| Please be advised that this copyright articule is | | | | 4. even if he informed you that the |
| basedentirely on a hypothetical case study. | | | | information was confidential, there is no evidence |
| Author: Kingsley OkaforIgwe | | | | to suggest that you misused such information to |
| Intellectual property - Copyright- possible | | | | his detriment. |
| infringement – | | | | Having considered that you did not infringe on |
| whether script was reproduced Copyright Act | | | | Cruise’s copyright pursuant to 10 s. 32(1) (a) |
| 1968(Cth) | | | | of the Copyright Act 1968 (Cth), and that you do |
| Obligation of confidence –whether received | | | | not owe either fiduciary or obligation of |
| information was imparted in confidence | | | | confidence to Cruise, there exists one other |
| Breach of Contract –in the event of copyright | | | | avenue through which Wolf Network may take |
| infringement, whether it constitutes breach of | | | | legal action against you, and that is breach of |
| contract. | | | | contract. |
| | | | | Liability to Wolf Network; Breach of Contract: |
| You have requested that I find out whether you | | | | When you signed the contract with Wolf |
| are liable to a lawsuit in relation to a possible | | | | Network, you made an undertaking that you |
| breach of the contract that you entered into with | | | | were free of obligation to any third party. Your |
| Wolf Network. | | | | liability to Wolf Network therefore depends on |
| You informed me that you met with one | | | | whether or not you owed a prior obligation to |
| scriptwriter, Harrison Cruise, on a number of | | | | another party. Having considered the Copyright |
| occasions in 2007, and discussed an idea that he | | | | Act 1968(Cth) and the basis of your contact with |
| had for a Television drama, provincially titled | | | | Cruise, there is no evidence that suggests that |
| ‘Melbourne at Law’. You liked the general | | | | your contributions to Sydney at Law were not |
| ideas that he proposed but did not enter into | | | | free of obligation to anyone, or any third party |
| contract with him. | | | | because of the fact that you authored your |
| A broadcasting company known as Wolf Network | | | | contributions to the Wolf Network. |
| who was developing a new show based on the | | | | Under s.35(2) of the Copyright Act 1968 (Cth) |
| lives of lawyers and police in New South Wales | | | | the author is the first owner of copyright if the |
| subsequently invited you to join them, the | | | | work is a text work, music, a dramatic work, a |
| invitation of which you accepted. Upon joining the | | | | computer program or an artistic work, and |
| Network, you suggested that the show be titled | | | | therefore entitled under s. 31(1) to enter into |
| ‘Sydney at Law’. A number of the | | | | contractual relationship to produce or reproduce |
| scenarios and details that Cruise had suggested | | | | the work in material form. For the purpose of |
| ended up being incorporated into “Sydney | | | | Copyright Act, 10 an author is a person who |
| at Law”, but was adapted to the New South | | | | expressed an idea or information in a material |
| Wales context. | | | | form. 11 A person who has ideas or suggestions, |
| You signed a contract with Wolf Network which | | | | but does not contribute in the creation of a |
| specified that all copyright in work developed | | | | particular work in issue is not the author of that |
| under the contract would be passed to Wolf | | | | work, and therefore, would not claim copyright |
| Network, and agreed that any material that you | | | | infringement so long as there are substantial |
| brought, or developed for the Network was free | | | | differences between the first expression in |
| of any obligation or liability to any other party. | | | | material form and any other subsequent |
| You are now concerned that Wolf Network may | | | | production. For example, 12 in Donoghue v Allied |
| sue you for possible breach of contract. You | | | | Newspapers Ltd (1938) Ch 106 the plaintiff |
| therefore sought my advice as to what, if any, | | | | claimed to have authored articles titled “ghost |
| legal liability you may owe to Wolf Network. | | | | written” because the articles were based on |
| The answers to your concerns are that you have | | | | his account of his racing career. The plaintiff was |
| no legal liability to Wolf Network. The reasons are | | | | contracted by the owners of the newspaper to |
| as follow: | | | | produce information about his racing career, and |
| Copyright: | | | | was interviewed by an employee of the |
| Pursuant to s. 32(1) (a) of the Copyright Act 1968 | | | | newspaper, Felstead. The information that the |
| (Cth) copyright subsists in the work that you | | | | plaintiff revealed to Felstead was subsequently |
