IIMS 94 contents
[ IIMS 94 contents ]

The law and its relationship with multimedia programming for computers

E John Picton-Warlow and Michael Paterson
Picton-Warlow & Co, Western Australia

Preface

The computer was born into a legal world itself in the process of rapid change. It has helped to focus legal attention on some issues which were already well established and has also called for a re-appraisal of certain other areas of law. The impact of what has been called "the new Equity" has been considerable and the Courts have been increasingly willing to look to matters of conscience in their approach to issues of contract and of other obligations. That said, however, there is no doubt that a lack of understanding amongst judges of precisely what a computer is and how it operates has caused confusion in judgments. It seems however that that early confusion is being resolved.

There seems to be no rational reason why, for instance, the expression of an idea in binary language form should not be a "work", or that copyright should not exist in an expression of that work through the arrangement of magnetic impulses on a disk yet the early decisions said that such was the case. As a result Parliament enacted changes to the Copyright Act to ensure that computer programs could be protected. The earlier judgments suggested that making an electronic copy on a ROM disk would not breach copyright because the judges thought that such a copy was not a "Work". They did hold that as soon as a printed copy was made there would be a breach.

After the passing of the amendments of 1984 the Court has taken a wide view of the amendments and has held that any reproduction of a work whether or not capable of being seen by the human eye will come within the ambit of the Act and the Court extended protection in a case where there had been a "reverse engineering" of a device (Autodesk Inc v Dyason) [1].

Intellectual property is governed by a series of laws. These are copyright, patents, designs, trade marks and the law of confidentiality. These form a complex and overlapping set of rules which are at times somewhat contradictory. Underlying these laws is a tension between the desire of society to obtain access to the thought of its members on the one hand and the desire of the originators of thought to maintain a right to reward for their creative endeavours, on the other. One suspects that the legislation reflects considerable reluctance on the part of those who rule to allow the creators rights of exploitation coupled with a realisation that if authors do not have some protection then they will not publish the results of their thought. The results are a confusing and arbitrary set of rules.

All of this has now assumed greater moment that ever before as the age of information comes upon us. Recent studies of Australian industrial performance point to a failure of this nation to develop its inventions and to make effective use of its knowledge systems [2]. At least part of that problem must come from the confusions resulting from the present state of the laws as they apply to the evolution of computer technology. Consider the following web of rights:

Type of workPeriod
Copyright in published artistic works, paintings, sculptures, drawings, photographs, buildings and works of artistic craftsmanshipthe life of the author plus 50 years
works not published during the author's lifetime50 years from publication
Items covered by Crown Copyright50 years from creation
Sound broadcasts50 years from the date of first broadcast
Performances20 years
Photographs50 years from first publication
Films and Sound Recordings50 years from publication
Patents16 years
Trade marksindefinite
Designs1 year from registration, thereafter 3 rights to renew for periods of 5 years, making 16 years in all.

How one can distinguish in logic between a broadcast or a film on the one hand and a performance on the other is beyond rational explanation? It should be noted that the law shows a considerable difference between its treatment of intellectual property and any other form of property right. Ownership of chattels, land or rights in action (such as shares) is absolute for the lifetime of the possessor of those rights whereas ownership of intellectual property is the subject of protection limited in the following ways:

    there is no protection of ideas, merely of the methods of expressing those ideas;

  1. there are the above limitations in time;

  2. the methods of registering industrial designs and patents are such that in many cases the inventor finds his inventions in public domain before he is aware of his position. The merest publication of the existence of the invention may be enough to deny protection and the law does not allow of any flexibility. In any other field this law would be considered unconscionable.
The most important legal issue in the world of computer programs is copyright, patent and confidentiality laws. This is because many programs are now recognised as being subject to copyright or patents and where they are not protected in such ways there may be protection arising from the circumstances in which information is revealed to others.

There is some confusion where the programs are imbedded in industrial devices when they may be more appropriately dealt with as either patentable or subject to design laws. There is a saving provision in the Copyright Act to the effect that if an attempt is made to register a design and such attempt is refused then the copyright will continue to exist. If on the other hand a copyright representation is converted into a three dimensional form and dealt with in trade without having been registered then all protection will be lost should it turn out that there should have been a registration.

It will be helpful to summarise the terms of the Australian Copyright Act as a basis for the analyses of its effect on the growing complexity of rights involved in the development of multimedia programming.

What is copyright?

Copyright generally

What is Copyright? Unlike the law of contracts and the law of negligence which are said to be part of the naturally arising "common law" (expounded by the judges), copyright is wholly a creature of Statute. Without the Copyright Act 1968 there would be no copyright protection in Australia. The original copyright legislation dates back to the time of the first printing presses when the common law proved deficient in protecting the interests of authors in the works they produced.

The section of the Copyright Act 1968 that defines copyright in relation to works is section 31 which the copyright owner has the exclusive right to do the following in relation to a work: reproduce it, publish it, perform it in public, broadcast it, transmit it by a diffusion service, make an adaptation of it, and do any of the first five these in relation to an adaptation [3]. Copyright also subsists in relation to some subject matter other than works, namely sound recordings, cinematograph films, sound broadcasts (radio), television broadcasts and published editions of works. Sections 85 to 88 prevent, in relation to this subject matter, such things as copying it, causing it to be heard in public and broadcasting of it [4].

