Archive for October, 2008

WIPO and traditional knowledge and folklore

Wednesday, October 15th, 2008

WIPO’s committee on traditional knowledge etc. has before its meeting later this month, 2 papers identifying the gaps in protection for traditional knowledge and folklore.

Intellectual Property Watch has links and some analysis here.

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Lessig on copyright reform

Wednesday, October 15th, 2008

Prof. Lessig has an opinion piece in the Wall Street Journal outlining his ideas on what needs to be done to put copyright “right”.

Read it here.

Many owners of copyright no doubt will not agree.

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Copyright liability for hosting material posted by others

Tuesday, October 14th, 2008

Section 116AE of the Copyright Act 1968 (Category C activity) provides for a limitation on the liability of hosting services for material posted by others.  Think, for example, of YouTube or those websites that ISPs provide their subscribers. The broad conditions for the protection to apply are set out in s 116AH. Copyright Regulations reg. 20A to 20X provide more detailed requirements, including the notice and take down procedures.

Apart from the failed attempts of pretty much naked infringers to rely on these provisions, we don’t have much case law on how these provisions apply.  See Cooper and KaZaa.

The provision is closely modelled on §512(c) of the US Copyright Act (putting to one side the problematical “carriage service provider” criterion).

Therefore, you might find a US case, Io v Veoh, in which the host successfully relied on the defence worthwhile reading.  

Prof. Goldman has an excellent discussion here.

One of Prof. Goldman’s points is the problem of the relationship of the ‘safe harbours’ to liability for secondary infringement (the nearest analog in Australia being liability for authorising copyright infringement).

That could be an issue here too on the Moorhouse principles, but it has always seemed to me that, before this safe harbour was introduced, the web host had an even more direct exposure for direct infringement by reproduction and, possibly, communication. I wonder if the US Second Circuit’s approach in Cartoon Network v Cablevision (Aug. 4) has potential here?

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Troubles with the grace period

Monday, October 13th, 2008

The Patents Act was amended (in relatively controversial circumstances) to include a 12 month grace period (somewhat a la the USA) so that use or publication of the invention in the 12 months before the complete specification was filed could not be relied on to destroy validity: see s 24(1)(a) and reg.s 2.2(1A) and 2.3.

Assume that a complete application for a standard patent was filed on 13 May 2005.  Then a complete application for an innovation patent, as a divisional from the standard, was filed on 22 November 2006.

Assume further that the first publication of the invention the subject of both applications was in October 2004.

Which complete application does time run (backwards) from?

If the standard application, the innovation patent will be valid; if not, it will be invalid.  If time runs from the date of the complete application for the innovation patent, however, the divisional status of the innovation application will not have all the usually expected effects.

Stone J has found that the relevant application, on the basis of the specific wording of the legislative provisions, is the complete application for the innovation patent:

10 There does not appear to have been any previous judicial consideration of the present question. Both parties submit that, having regard to the context in which they appear, the ordinary and natural meaning of the provisions supports the construction for which they respectively contend. For reasons given below I have concluded that the construction for which the respondent contends is correct, namely, that where the specification filed in respect of a parent application discloses the invention claimed in a divisional application based on the parent, the “complete application” to which cl 2.2(1A) refers is the divisional application. Consequently I would answer the question for determination as follows:

For the purpose of determining the validity of the Australian Innovation Patent No 2006100978 (Innovation Patent), and on the facts stated in the orders made by Bennett J on 11 December 2007, “the filing date of the complete application” within the meaning of reg 2.2(1A) of the Patents Regulations 1991 (Cth) is the filing date of the complete application for the Innovation Patent on 22 November 2006.

28 I reject the applicant’s argument that the respondent’s construction creates an anomaly by providing the innovation patent with the benefits of divisional status whilst depriving it of the grace period benefits otherwise accruing to that status. As the respondent correctly submits, the consequence of its view is that the grace period simply runs from a later date, which may or may not extend past the priority date based on the filing of the parent application. This is said to reflect:

… a decision not to allow divisional applications to benefit more than they already do from the earlier priority date in circumstances where the divisional application is filed more than a year after the parent application.

Be very, very very careful if you have to rely on the grace period!

