The document discusses a US Department of Justice announcement that Hew Raymond Griffiths, a former Australian resident extradited to the US, has been convicted of conspiracy to commit criminal copyright infringement. He was sentenced to 51 months imprisonment and potentially faced up to 10 years in prison and a $500,000 fine. Griffiths was the leader of a piracy group called DrinkOrDie, which was well known in the illegal file sharing scene and was dismantled by US authorities in the late 1990s and 2000s.

1. HIGHLIGHTS FROM…
Malik's law
W H E R E C O N T E N T , T E C H N O L O G Y A N D T H E L E G A L S Y S T E M M E E T . . . A N D
S O M E T I M E S C L A S H . A L O O K A T C O N T E N T S U C H A S F I L M , G A M E S , M U S I C ,
S O F T W A R E A N D T E L E V I S I O N , A N D T H E I M P A C T O F I N T E L L E C T U A L P R O P E R T Y
L A W S O N C O N T E N T , I N C L U D I N G T H E L A W O F C O P Y R I G H T , P A T E N T S , A N D
T R A D E M A R K S .
2 8 . 6 . 0 7
The headline said it all, or did it?
"Cult shows air sooner to curb downloads"
All those studies ... youknow the ones ...
Australiansthe world’s #2 users ofBitTorrent (BT) …
The usage ofBT to download TV shows …
Broadcast delays exacerbating the problem ofIP rights infringement by encouraging frustrated
Australian TV viewers to download theirfave shows, so they can watch them WHEN THEY WANT.
… THOSE studies
Well it looks as though the Seven network has recognised this issue and are taking steps to reducethe
extent to which TV viewers turn to BT and IP rights infringement.
The SMH writes:
CHANNEL Seven will broadcast two ofits cult import dramas, Heroes and Prison Break on the
same day as their US screenings in a ploy to lure drifting audiences away from DVDs and the
internet. The new series, slated for September/October, will follow Ten's pioneering "day and date"
screenings earlier this year ofthe USdrama Jericho, which was axed dueto poor audience figures.
Seven will also bring forward AgeofLove, therealitydating show with Mark Philippoussis. The
network's programming director,Tim Worner, said Heroes and Prison Break were among the most
popular programs for downloaders and, ifpossible, would screen on the sameday as the overseas
telecasts. "There has been a thunderousdemand online for this,"he said.
See http://www.smh.com.au/news/tv--radio/cult-shows-air-sooner-to-curb-
downloads/2007/06/26/1182623906754.html

2. Excellent news … finally a TV network in Australia has recognisedthe impacts ofthe internet on TV
viewing habits and they are taking steps to reduce this impact.The Seven Network has recognised the
impact ofthe digital revolution!
However, while broadcast delays AREan important factorleading Aussies to BT, an examination of
comments on various internet fora demonstrate that OTHER content-related factors are frustrating
TV viewers.
One of the frustrations ofAustralian TV viewers is substantial segments being edited outofTV
programs prior to theirbroadcast. It impacts on the flow ofTV shows, key plot developments are lost
and viewers rightly feel cheated.
So, why are these bits and pieces cutout ofshows?
Is it for censorship reasons (you can’t say ****on Australian TV)… well, depending on the timeslot,
sometimes youcan …
Is it for creative reasons (“oh … that’s a baseball reference - it won’t work in Australia") … hardly
No it comes back to scheduling.
Now … the Seven Network (the network that has recognised the digital revolution) would never chop a
program down to fit into their schedule, would they?
Fans ofBoston Legal which aired in Sydney on Monday 25 June would have noticed it started very late
(umm … prior scheduling commitments) yet it finished at 11.30pm, the scheduled time. The show
including advertisements ran for 43 minutes. After 9 minutes ofadvertising, the show ran for only 34
minutes. Surely thatwas not the full length ofthe program?
Fans ofAir Crash Investigation would haveenjoyed the tension on Wednesday 27 June. A plane en
route from Asia to the USWest Coast suffered a huge altitude drop in a matter of minutes leaving
passengers and crew in peril. The pilot managed to regain control. Cue the ominous voiceover in a
British accent (voiceovers are always more ominous with British accents) “… therewas still a great
challenge ahead … can the pilot get the plane safely on the ground” (paraphrase).
Cue to a commercial break. 3 minutes and 45 seconds later Seven returns from the break … oh look,