Some examples of actions that only the owner of copyright in a work, or special subject matter other than a work, can perform in relation to the creation and operation of multimedia applications are:

Copyright is a bundle of rights. These rights are intangible - you cannot see, touch, hear or taste them, but they exist. Without a means of enforcing those rights, namely the courts, they effectively do not exist. If you cannot enforce your rights, you effectively have no rights. Thailand and what were previously the states of the USA could be considered places where this is the case.

The word "copyright" is not defined in the Copyright Act. However the term has been the subject of extensive court decisions over many years. The international efficacy of the law of copyrights arises from two treaties. The oldest and most commonly ratified of which is the Berne Convention and the other being the Universal Copyright Treaty. A consequence of these treaties is that in some areas national parliaments are constrained in changes which they may wish to make to the law. This difficulty is expressly referred to by the Copyright Law Review Committee in its draft report released in June 1993 [5].

Copyright does not apply to ideas but only to the expression of ideas. The question whether or not a program is an expression of an idea or not is a source of continuing litigation.

The Act defines works to which copyrights will be attached and then sets out those rights. The word "Work" is given a circular definition as being "a literary, dramatic, musical or artistic work". "Artistic Work" means a painting, sculpture, drawing, engraving, or photograph, whether the work is of artistic quality or not. "Sound Recording" means the aggregate of sounds embodied in a record. "Cinematographic Film" means the aggregate of visual images embodied in an article or thing so as to be capable by the use of that article or thing: (a) of being shown as a moving picture; or (b) of being embodied in another article or thing by which it can be shown, and includes the sounds in the sound track.

Each of Works, and "things other than works" are then separately dealt with and those rights which we know as "copyright" are defined with respect to each. This gives rise to different rights with respect to different types of material. Things other than works include films, videos, television broadcasts and broadcasts by a diffusion service.

Copyright in works

Works themselves are also not all treated in the same way. Literary, dramatic and musical works entitle the owner of the copyright to: It should be noted that there is no exclusive right to make an adaptation of the adaptation. Artistic works have the exclusive right to do items (a) and (b) and also to include the work in a television broadcast and cause material containing the work to be sent out in a diffusion service.

Copyrights in matters other than works

As distinct from Works any copyright in other materials is subject to a pre-qualification that the holder must be a "qualified person'. That means an Australian or someone under Australian protection or an Australian Corporation. The rights granted are:

Subsistence of copyright

Section 32 of the Copyright Act 1968 [6] provides that copyright subsists only in original works that are produced in Australia or by Australians. Section 184 [7], however, extends the application of the ' Act to all signatories of the Berne Copyright Convention, which includes all the major industrialised countries and many others.

Under the terms of s.32, provided the author is a qualified person, a work comes into existence when it is first reduced to writing or some other material form. Sections 89 to 92 cover subsistence of copyright in subject matter other than works. Under these provisions, copyright subsists if the author was a qualified person, the subject matter was made in Australia or the subject matter was first published in Australia.

Originality

For a work to have copyright associated with it, it must also be original. The work need not contain anything new in the way of the idea or concept that it incorporates, it must be an original expression of the idea. It is important to distinguish between an idea and the expression of an idea. For example, consider the algorithm for sorting information called a bubble sort, where the least in the series rises to the top and the greatest sinks to the bottom. It is an idea or a concept. A class of 30 students given the task of writing a program to perform a bubble sort will come up with about 25 different solutions and those that are the same will have been copied! All will be different expressions of the same idea.

Note that if two authors arrived at exactly the same expression of an idea independent of each other, each is an original. Proving that one did not copy from the other is likely to be difficult, however.

Reduced to writing or other material form

The definition of material form in the Copyright Act 1968 provides:
material form, in relation to a work or an adaptation of a work, includes any form (whether visible or not) of storage from which the work or adaptation, or a substantial part of the work or adaptation, can be reproduced.
Although not explicitly stated, I am of the view that a spreadsheet, a word processor document, digital sound recording, digital video and a data base, whether created in RAM or on magnetic or optical media, would be a work in which copyright subsists provided copyright would subsist in a written representation of the information. Having said that, it is possible to argue that that is not the case because, following the reasoning of the Chief Justice of the High Court in the Apple Computer [8] case, works are not literary works until they are reduced to a form perceptible to the human eye. That is a topic of discussion on its own. This argument is tenuous, however, and I believe it could not be upheld by the Federal or High Court, especially given the current Chief Justice of the High Court, Sir Anthony Mason, was one of the two dissenting judges in the Apple Computer [9] case.

Who owns it?

The ownership of copyright material "defaults", to use a computer term, to the author of the material. This gives rise to the question "who is the author?" There are rules which may be summarised as follows:
  1. where an employee creates the material ownership will vest in the Employer;
  2. where the material is created by person not employed but acting on their own behalf or as an independent contractor then, in the absence of agreement, the material will belong to the person creating the work.
As a general rule, the copyright owner is the author of a work. Subsection 35(2) provides:
(2) Subject to this section, the author of a literary, dramatic, musical or artistic work is the owner of any copyright subsisting in the work by virtue of this Part.
Under subsections 97(2) and 98(2) the makers of sound recordings and films respectively are the owners of the copyright. Under paragraph 99(b), the licence holder of a broadcast licence is the owner of copyright of a television or sound broadcast. Under section 100, the publisher of an edition of a work or works is the owner of the copyright.

