AUS Guide to Intellectual Property Rights

a guide to

intellectual property rights

By Geoff McLay

Association Of University Staff - 2005

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Contents All contents listed below are linked and can be quickly located by clicking on the heading.

The Adobe search tool can be used to locate words or key phrases in this document.

I

Foreword

3

II

Check points for action

4

III

Copyright

6

Kinds of copyright works Layers of different copyright Copyright is automatic Only original works are copyright Expression not ideas Moral rights Public lending rights Performers’ rights Ownership of copyright Joint authorship Moral rights Duration of copyright A warning

IV

Publishing

19

Facts, data and confidential information

20

XIII Responsibilities of libraries

23

XIV The academic’s intellectual property and the employer: copyright, patents, “trade secrets” and the duty of fidelity

24

Copyright

11

V

Dispute resolution

13

VI

The public lending right scheme

14

VII

Performers’ rights

15

VIII Electronic and other non-print media 16

X

XII

Trade and service marks, product logos, product names etc

Confidential information Protection of databases

Contract with publishers Collection of fees from publishers

IX

XI

Patents Trade secrets and confidential information The duty of fidelity The general scope of New Zealand universities’ intellectual property

XV Using other people’s copyright

27

General Infringing copyright Permitted uses of copyright Educational uses Copying government materials Theses, dissertations and other student research Computer programmes Email and material from web pages Research data and unpublished material

Design and registered design rights

17

XVI Penalties

35

Patents

18

XVII Some useful books

36

Published by Association of University Staff of New Zealand PO Box 11 767 Wellington, New Zealand Phone +64 4 915 6690 AUS Guide to Intellectual Property Rights

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Your Guide To Intellectual Property Rights I

Foreword

This paper is designed to give AUS members basic information about common intellectual property issues that arise in the context of their employment as both active researchers and teachers at universities in New Zealand. It is not intended to provide advice as such, but aims to give essential background to New Zealand’s intellectual property laws and the kinds of issues that arise under them.

One of the key concerns of any New Zealand academics, and of many general staff, is, of course, the degree to which the university owns its staff’s intellectual property creations. To understand the question one must first understand some general intellectual property issues described below, and then review the intellectual property policy of the university in question.

Acknowledgment & disclaimer: This booklet is based, with permission, on a guide produced by the Association of University Teachers in the United Kingdom. It is intended to provide general information only. While all efforts have been made to make sure it is correct, it is not intended to provide legal advice, either generally or on particular matters, and should not be relied upon for such. For specific advice please consult your local AUS branch and, if necassary, a lawyer.

Thanks also to the author, Geoff McLay, Senior Lecturer, Faculty of Law, Victoria University of Wellington.

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II

Check points for action

This booklet is designed to offer background information to AUS members. The check points for action are aimed at highlighting the key aspects of intellectual property matters which members should address.

It is important, however, that they are read in conjunction with the more detailed advice which follows in this booklet.

Copyright Authors should seek to retain copyright of material while allowing for its free use by the institution for legitimate teaching purposes as long as their employment position is guaranteed.

License rather than assign your rights.

Joint authorship Those involved in collaborative work should agree in advance about financial return, ownership of copyright and attribution of authorship, and about arbitration of disagreements.

Moral right Assert your moral rights in writing.

Publishing Follow the checklist for action relating to publishing.

Collection of fees from publishers Check your eligibility to share in revenues from the CLL licence.

Public lending rights Monitor your entitlement to payment from your public lending rights.

Performers’ rights Avoid assigning rights to commercial exploitation

Electronic and other non-print media Beware of potential infringements of rights.

Remember to acknowledge those involved in data collection, coding and processing whose activities do not result in rights of ownership.

Design and registered design rights Members should seek individual advice when negotiating continuing financial reward other than a one-off fee.

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Patents Look at your contract of employment and, if necessary, check with your local branch regarding any arrangements for a scale of payments to employees who make an invention (collective patent rights agreement).

Ensure provision for independent audit of income and expenditure.

Note the importance of maintaining confidentiality.

Know-how and confidential information Note that breach of confidence may be actionable.

In all research contracts you should be careful to define what you understand to be the information that you will not be able to publish at the end of the research project.

Use of other people’s intellectual property Check details of “fair dealing” within the terms of the Copyright Act 1994 and especially remember that you cannot do “research and private study” on behalf of anyone else.

Check the more specific provisions to see if you are covered. Follow the provisions exactly.

Check for restrictions on copying under Copyright Licensing Limited’s licence.

Check permitted use of computer software.

Be aware that publication on the internet may be subject to certain copyright restrictions.

Clarify your position in relation to use of survey protocols.

Penalties Members should be aware that infringement of intellectual property rights may have repercussions for their employment.

Members should note that the points outlined above are not an exhaustive list, but are only key points relating to the major part of the work of academic and related staff.

If you are in any doubt, you should seek appropriate advice.

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III

Copyright

Copyright is probably the most widely encountered form of intellectual property right and gives its owner wideranging rights to control the dissemination of the works concerned, as long as they remain in copyright.

A. Kinds of copyright works There are nine categories of work in which copyright may subsist if the work is original. Many of them contain fairly disparate types of products: • Literary works (written, spoken or sung), including computer programs, and databases.

• Dramatic works and performance notes for dance or mime.

• Μusical works (compositions).

• Αrtistic works. This category covers graphic works (which in turn covers a painting, drawing, diagram, map, chart or plan, engraving, etching, lithograph or woodcut), photographs, sculptures or models. This category also covers architectural work, or a model for a building (but only if it is a fixed structure). Artistic quality is not a requirement for protection, and functional designs may be covered. In addition, an artistic craftwork is covered.

• Sound recordings.

• Films (a recording on any medium from which a moving image may be reproduced, as well as its accompanying soundtrack).

• Βroadcasts to the public (wireless communication to the public).

• Cable programmes (wired communications, including websites).

• Τypographical arrangements of published editions.

B. Layers of different copyright There is often more than one copyright work in an item. Take an anthology of poems for instance: copyright exists, not only in the poems, but in their collation, and in the publisher’s typographical arrangement of the poems. The typographical arrangement copyright can protect a particular version of a work that would otherwise not be copyrighted, and an editor might claim to have a copyright in an edited version of a work, even though the main copyright belongs to someone else. Or take a CD: copyright exists not only in the sounding recording, but in relation to the underlying musical work.

C. Copyright is automatic A work does not require registration to receive copyright protection and, essentially, protection runs from the time that the work is created. However, literary, dramatic and musical works must be recorded in writing or otherwise. A lecture, for instance, is protected by copyright if it is written down beforehand, or is recorded on tape or video tape while it is being given or it is transcribed by those hearing it. Similarly, an impromptu dance or musical performance can be protected if it is taped.

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D. Only original works are copyright It is worth saying that the standard of “originality” required to qualify for copyright protection is not high. Some creativity is required however: for example, mere data-entry does not give you copyright in a database (see the discussion on databases below). But not everything about a work must be original. A collection of “unoriginal” facts can become a protected database so long as the facts are organised in a way that is original.

E. Expression not ideas Copyright law applies not to the ideas behind a work but to the expression or form. This, however, is one of the most complicated areas of copyright law. The plot of a novel, or a system of organising examinations, may be so well-developed that a court may protect it.

F. Moral rights Authors’ moral rights cover the right of the author of a copyright work to be identified as such, and not to have such work subject to derogatory treatment (where the work itself is altered in a way that reflects on the author’s integrity), and the right of any person not to have a work falsely attributed to him or her. Moral rights exist separately from the economic rights and can be retained by authors even if they have parted with the economic copyright.

G. Public lending right “Public lending right” is the name given to a scheme operating in a number of countries for remunerating authors in respect of the borrowing of their books from public libraries. New Zealand authors can claim only from the New Zealand scheme.

H. Performers’ rights Performers’ rights allow performers, including those who deliver lectures from a text, the right to withhold their permission for the recording of their “performances”.

I. Ownership of copyright The general rule is that the first owner of copyright is the “author” or creator. However, special rules apply to works produced by an employee. Under the Copyright Act 1994, the copyright of all literary, dramatic or musical works produced by employees legally belongs to the employer if it has been produced in the normal course of employment, unless there is an agreement to the contrary. Such an agreement should be in writing. A similar rule applies generally to commissioned works in that a commissioner owns the copyright in a photograph, computer program, painting, drawing, diagram, map, charter, plan, engraving, model, sculpture, film or sound recording. There is, however, an important exception for literary works (other than computer programs), as the copyright remains with the party commissioned, rather than the commissioner. Computer programs ( undefined by the statute) are an exception to the exception, and while they are literary works within the definition of the statute, they are owned by the commissioner, unless there is an agreement to the contrary.

Therefore, if you commission someone to do any writing or produce any other literary work except computer programs, you will need to ensure that the commissioned writer assigns the copyright to you. This commissioning rule is slightly different from those in Australia, the United Kingdom and the United States. Both the employment rule and the commissioning rule can be varied by express agreement Regardless, however, of the statutory wording, you ought always to agree on an intellectual property clause before commissioning anyone. Similarly, if you are commissioned to do work for anyone outside the university, you should always negotiate an intellectual property clause, especially if you plan to make use of the material in other projects.

