Copyright Amendment (Parallel Importation) Act 2003

The Copyright Amendment (Parallel Importation) Act 2003 is an amending Act. It amended the Copyright Act 1968 and related provisions rather than creating a separate compliance code that businesses can read in isolation.

Its main focus is parallel importation of certain copyright material, especially computer programs and electronic literary or music items embodied in imported articles. It also made related changes about accessories included with imported goods, a limited trade mark non-infringement rule, evidentiary rules about labels and foreign certificates, additional damages factors, criminal provisions and court jurisdiction.

For most businesses, the practical question is whether a particular imported product fits the statutory conditions. The amendments do not create a blanket rule that all overseas stock is safe to import or resell in Australia.

Schedule 1 introduced key definitions and new provisions dealing with computer software and electronic literary or music items. It inserted definitions for electronic literary or music item and qualifying country, and replaced the general definition of non-infringing copy so that separate meanings apply to sound recordings, computer programs and electronic literary or music items.

It also inserted new provisions dealing with when a copy of a computer program or an electronic literary or music item is a non-infringing copy, expanded the meaning of accessory for certain imported articles, and created non-infringement rules for importation and downstream dealings involving qualifying imported copies.

Schedule 3 made further amendments, including extending the accessory concept to articles with embodied sound recordings and adjusting the list of parallel importation provisions relevant to the trade mark rule. Schedule 4 dealt with enforcement, evidence, offences and jurisdiction.

The amendments are most relevant to businesses that import into Australia, or commercially deal with, articles that have embodied in them a copy of a computer program or an electronic literary or music item. The definition of electronic literary or music item covers a book in electronic form, a periodical publication in electronic form, or sheet music in electronic form, regardless of whether there is a printed form.

The rules also matter for businesses dealing with bundled material included with imported goods, because the Act expands the meaning of accessory in this context. Copyright owners, publishers, distributors and trade mark owners are also directly affected because the amendments change when importation and resale may avoid infringement and when some trade mark use connected with imported goods will not infringe.

The Act is usually less central for businesses that do not import stock and do not deal with imported copyright material. Even then, the evidence and enforcement amendments can still matter if the business becomes involved in a copyright dispute.

The practical trigger points are importation into Australia and later commercial dealings with the imported article. The amendments inserted provisions stating that copyright is not infringed by a person who imports into Australia an article that has embodied in it a non-infringing copy of a covered item, or who does an act mentioned in the existing commercial dealing provisions of the Copyright Act involving such an article after it has been imported.

For computer programs, the relevant rule applies to a literary work that is a computer program and that has been published in Australia or a qualifying country. For electronic literary or music items, the rule applies to a work that is, or is part of, an electronic literary or music item and that has been published in Australia or a qualifying country. There is also a corresponding rule for copyright in a published edition of a work where the work is, or is part of, an electronic literary or music item and the edition has been published in Australia or a qualifying country.

That means businesses should not stop at asking whether the goods are genuine. They also need to ask whether the item falls within the covered category, whether the publication condition is met, and whether the copy itself satisfies the statutory test for a non-infringing copy.

The Act inserted a definition of qualifying country. Broadly, this means either a country that is a party to the Berne Convention, or a country that is a member of the World Trade Organization and has a law that provides consistently with the TRIPS Agreement for ownership and duration of copyright or related rights in works, sound recordings and cinematograph films, and for reproduction rights.

It also inserted separate rules for when a copy is a non-infringing copy. A copy of a computer program is a non-infringing copy only if it is made in a qualifying country and its making did not constitute an infringement of any copyright in a work under a law of that country. A copy of an electronic literary or music item is a non-infringing copy only if it is made in a qualifying country and its making did not constitute an infringement of any copyright in a work, or in a published edition of a work, under a law of that country.

This is often the hardest part in practice. A business may believe goods are authentic, but if challenged it may need evidence about where the copy was made and whether its making was lawful under the source country’s law.

The amendments do more than create importation exceptions. They also set up evidentiary presumptions that matter in litigation. For imported copies of computer programs, in certain civil actions for infringement involving an article with an embodied copy of the program, it must be presumed, unless the defendant proves otherwise, that the copy is not a non-infringing copy so far as it relates to the plaintiff’s copyright.

