Gene sequences and products

28.17 In future, scientific researchers might seek to assert copyright over the written representation of a gene or amino acid sequence in addition, or as an alternative, to applying for a patent or other intellectual property protection.

28.18 Sue Coke has suggested that the written representation of a sequence of modified DNA or protein may be protected as an original literary work under the Copyright Act. She argues that as the legislative definition of a ‘literary work’ includes a table or compilation expressed in words, figures or symbols, the written representation of a genetic sequence or product—being a string of letters representing the four nucleotides, adenine, thymine, guanine and cytosine (A, T, G and C)—is likely to be a ‘literary work’ within the meaning of the Copyright Act. Coke commented that:

Since copyright was held to subsist in the list of numbers in the ‘newspaper bingo’ game used to promote the circulation of a Sunday newspaper, it can hardly be asserted that a sequence of letters (which may not be meaningful to a lay person but would be to a molecular biologist) denoting nucleotides of modified DNA or the amino acids making up the protein the product of that modification would not be protected by copyright, provided sufficient skill, labour and effort was involved in elucidating the sequence.[28]

28.19 In other jurisdictions, commentators have suggested that copyright may not subsist in such a written record because there is only one established way of representing a sequence of nucleotides or amino acids. In this case, the idea and expression merge.[29] According to Professor Gunnar Karnell:

It is an internationally recognised, distinguishing feature of copyright that no-one should be allowed to appropriate for himself, by means of copyright law, either the only way to express or describe a certain type of real matter (here: a DNA sequence, recombinant or other) or such matter as can only be described in such a way.[30]

28.20 The United States Copyright Office has stated that it does not consider that copyright may subsist in a gene sequence under United States copyright law.[31]

28.21 As noted above, while it is unclear whether the merger doctrine applies generally in relation to copyright in Australia, it does not apply to ‘whole of universe’ factual compilations.[32] Therefore, copyright could potentially subsist in the representation of a genetic sequence provided sufficient skill, labour and effort is involved in creating that expression.

28.22 Several submissions expressed concerns regarding the potential implications of copyright protection of gene sequences and proteins that have been reduced to written form.[33] For example, the Department of Health and Ageing submitted that it would be concerned about any application of copyright law that tended to inhibit medical research or the application of such research in healthcare.[34]

28.23 Whether or not copyright subsists in the written representation of a gene or amino acid sequence under the Copyright Act, it appears unlikely that this would hinder the use of that sequence in genetic research. As copyright protects only the expression of ideas—rather than the ideas or information expressed—researchers could continue to use the molecule itself in their research, despite the protection of its written representation. If copyright does subsist in the written representation of a sequence, this would be subject to the fair dealing exception to copyright infringement for research or study. In addition, if another researcher independently established the genetic sequence and articulated it in any identical way to that in which it had been first expressed, that independently researched expression would not infringe the copyright in the original expression.

28.24 In her submission, Danielle Andrewartha argued that copyright could subsist in a nucleotide or amino acid molecule itself under Australian copyright law.[35] However, the ALRC considers that this is unlikely. The molecule is unlikely to fall within the legislative definition of a ‘literary work’ and, in any case, provides no information, instruction or entertainment to human beings—unlike its written representation.

[28] S Coke, ‘Copyright and Gene Technology’ (2002) 10 Journal of Law and Medicine 97, 102.

[29] See the discussion in Ibid, 101, 108.

[30] G Karnell, ‘Protection of Results of Genetic Research by Copyright or Design Rights?’ (1995) 17 European Intellectual Property Review 355, 357.

[31] L Eckstrom and others, Eckstrom’s Licensing in Foreign and Domestic Operations (1999) Vol 2, [13.10].

[32]Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 192 ALR 433, 474.

[33] For example, South Australian Government, Submission P51, 30 October 2003; Commonwealth Department of Health and Ageing, Submission P65, 28 January 2004; A McBratney and others, Submission P47, 22 October 2003.

[34] Commonwealth Department of Health and Ageing, Submission P65, 28 January 2004.

[35] D Andrewartha, Submission P92, 16 April 2004. See also the discussion in I Kayton, ‘Copyright in Living Genetically Engineered Works’ (1982) 50 George Washington Law Review 191; N Derzko, ‘Protecting Genetic Sequences under the Canadian Copyright Act’ (1993) 8 Intellectual Property Journal 31, 39.