusively proved by witness testimony, it `can be assumed [that such copying] consisted of material selected by the application of skill, judgement and labour by A-One's people' (at para 80). Ladbroke was applied in this context to support the reasoning that because the defendant had copied both original and pirated material from the plaintiff's work, the `whole' and therefore `substantial part' of the `original' work was thereby reproduced. Back to Text.
47 Ladbroke v William Hill, above n 18, 293. Back to Text.
48 A-One v Off Road, above n 46, 317. Back to Text.
50 Lahore, J, Intellectual Property in Australia: Copyright & Designs (Sydney: Butterworths, 1996-) 4.11.355. Back to Text.
51 The section provides that: `In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method for operation, concept, principle or discovery, regardless of the form in which it is described, explained, illustrated or embodied in such work.' In US case law, this provision has been used to raise the `defence' that only the idea of a work has been copied: Baker v Selden, 101 US 99, 102-3. Back to Text.
52 [1992] HCA 2; (1992) 173 CLR 330; [Internet] URL: http://www.austlii.edu.au/do2/disp.pl/au/cases /cth/high_ct/ 173clr330.html. Back to Text.
53 Ibid para 9-15 (per Dawson J). Back to Text.
54 Ibid para 4 (per Mason CJ, Brennan & Deane JJ). Back to Text.
55 Ibid para 22 (per Dawson J). Back to Text.
56 See below n 109 and accompanying text. Back to Text.
57 An appeal was later launched on the ground that the High Court did not allow the defendants sufficient opportunity to argue its position under the `substantial part' requirement. The appeal was rejected by majority (Mason CJ dissenting): Autodesk v Dyason [1993] HCA 6; (1993) 176 CLR 300. Back to Text.
58 [1992] HCA 2; (1992) 173 CLR 330, para 26 (per Dawson J). Emphasis added. Back to Text.
59 [1993] HCA 6; (1993) 176 CLR 300, para 25 (per Gaudron J). Back to Text.
60 Dawson J emphasies this point in his statement of the facts of the case, above n 54. Back to Text.
61 Eg, Ancher v Hooker Homes Pty Ltd [1971] 2 NSWLR 278, 297 (Street J holding, inter alia, that `In deciding whether there was or was not a substantial similarity....such as to constitute an infringement of copyright, the court is entitled and indeed bound to form and act on its own original opinion.') Back to Text.
62 In the United States, the doctrine of `substantial similarity' forms a `judicial standard of copyright infringement' which determines whether there has been `mere copying' or `illicit copying...amounting to unlawful appropriation'. The test, expounded in Krofft Television v McDonald's Corp 562 F2d 1157 (9th Cir 1977), is two-pronged: an `objective' test for factual similarities (determined by `observation of specific, measurable criteria with the assistance of expert testimony'), and a `subjective' assessment whether or not the `reasonable person' would be able to discern the similarities attributable to copying as substantial (the `audience test'). See generally Cunningham, T, `Extending Shaw v Lindheim: substantial similarity and the idea-expression distinction in copyright of non-literary subject matter' (1993) 55 University of Pittsburgh Law Review 239. Back to Text.
63 John Richardson Computers v Flanders [1993] FSR 497, 526-7 (Chancery Div). Thus, if the similarities form `so large a portion of the work.[it may be] fair to infer that this was of a qualitative addition to a quantitative significance': Re Accounting Systems 2000 v CCH Australia Ltd (1993) 114 ALR 355, para 47 (per Lockhart & Gummow JJ). In Ancher v Hooker Homes Pty Ltd [1971] 2 NSWLR 278, Street J further blurred the line between substantiality and similarity by suggesting that `the determination of whether there has been a reproduction of a substantial part involves two aspects: first, an actual copying, and secondly, the production thereby of something closely resembling the original' (at 282). It is arguable however, that beyond the determination as to whether `copying' has occurred, the notion of similarities between two works should play no role in the characterisation of the `quality' or substantiality of the part allegedly appropriated. Back to Text.
64 Ibid, 286: `The decision upon the issue of similarity is an original decision for the court itself...It is to be reached upon an assessment of such similarities...as appear to the court between the plans or buildings under consideration' (emphasis added). Back to Text.
65 Or at least utilised only so far as the court requires specialist information in order to comprehend the works. Ibid, 286. Back to Text.
