It continues: Sirtex awarded over $2.5 million in UWA v Gray cross-claim - Monday, July 12, 2010
The Federal Court recently handed down the latest judgment (University of Western Australia v Gray (No 29) [2010] FCA 665) in the long-running matter of UWA v Gray, which we have covered in previous In Brief updates.
On 24 June 2010, Justice Barker ruled on the amount of damages payable in Sirtex Medical Limited’s cross-claim against Dr Bruce Gray for lost commercial opportunity and legal costs in the principal patent infringement proceeding. Even though Dr Gray successfully defended the University's claims, Dr Gray was ordered to pay Sirtex $1,762,224.33 in damages, a further $812,961.50 in interest, and legal costs, for failing to disclose certain correspondence to Sirtex which may have provided it with an opportunity to resolve the issue before litigation ensued. The Court had previously found that this amounted to misleading and deceptive conduct and a breach of the duties that Dr Gray owed to Sirtex, as a director of that company.
Author: Ally Akbarzadeh
Whiskas - Colour Purple found to be a registrable trade mark - Monday, July 12, 2010
Mars Australia Pty Ltd (“Mars”) filed Trade Mark Application no. 932937 on 4 November 2002 to register its trade mark for the Colour Purple in relation to: “Foodstuffs for domestic pets and additives for such foodstuffs” in class 31. The application was accepted following an ex parte hearing in relation to registrability. The application was successfully opposed by Societe des Produits Nestle SA (“Nestle”). Mars then instituted an appeal to the Federal Court.
The parties settled the dispute and proposed that the Court make Orders to the effect that the appeal be allowed, the decision of the Delegate be set aside and the trade mark proceed to registration in relation to the amended specification being “cat food and additives for cat food”.
The Court considered two grounds of opposition as set out below:
Firstly, the Court considered the ground of opposition that a registration may be opposed on the ground that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars (Section 62(b) of the Trade Marks Act 1995).
It was found by Bennett J that statements made in the supporting evidence to the effect that no other manufacturers used Purple for pet food were false. However, there was other evidence before the Examiner referring to use of the Colour Purple on pet food products sold in supermarkets. On this basis, and perhaps surprisingly, the Court held that it cannot be concluded that the Examiner accepted the application “on the basis” of the false representations contained in the lead declaration filed in support of the application. In other words, there was no causal or connection between the suggested false statement and acceptance of the application according to the Court. Despite this finding, the case serves as a useful reminder to practitioners and declarants that great care should be taken to check the veracity of statements made under oath.
Secondly, the Court considered whether the trade mark was capable of distinguishing the applicant’s goods (Section 41 of the Trade Marks Act 1995).
In this regard, Mars relied upon substantial use and promotion of the Colour Purple in Australia from about April 2000. The Court found that the Colour Purple was the predominant colour used on the product packaging for all varieties of Whiskas cat food creating a stronger shelf-blocking effect when displayed on shelves.
It was noted that the colour was carefully chosen and that the precise Colour Purple was specifically developed to create a stronger brand identity for the Whiskas product.
Despite the fact that registrability is to be determined as at the filing date (4 November 2002), the Court found that a survey conducted on behalf of Mars in May 2009 supported the submission that Whiskas Colour Purple functioned as a badge of origin in relation to the goods.
Once again, this conclusion is rather surprising as it has been notoriously difficult to succeed in establishing distinctiveness of a mark on the basis of survey evidence (particularly if the survey was conducted subsequent to the filing date of the application).
While the Court found that other pet food traders used a similar Colour Purple on packaging, Bennett J found that such use on specific varieties within a product range did not amount to trade mark use. Therefore, the Judge found that Whiskas Colour Purple was capable of distinguishing Mars’ goods (as amended) as at the priority date.
Accordingly, Orders were made that the decision of the Delegate be set aside and the application proceed to registration with the amended specification of goods.
Author: Fiona Brittain, Associate
IN BRIEF UPDATE - 6 July 2010 - Tuesday, July 06, 2010
Larrikin awarded 5% of Down Under royalties for Kookaburra contribution
In a judgment handed down on 6 July 2010 (Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd (No 2) [2010] FCA 698), Jacobson J of the Federal Court ruled on Larrikin's entitlement to a share of the income collected by Australasian Performing Right Association (APRA) and Australasian Mechanical Copyright Owners Society (AMCOS). As reported in the March 2010 edition of IP Update, Men At Work's iconic pop song "Down Under" was held to have infringed the copyright in the Australian nursery rhyme "Kookaburra sits in the old gum tree" because a substantial part of "Kookaburra" is reproduced in the flute riff of "Down Under".
The Judge concluded that Larrikin is entitled to a 5% interest to the performance and mechanical income derived from the exploitation of “Down Under". Taking into account the difficulty in detecting the similarity between the flute riff and the bars from “Kookaburra”, and “Kookaburra's” contribution relative to the whole of the “Down Under” song, His Honour regarded Larrikin's claim to 25% - 50% of the total income from “Down Under” for the reproduction of two of four bars of “Kookaburra” to be "excessive, overreaching and unrealistic".
A more fulsome analysis of the decision will follow in the next edition of our IP Update.
Joy Atacador
Partner
Davies Collison Cave Law
jatacador@davies.com.au
e-mag - IP Update - June 2010 Issue 8 - Thursday, July 01, 2010
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IN BRIEF UPDATE - 30 June 2010 - Wednesday, June 30, 2010
Patents for Abstract Ideas are out, but not Patents for Business Methods
The US Supreme Court in its long awaited decision, Bilski v Kappos, has rejected a patent application for a method of hedging risk on the basis that the claims were directed to an abstract idea. Yet, in doing so, the Court did not rule out patents for all business methods and reinforced only three exceptions to US patent eligibility: laws of nature, physical phenomena, and abstract ideas.
Justice Kennedy, in delivering the Opinion of the Court, said the US Patents Act indicated US Congress plainly contemplated that patent laws should be given a wide scope and that a permissive approach to patent eligibility ensured that "ingenuity should receive a liberal encouragement". The exclusion of laws of nature, physical phenomena, and abstract ideas was consistent with the notion that a patentable process must be new and useful. The Court made it clear that the "machine-or-transformation test", that had been adopted by the Court of Appeals for the Federal Circuit, was not the sole test for deciding whether a process is patent eligible and was only a useful and important clue, and an investigative tool. Kennedy J. accepted arguments that if the test was made the sole criteria it would create uncertainty as to the patentability of software, advanced diagnostic medical techniques, and inventions based on linear programming, data compression and manipulation of data signals, which would be unsatisfactory.
With regard to business methods, Kennedy J. said a business method is simply one kind of method that is, at least in some circumstances, eligible for patenting, and in searching for a limiting principle the Court's precedents on the unpatentability of abstract ideas provide a useful tool.
Four Justices joined Kennedy J.'s opinion, but Scalia J. did not concur with the opinion in relation to or comment on patents for business methods. Stevens J. delivered a concurring opinion with three other Justices who agreed the machine-or-transformation test was not the sole test, but held that business methods are not patentable.
In summary, the Court has opted to maintain a broad approach to patentable subject matter to allow inventors to obtain patents for a wide range of inventions. The shackles of the limiting machine-or-transformation test that has been used by the Patent Office have been removed and a positive approach can now be adopted. As mentioned by Kennedy J., the US patentable subject matter provisions are dynamic and designed to encompass new and unforseen inventions. Patent law can now continue its journey in the US.
Author: David Webber, Partner
IN BRIEF UPDATE - 30 June 2010 - Wednesday, June 30, 2010
Putting the (UGG) boot in - imprisonment for contempt
Deckers Outdoor Corporation Pty Ltd v Farley (No 8) [2010] FCA 657
The legal action brought by Deckers to try to restrain the infringement of its intellectual property rights in relation to its "UGG" branded footwear has culminated in the ordering by Justice Tracey of custodial sentences to punish contempt by three individuals who continued to make and distribute "UGG" branded footwear in breach of Court orders and undertakings given to the Court between 2003 and 2007.
As reported in the June 2010 edition of IP Update, the Court held that contempt charges were proven beyond reasonable doubt against Vladamir and Victoria Vaysman, two other individuals (one being Mr Vaysman's father) as well as two companies owned and operated by Mr Vaysman. On 24 June 2010 Justice Tracey handed down his decision on costs and penalties (other than for Mr Vaysman's father who successfully obtained an adjournment to prepare a plea).
In his decision, his Honour listed the considerations set out in Louis Vuitton Malletier SA v Design Elegance Pty Ltd (2006) 149 FCR 494 as relevant to the determination of an appropriate penalty for contempt and stated that the penalty was to serve both the interests of the Applicant and the administration of justice.
In relation to Vladimir Vaysman, his Honour noted that he had controlled the significant and highly profitable commercial operation that made, sold and distributed the counterfeit "UGG" boots. Mr Vaysman had acted with "contumelious disregard" of the Court orders and his undertakings and, rather than demonstrating any contrition, he had "continued to treat the curial processes with disdain". Justice Tracey found the conduct to be serious criminal contempt and one of the worst cases to come before the Court. In relation to Mr Vaysman's financial situation, he had entered voluntary bankruptcy after the substantial damages orders were made in September 2009. Although a sentence of imprisonment is a last resort for the Court, Justice Tracey found that nothing less would be appropriate. His Honour ordered concurrent terms of imprisonment for each of the 10 charges of contempt. The most serious offence was punished by a term of 3 years.
Victoria Vaysman had substantially admitted all charges against her but in May 2009 filed an affidavit which criticised her lawyers and suggested she resiled from some or all of those admissions. On the morning of the hearing, after receiving legal advice, Ms Vaysman filed another affidavit withdrawing the criticisms and offered apologies for her "wrongful behaviour". Both affidavits stressed the adverse impact that her imprisonment would have on her 4 year old daughter and set out her precarious financial situation. Justice Tracey weighed up the evidence and determined that a custodial sentence was appropriate, having regard to the conscious decision made by Ms Vaysman to participate in, and derive significant financial benefit from, her family's illegal conduct knowing that the conduct was in breach of Court orders. Notwithstanding her statements of remorse, Justice Tracey was also far from persuaded that Ms Vaysman appreciated the gravity of her misconduct. His Honour imposed concurrent terms of imprisonment for each charge, with a maximum term of six months. However Ms Vaysman was ordered to serve only two months with the remaining period suspended after taking into account her young daughter's circumstances.
Leonid Mykhalovski, who worked at the factory manufacturing the counterfeit boots, was found to have shown a "blatant disregard" of the Court orders and ordered to serve concurrent sentences of 1 month imprisonment for each of six charges.
Justice Tracey ordered the three individual Respondents to pay Deckers' costs on an indemnity basis.
Justice Tracey's decision, albeit in relation to unusually flagrant contemptuous conduct, reflects the seriousness with which the Court views contempt and the important role that penalties play in vindicating the authority of the Court. Imposing terms of imprisonment for contempt will undoubtedly act as a substantial deterrent to any infringer contemplating a continuation of infringing conduct in breach of a Court order or undertaking given to the Court.
Authors: Penny Smith, Associate and Ian Pascarl, Partner
IN BRIEF UPDATE - 24 June 2010 - Thursday, June 24, 2010
UNIVERSITY OF WESTERN AUSTRALIA V GRAY
University of Western Australia v Gray has by now achieved "legend" status in the intellectual property arena in Australia. On 10 June, 2010 the Federal Court handed down a decision which could be the last episode in this long running battle which started in December, 2004.
This recent decision concerned the liability of Dr Gray for the unrecovered costs incurred by Sirtex Medical Limited ("Sirtex") in defending itself against the claims to ownership of certain intellectual property made by University of Western Australia ("UWA").
