LWB486 - Intellectual Property

Semester 1, 2011

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BREACH

OF CONFIDENCE

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INTRODUCTION

Breach of confidence provides protection at the early stages of continuum.

It is useful during the period before copyright subsists and prior to registration of a patent or trade mark.

Unlike copyright, it protects ideas in the development stages and pre-publication.

It does not confer a property right.

SOURCES OF PROTECTION

EQUITY

In the absence of a contract, relief is available on equitable grounds under the breach of confidence action (Moorgate Tobacco).

The general thrust of the action is to provide a person who discloses secret ideas and information to another in confidence with rights to restrain the threatened or actual unauthorized use or disclosure.

An obligation to protect confidence arises by reason of the subject matter and circumstances in which the subject matter comes into the hands of the person charged with the breach (Ansell Rubber).

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ELEMENTS OF THE ACTION

The test is a 3-step process as stated by Megarry J in Coco v AN Clark (Engineers) Ltd:

1. The information has the necessary quality of confidence or secrecy2. The information was imparted in circumstances importing an obligation of confidence3. There was (or may be) an unauthorised use of the information (ie. actual or threatened use).

NECESSARY QUALITY OF CONFIDENCE

Information will not be protected unless it has ‘the necessary quality of confidence’ about it (Saltman Engineering).

This element imports a requirement of secrecy.

The range of information that may be protected is wide and extends to protect:

Personal information (Argyle v Argyle) Government secrets (Fairfax) Business information (Ansell Rubber) Trade secrets (Ansell Rubber)

SECRECY

There are varying degrees of secrecy.

If the information is not in the public domain, then it is potentially subject to the obligation of confidence.

If the information becomes public, the quality of confidence is lost. Information can be regarded as confidential even if a number of people know about it.

For example, in a large company, it is natural for directors to share secrets with their employees – the mere fact that a large number of people know the information does not mean that the information is not confidential information.

NEGATIVE TEST

The test of whether information has the necessary quality of confidence is if the information is not in the public domain.

Therefore, the information will have the necessary quality of confidence if it is not in the public domain.

Public domain

Public domain is not an absolute, it is relative (Franchi v Franchi). In this case, there was publication of a patent in Belgium. It was held to have been in the public domain in the UK and therefore not confidential.

Where originally secret information moves into the public domain, it will no longer be protected (AG v Jonathon Cape).

TRADE SECRETS

Trade secrets may be protected under the equitable doctrine of breach of confidence if it satisfies the requirements of the breach of confidence action.

In Ansell Rubber, the following criteria were adapted from the American First Restatement of Torts:

1. The extent to which the information is known outside the business;2. The extent to which the information was known by employees and others involved in the plaintiff's business;3. The extent of measures taken by the plaintiff to guard the secrecy of the information;4. The value of the information to the plaintiff and to its competitors;5. The amount of effort or money expended by the plaintiff in developing the information; and6. The ease or difficulty with which the information could be properly acquired or duplicated by others.

REVERSE ENGINEERING

Reverse engineering is the process by which a person disassembles a product to determine how to make one from scratch.

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You cannot prevent the public from reverse engineering products. Once a product is released into the public domain or market, the public is free to take the product apart and copy it and this will not be a breach.

SPRINGBOARD DOCTRINE

The springboard doctrine states that a person who has obtained info in confidence cannot use it as a springboard for activities detrimental to the person who made the communication (Terrapin Ltd v Builders Supply Co (Hayes) Ltd).

Ordinarily, the confidence element is lost when it comes into public domain.

However, the recipient of information cannot then use the information as soon as it becomes part of the public domain; the recipient must wait for a reasonable time to exploit the information.

The time required to have lapsed is the time it would take an ordinary person to reverse engineer the product/process themselves (Seager v Copydex).

The owner of the information will have a remedy for the period b/w when the product was released and when all the information is in the public domain (USSC v Hospital Products International Pty Ltd).

IMPARTED IN CIRCUMSTANCES OF CONFIDENCE

The person receiving the information needs to be aware that the circumstances of its divulgence import an obligation of confidence.

It will include:

Information received pursuant to a contract (Bate's Case) Information received in a course of relationship – employment, contractual, or fiduciary but duty not limited to

relationships (AG v Guardian (No 2) (Spycatcher)) Could extend to a third party if third party knows or ought to know that the information is confidential. Surreptitiously obtained information (Douglas v Hello!)

Constructive knowledge can be implied if reasonable grounds for believing that information is imparted in circumstances of confidence (Coco v AN Clark (Engineers) Ltd).

The obligation of confidence need not be in a contract (Saltman Engineering per Lord Green MR). The obligation of confidence may arise under contract, in which case common law remedies are available. Alternatively, the obligation of confidence may arise as a result of the equitable obligation of confidence, in which case equitable remedies are available.

EQUITABLE OBLIGATIONS OF CONFIDENCE

The obligation arises in the following circumstances:

Where the confidential information comes into the hands of a recipient and the recipient knew that the information is confidential

Where the confidential information comes into the hands of a recipient and a reasonable recipient would realise that the information was given in confidence

Where the information is received during the course of a relationship, including contractual and fiduciary relationships Where the recipient needs to be aware that the circumstances import an obligation of confidence

IMPLIED OBLIGATION CONFIDENCE

Employment relationships

By virtue of the relationship with their employer, employees have implied obligations of confidentiality with their employment.

Public or trivial information obtained during the course of employment can be used both during the employment and once it has ceased (Faccenda Chicken v Fowler).

Confidential information obtained during the course of employment can be used once the employment has ceased, unless there is a valid contractual restraint on using that information.

Trade secrets obtained during the course of employment cannot be used either during or after the employment.

INNOCENT RECIPIENTS

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Where a third party receives information ignorant of the fact that the information carries with it an obligation of confidence, the innocent third party is liable form the time that he/she becomes aware that the information is confidential. This applies regardless of whether that party has provided consideration to receive that information (Fraser v Evans).

ACQUISITION WITHOUT CONSENT

Where information is acquired by improper or surreptitious means, equity will bind the conscience of the person holding the information.

When information is acquired without consent the acquirer has an obligation not to use or disclose the information (Franklin v Giddens).

IF obtained by theft:

A confidentiality obligation can be imposed through theft (Franklin v Giddens).

Franklin v Giddons [1978] Qd R 72

A nectarine farmer protected the bud wood and the way of grafting which created a new and superior type of nectarines Had to seek relief in equity because he didn’t protect info himself eg. patents A neighbouring fruit grower stole some of the bud wood and started using it to grow their own nectarines. There was no relationship between the parties so the Court imposed the obligation Dunn J at 80: "I found myself quite unable to accept that a thief who steals a trade secret, knowing it to be a trade secret

with the intention of using it in commercial competition with the owner to the detriment of the latter and so uses it is less unconscionable than a trader of service."

Court imposed an obligation of confidence on the basis of unconscionability where info is acquired by reprehensible means.

UNAUTHORISED USE OF INFORMATION

The obligation of confidence will be breached where the recipient uses or discloses the information, or threatens to do so.

This is the use of the information without consent or where the information is disclosed for a limited purpose use goes beyond the scope of the purpose for which the information was disclosed (Castrol v Emtech).

The information can be actually used, or there can be a threat of imminent use.

Authorised use of the information is a breach even if the use is unconscious (Seager v Copydex).

While detriment is not necessary, it will be required in order to receive more than nominal damages. The plaintiff must show loss of commercial opportunity or personal harm.

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DEFENCES

DISCLOSURE UNDER COMPULSION OF LAW

Where a statute provides that information must be disclosed it is a complete defence to disclose the information.

JUSTIFICATION

Where disclosure of information is made in the public interest, a breach of the obligation of confidentiality is excused. The information must be made in the public interest, rather than of interest to the public.

PLAINTIFF LACKS LOCUS STANDI

Only the party to whom the obligation of confidence is owed may bring the action for breach of that confidence (Fraser v Evans).

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REMEDIES

INJUNCTION

An injunction is a court order that you must do something or refrain from doing something.

No injunction will be granted where:

There can be no further damage (Beecham Group v Bristol Laboratories). Confidentiality has been lost (Ocular Sciences Ltd v Aspect Vision Care Ltd). The detriment the plaintiff apprehends will not be avoided by its grant (Cth of Aus v John Fairfax). Where damages recoverable at common law is an adequate remedy and the def is in a financial position to pay them

(American Cyanamid Co v Ethicon Ltd). An applicant guilty of delay or fails to give an undertaking as to damages may be denied injunctive relief (Dart Industries

Inc v David Bryar & Assoc Pty Ltd).

INTERLOCUTORY

This is given when you want to maintain the status quo between the present time and the time leading up to the trial (before trial). In order to get an interlocutory injunction, the court must be satisfied that the matter is not trivial and that the balance of convenience is in favour of the injunction. Substantive issues are not to be discussed.

PERMANENT

This is given at trial to compel someone to do or refrain from doing something.

DAMAGES

The court can award monetary damages. There is no real distinction between common law damages and equitable compensation.

ACOUNT OF PROFITS

Where the infringer has obtained profits as a result of use of the confidential information, an account of profits can be awarded to the plaintiff, forcing the infringer to account profits to the plaintiff. There is an adjustment of the quantum of profits where the infringer input expense to gain the profits.

An account of profits will usually be denied for innocent breaches (Seager v Copydex).

CONSTRUCTIVE TRUST

A constructive trust may be granted where the defendant acquires property by use of the confidential information (Timber Engineering v Anderson).

It will only be imposed only as a last resort and in the absence of a lesser appropriate equitable remedy (Giumelli v Guimelli).

DELIVERY UP FOR DESTRUCTION

The court can order that the documents containing confidential information can be delivered up to be destroyed. This extends to documents or chattels which are the subject of the action (Ansell Rubber).

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COPYRIGHTEXAM FORMAT

1. Does copyright subsist?o Part III – is the work:

original? expressed in a material form? a literary, dramatic, musical or artistic work? connected with Australia?

o Part IV – is it a sound recording, cinematographic film, television or sound broadcast, published edition of a work?

2. Who owns copyright?o If under Part III, generally the author of the work owns first copyright. Check if any

exceptions apply.o If under Part IV, identify relevant provision.o Has any assignment taken place, or has a licence been granted to the potential

plaintiff? 3. Has there been an infringement or threatened infringement of copyright?

o Has there been a direct infringement or threatened infringement of a Part III or Part IV copyright?.

o Has there been an authorisation of infringement or threatened infringement ?o Has there been an indirect infringement or threatened infringement – importation or

sale?4. Are there any excuses?

o Check again for an assignment or license.o Is the copyright infringing conduct a fair dealing for one of the purposes in the Act?o Are any of the specific, royalty free exceptions or statutory licenses applicable?

5. What remedies are available to each of the potential plaintiffs against each of the potential defendants?

6. Have there been any breaches or potential breaches of moral rights which require consideration?

Part III Work Part IV Subject Matter Other Than Work

Literary – anything expressed in writing Sound recordings

Dramatic – choreographic show, scenario or script for film, dumb show (ie mime)

Films

Musical – music notes, lyrics etc TV and/or Sound broadcasts

Artistic – painting, sculpture, drawing, engraving, photograph, model of building, any artistic craftsmanship

Published editions of works (in left column)

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DOES COPYRIGHT SUBSIST?

PART III WORKS

For copyright to subsist in a “work”, the work must be (s 32):

1. original;

2. expressed in a material form;

3. a literary, dramatic, musical or artistic work;

4. have a connection with Australia

1. ORIGINALITY REQUIREMENT

Original work originates from the author, in the sense that it is the result of his or her skill, labour or judgment, and is not copied from another author. However, the thought need not be original, just the expression (Uni of London v Uni Tut Press).

HCA held in IceTV that to be original, the expression must meet the threshold test and be brought about by ‘some independent intellectual effort’ (@ [48]). The ‘independent intellectual effort’ must be the effort required to reduce the skill and labour to writing (as opposed to the preparatory skill and labour) (@ [167]).

Work need not be novel – only needs to be the result of the author’s skills, labour or judgment.

Possible that two authors will independently produce a similar work both attracting copyright, and neither infringing (c).

University of London Press Ltd v University Tutorial Press Ltd

condition of appointment for examiners was that copyright in the papers belonged to the Uni – Uni subsequently assigned (c) to the plaintiff publisher. Defendant then published exams with answers and comments. Plaintiffs sued for infringement of copyright

HELD (c) subsisted in the papers as original literary works. Originality does not require that the work be original or inventive thought, as long as there is originality in the expression of the idea.

Sands & McDougall Pty Ltd v Robinson

Map made of Australia HELD map was original even if prepared from the common stock of knowledge in Australia (because independent

intellectual effort, judgment and discrimination had been applied to produce a map that was new in the requisite sense)

Australian Chinese Newspapers Pty Ltd v Melbourne Chinese Press Ltd (2003) 58 IPR 1

The title of the newspaper was printed in Chinese characters HELD a masthead logo of a Chinese language newspaper did amount to an original artistic work. Skill, thought and

judgment went into the way the characters was expressed.

Dennison Manufacturing Co v Alfred Holt & Co Ltd (1987) 10 IPR 612

HELD plastic price labelling tags were original artistic works

ORIGINALITY: COMPILATIONS

Copyright will subsist in a compilation of information provided that the amount of skill, labour or judgment required in making the compilation is sufficient by looking at the compilation as a whole (Ladbroke (Football) Ltd v William Hill (Football) Ltd).

Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273

Coupons were made for football club; coupons said which teams were going to play on a given day Coupons sent out weekly setting out the structure of the matches to be plated and the odds. Had headings, blank

squares for punters to fill in HELD Way in which the coupons were put together attracted copyright, even though there was nothing really original

about them. Coupons attracted copyright, even though none of the component parts were original.

G.A. Cramp & Sons Pty Ltd v Frank Smythson Ltd

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HELD the selection and publication of seven tables of commonplace information in diaries did not attract copyright. The pieces of information were common knowledge and didn’t involve a sufficient degree of skill and labour by the

publisher.

Football League Ltd v Littlewoods Pools Ltd [1959] Ch 637

HELD Copyright did subsist in the chronological list of matches of the football league, having regard to the skill and labour involved.

Kalamazoo (Aust.) Pty Ltd v Compact Business Systems Pty Ltd

HELD copyright subsisted in compilations of blank accounting forms. The way that the forms were compiled were in such a way as to make them an original idea.

ORIGINALITY: DATABASES

The issue here is whether or not a database of facts is sufficiently original to be afforded (c) protection. In Australia, there appears to be conflicting authority between Desktop Marketing and IceTV.

Desktop Marketing Systems Pty Ltd v Telstra Corp Ltd

Telstra publishes the Yellow Pages and the White Pages. Desktop Marketing produced and sold phone directories in CD-ROMs of varying levels of sophistication with white and yellow pages listings, which could be searched in different ways whether by name, address, postcode, industry and the like. The data used to produce the CD-ROMS was taken from Telstra’s phone books and rekeyed by a team of workers in the Philippines. Desktop Marketing also used Telstra’s headings, though it did add its own software to do the searching.

HELD copyright subsisted in Telstra’s White Pages and Yellow Pages directories, and that this copyright had been infringed.

Factual compilations may be protected merely on the basis that substantial labour and expense has been devoted to their creation. This was true even of a “whole of universe” compilation such as the White Pages, where there was no element of selectivity in the organisation or presentation of the data, and even though the labour and expense here had not so much gone into the “collection” of the data (which was in fact simply received from subscribers) as into the development of systems for its verification and storage.

It was open to Desktop Marketing to obtain all the facts contained in the Telstra directories by its own independent inquiry, and produce its own compilation of the results. As long as there had been no copying of Telstra’s product by Desktop Marketing, there would be no copyright infringement.

IceTV @ [28] in obiter

Copyright does not protect facts or information. Copyright protects the particular form of expression of the information, namely the words, figures and symbols in which

the pieces of information are expressed, and the selection and arrangement of that information. That facts are not protected is a crucial part of the balancing of competing policy considerations in copyright legislation. The information/expression dichotomy, in copyright law, is rooted in considerations of social utility. Copyright, being an exception to the law's general abhorrence of monopolies, does not confer a monopoly on facts or

information because to do so would impede the reading public's access to and use of facts and information. Copyright is not given to reward work distinct from the production of a particular form of expression.

2. EXPRESSED IN MATERIAL FORM REQUIREMENT

A ‘work’ must exist in a material form before (c) can subsist in it (s 32). There must be some physical embodiment of the creation.

A work is made at the time it is reduced to writing or some other material form (s 22(1)). Writing means ‘mode of reproducing or representing words, figures or symbols in visible form’ (s 10(1).

Material form = In relation to a work or an adaptation of a work, it includes any form (whether visible or not) of storage of the work or adaptation (whether or not the work or adaptation or a substantial part of the work or adaptation can be reproduced) (s 10(1)).

3. LITERARY, DRAMATIC, MUSICAL OR ARTISTIC WORKS

For [work] to be a Part III Work, it must be either a literary, dramatic, musical or artistic work (s 32).

LITERARY WORK

Defined in s 10 to include:

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a table, or compilation, expressed in words, figures or symbols (whether or not in a visible form); and a computer program or compilation of computer programs.

A literary work is a work which is expressed in print or writing, irrespective or whether the quality or style is high (Uni of London v Uni Tut Press).

University of London Press v University Tutorial Press Ltd

HELD exam papers were literary works Peterson J @ 608: words ‘literary work’ cover work which is expressed in print or writing, irrespective of the question

whether the quality or style is high. The word ‘literary’ seems to be used in a sense somewhat similar to the use of the word ‘literature’ in political or electioneering literature and refers to written or printed material.

Literary work includes:

football pool coupons (Ladbroke (Football) Ltd v William Hill (Football) Ltd) a racing programme (Mander v O’Brien) chronological lists of football matches (Football League Ltd v. Littlewoods Pools Ltd) lists of bingo numbers (Mirror Newspapers Ltd v Queensland Newspapers Ltd) accounting forms (Kalamazoo (Aust.) Pty Ltd v Compact Business Systems Pty Ltd)

If(work) is a title or name

Although considerable research, expense, labour etc might be expended on creating a name or title, it is not sufficiently substantial for (c) to subsist (Exxon).

Titles and names are normally covered by trade marks, although it may be covered by (c) if:

the name is substantial (Exxon) the name is sufficiently original and distinctive (Francis Day v 20th Fox)

Exxon Corporation v Exxon Insurance Consultants International Ltd

The oil company adopted the name “Exxon” after considerable research and expense. The defendant company, with no connection, adopted the name. Exxon sought an injunction.

HELD although original, it was not sufficiently substantial for copyright to subsist in the name. A single work may be capable of attracting (c) if it has qualities and characteristics in itself which would justify its

recognition as an original literary work, as opposed to a merely invented word (@ 131)

Francis Day and Hunter Ltd v Twentieth Century Fox Corporation Ltd

Francis, Day and Hunter had released a song titled “The Man Who Broke the Bank at Monte Carlo”. Years later, 20th Century Fox put out a movie by the same title, but had no other connections to the song. Francis sued for copyright infringement.

HELD a name alone cannot possess copyright unless it is sufficiently original and distinctive. “To break the bank” is a hackneyed expression, and Monte Carlo is or was the most obvious place at which that

achievement or accident might take place.

There may be other actions open to the plaintiff if a name is copied:

Passing off: WH Allen & Co. v Brown Watson Ltd

HELD passing off where “My Life and Loves” book and “Frank Harris: My Life and Adventures” book.

Trade Practices Act 1974 ss 52 and 53: McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd

A wine company brought out a wine called “Big Mac”. McDonalds claimed that this was a breach of s 52; people would be misled into thinking that the wine had some connection with McDonalds.

HELD there was no breach. McWilliam’s conduct might confuse people but this was not the same as being misled.

If (work) is a computer program

Prior to the 1984 amendments, (c) did not subsist (Computer Edge Pty Ltd v Apple Computer Inc).

The 1984 amendments provided that (c) subsists regardless of the code, language or notation used.

Autodesk Inc v Dysason

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The plaintiff owned copyright in a drafting program used by architects and engineers called “Autocad”. It was sold with an electronic device, the “Autolock”, to attach to the computer.

The program would not run without the “Autolock”, preventing its use on more than one computer at any one time. The defendant cracked the code and produced a device called “Autokey”, which performed the same function as the “Autolock”.

HELD defendant had infringed copyright in the “Autocad” by reproducing a substantial part of the program in the device.

Data Access Corp v Powerflex Services Pty Ltd

Data Access had copyright in a computer program “Dataflex”, used by programmers to develop databases. Dr Bennett created a program compatible with “Dataflex”, which was sold by Powerflex Services in competition with “Dataflex”. He did not have access to the “Dataflex” source code, not did he seek to decompile their program.

HELD no infringement of copyright except for the use of a Compression Table which merely reduced computer storage space.

Observing a program and developing a similar program without copying the source code or decompiling the program will not infringe copyright.

The definition was amended again in 2000 so that a computer program means a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.

The Copyright Amendment (Computer Programs) Act 1999 introduced a new Division 4A into Part III of the Copyright Act 1968 – ‘Acts not constituting infringements of copyright in computer programs’. The owner of licensee of a computer program does not infringe (c) by making a reproduction of the program:

in the course of running the program for the purposes for which the program was designed, unless contrary to an express direction or license (s 47B(1) and (2)).

in the course of running the program for the purpose of studying the ideas behind the program and the way it functions (s 47B(3))

for use in lieu of the original copy, or if the original copy is lost, destroyed or becomes unusable (s 47C). to obtain information necessary to make independently another program or article to interoperate with the original

program any other program, but only to the extent (s 47D): reasonably necessary to obtain such information and to achieve such interoperability; and the information was not readily available to the owner or licensee. for the purpose of correcting an error in the original copy which prevents the program from operating as intended by the

author (s 47E). for the purpose of testing the security of the original copy or network or system of which the original copy is part (s 47F).

DRAMATIC WORK

Dramatic work includes (s 10(1)):

a. a choreographic show or other dumb show; andb. a scenario or script for a cinematograph film;c. but does not include a cinematograph film as distinct from the scenario or script for a cinematograph film

Copyright in a film is the subject of a separate (c) in Part IV.

The essential character of a dramatic work is that it is intended to be represented or performed in some way, for example, by acting or dancing.

A dramatic work must be intended to be performed and able to be performed.

IF merely parts of a performance

Disparate elements without sufficient unity do not amount to a dramatic work (Green v Broadcasting NZ).

Green v Broadcasting Corp. of New Zealand

Hughey Green was the longstanding host of the British television talent quest “Opportunity Knocks”. Features of the show, such as the use of a “clapometer” and various catchphrases to address the audience and the competitors, were replicated by New Zealand television, without reference to Green.

HELD the repetitive elements alone did not constitute a dramatic work: by themselves, their performance was meaningless since the greater part of the show, which gave meaning to the different stock elements, consisted of audience participation, varying from program to program.

IF a public event

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It is currently unclear whether (c) can subsist in scheduled public events e.g. firework displays, as the enforcement and protection of this right would be difficult.

Nine Network Australia Pty Ltd v ABC

The Nine Network had paid $450,000 towards the Council of the City of Sydney’s fireworks display to welcome the new millennium. The Nine Network tried to restrain the ABC from broadcasting in Australia anything featuring the fireworks, the procession of lanterns on Sydney Harbour and decorations on the Harbour Bridge.

HELD Nine’s contention that the display and parade were dramatic works was not strong. The schedule of the fireworks display would not be such a work, since the reduction to material form was fraught with

difficulties as to whether the schedule would in practice be adhered according to the planned sequence. “It is, one would think, common place in at least a half of the present decade that firework shows with music are

planned. It has never been suggested to my knowledge, and there is no reported case in which the matter has been subjected to legal analysis which has suggested that copyright subsists in a fireworks show set to music just because the sequence of events is scripted. That does not mean that copyright might not exist. It may merely be the result either of difficulties of enforcing the non filming of such events or it may be that no one has thought deeply about the issue. At the heart of the problem may well be that copyright is a monopolistic right existing not to protect ideas as such but the physical manifestation of some original literary, artistic or dramatic work.”

Also, the ABC could probably have gone ahead as fair dealing for reporting the news.

MUSICAL WORK

[Refers to written music, whereas sound you can hear is protected under Part IV]. The term ‘musical’ is not defined.

The adjective ‘musical’ refers to the method of production and not to any artistic or aesthetic qualities which the work should possess.

ARTISTIC WORK

Artistic work includes (s 10(1)):

a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not; a building or a model of a building, whether the building or model is of artistic quality or not; a work of artistic craftsmanship to which neither of the last two preceding paragraphs applies; but does not include a circuit layout within the meaning of the Circuit Layouts Act 1989.

IF a painting

Merchandising Corp of America v Harpbond

Adam An sought to protect his facial makeup as artistic work. HELD although there was no statutory definition of “painting”, it is a word in the ordinary usage of the English language

and it is a question of fact in any particular case whether the subject matter under discussion is a painting or not. A painting is not an idea, it is an object, and paint without a surface in permanent form is not fixed; hence, the claim failed.

Thus if it can be removed, it is not fixed and not a painting.

IF a drawing

Defined in s 10(1) to include ‘a diagram, map, chart or plan’.

Architects plans are artistic works (Ancher, Mortlock, Murrary & Woolley Pty Ltd v Hooker Homes Pty Ltd).

IF a sculpture

Defined in s 10(1) to include a cast or model made for the purposes of sculpture.

Wham-O Manufacturing Co v Lincoln Industries Ltd (NZ)

HELD a wooden model produced for the manufacture of dies and moulds for the casting of frisbees was a sculpture.

Greenfield Products Pty Ltd v Rover-Scott Bonnar Ltd

HELD a mower clutch assembly was not a sculpture – it was not sufficiently artistic.

IF a building

Defined in s 10(1) to include a structure of any kind.

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Half Court Tennis Pty Ltd v Seymour

HELD a half-tennis court was a building.

Darwin Fibreglass Pty Ltd v Kruhse Enterprises Pty Ltd

HELD a garden consisting of a layout including steps, walls, ponds and other structures in stone was “a structure”.

IF artistic craftsmanship

A work of artistic craftsmanship includes articles by craftsman – jewelry, metalwork, pottery etc.

Traditional test: whether the author in making the article had the main object of creating an article which will have a substantial appeal to the aesthetic tastes of those who observe them (Cuisenaire v Reed).

Cuisenaire v Reed

The issue was whether copyright subsisted in the Cuisenaire set of variously coloured tubes used for the purpose of teaching primary school children arithmetic as a work of artistic craftsmanship.

HELD no copyright subsisted as a work of artistic craftsmanship as cutting up pieces did not constitute craftsmanship and it wasn’t a work of artistry.

George Hensher Ltd v Restawhile Upholstery (Lancs.) Ltd

The issue was whether copyright subsisted in a prototype of a furniture suite for manufacture as a work of artistic craftsmanship. It consisted of pieces of wood with canvas attached (no drawing). The design was “boat shaped” with a flimsy appearance.

HELD not artistic as there was evidence that people regarded it as vulgar, brash and horrible. Lord Morris: although the intention of the author may be provide a pointer (not decisive), it should be assessed

in a “detached and objective way” Lord Reid: artistic if a substantial section of the public genuinely admires and values it for its appearance and

gets pleasure or satisfaction, whether emotional or intellectual from looking at it, even though others may think it meaningless or vulgar.

Merlet v Mothercare plc

Baby cape to strap baby to parent had no aesthetic quality in itself, even if in use it might present an aesthetically pleasing picture of parent and child.

Object must be looked at independently of its context or proper place to determine whether it has artistic merit.

Current test: whether there is sufficient aesthetic appeal is determined objectively – it cannot depend solely on the subjective intention of the author (Coogi Australia Pty Ltd v Hysport International Pty Ltd).

Artistic craftsmanship that is mass produced?

A work of artistic craftsmanship can be mass produced, although the author must use a highly sophisticated machine with creative skill, knowledge, and pride in workmanship (Coogi Australia v Hysport International).

A work of artistic craftsmanship need not be the product of a single person.

Coogi Australia Pty Ltd v Hysport International Pty Ltd

The plaintiff designed and manufactured a distinctive machine knitted fabric and garments – highly textured surface, complex, abstract, multi-coloured design. The plaintiff alleged the defendant had infringed copyright:

o in their “XYZ” designs contending work of artistic craftsmanship; and

o in computer program as a literary work used for manufacture by computerized knitting machines.

HELD although copyright subsisted, not infringed as the computer program was obtained by reverse engineering to replicate. The reverse engineering consists of enough skill, labour etc to be an artistic work.

However, the two elements (artistic and craftsmanship) must be united in the same person (Burke v Spicers Dress Designs).

Burke & Margot Burke Ltd v Spicers Dress Designs

The plaintiff, a dress designer, authored a sketch of a frock, worn on a young lady. The defendant copied the frock, on mass scale, based on the sketch. The plaintiff sought an injunction alleging infringement of copyright in the sketch as an artistic work and the frock as a work of artistic craftsmanship.

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HELD no infringement of copyright because frock was not a reproduction of sketch as there was no visual resemblance. As the plaintiff did not make the frock, the artistic and craftsmanship elements were not united in the same person.

4. CONNECTION TO AUSTRALIA REQUIREMENT

IF the work is unpublished:

For unpublished works, the author must be a qualified person at the time it was made (s 32(1)).

If the making of the work extends over a period, the author must be a qualified person for a substantial part of that period (s 32(1)).

A qualified person = an Australian citizen, an Australian protected person, or a person resident in Australia (s 32(4)).

IF the work is published:

The publication must have first took place in Australia or the author must be a qualified person when it was first published (s 32(2)).

A work is deemed to have been published if reproductions have been supplied to the public (s 29(1)(a)).

A ‘first publication’ is deemed to be in Australia if a book is published in Australia within 30 days of publication overseas (s29(5)).

IF the work is a building/etc:

Copyright subsists in (s 32(3)):

an original artistic work that is a building situated in Australia; or an original artistic work that is attached to, or forms part of, such a building.

PART IV SUBJECT MATTER OTHER THAN WORKS

Copyright can also subsist in subject matter other than works, including:

sound recordings (s 89) cinematograph films (s 90) television and sound broadcasts (s 91) published editions of works (s 92)

This (c) is in addition to and independent of the copyright subsisting in the work care of Part III (s 113(1)).

Exclusive rights are given to ‘makers’ of these things. There is no requirement of authorship or originality.

SOUND RECORDINGS

Copyright in sound recordings subsists via ss 84, 89 and 184.

Sound recordings have a separate (c) in addition to (c) in underlying music/score (musical work Part III) and (c) in lyrics (literary work Part III).

‘Sound recording’ is defined in s 10 to mean the aggregate of the sounds embodied in a record. The word ‘record’ is used in a special sense to mean a ‘disk, tape, paper or other device in which sounds are embodied’. Therefore technology neutral and will cover MP3s, CDs, records, tapes, DVDS etc.

CINEMATOGRAPHIC FILMS

Copyright subsists in cinematographic films by virtue of ss 84 and 90.

A ‘cinematographic film’ is defined in s 10 to mean ‘the aggregate of the visual images embodied in an article or thing so as to be capable of the use of that article or thing:

(a) of being shown as a moving picture; or(b) of being embodied in another article or thing by the use of which it can be so shown;

and includes the aggregate of the sounds embodied in a sound track associated with such visual images’.

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It does not matter how the images are made. The means by which a ‘moving picture’ is produced is not relevant in determining whether the end result is a ‘film’.

The definition is not to be interpreted narrowly and is intended to cover new technologies. Emphasis is on the end product being a moving picture (Galaxy v Sega).

Galaxy Electronics Pty Ltd v Sega Enterprises Ltd

Sega wanted to stop parallel imports of its video games. As there is no restriction on importing non-infringing computer programs, Sega argued that the games were “films”.

HELD the moving images in a computer-generated video game was a film.

IF general idea, situation, character is copied:

Here the facts are analogous to Zeccola, in that the defendant has copied [principle situations, singular events, basic characters] from the film. Copyright would likely be found to exists in these.

Zeccola v Universal City Studios Inc

Universal owned copyright in film Jaws, screenplay Jaws, and novel Jaws. Zeccola made a film about man eating sharks called Great White. Universal sued for copyright infringement. Zecolla argued that there is no copyright in the ‘general idea’ of a film about

man eating sharks. HELD although there was no copyright in the “general idea” of a film about man eating sharks, copyright subsisted in

“the combination of the principal situations, singular events and basic characters”.

TELEVISION AND SOUND BROADCASTS

Copyright in television and sound broadcasts subsists by virtue of s 91.

‘Television broadcast’ defined in s 10(1) to mean visual images broadcast by way of television, together with any sounds broadcast for reception along with those images.

‘Sound broadcast’ means sounds broadcast otherwise than as part of a television broadcast.

‘Broadcast’ means a communication to the public delivered by a broadcasting service within the meaning of the Broadcasting Services Act 1992 (Cth). The broadcasting must be ‘to the public’.

Telstra Corp Ltd v Australasian Performing Right Association Ltd at 155

To the public means more than just ‘in public’ There can be a communication to individual members of the public in a private or domestic setting which is nevertheless

a communication to the public.

There is no need for copyright in the underlying material (e.g. there is no copyright in a sporting match or spectacle, but the maker can get the copyright rights to that broadcast).

A single image on a TV screen with accompanying audio does not constitute a broadcast (The Panel case).

Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (“The Panel”)

Ten’s show broadcast clips taken from other networks including clips from 9’s shows Nine sued under exclusive right to re-broadcast FCFCA held that any unauthorised re-broadcasting of a broadcast would be an infringement of copyright (subject to any

defence of fair dealing that Ten might have had) The HC (3:2 majority) overturned the Full Federal Court's decision. HELD that a single image appearing on a television

screen with accompanying audio does not constitute a television broadcast. @ [74] ‘There can be no absolute precision as to what in any of an infinite possibility of circumstances will constitute ‘a

television broadcast’. However, the [twenty] programmes which Nine identified in … its pleading … answer that description. These broadcasts were put out to the public, the object of the activity of broadcasting, as discrete periods of broadcasting identified and promoted by a title, such as The Today Show, Nightline, Wide World of Sports, and the like, which would attract the attention of the public.’

@ [77] ‘… the circumstance that a prime time news broadcast includes various segments, items or ‘stories’ does not necessarily render each of these ‘a television broadcast’ in which copyright subsists …’

Copyright is only infringed if you rebroadcast the program, or a substantial part of the program. Otherwise broadcast makers would get much more protection than other copyright owners.

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PUBLISHED EDITIONS OF WORKS

Copyright in published editions of works subsists by virtue of s 92.

The term refers to the typographical arrangement – that is, the layout and formatting, of the printed pages as they are published.

This type of protection was only introduced with the 1968 Act, so no protection for a published edition exists in a book published before the commencement of that Act (s 224).

