Archive for December, 2008

Seasons Greetings

Monday, December 22nd, 2008

The sand, the sea and (hopefully) the sun are calling.

IPwars is swapping the quill and magnifying glasses for sun block and Stingose.

Thankyou for visiting during 2008.  I hope you found something of interest.

Wishing you the Compliments of the Season!

Normal transmission should resume late January.

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Singapore Trademark (?) Treaty

Monday, December 22nd, 2008

IPKat reports that the Singapore Treaty on the Law of Trademarks came into force on 16 December 2008, when Australia became the 10th party to ratify.

Apparently, it should help simplify trade mark applications and licensing.

Wonder if there’s anything in here to do with this?

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USA, China, Famous Brands and WTO

Sunday, December 21st, 2008

The USA has has commenced formal consultations – the first steps in another WTO complaint – in the WTO against the People’s Republic of China, alleging China is providing illegal protection for famous Chinese brands.

From the fact sheet:

China appears to be providing numerous WTO-illegal subsidies at multiple levels 

of government.  These include providing exporters: 

• Cash grant rewards for exporting 

• Preferential loans  

• Research and development funding  

• Cash grants to lower the cost of export credit insurance  

• The subsidies at issue offer significant benefits, particularly through cash grants that can reach over $400,000 to a single producer from a single level of government.

It would seem these are different “famous” brands to all those famous brands that are now “made in China”.

USTR press statement here.

USTR fact sheet here.

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ACTA – December meeting

Sunday, December 21st, 2008

The Canadian and US governments carry short press releases on the latest (15 – 18 December) round of negotiations over the secretive ACTA.

Australian (DFAT) homepage (not updated) here.

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YouTube and IP

Saturday, December 20th, 2008

Indications are that Universal Music is now making “tens of millions of dollars” from the use of its music on YouTube.

Slightly different outcome to the apparently stalled Viacom approach to social networking sites?

Concurrently, there are newspaper reports that the RIAA, famously suing grandparents and 12 years olds, may be changing its litigation strategy.

Howard Knopf worries that this might be because “sweet heart” deals are being reached with ISPs. Anyone want to sue, say, iiNet?

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Pharmaceutical patents

Wednesday, December 17th, 2008

The European Commission has published its preliminary report into its inquiry into the state of competition in the pharmaceutical industry in the EU – comment and links via IPKat.

The IPKat also has links to what they describe as “the powerful speech” delivered by Sir Robin Jacob (aka Jacob LJ) in the Commission’s public meeting on the issue.

Meanwhile, the developing countries are developing a proposal which envisages greater involvement of WHO; see here, while there are also reports of the Director General of the WTO appearing to acknowledge some significance to the issue.

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bing infringed BING!

Wednesday, December 17th, 2008

The applicant had registered BING! for

Class 9 Software for the legal profession and other industries and professions not limited in any way to a specific industry or commercial sector; Class 35 Distribution and sales of computer software.

Class 42 Design of computer software; programming maintenance, upgrading and updating of computer software for the legal profession and other industries and professions not limited in any way to a specific industry or commercial sector…

The respondent provided an internet postal service.  To enable subscribers to use the service, it supplied them with software to be downloaded and installed on the subscribers’ own computers.  

The first respondent’s promotional material uses the trade mark “bing” in relation to its software, and through installation and use of the software, the trade mark “bing” appears on the computer screen in various guises. It is clear from the respondents’ own evidence that the first respondent uses the mark “bing” in relation to at least software (class 9); distribution of computer software (class 35), and updating of computer software (class 42).

The software distributed by the first respondent has a number of components including “bing Client”, “bing Virtual Printer Driver”, “Popup bing Mailroom”, “Control bing Printer”, and “bing Help”.

Customers of the first respondent enter a software license agreement in respect of the software (and updates) provided to the customer by the first respondent under the name “bing”. Further, the software licence agreements refer frequently therein to “bing”.