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J. Joint authorship Where copyright work is produced by people in collaboration there will, of course, arise questions as to how the credit for, and profit from, that work is to be shared. Even if much academic work will not give rise to much direct profit, and even in cases where the direct profit accrues to employers or funders, credit for it may be of great importance to those individuals who do the work.

Where a copyright work is not produced in the course of employment, it can be jointly held if it is not possible to identify distinct parts of it contributed by each author. Subject to the terms (express or implied) on which employers waive their ownership of copyright on material produced in the course of employment, the same is true of copyright in that work too. Where there is joint ownership of copyright, the right to do things with the work which require copyright clearance (publication etc) has to be ceded by all the owners, so contracts with third parties will often make clear the division of financial return. If at all possible, always try to agree on the control of your joint work before you produce it. If you haven’t done so at the beginning, it is extremely desirable that those involved come to a clear view of their respective shares as soon as possible, and also make provision for arbitration in the event of disagreement.

Those engaged in collaborative work need to be aware that the law of intellectual property does not automatically reflect the distribution of public credit or private profit which they or their peers might think appropriate. For example, for the purposes of the law of copyright and moral rights, the authors of a scholarly article reporting the results of research are not the people who did the research, but the people who wrote up the report. Indeed, those who collected the data do not necessarily own any intellectual property at all, since the collection of data or scientific discoveries as such is not protected by intellectual property laws.

Suppose two people are involved, a researcher and a writer. The former may conceive a line of research, secure the funding for it, design the practical techniques for pursuing it, make the necessary observations and tell the writer the results and their significance. The writer may write those results up in a scholarly monograph. Copyright in that monograph will, unless there is some different contractual arrangement, or unless the text was derived pretty well verbatim from the researcher’s spoken words, vest either in the writer or in the writer’s employer, to the exclusion of the researcher. Likewise, the writer will have the legal ability, in the absence of any express or implied agreement to the contrary, to keep the researcher’s name off the published work. What goes for literary output applies also, and separately, to illustrative material. Copyright and moral rights in each diagram, table, graph, drawing and photograph may be separately attributed.

In the real world, a mixture of informal understandings, power relationships and plain ignorance of the legal position result in scholarly work being credited according to a wider range of criteria than just who did the writing up. Increasingly, however, perhaps because of the ever-greater career importance in the academic world of securing credit for research and scholarship, disputes are arising over the attribution of rights, particularly the right to be identified as an author.

It is correspondingly important that agreement is reached and recorded, before the subject matter of potential disputes is created, as to how credit for collaborative work should be allotted. At the very least, mechanisms should be in place for the arbitration of disputes. It may be that, where work is to be produced in the course of employment, the terms on which the employer waives the statutory right to copyright ownership could include provision for arbitration of the respective rights of those for whose benefit it might be argued to have been waived. Given the extent of trans-institutional collaboration, however, this would suggest a need for a framework which transcended any single institution.

Any framework must be designed so as to restrain the abuse of seniority and patronage which sometimes operates to the detriment of more junior and/or less securely-established colleagues (including non-academic staff).

K. Moral rights Authorship of a copyright work also gives rise to moral rights in that work. These rights are quite separate from traditional economic ownership of a work.

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Click here to return to contents page 1. Right to attribution If a work is made available to the public (or commercially published in the case of written material), it must, subject to a few exceptions, be identified as the work of its authors if the moral right to be so identified has been asserted by any of them. A common format for asserting the right would be to include on a copy of the work given to the publisher or any third party, “AB has asserted his/her right under the Copyright Act 1994 to be identified as the author of this work”.

Only an author who has asserted that right may enforce identification. If you are wrongly identified as an author of a work, you can object under the right of false attribution.

2. Right to object to derogatory treatment Moral rights, even if not asserted in advance, protect an author from “derogatory treatment” of his or her work if that work is neither a computer program nor the design of a typeface. Even where copyright is vested by statute in somebody other than its author(s), that author (or those authors), if identified as such, will have this moral right to protection. “Derogatory treatment” of an author’s work is the exposure to the public of the work with any addition or alteration to it, any deletion from it or any adaptation of it (other than translations and certain arrangements or transcriptions of music) which amounts to distortion or mutilation of the work, or is otherwise prejudicial to the honour or reputation of that author.

3. Exceptions to the right to object to derogatory treatment One cannot, however, invoke the moral right to complain of derogatory treatment in reportage of current events, nor in collective works of reference, nor in newspapers, magazines or similar periodicals. Again the status of scholarly journals is uncertain, so it is highly desirable for authors who collaborate to produce work for such journals, or indeed for monographs, textbooks etc, to be quite clear among themselves in advance whose consent is necessary for the editing of their joint work. Consent may be implied from an author’s conduct to treatment which would otherwise be derogatory. It must also be borne in mind, where a work’s copyright is vested by statute in somebody other than its authors, that, subject to any contractual arrangement, the copyright owners may distort and mutilate the work to their hearts’ content as long as they keep the authors’ names out of the public domain.

4. Exceptions to moral rights Exceptions to moral rights in practice are, however, quite important. The attribution right does not apply to a computer program or the design of a typeface. Nor does the right apply to works that are provided with the consent of the author for publication within “a newspaper, magazine or similar periodicals or an encyclopaedia, dictionary, year-book or other collective work of reference”. Nor does the right apply if copyright has vested by statute in the employer of the author, if the author cannot be readily identified, more than two persons were involved and their contributions cannot be practicably identified or the authors have not been identified on other copies of the work.

5. Moral rights can be waived Moral rights may be waived, and they may be treated as waived in quite informal and implicit ways. Some publishers routinely attempt to require authors to waive their rights at the outset or after a particular triggering event. This is particularly common in some loose-leaf or electronic publications where there is a number of authors of quite discrete portions of the work. This should always be resisted. Moreover, it is sensible for an author to make an explicit written assertion of moral right in relation to any work for which she or he wishes to claim credit. If a work is published in a collective work of reference, or in a newspaper, magazine or similar periodical, its author(s) cannot invoke moral right to complain that the work is attributed to no author. It is a matter of debate whether academic journals are for this purpose “similar” to newspapers and magazines, but it would be desirable for authors to assert to journal publishers the right to be identified as such; there is no penalty for giving oneself the benefit of the doubt.

One should be aware, however, that work produced in circumstances where it will attract Crown Copyright may lawfully be published without any authorship being attributed unless a contractual right to be identified is required by the true author(s). It is possible that quotations may also be used without infringement of moral rights where either the portion of the work taken is not a substantial part of the work, or the portion of the work is being used in accordance AUS Guide to Intellectual Property Rights

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Click here to return to contents page with a permitted use. However, it is far better always to acknowledge others’ work, and the failure to do so may prevent a use from being considered to be “fair”.

Occasionally, a university employee who has rights in a piece of work may wish not to be identified as its author, while others wish that that person should be so identified. Anybody is fully at liberty, subject to any contractual arrangement to the contrary, to suppress unpublished work in relation to which he or she is both author and copyright owner, whether alone or jointly. If such a joint author agrees to publication, however, that joint author cannot prevent that work being attributed to him or her unless the other joint authors have given up their relevant moral rights. If the copyright of a work is vested wholly in someone other than the author(s), the author (or any of them) cannot prevent publication under his/her name unless s/he has some contractual right to do so.

L. Duration of copyright The New Zealand rules The general rule in New Zealand copyright law is that copyright for literary (including databases), dramatic and artistic works lasts for the life of the author and 50 years from death of the author. Copyright in films, sound recordings and broadcasts lasts for 50 years from the date of their creation. The same rule applies to all photographs taken after 1 January 1945, but also possibly to those photographs taken before then. There are special rules for typographical arrangements (twenty-five years from the date of publication) and artistic works, which have been industrially applied (more than 50 copies made from the original artistic work: sixteen years generally or twenty-five if the original work was one of artistic craftsmanship). All these are useful general rules of thumb, but there are complicated transitional rules contained in the schedule to the Copyright Act which apply to a range of works produced before 1994. Perhaps of particular importance for historical work are the provisions relating to unpublished works. If the author died before the end of 1994, then a special period of the life of the author and 75 years will apply. Similarly, special rules of 50 years from the time that the work was first made available to the public apply in the case where the identity of the author is unknown.

Generally, where a work is authored by two or more people (joint authors), the 50-year period runs from the death of the last surviving author.

A special rule still applies to Crown Copyright works under which a special blanket protection of 100 years from date of creation is granted to works that were produced by Crown employees in the course of their employment. It is generally accepted that university employees are not Crown employees for this purpose. It appears that Crown Copyright and the special duration period, which in some cases may extend beyond that granted to some other works produced by non-Crown employees, survive the sale of that copyright to non-Crown entities. Great care therefore needs to be taken in the reproduction of what were previously Crown works, but which have now passed into private ownership.