3. the plane is already on the ground…
Glad we didn’t miss anything there…
So ... let’s celebrate - the Seven Network will be showing someoftheir programming on the same date
as the US. Despite the article’s comment regarding Jericho, this is not a “pioneering” act –as fans of
US shows Today, GoodMorning America, Letterman and ET will attest to. However, it is a positive
step … now if only Seven wouldguaranteethat it would shows the programs in their entirety and not
“edit” them in order to possibly include more advertising.
I’m not suggesting that Seven should put the interests oftheir viewers aheadoftheir adv ertisers (I’m
not that naive) … simply they should show a little more respect for theirviewers.
Now that would be a “pioneering” act.
0 C O M M E N T S
L A B EL S: B R OA DBAN D , T E L EVI SIO N
2 6 . 6 . 0 7
Indigenous report: pluses and missed opportunities - 2
For another view ... this time with a focus on the yet to be resale royalty scheme:
Peter Garrett's statement:
"Much to welcome, but something’s missing"
"The governmenthas again left Indigenous artists out in the cold by refusing to recommend a resale
royalty scheme in the Senate reportinto Australia’s Indigenous visual arts and craft sector, which
otherwise contains a number ofpositive measures. This is a real pity given they acknowledged the
critical economic, social and cultural contribution Indigenous art makes to many Indigenous
communities."
The report is described as long overdue "and provides further impetus for concerted action".
"An independent report has found artists haveforgone about $25 million in lost collections as a result
of the government’s failureto implement the Myer report recommendation to introducea resale

4. royalty scheme."
Good stuff on the resale royalty scheme.
But again, little on enforcement measures.
Pity ... the next time indigenous IP measures are discussed the problem will be so much worse.
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L A B EL S: I N DIG ENO U S R IG H TS
Indigenous report: pluses and missed opportunities - 1
The Senate has released its reporton Australia's indigenous visual arts and craft sector, "Indigenous
Art - Securing the Future".
This report should not be confused with otherFederal Government initiatives ofthe past week or so
dealing with health and welfare issues.
So what did the Committee recommend?And what opportunities were missed?
Key recommendations were as follows:
Recommendation 4
"establish a new infrastructure fund to assist Indigenous visual arts and craft"
... OK more $ for the arts, always a good thing. But let's make sure it is distributed eq uitably.
Recommendation 6
"further expand funding"
... ditto
Recommendation 8
"art centre in Alice Springs that will caterfor artists visiting the town from surrounding settlements"
... ditto

5. Recommendation 15
"the ACCC be funded to increaseits scrutiny ofthe Indigenous art industry, including conducting
educational programs for consumers as well as investigation activities, with a goal ofincreasing
successful prosecutions ofillegal practices in the industry"
... good - in my submission I suggested more enforcementactivity.
Query though whether this enforcement activity is betteroffundertaken under the Trade Practices Act
or under existing IP laws. Also query the relationship between enforcement activities by the ACCCand
enforcement activities by the AFP, State Police, the ACS, and the IP rights owners themselves. Will
these groups work togetherin order to achieve the same aims?
Query the links between the ACCCand the Commonwealth DPP who (I assume) will be tasked with
the role oflaunching prosecutions. Will the CDPP also receiveextra funding for prosecutions in this
area?
Will actions unders.52 ofthe TPA be mutually exclusive with actions launchedunder the Copyright
and Trade Marks Act?
Which types ofproceedings will have a greater likelihood ofsuccess?
Are we looking at a greater quantity ofcriminal or civil enforcement activity in this area?
If civil –will there be more actions in the Federal Court or the Federal Magistrates Court?Ifthere is
an emphasis on civil proceedings will additional tools/mechanisms be availableto IP rights owners?
Recommendation 17
“Indigenous ArtCommercial Code ofConduct be completed as soon as possible”
… will the Code cover IP rights protection and enforcement mechanisms?
Recommendation 21
“the opportunity to selfregulate”
… what does this mean?Does it impact on the self-enforcement ofIP rights by rights owners?

6. Recommendation 29
“support increased efforts to showcaseIndigenous visual arts and craft internationally”
… aah – a parenthood statement!
And in the less important recommendation category:
Recommendation 26:
“The majority ofthe committeerecommends that a resale royalty schemenot be
introduced at this time, because ofthe lack ofbenefit to most artists, and in
particularIndigenous artists, and the lack ofnew evidence to the contrary.”
This one is disappointing, but otherobservers have spokemore articulately about this issue than me.
Some interesting comments …
Clause 1.10:“There is no doubt that there have been unethical, and at times illegal, practices engaged
in within the field ofIndigenous arts and craft. There are probably still instances ofthese problems,
and there may be peopleseeking to take advantageofissues within the sector by ripping offartists or
art centres.”
While acknowledging the problem, I’m not certain the Committee has responded in as an aggressive
manner as desired. Rather than focusing on additional enforcement activities by the ACCC, why not
additional tools for IP rights owners which will assist them in creating an environment which
encourages them to undertake greater enforcement activities?
1.11:“the committee urges everyonein the sector to recogniseeach other’s sense ofcommitment, and
reap the benefits ofco-operation,rather than sow seeds ofrancour and division”
Wasn’t there a cliché about trying to please everyone?
7 .54:“Lack ofartist education is a hindrance when trying to litigate against’carpet
baggers’, and the evidence indicated thatthereis a lack of knowledge amongstartists
on their legal rights. Arts Law Centre ofAustralia claimed to have an extensive
program to educate artists and arts workers about legal rights and obligations ofthe