A similar rule applies for imported copies of electronic literary or music items in certain actions involving copyright in a work or in a published edition of a work. In practical terms, an importer, reseller or other defendant may carry the real burden of producing evidence that the copy qualifies.

For business owners, this means record-keeping is not optional. If you rely on parallel importation rules, you should expect that proof of lawful source may become central if a dispute arises.

The Act expanded the meaning of accessory for certain imported articles. If a person imports into Australia an article that has embodied in it a copy of a computer program or an electronic literary or music item, then a copy of any work or other subject matter, other than a feature film, that is on, embodied in, or included with the article on importation is taken to be an accessory to the article.

The legislation also defines feature film for this purpose. Broadly, it refers to a cinematograph film produced wholly or principally for cinema exhibition, television broadcasting, or sale or rental to the public where viewing the film would reasonably be assumed to be the primary object, and that is more than 20 minutes in duration.

Schedule 3 later added articles with embodied sound recordings to the list in the accessory provision. The practical point is that bundled manuals, media and other included material may need separate attention under the accessory rules rather than being ignored as incidental packaging.

The Act inserted a limited rule headed non-infringement of trade mark in relation to the importation of copyright material. It says that a person who uses a registered trade mark in relation to imported goods that are similar to goods for which the trade mark is registered does not infringe the trade mark if specified conditions are met.

Those conditions include that the importation would have constituted an infringement of copyright except for the operation of a parallel importation provision, that the trade mark was applied to or in relation to the goods before importation, and that the mark was applied by or with the consent of an appropriate trade mark owner described in the section. The section also says that, unless the contrary intention appears, expressions used there have the same meaning as in the Trade Marks Act 1995.

This is not a general permission to use another party’s branding however you like. It is a narrow statutory rule tied to the parallel importation setting described in the legislation.

Schedule 4 made several changes that matter if a dispute reaches court. It added factors relevant to additional damages, including the need to deter similar infringements and the conduct of the defendant after the infringing act or, if relevant, after the defendant was informed of the alleged infringement. That means what a business does after receiving a complaint can affect its position.

The Act also inserted evidentiary provisions for civil actions where subsistence or ownership of copyright is in issue. Labels or marks on a copy, or on packaging or a container, may be admissible as prima facie evidence of stated facts such as year and place of first publication or making, or that a person was the owner of copyright at a particular time. Certificates or other documents issued in a qualifying country in accordance with that country’s law may also be admissible as prima facie evidence of those facts.

For ownership disputes, chain-of-ownership documents may also be admissible as prima facie evidence if they state the required ownership history, dates and transaction descriptions. But the Act creates an offence where a person produces such a document while reckless as to whether it is false or misleading. The penalty stated in the Act for that offence is 30 penalty units.

The Act received Royal Assent on 15 April 2003. Sections 1 to 3 and Schedule 1 commenced on that date. The commencement table also states that Schedule 2 was to commence on the first anniversary of Royal Assent, although the available text here does not set out Schedule 2. Schedule 3 had split commencement dates, with items 1 to 3, 5 and 7 commencing immediately after the Copyright Amendment (Digital Agenda) Act 2000 on 4 March 2001, and items 4, 6, 8 and 9 commencing immediately after Schedule 1 on 15 April 2003. Schedule 4 commenced on the 28th day after Royal Assent, being 13 May 2003.

The Act is listed as in force. Even so, because it is an amending Act, businesses should check the current consolidated Copyright Act 1968 before relying on any of these rules. The present legal position depends on how these amendments now appear in the principal Act and whether later legislation has changed them.

If your business imports products that may fall within these rules, do a structured check before ordering or reselling stock. Start with the product category and identify exactly what copyright material is embodied in the article. Then check the country of making, whether the work or edition was published in Australia or a qualifying country where required, and what evidence you have that the copy was lawfully made under the source country’s law.

You should also review any bundled content, because accessories can matter, and check any registered branding already applied to the goods. If the supply chain is unclear, involves multiple intermediaries, or the supplier cannot provide reliable origin and ownership information, the statutory protection may be difficult to rely on in practice.