In the initial proceedings, French J held that Dr Gray had engaged in misleading and deceptive conduct and breached his director's duties by deliberately not disclosing certain correspondence regarding claims by UWA to Sirtex.
In brief, the facts are as follows:
1. Sirtex was a company which was floated in 2000 on the basis that it would commercialise certain technology.
2. Dr Gray was involved in the development of the technology and had worked at Monash University and UWA and been the medical director of the Cancer Research Institute ("CRI") for part of the time over which the technology was developed.
3. In 1997, CRI asserted to UWA that it had independently funded three technologies which it believed it was likely to be able to commercialise and sought from UWA a letter saying that it had no interest in those technologies. UWA ultimately provided in January, 1997 a letter conditioned on "the basis of the facts in your letter" to that effect.
4. In May, 1997 Dr Gray assigned all of his intellectual property rights in all relevant intellectual property to Sirtex.
5. On 17 June, 1999 the Vice Chancellor of UWA wrote to Dr Gray directly raising the issue of ownership of certain of the technology being commercialised by Sirtex. Dr Gray responded by saying that the particular technology was developed exclusively by CRI. In October, 1999 a further letter from the Vice Chancellor asserted that the relevant technology was owned by UWA and that there had been no assignment to Gray or any third party of its rights ("the 1999 Correspondence").
6. Sirtex was floated in 2000. Dr Gray was found to have deliberately concealed from Sirtex and its advisors, the 1999 Correspondence. It was also held that if the correspondence had been disclosed, then Sirtex would have been put on enquiry and that, given the attitude of UWA at the time, it would have been highly probable that Sirtex would have obtained a release from UWA as to ownership of the relevant intellectual property.
7. However, the disclosure was not made and by 2003 the attitude of UWA had hardened with a change in personnel. As noted above, UWA issued proceedings in 2004 against Sirtex, Dr Gray and a number of other parties over the ownership of the relevant intellectual property. Whilst UWA ultimately lost its case against Sirtex, Sirtex incurred costs of $5,633,996.00 (including GST) of which only $3 million was to be recovered from UWA following a settlement of the costs issue. This left a significant amount of unrecovered costs which Sirtex sought from Dr Gray.
8. The Court accepted that there is a general principle in civil proceedings that costs are not recoverable as damages in that proceeding or in a related or subsequent proceeding. However, the Court also recognised that there were some exceptions to this general rule. Importantly, the Court accepted that in a situation where a party was put to the trouble of maintaining an action or defending an action by reason of the wrongdoing of another party, and is entitled to an indemnity from that party, then the injured party should be able to recover as damages the costs either in a separate action subsequent to the primary action or in a related proceeding in the primary action. In this particular case, the Court held that Dr Gray's failure to disclose the 1999 Correspondence amounted to misleading and deceptive conduct and a breach of his duties owed as a director to Sirtex and that, as a result Sirtex had lost the opportunity to resolve the issues before litigation ensued and was therefore entitled to recover from Dr Gray the amount of its loss. However, the Court did apply a discount to the amount recoverable based on the level of certainty which the Court was prepared to apply to the ability of Sirtex to negotiate a satisfactory outcome with UWA at the relevant time. This discount was calculated to be 14% with the result that Sirtex was entitled to recover 86% of the costs and disbursements connected to the unlawful conduct of Dr Gray.
Author: Rodney DeBoos, Partner
Six Steps to Strategic Enforcement of IP Rights in Australia - Thursday, June 03, 2010
Proper assessment at the earliest stage of jurisdiction, forum, evidence and timing issues will go a long way towards protecting your intellectual property rights. Joy Atacador and Claire Ramsay share six steps to formulating a winning enforcement strategy.
This story first appeared in the April 2010 issue of Asia IP. More information about Asia IP is available at www.asiaiplaw.com.
IN BRIEF UPDATE - 24 May 2010 - Monday, May 24, 2010
Removing State Boundaries in New Australian Business Name Registration
From 4 April 2011, subject to legislation being passed by each state and territory, a new National Business Names Registration system will commence in Australia. Under the new system business names will be registered nationally. Currently, business name registrations in Australia are state and territory based, which means that business names must be registered in compliance with the laws and fees of each state and territory that a business seeks to operate in.
Under the proposed new system, business names will be registered provided they are not identical to an existing company or business name, do not contain offensive, prohibited or restricted words, and are not likely to mislead or deceive consumers and traders. Identical business names which have been registered under the current state and territory registration systems will be allowed to co-exist on the Register. A geographic designation will be added to distinguish these businesses on the Register; however the geographic designation will not become part of the business name. Additionally, the new system will allow registration of a business name that differs from another business name only by geographical indicator, regardless of whether or not there is a relationship between the businesses. Examples of this are: Jane's Plumbing and Jane's Plumbing Ringwood, and Kraven Newsagency and Warley Newsagency.
Importantly for franchised businesses, the system does not require the franchisee to supply the written permission of the franchisor to the Australian Securities and Investment Commission to obtain registration of a franchise name.
Under the proposed new system, the expansion across state and territory borders of formerly state and territory based businesses can be achieved without applying for new business name registrations. Importantly, this means that from 2011 trade mark owners will need to be more vigilant in monitoring the marketplace activities of other businesses, because relying upon the Australian Securities and Investments Commission Register will not be as useful in indicating the expansion of business.
Authors: Rodney De Boos, Partner and Danielle Roberts, Law Graduate
SUSTAINABLE SYNERGY - Maryam Khajeh radio interview on Eastside FM - Thursday, May 20, 2010
DCC's Maryam Khajeh speaks to Eastside FM's Frederick Malouf about IP rights, and in particular some of the obstacles faced by Australian businesses, and how they can be overcome. Please click here to listen to the full interview.
Please click here.
IN BRIEF UPDATE - 20 May 2010 - Thursday, May 20, 2010
Re: Last Drinks for Lion Nathan; the High Court Judgement in E. & J. Gallo Winery v Lion Nathan Australia Pty Ltd
In response to a claim by E. & J. Gallo Winery (Gallo) that Lion Nathan Australia Pty Ltd's (Lion Nathan) use of the words BAREFOOT RADLER infringed Gallo's registration of the trade mark BAREFOOT for wine, Lion Nathan applied to cancel Gallo's trade mark registration on the grounds of non-use. In proceedings before the Full Federal Court, the Court concluded that whilst Lion Nathan had infringed the registered trade mark, Gallo was not able to satisfy the Court that the trade mark BAREFOOT had been in use in Australia. On that basis the Court ruled that the trade mark registration should be removed from the trade marks register. Gallo successfully obtained High Court leave to appeal specific issues related to whether or not the trade mark BAREFOOT had been effectively used in Australia.
On 19 May 2010 the High Court delivered its judgement. In response to a key question put to the High Court, the Court ruled that an overseas manufacturer who has registered a trade mark in Australia and who himself (or through an authorised user) places the trade mark on goods which are then sold to a trader overseas can be said to be a user of the trade mark when those same goods, to which the trade mark is affixed, are in the course of trade, that is, are offered for sale and sold in Australia. This is because the trade mark remains the trade mark of the registered owner (through an authorised user if there is one) whilst the goods are in the course of trade before they are bought for consumption. During the trading period, said the Court, the trade mark functions as an indicator of the origin of the goods, irrespective of the location of the first sale. It followed that use of the trade mark BAREFOOT in Australia by Gallo was genuine and sufficient to establish use in good faith. Furthermore, the High Court found that Gallo's wine under the BAREFOOT label was properly in the course of trade when imported into Australia.
The result of the High Court judgement is that Lion Nathan's application to cancel the registered trade mark BAREFOOT has been rejected. Furthermore, Lion Nathan's advertising, offer for sale and selling beer under the name BAREFOOT RADLER infringed Gallo's registration for the trade mark BAREFOOT. Lion Nathan was ordered to pay Gallo's costs of the proceedings at first instance, the costs of the appeals to the Full Court of the Federal Court of Australia and the costs of the appeal and the application for special leave to cross appeal to the High Court.
Author: Trevor Stevens, Partner
IN BRIEF UPDATE - 14 May 2010 - Friday, May 14, 2010
THE UGG-LINESS CONTINUES
Deckers Outdoor Corporation Pty Ltd v Farley (No 6) [2010] FCA 391
Background and summary
Since 2003, Deckers Outdoor Corporation Pty Ltd (Deckers) in a series of proceedings sought to restrain Vladamir and Victoria Vaysman and other individuals (including their parents) and companies associated with them from making or distributing footwear branded with the "UGG" trade mark. Deckers claimed that the use of the "UGG" mark by the respondents infringed Deckers' trade marks and copyright, passed off the respondents' products as those of Deckers and breached sections 52, 53 and 75B of the Trade Practices Act.
As we reported in December 2009, Deckers' claims were upheld against Hepbourne Pty Ltd (of which Vladamir Vaysman was sole director and shareholder). The claims against the other 21 respondents to that proceeding had been settled or disposed of by way of summary judgment.
Between 2003 and 2007 the Court ordered interlocutory and permanent injunctions and received undertakings restraining the respondents from making or distributing "UGG" branded footwear. Deckers discovered multiple breaches of these orders and commenced proceedings for contempt, seeking the imposition of fines and imprisonment. On 23 April 2010, Justice Tracey handed down his decision upholding substantially all of the charges of contempt. The matter will next proceed to a hearing on penalty. The decision is significant given that contempt proceedings are not common in intellectual property cases, most of the respondents denied the allegations, and the applicant is seeking custodial sentences.
Please see full text in our June edition of IP Update.
Authors: Penny Smith, Lawyer and Ian Pascarl, Partner
IN BRIEF UPDATE - 14 May 2010 - Friday, May 14, 2010
AUSTRALIA HIGH COURT DECISION REGARDING "AGGRIEVED PERSON" STATUS
Australasian Law Awards – IP Specialist Firm of the Year 2010 - Friday, May 14, 2010
Davies Collison Cave, is a Australasian Law Awards – IP Specialist Firm of the Year 2010 winner. The Australasian Law Awards are the premier awards event for the Australian and New Zealand legal industry. This is the fourth time the firm has taken out this prestigious award.
IN BRIEF UPDATE - 30 April 2010 - Friday, April 30, 2010
APRA to make direct music licensing easier.
On 16 April 2010, the Australian Competition and Consumer Commission (ACCC) re-authorised the Australasian Performing Right Association's (APRA) music licensing arrangements which provide a centralised means for businesses or individuals to obtain music licences rather than dealing directly with individual artists.
In the context of its review, the ACCC expressed concern that some of APRA's arrangements were unnecessarily onerous, discouraged direct dealing between its members and music users and reduced price competition between artists. In light of the ACCC's concerns, APRA has agreed to simplify its arrangements to make it easier for members to negotiate music licences directly with music users.
While artists or their record companies are currently able to negotiate directly with music users under APRA's "opt-out" or "licence back" arrangements, APRA has agreed to limit some of the requirements of its licence back arrangements to make it easier for members to grant licences directly. Specifically, APRA will now require less information from its members about the proposed licence with music users and has reduced its notification period for those arrangements. Currently, ARPA requires members to notify it of a direct licensing arrangement not less than one month before a user proposes to use that music.
As a result of these changes, businesses will now have more choice in how they source music which may have the effect of reducing the costs of licensing music. APRA's new arrangements will be more beneficial to businesses which wish to license only a targeted selection of music from a small number of artists (eg, businesses wishing to use only one artist's song for an advertising campaign). Businesses wanting to acquire a licence to use a wide variety of music from APRA's repertoire (eg, fitness centres, retail stores and supermarkets) will still benefit from the current cost saving arrangements by dealing directly with APRA.
APRA has announced that it will implement these changes in the near future.
