Originality of compilations confirmed in MEDENTRY Case
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In Boyapati v Rockefeller Management Corporation ( FCA 995, July 2 2008), the Federal Court of Australia has examined various claims under copyright, unfair trade practices and trademark law.
The applicants (Ann, Ray and Edward Boyapati) operated a business under the name MedEntry. They brought a claim for infringement of copyright in aptitude and intelligence tests prepared for the purposes of preparing candidates for the Undergraduate Medicine Health Sciences Admission Test (UMAT).
The respondents, Rockefeller Management Corporation and Dallas Gibson (a director of Rockefeller Management), were involved in a competing business called Medical Entrance that also prepared candidates for the UMAT. The respondents filed cross-claims alleging, among other things, that the applicants:
- infringed the copyright assigned by Gibson to Rockefeller Management; and
- engaged in passing off (through the use of the MedEntry name) and conduct in contravention of the Trade Practices Act 1974 (through the use of the MedEntry name and the unauthorized use of third parties’ logos).
Finally, the respondents sought an order under Section 88 of the Trademarks Act 1995 that the mark MEDENTRY, which was registered by two of the applicants in 2005, be cancelled or removed from the register.
First, the court examined the applicants' claim for copyright infringement. On the evidence before the court, there was little doubt that the respondents had copied the works in question. The key issue for consideration was whether the works in suit were original works that were subject to copyright.
There was evidence to the effect that only half of the questions and answers comprising the applicants’ tests were created from scratch, with the balance having been developed from existing questions and answers compiled from various third-party sources. On this basis, the respondents argued that the works in suit were not original. However, after reviewing a number of authorities on the originality of compilations, the court concluded that the applicants had contributed a sufficient amount of skill, judgment and labour to satisfy the requirement for originality.
The evidence demonstrated that the individual applicant responsible for developing questions based on third-party sources used such sources "in different ways, selecting, adapting and modifying them to varying degrees" to suit the purpose of compiling questions and answers that simulated the UMAT. Furthermore, even where there was "minimal modification" to a pre-existing question, the applicant had "exercised skill and judgment in selecting the question and including it" in the test, and demonstrated a degree of skill and judgment involved in arranging the sequence of questions.
The court also found the respondents liable for conversion under Section 116 of the Copyright Act 1968 and dismissed the respondents’ cross-claim for infringement of copyright. As to the question of appropriate relief for both conversion and copyright infringement, including additional damages pursuant to Section 115(4) of the act, this was left open pending the filing of further submissions by the parties.
With regard to the passing off and unfair trade practices claim, the court held that the respondents had failed to establish that:
- they had any particular reputation in the name Medical Entrance that would support their claim for passing off;
- there was any misrepresentation involved in the applicants' use of the name MedEntry; and
- they had suffered any resulting loss and damage.
Finally, as the respondents had failed to establish any particular reputation in the name Medical Entrance, the court dismissed the claim that the registration of the trademark MEDENTRY was likely to deceive or cause confusion due to the respondents’ reputation in the name Medical Entrance as of the date of application for registration. In addition, the court held that the respondents had not made out a case that the MEDENTRY mark lacked distinctiveness, as MEDENTRY "is more than just a short form of Medical Entrance".
The decision affirms the position held by Australian and UK authorities that copyright can subsist in a selection of pre-existing works. It demonstrates that copyright lies in the "selection, not in the component part of [the work], and the originality of the work lies in the labour, skill and discrimination of the author in putting together the material", with the result that the new work may be regarded as "separate from the works selected".
Faisal Mian, Corrs, Melbourne
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