Archive for March, 2009

Embedding rights management information in photos

Tuesday, March 31st, 2009

Are your clients posting their photographs on the web?

If so, how are they making sure that their “rights management information” (or at least their attribution) stays with their photograph?

Jonathan Bailey discusses some ways to embed the information in the photograph when it is taken at Plagiarism Today.

Use of Software and those computer defences again

Tuesday, March 31st, 2009

You’ll recall that SAG licensed its database software to RWWA. RWWA engaged KAZ to provide disaster recovery services and installed a copy of the software on KAZ’ off-site servers. Meckerracher J dismissed SAG’s claim that this was unlicensed and therefore infringement of its copyright. (link via my attempt to summarise here).

The Full Court has substantially dismissed the appeal, but found the judge was wrong to the extent his Honour considered s 47F of the Copyright Act 1968 would have provided a defence also.

On the question of licence construction, their Honours found that the proposed use fell within the terms of the licensed use “for … emergency restart purposes“:

34 The phrase “for … emergency restart purposes” is more ample than, for example, “in order to restart the System in an emergency”. A penumbra surrounds “emergency restart”. It is a natural reading of the composite phrase to include within its coverage testing whether the copied System will restart should an emergency occur.

35 If one were to regard the phrase “for … emergency restart purposes” as open to two constructions, SAG’s construction, in our view, results in a meaning that would be unreasonable or inconvenient. The purpose behind clause 12.3 is to protect RWWA from serious loss in an emergency, whether caused by a breakdown of its mainframe or some external event putting it out of action. It would be an unreasonable and inconvenient result if RWWA were to be unable to take sensible steps to make it more likely that the purpose behind clause 12.3 would be achieved, by testing the copied system in order to maximise the chance of the restart occurring in the event of an emergency arising.

36 Further, we agree with the primary judge’s observation quoted at [28] that SAG’s interpretation would make clause 12.3 a pointless exception to the other prohibitive or restrictive provisions of the agreement, and that such a construction would provide very little scope for achieving the purpose of clause 12.3 described above.

The expert evidence was also consistent with this.

While the Licence Agreement did (by clause 1.4) expressly prohibit the software being installed at any location other than the “designated location”, the clause had to be read in context and clause 12.3, as SAG acknowledged, did permit RWWA to use the software “for archival or emergency restart purposes”. Clause 1.2,which prohibited “use” on anything other than the designated hardware, similarly had to be read down.

If the terms of the licence had not been capable of construction to permit this (fairly typical) type of disaster recovery strategy, however, s 47F would not have protected RWWA. S 47F provides a limited defence for “security testing”. However:

55 What s 47F(1) permits is the reproduction of the original copy for the purpose of testing the security of that copy. The original copy is the copy RWWA is licensed to use. The permitted testing is of the security of that copy. The passages from the primary judge’s reasons quoted at [49] appear to us to be saying that the testing of the functionality of the DR Copy at the DR Site is the testing of the security of the original copy at Osborne Park. That, in our view, is not what s 47F(1) authorises. On the facts of this case, what it permits is the making of a copy of the installed copy at Osborne Park for the purpose of testing the security of the installed copy. As it seems to us, the primary judge’s construction of the provision enables the DR Copy at the DR Site to be tested so as to determine its efficacy should the installed copy at Osborne Park for some reason be no longer available.

and, given the unchallenged expert evidence on the issue:

68 For the above reasons we are unable to accept RWWA’s contention, which the primary judge appears to have adopted, that “testing … the security of the original copy” extends to what was done at the DR Site, namely testing of the DR Copy to ensure that the System would be capable of being restarted and operated without the loss of data. In our view, “testing … the security of the original copy” should be confined to testing the original to ascertain its security from unauthorised access or against electronic or other invasion.

The Court noted, but did not need to consider the correctness, of his Honour’s conclusion that s 47C would also have protected RWWA.

So, an appellate level illustration providing some confirmation of how strictly the the Courts will approach the gobbledygook enacted in the special computer program defences. Make sure you draft your software licences to provide the protection actually needed – especially if the software needs to be used in a “disaster recovery” situation.

