#7325 - Ownership Duration And Exploitation - Intellectual Property 1 (Copyright)

Milwell Pty Ltd v Olympic Amusements Pty Ltd [1999] FCA 63

Facts: Milwell and Olympic made video poker games. O claimed M infringed their copyright in prize scales for its ‘Wildcard 5’ and ‘Wildcard 14’ games. The prize scales drew on the skill of mathematicians regarding strategy/probability calculations in light of desired percentage returns on player investments. It was argued that the work of the mathematicians, being extensive and complex, was quite separate from the first reduction into writing of the first column of figures in each prize scale and didn’t amount to authorial contribution.

Lee, von Doussa and Heerey JJ began by quoting s 10(1) and noting what was said in Cala Homes:

• Having regard to just who pushed the pen is too narrow a view – it is both the words or lines and the skill and effort involved in creating, selecting or gathering together the detailed concepts, data or emotions which those words or lines have fixed in some tangible form which is protected

• It isn't only the person who carries out the mechanical fixation that is the author – there can also be skill and expertise involved in drawing clearly and well

• Where two or more people collaborate in the creation of the work and each contributes a significant part of the skill and labour protected by the copyright, then they are joint authors

Argument: Any of the numbers in the Wildcard 5 prize scale were derived from a person at O, and that in the case of W14 there was no evidence that O employees put any input into the creation except for changing a single number

Wildcard 5

• His honour relied on the trial judge’s reliance on Dr Brown’s (a mathematician) evidence – a credible witness who maintained that the prize scales were derived from joint efforts of both mathematicians and O’s employees. He further said the prize scales were determined in consultation with O’s employees.

  • After the mathematicians arrived at calculations there would be a detailed discussion with O on how appealing particular price scale may look to players etc.

Wildcard 14

• The W14 scale was developed in response to changes to the Liquor Administration Board regulations and was developed by employees of O by reference to the prize scale in W10 and a report produced by Dr Dickson.

• To argue that only a single number was changed is an oversimplification – a number of changes were made. Further, single numbers can’t be looked at in isolation. What was created was a whole new prize scale that continued to work within the regulatory and commercial constraints governing the industry

  • The evidence thus demonstrated that a change of one prize in the table could significantly alter the returns to players and the operator’s margin – these prizes were decided upon after considerable calculations by the mathematicians

• The evidence thus demonstrated that a change of one prize ion

Brighton v Jones [2004] EWHC 1157

Facts: The case involved a play (Stones in His Pockets). Ms Brighton (B) was a stage/TV/radio director and Miss Jones (J) was an actress and highly regarded author. They founded a theatre production company of which B was the ‘Artistic Director. The concept for SIHP was developed by theatre management including B and actors. J was then contracted to write the script. B drafted pages of the opening scenes and notes about characters and themes but J wrote the full draft and was noted on the script as sole author. Rehearsals led to revisions of the script. After the success of the play B claimed joint authoriship

Park J

The Law:

1. Though the work claimed by a joined author need not be equal in magnitude to the author it needs to be significant – sometimes they can be held to be joint author in a one-third share (Bamgboye v Reed).

2. The contribution made must be one to the creation of the work

   1. Fylde Microsystems – contributions made to software by extensive testing and ensuring it would achieve the desired performance was held not to amount to authorship – this was like a proof reader’s skill not an authors.

   2. Hadley v Kamp – one member of a song group wrote but all of them performed equally well. The other members weren’t joint authors – these contributions to performance, though skilful, were not to the creation of the musical work rather than their performance/interpretation

   3. Stuart v Barrett – music produced by collective jamming by all members – found to be joint authors

3. A person can be joint author without putting pen to paper – e.g. telling someone else to do it

   1. Cala Homes – physical drawings prepared by a one business but their staff were closely instructed, verbally and sometimes through sketches by the director of Cala Homes – they were joint authors.

   2. Robin Ray Case: but this is a fairly narrow concept because the architects in that case were basically acting as scribes – in practice this type of situation was exceptional

The Facts

• Evidence showed:

  • B and J worked together extensively on rehearsals and constantly discussed and interchanged opinions

  • The play was essentially written when the rehearsals first began – during rehearsals there was no time in which they had to improvise etc.

  • During rehearsals there was constant dialogue regarding parts of the script – e.g. inserting episodes etc. This occurred between both B and J as well as the actors

  • But when J came to discuss the rehearsals with B and the Actors she would at times consent tot eh change but if not content would not. She was also the one who ended up making the change – she chose the words herself etc.

  • B was never entitled to give J instructions about what to write and even if she did J made up her own mind. Under the contract with Dubbeljoint J had the ultimate say about the contents of the script and didn’t allow her position to be overborne by B

Discussion and Conclusions

Their honours noted that extensive changes were made to the original script from the experience of the rehearsals, discussions etc. and B was involved in the rehearsals all throughout but there are several reasons why she wasn’t a joint author.

1. Close to or 100% of the words spoken were actually composed by J even though B at some points flagged certain parts as undesirable

   1. The actual words used aren’t decisive and a person who develops the plot may also be a joint author – but the script provided in advance of the rehearsal contained a complete plot for the play. Any changes made throughout it weren’t enough to amount to a change significant enough that a different dramatic work of join authors was created

2. B played a large part on the changes made to the script but hasn’t established these were contributions to the creation of the work rather than to the expression or interpretation of the theatrical presentation. They weren’t the ‘right sort of contributions’ (Flyde Microsystems)

3. It can’t be said that, whenever B wanted to make a change, J acquiesced. She did accept a lot of suggestions and was prepared to consider/agree to them and in fact did. But it is clear from the evidence that she wouldn’t make any changes that she didn’t agree with

4. It’s also impossible to distinguish between what B and what the actors did – they don’t claim to be joint authors but it seems like they basically did the same thing

• Also the contract with J addressed the possibility of changes being made otherwise than by J but with her consent to the script and provided that the they were to be part of the play, the entire copyright of which was meant to be with J.

• It is thus clear that if the case were between J and Dubbeljoint, with Dubbeljoint claiming to be joint honour, they wouldn’t succeed. They agreed in a binding contract that she would be the onwner

Thus the claim as to joint...