Collier J rejected the argument that “bing” in its various guises was substantially identical to BING!, but found deceptive similarity.  Of potentially greater significance, her Honour went on to find that the respondent was using the “bing” mark in relation to goods and services covered by the applicant’s trade mark registration:

First:

52 …. I agree with the respondents that the first respondent is engaged in the provision of internet postal services, which prima facie are not goods or services in respect of which the applicant’s trade mark is registered. However I consider it is also clear that, as Mr Franklin submitted, the first respondent’s service is, in the manner in which it is conducted with the majority of its clients, a software-enabled service. While customers can access the first respondent’s service without specific software (an issue to which I will return later in the judgment), the first respondent provides software, bearing the trade mark “bing”, to customers to allow the customers to effect the internet postal service it provides, and to access that service.

Then, MID Sydney was distinguished:

57 So far as concerns the software provided by the first respondent to its customers bearing the moniker “bing”, in my view that software is a “good” which is both severable from the internet postal service, and would in other circumstances be capable of being the subject of a registered trade mark in its own right within Class 9. Similarly, distributing and updating that software are “services” within classes 35 and 42. The software supplied by the first respondent, and the services provided by the first respondent in support thereof, are not, to draw an analogy with MID Sydney 90 FCR 236, goods or services which lose their features as software because they form part of an overall broader service. The software remains software, which requires distribution and updating, no matter that it is used in connection with the first respondent’s internet postal service.

as was the SAP case relied on by the respondent

61 Where the analogy between these proceedings and SAP Australia 169 ALR 1 breaks down is that while the Full Court accepted in SAP Australia that “broadly based consulting services” could include supplementary training as an adjunct to the provision of custom designed computer systems for clients, in this case it does not follow that software provided by the first respondent is no more than an incident to the provision of its service. As I noted earlier, the software used by the first respondent is a product in its own right – the copyright therein is owned by a third party, and the first respondent has exclusive distribution rights (TS 66 ll 12-13). The first respondent provides the software even though, as Mr Cranitch conceded during cross-examination, the first respondent has some clients who do not use the software, but send to the first respondent documents in the form of PDF files, word documents and publisher documents (TS 71 ll 40-41). The software and associated services are an important part of the first respondent’s internet postal service.

62 In ascertaining whether software is “incidental” to its internet postal service as submitted by the first respondent, it is useful to test the first respondent’s hypothesis in this way. Computer hardware cannot properly function without the benefit of software. Yet it could scarcely be said in relation to a computer that software loaded on to a computer hard drive was “incidental” to the computer itself, merely because the software allowed the computer to operate in certain ways. This is clear from the many cases involving claims of infringement of trade mark with respect to software (for example, Microsoft Corporation v PC Club Australia Pty Ltd [2005] FCA 1522 and Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54).

63 Software is pervasive in twenty-first century Australia. In the words of one writer:

In case you have not noticed, software is now a key part of our social structure — we sense it in our cars, in our supermarkets, in our televisions, in our computers — we sense it everywhere; it is a ubiquitous, undulating, architectural, air like, water like commodity that infiltrates our daily lives. (Brian Fitzgerald, “Software as discourse?: A constitutionalism for information society (1999) AltLJ 25)

64 However its omnipresence does not, in itself, mean that it fulfils an incidental role in relation to functionalities such as the service provided by the first respondent. Further, the fact that the software used by the first respondent is not sold by the first respondent, or indeed that it has no operation other than in relation to the first respondent’s service, does not mean that it is not “software” for the purposes of classes 9, 35 and 42 for which the applicant has a statutory monopoly.

Collier J then found Mr Crainitch, the managing director, CEO and company secretary of the first respondent, liable for authorising, directing or procuring the corporate respondent’s infringements.  Her Honour dismissed the allegations of contraventions of s 52 and 53 of the Trade Practices Act and passing off.

An application to re-open the case after judgment was reserved was dismissed here and the final form of relief granted is here.  It would appear that the respondents could continue the postal service under the name “bing” if they can come up with a new name for their software.

Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1) [2008] FCA 1760 

Prof. Mark Davison reminded me that her Honour refused to award damages and points out a possible defence that the respondents might have explored here.

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Sex, videotapes and damages II

Tuesday, December 16th, 2008

Following on from last week’s Giller v Procopets, I was asked if Max Mosley’s payment of the prostitutes precluded a claim for breach of confidence, leaving him just with his Conventional rights to privacy.