Author: Tim Creek, Lawyer
IN BRIEF UPDATE - 30 April 2010 - Friday, April 30, 2010
AUSTRALIA AND NEW ZEALAND TO REVIEW
FOOD LABELLING LAWS AND POLICY
The Australia and New Zealand Food Regulation Ministerial Council has been charged with the task of undertaking a comprehensive review of food labelling law and policy in Australia and New Zealand. The scope of the review is broad given that "food labelling" for the purposes of the review is taken to include representations and claims about food that are, or could be regulated, under the Australia and New Zealand Food Standards Code or the consumer protection laws of either country. Thus, the review will cover all aspects of the labelling of food including, country of origin labelling and the intersection between food labelling and the labelling of complementary medicines under the therapeutic goods legislation. As all packaged foods, with very few exceptions, have labelling requirements, the results of the review are likely to have a wide impact on the way food is presented for sale in Australia and New Zealand.
The Ministerial Council has released an issues consultation paper and is conducting public meetings. Submissions have been called for and the deadline for the making of submissions is 14 May, 2010. Further information regarding the review is available at www.foodlabellingreview.gov.au.
Davies Collison Cave regularly reviews labels, packaging and advertising for products and services generally and would be pleased to assist in raising issues with the Ministerial Council through the submission process.
Author: Rodney DeBoos, Partner
IN BRIEF UPDATE - 15 April 2010 - Thursday, April 15, 2010
RESALE ROYALTY RIGHT FOR VISUAL ARTISTS SCHEME
On 9 December 2009, the Federal Government fulfilled its 2007 election promise to implement a scheme providing for visual artists to receive a royalty on resales of their works by passing the Resale Royalty Right for Visual Artists Act 2009 (Act). From 9 June 2010, visual artists will have a right to receive a five per cent royalty payment on secondary sales of their works over $1,000.
The Federal Government has appointed Copyright Agency Limited (CAL) to set up and administer the scheme. CAL will take a 10 per cent administration fee from all royalties collected under the scheme.
Importantly, sellers, buyers and art market professionals will need to ensure that they agree who will be responsible for paying the royalty in any particular transaction as the Act provides that they will all be jointly and severally liable to the artist for the relevant amount. Sellers will also need to ensure that they notify CAL of all commercial resales of an artwork within 90 days of a sale. Sellers who fail to comply with their obligations under the Act face civil penalties of up to $110,000 for a corporation and $22,000 for an individual.
While the scheme commences in a few months, there is still some way to go before benefits under the scheme start flowing to visual artists. More details of the scheme will be contained in the June edition of the Davies Collison Cave eMag.
Author: Tim Creek, Lawyer
e-mag - IP Update - March 2010 Issue 7 - Thursday, April 01, 2010
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March 29, 2010 - US HEALTHCARE REFORM: BIOTECH DATA EXCLUSIVITY AND BIOGENERICS - Wednesday, March 31, 2010
When the US House of Representatives passed the landmark healthcare reform earlier this
month the legislation provided the biotechnology industry with a 12 year period of exclusivity
for data relating to new biologics and provided the US Food and Drug Administration (FDA) with
the flexibility to create a pathway to enable the approval of biogenerics (or biosimilars).
Changes to New Zealand trade mark practice - Thursday, March 25, 2010
The Intellectual Property Office of New Zealand (IPONZ) has recently implemented a number of changes to trade mark practice, which benefit Australian IP lawyers or trade mark attorneys practicing trade mark law in NZ.
IN BRIEF UPDATE - 24 March 2010 - Wednesday, March 24, 2010
When is a Director likely to be found personally liable for infringement?
Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Limited [2010] FCA 108
Summary
In Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Limited [2010] FCA 108 Justice Bennett concluded that a director and shareholder of the respondent MDS companies was personally liable for patent infringement because his involvement in the companies went beyond being simply a shareholder and director, and contributed to MDS infringing Inverness' patents. Her Honour's findings with respect to the relevant principles are applicable to all intellectual property cases where personal liability is in issue.
Full article can be viewed in IP Update March 2010 edition.
IN BRIEF UPDATE - 24 March 2010 - Wednesday, March 24, 2010
Nature’s Blend Pty Ltd & Ors– v- Nestle Australia Ltd [2010] FCA 198
LUSCIOUS LIPS LOLLIES
This case highlights the need for adequate sceeening of all wording used on product packaging and associated materials.
BRW Client Choice Awards 2010 - Best Patent and Trade mark Attorney Firm - Friday, March 19, 2010
Davies Collison Cave, is a BRW Client Choice Awards winner for 2010. The BRW Client Choice Awards are based on quantitative research into buyers of professional services, conducted independently by Beaton Consulting.
IN BRIEF UPDATE - 01 March 2010 - Monday, March 01, 2010
Kookaburra and iiNet copyright decisions to be appealed
Two recent Federal Court decisions on copyright law, which were both handed down on 4 February 2010, will be appealed to the Full Federal Court.
EMI Songs Australia Pty Ltd has lodged an appeal against Justice Jacobson's decision that a flute riff in the song "Down Under" made famous by Australian band Men At Work, infringed copyright in the children's song "Kookaburra Sits in the Old Gum Tree".
Thirty-four film and music studio companies have also appealed against the ruling of Justice Cowdroy that internet service provider iiNet did not authorise copyright infringement by its users. The Court found that iiNet was aware that some of its users were downloading pirated films and music using the BitTorrent protocol, but its failure to take action to terminate those users' accounts did not constitute authorisation of copyright infringement.
Author: Miriam Zanker, Associate
IN BRIEF UPDATE - 01 March 2010 - Monday, March 01, 2010
Nothing eases for Maltesers on appeal
Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174
Mars Australia Pty Ltd ("Mars") took action against Sweet Rewards Pty Ltd ("Sweet Rewards") in the Federal Court of Australia alleging that Sweet Rewards had infringed Mars' trade marks and had engaged in passing off and misleading conduct by distributing a "Malt Balls" product in red and orange jars with a get-up said to be similar to Mars' "Maltesers" chocolate confectionary.
In December 2009, the Full Court of the Federal Court upheld the trial judge's ruling that Sweet Rewards had not infringed the Maltesers trade marks because:
• Sweet Rewards uses the mark "Delfi" as a trade mark to distinguish the "Malt Balls" as goods of Sweet Rewards, not the other elements of the red jar "Malt Balls" label; and
• The distinguishing feature of the Maltesers trade marks is the word "Maltesers" and the "Delfi" trade mark used on Sweet Rewards' red jar "Malt Balls" label is not likely to deceive or cause confusion.
The Full Court also agreed with the trial judge's conclusion that the "Malt Balls" red and orange jar labels did not pass off Sweet Rewards' products as "Maltesers" and no misleading or deceptive representation had been made.
In considering whether a competing mark is deceptively similar to a registered trade mark, it is important to identify the mark that has been used by the competitor as a trade mark, that is, those aspects of packaging or labelling that identify the origin of the competitor's product. Further, the fact that a registered trade mark has attained notoriety may be taken into account in the assessment of deceptive similarity.
This case serves to highlight that to succeed in a passing off and misleading conduct action, it is necessary to establish that the features of a product get-up:
• are distinctive to a particular trader;
• are not commonly used in the trade or merely descriptive or functional; and
• are used as a badge of origin
notwithstanding the presence of other distinguishing product name branding to identify the trade source of the product.
For a full report on this decision, please refer to the March 2010 edition of the Davies Collison Cave eMag.
Author: Joy Atacador, Partner
IN BRIEF UPDATE - 23 February 2010 - Tuesday, February 23, 2010
Life after IceTV: The Federal Court revisits copyright in compilations
Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44
In the wake of the IceTV copyright decision handed down by the High Court last year, a Federal Court judge has considered the copyright in Telstra's White Pages and Yellow Pages telephone directories.
Justice Gordon ruled in the PDC case that Telstra had not established that copyright subsisted in the White Pages and Yellow Pages telephone directories, for three main reasons.
First, the Court held that although many people had contributed to the creation of the telephone directories, many of the "authors" of the directories (within the meaning of the Copyright Act 1968 (Cth)), had not been, or were not able to be, identified.
Second, the Court held that even if the authors could have been identified, much of the work done in creating the telephone directories:
(a) did not constitute "independent intellectual effort" or was not "sufficient effort of a literary nature" by the contributors such that they could be considered to be "authors" of the directories for copyright purposes;
(b) was done prior to the telephone directories taking their "material form", and therefore was not work that could be taken into consideration when determining originality; or
(c) was computer generated, rather than the result of human effort.
Third, the Court held that the creation of the White Pages and Yellow Pages telephone directories did not involve "independent intellectual effort" or the exercise of "sufficient effort of a literary nature", as discussed by the High Court in the IceTV decision. The Judge held that the telephone directories therefore did not constitute "original" works capable of protection under the Copyright Act.
The Judge also distinguished the PDC case from an earlier decision of the Full Federal Court in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491, which had held that copyright did subsist in various telephone directories. The Judge held that the earlier case differed from the PDC case, as the authorship of the telephone directories had not been challenged by Desktop Marketing Systems.
Author: Miriam Zanker, Associate
IN BRIEF UPDATE - 15 February 2010 - Monday, February 15, 2010
UWA v Gray
The High Court today (Friday 12 February, 2010) dismissed an application for special leave to appeal by the University of Western Australia (UWA) in a matter against former UWA academic Dr Bruce Gray, relating to ownership of patent rights covering the production and use of microspheres for targeted treatment of human tumours. At the heart of matter was the issue of ownership of patent rights by employees not bound by a specific duty to invent within their employment contracts. The facts of the case were not contested and the High Court justices hearing the application considered that there was no error in the judgement at first instance by Justice French (who is now the Chief Justice of the High Court) and whose decision was affirmed by the Full Federal Court 9[2009] FCAFC 116 (3 September 2009). This decision may have consequences not just for other universities but also for companies and organisations involved in research and development where the employment or research contracts in place do not specifically outline that a researcher is employed to invent, rather than simply to conduct research.
CHANGES TO AUSTRALIAN GRANTS SCHEMES - Wednesday, February 10, 2010
The grants available under the COMET Grant Scheme ended on 31 December, 2009 and were superseded by "Proof of Concept Grants" from 4 January, 2010. The new scheme is said to be a simpler form of assistance to companies seeking to take their ideas to market.
A Proof of Concept Grant provides funding of between $50,000 and $250,000 over a 12 months period to fund expenditure incurred to establish the commercial viability of a new product, process or service. The applicant is required to match the funding provided by the Grant on a 50:50 basis.
The types of expenditure which are eligible are labour expenditure, contract expenditure, plant expenditure, prototype expenditure and intellectual property protection expenditure. Applications for the Grant are made to Commercialisation Australia and further information is available from the website at www.commercialisationaustralia.gov.au.
Importantly, projects which predominantly consist of early stage investigation and conceptual development will not be eligible for the Grant.
Interview on ABC Radio - Trevor Stevens - Monday, February 08, 2010
ABC Radio aired an interview with Trevor Stevens, Partner of Davies Collison Cave regarding trade mark issues and recent developments during 2009, particularly with respect to colours, shapes and design trade marks. Please click here to read/listen to the full interview.
Please click here.
IN BRIEF UPDATE - 4 February 2010 - ISP Wins against Motion Picture Studios - Thursday, February 04, 2010
Roadshow Films Pty Ltd –v- iiNet Limited (No. 3) [2010] FCA 24
In a landmark decision, which has been closely watched around the world, Australia's third largest ISP, iiNet, has succeeded against the major motion picture studios in the US and Australia. The studios argued that by not acting on infringement notifications and allowing the ISP's users to continue to use BitTorrent to download the studios' copyright works, the ISP was authorising infringement by the users and therefore liable under the Australian Copyright Act.
