Internet libel and the permanence of content appearing on the web has given rise to a large number of lawsuits against newspapers and other publishers of material online.

In traditional libel actions plaintiffs must file suits within a year of the date of the offending publication, otherwise their actions will be statute barred.

However, a 160 year old English precedent, when applied to Internet publishing, means that each separate act of the downloading of an article on the internet triggers a fresh limitation period.

As reported by p2pnet, the UK Ministry of Justice is re-evaluating an 1848 English precedent, which is likely to have far reaching implications for the future of internet publishing.  The internet defamation consultation questions being examined by the Ministry of Justice can be found here.

The Ministry is assessing the relevancy of the so called 160 year old multiple publication rule in advances in technological development. These advances mean that single statements can reach millions of people in different jurisdictions, giving rise worldwide dissemination of single statements.
The rule was first enunciated in the English case of Brunswick v Hamer (1849) 14 QB 185. This old libel case still governs the law of libel on the internet under English, Irish law and in most Commonwealth jurisdictions.  The effect of the ruling  is that each individual libellous publication gives rise to a separate cause of action, with a separate limitation period attached to it.

The Duke of Brunswick case involved an exiled German ruler Karl 11, Duke of Brunswick and Luneberg; the Duke of Brunswick 8 Luneberg (1804-1873).  After finding out in 1848,  17 years later that he had been defamed in an old London newspaper,  the Duke sent his servant to procure a copy of the article published in 1830.  As the then six year limitation period for bringing an action for defamation had expired, the Duke relied upon the sending of his servant to procure copies of the offending article to bring defamation proceedings for injury to his reputation.

The Duke also obtained a copy of the paper from the London publisher of the newspaper for this very purpose,  and sued based on the two copies of the original article retrieved.  Although there was a statute of limitations in place barring the bringing of actions after six years, the Queens Bench held that the procuring of the two articles by the Duke each amounted to a new publication of a libel,  giving rise to a fresh cause of action in respect of each.

The Court agreed that Harmer’s receipt of a back issue of the offending publication in 1848 constituted a separate act of publication, with the statutory time limit for bringing action commencing at the point in time it was received,  rather than the date of it’s printing and distribution 17 years previously.  Civil libertarians and media publishers argue that within the internet context publication should only be libellous when first posted on the internet.  This is because it has a chilling effect on freedom of speech on the internet as is perceived as an abuse of process.

INTERPRETATION OF THE DUKE OF BRUNSWICK CASE

In subsequent case law in Ireland and England,  this  case has been interpreted to mean that a libel occurs on each separate occasion a user downloads libellous material in an online environment.

Based on the reasoning in this ruling, newspapers confront the prospect of infinite libel suits which can be lodged every time an article is downloaded, even where the act of downloading occurs years after the original date it is posted.  Theoretically, the aggrieved person can sue in any jurisdiction in the world where the downloading of the offending publication occurs, providing of course that they can demonstrate some relevant connection with the jurisdiction where the downloading occurs.

In Loutchansky v Times Newspapers [2002] QB 783,  the Court of Appeal elected not to follow the US rule which had since sought to limit the damage to single publications of material. The Court favoured the Duke of Brunswick case, applying the case to the case of internet archived material. This had the effect that every time a newspaper’s online archive was accessed, an act of publication occurs within the limitation period for bringing legal action.

The case was appealed to the European Court of Human Rights.  In 1998 the  United Kingdom  incorporated the standards enshrined in the  European Convention on Human Rights (ECHR) by enacting the UK Human Rights Act.  Under s 6(3) of the Act the Courts are considered “public authorities” and are therefore required to to act in accordance with the standards recognised in the ECHR. There was a lot of discussion about what effect the Human Rights Act would have on certain areas of common law, including but not limited to defamation, where important freedoms are at stake.

The  Defendant newspaper The Times contended that the Duke principle exposed publishers to potential litigation without any time constraints.  The defendant argued that  the principle therefore violated  Article 10 of the European Convention on Human Rights.  See Times Newspapers Ltd (Nos 1 and 2) v the United Kingdom (Applications 3002/03 and 23676/03, 10 March 2009) the ECHR (fourth section).

It was unanimously held that there had been no violation of  Article 10 of the Convention.  The case in question revolved around two articles regarding the financial dealings of the Plaintiff.  Each article was posted on the newspapers’ website on the day it also appeared in print form.

The defendant Loutchansky instigated libel proceedings over the articles, with the newspaper conceding they were defamatory and relying on the defence of qualified privilege.  The articles suggested he had abused his position as a police officer with the Metropolitan Police extradition unit by corruptly accepting  bribes from Russian underworld figures in exchange for selling intelligence relating to attempts to extradite them to Russia to face criminal charges.  The Times pleaded justification, arguing that the content of the articles were of sufficient public importance that they were duty bound to publish them, being matters of high public interest.

The Times prevailed in respect of their  defence of qualified privilege in relation to the article of June 2, 2006, however in respect of the internet publication, the Court concluded that the website article was capable of damaging the reputation of a person forever.  The presence of the website material was likened to a permanent tattoo. Pending the ultimate resolution of the case, the articles remained on the website, which inspired Loutchansky to bring new libel proceedings pertaining to the internet publication.  The professional standards investigation  resulted in a finding that there was insufficient evidence to proceed with charges resulting in disciplinary action.

After the investigation had concluded the claimant argued that the Times couldn’t rely on the website publication as being a fair characterisation of the situation, and there were no public interest factors which applied in relation to the website publication.  The Times were found to have been irresponsible in not removing the website material which raised questions about the claimant’s honesty  in 2006.

THE CRITICISM OF THE DUKE OF BRUNSWICK PRECEDENT

The criticism of the old Duke of Brunswick ruling stems from the fact that it has made London a popular location for the launching of internet libel cases brought by celebrities and overseas businessmen, including those accused of financing terrorism.  The reason for this is that British laws are more favourable to prosecuting defamation actions than the US.  This encourages forum shopping using the most favourable libel laws to prosecute a case.

Based on the reason in the 160 year old case, all that needs to be demonstrated is that there was a publication, however small it’s circulation,  and that there is some connection with the jurisdiction of England. That connection may be a connection to the jurisdiction or the existence of a reputation the Plaintiff has there which was damaged.