DURATION OF COPYRIGHT18

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IF original works:

Pursuant to s 33, copyright in literary, dramatic, musical or artistic work lasts for 70 years after the death of the author.

Pursuant to s 33, copyright in unpublished literary, dramatic, musical or artistic work lasts for 70 years after the death of the author.

IF Part IV subject matter:

Pursuant to ss 93 and 94, copyright in sound recordings and cinematograph films lasts for 70 years after the death of the author.

Pursuant to s 95, copyright in broadcasts lasts for 50 years after the death of the author.

Pursuant to s 96, copyright in published editions lasts for 25 years after the death of the author.

OWNERSHIP OF COPYRIGHT19

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PART III WORKS

General rule is that the creator (the ‘author’) is the first owner of copyright (s 35(2)).

‘Author’ is not defined although it has been interpreted as the creator of the work, from whom the form of expression originates (Donoghue v Allied Newspaper Ltd).

Ownership of contract can always be modified by contract.

IF photograph:

Under s 10(1) the author of a photograph is the take of it.

FOUR EXCEPTIONS TO THE GENERAL RULE:

Work produced in the course of employment Work produced by journalists Commissioned artistic works Crown ownership

WORK PRODUCED IN THE COURSE OF EMPLOYMENT

Under a contract of employment, the employer owns (c) of works produced in the course of employment (s 35(6)).

The employee must be working under a contract of service, as distinguished from a contract for services.

Test: ‘whether on the one hand the employee is employed as part of the business and his work is an integral part of the business, or whether his work is not integrated into the business but is only accessory to it, or, […] the work is done by him in business on his own account’ (Beloff v Pressdram Ltd).

Beloff v Pressdram Ltd

The plaintiff, a political correspondent of the “London Observer”, issued a politically sensitive internal memo to the editor and senior staff on the Prime Minister.

It was published in full by the “Private Eye”. The plaintiff sued for infringement of copyright. HELD as the plaintiff was employed under a contract of service, the copyright in the memo was vested in the owners of

the “London Observer” and not in the plaintiff.

IF consultant:

A person employed as a consultant retains copyright in the work he/she produces, subject to contrary express agreement (Oceanroutes (Australia) Pty Ltd v M C Lamond).

IF test fails:

In AG v Guardian Newspapers (No 2), a former UK spy breached his duty of confidence by publishing secret information in Australia. In obiter it was suggested that copyright in the book, written in breach of his duty of confidence may vest in the crown in equity. Here, there is scope to argue that there might be a general principle that copyright in material created by an employee in breach of an obligation of confidence is held on trust for the employer, even where the employer would not otherwise be entitled to copyright.

JOURNALISTS

The author as a journalist is owner of (c) with respect to (s 35(4)):

1. reproduction of the work for the purpose of inclusion in a book; or2. reproduction of the work in the form of a hard copy facsimile made from a paper edition of an issue of the newspaper.

The proprietor of the newspaper or magazine is the owner of copyright for any other purpose (s 35(4)).

IF press clipping service:

Journalists won copyright for the purposes of reproduction in press clipping services.

De Garis v. Neville Jeffress Pidler Pty Ltd

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De Garis was a university lecturer and occasional contributor to The West Australian. He was not an employee. Moore, second plaintiff, was employed by the Sydney Morning Herald. The defendant operated a press clipping service. De Garis and Moore sued the defendant for breach of copyright in respect of pieces written for their respective

newspapers which the defendant had subsequently photocopied and distributed to client. Under pre-1988 legislation, publisher only owned rights to make and distribute photocopies in so far as they relate to

publication in a newspaper. HELD Jeffress infringed Moore’s rights to reproduce in a material form.

IF reproduced in non-paper form:

As the Act now stands, journalists only have a right to sue if photocopies are made – have no action re the electronic sharing of materials. E.g. press services can negotiate exclusively with the publisher to make and communicate electronic copies.

COMMISSIONED ARTISTIC WORK

IF photograph for private or domestic purpose:

Here the [author] was commissioned to take the photograph, and did so for a private or domestic purpose. This term is defined in s 35(7) to mean a portrait of family members, children or a wedding party. Pursuant to s 35(5) the commissioner will own copyright.

IF painting or drawing of a portrait:

Here the [author] was commissioned to [paint/draw] the portrait. Pursuant to s 35(5) the commissioner will own copyright.

IF making of an engraving:

Here the [author] was commissioned to engrave [words/symbols] into the [object]. Pursuant to s 35(5) the commissioner will own copyright.

IF none of the above:

Copyright in all other commissioned works generally vests in the author.

IF made the purpose of the work clear:

Here the [commissioner] [expressly/impliedly] because of the [statement/conduct] knew at the time of the agreement that the purpose of the [work] was to [purpose]. Pursuant to s 35(5) the [artist] can restrain the use for other purposes.

Blackwell v. Wadsworth

The plaintiff artist was commissioned to make a drawing of a hotel. Two years later, ads in the paper for the sale of the hotel included a reproduction of the drawing. The plaintiff sued for infringement of copyright.

HELD the defendant’s had infringed copyright – no implied license for the defendant’s to reproduce the work.

JOINT OWNERSHIP

Under s 10(1) ‘work of joint authorship’ means ‘a work that has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or the contributions of the other authors’.

Here the [work] will be jointly owned by [authors] because it has been produced by the collaboration of [two/more] authors whose contributions were not separate from each [other/of the other authors].

IF each author supplies a distinct part:

Joint authorship does not apply where each author supplies a distinct part.

IF ideas are supplied:

Supplying ideas does not give rise to joint authorship.

Donoghue v Allied Newspapers Ltd

HELD where a person communicates an idea to an author and the author clothes the idea in the form of an article or articles, the copyright is in the author.

Therefore journalist owned copyright. Interviewee who contributed ideas did not own copyright

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Joint authors take ownership as tenants in common – each has the title to sue and can sue each other (Prior v Sheldon).

Prior v Sheldon

Composer adapted work and claimed royalties for use. Original piece was co-authored. Co-author was successful in suing the other for not receiving royalties.

Australian law does not recognise community ownership of a work if created by one member of the community (Bulun Bulun v R & T Textiles Pty Ltd).

EQUITABLE OWNERSHIP

Equitable ownership may arise where the author stands in a fiduciary position to some other, or is in breach of confidence or is a trespasser, and, authors a work because of that position, breach or trespass.

A number of cases have suggested that where other duties are owed and breached copyright may be vested in the form of a constructive trust (Bulan Bulan; AG v Guardian).

IF community claiming ownership:

Bulun Bulun v R & T Textiles Pty Ltd

John Bulun Bulun, an Aboriginal artist, painted an artistic work in 1978, with permission of senior members of the Ganalbingu people (in Arnhem Land), in accordance with customary law. The respondent imported and sold fabric that infringed the copyright in the artistic work. Bulun Bulun sued as copyright owner and George Milpurrurru sued as a representative of the Ganalbingu people. R & T Textiles admitted infringement with respect to Bulun Bulun, but did not admit that the Ganalbingu people were the equitable owners of the copyright.

HELD there was no express trust, because commercial sale of the artwork by Bulun Bulun were permissible, and Bulun Bulun was able to retain the proceeds.

There was a fiduciary relationship. The Ganalbingu people permitted Bulun Bulun to create the artistic work that embodied part of their ritual knowledge derived from their ancestors, but Bulun Bulun could not exploit the work in a manner contrary to customary law, and was bound to take appropriate action against third parties to restrain and remedy any infringement of copyright.

This did not grant equitable interest in copyright, but if Bulun Bulun breached the fiduciary duty, an action in personam or a constructive trust could be imposed.

Bulun Bulun had not breached the obligations of his fiduciary duty in this case.

IF Crown claiming ownership:

AG (UK) v Guardian Newspapers (No 2)

Breach of Confidence – former UK spy publishing secret information in Australia. Obiter, a constructive trust may exist to protect the publication of material taken in breach of the obligation of confidence. Would help if the material had lost its character of confidentiality.

IF premise owner claiming ownership:

ABC v Lenah Game Meats

Obiter, a trespasser may hold copyright in a film on a constructive trust in favour of the owner of the premises. Didn’t arise because never found out who took tape, they sent it anonymously to the ABC.

CROWN COPYRIGHT

Crown ownership includes:

works made by or under the direction or control of the Crown (s 176) works first published by the Crown (s 177) sound recording and films made by or under the direction or control of the Crown (s 178)

Duration of Crown copyright is 50 years.

Copyright Agency v NSW

The Copyright Tribunal heard a claim by the Copyright Agency Limited (CAL), whose members include surveyors, for orders under ss 183(5) and 183(A) of the Copyright Act 1968 (Cth) in respect of a number of surveyors' plans and the

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State of New South Wales' 'dealings' in respect of them. Following the determination of the Tribunal, questions of law were referred to the Full Federal Court.

HELD that the New South Wales Government did not own copyright in the surveyors' plans. The court stressed that, when considering the issue of Crown copyright, it is important to understand the relevant legislation under which the works are created and its history.

Finkelstein J on Crown copyright: ‘As regards to work made by the Crown, we are necessarily dealing with a fiction. Generally for copyright purposes a work is made by its author. What s 176 contemplates is that, in certain circumstances, the act of the author in making a work is to be attributed to the Crown. An attribution of this kind is a concept well known in the law.’

PROOF OF COPYRIGHT OWNERSHIP

Unless disputed, copyright is presumed to subsist and the plaintiff is presumed to be the owner (s 126).

IF labels/marks on work:

Here the [labels/marks] indicating the [year/place] of [publication/making] of the [work] is admissible as prima facie evidence (ss 126A and 126B).

IF name on work:

Here the [author’s] name appears on the [work]. Therefore the [author] is presumed to be the author and first owner (s 127).

IF name of publisher:

Here the [publisher’s] name appears on the [work]. Thus if s 127 does not apply and the publication was in the last 70 years, the [publisher] is presumed to be the owner (s 128).

IF criminal charge:

The Copyright Amendment Act 2006 (Cth) adopted these same presumptions relating to subsistence and ownership of copyright for the prosecution for offences against Division 5 (except s 132AM) (s 132A).

PART IV: SUBJECT MATTER OTHER THAN WORKS

IF sound recording:

The maker of a sound recording is the owner of any copyright in the recording (s 97).

The ‘maker’ of a sound recording is the person who owned that record at that time (s 23(3)).

IF live performance:

Performers of live performances also get some share of ownership in sound recordings made (s 23(3A)).

IF cinematographic film:

The maker of the film is the owner of any copyright in the film (s 98). The maker is the producer – the person who organises and pays for the film) (s 22(4)).

IF director:

Directors recently given economic rights by Copyright Amendment (Film Directors' Rights) Act 2005 (Cth).

This gives directors limited rights in films that they have directed including a share of the remuneration when selling to pay TV. This only applies to films which began production after these amendments (ie after 19/12/2005).

IF television and sound broadcasts:

The maker of the broadcast is the owner of any copyright in the broadcast (s 99). The maker is the person who provided the broadcasting service by which the broadcast was delivered (s 22(5)).

IF published edition of works:

The publisher of an edition of a work or works is the owner of any copyright subsisting in the edition (s 100).

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ASSIGNMENTS AND LICENCES

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Pursuant to s 196(1) copyright is a form of personal property and thus transmissible by assignment, by will and by devolution by operation of law.

IF future assignment:

Future copyright can be assigned, and need not subsist at the time it is made (s 197). The copyright will vest in the assignee when the work comes into existence at a future time or on happening a future event.

IF limited rights assigned:

Can assign or license all copyright, or specific rights, and can limit to specific jurisdictions (s 196(2)).

ASSIGNMENT

Assignment is a transfer of ownership of property (s 196). Allows recipient to do anything in the copyright, including license,

assign, sue for infringement. Assignor retains no special rights to the work and therefore can be sued for copyright infringement.

Must be in writing (s 196(3)) May be total or partial May be future (s 197)

IF partial:

Partial assignments mean that a number of assignees are entitled to copyright in their respective interests ( s 16). Partial assignments are treated as separate copyrights (s 30).

LICENCE

A license is a permission to deal with the copyright subject matter for certain purposes.

IF exclusive:

An exclusive licence is s 10(1):

In writing Signed by, or on behalf of, the owner of the copyright Authorises the licensee To the exclusion of all others To do an act That the owner of the copyright would, but of the licence, have the exclusive right to do

Exclusive licence gives licensee the power to sublicense and sue for infringement (s 119).

Where non-exclusive, others may have rights as well.

A licence is the product.

Where use of a product would necessarily infringe copyright (as in software), then it could be said that you’re not paying for the product (i.e., CD), but the licence.

You get some rights over the physical medium, but you have no right to use it without a copyright licence Often the licence is inside the box the software comes in >> Shrinkwrap license.

IF implied:

Licenses can be implied from the circumstances, though subject to contrary directions.

e.g. a newspaper editor has an implied licence to publish letters to the editor.

An implied license exists to use commissioned copyright material for the purposes contemplated (Beck v Montana Constructions Pty Ltd). If you go beyond the purposes contemplated, it will exceed the scope of the licence.

IF statutory licence:

Usually it is an infringement to exercise any of the copyright owner’s exclusive rights without having first obtained the owner’s permission (or licence) to do so, or to authorise anyone else to infringe those rights.

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However, the Copyright Act contains statutory licences – operate so that it is not an infringement of copyright to use copyright material in a way that involves an exercise of the exclusive rights, without having first obtained permission to do so.

A feature of these schemes is that, although prior permission to do the acts is not needed, arrangements must be put in place so that the copyright owner receives equitable remuneration or is otherwise compensated for the exercise of his or her rights.

IF reproduction for schools and universities:

Part VB allows for the reproduction of material, without the permission of the copyright owner, but a statutory licence fee must be paid. Copyright Agency Limited collects the fees – Copyright Tribunal sets the fees.

IF disabled people or organisations:

Part VA allows for organisations assisting persons with an intellectual disability may make off-air copies of broadcasts – Administered by Screenrights.

IF free-to-air broadcasts:

Part VC allow the retransmission of works, sound recordings and films included in free-to-air broadcasts.

IF musical work:

Sections 54-64 allows for persons to make a sound recording of music or lyrics without permission of the copyright owner but must pay a statutory licence fee. Music must have already been recorded in Australia. There is no such right in relation to the sound recording – sampling is not permissible. Administered by Australasian Mechanical Copyright Owners’ Society (AMCOS).

INFRINGEMENT OF COPYRIGHT26

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PART IIII WORKS: DIRECT INFRINGMENT

It is an infringement of copyright to do, or authorise anyone else to do, any of the exclusive rights comprised in the copyright without the permission of the copyright owner (s 36).

The exclusive rights are set out in s 31(1).

For literary, dramatic and musical works (s 31(1)(a)):

(i) To reproduce the work in a material form;(ii) To publish the work;(iii) To perform the work in public;(iv) To communicate the work to the public;(v) Repealed(vi) To make an adaptation of the work.

For an artistic work (s 31(1)(b)):

(i) To reproduce the work in a material form;(ii) To publish the work;(iii) To communicate the work to the public.

REPRODUCTION OF THE WORK IN MATERIAL FORM

There is an exclusive right to reproduce the work in material form (ss 31(1)(a)(i) and 31(1)(b)(i)).

Reproduction means copying and does not include cases where the author or compiler produces a substantially similar result by independent work without copying (Ladbroke (Football) Ltd v William Hill (Football) Ltd).

The notion of reproduction involves two elements (Francis Day v Bron):

1. Objective similarity – there must be a sufficient degree of objective similarity between the plaintiff’s and the defendant’s work (that is, the defendant must have produced a work which closely resembles the plaintiff’s); and

2. Causal connection – the defendant’s work must be derived directly or indirectly from the plaintiff’s copyright work (that is, there must be some causal connection between the two works).

IF produced via independent work:

Reproduction does not include cases where the author or compiler produces a substantially similar result by independent work without copying (Ladbroke (Football) v William Hill).

IF subconscious copying:

Subconscious copying is sufficient provided there is evidence of copying.

Francis Day & Hunter v. Bron per Willmer J.

Plaintiff sued alleging the defendant’s infringed copyright in a musical work. Song called ‘in a little Spanish town’. 36 years later, last 8 bars of the song were alleged to have been copied. HELD that the 8 bars were a substantial part as they were an important part of the work. The similarities probably

coincidental, and there was no evidence that the defendant had copied or heard song unable to infer sufficient knowledge and memory for conscious or subconscious copying.

IF indirect infringement:

An infringement may be indirect.

LED Builders Pty Ltd v Eagle Homes

LED and Eagle built project homes LED owned building plans – copyright subsisted as an original artistic work Display homes built in accordance with the plans LED claimed that Eagle had substantially reproduced their copyrights works by drawings, brochures, buildings (oral

instructions given to draftsman to substantially reproduce LED’s plans)

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Objective similarity – judge looked at both sets of plans – although there were some small differences, the overall plan and design were almost identical

Causal connection – instructions given to draftsman to substantially copy the LED plans.

IF a sound recording or film is made of the work:

A literary, dramatic or musical work is deemed to have been reproduced in a material form if a sound recording or film is made of the work (s 21(1)).

IF a 2 or 3 dimensional work is reproduced in 3 or 2 dimension:

Copyright in an artistic work in two-dimensional form will be infringed by its reproduction in a three dimensional form and vice versa (s 21(3)).

IF work is simple or commonplace:

When dealing with a work, such as a project home design, which is by its nature very simple and commonplace, it will be more difficult to prove infringement (Ancher v Hooker Homes).

The simpler and more commonplace the design is, the more closely the defendant’s plans must follow the plaintiff’s.

Dixon Investments Pty Ltd v Hall

HELD although the defendant’s house had used the plaintiff’s plans as direct inspiration, the constructed house had sufficient differences of a genuine character from the plaintiff’s plans not to constitute an infringement of copyright.

IF building or model is copied via painting, drawing, engraving or photograph, film or broadcast:

Note that the copyright in a building or a model of a building is not infringed by the making of a painting, drawing, engraving or photograph of the building or model or by the inclusion of the building or model in a cinematograph film or in a television broadcast (s 66).

PUBLICATION

There is an exclusive right to publish the work (ss 31(1)(a)(ii) and 31(1)(b)(ii)).

Publish means to make available to the public in Australia something which has not previously been made available (Avel Pty Ltd v Multicoin Amusement Pty Ltd).

The definitions of published in s 29(1)(a) do not apply to s 31(1)(a)(ii).

PERFORMANCE

There is an exclusive right to perform the work in public (s 31(1)(a)(iii)).

A performance of a work given to members of the public is a performance “in public” unless it is shown to be domestic in character.

Australasian Performing Rights Association v Canterbury-Bankstown League Club Ltd

HELD playing music by a dance band to members of a club was a performance in public – infringement of copyright.

Australasian Performing Rights Association v Tolbush Pty Ltd

HELD playing of music in car radios displayed for sale in a shop was a performance in public – infringement of copyright.

Australasian Performing Rights Association v Commonwealth Bank of Australia

HELD portions of music on instructional video played to 11 staff members of a bank prior to opening was a performance in public – infringement of copyright.

Rank Film Productions Ltd v Dood

HELD transmission of film by central VCR for TVs in hotel was a performance in public – infringement of copyright.

COMMUNICATION TO THE PUBLIC

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There is an exclusive right to communicate the work to the public (ss 31(1)(a)(iv) and s 31(1)(b)(iii)).

‘Communicate’ is defined in s 10(1) as meaning 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’.

Communication other than broadcast is taken to have been made by the person responsible for determining the content of the broadcast (s 22(6)).

It includes cable transmissions. Also includes the making available of copyright material online.

ADAPTATION

There is an exclusive right to make an adaptation of the work (s 31(1)(a)(vi)).

Adaptation includes (s 10):

(i) The dramatization of a non-dramatic literary work(ii) A translation(iii) A pictorial version of a literary work(iv) An arrangement of a musical work.

PART IV SUBJECT MATTER OTHER THAN WORKS: DIRECT INFRINGMENT

Where Part IV is concerned, direct infringement is a much more restricted concept than in relation to Part III Works.

IF sound recording:

Copyright of sound recordings protected by s 85.

There is an exclusive right to (s 85(1)):

(a) Make a copy of the recording;(b) Cause the recording to be heard in public;(c) Communicate the record to the public;(d) Enter into commercial rental agreements.

IF copying the recording:

‘Copy’ means ‘a record embodying a sound recording …’ (s 10(3)(c)).

Making a “sound alike” version of a popular song does not infringe copyright in the sound recording, although it may in the underlying works (the lyrics and music).

CBS Records Australia v Telmak Teleproducts (Aust) Pty Ltd

Telmak produced recordings and compilation of chart hits by cover bands. CBS, who owned the sound recording copyright, sued for infringement of sound recording copyright. HELD copyright only protects the actual embodiment of the very sounds on the original record.

IF film:

Copyright of films protected by s 86.

Exclusive rights are given to makers of the film and include right to (s 86):

(a) Make a copy of the film;(b) Cause the film to be seen or to be heard in public;(c) Communicate the film to the public;(d) Repealed.

Zeccola v Universal City Studios Inc

Universal owned copyright in film Jaws, screenplay Jaws, and novel Jaws. Zecolla made a film about man eating sharks called Great White. Universal sued for copyright infringement. HELD that Zecolla had not infringed copyright in the “film” as there was no copy of the visual images.

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As to whether Zeccola had infringed copyright in the novel and screenplay, the primary judge watched both films (“with some degree of fortitude”) and held there was such a marked degree of similarity between the two films that there was an inescapable inference of copying.

The Full Federal Court wasn’t as certain, but did not find fault with the primary judge’s opinion.

Australian Video Retailers Association Ltd v Warner Home Video Pty Ltd

As there are no commercial rental right in films, but there are in computer programs (see s 30A), Warner Home Video argued that DVD movies are also computer programs.

HELD that the commands which controlled the flow of the DVD were computer programs, but that the audiovisual content was not part of the program.

Accordingly, when a video store hires out a movie, the essential object of the rental is not the computer program, but the film.

Although computer programs can be “films”, films do not suddenly become programs when put on a DVD.

IF television or sound broadcast:

Copyright of television and sound broadcasts is protected by s 87.

Section 87 contains exclusive right to:

(a) Make a film of a television broadcast;(b) Make a sound recording of a broadcast;(c) Re-broadcast or communicate to the public.

Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (The Panel Case)

Ten’s show broadcast clips taken from other networks. Nine sued under right to rebroadcast. The Full Federal Court held that any unauthorised rebroadcasting of a broadcast would be an infringement of copyright

(subject to any defence of fair dealing that Ten might have had). Appealed to the High Court. HELD copyright is only infringed if you rebroadcast the program, or a substantial part of the program. Otherwise

broadcast makers would get much more protection than other copyright owners.

IF published edition of works:

Protection of copyright in s 88.

Provides exclusive right to make a facsimile copy of a published edition of one or more literary, dramatic, musical, or artistic works (s 88).

IF publisher suing:

In order to bring an action, the defendant must have copied a substantial part of the published edition as a whole – in particular the typography, layout or presentation of the edition. If the intention is only to copy the articles (which are owned by the authors) and not the presentation there is no infringement (Nationwide News v Copyright Agency Limited).

Nationwide News Pty Ltd v Copyright Agency Limited

The appellants owned the majority of Australian newspapers and a significant proportion of magazines. The respondent, Copyright Agency Limited (CAL), was a collecting society representing copyright owners of

literary, dramatic and artistic works. Separate from its statutory functions as a collecting society, CAL entered into voluntary licenses with educational institutions for the copying of articles from newspapers and magazines, passing royalties back to the authors.

The appellants claimed that this infringed their rights in the published edition. HELD the newspaper and magazine owners had rights to published editions, but that to constitute infringement

the def must copy a substantial part of the published edition as a whole. More relevant when the aim of copying is to utilise the ‘typography, layout or presentation of the published

edition’ As the intention was to copy the articles (which are owned by the authors), and not the presentation, there was

no infringement.

PART III AND IV – AUTHORISATION OF INFRINGEMENT

Authorization means ‘sanction, approve or countenance’ (University of NSW v Moorhouse and Angus and Robertson (Publishers) Pty Ltd).

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IF Part III Work:

Copyright is also infringed when a person authorises the doing in Australia of any act comprised of copyright without the license of the owner (s 36(1)).

In determining the issue of authorisation, the matters to be taken into account include (s 36(1A)):

i. the extent of the person’s power to prevent the doing of the act concerned;ii. the nature of any relationship existing between the person and the person who did the act concerned;iii. whether the person took any reasonable steps to prevent or avoid the doing of the act, including whether the

person complied with any relevant industry codes of practice.

IF Part IV Subject Matter other than Works:

Copyright is also infringed when a person authorises the doing in Australia of any act comprised of copyright without the license of the owner (s 101(1)).

In determining the issue of authorisation, the matters to be taken into account include (s 101(1A)):

i. the extent of the person’s power to prevent the doing of the act concerned;ii. the nature of any relationship existing between the person and the person who did the act concerned;iii. whether the person took any reasonable steps to prevent or avoid the doing of the act, including whether the

person complied with any relevant industry codes of practice.

A person who has under his control the means by which an infringement may be committed and who makes it available to other persons knowing or having reason to suspect that it is likely to be used for that purpose, and omitting to take reasonable steps to limits its use to legitimate purposes, would authorise any infringement (University of NSW v Moorhouse and Angus and Robertson (Publishers Pty Ltd).

University of NSW v Moorhouse and Angus and Robertson (Publishers Pty Ltd)

A student at the University of NSW made two copies of a 10 page story by Moorhouse at the photocopying machine in the library. No attempt was made to supervise the copiers to ensure that they were not being used to infringe copyright. Proceedings were taken by the author and publisher against the University for authorizing an infringement of copyright.

HELD the University had authorized an infringement of copyright – the University provided the books and the machines and failed to take adequate steps to warn about infringement.

Must establish that an act of infringement has taken place (RCA Corp v John Fairfax & Sons Ltd).

Must be some connection between the “authoriser” and the infringer – that is, the “authoriser” had some form of control over the infringer, or provided the materials used in the infringement.

The facts are similar to that in RCA Corp v Fairfax, in that the [authoriser] had no control over the [infringer] and the [article] was merely a [factual report/encouragement/approval]. As such, there will have been no authorization.

RCA Corp v. John Fairfax & Sons Ltd

A journalist published articles on the possibility of using private recordings of records as an alternative to buying records. The plaintiff claimed this was authorizing the infringement of copyright.

HELD no authorization as there was no control between the newspaper and the taper Furthermore, the article did not sanction, approve or countenance taping – it was a factual report, not an invitation or

incitement to infringe Further, no evidence that any person did actually follow his instructions and infringe copyright.

Examples

Australasian Performing Rights Association v Canterbury-Bankstown League Club Ltd

HELD the Club authorised any infringement of the dance band as the Club allowed the band leader to select any music to play.

CBS Songs Ltd v Amstrad Consumer Electronics

HELD the manufacturer to two deck tape recorders, capable of copying tapes at twice the normal playback speed did not authorise an infringement of copyright – it facilitated copying, but did not authorise it.

AUTHORISATION IN AN ONLINE ENVIRONMENT

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Whether the [authoriser] has authorised the infringement of [owner’s] copyright in the [work] depends on a number of factors.

Factors for authorization:

Knowledge that the system is being used to infringe copyright & failure to take measures to prevent (UMA v Sharman) Failure to implement technological prevention measures such as key work filtering (UMA v Sharman) Actively encouraging infringement ‘Join the Revolution’ (UMA v Sharman) High degree of control over system - capacity to remove links (Cooper v UMA) High degree of control over system - capacity to stop by blocking users (A&M v Napster) Financial interest (through advertisements on system) in infringing activities (A&M v Napster)

Factors against authorization:

Warnings on website/end-user licence prohibiting copyright infringement (however they were ineffective in Sharman) (UMA v Sharman)

A&M Records v Napster (US authority)

HELD that a computer system operator cannot be held liable merely because its system may be utilised for infringement, but that if a computer system operator learns of copyright infringement and does not remove the infringing materials, it will be liable.

Napster was held guilty of contributory infringement since the facts showed that Napster had a great degree of control; knowledge of copyright infringing music files which were shared through its system; a financial interest in the infringing activities; and had the capacity to stop the infringements through an ability to block the user's access to its system.

Metro-Goldwyn-Mayer v Grokster (US authority)

HELD that peer-to peer software was capable of non-infringing activities so that it would not be liable for simply making and distributing its software.

However, persons or organisations can be liable for inducing infringement, so that one who distributes a device with the object of promoting it as able to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement (control), is liable for the resulting acts of infringement by third parties.

Universal Music Australia Pty Ltd v Sharman Licence Holdings (Kazaa)

Sharman ran a peer-to-peer file sharing platform of sound recordings known as Kazaa. HELD that even though the Kazaa system had a number of technological controls, these were insufficient to overcome a

finding of liability for copyright infringement by authorisation. Warnings contained on the Kazaa website and the end user license agreement prohibiting infringing copyright were

ineffective to prevent such conduct and Kazaa were well aware that their system was being utilized for sharing copyright files.

Kazaa did not implement any technical measures, such as key word and file filtering which could have curtailed the sharing of copyright files

Kazaa encouraged misconduct by including exhortations such as “Join The Revolution” to increase the incidence of infringing file sharing.

Cooper v Universal Music Australia

Cooper maintained website known as MP3s4free.com. This website provided an organised directory of hyperlinks to websites that had downloads of infringing copies of music. The website in Cooper did not actually store the infringing MP3s, rather it provided three different types of hyperlinks including:

a. hyperlinks that automatically commenced downloading a file from another website as soon as the hyperlink was clicked;

b. hyperlinks that brought a user to another website from which they could download a file; andc. other hyperlinks which brought them to other websites where they could download the file.

PART III AND IV – INDIRECT INFRINGEMENT

The main forms of indirect infringement involve infringing copies being:

imported for the purposes of trade without the license of the copyright owner (ss 37 and 102) sold, hired out or otherwise made the subject of trade (ss 38 and 103).

As a general rule it is necessary to establish that a defendant knew or ought reasonably to have known that the article in which they were dealing had been made in breach of copyright, or in the case of an imported article, that it would have been an infringing copy if it had been made in Australia by the importer (Raben Footwear Pty Ltd v Polygram Records Inc).

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This is an objective test – but must also take into account the circumstances and capacity of the particular defendant.

IMPORTATION OF INFRINGING ARTICLES

Elements are contained in ss 37 and 102 – depending on whether it is Part III or IV:

(a) import article into Australia(b) for sale, hire or other commercial purpose(c) without license of copyright owner(d) knows or ought reasonably to know(e) that if the Article had been made by the importer in Australia, it would have been an infringement of copyright

IF Part III Work:

Pursuant to s 37, it is an infringement of copyright in any work in which copyright subsists to import an article into Australia for sale, hire or other commercial purpose, without the license of the copyright owner, if the importer knew, or ought reasonably to have known, that if the article had been made by the importer in Australia, it would have constituted an infringement of copyright

IF Part IV Subject Matter other than Work:

Pursuant to s 102, it is an infringement of copyright in any work in which copyright subsists to import an article into Australia for sale, hire or other commercial purpose, without the license of the copyright owner, if the importer knew, or ought reasonably to have known, that if the article had been made by the importer in Australia, it would have constituted an infringement of copyright

IF directors of a company:

It is sufficient to show one director knows, or ought to have known (Milpurrurru v Indofurn Pty Ltd)

Milpurrurru v Indofurn Pty Ltd

A company imported carpets from Vietnam which reproduced Aboriginal artworks made by the applicant. HELD the importing company had infringed the applicant’s copyright - managing director either knew or should

have known (one director’s knowledge was sufficient).

IF label or container etc included:

Pursuant to [s 37(2)/s 102(2)] there is an exception to the requirement of proof of knowledge where an ‘accessory’ to an article includes a copy of a work which was made without the licence of the owner of the copy in the country in which the copy was made, it is not necessary to establish proof of knowledge on the part of the importer.

‘Accessory’ is defined in s 10(1) to include for example, labels on the article, the packaging or container in which the article is contained and written instructions or other information provided with the article.

IF parallel importation:

Liability extends to the ‘parallel’ importation of genuine articles (Interstate Parcel Express v Time-Life International).

Interstate Parcel Express Co Pty Ltd v Time-Life International (Nederlands) B.V.

Time Inc., which owned copyright in Australia and US, granted to Time-Life an exclusive license to distribute the books in countries outside US and Canada.

Rather than buy from Time-Life Angus and Robertson imported copies cheaply from the US. Time-Life sought an injunction to restrain sale of the books.

HELD infringement by importation. Irrelevant that the books were not pirated in that they were lawfully acquired in the US

IF importation of software:

Sections 37 and 102 also used for parallel importation of software (Computermate Products v Ozi-Soft).

IF importation of records:

Sections 37, 102 also used for parallel importation of records (Polygram Records v Monash Records).

IF importation of films (video games):

Sections 37, 102 also used for parallel importation of films (video games) (Galaxy Electronics v Sega Enterprises).

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IF importation of books:

Parallel importation of books is now allowed in these circumstances (ss 44A and 112A):

The book is non-infringing in that it is legitimately manufactured in the country of origin The book is first published outside Australia and not published in Australia within 30 days; Can import for commercial sale if copyright owner unable to meet a local order for supply of the book within

90 days; An order for a single copy for non-commercial purposes; An order for multiple copies from a non-profit library.

First publication is deemed to be in Australia if a book is published in Australia within 30 das of publication overseas (s 29(5)).

RELAXATION ON PARALLEL IMPORTATION

Labels and Accessories

Provisions of the Copyright Amendment Act (No. 1) 1998 (Cth) now prevents an overseas copyright owner controlling the distribution of goods in Australia by reliance on copyright in, for example, the label on a product (s 44C and 112C).

The importation or sale of a “non-infringing accessory” to an article is not an infringement of copyright which may subsist in the accessory (s 44C and 112C).

‘Non-infringing accessory’ means (s 10(1)):

Accessory made in a country which is a party to the Berne Convention or the TRIPs Agreement Making of the copyright material was authorised by the copyright owner in the country in which it was made.

If the article embodies a copy of a sound recording, computer program or electronic version of a book, periodical or sheet music then “accessory” includes any work or subject matter that is on it, embodied in it or included with it (s 10AD).

Will allow parallel importation of computer games.

Sound Recordings

The Copyright Amendment Act (No. 2) 1998 has effectively removed the restriction on the parallel importation of legitimate “sound recordings” as from 30 July 1998 (ss 44D and 112D).

Requirements:

Recording must have been published either in Australia or (with the owner’s consent) elsewhere Relevant copy must have been made by owner or with owner’s consent Copy must not have been made in breach of copyright in country where it was made.

Then have not infringed copyright in sound recording itself (s112D) or any work embodied in that recording (s44D) (ie the lyrics as a literary work).

Computer Programs

It is not an infringement to import or deal with a “non-infringing copy of a computer program” (s 44E).

