1. General

The Committee had been of the view that the Copyright Bill would be a composite piece of legislation and, accordingly, would strongly favour its expansion to include the following Directives:-

1.1. Directive 87/54/EEC on the legal protection of topographies of semi-conductor products.  The Committee appreciates that this was brought into force in Irish law by The European Communities (Protection of Topographies of Semi Conductor Products) Regulations 1988 (SI 101/1988) and, while the Regulations do not specifically deal with copyright insofar as they relate to a topography right, the same argument could be made in relation to the database right which is contained in the Copyright Bill and therefore the topography right should be included in the Copyright Bill.

1.2. The transitional provisions contained in Directive 93/98/EEC harmonising the term of protection of copyright and certain related rights.  While the Copyright Bill deals with the provisions contained in the 93 Directive, it does not deal with the transitional provisions.

2. Specific provisions in the Copyright Bill

 2.1. Definitions

“Cable programme” is defined in the Copyright Bill as meaning “any item included in a cable programme service”.  In the view of the Committee, this interpretation is far too wide.  The case of The Shetland Times Limited v. Jonathan Mills ([1997] F.S.R. 604) illustrates the difficulties with this and exposed the corresponding provision (Section 7) of the UK Act.  It appears from the decision in that case, which held weblinks on a website to be cable programmes within the meaning of the UK Act, that any information, no matter how small, may be deemed to be a cable programme. Clearly, application to the Internet was not envisaged.  A website can send any amount of information down to a single character.  Therefore, is this an  “item” within the meaning of the definition of cable programme?  There appear to be three identifiable approaches which, as yet, have not been litigated.  Firstly, the qualitative approach would require a minimum amount of skill, labour and effort.  Secondly, the technological approach which would examine the transmission (i.e. the individual packets of information) and lastly, as argued in the Shetland Times Case, that any identifiable thing transmitted is an item.  All of these approaches may lead to the same result as in the Shetland Times Case, namely that headlines of a newspaper, or even words alone, may obtain the benefit of copyright.

“Database” is defined as the collection of independent works, data or other materials, arranged in a systematic or methodical way and individually accessible by any means but excludes computer programs used in the making or operation of the database.

The Committee feels that the definition should be changed so as to include works accessible by electronic or any other means.  This is consistent with Article 1 of Directive 96/9/EC of the European Parliament and of the Council.  The definition should also be expanded (as is consistent with the recitals to the 1996 Directive) to include literary, artistic, musical or other collections of works or collections of other materials such as text, sound, images, numbers, facts and data and to cover also collections of independent works, data or other materials which are systematically or methodically arranged and which can be individually accessed. It should also be made clear in the Copyright Bill whether a  compilation of several recordings of musical performances on a CD comes within the scope of the Copyright Bill insofar as such a compilation may not meet the conditions for copyright protection and because it does not represent a substantial enough investment to be eligible under the sui generis right.

2.2. The definition of telecommunications system does not include the Internet specifically.

 2.3. Section 37 – Copying

The Copyright Bill replaces the existing right of copyright owners to prevent a work's “reproduction”  with the much narrower right to prevent its “copying”.  “Copying” implies facsimile copying.  Many forms of unlawful reproduction of a work would not normally be termed copying.  For example, a sound recording of a musical performance is  “a reproduction” of the notated musical performance but it is not “a copy” of it.   All EU and international instruments refer to the illegality of reproduction and, in failing to follow suit, the State may well be in breach of its obligations.

 2.4. Section 38 – Reproduction Right

Section 38 refers to copying in relation to a film as “making a photograph … of any image forming part of the film”.
The Committee feels that the word “image” should be replaced with the word “frame”.

 2.5. Section 41   - Rental and Lending Right

There is reference to a work of “applied art”. This term is not defined either in the Copyright Bill or in Article 2(1) of the Berne Convention from where it originated.

 2.6. Section 42 – Infringement by adaptation of works

Section 42 (2) refers to an adaptation relating to a literary work at sub-paragraph (a). Sub-paragraph (d) refers to an adaptation of a computer programme.  The definition of “literary work” at Section 2 of the Copyright Bill includes a computer programme and, therefore, it would appear to the Committee that there is no need for sub-section (d) relating to a computer programme.

