Fordham IP Conference 2011, New York City

June 2, 2011

By Vicki Huang

The Fordham IP conference – “Learn, Debate, Have Fun” – was held on 28 – 29th April 2011 in New York City.  The conference attracted many academics, practitioners, government officials, and members of the judiciary from Europe, the USA and of course Australasia.  This combination triggered a lot of informed debate and it was refreshing to hear input from all sides of contentious issues including views from the bench.

Many of the sessions have been covered by our friends at IPKAT here, here, here, here, here and here.  In addition to those sessions, the Fortnightly Review was lucky to attend several specific sessions on copyright and trade mark law and highlights are outlined below.

In a session on “US Copyright Developments”, Thomas Kjellberg updated the audience on copyright cases against “suburban” downloaders where damages peaked at over $1 million dollars. These cases such as Capital Records v Thomas Rassett have sparked a debate as to whether such awards violate due process.  Kjellberg also discussed the case of Penguin v American Buddha. In that case, American Buddha (a religious not-for-profit), posted ebooks on its website. One of the issues for the court was locating the site of the injury. Was it in New York (home of the plaintiff), or Arizona (the site of the uploader) or Texas (the site of the server)?  The court held that because the location of the infringer may be remote, it would not be fair to use the infringer’s location as the locus of harm. Therefore, even though there was no downloading evidence in New York, that was not to say there was “no injury” in New York.  Rather the test should assess the intent of the infringer.

In a session on “EU and US Initial Interest Confusion in Trade Mark Law”, The Hon. Mr Justice Arnold discussed the development of the doctrine and its actionability under Article 9(1)(b).  He went on to discuss several cases including the recent case of Och-Ziff Management Europe LtdDaniel Glazer discussed US developments with a focus on the expansion of the doctrine to the internet, where trademarks are used in domain names or in meta tags or keywords.  The panel discussed the fine line between confusion and diversion and the fact that US courts are really trying to protect senior mark good will and against unfair competition.  The panel debated what was permissible and indeed healthy free riding.  They also debated the merits of using the initial interest confusion doctrine to police domain names.  The panel agreed that in the current era, consumers are used to deceitful metatags and more wary of commercialised hyperlinks so confusion is a lot less likely. Professor Anne Bartow argued that one can no longer assume that consumers are unsophisticated.  She went on to query whether the law should remedy a situation where there is confusion that is cured before the point of sale.

In a session discussing dilution Law in the European Union & the United States, Trevor Cook (Bird and Bird) began with a discussion of the EU’s approach.  He noted the over-intellectualisation of simple legal tests which was a common complaint in several other panels.  Professor Marshall Leaffer discussed US developments in dilution and the case of Visa v JSL Corp.  In that case, Professor Leafer argued that the question of likelihood of confusion – which is a question of fact – was approached in a fast and loose manner. He also said that the case highlighted that the evidence required to prove a dilution case was very unclear. A European speaker helpfully reminded the audience that reconciling EU and US policy and legal approaches was not simple as there is no unfair competition law in the UK and some other EU states.

The well-attended sunrise seminar on “Rule of Law on the Internet: Feasible or Fantasy”, started with views from Richard Cotton of NBC Universal Media.  He stated that the question was not “whether” we should have a rule of law on the internet, but rather “when” and “how”.  He discussed a fundamental problem being one of attitude, with many downloaders thinking that “if it’s so easy to pirate, it can’t be wrong”.  Piracy is moving from being treated as a nuisance, to a problem that the FBI and homeland security are now enforcing against.

In terms of legitimizing tools, he discussed the development of ancillary markets and goods such as Netflix, and Xbox live which are robust and legitimate markets that rely on internet streaming technologies.  In his view, encouragement of these delivery models will give illegal downloaders a legitimate alternative.  However, he emphasised that the challenge will be to create a culture that will accept copyright piracy as a wrong and likened this to being a parent training a recalcitrant child.

Justice Peter Charleton commented that the EU has compulsory anonymity on internet. And that a cultural problem was that anti-globalism is a big movement so that theft from “anonymous capitalist” was thought to be ok. The panel agreed that IP theft was like drug addiction where demand generates supply.