A “non infringing copy of a computer program” is one made in a country that is a party to the Berne Convention or the TRIPs Agreement and did not infringe copyright when made in that country (s 10AB).

The onus on def to prove it is non-infringing (s 130B).

Electronic Literary or Music Item

It is not infringement to import to deal with a “non infringing copy of an electronic literary or music item” (s 44F for Works and s 112DA for published editions of works).

The onus on def to prove it is non-infringing (s 130C).

SALE OF INFRINGING ARTICLES

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Elements are contained in ss 38 and 103 - depends on whether a Work or Subject Matter Other than Work.

1. Sells or hires an article;2. Person knew or reasonably ought to have known that:

Making of the article constituted an infringement; or If article is imported, that the article would have been an infringement if it were made in Australia by the

importer.

Raben Footwear Pty Ltd v Polygram Records Inc

Raben imported 1000 copies of a Cher CD from Germany. Polygram sued for infringement of copyright. Raben argued that he had no knowledge – Raben had asked the supplier about licensing for the CDs and received

a guarded supply. HELD Raben had infringed copyright – supplier’s response ought reasonably have led the defendant to assume the

true position and therefore reasonably knew that making the CD in Australia would have constituted an infringement of copyright.

S38 does not apply to a copy of a work that is, or is on, or embodied in, a non-infringing accessory to an article if the importation of the article is not an infringment: s44C(2)

Exceptions in s44D, 44E and 44F apply to s38 dealings S103 does not apply when s112C makes the importation not infringing Exceptions in s112D and 112DA apply to s103 dealings

DEFENCES TO COPYRIGHT INFRINGEMENT

FAIR DEALINGS - BOTH PART III AND PART IV MATERIAL

The fair dealing provisions:

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mark out areas of free use of copyright materials, in the public interest and provide a complete defence to an infringement action.

are commonly referred to as exceptions but are more accurately conceptualised as establishing limits to the scope of the bundle of exclusive rights.

apply to all categories of works and subject matter and to each of the exclusive rights but are confined to the doing of acts for four specific purposes.

permit royalty-free use of a substantial part or the whole of the work or subject matter without the authorisation of the copyright owner.

A fair dealing with a Pt III work or adaptation or a Pt IV audio-visual item (that is, a sound recording, film, sound broadcast or television broadcast) does not infringe if done for one (or more) of the following purposes:

research or study (ss 40 and 103C); criticism or review (ss 41 and 103A); reporting of news (ss 42 and 103B); or judicial proceedings or the giving of professional legal advice (ss 43 and 104).

RESEARCH OR STUDY (SECTION 40 / SECTION 103C)

Terms ‘research’ and ‘study’ are not defined in the legislation but are given their dictionary meaning.

Research means a ‘a diligent and systematic enquiry or investigation into a subject in order to discover facts or principles’ (De Garis v Neville Jeffress Pidler Pty Ltd).

De Garis v Neville Jeffress Pidler Pty Ltd

HELD the respondent, a press clipping and media research bureau, who supplied photocopies of published material in return for a fee was not “research” or “study” in the terms of s 40.

In determining whether a dealing is for the purpose of “research or study”, the relevant purpose is that of the person making the dealing, not the purpose to which the reproduction or adaptation is ultimately put (De Garis v Neville Jeffress Pidler Pty Ltd).

De Garis v Neville Jeffress Pidler Pty Ltd

HELD the purpose of the respondent’s press clipping service was not to conduct research, even though research may have been the purpose of its customers.

IF dealing was a reproduction or adaptation of a Part III Work or Part IV Subject Matter:

Several non-exclusive factors may be taken into account to determine whether the dealing was fair (s 40(2), s 103C(2)).

the purpose and character of the dealing; the nature of the work or audio-visual item; the possibility of obtaining the work or audio-visual item within a reasonable time at an ordinary commercial price; the effect of the dealing upon the potential market for, or value of, the work or audio-visual item; where only part of a Pt III work, adaptation or audio-visual item is reproduced or copied, the amount and substantiality of

the part copied in relation to the whole item.

IF article in a periodical (Part III):

It is a fair dealing for research or study to copy the whole of the article (s 40(3)(a)).

It is not a fair dealing to reproduce the whole or part of an article in a periodical if another article in the publication, dealing with a different subject matter is also reproduced (s 40(4)).

IF not for research or study:

Only allowed to copy a reasonable portion of the work of adaption (s 40(3)(b)).

IF article is in a published edition more than 9 pages long:

A reasonable portion is up to 10% of the aggregate of the number of pages in the edition (s 10(2)).

IF divided into chapters:

A reasonable portion is the whole or part of a single chapter even though it may exceed 10% of the number ofpages in the edition (s 10(2)).

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IF part of published literary work (not the program or electronic database) or published dramatic work in electronic form:

Reproduction contains a reasonable portion of the work if the number of words copied does not exceed, in total, 10% of the number of words in the work (s 10(2A)).

CRITICISM OR REVIEW

There may be a fair dealing for the purpose of criticism or review provided sufficient acknowledgment is made (ss 41 and 103A).

For an acknowledgment to be sufficient, it must identify the work or audio-visual item by its title or other description, as well as the author (s 10(1)).

TEST from TCN Channel Nine Pty Ltd v Network Ten Ltd (Hely J): ‘Is the program incorporating the infringing material a genuine piece of criticism or review, or is it something else, such as an attempt to dress up the infringement of another’s copyright in the guise of criticism, and so profit unfairly from another’s work?’

Lord Denning in Hubbard v Vosper stated ‘it is not fair dealing for a rival in the trade to take copyright material and use it for its own benefit’.

The terms ‘criticism and review’ are not defined and thus take their dictionary meaning (De Garis v Neville Jeffress Pidler).

Criticism: act or art of analysing and judging the quality of a literary or artistic work; the act of passing judgment as to the merits of something; [and] a critical comment, article, or essay, a critique. It includes all kinds of criticism – it is not restricted to literary criticism

Review: critical article or report, as in a periodical, on some literary work, commonly some work of recent appearance; a critique

Criticism and review are words of ‘wide and indefinite scope which should be interpreted liberally” and extend to “the thoughts underlying the expression of copyright works or subject matter’ (TCN Channel Nine v Network Ten).

They involve the passing of judgment and may be strongly expressed but, provided they are genuine and not a pretence for some other purpose, need not be balanced (TCN Channel Nine v Network Ten).

REPORTING OF THE NEWS (SECTION 42 / SECTION 103B)

Copyright in a Pt III work or adaptation or a Pt IV audio-visual item is not infringed if it is dealt with for the purpose of, or associated with, the reporting of news (ss 42 and 103B):

in a newspaper, magazine or periodical, provided sufficient acknowledgement is made of the work or audio-visual item; by means of an electronic communication; in a cinematograph film.

IF music: This exception covers music incidentally recorded in the course of reporting news by means of broadcast or film, but does not extend to music added to the soundtrack which does not form part of the news being reported (s 42(2)).

IF entertainment purpose as well:

The fact that news coverage is interesting or may even be entertaining does not negate the fact that it is news, even though it may sometimes be difficult to draw a distinction between news and entertainment.

News reported with humour may still fall within the ambit of the fair dealing provisions (TCN Channel Nine v Network Ten).

JUDICIAL PROCEEDINGS OR THE GIVING OR PROFESSIONAL LEGAL ADVICE

Professional Legal Advice

It is not an infringement to make a fair dealing with a Part III work for the purposes of giving of professional advice by a legal practitioner, a registered patent attorney or a registered trade mark attorney (s 43(2)).

There is no fair dealing counterpart in relation to the use of audio-visual items for these purposes.

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Judicial Proceedings

Any act done in relation to a literary, dramatic, musical or artistic work for the purpose of a judicial proceeding or the report of a judicial proceeding is exempted from copyright infringement (s 43(1)).

A general exception from infringement of copyright in sound recordings, films, broadcasts and published editions applies for acts done in the course of judicial proceedings or the reporting of such proceedings (s 104(a)) or in the course of obtaining professional advice from a lawyer, patent attorney or trade marks attorney (s 104(b) and (c)).

PARODY OR SATIRE (SECTION 41A / SECTION 103AA)

The new provisions (ss 41A and 103AA) apply where a person or organisation can demonstrate that their use of copyright material (both works and audio-visual subject matter) is a fair dealing for parody or satire.

The Act does not include a definition of ‘parody’ or ‘satire’ or require sufficient acknowledgment of the work to be made (TCN Channel Nine v Network Ten).

The terms ‘parody’ and ‘satire’ are not defined in the Act so courts will probably rely on dictionary definitions.

Parody and entire tend to employ irony, sarcasm and ridicule tin a humorous manner. The focus of their attention is what sets them apart.

Parody is associated more with ridicule and is generally directed at criticism of a work. Parody, by its nature, is likely to involve holding a creator or performer up to scorn or ridicule.

Satire draws attention to characteristics or actions which are external to an author’s work.

SPECIFIC ROYALTY FREE EXCEPTIONS - BOTH PART III AND PART IV MATERIAL

TIME SHIFTING (SECTION 111)

If a person makes:

a cinematograph film or sound recording of a broadcast solely for private and domestic use by watching or listening to the material broadcast at a time more convenient than the

time when the broadcast is made then the making of the film or recording does not infringe copyright in the broadcast or in any work or other subject-

matter included in the broadcast.

IF shown to other people later:

Technically, if the tape is later shown to a group of friends, it will not be for private use and could be an infringement.

This exception will not apply if an article or thing embodying the film or recording is:

sold; let for hire; by way of trade offered or exposed for sale or hire; distributed for the purpose of trade or otherwise (not including loaning the article or thing to a member of the lender's

family or household for the member's private and domestic use); used for causing the film or recording to be seen or heard in public; used for broadcasting the film or recording.

FORMAT SHIFTING

IF book or newspaper or periodical:

You can copy a book, newspaper or periodical that you own to use in a different format (e.g. scanning an article from a magazine onto your personal computer to keep as a reference) (s 43C).

IF photograph:

You are permitted to copy a photograph (s 47J).

where the copy you own is in hardcopy form – into an electronic form (for example by scanning into a computer), or

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where the copy you own is in electronic form – into a hardcopy form (for example by printing a digital file).

IF videotape:

You are able to copy a video cassette that you own into an electronic form (for example to a DVD) (s 110AA).

The following limits apply to these exceptions:

The original copy you own must be a legitimate copy. You cannot sell, hire, lend or give away any copy made but you can lend a copy to a member of your family or

household. You are free to dispose of the original legitimate copy of a sound recording, but you must not keep any copy you have

made from the original. Making multiple copies in a similar format is not allowed, either from the original copy you own or from a later copy. Copying computer games is not allowed. You are not authorised to remove any anti-copying measures applied by the manufacturer to the material you own.

MUSIC

If (s 109A(1)):

the owner of a copy (the earlier copy ) of a sound recording makes another copy (the later copy ) of the sound recording using the earlier copy; and

the sole purpose of making the later copy is the owner's private and domestic use of the later copy with a device that:o is a device that can be used to cause sound recordings to be heard; and

o he or she owns; and

the earlier copy was not made by downloading over the Internet a digital recording of a radio broadcast or similar program; and

the earlier copy is not an infringing copy of the sound recording, a broadcast or a literary, dramatic or musical work included in the sound recording;

then the making of the later copy does not infringe copyright in the sound recording, or in a literary, dramatic or musical work or other subject matter included in the sound recording.

This exception will not apply if the earlier copy or the later copy is:

sold; let for hire; by way of trade offered or exposed for sale or hire; distributed for the purpose of trade or otherwise (not including loaning the article or thing to a member of the lender's

family or household for the member's private and domestic use); used for causing the film or recording to be seen or heard in public; used for broadcasting the film or recording.

MISCELLANEOUS EXCEPTIONS

Performance of a literary, dramatic or musical work or playing a sound recording or film in a school classroom does not infringe copyright (s 28).

Public performance of a literary, dramatic or musical work or an adaptation of such a work, by the use of reception equipment or a record, at “premises where people reside or sleep, as part of the amenities provided exclusively for residents or inmates of the premises or for those residents or inmates and their guests” (s 46 – see also s 106(1) in respect of sound recordings).

It is not an infringement to photograph, paint, draw, film or include in a television broadcast a building, a model of a building, a sculpture or a work of artistic craftsmanship which is permanently displayed in a public place or in premises open to the public (ss 65 and 66).

Copyright in an artistic work is not infringed if the work is included in a film or television broadcast, incidentally to the principal matters represented in the film or broadcast (s 67).

It is not an infringement to read or recite in public or to include in a sound or television broadcast of a reading or recitation, a reasonable length extract from a published literary or dramatic work or an adaptation of such a work, as long as the work is given sufficient acknowledgement (s 45).

Copyright in an artistic work is not infringed by the creator of that work if he or she makes a later artistic work which does not repeat or imitate the main design of the earlier work (s 72).

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Where there is copyright in a building, copyright is not infringed by reconstructing it (s 73).

STATUTORY LICENCES - PART III AND PART IV MATERIAL

Statutory licences include:

Use of copyright material “for the services of the State” (ss 183 and 183A – C). Educational institutions and institutions assisting persons with a print disability or an intellectual disability - copy and

communicate sound and television broadcasts (Part VA) and to reproduce and communicate works and published editions (Part VB), on condition that equitable remuneration is paid to an approved collecting society).

re-recording of musical works, as long as the subsequent recording does not debase the work (s 55). the making of sound broadcasts of literary and dramatic works by the holders of a print disability radio licence (s 47A). recording of musical and literary works (Part III, Div 6). retransmissions of free-to-air broadcasts (Part VC). public performance and broadcasting of sound recordings (ss 108(1) and 109(1)).

REMEDIES FOR INFRINGEMENT OF COPYRIGHT

INJUNCTIONS

An injunction is an available remedy (s 115(2)).

An injunction is the most common remedy – either interlocutory or final.

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If final and can prove infringement, probably will get the injunction

If interlocutory must show elements as below

The principles upon which relief will be available are those applicable under the general law. Three elements for interlocutory injunction:

a) Serious question to be tried: b) Balance of convenience: c) Undertaking as to damages: ABC v Lenah Game Meats

DAMAGES

Damages is an available remedy (s 115(2)).

Damages cannot be obtained from an innocent infringer – that is, damages are not available if, at the time of the infringement, the defendant was not aware, and had no reasonable grounds for suspecting, that the act constituting the infringement was an infringement of the copyright (s 115(3)).

Kiama Constructions v MC Casella Building Co Pty Ltd

The plaintiff builder drew up a plan for a couple to build a house on a block of land. The couple made a pencil sketch of the plan and showed the defendant builder. The defendant builder suggested a draftsman should draw up more detailed plans.

HELD infringement of copyright, but that the defendant builder was an innocent infringer and was not liable to pay damages – the builder was unaware the couple did not own copyright in the plans.

ADDITIONAL DAMAGES

Additional damages of a punitive and/or aggravated nature may also be awarded (s 115(4)).

The court has regard to:

the flagrancy of the infringement; and (ia)  the need to deter similar infringements of copyright; and (ib)  the conduct of the defendant after the act constituting the infringement or, if relevant, after the defendant was

informed that the defendant had allegedly infringed the plaintiff’s copyright; and (ii)  whether the infringement involved the conversion of a work or other subject-matter from hardcopy or analogue form

into a digital or other electronic machine-readable form; and (iii)  any benefit shown to have accrued to the defendant by reason of the infringement; and (iv)  all other relevant matters.

Milpurrurru v Indofurn Pty Ltd

The artwork of eight Aboriginal artists had been reproduced without their permission on carpets manufactured overseas and imported into Australia by the defendants.

HELD copyright infringement – additional damages were assessed at $70,000 having regards to the cultural harm and personal distress caused.

ACCOUNT OF PROFITS

An account of profits is an available remedy (s 115(2)).

An account of profits and damages are alternative remedies - the applicant must elect.

The applicant is entitled to recover a sum which represents that proportion of the respondent’s profits that was fairly attributable to the infringement of the applicant’s copyright (Robert J Zupanovich v B & N Beale Nominees).

CONVERSION DAMAGES

Conversion damages is an available remedy (s 116).

The provisions were substantially amended by the Copyright Amendment Act (No 1) 1998 with the effect of making the remedy a matter of discretion by the court. These new provisions are intended to avoid the possibility of the award of excessive damages.

Owner of copyright in a work or other subject-matter may bring an action for conversion or detention in relation to (s 116(1)):

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an infringing copy.

“infringing copy” – an article, the making of which constituted an infringement of copyright in the work, sound recording, film, broadcast or edition, as the case may be, or in the case of an imported article would have constituted such an infringement if the article had been made in Australia by the importer (s 10(1)).

a device used for making infringing copies.

A court may grant those remedies that would be available as if (s116(1A)):

the copyright owner had been the owner of the infringing copy since the time the copy was made. the owner of the device used or intended for use in making them.

Conversion damages is a remedy in addition to, for example, compensatory damages (s 116(1B)).

But, the court is not to make an award for conversion damages where it is satisfied, in essence, that an award of compensatory damages under s 115 is a “sufficient remedy” in the circumstances (s 116(1C)).

In deciding whether to grant conversion damages and in assessing the amount of such damages the court is to have regard, for example, to the expenses incurred by the defendant in manufacturing or acquiring the infringing copy and “any other matter that the court considers relevant” (s 116(1D)).

If only part of the infringing copy consists of material that infringes copyright, the court considers (s 1161E):

the importance to the market value of the article of the material that infringes copyright. the proportion of the infringing material. the extent to which the material that infringes copyright may be separated from the article.

Conversion damages cannot be obtained from an innocent infringer – copyright owner is not entitled to conversion damages if it is established that at the time of the conversion that (s 116(2)):

the defendant was not aware, and no reasonable grounds for suspecting that copyright subsisted in the work or other subject-matter; or

where the articles were infringing copies the defendant believed, and had reasonable grounds for believing, that they were not infringing copies.

ANTON PILLER ORDER

An ex parte order that the defendant “permit” the plaintiff’s solicitors to enter premises forthwith to inspect and remove defined articles and documents (Anton Piller KG v Manufacturing Processes Ltd).

Awarded where it is likely that the defendant will destroy evidence (Polygram Records Pty Ltd v Monash Records (Australia) Pty Ltd).

Following the Copyright Amendment Act 2006 (Cth), there are now three tiered offences for most offences – indictable, summary and strict liability offences relating to copyright piracy.

The most serious offences are indictable.

Default fault elements of intention and recklessness. Maximum penalties of 5 years imprisonment and/or between 550 to 850 penalty units ($60,500 to $93,500) for natural

persons.

The summary offences have a lower threshold, with most containing fault elements of intention (by default) and negligence.

Maximum penalties of 2 years imprisonment and/or 120 penalty units ($13,200).

Strict liability offences do not have a fault element.

Maximum penalty for a strict liability offence is 60 penalty units ($6,600) for a natural person.

Where a matter goes to court, courts can order that circumvention devices, infringing copies, and devices and equipment used to infringe, be destroyed, or handed over to relevant copyright owners, or otherwise dealt with.

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PERFORMERS’ RIGHTS

A performer’s consent is generally needed to film or record a performance, and to broadcast or otherwise communicate a performance.

Performers have extensive rights in relation to unauthorised films, recordings and broadcasts of their performances.

From 1 January 2005, the Copyright Act 1968 (Cth) has provided that performers co-own copyright in sound recordings of their performances - this provision may in some cases allow performers to exercise additional control over sound recordings of their performances.

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Since 26 July 2007, the Copyright Act has given performers moral rights in relation to live performances and performances recorded in sound recordings.

There are three separate areas of rights relating to performers:

1. the right to grant or refuse consent to the reproduction and communication of a performance (Part XIA); 2. co-ownership of copyright in a sound recording of a performance (ss 22(3A), 22(3B) and 22(3C); and3. moral rights.

COPYRIGHT IN SOUND RECORDINGS OF LIVE PERFORMANCES

Under s89, © subsists in sounds recordings

The “maker” of the sound recording is the owner (s 97(2)).

If there is more than one “maker” of the sound recording, the makers own the copyright as tenants in common in equal shares (s 97(2A)).

New provisions re ownership effective from 1 January 2005.

Elements:

1. a live performance after 1 January 20052. a sound recording of the live performance3. person is a ‘maker’ of the sound recording

A live performance after 1 January 2005

A LP means (s 248A(1)):

a) a performance (including an improvisation) of a dramatic work, or part of such a work, including such a performance given with the use of puppets; or

b) a performance (including an improvisation) of a musical work or part of such a work; orc) the reading, recitation or delivery of a literary work, or part of such a work, or the recitation or delivery of an improvised

literary work; ord) a performance of a dance; ore) a performance of a circus act or a variety act or any similar presentation or show; orf) a performance of an expression of folklore;

being a live performance:

(g) that is given in Australia, whether in the presence of an audience or otherwise; or(h) that is given by one or more qualified persons (even if it is also given by one or more persons who are not qualified

persons), whether in the presence of an audience or otherwise.

The following shall be taken not to be performances for the purposes of this Part (s 248A(2)):

a) a performance referred to in subsection 28(1) - classroom performance;b) a reading, recital or delivery of any item of news and information;c) a performance of a sporting activity; ord) a participation in a performance as a member of an audience.

A sound recording of the live performance

Sound recording of the LP means the sound recording made at the time of LP consisting of or including sounds of the performance (s 22(7)).

Person is a ‘maker’ of the sound recording

The ‘makers’ of the sound recording are:

the persons who own the record (s 22(3A)(a))a record is defined in s 10 to include a disk, tape, paper or other device in which sounds are embodied

performers who performed in the live performance (s 22(3A)(b))this is the new provision - for normal sound recordings, the only maker is the owner of the record (s 22(3)).

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Performer in the LP means (a) each person who contributed to the sounds of the performance; and (b) if included in the performance of musical work, includes the conductor (s 22(7))

if a performer performed in the performance under the terms of his or her employment, the employer is the maker (s 22(3B)

can be expressly excluded by contract (s 22(3C))

NATURE OF THE RIGHT FOR THE ‘MAKERS’

Under s 89, (c) subsists in sound recordings and can be infringed in the same way as other recordings.

The ‘maker’ of the sound recording is the owner (s 97(2)).

If there is more than one ‘maker’ of the sound recording, the makers own the copyright as tenants in common in equal shares (s 97(2A)).

LICENCE TO USE SOUND RECORDING

A person is taken to have been granted a licence to use a sound recording of a live performance if the performance gave consent for it to be used for a certain purpose, and it is used for that purpose (s 113B).

MAKERS OF PRE-COMMENCEMENT SOUND RECORDINGS OF LP - ‘NEW OWNERS’

Owners of copyright in sound recording before 1 January 2005 (former owner) + the performers who performed in the performance (new owner) (s 100AD(1)).

If performer acting under contract of employment, the employer will be the owner of copyright: s100AD(2) subject to any contrary agreement (s 100AD(3)).

Ownership of © will start from 1 January 2005 (s 100AE(1)).

If any “new owner” is dead, then the ownership of copyright devolves as it would have if the person had owned the © immediately before death (s 100AE(7)).

Former owners hold ½ share and new owners own ½ share as tenants in common (s 100AE(2)).

Former owners hold their share in the proportions they held their share pre 1 January 2005 (s 100AE(3)). New owners hold their share at tenants in common in equal shares (s 100AE(4)).

“Former owners” can still do any act comprised in the copyright as if they had been granted a licence by the “new owners” (s 100AF).

Some limitations on the remedies a “new owner” can recover – see (s 100AG).

Where owners of copyright cannot reasonably be found, one owner can do acts comprised in the copyright as though they had a licence from that owner (s 113C).

“Former owners” may get compensation on just terms for the acquisition of property caused by s22(3A) and ss97(2)-(2A) (s 116AAA).

PERFORMERS’ RIGHTS IN REPRODUCTION AND COMMUNICATION - A RIGHT TO PREVENT UNAUTHORISED USE OF PERFORMANCE

The performer’s right, like an author’s moral right (see next set of notes) is a chose in action rather than a property right and therefore cannot be assigned (s 248N).

The action is for the unauthorised use of a performance (s 248J).

PERFORMANCE

Performance is defined in section 248A(1) as a live performance of a musical work or dramatic work including a puppet show, a live reading, recitation or delivery of a literary work or the live performance of a dance, circus act, variety at or other similar presentation.

It is not necessary that there be an audience.

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Performances given in the classroom for the purposes of educational instructions, sporting activity, audience participation and the reading, recitation or delivery of any item of news or information are excluded from the definition of performance: (ss 248A(2) and 248(1)).

Under section 248U Copyright Act protection is extended to performances made in a Rome Convention country, or by a citizen, national or resident of a Rome Convention Country.

UNAUTHORISED USE

Primary category is found in s 248G(1) - person makes an unauthorized use if they:

a) Make a direct or indirect recording of the performance orb) Communicate the performance to the public, either directly from the live performance or from an authorised recording of

it

Second category is found in s 248G(2) - a person makes an unauthorized use of a performance if the person:

Copies a recording of a performance where the person knew or ought to have known that the recording was unauthorised: 50 years

Makes a copy of an “exempt recording” where the person knows or ought to know that the copy is not an exempt recording;

Makes a copy of an unauthorised recording for the use in a sound track if the person knows or ought reasonably to have known that the recording was not authorised for the use in that soundtrack or any other sound track;

Possesses a recording of a performance for the purposes of selling, hiring, offering for trade, exposing for sale or hire or distributing for the purposes of trade in a manner which would affect the financial interests of the performer if the person knows or ought reasonably to have known that the recording was unauthorised: 50 years

Sells, hires exhibits for trade, offers or exposes to sale or hire a recording which the person knows or ought to know was an unauthorised recording;

Distributes a recording for the purpose of trade or for the purpose which will affect the financial interests of the performer if the person knows or ought reasonably to have known that the recording was unauthorised;

Imports a recording for sale, hire, trade etc, if the person knows or ought reasonably to have known that the recording was unauthorised: 50 years;

Causes a recording of the performance to be seen or heard in public if the person knows or ought reasonably to have known that the recording was unauthorised.

EXCLUSIONS - SECTION 248A(1)

An indirect recording of a performance or a copy of that recording, made solely for the purpose of the private and domestic use of the person who made it;

An indirect recording of a performance, or a copy of such recording made solely for the purpose of scientific research; An indirect recording of a performance, or copy of such a recording, where the recording is made by an educational

institution, an institution assisting people with a print disability or an institution assisting people with an intellectual disability, solely for educational use or for providing assistance to people with print or intellectual disability;

A direct or indirect recording of a performance or a copy of such a recording made solely for the purpose of making a broadcast where the performer has authorised the broadcast – in which case a copy must be destroyed within 12 months.

A direct or indirect copy made solely for the purpose of, or associated with the reporting of news or current affairs or for the purposes of criticism and review.

A direct or indirect recording or a performance or a copy which was made solely for the purpose of judicial proceedings or the giving of professional advice by a legal practitioner.

A direct or indirect recording of a performance if the person who made the recording reasonably believes, due to a fraudulent or innocent misrepresentation made to that person that the performer has authorised the recording. A copy is also exempt if made for the aforementioned reasons.

OFFENCES

There are a number of offences under Part XIA CA - liable to punishment of 5 years imprisonment of 550 penalty units.

These are contained in ss 248P and 248Q CA.

Section 248P:

(1) Direct recording(2) Indirect recording [except solely for the recorder’s private or domestic use: s248P(7B)]

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(3) Recording that is heard or seen in public(4) Have possession of recording equipment that the person knows or reasonably ought to know if for recording

Penalty is fine of up to 550 penalty units or 5 years imprisonment (s 248P(7)).

Section 248Q:

(1) Copy of recording(2) Copy of exempt recording(3) Copy of authorised sound recording(4) Sell, hire, distribute, import(5) Exhibit unauthorised recording

Penalty is a fine of up to 550 penalty units or 5 years imprisonment (s 248Q(8)).

Destruction and delivery up can be ordered when charged with an offence (s 248T).

REMEDIES AVAILABLE FOR ACTION UNDER SECTION 248J

A performer may be granted an injunction and/or damages (including exemplary damages) by the court (s 248J(2)-(3)).

Pro rata reduction if copyright is also infringed (s 248J(4)-(5)).

TIME CONSTRAINTS

The protection period for the performance commences on the day of the performance, and in most cases extends for 20 years after the end of the calendar year in which the performance was made.

This period is extended to 50 years in relation to certain sound recordings of performances (s 248CA(3)).

MORAL RIGHTS

There are three moral rights recognised under the Act:

1. Right of Attribution (Part IX Div 2)2. Right of Integrity (Part IX Div 4)3. Right to Object to False Attribution (Part IX Div 3)

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Moral rights cannot be sold, assigned, transferred or bequeathed (s 195AN(3)).

IF assigned to legal representative or administrator:

If the moral right has been assigned to a legal representative or administrator, the legal representative or administrator can enforce the right (s 195AN(1)-(2)).

Simply altering a work, or treating it in a way the creator is not happy with, will not necessarily infringe the creator’s moral rights: there is also a requirement that the treatment of the work prejudices the creator’s honour or reputation.

APPLICATION OF MORAL RIGHTS

WORKS ETC

Applies to the whole or substantial part of a work (s 195AZH).

Applies to literary work, dramatic work, musical work, artistic work and complete and final version of cinematograph film in which © subsists (s 189).

OWNER OF MORAL RIGHTS

Moral rights vest in individual people, not corporations, communities or collectives (s 190).

Subsistence of moral rights is to be presumed (s 195AZE).

The name on a work acts as a presumption of authorship (ss 195AZF and 127).

IF joint ownership:

Where there is a joint ownership, the rights apply to each joint owner (s 195AZI).

There may be a co-authorship agreement not to exercise the integrity right of co-authors in the film or work except jointly (s 195AN(4)).

IF work is a film:

For a cinematographic film, the persons in whom moral rights vest are:

The principal director only (s 191(1)) The principal producer only (s 191(2))

If the producer is a body corporate, then no moral rights for any producer (s 191(3)) The principal screenwriter only (s 191(4))

DURATION OF MORAL RIGHTS

1. Right of attribution of authorship Follows the copyright term (s 195AM(3))

2. Rights against false attribution of authorship Follows the copyright term (s 195AM(3))

3. Right of integrity Follows the copyright term (s 195AM(2)) Unless it is a film, in which case it lasts until the author’s death (s 195AM(1))

ATTRIBUTION OF AUTHORSHIP

An author must be identified where attributable acts are done in respect of the work (s 193).

Creators have a right to be attributed (or credited) when their work is used in certain ways.

Creators of copyright in literary, dramatic, musical and artistic works can take action for any failure to attribute them that take place on or after 21 December 2000 (regardless of when the works were originally created).

The right of attribution applies to films made on or after 21 December 2000 and to literary, dramatic, musical and artistic works “as included in” films made on or after this date.

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This means that creators of such works completed before 21 December 2000 cannot take action for failure to attribute them.

Creators of copyright material have the right to be attributed when the work is:

reproduced (such as by making photocopies, copying it by hand, reciting it onto an audio tape, scanning it onto a computer disk or printing out a copy of a digital file);

published (made public for the first time); exhibited in public (in the case of artistic works and films); communicated to the public (such as by putting the written work onto a website, broadcasting or faxing it or emailing

digital files containing the work); or adapted (translated, adapted from a literary to a dramatic work, or, for a musical work, arranged).

If a creator has not stated the way in which he or she wishes to be identified, any clear and reasonably prominent form of identification may be used.

It is not necessary to attribute the creator if:

the creator has consented in writing not to be identified; or it is reasonable in all the circumstances not to identify the author.

RIGHTAGAINST FALSE ATTRIBUTION OF AUTHORSHIP

Authors of literary, dramatic, musical and artistic works and films have the right not to have the authorship of their works falsely attributed (s 195AC).

Acts of false attribution of literary works, dramatic work, musical works (s 195AD):

Insert or affix name so that it falsely implies that the work is the work or adaptation of the work of the person Deal with the name or reproduction when the person knows the name is false Perform the work in public or communicate it to the public as being a work or adaptation of the person’s work when the

person knows it is not that person’s work

Acts of false attribution of artistic works (s 195AE):

Insert or affix name so that it falsely implies that the person is the author of the work Deal with name knowing that the person is not the author Deal with reproduction of work or communicate work to public under name knowing that that person is not the author

Acts of false attribution of cinematograph films (s 195AF):

Insert or affix name so that it falsely implies that the person is the director, producer or screenwriter of the work Deal with the film, or reproduction or communicate to public knowing that person named is not the director, producer or

screenwriter of the work

Dealing with altered works as if they were unaltered

Literary works, dramatic work, musical works, artistic works – deal with work and reproduction (s 195AG)

Cinematograph film – copy (s 195AH)

RIGHT OF INTEGRITY

The right of integrity is the right not to have your work subjected to derogatory treatment (see ss 195AJ-195AK).

Derogatory treatment means doing anything in relation to the work which prejudices the creator’s honour or reputation.

This could include:

distorting, mutilating or materially altering the work in a way that prejudices the creator’s honour or reputation; and in the case of artistic works, destroying the work or exhibiting it in public in a way that prejudices the creator’s honour or

reputation.

The following are examples of infringements:

Selling individual panels from an artwork made of multiple panels (6 on fridge) ( Buffet v Percing).

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Broadcast of a color version of a black and white film ( Houston v French Cinema Chain) Adapting a work to have two female leads (Linden) Putting ribbons (xmas) on geese display (Snows) Adapting songs to create a medley (George Michael’s songs) (Morrison Lea Music v Lightbombs) Wrote of TinTin meeting alcoholic father (TinTin Case) Edited versions of Monty Python (missing 24 minutes (Gillian v ABC)

Buffet v Fersing

B had painted 7 panels of a fridge, sold it as a complete work F bought it at a charity auction and then resold each of the 6 panels separately B was able to recover damages for infringement of his integrity on the basis that F had mutilated his artistic expression.

Huston v Societe de l’exploitation de la Cinuieme Chanie

Estate of John Huston the American filmmaker successfully sought an injunction against the French broadcaster because they were wanting to broadcast a colour version of The Asphalt Jungle.

On the basis that the colour version infringed his moral right of integrity.

Lindon v La Compgnie Brut de Buton

Staged a play but cast two female leads Infringed the author’s moral rights.

Snow v The Eaton Music Centre

A Canadian shopping centre bought a sculpture of 60 flying geese When Christmas came around the shopping centre tied some red ribbons on the geese Snow applied for an injunction Granted – ordered ribbons be removed, treatment of sculpture was prejudicial to the artist’s moral rights.

Morrison Leahy Music v Lightbond

George Michael objected to a medley of his songs Sought and was granted an injunction preventing the release of the George Michael medley on the basis that it was an

infringement of his rights.

Gilliam v ABC

Terry Gilliam from Monty Python MP sought an injunction against ABC because they wanted to air two broadcasts of 90 mins from MP but had edited the

original broadcast. Took out 24 minutes etc and to remove the more offensive MP humour that Americans wouldn’t appreciate because

they’re frigid. Was this editing an infringement of his right of integrity? Yes - an injunction was granted.