Subsection 35(5) provides that the owner of copyright in photographs, portraits and engravings that are commissioned is the commissioning party not the photographer or artist. Subsections 97(3) and 98(3) have a similar operation in respect of sound recordings and films.

Subsection 35(4) provides that the employer of a journalists owns the copyright in works produced by the journalist in the course of his employment for the purposes of publication and broadcasting, but not otherwise. Where a work is produced by an employee, acting in the course of his or her employment, the copyright is owned by the employer because section 35(6) provides:

(6) Where a literary, dramatic or artistic work to which neither of the last two preceding subsections applies, or a musical work, is made by the author in pursuance of the terms of his employment by another person under a contract of service or apprenticeship, that other person is the owner of any copyright subsisting in the work by virtue of this Part.
Where an employee creates a work outside the scope of his or her employment, for example outside normal working hours and at home, ownership is likely to be with the employee, not the employer. In the case of an independent contractor engaged to write a program for a fee, the copyright remains with the author and the party paying the fee merely has an implied non-exclusive right to use the program for all the intended purposes. In my experience, this is contrary to common belief in the industry and so is an area where education is needed. It is therefore very important to have the contractor assign the copyright to the contracting party if intention is for the contractor not to retain copyright.

Ownership can be transferred, but only by a written contract. Contracts can be prospective such that copyright in any work or other subject matter produced by a particular person, who would normally be the copyright owner, is transferred at the time of creation to a second party. By this means future copyrights can be assigned.

The question of ownership is often very complex. In a film, for example there will be copyrights in the script, the film itself, the sound track, the choreography, the dramatisation, the still pictures developed from the film and sound recordings developed from the films. These copyrights are separate and often are held by various different people. The result can be a nightmare. In a paper to the Film Maker and Multimedia Conference held by the Australian Film Commission 6-9 October 1993, Messrs Gilbert & Tobin of Sydney drew attention to some good examples of this type of problem. They said:

So the non-linear or interactive aspect of multimedia creates real problems in negotiating multimedia deals. For the film maker these problems also create opportunities. With multimedia any face in a crowd scene can be blown up and frozen; any voice in a chorus can be isolated and amplified, and any clip can be fed into a computer and endlessly modified. Anything can be printed, copied, replayed and reused. Given that numerous people involved in the clip have rights, and given that major multimedia production may include hundreds of such clips, it is not surprising that deep pocket multimedia producers are buying all the content they can find to develop stock holdings of pre-cleared material.

For example, when Eastman Kodak wanted a library of photographs to sell on CD-ROM the company bought up the largest stock photograph house in the industry which had six million images. As it turned out, when Kodak's lawyers looked at the photographer's release forms they found that the stock agency didn't own the magneto-optical rights to images and as a result Kodak had to renegotiate distribution rights with each photographer. However, the point is telling - in the computer industry most computer software is developed in a very competitive and fast paced environment, in order to be the first in the market place.

On the entertainment side things can take a bit longer - the traditional product development cycle of an entertainment product such as a feature film tends to be much longer than computer software product, giving the entertainment lawyer more time to resolve clearing and negotiation of all rights. Partly in response to the short multimedia product cycle, we see growth of new multimedia stock, clip art or publishing houses. For example, LA based Jasmine Multimedia Publishing Inc. sells a CD Rom clip art set consisting of still images, video and audio all with rights for unlimited multimedia use. A multimedia producer can take an image of sound and add it to the start up screen of its package. These clearances include the variety of relevant rights which will be discussed later today, such as moral rights, rights of attribution and the so called right of publicity - the last being the right newly recognised in many States of the United States and associated with a commercial value that a public person or celebrity has in his or her name, likeness or voice. Some States in the US extend this right to non-celebrities and mere mortals such as ourselves, and provide a statutory basis for recovery for non authorised use. However, even clip art multimedia clearances are often limited - product may be cleared for distribution on physical computer media but may or may not include permission for broadcast or publication in printed form. An example from the past: in the early 1950s Disney Studios hired Peggy Lee to sing in The Lady and the Tramp, for which she was paid US$3,200. When some 40 years later Disney released the video version Lee sued claiming Disney did not own the video rights to her voice and songs. The judge agreed, and Lee received more than US$3.2 million in damages for copyright infringement.

They went on to give a further example:
... Warner New Media put together a CD-ROM about the building of the Berlin Wall and wanted to include a clip from West Side Story as background. After licensing the music, the film, the characters, and the personalities, the company found that it was lacking one key copyright: the choreography. Jerome Robbins had a clause in his contract that no choreography from the film could be shown unless it was related to the promotion of the film.
These problems will get more difficult as the developing techniques of multimedia becomes more ubiquitous.