In the session, “Enforcement Issues Including New Government Initiatives”, Stevan Mitchell (the ESA) and Peter Fowler (USPTO Enforcement) discussed the extent of the enforcement problem.  Twenty five per cent of all internet traffic globally involves unauthorized distribution of copyright files.  One assessment had 43 illegal downloading websites register 146 million hits per day.  Bottom line is that there is a huge appetite for TV and film downloading.  Peter Fowler emphasised the need for cultural change akin to the shift that led to seatbelt wearing.  He also discussed the US “Operation in our Sites” which had been seizing domain names of illegal download sites.  He emphasized that the academic debate over whether creative adaptations should be free was moot as copyright infringement is illegal and a crime.  For enforcement officers there was no debate.  He also highlighted a shift in counterfeiting.  Counterfeiters are now trying to make higher profits by making goods as close as possible to the real luxury item and selling goods on deceptive websites at matching prices (as opposed to a severely discounted price that would indicate a “fake”) in order the maximise profits.

Other paths of enforcement include cooperative agreements between registries to seize domain names.  Importantly it is also to target 3rd party providers eg agents for service and paypal.  If money supply can be cut off, then enforcement agencies will try to do so.

In the session “Trademark Law: Smell and Look-a-likes: a Comparative Analysis” Anna Carboni presented an update on smell and look alike cases including the controversial L’Oreal v Bellure case.  Carboni highlighted the fact that the British Brands study showed the customers can be easily confused by look alike packaging. The panel including Robert Burrell pointed out that surveys used in the British Brands study and other surveys used to support a senior mark owner are flawed due to the prevalence of leading questions.  On another point, Jane Ginsburg re-emphasised that “lured” does not mean confused.  Consumers learn for example, that supermarket shelves are stocked with similar looking house brands.  The Hon. Justice Robin Jacobs agreed saying that judges shop and are also aware of brand generics.  The question should be whether reasonable customers are likely to be confused and whether the company intended to confuse consumers.  Justice Jacobs observed that brand owners are now scared to sue “home brands” which are put out by supermarkets because supermarkets may retaliate and not stock the senior brand.

In the session “Adwords: a Comparative Analysis” Professor Marshall Leaffer discussed the proposition that after the case of Rescue.com, selling trademarks as keywords is “use in commerce” and subject to the Lanham Act.  Professor Barton Beebe discussed the increase in consumer sophistication and that the legal question had moved on from “use” to “likelihood of confusion” and in the future will be preoccupied with predicting levels of consumer sophistication.

Prof. Dr. Peter Ruess presented a convincing case for protection of well-known brands.  Interestingly calling it naïve to use the phrase “comparative advertising” in cases that were clearly “bait and switch”.  The panel seemed divided on the line between “genuine” comparative advertising and the misappropriation of goodwill.  Ruess argued that using the goodwill of a senior mark to lure a customer is not comparative advertising and is not in the public interest.  Professor Beebe argued that encouraging free competition is in the public interest.  The panel seemed divided between recognising the property rights of high investing brand owners and free competition.

Overall this was a fascinating and informative conference.  The program and list of speakers can be found here.  Proceedings of the conference will also be published in an upcoming volume.

Vicki Huang is a Research Associate with IPRIA and a Lecturer at Deakin Law School

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The Livid World of Harry Potter Litigation

February 17, 2011

by Thomas Vranken (introduction by Vicki Huang)

Did JK Rowling’s “Harry Potter and the Goblet of Fire” plagiarise the obscure children’s book “The Adventures of Willy the Wizard: Livid Land” by Adrian Jacobs?

His estate seems to thinks so, having launched copyright infringement suits against Rowling and her publishers in the US and the UK.

On January 7, 2011, the US case was dismissed. In the dismissal (Allen v. Scholastic, 10-5335, U.S. District Court, Southern District of New York (Manhattan)), Judge Scheindlin held that the works were “distinctly different in both substance and style”.

Meanwhile, the £500 million case in the UK is set to go for trial. (Click here for coverage by IPKAT). In dismissing an application for summary judgment, Justice Kitchens held that the claim “may succeed but that it is improbable it will do so”. Paul Allen (trustee of Adrian Jacobs, deceased) v Bloomsbury Publishing and JK Rowling [2010] EWHC 2560 (Ch) (Chancery Division, England and Wales).

Are there similarities between the two works? The Fortnightly Review scoured the world for a copy of “Livid Land” so Thomas Vranken could take a closer look.