The case law in England has mainly involved foreign businessmen in Russian and Saudi Arabian figures accusing of financing terrorism bringing law suits in London Courts to stifle freedom of speech.

In Berezovsky v Michaels [2000] UKHL 25, Russian tycoon Boris Berezovsky launched action against the UK Forbes magazine, a case which dragged on for six years before being resolved in the defendant’s favour. The defendant magazine submitted that the case was more appropriately heard in either the US or Russia, however the House of Lords, applying the Duke of Brunswick principle, gave leave to Berezovsky to sue in England based on his connection to and reputation in England.

A minority of judges remarked that the Russian was engaging in libel tourism, selecting the UK courts as he knew that he was unlikely to prevail in the US or Russia. The case was followed in, Dow Jones v Gutnick (2002) 210 CLR 575 by the High Court of Australia.

The case gave rise to a great deal of controversy and outrage  by American media publishers.  As stated above,  American case law states that a defamatory publication gives rise to a single cause of action for libel which runs from the time of publication as does the statute of limitations. See Gregoire v GP Putnam’s Sons 81 NE 2d 45 (1948).

The United States case law means that there can only be one single act of publication, the date at which the act of publication occurs. The one cause of action arises in the place of publication where the article appears.

The Ministry of Justice’s public consultation paper raises questions over the continuing appropriateness of the principle in the Duke of Brunswick case in today’s internet publishing world.

The  global nature of the internet renders  all online publishers, website owners and ISPs, irrespective of their geographical location or the location of the servers upon which the material they published is situated, vulnerable to the relatively generous UK defamation law.

The absence of a single publication rule renders the publishers of online internet archives exposes them to defamation for material placed online for many years after the original publication.

Whilst there is potential protection for ISPs as re-publishers of defamatory material, the extent of that coverage is unclear, and encourages online intermediaries to take a conservative approach in publishing online.

Where publishers act quickly to remove allegedly defamatory material they are more likely to be held harmless for their publication.  The desirability of minimising loss leads to a form of censorship of investigative journalism.

The question of whether a factual compilation qualifies for copyright protection is a question of fact and degree and depends on the degree of originality invested in the selection, co-ordination and arrangement of facts aggregated.   The decision renders collections of data in phone directories, television program guides, real estate listings and football and sporting fixtures vulnerable to duplication by commercial competitors.

The Federal Court has adhered to a standard akin to the position in the United States decision in Feist v Rural Telephone Services.   The Supreme Court in  Feist v Rural Telephone Services found that by merely taking 1,309 names, towns, and telephone numbers from Rural’s white pages, Feist had not been involved in taking anything ‘original’.  Rather they had merely been involved in taking raw data, which like news, facts or ideas are not subject matter which copyright law was intended to protect.

The US  Court reasoned that whilst the defendant might have been the first to discover and report the names, telephone numbers and towns of it’s  subscribers,  but this data was no more than uncopyrightable facts which existed before Rural reported them, and will continue to do so.

The Court held that to establish copyright ownership in the phone book, the Plaintiff had to establish a sufficient degree of originality in the co-ordination, selection and arrangement of those facts.

The US Court had found that the Plaintiff failed to establish this as there wasn’t a lot of creativity in arranging subscribers’ names in an alphabetised form.

The Federal Court, after surveying the case law on copyright in factual compilations or databases under the Copyright Act in Australia,  held that there needs to be some “creative spark” in the selection, arrangement and co-ordination of such material and that investing “substantial labour” and / or “substantial expense” as was held in previous case law, was no longer  sufficient for copyright to subsist in the data contained in the telephone book.

The Court noted that the scope of database protection for compilations of fact under Australian law was not as broad as that offered by the European Database Directive 1996.

Telstra gave evidence as to the manner in which the contents and directories were generated.  The Court found that  Telstra was unable to identify  the authors of the contents of the relevant directoris,  and no “independent intellectual effort” of “sufficient effort of a literary nature” was identified amongst those who had made a contribution.  The fact that the directories’ contents were mostly computer generated as opposed to the result of human authorship was also a significant factor in the Court’s finding.

Internet libel and the permanence of content appearing on the web has given rise to a large number of lawsuits against newspapers and other publishers of material online.

In traditional libel actions plaintiffs must file suits within a year of the date of the offending publication, otherwise their actions will be statute barred.

However, a 160 year old English precedent, when applied to Internet publishing, means that each separate act of the downloading of an article on the internet triggers a fresh limitation period.

As reported by p2pnet, the UK Ministry of Justice is re-evaluating an 1848 English precedent, which is likely to have far reaching implications for the future of internet publishing.  The internet defamation consultation questions being examined by the Ministry of Justice can be found here.

The Ministry is assessing the relevancy of the so called 160 year old multiple publication rule in advances in technological development. These advances mean that single statements can reach millions of people in different jurisdictions, giving rise worldwide dissemination of single statements.
The rule was first enunciated in the English case of Brunswick v Hamer (1849) 14 QB 185. This old libel case still governs the law of libel on the internet under English, Irish law and in most Commonwealth jurisdictions.  The effect of the ruling  is that each individual libellous publication gives rise to a separate cause of action, with a separate limitation period attached to it.

The Duke of Brunswick case involved an exiled German ruler Karl 11, Duke of Brunswick and Luneberg; the Duke of Brunswick 8 Luneberg (1804-1873).  After finding out in 1848,  17 years later that he had been defamed in an old London newspaper,  the Duke sent his servant to procure a copy of the article published in 1830.  As the then six year limitation period for bringing an action for defamation had expired, the Duke relied upon the sending of his servant to procure copies of the offending article to bring defamation proceedings for injury to his reputation.

The Duke also obtained a copy of the paper from the London publisher of the newspaper for this very purpose,  and sued based on the two copies of the original article retrieved.  Although there was a statute of limitations in place barring the bringing of actions after six years, the Queens Bench held that the procuring of the two articles by the Duke each amounted to a new publication of a libel,  giving rise to a fresh cause of action in respect of each.