DEFENCES AND EXCEPTIONS

NON-INFRINGEMENT FOR REASONABLENESS

A failure to attribute the creator, or a derogatory treatment of copyright work, does not infringe the creator’s rights if the action was reasonable in the circumstances.

There will be no infringement if it is proven in all the circumstances it was reasonable not to attribute authorship (s 195AR (1)).

Factors to be taken into account:

Nature of work or film Purpose for which used Manner used Context used Practice of industry Voluntary code Difficulty or expense Employment or freelance

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IF building or architectural drawings:

There are special exceptions to infringement of the right of integrity in relation to artistic works (including buildings and architectural drawings).

It is not an infringement of moral rights to:

destroy a moveable artistic work, if the creator, or the creator's representative, is given a reasonable opportunity to remove the work; or

change, relocate, demolish or destroy a building of which an artistic work forms part, or to which it is affixed, provided certain conditions (including the giving of notice and provision of access for the purpose of making a record and consultation) are met;

change, relocate, demolish or destroy a building, provided certain conditions (including the giving of notice and provision of access for the purpose of making a record and consultation) are met; or

remove or relocate site-specific artworks, provided certain conditions (including the giving of notice and provision of access for the purpose of making a record and consultation) are met.

It is not an infringement of moral rights to do anything in good faith to restore or preserve a work.

NON-INFRINGEMENT IF AUTHOR’S CONSENT IS OBTAINED

IF film or works in film (s 195AW):

there must be written consent - s 195AW(1) can include future moral rights - s 195AW(3) can be given by employee for benefit of employer - s 195AW(4)

IF works not in film (s 195AWA):

must be written consent - s 195AWA(1) can include future moral rights - s 195AWA(3) can be given by employee for benefit of employer - s 195AWA(4)

Consent will be invalidated by duress or false or misleading statements (s 195AWB).

REMEDIES

Remedies can include (s 195AZA(1)):

Injunction Damages Declaration Order to make public apology or to fix attribution or derogatory treatment

Must taken into account the following (s 195AZA(2)):

Whether person was aware or reasonably aware of person’s moral rights Effect on author’s honour/reputation Number/categories or people who saw/heard work Mitigating acts of defence Cost/difficulty associated with attribution Cost/difficulty associated with removing false attribution

LIMITATIONS

IF work is film and action is brought by screenwriter:

If work is cinematograph film and action brought by screenwriter, and already have relief for infringement of moral rights in dramatic works, reduce damages (s 195AZA(4)).

IF work is dramatic work and action is brought by screenwriter:

If work is dramatic work and action brought by screenwriter, and already have relief for infringement of moral rights in cinematograph film, reduce damages (s 195AZA(5)).

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IF act is done after death:

For acts done after death, the damages go to estate in measure as if act had occurred just before death of author (s 195AZA(6)).

DESIGNS52

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INTRODUCTION

Intellectual property protection for designs focuses on the visual appearance of commercial or industrial articles, rather than their function or the means of producing them.

Designs protect the distinctive visual appearance of a product.

If there is no distinct visual appearance, the object would not be a registrable design. Consumers show preferences for products that embody certain styles, colours and shapes. In order to obtain design protection, the design must be registered.

In Australia, the law in this area is set out in the Designs Act 2003 (Cth).

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REQUIREMENTS FOR REGISTRATION

A design will only be protected if it has been duly registered.

In order to be registered, the following requirements must be satisfied:

1. There must be a design (s 5)2. The design must be new and distinctive (s 15(a))3. The registration formalities must be met (s 39).

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DESIGN

A ‘design’ is defined in s 5 to mean ‘the overall appearance of the product resulting from one or more visual features of the product.’

There are two features of this definition of design:

1. Visual features (s 6)2. Product (s 7)

VISUAL FEATURES

The first requirement is that the design’s appearance results from one or more visual features.

‘Visual feature’ is defined in s 7 to include ‘the shape, configuration, pattern and ornamentation of the product.’

There must be some specificity of the shape and configuration, not merely the idea of a general shape (Firmagroup Australia).

This encompasses 2D and 3D objects.

Functional aspect

The mere fact that the feature has a functional aspect does not affect the registrability of the design (s 7(2)). However, there still needs to be an element of appeal to the eye when an article is also functional (Edwards Hot Water Systems).

Where design is a three dimensional article

In the context of a three dimensional article, the protection is granted over the design, not the article.

If the article cannot be separated from the design, it is not a design.

In Re Wolanski’s Registered Design, a ‘neck-tie support’ could not be registered as a design because the shape defined the article.

In Kestos Ltd v Kempat Ltd, a case which concerned a brassiere, the article was unable to be distinguished from the design.

Feel of a product and materials used

The feel of a product and the materials used in the creation of a product are excluded from the definition of visual feature (s 7(3)).

This is because these features do not contribute to the overall visual appearance of the product.

Colours

Colours, on their own, are not registrable as designs in themselves, although they can be part of a design.

PRODUCT

The second notable aspect of the way that a design is defined is that it applies to a ‘product’.

A product is a thing that is manufactured to hand made (s 6).

It includes component parts of complex products, if made separately from the complex product (s 6(2)). Therefore, it is possible to register a spare part as a design.

A kit when assembled which makes a product is taken to be that product (s 6(4)).

NEW AND DISTINCTIVE

The design must be new and distinctive when compared to the prior art base (s 15(1)).

To determine whether a design is new and distinctive, it is necessary to compare the design as set out in the application with similar designs that fall within the ‘prior art base’.

The question of whether a design is new and distinction is a question of fact, to be determined through the eye of the judge (Dart Industries).

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New

A design is new unless it is identical to a design forming part of the prior art base (s 16(1)).

This requires novelty in appearance, not innovation in function.

Newness is focussed on the visual features of a design (Malleys Ltd v JW Tomlin).

If the product is novel in functionality but this is not reflected in the shape or design (i.e. the shape or design is not novel), then designs law will not protect it (Control Pty Ltd v Meco McCallum).

Control Pty Ltd v Meco McCallum

Design for conveyor belt The innovation was that the belt did not tilt However, there was no change in the visual appearance of the conveyor belt – it looked the same as any other conveyor

belt Therefore, the design was not protected

Distinctive

A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base (s 16(2)).

Substantial similarity

In determining whether two designs are substantially similar in overall impression, more weight is to be given to the similarities between the designs than to the differences (s 19(1)).

Must have regard to:

State of development of prior art o If the registered design is only a small step up from the prior art base and a competitor uses it, then it is likely

that there is no infringement because it was not big changeo The more distinctive a registered design is, the more distinctive a competitor would need to be in order to avoid

infringement Freedom of the designer to innovate – if the person is more constrained on the visual features, then a very small change

can be a distinctive design Similarities in one part of the design only importance of that part in relation to the design as a whole

This assessment is made through the eyes of an informed user (s 19(4)). An informed user is a person who is informed in the product to which the design relates – this does not require an expert, but experts can assist.

PRIOR ART BASE

Prior art base means designs that are published in a document anywhere in the world or a design used in Australia (s 15(1)). Therefore, overseas designs cannot be imported and protected by design law because it has been published.

The prior art base only includes designs that were made available before the design’s priority date (s 15(2)).

REGISTRATION PROCESS

WHO CAN APPLY?

There are no restrictions on who can apply to have a design registered (s 21).

However, only certain people are able to be registered as owner of a design (s 13(1)). These are:

Author of the design (s 13(1)(a))

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Employer of the author, if the author made the design in the course of their employment (s 13(1)(b)) The person who contracted the author to make the design (s 13(1)(b)) The person to whom the author has assigned the design (assignment must be in writing) (s 13(2))

Design can be owned by more than one person (ss 13(3), 21(3)).

REQUIREMENTS OF THE APPLICATION

Design application must comply with the ‘minimum filing requirements’ as set out in s 21(2):

Completed application form; Five identical copies of each view of the representations of the design(s); and Application fee.

Statement of newness and distinctiveness may also be included (s 69).

REQUEST FOR REGISTRATION OR PUBLICATION

Applicants have the option of having their design either registered or published (s 35).

Must decide either at the time the application is lodged or within six months of the priority date of the application of the application will lapse (s 33(1)(a)).

PUBLICATION

Publication is an alternative to registration and does not give design protection.

Publication merely serves to ensure that the design is part of the prior art and prevents other parties from registering similar designs.

However, no infringement action can be brought when publication is elected.

REGISTRATION

Registration of the application occurs after an initial formalities check (ss 39-40).

Design will be registered if:

a) The application complies with the requisite requirements; andb) The registration is not prohibited by s 43(1) which declares that certain designs must be refused such as integrated

circuits and those protected by the OIPA.

Details including representation of the design will be published in the Australian Official Journal of Designs and in the Australian Designs Data Searching.

Registrar issues a Certificate of Registration and the successful design is recorded in the Register of Designs (s 45).

If Registrar is not satisfied with the application, the applicant is given an opportunity to amend the application (s 41).

PRIORITY DATE

Priority date of the application is the date when the application was filed, unless there is a claim to an earlier priority date from an overseas design application, or from a design excluded from an earlier Australian design application (s 27(1)).

DURATION

Term of protection is five years from the filing date of the design application (s 46).

This is renewable for up to a total of ten years (s 47).

POST-REGISTRATION EXAMINATION

Any person or relevant court may request that a design is examined (s 63(1)).

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A registered design must be examined and a certificate of examination issued before proceedings for infringement can be bought (s 73(3)).

When examining, Registrar must determine whether the design should be revoked (s 65).

The main grounds for revocation are:

That there is no ‘design’; or That the design is not ‘novel and distinctive’ as compared with the prior art base (s 15).

IF there is no ground for revocation:

If the Registrar decides that there is no ground for revocation, a certificate of examination will be issued (s 67).

IF there is a ground for revocation:

If the Registrar decides that there is a ground for revocation, the applicant will be given an opportunity to amend their application (s 66(3)).

OWNERSHIP AND RIGHTS

The owner may assign all or part of their interest in the registered design.

To be valid the assignment must:

a) Be in writing; andb) Signed by or on behalf of the assignor and assignee (s 11).

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Registered design can also be transferred or devolved by will or though the operation of law (ss 10(2), 11(1), 11(2), 11(3)),

RIGHTS

Under s 10(1), the registered owner has the exclusive right to:

Make a product that embodies the design; Import the product for sale; Sell, hire or otherwise dispose of the product; Use a product; and Authorise another person to do any of the things previously mentioned.

JOINT OWNERS

Where there are joint owners of a registered design, each owner holds equal proportions as tenants in common (s 14). There is no need to obtain the consent of the other joint owner when using the design except when licensing or assigning the design.

ASSIGNMENT OF EXCLUSIVE RIGHTS

The exclusive rights are personal property and are capable of assignment and of devolution by will or by operation of law (s 10(2)). A registered owner can assign in writing, signed by or on behalf of the owner (s 11).

INFRINGEMENT

A registered design must be examined and a certificate of examination issued before proceedings for infringement can be bought (s 73(3)).

PRIMARY INFRINGEMENT

Under s 71, an infringement occurs when a person does an act that is reserved for the registered owner of the design.59

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It includes the following:

Makes or offers to make a product which embodies a design that is identical to or substantially similar in overall impression to the registered design (s 71(1)(a))

Deals in products incorporating the design which embodies a design that is identical to or substantially similar in overall impression to the registered design – this includes a person who sells, hires, disposes of, uses or keeps the product

Importation for a trade purpose, only if the design is applied without the consent of the owner. Importation is only an infringement if there is no overseas approval or consent of the owner.

All that needs to be established is that:

a) The defendant has undertaken one of the activities that fall within the owner’s exclusive control; and b) That this activity was carried out in relation to a product that embodies a design that is identical or substantially similar in

overall impression to the registered design.

DEFENCES

SPARE PARTS DEFENCE

Section 72 provides that where a component part is part of a registered design and it will not fit without that particular shape, there is a defence to infringement.

This defence applies where the component part used in the body of a design is to be used for genuine repair purposes.

It does not cover use of the component part as original equipment or non-repair uses.

UNJUSTIFIED THREATS

Section 77 provides that if a person is threatened with infringement proceedings a court that has jurisdiction to determine the application for:

a) a declaration that the threats are unjustified; and b) an injunction against the continuation of the threats; and c) the recovery of damages sustained by the applicant as a result of the threats.

A court can only make an order regarding unjustified threats where the design has been examined and a certificate is issued (s 78).

Mere notification of the existence of a registered design is not a threat (s 80).

LIMITATION PERIOD

An action for infringement must be brought within six years from the date on which the alleged infringement occurred.

REMEDIES

The relief awarded where a registered design has been infringed include (s 75(1)):

An injunction; and eithera) Damages; orb) An account of profits.

In certain circumstances, additional damages may also be rewarded (s 75(3)).

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IF unjustified threat of infringement proceedings:

Where there has been an unjustified threat of infringement proceedings, there is provision for declarations, injunctions and damages.

IF innocent infringer:

The court may refuse to award damages or decide to reduce the quantum of damages or make an order that there is an innocent infringer if the infringer did not know that the design was registered and reasonable steps were taken by the innocent infringer (s 75(2)).

DESIGN AND COPYRIGHT OVERLAP

The situation can occur where the subject matter falls into more than one area of intellectual property at one time. There is no general rule against cumulative intellectual property protection.

A design may be based on an artistic work which would otherwise be protected by copyright. The owner might prefer to rely on copyright, as it provides a larger scope of protection in comparison with designs. In effect, the purpose of the designs regime was undermined, because when given the choice between copyright and designs protection, people would choose copyright because it offers wider protection.

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Therefore, copyright protection is removed and the design must be registered in order to receive designs protection. Copyright is only reserved for industrial products.

DUAL PROTECTION

Dual protection is possible where a copyright owner has rights in a two-dimensional artistic work. This includes the right to reproduce in a 3D form (s 21(3) Copyright Act).

COPYRIGHT LOST WHERE THERE IS A CORRESPONDING REGISTERED DESIGN - SECTION 75

Copyright protection will not be available where a design that corresponds to the artistic work is registered.

Section 75 provides that where copyright subsists in an artistic work and a ‘corresponding design’ is or has been registered under the DA, it is not an infringement of that copyright to reproduce the work by embodying the corresponding design in a product.

A ‘corresponding design’ is defined in s 74 as visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work, whether or not the visual features constitute a design that is capable of being registered under the Designs Act.

‘Embodied in’ is defined in s 74 and it includes woven into, impressed on or worked into the product.

IF 2D design:

Section 75 does not apply where an artistic work is applied to a flat surface.

IF artistic work is a building, a model of a building or a work of artistic craftsmanship:

Section 75 applies where the artistic work is a building, a model of a building or a work of artistic craftsmanship.

COPYRIGHT LOST WHERE THERE IS AN UNREGISTERED CORRESPONDING DESIGN WHICH IS APPLIED INDUSTRIALLY - SECTION 77

Section 77 apples where:

1. Copyright subsists in an artistic work and2. A corresponding design has been applied industrially in Australia or elsewhere by or with licence of copyright owner and

o Must be a ‘corresponding design’ i.e. the reproduction of the artistic work as embodied in a product (not just flat

applied) (s 74)o A design is ‘applied industrially’ where it is applied to 50 or more articles, or one or more articles if

manufactured in lengths or pieces (s 77(4), Regulation 17)o Also ‘applied industrially’ if products illustrated in patent specifications or drawings submitted in design

applications (s 77(1A))3. Products to which the corresponding design has been applied are sold, let for hire, exposed for sale in Australia or

elsewhere etc and4. Design is not registrable or is not registered

Burge v Swarbrick (2007) HCA 17

Naval architect hand-built life size prototype ('plug') For fibreglass moulds Not a work of artistic craftsmanship Matters of visual and aesthetic appeal were secondary to function Therefore s 77 removed copyright protection Determination of what amounts to an artistic craftsmanship should be on a case by case basis. The High Court stated that it is assessed based on “the extent to which the particular work’s artistic expression, in its

form, is unconstrained by functional considerations”.

Coogi v Hysport (1998) 157 ALR 247

The first production run of a knitted fabric was a work of artistic craftsmanship Produced by refining a mechanical process in line with aesthetic decisions. Could show reproduction of a substantial part of the fabric by showing that another fabric had “the essential 'look'” of the

original.

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Objective similarity not made out on the facts.

Muscat v Le [2003] FCA 1540

Sample pants were not works of artistic craftsmanship: “The sample garments were not created as works of art. They came into existence for the purpose of determining how

the design would look and to enable Ms Muscat to decide whether any changes should be made before production commenced. In any event, the sample garments are not works of craftsmanship and Ms Muscat never intended them to be.” (Finkelstein J, [49])

Copyright did subsist in the patterns. Defendants infringed copyright, by the indirect reproduction of patterns and drawings used in their manufacture

PLAN TO PLAN AND ADVERTISING EXCEPTION - SECTION 77A(1)

It is not an infringement of copyright in an artistic work to reproduce if:

Reproduction is derived from a 3D product that embodies a corresponding design; and Reproduction is in the course of making, selling, or advertising a non-infringing product.

MAKING A CAST OR MOULD - SECTION 77A(2)

It is not an infringement of copyright in an artistic work to make a cast or mould embodying a corresponding design in relation to the artistic work if the cast or mould is for the purpose of making non-infringing products.

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PASSING

OFF

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INTRODUCTION

To protect their the reputation of their business, traders have the option to commence the following actions:

Trade mark infringement Tort of passing off Tort of injurious falsehood Misrepresentation under the TPA

TORT OF PASSING OFF

The tort of passing off is concerned with the misappropriation by deception of a trader’s reputation or goodwill.

Originally, the action was confined to fraudulent attempts by traders to pass off their goods as those of another.

However, it has since been extended to cover any representation that falsely suggests some connection with another person’s product or business.

Hence it may be passing off not merely for A to represent that A’s goods are those manufactured or sold by B, but for A to represent:

(1) that his or her goods share some important quality with those of B;(2) that there is some business connection between A and B; or(3) that B approves of A’s goods.

However, further extension of the action to a tort of unfair competition has been rejected in Australia.

Although it has been recognised that what is being protected by the passing off action is the proprietary interest that the injured trader has in the reputation he or she has built up, the misrepresentation element of the tort nevertheless involves considerations of a consumer protection nature and its background in prevention of wrongful commercial conduct as between traders also remains an important consideration.

OVERLAP WITH OTHER FORMS OF PROTECTION

Apart from an action in passing off, there are a number of ways in which a trader may protect the interest in his or her goodwill or business reputation.

For example, if a particular sign is used by a trader to distinguish goods or services from those of other traders, or is capable of being so used, the trader may seek to register that sign as a trade mark under the Trade Marks Act and thereby acquire the right to restrain others from using the mark or a substantially identical or deceptively similar mark on or in connection with the same or similar goods or services.

The fact that a mark has been or may be registered as a trade mark does not preclude action being taken in passing off to protect it.

Equally, however, the fact that a person has registered a mark does not prevent him or her being liable in passing off if the use of that mark would, in particular circumstances, misrepresent a connection with another trader.

In an action for trade mark infringement, the defendant must be shown to have used the mark as a trade mark; that is, to have used the mark as a badge of origin so as to indicate the trade source of the goods or services in question.

Where the defendant has not used the mark in this way, any alternative claim for passing off based on the same facts would generally also fail, as there would be no misrepresentation.

Conduct that amounts to passing off will usually also infringe the provisions in trade practices or fair trading legislation that deal with misleading or deceptive conduct in the course of trade or commerce.

The principles and authorities to be applied in determining actions under those provisions are largely co-extensive with those applicable in cases of passing off, particularly in relation to the element of misrepresentation.

The claims are therefore commonly pleaded in the alternative and cases are frequently determined by reference to the statutory test, which is considered also to dispose of the matter in relation to passing off.

However, the following points of distinction between the two types of action remain relevant considerations:

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(1) The focus of passing off is the protection of the proprietary rights of traders in the commercial reputation they have built up, while the focus of actions under ss 52 or 53 of the Trade Practices Act 1974 (Cth) is on consumer protection;

(2) Section 52 actions provide relief in many situations where there would be no corresponding action for passing off;(3) Section 52 actions do not require a continuing reputation in the same sense as would be required in a passing off action;(4) Although the tests for misrepresentation are largely co-extensive, passing off requires proof that a substantial or

significant number of members of the target audience have been or would be likely to be deceived whereas, under s 52, proof that reasonable members of the class would be deceived carries with it a finding that a significant number would be deceived;

(5) Damage is a required element of passing off, unlike s 52 actions, although this distinction may amount to little in practice, as damage is generally presumed to result from circumstances in which the reputation and misrepresentation elements required for passing off have been proved;

(6) An account of profits is available for passing off but not for s 52 actions.

Malicious and inaccurate statements by a trader about a competitor’s product may also be caught by the tort of injurious falsehood.

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ELEMENTS OF THE ACTION

There is no accepted formulation of the elements of a passing off action. Several cases have given formulations that highlight the emphasis should be on a misrepresentation.

In the Advocaat case, Lord Diplock suggested five elements:

1. Misrepresentation2. Made by a trader in course of trade3. To prospective customers or consumers4. Calculated to injure the business or goodwill of another trader (reasonable foreseeable consequence)5. That causes damage.

Accept elements

The revised, more modern elements of the action were discussed in Consorzio v Marks & Spencer:

1. Subsistence of some reputation or goodwill on the part of the plaintiff;2. Deceptive conduct on the part of the defendant; and3. Existence or threat of damage to the plaintiff as a result of that conduct.

The formulations are as a guide only; they are not applied strictly (Advocaat case).

SUBSISTENCE OF REPUTATION OR GOODWILL IN PLAINTIFF

GOODWILL

Goodwill is best defined as the ‘benefit and advantage of the good name, reputation and connection of a business … the attractive force which brings in custom’ (Inland Revenue Commissioner v. Muller & Co’s Margarine Limited).

REPUTATION

The test for a reputation is whether the product has derived, from the advertising, a distinctive character which the market recognises (Cadbury Schweppes v The Pub Squash Co).

This element is no longer rooted in names of businesses or products.

It covers a wider descriptive material (Pub Squash case) and extends to get-up trades or trade dress, image etc.

The goods must have a distinctive character accepted by the market which distinguishes them from the goods of other traders (Pub Squash).

Any form of vaguely commercial enterprise can have a reputation, including

Churches (Holy Apostolic and Catholic Church of the East (Assyrian) Australia NSW Parish Association) Charity organisations (Dr Barnado’s Homes) Professional organisations (Australian Society of Accountants v Federation of Australian Accountants Inc)

The following are some examples of distinctive character:

Champagne (origin and quality) (J Bollinger v Costa Brava) Advocaat (style of product) (Advocaat Case) Hogan’s Get-Up (image) (Hogan v Koala Dundee) Mr Goggomobile solving problem – scene (image) (Telstra v Royal & Sun) Mario’s Appearance/Clothing (image) (Nintendo v Care) Photo of Henderson’s (image) (Henderon’s v Radio)

In order to prove its reputation, the plaintiff will have to adduce evidence of issues such as:

The time it has been in the market; The nature and amount of promotion it has undertaken;

o Amount spent and whether on radio, TV, newspaper, trade exhibitions etc

Details of its sales network;o How many outlets does it have, how many distributors

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Geographical extent of its business; Volume of its sales in numbers and dollars; Use of domain name; Survey evidence, if any.

There is no need to show exclusivity. Everyone with a real commercial stake in the business or product has standing to bring an action. This allows members of a group who share a distinctive reputation to sue individually (Advocaat).

Exclusivity of reputation is not required

The plaintiff is not required to possess exclusive reputation, so long as they have a real commercial stake in the business or product (Advocaat case).

The reputation can belong to a number of traders (J Bollinger v. Costa Brava Wine Co. Limited).

J Bollinger v. Costa Brava Wine Co. Limited (The Spanish Champagne Case) [1960].

Bollinger and 11 others from the champagne district in France asserted only growers in the district in France were entitled to refer to the wines by the description “champagne”.

Even though 150 growers would have been entitled to use that description by virtue of their presence within the geographic area of champagne, the action was successful.

The case has also helped to establish that name can be just as descriptive of quality and other characteristics as it is with place of origin. (their actions didn’t succeed in Australia though)

All traders will have action against another, but no action against each other (GE Trade Mark Case).

Licensee or distributor may also have an action – all those with a commercial stake in the business or product will have standing to bring proceedings (Children’s Television Workshop Inc. v. Woolworths (NSW) Pty Ltd).

Location of reputation

The fact that the plaintiff is not currently trading in Australia will not prevent them having a reputation providing a substantial number of local consumers can establish it (Con Agra v McCain).

The plaintiff need not actually have a business in the jurisdiction in which they sue, but must have a reputation there (Conagra In. v McCain Foods).

Conagra Inc v McCain Foods (Aust) Pty Ltd (1991)

Product/business must be known to a substantial number of persons Irrelevant how the reputation is acquired Question is whether sufficient people know of the foreign trader’s business or product to be deceived by what the def is

doing

Reputation not limited to place where based or sold – can spread across Australia but need proof of it (Dairy Vale Metro v Brownes Dairy).

Wider reputation can be garnered from website or online advertising (Rumcoast Holdings Pty Ltd v Prospero Publishing Pty Ltd).

IF experts are used to demonstrate reputation:

The reputation must be established with reference to a substantial number of local consumers, not experts (Con Agra v McCain).

Cases

J Bollinger v Costa Brava (the Spanish champagne case)

150 growers would have been entitled to use the description “champagne” name was distinctive of both place of origin and quality the word champagne is distinctive of a certain type and quality of drink

Erven Warnink v J Townsend (Advocaat case)

Plaintiff and other Dutch companies manufactured and marketed 'advocaat' in the UK for some time (Dutch standards required brandewijn, egg yolks, sugar) Substantial reputation and goodwill Defendants marketed 'Keeling's Old English Advocaat' (egg powder and sherry)

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Not able to be mistaken for the Dutch product UKHL held that the name 'advocaat' had become distinctive of a certain style Defendants misrepresented the nature of their product to consumers

Con Agra Inc v McCain Goods

Trader must have a reputation in the jurisdictiono No need to show actual trade

Reputation must be established with reference to a substantial number of local consumerso Necessary reputation not established

Important case because this case dropped the requirement for actual trade in the jurisdiction.o Unlike trademarks where need to show actually using or intending to use, passing off will allow you to bring an

action even where you are not trading in the jurisdiction but where you have built up a reputation elsewhere.

Hogan v Koala Dundee

Souvenir shop used a Koala logo in Hogan's image (get up)o Sleeveless vest, hat, knife

Hogan granted injunctiono There was “a clear representation of association with the film's images.” ([62]).

This is different to original passing off because it didn’t involve selling stuff AS IF you were the plaintiff. It more dealt with riding on the coat tails of a personality. Can prevent other people from trading off your reputation because of this case.

Pacific Dunlop v Hogan

Grosby Shoes made a TVC with a parody of the 'call that a knife?' sceneo “These are leather shoes”

Misrepresentation existed because there was a suggestion that Dundee was endorsing the shoes (Sheppard J dissenting)

o He said that it was clear here that it was just a parody.

o But the majority said that there could be some confusion that Dundee was actually endorsing the shoes.

Telstra Corp v Royal & Sun Alliance

Tommy Dysart played a humorous character in Telstra's advertising Later played the same character in Shannons' advertising Copyright claim failed

Claimed © in scenario, but © does not protect that, can only protect the script “the extensive exposure of Dysart, acting as "Mr Goggomobil", solving a problem in respect of his beloved Goggomobil

in the manner and context set out in the Yellow Pages advertisements had become part of the Yellow Pages brand image.” ([56])

HELD that the advertisement that took the problem solving context of the original was a misrepresentation Other advertisements, which made use of Dysart's accent and the car, did not form a misrepresentation No proprietary rights or goodwill in the character of “Mr Goggomobil” ([82]) Tort of passing off does not provide proprietary rights in characters and distinctive factors to an extent. Only a narrow

protection over the scenario as a whole.

Talmax v Telstra (Perkins)

Telstra sponsored the “Telecom Australian Open Swimming Championships” and “Telecom Dolphins Swim Squad”o Perkins was wearing Telecom logo cap

Telstra had misrepresented that Perkins was a member of the squad as at March 1994o 'target' readership includes “the astute and the gullible, the intelligent and the not so intelligent, [...]”

o the mere image of perkins in a Telstra cap in the context of a full page lift out supplement which was trying to

suggest that you should chose telstra as your long distance carrier, so the inference to be drawn was that Kieran perkins thinks that Telstra is better than optus (even though the text of the article made it clear that there was no link between perkins and Telstra whatsoever)

QCA granted injunction and damageso Under s 52 TPA

o Passing off appeared to be established

Nintendo v Care

Respondent promoted a wrestler as da super mario (including clothing)

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There was a serious question to be tried under passing and ss 52, 53(c) and 53(d) Because the wrestler was dressing up the same, etc, there was a significant chance tha people might think Nintendo

licensed its use.

DECEPTIVE CONDUCT

In order to establish the second element, the defendant must attempt to “trade off” the plaintiff’s established reputation.

This requires conduct on the part of the defendant that results in consumers coming to an erroneous conclusion or being confused about a connection between the goods or services of that trader and those of the plaintiff.

Mere imitation of the plaintiff’s name, product or get-up is not enough (Con Agra).

Even a deliberate attempt to reap the benefits of the plaintiff’s reputation is not enough (Pub Squash).

An attempt by the defendant to get market share by creating an impression of association in consumers’ eyes is enough (Duff Beer case).

CHARACTER MERCHANDISING

An attempt to market goods in a more favourable light by associating them with the personality or character in which the plaintiff has developed a reputation will amount to deceptive conduct (Duff Beer case).

Henderson v Radio Corp

Image of the Hendersons used as a cover for a compilation entitled 'Strictly for Dance' NSW SC found that consumers could be misled to thinking that the Hendersons had approved or recommended the

record. HELD that the misrepresentation amounted to passing off There was no need for a common field of activity

IF the defendant does not represent that the goods are of another:

In Advocaat case, it was accepted that misrepresentation is not limited to representations that the goods are those of another, and there it was enough that the goods had a certain quality which passed the goods off as those of another.

Another example is J Bollinger v Costa where it was held that people who did not know much about champagnes could be misrepresented that the wine had a particular quality.

IF there is a misrepresentation as to the existence of a connection between two businesses:

It is possible for the defendant to misrepresent the existence or scope of some connection between its business and that of the plaintiff. An association with the licensed product is sufficient. The consumer could assume that the defendant was one of the licensed consumers (Nintendo v Care).

IF the defendant is merely imitating the attribute(s) of another product:

In Cadbury v Pub Squash, Solo established an image as a man’s drink similar to beer. Pub Squash then attempted to create a similar image. However the court held that there was only a small chance of misrepresentation and to find otherwise would be to encourage monopoly.

Another example is Con Agra v McCain, where there was merely imitation. In this case it also held that imitation of another’s name, product or get-up is not passing off.

IF the defendant uses the photo of another:

In Henderson v Radio, the Henderson’s image was used as a cover for a compilation. There it was held that consumers could be mislead into thinking the Henderson’s had approved of or recommended the record. In Australia, a degree of fame to be present for the action to be a misrepresentation

IF only the name is used:

In Twentieth Century v SA Brewing, the duff beer product was held to create an impression of association with the Simpsons in the eyes of consumers, despite being a different colour, text and no mention of the Simpsons. It was still held to be an attempt to market goods in a more favourable light by associating them with the personality or character in which the plaintiff has developed the reputation.

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IF the defendant misrepresents via a get-up:

In Hogan v Koala Dundee, the souvenir shop sold a Koala logo in Hogan’s get-up. This was held to be a clear misrepresentation that the product was associated with the film’s image; and was thus trading off another’s reputation.

IF there is a misrepresentation via a suggested endorsement:

In Pacific Dunlop v Hogan, Grosby made a shoe commercial with a parody of the ‘call that a knife’ scene in Crocodile Dundee. This was a misrepresentation that Dundee was endorsing the shoes.

IF there is a misrepresentation via an actor or character:

In Telstra v Royal & Sun, Tommy Dysart played Mr Goggomobile in both Telstra’s and later in Shannon’s TV ads. It was held there that him solving a problem concerning his Goggomobile in an ad had become part of the Yellow Pages brand image. Thus the later ad with him solving a problem in the same context (Goggomobile) was a misrepresentation; however other advertisements merely using the character/actor and car did not.

IF there is a misrepresentation via an article or a clear up in writing:

In Talmax v Telstra, Telstra printed an article with Perkins wearing Telecom logo cap when he was not a member of the Telecom Dolphins swim squad at the time. There it was held that this was a misrepresentation that Perkins was a member of the squad at the time. Importantly this was so despite the article making it clear he wasn’t, because the target readership includes the gullible and not so intelligent.

EFFECT OF DISCLAIMERS

A disclaimer will be sufficient to escape liability if a new trader enters the market using some of the plaintiff’s reputation as long as adequate steps are taken to distinguish their product from the plaintiff’s (Jif Lemon Case).

In Sony Music v Tansing, it was sufficient that the word ‘unauthorised’ was stamped on a CD of pirated songs taped at a live performance.

In Apple Computer Inc v Computer Edge Pty Ltd, it was sufficient that there was a sign saying ‘Wombat Computers’ on clones of Apple computers.

An express disclaimer, can if sufficiently prominent, destroy any suggestion of association between a character and the product under consideration (Duff Beer case).

Cases

Conagra Inc v McCain Foods (Aust) Pty Ltd

McCain introduced range of ‘Healthy Choice’ meals into Australia Exact copy of frozen foods by plf in US Def used the same advertising strategy, slogans etc However US coy had no reputation in Australia No evidence of deception

Apand Pt Ltd v Kettle Chip Co Pty Ltd

Word ‘kettle’ used on both chip packets Argued there was no intention to deceive, consumers thought that kettle cooked chips were better quality HELD that the use was passing off – the plf had created a reputation and use of the word by the def may lead to

consumers drawing a connection b/w the two traders

Cadbury Schweppes Pty Ltd & Ors v Pub Squash Co Pty Ltd

Solo cans and Pub Squash cans – both yellow and look like a beer can Both had similar add campaigns – rugged men doing sport HELD not to be passing off by Pub Squash PS took sufficient steps to distinguish their goods All lemon squash cans must be allowed to use the colour yellow

Reckitt & Colman Ltd v Broden Inc

Gift lemon juice bottles in bottle shaped/coloured like lemon Def added red lid and tag to try and distinguish their juice

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HELD use was passing off – could use lemon shaped container but must take adequate steps to distinguish and red lid was not enough

J Bollinger v Costa Brava Wine Co. Limited (The Spanish Champagne Case) [1960]

Bollinger and 11 others from the champagne district in France asserted only growers in the district in France were entitled to refer to the wines by the description “champagne”.