Livid Land (The Adventures of Willy the Wizard: No.1) is a strangely erratic book. On one level the plot is simple enough: Willy enters a wizard contest, the instructions to which he reads on an electronic screen while he sits in a bath. But, nothing seems quite able to hold its author’s attention as he flits from one thing to the next with every new sentence. One minute we’re with Willy’s ‘magic earring’ (which once saved the life of ‘Fatty Fairy’ when it ‘eliminated [her] greedy taste-bud’); the next, that ocker Australian ‘Angry Sam’ (half man, half kangaroo) is thrust before us. Indeed, given the diversity and sheer number of Jacob’s literary inventions, it would almost be more surprising if Rowling hadn’t stumbled upon at least one of them.

Qualitative assessments of literature are often hard to substantiate. However, this is not the case with Livid Land – particularly when it comes to the question of intended readership.

While no Shakespeare, the author of the Harry Potter series always seems very aware of her audience. Though she has attracted the odd more-mature fan, her books are clearly aimed at young readers. Just who Adrian Jacobs is writing for is less clear.

A sixteen page picture-book, one might at first assume that Livid Land is aimed at an even younger audience than Rowling’s. However, several elements within the book seem to confound this expectation. For one thing – in stark contrast to the Harry Potter series – none of the characters in Livid Land are actually children. Indeed, we are told that Willy’s main motive for completing the contest is to ‘receive life membership of Stellar Land. Every wizard’s dream of retirement’. As if to further highlight this oddity, Jacob’s characters seem to be constantly consuming intoxicating substances – whether beer, Champaign (‘champbrew’), liqueur, the ‘finest Havana’ cigars, or ‘intoxicating sorbets’.

Similarly, while much of the language in the book is relatively simple, there are also moments when the terminology is bizarrely complex – one wonders how many children young enough to be reading a picture-book also include the phrase ‘alluvial mining’ in their vocabularies.

Finally, and perhaps most disarmingly in this respect, there are the moments of quasi-sleaziness. We are repeatedly told that the helpless prisoners Willy must rescue are female (‘the women were loaded in’). Moreover, in rescuing them Willy seems to have few qualms in making use of the talents of ‘Apprentice Delight, his pretty new female recruit’ who ‘works her charms’ on the guard – an ‘Italian sailor … who invariably flirted with any female who encouraged him’. Hardly the most child-friendly of material.

That Livid Land is a rather odd book is not hard to see. Ultimately, for all of its chaos, it seems rather soulless too.

Thomas Vranken is a literature student at The University of Melbourne.

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Food Fight – Who Owns “My” Chilli Crab?

December 9, 2010

By Vicki Huang

The Australian cookbook industry seems totally immune to the tendrils of the GFC.  Sales over the past 2 years are reported to have grown by over 35%. By the end of this year, Australians will have spent $90 million dollars on cookbooks which represents sales of 4.5 million titles annually. At least 10% of these sales are spinoffs from the Masterchef juggernaut. For example, 2009 winner Julie Goodwin has sold $3.7 million worth of her book “Our Family Table”.

There has also been an explosion in food blogging. (Click here for Paul Best’s summary in The Age). Food bloggers themselves can become as famous as celebrity-chefs.  For example, net-sation Julie Powell’s blog (which outlined her efforts to cook Julia Child’s “Mastering the Art of French Cooking”) was turned into a film starring Meryl Streep.

Our own net-sation “Not Quite Nigella” has recently reported that her blogging exploits have been optioned into a book. The Australian Association of Food Professionals in their Food literati awards have begun to award prizes for the best food website and the best food blog. There are also websites that review both cookbooks and food blogs! See www.cookmybooks.com.au

The food revolution in Australia and the food writing it produces shows no signs of slowing down.

But just as there are only “seven stories”, are there only a handful of ways to roast a loin of pork? What kind of copyright issues come up with cookbook writing and food blogging?

Earlier this year the saga of the Seinfeld v Lapine “You stole my recipes!!” case came to an end in the US 2nd Circuit Court of Appeals. In the case, Jessica Seinfeld (wife of Jerry) published “Deceptively Delicious”, a celebrity (by proxy) cookbook that was hugely successful (i.e. was shown on Oprah) that tricks kids into eating vegetables.

Missy Chase Lapine claimed that Seinfeld had infringed the copyright of her book “The Sneaky Chef”. Both books share the central idea of using vegetable purees for use in children’s food. The Federal Appeals court rejected the claims that Seinfeld infringed the copyright and trademark in Lapine’s book, upholding the lower court’s decision. The court held “…Stockpiling vegetable purees for covert use in children’s food is an idea that cannot be copyrighted”.