The Copyright Law Review Committee [10] proposes that the existing rules that the author of programs will, in the absence of agreement, be the owner of the copyright, should be changed to provide that the entity or person who commissions the work will be the owner of the copyright. If adopted this will provide great difficulty for a programmer who creates code capable of being used in an object oriented system. It will certainly lead to a proliferation of contracts needed to protect the author/programmer and to enable him to re-use his code for future programs.

Clearly also the programmer will need to continue to control the identity of those who have any rights of adaptation if his capacity to continue to use his own ideas is to be adequately protected. It seems that if the law is to be amended at all it would be better to ensure that the computer programmer has rights analogous to those granted to authors of artistic works to use their own work again provided that such new work does not repeat or imitate the original. That exception needs expansion in the case of object oriented code given that the whole idea of such programming is the repeated use of identical code with slight variations to give new effects.

What rights has the owner?

As we have seen the rights are specific to different forms of copyright however as a general proposition they may be summarised as being:
  1. the right to the exclusive use of the material;
  2. an exclusive right to make copies of the material; and
  3. the sole right to licence others to use the material which right includes the right to define the terms and conditions under which it the material be used.

Need for permission

The owner of the copyright has the associated rights to the exclusion of all others but the owner may license another person to do what would otherwise be forbidden. Without a licence to do so, it would be a breach of the Copyright Act 1968 to:
  1. scan the text of a book into a word processing document or a multimedia application;
  2. scan a picture from a magazine thus producing a computerised copy;
  3. sample a song from a compact disc
  4. copy someone else's computerised picture
  5. rerecord an old tape in digital form;
  6. copy a digital sound recording from one source to another;
  7. reproduce a multimedia application onto a compact disc;
  8. publish a multimedia application;
  9. install a multimedia application by copying parts of it onto the hard disc of a computer;
  10. run a multimedia application, because a copy is made from the hard disk or the compact disc in the memory of the computer
  11. to make available a multimedia application on an electronic bulletin board access to which is charged - a case of causing a work to be transmitted to subscribers to a diffusion service
  12. convert a multimedia application written in English to one written in French - the French version is an adaptation.
  13. copy a computer program into RAM so that it can be run;
  14. copy a document into RAM so that it can be viewed and edited using a word processor;
  15. copy a spreadsheet into RAM so that it can be viewed and edited;
  16. copy a database into RAM so that its contents can be viewed, updated and reported upon;
  17. copy a computer program or computerised information from one disk to another so that the program or computerised information can be installed or backed up.
Because the copyright owner has the exclusive right to do these things, he or she can grant a licence' subject to any condition whatsoever. The potential licensee is free to accept the conditions and obtain the licence or not accept them and market forces will determine whether the conditions are too onerous.

Licence agreements

The following are examples of the subject matter of some of the licence provisions that may be encountered in relation to material needed for a multimedia application:

The extent of use

  1. one copy for private use
  2. multiple copies for internal use only
  3. multiple copies to be incorporated in application sold to the general public
  4. within Australia, or other jurisdiction(s) only
Fee
  1. One off licence fee
  2. Licence fee per copy, payable in advance Royalty of 5% of gross sales, payable at the end of each month
Termination
  1. upon default of extent of use clause
  2. at a particular date
The following are some examples of the subject matter of some clauses that go into a multimedia application licence agreements:
  1. A clear statement of the acts that are licensed, such as installation of the application, making of backup copies, running the application.

  2. Clear prohibitions and restrictions:

  3. Events that will terminate the licence:

  4. Limitation of liability for defects and errors.

  5. Maintenance, support and provision of upgrades.

  6. Licence fee payable.

How can those rights be infringed?

The rights granted can be infringed in a number of ways which may be summarised as being:
  1. abuse by the creation of unauthorised copies;
  2. abuse by modification of the material and publication of the material as so modified;
  3. passing off the material as being the creation of anyone other than the copyright holder;
  4. breach of confidentiality This paper will examine the issue of the law relating to confidentiality later. It forms an adjunct to the rights of people holding and owning information and is not strictly or solely concerned with copyrighted materials

Remedies

Remedies available include:
  1. damages for loss of profits including an account for all profits;
  2. injunctions;
  3. declaratory judgments; and
  4. action in conversion this will enable the whole of the item which includes, as part only, the copyright material to be brought to account.
  5. court order for delivery up of material and confiscation (this may include the machines used to carry out the breach where there are criminal proceedings taken) Such an order may be made before the final determination of the case where:

The Law of Confidentiality

As above indicated this area of law will in some circumstances protect a person who has divulged information to another. It assumes particular importance in the early stages of the development of a new invention or program which will cease to be patentable if it enters the "public domain".

By agreement between parties

  1. where the information itself is public the agreement will be enforced where the parties clearly have agreed that it is to be treated, as between themselves as being confidential;

  2. where it is not public the obligation of confidentiality is easier to enforce. This may arise either from an express agreement or from the circumstances surrounding the disclosure.

By implication

In a similar way the conduct of the parties themselves may lead to an implication that the information was intended to be confidential and should be treated as such. The provision of a claim on the cover of a document to the effect that the information contained in the document is the property of the provider and is confidential is desirable. The Courts will tend to protect those who take adequate steps to protect themselves. The posting of a document to a third party without any indication that it is confidential way well destroy its confidential nature, certainly for that third party and perhaps for all others. In the new world of knowledge as a primary resource it needs to be treated as being an important asset and if one wishes to gain the assistance of the Courts then how one treats such assets will be of importance.