66 This is, arguably, an application of only one arm of the US `substantial similarity' test; above n 62. Back to Text.
67 [1934] 1 Ch 593. The facts involved a newsreel made by the defendant, the subject of which was a school opening attended by the Prince of Wales. In the recording, the plaintiff's musical work, entitled `Coloney Bogey's March', was played by the school band and subsequently reproduced and broadcasted with the newsreel. Back to Text.
69 The sounds especially would have been of particular interest to a public, which has only seen the introduction of sounds in cinematography only a few years earlier. Warners Bros, in fact, released the first `100% talkie' in 1929. Back to Text.
70 The court unanimously rejected this argument, citing Lindley LJ's usual threat that `the intention of an infringer is immaterial': Hanfstaengl v Empire Palace [1894] 3 Ch 109, 128. Back to Text.
71 Romer LJ stated at 608 that he `cannot think that the defendants, in doing what they have done, have caused any real damage to the plaintiffs', and indicated his concern that `our decision will no doubt hamper the defendants in their production of news films.' Back to Text.
72 Ibid 606 (per Slesser LJ); also at 609 (Romer LJ stating that the defendants have reproduced `the air which everyone who heard the march played through would recognize as being the essential air of the "Colonel Bogey" march'); and at 604 (Lord Hanworth stating that `it appeared plain to us that there is an amount taken which would be recognized by any person.') Back to Text.
73 Section 42 of the Copyright Act 1968 now deems news footage of this kind a `fair dealing' if the plaintiff's work has been reproduced `for the purposes of, or associated with, the reporting of news': sub-s.(1). With respect to musical works the court must further be satisfied that the playing of the work forms `part of the news being presented': sub-s (2). It seems, then, that to this extent Australian statute has effectively over-ruled the decision in Hawkes v Paramount. Back to Text.
74 Blackie v Lothian Book, above n 15, 402-4 (per Starke J). Back to Text.
76 [1921] HCA 27; (1921) 29 CLR 396. Back to Text.
78 Ravenscroft v Herbert & New English Library Ltd [1980] RPC 193 at 207. The case involved alleged appropriations from the plaintiff's quasi- historical work on the origins and use of the `Hofburg spear'. The defendant, a spy- fiction writer, used passages from the work in his book entitled `Spear of Destiny'. The defendant had copied passages said to contain historical facts only, and placed them at the beginning of some chapters in an attempt to `give an air of credence' to his novel. Brightman J found infringement on the basis that by doing so he had saved himself substantial amounts of research. Back to Text.
79 [1921] HCA 27; (1921) 29 CLR 396, 403-4. Back to Text.
80 Jarrold v Houlston (1857) 3 K&J 708 cited in Ravenscroft v Herbert above n 82. Note: an adjunct to this is the `rule' that the defendant's `intention' is immaterial to the fact of appropriation, a rule which has been cited in so many cases but just as often undermined by judicial discretion to the contrary. Back to Text.
81 [1960] 2 WLR 645. Back to Text.
82 The test of literary parody was stated to be: 'whether the writer had bestowed such mental labour upon the material he had taken and had subjected it to such revision and alteration so as to produce a an original work' (ibid, 645). Arguably, the conception of parody thus further reflects and reinforces the court's view of copyright as production of property. This time, though, the satirist becomes master of the (copied) material on the basis that he or she had subjected it to `revision', but the material itself remains excluded from the public domain. Back to Text.
84 The majority accepted the trial judge's reasoning which heavily relied on an aestheticisation of the painting's `qualities' over that of the photograph's. In this respect it was held that the colours, `feeling and artistic character' of the painting were `heightened', whereas, `although the photograph is a brilliant one, there is not the life in it.' [1978] RPC 485, 491. Back to Text.
85 See, eg, Blackie v Lothian Book, above n 15, at 403: `the books in question here are in direct competition for use in schools, and for students in the Universities of Australia, and were intended so to be.' Emphasis added. Back to Text.
86 Hawkes v Paramount, above n 14, 603. Back to Text.
87 Lape, L, `The Metaphysics of the Law: Bringing Substantial Similarity Down to Earth' (1996) 98 Dickinson Law Review 181. Back to Text.
88 In Australia, however, the purpose of copyright law is nowhere stated in the Copyright Act (or, indeed, in the Constitution). The United States Constitution, on the other hand, provides in art. 1 8 that Congress intends `[t]o promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.' Back to Text.
89 Although there may be other reasons behind the plaintiff's action in seeking an injunction (other than simply to stop the defendant `trespassing' on the work) such as a perceived need to assert paternity, or some other `moral rights' over a work for which there is as yet no remedy. See Lape, above n 87, 194-7. Back to Text.