M. An important warning about making “out of copyright” material available overseas Great care must be taken when distributing copies of works that have passed out of copyright in the last twenty years.

The standard copyright period in the United States and the European Union is based on 70 years (literary, artistic, dramatic and musical works are protected for 70 years from the death of the author, films and sound recording are protected for 50 years from their creation). Australia has agreed as part of the recent free-trade agreement with the United States to extend its copyright periods to match the American ones. While New Zealand law clearly governs whether copyright has expired within New Zealand, and you can legally reproduce works which have expired in New Zealand, if you make those works available in the other jurisdictions you may be found by the courts of that jurisdiction to have infringed copyright in those jurisdictions. Most obviously this might occur where you reproduce a written passage in a book, or you make a sound recording of a musical work, and the book is then published, or the sound recording is distributed, in that country or it is imported into that country. It might also apply when you make available on your website material which can be downloaded in those countries, and you might be held by the courts of that country to have “ authorised” the infringement of the work in that country.

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IV

Publishing

Authors who own the copyright in a work which they have produced will usually license somebody else (a publisher) to put it into a form in which it may be widely disseminated. Technological developments, however, are creating more and more exceptions to this general rule. Publishers are often keen to retain the rights assigned to them, but this will not usually be in the author’s best interests. Some commercial publishers may attempt to require you, as a condition of publication, to assign copyright in the work to them. This is so particularly in New Zealand in relation to legal publishing, where a publishing company may, when commissioning an author to produce a work, require that the author assign copyright to the publisher. The retention of copyright is, of course, the strongest protection that any author can have. The work, in simple terms, remains yours and, subject to the terms which you have agreed to with the publisher, that copyright will give you substantial control over the future exploitation of the work that you have produced. If at all possible, you should resist the attempt to require copyright to be assigned to the publisher. If, however, this is not possible, you should expressly address what control you will continue to have over your work even though it might be owned by the publisher. Such an agreement ought to include a clause which gives you the right to produce future versions of the work, or the right of first refusal to produce a new edition of the work, and make clear who has the right to produce work that is based upon your original work. As the work will no longer be “yours”, you should also be clear that you are asserting your moral right to be identified as the author of that work and that, if appropriate, you reserve the right to object to derogatory treatment of that work.

A. Contracts with publishers - a checklist of issues: In dealing with publishers, members are advised to have regard to the following checklist of points: • Terms to be agreed in advance.

• Contract-vetting - if in doubt, seek advice.

• Get the contract and any amendments in writing.

• Realistic deadline and delivery medium to be agreed.

• Warranty and indemnity clauses - beware of negligent mis-statement.

• Negotiate and/or offset costs of illustrations, quotations, index, tables etc.

• Ensure proofs are sent to you.

• Retain control over copyright and give an exclusive licence to the publisher rather than the entire copyright.

• Assert your moral rights.

• Clarify criteria concerning acceptability of text.

• Insist on six-monthly accounting.

• Check on possible income from sub-licensed rights or remainders.

• Ensure you are clear about any advance lump sum and your share of royalties before you agree to do the work. It is very difficult to say in the abstract what terms are fair. In negotiating, be aware that lump sums may be better if you think that the work has a limited commercial appeal, and you have the advantage of your getting the money up front. Royalties (often 10% of sales made by the publisher) may be better if you expect that the work will sell well for a longer period of time.

When negotiating royalties, be clear on what sale figures the royalty will be based.

• Check the basis on which royalties from overseas sales will be based (if applicable).

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Click here to return to contents page • Ensure you receive some free copies of your work.

• Be clear about what activates a cancellation clause (and this should work both ways).

• A termination clause in the contract is important for you (for reasons such as out-of-print, liquidation or breach of contract).

• Agree time-limits after which the work will not be on sale without your consent and a minimum level of marketing during that period.

• Think about your position in relation to restrictions on future work, options on publication and revised editions.

A good contract does not guarantee there will not be problems, but it helps to contain them.

B. Collection of fees from publishers Publishers receive licence fees from Copyright Licensing Ltd for the photocopying of material, principally, but not exclusively, from educational institutions. Authors who retain copyright in the works that have been copied will be entitled to a share of the licence fee. This will be paid to their publishers who have the responsibility of on-paying the appropriate share of the fee. Academics should be aware that the licensing scheme operates under a sampling methodology, and only those works that appear in the sample will in fact receive a payout. The fact that you have seen a course-pack with a chapter from one of your books does not mean, therefore, that you will be receiving a cheque in the mail, and it is not likely that if you do get a cheque it will be very large.

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V

Dispute resolution

Whenever you are negotiating a research or publication contract, always address the question of what will happen if there is a dispute. Going to court is often simply too expensive an option, even for quite major disputes. As the same is often true of formal arbitration, you need to consider whom you would be prepared to accept deciding a dispute.

One device that might work is for the parties to suggest a panel of nominees, perhaps chaired by the someone agreed by both parties. Never agree to a dispute mechanism that simply allows the other party to decide who will ultimately decide the rights and wrongs of your dispute.

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VI

The public lending right scheme

The public lending right is the common name given to a scheme operated by Creative New Zealand which is designed to compensate New Zealand authors for their income lost as a result of books being made available to New Zealand libraries. The scheme mirrors much more elaborate schemes in both the United Kingdom (and the rest of Europe) and Australia. While authors’ rights to receive this compensation are enshrined in legislation in section 31 of the Arts Council of New Zealand Toi Aotearoa Act 1994, the statute does not set out the nature of that entitlement or how it is to be administered. Most importantly, the statute does not guarantee a particular level of funding to Creative New Zealand in order to administer entitlement under the system.

At the moment, only New Zealand-resident authors are entitled to payment under the scheme. Unlike the United Kingdom system, there are no reciprocal rights for books held in overseas libraries.

Creative New Zealand essentially sets what it terms as a “book rate�, and then rewards authors in terms of how many copies of a particular book are held by New Zealand libraries. The entitlement to receive the payment depends on authorship rather than on ownership of the copyright. Under the system it does not matter that you have assigned copyright to somebody else. Similarly, the New Zealand scheme does not (unlike Australia) compensate publishers.

There has been talk in the past of reforming the public lending right to put it on a firmer basis, with perhaps a greater entitlement for authors, but that has not occurred.

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VII

Performers’ rights

Those whose professional lives include what are conventionally thought of as performances will probably be aware that performers have legal, if very limited, rights under Part IX of the Copyright Act 1994. It is often overlooked, however, that anybody who gives a lecture or presentation, even partially from a written text, has performer’s rights in that lecture or presentation. Unless it is a normal feature of the job that such performances are recorded or carried on closed-circuit television, it is usually an infringement of that member’s legal rights to feed that programme to cable, or to record it other than for private and domestic purposes, except with the performer’s permission.

Unless a recording takes place, or a feed is made to a cable or broadcasting system with the knowledge of the performer, it will not normally be reasonable to assume the performer’s necessary consent; but even if the performance is to be disseminated outside the performer’s institution, it may be unreasonable, and hence a breach of contract, to withhold consent if the employer calls for it, even implicitly, in good time beforehand. Such a recording would normally belong to the employer, but it should be remembered that academics may remain protected by their ownership of the underlying intellectual property in their lectures, and their consent to distribute that tape may be required.

While it may be reasonable to give consent, depending on the circumstances, it may also be reasonable to expect that the employer will compensate the employee appropriately.

Performers’ rights under the Copyright Act 1994 are very limited, and essentially just give the right to consent or not to the recording of performances. There is a World Intellectual Property Organisation Treaty that would extend performers’ rights and perhaps give them moral rights. The New Zealand Government decided in 2003, however, not so to extend performers’ rights.

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VIII

Electronic and other non-print media

The use of new technologies has added new complexities, but has in some ways enhanced authors’ rights. For example, if material is used by publishers straight from camera-ready copy, the author may have typographical copyright in the layout which would, in former times, have belonged to the publisher. Although the contents of material produced on CD-ROMS, online databases and floppy disks have the same copyright protection (perhaps without the typographical copyright) as their printed equivalents, the ability to manipulate the information can lead to difficulties in establishing an authoritative version.

Rights’ owners should be aware of the following potential infringements: • Loss of economic rights as material stored in digital form can be transferred without control or detection. This can lead to deliberate piracy or loss of revenue from copyright licensing schemes.

• Ignorance on the part of users of electronically stored information who may assume that permission to use or make copies is implicit.

• Τhe ease with which electronic material may be transferred to countries where copyright protection is inadequate.

• Τhe ability to manipulate works in electronic format threatens the author’s moral right of integrity, and may lead to plagiarism.

Academic authors should try to ensure the twin aims of achieving the greatest possible dissemination of their work, and of obtaining reasonable financial reward. Authors should be particularly wary of getting their work published in a format that has limited availability, which will not be archived, and is likely to become obsolete. By far the best way to retain control is to license the use of your work, subject to particular conditions that safeguard your concerns and through which you can hold the electronic provider to some account for its treatment of your material. Assigning copyright means that you will, in effect, lose control of your work.