The Court found that the users did infringe the studios' copyright using BitTorrent, and iiNet did not act to stop them. Yet, under the law of authorisation, the Court felt that there was a clear distinction between infringers, such as in the Court's Kazaa decision, who provided the "means" of infringement, as opposed to establishing some precondition for the infringement to occur. In this instance, the ISP had not provided the "means" of infringement, which was the BitTorrent system, and all it provided was access to the Internet which can be used for a wide variety of purposes. The ISP had no control over the BitTorrent system and was not responsible for the operation of it. It was also felt that adopting a notification, suspension and termination of customer accounts scheme would not give the ISP power to prevent copyright infringement itself or that it would be a reasonable step to pursue. The rationale for this conclusion derives from the technical complexities associated with determining infringement and the contractual relationship between the ISP and its users.
The ISP was found not to sanction, approve or countenance copyright infringement because it had done no more than provide an Internet service to its users.
In view of the Court's findings on authorisation it was not necessary for it to consider whether iiNet could rely on the "safe harbour" provisions to avoid infringement. Yet it found iiNet did have a repeat infringement policy, which would have allowed it to rely on the provisions to limit the orders the Court could make.
The Court said the law precludes authorisation of infringement, but does not impose a positive obligation on any person to protect the copyright of another.
The decision is a significant blow for the studios who are trying to bring about a change in the behaviour of Internet users. It is impractical for the studios to take action against all of the infringing users, and BitTorrent was developed for distributing large software files, not media files. The studios may appeal the decision to continue a campaign to make ISPs responsible for the actions of their customers.
The decision is available at: http://www.austlii.edu.au/au/cases/cth/FCA/2010/24.html
Author: David Webber, Partner
IN BRIEF UPDATE - 4 February 2010 - Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd [2010] FCA 29 - Thursday, February 04, 2010
In June 2009 the Federal Court of Australia considered the preliminary question of whether Larrikin (a music publisher) is the owner of the copyright in the classic Australian children's song "Kookaburra Sits in the Old Gum Tree" ("Kookaburra"), written and composed in 1934 by Marion Sinclair and the winning entry of a Victorian Girl Guides singing round competition.
On the preliminary question, Jacobson J concluded as between the parties to the proceedings (the Victorian Girl Guides was not a party) the copyright in Kookaburra had been assigned to Larrikin (Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd [2009] FCA 799).
The substantive issue at the trial heard in late October 2009 was whether the 1979 and 1981 recordings of Men at Work's iconic Aussie anthem "Down Under" infringe the copyright in Kookaburra.
In his judgment today, Jacobson J applied the three step approach to comparing competing works as expressed in other recent copyright infringement judgments of the Court, that is:
1. identify the work in which copyright subsists;
2. identify in the allegedly infringing work the part that has been derived or copied from the copyright work; and
3. determine whether the part taken is a substantial part of the copyright work.
There was no dispute between the parties that Kookaburra was an original composition.
His Honour considered that there is a sufficient degree of objective similarity between the flute riff in Down Under and two of the four bars of Kookaburra, and that the Down Under recordings reproduce a substantial part of Kookaburra thus constituting infringement of the copyright in Kookaburra.
His Honour also determined that Colin Hay and Ronald Strykert, the composers of Down Under, and the EMI companies which owned and licensed the copyright in the lyrics and music of Down Under ("respondents"), had made misleading and deceptive representations to royalty income collecting agencies APRA and AMCOS firstly, that the respondents were entitled to 100% of the proceeds from the performance, communication and record sales of Down Under and secondly, that Down Under did not infringe the copyright in any other work.
Significantly, His Honour dismissed the respondents' submission that Larrikin's claim for damages was statute barred given the length of time that has elapsed since the relevant 'representations' were made to APRA.
His Honour emphasised that his conclusions "do not amount to a finding that the flute riff is a substantial part of Down Under or that it is the 'hook' of that song".
In the next round, the Court will need to grapple with the calculation of the percentage of the proceeds from Down Under to which Larrikin is entitled.
Author: Joy Atacador, Partner
IN BRIEF UPDATE - 11 January 2010 - Monday, January 11, 2010
Austin, Nichols & Co Inc v Lodestar Anstalt [2009] FCA 1228 23 October 2009
The Federal Court recently made an Order for Security for payment of costs against Austin, Nichols & Co Inc (“Austin Nichols”), which is ordinarily resident outside the jurisdiction. Austin Nichols attempted to defend the Application for Security for Costs by relying upon a valuable portfolio of several Australian trade mark registrations for WILD TURKEY in relation to whiskey products.
However, it was held by the Court that such assets did not constitute readily realisable assets. The Judge commented that while a receiver may eventually be able to sell the trade marks, the course of doing so might well be fraught with considerable difficulty and delay. On this basis, an Order for Security for Costs was made.
Author: Fiona Brittain, Associate
IN BRIEF UPDATE - 11 January 2010 - Monday, January 11, 2010
Food Channel Network Pty Ltd – v- Television Food Network, G.P [2009] FCA 1445
In a recent Federal Court decision the Court had to consider the circumstances in which leave to appeal to the Full Federal Court would be granted to Food Channel Network Pty Ltd.
The Court applied a two step test in relation to the issue of whether leave to appeal should be granted, as follows:
a) Whether there is sufficient doubt to warrant reconsideration of the matter by a Full Court; and
b) Whether the denial of an opportunity to appeal would involve a substantial injustice supposing the decision of the primary Judge to have been wrong.
The sufficiency of the doubt and the extent of potential injustice involved must be balanced against each other.
In relation to paragraph (a), the Judge found that there was sufficient doubt in relation to the primary Judge’s decision to disallow the Applicant’s reliance at the hearing upon additional affidavit material, which related to ownership and use of the opposed FOOD CHANNEL trade mark. The additional affidavit had been prepared very shortly before the trial after Food Channel appointed lawyers to represent it at the hearing.
The Judge stated:
“Finally, I have doubts whether a sufficient (or any) allowance was made to accommodate the fact that, until the last minute before the trial, Channel was, in effect, a self-represented litigant.”
In addition, there was sufficient doubt in relation to the primary Judge’s assessment of whether the opposed FOOD CHANNEL trade mark was deceptively similar to earlier FOOD NETWORK trade marks owned by the Respondent Television Food Network, G.P.
In relation to paragraph (b), if leave was not granted, the trade mark application would be at an end as the opposition would be upheld. Therefore, the substantive rights would have been finally determined.
It was held that a small amount of doubt about the primary Judge’s decision would be sufficient given the substantial injustice that Food Channel would suffer if leave was refused.
On the basis of the foregoing, the Federal Court granted leave to Food Channel Network Pty Ltd to appeal the primary Judge’s decision delivered on 27 March 2009.
Author: Fiona Brittain, Associate
Commercialisation Australia – are you eligible for funding? - Wednesday, December 23, 2009
Commercialisation Australia is a new initiative designed to take “a radically different approach to commercialising Australian research and ideas”. The initiative is delivered by the Department of Innovation, Industry, Science and Research and is now the primary source of Australian Government assistance for commercialisation.
The scheme is a merit based, competitive program that provides assistance in four different areas. Successful applicants are assigned a Case Manager and have access to Volunteer Business Mentors.
IN BRIEF UPDATE - 21 December 2009 - Monday, December 21, 2009
THE GOOD, THE BAD AND THE UGG-LY
Deckers Outdoor Corporation Inc v Farley (No 5) [2009] FCA 1298
The dispute over liability for the sale of sheepskin boots featuring the "UGG" brand reached its final conclusion on 13 November 2009 when Justice Tracey handed down his decision on the last-remaining issues of copyright infringement, passing off and misleading and deceptive conduct in Deckers Outdoor Corporation Inc v Farley (No 5) [2009] FCA 1298. There had been a total of 23 respondents to the proceeding but a series of settlements and summary judgments had left Deckers Outdoor Corporation Inc to advance its claims only against Hepbourne Pty Ltd.
Justice Tracey held that copyright subsisted in Deckers' "UGG Logo" and its "sun device" and held that Hepbourne had both infringed and authorised the infringement of those copyright works on its "UGG" branded boots. His Honour also found that, based on Deckers' well-established reputation in the UGG brand, Hepbourne had engaged in passing off and misleading and deceptive conduct under ss52 and 53 of the Trade Practice Act 1974 (Cth) (the TPA). Compensatory damages were assessed at $3,000,000 and Justice Tracey ordered Hepbourne to pay $3,500,000 in additional damages for infringing conduct described as "one of the worst of its kind to come before the Court".
Cont...
Serengeti E-Billing Certification - Friday, December 18, 2009
Davies Collison Cave is a Serengeti certified e-billing enabled law firm. Davies Collison Cave has successfully submitted electronic invoices through Serengeti e-billing. The certification label communicates the following:
The certified firm has configured their time and billing software to produce electronic invoices. The additional LEDES 1998B certification indicates that the firm is able to produce LEDES compliant invoices.
The certified firm is actively submitting electronic invoices to one or more clients through the Serengeti system.
IN BRIEF UPDATE - 15 December 2009 - Tuesday, December 15, 2009
A Pensive Woman – Novel Claims Brought in the Supreme Court of Victoria over Claims of "Fake Art"
Blackman & Dickerson v Gant Supreme Court of Victoria Action No. 9785 of 2008
Novel claims
Three artworks are at the centre of Supreme Court proceedings that raise questions of whether the Fair Trading Act 1999 (Vic) will extend to claims that valuations and sales of "fake artworks" constitute misleading or deceptive conduct in the course of trade or commerce.
Background
In late 2008 the artists Charles Blackman and Robert Dickerson commenced proceedings for permanent injunctions preventing the owners of two Melbourne art galleries, Gretz Gallery and Peter Gant Fine Art, from selling what the artists claim are fake artworks attributed to them. The works are signed with the names of the artists and, it is claimed, were held out by the gallery owners (impliedly or otherwise) as authentic works. The artists claim the works are "fakes" and seek orders for the delivery up of the works for destruction and damages.
The artists contend that Peter Gant (the owner of Peter Gant Fine Art in Carlton) valued and sold an art work named Street Scene with Schoolgirl as a work of Blackman, although it was not created or signed by the artist. The buyer of that work returned it to Gant who refunded its purchase price after an expert viewed the work and suggested that it was not authentic. It is claimed that Gant subsequently supplied and valued the same work together with a second contentious work named Three Schoolgirls as works of Blackman to Gretz Gallery in Albert Park, owned by Helen Stewart. The Gretz Gallery then sold the two "Blackmans" on to Robert Blanche on behalf of Baymanta Pty Ltd ("Baymanta").
Gant allegedly sold another work named Pensive Woman directly to Mr Blanche on behalf of Baymanta. Valuations of the work were also provided by Gant as part of this transaction. The artists claim this work was held out to that of Robert Dickerson, when it was not made or signed by the artist. In 2008 Mr Blanche showed the works to the expert who had first questioned the provenance of Street Scene with Schoolgirl. He gave an opinion that the two "Blackmans" were not by the artist, and referred Blanche to Stephen Nall, an expert on the works of Dickerson, concerning the authenticity of Pensive Woman. The expert opinion was that Pensive Woman was not a work of Dickerson.
Status of proceedings and legal issues
Proceedings were commenced in November 2008. Since then the artists have settled out of court with the First Defendant, Helen Stewart of Gretz Gallery, on undisclosed terms. The matter remains on foot against Gant after the parties attempted, unsuccessfully, to resolve the dispute by mediation earlier this year.
Two categories of representations made by Gant are claimed to be "misleading or deceptive" for the purposes of s 9 of the Fair Trading 1999 (Vic). Firstly, the provision of the valuations of the artworks by Gant which the artists claim impliedly represented that each of the artworks were authentic and not fake works. This raises questions of whether the valuations in particular were "misleading" or made in the "course of trade or commerce" for the purposes of the consumer protection provisions. There are property valuation cases that may be useful comparative authorities on this point.