The Court agreed that Harmer’s receipt of a back issue of the offending publication in 1848 constituted a separate act of publication, with the statutory time limit for bringing action commencing at the point in time it was received,  rather than the date of it’s printing and distribution 17 years previously.  Civil libertarians and media publishers argue that within the internet context publication should only be libellous when first posted on the internet.  This is because it has a chilling effect on freedom of speech on the internet as is perceived as an abuse of process.

INTERPRETATION OF THE DUKE OF BRUNSWICK CASE

In subsequent case law in Ireland and England,  this  case has been interpreted to mean that a libel occurs on each separate occasion a user downloads libellous material in an online environment.

Based on the reasoning in this ruling, newspapers confront the prospect of infinite libel suits which can be lodged every time an article is downloaded, even where the act of downloading occurs years after the original date it is posted.  Theoretically, the aggrieved person can sue in any jurisdiction in the world where the downloading of the offending publication occurs, providing of course that they can demonstrate some relevant connection with the jurisdiction where the downloading occurs.

In Loutchansky v Times Newspapers [2002] QB 783,  the Court of Appeal elected not to follow the US rule which had since sought to limit the damage to single publications of material. The Court favoured the Duke of Brunswick case, applying the case to the case of internet archived material. This had the effect that every time a newspaper’s online archive was accessed, an act of publication occurs within the limitation period for bringing legal action.

The case was appealed to the European Court of Human Rights.  In 1998 the  United Kingdom  incorporated the standards enshrined in the  European Convention on Human Rights (ECHR) by enacting the UK Human Rights Act.  Under s 6(3) of the Act the Courts are considered “public authorities” and are therefore required to to act in accordance with the standards recognised in the ECHR. There was a lot of discussion about what effect the Human Rights Act would have on certain areas of common law, including but not limited to defamation, where important freedoms are at stake. 

The  Defendant newspaper The Times contended that the Duke principle exposed publishers to potential litigation without any time constraints.  The defendant argued that  the principle therefore violated  Article 10 of the European Convention on Human Rights.  See Times Newspapers Ltd (Nos 1 and 2) v the United Kingdom (Applications 3002/03 and 23676/03, 10 March 2009) the ECHR (fourth section).

It was unanimously held that there had been no violation of  Article 10 of the Convention.  The case in question revolved around two articles regarding the financial dealings of the Plaintiff.  Each article was posted on the newspapers’ website on the day it also appeared in print form.

The defendant Loutchansky instigated libel proceedings over the articles, with the newspaper conceding they were defamatory and relying on the defence of qualified privilege.  The articles suggested he had abused his position as a police officer with the Metropolitan Police extradition unit by corruptly accepting  bribes from Russian underworld figures in exchange for selling intelligence relating to attempts to extradite them to Russia to face criminal charges.  The Times pleaded justification, arguing that the content of the articles were of sufficient public importance that they were duty bound to publish them, being matters of high public interest.

The Times prevailed in respect of their  defence of qualified privilege in relation to the article of June 2, 2006, however in respect of the internet publication, the Court concluded that the website article was capable of damaging the reputation of a person forever.  The presence of the website material was likened to a permanent tattoo. Pending the ultimate resolution of the case, the articles remained on the website, which inspired Loutchansky to bring new libel proceedings pertaining to the internet publication.  The professional standards investigation  resulted in a finding that there was insufficient evidence to proceed with charges resulting in disciplinary action.

After the investigation had concluded the claimant argued that the Times couldn’t rely on the website publication as being a fair characterisation of the situation, and there were no public interest factors which applied in relation to the website publication.  The Times were found to have been irresponsible in not removing the website material which raised questions about the claimant’s honesty  in 2006.

THE CRITICISM OF THE DUKE OF BRUNSWICK PRECEDENT

The criticism of the old Duke of Brunswick ruling stems from the fact that it has made London a popular location for the launching of internet libel cases brought by celebrities and overseas businessmen, including those accused of financing terrorism.  The reason for this is that British laws are more favourable to prosecuting defamation actions than the US.  This encourages forum shopping using the most favourable libel laws to prosecute a case.

Based on the reason in the 160 year old case, all that needs to be demonstrated is that there was a publication, however small it’s circulation,  and that there is some connection with the jurisdiction of England. That connection may be a connection to the jurisdiction or the existence of a reputation the Plaintiff has there which was damaged.

The case law in England has mainly involved foreign businessmen in Russian and Saudi Arabian figures accusing of financing terrorism bringing law suits in London Courts to stifle freedom of speech.

In Berezovsky v Michaels [2000] UKHL 25, Russian tycoon Boris Berezovsky launched action against the UK Forbes magazine, a case which dragged on for six years before being resolved in the defendant’s favour. The defendant magazine submitted that the case was more appropriately heard in either the US or Russia, however the House of Lords, applying the Duke of Brunswick principle, gave leave to Berezovsky to sue in England based on his connection to and reputation in England.

A minority of judges remarked that the Russian was engaging in libel tourism, selecting the UK courts as he knew that he was unlikely to prevail in the US or Russia. The case was followed in, Dow Jones v Gutnick (2002) 210 CLR 575 by the High Court of Australia.

The case gave rise to a great deal of controversy and outrage  by American media publishers.  As stated above,  American case law states that a defamatory publication gives rise to a single cause of action for libel which runs from the time of publication as does the statute of limitations. See Gregoire v GP Putnam’s Sons 81 NE 2d 45 (1948).

The United States case law means that there can only be one single act of publication, the date at which the act of publication occurs. The one cause of action arises in the place of publication where the article appears.

The Ministry of Justice’s public consultation paper raises questions over the continuing appropriateness of the principle in the Duke of Brunswick case in today’s internet publishing world.

The  global nature of the internet renders  all online publishers, website owners and ISPs, irrespective of their geographical location or the location of the servers upon which the material they published is situated, vulnerable to the relatively generous UK defamation law.

The absence of a single publication rule renders the publishers of online internet archives exposes them to defamation for material placed online for many years after the original publication.

Whilst there is potential protection for ISPs as re-publishers of defamatory material, the extent of that coverage is unclear, and encourages online intermediaries to take a conservative approach in publishing online.

Where publishers act quickly to remove allegedly defamatory material they are more likely to be held harmless for their publication.  The desirability of minimising loss leads to a form of censorship of investigative journalism.