91 Above n 14, 597-9. See also n 71 above (the introduction of sound in newsreel making and cinematography generally). At 597-8 of Hawkes, Eve J's statement of the case includes a detailed explanation of the mechanics of making and projecting sound on film. Back to Text.
92 The `danger' here is that, `certain small exhibitors do, if they can get hold of news films, use the soundtrack for the purpose of what we call a non-synchronous interlude...probably just [as] a means of getting over the coming in and going out of the people [in the theatre]; and they do not worry very much about the value of that sound.' Ibid 604 (per Lord Hanworth). Back to Text.
93 See Blackie v Lothian Books, above n 15, 405 (where the court orders that the infringing words be severed from the rest of the defendant's work). Back to Text.
94 At the time of writing, the only sampling precedent in the US appears to be that of Grand Upright Music Ltd v Warner Bros Records 780 F Supp 182 (SDNY 1991). The case involved alleged infringement of a Gilbert O'Sullivan song (`Alone Again') by rap artist Biz Markie, who admitted to sampling it in his album `I Need a Haircut'. Biz Markie was found to have infringed on an almost strict liability basis (as he admitted to copying) and subsequently issues of substantiality and applicable defences were not investigated. For detailed discussion of this case, see Kravis, R, `Does a Song by Any Other Name Still Sound as Sweet?: Digital Sampling and its Copyright Implications' (1993) 43 The American University Law Review 231, 262-71. Back to Text.
95 Especially if the work is stored on a floppy disk, but even if stored in a computer's read-only memory it may still be considered a material embodiment because arguably `capable, with or without the aid of some other device, of being reproduced from the article or thing': s. 24. Back to Text.
96 But this cannot be verified. On the other hand, in Chatterton v Cave, above n 12, the House of Lords stated at 498-9 that: `"Part" is not necessarily the same as "particle", and there may be a taking so minute in its extent and so trifling in its nature as not to incur the statutable liability.' Subsequent cases have failed to clarify whether the substantial part requirement is, as such, a hurdle requirement for infringement or merely a de minimis defence, the onus of proving which must be discharged by the defendant. Back to Text.
97 See above n 41 and accompanying text. Back to Text.
98 Eg, in Smith v George E. Muehlebach Brewing Co, 140 F Supp 729, a commercial jingle consisting of repeated dominant chord progressions (do-sol) was held to be a merely mechanical exercise unworthy of copyright protection. Cf. Smith, R, `Arrangements and Editions of Public Domain Music: Originality in a Finite System' (1983) 34 Case Western Reserve Law Review 104, 126-130 where the author argues that the court's struggle to identify and define musical `originality' in what is essentially a finite system has resulted in a removal of basic musical `building blocks' from the public domain. Back to Text.
99 Eg, Bright Tunes Music Corp v Harrisongs Music 420 F Supp 177 (SDNY 1976), where a US court found against George Harrison for `subconsciously' appropriating a 3-note motif from Ronald Mack's `He's So Fine'. The motif consisted of a descending minor third (sol-mi) followed by a major second interval (mi-re), not a common musical phrase but a very short one nonetheless. Back to Text.
100 In this regard, it should be noted that many samples consist of only a note or two, for example a drum beat used as a background rhythm, or a guitar note. Larger samples, of course, involve more complex considerations with reference to the purpose of the taking and the character of the use: see below n 122-124 and accompanying text. Back to Text.
101 Simon Frith, `Music and Morality' in Simon Frith (ed.) Music and Copyright (Edinburg: Edinburg University Press, 1993) 14. Back to Text.
102 For example Romer LJ in Bauman v Fussell, above n 18, argued for protection of the plaintiff's photograph of a cockfight on the ground that its subject matter, the `striking' attitudes of the birds, Back to Text.
103 In Dixon Investments, above n 34, the Full Court of the Federal Court stated that: `sometimes perspective or a balancing of features' may constitute a substantial part of a architectural drawing.' Back to Text.
104 Eg, Carlin, J, below n 109. See also Nimmer, M & Nimmer, D, Nimmer on Copyright (New York: M Bender, 1978-) 1.10[D]. Back to Text.