Secondly, that Gant made an implied representation that the "fake Dickerson" was authentic by selling the Pensive Woman to Mr Blanche on behalf of Baymanta. For this claim to be successful the artists will need to demonstrate that the sale of Pensive Woman carries the implied representation that the work was in fact authentic. The artists will place reliance upon expert opinion evidence to establish the works as "fake".
A similar situation was considered by the Federal Court in The Saints Gallery Pty Ltd v Plummer (1988) 80 ALR 525 in a claim run under s 52 of the Trade Practices Act 1974 (Cth). In that case Saints Gallery sold work works on consignment to Plummer, who had previously valued and authenticated works on occasion for the Gallery. The Saints Gallery relayed to Plummer anecdotal provenances for the four paintings before purchase, as told to the Gallery by the consignor. On appeal it was determined that the Saints Gallery had not engaged in misleading or deceptive conduct. Important to this finding was that the Court found (1) there was no basis to conclude that the Saints Gallery had any positive knowledge of the provenance of the works other than that related to Plummer; (2) it was apparent that the Saints Gallery was not the source of the information on provenance; (3) it disclaimed any belief in the truth or falsity of the works' "histories", merely passing it on for what it was worth; (4) Plummer placed no reliance on the Gallery owner's ability to judge the authenticity of the paintings.
A trial date for Blackman & Dickerson v Gant has been scheduled for late March, 2010.
For further information please contact:
Rodney De Boos (Partner) or Sally Wilson (Lawyer) on +61 3 9254 2777
e-mag - IP Update - December 2009 Issue 6 - Tuesday, December 15, 2009
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IN BRIEF UPDATE - 10 December 2009 - Thursday, December 10, 2009
Internet Industry Association refused leave to participate in the iiNet copyright case.
Roadshow Films Pty Ltd v iiNet Limited (No. 2) [2009] FCA 1391
The Internet Industry Association ("the IIA") was recently unsuccessful in its application to participate in the copyright infringement case brought against internet service provider iiNet by Roadshow Films and various other members of the film industry.
The IIA is not a named party in the court proceedings, but sought leave to intervene because this was the first Australian case to consider the internet safe harbour provisions in the Copyright Act. Those provisions are designed to protect carriage service providers in circumstances where their customers have engaged in copyright infringement, such as by downloading illegal copies of films or music.
The IIA told the Federal Court that, as Australia's national representative of the internet industry, it could provide "unique assistance" to the Court, and could offer a broader perspective on the various policy issues surrounding the application of the safe harbour provisions.
In refusing the IIA's application, Justice Cowdroy noted that iiNet had already raised the issues that the IIA intended to raise in the case. Accordingly, His Honour held that there was no new material that IIA could bring to the Court's attention which would assist in the determination of the issues.
The case has now been adjourned after almost five weeks of hearings, and Justice Cowdroy has reserved his decision.
Miriam Zanker, Associate
IN BRIEF UPDATE - 9 December 2009 - Wednesday, December 09, 2009
THE GOOD, THE BAD AND THE UGG-LY
Deckers Outdoor Corporation Inc v Farley (No 5) [2009] FCA 1298
The dispute over liability for the sale of sheepskin boots featuring the "UGG" brand reached its final conclusion on 13 November 2009 when Justice Tracey handed down his decision on the last-remaining issues of copyright infringement, passing off and misleading and deceptive conduct in Deckers Outdoor Corporation Inc v Farley (No 5) [2009] FCA 1298. There had been a total of 23 respondents to the proceeding but a series of settlements and summary judgments had left Deckers Outdoor Corporation Inc to advance its claims only against Hepbourne Pty Ltd.
Justice Tracey held that copyright subsisted in Deckers' "UGG Logo" and its "sun device" and held that Hepbourne had both infringed and authorised the infringement of those copyright works on its "UGG" branded boots. His Honour also found that, based on Deckers' well-established reputation in the UGG brand, Hepbourne had engaged in passing off and misleading and deceptive conduct under ss52 and 53 of the Trade Practice Act 1974 (Cth) (the TPA). Compensatory damages were assessed at $3,000,000 and Justice Tracey ordered Hepbourne to pay $3,500,000 in additional damages for infringing conduct described as "one of the worst of its kind to come before the Court".
For a full report on this decision, please refer to the next edition of the Davies Collison Cave eMag.
Authors: Penny Smith, Lawyer and Ian Pascarl, Partner
World Trademark Review Daily: Application for cancellation of platypus mark dismissed - Wednesday, December 02, 2009
In Wilkshire v The Registrar of Trademarks ([2009] FCA 1222, October 30 2009), the Federal Court of Australia has dismissed an application for the cancellation of a trademark owned by Bombala Council.
The serenity of the scenic Platypus Country in the New South Wales shire of Bombala and adjacent Victorian shire of Delegate has been disturbed by the long-running battle between Bombala Council and Peter Wilkshire in relation to a trademark containing the image of a platypus and the words 'Platypus Country'.
e-patents - December 2009 - Tuesday, December 01, 2009
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
Marion Heathcote wins the award for the Advancement of Trademark Law - Monday, November 09, 2009
The International Trademark Association (INTA) today announces its annual President’s and Volunteer Service Awards winners. These awards honor the individual achievements of trademark owners and practitioners during the past year.
Please see attachment for full details.
Intellectual Property Law Bulletin Vol. 22 No. 5 - Thursday, November 05, 2009
New Zealand Trade Mark Law—the same as Australia?
Nick Holmes DAVIES COLLISON CAVE
Many Australian IP lawyers and trade mark attorneys also practice directly in New Zealand —especially in relation to filing and prosecuting trade mark applications there. It does not take long before Australian practitioners realise that, although NZ trade mark law is similar to Australia, there are numerous subtle differences which can catch out the unwary.
IN BRIEF UPDATE - 29 October 2009 - Thursday, October 29, 2009
Copyright infringement via Satellite.
The recent Federal Court decision of TVBO Production Limited v Australia Sky Net Pty Limited [2009] FCA 1132 (7 October 2009) concerned copyright infringement allegations in relation to the applicants' television series entitled 'Twin of Brothers' made in Hong Kong. Whilst the series was made in Hong Kong, the effect of the Copyright (International Protection) Regulations 1969 and the Copyright Act 1968 (the Act) is that copyright under the Act subsists in a cinematograph film made or first published in Hong Kong as if it had been made or first published in Australia. The applicants settled their claims against two of the respondents on the doorsteps of the Court. The other two respondents did not appear at the trial, and in their absence the applicants had to prove the case they had pleaded on the balance of probabilities (but without having to deal with any evidence from the respondents).
In the pleadings, the respondents admitted that each of the episodes was a cinematograph film in which copyright subsisted. As such, the copyright in the episodes included the exclusive right to communicate the episodes to the Australian public. To communicate the episodes in Australia without the licence of the copyright owner would therefore amount to copyright infringement. The definition of 'communicate' includes to 'make available online or electronically transmit (whether over a path, or a combination of paths, provided by a material substance or otherwise) a work or other subject-matter…'
One of the respondents (a Taiwan-based corporation) received and intercepted an authorised transmission of one of the episodes of the Twin of Brothers series, and then retransmitted it from Taiwan via satellite to subscribers of another of the respondent's pay television services in Australia. This was held to be a communication by electronic transmission to the public in Australia, and the Court found that copyright in the episode had been infringed. It was also found that one of the directors (who was the chairman, the most senior executive active in the respondent's business and who represented it in commercial negotiations) was personally liable on the grounds that he played a significant role in the conduct of the corporate respondent in relation to the transmission of the episode. The Court inferred that the director authorised the infringing conduct. The Court ordered injunctive and declaratory relief against both respondents.
Author: Liz Lawson, Associate
IN BRIEF UPDATE - 27 October 2009 - Tuesday, October 27, 2009
Commercialisation Australia Initiative.
On 21 October 2009 the Government unveiled details of the $196 million Commercialisation Australia initiative designed to fill the gap left from the axing of the Commercial Ready Scheme in 2008. Commercialisation Australia will begin operating in 2010 and involves a multi-tiered approach to assist inventors, innovative firms, researchers and entrepreneurs to rework their ideas into successful commercial projects. Participants will receive specialist advice and services from CEOs and industry mentors and successful applicants will be awarded up to $250,000 for proof of concept activities and repayable funding of up to $2 million for early stage development and commercialisation activities.
Senator Kim Carr, Minister for Innovation, Industry, Science and research said:
“The radical new program for commercialising research will take a completely new approach to innovation assistance. It will tailor assistance to applicants’ needs, not fit the applicant to the program”
“Commercialisation Australia is specifically designed to boost early stage commercialisation by leveraging private sector capital and expertise”
Senator Carr also called for expressions of interest for board membership of CA, volunteer mentors and case managers.
The CA program affords some relief to struggling inventors, innovative firms, researchers and entrepreneurs but the $196.1 million over four years and $86 million each year thereafter falls well short of the funding allocated for the program’s predecessor Commercial Ready with its budget of $1 billion.
Author: Kimberley Trainor, Associate
IN BRIEF UPDATE - 23 October 2009 - Friday, October 23, 2009
China's Disclosure of Origin law.
On 1 October 2009 China amended its patent law to require the disclosure of the origin of a genetic resource used in an invention for which patent protection is sought. Similar provisions are already in force in Bolivia, Colombia, Ecuador, Peru, Belgium, Brazil, Costa Rica, Denmark, Egypt, India, Norway, South Africa, Sweden, and Switzerland. One goal of these provisions is to ensure that the providing country obtains some of the benefits from products developed using resources obtained within its borders.
China is a country with abundant genetic resources and victim to a drain of genetic resources by biopiracy. For example, genetic materials from wild soybeans, Chinese gooseberry and even the famous Beijing duck have been taken away to develop hybrids which are patented then imported back into China.
Aiming to protect Chinese genetic resources, amendments to Article 5 and Article 26 of Chinese patent law regulate the use of genetic resources in a patent. Under the amended Article 5, if the acquisition or use of genetic resources violates relevant laws and regulations of China, then no patent will be granted for any invention that relies upon such genetic resources. Amended Article 26 further requires that, for an invention that relies on such genetic resources, an applicant must disclose in the patent application the direct and the original source of such genetic resources, and if the applicant cannot identify these, he or she must specify reasons for the failure to do so. Failure to comply with such disclosure requirements could result in the denial or invalidation of a patent.
For now, the practical implications of the amended law are that an applicant must fill in and submit a form prepared by China's State Intellectual Property Office (SIPO), named "Form for disclosure of the source of genetic resources", to indicate the source of the genetic resource. If the applicant cannot indicate the source, he or she must state why not.
Author: Anne Hendtlass, Associate
IN BRIEF UPDATE - 21 October 2009 - Wednesday, October 21, 2009
A mere collocation? - Smith & Nephew Pty Ltd. v. Wake Forest University Health Sciences
In the recent decision of Smith & Nephew Pty Ltd. v. Wake Forest University Health Sciences [2009] FCAFC 142 (9 October 2009), the Full Federal Court has delivered what is likely to be a controversial judgement in relation to a "combination patent". The case was an appeal by Smith & Nephew against a decision of a single judge to grant an injunction preventing them from entering the negative pressure wound therapy market.
The case involved a claim directed to an apparatus for applying negative pressure to a wound beneath a fluid-impermeable seal, wherein the apparatus is present in an aseptic package. It was agreed by the parties that with the exception of the aseptic package, all of the integers of the apparatus interacted to form a new product and result. However, because the apparatus and the aseptic bag were determined not to interact to bring about the new result (i.e. the application of negative wound pressure), the Court stated that "...they form a mere collocation of the apparatus on the one hand and the aseptic package on the other". On this basis, claim 49 was deemed invalid because it fails to define a patentable combination.