It is certainly true that the trial judge focused primarily on the invasion of Mr Mosley’s rights to privacy. However, his Lordship did also find that “Woman E” breached her obligation of confidence to Mr Mosley:

104 In the light of these two strands of authority, it becomes fairly obvious that the clandestine recording of sexual activity on private property must be taken to engage Article 8. What requires closer examination is the extent to which such intrusive behaviour could be justified by reference to a countervailing public interest; that is to say, at the stage of carrying out the ultimate balancing test. I will focus on those arguments shortly.

105 Before I do so, however, I need to address the separate question of whether Woman E owed a duty of confidence to the Claimant and the other participants in respect of the events at the flat on 28 March. In the ordinary way, those who participate in sexual or personal relationships may be expected not to reveal private conversations or activities. Evidence was given by the Claimant and the other women both generally about the recognised code of discretion on “the scene” and also, specifically, about their relationships with one another. Woman A was a close friend of Woman E and had introduced her to the Claimant. Her outrage is displayed in a text she sent on 11 April:

” … our scene is based on complete trust and complete discretion. However one of my so called close friends dominatrix [Woman E] has betrayed that confidence by doing what she has done. I am devastated by this act of pure total selfish greed, she has no morals, no integrity, no loyalty, complete disregard to others, cruel, and she is a liar!!! No one … deserves this invasion of privacy.”

106 It was often said that “there is no confidence in iniquity”, but it is highly questionable whether in modern society that is a concept that can be applied to sexual activity, fetishist or otherwise, conducted between consenting adults in private. All the other women, as well as the Claimant, felt utterly betrayed by Woman E’s behaviour in filming them without consent and selling the information to the News of the World. I was told that she was soon ostracised from “the scene”, where the need for discretion is widely accepted.

107 It is true that the Claimant on this occasion paid the women participants, although he has not always done so in the past, but this does not mean that it was a purely commercial transaction. Even if it was, that would naturally not preclude an obligation of confidence, but it is quite clear from the evidence that there was a large element of friendship involved, not only as between the women but also between them and the Claimant. For example, had it not been for the intervention of the News of the World there was a plan to offer him a (free) session for his birthday (which falls in April).

108 In any event, irrespective of payment, I would be prepared to hold that Woman E had committed an “old fashioned breach of confidence” as well as a violation of the Article 8 rights of all those involved. This may have been at the instigation of her husband, who saw the opportunity of making £25,000 out of the News of the World and who made the first approach. (emphasis supplied)

One might add that the equitable obligation of confidence long since escaped the confines of private relationships involved in (Prince) Albert v Strange and Argyll v Argyll to afford protection in many commercial situations such as employer-employee relationships where money changed hands.

So, while the obligation of confidence was recognised, it would seem the English court took the converse approach to the Victorian Court of Appeal – concentrating on the modern right to privacy.  So e.g. Eady J noted at [182]:

The cause of action now commonly described as infringement or breach of privacy, involving the balancing of competing Convention rights, usually those embodied in Articles 8 and 10, has recently evolved from the equitable doctrines that traditionally governed the protection of confidential information. Now (and especially since the formulation by Lord Nicholls in Campbell v MGN Ltd [2004] 2 AC 457) it is common to speak of the protection of personal information in this context, without importing the customary indicia of a duty of confidence. 

Max Mosley v News Group Newspapers Ltd [2008] EWQB 1777

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Served by “Facebook”

Tuesday, December 16th, 2008

Courts have apparently been allowing service of court documents by email and in at least one high profile case against a rugby player alleged to be in breach of his club contract by text message.  Now, for those of you looking for reports of the case where the Court allowed service by Facebook, try:

here and here and here and here.

Master Harper’s decision in MKM Capital v Corbo and Poyser doesn’t appear to be online on Austlii yet.

Lid dip: Jane Treleaven

By the way, Jane asks what kind of privacy settings these people were using that their, er, Facepage (?) showed so much personal information?

While teasing out some issues about the Lori Drew prosecution, Eric Goldman also notes there are problems with the reliability of social network sites pages here, here and here (e.g.).

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Trade mark use by non-profits

Monday, December 15th, 2008

The European Court of Justice has ruled that a non-profit association – in this case a body devoted to the preservation of military traditions which performs charitable works and collects gifts – does in fact use its “trade” marks in (what we would call) the course of trade:

Case C?442/07, Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’

IPkat’s summary here.

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