| have produced for the Wolf Network. Even | | | | published as though the plaintiff had written it. A |
| though copyright may also subsist in Cruise’s | | | | few years later, Felstead updated the articles |
| work, he could not claim that your creation was a | | | | without the consent of the plaintiff and titled it |
| reproduction of his work. Although similarities may | | | | “my Racing Secrets. By Steve Donoghue”. |
| exist in terms of idea, or the theme, there is no | | | | The plaintiff therefore sued for copyright |
| copyright in an 1 idea or central concept, | | | | infringement. The court held that Felstead was |
| therefore any possible claim of copyright | | | | the author of the articles and therefore has |
| infringement based on idea or concept by Cruise | | | | copyright to the articles. Farwell J., who |
| may not sustain vigorous examination in court | | | | adjudicated in the case noted that: |
| should he elect to pursue a case of copyright | | | | |
| infringement for the following reasons: | | | | A person may have a brilliant idea for a story, |
| 1. when Cruise approached you, his script | | | | or for a picture, or for a play, and one which |
| was not complete and the provincial title | | | | appears to him to be original; but if he |
| –Melbourne at law had not been produced or | | | | communicates that idea to the author or an artist |
| broadcasted by any Television Network, or any | | | | or a playright, the production which is the result of |
| producer | | | | the communication of the idea to the author or |
| 2. the characteristics-that is the location, | | | | the artist or the playright is the copyright of the |
| the characters (and so forth ) portrayed in | | | | person who has clothed the idea in form, whether |
| Sydney at Law, were dissimilar to the | | | | by means of picture, a play, or a book, and the |
| expression made by Cruise, | | | | owner of the idea has no rights in the product. |
| 3. intended to be titled Melbourne at | | | | This goes to show that Cruise may not be |
| Law | | | | successful in any claim of copyright in work that |
| 4. there is no sufficient resemblance | | | | you produced independently. Such copyright in any |
| between the structure and the events portrayed | | | | event is vested in you. However, s. 35(6)Act |
| in Sydney at Law that would support any | | | | 1968 (Cth) states that with regards to 15 an |
| claim that there was a substantial reproduction | | | | author who produced work as part of his or her |
| of Cruise’s expression in Melbourne at Law | | | | employment, copyright subsists on the employer. |
| 5. although you recommended that the | | | | In this case, Wolf Network may have such title. |
| program be called Sydney at Law, Wolf Network | | | | From this proposition; if any legal action is to be |
| had commenced the process of producing the | | | | taken by Cruise, such action would be directed to |
| program before you were consulted | | | | Wolf Network. However, since you were |
| 6. despite having similar themes and titles | | | | contracted as a consultant, not as an employee, |
| substantial differences exist between Cruise’s | | | | your relationship with Wolf Network is that of a |
| 20 page summary treatment and Wolf | | | | contract of service not of services. 16 A person |
| Network’s near final television series. | | | | who is providing service on contract of service |
| 2 In Zeccola v Universal Studios Inc (1982) 67 | | | | terms is assumed to be an independent |
| FLR 225, 228, see also Peters v Coulter (1995) 33 | | | | contractor rather than an employee. You would |
| IPR 50; Telmak products Pty Ltd v Bond | | | | not be bound by terms of employment for the |
| International (1986) 65 ALR 319 the court held | | | | fact that your relationship with Wolf Network is |
| that adopting the idea behind a work and then | | | | not one of an employer and employee relationship |
| creating a work based on the copied idea is not | | | | but is instead, one of contract of service. In |
| an infringement of copyright. 3 In Nine Films | | | | University of London Press Ltd v University |
| & Television Pty Ltd v Ninox Television Ltd | | | | Tutorial Pres Ltd (1916) 2 Ch 601 the court found |
| (2005) FCA 1404 the court dismissed the | | | | that 17 the examiners who were appointed by |
| cross-claim of copyright infringement by Ninox | | | | the University of London were engaged under |
| who produced the prior show, “The | | | | contract of service and therefore were not |
| Block”. The court found that there was no | | | | bound by employment contract. |
| substantial copying of “The Block” by Nine | | | | Your work may have been informed by |
| Films who produced the “Australian Dream | | | | Cruise’s ideas, but that is not to say that |
| Home” in the sense that the two shows were | | | | there is striking similarity between your work and |