105 Apple Computer Inc v Microsoft Corp, 24 USPQ 2d 1081 (ND Cal 1992). Back to Text.
106 Nimmer & Nimmer, above n 105, 1.10[C] at 1-82. Back to Text.
108 Art critic John Carlin explains that whereas `humans have always struggled to create virtual realities through art', there is, in the 20th century, `no such thing as a natural landscape that we grew up in. Instead there is something closer to a "signscape".' He argues that, in the century following the creation of copyright law, art has seen a `shift from a mimetic basis of reproduction to a semiotic basis of reproduction. We no longer look at nature as something external that exists, that there is a physical tangible nature out there from which we reproduce objects. Instead, we consciously compare sign systems.' From Carlin, J & others, `Property Rights in Art: a Round-table Discussion', (1995) 13 Cardozo Arts and Entertainment Law Journal 91, 98-99. Back to Text.
109 As yet, however, there is no defence for `comment' in the `fair dealing' provisions of the Copyright Act 1968 (Cth). See Part 3 of this article. Back to Text.
110 Autodesk v Dyason, above n 57, para 22 per Dawson J. Back to Text.
111 (1986) 10 CPR 1, 24. Back to Text.
112 To clarify: although the question of similarities will be a primary issue in the determination of whether or not `copying' has occurred, the question in relation to `substantiality' is whether the similarities found are considered substantial enough to warrant liability. Back to Text.
113 (1987) 9 IPR 440; (Federal Court of Australia, Bowen CJ, 27/11/1987) [Internet] URL: http://www.austlii.edu.au /do2/disp.pl/au/cases/cth/federal_ct/unrep3041.html. Back to Text.
114 The case involved a music compilation made by the defendant which consisted of cover versions of musical hits by artists whose copyright was owned by the plaintiff. The plaintiff argued that s.85(1) of the Copyright Act applied since a `copy' could be said to be a `production of similar vibrations in the air' producing the `same sounds' (para. 3). Bowen J disagreed, holding that `the right given to make a copy...must refer to a copy of the actual sounds embodied in the original sound recording and not to something produced later by other performers by way of imitation of the original.' His Honour emphasised that sound recordings are to be treated quite differently from their underlying musical works since it did not appear the intention of Parliament to prevent `the imitation sounds produced by different performers at a later point of time' (paras 4-5). In the United States' Code (17 USC s. 114(b)), the word `actual' is use to limit the owner's exclusive right only to the reproduction of the `actual sounds fixed in the recording'. See Albright, G, `Digital Sound Sampling and the Copyright Act of 1976: Are Isolated Sounds Protected?' (1992) 38 ASCAP Copyright Law Symposium 49, 79-82. Back to Text.
115 Andy Warhol's works may be used as a general example. Nicknamed the `patron saint of twentieth century appropriation and semiotic art', Warhol strived to replicate the objects he appropriated so that they looked like the real things found, presumably, in real life: `He didn't want them to have a spark of originality. He wanted them to look like what he was appropriating.' See `Property in Art: a roundtable discussion', above n.109, 101-2. Back to Text.
116 For a recommended approach, see generally Kim, A, `Expert Testimony and Substantial Similarity: Facing the Music in (Music) Copyright Infringement Cases' (1995) 19 Columbia-VLA Journal of Law and the Arts 109. The author argues for full admissibility of such evidence, on the basis that `by not providing the factfinder with expert guidance, the system could trap as infringers those whose musical creations bear no true substantial similarity to the complainant's work but [merely] seem to do so [for various reasons]' (p 128). Back to Text.
117 If Da Vinci sued, an interesting case would ensue indeed. See Yonover, G, `The `dissing' of Da Vinci: the imaginary case of Leonardo v Duchamp: moral rights, parody, and fair use' (1995) 29 Valparaiso University Law Review 935. Note, however, that European-style `moral rights' is yet to be officially introduced to Australian copyright law, although many artists argue that `the time is ripe': Express, ABC TV, Monday 18/8/97 10pm. Back to Text.
118 Blackie v Lothian Books, above n 15, at 406. Back to Text.
119 See above n 88. Back to Text.
120 Hawkes v Paramount, above n 14, 603. Back to Text.
121 Comment, however, is recognised as a defence against a defamation claim. In common law defamation, a valid defence is made out if the alleged defamer has fairly (ie., honestly) made comment on a matter of public interest, the comments being based on true facts and not rumour or conjecture: see Gardiner v John Fairfax & Sons Pty Ltd (1942) 42 SR(NSW) 171. Back to Text.
122 Such as the purpose and character of the dealing, the possibility of obtaining license, the effect of the dealing on the market for or value of the plaintiff's work: s 41(2) & s.103C(2). Back to Text.
123 Ricketson, above n 9, 24. Back to Text.