Having read both the Seinfeld and the Lapine cookbooks, I would say that had the case been in Australia, the outcome would be the same. They look nothing alike, and there don’t appear to be any images or recipes reproduced in Seinfeld’s book. In Australia, as in the US, there is only very thin copyright over recipes and certainly no copyright over ideas. A recipe is also not patentable under s50(1)(b) of the Patents Act which precludes claims that are a “mere mixture of known ingredients”.

The fight over the ownership of recipes goes beyond the courtroom and can have can have geo-political significance. Last year the Malaysian Tourism Minister started a major food fight when she claimed that Singapore staples – Chilli Crab and Hainese Chicken Rice, were indeed “Malaysian”. Singaporeans who are probably the world’s biggest foodies (this comment may start its own food fight) were naturally outraged. The statements caused a flurry of comments in the press across the region.

So what copyright can exist in a cookbook, and relevantly to bloggers, what copyright exists in a recipe that is reproduced online?

A recipe in its written form is likely to be protected by copyright. However, to infringe the copyright, you would probably have to copy and reproduce the recipe verbatim. This is because there is no copyright in a list of ingredients. Nor is there copyright in ideas. There is also no copyright in the expression of a method of preparation unless it qualifies as a literary work i.e. it has to be more than just a list of steps.

Artistic works such as the photographs and illustrations are a different issue and are likely to be separate copyrighted works.

Regardless, numerous fair dealing exceptions to copyright infringement exist, in particular, fair dealing for criticism or review. In this context a user can reproduce the cookbook or recipe so long as there is genuine criticism or review of the work.

So what is a cookbook author or blogger to do?

If taking a “substantial” part of a work, then permission from the copyright owner is required. However, it is arguable whether taking one recipe from a cookbook is going to be considered taking of a substantial or essential part. Moreover, if the recipe was slightly modified e.g. the method re-worded, then the “new” recipe may not be considered a taking at all, rather a new literary work in itself.

It seems however that an attribution protocol has emerged amongst food writers online. I would have to say it is a conservative and polite approach that is probably going to keep most food writers out of trouble. Perhaps this is an example of moral rights applied defacto in cyberspace?!  Here is what I see as the netizen rules of food writing:

1.      When in doubt, seek permission;

2.      If reproduction of the recipe is for criticism or review then it is “fair dealing” but always give an attribution;

3.      If you slightly modify a recipe, then preface your version with “adapted from” and add an attribution;

4.      If you modify the recipe significantly i.e. about 10% of it, then it’s likely that the recipe can be called your own.

Copyright protection on cookbooks and especially individual recipes is very thin. Despite this, cookbook publishing is reaching a high point. This is probably because production values have improved to meet discerning customers who understand the beauty in a coffee table cookbook.

At the same time, food writing is having its own “salad days” and with the plethora of food blogs there has been a lot of recipe reproduction on line. To keep food writing on the Internet at its interesting pace, it’s probably a good thing that recipes attract little copyright protection.  The copyright gods have probably got the balance right.

Vicki Huang teaches at the Melbourne Law School

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The Digital Economy Act (UK) – preview for Down Under?

April 23, 2010

By Melissa de Zwart and Vicki Huang

The Digital Economy Act 2010 (the Act) was given Royal Assent on April 8th, 2010.  The Act regulates digital media and contains many of the suggestions from the Digital Britain Report of June 2009.  The Act is controversial for many reasons.  First, the lack of debate surrounding the Bill left many commentators reeling.  The first reading of the bill was presented to the House of Commons on March 16th 2010, was not debated at length in the Commons and pushed through in the dissolution of Parliament.  Second, whilst the Act touches on many areas of a digital economy such as the regulation of Channel Four, the most contentious parts of the bill are those centred on shutting down online piracy.  The spirit of these provisions is to use Internet Service Providers (ISPs) to police individual users and their use of peer-to-peer file sharing websites.

Under the Act, copyright holders can send a “copyright infringement report” to an ISP with evidence of a copyright infringement.  The ISP has the burden of notifying its subscriber of the alleged infringement (cl.4).  In addition, ISPs must provide copyright holders, upon request, with a “copyright infringement list” outlining each infringement by an individual anonymised user (cl.5).