7. arts sector”
… but is it enough?Ifeducation programs are sufficient why is there not moreenforcement activity?
Y ou can’t enforce your legal rights ifyou don’t know yourlegal rights.
7 .63:“There are currently a number ofinitiatives designed to educateconsumers about Indigenous
art, methods by which to ensure that the arts’ authenticity, and to undermine illegal and unethical
activity. Consumer education can be divided into domestic and international, however in both cases it
aims to ensure that the consumer is aware ofthe arts’ authenticity, and that the customer can be
confident that payments providedare offair value and that the money will be provided to the
recognised,legitimate artist”
… Will this education impact on tourists wishing to purchase indigenous items in the Cross or on
Cavill Av?I doubt it … will it stop stores stocking their windows with Made in Indonesia imitations …
doubt that too …
8.28:“few transgressions are reported either to policeor to consumer affairs. This may be for a
number ofreasons which include:
• artists, being unaware oftheir rights, are likely to be unaware ofthe illegal
behaviour;
• artists may also feel a sense ofshame, and reporting their transgression may
bring social difficulties for them within the community;
• as artists are sometimes poorly educated, there may be no paperwo rk such as
receipts. Hence, there may be no incontrovertibleproofoffraud;
• artists and their communities havelimited resources with which to engagethe
legal profession;
• organisations such as the police may themselves not be fully aware oftheir
existing responsibilities, or the extent ofthe problems;and
• purchasers ofworks ofdoubtful origin or price may be reluctant to undermine
the value oftheir painting by reporting theirconcerns.”
… This is certainly an important part ofthe problem, but many ofthese issues can be dealtwith. For
example:
• “artists, being unawareoftheir rights, arelikely to be unawareofthe illegal behaviour” –there are
national reporting mechanisms which could be introduced. As I discussed in my submission, they

8. could be implemented through the internet.
• “there may be no paperwork such as receipts. Hence, there may be no incontrovertible proofof
fraud” – how about reversing the onus ofproof?I’m certain that’s been doneelsewhere.
9.39:“There are two pieces oflegislation which may help to protectIndigenous
intellectual property rights and theseare the Copyright Act and the Designs Act 2003.”
… Trade Marks Act, Trade Marks Act, Trade Marks Act …
9.40:“Copyrightlaw in relation to Indigenous art has been somewhat effective”
… the law maybe effective, but its enforcement has been ineffectual. The failure ofthe report to
recognisethis is one ofthe report’s major failings. Thereis little in this report to correct this failing.
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L A B EL S: I N DIG ENO U S R IG H TS
2 3 . 6 . 0 7
Piracy versus
So how serious is the problem ofIP rights infringement?
Depends who you ask.
NBC/Universal general counsel Rick Cotton suggests that society wastes entirely too much money
policing crimes like burglary,fraud, and bank-robbing when it should be doing something about
piracy instead.
"Our law enforcement resources areseriously misaligned,"Cotton said. "If you add up all the various
kinds ofproperty crimes in this country, everything from theft, to fraud, to burglary,bank-robbing, all
of it, it costs the country $16 billion a year. But intellectual property crimeruns to hundreds ofbillions
[of dollars] a year."
Arts Technica’s response to these claims is interesting:
“There are two obvious rejoinders to such a ridiculous statement. The first is that "hundreds ofbillions
of dollars a year"is a myth. The MPAA's own cherry-pickedstudy from Smith Barney in 2005 put
their annual loss at less than $6 billion, and while the music and softwareindustries also like to