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IX

Design and registered design rights

Designs are protected in New Zealand under both a separate Designs Act 1953 and the more general Copyright Act. To be protected under the Designs Act, designs must be registered with the Intellectual Property Office of New Zealand. Registration of designs is subject to a number of requirements. In particular, purely functional designs are not registrable under the Designs Act, which allows registration only of designs which are “pleasing to the eye”. Purely functional designs are registrable, if they registrable at all, under the Patents Act as inventions.

Designs of all kinds are, however, potentially protected under the New Zealand Copyright Act which, unlike the copyright acts of the United States, the United Kingdom or Australia, does not exclude functional designs from the ambit of copyright protection as artistic works. It is well established by both case law and by the terms used by the Copyright Act itself that artistic works need not be “artistic” in either their intention or their execution. This means, for instance, that the design for a toilet-pan connector is entitled to as much copyright protection in New Zealand law as is a work by Picasso. A vast range of works, from complicated schematic diagrams through designs for a type of frisbee, are protected by the New Zealand Copyright Act within New Zealand.

The protection of industrial designs stretches not just to the actual copying of those designs and the original artistic format, for example preventing the simple tracing of a schematic diagram, but also through a doctrine of indirect copying to the reproduction of the subject of the design. For example, in one famous English case (decided before English law was changed to prevent copyright from applying in such circumstance), it was held that the reproduction of kitset furniture infringed the copyright on the underlying drawings of the original kitset furniture.

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Patents

A patent is a temporary monopoly granted to a person who invents a product or process with an industrial application (or to the employer or an assignee of the inventor or an assignee of the inventor’s employer). In return, disclosure must be made through the registered patent which is sufficiently detailed to allow somebody skilled in the “art” to reproduce it. It must also be “novel”, in that its essence must not have been known or available before. Once a patent has been granted, only those with the permission of the patent’s proprietor to exploit the invention may do so during the term of the patent (twenty years). Rights in plant varieties are a special area not dealt with in this guide. To be effective in another country, the patent must be registered in that country, although registering a patent in New Zealand will give you certain limited priority rights when it comes to registering the patent overseas. You will need to consult a patent attorney.

In the context of patentable inventions it is important for researchers to note the importance of maintaining confidentiality. The “novelty” of an invention, and thus much of its commercial value, will be lost by prior disclosure. By and large, if you think that you or your university might in the future wish to make a patent application, you should not reveal the discovery at conferences or at other academic exchanges before you have sought legal advice, and perhaps made a provisional application for a patent. The somewhat secret approach required to be successful at the patent game, of course, conflicts somewhat with the open world of academic exchange.

Where the invention belongs to the employer, it may not put patentability at risk to disclose it to a fellow employee if it is reasonable to suppose that that person would be regarded by the employer as a suitable recipient of the information, and would understand its confidentiality. Normally, however, no disclosure should be made unless a written acknowledgement has been given beforehand by the prospective recipient that it will be treated in confidence. Breach of confidence is actionable, and there is nothing to stop employers from suing their employees even if there is no express term in the contract of employment relating to confidentiality. There may be cases where a researcher, and perhaps even that researcher’s university, thinks that publication of an innovation ahead of the PBRF deadline would be more beneficial than keeping it secret long enough to obtain a patent. It needs to be borne in mind that most commercial contracts, and the standard terms of grants, would be broken by a failure to use the results of research funded by them in the way which is most commercial from the perspective of the funder.

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XI

Trade and service marks, product logos, product names etc

The Trade Marks Act 2002 grants protection to those marks registered under it in relation to particular classes of goods or services. A trademark can not only include the usual kind of device that describes a business, but it may consist of a particular colour or shape, or even of a sound or smell. You may not use any registered mark in relation to your own goods or services in a way that tends to mislead the public as to the origin of those goods or services.

Even where such things are not registered, those who market goods or services need to avoid misleading prospective purchasers or the public into thinking their product is someone else’s. Particular care must be taken in New Zealand with any activity that might be considered misleading under section 9 of the Fair Trading Act 1986, which is commonly used by competitors to prevent others from misleading customers.

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XII

Facts, data and confidential information

A. Confidential information Intellectual property law has traditionally rejected the notion that there can be property in information. There can, for instance, be no copyright in facts underlying a newspaper article, regardless of the effort that the reporter has put into discovering the information. Information received as part of one job, or one research project, normally would be available to be used in another project even if the copyright of the published research vested in somebody else.

However, it is also clear that either contract or the law of confidential information can restrict individuals’ ability to pass on or use information entrusted to them.

It is remarkably common for research contracts to contain clauses which seek to prevent the release of confidential information gathered during the course of research without permission of the commissioner of the research. While such clauses may be designed to protect the trade secrets of the commissioning body, such clauses are dangerous for academics, who may find that, after completing the research, the academic obligation to make public their findings conflicts with the obligation on the contract to remain silent. Care should be taken in drafting such clauses. The nature of the restraint that the commissioner intends to impose upon the researcher should be made clear in terms of both the circumstances in which permission to publish will be refused and the sort of information to which the agreement not to publish will apply. Obligations to respect “confidential information”, or “trade secrets” or “sensitive data” are simply too vague. If the intention, for instance, is that the researcher not reveal certain financial information about a company, then that obligation should be made explicit and the terms of the limits documented. Consideration should also be given to what will happen if there is a dispute between the researcher and the commissioner as to the findings of the research. It is not uncommon for commissioners who are not satisfied with the results of research simply to declare the results to be confidential. You should also seek the advice of other experienced colleagues before concluding such obligations. You might find some guidance in the approach of Canterbury University’s Policy On Commercial And Other Outside Activities By Staff And Students, which provides that all confidentiality clauses ought to be referred to Canterbury’s commercial arm, Canterprise. Relevant provisions of that policy, which is currently under review, include: 7.4 Confidentiality in Research Contracts 7.4.1 The issues of confidentiality of research work, and/or the imposition of restrictions on publication, require careful consideration. As a general rule, agreements to perform confidential research work are contrary to the University’s objectives of free exchange of information, discussion and interchange of ideas in scholarship and research. However, in some circumstances work may be undertaken on a basis of limited or full confidentiality.

8.7 Confidentiality and Restrictions on Publication 8.7.1 In general, agreements to perform confidential research or development work are contrary to the University’s objectives of free exchange of information, discussion and interchange of ideas in scholarship and research. However, there is also a need to maximise the value of intellectual property for the overall good of the University. In some circumstances it may be necessary to maintain limited or full confidentiality, or a limited period of restriction on publication, for example Where a research contract amounts to a pure consultancy and ownership of all intellectual property remains with the sponsor or client; Where a research contract sponsor or client requests that no publicity be given to a project in the news media without their prior approval; In general where staff or students working on research contracts have access to inventions or new techniques developed by other people or organisations outside the University; During a period of commercialisation of intellectual property, technology transfer to a business start-up, or where patent protection is being put in place AUS Guide to Intellectual Property Rights

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Click here to return to contents page In general, where it is in the University’s long-term financial interest to maintain confidentiality of the work for a limited period.

8.7.2 External clients or sponsors shall not unreasonably withhold freedom of publication, and this shall be specified in research contracts. Staff and students will participate in research contracts with outside clients or sponsors containing agreements to restrict publication only after they have been informed of the conditions in this clause. Should a dispute arise between a client or the University and the author of a work whose publication the client or the University wishes to delay, the matter shall be resolved in accordance with Section 1.3.

8.7.3 If restrictions on publication are considered justified, they are subject to the following conditions: The reasons for the restrictions shall be clearly specified in writing; The restrictions shall be the minimum necessary in time and subject matter to achieve the stated purposes; No restriction on publication will be permitted where to do so may pose a danger to society or a risk to public health; The maximum period of delay of publication normally acceptable to the University is 12 months (in exceptional cases 24 months) from the time the invention is made or the research results have been made known to the client or sponsor.

8.7.4 Canterprise has the responsibility to ensure that a staff member’s or student’s freedom to publish is not unduly restricted. Advice in this should be sought from Canterprise, for example where The University has accepted a sponsor’s or client’s proprietary information as necessary background data for a research contract, the sponsor or client will normally reserve the right to review proposed publications in order to identify any inadvertent disclosure of proprietary information. Proposed contract clauses may relate to confidentiality in a research contract, or give cause for concern about publication rights.

A proposed agreement for commercialisation of intellectual property contains clauses restricting publication rights.