It alleged that libelous posts had been made about their company and products on their internet website which constituted tortious interference with their business relations.

The Plaintiffs argued the defendants were engaged in a civil conspiracy with other persons to post libelous statements about their company and products with a view to interfering with their business. The website contained public forums permitting posts regarding the Plaintiffs’ products and website.

 The Plaintiffs allege that the defendants assisted competitors in posting libelous statements which were false and capable of being read by members of the public.

The Defendants of course argued that they had immunity under S230 Communications Decency Act 1996, as they fell within the definition of an interactive service provider. Therefore they couldn’t be liable for civil conspiracy for libelous statements made on their website.

Under S230 although a provider can’t be liable for others’ statements made on their website they can be held liable for their own words.

The Plaintiffs made this claim but did not provide details of the conspiracy, other than to state the mere existence of the forum boards on the website. Alleging a conspiracy between the persons who post the fake reviews or defamatory material and the owner of the website has previously been raise as a means of circumventing the immunity conferred by S230 of the Act upon a website owner.

However in this case the court merely stated that the only relevant factor was whether or not the Defendants had posted the alleged libelous content themselves, without citing any precedent.

Verizon employees were found to have  improperly accessed Obama’s phone records, resulting in their employment contracts being terminated.

Information Privacy laws differ from country to country, however as a general principle under data handling laws,  agencies and organisations have obligations  to keep information entrusted to them secure from improper access and disclosure.

Celebrities and other high profile targets have been the subject of relentless attacks and are obviously at higher risk for privacy breaches. However there have been many incidents where damage has been caused to businesses and individuals due to security breaches. Some of these are due to  internal security breaches whilst others have arisen from external threats.

There have been instances reported of business  competitors impersonating other businesses and having their business phones switched off by requesting account cancellation, a form of identity theft. 

Mobile phone records and wireless laptops often contain a goldmine of sensitive personal, business and financial data which can be be used by criminals, disgruntled spouses and rival traders, the unauthorised disclosure of which can have an enormous impact on an individual or business.

The higher profile incidents raise broader concerns about how common such breaches are,  and how safe it is to assume that information on a wireless network can ever be completely secured from a range of  security threats.

Kevin Mitnick, former hacker and present Security Consultant, sought damages from AT&T for allowing his wireless account to be breached.  Mitnick had served a jail sentence for  computer hacking. He has  become such a  high-profile target that his own Web-hosting firm Hostedhere.net  wouldn’t host Web pages for him anymore,  due to the number of  previous attacks upon his website.

Mitnick claims that his personal information, namely his address, land and mobile phone numbers, email address, instant messenger handles, PIN number and the last four digits of his Social Security number appeared on the web in hacking forums. 

Mitnick claims he had  told AT&T of a pending breach however the company  failed to respond,  leading to improper access and disclosure of his personal information.  Instead of investigating how the security breach which  occurred with respect to the $2,000 a month customer, AT&T  elected to cancel Mitnick’s contract.

Mitnick had been a customer of AT&T for a period of ten years and requested damages for the breach of his privacy for the failure to adequately maintain the security of his account information.

AT&T assert that his claims have been investigated fully and were found to have lacked foundation. 

Mitnick says this is a tacit admission that  AT&T are  unable or unwilling  to secure the personal information of their customers, and are taking the easy way out by simply terminating their accounts when breaches occur. 

Mitnick now proposes to sue AT&T for breach of privacy at common law for failing to adequately protect his personal information. He claims that he called AT&T and asked them to take extra precautions to protect the security of his account, putting them on notice of a potential breach.  Mitnick asked that if someone tried to change his account in any way,   they be required to change the passord verbally, not just provide a social security number. Mitnick had experienced a number of attacks upon his account, and had taken a number of measures to counter the attacks, for instance memorising his password, and not dislosing it or recording it.

The incident raises the legal question of what level of safeguards telecommunication companies have to implement to keep their  networks, servers and customer information secure from misuse and unauthorised access, whether by it’s own employees or persons seeking to unlawfully obtain access to customer’s information.

It is an important question given the number of organisations which have been besieged by security breaches and credit card thefts over the years.

AT&T would argue of course that their contract or terms of service state that they have  absolute discretion to terminate a user’s account without notice.  However, even if this is true,  where a user’s rights have been breached prior to the termination of their contract, it is questionable as to whether they could merely avoid any liability for their acts or omissions in relation to their acts or omissions prior to such termination.   It would seem an odd result for customers to be required to forfeit any rights they have under the terms of their contract or at law by simply having their account cancelled after the damage was done. 

Social engineering scams, employee fraud and negligence are not uncommon in causing privacy breaches. Telecommunication companies have obligations under information privacy legislation and regulations to keep customer information secure by using reasonable safeguards.

The US Federal Trade Commission have developed privacy enforcement programs to make sure companies abide by their promises to consumers regarding their privacy, including taking reasonable measures to secure their personal information.

In Australia the Office of the Privacy Commissioner is responsible for investigating breaches of the National Privacy Principles contained within the Privacy Act 1988 (Cth).  There is legislation and industry codes specific to the telecommunications industry. Consumers can also lodge complaints about providers to the   Telecommunications Industry Ombudsman . 

Privacy regulation has been subject to extensive review in Australia,  and the legal regime for the protection of information privacy in Australia is fragmented. 

There is a recognised need for privacy rights to be streamlined and harmonised to promote uniformity and consistency.  For instance,  there are inconsistencies in the application of privacy laws,  and telecommunication companies are able  to abide by a lower standard of privacy than the principles embodied in the Privacy Act 1988 (Cth).

Providers can elect to be bound by the National Privacy Principles or can develop and be bound by an industry specific privacy code.  Telecommunication companies have obligations to take all reasonable steps to protect a customer’s personal information from misuse and loss and from unauthorised access, modifications or disclosure both under the Privacy Act 1988 and the Telecommunications Act 1997. 

For example in relation to online transactions, a company may stipulate what it believes a reasonable level of encryption.