9. publish trumped-up claims, the figures are nowhere nearhundreds ofbillions ofdollars each year.
The second objection,ofcourse, is that the traditional crimes Cotton describes often involve the
destruction ofpeople's lives along with property. Burglaries can result in homicide, as can fraud (ask
the preacher's wife), while bank robbery is, without a doubt, a dangerous game. Those crimes also
typically involve real property. For betteror for worse, real property should not be confused with
intellectual property, which is not subject to the same rules ofscarcity.Stopping a bank heist is,
without a doubt, a far more important matter than stopping the bootlegging ofGigli or Spider-Man 3.
Chances are you would preferthat the cops spend their effortsprotecting people from rampant home
burglaries than chasing down kids with pirated music on their iPods.”
Ah … the bigger issues:
The criminal vs civil treatment ofIP rights infringement
Actual crime v reported crime
The nature ofIP crime stats
The use of statistics in lobbying activities
The unsupported use ofstats
IP rights owners vs users groups
The impact ofIP rights infringement on the community
So many questions … so much time
See: http://arstechnica.com/news.ars/post/20070615-copyright-coalition-piracy-more-serious-than-
burglary-fraud-bank-robbery.html
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L A B EL S: C O P Y R IG H T , F I L M
Griffiths convicted: 4 years plus gaol
The conviction
According to the USDOJ, Hew Raymond Griffiths has been convicted on one countofconspiracy to
commit criminal copyrightinfringement. He has been sentencedto 51 months imprisonment. He
faced a sentence ofup to 10 years in prison and a US$500,000 fine fo r the charges.
Griffiths is a former Australian resident.He lived at Bateau Bay on the NSW Central Coast and was
extraditedto the USin February 2007. He becamethe first Australian to be extradited overseas

10. because he faced piracy charges. While he liv ed in Australia he was the leader ofa group known as
DrinkOrDie.
DrinkOrDie were very well known in the warez scene according to the USDOJ. DrinkOrDie was
founded in Russia in 1993. It expanded internationally throughoutthe 1990s. The group was
dismantled by the U.S. Immigration and Customs Enforcement following a series ofraids in
December 2001. In all, 70 raids wereconducted in the US and 5 other countries:the UK, Finland,
Norway, Sweden and Australia.
In April 2007, Griffiths pleaded guilty to two copyright-related charges in US District Court for the
Eastern District ofVirginia in Alexandria. According to the USDOJ, the operation targeting
DrinkOrDie has resulted in more than 30 felony convictions in the U.S. and 11 convictions elsewhere.
In 2005, two British members ofDrink or Die were sentenced to jail, after a court trial in England, for
their roles in distributing warez.
Reportedly, in a 1999 interview,Griffiths said he ran DrinkOrDie's day -to-day operations and
controlled access to morethan 20 top warez servers worldwide. He said then he would neverbe
caught.
The responses
Responses to the verdictincluded the following:
• Assistant Attorney General Alice Fisher:Griffiths "became one ofthe most notorious leaders ofthe
underground Internet piracy community by orchestrating the theft ofhundreds ofthousands of
dollars in copyrighted material."
• US Attorney Chuck Rosenberg for the Eastern District ofVirginia said, "whether committed with a
gun or a keyboard - theft is theft. And, for those inclined to steal Intellectual Property here, or from
halfway around the world, they are on notice that we can and will reach them."
The crim es
Although the case was heard in the US and not Australia,Griffiths had his day in an Australian court.
In Griffiths v United States of America [2005] FCAFC34 (10 March 2005) Griffiths challenged his
extradition to the US.
While this case was about the operation ofextradition laws, substantial detail was provided regarding

11. the activities ofGriffith. According to Whitlam, Finn and Conti JJ:
“Hew Griffiths is claimed to have conspired to engage in, and to havein fact engaged in, Internet
software piracy in the United States in violation offederal criminal copyright laws ofthat country. He
has been indicted by a Grand Jury sitting in the Eastern District ofVirginia on two related counts and
his extradition has been sought …” (par 2).
“The foundational document… is the indictment returned by the Grand Jury.It contains two counts.
Count One embodies the charge ofconspiracy to commit an offencerelating to copyrightinfringement
... 1. Beginning no later than January 1999, and continuing until on or about December 11, 2001, in the
Eastern District ofVirginia and elsewhere, the defendant, HEW RAY MOND GRI FFITHS, also known
by his screen nickname"bandido", conspired and agreed to wilfully infringe copyrights with others
known and unknown to the grand jury, including but not limited to John Sankus (a.k.a. "eriFlleh"),
Christopher Tresco (a.k.a. "BigRar"), David Grimes (a.k.a. "Chevelle"), Richard Berry (a.k.a. "Flood"),
Roy Kartadinata (a.k.a."Tenkuken"), and an individual known by the screen nickname "EvilTea"; that
is, during a 180-day period, defendant did conspire and agree to reproduce and distribute at least ten
infringing copies ofone or more copyrighted works, with a total retail valueofmore than $2,500, for
purposes ofprivate financial gain, in violation of17 U.S.C. SS 506(a)(1), and 18 U.S.C. SS 2319(b)(1).
2. It was part ofthe conspiracy that the defendant and others, including the fiveco-conspirators
identified by name in Paragraph 1 above, were members ofan Internet software piracy group known
as Drink Or Die (DOD). DOD was a highly structured criminal organization devoted to the
unauthorized reproduction and distribution ofcopyrighted software over the Internet. The group
sought to achievea reputation as the fastest providerofthe highest quality application and utility
software (e.g., Symantec security software,Microsoft and AutoDesk applications) to the underground
Internet softwarepiracy community known as the warez scene”(par 15).
“…the theft and distribution ofthe copyright materials … consist ofa series ofacts by DOD members
commencing with the work of‘suppliers’ who are said to upload new softwareon to DOD’s ‘drop site’
prior to the manufacturer’s public release date. The drop site is described as a secure computer site
hosted by a DOD member on the computer network ofthe Massachusetts Institute ofTechnology in
Boston, access to which is said to have been strictly controlled by Mr Griffiths and other high level
DOD members through security measures including password protection. Other DOD members
known as ‘crackers’ would remove the softwarefrom the drop site and use theirskills to ‘crack’ the
software’s embedded copyrightprotection. The softwarewould then be quality tested by ‘testers’ then
broken apart by ‘packers’ beforebeing prepared by ‘couriers’ for release and distribution to DOD
affiliated computer storage sites throughout the world”(par 16).