| very different in many features such as theme, | | | | that of Cruise, due to the fact that your work |
| style, mood and the varied characters involved. | | | | has different characteristics and adaptation. Since |
| At the time of your initial contact with Cruise, his | | | | your work is free of any obligation, and you have |
| work had not been published and it would appear | | | | not infringed on any copyright that subsists in |
| that the title that he proposed for his work may | | | | someone else’s work, I am therefore |
| not have had a trade mark at that time. Even if | | | | satisfied that you did not breach the contract that |
| the work had been published, or broadcasted, or | | | | you entered into with Wolf Network. If Wolf |
| that trade mark did subsist on the title, Melbourne | | | | Network were to go to the expense of pursuing |
| at Law, Sydney at Law was produced in a | | | | you for breach of contract, they would have to |
| different environment, with different characters, | | | | wait until there is a successful outcome of any |
| and under different circumstances in the sense | | | | litigation that Cruise may institute. |
| that it was produced in many locations in New | | | | In summary, Wolf Network would not have any |
| South Wales and depicted the lives, and | | | | concern about your contribution to Sydney atLaw |
| subcultures of lawyers and police officers in New | | | | if Cruise did not bring any legal action tending to |
| South Wales. | | | | show that you have infringed on his copyright, or |
| It would appear that your work may have been | | | | that you owe him obligation of confidence and |
| informed by Cruise’s ideas. On the other | | | | that you abused such confidence. The decision |
| hand, there is no evidence that the work you | | | | of the Court in all the cases that I have referred |
| created did copy or reproduce substantially any | | | | to, more especially, 18 Nine Films & |
| parts of Cruise’s work. For this reason, the | | | | Television Pty Ltd v Ninox Television Ltd (2005) |
| only avenue that Cruise may exploit to challenge | | | | FCA 1404 goes to show that courts understand |
| the genuineness of your work is that of obligation | | | | that although there may be similarities in themes, |
| of confidence and fiduciary. | | | | or ideas, those themes or ideas are not protected |
| Obligation of confidence and fiduciary: | | | | by the Copyright Act. |
| 4 Obligation of confidence arises when two | | | | The decision of the Court in Donoghue v Allied |
| parties have contractual relationship as in | | | | Newspapers Ltd (1938) Ch 106 is a strong |
| employment or in contract to provide services. | | | | authority in this respect, in the sense that the |
| Courts have described this as a special relationship | | | | Court held that although 19 the articles in issue |
| in the sense that an employer and employee | | | | were an account of the plaintiff’s racing |
| have a form of special relationship through which | | | | career which the plaintiff provided to Felstead, an |
| the employer put trust in the employee that the | | | | employee of the respondent, the Court held that |
| information made available to him or her in the | | | | Felstead was the author and therefore had |
| course of employment or to aid the employee to | | | | copyright of the articles.It is unlikely that Cruise |
| perform his or her duties effectively may be | | | | would institute any legal challenge tending to claim |
| imparted in confidence, therefore, in any event, | | | | copyright infringement, or obligation of confidence, |
| the person is bound by the dictates of the | | | | given that any copyright infringement that he |
| employment contract not to use the information | | | | may claim would not stand, due to the fact that |
| in a way that may be detrimental to the confider, | | | | the work that you had produced for Wolf |
| or exploit, or expropriate such information for | | | | Network differs substantially to the work that he |
| personal gain. 5 In Arklow Investments Ltd. and | | | | has produced.If Wolf Network elects to take any |
| Another v Maclean and Others (1999) UKPC 51 | | | | action against you for beach of contract, the onus |
| the plaintiff who was a customer of the | | | | would be on them to prove that you have |
| respondent (a merchant bank) appealed to the | | | | breached the contract in the absence of any |
| Privy Council seeking to overturn the decision of | | | | copyright infringement or obligation of confidence. |
| the Court of Appeal of New Zealand which held | | | | In addition, they would have to adduce evidence |
| that the respondent did not owe fiduciary | | | | to show that you are actually an employee rather |
| obligation to the customer that it had offered to | | | | than a consultant in order to prove that you |
| assist and that it had not misused any confidential | | | | breached such terms. |
