Archive for July, 2008

Domain name disputes in Australia

Wednesday, July 30th, 2008

Mark Bender, at Monash University, has written about domain name disputes in Australia …

According to the abstract:

The objective of this paper is to provide an overview of the law in relation to domain name disputes involving trademarks that applies in Australia. Generally the focus of this paper will be confined to consideration of domain names ending with the .au suffix. An overview of the rights associated with domain names, registered business names and registered and unregistered trademarks is provided, as is an outline of the domain name dispute resolution processes and some some summary statistics and key cases in relation to domain name disputes.

The article has been published in the Monash Business Review vol.3 No. 3 (2007) and appears on SSRN here.

No doubt reflecting its business review audience, much of the article is taken up with discussing ways of protecting trade marks under Australian law and a flirtation with the 2000/2001 controversies over whether the UDRP is biased towards rights owners. Pp. 10 – 14 hit the .auDRP compared to the UDRP and flag some of the Australian court cases that I wasn’t aware of rather than a detailed analysis of the decisions under the .auDRP. A good starting point is CSR Ltd v. Resource Capital Australia Pty Ltd, 128 FCR 408.

Lid dip, Prof. Manara.

Lots of Australians involved in a domain name dispute here.

Another Australian, also at Monash, took an in-depth examination of the international domain name law here.

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Parody

Tuesday, July 29th, 2008

Nicholas Suzor tries to work out where parody fits into Australian copyright law …

here.

A parody, or is it a satire ?, here.

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Copyright owners versus ISPs

Tuesday, July 29th, 2008

Reports today that the UK Government has ‘brokered’ a deal between copyright owners and ISPs forcing ISPs to take a more pro-active role in cutting off illegal downloaders …

According to the IPKat things may be a little more complicated: at least one of the ISPs claims all it has agreed to do is write to the downloader and tell them that someone alleges they infringe copyright.

IPKat here.

Kim has links to the UK Government’s announcement here and expands on the details.

All this is directed at downloaders. Here, of course, ISPs (I really mean ‘carriage service provider’, start here), engaging in Category A conduct get some protection; but nonetheless can have court orders inflicted on them to cut off accounts – who is going to bear the legal costs of a successful court action to achieve this? And there is more limited protection for other types of conducrt depending on whether the activity is Category B, Category C or Category D activity – I kid you not!

Of course, if you’re not a ‘carriage service provider’, you should be shaking in your boots; especially once you get a letter from someone claiming to be a copyright owner (or acting for one) see Metro on George and Cooper v Universal, although depending on your degree of involvement you may be able to argue the latter case in particular is a bit unusual.

Even if you are a ‘carriage service provider’, it may well be that you can’t afford to sit back and wait for letters of demand (I mean, notifications) to come in:

first, you may still be liable for infringement if you become aware of infringing material or of facts or circumstances that make it apparent that material is likely to be infringing …;

secondly, Viacom and the English Premier League (no, there is no copyright in a sporting spectacle, but there is in the broadcasts) contend under the US templates of these provisions that Google must be aware because there is too much infringing ‘stuff’ out there ….

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Dollars v sense

Thursday, July 24th, 2008

The latest plans to extend copyright term in the EU seem to have fired up a collected who’s who of copyright academics …

A band of intrepid professors have taken to the pages of the Times to point out why it’s a bad idea, via IPKat also having a go at performer’s rights

Another group calling themselves “Sound Copyright” have also reacted strongly (and negatively), via IPKat again

And, soon to visit these shores (here and here), Bill Patry http://ipkitten.blogspot.com/2008/07/sound-copyright-time-to-take-action.htmlweighs in from across the water

and, not to be outdone, some academics have decided to counter-attack against the copyright owners’ rather restrictive interpretation of the ’3 step test’: IPKat and Patry both joining in.

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Patentable subject matter issues paper

Tuesday, July 22nd, 2008

ACIP has released its issues paper on Patentable Subject Matter …

As feared, the ‘archaic’ language of ‘manner of manufacture’ cops a review, but so does the ‘generally inconvenient’ proviso.

Under the headings ‘Objectives of the test’ and Ethical and other constraints on the test’, it pretty much throws wide open the issue of whether there should be a patent system, what it should protect and what should be excluded.