In arriving at its decision, the Court stated that the primary judge erred in not considering the question of whether the claim was a mere collocation separately from the question of whether the claim was novel. The Court's determination that the claim was a mere collocation was therefore reached without any apparent consideration of novelty. In the circumstances of the present case this approach appears questionable because if the apparatus itself was novel, then it follows that the apparatus and the aseptic package together cannot be a mere collocation, because the combination of the apparatus and the aseptic bag includes a novel feature. In this regard, it is well established law that where a claim comprises a number of integers, at least one of which is novel, the absence of a working interrelationship between the integers does not render the claim invalid.
This decision potentially has negative implications for patent claims which include one or more essential integers that do not interact with other integers of the claim to bring about a new product or result.
We will eagerly await the approach taken by the single judge in assessing whether the claim is a "mere collocation" when the case goes to trial next year.
Author: Nigel Lokan, Associate
e-mag - IP Update - September 2009 Issue 5 - Wednesday, September 30, 2009
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IN BRIEF UPDATE - 16 September 2009 - Wednesday, September 16, 2009
IP Australia Encourages Rapid Examination of "Green Patent Applications".
On 15 September 2009 IP Australia released a public statement announcing it would be taking action to assist innovators with green technologies to fast track their patent applications through the Australian patent examination process. This initiative is intended to contribute to reducing the time to market for green technologies.
Expedited examination of Australian patent applications is already available where rapid examination is in the public interest or where special circumstances make rapid examination desirable. A request for expedited examination must be in writing and must include reasons why the particular patent application should examined ahead of its turn. Reasons currently accepted by IP Australia as justifying a request for expedited examination include an explanation that commercial dealings (such as the grant of a licence in relation to technology covered by the patent application) depend upon the early grant of a patent.
Following this announcement the simple statement that a patent application relates to a field of green technology will constitute a suitable reason in support of a request for expedited examination. Applicants of Australian patent applications covering green technologies (likely to be interpreted quite broadly) should give consideration to requesting expedited examination where there is a commercial motivation to do so. After filing a request for expedited examination an applicant can expect to receive a first examination report within a matter of two to four months.
Authors:
Kathryn Morris, Partner
Mark Roberts, Partner
IN BRIEF UPDATE - 7 September 2009 - Monday, September 07, 2009
Duty to Research Does Not Amount to a Duty to Invent.
The Australian Full Federal Court has upheld the first instance decision of Justice French in University of Western Australia v Gray 9[2009] FCAFC 116 (3 September 2009)). This complex case resulted from the claim by the University of Western Australia (UWA) that it had proprietary rights in relation to three families of patents invented wholly or in part by Dr Bruce Gray (Dr Gray), which relate to the production and use of microspheres for targeted treatment of human tumours. The patents were subsequently transferred to a company now known as Sirtex Medical Ltd. in exchange for shares in the company, reportedly valued at A$60-90 million. It was UWA’s position that Dr Gray conducted the work leading to the inventions while he was employed by UWA as its Professor of Surgery. Under the terms of his employment contract Dr Gray was required to teach and to undertake research in his field. He was also required to comply with obligations under the University’s statues.
In a single judgment Full Court Justices Lindgren, Finn and Bennett agreed with Justice French that the duty to research in Dr Gray’s employment contract did not give rise to an implied duty to invent, even though the nature of Dr Gray’s research was such that inventions could quite likely result. In making this decision the Full Court noted the distinction between ownership of employee inventions in the University context, in contrast to that in the private sector. Supporting factors in reaching the decision were that Dr Gray was not under a duty to invent anything, he had the freedom to choose the direction of his research, he was not under an obligation of secrecy and was free to publish (even to the detriment of potential patent applications), he was dependent upon significant sources of external funding to support his research and was reliant upon collaborations with researchers in other institutions.
The Full Court also agreed with the primary judge’s finding that the obligations of the UWA Patent Regulations (which relevantly required University academics to notify it of inventions, thus allowing the University the opportunity to exercise its rights in relation to an invention) could not be imported into Dr Gray’s employment contract because UWA had failed to maintain the patent committee that was an essential part of UWA’s obligations under the Regulations. Although not a matter in dispute in the appeal the Full Court referred to Justice French’s finding that even if the Patent Regulations were in force they could not have validly caused appropriation of property that did not belong to UWA; only by express contractual terms could intellectual property rights be acquired.
In light of this decision, and although there is a prospect that leave to appeal to the High Court in this matter may be sought, Australian Universities and other research institutions will have grave concerns regarding the ownership of intellectual property invented by employees not bound by a specific duty to invent within their employment contracts or where assignments of intellectual property rights have not been made. However, a more fundamental question remains – can a researcher realistically be bound by a duty to invent? While inventions may reasonably be expected to arise from research, it does not necessarily follow that researchers can be expected to make inventions?
Author: Mark Roberts, Partner
IN BRIEF UPDATE - 2 September 2009 - Wednesday, September 02, 2009
Intellectual Property Protection in Fashion Survey 2009.
IP Australia is currently conducting a short survey for the Fashion Industry in Australia. The short survey is intended to assess whether IP Australia is providing information that is “useful and interesting” to the Australian Fashion Industry. Broadly speaking, the survey assesses the level of awareness in the Australian Fashion Industry about IP protection and whether the Fashion Industry has been accessing useful publications put out by IP Australia for the Fashion Industry, such as Fashion Rules.
IP Australia estimate that the survey will take approximately 90 seconds.
If you’re involved in the Fashion Industry and interested in completing the survey please click here.
Author: Elizabeth Godfrey, Senior Associate
IN BRIEF UPDATE - 25 August 2009 - Tuesday, August 25, 2009
E & J Gallo Winery v Lion Nathan Australia Pty Limited
In the long-running dispute between E & J GALLO WINERY and LION NATHAN AUSTRALIA PTY LIMITED regarding the trade mark BAREFOOT, GALLO has been successful in obtaining special leave to appeal the judgment of the Full Federal Court. In its judgment the Full Federal Court concluded that GALLO's non-use of its trade mark in Australia within the prescribed period of three years had the consequence that the trade mark should be removed from the Australian Trade Marks register. The leave to appeal application raised two specific issues.
The first issue is whether there is use of a registered trade mark in Australia by the registered owner of the trade mark in circumstances where the trade mark is applied to goods outside Australia and the registered owner of the mark is not aware that those goods are being offered for sale or sold in Australia. The second issue to be considered by the Court is whether, in the circumstances envisaged by the first question, the only use of the registered trade mark in Australia is the use made by the wholesaler or retailer in Australia who offers the goods for sale rather than the registered owner of the trade mark.
These issues have implications for all overseas owners of trade marks registered in Australia in circumstances where goods bearing the registered trade mark are offered for sale in this country by unrelated third parties. The issues raised by Gallo are likely to be considered by the High Court before the end of this year.
Author: Trevor Stevens, Partner
IN BRIEF UPDATE - 18 August 2009 - Tuesday, August 18, 2009
Important Change to Export Market Developments Grant Scheme in Relation to Intellectual Property.
The Export Market Development Grants (EMDG) Scheme has been in existence since 1974 and has provided considerable assistance to Australian exporters of goods and services over the years. The Scheme encourages small to medium sized Australian businesses to develop export markets by making available the opportunity to obtain a reimbursement of up to 50% of certain expenditure above a $10,000.00 threshold. To access the scheme for the first time, a business needs to have spent at least $10,000.00 over two years on eligible export marketing expenses.
The recent amendment of interest to intellectual property owners is that a qualifying "product" for the purposes of the grant is now an intellectual property right (including know-how but other than a trade mark) that resulted substantially from research or work done in Australia. In the case of trade marks, the mark must have been first used in Australia or have had its significance or value increased because of its use in Australia. This opportunity could be of considerable benefit to eligible businesses which develop intellectual property rights in Australia and seek to commercialise the subject matter of those rights overseas; particularly in the light of the costs of registering intellectual property rights overseas, generally at a point in time when an income stream has yet to be realised.
The Scheme now allows a claim for reimbursement to be made in respect of up to 50% of the payments made to third parties (such as patent and trade mark attorneys) for the grant, registration or extension of intellectual property in countries other than Australia or New Zealand. It also provides for reimbursement of up to 50% of the cost of insurance premiums paid for the protection against possible infringement of eligible intellectual property in countries outside Australia.
The maximum amount which can be received by an eligible business under the Scheme is $200k and an eligible business must have a turnover of less than $50m.
Whilst not all businesses will be able to comply with the rules of eligibility for grant, it is a scheme which all small to medium sized businesses incurring expenditure on prosecuting or maintaining intellectual property rights overseas (other than in New Zealand) should consider.
Author: Rodney De Boos, Partner
IN BRIEF UPDATE - 10 August 2009 - Monday, August 10, 2009
When (unquantifiable) loss is more - the latest interlocutory battle between originator and generic.
In the recent Federal Court decision of Sigma Pharmaceuticals (Australia) Pty Ltd (ACN 004 118 594) v Wyeth [2009] FCA 595 the patentee, Wyeth, successfully applied for interlocutory injunctive relief restraining Sigma from supplying a generic drug used to treat patients suffering from central nervous system disorders including depression.
Sigma conceded that there was a serious question to be tried as to infringement. Although there was conflicting evidence led by the parties in relation to invalidity, the Court found that Sigma had established a prima facie case for lack of inventive step and no new manner of manufacture.
Wyeth successfully argued:
• it would suffer irreparable harm (for which damages would not be an adequate remedy) if the injunction were not granted. This was because if the generic product became available, Wyeth would lose market share and would be forced to reduce the product's price to remain competitive. Further, other generic companies would likely also enter the market.
• the balance of convenience lay in favour of granting the injunction. This was because Wyeth's product had been on the market for some time whereas Sigma had only just launched its product; Sigma proceeded with its launch after it became aware of Wyeth's patent; and a change in the appearance of the medication (that is, if the interlocutory injunction was granted and then Wyeth succeeded at trial) could cause patients to become confused and not take their medication regularly.
For a full report on this decision, including its implications, please refer to the next edition of the Davies Collison Cave eMag.
Authors:
John Hannebery, Partner
Liz Lawson, Associate
IN BRIEF UPDATE - 10 August 2009 - Monday, August 10, 2009
Patent Re-examination Re-examined.
On 2 June 2009, Justice Kenny of the Federal Court ruled on an application made by BMW Plastics Pty Ltd which sought an order under Section 97(3) of the Patents Act that the Commissioner of Patents be directed to re-examine the specification of Australian Standard Patent No. 2001235262 owned by VIP Plastic Packaging Pty Ltd. Justice Kenny refused to make the order sought by BMW Plastics.
VIP had in August 2008 commenced proceedings against BMW Plastics for infringement of the VIP Patent. BMW Plastics, by way of its defence, denied infringement of the VIP Patent and cross-claimed alleging that the VIP Patent was invalid and sought orders that it be revoked.
Sub-section 98(1) of the Patents Act makes it clear that re-examination under section 97 is limited to the issues of novelty and obviousness. Sub-section 98(1) also makes it clear that, on a re-examination, the Commissioner must "ascertain and report on … to the best of his or her knowledge". Further, by virtue of sub-section 98(2), the Commissioner is limited to considering the prior art base as disclosed in documents.
Following an adverse report on a complete specification by the Commissioner, the patent applicant or patentee may, within two months of the adverse report, file a statement disputing the whole or any part of the report. Where the re-examination is directed under section 97(3), a copy of the Commissioner's report and any statement filed by the patent applicant/patentee must be given to the Court that gave the direction.
VIP, for whom Davies Collison Cave acted, opposed BMW Plastics' application which was filed in May 2009.