 2.7 Section 45(1) – Secondary Infringement

Section 45(1) which states that providing the means for making infringing copies without the authority of the copyright owner will be an infringement of the copyright, although it includes a mens rea element, should be bolstered by an exception where such copying facility is provided to an individual for the benefit of that individual for his or her private and domestic use.  If this is not catered for, the makers and distributors of multi deck cassette recorders and video recorders which could be used to infringe copyright would be liable to infringement proceedings, at least where constructive knowledge could be imputed.

 2.8. Section 51 – Incidental inclusion of copyright material

This section provides that the copyright in a work is not infringed by its inclusion in an incidental manner in another  work.  In order to be included as an incidental manner in another work, it has to be deliberately included.

It appears to the Committee that it would be extremely difficult for a copyright owner to prove deliberate inclusion and perhaps there should be some reference to the extent of the inclusion of the work.

 2.9. Section 58 – Libraries and Archives

As a general comment on the provisions dealing with Libraries and Archives these place heavy and varied burdens on librarians and archivists, which may be disproportionate to the skills required for the performance of their functions.  The provisions would seem to place unduly heavy burdens on such persons.  The Committee notes that there is no definition of either librarian or archivist which needs to be addressed for two reasons.  Firstly, in the interests of certainty of rights available and secondly, because the terms have a professional use (i.e. a library may have several staff but only one librarian).  Finally, it is unlikely that a librarian or archivist themselves would be copying the works and delegation should be provided for.

 2.10. Section 62 – Multiple copying

This section provides that a copy of a work will not be supplied under section 60 or 61 other than to a person who satisfies the librarian or archivist that his requirement is not related to any similar requirement of any other person.  There is a similar provision in section 219.

It would appear to the Committee that assignments given by lecturers/tutors will invariably mean that students will be requiring the same material for the purposes of the assignments.

 2.11. Section 74 - 75  - Designs

There should be a boundary between copyright protection for artistic works and design right protection for industrial designs such that the two forms of protection are mutually exclusive.

The Committee feels that the provisions of the Design Directive should be included in the Copyright Bill.

 2.12. Section 76 – 78 General

Sections 76 - 78 implement the Software Directive (Council Directive 91/250/EEC on the Legal Protection of Computer Programs).  However, in this regard, the Committee noted that section 77 should expressly state that it may not be displaced by contract and conversely section 78(1) should state that it may be varied by contract.  This conflicts with Recital 17 of the Directive which states that they may not be excluded by contract (which is a better view).  However, in a direct conflict it is better to give effect to the text.  Section 77, in attempting to implement Article 6 of the Directive, neglects to state that the exceptions to the restricted acts only apply where they are “indispensable” to obtaining the information necessary for interoperability.  This is beyond an oversight and alters the meaning and effect of the section.

Similarly, it should be specified that the non infringing acts of making back-up copies as set out in section 76(1) and of observing, studying and testing the functioning of the program while performing those actions which are not necessary for the use of the computer program as set out in section 78(2) also cannot be displaced by contract, licence agreement etc as is indicated by Article 9.2 of the Directive.  It appears that section 78(1) does not implement the second half of Article 4.a. namely that, insofar  as loading, displaying, running, transmission or storage of the computer program necessitate reproduction, this shall be subject to authorisation of the rights holder and the application of Article 5.1 that in the absence of specific contractual provisions where they are necessary for the use of the computer program by the lawful acquirer in accordance with its intended purpose including error correction no authorisation is necessary.  Likewise, section 78(1) neglects to implement the second half of Article 4.a. i.e., the reproduction of the results of the translation, adaptation, arrangement or other alteration of a computer program.  Section 78(1) departs from the language of Article 4 and replaces “reproduction” with “copy”.  The comments in relation to section 37 are relevant here.

2.13. Section 78 – Exceptions to infringement of copyright in computer programmes

This section provides that it is not an infringement of the copyright in a computer programme for a lawful user of a copy of a computer program to make a permanent or temporary copy of such programme by any means and in any form in whole or in part or to translate, adapt or arrange or in any way alter a computer program where such actions are necessary for the use of the computer programme by the lawful user in accordance with its intended purpose, including error correction.