Software AG (Australia) Pty Ltd v Racing & Wagering Western Australia [2009] FCAFC 36 (Spender, Sundberg and Siopis JJ)

Bushfires and IP Australia

Monday, March 30th, 2009

IP Australia has a policy if you have missed, or are about to miss, a deadline because of The Bushfires.

(Un)Official Notice – at the time of writing (it may be fixed by the time you’re reading) the link to the Official Notices doesn’t take you to anything specific.

Crown use

Sunday, March 29th, 2009

No, it’s not the long awaited response to the CLRC’s report; instead, IP Australia and the Attorney-General’s Department have published an information sheet about Crown Use of intellectual property (in Australia).

As you will already know all about this, it could be a useful starter for your clients.

Read the glossy (pdf) here.

Beery barefeet on appeal

Friday, March 27th, 2009

Curiouser and Curiouser!

The Full Court has affirmed the trial judge’s finding that Gallo’s registration of the trade mark BAREFOOT for wine should be removed for non-use. However, the Full Court has overturned his Honour’s finding that Lion Nathan’s use of Barefoot Radler for beer did not infringe that registration (before it was removed). Consequently, the Full Court has found that Lion Nathan did infringe the registration up until the date the registration was removed from the Register.

Gallo acquired the trade mark by assignment. Neither it nor the assignor had ever consciously used it in Australia.  However, some wine bearing the trade mark had made their way into Australia for resale via, presumably, a parallel importer. (More detailed summary of the facts from the decision at 1st instance here and here – the internal links are broken I’m afraid.)

On the question of whether or not Gallo (or its predecessor) had used the trade mark as a trade mark, the Full Court said:

34 In our opinion, the conclusion of the primary judge was correct. The contention of Gallo that an owner of a registered trademark uses the mark in Australia simply because goods to which the owner (or an authorised user) has affixed the mark are traded in the ordinary course of trade in Australia should be rejected.

and

38 …. The essence of Gallo’s case in this matter is this is all that is necessary to establish use in Australia by the manufacturer or producer. However, that is not what the Full Court said. Projection by the manufacturer of goods bearing its mark into the course of trade in Australia was the other factor which, together with the display, sale or offering for sale, led to the conclusion that there had been use of the mark in Australia by the manufacturer and its owner. We think fairly plainly what the Full Court was saying was that for there to be use in Australia of the mark by the owner, the owner of the mark must have engaged in conduct of some type which the owner might reasonably contemplate would result in dealings with its goods marked with its mark in Australia while the goods were in the course of trade.

As a matter of interpretation, the Full Court concluded, contrary to Lion Nathan, that the trade mark could be expunged only from the date the Court made the order under s 101.

This was particularly significant because the Full Court, as noted above, found that Lion Nathan’s use infringed the trade mark while it was registered.

First, the Full Court rejected the trial judge’s finding that beer and wine were not goods of the same description:

72 The primary judge accepted that there were a number of factors which supported the view that Lion Nathan’s beer and wine were goods at the same description. They were both alcoholic beverages and generally distributed by this same major wholesale distributors. The beer was intended to be an appealing alternative to wine and in developing the product, Lion Nathan deliberately set out to attract people who did not drink beer. Indeed it was developed with the deliberate objective of enticing consumers who previously drank wine but not beer. Producers of alcoholic beverages are no longer confined to the production of beer, as opposed to wine, and large producers of alcoholic beverages now produce a range of products and market themselves as doing so. Companies which were once brewers now market and distribute a range of products including beer, wine, spirits, cider and non-alcoholic drinks. Wine and beer are now frequently distributed by the same retailers. We agree that these matters point, and in our opinion point convincingly, to Lion Nathan’s beer and wine being goods of the same description.