The important question seems to be how one defines what  ‘reasonable steps’  are in relation to various risks relating to the storage, retention and security in the data handling process.   What  reasonable safeguards or measures does a telecommunications company have to implement in ensuring access to this information is appropriately secured and that staff  are adequately recruited, screened and trained to prevent fraud and misuse. 

 The recently released Australian Law Reform Commission Report ‘For your Information’  contains a discussion in relation to ”data security’.   There was widespread support expressed for guidelines to as to what ‘reasonable steps’ means in the context of the ‘data security’ principle contained in NPP 4.1.

Neither the Telecommunications Industry Ombudsman or the Privacy Commissioner have the ability to award compensation beyond   certain limits to customers who have suffered privacy violations.

It is recognised by customers that there are  security risks involved in wireless technology and that conversations can be intercepted, although with less ease with respect to digital phones. Encrypted digital communications afford the highest level of security, and there are several digital technologies available such as CDMA,* TDMA,* and GSM.*

Mobile phone records which are not secure pose obvious risks to particular groups of people.  These people are left vulnerable by websites trading  mobile phone records for small fees. Despite legal considerations, companies continue to offer the name and address connected to mobile phone numbers, an individual’s phone number, or a complete record of outgoing and incoming phone calls.

The ease with which a person can obtain this information is disturbing to the majority of the public concerned about privacy, but can be life threatening to persons such as victims of crime or other persons concerned about their personal safety.

Unfortunately there are a myriad of ways unscrupulous people can obtain access to  personal records through commercial vendors who treat information as a commodity to be bought and sold.  Using rudimentary privacy enhancing technologies doesn’t stop either dishonest or negligent employees  from sharing records with online information brokers.

Positive obligations are imposed on organisations to keep secure information entrusted to them,  and implement safeguards to protect the data they collect and handle. The level of safeguards should be appropriate from a risk management perspective depending on the likelihood of unauthorised access, and gravity of the consequences an individual may encounter as a result of a violation of their privacy.  Organisations and agencies should be prepared to address physical, computer, network,  personnel and security aspects of privacy.  The issue of security is particularly important in an electronic environment and the onus should be on organisations and agencies to ensure that their databases and electronic transfers or transactions are secure.  Organisations and agencies should have a positive obligation to report breaches which could result in an interference with the privacy of an individual,  financial  loss, or other significant harm.  The obligation should be proportionate to the extent of the breach and the possible harm it could cause.

Tort of Privacy

It is important to distinguish between Information privacy and physical or territorial privacy.

Whatever the merits of Mitnick’s claim against AT&T,  being based in the US ,  he has an entitlement to bring an action pursuant to an independent tort of privacy. The US Courts have created this right from existing actions for breach of confidence, defamation and property law cases.   As in Australia,  there are statutes in the US which purport to protect communications privacy, but the common law has features that protect dimensions of privacy beyond information privacy.

Information privacy  is a term that generally applies to privacy of personal data, and regulates the data handling processes of an individual’s personal data by organisations.  It also extends to identification and identity, authentication technologies,  identity theft, the use of digital signatures, and specific aspects of internet privacy.

A comparative analysis of the judicial protection of privacy afforded by different  jurisdictions reveals that the tort of invasion of privacy by the publication of private facts is available in the majority of States in America as well as New Zealand. (See Bradley v Wingnut Films and  P v D [2000]  Therefore,  at least  in the United States and New Zealand, the tort of ‘public disclosure of private facts’ ‘enables individuals to pursue a remedy for non-consensual publications of personal information.

Great Britain has also recognised the existence of  privacy rights, although the formulation of privacy rights differs, recognised under the equitable action for breach of confidence. (See Campbell v MGN)  This distinction in the conceptualisation of  privacy rights can be significant when an individual seeks vindication for privacy violations through the Courts.

 It is only recently that Australian courts been receptive to recognising a general tort of privacy.  There are only two decisions which have recognised the existence of actionable tort of privacy at common law in Australia.  The first decision is the decision of the District Court of Queensland in Grosse v Purvis , the offending conduct in this case being stalking by the defendant, also a crime under s 359B of the Criminal Code (Qld).

More recently, in a case on appeal to the High Court,  the County Cout of Victoria held that the media disclosure of the identity of a rape victim in Australia was a breach of the tort of privacy in respect of disclosure of private facts. Doe v Australian Broadcasting Corporation & Ors [2007] VCC 281.   Two ABC journalists subsequently pleaded guilty to breaches of  s4(1A) of the Judicial Proceedings Reports Act 1958 (Vic) which prohibits identification of rape victims.  Doe subsequently sued both the journalists, their Employer and the ABC.  The tort, as framed by the Court, is a narrowly defined one, being confined to the unjustified disclosure of private facts. The emergent tort of privacy articulated by the County Court in the Doe case could prove to be significant as an alternative avenue for individuals to enforce their privacy rights in specific circumstances.  Privacy threats are increasing with rapidly evolving communication and surveillance technologies and an invasive media industry.

Even in ordinary parlance, there have been perennial problems in defining privacy, which is a nebulous term. Privacy means different things to different people.  It is a truism to say that privacy is a private matter.

In terms of it’s legal scope,  the tort or privacy in Australia only applies to natural persons, and there is no corporate right to privacy even where a business suffers damage to its reputation.  The reason is that, unlike an individual, a corporation isn’t capable of emotional suffering.

There is also a right to prevent the unlawful and arbitrary interference with an individual’s privacy and reputation enshrined in S13 of the Charter of Human Rights and Responsibilities Act 2006. However there is a consensus that this legislation is inadequate in preventing privacy intrustive behaviours.

As stated above there is legislation dealing with information privacy, in the State of Victoria, the Information Privacy Act 2000 (Vic). and the  Health Records Act 2000 (Vic).

These statutes focus on the protection of  information privacy, with principles regulating the standards for the collection, storage, access and disclosure of private and sensitive information by various agencies and organisations.

There also exists legislation regulating devices which enable different forms of surveillance, including listening devices, optical surveillance devices, tracking devices and data surveillance devices;  Surveillance Devices Act 1999.

The area of privacy law is a complex one in today’s era of communication technologies where advances in information technology facilitate the transmission of  information across national borders with speed and efficiency. 