HELD that significant no of people would be confused by name “Spanish champagne” “champagne” was part of plf’s goodwill and def had no right to use the word Although wine buff would realise it could not be from Champagne b/c of word ‘Spanish’ it was held that the general

public would be deceived

Hogan v Koala Dundee Pty Ltd (1988)

Paul Hogan was granted an injunction to prevent a company exploiting an image of a koala wearing a sleeveless shirt, holding a big knife and with teeth in its headband.

Pincus J HELD there was a misrepresentation that there was some commercial association between Paul Hogan and the company.

Pacific Dunlop Limited v Hogan (1989)

Grosby Shoes produced a television commercial with a take-off of “You call that a knife?” scene from the movie. HELD a misrepresentation existed, in that the advertisement could not have been made without Paul Hogan’s consent

or approval

Twentieth Century Fox Film Corp v South Australian Brewing Co. Limited (Duff Beer Case) (1996)

The defendant had branded a product “Duff Beer” which, probably not coincidentally, was very similar to the fictitious but nonetheless very well known drink from the television show “The Simpsons”.

HELD the defendant’s actions in making and selling that product created some impression in the eyes of consumers and that some association existed between The Simpsons program and the defendant.

Henderson v Radio Corp Pty Ltd (1960)

Pair of famous ballroom dancers were shown on cover of album of ballroom dancing music Held to be passing off – that the dancers were affiliated with the CD Damage to their potential to exploit their goodwill Irrelevant that they weren’t at that stage in the business of producing CDs

THREAT OF DAMAGE AS A RESULT

The third element requires loss suffered or potentially suffered to goodwill or business reputation. This will include:

Damage to potential to exploit goodwill in the future; Loss of opportunity for business expansion; Loss of existing trade. This involves a loss of trade either to the defendant or by dilution of reputation (Spanish

Champagne Case) Loss of potential to exploit goodwill (Henderson v Radio Corp Pty Ltd) Loss of opportunity to expand the business – either in terms of field of location or field of activity (Lego System v Lego M

Lemelstrich Ltd)

The diminution of opportunity to commercially exploit the name or mark may be sufficient (Talmax Pty Ltd v. Telstra).

It is the threat, not the proof of damage which forms the basis of this element of the tort (Henderson v Radio Corp Pty Ltd).

Lego System v Lego M Lemelstrich Ltd

Company responsible for Lego building blocks able to restrain coy selling irrigation equipment under name Lego HELD loss of opportunity for Lego to go into irrigation business (ie grant licence for another to exploit their

name/goodwill in that area) Held do not need to show there are plans in place to expand into the relevant area Already high threshold in these cases for plf to show their reputation extends so far b/c it is so well entrenched in the

public’s mind

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REMEDIES

The remedies available include:

An injunction to restrain the conduct. The balance of convenience must be considered first before this is granted.

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Ancillary orders – transfer of right to use name/licence Damages or account of profits

To receive more than nominal damages of an account of profits, the plaintiff must show fraud, in that the defendant intended to deceive or continuance of use after notice has been given of the plaintiff’s brand (Turner v General Motors (Australia) Pty Ltd).

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PATENTS

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INTRODUCTION

WHAT IS A PATENT?

Patent is a grant by the Crown of an exclusive right to exploit an invention throughout the patent territory for the duration of the patent.

GOVERNING LEGISLATION

Patents are governed by the Patents Act 1990 (which repeals Patents Act 1952) and Patents Regulations 1991. Intention of the new legislation to simplify the law in relation to patents and introduce significant new provisions.

OBJECT OF PATENT SYSTEM

The object of patent law is to provide an incentive to invent, it does this by granting a monopoly. Rationale behind patents is to stimulate technical development by offering the opportunity of acquiring exclusive rights in an invention for a limited time. It rewards inventors for the effort and expenditure incurred in developing an invention so that the public may ultimately benefit from the technological advancement that invention brings.

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TYPES OF PATENTS AND DURATION

STANDARD PATENT

A standard patent requires an inventive step.

The duration of a standard patent is 20 years (s 67). The duration is measured from the date the complete specification is filed (s 65).

PHARMACEUTICAL PRODUCT

There is an extension of duration of term for the time needed for testing pharmaceuticals, for a maximum of a further 5 year period (ss 70-79A). This is due to the rigorous testing processes that are required before a pharmaceutical product can be sold to the market.

INNOVATION PATENT

An innovation patent requires an innovative step.

The duration of an innovation patent is 8 years from the date of the patent. The duration is measured from the date the complete specification is filed (s 65).

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PATENTABLE SUBJECT MATTER

An invention is patentable if it: (s 18):

a) Is an invention; andb) Is a manner of manufacture within the meaning of s 6 of the Statute of Monopolies; andc) Is not generally inconvenient; andd) When compared with the prior art base before the priority date:

i. Is novel; andii. Involves an; and

1. Inventive step (for standard patents); or2. Innovative step (for innovation patents);

e) Is useful; andf) Was not secretly used before the priority date; andg) It passes the other miscellaneous restraints imposed.

IS IT AN INVENTION?

Term ‘invention’ defined in Schedule 1 dictionary as ‘any manner of new manufacture, and includes an alleged invention’.

The word ‘new’ here does not mean novel, it means inventive (NV Phillips).

In addition to these requirements, the opening words of s 18 ‘impose a threshold requirement’ that an alleged invention must satisfy before it need be tested against the listed heads of patentability in s 18 (NV Philips).

An invention must relate to something tangible in a commercial sense

NV Philips Gloeilampenfabrieken v Mirabella International

Issue here was the patentability of compact fluorescent lamps. HELD it was apparent on the face of the application that the claim was for a known material (phosphor) for use in known

articles where its qualities were well known - patent failed to pass the threshold test. “The threshold requirement of an “alleged invention” will, notwithstanding an assertion of “newness”, remain unsatisfied

if it is apparent on the face of the relevant specification that the subject matter of the claim is, by reason of the absence of the necessary quality of inventiveness, not a manner of new manufacture for the purposes of the Statute of Monopolies.”

EXCLUDED SUBJECT MATTER - PATENT INELIGIBLE MATTER

IF fundamental principle, abstract idea or phenomena of nature:

Fundamental principles, abstract ideas and phenomena of nature are not patentable because they already exist in the natural world. In other words, they are known but not new. Patent law is about inventing stuff, not discovering stuff.

IF solely artistic creations:

Solely artistic creations are not patentable because the object of patent law is to address the ‘useful arts’ rather than ‘fine acts’. Therefore, literature, sculpture, pictures etc outside the realm of patent law.

If principles, theories or mathematical models:

Principles, theories and mathematical models are not patentable because they are merely ideas, theories and discoveries.

IF mere discoveries:

Mere discoveries, including human DNA for instance, are not patentable. Mere discoveries as such are not patentable. A practical application of the discovery with an economically significant result must be shown.

IF mere idea:

Mere ideas that are not reduced to specific practical application are not patentable.

If purely mental processes:

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It is unclear whether purely mental processes are capable of being patented. Since patents can be granted of intangible things, and there is no need to cause a physical effect, it is arguable that a patent can also be granted over a process which occurs solely in the human mind.

IS IT A MANNER OF MANUFACTURE WITHIN MEANING OF SECTION 6 SOM ?

Subject matter of claim must disclose a ‘manner of new manufacture’ within s 6 of the Statute of Monopolies (s 18).

From 1623, the concept of ‘manner of manufacture’ was always understood to be flexible, but it was not until later that processes were confirmed as patentable subject matter (Crane v Price).

Old law from Morton’s rules

The old law in relation to processes was derived from Application for GEC, in which Morton J held that a method or process is a manner of manufacture if it:

i. results in the production of some vendible product; or ii. improves or restores to its former condition a vendible product; or iii. has the effect of preserving from deterioration some vendible product to which it is applied

New law from NRDC

In NRDC, the issue was whether a method of mixing known herbicidal chemicals together to create a weed treatment was patentable. In granting the patent, the court held that a policy driven approach should be adopted when defining the scope of patentable subject matter and that patentable subject matter is a broad and flexible concept, dynamically changing over time, and needs to be able to response to new technologies as they arrive.

Patentable subject matter is a broad and flexible concept. A concept that has dynamically changed over time, and it’s a concept that needs to respond to new technologies as they arise.

Therefore, to be a manner of manufacture, the invention must:

1. Can be a product or process2. Be a ‘vendible product’

A product means every end produced The thing in which the new and useful effect may be observed – need not be a thing in terms of a physical

article – it may be any physical phenomenon in which the effect can be observed ‘Vendible’ means an artificially produced state of affairs

3. Fall within the ‘useful arts’ rather than the ‘fine arts’ Useful arts carries a utilitarian connotation, it basically means technology Fine arts encompasses paintings, literature etc

4. Produce a new and useful result of specific practical application The term ‘new and useful’ also appears in the US patent legislation Something is not going to be an abstract idea if it is of specific practical application

5. Be of economic significance, meaning that its value to the country must be in the field of economic endeavour Ties in with vendible product, i.e. something that someone would pay money to receive the benefit of Field of economic endeavour describes the field of the invention and does not ask for any assessment of

economic benefits or utility (Grant v CoP)6. Have ‘an industrial, commercial or trading character’7. Not be mere discoveries, ideas, scientific theories and laws of nature8. The term, ‘manner of manufacture’, is a dynamic concept whose meaning has evolved over time

New classes of invention presently unforeseen should not be excluded by a restrictive test9. Common law meaning must be adopted, not literal interpretation10. Patentable subject matter is broad and flexible11. The principles are to be applied flexibly as technological developments and inventions are excitingly unpredictable12. The concept of patentability must accommodate inventions not yet been envisaged

National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 (“NRDC case”)

A patent was applied for a method of eradicating weeds by spraying them with a particular weed killer The chemicals used were previously known, however their weed killing potential was not Commissioner determined that certain claims in the application did not disclose a “manner of manufacture” (that being

the sale of a vendible product or method or process for producing a vendible product) and, additionally, that a “manner of manufacture” excluded agricultural or horticultural processes

Argued that because process in question produced a useful result, it was appropriate matter for a patent

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Court took a broad approach the question of “manner of manufacture” and rejected approach to treat the phrase as a rigid statutory test

Requires inquiry into what is the scope of protection provided by letters patent Manufacture – general title found in Statute of Monopolies, not meant to be interpreted literally The correct question is whether the thing is a proper subject of letters patent according to the principles regarding the

application of s6 of the Statute of Monopolies For the purposes of patent law there may be invention and a manner of new manufacture in taking advantage of a

unsuspected property of a substance and devising a method of applying that substance to a new and useful purpose cf a new method in the same field at the substance is already known to have an effect

The result was a vendible product because it resulted in an artificially created state of affairs in respect of the weeds and crops, and it achieved a separate result possessing its own economic utility

Agricultural and horticultural processes are not outside the limits of patentable inventions. Basic principle: manner of manufacture can be a process which produces a useful result of economic significance but

not necessarily directly producing a vendible product/article Process in question achieves this, and was therefore patentable

BUSINESS METHODS

Business methods involving the application of physical devices have been found to be capable of patent protection: State Street Bank & Trust Co v Signature Financial Group).

There is no business method exception to patent eligibility and it is to be treated in the same way as any other patentable subject matter.

State Street Bank & Trust Co. v Signature Financial Group Inc (1998) (‘State Street’)

Patent involved the transformation of data representing monitoring circuit inputs to work out a final share price US Federal Court of Appeal (Appeal Circuit) determined that business methods are subject to the same legal

requirements that apply to any other patentable invention. Business methods are not to be treated as a special class that is automatically unpatentable. Here, this method was held to be a practical application of a mathematical algorithm because it produced a tangible

result in the form of a share price - computer processed a result that is useful - thus, the business method was held to be patentable.

Welcome Real-Time v Catuity

Patent for a method of operating a customer loyalty scheme by configuring a smart card with a magnetic strip. Smart card held customer loyalty points for different reward schemes for various bodies (better and more advanced than Fly Buys)

HELD smart card satisfied the ‘inventive’ requirement because it allowed a large amount of data to be stored in the magnetic strip (used dynamic allocation allowing for more data of different types to be stored in its magnetic strip and overcoming the problem of limited space on earlier smart cards).

Heerey J adopted the NRDC test and held that this invention satisfied the patentability test because it was a state of affairs producing some output.

Current position in Grant v Commissioner

In the recent decision of Grant v Commissioner of Patents however, it was held that a method of structuring a financial transaction that protects an individual’s assets was not patentable because:

1. It did not have a physical effect or phenomenon: @ [32]. The court reasoned that in the above cases there was a component physically affected or a change in state or information in a part of a device or machine. They regarded this as merely ‘intellectual information’ @[14]-[23].

2. It was a mere discovery of a way in which the law operated (included other transactions, advices, schemes and arguments as discoveries also) and thus lacked the necessary ‘industrial, commercial or trading character’ and are discoveries rather than inventions.

The first reason appears to be contradictory to the existing law.

The court went from acknowledging that NRDC left the question unresolved, and that Heerey J left it unanswered, to holding that physical aspect is necessary. Equating a lack of a physical aspect with the invention being only a mere scheme or intellectual information, is inconsistent with NRDC principles because it ignores the possibility that an intangible method might produce useful practical outcomes. In this regard, the patent clearly disclosed a practical application and means of implementing it – i.e. the protection of the assets of the person from the claims of creditors – the lack of a physical aspect does not cause it to lack practical effect.

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In relation to the second reason, the court failed to explain why the use of ingenuity in legal practice is not of a commercial character – especially when the practise of law is a profit-driven commercial enterprise. Surely innovative developments in the law’s application are of economic significance and are of a commercial character. Additionally there was no explanation of why this was classified as a legal discovery – surely the invention was a practical application of the discovery.

Ben McEniery’s points from his articles

Ben McEniery believes Grant was not correctly decided because there is no requirement for tangibility present from the cases.

There is no requirement for an invention in the fields of science and/or technology (even if that happens to fit within NRDC) – NRDC, Catuity, CCOM, IBM all don’t mention it.

It may be that the historical cases all reveal patents relating to the application of science/technology, but that, of itself, does not create a requirement.

Full Court in Grant got that right – to impose such a requirement would risk the kind of rigidity that the HCA in NRDC warned against.

It was also a mistake to categorise it as a discovery of legal law, being the pre-existing body of Australian law. This approach does not take into account the distinction between a discovery of what the law is on a particular point and an inventive scheme that is a practical application of that discovery.

What was discovered was that the laws of Australia operate in a certain way. The innovative step taken was to devise a process by which the effects of certain laws be avoided by the pre-emptive taking of appropriate steps in accordance with other laws. It is the practical application of that discovery rather than the discovery that the law operates in a certain way that Mr Grant was seeking a monopoly in respect of.

The course of the Full Court’s reasoning went from acknowledging that the High Court in NRDC left the question unresolved (and that Heerey J in Welcome Real-Time v Catuity had been aware of but had not needed to decide the question) to holding that the law requires that an invention must contain a physical aspect to be patentable. The court did not give an explanation as to how it reached this conclusion (and perhaps read into Heerey J’s judgment more than what he intended to say).

The physicality requirement is an unnecessary and artificial fetter that is inconsistent with the manner of manufacture concept being able to adapt to unforeseen developments in technology.

The High Court in NRDC said that the manner of manufacture test is to be applied flexibly and warned against the practice of denying patentability to certain classes of invention. It said that an invention must be a vendible product in the sense of it being an artificially-created state of affairs of economic significance and its value to the country must be in the field of economic endeavour. It must have an industrial, commercial or trading character. Further, it must offer some advantage that is material in the sense that it must be part of the ‘useful arts’ rather than the ‘fine arts’.

It appears that Mr Grant’s invention meets these criteria. The asset protection method is an artificially-created state of affairs, in that it is a man-made process that produces a useful and concrete result, being the protection of assets from the claims of creditors. It is of economic significance, is of value to the country in the field of economic endeavour and bears a commercial character because it is a process that a consumer would be willing to pay to have implemented.

The effectiveness of the method is irrelevant at this stage of the inquiry – utility is considered later.

Application of Grant

After Grant it is Australian law that a method must disclose some physical aspect in the sense of being a concrete, tangible or observable effect or phenomenon to be patentable.

Applying Grant, the patent here would not be granted because it lacks a physical aspect & it would be classified as a discovery. However there is some doubt over the decision of the Full Court, and applying the principles in NRDC however the patent would arguably be granted because:

There is a vendible product – that is produces (e.g. share price/transaction with asset protection/loyalty program) which is useful (broad definitions)

o ‘vendible’ points to utility and practical affairs

o ‘product’ is taken to mean every end produced

Additionally it is worthy to note that in NRDC, the vendible product need not be directly produced providing the invention is a process which produces a useful result of economic significance.

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This is a useful art not fine art – it is a form of technology – namely by serving the purpose of (purpose) It produces a new and useful result of specific practical application and is thus not just an idea (e.g. applied in

transactions) It has economic significance and a commercially useful effect (e.g. someone would pay for it/can be sold/used for profit) There is an industrial/commercial trading character about the process (e.g. can be commercialised) Consistent with the arguments above, it is not a mere discovery (or idea/scientific theory/law of nature) but instead a

practical application.

BIOTECHNOLOGY

Biological entities may be patentable if a technical intervention has resulted the creation of an artificial state of affairs which does not occur in nature (uses NRDC test).

Applying the reasoning in NRDC:

There is a vendible product – that is produces (e.g. share price/transaction with asset protection/loyalty program) which is useful (broad definitions)

o ‘vendible’ points to utility and practical affairs

o ‘product’ is taken to mean every end produced

This is a useful art not fine art – it is a form of technology – namely by serving the purpose of (purpose) It produces a new and useful result of specific practical application and is thus not just an idea (e.g. applied in

transactions) It has economic significance and a commercially useful effect (e.g. someone would pay for it/can be sold/used for profit) There is an industrial/commercial trading character about the process (e.g. can be commercialised) Consistent with the arguments above, it is not a mere discovery (or idea/scientific theory/law of nature) but instead a

practical application.

IF biological entity:

Biological entities may be patentable if a technical intervention has resulted in the creation of an artificial state of affairs which does not occur in nature. This is in accordance with the NRDC test.

IF naturally occurring entity:

Naturally occurring micro-organisms are not patentable as they represent a discovery and not an invention: Ranks Hovis McDougall Application.

Ranks Hovis McDougall Ltd’s Application

Artificial variants of a new strain of micro-organism that produced an edible protein Applicable to all life-forms Must involve the technical intervention of man and be useful in economic affairs The working of the organism Naturally occurring micro-organisms

o Not patentable as they represent a discovery and not an invention

A claim to a pure culture in the presence of some specified ingredients would satisfy the requirement of a technical intervention

IF involves some form of technical intervention:

A new plant or animal can be regarded as a manner of manufacture if it involves the technical intervention of man and is useful in eco-affairs (Ranks Hovis McDougall Ltd’s Application).

Ranks Hovis McDougall Ltd’s Application

Artificial variants of a new strain of micro-organism that produced an edible protein – method of replicating that occurs in nature (i.e. synthetic)

HELD by Commissioner of Patents that a new plant or animal can be regarded as a manner of manufacture if it involve the technical intervention of man and is useful in economic affair.

Therefore, it is possible to patent a living organism, but it must be a man made living organism.

IF genetically engineered:

It was recognised in the US decision of Diamond v Chakrabarty that patent protection is available for living, genetically engineered micro organisms. The issue in this case was whether living genetically-modified micro-organisms could be

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patented. Burger CJ said that this was a non-naturally occurring manufacture or composition of matter – a product of human ingenuity.

Diamond v Chakrabarty

New man-made strain of bacteria was developed for digesting oil spills - organism was man-made and could only be produced under carefully controlled laboratory conditions.

HELD to be patentable - recognised that patent protection is available for living, genetically engineered micro organisms.

IF pure culture:

A claim to a pure culture in the presence of some specified ingredients would satisfy the requirement of a technical invention (Ranks Hovis McDougall Ltd’s Application). This is because an artificial variance of a new strain of micro-organism that produced an edible protein.

IF merely something existing in nature:

It is not possible to patent a gene because this would constitute a mere discovery (Ranks Hovis McDougall Ltd’s Application).

IF method of isolating:

It may, however, be possible to patent a method of isolating chemical substances, genes or existing organisms. The method of isolation must be done in a way that makes it useful. A method associated with isolating a gene is to change its form to one that is useful and therefore, it will be patentable.

METHOD OF TREATING THE HUMAN BODY

Section 18(2) expressly provides that human beings and biological processes of producing human beings are not patentable.

Prior position from Joos

Initially, the courts treated methods for treating humans as not patentable (Joos v Commissioner of Patents).

Joos v Commissioner of Patents (1972) 126 CLR 611

Cosmetic treatment process for improving the strength and elasticity of human nails and hair was held to be patentable subject matter

In light of NRDC case, not necessary that the process should produce or involve a vendible product; it was enough that the process had a commercial application

Radical distinction between process for treating diseases and one for improving cosmetic appearance of a person

That a process must have a commercial application simply means that the process must offer some advantage which is material in the sense that the process belongs to a useful art as distinct from a fine art. In this case the processes are to be used in the commercial activity of hairdressing, which is in the area of the useful arts.

Patent was granted

Current position

Methods of treating the human body are patentable in Australia (Anaesthetic Supplies v Rescare).

Although the court in NRDC seemingly endorsed the exclusion upon basis that such processes are essentially uneconomic, the application of its broad principles in two subsequent decisions of the Full Federal Court has not removed any general exclusion for methods of medical treatment of humans as a class of inventions.

These decisions applied a broad ratio from NRDC - if the process results in a ‘new and useful effect’ so that the new result is an ‘artificially created state of affairs’ providing economic utility, it may be considered a ‘manner of new manufacture’ within s 6 of the SoM.

Anaesthetic Supplies v Rescare

Involved patent for a device and its use in treating sleep apnoea, a condition associated with an extreme form of snoring in which the sufferer chokes on his or her tongue and soft palate repeatedly while asleep.

The device comprised a nose mask and tubing, and the treatment comprised continuous positive airways pressure applied via the mask.

At first instance, Gummow J concluded that the process claims for methods of human treatment were patentable subject matter.

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He noted the absence of any express exclusions in s 18 and dismissed arguments that such methods were ‘generally inconvenient’.

A majority of Lockhart and Wilcox JJ approved his decision in the appeal to the Full Federal Court. Lockart J could see no logic for the past broad exclusion of this class of subject matter, particularly if the object of the

patent system were to provide incentives for research and to provide rewards for research. Both were influenced by the absence of any express statutory exclusion of this or any other class of subject matter from

the scope of a manner of manufacture.

Bristol Myers Squibb v F H Faulding

Involved method of administering new drug used in cancer treatment. At first instance, Heerey J regarded the majority observations in Rescare on methods of medical treatment as obiter and

proceeded to agree with and adopt observations of Sheppard J as to general inconvenience. This decision was overturned by the Full Federal Court who rejected the proposition that methods of medical treatments

of humans, as a class of subject matter, were unpatentable. They also rejected the application of ‘generally inconvenient’ on the facts of the case. Black CJ and Lehane J could not rationally explain why a product for treating the human body could be patentable

whereas a method of treatment could be denied. They were strongly influenced by the failure of Parliament to exclude methods of medical treatment from patentability

when it enacted the PA.

COMPUTER SOFTWARE

Computer programs are not generally patentable but computer program related inventions are. It is possible to obtain patent protection if you frame the application in terms of operating a computer machine in a particular way.

The problem is maintaining the patent; computer patents will likely be attacked for lack of novelty or lack of inventive step.

Protection under copyright

Computer software protected by copyright as a ‘literary work’ (Copyright Act 1968 (Cth) s 10).

Copyright protects against the reproduction of a work in material form, but it does not prevent independent creation (Powerflex Services).

Australian case law

In IBM Corporation, a method of producing and displaying an image of a curve on computer graphics displays was held to be patentable.

International Business Machines Corporation v Commissioner of Patents (1991) 22 IPR 417

Involved a method of creating a visual image on a computer screen. It was more than just a mathematical algorithm or pleasant image.

Burchett J concluded that there is no conceptual difference between the use of an algorithm to achieve a particular purpose, namely the image of the curve, and the use of the compounds in NRDC.

The application of mathematics used in IBM achieved the improved curve image that was a commercially useful effect in the field of computer graphics.

In contrast, a claim that merely recites a mathematical formula, or scientific principle or phenomenon of nature, and seeks patent protection for that formula in the abstract will not be accorded the protection of patent laws.

It is the application of the formula to achieve an end or to a method of producing that end which renders it a manner of manufacture.

HELD therefore, that it constituted an artificial state of affairs which had economic or commercial significance/useful effect.

A later decision of the Full Federal Court in CCOM Pty Ltd v Jiejing Pty Ltd confirmed the patentability of computer programs in the context of a method for assembling text on a computer in the Chinese language.

CCOM Pty Ltd v Jiejing Pty Ltd (1994) 28 IPR 481

Invention involving the use of a computer to assemble text in Chinese characters held to be a manner of manufacture Operation of the keyboard led to the computer program searching to retrieve and display all Chinese characters relevant

to the search criteria entered Artificially created Chinese language off English keyboard – had obvious economic uses

Data Access Corp v Powerflex Services Pty Ltd (1999) HCA

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High Court approved CCOM v Jiejing and supported the role of patents for computer programs Commented that ‘the definition of a computer program seems to have more in common with the subject matter of a

patent than a copyright’

Diamond v Diehr (1981) (US)

Mere application of a mathematical equation to data by computer program was patentable Although there is no useful effect of the equation by itself, the process of application to data was useful

AT & T Corp v Excel Communications (1999) (US)

Bare machine executed process Data in, modified/transformed, data out Held to be patentable

Welcome Real-Time SA v Catuity Inc

Federal Court confirmed as patentable subject matter a method for using a smart chip card, the memory on that card, various computer programs, readers and printers to operate a loyalty scheme for customers.

PHARMACEUTICALS

Pharmaceuticals are entitled to patent protection in Australia (Wellcome).

Must be more than a mere mixture of known ingredients used for medicinal or food purposes (whether for animals or humans or internal or external use) (s 50(1)).

Patent can be extended for up to 5 years to compensate for regulatory procedures through the TGA (ss 70-79A).

Wellcome Foundation v Commissioner of Patents

1. Considered the patentability of written instructions on the packaging of a pharmaceutical substance2. Idea of presenting information in that way not novel3. The drug itself (if satisfying rest of s18) is clearly a manner of manufacture.

GENERAL INCONVENIENCE

Section 6 of SoM excludes from patentability any inventions that would be contrary to law or mischievous to the state by being generally inconvenient.

Principal discussion in recent times regarding the concept of ‘generally inconvenient’ has arisen in context of methods of medical treatment for humans.

Anaesthetic Supplies v Rescare

Full Federal Court majority rejected argument that an invention for a method of medical treatment that involved the application of continuous airways pressure to the nasal passages using a face mask to treat obstructive sleep apnea, is ‘generally inconvenient’

Lockhard J considered that there is no distinction in principle between a product for treating the human body (which is patentable) and a method of treating the human body.

However, he did not reject the existence of the exception under the Act. Wilcox J appeared to significantly reduce its possible application by stating that the court should not resort to matters of

ethics and social policy to ‘engraft onto a recently enacted statute an exception that parliament has chosen not to adopt’ In dissent, Sheppard J considered that the method of treating obstructive sleep apnoea was generally inconvenient.

Bristol Myers Squibb v F H Faulding

Heerey J followed the approach in Rescare when he applied the generally inconvenient exception in the context of a method of administering the drug taxol in the treatment of cancer.

However, all appeal judges rejected its application. Black CJ and Lehane J followed the majority view in Rescare for two reasons:

1. They saw it as an insurmountable problem, from a public policy point of view, to draw a logical distinction between allowing patentability of a product for treating the human body, but denying patentability for a method of treating the human body.

2. They were influenced by the fact that there was no express exclusion included in the PA, even though patents were being granted for methods of medical treatment at the time.

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Therefore, it appears that the courts recognise that they retain discretion to reject inventions that are generally inconvenient, but are unwilling to exercise that discretion in matters of complex policy.

NOVELTY

Novelty is a basic requirement of the patent system, because it would be unjust to allow a monopoly over something that is already known and possibly in use.

An invention will be novel if it has not been disclosed to the public through prior publication or use.

PRIOR ART BASE

Prior art base for novelty means (Schedule 1):

Information in a document that is publicly available, in Australia or elsewhere; Information made publicly available through the doing of an act, in Australia or elsewhere; and Information contained in a complete specification which was published after the priority date of the claim under

consideration, where:o The claim containing the information in the later published specification has an earlier priority date than that of

the claim under consideration; and o The information was contained in the later published specification on its filing date and when it was published.

IF found in two or more related documents or acts:

Prior art information can be found in a single document or act or in two or more related documents or acts. However it cannot be a ‘mosaic’ from various sources read together to make inferences that there is unity between the sources (Minnesota Mining v Beiersdorf).

IF documents refer to each other or incorporate each other:

Reading together different publications is permissible where it is plain that there is incorporation by reference (Nicaro Holdings v Martin Engineering).

PRIORITY DATE

IF provisional application:

Here the [inventor] has filed a provisional application and the priority date will be the date of filing. Therefore, the priority date in this case is [date of filing].

IF failure to lodge complete application within 12 months:

Here the [inventor] has failed to file a complete patent application within 12 months of filing the provisional application. At this stage the invention will no longer be novel or inventive (for anyone) because it has fallen into the public domain.

IF file is later lodged and complete application is different to provisional application:

Here the facts are similar to Rescare in that the complete specification was not fairly based on the provisional application. As such the priority date will be the date of lodging the complete application. Therefore, the priority date is [date of filing].

IF complete application filed:

Here the [inventor] has filed a complete application so the priority date will be the date the application is filed (s 65). Therefore, the priority date is [date of filing].

Claims must be fully placed upon the description (s 40) Must describe the patent fully and set out claim(s) The type of patent must be elected and cannot be changed

IF complete application different to provisional application:

Here the facts are similar to Rescare in that the complete specification was not fairly based on the provisional application. As such the priority date will be the date of lodging the complete application. Therefore, the priority date is [date of filing].

DETERMINING NOVELTY86

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To determine whether the [invention] is novel, it must be compared with the prior art base existing immediately before the priority date (s 7).

Section 7(1) sets out the categories of information that are to be considered.

There will only be anticipation if the invention is disclosed in:

a) a single source of information, i.e. in a single document or a single act;b) two or more related documents/acts, if the persons skilled in the art would treat them as a single source of informationc) a single, published patent specification which was filed but not published at the priority date of the claim under

consideration

To establish lack of novelty, publication must contain clear directions to do what the patentee claims to have intended.

REVERSE INFRINGEMENT TEST: ANTICIPATION

The generally applied test for anticipation or lack of novelty is the ‘reverse infringement test’ which was articulated in Meyers Taylor v Vicarr Industries by Aickin J:

The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.

Meyers Taylor v Vicarr Industries

The way you determine if the alleged invention has been anticipated by something earlier is to ask if the situation have been reversed, would the earlier prior art have infringed the patent? If the answer’s yes, then it anticipates the invention claimed.

Infringement would occur where each and every one of the essential integers or elements of the invention is taken. So in order for prior art to invalidate a patent, the prior art must disclose all the essential bits of the invention. Therefore, if it doesn’t, then it doesn’t anticipate that invention.

All essential integers must be disclosed clearly and plainly (Minnesota Mining & Manufacturing).

IF disclosed to person with obligation of confidence:

Disclosure of an invention to a person who is subject to an obligation of confidence will not destroy novelty (Maggbury v Hafale). Novelty will only be destroyed where the information is disclosed or publicised to the public.

IF prior publication in photo or drawing:

Prior publication in a photograph or drawing, even if there is no additional explanation, will result in a loss of novelty (C Van Lely NV v Bamfords).

C Van Lely NV v Bamfords

Owned patent for hay-raking machine - certain photographs of the machine had been published in a magazine in the United States (respondents were opposing the patent)

HELD that claims had been anticipated by photos – thus lack of novelty.

IF prior publication by picture of use:

Prior public use of the invention will result in a loss of novelty (Windsurfing v Petit).

Windsurfing International Inc v Petit

Patent for sailboard apparatus used for windsurfing was anticipated by prior publication of an article in a journal which included a photo of someone using the sailboard.

HELD there had been prior public use by another person of the sailboard destroyed the novelty of the invention

IF prior publication in documentary form or different language:

Prior publication in documentary form, even if in a different language will result in a loss of novelty (Dennison v Monarch Marking).

Dennison Manufacturing Co v Monarch Marking Systems Inc (1983) 66 ALR 265

Appellant applied for patent for a connector for holding articles together

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Respondent opposed the application on the grounds that the specification disclosed a document (written in French) that was available in the Patent Office Library in Canberra

Ordered that only one of the 6 claims should be allowed Earlier disclosure of the same invention, even if in a different language, will result in a lack of novelty

IF prior use by inventor:

Prior public use by the inventor will result in a loss of novelty (Longworth v Emerton). There it was held that the use was in the open, with no obligation of confidence, and the nature and character of the machine was apparent to those who saw it.

Longworth v Emerton (1951) 83 CLR 539

Inventor of a seed collecting machine used the machine on a number of farms in the district where he lived before applying for a patent

High Court upheld dismissal of an action for infringement as inventor’s public prior use invalidated the patent Use of the machine had been open and no obligation of confidence had been established The nature and character of the machine was apparent to those who saw it Use went beyond mere experimentation

IF prior publication by inventor:

Prior publication of information concerning the invention by the inventor will result in a loss of novelty (Anaesthetic Supplies v Rescare).

Anaesthetic Supplies Pty Ltd v Rescare (1994) 28 IPR 383

Provisional application for snoring devise Inventor published article on invention before lodgement of complete specification HELD that the claims in complete specification were not “fairly based” on the provisional Hence the priority date of the complete specification was the date of lodging of the complete Since the article was published before the complete was filed, the article anticipated the invention Therefore the invention lacked novelty and was invalid

EXCEPTIONS IN SECTION 24

Section 24 provides some circumstances in which public disclosure will not destroy novelty.

Section 24(1)(a) provides that information made publicly available through any publication or use of the invention will be disregarded in prescribed circumstances.

IF invention has been disclosed:

Regulation 2.2(1A) Patents Regulations provides a 12 month grace period from the date of disclosure to when a complete patent application is filed. However not all jurisdiction have grace periods.

IF working on invention in public (within 12 months of priority):

Working on the invention in public within 12 months before priority date of claim for the purpose of a reasonable trial provided that, because of the nature of the invention, it is reasonably necessary for the working to be in public will not affect novelty (Regulation 2.2(2)(d) Patents Regulations).

IF showing or using invention at a recognised exhibit:

The showing or use of an invention at a recognised exhibition will not affect novelty (Regulation 2.2(2)(a) and (b) Patents Regulations).

