Managing copyright in the online world

25 May 2015 | Marlia Saunders, Ashurst / Anita Cade, Ashurst

The digitisation of content and its availability online is making it easier than ever to copy, screenshot, share, reproduce and modify copyright works and subject matter. The ability to search for and access such a wide range of content so quickly and easily had led to misconceptions about what can and cannot be done with such content -- many people think that simply because it is publicly available, there is a licence for them to do with it what they want.

However, this is not the case, and we have seen in Australia over the last year a number of court actions which demonstrate the risk of engaging in unauthorised reproduction and use of online content.

• Buttrose v The Senior's Choice (Aust) Pty Ltd [2013] FCCA 2050;
• Tylor v Sevin [2014] FCCA 445;
• Bayley & Associates Pty Ltd v DBR Australia Pty Ltd [2013] FCA 1341;
• Sports Data Pty Ltd v Prozone Sports Australia Pty Ltd (2014) 316 ALR 475

Damages awards

It can be very expensive to ignore copyright infringement allegations and behave as though nothing has happened. In many of these cases we have seen in the last year, the main component of the amount recovered was awarded as additional damages. Under s 115(4) of the Copyright Act, the court has discretion to award additional damages where appropriate, considering factors such as:

• the flagrancy of the infringement; and
• the need to deter similar infringements of copyright.

It is important to note that additional damages can be awarded even when only a nominal sum has been awarded as compensatory damages. The amount need not be proportional to the amount awarded in compensation.

This was illustrated in a number of recent cases. For example, in Dynamic Supplies Pty Ltd v Tonnex International Pty Ltd (No 3) (2014) 312 ALR 705, the parties agreed to nominal compensatory damages of $1 and then the court awarded $150,000 in additional damages. In Motorcycle Aftermarket Spares Pty Ltd v Tamworth Cycle Tune Pty Ltd [2014] FCA 1433, the applicant and respondent operated competing online motorcycle parts stores, and the respondent reproduced the applicant's photographs and product descriptions. The respondent continued to engage in the same conduct after being put on notice, by simply setting up under a new business name. The court awarded compensatory damages in the amount of $7,500, as well as additional damages in the amount of $54,000.

Lessons

These cases show the importance of getting permission to use images and material sourced from the internet, and acting quickly in response to any allegations of copyright infringement.

Some ways in which businesses and individuals can better protect their copyright works in this digital world, include:

• using watermarks and/or disclaimers to remind potential infringers about copyright and the need to obtain a licence to reproduce or use the work;
• using technological measures to prevent unauthorised copying or printing;
• proactively monitoring and searching for potential infringements, and sending letters of demand as and when required;
• including strong IP and confidentiality provisions in employment contracts, and imposing strict internal access and usage controls; and
• pursuing actions for copyright infringement or breach of confidence as a means of deterrence.

Note: This is an extract from Inhouse Counsel newsletter, May 2015, Volume 19 No 3