Organisations are increasingly operating  on an international scale and transmitting data across borders. The Privacy Act 1988 (Cth) regulates transborder data flows through NPP 9, setting out the conditions for the sending of data overseas.  The principles prevent organisations disclosing information to someone in a foreign country unless they are subject to information privacy schemes comparable to the NPPs, or where the individual has consented to such disclosure.

As the internet is now a mainstream source of public information and interaction, there are unique challenges involved in protecting privacy, particularly with the emergence of new tracking technologies and information storage mediums. The principles embodied in the Privacy Act 2008 for example are based on the OECD data protection guidelines which were developed over 30 years ago at a time when personal computers were scarce, and everyday modern day phenomena such as mobile and camera phones were only on the horizon.  The OECD also has issued Guidelines for the Security of Information Systems and Networks: Towards a Culture of Security (2002), which responds to security issues arising from networked information systems.

The principles have also become outdated due to new technologies such as biometric technology, and the proliferation of surveillance systems, eg Closed Circuit Television, RFID, GPS navigation technologies, and DNA based technologies.

The Federal Court in Chocolatiere Guylian N.V v Registrar of Trade Marks, held that the chocolate seashell shape was not sufficiently inherently distinctive to satisfy the requirements of S41(3) of the Act, and didn’t distinguish the origin of the goods as being exclusively associated with Guylian in the sense required by S41(5) of the Act.

The premium chocolate maker manufacturers boxed chocolates  are sold in over 132 countries, and they have spent $8 million annually on advertising. The seashell remains the company’s number one product, accounting for 65% of all sales and was created especially for gift giving.

Its sea shell chocolate products are sold in boxes of various sizes and configurations, which comprise an assortment of sea shell and other marine shapes, including the seahorse shape. Guylian has been marketing and selling its sea shell range, including the seahorse shape, in Australia for almost 30 years in Australia through supermarkets and specialty confectionary outlets catering to the sophisticated chocolate consumer.

Prior to obtaining their registration in Australian Guylian had obtained a Benelux registration of it’s chocolate seahorse shape as a trade mark pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks 1989, known as the Madrid Protocol.

The Protocol streamlines the process for the registration of trade marks in multiple countries through the filing of one single international application with the International Bureau of the World Intellectual Property Organisation. Applicants make an Application through their own state office which is then transmitted to the International Bureau. The ‘International Registration Designating Australia’ was duly transmitted to the Australian Trade Marks Office for  examination. Guylian’s international application sought to extend their trade mark registration over the seahorse shape to a three dimensional shape mark in Australia in respect of class 30 comprising chocolates and confectionary.

The Registrar rejected the application on the grounds that the seahorse shape was not inherently capable of distinguishing the goods under S41(3) and under S41(5) of the Act. On the latter point, the Registrar didn’t find that the Guylian had used the sign as a trade mark in the sense required by the Act and case law.

Evidence was put before the delegate at the hearing of rival traders having already sold chocolates in the shapes of other marine life long before the priority date of Guylian’s registration. There was evidence demonstrating sales of starfish, crabs, sharks, lobsters, fish, octopus and seahorse shapes. This evidence was contested by Guylian.

Guylian appealed the decision of the Registrar under S31 to the Federal Court of Australia.

The Appeal to the Federal Court

In the appeal to the Federal Court Sundberg J had to assess whether the trade mark satisfied the requirements of S41(3) or S41(5) of the Act.

Prior to the commencement of the Trade Marks Act 1995  (Cth) “shape” trade marks were not expressly recognised by statute as being capable of registration.  However it was still possible to register a trade mark under the predecessor Act, the  Trade Marks Act 1955 (Cth).  In 1995 the ability to register a shape mark was expressly recognised and included in a category amongst other non-conventional trade marks (amongst other ’signs’ as defined in S6 of the Act, including colour, scent, and sound)

There have been a number of contentious decisions in Australia concerning the registrability of shape trade marks including Koninklijke Phillips Electronics N.V v Remington Products Australia Pty Ltd, in which it was held that the trade mark can’t be the article itself without evidence of substantial use, unless the mark was inherently distinctive under S41(3).

Trade marks have both functional and formative aspects, considerations acknowledged in litigation over the registrability of shape trade marks in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks . In Kenman Kandy, the Federal Court of Australia allowed the registration of a piece of confectionary as a trade mark, being a highly imaginative and inventive stylised  three dimensional six legged insect for candy.

Sundberg J addressed the issue of whether there is a presumption of registrability of trade marks under the Trade Marks Act 1995 (Cth). The Judge acknowledged that under S33 of the Act there is a presumption of registrability of trade marks which applies when considering the registration of a trade mark. However once it is determined that a trade mark doesn’t meet the requirements set out in S41(3), the presumption of registrability no longer applies. The focus of the enquiry then shifts to whether the trade mark has acquired trade mark status by virtue of S41(5) or S41(6), the onus rests with the Trade Mark Applicant to demonstrate the criteria for registrability of the trade mark have been satisfied on the balance of probabilities.

Registrability under S43(1)

Guylian submitted that it’s seahorse shape was inherently distinctive, in a similar way to the Kenman Candy bug.

It contended that although it’s seahorse was designed with a real seahorse in mind, it’s highly imaginative and unique rendition of the seahorse was only reminiscent of a seahorse found in nature. The contours of it’s design and it’s overall configuration resulted in a fanciful stylised version of a seahorse radically different from a real seahorse.

Just like the bug shaped confectionary in Kenman Candy, Guylian contended their seahorse wasn’t a representation of a real seahorse and couldn’t be mistaken for one.  Normal seahorses are elongated, not chunky in appearance, and their tails extend out downwards and forwards, rather than being curled up behind them. The argument was that this was a depiction or modification of a real seahorse, and it’s registration shouldn’t stop other chocolate manufacturers being able to legitimately adopt shapes recognisable as or reminiscent of seahorses.

Whilst Sundberg J acknowledged that Guylian’s chocolate seahorse shape was to some extent inherently distinctive, he held it was not sufficiently so to the degree that is required by section 41(3) Trade Marks Act 1995 (Cth). In  response to Guylian’s argument that its seahorse shape was imaginary or concocted, the Court noted Guylian’s rendition did have distinctive features with a level of  “stylisation or abstraction”.