The Secretary of State may tell OFCOM (the UK communication regulator) to order ISPs to shut down sites, suspend accounts or enforce other limits upon an ISP customer (cl.10).  ISPs that fail to apply technical measures against infringing subscribers can be fined up to £250,000 (cl.14).  The maximum criminal penalty for making copyright-infringing works is raised to £50,000 (cl.42).

Under cl.17, the Secretary of State may make provisions concerning the granting by a court of an injunction forcing ISPs to block access to “a location on the internet which the court is satisfied has been, is being or is likely to be used for or in connection with an activity that infringes copyright”.  In other words, government sanctioned website blocking.

Why the Uproar?

When the Bill was originally touted, there seemed to be widespread panic.  Claims of shutting down You-Tube and restrictions on freedom of speech were widely reported.  Some of the more vocally opposed proposals such as the “three strikes and you’re out” policy for recalcitrant users seem to have been withdrawn but the Act still has many in the UK concerned.  The fears seem based on the prospect of shutting down of sites that host a combination of legitimate and illegal material and the shutting down of sites that may use copyrighted work but in a reportage capacity eg wikileaks.org.  At the extreme, some argue that, the inclusion of the phrase “likely to be used” in cl.17, may mean a site like Google may be blocked based on its assumed intentions rather than its actions.

The concerns from the ISPs seem to relate to their duty to send infringement notices to users and their potential obligation to shut down access.  The problem with the Act from an ISP’s perspective is that whilst copyright holders can link piracy with an IP address, and these may be linked to a household’s internet account, there is no guarantee that the infringer will be identified.  An IP address can be used by many people at once, for example by legitimate users, neighbours, visitors or hijackers.  For cafes and public places with wi-fi, the identification of a user is almost impossible.  This has led to a fear that many innocent account holders will be sent infringement notices.

Proponents say the current procedure of getting a court order before an ISP will identify the infringing user is inefficient and costly.  By making it clear that an ISP is obliged to identify the user and by imposing a penalty of disconnecting the user, the cost of enforcing copyright laws will lessen as owners are not forced to go the court for orders or seek a remedy through the courts.

Piracy in Australia

The legislative approach in the UK is an interesting contrast to the current position in Australia which relies upon ISPs adopting a voluntary repeat infringer policy. The ‘safe-harbour’ provisions, which were introduced into the Copyright Act 1968 as a consequence of the AUSFTA, were considered in the recent case of Roadshow Films Pty Ltd v iiNet  Limited (No. 3) [2010] FCA 24, reviewed in the Fortnightly Review in February and March. In that case the Federal Court held an ISP to be not liable for its user’s peer-to-peer distribution of copyright works.  The case is scheduled for appeal but the approach of the Court to the safe harbour provisions is interesting in the context of the Digital Economy Act.

Three key aspects of the iiNet decision are important in this context:

1. The meaning of the ‘power to prevent’ infringement under section 101(1A) with respect to authorisation liability.

    • Whilst iiNet had the power to suspend or terminate users’ accounts under its customer contract, the Court held that this did not equate to an obligation to suspend or terminate accounts for copyright infringement. The Court observed [at 430] that ‘copyright infringement is not a straight “yes” or “no” question’. Therefore, the concept of who would constitute a repeat infringer was not self-evident, raising the same interpretation issues as outlined above with respect to the Digital Economy Act.

    2. The operation of s112E.

    • Although this section of the judgment is obiter, the Court interpreted this section to have little or no practical effect. The only circumstance in which s112E could have effect is where the person merely provides facilities for the making of the infringement and does nothing more. However, of course, if this is all the person is doing, it would be unlikely they would fall within the concept of authorisation. Any knowledge of infringement would mean that the section is no longer applicable.

    3. The safe harbour provisions.

    • Again, this section of the judgment is obiter as the sections only apply once a finding has been made that the ISP is liable for infringement. The Court confirmed that as compliance with the provisions is voluntary, failure to adopt a repeat infringer policy cannot be evidence that goes to a finding that an ISP is liable for copyright infringement. In order to fall within the limitation of liability provided by the safe harbour provisions, ISPs are required to adopt and reasonably implement a policy that provides for termination in appropriate circumstances of the accounts of repeat infringers.
    • Interestingly, the Court held that iiNet had a repeat infringer policy even if it had not been fully written down nor described to its subscribers: [at 593] ‘It is impossible to fail to notice the complete vacuum of legislative guidance in relation to any category A requirements when compared to the highly prescriptive requirements in relation to categories B-D found in s 116AH(1) and the Regulations. Neither the legislation, the Regulations nor extrinsic materials provide any guidance to the Court as to what the ‘appropriate circumstances’ for termination are, what ‘repeat infringement’ means or what the ‘accounts of repeat infringers’ means. The assumption must be that Parliament left latitude with the CSP to determine the policy, and left the meaning of those words to be determined by the courts.’