Mont Adventure Equipment Pty Limited v Phoenix Leisure Group Pty Limited [2008] FCA 1476.

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Patent application searching

Sunday, October 12th, 2008

IP Australia and the US PTO have reached agreement to permit some international searching for US patent applications to be undertaken by IP Australia.

According to IP Australia:

The arrangement, which comes into effect on 1 November 2008, will allow applicants from the US to choose IP Australia to undertake the initial search and examination of their patent application under the Patent Cooperation Treaty (PCT). Applications that may not be covered under the arrangement are certain international applications relating to particular mechanical engineering or analogous fields of technology.

The arrangement starts on 1 November 2008.

A bit more detail here.  Nothing on USPTO site as yet.

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Manner of manufacture

Friday, October 10th, 2008

The hyper-driven David Brennan is also doing a free lunch time presentation at Allens Arthur Robs in Melbourne on 14 November.

Registration and more details here (pdf).

Attempt to patent the new (?) science of subronics here and check out Prof. Lemley’s take on the issue or bone up on the ACIP review via here.

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In-house trade mark lawyer awards

Thursday, October 9th, 2008

The World Trademark Review has issued a call for nominations for its industry awards.

The nominations are sought for in-house trade mark lawyers and departments.

Further details here and last year’s awards here (pdf).  Have your say (nomination form) here.

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the value of copyright: determining shadow prices

Thursday, October 9th, 2008

Ass. Prof. David Brennan and Dr Rhonda Smith will talk for IPRIA about how to determine a fair price for using IP where the IP owner can’t demonstrate any real harm.

I think a situation like this is where an infringer makes sales of the infringing product, but the IP owner wouldn’t have made those sales and so didn’t “lose” anything.

The talk if at Blake Dawson in the city on 18 November at 6.00 pm.

Registration is free via here.

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Resale royalty right

Tuesday, October 7th, 2008

On Saturday, the Age carried a story about the proposed resale royalty right.

The details (yet to be implemented in legislation) are up here (pdf) and here (rtf):

The scheme will start on 1 July 2009.  It will cover:

resales of original works of visual art sold through the secondary art market where the seller has acquired the work after the legislation takes effect. It will not be restricted just to works created after the scheme starts.

If such a qualifying work is resold (in the secondary market) for AUD$1,000 or more, there will be a 5% fee payable to the artist. This is the option the then Government’s 2004 study found would generate the highest level of royalty payments. (There is no indication whether or not the $1,000 will be indexed.)  Liability for payment will be joint and several and will cascade: seller, buyer’s agent, buyer.

For these purposes, a ‘ resale’ will include:

all resales involving art market professionals, public institutions or organisations, and all resales subsequent to the first transfer of ownership, regardless of whether the first transfer was made by sale, gift or any other means.   

A ‘work of visual art’ will be:

work of art original works of graphic or plastic art, such as a painting, a collage, a drawing, a limited edition print, a sculpture, a ceramic, an item of glassware or a photograph. This definition reflects similar arrangements in the EU. 

To qualify, the author will have to be an Australian or permanent resident (or their heirs) – I wonder if this will require qualification at the time the work was made?

The fact sheet indicates the possibility of reciprocity under foreign schemes.  It suggests this might have something to do with the Berne Convention.  A resale royalty (or droit de suite) is not covered by art. 6bis, but art. 14ter.

Joshua Gans looks at the economics here.  Anyone familiar with ‘artist’s rights’ legislation in Australia could have told him that artists, like children and the mentally incompetent, won’t be getting any right to ‘opt out’.  The fact sheet confirms:

The right will be inalienable and unable to be waived. 

The then Government’s 2004 study estimated that the scheme now proposed to be adopted would have captured 72% of sales at public auction in Australian in 2003. 823 artists would have benefited, with an average royalty of $3,300.  One artist would have generated a royalty of $207,000 and, at the other extreme, another $40.  Administration costs would have been $600,000. This is much higher than the UK estimates of £1 million start up costs and £50,000 pa on-going.

For those of you concerned that this might be the end of the auction market in Australia, a UK study (where a (somewhat different) scheme is operating, didn’t think so.

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