Much of this debate is, of course, ultimately pointless given the constraints of TRIPS and art 17.9 of AUSFTA. Nonetheless, it leaves plenty of room for debate about excluding business method patents, software patents (because that works oh so well in the EU) and, of course, (bearing in mind we now have a Senate where another party such as the Greens and Family First must vote with the Government for it to get a reform through) human beings etc.

Prof. Mark Lemley has perhaps the clearest explanation of why the business method/software type exclusions don’t work; they only lead to even more wasted legal expense on trying to draw the line. See e.g. his brief in the In re Bilsky litigation in the USA (pdf) or, for those of you with iPods, his fascinating interview with David Levine at hearsay culture (or through iTunes Store). Patently-O has a great set of links and thumb nails on the litigation and the briefs.

Of couse, we can always fall back on that old rubric, particularly helpful when your client comes in for advice, this is not the sort of thing that is patentable or, as the Issues Paper points out, pilots of aircraft shouldn’t have to worry about these things! Still, I must be positive, look on it as an opportunity to fix the mess created by Phillips v Mirabella (if only we couldn’t be a little bit nervous about (a) the rag bag of other issues and (b) what will no doubt be the Parliamentary draftsperson’s sterling efforts).

The issues paper is here (pdf) and your submissions should be in by 19 September 2008, after all, it shouldn’t be too hard to put together your thoughts on this little topic should it?

The ALRC’s Gene Patenting and Human Health is only 4 cm thick.

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International agendas

Saturday, July 19th, 2008

WTO and EU …

IP Watch reports that IP is on the agenda next week (beginning 21 July) in the DOHA negotiations and identifies key issues raised by a “regional groupings such as African, Caribbean and Pacific developing nations in league with Brazil, China, India and Europe” here.

More GIs and better acknowledgement of traditional knowledge seem to be the main concern. Australia is one of the opponents – which makes sense at least in respect of GIs.

Also, IP Watch reports on IP developments in the EU including an extension of term for copyright in sound recordings (also known as Cliff Richard’s superannuation?) Get ready for pressure to increase copyright protection here by another 25 years! IPKat’s take here.

There is also a discussion paper on copyright exceptions on the internet. One might hope that this means they have discovered they have gone too far, but where the EU is concered it usually means that copyright owners’ rights need to be improved.

Then, there is to be an investigation into the quality of industrial property rights.

The IP News report has links to the EU papers.

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Innovators and entrepreneurs

Saturday, July 19th, 2008

Joshua Gans says he has been teaching this case study to his MBA students …

Flash of Genius.

On a similar theme, IPRoo attended the launch of Measured Success, Innovation Management in Australia and found an IP lawyer’s vision of nirvana:

“Adrian Hunter went beyond the usual practice of inviting patent attorneys to attend the first meeting of the project. He invited them to attend all of the quarterly meetings for the five-year duration of the project….

In addition to allowing the patent attorneys to think about their patent strategy very early on in the process, this experiment facilitated two fundamentally important information transfers of tacit knowledge, one from the patent attorneys to the scientists, and the other from the scientists to the patent attorneys…

The scientists started to understand, at a much deeper level, the notion of a patent as a strategic weapon…the patent attorneys learned what it was that the scientists had actually created…The consequences of these information transfers were quite dramatic…”

Perhaps you should send a copy to your clients in case they go to see Flash of Genius?

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Jib Jab did it again!

Saturday, July 19th, 2008

The folks who brought us This Land have now found

Time for some campaignin’ …

here.

Now, why does that tune sound so familiar?* Why does the scenery behind Barack Obama seem familiar?

According to Excess Copyright, it wouldn’t be legal in Canada.

But is it parody or satire?

Fortunately, in a country where a clip of the Prime Minister singing happy birthday to “a” cricketer was neither news nor criticism/review (see here [34] and [39] then here), we now have fair dealing for both parody and satire.

Do you think they took too much? Surely, they added enough original contribution?
* here – I’m not going to suggest you click on the number 56

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Innovation Scorecard

Friday, July 11th, 2008

The Commonwealth Department of Innovation Industry, Science and Research has published an Intellectual Property Scorecard 2002 – 2006.

There are a wealth of interesting statistics to ponder …

For example, there were 25,552 patent applications in 2006 (up from 22,569 in 2002), but only 9,426 granted (down from 13,702 in 2002) and the difference is not made up by the innovation patent which has had around 1000 – 1100 applications a year (although 1011 were granted in 2006 up from 758 in the very slow 2002).