    The approach of the Court in this case demonstrates the difficulty of interpreting and applying such concepts, and it is likely that similar confusion may apply in the context of interpretation and application of the Digital Economy Act (UK).

    Outcomes

    Clearly, ISPs make much easier targets for copyright infringement actions than end users, but as a matter of public policy, the question needs to be asked regarding how much accountability and responsibility we wish to place on ISPs for monitoring and enforcing access to certain content. This broader policy question also arises in the context of content regulation and the Australian Government’s proposed introduction of mandatory internet filtering. Whether this is an issue for the courts or rather one for the legislature has to be questioned. The impact of the UK Digital Economy Act will certainly be closely watched by interested parties in Australia.


    “Where the Bloody Hell Are You?”: Lara Bingle in Search of a Cause of Action

    March 12, 2010

    by Jason Bosland and Vicki Huang

    On March 1, 2010, Woman’s Day published a nude picture of Lara Bingle which was allegedly taken in 2006 while she had a “secret” affair with AFL star Brendon Fevola (who was and still is married to Alex Fevola).

    The image shows Bingle in a shower trying to cover herself with her hands.  The expression on her face clearly depicts distress.  Apparently, the photo had been passed by Fevola to other people and had been “doing the rounds” for years.

    The day after publication by Woman’s Day, Lara Bingle by way of her publicist Max Markson, announced she would take legal action against Fevola for 1) breach of privacy, 2) defamation and 3) misuse of her image.

    Fiona Connolly said that Woman’s Day which has about 400,000 readers, published the photo because it was “going to come out anyway”.  She also said that Woman’s Day did not pay for the photo and would not disclose how they came to obtain the photo.

    Lara Bingle’s publicist is reported to have said that Bingle had retained all her contracts and would move past the incident.

    In an interesting turn of events, on March 8, Woman’s Day (the same magazine that printed the photo) published an exclusive interview with Bingle depicting “her side of the story”.  The fee for the interview was not disclosed but is rumoured to be around $200,000.  According to her publicist, Bingle has decided to give an “undisclosed amount” of money to the White Ribbon Foundation which is a charity that opposes domestic violence.

    The controversy has sparked a myriad of comments.  The Fortnightly Review looks at the issue from a legal perspective.  We believe it is an important case given the rise of cyber-bullying and “sext-ing” in the community – something we will be commenting on in a future issue of the FR. We emphasise that Bingle’s statement of claim has not become available so we comment on the facts that are thus far publicly known.

    Privacy and Misuse of Image

    It is unclear just what causes of action is meant by the terms “breach of privacy” and “misuse of image”.  Is Bingle’s intention to argue that an Australian court should recognise a common law cause of action for breach of privacy (flagged as a possibility in ABC v Lenah Game Meats) – or will she be content to rely on the existing law of breach of confidence, as used for instance in the recent Victorian Court of Appeal decision in Giller v Procopets.  Unfortunately, she will have to traverse this tricky field of developing law very carefully. The picture is even more confused when it comes to the claim for misuse of image.  Is this again shorthand for privacy arguments considered above?  Or might she be considering actions for passing off and misleading or deceptive conduct under the Trade Practices Act 1974 (Cth), as celebrities have often done in the past (including Bingle herself).  The difficulty with a passing off or TPA claim is that Bingle will have to show that Fevola made some kind of misrepresentation in the course of trade – and we find it hard to see either a misrepresentation or conduct in the course of trade on facts currently known to us.

    The civil remedies we believe she may be seeking are uncertain here.  Perhaps the criminal law as suggested by other bloggers may give her some satisfaction.  Nevertheless, her arguments as to defamation do target a well developed area of law, however it is unclear as to whether she can satisfy the legal elements.

    Defamation

    From the facts known, it appears that Bingle is claiming that the distribution by Fevola of the photograph between various members of the AFL and the Australian Cricket Team amounts to defamation.