Unconscionable and misleading conduct

At equity: Under the Law of Equity there has always been power to sanction unconscionable conduct. The jurisdiction fell into disuse for a considerable time during this centaury as legal theory was in favour of certainty in decisions. Over the last twenty yew however there has been a considerable change in the attitudes of the Courts and they have been far more willing to intervene on the grounds that a party has behaved in an unconscionable manner. As a part of that change the Trade Practices Act was amended in 1986 to insert a section 52A providing that in consumer contracts unconscionable conduct by a corporation would be a breach of the Act. That Section has now been incorporated m a new division of the Act which applies to all contracts. Under that part of the act it is unlawful for any corporation to engage in conduct which is unconscionable under the unwritten law of any State. By this new Part the law of Equity and the Statutory Law are brought into unity. The effect is to vastly extend the remedies available where there is a breach of the Law of Equity. Under that Law the Remedies available were: Under the Trade Practices Legislation (Part IV A of the Trade Practices Act): The remedies are:

Contracts

Things to watch for when drafting contracts include the following:
  1. drafting needs to be complete and clear and needs to limit the ability of the user to those purposes expressly licensed, care needs to be taken with matters such as:
  2. a representation giving rise to a contract may attract damages both in contract and also in torts and trade practice areas;

  3. remedies:
I have set out the above summary of the laws relating to intellectual property as a basis to consider its application to the phenomena of multimedia computer programming.

What are multimedia programs?

Multimedia programs may be perhaps best be defined as those programs which involve more than one of the following materials:
  1. images
  2. video and film
  3. spoken sound
  4. photographs
  5. written material
  6. music
  7. artistic works
  8. data
  9. graphics
These programs also show or use other characteristic elements such as display systems and user interfaces. All of the areas above involve various considerations of copyright law and in some cases designs, trade marks and patents are also important.

Multimedia requires reproduction of material - over and over. It is not just the creation of the application that involves reproduction of material. Every copy of the application is a reproduction of the original. Further, every time the program is loaded into the memory of a computer there is another reproduction. For this reason, copyright issues come into play. Negotiating and buying the right to access material is the other important area giving rise to legal issues.

Impact of the laws

These intellectual property laws affect programs of the nature being considered in two ways.
  1. the rights in the source materials being used; and
  2. the rights in the ultimate programs being produced.

Source materials

The rights to be considered in regard to this aspect will depend upon whether or not the components being used are created for the program or consist of pre-existing material. If the materials already exist then before they may be copied into a program the various owners of copyright must have been identified and agreement reached to permit the use by the programmer. This statement may be affected by the exceptions to the monopoly of the copyright owners set out in the Act. Where the material in a literary, dramatic, musical or artistic work these exceptions are limited to
  1. fair dealing for the purpose of study or research,
  2. fair dealing for criticism or review, reproduction for judicial proceedings or professional advice by a legal practitioner or patent attorney,
  3. the making of a back up copy of a computer program,
  4. the inclusion of works in places of education,
  5. reading in a public broadcast of extracts of reasonable length,
  6. domestic performances,
  7. reproduction for the purpose of broadcasting (provided that an equitable payment is made or undertaken),
  8. copying by members of parliament for the purpose of their duties,
  9. in certain circumstances copying by libraries,
  10. copying by Australian Archives,
  11. copying for preservation, and
  12. copying of unpublished works older than 75 years.
Music recordings are defined so as to include the mediums used in computer programs. It should be pointed out that where there are lyrics involved in the musical work these will be the subject of a separate copyright in the words.

There will also be no infringement where there is a merely incidental use of copyrighted work. An example of his may be the filming of a copyrighted work in the background of a film or video program, or the making of a painting of a building.

Authorship of works

If existing materials are to be used then the question of ownership of the copyrights must be resolved before such matter can he legally used. Where there is a joint authorship this may cause considerable additional problems. The present law vests the ownership jointly in all of the authors. In the case of literary works this usually means two or rarely three persons. In the case of computer programs the position becomes most complex. It is not unusual for programs to be the result of the collaboration of many programmers. In the absence of agreements this will vest the title in all of those persons. Where they have ceased to work in the same team obtaining a clearance may become a formidable task.

The multimedia programmer will need to investigate all of these title questions and obtain agreements from all of the individuals or companies involved before using the material. In the case of commercial film it is the common practice for the distribution companies to obtain the whole of the copyrights as a condition of their support of the film projects The usual agreement classifies the various elements which are required to make the film, such as script, music and exposed film as "works made for hire". That is a concept of United States Law which gives a protection for a finite term of 75 years. Although this is the normal practice in the United States there are some individuals are strong enough to resist the demands of the distribution companies and producers such as Spielberg may well hold some or all of the copyright interests themselves.

Fair use

The concept of fair use may provide a defence, however it is a limited concept. It is a breach of copyright to take any substantial part of a work and copy or use it. What is substantial is judged in terms of quality of the part taken rather than the quantity. So that a few frames of a film or a small part of a picture may be substantial if they are of artistic importance in the overall work.