12. “…it was part ofthe conspiracythat when newly ‘cracked’ or pirated software was released, a DOD
leader, usually Mr Griffiths, would send an email to other DOD staff members announcing the release.
Additionally,monthly summary reports weremaintained by DOD setting out details ofthe releases of
the pirated materials. The emails and reports from November 2000 to 11 December2001 are said to
indicate that DOD cracked and released more than 275 software programs worth mo re than
$US1,000,000”(par 17).
“DOD was a highly structured organisation consisting ofapproximately 60 persons, the leaders of
which had ultimate authority overall aspects ofDOD’s work. Mr Griffiths is said to have been a long
time DOD member and to have becomea co-leaderofDOD from early 2001” (par 18).
“DOD staff members would communicate aboutthe group’s illegal activities with other DOD members
through secure Internet chat sites” (par 19).
“…to reward its members DOD maintained a number ofsites known as ‘leech sites’ from which DOD
members could download the many thousands ofpirated software, games,movies and music that
were available to DOD members. Access to thosesites is said to have been controlled by DOD’s
leadership including Mr Griffiths …” (par 20).
“DOD’s file transfer sites were protectedby security mechanisms to ensurethat only authorised users
could gain access. As leader, Mr Griffiths is said to have overseen the maintenance and operation of
the sites” (par 21).
Griffiths five alleged co-conspirators all pointed their finger at Griffiths and claimed he was their
leader (par 34).
0 C O M M E N T S
L A B EL S: C O P Y R IG H T , C O U R T C A SE S , S O F T WAR E
2 2 . 6 . 0 7
Not just sound+ vision
Western Australian based ship builder Austal has lost a Fed Court case brought by another ship
builder over oneofits hull designs.
Swedish shipping company Stena successfully claimedone ofAustal's 1998 hull designs infringed its

13. patent.
Reminding us the IP law is about morethan academic debates and esoteric theories (guilty as charged,
ma'am) Austal's ASX announcement said:
A judgement was handed down todayby the Federal Court ofAustralia in the caseofStena Rederi
Aktiebloag (Stena) v. Austal Ship Sales Pty. Ltd., Austal Ship Pty. Ltd. & Austal Limited, concerning
infringement ofan Australian patent held by Stena. The Judge found that one ofAustal's hull
designs from 1998 infringed the patent. Austal and its IP advisors are reviewing thejudgement with
a view to appealing the decision.
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L A B EL S: C O U R T C A SES , P A T ENT S
Confusing, yes ...
Ever perplexed by the worldofcopyright?
Y ou're not alone.
Back in 1967 what was to become 1968's Copyright Act was first debated. Therewere First and Second
Reading speeches by the then Attorney General Nigel Bowen. After a great deal ofconfusion and
controversy (not to mention lobbying by various interests groups) the Bill was put on hold for a year.
In 1968 an amended version ofthe Bill was re-introduced.First and Second Reading speeches
followed, and then therewere a series ofdebates in the House o fRepresentatives debates ... and
finally the '68 Bill in all of its glory was passed -the first significant amendment to Australia's
copyright laws since ... 1911!
Here are two of the memorablequotes to comeout ofthe First and Second Reading speeches:
From AGBowen:
Honourable members will observe that it is a large Bill and, in some respects, a complex one. To this
extent, it reflects thenature ofthe subject matter with which it deals.
See Attorney-General, Hon Mr Bowen MP, Speech, Copyright Bill 1967. House ofRepresentatives,
Hansard. May 1967, p. 2328