IF publication in paper written by inventor and read or published before learned society:

Publication of the invention in a paper written by the inventor and read before a learned society or published by a learned society will not affect novelty (Regulation 2.2(2)(c) Patents Regulations).

INVENTIVE STEP FOR STANDARD PATENTS (SECTION 18(1)(b)(ii))

Section 18(1)(b)(ii) provides that an inventive step is required for a standard patent.

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Section 7 provides that there will be an inventive step unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date.

Was it obvious to a person skilled in the particular knowledge of his/her particular art that he/she should do what the patent proposes?

Therefore, only information or disclosures which form part of the common general knowledge in Australia are relevant, either separately, or together with the additional information specified in s 7(3).

COMMON GENERAL KNOWLEDGE

Common general knowledge means the general body of knowledge known or used by all those in the relevant trade which forms the background knowledge and experience of those working in the particular field (Minnesota v Biersdorf)

Includes, for example, information contained in standard texts, dictionaries, usual trade journals and other publications

Prior patent specifications only relevant if part of the common general knowledge of those skilled in the art at the relevant time

The information can be considered separately or together with:

a) A single piece of prior art information; orb) A combination of any 2 or more pieces of prior art information.

Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253

Patent for thin surgical tape which the appellants claims had been infringed by the respondents Respondent counter claimed for revocation of the patent for lack of inventiveness Issue: Could prior patent specifications be regarded as forming part of the common general knowledge of those working

in the field of adhesive/surgical tape? HELD that common general knowledge means the general body of knowledge known or used by all those in the

relevant trade which forms the background knowledge and experience of those working in the particular field Includes, for example, information contained in standard texts, dictionaries, usual trade journals and other publications Prior patent specifications only relevant if part of the common general knowledge of those skilled in the art at the

relevant time Here, prior documentary specifications were not part of the common general knowledge, therefore the patent was not

obvious (Affirmed in Wellcome Foundation Ltd v V R Laboratories (Aust) Pty Ltd (1981) 148 CLR 262; (1981) 34 ALR 213)

Firebelt Pty Ltd v Brambles Australia Ltd (2002) 188 ALR 280

Appellant granted patent for a “A Side-Loading Refuse Vehicle” The first respondent, Cleanaway, carried on business using a side-loading refuse and recycling collection vehicle.

Cleanaway did so in the region of the second respondent, a council (the council), that had awarded to Cleanaway a contract for the collection, removal and conveyance of refuse.

Patent was revoked for lack of inventiveness The invention was obvious in light of the common general knowledge, including certain prior disclosures in the particular

area or disclosures that could be regarded as prior art information that a reasonable person could have discovered In applying the test of inventiveness under ss7(2) and (3) the approach is to look: First, to the light shed by the common general knowledge as it existed in Australia before the priority date considered

separately Secondly, consider the common general knowledge together with the kinds of information mentioned in s7(3)

IF from a number of sources:

Common general knowledge can come from a mosaic or a collection of different sources where it would be obvious for a person skilled in the area to draw these sources together.

If ordinary research would lead directly to the invention or through trial and error:

If ordinary research in the field would lead directly to the invention as a matter of course it would be obvious and not inventive (Aktiebolaget Hassel v Alphapharm). Therefore, deduction research where an inventor would have been more likely to engage in a process of trial and error to get to the particular result does not involve an inventive step.

Aktiebolaget Hässle v Alphapharm Pty Ltd (2000) 51 IPR 375

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“the inventive element needed to sustain a patent may be small. A ‘scintilla of inventiveness’ is sufficient… However, while a simple idea may be inventive, it is nevertheless essential for the validity of a patent that the be some inventiveness” at [31]

Must assess whether an ordinary research group in the field would be led directly to the invention or whether it did involve some ingenuity or inventiveness

HOW INVENTIVE MUST IT BE?

R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 12 IPR 513

“though small, there must be some difficulty overcome, some barrier crossed” at 523

Aktiebolaget Hässle v Alphapharm Pty Ltd (2000) 51 IPR 375

“the inventive element needed to sustain a patent may be small. A ‘scintilla of inventiveness’ is sufficient… However, while a simple idea may be inventive, it is nevertheless essential for the validity of a patent that the be some inventiveness” at [31]

Must assess whether an ordinary research group in the field would be led directly to the invention or whether it did involve some ingenuity or inventiveness

Jenotech v Wellcome Foundation

If inventor has done nothing more than an ordinary non-inventive person would be expected to do to solve a problem then it will not be an inventive step

INNOVATIVE STEP FOR INNOVATION PATENTS - SECTION 18(1A)(b)(ii)

Section 18(1A)(b) provides that an innovative step is required for an innovation patent.

An “innovative step” requires a “substantial contribution to the working of the invention” (s 7(4)). An invention will involve an innovative step unless a person skilled in the relevant art, comparing it to the relevant prior art base would regard it as only varying from the kinds of information in ways that make no substantial contribution to the invention (s 7(4)).

To not be an innovative step, it must vary from the prior art only in ways that make no substantial contribution to the working of the invention.

IF obvious:

Therefore an innovative step can be obvious as long as it makes a substantial contribution.

The intention is to require a lower inventive threshold than that of an “inventive step”.

UTILITY AND USEFULNESS - SECTION 18(1)(c)

The invention must be ‘useful’ in order to be patentable (s 18(1)(c) / (1A)(c)).

The invention must operate as claimed (Rehm v Websters).

Usefulness in this context does not mean that it serve a purpose. Not invalid because can’t imagine a time when anyone would ever want to use the invention.

IF fails to fulfil one promise in specification:

An invention will lack utility where one definite promise in the specification found to be unfulfilled, even if other claims in the specification may be fulfilled (Alsop’s Patent).

Alsop’s Patent

Process of subjecting flour to electrically charged air which claimed to bleach the flour, reduce its carbohydrate content and increase its protein content.

HELD to be unpatentable because the process did not increase the proteins while decreasing the carbohydrate content – no need to consider if the flour was bleached.

Therefore, the invention lacked utility overall.

Windsurfing International Inc v Petit (1983) 3 IPR 449

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Plaintiff’s patent for a sail board was held invalid on the grounds, inter alia, of lack of utility because the claims in the specification included a method of working the invention which would not produce the results claimed

Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330

Necessary “…to remember that the claim of a specification must be considered in the light of what an intelligent person skilled in the particular art to which they relate and desirous of making use of the invention would do ... to introduce into every claim limitations dictated by common sense after a perusal of the whole of the specification including the claims; and ... that a claim is not to be invalidated for vagueness or ambiguity by reason of the fact that it is possible to imagine debatable territory where the advantages of the invention may not be obtained”: British Thomson-Houston Co Ltd v Guildford Radio Stores (1937) 55 RPC 71 at 88 per Luxmoore J

NOT SECRETLY USED PRIOR TO PRIORITY DATE - SECTION 18(1)(d)

The final requirement for patent validity in s 18 is that there was no secret use of the invention in the patent area before the priority date of the claim by, or with the authority of, a patentee or nominated person or his or her predecessor in title (ss 18(1)(d) / 18(1A)(d)).

The test is: has the patentee obtained a commercial benefit before the priority date? (Azuko v Old Digger).

If so, there will have been a secret use and the patent is not valid.

Secret use includes things like demonstrating the product, especially if for the purpose of inducing an order.

Secret use involves some element of deliberate concealment of the invention (Bristol-Meyers Co v Beecham Group Ltd).

IF patent is for a method or process:

If the patent is for a method or process, ‘use’ includes using the method or process to create a product (Bristol-Meyers Co).

IF patent is a product:

If the patent is a product, “use” includes the use of the product in a manufacturing process to make other goods (Bristol-Meyers Co). However, it does not include the manufacture of goods for sale after the priority date.

R v Patents Appeal Tribunal; Ex parte Beecham Group Ltd [1974] AC 646

Beecham produced a sold a quantity of a certain drug which was a by-product of their production of another drug Were not aware of the actual characterization of the drug Held still to be a “use” regardless of their ignorance as to what it was Held not be a “secret use”

Fomento Industrial SA v Mentmore Manufacturing Co Ltd [1956] RPC 87

Manufacture of 15-20 ball point pens not for the purpose of reasonable trial/experiment was a secret “use”

Azuko Pty Ltd And Another V Old Digger Pty Ltd (Formerly SDS Digger Tools Pty Ltd) (2001) 52 IPR 75

Patentee manufactured 15-20 hammers before the priority date Order placed by another for 5-6 hammers, but was not expressly accepted by patentee HELD that this was prior secret use b/c the hammers were manufactured in anticipation of selling them – a distinctly

commercial activity Once order received – prevents claim it was for reasonable trial and experiment w/i s9(a) Manufacture of the hammers was not a “disclosure” within s9(b)

Re Wheatley's Patent Application (1984) 2 IPR 450

Demonstrated prototype of pull key device to National Coal Board Showed NCB on condition that it be kept confidential Then accepted order for 10 keys from NCB Held to be “use” but not “secret” use Demonstration was a use of the key b/c its purpose was to induce NCB to purchase some

EXCEPTIONS TO SECRET USE

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IF accidental or experimental:

Accidental and experimental use does not constitute a secret use (s 9(a)).

IF reasonable trial or experiment:

Use for the purposes of trial and experimenting only does not amount to secret use (s 9(a)).

IF use pursuant to confidential disclosure:

Use pursuant to a confidential disclosure does not amount to a secret use (s 9(b)).

IF use for a purpose other than trade or commerce:

Use of the invention for a purpose other than trade or commerce does not amount to a secret use (s 9(c)).

MISCELLANEOUS RESTRAINTS

SUFFICIENCY OF SPECIFICATION

A complete specification must describe the invention fully, including the best method known to the applicant of performing the invention (s 40(2)(a)).

This requires describing the invention fully, with clarity and succinctness (Lockwood v Doric Products).

Failure to fulfil this requirement is known as “insufficiency”.

Section 40(3) states that the claims of a specification must be clear, succinct and fairly based on the matter described in the specifications.

CONTRARY TO LAW

Section 50(1)(a) permits the Commissioner to refuse to accept a patent request and specification relating to a standard patent or to grant a standard patent on the grounds that its use would be contrary to law.

In appropriate cases, it may be possible to revoke the patent on the ground that the patent was obtained by:

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Fraud; False suggestion; or Misrepresentation.

The following factors must be considered in deciding whether use of an invention is contrary to law:

Nature of the legislation which the invention would contravene; Whether it is reasonable to expect that what is illegal now will remain illegal throughout the term of the patent; or Whether such law could be of an ephemeral nature.

IF chimeric embryo:

The Prohibition of Human Cloning for Reproduction Act 2002 (Cth) makes it illegal to create a chimeric embryo.

In Re Hwang, the Deputy Commissioner of Patents considered this legislation was not ephemeral and that a method to create an inter-species hybrid embryo should be refused under s 50(1)(a).

PATENT APPLICATION PROCESS

Overview of patent application process

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WHO CAN APPLY?

Any person can apply for a patent (s 29(1)).

However, a patent will only be granted to (s 15(1)):

The inventor A person who would be entitled to have the patent assigned to them

o (e.g. employer or previous contractual relationship between two people)

A person who derives title to the invention o (e.g. wills and death)

A person who is the legal representative of a deceased person

IF patent contains the name of an inventor who was not involved:

If the patent application discloses a name of an inventor who wasn’t really an inventor, the patent will be invalid because it cannot contain extra people.

IF patent is invented by more than one person:

It is possible to make joint applications and hold a patent jointly (ss 31 and 63).

IF invented by employee:

The PA does not deal with the employer’s right to benefit from employee’s work, although patent may be granted to those who would, on the grant of the patent, be entitled to an assignment of a patent (s 15(1)(b)).

IF there is no contractual provision:

In the absence of an express contractual provision, the question will be determined by terms implied into the contract of employment. Generally the invention will impliedly belong to the employer so long as it was conceived or devised in the course of duties the employee was engaged to perform (Electrolux v Hudson).

IF not invented within course of employee’s duties:

Where the invention falls outside the scope of the employee’s normal duties, the invention will belong to the employee (subject to contrary agreement) (Electrolux v Hudson).

Stack v Davies Shephard

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Two people, Stack and Grieves, were inventors - application only filed in Stack’s name – listed as the sole inventor and this was done with the knowledge and consent of Grieves - patent specified that Stack and Grieves were inventors.

Even though Stack and Grieves agreed that the patent would eventually be assigned to a company owned and controlled by Stack only, it did not amount to a relationship in which Stack was entitled to be the sole applicant.

Thus needed to be an assignment from Grieves to Stack in order for Stack to become the sole applicant under s 15.

Triplex Safety Glass Co Ltd v Scorah

Defendant was employed as a research chemist – acting under employer’s instructions discovered method of making acrylic acid.

Employee informed his employer of the invention, but the employer did not patent it - employee took out patent on his own behalf after leaving his employment.

HELD that the employee held the patent on trust for his former employer.

Electrolux v Hudson

Defendant was employed by Electrolux as a senior store keeper; he and his wife devised an adapter for use in a vacuum cleaner so that any (cheaper) dust-bag could be fitted – made outside of working hours and did not use the tools of the employer.

Defendant applied for a patent and assigned his interest in the invention to a company which manufactured spare parts. Electrolux argued the invention belonged to them – relied on broad term in standard conditions of employment “the

employee must give notice of all inventions made by employees which related to articles manufactured by the company or associated companies; the inventions belong to the company”

HELD that the particular condition was not applicable on the facts and even if it was it was too wide to be enforceable because it was an unreasonable restraint of trade.

PATENT REQUESTS

A patent is obtained by applying for a patent request (s 29(1)).

Provisional application

A patent request for a provisional application must be accompanied by a provisional specification (s 29(3)). This is used to obtain an earlier priority date. It will lapse unless a complete application and a complete specification is filed within 12 months (ss. 38, 5, 142(1) and reg. 3.10).

Complete application

A patent request for a complete application must be accompanied by a complete specification (s 29(4)).

Convention application

A convention application is an application made in a Paris Convention country.

An applicant may then apply in another Paris Convention country within 12 months of foreign application.

The priority date is the date of filing in the foreign country. If filed outside 12 months, the patent application will be invalid in the second country for a lack of novelty.

Applying under Patent Co-Operation Treaty 1970

Single application send to many countries. Priority date is the filing date of the PCT application.

Patent’s validity is determined independently in each country and separate patents are granted (if application accepted) in each country. Acceptance/rejection in one country does not affect examination in other countries.

Divisional application

Divisional applications permit a further application to be made in respect of another invention disclosed in the specification.

Patents of addition

A patent of addition allows a person to apply for a further patent in order to protect an improvement or modification to the main invention.

SPECIFICATIONS - SECTION 40

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IF provisional specification:

Sections 40(1) requires a provisional specification to describe the invention.

IF complete specification:

Section 40(2) requires a complete specification to describe the invention fully including the best method known to the applicant of performing the invention” and end with claims “defining the invention”.

The claim or claims must be clear and succinct and fairly based on the matter described in the specification (s 40(3)).

Claims must relate only to 1 invention (s 40(4)).

It is extremely important that the patent specification is drafted by a patent attorney; it is an offence for a legal practitioner to prepare a specification (s 202).

PRIORITY DATES

The priority date of a claim of a complete specification is the date of filing the complete specification (Regulation 3.12(1)(a)).

But where the claim is “fairly based” on matter disclosed in an earlier provisional application, the priority date of the claim in the complete specification is the date of the provisional application (Regulations 3.12(1)(b), 3.12(2)(a)).

Patent is not invalid because of publication or use after the priority date (s 23).

The priority date is the date at which the novelty and inventiveness of the invention are assessed against the prior art.

The priority date will usually be the filing date of the application.

Filing a provisional application will secure an early priority date for the applicant where claims made in the complete application are ‘fairly based’ on the matter disclosed in the provisional application.

PROCEDURE FOR OBTAINING A PATENT

1. Patent request (s 29)

Either a provisional or a complete application Provisional application

o need only contain a description of the invention (s 40)

o used to obtain an early priority date

o allows a further 12 months to file a complete specification

A complete specification

o describe the invention fully, including the best method known to the applicant of performing the invention

o abstract summarising the invention being disclosed

must contain the claims defining the monopoly sought

2. Request for examination within 5 years of lodging complete specification (reg. 3.25) or w/i 6 months of a direction to request an examination from the Commissioner of Patents (s 44(1))

3. Documents open to public inspection (ss 54, 55)

Documents relating to the patent application are laid out for the public to see.

4. Examination: s45

Examined by a patent examiner No automatic examination of patent applications However, application will lapse if no examination within 5 years of filing complete specification, or within 6 months of the

Commissioner requesting an examination (ss 44(2), 142(2)(a), reg. 3.25(1)) First report from examiner details any procedural and substantive objections to the application Applicant has 21 months to address any objections

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Application for a standard patent will lapse if it is not in order for acceptance within 21 months of the first report (ss 49(4), s142(2)(c), reg 13.4)

5. Amendments: s104

6. Acceptance of patent request and specification: s49(1)

Subject to s50, if the Commissioner considers that there is no lawful ground of objection to a patent and complete specification relating to an application, they Commission must accept the request and specification: s49(1)

Commission may refuse to accept a patent request and specification, or refuse to grant a patent:a) for an invention the use of which would be contrary to law;b) for an invention that claims as an invention

i) a substance which is capable of being used as food or medicine and is mere mixture of know ingredients; or ii) a process producing such a substance by mere admixture: s50(1)

Commission may refuse to accept a specification containing a claim that includes the name of a person as the name or part of the name of the invention: s50(2)

7. Notification of acceptance in Australian Official Journal of Patents, Trade Marks and Designs (AOJP) (s 49(5))

8. Opposition proceedings (s 59)

a) Person not entitled to grant of a patent for the invention (s 59(a))b) That the invention is not a patentable invention because it does not comply with s18(1)(a) or (b) (i.e. it is not novel, or

does not involve an inventive step) (s 59(b))c) The complete specification does not comply with s 40(2),(3) (e.g. does not describe the invention fully, or claims are not

fairly based on the description in the specification) (s 59(c))d) That the invention is not a patentable invention under s18(2): s59(d)

Notice of opposition to grant of patent must be within 3 months of publication in AOJP of Commissioner’s notice of acceptance

Often oral hearing before the Commissioner Appeal to the FCA available

9. Re-examination possible (s 97)

Can be initiated by the Commissioner at any time after the grant Limited to issues of novelty and inventive step

10. If no opposition, or if opposition is unsuccessful, Commissioner to grant patent: s61 – the patent is granted when the Commissioner causes it to be sealed

11. Term of standard patent is 20 years (s 67

12. Grant of patent is no guarantee of its validity (ss 20, 138)

13. A patent may be subsequently revoked on grounds in s 138(3)

a) Patentee is not entitled to the patent; b) Invention is not a patentable invention; c) Patentee has contravened a condition in the patent; d) Patent was obtained by fraud, false suggestion or misrepresentation; e) An amendment of the patent request or the complete specification was made or obtained by fraud, false suggestion or

misrepresentation; f) Specification does not comply with subsection 40(2) or (3)

Commissioner has power to revoke patent under s 101 Either the whole patent or one or more claims can be revoked A defendant in infringement proceedings may counterclaim for revocation of the patent (s 121)

OWNERSHIP OF PATENTS

Pursuant to s 15, a patent for an invention may only be granted to a person who:

is the inventor; or

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would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or derives title to the invention from the inventor or a person mentioned in paragraph (b); or is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c)

EMPLOYEE INVENTIONS

The Act does not explicitly deal with an employer’s rights to any benefit of their employees’ work although s15(1)(b) states that a patent may be granted to those who would, on the grant of the patent, be entitled to an assignment of a patent.

CONTRACTUAL PROVISIONS

In the absence of an express contractual provision, the question will be determined by terms implied into the contract of employment.

Generally the invention will impliedly belong to the employer so long as it was conceived or devised in the course of duties the employee was engaged to perform.

Where the invention falls outside the scope of the employee’s normal duties, the invention will belong to the employee (subject to contrary agreement).

Common practice for employees to assign rights in all inventions made during the time of their employment, particularly if relates to employer’s business.

In other countries (for example the United Kingdom), the employee may have statutory rights to compensation where the patent is of outstanding benefit to the employer.

Sterling Engineering Co Ltd v Patchett [1955] AC 534

Employer entitled to beneficial ownership of patented inventions relating to domestic electrical appliances devised by employee who was the head of the department concerned with the development of such appliances

It is implied “in the contract of service of any workman that what he produces by the strength of his arm or the skill of his hand or the exercise of his inventive faculty shall become the property of the employer”

Triplex Safety Glass Co Ltd v Scorah (1938) 55 RPC 21

Defendant was employed as a research chemist Acting under the instruction of his employer, he discovered a method of making acrylic acid Employee informed his employer of the invention, but the employer did not patent it Employee took out patent on his own behalf after leaving his employment Employee held the patent on trust for his former employer

Electrolux v Hudson [1977] FSR 312

Defendant was employed by Electrolux as a senior store keeper; he and his wife devised an adapter for use in a vacuum cleaner so that any (cheaper) dust-bag could be fitted

Made invention outside of working hours and did not use the tools of the employer Defendant applied for a patent and assigned his interest in the invention to a company which manufactured spare parts Electrolux argued the invention belonged to them – relied on broad term in standard conditions of employment ~ “the

employee must give notice of all inventions made by employees which related to articles manufactured by the company or associated companies; the inventions belong to the company”

Particular condition was not applicable on the facts Even if it was, it was too wide for the term to be enforceable because it was an unreasonable restraint of trade Therefore, the case had to be decided on the common law implied term – implied term only applies to inventions which

were made by the employee as part of the employee’s duties – did not encompass the invention in this case

JOINT INVENTORS

In the context of joint inventors, there exists the problem that the patent application may be rejected for incorrect entry as to inventor on application.

Stack v Davies Shephard [2001] FCA 501

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Patent for water saving devices Two inventors but only one appeared on the application Patent held to be invalid for that reason No opportunity to amend patent in Act

ASSIGNMENT AND LICENCE

Patents are able to be assigned (s 13(2)).

An assignment must be in writing and signed by or on behalf of the assignor and the assignee (s 14).

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An assignment constitutes a transfer of all the rights held.

A licence need not be in writing. It may be limited as to time, geography and in any other way.

EXCLUSIVE LICENSES

Exclusive licensees have standing to sue for infringement (s 120).

An ‘exclusive licensee’ is defined in Schedule 1 to mean ‘a licensee under a licence granted by the patentee and conferring on the licensee, or on the licensee and persons authorised by the licensee, the right to exploit the patented invention throughout the patent area to the exclusion of the patentee and all other persons’.

IMPLIED LICENCE

Where there is a legitimate sale of goods embodying an invention, courts will imply a licence to use those goods. There exists an implied licence to repair goods, provided product is not completely remade.

COMPULSORY LICENCE

If patentee refuses to utilise the patent, it is an abuse of the patent monopoly.

If a patentee fails to use that patent, then, at the end of 3 years, another person can obtain a compulsory licence over the invention (ss 133-135, 144).

INFRINGEMENT

RIGHTS OF THE PATENT OWNER

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Under s 13(1), the patentee has ‘exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to exploit the invention’.

The ‘patent area’ is defined in Schedule 1 to include:

Australia; The Australian continental itself; The waters above the Australian continental shelf; and The airspace above Australia and the Australian continental shelf.

Despite its language, a patent grants no positive rights to the patentee (Steer v Rogers).

IF invention is a product:

In the context of a product, exploit means to make or offer to make, hire, sell or other dispose of product; or use or import it or keep it for the purpose of doing any of these things.

IF invention is a process or method:

In the context of a process or method, exploit means to use the method or process or do any act mentioned above in respect of a product resulting from such use.

DIRECT INFRINGEMENT

Infringement is implied when a person exercises any of the exclusive rights of the patentee without the patentee’s authorization.

A direct infringement occurs where the infringer does an act which falls within the exclusive rights of the patentee.

Each essential integer or element of the claim must be taken and incorporated into the product in order to constitute direct infringement (Rodi v Henry Showell).

All that is required for infringement is that it takes the essence or the pith and marrow of the invention (Populin v HB Nominees).

MAKE

An infringement occurs where a person makes the patented product without the patentee’s authorization. It is a question of fact as to whether there has been a relevant ‘making’ of the patented product (Pinefair).

To ‘make’ a product means to make something that has all the integers of the relevant claim in the specification (Walker v Alemite Corporation).

Making is not complete until the final step is carried out which results in the complete infringing article (Bedford Industries Rehabilitation Association v Pinefair).

The result need not be produced in its ultimate commercial form (Pfizer Corporation). However, must constitute more than an ‘unimportant or trifling part’ in the manufacture (Pinefair).

Pinefair v Bedford Industries Rehabilitation

Majority of Full Federal Court found that a patented garden edging product was ‘made’ as an intermediate product in the process of manufacturing a non-infringing garden edging product which consisted of split pine posts joined together with stapled plastic strips.

The manufacturing process involved a continual mechanical process whereby the split pine posts passed along a conveyer belt as one continuous length of material.

This passed through a variety of machines that performed functions of stapling and cutting, before emerging as the final non-infringing garden edging product that was rolled and packaged into lengths for marketing.

At one point in this continuous process, all the essential integers of the invention were present in a section of that continuous material which moved along the conveyor belt.

Majority considered that an infringing product was ‘made’ even though the infringing section remained connected at both ends to non-infringing material.

IF patented product purchased an reconstructed or remade:

The patentee’s exclusive right will be infringed where a person modifies a purchased patented product in such a way as to reconstruct or remake it.

IF only minor modification of invention:101

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It is possible for a person to avoid patent infringement by taking an invention and modifying it so that the product is somehow different to the patented invention. However, they will not escape liability for infringement by modifying an essential integer in a manner that is so small and insignificant that adds nothing to the invention (Catnic Components v Hill).

Catnic Components v Hill and Smith

Device used in spanning the upright position of a doorway – allegation this patented invention was infringed Claimed that it related to a supporting back plate that extended vertically from the base - defendants copied the

architrave but they moved the supporting back plate 6 degrees from the vertical – so it was slightly different to the specification.

HELD that the slight change did not change the strength or the structure of the device - patent was infringed because the supporting back plate was so close to being vertical that it was just as effective as the existing purpose

Taking the purposive approach, a person skilled in the field would see the device as structured vertically or near the vertical.

IF conduct amounted to repair to prolong the life of an article:

If the conduct amounted to a repair to prolong the life of an article it would not infringe the patent because repairs and making the product are mutually exclusive concepts (United Wire v Screen Repair Services).

Modification of patented ink-jet cartridges to make them refillable has been held to be ‘more akin to permissible repair than to impermissible reconstruction’ in HP v Repeat-O-Type.

USE OF THE INVENTION

Mere possession or mere purchase of an infringing product does not amount to infringement (British United v Screen Repair Services).

It is unclear whether non-commercial use is infringement.

KEEPING THE INVENTION

IF possession by trader or manufacturer:

Possession of articles by trader or manufacturer for purposes of business is presumed to indicate a user. Therefore, possession of such articles is prima facie infringement.

Possession may be to hold articles in stock for sale (Pfizer) or to make use of them as and when it would be beneficial to do so (McDonald v Graham).

Presumption can be rebutted by admitted fact of non-user (British United Shoe Machinery).

IF article kept on standby

Doctrine that an infringing use can occur when patented article is kept as a ‘standby’. E.g. possession of fire extinguishing apparatus, use being the actual provision of means for extinguishment (British United Shoe Machinery).

IF carrier or warehouseman:

Rights of mere carrier (F Hoffmann La Roche) and warehouseman who does no more than store infringing goods for consignor or consignee.

These actions do not amount to an infringing use (Smith Kline French Laboratories).

Mere transport within jurisdiction of patented article from one place to another does not amount to infringement (Pfizer).

To constitute infringement, there must be the derivation of some advantage arising from merits in the patented article itself (Badische Anilin and Soda Fabriik). This will occur where person transporting articles is also carrying on a trade in those articles for profit (F Hoffmann).

IMPORTING THE INVENTION

In the following circumstances there will be importation of articles that embody the invention without authorisation from patentee:

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Attempt to import patented products that were purchased legitimately from someone other than the Australian patentee or with their authorisation;

Been manufactured in the country of export in infringement of a local patent; May have been purchased on the express condition that there were not to be imported into Australia; May have been put on market in place of purchase without express or implied permission of local patentee; May have been manufactured and sold by third party who had no connection with the Australian patentee in a country in

which no patent exists (Pfizer).

FIVE STEP PROCESS FOR DETERMINING INFRINGEMENT

1. The patent specification is construed to determine the scope of the relevant claim(s) that define the invention and the precise nature and extent of the rights claimed by the patentee.

(a) See Sheppard J’s rules below2. The product or process whose exploitation is alleged to infringe those claims is compared to each claim independently

to determine whether it contains all the essential integers of the claim.(a) Take purposive approach (Catnic v Hill & Smith)

“Purposive approach” – also known as the pith and marrow of the claims Have regard to the purpose of the particular words used in a claim, rather than merely applying a

purely literal construction of claims Focus on the patentee’s intention when drafting the patent – what did they intend to cover? What did

they intend to have a monopoly over?(b) Has the defendant taken all the essential integers? (Rodi v Henry Showell)

All of the essential features of the invention must be taken, so if there are 6 and 5 are taken, then it is not infringement

3. For infringement, the actions that are performed in relation to that product or process must come within the meaning and scope of the exclusive rights of the patentee.

4. The actions must continue an authorised exercise of those rights or amount to contributory infringement.5. If the acts would otherwise infringe the patent, there may be a defence to infringement.

Sheppard J in Décor Corp Pty Ltd v Dart Industries Inc held that the rules of construction of patent specifications are:

(a) the claims define the invention which is the subject of the patent and these must be construed, according to their terms, on ordinary principles;

(b) it is not legitimate to confine the scope of the claims by reference to limitations found in the body of the specification but not expressly or by proper inference reproduced in the claims themselves;

(c) in approaching the task of construction, the court must read the specification as a whole;(d) in some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the

specification;(e) if a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts

of the document; if an expression be not clear, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim;

(f) a patent specification should be given a purposive construction rather than a purely literal one;(g) in construing the specification, the court is not construing a written instrument operating inter partes, but a public

instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood;(h) the body is there to instruct those skilled in the art concerned in the carrying out of the invention; the language used is

seldom of importance;(i) the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other

documents defining a legal right; and(j) if it be impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid.

But the specification must be construed in the light of the common knowledge in the art before the priority date.

CONTRIBUTORY INFRINGEMENT

Doctrine of contributory infringement gives the patentee the right to seek remedies from a person who does not directly infringe the patent, but rather supplies another with the means to infringe the patent.

Section 117(1) provides that if ‘the use of a product by a person’ would infringe a patent, a person who supplies that product to another will infringe the patent by supply of product.

IF method of process patent:

The majority in Rescare held that ‘product’ in s 117(1) referred to a product, the use of which would infringe that method claim.

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In later decision, Full Federal Court in Bristol-Meyers construed the term ‘product’ as an input to the earlier decisions. This is the preferred interpretation.

Section 117(1) imposes liability without the need to prove an actual infringement by any person to whom the product is supplied.

The use of the product must be an infringing use, but only those infringing uses set out in s 117(2) will come within s 117.

These are the following:

(a) If the product is capable of only one reasonable use, having regard to its nature or design - that use; or(b) If the product is not a staple commercial product - any use of the product, if the supplier had reason to believe it would

be put to that use; or(c) In any case - the use of the product in accordance with any instructions for the use of the product, or any inducement to

use the product, given to the person by the supplier or contained in an advertisement published by or with the authority of the supplier.

EXEMPTIONS FROM INFRINGEMENT

USE IN OR ON FOREIGN VESSELS, AIRCRAFT OR VEHICLES

The rights of the patentee are not infringed by using the patented invention on board a foreign vessel, in the body of the vessel, or in the machinery, tackle, apparatus or other accessories of the vessel, if that vessel comes only temporarily or accidentally into the patent area and the invention is used exclusively for the needs of the vessel (s 118(a)).

PRIOR USE OF AN INVENTION

Where someone else is using the invention prior to the patentee obtaining a priority date, that person is excluded from infringement of the patent (s 119). However must be making the thing or taking definite steps to make the thing before the priority date (s 119(1)).

IF person derived subject matter of invention from patentee or predecessor in title:

The s 119 exemption will not operate if the person derived subject matter of invention from (patentee/ predecessor in title) (s 119(2)).

IF information was publicly available or obtained with consent of patentee:

This exemption will apply if person got info from information (made publicly available by OR with consent of patentee/predecessor in title) (s 119(3)(a)).

IF person stops or abandons the activities:

This exemption will not apply if activities are stopped or abandoned, unless it is temporarily (s 119(4)).

EXPERIMENTAL OR RESEARCH USE:

There is no exemption for experimental or research use.

Therefore, researchers cannot simply use another’s patent for use in experimental research.

However, the government has agreed to allow non-commercial research or research for experimental purposes relating to the subject matter of an invention that does not unreasonably conflict with normal exploitation of services. This encompasses acts which determine the scope of an invention, determine the validity of claims, seek to improve an invention, seek to ascertain how an invention works etc.

INFRINGEMENT PROCEEDINGS

An action for infringement can be brought by the patentee or exclusive licensee (s 120(1)).

Where proceedings are brought by exclusive licensee, patentee must be joined in the action (s 120(2)).

Infringement proceedings must be started by the later of (s 120(4)):

3 years from the date the patent was granted or 6 years from the date of the infringing act

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Proceedings cannot be commenced until a patent has been granted (s 57(3)) but it is possible to bring proceedings for acts which occur after the publication of the complete specification (s 57).

Proceedings action for innovation patent cannot be brought until after the patent has been examined and certified (s 120(1A)).

GROUNDLESS OR UNJUSTIFIED THREATS OF PROCEEDINGS

Section 128 allows a person who is threatened with infringement proceedings to seek relief from the court. They can seek a declaration, an injunction and an award of damages.

Section 129 states that if a person makes a threat of infringement proceedings the court may grant relief unless it is shown that the person threatened’s conduct would infringe a patent.

Section 129A(1) states that if a person makes an unjustified threat of infringement proceedings if they threaten proceedings re an innovation patent when the application has not been determined or the patent has not been certified.

Section 131 states that the mere notification of the existence of a patent or an application for a patent is not a threat for the purposes of s 128.

JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68

Threat if the language conveys to a reasonable person that the author of the writing intends to bring infringement proceedings

A threat can arise without direct/express reference to infringement proceedings Once it is a threat, it is prima facie unjustifiable unless the person making the threat establishes that it was justified The threatener must establish that the relevant conduct infringes or would infringe a valid claim of a patent Grant of relief is discretionary.

REMEDIES FOR INFRINGEMENT

Relief for infringement includes (s 122(1)):

An injunction and damages; or An account of profits.

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Plaintiff has the choice between the two.