Under Directive 91/250/EEC, it is debatable as to whether this can be excluded by contract.  Article 5 of the 1991 Directive appears to allow the right to be restricted while Recital 18 provides that “the act of correction of its errors may not be prohibited by contract”.  Recitals in EU legislation are deemed to be of considerable importance.

The Committee feels that this should be capable of being waived by contract.

2.14. Section 85 – Use of notes or recordings of spoken words in certain cases

There are a number of conditions whereby it will not be an infringement of any copyright in works if the purpose of using the works is, inter alia, to report current events. One of the conditions is that the use made of the record or material taken from it is not of a kind prohibited by or on behalf of the speaker or copyright owner before the record was made.

It would appear to the Committee that the onus is on the speaker to prohibit the recording and not on the maker to seek a Licence/permission.  This could be particularly serious in “off the record” comments made by a speaker.

2.15. Section 88 –  Recordings of works of folklore and other materials

This section provides that it will not be an infringement of a work of folklore if its performance is recorded, provided:-

  (a) the making of the recording does infringe any other copyright; and

  (b) the making of the recording is not prohibited by any performer.

The UK equivalent section provides, in addition to (a) and (b), that the words of the song must be unpublished and of unknown authorship.  The Committee feels that these words should be included and the same remarks can be made in relation to head 258.

2.16. Section 89 – Representation of certain artistic works on public display

Buildings, sculptures, models for buildings will not be infringed by making a photograph, painting etc., of the work.

This section should clearly spell out that a photograph of the architect's drawings of a building rather than the building itself will be an infringement.

 2.17. Section 91 – Making of subsequent works by same artist

This section provides that, where the author of an artistic work is not the copyright owner, he shall not infringe the copyright in the work by copying the work in making another artistic work, where he or she does not repeat or imitate the main design of the earlier work.

The Committee would be concerned that, if the author of an artistic work had sold the copyright in the earlier work for valuable consideration, he should not be allowed to exploit, repeat or imitate the main design of the earlier work.

2.18. Section 94 –  Copying for purpose of broadcast or cable programme

The Committee feels that section 94 (2) is unduly onerous, requiring the destruction within six months of any work used for broadcast or cable programme particularly if there is going to be repeated use later on.
 2.19. Section 96 – Recording for purposes of time shifting

This section provides that the making for private or domestic use of recording of a broadcast or cable programme solely for the purpose of enabling it to be viewed or listened to at another time or place shall not infringe the copyright in the broadcast or cable programme or in any work included in such a broadcast or cable programme.

The Committee is concerned that there appears to be nothing to stop private individuals building their own film libraries of such films or even selling such original copies provided they were not made for this purpose and provided also that the copies of the films are not issued to the public.

  2.20. Section 102 – Paternity right

This section entitles the author of a work to be identified as the author of the work.

The section does not state how the author is to be identified nor does it provide under what circumstances the author has to be identified.  It clearly should do so, in the opinion of the Committee.

 2.21. Section 103 (2) –  Inalienability of paternity right

This section provides that there can be no waiver, assignment or alienation of the paternity right.  The Committee feels that there should be a positive obligation on the author to assert this moral right.  The same comments apply to section 293.

 2.22. Section 108 – False attribution of work

This section entitles the person not to have a work falsely attributed to him or her as author.

The Committee wonders if this would be more appropriately dealt with as an amendment to the Defamation Act, 1961 rather than in the Copyright Bill.  The same considerations apply in relation to section 297.

 2.23. Section 109 –  Right to privacy in photographs and films

This section provides that the person who, for private and domestic purposes, commissions the taking of a photograph or the making of a film has, whereby copyright subsists in the resulting work, the right not to have the work or copies of the work made available to the public.

The Committee believes that the word “and” should be replaced with the word “or”.  For example, while a wedding is a domestic affair, it is not necessarily a private affair.

In relation to section 109, firstly, there is no definition of “commission”.  Secondly, there appears to be a glaring oversight in that where section 109(1) is satisfied the photographer will still be able to retain copies (he will only be restricted from making them available to the public) which is repugnant to any right of privacy.

