White SW Computer Law
Intellectual Property, Information Technology & Telecommunications Lawyers
Melbourne Office - PO Box 452, COLLINS STREET WEST Victoria 8007 Australia
Sydney Office - GPO Box 2506, SYDNEY New South Wales 2001 Australia
Telephone: Melbourne Office - +61 3 9629 3709 Sydney Office - +61 2 9233 2600
Facsimile: Melbourne Office - +61 3 9629 3217 Sydney Office - +61 2 9233 3044
Email: wcl@computerlaw.com.au Internet: http://www.computerlaw.com.au

User Tools

Site Tools


grimes

Link to this comparison view

Next revision
Previous revision
grimes [2011/02/14 17:44]
127.0.0.1 external edit
grimes [2017/07/30 18:02] (current)
Line 1: Line 1:
-====== ​AUSTRALIAN SOFTWARE LICENSING ISSUES ​====== +====== ​Australian Software Licensing Issues - March 1997 ======
- +
-===== Steve White, Principal - White SW Computer Law ===== +
 ===== Introduction ===== ===== Introduction =====
- 
 Trade between the US and Australia is ever increasing and with the spread of commerce to the Internet there are interesting issues which will arise with respect to software licensing and other intellectual property rights. If your clients propose to licence Intellectual Property in Australia then this article should highlight some risks and some substantial differences between Australia and the USA. Trade between the US and Australia is ever increasing and with the spread of commerce to the Internet there are interesting issues which will arise with respect to software licensing and other intellectual property rights. If your clients propose to licence Intellectual Property in Australia then this article should highlight some risks and some substantial differences between Australia and the USA.
- 
 ===== Copyright ===== ===== Copyright =====
- 
 The most noticeable difference is that in Australia it is not possible to register copyright. However, parties are entitled to full relief before the Australian Courts as if they were so registered, provided that the applicant can satisfy the court that it has the necessary status under the Berne Convention. The most noticeable difference is that in Australia it is not possible to register copyright. However, parties are entitled to full relief before the Australian Courts as if they were so registered, provided that the applicant can satisfy the court that it has the necessary status under the Berne Convention.
  
Line 24: Line 18:
  
 ===== Internet ===== ===== Internet =====
- 
 The Internet provides a rapid and widespread method of disseminating information. Despite the ready availability of a myriad of works on the Internet and the technical issues involved one cannot stretch the implied licence to use too far. This view has been recently confirmed in //​[[case_links#​Trumpet Software Pty Ltd v OzEmail Pty Ltd|Trumpet Software Pty Ltd v. OzEmail Pty Ltd]]//. In that case copyright was found to subsist in software ( "​winsock"​ ) which was available for distribution freely upon the Internet as "​Shareware"​. The Internet provides a rapid and widespread method of disseminating information. Despite the ready availability of a myriad of works on the Internet and the technical issues involved one cannot stretch the implied licence to use too far. This view has been recently confirmed in //​[[case_links#​Trumpet Software Pty Ltd v OzEmail Pty Ltd|Trumpet Software Pty Ltd v. OzEmail Pty Ltd]]//. In that case copyright was found to subsist in software ( "​winsock"​ ) which was available for distribution freely upon the Internet as "​Shareware"​.
  
 Further, it was found that the scope of the implied usage of that software did not extend to the bundling and resupplying the software without any acknowledgment of the author or the terms and conditions on which the software was supplied. The fact that the author of the work was difficult to contact and failed to comply with the infringer'​s negotiation deadlines was held to be irrelevant. Accordingly,​ copyright works distributed into Australia via the Internet do not lose any copyright per se and are subject to an implied licence. However, concern has been raised as to whether the right to use extends to using home page information without the associated expensive advertising. Accordingly,​ clients would be well advised to place notices advising of the need to reproduce their pages only in full. Further, it was found that the scope of the implied usage of that software did not extend to the bundling and resupplying the software without any acknowledgment of the author or the terms and conditions on which the software was supplied. The fact that the author of the work was difficult to contact and failed to comply with the infringer'​s negotiation deadlines was held to be irrelevant. Accordingly,​ copyright works distributed into Australia via the Internet do not lose any copyright per se and are subject to an implied licence. However, concern has been raised as to whether the right to use extends to using home page information without the associated expensive advertising. Accordingly,​ clients would be well advised to place notices advising of the need to reproduce their pages only in full.
- 
 ===== Importation of Software into Australia ===== ===== Importation of Software into Australia =====
- 
 If the reproduction of a computer program within Australia would have infringed a copyright then importing such copies, despite being licensed in the county of origin, is a copyright infringement. The rights to sue for such an infringement rest with the copyright owner and the exclusive licensee. An exclusive licence is a "​licence in writing...authorising the licensee, to the exclusion of all other persons, to do an act that, by virtue of the Act, the owner of the copyright would, but for the licence, have the exclusive right to do." If the reproduction of a computer program within Australia would have infringed a copyright then importing such copies, despite being licensed in the county of origin, is a copyright infringement. The rights to sue for such an infringement rest with the copyright owner and the exclusive licensee. An exclusive licence is a "​licence in writing...authorising the licensee, to the exclusion of all other persons, to do an act that, by virtue of the Act, the owner of the copyright would, but for the licence, have the exclusive right to do."
  