In support of its application, BMW Plastics submitted that the Court should order re-examination because the matters in issue were appropriate to be determined by the expertise of the Patent Office and the determination of these issues was likely to avoid expense.
Justice Kenny agreed with VIP that the Commissioner's report after re-examination would not reduce the cost of the proceeding and expedite its determination. Firstly, in the Judge's opinion, the Commissioner's report is not binding on the Court and the Court would still have the task of deciding the issues of novelty and lack of inventive step by reference to admissible evidence. Further, regardless of the lack of novelty and inventive step grounds, there will be a need for evidence, including expert evidence, to be put before the Court on various other issues, particularly the other invalidity grounds of attack relied upon by BMW Plastics.
For a full report on this decision, including its implications, please refer to the next edition of the Davies Collison Cave eMag.
Author: John Hannebery, Partner
Legal Strategy Review - Interview with Rodney De Boos - Friday, August 07, 2009
Spring 2009
The introduction of multi-disciplinary practices to Australia’s legal landscape has yet to lead to the major overhaul in the sector that some industry experts predicted. But it’s only a question of time, says Davies Collison Cave’s Rodney De Boos.
Please see attachment for the full article.
IN BRIEF UPDATE - 7 August 2009 - Friday, August 07, 2009
Verse 1 wine hits wrong note by breaching Jane Rutter's copyright.
Rutter v Brookland Valley Estate Pty Ltd [2009] FCA 702.
Australian flautist Jane Rutter recently won a copyright infringement case against a Western Australian winery, Brookland Valley Estate. In 1999 Ms Rutter licensed Brookland Valley to print part of her musical composition, "Blo", on the labels of bottles in its new "Verse 1" wine range, for a $35,000 fee. Brookland Valley's use of "Blo" was limited to 90,000 bottles of two varieties of wine only.
Despite the 90,000 bottle limit being exceeded within the first 12 months, Brookland Valley continued to use labels featuring 12 bars of Ms Rutter's musical work until August 2007, by which time it had been used on more than 5 million bottles of five different varieties of Verse 1 wine. A revised version of the labels was used from January 2006 which featured only 4 bars of Ms Rutter's music, but did not attribute Ms Rutter as composer. Ms Rutter sued Brookland Valley for copyright infringement in April 2007.
Justice Buchanan held that Brookland Valley had infringed Ms Rutter's copyright by continuing to use Ms Rutter's composition on Verse 1 labels for at least 7 years after the copyright licence had expired. The music printed on the labels was held to be a "substantial part" of Ms Rutter's musical work as those bars contained "the crux of the melody". Justice Buchanan also held that Ms Rutter's moral rights had been infringed as Brookland Valley failed to attribute her as the composer from January 2006 onwards.
Justice Buchanan ordered Brookland Valley to pay $208,684 in compensatory damages (based on a royalty of 2 cents for each bottle exceeding the initial 90,000 bottle limit), plus interest of $84,693. Bottles that had been produced and sold outside the 6-year limitation period were excluded from the damages amount. Brookland Valley was also ordered to pay $150,000 in additional damages given its "unsatisfactory and flagrant disregard" of Ms Rutter's rights for approximately 8 years.
The decision serves as an important warning to copyright licensees to be vigilant in ensuring that copyright licences are adhered to. If circumstances change or if a copyright work is used beyond the expiry of a licence, the licence terms should be re-negotiated or renewed.
Author: Miriam Zanker, Associate
High Court sends warning about "eleventh-hour" amendments in litigation - Friday, August 07, 2009
Aon Risk Services v Australian National University [2009] HCA 27 (5 August 2009).
In an important decision relating to the conduct of commercial litigation, the High Court has distinguished the long-standing decision of Queensland v JL Holdings Pty Ltd that is often relied on when parties in litigation seek to make “eleventh-hour” changes to their case.
IN BRIEF UPDATE - 31 July 2009 - Friday, July 31, 2009
Help Help Driver in Danger – No copyright to the rescue!
State of Victoria v Pacific Technologies (Australia) Pty Ltd (No.2) [2009] FCA 737 (10/06/09)
Pacific Technologies (Australia) Pty Ltd ("Pacific Technologies") created the words “Help-Help-Driver-in-Danger-Call-Police-Ph.000” ("the Help Words") as a repeat message to be displayed by cab drivers for a driver duress alarm display.
The matter came before the Federal Court following a directions hearing in the Copyright Tribunal of Australia in respect of a reference to the Tribunal by Pacific Technologies. In the Tribunal, Pacific Technologies claimed that it was the author of the Help Words and that copyright subsists in the Help Words. Pacific Technologies sought reasonable remuneration from the State of Victoria for the use of the Help Words on the basis that the Help Words constituted an original literary work.
Before the amount of any reasonable remuneration was determined, Justice Emmett considered, as a preliminary question, whether copyright subsisted in the Help Words.
Justice Emmett held that the Help Words did not constitute an original literary work. Specifically, Justice Emmett noted that:
• Generally, short sentences, including titles, slogans and other short phrases have consistently been refused protection both in Australia and the United Kingdom. Examples of such short sentences refused copyright protection included "Where there's a will there's a way", "The Lawyers Diary 1986" and "Opportunity Knocks". Such works are too insubstantial or short to qualify as a literary work.
• Even though skill and labour has been expended on the creation of the Help Words, the purpose of the Copyright Act is not to protect original skill and labour. The Help Words are not a form of literary expression. They are no more than a simple instruction.
• Copyright protects the expression of ideas and not the ideas themselves. The Help Words “simply indicate a desire to convey the notion that a taxi driver in duress seeks urgent assistance. They do no more than state an idea. The expression is inseparable from the fundamental idea that is being conveyed by the words”.
• From a public policy perspective, it would be inappropriate for copyright to subsist in the Help Words otherwise a taxi driver in trouble who had pressed the duress alarm to display the Help Words or a passerby repeating the Help Words to the authorities may be found to infringe copyright.
This case was heard before the High Court handed down its decision on the IceTV case. However, Justice Emmett's findings are consistent with the IceTV decision.
Author: Elizabeth Godfrey, Senior Associate
e-mag - IP Update - July 2009 Issue 4 - Thursday, July 23, 2009
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Lynx Engineering Consultants Pty Ltd v The ANI Corporation Limited trading as ANI Bradken Rail Transportation Group - Thursday, May 28, 2009
Lynx Engineering Consultants Pty Ltd v The ANI Corporation Limited trading as ANI Bradken Rail Transportation Group (No. 2) [2009] FCA 363 (17 APRIL 2009)
In 2006 Lynx commenced these proceedings by way of an application for pre trial discovery against Worley Parsons. Subsequently, Lynx issued a Statement of Claim against the Respondents variously claiming misuse of confidential information, infringement of copyright and misleading and deceptive conduct. After extended delays in the matter, these 2 applications were brought by the 2 Bradken company Respondents and Worley Parsons seeking to strike out substantial parts of the Statement of Claim.
The Importance of Good Laboratory Notebook Practice - Tuesday, May 19, 2009
Poor laboratory notebook documentation could cost you! Your laboratory notebooks can be critical in establishing your rights to an invention.
Reproduced with permission from the Royal Australian Chemical Institute www.raci.org.au.
e-mag - IP Update - April 2009 Issue 3 - Tuesday, April 07, 2009
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Confidentiality In Intellectual Property Litigation - Monday, March 23, 2009
By its very nature intellectual property involves the development and protection of monopolies. Whether the monopoly covers a new invention, a trade mark, a new design or an artistic work, owners of intellectual property want to protect their monopolies. Protecting these monopolies can mean litigating against close competitors. In such litigation it may become necessary to disclose confidential information which neither party wants to place in the hands of the other party, or the public.
Outline Of Mediation In The Federal Court Of Australia - Tuesday, February 10, 2009
A Quick Guide For Clients
Most intellectual property disputes in Australia are litigated in the Federal Court of Australia. For some time the Federal Court of Australia Act 1976 (FCA) and the Federal Court Rules of Procedure (FCR) have made provision for disputes to be resolved by mediation.
Senator Kim Carr, Minister for Innovation, Industry, Science and Research announced a new Chair to ACIP - Tuesday, December 23, 2008
On 22 December, Senator Kim Carr, Minister for Innovation, Industry, Science and Research announced a new Chair and four new appointments to the Advisory Council on Intellectual Property (ACIP). The new council chair, Mr Leon Allen is a partner of the patent and trade mark firm Davies Collison Cave, and vice president of The Institute of Patent and Trade Mark Attorneys of Australia.
e-mag - IP Update - December 2008 Issue 2 - Thursday, December 18, 2008
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Customs Combats Counterfeiting at the Border, Proposed Amendments to the Australian Customs Seizure Scheme - Tuesday, December 16, 2008
The Australian Customs Service (Customs) has released a Consultation Paper regarding Proposed Amendments to the Australian Customs Notice of Objection Scheme. The Notice of Objection Scheme allows Customs to seize goods that are imported into Australia that infringe registered trade marks and copyright material notified by IP rights holders (objector).
Designers under Review - Wednesday, December 03, 2008
In two design infringement cases brought by Australian fashion designer, wholesaler and retailer, Review, the Federal Court of Australia was asked to consider if the registration of a design for a dress was infringed and valid.
Venturing into the unknown - Monday, November 24, 2008
The Minister for Innovation, Senator Kim Carr recently released a report entitled “venturousaustralia – a Report on the Review of the National Innovation System”. Three recommendations in the report have a potential significant impact on Australian Intellectual Property law.
Australian Government Announces Resale Royalty Scheme for Visual Artists - Monday, November 10, 2008
A new royalty scheme will be introduced for Australian visual artists as a result of legislation to be enacted by the Federal Government. The legislation has priority status for the first session of Parliament early next year, with the scheme to be implemented by 1 July 2009.
The scheme will grant visual artists a right to a five percent (5%) royalty payment on secondary sales of their works. The right will trigger on resales exceeding $1,000 for the artist’s lifetime plus 70 years following their death. Liability for payment will be shared between the parties to the sale. An agency to be appointed by government tender will collect and distribute the royalty payments.
The scheme has implications for all visual artists, buyers and sellers of art and intermediaries in the art market, including auction houses and commercial galleries.
Prior Public Presentation of Posture Top Mattress Causes “International” Dispute. - Monday, October 13, 2008
When will public disclosure of a design at an exhibition mean that a design registration granted on a subsequently filed design application be invalid? This was the question addressed by the Full Court of the Federal Court of Australia in Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2008] FCAFC 142.
e-mag - IP Update - September 2008 Issue 1 - Friday, October 03, 2008
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Australian Patent Litigation To Be Streamlined - Friday, September 12, 2008
The Australian Federal Court has moved to introduce measures to streamline the management of patent litigation. The Court has indicated that the aim of the procedures is to accelerate the identification of issues and generally to improve the facilitation of the trial process in patent proceedings. The overriding policy behind the new procedures is to reduce the time and costs associated with patent litigation.
Court Finds Witness Statement From Overseas Proceedings Discoverable in Australian Proceedings - Friday, September 12, 2008
Australian Medic-Care Company Ltd v Hamilton Pharmaceutical Pty Limited (No 3) [2008] FCA
It is not uncommon for an owner of intellectual property in more than one country to be involved in multi-jurisdictional litigation. When that happens, and the litigation involves the same parties and similar issues, it is important to be mindful that documents (such as witness statements) filed in one of the Court proceedings can be discoverable in the other proceeding as demonstrated in the decision of Lander J on 24 June 2008 in Australian Medic-Care Company Ltd v Hamilton Pharmaceutical Pty Limited (No 3) [2008] FCA (‘the Hamilton decision’).