Adaptation

The term "adaptation" was considered by the High Court in the Autodesk case. They there defined it as meaning a version of a work which embodies or preserves the original qualities of the copyright work. This indicates that the nature of the breach will involve a variant of the first work. Protection will not extend to works which go beyond that and become so different in form or function as not to any longer retain the qualities of the first work. There are many cases resulting from this definition, The question will almost always arise where there has been a "reverse engineering" of a work and is a prime source for litigation. In the case of multimedia the capacity recreate works by reference to an idea and without use of any of the code or other copyright work assumes more than usual significance and since much of this programming is now using object oriented concepts the likelihood of breaches increases.

It is a breach of copyright to take another's work and to adapt it. The right to make any adaptation is vested in the owner. This will not however extend to an adaptation of the work which will have its own copyright. So that if there is an authorised adaptation of a work then a further adaptation will not breach the first copyright but will breach the new copyright in the adaptation work. This has great significance for the computer industry as it applies to the use of object oriented code.

The Copyright Law Review Committee [11] proposes that the existing rules that the author of programs will, in the absence of agreement, be the owner of the copyright, should be changed to provide that the entity or person who commissions the work will be the owner of the copyright. If adopted this will provide great difficulty for a programmer who creates code capable of being used in an object oriented system. It will certainly lead to a proliferation of contracts needed to protect the author/ programmer and to enable him to re-use his code for future programs.

Clearly also the programmer will need to continue to control the identity of those who have any rights of adaptation if his capacity to continue to use his own ideas is to be adequately protected. It seems that if the law is to be amended at all it would be better to ensure that the computer programmer has rights analogous to those granted to authors of artistic works to use their own work again provided that such new work does not repeat or imitate the original. That exception needs expansion in the case of object oriented code given that the whole idea of such programming is the repeated use of identical code with slight variations to give new effects.

Multimedia applications will also increasingly use databases as sources of development of new applications. The selection of material in databases has now been recognised as being a proper subject for copyright protection, however it should be noted that the materials themselves are frequently not the subject of copyright.

Computerised works and special subject matter other than works

Note that all of the above can be found in computerised forms. Books, magazines, newspapers, letters and documents commonly exist in some sort of computerised form before being printed on paper. There are already newspapers published only on floppy disk. Music can be written with the aid of the computer and sound stored digitally on all sorts of computer related media such as compact discs, hard disks, floppy discs. Films can be recorded on computer related media. A lot of video production including animated feature films are compiled using a computer. The computer is also being used for creating artwork.

The combination of some or all these is a multimedia application. A multitude of multimedia publications are starting to hit the market. A company of which I am a director, The Document Company Pty Ltd, is involved with the production of multimedia titles, principally for the legal profession, for example. Some material will never get published in the traditional sense.

Note also that the definitions of literary work and computer program, which were introduced in 1984 to counter the decision of the High Court in the Apple Computer [12] case, do not expressly include data in electronic or magnetic form. This data may include:

  1. spreadsheets, including the formulae as well as the results thereof,
  2. the contents of word processor documents that have not been reduced to writing;
  3. the contents of data bases that may never be reduced to writing;
  4. digital sound recordings and digital video; or
  5. multimedia applications set up in such a way that the multimedia application is separate to the viewing program.
None of these could be considered "a set of instructions ... intended ... to cause a device having digital information processing capabilities to perform a particular function" in the same way that C++, PASCAL or COBOL program, or their machine code equivalents, would be. Instead, these would be typically characterised as computerised information which can be processed by different computer programs.

This is a potential flaw of the 1984 amendments when the impact of computers as means of creating, storing and distributing valuable information was less apparent than the use of the computer programs. However, Pincus J in the case Roland Corp v Lorenzo 105 ALR 623 relied on the new definition of "material form" to prefer the reasoning of the minority in the Apple Computer [13] case and find that when stored in a computer, a work is made, even though it not reduced to a human perceptible form, and copyright subsists from that time on. I add the proviso, however, that the computerised information would only receive protection under the protection of the Copyright Act 1968, if it would receive protection if it were reduced to writing or other traditional material form. Subsistence of copyright is discussed next.

In any case, I am of the opinion that word processor documents, spreadsheets, databases, digital sound recordings, digital video and multimedia applications can each also be characterised as "a set of instructions ... intended ... to cause, a device having digital information processing capabilities to perform a particular function". This is because, albeit indirectly through word processors, spreadsheet program, data base programs or multimedia viewer programs, they all have codes that do cause a computer to perform in a particular way; namely they cause the computer to display the content of the document, spreadsheet, data base or multimedia application on the screen, or on a printer.

Access

The other major legal issue that is likely to arise in relation to material for multimedia applications is access rights. An example you would be familiar with is that entry to a museum is subject to a restriction on the right to take photographs. This protects photosensitive exhibits from camera flashes, protects copyright in material in which it subsists, and protects sales of postcards and other souvenirs.