 In //​[[case_links#​Avel Pty Ltd v. Multicoin Amusements Pty Ltd|Avel Pty Ltd v. Multicoin Amusements Pty Ltd [1990] 65 ALJR 179]]// ( "​Williams Pinball Machines"​ ) it was found that a licence agreement that purported to give exclusive rights to distribute goods was not an exclusive licence with respect to any rights under the copyright in the pinball machines and the plaintiff'​s action failed. Even worse for the distributor,​ parties which had left the market as a result of threats of copyright infringement subsequently successfully sued the distributor for loss and damage under Section 202 of the //Copyright Act 1968 (Cth)// for unjustified threats of copyright infringement for which in the circumstances,​ there was no defence. Unfortunately,​ one badly drafted agreement resulted in loss almost exceeding one million dollars for the distributor. In //​[[case_links#​Avel Pty Ltd v. Multicoin Amusements Pty Ltd|Avel Pty Ltd v. Multicoin Amusements Pty Ltd [1990] 65 ALJR 179]]// ( "​Williams Pinball Machines"​ ) it was found that a licence agreement that purported to give exclusive rights to distribute goods was not an exclusive licence with respect to any rights under the copyright in the pinball machines and the plaintiff'​s action failed. Even worse for the distributor,​ parties which had left the market as a result of threats of copyright infringement subsequently successfully sued the distributor for loss and damage under Section 202 of the //Copyright Act 1968 (Cth)// for unjustified threats of copyright infringement for which in the circumstances,​ there was no defence. Unfortunately,​ one badly drafted agreement resulted in loss almost exceeding one million dollars for the distributor.
- 
 ===== Trade Practices Act 1974 (Cth) and Limitation of Liability ===== ===== Trade Practices Act 1974 (Cth) and Limitation of Liability =====
- 
 The problems roll on with Limitation of Liability Clause. The problems roll on with Limitation of Liability Clause.
  
Line 42: Line 31:
  
 Other pitfalls await players who propose clauses which would be considered anti-competitive in nature. If a clause attempts to restrict a purchaser'​s right to acquire goods elsewhere or restrict the right to re-supply goods to particular customers or in particular areas it may be considered to fall into the practice of "​exclusive dealing"​. The practice of exclusive dealing constitutes an offence if it has, or is likely to have, the purpose of substantially lessening competition. In //​[[case_links#​Broderbund Software Inc v Computermate Products (Australia) Pty Ltd|Broderbund Software Inc v Computermate Products (Australia) Pty Limited]]// (1992) ATPR 41-155 Computermate argued that Broderbund had an exclusive distribution agreement in place with Dataflow which breached the exclusive dealing provisions of the //Trade Practices Act//. Computermate failed in its argument to have a Broderbund'​s licence agreement declared void and accordingly avoid liability for parallel importation infringements. However, this is an argument which will no doubt be run again. Other pitfalls await players who propose clauses which would be considered anti-competitive in nature. If a clause attempts to restrict a purchaser'​s right to acquire goods elsewhere or restrict the right to re-supply goods to particular customers or in particular areas it may be considered to fall into the practice of "​exclusive dealing"​. The practice of exclusive dealing constitutes an offence if it has, or is likely to have, the purpose of substantially lessening competition. In //​[[case_links#​Broderbund Software Inc v Computermate Products (Australia) Pty Ltd|Broderbund Software Inc v Computermate Products (Australia) Pty Limited]]// (1992) ATPR 41-155 Computermate argued that Broderbund had an exclusive distribution agreement in place with Dataflow which breached the exclusive dealing provisions of the //Trade Practices Act//. Computermate failed in its argument to have a Broderbund'​s licence agreement declared void and accordingly avoid liability for parallel importation infringements. However, this is an argument which will no doubt be run again.
- 
 ===== Conclusion ===== ===== Conclusion =====
- 
 Although there are many similarities in USA and Australian legislation,​ the case law is quite different in some areas. Parties who are licensing software in Australia should ensure that their licensing and/or distribution agreements are adequate and appropriate advice is obtained as to any possible problems which may not otherwise need to be considered by a supplier in USA. Although there are many similarities in USA and Australian legislation,​ the case law is quite different in some areas. Parties who are licensing software in Australia should ensure that their licensing and/or distribution agreements are adequate and appropriate advice is obtained as to any possible problems which may not otherwise need to be considered by a supplier in USA.
  
 In short, Australia continues to be island of intellectual property rules unto itself surrounded by sharks waiting for the unsuspecting foreign intellectual property owner to arrive. In short, Australia continues to be island of intellectual property rules unto itself surrounded by sharks waiting for the unsuspecting foreign intellectual property owner to arrive.
- 
-**Steve White\\ White SW Computer Law\\ 7 March 1997 ** 
- 
-**www.computerlaw.com.au** 
- 
-**© White SW Computer Law 1997** 
  
 First published in: The Licensing Journal, April 1997 Volume 17 Number 4, pp11 - 12. First published in: The Licensing Journal, April 1997 Volume 17 Number 4, pp11 - 12.
- 
-This article is a guide only and should not be used as a substitute for proper legal advice, readers should make their own enquiries and seek appropriate legal advice. 
- 

  © White SW Computer Law 1994-2019. ABN 94 669 684 644. All Rights Reserved.
  Liability limited by a scheme approved under Professional Standards Legislation
  This website is a guide only and should not be used as a substitute for proper legal advice.
  Readers should make their own enquiries and seek appropriate legal advice.
  For legal advice please email wcl@computerlaw.com.au