14. From AGBowen's parliamentary counterpart, Mr O'Connor, a quote from Marshall McLuhan taken
from the introduction to McLuhan's Understanding Media:
Today, after more than a century ofelectric technology, wehave extended our central nervous
system in a global embrace, abolishing both spaceand time as far as our planet is concerned.
See Hon Mr O'Connor MP, Second Reading Speech, Copyright Bill 1968. House ofRepresentatives,
Hansard. 4 June 1968, p. 1926
Why the McLuhan quote?It was based on an understanding ofthe global village, a recognition ofthe
relationship between copyright law and new technology ... a relationship which still exists (and
confuses!) today.
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L A B EL S: C O P Y R IG H T
Federal Magistrates Court jurisdiction grows, diversifies
(1) Introduction
In recent years there has been a perceived increasein the quantity ofintellectual property (IP) rights
infringements, which haveimpacted on IP rights owners. These infringements, which often involve
the use of new technology,have, resulted in substantial financial losses to companies in creative and
technology-based industries.
In response to this problem ofthe Federal Government has increased the quantity of“self-help”
measures available to IP rights owners, so that they can attemptto take steps to reduce the quantity of
IP rights infringements. These self-help measures have increased the ability ofIP rights owners to
commence and run civil proceedings against IP rights infringers, and have includedthe ability to
commence civil proceedings for copyright or Trade Marks infringement in the Federal Magistrates
Court (FMC).
(2) Availablechoices
Historically, IP rights owners concerned about IP rights infringement were ableto chose from several
availableenforcement strategies, which included:

15. (a) A pattern ofinactivity,
(b) To encouragethe Commonwealth Department ofProsecutions (CDPP), with the support ofthe
Australian Federal Police(AFP) or State Police, to commence criminal proceedings against IP rights
infringers,
(c) To commence privatecriminal prosecutions againstIP rights infringers, and/or
(d) To commencecivil proceedings in the Federal Court againstIP rights infringers.
(3) Costs and benefits ofenforcement strategies
There were a number ofadvantages and disadvantages associated with each ofthese enforcement
strategies,both from the viewpoint ofIP rights owners and the community in general.
Obviously a pattern ofinactivity was an unsuitable enforcement strategy for IP rights owners, as it
would result in infringing activity continuing in an unabated manner.
While criminal proceedings were viewed as providing an effective deterrentto prevent IP rights
infringement, they were largely out ofthe control ofIP rights owners.
The AFP had the discretion as whether or not to investigatealleged cases ofIP rights infringement.
The AFP receives referrals fromcopyright owners and other groups, “which are evaluated on the basis
of a case categorisation and prioritisation model” (CCPM). CCPM criteria include “the availability of
limited resources,the level and extent ofcriminality involved, and the prospects ofa successful
conviction” (Urbas 2000).
The CDPP had the discretion as whetheror not to commence criminal proceedings, based on their
Commonwealth Prosecution Policy guidelines. These guidelines require sufficient evidence to
establish a prima facie case, sufficient evidenceto ensurethereis a reasonableprospect ofa
conviction, and the prosecution must be in the “public interest” (CDPP 2007).
In the viewpoint ofmany IP rights owners the CDPP and AFP have not commenced a sufficient
quantity ofcriminal proceedings and investigations respectively, againstallegedIP rights infringers.
When the AFP did investigate instances ofIP rights infringement they did not necessarily result in
prosecutions by the CDPP for IP rights infringement. When the CDPP did commencecriminal
proceedings and were successful in these proceedings, from the viewpointofIP rights owners the
penalties that were imposed against infringers wereoften v iewed as insufficient.IP rights owners
would also often be unable to recover theirlosses from infringers, unless they attempted to rely on the

16. victim compensation provisions underthe criminal law.
While private criminal prosecutions were availableto IP rights owners, and their availability can be
traced back to the industrial revolution, they havenever been used by owners in IP rights
infringement cases.
(4) Costs and benefits ofcivil enforcementstrategies
The use and popularity ofcivil proceedings haveincreased for IP rights owners in recent years. When
combined with educational and information dissemination activities by IP rights owners,they provide
an effectivemeans for IP rights owners to:
(a) Establish legal principles and develop legal precedents demonstrating the consequences ofIP
rights infringement,
(b) Convey to the public that IP rights infringement is morally and legally “wrong”, and
(c) Provide a mechanism for IP rights owners to recover some orall oftheir losses as a result of IP
rights infringement.
However, civil proceedings for IP rights infringementwere generally required to be undertaken in the
Federal Court. As a result, these proceedings were time consuming and often very expensive. In an IP
context,some contested cases heard in the Federal Courthave cost millions ofdollars. For many
smaller and medium-sized IP rights owners the costofthese cases made them into an unrealistic
alternative. For theseIP rights owners, they were effectively denied the availability of civil proceedings
for IP rights infringement.When combined with the difficulty ofhaving Government authorities take
up criminal cases in the IP rights infringement area many IP rights owners felt they were being denied
justice.
Of course, someIP rights infringement cases have been heard in the Local Court, but these sometimes
deal with low level infringement, are often unreported and are therefore unusableas effective
precedents.
(5) Availability ofFederal Magistrates Service
Fortunately, for IP rights owners who have felt that they could not and cannot use the Federal Court,
there is an alternative available to them –the Federal Magistrates Service. According to the FMS
website:

17. The Federal Magistrates Act 1999(the FMAct) and the Federal Magistrates (Consequential
Amendments) Act 1999established the Federal Magistrates Service... The Servicebegan hearing
cases on 3 July 2000.The … Service is the first lower level court established by the Commonwealth
Parliament. It deals witha range ofless complex disputes that were previously handled by the
Federal Court … as part of the Commonwealth Government’s commitment to ensuring that all
Australians have a greater range ofoptions for resolving their legal problems as quicklyand
cheaply as possible.
The Service is a separate court under Chapter IIIofthe Constitution and federal magistrates are
appointed as judicial officers under Chapter III. This ensures that federal magistrates havefull legal
authority to make final binding judicial decisions, subject ofcourse to appeals … The Service is a
national court ... The Service has developed procedures that aim to be as streamlined and as user-
friendly as possible, reducing delays and costs to litigants.
The Federal Magistrates Court has jurisdiction to hear and determine civil copyright matters under
the Copyright Act 1968, as amended by the Copyright Amendment (Parallel Importation) Act 2003.In
particular, the court can deal with matters arising under Parts V,VAA, IXand section 248J ofthe
Copyright Act 1968.
The objective ofthe FMC“is to provide a simpler and moreaccessible alternative to litigation in the
superior courts and to relieve the workload ofthose courts”.
The FMC did not have any criminal jurisdiction regarding copyright cases. In this way the use ofthe
term “Magistrate” within the title ofthe court was and is misleading. Section 131Dofthe Copyright
Act confers jurisdiction on the Federal Magistrates'Court with respectto civil actions only.
(6) Availability ofFMC in Trade Mark and Designs cases
More recently, the Government announced that the Servicewould havejurisdiction in civil matters
under the Trade Marks Act (IP Australia 2007).
According to the Minister for Industry, Tourism and Resources,Ian Macfarlane, this announcement is
part ofthe Government’s responseto the Advisory Council on Intellectual Property report:Should the
jurisdiction ofthe Federal Magistrates Service be extended to include patent,trademark and design
matters?Mr Macfarlane said:

18. This change will benefit owners oftrade mark and design rights by giving them the option to pursue
any dispute through thequicker and less costlyFederal Magistrates Court … About 50,000 new
trade marks and approximately6,000 new designs are registered each year, and a high percentage
of these are owned by Australian SMEs. These businesses need to be ableto benefit from their
innovations, so it's important that they have accessto effective, timely and affordablemechanisms
to enforce their intellectual property (IP) rights (Macfarlane 2007).
(7 ) Non-availability ofFMC in patent cases
As patent disputes tend to be more complex, the Governmenthas at this stage not agreed to a
recommendation to extend the jurisdiction ofthe Federal Magistrates Court to patent matters.
(8) Transfer ofcases
The FMS’s jurisdiction is concurrent with the jurisdiction ofthe Federal Court. Thereis provision for
the transfer ofmatters between the FMSand the Federal Court.
This means that, ifa complexcaseis filed in the Federal Magistrates Service,thereis a mechanism
available for the matter to be transferred to the… Federal Court … Similarly, there is provision for
the transfer of less complex cases to theFederal Magistrates Service from the superior courts where
the matter is within the Service’s jurisdiction.
(9) Use of FMC by IP rights owners
Various IP rights owners havemade use ofthe FMC including the sound recording and adult film
industries. The following aresome ofthe leading cases in the area:
* Vivid Entertainment v Digital Sinema Aust.Pty Ltd &Ors [2007] FMCA 157 (19 March 2007)
* Meskenas v ACP Publishing Pty Ltd [2006] FMCA 1136 (14 August 2006)
* Paramount Design v Awaba Group&Ors [2003] FMCA 336 (8 August 2003)
* FrasersideHoldings &Anor v Venus Adult Shops &Ors [2005] FMCA 997 (21 July 2005)
* C & J Designer Homes Pty Ltd v Robey &Ors [2007] FMCA 7 9 (30 January 2007)
* Universal Music &Ors v Hendy Petroleum &Ors [2003] FMCA 373 (5 September2003)
* SBO Pictures Inc &Ors v KAOS Shop Pty Ltd & Ors [2006] FMCA 82 (27 January 2006)
* MG Distribution Pty Ltd &Ors v Khan & Anor [2006] FMCA 666 (12 May 2006)