Even if copyright does not subsist in some items, eg, because the copyright period has expired, by restricting access to the items, the owner of the place where the exhibit is held can artificially create rights the same as copyright rights using contract instead of the Copyright Act 1968. The right to access to enable reproduction can be granted on a similar basis, namely that unless specifically authorised to do so, limited rights to make reproductions are granted in return for the access.

Copyright and access rights in relation to multimedia applications

Obtaining material for a multimedia application

  1. Material created especially for the multimedia application
    Ensure that the museum has the necessary copyright or licence to use the material by ensuring that:


  2. Material in existence beforehand
    Check to see if the relevant copyright period has already expired. If so, there can be no copyright breach. Check to see if the intended use comes within one of the many exceptions. If copyright subsists, find the owner or a licensee capable of granting the necessary rights required for the creation and utilisation multimedia application. Seek permission without having to pay (perhaps making some appropriate acknowledgment). Otherwise pay the necessary licence fee or royalty.
As the examples given earlier in this paper illustrate, finding the owner or other appropriate person may prove difficult. Where there is a joint authorship this may cause considerable additional problems. The present law vests the ownership jointly in all of the authors. In the case of literary works this usually means two or rarely three persons. In the case of computer programs the position becomes most complex. It is not unusual for programs to be the result of the collaboration of many programmers. In the absence of agreements this will vest the title in all of those persons. Where they have ceased to work in the same team obtaining a clearance may become a formidable task.

The multimedia programmer will need to investigate all of these title questions and obtain agreements from all of the individuals or companies involved before using the material.

In the case of commercial film it is the common practice for the distribution companies to obtain the whole of the copyrights as a condition of their support of the film projects The usual agreement classifies the various elements which are required to make the film, such as script, music and exposed film as "works made for hire". That is a concept of United States Law which gives a protection for a finite term of 75 years. Although this is the normal practice in the United States there are some individuals are strong enough to resist the demands of the distribution companies and producers such as Spielberg may well hold some or all of the copyright interests themselves.

Ensure you have access to the material. You may have to pay for the right to access material. Access may then be granted subject to onerous term and conditions that may make non-copyrighted material the equivalent of copyright material. Get around copyright problems by adopting the same idea but incorporating the idea in a new expression, sufficiently dissimilar that there is no substantial reproduction, etc.

Exploiting possession or control of material useful for multimedia applications

Pieces of information in various forms are fast becoming commodity items. This is destined to increase. Do not give away potentially valuable rights liberally. Certainly do not do what a number of museums in the United States have already done, namely, sell the rights to produce multimedia applications from museum material without properly appreciating the value of the rights that were sold.

Licence uses of the information for particular purposes only, making as many restrictions on use as are economically viable, ie, not so many that the customer goes away. Restrict access to non-copyright material. Only grant access on terms and conditions that give you similar rights in respect of the material as you have with copyright material.

Restrict access to copyright material in the m= way so as to prolong the life of those rights. When acquiring material for the museum, do not simply acquire possession. You must also acquire the intellectual property rights associated with the material. For example, a gift of a painting by an artist in the artist's will, will not be a gift of the rights to reproduce the painting and publish postcards, place mats, birthday and Christmas cards, etc. These rights will remain with the beneficiaries of the residuary estate of the artist for 50 years after the artist's death.

Some possible solutions for some of the copyright problems

A multimedia collecting society

Collecting Societies exist already for the benefit of copyright owners and persons wishing to be licensed to do what would otherwise be a breach of copyright. In the music industry, for example, copyright owners in respect of music and lyrics and the right to perform and broadcast such works, are members of the society. They authorise anyone who would like to be licensed to do so to perform the works in public (covers bands, background music, discos) and broadcast on the television and on radio in return for undertakings that royalties will be paid. The collecting agency polices the collection of the royalties from hotels, discos, nightclubs, etc and pays royalties to the members of the society according to how often the work is preformed or played in public. Much of the royalties go overseas.

A similar system could be set up in respect of material that can be used in multimedia applications: pictures, video, sound and text could be made available by the copyright owners. They would have to give guarantees of good title to the material so that licensees could be assured that there would be no repercussion for using the material. Potential licensees could then approach the collecting society for permission to use material, or it could be sold off the shelf.

One off licence fees or royalties could be paid. A royalty scheme would be more beneficial to the copyright owner but more costly to enforce. A one off licence fee with restrictions to prevent unauthorised distribution of material may be more practical. Enforcing the restrictions would prove difficult, however, just as enforcement of copyright licences in respect of computer programs is difficult.

The benefits to copyright owners of having a regular source of income based on the usefulness and hence use of their material together with the benefits of having a large pool of information to use in multimedia application would outweigh the disadvantages. Museums could benefit in both areas by providing material to the information resource and using material from other sources to add to the multimedia applications they develop.

Section 135P of the Copyright Act makes special provision for collecting societies. Rules and regulations are imposed by the Federal Attorney General. These may need some modification to cater for the special nuances of multimedia but would not have to be altered drastically, if at all.

A right of access to published film and sound materials without seeking permission beforehand

Section 108 of the Copyright Act allows persons to cause sound recordings to be heard in public provided they have paid or have given a written undertaking to pay an equitable amount to the owner of the recording. This undertaking is typically given to a collecting agency acting on behalf of its members whereupon the licensee is free to use any of the material belonging to the members of that collecting agency. Thus hotels and nightclubs can play recorded music without fear of prosecution.