INJUNCTION

Court may grant an injunction subject to any terms as it sees fit.

INTERLOCUTORY INJUNCTION

Alternatively, an interlocutory injunction may be granted. This allows the plaintiff to obtain some relief from the alleged infringer’s activities pending determination of a dispute at trial, to maintain the status quo.

Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 618 (High Court)

Actions brought in relation to infringement of patent as to antibiotics. HELD that a two step test must be satisfied before a court could grant an interlocutory injunction. Establish a prima facie case that the patents were valid. Balance of convenience favoured imposition of interlocutory injunction.

DAMAGES

The court may reward damages to the plaintiff for an infringement of the patent.

Damages or account of profits can be awarded back to the time when the patent became open to public inspection, but proceedings for infringement cannot be instituted until the patent is granted (s 57).

IF innocent infringer:

In the case of an innocent infringer, the court can refuse to order if satisfied that the defendant was not aware and had no reason to believe that a patent for the invention existed (s 123(1)).

ASSESSMENT

The quantum of damages is determined by working out a fair royalty for the infringer to pay is the price that the parties would have negotiated had the inventor consented to them using the invention.

General Tire and Rubber Co v Firestone Tyre and Rubber Co Ltd [1974] FSR 122

Alleged infringement of a patent relating to the manufacture of tyres Plaintiff claims a “fair and proper royalty” on all infringing sales by the defendant by way of damages Trial judge awarded damages of over £1.25m based on what the royalty would have been fixed for the use of the

invention by a willing licensee and licensor bargaining on equal terms Appeal was dismissed

Catnic Components Ltd v Hill & Smith [1983] FSR 512

Plaintiff claimed damages on a number of heads Principle head loss of profits on sales of the lintel as a result of the defendant’s infringement (i.e. loss of prospective

profit) Plaintiffs would have indeed captured the bulk of the defendant’s sales and substantial damages were awarded on that

basis Since the plaintiff would not have obtained all of the defendant’s sales, the plaintiff also claimed that the remainder (10%

of the defendant’s sales) should be assessed on the basis of a reasonable royalty.

ACCOUNT OF PROFITS

The court may order an account of profits.

It forces the infringer to return any profits that they gained which would be unconscionable for them to retain.

Dart Industries Inc v Décor Corporation Pty Ltd (1993) 179 CLR 101

Purpose of the remedy is to prevent unjust enrichment of the defendant A proportion of general overhead costs is allowable as a deduction in determining the profits made by the defendant Not necessary to show that the expenditure was a direct result of the activity or relating to the activity (it is simply a

proportion)

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TRADE

MARKS

EXAM SUMMARY

1. Is there a sign? Extensive definition in s 6

2. Is the sign used or intended to be used?3. Does it distinguish goods or services?

Inherently adapted to distinguish - s 41(3) Somewhat inherently adapted and can or will distinguish - s 41(5) Not inherently distinctive, but distinguished because of extensive prior use by the applicant

- s 41(6)4. Is the sign dealt with or provided in the course of trade?

Cannot be private or personal use.

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REGISTRABILITY OF TRADEMARKS

Section 17 states that a trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

The 4 elements under s 17 must be made out for a trademark to be registered:

a) Signb) Used or Intended to be Usedc) That Distinguishes Goods or Servicesd) Dealt With or Provided in the Course of Trade.

SIGN

The term ‘sign’ is defined in s 6. It ‘includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent’.

‘A sign is anything which is capable of conveying information’ (Philips).

It must be capable of being expressed or represented graphically, or it cannot be registered (s 40).

IF not within the definition:

Section 6 is an inclusive definition, and thus the [whatever it is] will not be a sign.

IF word:

The definition in s 6 includes a word and the abbreviation of a word.

IF name:

The definition in s 6 includes a name.

IF signature:

The definition in s 6 includes a signature.

IF numeral:

The definition in s 6 includes a numeral.

IF device:

The definition in s 6 includes a device. The term ‘device’ refers to any form of artistic representation such as logos, drawings, pictures or diagrams (Davison et al).

IF brand:

The definition in s 6 includes a brand. This refers to the means by which a letter, word, name, numeral or device might be physically associated with particular goods (Davison et al).

IF heading:

The definition in s 6 includes a heading. A heading is the means by which a letter, word, name, numeral or device might be physically associated with particular goods (Davison et al). Encompasses the trade marks of textiles woven into the top or bottom of the material.

IF label:

The definition in s 6 includes a label. A label is the means by which a letter, word, name, numeral or device might be physically associated with particular goods (Davison et al). It is physically affixed to goods in such a way as to be affixed permanently.

IF ticket:

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The definition in s 6 includes a ticket. A ticket is the means by which a letter, word, name, numeral or device might be physically associated with particular goods (Davison et al). It may be loosely attached by string etc to a product and intended to be removed after purchase.

IF aspect of packaging:

The definition in s 6 includes an aspect of packaging. A crest on a seal on the neck of a bottle of alcohol was found to be a very unusual and quite distinctive trademark (Re Application by Hamish Robertson & Co Ltd).

IF shape:

The definition in s 6 includes a shape.

The shape of the product must not be essential to its function or character – it must not be its necessary shape (Philips v Remington – Shaver case).

IF necessary to the function of the device:

Here, the shape of the [item] is necessary to its function. This is similar to Philips v Remington, where the reproduction of a functional shape of a rotary shaver did not constitute use as a trademark, because it was simply the best design for a rotary shaver. A mark needs to add something extra to the product to distinguish it from other traders, thus here the shape of the [item] could not be trademarked.

IF not necessary to the function of the device:

Here, the shape of the [item] is not necessary to its function, and unlike in Philips v Remington, it will be capable of registration (Kenman Kandy v Reg of TM).

Philips v Remington

If the shape is functional (ie not something ‘extra’) then it is not generally capable of protection @ [18]. A mark requires something ‘extra’ added to distinguish the products of one trader from those of another, a function

which plainly cannot be performed by a mark consisting of either a word or a shape other traders may legitimately wish to use @[17].

A men’s shaver with a triangular head – it is this configuration that is the best design for a rotary shaver (Philips) and therefore, the shape is not something extra, therefore not capable of protection.

IF colour:

The definition in s 6 includes a colour. Colours need to be represented graphically.

Unlike with shapes, colours of goods and the goods themselves are usually quite distinct, though this is not always the case (Smith Kline).

IF sounds:

The definition in s 6 includes a sound. Sounds are often registered with accompanying words.

IF scent:

Must not be the inherent smell of the product, otherwise get an inherent monopoly over the product itself.

Scent of the product and the product itself are usually distinguishable. However, in the case of perfume for example, this will not be the case.

USED OR INTENDED TO BE USED

There must be use or an intent to use as a trade mark before registration ( s 27(1)(b)).

Under s 27(1)(b) the following people can apply for a trademark:

i. Applicant using or intending the use the mark in relation to goods or services (i)ii. Applicant authorised or intends to authorised others to use the mark in relation to goods or services (ii)iii. Applicant intends to assign the mark to a body corporate that is about to formed, with a view to that company using the

mark (iii)

IF applicant has or intends to use the mark:

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Here the applicant [is or intends to use] the mark in relation to the [goods or services]. This is sufficient to satisfy the element pursuant to s 27(1)(b)(i).

It must be used as a trademark. The sign must be used or intended to be used in order to distinguish the product from other products; to show the product’s origin (Davison et al). This is objectively determined (Johnson v Unilever). Intent to use requires as intention to use the mark in a manner that would be objectively considered to be use as a trademark (Johnson v Unilever).

IF not used by itself or only ever used with other aspects of packaging:

The sign will not be used as a trademark if it was not used by itself, or if it is only ever used with other aspects of packaging (Guylain v Registrar of TMs).

Guylain v Registrar of TMs

In this case, the seahorse shape was used in and on packaging, always with other sea shell shapes that Guylain made. It was used to be descriptive of what was in the box, not to show where the chocolate came from. HELD that the seahorse itself had not become distinctive of Guylain’s products. Rather, its shape, along with the stylised version of “Guylain” and an engraved “G” on each chocolate together were

what led to brand recognition.

IF use is merely descriptive:

Here, the [applicant] is merely using the mark as a descriptive item, to explain [feature]. It was held in Johnson v Unilever that the use of ‘Caplets’ was not as a trade mark but instead as a description of the contents.

IF applicant as delivered samples or discussed with prospective licensee:

Delivery of samples to a prospective licensee is not an intention to use the trademark (Moorgate v Philip Morris).

Here, the [applicant] has delivered [samples or discussed potential use] with the [prospective licensee]. In Moorgate v Philip Morris, it was held that at no time was there any actual trade or offer to trade in the goods bearing the mark in Australia or an intention to offer/supply such goods in trade (434, Deane J).

IF only intention to get mark and not use it:

The use must be genuine or bona fide commercial use (Imperial Group v Philip Morris).

Here, there has been no genuine or bona fide commercial use of the [mark] by the applicant. They have merely gained the mark in order to preclude others from using the mark. This is similar to the facts in Imperial Group v Philip Morris where the applicant marketed and sold 1 million cigarettes in a staff canteen. They registered a similar name to preclude someone using theirs ‘Nerit’ instead of ‘Merit’ via the de facto protection.

Under s 7(4), use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods).

Under s 7(5), use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

DISTINGUISHES GOODS OR SERVICES

In order avoid rejection, s 41(2) requires the applicant’s mark to be either:

1. Inherently adapted to distinguish - s 41(3)2. Somewhat inherently adapted and can or will distinguish - s 41(5)3. Not inherently distinctive, but distinguished because of extensive prior use by the applicant - s 41(6)

Must first take into account the extent to which the mark is inherently adapted to distinguish the applicant’s goods/services.

INHERENT DISTINCTIVENESS - SECTION 41(3)

The Registrar can register a trademark that is inherently adapted to distinguish goods/services. There is no need for further inquiry or examination (s 41(3)).

Depends on whether other traders are likely in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods (Eclipse Sleep v Registrar of TM).

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It cannot be acquired - depends on the nature of the trademark itself. The inherent nature of the trademark itself cannot be changed by use or otherwise (Burger King v Registrar of TMs).

Consider the nature of the range of goods within the class - and the various ways in which the mark might be used in relation to those goods (Kenman Kandy v Registrar of TMs).

A sign indicating any of the following will not be inherently distinguishable (s 41(6)):

Kind, quality, quantity, intended purpose, value, geographical origin, other characteristic of good or service, time of production or rendering of good or service.

IF shape:

Here, the shape of the [product] [is or is not] likely to be desired by other [product category] traders and the trademark [would or would not] leave it open for other [product category] traders to make similar [products].

IF is:

The facts are arguably similar to those in Chocolaterie Guylian v Reg of TM. In this case it was held that there was a degree of likelihood that other traders acting with proper motive would want to use the same seahorse shape or one substantially similar to it.

IF is not:

The facts are arguably similar to Kenman Kandy v Reg of TM. There is was held that the shape wasn’t functional for chocolate and wouldn’t cover all bug shapes; thus it would still be open to other traders to make bug shaped candies.

IF colour:

It is difficult to establish distinctiveness in relation to a colour. In Philmac v Reg of TM, it was held colour would not be inherently distinctive if it:

served a utilitarian function (e.g. through a physical effect such as heat absorption); conveyed a recognised meaning (e.g. red for danger or green for environmentalism); or was the naturally occurring colour for the product.

Even if it did not fall into these categories, inherent distinctiveness would be lacking where there was a proven competitive need for the colour, in the sense that other traders might legitimately wish to use it: Philmac v Reg of TM.

IF trademark would grant monopoly over a common term:

Also necessary to consider whether the mark is adapted to distinguish is tested by reference to the likelihood that other persons trading in the same goods, and actuated only by proper motives, will think of the word and want to use it in connection with similar goods (Clark Equipment v Registrar of TMs).

There is a natural disinclination to allow any person to obtain by registration a monopoly in what others may legitimately desire to use (Reg of TM v W & G Du Cros).

IF descriptive word:

The word must not have direct reference to the characteristics or qualities of the goods in question.

The test lies in the probability of ordinary persons understanding the words in the application of the goods, as describing or indicating their nature or an attribute they possess (Mark Foy v Davies).

The word Nike (origin in Greek mythology) is inherently distinctive for sportswear, primarily because it does not describe them.

It is ok if the word is suggestive of the characteristics/qualities of the goods. For example, “tub happy” for machine washable clothes (Mark Foys v Davies).

However, if the word is wholly descriptive, it will be rejected.

‘Whopper’ was merely descriptive of its size (Burger King) ‘Soflens’ for contact lenses was merely descriptive (Bausch and Lomb v Registrar of TMs).

IF surname:

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According to Para 16 of the IP Australia’s TM Manual of Practice and Procedure Part 22, 4.1, surnames that are not commonplace are capable of being sufficiently adapted to distinguish, unless they have a meaning which refers to the goods or service in question.

The commonness of the name will be judged in relation to the specialisation of the goods/services. The SFAS can be searched to show the commonness of surnames – and thus the likelihood that another trader will wish to use the name.

In Cassini v Golden Era Shirt Co, the word ‘Cassini’ was registrable for clothing because, although an Italian surname, it was rare in Australia.

IF personal and company names:

According to Para 18 of the IP Australia’s TM Manual of Practice and Procedure Part 22, 4.1, personal and company names that are not commonplace are capable of being sufficiently adapted to distinguish.

IF signature:

Under Para 18 of the IP Australia’s TM Manual of Practice and Procedure Part 22, 4.1, a signature can be registered so long as it was genuinely that of the applicant, legible and the one normally used by the applicant or the applicant’s predecessor in business.

IF corporate name:

Under Para 18 of the IP Australia’s TM Manual of Practice and Procedure Part 22, 4.1, a corporate name may qualify for registration. Whether they will qualify for registration will depend upon whether other traders, in the ordinary course of trade and without improper motive, are likely to want to use the same trade mark, or a trade mark closely resembling it, on or in connection with their own goods or services. Ordinary names (Best Bakery) will not have enough to distinguish.

IF geographical names:

According to Para 15 of the IP Australia’s TM Manual of Practice and Procedure Part 22, 4.1, geographical names that are unlikely to have a connection with the goods or services claimed are capable of being sufficiently adapted to distinguish.

The High Court in Colorado v Strandbags set out a number of questions to assist in determining whether geographical terms are distinctive or not:

1. Is the name of the place where the goods come from? If yes, it is merely descriptive of where the goods came from and is not distinctive.

2. Is the consumer likely to think that that is where the goods come from? If yes, not distinctive.3. Is the place or region noted with the goods in question? If yes, not distinctive.

IF company town:

If an applicant can show by way of evidence that the town’s reputation originates from its business, registration is possible.

IF a large town:

Geographic names will usually not be allowed as they are generally not adapted to distinguishing the goods or service and because other traders will have a legitimate interest in using the geographical name.

‘Michigan’ was not inherently adapted to distinguish tractors (Clark Equipment) ‘Oxford’ was not because traders will have a legitimate interest in using the Oxford name (Oxford Uni Press) ‘Colorado’ invokes adventure, rugged look and trekking (Colorado Group).

IF fanciful names:

Fanciful uses of geographic name can be distinctive where they are not common enough or obscure.

The name ‘Farah’ for shirts. Although this is a river in Afghanistan, few consumers would (a) know this and (b) associate it with shirts (Farah Trade Mark)

‘Bali’ has no significance with bras (Berlei Hestia v The Bali Co).

IF superseded geographic names:

Superseded geographical names that have no connection with the goods such as Byblos which is the ancient name for the Lebanese town of Jubayl have a level of inherent adaptation to distinguish that will allow prima facie acceptance.

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IF world or city mark:

According to Para 13 of the IP Australia’s TM Manual of Practice and Procedure Part 22, 4.1, world or city marks which contain a reference to an attribute of the goods or services are capable of being sufficiently adapted to distinguish.

However WORLD or LAND marks which form an expression commonly used to define a particular field of interest or activity will usually possess insufficient capability to distinguish goods or services in that field. Such marks will usually need evidence of use to achieve acceptance.

IF invented word:

An invented word must be clearly and substantially different from any word in common use (Howard Auto v Webb).

According to Para 10 of the IP Australia’s TM Manual of Practice and Procedure Part 22, 4.1, words consisting of obvious phonetic equivalents, simple combinations, misspellings, minor changes or trifling variations of descriptive words are not, prima facie, capable of distinguishing.  However if the word is made of a compound elements of which the source is manifest it may be denied. Novelty is looked for – meaning that the word is more than a combination of existing words which the reader or hearer could at once penetrate (Howard Auto v Webb).

IF unlikely construction:

However, unlikely grammatical constructions of words which would otherwise attract grounds for rejection, including inversions, plays on words and portmanteau words (two words telescoped together), may be acceptable.

‘Rohoe’ was not because farmers would know it was a mere contraction of ‘rotary hoe’ ‘Hairfusion’ and ‘cedarapids’ were not merely conjoining existing words ‘Fudrukkers’ was acceptable with respect to hamburgers and restaurant services

IF expressions:

Expressions that are not in local common use in respect of the goods or services may be registrable.

Off the Wall (Class 25) Chookey Pooh (Class 1) The Cool Conditioners (Class 31) Muscle Machine (Class 28) Porky Bits (Class 29)

IF unlikely grammatical constructions:

Unlikely grammatical constructions may be registrable, particularly those that incorporate a misspelling such as:

Shoprite (Class 42) Besafe (Class 9) Beef Gro (Class 5) Growool (Class 1) Safevue (Class 12) Bi-Lo (Class 42)

SOMEWHAT INHERENTLY ADAPTED AND CAN OR WILL DISTINGUISH - SECTION 41(5)

If the Registrar is convinced the trademark is not inherently adapted to distinguish, then s 41(5) will apply (s 41(4)).

iSection 41(5) relates to ‘acquired distinctiveness’ and provides that the mark will be registrable if:

1. The mark is somewhat distinctive (s 41(5)); and2. The mark does or will distinguish the goods/services, considering:

a) The extent of its inherent distinctiveness (s 41(5)(a)(i)); andb) Its use or intended use (s 41(5)(a)(ii)); andc) Any other relevant circumstances (s 41(5)(a)(iii)).

The capability to distinguish must exist as at the priority date (Austereo v DMG Radio).

Austereo v DMG Radio

The capability must exist, not a distinguishing in fact… fine distinction. 'sounds different' is relatively common and descriptive of radio stations

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“the mark acquired such distinctiveness as it now has from its use with the Nova marks. That use educated other traders and the public as to the association between the "sounds different" mark and the Nova businesses. In other words, it was through the subsequent usage that the mark acquired a capability to distinguish. The evidence does not support an inference that the required capability existed at the priority date.”

IF use with other marks:

In Austereo v DMG Radio, the ‘sounds different’ mark acquired distinctiveness through its use with the other Nova marks. Here, the [mark] has similarly acquired distinctiveness through its use with [other mark].

IF use after application:

The acquired distinctiveness is required to exist at the priority date (Austereo v DMG Radio). Here, the use of the [mark] occurred after the priority date and as such, it will not have the sufficient acquired distinctiveness.

IF use before application:

Here, in contrast, to Austereo v DMG Radio, the use was before the priority date, and will have existed at the priority date, as required.

IF the product or service is not marketed solely by the mark:

Here, the [mark] has been used by the [applicant] but not as a trademark. Consumers would not associate the [mark] exclusively with the [applicant].

In Woolworths v BP, the colour green was held incapable of registration because BP did not use the colour as a trademark and consumers did not associate green exclusively with BP.

Chocolaterie Guylian v Reg of TM

In this case Guylian had sold the seahorse shaped chocolate for 30 years. However, the seahorse chocolate was never sold by itself. It was always accompanied by ‘Guylian’ therefore it was not used as a trademark itself. BUT it is possible to lead evidence that shows people recognise or identify the sign as an origin from the manufacturer. An online survey found that 40% of respondents identified seahorse chocolates as coming from Guylain.

It is not enough to prove that the public recognises the sign as the product of a particular manufacturer. Must further show that consumers regard the sign alone as a badge of trade origin, in the sense that they would rely upon that shape alone as an indication of trade origin, particularly to buy the goods (Unilever Plc’s Trade Mark Applications).

IF produce or service mark has become generic:

A mark that was not initially descriptive of the goods or services for which it is used may become an industry term and thereby acquire a meaning which now makes it descriptive. If the name is not already registered, it will not be registrable. If it is registered, the exclusive rights are lost with respect to that part of the mark that has become generic.

NOT INHERENTLY DISTINCTIVE, BUT DISTINGUISHED BECAUSE OF EXTENSIVE PRIOR USE - SECTION 41(6)

If the applicant cannot succeed under s 41(3) or s 41(5), their final hope is under s 41(6).

Under s 41(6), a mark is registrable if it is not to any extent inherently adapted to distinguish but extensive prior use establishes that the mark does distinguish the good/service.

Trade marks not inherently adapted to distinguish are mostly marks that consist wholly of a sign that is ordinarily used to indicate the kind, quality, quantity, intended purpose, value, geographical origin or some other characteristic of the goods or services (Ocean Spray).

Geographical terms

Where the primary and obvious meaning of a word supplies a reference to locality, that word may be registrable. However, marks indicating a false geographic origin may be opposed.

Oxford University Press v Registrar of Trade Marks (1990) - Unable to register OXFORD in respect of videos, tapes and discs.

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Blount Inc v Registrar of Trade Marks (1998) - although geographic name, the mark was reg’d b/c the coy had been selling the tools for a long period of time – for so long and so widely that the name “Oregon” was distinctive of their goods (Blount v Registrar of Trade Marks (1998) 40 IPR 498).

Re Application by Waterford Glass Group Ltd (1987) – although advertised in Australia for 17 yrs, Waterford (county and city in UK) was not able to be reg’d with respect to crystal goods

Re Application by Sakata Rice Snacks (Australia) Pty Ltd (1998) – Sakata could not be reg’d as it is a city in Japan, even though not a well known city

Colorado Group Ltd v Strandbags Group Pty Ltd – “Colorado” was distinctive for bags – arbitrary use of word that was inherently distinctive

The name “Farah” for shirts. Although this is a river in Afghanistan, few consumers would a) know this and b) associate it with shirts (Farah Trade Mark).

Qualities of characteristics - descriptive terms

The more apt a word is to describe goods, the less inherently apt it is to distinguish them as the goods of a particular manufacturer (Clark Equipment Co v Registrar of Trade Marks).

Question of factual distinctive character is one of degree (British Sugar plc v James Roberston & Sons Ltd).

Ocean Spray Cranberries Inc v Registrar of Trade Marks

Applicant wanted to register ‘CRANBERRY CLASSIC’ Registrar rejected application on the basis of s 41 Any mark other than pure description may be regarded as capable of distinguishing goods, whether or not it does so at

that particular time If ‘CLASSIC’ means merely ‘excellent’ then it means only ‘quality’ and other trader may wish to use the word ‘classic’ Mark does not need to be absolutely unsuggestive of the goods, provided it does not amount to normal description Evidence that other registered marks contain a particular word should be disregarded (these could have been incorrectly

registered) Use of one trade mark on packaging does not serve to exclude the possibility of another mark being used as a

trademark The power of advertising can turn almost anything (except pure description) into a trade mark

IF mark is a colour:

A colour is not distinctive if it is inherent in the product itself. E.g. terracotta pots.

A colour is not distinctive if it serves a functional purpose.

A colour is not distinctive if it serves a recognised meaning. E.g. red for danger or heat.

Darrel Lea Chocolate Shops Pty Ltd v Cadbury Ltd

“I am satisfied that, at the time of filing of the application, most Australians who buy chocolate, would have instantly recognised the colour purple (used as described on the application) as indicating the applicant’s block milk chocolate and boxed “Milk Trays” without further reference to any other trade mark which might have appeared on the label.”

“In this sense, the colour operated independently of the other trade marks on the product packaging”

IF goods or services are associated with the colour:

Here the [mark] has been used for [period]. Despite being merely used as a colour, the [applicant] has a number of [industry experts] who are able to identify the colour with the [goods or services]. As such, the facts are similar to those in Re App by Veuve Clicquot where the colour yellow was held to distinguish the mark because of extensive prior use.

Following Darrel Lea v Cadbury, it is unlikely that a mark governing the use of a colour in relation to goods or services would be granted. Instead, it is more likely that the colour would be granted only in relation to the specific [goods or services] because there is a need to limit the mark in order for others to use the colour.

IF goods are associated with another aspect but not the mark itself:

Although the [mark] has been used for [period], it has not been used as a mark but instead as a background colour. In Re Multix, the colour red was held not to be distinctive because ‘Multix’ was the origin mark and red was merely a background colour. Others may be to legitimately use the colour red.

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Moreover, there is no evidence to show that people associate the [product or service] with the [colour] alone. Additionally, others may legitimately wish to use the colour in the same manner. For these reasons there has not been extensive prior use distinguishing the mark.

IF shape:

A shape is not distinctive if it serves a functional purpose.

A shape is not distinctive if it is the inherent shape of the product.

Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks

A special concocted bug shape for candy was distinctive as they uniquely created it so thata. It would show the origin of the lolliesb. It would not be legitimate for others to use the shape

Koninklijke Philips Electronics NV v Remington Products Australia

A three rotor triangular electric razor shape was function because it is the most efficient way of laying out razors and so is function

HELD not to be distinctive because it is the inherent shape of the product. Nevertheless had the design protection.

GENERIC MARKS - GENERICIDE

Section 24 applies where a sign ‘becomes generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service.’

In other words, a mark loses distinctiveness where it has become the generic name for an article, substance or service.

Section 87 provides for cancellation or amendments as appropriate, although it is not yet widely used in Australia. It also allows for the removal under s 25 once the patent has expired and the sign ‘is the only commonly known way to describe or identify the article, substance or service.’

DEALT WITH OR PROVIDED IN THE COURSE OF TRADE

Personal or private use prevents a trade mark from being registered.

The mark must attach in some way to the goods and services.

In New York Yatch Club, the applicant tried to register ‘America’s Cup’ but did not have the right to use the mark in perpetuity. Only had the right to use it when they were the reigning champion. Therefore could not associate with the goods or services.

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RESTRICTIONS ON REGISTRABILITY (GROUNDS FOR REJECTION)

Even if the elements of s 17 can be made out, the applicant still faces at least 7 other obstacles to registration, including:

Prohibited Signs under s 18 and s 39(1) & (2) Trademark cannot be represented graphically (s 40) Does not distinguish the applicant’s goods/services (s 41) Scandalous trade marks (s 42(a)) Trademark whose use would be contrary to law (s 42(b)) Likely to deceive or cause confusion (s 43) Substantially identical or deceptively similar to other marks (s 44(1))

PROHIBITED SIGNS

The regulations set out signs that cannot be used (s 18). An application will be rejected if it is for one of those signs (s 39(1)) or is something that so nearly resembles it (s 39(2)(b)).

The word Copyright, Patents, Patented, By Royal Letters Patent or some other official approval or registration Representations of flags Seals of arms of the State or Cth Emblem of a town or city Representations of marks not entitled to registration under international agreements

TRADEMARK CANNOT BE REPRESENTED GRAPHICALLY

The trade mark must be capable of being expressed or represented graphically, or it cannot be registered (s 40).

Graphically refers to by words or picture.

SCANDALOUS TRADEMARKS

A mark can be denied registration if it is scandalous (s 42(a)).

Will be denied registration if it is likely to be seen by most people as obscene and offensive and/or capable of occasioning a significant degree of shock (Cosmetic Toiletry v Fanni Barns). In this case, the slogan ‘look good, feel good, root good’ was held to be crude and in bad taste, but not scandalous.

Cosmetic Toiletry v Fanni Barns

‘As a trade mark, the applicant's mark does not represent a high point in skilled allusion but I think there can also be little argument that contemporary language, both spoken and written, is more robust than it was even 10 years ago. I think that to most minds the applicant's mark will be seen as crude, both in sentiment and in grammatical construction. However, I am not satisfied that it has, quite, transgressed the standard of s 42. The trade mark is, I think, no more than an explicit use of colloquial language. It may be bad taste, but in ordinary circumstances it is not, in itself, likely to cause any significant degree of shock.’

Kuntstreetwear Pty Ltd's Trade Mark Application

That which is, for hypothetical example, found to be acceptable on the rugby field may be obscene when called out during a game of lawn bowls.

It is obvious from the tenor of the “obscenity” cases that the “c” word and its public use, whether as a trade mark or not, is regarded by most people as being obscene and offensive and capable of occasioning shock.

CONTRARY TO LAW

A mark will be denied registration if it is contrary to the law (s 42(b)).

LIKELY TO DECEIVE OR CAUSE CONFUSION

An application will be rejected if ‘because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion’ (s 43).

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Section 43 applies where the mark is confusing in that it suggests that the product has a particular quality, comes from a particular place or manufacturer or has the approval of a particular company.

Where a word has developed some sort of ordinary meaning or currency so that when people hear it they automatically assume it is from the same place.

This section is not relevant when a mark is confusing in relation to another registered mark.

‘Summer Bay’ refused for china and clothing because of connotation with Home and Away (Amalgamated Television Services v Pickard)

‘Braveheart the Musical’ refused because of connotation with Mel Gibson’s film (Durkan v Twentieth Century Fox Film)

Executors of the Estate of Diana, Princess of Wales (Deceased) v Masterson

Applicant wishes to register “Diana's Legacy in Roses & Device” in class 31 (live roses) Connotation must be in the mark itself and cannot be determined as the result of external considerations such as

reputation. Overall impression of the mark, limited to live roses, evokes a memory of Princess Diana and therefore carried a

connotation of the late princess. Merely invoking a memory of a deceased celebrity does not, in itself, confuse. There must be a real tangible danger of

the ordinary buying public being lead to believe that the Estate or Memorial Fund has endorsed the product in some way.

No evidence indicating that Australians would assume the trade mark connoted the sponsorship or approval of the Estate or Memorial Fund.

SUBSTANTIALLY IDENTICAL OR DECEPTIVELY SIMILAR TO OTHER MARKS

An application will be rejected if mark is ‘substantially identical with or deceptively similar to

(i) a trade mark registered by another person in respect of similar goods or closely related services (s 41(1)(a)(i)); or (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person

(s41(1)(a)(ii)) [who was an earlier priority date: s41(1)(b)]

‘Substantially identical’ is determined by a side by side comparison of the marks’ similarities and differences.

It will be ‘deceptively similar’ to another mark ‘if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’ (s 10).

Deceptive similarity depends on the impression and recollection of the hypothetical consumer.

Must be a reasonable likelihood of deception/confusion (Registrar of Trade Marks v Woolworths Ltd).

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd

Case concerned corresponding provision of s 43 in the earlier Act Southern Cross wanted to use the mark “Southern Cross” in respect of “gas absorption refrigerators and electric

refrigerators and parts thereof” Application opposed by Toowoomba Foundry who used the name in respect of manual and power well drilling and

boring machinery, milking machines, engines and windmills HELD the fact that the applicant's goods are not specified by the regulations as being within the same class of goods as

those of an opponent of the application is not conclusive of the question whether the goods are of "the same description".

The inquiry depends upon a consideration of such matters as the course of trade, the use to which the two sets of goods are put, and whether they are commonly dealt with in the same course of business.

A finding that the goods are not of "the same description" does not preclude a finding that the trade mark is likely to deceive

The use of the mark by the applicant would be confusing, even if only applied to refrigerators because the goods would be sold side by side; there would be a real risk that consumers would be have cause to wonder as to the source of the goods.

Telstra Corporation v Yellownet Corporation

Yellownet wished to register the mark “YELLOWNET” in class 42 for providing access to a computer database of names, addresses, telephone numbers and advertisements

Telstra, owning the trade mark “YELLOW PAGES”, opposed the application

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HELD notwithstanding that YELLOWNET appeared as one word and YELLOW PAGES was two separate words, the essential feature of both marks was the word "yellow". Accordingly, the marks YELLOWNET and YELLOW PAGES were deceptively similar.

The purpose and use of the applicant's services were the same as Telstra's advertising services for promoting the goods and services of its directory customers, notwithstanding the different manner in which those services were provided to the public

Application for registration rejected.

Australian Woollen Mills v F S Walton & Co Ltd

Marks showing warriors/soldiers mounted on horses Bound used in respect of clothing HELD by majority not deceptively similar – although both mounted men, different times/periods (caeser and crusades)

and different words.

Polaroid Corp v Sole N Pty Ltd [1981] 1 NSWLR 49

Polaroid and Solaroid not substantially identical, different first letter enough to set them apart However are deceptively similar, given nature of goods (sunglasses) To determine whether a mark is deceptively similar to a registered trade mark, the impression based on recollection,

which may be imperfect, of the mark that persons of ordinary intelligence and memory would have, is compared with the impression such persons would get from the registered trade mark

The deceptiveness flows not only from the degree of similarity itself, but also from its effect considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the registered trade mark.

Deeko v Décor

The applicant wished to register Deeko for a wide range of goods including paper napkins, disposable cutlery etc. Décor opposed this, seeking to register its own mark for household or kitchen utensils. HELD not substantially identical or decxeptively similar. Side by side they appeared as 2 quite different words. There was no likely phonetic confusion b/w the words.

Similarity of goods or services

The factors to be taken into account, at least in relation to the goods, are:

1. nature of the goods, their uses and 2. the trade channels through which they are sold, although no single consideration is conclusive on its own. 3. Refrigerators and agricultural equipment were found not to be goods of the same description therefore the then section

did not have application.

In New South Wales Dairy Corp v Murray-Goulburn Co-operative Co Ltd, packaged cheese and flavoured milk were held to be different.

In MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) it was held that hotel management services were not the same as property management services.

Goods closely related to service / services closely related to goods

The phrase ‘goods closely related to service’ is not defined, but the degree of connection between the goods and services considered ‘closely related’ is that which suggests a common origin, and criteria similar to those used to determine whether goods or services are ‘similar’ will apply.

The term ‘closely related’ is wider than ‘similar’ (Woolworths Ltd).

Services relating to the installation, operation, maintenance and repair of certain goods are likely to be closely related to those goods.

Registrar of Trade Marks v Woolworths Ltd

‘Metro’ registered by others for distribution services Woolworths wanted to register it for Woolworths Metro stores HELD not closely related – no-one would be confused The word ‘Woolworths’ is also used in the mark, and the use of Metro alone inside the store will not be confusing.

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The supply of meals and refreshments held closely related to confectionary goods (Rowntree v Rollbits) but not closely related to beverages (Winton Shire Council v Lomas).

Honest concurrent use

Sections 44(1) and (2) are subject to the ‘honest and concurrent use’ provisions in ss 44(3)(a) and (4) which operate where traders have independently and in good faith adopted the same or similar mark.

The following factors are taken into account in establishing this connection:

the honesty of the concurrent use, the extent of use in time, area of trade and volume, the degree of likely confusion and the relative inconvenience to the parties.