Trade marks broke the 100,000 applications in a year in 2006, up from 64186 in 2002; 69910 applications were granted, up from 51699 in 2002.

More designs were granted than applied for in 2006; a measly 364 PBR applications went in and only 280 registrations were effected.

Did you know only 5% of patent applications are filed simultaneously in the US, Japan and the EPO?

There are lots of other details about who is patenting where, what classes they’re patenting in and so on.

Dive in here (pdf).

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Barefoot in the drink

Friday, July 11th, 2008

E & J Gallo failed in its action against Lion Nathan alleging that BAREFOOT RADLER for beer infringed Gallo’s registration of BAREFOOT for wine. Worse news for Gallo, its trade mark was ordered to be removed for non-use …

The case is a relatively rare consideration by the Court of “goods of the same description” and even rarer consideration of the s 120(2) defence. It also repays close attention to why the Gallo’s trade mark was removed for non-use even though there had been sales of the product in Australia in the relevant period. In this post, I am only going to look briefly at the infringement question.

On the infringement issue, Flick J found that the mark BAREFOOT RADLER was deceptively similar to Gallo’s trade mark, but beer and wine were not goods of the same description. The claim under s 120(2) failed as there was no likelihood of confusion in the circumstances.

The deceptive similarity analysis is, with respect, fairly conventional. The main twist was whether or not Lion Nathan’s trade mark was BAREFOOT RADLER or BAREFOOT RADLER with footprint device.

One might have thought that Gallo had to show what mark Lion Nathan was in fact using, but Lion Nathan was precluded from relying on its composite mark because its pleadings did not properly disclose its contention that the trade mark in use was the composite mark, not just the word mark itself. The point had the potential to be significant as Flick J would not have found the composite mark deceptively similar to Gallo’s trade mark.

(As an aside, one wonders what fun there could have been if the evidence showed that, in addition to the composite mark, Lion Nathan also used the word mark as a trade mark. One often sees composite marks or logos displayed prominently on materials, but just the words being used in a trade mark sense in the advertising and promotional text.)

Flick J analysed the issue of goods of the same description very carefully. His Honour acknowledge that there were factors which could lead to a finding that beer and wine were goods of the same description [74]:

(i) both products were alcoholic beverages for human consumption;

(ii) both products were generally distributed by the same major wholesalers;

(iii) Barefoot Radler beer was intended to appeal to both “core” and “marginal” beer drinkers and, in the latter category, particularly intended to appeal to wine drinkers;

(iv) both brands were intended primarily for consumption in the summer months; and

(v) wine and beer were both frequently sold by the same retailers.

Looked at from a business point of view, however, these factors were overriden by other considerations:

(a) they were made in different manufacturies, using different processes and ingredients – water, a fermentable source such as starch (often malting barley) and yeast and a flavouring such as hops for beer; crushed grapes and yeast for wine [77 - 78]

(b) the manner in which beer and wine were sold may be different [80 - 82]: in restaurants, beer was sold by strength and brand and, apparently, beer drinkers usually limited themselves to 3 or 4 brands; wine was sold by reference to the wine list

in retail outlets, wine was usually sold be categories further divided into wine type and country of origin, with 80% of product being on the shelves; the main selling area for beer was the coolroom, in which beer accounted for 80% of products, and it was not usually displayed in any particular order or categories;

apparently, beer producers also rely heavily on brand signage.

(c) the way in which the products were consumed was different [83] – beer is apparently consumed for its thirst quenching properties, but wines and spirits are for sipping; beer also has an important role in, er, male bonding

(d) although both Lion Nathan and Foster’s both produced both wine and beer, wine and beer production, marketing and sales were separate from each other [84 - 85]. This included evidence that Foster’s had originally tried marketing both beer and wine through the same sales force, but had subsequently resorted to separate, specialised sales forces. The other main brewers in Australia did not carry wine.

The fact that Lion Nathan deliberately sought to entice wine drinkers with its Barefoot Radler product did not lead to any different conclusion as beer and wines are not commonly used as substitutes or alternatives.

Flick J also found that Lion Nathan had successfully established the defence under s 120(2) [94 - 95] having regard to the way both products were displayed for sale.

E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934, final orders [2008] FCA 1005.

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