However these relatively minor differences, did not have any significant impact on the ordinary association or signification that the shape establishes in the mind of the observer. The Court stated that the shape before it was different than the shape before the court in the Kenman Candy case, in that the seahorse conveyed a particular meaning, and was not entirely imaginary.

Guylian contested the evidence that there were other seahorses which were being sold as at the priority date of their earlier registration. It argued no other traders were in fact using such a shape prior to the relevant date.

Guylian submitted that what evidence was adduced of traders using the seahorse shape in 2008 should be discounted. The reason is that they argued that the use wasn’t motivated by good faith traders. The traders had copied their design, and were driven by improper motives, in trying to assert a connection between their goods and those of Guylian.

Sundberg J accepted that other manufacturers were  presently selling chocolates in the shape of a seahorse either the same or very similar to Guylian’s seahorse chocolate, and at the very least the evidence of traders selling similar shapes since 1990 was evidence that other traders may have wanted to use a similar shape as part of a novelty marine shell range.

The Court considered extensive evidence adduced by Guylian, including corporate marketing documents, brochures, annual sales figures and survey evidence containing market research data relating to the perception and understanding of ordinary consumers. This was designed to establish the level of recognition in Australia of the seahorse shape.

The Court concluded that the survey evidence presented did not demonstrate that the chocolate seahorse shape was capable of distinguishing the relevant goods from those of other traders, and should could not be registered as sufficient to demonstrate use as a trade mark. The evidence didn’t satisfy the court that the chocolate seahorse shape had acquired trade mark status such that it constituted a badge of origin.

The Court also agreed with the delegate’s finding that the use of the shape on the chocolate’s packaging, including the prominence of a stylised G on the packaging and other marketing materials had the effect of diluting or detracting from the trade mark significance which might have otherwise attached to the shape itself. The Judge said “any distinctiveness the shape has acquired is attributable to its use alongside the traditional Guylian trade marks, rather than as a trade mark itself“.

The survey evidence before the Court was extensive, and demonstrated a high level of association in the minds of the consumers surveyed between the chocolate seahorse shaped shells and Guylian.  Forty percent of consumers sampled identified the seahorse presented to them as sea horse shaped chocolates made by Guylian without prompting from the persons conducting the survey. Other brands accounted for only 13% of the sample, with the highest being Lindt which reached 1.7%.

However, the Judge was not persuaded that the high level of association was sufficient to render the trade mark distinctive, based on previous case law. The association must be shown to have arisen from the use of the seahorse as a trade mark, rather than  just use. The level of association between the image and Guylian must lead to a conclusion that a particular shape mark has in fact become capable of distinguishing Guylian’s goods from those of others.

This case highlights the practical difficulties and limitations in successfully registering shape trade marks for food products, demonstrating the high threshold of distinctiveness required, whether in terms of the inherent adaptation to distinguish or by way of trade mark usage.  As with all trade mark cases it highlights the role that survey evidence, if flawed, can play in being able to demonstrate use of a trade mark to demonstrate origin under S41(5).

By way of contrast in Japan in Chocolaterie Guylian NV v Commissioner of Japan Patent Office 2008, the Intellectual Property High Court of Japan found that the three dimensional  shape was inherently distinctive.

There have been a host of other similar applications for trade marks over chocolate products in other countries, such as the registration of the triangular peaks of  Toblerone chocolate, the 3D shape of Cadbury’s Freddo frogs and Arnott’s teddy bear biscuits.

Mars’ registration of it’s three dimensional European community trade mark was overturned and deemed invalid, having earlier obtained a registration over the bar for it’s rounded edges and three decorative arrows or chevrons appearing on it’s top. It was successfully argued before the European Court that the trade mark was devoid of distinctive character, it being pointed out by the company opposing the registration that bars are typically bar-shaped and have rounded edges.

The recent Bounty case in 2009 is the second chocolate bar ruling of the European court, following upon the Lindt chocolate bunny ruling which has been remitted back to the Austrian court for a final decision.

Other shape marks which have been refused registration include Nestle’s application for its symmetrical trapezoid shaped bar, (“four chocolate bars attached to one another with a thin base”).  A delegate of the Registrar of Trade Marks found that the bar didn’t qualify as a trade mark in the sense that it designated origin, but served a functional purpose.

Aldi successfully opposed the registration arguing that there were other chocolate products on the market that ‘have a break’ or could be divided up into small sections or bars, which was a matter of consumer desirablity and convenience. One of these was it’s Dairy Fine Double Time Wafer Bar. This convenience meant  consumers wouldn’t be left with one large ungainly block of crumbly water material, an argument which found favour with the decision maker.

Nestle had wanted the exclusive rights to use the four bar shape for chocolate. It was argued consumers were aware of the advantageous shape of the applicant’s products, which readily snapped into convenient finger-like portions, but that this perception was merely a co-incidental discovery made by an earlier generation of consumers long after the shape had been adopted in Australia in 1948. The shape was, it was argued, at the time of its adoption in England in 1935, and subsequently in Australia, a coined shape.

As reported by IP Kat the European Court of Justice has handed down it’s decision in Copad SA v Christian Dior Couture SA & Ors, Vincent Gladel, as liquidator of Société industrielle lingerie (SIL) and Société industrielle lingerie (SIL), the subject of an appeal from a French Court regarding Dior’s allegation of trademark infringement.

The case involved a trade mark licence agreement that Dior had entered into with SIL to make and sell “luxury corsetry goods” bearing the CHRISTIAN DIOR trademark.

 The terms of the license agreement expressly prohibited  SIL, as the Licensee,  from selling the goods in discount and other outlets.  

The French Court considered the effect of the terms of the Licensing Agreement on the exhaustion of the rights conferred upon the proprietor of a trademark.

The European Directive states that a trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the European economic area under that trade mark by the proprietor with their consent.

 However the Directive also provides that the exhaustion of rights doctrine doesn’t apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, in particular where their condition would be changed or impaired after having been put out on the market.