8.7.5 Employees or students shall, prior to submitting for publication any paper related to an invention, submit a copy of the paper to Canterprise if the author believes that it may contain an invention or inventions with potential for commercial development. It is inconsistent with the University’s role in disseminating knowledge that publication of research or invention should be withheld. However, it is essential that time is taken to make a patent application based on the results of research or invention with commercial potential before any publication occurs. Canterprise may therefore advise a delay of publication in order to protect the patent rights of the University and/or inventor, or where not to do so would result in the loss of future revenues to the University from successful commercial development of patented inventions or other intellectual property. In certain circumstances the law of confidential information may be used to prevent information being disclosed even though there is no prior agreement that it would not be disclosed. Typically, courts, when considering whether there ought to be such an obligation not to release information, will require that the information have some special quality of confidentiality about it and had been conveyed in way that reflected that essentially confidential nature. Correspondence between lovers, for instance, would normally be found to be protected by a presumed obligation of confidence, as would documents that detail “commercially sensitive” information.

Such documents may still be subject to an obligation of confidence, even if they come into your hands by accident. Once again, try to resolve this issue in your research contract before beginning the research.

Courts have traditionally recognised a “public interest” defence that allows information to be published if the public interest requires it. In the leading English case, information that showed that a laboratory might be reaching false results in drunk-driving tests was allowed to be published.

In an extreme case you might be able to plead that your obligation to release the information to protect public safety outweighs your obligation to protect the confidence. It is by far preferable, however, to have an “out” clause in your contract that allows you to publish your findings if they impact on the public’s health and safety.

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B. Protection of databases Unlike that of the United Kingdom or the rest of the European Union, New Zealand law does not provide separate protection for databases in their own right. Databases in New Zealand are only protected by the general law of copyright. The Copyright Act 1994 clearly includes databases as compilations within its definition of literary works. The oddity of this to non-lawyers is that databases containing scientific or numerical information are protected by the Copyright Act in the same way as the works of Janet Frame. However, copyright law does not, as explained above, protect the underlying data, only the original arrangement of data.

Doubt over the strength of the protection afforded by copyright to even the organisation of databases was created by the decision of the United States Supreme Court in Feist v Rural Telephone Services (1991) 499 US 340. In this case the Supreme Court held that the mere alphabetical listing of telephone numbers according to subscribers was insufficient to justify copyright protection, as such an arrangement was below the threshold of the required originality.

Subsequent decisions of American courts have emphasised that the Feist decision does not necessarily prevent copyright protection where there has been a greater degree of selection, as opposed to including all possible data, or where the data is presented in a less mechanical format. For example, while Feist clearly established that the alphabetical listing of all telephone subscribers was not sufficiently original, another court held that listings of the best Chinese restaurants in San Francisco could potentially be protected by copyright law.

New Zealand law shares the same requirement of “originality�, although there have been some doubts over whether New Zealand law requires a degree of intellectual creativity as opposed to the sheer effort of putting a database together. New Zealand courts are yet to resolve the issue over whether, for example, the underlying data of Telecom’s telephone directory merits copyright protection, although an interim decision held that it was arguable that under New Zealand law it could be protected.

Databases are also subject to the requirement that an alleged infringement must involve taking a substantial part of the copyright work. While it is clear in relation to a database that a substantial part of a database would naturally include the whole database, it is unclear whether the extraction of some data from a larger database would necessarily breach the substantial part requirements of the copyright infringement, especially if those data were to be extracted without the organisation, and hence the originality, of the original data base.

Databases are protected as collections of information and, at least in theory, individual items in the database are not protected by the database protection. Courts have sometimes found it difficult to separate out protection as a collection and protection of the individual pieces of data in the database. Works such as articles that are contained in a database are still undoubtedly protected, however, by their original copyright protection. The inclusion of an article, say, in a database does not necessarily change the ownership of the original author, although, of course, those rights might be modified by the contract under which the work was incorporated in the database, which might give the database owner the right to authorise reproduction etc.

These doubts have led database producers to argue for a special database right based on whether the work was produced through substantial effort, and protecting databases against unreasonable extraction. Such laws have been implemented in the European Union (including the United Kingdom) but not yet in the United States or in New Zealand.

It is clear that database protection is a major issue for both European Union and United States trade representatives when negotiating trade agreements.

In the absence of certainty as to the intellectual property protection that may be given to databases, those who produce databases may seek to rely upon contract, only giving access to the databases on the condition that use of the data be confined to certain purposes and, if applicable, with appropriate remuneration. The validity of such contracts and restraint on the uses of the information contained in databases is still debated in legal circles, but such contractual limitations are perhaps more likely to be successful than relying on copyright alone.

If you are to rely on such contractual terms, they must be made clear to the database user before the database user accesses the database. This is especially important in relation to electronic databases, where simply placing conditions of use on an obscure web page seldom visited by users might give the potential for the user to argue that he or she had not agreed to those terms. Best practice would be to require users to indicate consent actively each time they use the database.

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XIII

Responsibilities of libraries

Libraries in higher education institutions have additional rights and responsibilities concerning protection of copyright and fair dealing. These are documented in their professional literature and will not be covered here.

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XIV

The academic’s intellectual property and the employer: copyright, patents, “trade secrets” and the duty of fidelity

A. Copyright The employment rule places in question the extent to which academics own the intellectual property in their work.

The rule of thumb is usually that work is produced in the course of employment if there is a contractual obligation to produce it or if, without special payment or arrangement, consumable resources of the employer are used in its production. For most academic staff this would cover their obligation to publish the results of their research and to produce lecture handouts and course material. It would also do so if payment has been taken in the form of paid sabbatical leave or relief of workload.

There is generally felt, however, to be a customary exception for academics in relation to “scholarly works” that leaves the copyright ownership of such work with the academic. Intellectual property policies in the universities generally reflect this by waiving all rights in respect of “scholarly works”, which includes books, articles and conference papers. Some universities, however, claim either copyright in or a licence to use materials produced for teaching.

Authors should seek to retain copyright in this material, whether it is in print or electronic form, while allowing for its free use by the institution for legitimate teaching purposes while the academic is employed by the institution. There have been significant problems where some tertiary institutions have required staff to produce extensive teaching materials and then have found the teacher essentially surplus to requirements.

B. Patents An individual who devises an invention which would qualify for a patent has rights, though not necessarily the right to apply for a patent. Where an invention has been made in the course of the inventor’s duties as an employee of a New Zealand employer, the question arises as to whether: (a) it was made in the course of the inventor’s normal duties as employee, and whether those normal duties were such that an invention might reasonably be expected to result from the inventor carrying out of those duties; or (b) it was made in the course of duties falling outside those normal duties, but in the course of duties specially assigned to the inventor, such that an invention might reasonably be expected to result from the inventor carrying out those specially assigned duties; or (c) the nature of the inventor’s duties and the particular responsibility arising from their nature were, at the time the invention was made, such that the inventor had a special obligation to further the interests of the employer’s undertaking.

If the answer to any of these questions is “yes”, the invention may well belong to the employer, although the law relating to patents is not as clear as that of copyright. There is a very good discussion of the rather complicated case law in Ann Monotti with Sam Ricketson, Universities and Intellectual Property: Ownership and Exploitation.

Universities normally, perhaps now always, take the view that all inventions made by academic or academic-related staff fall within the scope of one or more of (a) to (c) above. They are encouraged to do so by the obligation placed on them by their public-sector funders to further the commercial exploitation of intellectual property rights arising from publicly-funded research and the contracts for private-sector funding into which they enter. That they should do so is not necessarily to the detriment of employees.

In the United Kingdom, there is a statutory requirement that, where an employee has made an invention belonging to

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Click here to return to contents page the employer, a patent has been granted for it and that patent has been of “outstanding” benefit to the employer, the employer must pay to the employee a fair share of the benefit which the former has derived from the invention, or may reasonably be expected to derive from it. Many of the current or proposed university intellectual property agreements between New Zealand staff and their universities provide for similar equitable compensation.

To prepare a patent application is expensive, to exploit commercially the rights under a patent still more so, and inventors are by no means always either entrepreneurial in spirit or experienced in business negotiations. Universities, though not spectacularly rich, can almost always find greater resources than individuals to take the initial steps towards exploiting inventions. Most universities now have specialist staff with relevant skills and experience in technology transfer to advise inventors within the university and to negotiate advantageous terms with those who might have the will and the means to develop an invention further. While inventors should expect to be consulted, and to be required to take an interest, they will normally, if their invention belongs to the employer, be able to escape the domination of their life by its commercial aspects, leaving them free to pursue further research and further inventions.

Moreover, if an invention belongs to the employer, support-staff time and consumable resources used in the making and early development of the invention cannot be claimed back from the employee-inventor, though there may be a charge on the gross royalties or other receipts derived from the invention.

