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
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
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
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
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
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 - 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 - 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
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
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 - 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
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.
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
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.
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.
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.
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.
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’).
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.
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).
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.
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.
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.
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.
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.
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.
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).
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.
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.