    In order to make out the defamation cause of action, she is required to show that the publication of the photograph, assessed as a whole, conveyed one or more defamatory imputations about her.  There are three non-exhaustive ‘tests’ for determining whether an imputation carries a defamatory meaning.  At a very basic level, it must, in the eyes of the ordinary, reasonable reader or viewer:

    1. lower the plaintiff in the estimation of others;
    2. cause the plaintiff to be shunned or avoided; or
    3. expose the plaintiff to hatred, contempt or ridicule.

    And, herein lies the main obstacle for Bingle’s claim. It is difficult to see how the first two tests – the ‘lowering estimation’ and ‘shun and avoid’ tests – could be satisfied merely on the basis that Bingle was naked in the shower and had an unwanted photograph taken of her.  Indeed, we have all been naked in the shower, and it is unlikely that the ordinary, reasonable person would think less of Bingle or shun and avoid her simply on that basis.  Certainly, as required under the ‘lowering estimation’ test, it is hard to see how a reasonable, ordinary viewer of the photograph could ascribe any blame to Bingle for the taking of the photograph.

    A conclusion about this, of course, depends on any additional material that may have accompanied the distribution of the photograph and which may modify the imputations carried by its publication – ie, it may, depending on the circumstances of the publication, carry an imputation of promiscuity or that she acquiesced in the taking and distribution of the photograph (see, in particular, Shepherd v Walsh & Ors ).  There is also the possibility, of course, that Bingle might plead defamatory meaning based on ‘true innuendo’ (ie by relying on extrinsic facts that were, in fact, known to its recipients).

    Under the third test, however, there is authority to suggest that Bingle might have, at the very least, an arguable case on the basis of the publication of the photograph itself.  Thus, it was held in the well-known case of Ettinghausen v Australian Consolidated Press that the publication in a magazine (called ‘HQ’) of a photograph of the plaintiff, a famous Rugby League footballer, naked in the shower with his penis exposed, had the capacity to defame the plaintiff by exposing him to a more than trivial degree of ridicule.  The imputation pled by the plaintiff in that case was simply that ‘[t]he plaintiff is a person whose genitals have been exposed to the readers of the defendant’s magazine ‘HQ’, a publication with a wide readership.’  The ease with which the judge, Hunt J, arrived at his conclusion is astounding (although this can be, at least partly, explained on the basis that this imputation was pled in the alternative).  There was absolutely no analysis whatsoever as to how this imputation had the capacity to expose the plaintiff to ridicule, which has been held to mean ‘deserving to be laughed at’ or ‘absurd’ (see Boyd v Mirror Newspapers Ltd [1980] NSWLR 449 at 453). Significantly, there was no suggestion that there was anything unusual about the way the plaintiff was depicted. There was nothing ‘grotesque, monstrous or obscene’ about the photograph and it did not seem to make a ‘preposterously ridiculous spectacle’ of the plaintiff.  It was simply a photograph of a naked man in a communal shower, as is the usual practice following any football match.

    In light of this yardstick, it is difficult to see how the photograph of Bingle – which also involves mere nudity – should be decided any differently, at least in relation to the judge’s question as to whether or not the photograph has the capacity to defame.  This leaves, of course, the further question of whether the photograph in fact bears the defamatory meaning – a question of fact not answered by the jury in Ettinghausen.

    One potential problem for Bingle, however, is that even if defamatory meaning is established on the basis that a reasonable reader would view the plaintiff in a ridiculous light, it would be particularly easy for Fevola to rely on the defence of justification.  Thus, it is likely that Fevola could defend the publication on that basis that the imputation – the nudity – is, in fact, true.  In NSW, the scope of the truth defence in this context underwent particularly significant change following the introduction of the uniform defamation laws across Australia.  In particular, it removed the requirement under the justification defence (as it had previously operated in that state) that the publication must also serve the public interest. Indeed, one of the issues raised when the Defamation Act 2005 (NSW) was passed was that the removal of the public interest requirement under the justification defence would put a stop to defamation acting as de facto privacy protection. Defendants would escape liability for invasions of privacy by simply proving that the defamatory imputations concerning the plaintiff’s private life were true. This case brings such concerns to the fore, but also highlights the inherent problem of protecting what are essentially privacy interests under a cause of action for which it is not designed.

    We look forward to reading Bingle’s statement of claim.  We also look forward to your comments.


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