Good practice under a collective patent-rights agreement is to pay the first gross income the employing institution derives from an invention to the inventor, up to a ceiling of several thousand dollars, so as to provide a motive for active participation in the first stages of exploitation; then to recover the university’s costs up to that point; and thereafter to split the employer’s net profits on a stepped percentage scale, with the employer taking more as the profits accumulate. Even if the scale is reasonably generous, and the employer’s specialist technology-transfer staff reasonably competent, an inventor would need to be very talented in business, and or to have made an invention which has achieved very great and very predictable success, in order to get enough profit out of exploiting the invention without the employer’s assistance to compensate for the additional distraction from his or her academic career. Nevertheless, employers should be provided with the incentive to perform by a requirement for them to offer their rights to the inventor if defined steps have not been taken to exploit the invention within a specified period. There must also be provision for independent audit of the income and expenditure related to the rights, and for independent valuation of any goods or services charged to the account which were provided by the employing institution itself, or by any associated company. The cost of such audit or valuation might be charged to the inventor who called for it if that cost is equal to, or greater than, the amount found due to be credited to that person’s account. Otherwise the cost would be charged to the general funds of the employer. Employers would do well to heed the advice of the United Kingdom National Academies Policy Advisory Group in this area that, “if the arrangements as a whole do not strike researchers as efficient, helpful, and fair, inventions may go unrevealed, or be taken off surreptitiously to the private sector”.

The question may arise as to whether the employee’s rights in an invention should be allotted to one individual, or shared by two or more. An inventor must be the actual devisor of the invention, so it is not sufficient to have contributed vital background information or understanding: an inventor must have participated in the devising of the essence of the invention. A sole or joint inventor has the right to be named in any patent and may sue for its revocation if she or he is not. A sole or joint inventor also has a right to apply for rectification of a patent if it names as sole or joint inventor someone who is not. Accordingly, it is ultimately not for a university institution, even if it is the proprietor of an invention, to decide (or to agree with the Association how to decide) who made that invention.

C. Trade secrets and confidential information It is possible for universities to claim that researchers are subject to an obligation of confidence in relation to a particular research project, and to prevent the researcher releasing information or otherwise using information produced during the researcher’s appointment when the academic leaves the appointment. While courts have recognised that employees may owe an obligation not to make use of particular information, there is also clearly a balance that must be struck between the employer’s ability to protect investment in a particular development and the employee’s right to make use of general skills and knowledge obtained during employment.

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D. The duty of fidelity Academics are employees and, like all employees, they owe an obligation to act in the best interests of their employers while they are employed. Opportunities that come the academic’s way by virtue of employment at particular institutions may well be later held to belong to the academic’s employer. For example, if a business approaches a computer programmer, not because of her own reputation but because of her department’s reputation and the desire to be involved with the department, it would be an infringement of the academic’s, or general staff member’s duty of fidelity to take that opportunity for her own advantage. This might especially be so if the academic’s very job involves seeking out such partnerships or opportunities on behalf of the department or the university. A consequence of being found to have breached the obligation of fidelity can be seen in the decision in the recent Australian case of Victoria University of Technology v Wilson [2004] VSC 33, to the effect that the academic may be held to hold intellectual property or income developed as a result of that opportunity on trust for his or her employer. See Tom Reid, Academics and Intellectual Property: Treading the Tightrope [2004] Deakin Law Review 32, 2004). This is available online, link here.

E. The general scope of New Zealand universities’ intellectual property policies In general, New Zealand universities have tended to divide intellectual property produced by their employees between literary works such as articles and books as well as teaching materials, notes and the like on the one hand, and more-obviously commercially exploitable intellectual property such a computer programs, inventions and patents.

While New Zealand universities tend to assert that they initially own all intellectual property produced by employees, the various intellectual property policies in the first category of works belongs to the employee, but ownership in the latter is retained by the university, especially if that work becomes commercially valuable. Various agreements have different provisions relating to teaching materials, which either might be owned by the university or the university may retain a right to use materials or notes. Some policies, such as the Victoria policy, place an obligation on staff to notify works in the second category to their managers.

Relevant policies, where publicly accessible, can be found on the websites of each of the universities.

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Using other people’s copyright

A. General The conflict of interest that can arise between the protection of rights’ owners and the free flow of information within the academic community has traditionally been accommodated by the concept of fair dealing and other specific exceptions. The traditional rights of fair dealing do not extend to works that are published or copied electronically.

Proposed new international treaties, and the increase in the use of licensing agreements threaten to shift the balance towards a situation where all uses will need to be paid for. Many aspects relating to copyright in electronic media and publication on the internet are still being negotiated or disputed, and will need to be tested by case law. A proper management of intellectual property rights is necessary to protect the interests of all parties.

B. Infringing copyright In general, copyright is infringed by doing those things which the Copyright Act gives exclusive rights of doing to the owner of the copyright. These are defined in section 16 of the Copyright Act as including: • Copying.

• Ιssuing copies of the work to the public (which does not include reselling or loaning material already available, but includes renting videos).

• Performing the work to the public.

• Playing the work to the public.

• Showing a work to the public.

• Broadcasting the work or including it in a cable programme service.

• Adapting a work.

• Authorising the doing of any of the above actions.

These are commonly called “primary infringements of copyright”. While it might be assumed that “copying” or “performing” are relatively straightforward concepts, courts often given a very liberal interpretation of acts which might amount to infringement. The first important point to note is that courts will often stretch the language of these provisions to include what the court has become convinced is blatant piracy. For example, while plain English would indicate that broadcasting to the public, or performing to the public, might connote the general public, courts tend to interpret “public” as being any group of people from which the copyright owner would like to receive a royalty.

Thus, showing a broadcast to a class, for instance, would be showing the work to a public and therefore would be infringement of the copyright, even if the general public would normally be excluded from the classroom. It is, therefore, necessary to rely on the particular exceptions which allow for educational uses of copyright, although the same exceptions do not necessarily apply when one is giving a research seminar to one’s colleagues.

1. Infringement and the internet A current government proposal would replace the concept of “copying” with the concept of a reproduction right. It is proposed, however, that there would be a limited exception to the reproduction right involving so-called “transient” copying of material on one’s computer. Arguably at the moment, any copying, regardless of how long a copy is retained, is an infringement. The Cabinet paper produced by the Ministry of Economic Development would exempt from the concept of “reproduction” the classic kind of web-surfing that most of us engage in, where the material is stored only in our computer’s RAM.

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Click here to return to contents page Perhaps the most difficult concept to understand under the 1994 Act has been the concept of including the work in a cable programme. The Copyright Act 1994 currently draws a distinction between broadcasting as wireless communication and cable programme as wired communication. The definition of cable programme is extremely complicated, leading to a number of arguments that including works on a website, that is, making them available by wired communication, would not necessarily infringe the Copyright Act, whereas broadcasting those same works without wires would. Relying on such technical definitions, however, has always been dangerous. As argued before, judges simply don’t like what they view as naked piracy.

The current Ministry of Economic Development Cabinet paper proposes to do away with the technical distinction between wired and wireless communication, and proposes simply that there be a general “communication right” which is simply infringed whenever a copyright work is “communicated”.

There is, at present, some uncertainty as to the liability of internet service providers (ISPs) whose services are used by others to infringe copyright. The current proposals for reform contemplate removing any liability where the ISP is unaware of that actual infringement. It is contemplated that the exception will stretch in certain limited circumstances to caching. At present there is no draft of the definition of internet service provider. It may that some of the services provided by universities to their staff or students may be covered by the definition.

2. Authorisation of infringement of copyright What is meant by “authorising” the infringement of copyright is not entirely clear, either in the Act or in the judgments which have interpreted the concept of authorisation. At one extreme authorisation may simply be the makingavailable of the means by which others might infringe copyright, while at the other extreme it might involve either instructing or giving approval to another to infringe a third party’s copyright.

The concept has been particularly problematic for academic libraries which make photocopiers available to students.

The leading judgment in the area almost certainly requires libraries to actively discourage the use of those copies to infringe copyright works. A recent judgment from the Supreme Court of Canada, however, has indicated, along with a prior decision of the House of Lords from the United Kingdom, that the concept of authorisation is much closer to the granting-permission end of the spectrum.

The problem relates not just to libraries, however. It clearly has an application to the digital environment whereby any electronic means which might be used by students to copy or disseminate works is made available. (It might apply to a bulletin board or electronic blackboard facility made available for a course.) For example, in the United States the concept of authorisation has been used in relation to peer-to-peer networks which enable, but which certainly do not purport to grant permission for, the swapping of music. Great care needs to be taken whenever giving the means by which copyright might be infringed to those over whom you do not have complete control. You should always actively discourage any possible use of means that you provide to others that might enable them to infringe copyright.

3. Parallel importing and copyright The Copyright Act also provides for a number of “secondary” infringements of copyright. Perhaps the most significant of those secondary infringements used to be that in section 35 prohibiting the importing of an infringing copying of a work. The way that section and the definition of “infringing copying” were previously drafted had the consequence of meaning that works that had been legally produced overseas could not be imported into New Zealand for commercial purposes without permission of the New Zealand copyright owner. The change to that wording in 1998 permits the importing of goods as long as they were legally produced overseas, at least so far as copyright law is concerned. It is important to note that the parallel importation restrictions remain in place for patents, and it is therefore impermissible to import into New Zealand goods that are subject to a New Zealand patent without the permission of the New Zealand patent owner. (Although in some circumstances courts might hold that there is an implied license for such importation.) The situation under the law of trade marks is far more complicated. It cannot be assumed that, just because the goods were legally produced overseas, the same goods can be marketed in New Zealand with a trade mark that is owned by a different New Zealand owner.