Discretion to accept application because of ‘other circs’

In some circumstances, the Registrar may accept the application subject to any conditions or limitations because of other circs it is proper to do so (s 44(3)(b)).

Prior continuous use

If the registrar satisfied that applicant has used the mark in respect of similar goods or closely related services for a period before the priority date for the registration of the other trade mark up to the priority date for registration of the applicant’s trade mark, the Registrar is not to reject the application because of the existence of the other trade mark (s 44(4)).

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THE REGISTRATION PROCESS

WHO MAY APPLY?

Under s 27, a person may apply for registration if:

The person claims to be the owner of the trade mark; and One of the following applies:

o the person is using or intends to use the trade mark in relation to the goods and/or services;

o the person has authorised or intends to authorise another person to use the trade mark in relation to the goods

and/or services;o the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the

use by the body corporate of the trade mark in relation to the goods and/or services.

FORM OF THE APPLICATION - SECTION 27(2)

The application must:

a) Be in accordance with the regulations; andb) Be filed, together with any prescribed document, in accordance with the regulations.

Application must specify the good/services in respect of which registration sought. Trade marks are divided into 34 classes for goods and 11 for services. Application can be made in respect of goods or services, or goods and services, in one or more of the classes.

PUBLICATION - SECTION 30

The Registrar must publish the particulars of the application in accordance with the regulations.

EXAMINATION

The application is examined (s 31). The registrar must decide on disputed classification of goods/services (decision not subject to appeal) (s 32).

Registrar to accept the application unless satisfied that there are grounds for rejecting it or the application is not in accordance with the Act (s 33(1)(a/b)).

An application may be accepted subject to conditions or limitations (s 33(2)).

If the registrar is satisfied the application is not in accordance with act/ or there are grounds for rejecting it, they must reject the application (s 33(3)).

The following grounds exist for rejecting an application:

s 39 Trade marks containing certain signs s 40 Trade mark that cannot be represented graphically s 41 Trade mark not distinguishing applicant’s goods or services s 42 Trade marks scandalous or its use contrary to law s 43 Trade mark likely to deceive or cause confusion s 44 Identical, etc trade marks

Registrar may reconsider (s 33).

If application is to be rejected, applicant to be given an opportunity of being heard (s 33(4)).

Registrar to notify applicant of decision to accept or reject the application and advertise the decision in the Official Journal (s 34).

The applicant may appeal to the Federal Court against a decision of the Registrar to reject the application, or to accept it subject to conditions or limitations (s 35).

Acceptance may be deferred (s 36). Acceptance may be revoked (s 38).

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Where Registrar accepted an application a person may oppose the registration by filing a Notice of Opposition within 3 months from the day on which the acceptance of the application is advertised in the Official Journal (s 52).

Application may lapse within the prescribed period (s 37).

Registration expires after 10 years but can be renewed indefinitely for further periods of 10 years on payment of prescribed fees (ss 72(3), 77).

CERTIFICATION TRADE MARKS

Will be certified by Commission (s 175) but can be accepted subject to limitations (s 176).

AUTHORSHIP AND OWNERSHIP OF MARKS

The person making the application must be the owner of the trademark (s 27).

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark (s 58). A registered trade mark is proprietary in nature - it is personal property (s 21(1)).

THE TRADE MARK SPECIFICATION

TM Reg 4.4(3) – The goods and/or services must be grouped according to the appropriate classes described in Schedule 1.

TM Reg 4.4(4) – The applicant must nominate the class number that is appropriate to the goods or services in each group.

Classes of goods - TM Regs, Sched 1

1. Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

2. Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

3. Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

4. Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.

5. Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

6. Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

7. Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.

8. Hand tools and implements (hand-operated); cutlery; side arms; razors.9. Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling,

checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

10. Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials.

11. Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

12. Vehicles; apparatus for locomotion by land, air or water.13. Firearms; ammunition and projectiles; explosives; fireworks.14. Precious metals and their alloys and goods in precious metals or coated therewith, not included in other

classes; jewellery, precious stones; horological and chronometric instruments.15. Musical instruments.16. Paper, cardboard and goods made from these materials, not included in other classes; printed matter;

bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists'

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materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

17. Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

18. Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

19. Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

20. Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

21. Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

22. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

23. Yarns and threads, for textile use.24. Textiles and textile goods, not included in other classes; bed and table covers.25. Clothing, footwear, headgear.26. Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.27. Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-

textile).28. Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas

trees.29. Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams,

compotes; eggs, milk and milk products; edible oils and fats.30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread,

pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

31. Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

32. Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

33. Alcoholic beverages (except beers).34. Tobacco; smokers' articles; matches.

Classes of services

35. Advertising; business management; business administration; office functions.36. Insurance; financial affairs; monetary affairs; real estate affairs.37. Building construction; repair; installation services.38. Telecommunications.39. Transport; packaging and storage of goods; travel arrangement.40. Treatment of materials.41. Education; providing of training; entertainment; sporting and cultural activities.42. Scientific and technological services and research and design relating thereto; industrial analysis and research

services; design and development of computer hardware and software; legal services.43. Services for providing food and drink; temporary accommodation.44. Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture,

horticulture and forestry services.45. Personal and social services rendered by others to meet the needs of individuals; security services for the

protection of property and individuals

OPPOSITIONS

The opposition procedure

Where the Registrar has accepted the application for registration of a trade mark, a person may oppose the registration by filing a notice of opposition within 3 months for the day the acceptance of the application is advertised in the Official Journal (s 52 and reg. 5.1).

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After hearing the applicant and the opponent, the Registrar must decide whether or not to refuse to register (ss 54, 55). The applicant or opponent may appeal to the Federal Court (s 56).

GROUNDS FOR OPPOSING REGISTRATION

1. Registration may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected, except the ground that the mark cannot be represented graphically (s 57).

2. Applicant not the owner of the mark (s 58).3. Applicant not intending to use the mark (s 59).4. Trade mark similar to a trade mark that has acquired a reputation in Australia (s 60).5. Trademark contains a false geographical indication (s 61).6. Application defective (s 62).

The trademark contains a false geographical indication - section 61

A mark can be opposed if it contains or consists of a sign that is a geographical indicator originating in:

A country which the goods did not originate in (s 61(1)(a)). A region/locality within a country that the goods did not originate from (s 61(1)(b)).

A mark can be registered if:

The relevant goods do come from the place indicated (s 61(2)(a)). The sign has ceased to be used as a geographical indicator (s 61(2)(b)). Sign was used before 1 January 1996 or day on which the sign was recognised as a geographical indicator (whichever

is later) (s 61(2)(c)). Although the sign is a geographical indicator for a place, it is also a geographical indication for the relevant goods (s

61(3)(a)). The applicant will not use the mark in a way that will/is likely to deceive or confuse consumers as to the origin of the

goods.

TIME FOR FILING NOTICE OF OPPOSITION

TM Reg 5.1 – within 3 months from advertisement of notice of acceptance

TM Regs 5.2-5.4 – extensions of time

HEARINGS

Both the applicant and opponent have the opportunity to be heard at the hearing (s 54).

REGISTRATION AFTER ACCEPTANCE

Registrar is to register a mark that has been accepted and note whether there is an opponent, and if so, the Registrar’s decision as to the opposition or the status of the opposition (s 68 and British Sky Broadcasting Ltd v Registrar of Trade Marks).

The Registrar is to enter the particulars of the mark including:

Name of applicant (s 69(1)(a)). Class of goods/services (s 69(1)(b)) Any conditions or limitations imposed upon acceptance (s 69(1)(c)) Graphical representation of the mark (s 69(2)(a)) Registration number of the mark (s 69(2)(b))

Mark can be registered with limitations as to colour and if it is not, it is taken to be registered with respect to all colours (s 70).

Once registered, Registrar must advertise such in the Official Journal and give owner a certificate of registration (s 71).

The priority date is the date of filing (s 72(1)).

If applicant has filed application in another Convention Country, then the date of the earliest application is the priority date (s 72(2)).

POWERS OF THE REGISTRAR

Rectification of Register

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The Registrar may, on his or her own initiative, correct any error or omission made in entering in the Register any particular in respect of the registration of a trade mark (s 81).

The Registrar may make changes to the classification of goods or services for the purposes of the Act (s 82).

The Registrar may make amendments of the particulars of a trade mark entered in the register (s 83).

The registrar must cancel the registration if requested in writing by the owner (s 84).

Court may order the rectification of Register by:

Entering in the Register particulars that were wrongly omitted from it; or Correcting any error in the entry (s 85).

Court may order the Register be rectified by canceling the registration of a trade amendment or cancellation on ground of contravention of condition (s 86).

Court may order amendment or cancellation where loss of exclusive rights to use trademark (s 87).

Court may order the amendment or cancellation on other specified grounds (s 88(1)).

The grounds on which the application for rectification may be made include any of the grounds on which the registration of the trade mark could have been opposed (s 88(2)).

Rectification may not be granted in certain cases s89 (eg. Where owner not at fault) (s 89).

Duties and powers of registrar (s 90).

Provision is made for the removal of a registered trade mark of non-use (s 92).

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INFRINGEMENT OF TRADE MARKS

The registered owner of a trade mark has the exclusive right to:

a) Use the trade mark (s 20(1)(a)); andb) To authorise other persons to use the trade mark in relation to the goods or services in respect of which the trademark is

registered (s 20(1)(b)).

When either of these exclusive rights are infringed, the owner is entitled to relief (s 20(2)).

Infringement is set out in s 120:

(1) where a person uses a sign as a trade mark that is substantially identical/deceptively similar to a reg’d trade mark in the same class of goods/services

(2) where a person uses a sign as a trade mark that is substantially identical/deceptively similar to a reg’s trade mark in(a) goods of the same description as reg’d goods(b) services that are closely related to the reg’d goods(c) services of the same description as reg’s services(d) goods that are closely related to the reg’services

(3) where a person uses a sign as a trade mark which is substantially identical/deceptively similar to a reg’d trade mark and that (a) trade mark is well known in Australia(b) sign is used in unrelated classes of goods and services so that(c) use would indicate a connection and (d) for that reason the interests of the owner are likely to be adversely affected

HAS THE SIGN BEEN USED AS A TRADEMARK? (SUBSECTIONS (1), (2) AND (3)

To ‘use’ a trademark is to use the mark upon, or in physical or other relation to the goods, including second-hand goods, or services (ss 7(4) & (5)).

It must be used as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods (Shell v Esso).

Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407

Esso registered a figure of a ‘humanised oil drop’ as a trade mark Shell was said by Esso to have infringed that trade mark in a cartoon film advertisement that featured a humanised oil

drop as a character that constantly changed shape and expression. HELD the context of the infringement was all-important because not every use of a mark which is identical with or

deceptively similar to a registered mark infringes the right of property which the proprietor of the mark possesses in virtue of registration

Question whether mark was used as a trade mark, or whether it was possessing the character of devices, or brands, which Shell was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connection in the course of trade between the petrol and Shell

Although the Shell oil drop was a “member of the same tribe”, it hadn’t been used as a trade mark (that is, to demonstrate the origin of goods)

The oil drop was simply used to unite the pictures and words of the advertisement to convey the quality of petrol The advertisement would not bring Esso’s mark to mind in someone watching it

IF purpose for copying was function:

In relation to the product’s shape, it will not be used as a trademark if it is simply the functional shape of a product (Coca Cola v All-Fect Distributors).

Coca-Cola Company v All-Fect Distributors Ltd (t/as Millers Distributing Company) (1999) 47 IPR 481

Appellant was owner of registered trade marks ‘COKE’, ‘COCA-COLA’, and a two-dimensional drawing of the distinctive contour bottle

Respondent was an importer and wholesaler of confectionery products, including a cola-flavoured confectionery that had a shape similar to the contour bottle device mark. The confectionery featured the inscribed word ‘COLA’

Appellants had unsuccessfully argued infringement of their trade mark, passing off and misleading and deceptive conduct at first instance

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To determine whether there has been "use as a trade mark" requires an analysis of whether the alleged infringer has used a sign so as to indicate origin in itself, not whether the alleged infringer has used a sign so as to indicate origin in the registered owner of the mark.

A mark can have a descriptive element and yet still function as a badge of origin and hence a trade mark. Respondent's confectionery possessed three features that were not descriptive of the good, namely the silhouette, the

fluting and the label band. These features were striking and were apt to distinguish the respondent's confectionery from the confectionery of other traders. This constituted use of those features as a trade mark.

The respondent's confectionery was not substantially identical with the appellant's contour bottle device mark. The features of the respondent's confectionery were likely to cause confusion in consumers in the sense of causing

consumers to wonder whether the respondent's confectionery came from the same trade source as the appellant's product.

Appeal allowed.

Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 48 IPR 257

Appellants manufactured/distributed line of electric shavers featuring three rotary shaving heads arranged in the configuration of an equilateral triangle

A 2D drawing of the 3 head shaver had been registered by the appellants In 1997 the respondent commenced selling a rotary electric shaver with three shaving heads equally spaced in a

triangular formation. At first instance the trial judged dismissed on the trade mark issues HELD that amark consisting of nothing more than the goods themselves could not distinguish their commercial origin,

which is the function of a mark” Merely to produce and deal in goods having the shape, being a functional shape, of something depicted by a trademark

was not to engage in a “use” of the mark

IF mere descriptive or generic use:

There will be no use as a trade mark if the alleged infringer has used a word in its generic meaning (Fritto-Lay v Kettle).

Pepsico v Kettle Chips

Kettle has reg’d a trade mark inc the words “kettle” – in the form of a chip packet design Pepsico (Thins) wanted to use the words “kettle cooked” on their chip packets “kettle cooked” is just descriptive of how the chps are cooked, it is not used as a trade marked It described the process of making the product, and is not a reference to the trade origin of the Thins chips

Top Heavy Pty Ltd v Killin

Plaintiff registered ‘chill out’ as a trade mark Defendant placed logo on t-shirts which said “chill out” with a coke bottle as the ‘i’ Held that “chill out” is not an invented term, it has the common meaning “relax” and is a commonly used term On a t-shirt it is generic, and does not say where the goods come from

Apand v Kettle

Marketed “Country kettle” chips Words were given dominance “Smith's” was present, but of lesser size than usual Full Federal Court agreed with trial judge's finding of passing off 'Kettle' had acquired a secondary meaning Not purely descriptive use Kettle-cooked is understood in the US to mean hand-cooked

IF used for comparative purposes:

It is not use as a trade mark to use someone else’s trade mark as well as your own to say that yours is better (s 122(1)(d)).

IF domain name:

In the UK, registering a domain name containing a registered trade mark has been held to be a “use” as a trademark (British Telecommunications v One in a Million Ltd)

In Australia, there is obiter to suggest that registered a domain name would not be a “use” if cybersquatting (CSR v RCA) but might be use if engaging in trade on the website.

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SUBSTANTIALLY IDENTICAL TO THE PLAINTIFF’S TRADEMARK

To determine if the mark used by the defendant was substantially identical to the plaintiff’s, a side-by-side comparison must be done (Coca-Cola / Shell v Esso).

1. Compare side-by-side2. Highlight their similarities and differences3. Note the importance of these similarities and differences, having regard to the:

Essential features of the registered mark The total impression of resemblance or dissimilarity that emerges from that comparison.

Therefore, only similarities that are essential will lead to a finding that they’re substantial identical.

Importantly must look at it as a whole (Shell v Esso).

The following are examples of cases where, when looked at as a whole, the marks were not substantially identical:

Oil man was identical in a few frames (Shell v Esso) Confectionary did not copy every aspect of the bottle (Coca Cola v All-Fect) There were several differences between ‘Paradise Legends Torpedoes’ and ‘Torpedoes’ including the different typeface,

letters joined, style etc (Torpedoes Sportswear v Thorpedo) The words ‘Woolworths Metro’ and ‘Metro’ only contained one same word (Woolworths v Reg of TM)

Coca Cola v All-Fect

‘Even when the confectionary is laid out flat, it does not have the pronounced ‘waisting’ effect that there is in the bottom quarter of the mark. There is a space for the label on the confectionary, but it is of a different shape from that on the mark. The confectionary has COLA written in the label area. The only close similarity is in the fluting. A total impression of similarity does not emerge from a comparison of the two marks, and accordingly the shape of the confectionary is not substantially identical with the contour bottle mark.’ @ [38]

IF defendant uses sign that contains same word as plaintiff’s registered mark:

Just because the defendant has used a sign that contains the same word as the plaintiff’s registered mark, this does not automatically mean it is substantially identical (Woolworths v Register of TMs).

Woolworths v Register of TMs

'Metro' already registered Cannot say that 'WOOLWORTHS metro' is substantially identical because it contains 'metro' Need to compare the whole of the mark – including wavy lines Cannot just compare individual components – need to look at composite whole Just because contains same word, not enough.

Torpedoes Sports v Thorpedo Enterprises

1. 'Paradise Legends Torpedoes' (#585117) and 'Torpedoes' (#772346) owned by Torpedoes Sportsweara) Opposed grant of 'THORPEDO' for sportswear

2. Need to look at 'the respective wholes' (essential components). No substantial similarity without the 'Paradise' and 'Legends' signs. ([54])

3. Visual marks not substantially identical either ([60], Bennett J):a. Typeface; joinder of the letters;b. Stylised 'T' symbol;c. Aural differences lesser, but “give a total impression of dissimilarity” ([59])d. Not substantially identical either visually or aurally

DECEPTIVELY SIMILAR TO THE PLAINTIFF’S TRADEMARK

A mark is deceptively similar to another mark if it so nearly resembles the trademark that it is likely to deceive or cause confusion (s 10).

Whether deceptively similar depends on combination of visual impression and judicial estimation of effect likely to be produced in the course of ordinary conduct of affairs (Coca-Cola case).

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Does the sign cause people to wonder whether it might be the case that the defendant’s good/service comes from the same source as the plaintiff’s? If so, the use of the sign will be deceptively similar (Coca-Cola case).

Mere possibility of confusion is not enough (Southern Cross case). There must be a real tangible danger of it occurring, but there is no need to show the actual probability of deception.

Must consider in relation to people who lack knowledge of the two marks in question (Berlei Hestia v The Bali Co). Aural (oral, phonetic) similarity is an important consideration (Berlei).

Campomar Sociedad Limited v Nike International Limited [2000] HCA 12

Campomar owns marks in Class 3 for perfumes. Began to market 'Nike Sports Fragrance'. Nike applied to remove 'NIKE' mark for perfumes Nike had no registrations in Class 3 “It would be enough if the ordinary person had entertained a reasonable doubt that perfumery products branded "NIKE"

would come from the same source as footwear and athletic clothing products; a determination of that issue would involve the consideration of all the surrounding circumstances, including those in which the marks would be used and those in which the goods would be bought and sold, and the character of the probable purchasers of the goods.” ([83])

No likelihood of confusion as at 1986 But some likelihood of confusion as at 1992 (second mark) after Nike engaged in a worldwide advertising campaign. Yes, probably the case that there was some confusion. The 1992 mark was amended to apply only to soaps and not

sports fragrances.

Crazy Ron’s v Mobileworld

Crazy John has operated since 1993 Crazy Ron's had been operating since 1996 “Crazy Ron's” would not infringe the globe device mark FCAFC found it was "very difficult to characterise the words "Crazy John" as an essential feature" of the trade mark. May have reached a different conclusion if reputation were greater Would have infringed the later word device mark (but this was filed in the wrong name and could not be amended)

Wingate Marketing v Levi Strauss

'Revise' was deceptively similar to 'Levis' Both aurally and visually (Sheppard J, Wilcox J agreeing; Gummow J) (evidence that it was commonly pronounced 'reevise') Therefore, deceptively similar Goes to whole impression of the mark – take a step back and look at it as a whole

Australian Woollen Mills v Walton

The defendant adopted a Caesar trade mark, but it was an accidental thing. The infringement action failed because the characters used were different (different types of warriors).

Polaroid Corp v Sole N Pty Ltd

Solaroid was used in car windows and buildings, while Polaroids did not. But the court held that it was deceptively similar because a recollection in an ordinary person’s mind would create a

general impression that they came from one source.

IN RESPECT OF THE SAME OR IDENTICAL GOODS OR SERVICES - SECTION 120(1)

Under s 120(1), the goods or services must be the same or identical, not merely similar.

IF good or service is derived from the primary good or service:

It does not extend to goods that are derived from the primary goods.

Re Spillers

'in relation to goods or services' does not extend to goods that are derived from the primary goods House of Lords held that registration for flour does not give exclusive rights to loaves of bread “… it is to give the words “in relation to” too wide a meaning to … include the use of the mark in relation to goods other

than the goods in respect of which the mark is registered, because those goods are in some way or other derived from or related to goods in respect of which the mark is registered.” (238)

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IN RESPECT OF SIMILAR GOODS OR SERVICES - SECTION 120(2)

Under s 120(2), the goods or services must be similar, not identical.

Similar goods or services includes (s 120(2)):

(a) goods of the same description as the registered mark goods(b) services closely related to registered goods(c) services of the same description as the registered mark services(d) goods that are closely related to registered services

Exception

There will be no infringement where there has been no confusion in fact, ie where not likely to deceive/confuse (s 120(2)).

Coca Cola v All-Fect

The respondent must “establish that the use of the features of the confectionary is not likely to cause typical consumers to wonder whether it might be the case that the confectionary comes from the same source as Coca-Cola.”

Musidor BV v Tansing (t/as Apple Music House) [1993] FCA 645

Musidor sold Rolling Stones bootlegs “the applicant makes it plain in his advertising and in his get-up [...] that the source or origin of the goods is not an

"authorised" source” Disclaimer can be effective: “the applicant makes it plain in his advertising and in his get-up, even if the wording on the

spine of the disc's container is also taken into account, that the source or origin of the goods is not an "authorised" source” ([27], Beaumont J)

Upheld on appeal Musidor BV v Tansing (t/as Apple Music House) (1994) 52 FCR 363

Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd [1996] FCA 1484

SA Brewing proposed to market 'Duff' beer with a disclaimer. Tamberlin J found that the disclaimer would not be effective: “It is too simplistic an approach to suggest that the word ``unauthorised'’, coupled with the other forms of proposed

disclaimer, must dispel any association with ``The Simpsons'’.” “The proposed express references to ``any TV Show'’ or to ``The Simpsons'’ by name on the new cans, may arguably

lead to such reinforcement by more specifically and expressly focusing on the series.”

Southern Cross case

Need to have regard to the following:o nature and characteristics of the goods,

o their origin,

o their purpose,

o whether they are usually produced by one and the same manufacturer or distributed by the same wholesale

houses, o whether they are sold in the same shops over the same counters during the same seasons and to the same

class or classes of customers, and o whether by those engaged in their manufacture and distribution they are regarded as belonging to the same

trade Windmills, well-drilling and boring machinery, milking machines, and engines were not similar goods to domestic

refrigerators, even though the goods are sometimes sold in the same stores.

McCormick v McCormick

There are three principal factors to be considered (following Southern Cross):o the nature of the goods, including their origin and characteristics;

o the uses made of them, including their purpose; and

o the trade channels through which the goods are bought and sold.

Instant batter was of the same description as seasonings and spices ([28], Kenny J) HELD there was infringement.

MID Sydney Pty Ltd v The Australian Tourism Co Ltd [1998] FCA 1616

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MID has the registered mark 'Chifley Tower' in class 36 for “property management services, retail and office leasing services”

FCAFC found that managing an hotel was not “property management services” “one who conducts or manages a business on property of another is not for that reason alone to be regarded, within the

ordinary meaning of the words, as providing property management services.”

UNRELATED GOODS WHERE THE REGISTERED MARK WELL KNOWN - SECTION 120(2)

Firstly, the trade mark must be “well known in Australia” (s 120(3)(a)).

Well known trademark

“In deciding, for the purposes of paragraph (3)(a), whether a trade mark is well known in Australia, one must take account of the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason.” (s 120(4))

Nintendo Co Ltd v Care [2000] FCA 1538

Respondent promoted a wrestler as “Da' Super Mario” (including clothing) There was a serious question to be tried under s 120(3) “because of the evidence before me as to the extent to which the trademarks which include the name Mario are well

known in Australia” ([16], Goldberg J)

Virgin Enterprises Ltd v Klapsas [2001] FCA 1502

Respondent registered 'Virgin Car Rentals' and 'Virgin Limousines' as business names Default judgment, Madgwick J 'Virgin' is well known “A good deal of money and effort has been put by the applicant into promoting the various trade marks and the names of

the marks sought to be used by the respondent would be likely to be taken as indicating a connection between the services of the respondent and of the applicant.” ([6])

San Remo Macaroni Co Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842

Respondent started using 'San Remo Coffee' in 1987 ('San Remo Gourmet Coffee Pty Ltd in 1994) San Remo Macaroni feared dilution of their mark most marks contained endorsement that it “shall give no right to the exclusive use of the words [...] "San Remo".” s 120(1) and (2) failed accordingly There was a serious question to be tried under s 120(3) ('with some hesitation'):

o “on the basis that [the respondent's] use of the words "San Remo" would be likely to be taken as indicating a

connection between the first respondent's coffee products and the applicant because the applicant's mark is well known.” ([39], Goldberg J)

Substantially identical with or deceptively similar to

Secondly, the defendant must use, as a trade mark, a sign that is substantially identical with, or deceptively similar to, to the plaintiff’s trade mark.

Use in relation to unrelated goods or services

Thirdly, defendant must use the trade mark in relation to unrelated goods or unrelated services (s 120(3)(b)):

i) Goods that are not of the same description or are not closely related to the registered services of the mark (s 120(3)(b)(i)); or

ii) Services that are not of the same description of that of the registered services or are not closely related to registered goods (s 120(3)(b)(ii)).

Indicate connection between unrelated goods

Fourthly, because the mark is well known, the sign must be likely to indicate a connection between the unrelated goods or unrelated services and the plaintiff (s 120(3)(c)).

Coca Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107

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Primary judge would have held that Coca Cola had no claim under s 120(3):o “Thus, the cola bottle confectionary is merely recognisable as having the well known shape of the contour

bottle but would not be likely to be believed or expected to have a trade or commercial connection of some kind with the applicant by reason of having that shape. Likewise consumers would be unlikely to be led to wonder whether it might be the case that the confectionary comes from the same source as Coca-Cola.”

Respondent conceded that goods were “of the same description”o FCAFC accordingly could not consider s 120(3) (although there is some doubt as to whether the concession

was properly made)

Interests of plaintiff likely to be adversely affected

Fifthly and lastly, by reason of that connection, the interests of the plaintiff must be likely to be adversely affected (s 120(3)(d)).

This is likely to be satisfied by reason of one of the following:

1. Diminution of ability to distinguish – harder to expand market2. Loss of applicable licensing fees3. Potential loss of custom through inferior quality goods or services

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DEFENCES TO TRADEMARK INFRINGEMENT

The defendant may plead one of the following limitations or defences:

a) Good faith use of a name (s 122(1)(a))b) Descriptive uses (s 122(1)(b))c) Spare parts or accessories (s 122(1)(c))d) Comparative advertising (s 122(1)(d))e) Right given to the person (s 122(1)(e))f) Likely to receive registration if the person were to apply (s 122(1)(f) & (fa))g) Limitation on the trademark itself (s 122(1)(g))h) Use of a disclaimed trademark (s 122(2))i) Exhaustion (parallel importation) (s 123)j) Prior continuous use of a common law mark (s 124)k) Applicant has no title to the markl) Mark not yet on registerm) Mark invalidly registeredn) Equitable grounds for refusing relief: estoppel, laches, acquiescence, delay, deception

GOOD FAITH USE OF A NAME - SECTION 122(1)(a)

In order for s 122(1)(a) to apply, there must be use of the defendant’s name, name of business, or name of predecessor in business.

Good faith in this case means honest or bona fide. The defendant must not have attempted to trade off the plaintiff’s trade mark.

Hy-Line Chicks Pty Ltd v Swifte (1966) 115 CLR 159

'Hy-Line' registered for poultry since 1959 (“well known in the United States as the trade name of a particular breed or strain of poultry”)

Defendants ran "Hi-Line Poultry Farm" since 1955 in good faitho Farm use was permissible

o Extension “Hy-Line Hatchery and Poultry Farm” was not. No evidence of use as a hatchery before 1959

Windeyer J HELD that defendants could use “Swiftes' Hi-Line Hatchery and Poultry Farm” to denote that their chickens came from their farm without infringing.

Angoves Pty Ltd v Johnson

Defendant was permitted to call its store the “St Agnes Liquor Store” because it was located in the St Agnes shopping centre in the suburb of St Agnes.

DESCRIPTIVE USES - SECTION 122(1)(b)

Pursuant to s 122(1)(b), there will be no infringement where “the person uses a sign in good faith to indicate:

(i) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(ii) the time of production of goods or of the rendering of services”

Johnson x 2 v Sterling

Defendant used the plaintiff’s trade mark “Caplets” Successfully defended the action on the basis that its use of the word was descriptive of its product, capsule-shaped

tablets, and therefore not as a trademark.

SPARE PARTS OF ACCESSORIES - SECTION 122(1)(c)

Section 122(1)(c) applies where a trader is attempting to indicate that its product can be used in conjunction with the plaintiff’s trade marked goods.

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It is acceptable to describe one’s product as “compatible with” a trade marked product (Gillette v Pharma-Goods).

However, if undue emphasis is placed on the trade marked word etc (by bigger, bolder print etc), and the more subdued the printing of “compatible with” the more likely it is to be considered

Not in good faith; and Use as a trade mark.

Gillette Co v Pharma-Goods Australia Pty Ltd [1997] FCA 629

“*No Frills Moving Blades are compatible with Sensor® Razors” Gillette alleged infringement Burchett J found no serious question to be tried

COMPARATIVE ADVERTISING - SECTION 122(1)(d)

Not use as a trade mark to use someone else’s trade mark as well as your own to say that yours is better (s 122(1)(d)).

RIGHT GIVEN TO THE PERSON - SECTION 122(1)(e)

No infringement where other party has a valid trade mark. Particularly honest concurrent users and prior continuous users.

Honest concurrent use

Sections 44(1) and (2) are subject to the “honest concurrent use” provisions in s44(3)(a), (4) where traders have independently and in good faith adopted the same or similar mark.

The following factors must be taken into account in establishing this connection:

the honesty of the concurrent use, the extent of use in time, area of trade and volume, the degree of likely confusion and the relative inconvenience to the parties.

Prior continuous use

If the registrar satisfied that applicant has used the mark in respect of similar goods or closely related services for a period before the priority date for the registration of the other trade mark up to the priority date for registration of the applicant’s trade mark, the Registrar is not to reject the application because of the existence of the other trade mark (s 44(4)).

LIKELY TO RECEIVE REGISTRATION IF PERSON WERE 2 APPLY - SECTION 122(1)(f) and (fa)

Section 122(1)(f) applies where “the court is of the opinion that the person would obtain registration of the trade mark in his or her name if the person were to apply for it.”

Permits a court to decline a finding of infringement in circumstances where the defendant has grounds for rectification of the register and obtaining registration of the TM in its own right.

If the defendant is the true owner and the plaintiff wrongly obtained registration, this provision will apply.

To make this section out, would have to show that all the requirements for registration could be met (Aldi v Frito-Lay).

LIMITATION ON TRADEMARK ITSELF - SECTION 122(1)(g)

Registration may have been restricted by the imposition of some condition or limitation on the plaintiff’s exclusive rights, such as geographical region etc.

San Remo Macaroni Co Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842

most marks were registered on the condition that they “shall give no right to the exclusive use of the words [...] "San Remo".”

Accordingly, there could be no infringement for other uses of the geographical San Remo sign

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USE OF A DISCLAIMED TRADEMARK - SECTION 122(1)

Any disclaimers under s 74 will prevent the owner from maintaining an infringement action in respect of the disclaimed matter.

Disclaimers sometimes useful to secure registration of marks that include non-registrable elements.

Disclaimers are voluntary but, if made, the owner has no exclusive rights in relation to the part disclaimed.

EXHAUSTION (PARALLEL IMPORTATION) - SECTION 123

Under s 123 there will be no infringement “if the trade mark has been applied [...] with the consent of, the registered owner.”

The function of a trade mark is to indicate the origin of a product marketed; it is not a “badge of control” (Champagne Heidsieck v Buxton [1930] 1 Ch 330, 341).

IF parallel importation:

Transport Tyre Sales Pty Ltd v Montana Tyres Rims & Tubes Pty Ltd [1999] FCA 329

Tyres made by Japanese manufacturer with mark Same owner in Australia FCAFC held that using trade marks in relation to those tyres was permissible Exception extended to use in advertising The sale of the tyres by Montana involved a use of the trade marks because of the moulding of the trade marks on the

tyres. As that moulding was applied by Ohtsu at the time when it was the registered owner of the trade marks, such use was therefore excused by s 123 of the TMA, and was not an infringement.

RA & A Bailey & Co Ltd v Boccaccio Pty Ltd (1986) 6 IPR 279

The plaintiff was attempting to control the importation of Baileys Irish Cream into Australia by, inter alia, alleged infringements of trade marks

HELD could not control importation by using trade marks (but could use copyright, until the law was changed)

IF second hand sale:

Second hand sales was not generally use 'as a trade mark' under the 1955 Act. Section 7(4) contemplates that second-hand goods could be use as a trade mark. But there is still a likely presumption that selling second hand goods is not 'use'

Wingate Marketing v Levi Strauss

Repaired or patched jeans still bore the 'Levis' marks TM is a badge of origin, not control (Fender [1989] FCA 276) Passing off is more appropriate FCAFC found that second hand sales did not infringe (were not used as a trade mark):

“Members of the public acting reasonably are not misled or confused by the fact that in countless cases second hand products have attached to them original labels, many of which will consist of or contain the trade marks of a variety of manufacturers and distributors. Certainly they will not think that the second hand shop with which they deal is an offshoot of, or has some connection with, the original supplier of the product when new.” ([87], Sheppard J)

Use of 'Revise' label and other statements made clear that the jeans were modified by Wingate ([75-8], Gummow J)

Whether the use of the mark is as a trade mark will depend on the circumstances.

PRIOR CONTINUOUS USE OF A COMMON LAW MARK - SECTION 124

Section 124 permits the continuous use of an unregistered mark from a time before the priority date or date of first unregistered use. There is not requirement of good faith. The use must be in the same manner and in respect of same goods or services (Hy-Line).

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REMEDIES FOR INFRINGEMENT

A number of civil remedies are available for infringement of a trademark, including:

Permanent injunction Damages or account of profits Disposal or delivery up of goods

The plaintiff may also be entitled to the following criminal remedies:

s145 Unauthorised alteration, defacement, removal etc of a trade mark s 146 false application of a trade mark s 147 Making or possessing equipment with knowledge that it will be used in the context of any of the above s 148 Knowingly selling or offering for sale etc goods bearing falsely applied marks s 150 Aiding or abetting any of the above s 151 Making a false representation that a mark is registered

An action may be bought by the registered owner or authorised user.

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