19. * Phonographic Performance&Ors v Adelaide City Entertainment [2005] FMCA 923 (29 June 2005)
* MG Distribution Pty Ltd &Ors v Luthra & Anor [2004] FMCA 1027 (24 December 2004)
* Universal Music Aust Pty Ltd &Ors v N&J; Nominees Pty Ltd &Ors [2003] FMCA 575 (28
November 2003)
* Warner Music Australia Pty Ltd &Ors v Swiftel Communications Pty Ltd &Ors (No.2) [2005] FMCA
7 06 (20 May 2005)
Authorities:
CDPP 2007,Website content:Prosecution policy.
http://www.cdpp.gov.au/Prosecutions/Policy/Part2.aspx.
FMC 2007,Website content. http://www.fmc.gov.au/services/html/copyright.html
IP Australia 2007, Government response to ACIP recommendations regarding jurisdiction ofthe
Federal Magistrates Service.April 5. http://www.ipaustralia.gov.au/pdfs/news/CMR07 -
154%20IP%20federal%20magistrates%20court%20IP%20matters.pdf
Lamont, L. 2003, Sales of10 Pirate CDs Led to Costs of $54,000. SMH, September 20.
http://www.smh.com.au/articles/2003/09/19/1063625218281.html.
Macfarlane 2007, Federal Magistrates Court may hear Trade Mark and Design matters. Ministry for
Industry, Tourism and Resources media release 07/125. April 5.
Urbas, G 2000, Public enforcement ofintellectual property rights. Trends and issues in crime and
criminal justice. No. 177. Canberra:Australian Institute ofCriminology.
http://www.aic.gov.au/publications/tandi/tandi177.html.
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Federal Magistrates Court lecture
The CopyrightSociety of Australiais hosting a lecture on the Federal Magistrates Court(FMC) at
Blake Dawson Waldron on 12 July 2007, at 5:30pm.
See http://www.copyright.asn.au/events/f07n04.htm

20. The speakers are Federal Magistrates RolfDriver and Kenneth Raphael and John Hennessy, Barrister.
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1 5 . 6 . 0 7
Marow, Eirenarcha, the parish officer and the IP case
Here’s an interesting quote from Briggs et al, Crime and Punishment in England: An Introductory
History. UCL Press, 1996, at p. 57:
“As time went by the system (oflaw enforcement) became more and more effective. In a number of
ways … the quality of… magistrates was improving. One thing that helped to bring this about was the
publication ofsimple legal textbooks to guide the faltering footsteps ofthe less educated …”
Y ou might think this is about modern magistrates and the burgeoning use ofthe Local Court system
and Federal Magistrates Courtin IP cases.
… except the quote is about the beginnings ofthe modern system oflaw enforcement in England.
Here’s the quote in its entirety:
“As time went by the system became more and moreeffective. In a number ofways, for instance,the
quality ofthe bench ofmagistrates was improving. One thing that helped to bring this about was the
publication ofsimple legal textbooks to guide the faltering footsteps ofthe less educated JPs. V olumes
by Marow (1503) and Fitzherbert(1538) had already appeared beforethe middle years ofthe sixteenth
century, and thesewere followed by Lambarde’s celebrated manual “Eirenarcha” in 1581.Finally, in
1754 cameRichard Burn’s classic four volumestudy “The Justiceofthe peace and the parish officer”, a
book that went through edition after edition in the years that followed … With Burn at his elbow not
even the most inexperienced and ill-informed JP had cause to worry”.
As discussed in a previous post, the Local Courts have been criticised becauseoftheir relianceon IP
cases reported by IP rights owners. Thereis a suggestion that the lack ofinformation on court cases
from an objective sourcemay hinder the fair and effective administration ofjusticein IP cases heard
before magistrates.

21. Perhaps the answer is for additional resources to be devotedto the education ofLocal Courtpersonnel
(and that includes prosecutors) with respect to IP matters. Personnel simply may not have access to
details ofall IP cases heard in the Local Court system around Australia.
As a starting point how about a centralised list ofLocal Court cases (including findings) which dealt
with IP? For a start, it would assist in ensuring uniform and fair sentences.
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