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Click here to return to contents page 4. A “substantial part” Copyright can only be infringed in a work by reproducing a “substantial part” of a work. A number of myths have grown up around the concept of “substantial part”. Substantial part appears to many to involve some kind of quantitative measurement, say 10 percent of a work. This is simply wrong.

Case law is quite clear that what is a substantial part of a work is a purely qualitative assessment which focuses around whether the “use” of the work has taken a part of the value of the original work. The difficulty with such a test is that it becomes extremely difficult to argue that, having taken something from a work, you have taken a valueless part of the work. Care must also be taken with what appeared at first sight to be one work, say an anthology of poetry, which may in fact turn out to be the collection of many works, the poems; and the taking of only a little of the book may in fact be taking a substantial part of one of the works contained in the book. The same may well be true of illustrations or of photographs published in a book. While the individual photograph may only amount to a tiny fraction of the overall work, in fact each photograph will be an individual artistic work in and of its own right. One major exception may be in relation to the typographical arrangement of a published edition. The House of Lords has held that a substantial part of a typographical arrangement refers to, at the very minimum, the layout of one page and not the layout of one story on a particular page.

C. Permitted uses of copyright 1. Introduction The New Zealand Copyright Act follows the English tradition of providing a number of tightly-circumscribed permitted uses of copyright material. It is important to contrast this tradition with United States copyright law, which often dominates copyright discussion. Rather than having a large number of closely-drafted exceptions with technical requirements, the United States fair-use provisions are often described as “a rule of reason” which balances the interests of copyright owners with copyright users. The focus in New Zealand is on technical compliance with all of the requirements of the particular exceptions at hand. If you don’t qualify exactly for one of the exceptions, you don’t qualify at all.

Permitted uses of copyright can be divided into three broad categories: the fair-dealing exceptions which apply to everybody engaged in news reporting, criticism or review and research and private study; exceptions which apply to particular kinds of institutions or users, relevantly for this paper for educational institutions and prescribed libraries; and exceptions for particular uses in particular circumstances, such as home recording for time-shifting of television programmes or the public recitation of a literary work.

The most important exceptions are undoubtedly the fair dealing exceptions contained in section 42 and section 43 of the Copyright Act 1994. The essential elements of both sections is fair dealing. There is no precise definition of what is or is not fair dealing for the purposes of section 42 (use for the purpose of criticism, review or news reporting). Section 43, however, sets out a non-exclusive series of principles against which fair dealing for the purposes of research and private study must be assessed. More than likely the same factors are applicable to section 42. These factors are: (a) the purpose of the copying; and (b) the nature of the work copied; and (c) whether the work could have been obtained within a reasonable time at an ordinary commercial price; and (d) the effect of the copying on the potential market for, or value of, the work; and (e) where part of a work is copied, the amount and substantiality of the part copied taken in relation to the whole work.

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Click here to return to contents page Uses which compete directly with the original copyright work are, for instance, unlikely to be classified as fair dealing. In addition, there is a strong bias towards allowing “authors” the right to choose to publish or not to publish their works.

While acknowledgement is only an explicit statutory requirement when the fair dealing is for the purposes of criticism or review, it appears as well established that fair dealing for purposes of research and private study or news reporting ought to be accompanied by as comprehensive an acknowledgement of the origins of the work as possible.

2. Research and private study Some points can be made about research and private study: • Anyone is allowed to reproduce copyright works for research or private study.

• It is generally accepted that research may include that undertaken for commercial or industrial purposes.

• However, it is generally accepted that you cannot copy for the purposes of someone else’s research or private study. It is not legal, therefore, to copy material or compile material on behalf of someone else, even if you believe that that the person (including a student) will use it for research. There is a special exception of librarians, but even librarians may only copy material after a specific request.

• Only one copy can be made of material for the purposes of research or private study.

• Private study excludes class or group study.

3. Criticism or review and news reporting: Some points can be made about criticism or review and news reporting.

• The criticism or review will often be about the particular copyright work which is being copied.

However, case law has tended to indicate that criticism may be directed towards the values underlying a particular work or, perhaps more controversially, to society in general.

• The amount taken for criticism or review or news reporting must be no more than is necessary for the purposes of criticism or review or news reporting. It is not permissible to take a lot of a copyright work and then to slap around the reproduced work limited criticism or review as a way of excusing the original copying.

• The fact that the author has chosen not to publish letters, diaries or private photographs is a factor that clearly goes against the publication of such material as fair dealing. It may be better simply to summarise the contents of a letter or diary rather than publishing verbatim quotes.

• The news-reporting exception does not apply to photographs, a concession to the fact that photographers make their very living from selling images to newspapers and the like.

D. Educational uses There are very limited exceptions under the Copyright Act 1994 for educational institutions to provide students with course-packs based on copyright works. This reflects, apparently, a deliberate decision by Parliament in 1994 that educational institutions ought to pay for the use they make of others’ copyright works. Before 1994, a number of universities had attempted to rely upon provisions of the previous Act to argue that course-packs were permitted by the statute. Those attempts failed, and possibly created an environment in which legitimate interests of tertiary education institutions were overlooked. The preferred model was one in which tertiary institutions negotiate directly with copyright owners through licensing bodies for the right to use copyright works in their course materials. In a test AUS Guide to Intellectual Property Rights

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Click here to return to contents page case, the New Zealand universities argued that a number of the provisions of the Copyright Act allow them to produce course packs or to reproduce copyright materials in forms that might be held by, say, libraries in expectation of students coming to read them. Essentially that attempt failed in the High Court, and the clear bias of the Act in favour of universities negotiating directly with copyright owners was reasserted by the Court. The essential point for assessing educational institutions’ position in relation to copying for students is that the Copyright Act contains no general right to copy for students, and especially does not allow the most convenient practice of preparing readings either for distribution or so that they might be available at some point like the library, in advance of the students actually requesting each individual work. That direction appears likely to continue even in the new electronic environment as, in the recent review of the Copyright Act, the Ministry of Economic Development has largely rejected arguments by librarians and educationalists that digitisation of works ought to be allowed by the Copyright Act itself, as opposed to being allowed through licences.

1. Producing course materials The current statutory provisions do enable some limited copying for the purposes of education. Section 44 does allow copying of materials directly for class. However, it comes with a number of severe restrictions for those who seek to use the provisions. The Act allows the use of photocopiers or other electronic devices to copy teaching materials only in very rare circumstance. You are allowed to make only one copy; if you do make more than one copy you can copy less than 3 per cent, or if greater three pages of a work, so long as students are not charged for the copies. The current proposals for digital copyright reform would also allow for such copying to be made available to students digitally.

The same proposals would enable educational institutions to cache relevant websites for reference by students.

In light of the restrictions, educational institutions have, by and large, entered into licensing agreements with Copyright Licensing Limited, a body jointly owned by the New Zealand Society for Authors and the Book Publishers’ Association of New Zealand. Copyright Licensing Limited provides a blanket licence which enables tertiary educational institutions to reproduce copyright material in course-packs as long as the copying remains within certain key parameters. Under the terms of the licence there is no need to approach individual publishers or authors for permission. Copyright Licensing Limited samples course-materials produced by tertiary educational institutions, and its payments back to publishers and authors are based on that sampling.

The most important of the parameters of the Copyright Licensing Limited’s licence are: • Copying of the whole or any part of a periodical article, or more than one article from the same issue of a periodical where these are on the same subject (that is, articles which are closely related and focus on a particular aspect of a subject).

• Copying up to 10% of a work (other than a periodical article), or one chapter of a work, whichever is the greater.

• Copying up to 15 pages of a single work contained in a collection of works, even if these works may have been separately published.

• Copying the whole of an artistic work, such as an illustration or photograph, where it is published in a copyright work.

• Copying the whole of an out-of-print work, subject to prior approval from CLL. • Making a repeat copy from a work within 14 days, provided that such copying is not made by or on behalf of the same staff member for the same paper or course of study (the Copyright Act permits repeat copying after 14 days).

• Making sufficient copies to distribute to each student enrolled in the course, plus spare copies to replace lost copies.

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Click here to return to contents page Some works are not covered by the licence. These include: • Works downloaded from the Internet (but note that articles from full-text databases subscribed to by the Library are covered by separate licence agreements with the database vendors).

• Printed music, including the words.

• Loose maps and charts.

• Unpublished religious orders of service.

• New Zealand newspapers.

• House journals and similar publications.

• Illustrations and photographs published separately from a work.

• Works which the copyright owner has prominently stipulated may not be copied under any copyright licence.

• Privately owned documents issued for tuition purposes and limited to clientele who pay fees.

• Theses, dissertations and student papers.

For the first time, the licence concluded between the universities and Copyright Licensing Limited at the beginning of 2004 included the ability to digitise materials and make them available in an electronic format on secure university servers. The amount and type of material that can be distributed to students electronically is restricted by the same parameters as hard-copy course-materials. One suspects that “page” in these guidelines relates to the pagination of the original text version.