 2.24. Section 114 – Transmission of moral rights on death

Section 114 (5) provides that any infringement in respect of false attribution of a work after the death of a person is actionable by the personal representative of that person.
Again, the Committee is concerned that the moral right relating to the false attribution of a work is more akin to a defamation action than to copyright infringement.  As no action is sustainable by the plaintiff after his death through his personal representative in a defamation action the same rule should apply to this moral right.  The same comments apply in relation to section 301.

2.25 Section 120 – Right to equitable remuneration where rental right transferred
This section prevents the author assigning the right to equitable remuneration except to a collecting society.

While collecting societies are generally acceptable, the Committee is concerned that this may infringe Article 43 of the Constitution.

 2.26. Section 123 –  Provisions as to damages in infringement action

This section provides that, where it is shown that at the time of the infringement the defendant did not know and had no reason to believe that copyright subsisted in the work to which the action relates, the plaintiff  is not entitled to damages against the defendant.
This did not apply to secondary infringement and probably should be extended to the situation where the defendant had no reason to believe that the copyright subsisted in the work.  This is an essential part of the defence to copyright infringement.

2.27. Section 125 – Undertakings concerning licences of right

The Committee notes that, under the UK equivalent of this section at sub-paragraph (c), damages are calculated by reference to two times the amount which would have been payable by the defendant if he had taken a licence as opposed to three times.  It would appear that three times the amount payable on the licence would be unduly punitive.

2.28. Section 128 – Right of copyright owner to seize infringing copies, articles or devices etc.

The Committee is concerned that copyright owners could take the law into their own hands.

 2.29 Section 134 – Presumptions

Chapter 12 implements the presumptions in the Intellectual Property (Miscellaneous Provisions) Act 1998 (“the 1998 Act”) (Sections 2 and 3 of which in turn are repealed by Part I of the Second Schedule of the Copyright Bill).  The aforementioned Act was introduced in the aftermath of the Supreme Court decision in PPI v. Cody ([1998] 2 ILRM 21) which is to the effect that under the old section 26 of the 1963 Act, witnesses under the viva voce evidence rule would have to attend court and give oral testimony in order for the plaintiffs to prove their title in or Licence to the sound recordings in question.  Obviously, this is time consuming and expensive.  The implementation of the 1998 Act shifts this onus in civil cases and it is presumed that copyright subsists in a work and where subsistence is proved or admitted, the plaintiff shall be presumed to be the owner, unless the contrary is proven.  The defendant will now have to prove the contrary; however, this is the same party who possesses the least knowledge.  This raises constitutional issues, in particular the right to equality before the law and to earn a livelihood. The decision of  Henchy J. in Hanrahan v. Merck Sharp & Dohme (Ireland) Ltd. ([1988] ILRM 629) is also relevant.  In that case, the plaintiff proved damage to his health and property and it was claimed that it was a failure to vindicate the plaintiff’s constitutional rights for the plaintiff to prove that damage was caused by the defendant's actions.  Although the plaintiff was unsuccessful, the comments of Henchy J. are still applicable when he noted that the onus should shift where it is “palpably unfair” and “… when the act or default complained of is such that it would be fundamentally unjust to require the plaintiff [the defendant] to prove positive averment when the particular circumstances show that fairness and justice call for disproof by the defendant [plaintiff]….” (at p.635 of the Judgment in the Hanrahan Case).  It is not denied that the Copyright Bill merely protects the constitutionally protected property rights of the copyright owner.  However, the above conflict still arises.

The Copyright Bill adds to the 1998 Act by making the presumptions applicable to criminal proceedings.  An argument could be made that that provision infringes Article 38.1 of the Constitution, i.e., the presumption of innocence.  Obviously, the Committee feels that this will have to be remedied.

2.30. Section 135 – Offences

The offences are based on whether the defendant knew or had reason to believe that he was dealing with an infringing copy.  The phrase “knows or has reason to believe” is identical to the wording used for civil prosecution for secondary infringement.  Yet this is a criminal offence.  The test for “reason to believe” is an objective one, see L.A. Gear Inc. v. HI TEC Sports plc. ([1992] F.S.R. 121).

