INFORMATION TECHNOLOGY BRIEFLY         
January 1999 Issue No 5

COPYRIGHT IN ABORIGINAL ARTISTIC WORK

A recent Federal Court decision indicates that the Australian legal system will recognise and protect communal title in Aboriginal art.

Printed clothing fabric had been imported and sold in Australia infringing the copyright of an Aboriginal artist, the first applicant. However, the significance of the decision arose from the second applicant's claim brought on behalf of the traditional Aboriginal owners.

Protection under the Copyright Act 1968 for a "work of joint ownership" is limited to a work produced by two or more authors together. The artist was clearly the only actual author of the artistic work. The clan therefore proposed either that:

• equity imposed a constructive trust for their benefit or
  

• the clan had established an equitable interest in the copyright.
  

The Court rejected the clan's arguments, however, it found that equity created a fiduciary relationship between the artist and the clan. As a fiduciary, the artist is obliged not to exploit the artistic work in a way that is contrary to the laws and customs of the clan, and, in the event of infringement by others, to take reasonable and appropriate action to restrain and remedy the infringement.

The artist had taken appropriate action to enforce the copyright and therefore the Court could not grant the clan a remedy.

The Court stated that it cannot use indigenous customs and traditions in opposition to, or as part of, Australian law. However, the rights, interests and obligations embodied within the clan's "customary law" were not to be disregarded. The law and custom of the clan was accepted by the Court as facts relevant to the claim.
This decision indicates that if copyright in an artistic work embodying an Aboriginal clan's ritual knowledge is infringed, and the copyright owner does not take appropriate action to enforce the copyright, the clan may take legal action.

Bulun Bulun v R & T Textiles Pty Ltd - Federal Court of Australia - Von Doussa J - 3 September 1998 - DG3/96 - BC9804472 -[1998] ACL Rep (Iss 10) 240 FC 43

For further information on this article, please contact Jill Francis, Associate, on (61 8) 8210 1294 or via E-mail: jfrancis@normans.com.au.

CAN YOU KEEP A SECRET?

Underlying the law of confidentiality is an inherent demand that people and organisations take necessary steps to protect themselves - through agreements or otherwise - in setting up confidential circumstances.

Confidential information is not "property" per se. Sadly though there has been a patchwork of legal cases which have treated information being protected or defended as property - which has made the evolution of case law difficult to rationalise. An action for breach of confidence lies not in the right of property, but on a personal right recognised by equity. What is equity? Equity is that branch of the law developed centuries ago by the English Courts of Chancery, to supplement, correct and control the common law which didn't always produce a fair result.

The action for breach of confidence was initially confined to cases in which the defendant had agreed by an express or implied contract to keep the information confidential. It is now recognised that the law of confidential information depends not on contract, but on the broad principle that someone who receives information in confidence must not take unfair advantage of it, to the prejudice of the person who gave it, without first obtaining consent.Contrast what is offered by the law of confidential information with registrable protection under the patent system. Patent law requires a certain particularity of disclosure in order to acquire the monopoly protection. Subject to taking advice and assessing risk, it might be that trade secret protection - available under the law of confidence - is more attractive than patent protection because of what is disclosed in the patent specification. But the advantage (i.e. of non-disclosure) is significantly eroded by the potential for independent discovery or creation of the "confidential information" by someone else and your inability to stop its use. If you have relied on trade secret protection and someone, a competitor, independently creates the same process or article, your opportunity for gain is lost.

What the two forms of protection offer are therefore alternatives and careful thought should be applied to the selection of which is appropriate. There is very little overlap and that is limited to confidential status being accorded to the know-how in the patentable material which need not be included in the patent specification.

You do not need to apply for protection of confidential information and it doesn't have to be disclosed to be protected. In fact the law of breach of confidence permits a kind of perpetual monopoly in the "secret" being protected - principally because the protection doesn't automatically expire the way it does in copyright, patents or designs. But the risk is the independent creation or discovery and the fact that if your trade secret is disclosed your loss is confined to an action for damages against the disclosing party which might be a far cry from the potential income from a registered and valid patent.

For further information on this article, please contact Celine McInerney, Partner, on (61 8) 8210 1206 or via E-mail: cmcinerney@normans.com.au

AN OPPORTUNITY LOST - SMALL COMFORT

If you blinked you would have missed it. You're not alone.

In October 1998 the US Government, responding to the Y2K issue, passed legislation called the "Year 2000 Information and Readiness Disclosure Act" which was designed to be an incentive to businesses to share information about their compliance and Y2K readiness. While the legislation was no doubt well intended, its benefits were short-lived - in fact spanning an insignificant 6 week period.

United States' software vendors, operating in a climate renowned for its preparedness to litigate, were reluctant to issue Y2K statements for fear that the statements might be used against them. But to have benefitted from the Act vendors had to have made a "Y2K Readiness Disclosure" after 19 October (the day on which the Act was signed) and before 3 December 1998. If you had made a disclosure before the Act was signed, you had to re-issue that statement in the same 6 week period to come within the operation of the Act. So what was intended will prove useful only for a very small number of extremely vigilant US-based vendors.

The Act prevented most Y2K statements from giving rise to additional warranties under existing agreements, precluded Y2K readiness Disclosure from being used to prove the accuracy of any Y2K statement in it, and restricted Y2K statements from being used for court actions unless proven that the statement that was knowingly or recklessly false, misleading and inaccurate.

But in addition to the problems of the 6 week window, it is of little use: it doesn't protect you from Y2K losses, it doesn't protect you from contracts formed after the statement was made, it doesn't protect you in relation to consumer goods and it only applies to contracts formed under US law.

One could be forgiven for thinking that Mr Clinton might have had other things on his mind.

For further information on this article, please contact Celine McInerney, Partner, on (61 8) 8210 1206 or vial E-mail: cmcinerney@normans.com.au

The contents of this newsletter are for information only and should not be taken as advice on the law. This newsletter may be reproduced in whole or in part with the prior permission of NormanWaterhouse and acknowledgement of its source and copyright.