| information. The Privy Council concurred with the | | | | Bibliography: |
| decision of the Court of Appeal and therefore | | | | Arklow InvestimentsLtd.and Another v Maclean |
| dismissed the appeal. | | | | and Others(1999)UKPC 51 |
| On the other hand, in Bristol and West Building | | | | Bluescope Steel Ltd v Kelly(2007) 72 IPR 289 |
| Society v Matthew (1998) CH 1, 18 the court | | | | Bristol and West Building Society v Mathew(1998) |
| states that fiduciary obligation arises 6 “when | | | | Ch 1, 18 |
| someone has undertaken to act for and on behalf | | | | Copyright Act 1968 (Cth) |
| of another in a particular matter in circumstances | | | | Donoghue v Allied Newspapers Ltd(1938) Ch 106 |
| which give rise to a relationship of trust and | | | | IP Commentary ‘ Copyright’ retrived 28 |
| confidence”. In any event, there must be an | | | | Febuary 2008: |
| expression to act on behalf of another for | | | | LexisNexis: ‘Obligation of Confidence and |
| obligation of confidence or fiduciary to arise, in | | | | Special Relationship’ retrieved 23 February |
| which case, if there is a dispute or | | | | 2008 : |
| misunderstanding that one owes obligation of | | | | Nine Films & Television Pty Ltd v Ninox |
| confidence to another, the confider must adduce | | | | Television Ltd (2005) FCA 1404 |
| evidence tending to show that confidential | | | | Peters v Coulter (1995) 33 IPR 50 |
| information was misused. | | | | Telmak Products pty Ltd v Bond International |
| In your dealings with Cruise, you did not sign a | | | | (1986) 65 ALR 319 |
| contract to act on his behalf, to produce, or aid | | | | University of London Press Ltd v University |
| him in dealing with a production company for the | | | | Tutorial Press Ltd (1916) 2 Ch 601 |
| purpose of publishing or broadcasting his ideas. | | | | 1. Donoghue v Allied Newspapers Ltd (1938) Ch |
| Therefore it could be argued strongly that Cruise | | | | 106 |
| did not impart such information in a circumstance | | | | 2. Zeccola v Universal Studios Inc (1982) |
| that would give rise to obligation of confidence. To | | | | 3. Nine Films & Television Pty Ltd v Ninox |
| determine whether or not any information was | | | | Television Ltd (2005) FCA 1404 |
| imparted in confidence, the confider would have | | | | 4. LexisNexis: ‘Obligation of Confidence and |
| to demonstrate that he or she made every | | | | Special Relationship’ |
| possible attempt to keep the information secret, | | | | 5. Arklow Investments Ltd. and Another v |
| and that such information is confidential. 8 In | | | | Maclean and Others (1999) UKPC 51 |
| Bluescope Steel Ltd v Kelly (2007) 72 IPR 289, | | | | 6. Bristol and West Building Society v Matthew |
| the court found that the first respondent | | | | (1998) CH 1, 18 |
| breached obligation of confidence on the basis of | | | | 7. LexisNexis: ‘Obligation of Confidence and |
| his special relationship, that is employment. The | | | | Special Relationship’ p.1 |
| first respondent was an employee of the | | | | 8. Bluescope Steel Ltd v Kelly (2007) 72 IPR 289 |
| applicant therefore obligation of confidence arose | | | | 9. LexisNexis: ‘Obligation of Confidence and |
| from his special relationship with the employer and | | | | Special Relationship’ p. 1 &2 |
| contract which specifically expressed that any | | | | 10. Section 32(1) (a) of the Copyright Act 1968 |
| information disclosed in the course of the | | | | (Cth), |
| respondent’s employment was confidential. | | | | 11. Section 35(2) of the Copyright Act 1968 |
| To successfully execute a breach of confidence | | | | (Cth) |
| case, the plaintiff must demonstrate to the court | | | | 12. IP Commentary ‘ Copyright’, p. 2; see |
| that the recipient of confidential information owed | | | | also section 35(2) Copyright Act 1968 (Cth) |
| the plaintiff an obligation to keep the information | | | | 13. Donoghue v Allied Newspapers Ltd (1938) Ch |
| confidential. Cruise would have to do just that if | | | | 106 |
| he elects to allege that you owed obligation of | | | | 14. ibid. p. 106 |
| confidence or fiduciary to him.I am therefore | | | | 15. Section 35(6)Act 1968 (Cth) |
| satisfied that you do not owe either obligation of | | | | 16. IP Commentary ‘ Copyright- Works |
| confidence or fiduciary to Cruise for the following | | | | produced in the course of employment- contract |
| reasons: | | | | of service’, P. 11 |
| 1. you did not sign any contract with Cruise | | | | 17. University of London Press Ltd v University |
| 2. you therefore do not have a special | | | | Tutorial Pres Ltd (1916) 2 Ch 601 |
| relationship with him | | | | 18. Nine Films & Television Pty Ltd v Ninox |
| 3. Cruise did not expressly inform you that | | | | Television Ltd (2005) FCA 1404 |
| the information he disclosed to you was | | | | 19 . |
| confidential. | | | | |