Details about Copyright Licensing Limited are available on its website: Link here 2. Playing television programmes to your class The Copyright Act permits the playing of broadcasts, cable programmes or sound recordings for the purposes of education. What the Act does not necessarily permit is the recording of a broadcast or cable programme for the purpose of showing that broadcast or cable programme to a class if there is a licence system in place to provide a licence for such copying. In New Zealand, such a licence is provided by Screenrights, which works in a similar way to Copyright Licensing Limited in the sense that it provides a blanket licence for the recording of television programmes for educational institutions and distributes royalties back to copyright owners through a sampling regime. The details of the scheme appear on Screenrights’ website (link here). The New Zealand universities are members.

3. Using newspaper articles in educational course-packs One notable exception in relation to the coverage of the Copyright Licensing Limited licence is that it does not cover articles from newspapers. As with other works, newspapers contain a number of separate copyrights. Publishers of newspapers have a copyright in the typographical arrangement of the entire newspaper and perhaps in each individual page, but not in each individual story. There is also a separate literary or artistic copyright for each story or photograph or illustration in the newspaper. Permission is required to reproduce individual articles from newspapers, just as it would be to reproduce the entire page or newspaper. More than likely, the newspaper owns the copyright in most of the articles published in the newspaper. A blanket licence for reproducing articles from newspapers is available from the Print Media Copyright Agency (PMCA). Information about the PMCA is available on its website (link here). At the time of writing, the licence products offered by the PCMA do not meet the needs of educational institutions, although it is understood that there are negotiations proceeding between the PMCA and the universities.

The net result of all this is that, in order to reproduce the newspaper item, it is necessary to get individual permission from the newspaper publisher.

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Click here to return to contents page 4. Reproduction for examinations Copying for the purposes of examination is allowed under section 49 of the Act, provided that it is for setting the questions, communicating the questions to the candidates or answering the questions. Subsequent publication or distribution of past examination papers that contain copyright material is not covered by the protection, so care ought to be taken in reproducing your old exam problems or papers. It also should be remembered that exam papers are themselves copyright works and therefore you need to get correct permission. A collection of exam questions made by another academic might also be protected as a separate copyright work.

E. Copying government materials In general, work produced by the Government is protected by copyright in the same way as other work. A special copyright period of 100 years applies to copyright work produced by Crown employees. Permission, therefore, ought to be sought unless you are otherwise protected under the Copyright Act by, for instance, the permitted uses. The best starting point for permission is the department that produced the material in the first place. If that department or entity has been abolished, or amalgamated with another, check first with the successor department.

However, there is no copyright protection for law related materials: • Any bill introduced into the House of Representatives.

• Any act as defined in section 4 of the Acts Interpretation Act 1924.

• Any regulations.

• Any bylaw as defined in section 2 of the Bylaws Act 1910.

• The New Zealand Parliamentary Debates.

• Reports of select committees laid before the House of Representatives.

• Judgments of any court or tribunal.

• Reports of royal commissions, commissions of inquiry, ministerial inquiries, or statutory inquiries.

It must always be remembered, however, that this means only the underlying material is not protected, but that the format in which it has been published may be protected as a typographical arrangement, and merely copying the printed version of a law report or a statute might infringe the publisher’s copyright.

Apart from these specials works listed above, government material, both central and local, is subject to copyright protection.

There is also no infringement of copyright for anything done for the purposes of public administration. This is narrowly defined as parliamentary and judicial proceedings, royal commissions and statutory inquiries.

F. Theses, dissertations and other student research Theses and dissertations are unpublished works. Depending on the regulations of the individual institution, the copyright may belong to either the student or the university. In the former case, the student’s permission is required for copying. In practice, this is usually obtained before a copy is deposited in a library. In the latter case, the policy will depend on the institution. Most New Zealand universities acknowledge that students generally are the owners of copyright in material produced during their course of study. Lincoln University is an exception in trying to assert rights over all work produced as part of study. However, all the universities have clauses in their policies, or expectations, that they will at least share intellectual property that is created with the assistance of staff. These clauses, by their very nature, are unclear. It is advisable, as well as required by some universities, that ownership expectations are made very clear to research students before they begin work on projects.

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G. Computer programs Section 80 of the Copyright Act allows a lawful user of a computer program to make a backup copy of a computer program as long as it is used only to replace the original. Copyright applies to both the source and object codes. Unlike some overseas copyright regimes, this right to make a backup copy can be restricted by conditions imposed by the copyright owner. The current digital copyright reforms also propose a right to decompile a program to obtain information necessary to create an independent, but not substantially similar, program where that information is not otherwise readily available. The proposed decompilation right would not be subject to restrictions imposed by the copyright owner.

Under New Zealand law, computer programs may also be patented, subject to the normal requirement that the application be novel. The big problem with patenting computer programs has always been differentiating the particular series of instructions for which the patent is sought from simply stating a “law of nature” or of mathematics, that if a series of steps is carried out a particular useful result will eventuate.

H. Email and material from web pages Until the situation is clarified, it is safest to assume that material may be downloaded only for personal use, and not for electronic storage or retransmission without permission. Authors of web pages are advised to include a statement asserting their rights.

E-mail messages in some circumstances are unquestionably literary works, and there is a technical infringement of copyright in forwarding messages, although permission may be implicit in many circumstances. In many cases, care must be taken not to breach any obligation of confidence in forwarding emails.

I. Research data and unpublished material Those who make use of archives or unpublished work are generally aware, at least in outline, of the limitations placed on them by copyright law. Just because a manuscript or a letter is unpublished does not mean that it is not a literary work under the Copyright Act. You may still be able to quote parts of letters or manuscripts, either because those parts might not amount to a substantial part of the letter or manuscript, or for the purposes of research, or private study or of criticism.

Those who conduct interviews or surveys as part of their research may be less likely to remember that, if they make use of verbatim quotations from their informants, they will probably breach the copyright, and possibly the moral right of those people (or perhaps those people’s employers), unless they have secured appropriate waivers. The informants will not be joint authors of the researcher’s work, because the works of which they are authors will be distinct.

The fact that survey responses are anonymous, however, does not deprive them of copyright protection, and researchers should be aware that it may be impossible to secure a valid waiver from a child.

Researchers and others should also bear in mind that they may be sued if they disseminate, without permission, information they are given in confidence: the fact that information is not sensitive may reduce the damages, but it does not make the breach of confidence lawful. Information given in confidence is not confined to that received from data subjects, but extends to that received from colleagues about their work if it was given in confidence.

Research data as such will normally be considered to be information that is not capable of protection but, of course, there may be copyright protection in the notes that encompass the data and in the database in which the information is contained.

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XVI

Penalties

As educational institutions are widely perceived by rights’ owners to be hotbeds of infringement of their intellectual property rights, threats have often been made, and occasionally carried out, to make an example of such an institution in the courts. In order to convince rights’ owners that they are doing their best, institutions often threaten that members of their staff who infringe intellectual property rights in the course of employment will face dire sanctions; members would be well-advised not to assume that, if the employer was under pressure, these threats would remain empty. Even if those with relatively secure employment might not lose their jobs, employers have the option of involving employees who have got them into trouble as co-defendants to legal action against them, and then sharing the bill for damages and plaintiff’s costs with them. Not every action, or threat of action, will be well-founded, however, and anyone who is threatened should seek immediate advice before putting their hands up, even if they think they are probably guilty.

Copyright also carries criminal penalties. Unless you are dealing illicitly with products on a commercial scale, though, you are unlikely to be guilty of a crime yourself; and, if your own rights are criminally infringed, you will usually find it difficult to enlist the state’s assistance. Indeed, enforcing one’s rights is never easy to do on one’s own, and the Association is not able to provide significant help unless the infringement occurs within the context of your employment.

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XVII

Some Useful Books

Susy Frankel and Geoff McLay Intellectual Property in New Zealand (LexisNexis Butterworths, 2002) Ann Monotti with Sam Ricketson Universities and Intellectual Property: Ownership and Exploitation (Oxford University Press, Oxford, 2003) Lionel Bently and Brad Sherman Intellectual Property Law (2ed Oxford University Press, Oxford, 2004) WR Conrnish Intellectual Property Patents, Copyright, Designs & Confidential Information ( 5th ed, Sweet & Maxwell, London, 2001) Hugh Laddie, Peter Prescott, Mary Vitoira, Adrian Speck and Lindsay Lane The Modern Law of Copyright and Design (3ed, Butterworths, London, 2000) Sam Ricketson The Law of Intellectual Property : Copyright, Designs and Patents Act (LBC Information Services, Sydney, 1999)

Care needs to be taken with overseas books and guides. Much of New Zealand’s intellectual property law is very similar to the intellectual property law in the United Kingdom and Australia while, at the same time, being both subtly and importantly different, especially in relation to newer technology. The United Kingdom continues to be more and more heavily influenced by European Union law.

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