Section 135 (2) would appear to apply to a person who is merely looking after the infringing article for the real infringer if the former has a requisite state of mind, and the Committee would have concern in relation to this.

There seems to be a loop-hole in the Copyright Bill  in that it is questionable as to whether it is an offence to place an unlicensed music CD on a website enabling visitors to download copies of the CD.

The Copyright Bill provides that where ownership of copyright or database right is contested in infringement proceedings, issues of  fact on this point may be separately heard by way of affidavit evidence.  The existing presumption that copyright subsists in the allegedly infringed work and that the plaintiff owns it have been extended to criminal proceedings.  However, placing the onus of proof on the accused in relation to an issue of which the complainant has peculiar knowledge may offend  the doctrine of the presumption of innocence adopted in O’Leary v. Attorney General ([1995] 2 ILRM 259).

2.31. Section 180 – Government copyright

The Committee is concerned that section 180 (4) may get round the Official Secrets Act.

2.32. Section 181 –  Copyright in Acts, etc.

Section 164 of the Copyright, Designs and Patents Act, 1988 of the UK provides that the copyright in every act vests in the crown.  The Committee finds it noteworthy that the provisions contained in the Copyright Bill are copied substantially from the UK Copyright, Designs and Patents Act 1988 and the question arises as to who is the real owner of the copyright.  In other words, are the Copyright Bill and other pieces of legislation original works?

 2.33. Section 193, 199, 202 and 283 Performers rights

Performers are granted rights to reproduce and make available their performances.  In addition to the performers’ “property rights”, the Copyright Bill adds the notion of “non-property rights” which are subject to restrictions both on their transfer and enforceability.  These non-property rights attempt to restrict the making and exploitation of unlicensed recordings of live performances (known as “bootlegs”).   However, the right to prevent others handling unlawful copies of such recordings (section 202) is also labelled a non-property right.  This arbitrarily restricts the ability of performers to proceed against those who, for example, import unlawful copies of such recordings. The property/non-property rights distinction has no basis in international or EU legislation and leaves the performers’ rights weakened.

2.34. Section 279 – Performer’s property rights to pass under will with certain original recordings

While the Committee accepts that there is an exception if a contrary intention appears in the will, the Committee would feel that a performer may well be aware of his rights and may wish that the property performer’s rights would pass on to his residuary legatees.

2.35. Section 281 – Right to equitable remuneration where rental right is transferred

The performer may not assign the equitable remuneration except to a collecting society but, notwithstanding this, if the equitable remuneration is transferred by the operation of law or testamentary disposition, the beneficiary can make a transfer.

The definition of “collecting society” merely states that one of its main objects must be that it is a collecting society.  The Committee feels that collecting societies should be vetted by the Controller.  Otherwise undesirable bodies will be holding vast quantities of monies.
2.36. Section 304 –  Database right

Section 304 (3) provides that it is immaterial whether or not the database or any of its contents is a copyright work.  The Committee feels that the words “copyright work” should possibly be replaced with the words “aesthetic or creative work”.  There appear to be two rights created: the database right and the copyright in the database which can also be a literary work.  The duration of both differ, one being fifteen years from the end of the calendar year in which the making of the database was completed (the database right) and the other being seventy years from the date of death of the author.
Perhaps, there should be just one right as is the case with computer programmes.

 2.37 Section 312 – Fair Dealing: Private Research or Private Study

There does not seem to be a logical reason why fair dealing with an electronic database for the purposes of private research or private study should not be permitted.  In addition, there would appear to be the same arguments in principle for the other exceptions for fair dealing contained in section 50, i.e, use in reporting current events or for criticism or review which apply to other types of work.  It is quite possible that this section contradicts itself at a fundamental level because it is fair dealing for the purpose of private research or private study to re-utilise a non-electronic database.  However, re-utilisation is defined as making those contents available to the public by any means.  This is incompatible with private research or private study.  The context supposes an unduly wide right as it applies to a “substantial part” of the database's contents.  Subsection 2 defines fair dealing but does not remove this inconsistency.

Business Law Committee
Law Society of Ireland
July 1999