Section 109 is a similar provision in relation to the broadcast of sound recordings. Thus radio stations can play the music of their choice without getting individual permission each time. Fees are paid at a later stage.

A similar provision in respect of material for multimedia applications could be enacted to cut through more red tape. Developers would then be free to use all manner of material and then pay royalties once the multimedia application is commercialised. The collecting agency would act to help enforce the arrangement by prosecuting those who did not make the appropriate royalty payments. Collection of royalties could be made easier still by making the collecting agency part of the distribution network.

End notes

  1. Autodesk Inc v Dyason (1990) 15 IPR 1 There has been considerable confusion in legal thought relating to the nature of computers prompted by the apparent misunderstanding of the nature of a ROM chip by the High Court in Computer Edge v Apple Computer (1986) 6 IPR 1 ("Apple Computer") where the judges talked of ROMs storing data as "electrical impulses". This misunderstanding possibly contributed to what the writers believe was an unfortunate outcome. The misunderstanding seems to have continued in ("Autodesk (Fed. Ct.)") Dyason v Autodesk Inc (1990) 18 IPR 109 ("Dyason"), Star Micronics Pty Ltd and Anor v Five Star Computer Pty Ltd and Ors (1990) 18 IPR 225 ("Star Micronics") and Autodesk Inc and Anor v Martin Patrick Dyason and Ors High Court of Australia F.C. 92/001 delivered 12 February 1992 ("Autodesk (H. Ct)").

  2. Senator Amanda Vanstone - paper to entitled

  3. Nature of copyright in original works
    31. (1) For the purposes of this Act, unless the contrary intention appears, copyright in relation to a work, is the exclusive right:

    1. in the case of a literary, dramatic or musical work, to do all or any of the following acts:
      1. to reproduce the work in a material form;
      2. to publish the work;
      3. to perform the work in public
      4. to broadcast the work;
      5. to cause the work to be transmitted to subscribers to a diffusion service
      6. to make an adaptation of a work
      7. to do, in relation to a work that is an adaptation of the first mentioned work, any of the acts specified in relation to the first mentioned work in subparagraphs (i) to (v), inclusive; and
    2. in the case of an artistic work, to do all or any of the following acts:

      1. to reproduce the work in a material form;
      2. to publish the work;
      3. to include the work in a television broadcast;
      4. to cause a television programme that includes the work to be transmitted to subscribers of a diffusion service.

    (2) The generality of subparagraph (1)(a)(i) is not affected by subparagraph (1)(a)(vi).

    Nature of copyright in sound recordings
    85. For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a sound recording, is the exclusive right to do all or any of the following acts:

    1. to make a copy of the sound recording;
    2. to cause the recording to be heard in public;
    3. to broadcast the recording.

    Nature of copyright in cinematograph films
    86. For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a cinematograph film, is the exclusive right to do all or any of the following acts:

    1. to make a copy of the film;
    2. to cause the film, in so far as it consists of visual images, to be seen in public, or, in so far as it consists of sounds, to be heard in public;
    3. to broadcast the film;
    4. to cause the film to be transmitted to subscribers to a diffusion service.

    Nature of copyright in television broadcasts and sound broadcasts
    87. For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a television broadcast or sound broadcast, is the exclusive right -

    1. in the case of a television broadcast in so far as it consists of visual images - to make a cinematograph film of the broadcast, or a copy of such a film;
    2. in the case of a sound broadcast, or of a television broadcast in so far as it consists of sounds - to make a sound recording of the broadcast, or a copy of such a sound recording; and
    3. in the case of a television broadcast or of a sound broadcast - to re-broadcast it.

    Nature of copyright in published editions of works
    88. For the purposes of this Act, unless the contrary intention appears copyright, in relation to a published edition of a literary, dramatic, musical or artistic work or of two or more literary, dramatic, musical or artistic works, is the exclusive right to make, by a means that includes a photographic process, a reproduction of the edition.

  4. Draft Report on Computer Software Protection - June 1993 p 52

  5. See Appendix A (not included here)

  6. See Appendix A (not included here)

  7. Supra

  8. Supra

  9. Draft Report on Computer Software Protection - June 1993 pp 90-92

  10. Draft Report on Computer Software Protection - June 1993 pp 90-92

  11. Computer Edge v Apple Computer (1986) 6 IPR 1

  12. Computer Edge v Apple Computer (1986) 6 IPR 1

Authors: E John Picton-Warlow & Michael Paterson
Picton-Warlow & Co, Barristers, Solicitors & Notary,
1st Floor, Old Bank Chambers, 311 Stirling Highway, Claremont WA 6010

Please cite as: Picton-Warlow, E. J. and Paterson, M. (1994). The law and its relationship with multimedia programming for computers. In C. McBeath and R. Atkinson (Eds), Proceedings of the Second International Interactive Multimedia Symposium, 417-429. Perth, Western Australia, 23-28 January. Promaco Conventions. http://www.aset.org.au/confs/iims/1994/np/picton-warlow-ej.html

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