DIOR relied upon  Paragraph 5 of Clause 8.2 of the licensing agreement between the two parties expressly excluded the resale of the goods to a discount store:

 ‘in order to maintain the repute and prestige of the trade mark the licensee agrees not to sell to wholesalers, buyers’ collectives, discount stores, mail order companies, door-to-door sales companies or companies selling within private houses without prior written agreement from the licensor, and must make all necessary provision to ensure that that rule is complied with by its distributors or retailers’.

 SIL had sold the goods in contravention of the License to Copad International,  a company operating a discount store business, who in turned sold them to third parties.

 Dior had initiated the proceedings alleging trademark infringement proceedings against SIL and other parties, contending that the sale of the goods in contravention of the license had an effect on the quality of the goods manufactured.

In essence, they submitted that Dior were prestigious luxury goods typically not sold through discount stores, and the manner of distribution of the goods had the practical effect of calling into question their nature as luxury goods.  

The French Court had held that the trade mark owner has exclusive rights only in relation to goods put on the market without their consent. In this case, entering into the License Agreement meant that the trademark owner had given the necessary consent, and therefore the defendant’s actions did not constitute trademark infringement.

The Court held that the appropriate remedy was breach of contract, not reliance upon trade mark rights.

In the French Court’s opinion, the trade mark rights are granted in order to guarantee the possibility of control over the quality of goods, and didn’t extend to the actual exercise of that control.

 Any control they have over the goods must be exercised by contractual means not by virtue of trade mark law and they could not use contractual law to prevent the resale of the goods by third parties.

 However the European Court of Justice has ruled in favour of Dior on appeal, holding that Dior could oppose the resale of the products on the basis of trademark law.

Although in this case there was no change in the physical condition, or re-packaging of the goods, the Court found that the manner of distribution caused damage to the reputation of the mark, meaning the Defendants had no valid defence under the exhaustion of rights doctrine.

 The ECJ ruled that  “the quality of luxury goods is not only the result of their material characteristics but also of the allure and prestigious image which bestows on them an aura of luxury.”

 It is not entirely clear  what kind of evidence or in what other situations a Court would find that such a scenario would result in similar damage, and how the words “allure”, “prestigious image” and “luxury” will be evaluated in future cases.

Large parts of your genome, the genetic code that is the distinct code that defines your humanity,  have been patented and commodified. Exclusive property rights over that information have been awarded to private companies, locking up important research and depriving patients of life saving medical treatment.

 The Patents Act 1990 Cth  provides patents for inventions,  not discoveries.  A Patent can be obtained for a device, substance, method or process or combination of them, in any field of technology.

Patents are the oldest and most powerful form of intellectual property, bestowing upon the inventor the exclusive right to commercially exploit an invention for a limited period of time. The concept of what can be patented under the legislation is derived from the Statute of Monopolies 1623.  An invention is defined in the Schedule to the Act as “any manner of new manufacture the subject of letters patent or grant of privilege within S6 of the Statute of Monopolies”. 

The phrase “manner of new manufacture” includes both products and processes which are capable of industrial application. (see the NRDC case). “Manner of manufacture” is an evolving and dynamic concept, having been interpreted in subsequent cases. (See CCOM Pty Ltd v Jiejing Pty Ltd). To be eligible as patentable subject matter an invention must be one that offers some advantage which is material in the sense that the process belongs to a useful art as distinct from a fine art, that its value to the country is in the field of economic endeavour.

In April 2009 the Intellectual Property Research Institute of Australia was engaged in a discussion before a Senate Inquiry on the topic as to whether or not Genes should be patented.

Many organisations and eminent Scientists have made submissions including the Cancer Council of Australia.

Their view is set out as follows:

“Gene sequences (and genetic mutations linked to specific diseases) are not an invention, but rather the discovery and isolation of naturally occurring substances. As a fundamental part of human biology, gene sequences are increasingly pivotal to an extraordinarily important, burgeoning field of health science – and one that must not be restricted by measures ostensibly designed to reward invention which may lead to the establishment of commercial monopolies….Rather than rewarding innovation, gene patenting is contrary to patent law as developed by the courts and, if allowed, can actively discourage scientific research and discovery….Under current arrangements in Australia, there is no adequate legal protection to ensure genetic testing for cancer risk remains freely accessible and at reasonable cost to the health system and consumers“

It is seen as fundamentally flawed to grant monopolies to materials that are identical to those found in the human body. As genes were never specifically created there are no firm rules on the patenting of gene sequences that are ‘discovered’. 

Yet companies have managed to monopolise both the test for isolating gene sequences in addition to the raw genes themselves.  You might ask the question how an  isolated and purified gene differs from the same gene in the human body?

Proponents of gene patents argue that their right to inventions arise legitimately through the discovery and extraction process.  However, the concept of a single gene is an artifact,  an abstract concept,  so the argument goes.  Genes do not exist as discrete entities in the human body or in nature, but a part of our entire complement of genomic DNA.

What the particular inventor has done is identified a particular group of letters that have a particular function that is useful. They say they have been able to identify and extract that and define it as having a function. In isolating a gene sequence, it becomes a discrete entity,  maintained in a vector, where it can be replicated easily and manipulated easily. Whilst analogous to what we have in our human body, it is something quite different when it is in an isolated form, and it is the isolation process which is the useful information they would argue. The gene itself is merely a research tool.

As IP Watchdog  point out  this is as “inventive” as marking the boudaries of natural features, like mountains, on a map. It gives the mapmaker no right to the mountain, nor to preclude others from depicting that mountain. Whilst that concept relates to old copyright cases, the same reasoning is applicable. Like any natural phenomenon there should be firm rules in place to distinguish between rewards for discoveries and patents for inventions. We have seen how the major genetic database vendors human gene sequences have lobbied for misappropriation principles to be incorporated into legislative database proposals to try to  package these sequences into databases, granting them potentially protection in perpetuity. Those which to use them for research purposes face having to pay huge licence fees for access to them.

As with any natural phenomenon there should be firm rules in place to distinguish between rewards for discoveries and patents for inventions.

When the human genome was mapped in 2000 both Clinton and Blair stated the raw data should be free, yet patents are placing control on the raw data, data that should be free to realise the promise of this research in advancing the knowledge of human disease. It is a fiction that once you remove the gene from it’s natural environment, the body,  you have an invention.