Repeal of the Safeguard Clause - Friday, September 12, 2008
In relation to an International Registration, the so called ‘safeguard clause’ in the Madrid Protocol provides that where the holder’s country of origin is party to both the Madrid Protocol and Madrid Agreement, the provisions of the Agreement will govern the treatment of designations against that International Registration of member states which are also party to both treaties. With effect from 1 September 2008, the safeguard clause will be repealed and the Protocol will now govern the affected designations.
When will a boast be misleading and deceptive? - Friday, June 27, 2008
The recent decision of Edmonds J in Bannerhey Pty Ltd v 1800 000 000 Pty Ltd [2008] FCA 53 considers whether the respondents engaged in misleading and deceptive conduct. The allegations were based upon representations made in relation to the sale of master licences to use, and to licence others the use, the telephone number ‘1800 000 000’ and relevant know-how. This case highlights the fact that findings on issues of credit will be critical when the majority of the alleged representations are oral. This is because whether conduct is misleading or deceptive is ultimately a question of fact, to be determined in the context of known facts and circumstances, and in situations where there is conflicting evidence a Judge’s findings on credibility will determine which evidence is to be preferred.
e-patents - June 2008 - Tuesday, June 10, 2008
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
Developments in Australian Trade Mark Law - Friday, May 30, 2008
The Trade Marks Amendments Act 2006 (Cth) and Intellectual Property Laws Amendment Act 2006 (Cth) have introduced significant changes to the Trade Marks Act 1995 (Cth).
Please click on the article to read more.
Government Review of Copyright Exceptions that Permit Format Shifting – Submissions Invited - Monday, February 25, 2008
The Government is currently reviewing the operation of two copyright exceptions which allow for "format-shifting", that is, they permit photographs and cinematograph films to be produced in a different format for private use, subject to certain conditions. These exceptions are found in sections 47J and 110AA of the Copyright Act 1968 (Cth).
To contuine reading please click on the attached pdf.
Submissions are required to be made by 29 February 2008.
MYTHBUSTED: No Misleading or Deceptive Conduct - Friday, February 22, 2008
The recent decision of the Full Federal Court in Knight v Beyond Properties Pty Ltd looks at whether the producers and distributors of the popular TV series, Mythbusters, engaged in misleading or deceptive conduct and passing off. The case highlights the importance of obtaining a trade mark registration to protect your rights in a trade name which is to some extent descriptive.
The Full Federal Court unanimously dismissed a claim that Beyond Productions, the Discovery Channel, SBS and Foxtel (“Beyond”) engaged in misleading and deceptive conduct (under section 52 of the Trade Practices Act) and passing off in producing and distributing a series of television programs entitled “MYTHBUSTERS” (“the Mythbusters TV Show”) and three spin-off books from the series.
The Importance of Taking Settlement Offers Seriously - Friday, February 22, 2008
Even though the Appellant in this case was partially successful in its appeal, it recovered less by way of damages and costs than it would have recovered if it had accepted a “Calderbank” settlement offer made over a year before the appeal was heard.
The Federal Court upheld the Appellant’s appeal and found that the Respondent had engaged in misleading and deceptive conduct by offering for sale and selling photo boxes in very similar packaging to Woodtree’s photo boxes. However, the Appellant failed in the claim that its labels, made up of a photograph and unstylised text describing the product, qualified for protection as “drawings” under the Copyright Act 1968 (Cth).
Design/Copyright update - June 2007 - Thursday, June 07, 2007
Designers are encouraged to protect the appearance of new products by registration under the Designs Act rather than by reliance on underlying copyright which will subsist in most cases. This results from the legislative framework of the Copyright Act which limits the applicability of copyright when products have been produced in quantity (industrial application of the design). The part of the Copyright Act by which this regime is put in place (Part III, Div VIII) is quite complex and has given rise to a number of difficulties in interpretation. Exemptions from copyright infringement arise when the design is the subject of a design registration or, if not registered, by the industrial application and sale of products in accordance with the design. However in the latter case, an exception arises when the copyright work is a work of artistic craftsmanship.
e-patents - June 2007 - Thursday, June 07, 2007
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
World Trademark Review - Key aspects of trademark enforcement in Australia - Thursday, March 29, 2007
Many countries have similar systems for the registration and enforcement of trademarks. However, there will inevitably be differences, often borne out of the different jurisprudential bases on which these systems are based.
This article looks at trademark enforcement in Australia and highlights some aspects of the Australian legislation which differ from the US system. It also examines the main border protection methods available in Australia to trademark owners.
To contuine reading please click on the attached pdf.
Pharmaceutical Extensions: A listing in the ARTG is an inclusion - Friday, March 09, 2007
The Full Federal Court has affirmed the previous findings of the Commissioner of Patents and a single judge of the Federal Court that, where no pre-TGA marketing approval was given, an export listing in the Australian Register of Therapeutic Goods (ARTG), prior to registration to permit marketing in Australia, is to be considered as the first inclusion in the ARTG for the purpose of determining the first regulatory approval date in calculating a patent extension term.
Filing Design Applications in Australia - Friday, March 09, 2007
There are no forms in Australia that require the applicant’s signature at the time of filing. No Power of Attorney is necessary, however a number of documents and particulars are required to process an application.
Changes to IP Australia's Fees - Friday, March 09, 2007
Changes to IP Australia’s fees and costs under the Designs, Patents, Plant Breeder's Rights and Trade Marks Acts came into effect on 1 March 2007.
e-patents - February 2007 - Friday, February 09, 2007
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
Passing of New Copyright Laws - Tuesday, February 06, 2007
Amendments made to the Copyright Act 1968 (Cth) in Australia by the Copyright Amendment Act 2006 (Cth) are now in full force.
Changes to the Australian Trade Marks Act 1995 - Friday, November 24, 2006
The Trade Marks Amendment Act 2006 (“the Amendment Act”) received Royal Assent on 23 October 2006. The Amendment Act results from a review undertaken by IP Australia to ensure the Act was meeting the needs of Australian businesses and users of the Australian trade mark system.
Swiss-style use claims vs method of treatment claims - Friday, November 24, 2006
A recent patent office decision has held that addition of “method of treatment” claims to a specification that has “Swiss-style use” claims is not an allowable amendment after acceptance of the application.
Injunction granted against PBS-listed generic - Friday, November 24, 2006
Merck & Co Inc v GenRx Pty Ltd [2006] FCA 1407 (31 October 2006, Moore J)
The Federal Court has granted an injunction restraining GenRx from importing into Australia a generic version of Merck’s FOSAMAX osteoporosis treatment (alendronate). Moore J granted the injunction in a judgment delivered two days after the hearing and on the day of the scheduled importation.
Serious questions headed for a High Paced Verdict - Monday, October 23, 2006
CSL Limited v GlaxoSmithKline Australia Pty Ltd [2006] FCA 1301 (3 October 2006, Weinberg J). Also discussed in this case note are the amendments to the Australian Patents Act 1990, to allow springboarding for purposes connected with obtaining regulatory approval.
The change is here - The Intellectual Property Laws Amendment Act 2006 (Cth) - Sunday, October 22, 2006
In our May IP Law Update we reported on the changes that the Intellectual Property Laws Amendment Bill 2006 proposed to make to several pieces of Australia’s intellectual property legislation. On 27 September, 2006, the Intellectual Property Laws Amendment Act 2006 received Royal Assent.
Are you aware of your new document retention obligations? - Monday, September 18, 2006
Both individuals and organisations should be aware of the new Victorian laws that create increased document retention obligations. As part of the Victorian government’s response to the legal and policy implications of the McCabe tobacco case, new Victorian legislation came into effect on 1 September 2006.
Pharmaceutical Extensions - Monday, September 18, 2006
The topic of pharmaceutical patent term extensions has again recently been the subject of consideration before the Patent Office and the Federal Court. In two separate proceedings, the issue of whether the Commissioner is entitled to amend the Register to reflect a new (shorter) extension period was considered by the Federal Court.
Assessing Sufficiency: A Temporal Problem - Monday, September 18, 2006
The Patents Act 1990 (Cth) requires that a specification fully describe the invention, including the best method known to the applicant for performing the invention. However, the Act is silent on the actual date at which the specification is to be considered for compliance with these requirements.
Kovan Engineering (Aust) Ltd v Gold Peg International Pty Ltd - Monday, September 18, 2006
Often in the commercial world, parties rely on a common under-standing or the otherwise inadequate protection of a handshake (or even a “shrugging” of the shoulders) rather than take the time to formally document the terms of an agreement. The recent decision of the Full Court of the Federal Court of Australia in Kovan Engineering (Aust) Ltd v Gold Peg International Pty Ltd illustrates why this is not a good idea.
e - patents August 2006 - Wednesday, August 09, 2006
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
Business Method Patents in Australia - Tuesday, August 08, 2006
The Australian Full Federal Court has recently clarified the extent to which business methods can be patented in Australia. A business method will be patentable provided it involves a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation. It cannot be a mere scheme, abstract idea or mere intellectual information. The court also made it clear that an invention did not have to be within an area of science or technology to be patentable.
Protection for Colour Purple by Cadbury - Monday, July 31, 2006
What do you think of when you see chocolate in a Purple wrapper? Recent decisions of the Australian Trade Marks Office and the Federal Court issued on the same date throw light on this question.
Legal Professional Privilege - Waiver Principles - Thursday, July 20, 2006
Commissioner of Taxation v Rio Tinto [2006] FCAFC 86 (2 June, 2006)
A recent Full Federal Court case has held that there has been an implied waiver of legal professional privilege (“LPP”).
Shifting the law on copyright infringement - Monday, June 19, 2006
The Federal Government has recently announced that it will be introducing some important reforms to the Copyright Act to legalise the (temporary) recording of a TV or radio program known as “time-shifting”) and the transfer of music from a CD to a portable MP3 player or a video tape to DVD (known as “format-shifting”).
Time for a change to Australian Intellectual Property Laws? - Tuesday, May 09, 2006
On 30 March, 2006 the Intellectual Property Laws Amendment Bill 2006 (Cth) (“the Bill”) was introduced into the House of Representatives. The Bill proposes to make some significant amendments to the Patents Act 1990 (including amendments to clarify the prior use defence, to add another ground upon which a compulsory licence may be sought, to allow the award of exemplary damages and which affect the ability to “springboard” on pharmaceutical patents), and to the Trade Marks Act 1995 (including amendments which affect the revocation of trade mark rights and access to trade mark documents filed with the Trade Marks Office).
Freeze dried generics frozen in their extended tracks - Tuesday, May 09, 2006
In February 2006 in an article titled “Freeze-dried generics frozen in their tracks”, we reported on two separate Federal Court decisions relating to a patent owned by Pharmacia Italia S.p.A. (Pharmacia). In those decisions, the court found infringement by Mayne Pharma Pty Ltd (Mayne) and granted an injunction against Interpharma Pty Ltd (Interpharma).
King Gee licence rights Undermined? - Tuesday, May 09, 2006
In Pacific Brands Sport & Leisure Pty Ltd v Underworks Pty Ltd, the Full Court of the Federal Court found that a purchaser of a business did not acquire the right to terminate a trade mark sub-licence the vendor had granted to a competitor.
The decision provides some pertinent reminders for those involved in assigning contractual rights, especially in the context of acquiring businesses. In particular,
it would seem that a novation agreement rather than a standard assignment agreement is required in virtually every instance concerning intellectual property rights.
e-patents May 2006 - Wednesday, April 26, 2006
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
Fairly based but obvious - Wednesday, April 05, 2006
Following the High Court’s decision in late 2004 that the claims of the patent were fairly based, the remaining issues to be determined concerning infringement, obviousness and insufficiency were remitted to the Full Federal Court. In its recent decision, the Full Federal Court overturned the primary Judge’s decision and held that the patent is invalid on the ground of obviousness.