73 The considerations which led his Honour to reach the opposite conclusion are, in our opinion, of materially less significance. The first, which concerned the origin of the goods, focused on the manner of manufacture of beer on the one hand and wine on the other. While this clearly establishes that they are not the same goods, it is unlikely that this difference would be significant to the consuming public if, as his Honour found, large producers of alcoholic beverages produce a range of products. Additionally it is important to bear in mind that this issue is being considered in the more general context of whether consumers might see the goods as having the same trade origin: Southern Cross at 606. The same can be said of the next consideration relied on by his Honour, namely the specific manner of sale in restaurants on the one hand and retail outlets on the other. If large producers of alcoholic beverages are producing a range of products then the fact that the wine might be sold in a slightly different way would not be a difference of significance to the consuming public who may come to consider the trade origins of Lion Nathan’s beer. The next consideration was the manner in which beer is consumed, that is drunk for its refreshing qualities, and not, like wine, consumed in a “sipping fashion”. For our part, we doubt this is a relevant consideration. Nor do we think the last consideration, the detailed corporate structure of Lion Nathan, is of any real significance.

Then, the Full Court upheld the trial judge’s finding that Lion Nathan’s BAREFOOT RADLER trade mark was deceptively similar to Gallo’s trade mark.

Finally, the Full Court rejected Lion Nathan’s attempt to rely on the (rarely used) proviso to s 120(2)(b) which provides:

However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.

The Full Court foreshadowed that this was a tough requirement to hurdle:

76 …. However, any conclusion about deceptive similarity would usually inform consideration of whether the actual use was likely to deceive or cause confusion. In a sense, an affirmative answer to the question of whether the alleged infringing mark was deceptively similar would be the starting point. If it was, then it would, in many instances, render it more likely (though not inevitable) that the actual use of the allegedly infringing mark was likely to deceive or cause confusion. Also relevant, in our opinion, would be the matters considered in determining whether the alleged infringer’s goods are of the same description as the goods in respect of which the registered mark is registered.

Lion Nathan had not satisfied this requirement here. The facts that the usage was on beer, the beer was packaged in six packs and in retail stores from the “beer” section did not help:

77 …. The use of the image of a bare foot with the words “BAREFOOT RADLER” would be more likely to reinforce the significance or prominence of the word “BAREFOOT”. The fact that the allegedly infringing mark was on beer packaged in the way described does not, in our opinion, tell against the likelihood that a person looking at beer packaged in this way would think that the beer originated from Gallo. If, in a retail liquor outlet, there was beer bearing the trade mark “BAREFOOT RADLER” where the word “RADLER” was the description of a type of beer and also wine with the trade mark “BAREFOOT” immediately followed by a description of the type of wine (by reference to grape type), then there is, in our opinion, little room to doubt that it is likely many would view the former as originating from the producer of the latter.

The matter will be remitted to the trial judge to deal with remedies. Wonder what the damages will be?

So, it would seem you should bring and conclude your non-use action before you launch the product. That will require a client with a very long term commitment to the brand!

E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27 (Moore, Edmonds and Gilmour JJ)

A tool bar for detecting hosts etc.

Thursday, March 26th, 2009

If you are trying to work out who is hosting a website and where it is being hosted, you might be interested in this discussion of the Netcraft toolbar.

Note:

  1. this is only for those using Firefox or Internet Explorer.
  2. Use at your own risk!

Pirated software at work

Wednesday, March 25th, 2009

Over at Slashdot you will find some thoughtful (and practical) suggestions about what to do (from the in-house IT guy’s perspective) if you (or your client) finds pirated software at work – be warned, you have to scroll through the usual behind the shelter shed contributions.

Lid dip: Marty

Adwords and Keywords

Wednesday, March 25th, 2009

Prof. Gans over at CoreEcon takes issue with Eric Clemons’ paper in which Prof. Clemons appears to be arguing that Google’s business model – using sponsored links and paid advertising triggered by keywords and the like – is based on misdirection.

Now, if Prof. Clemons were right, that could be a reason for contending that the use of trade marks in keywords etc. is (at least) misleading or deceptive conduct. But, as noted, Prof. Gans puts a very big question mark over this.

Now, neither of the Professors is dealing with the legal arguments, but I do wonder why people would click on (keep clicking on) Google’s sponsored links on the scale which they apparently do if the sponsored links etc. were in fact misdirecting them.

Whatever happened to the case which the ACCC brought against Google here? 

IPKat overlooks the work in progress in the EU here.

    Free trade Dream Time

    Tuesday, March 24th, 2009

    Australia has entered into Free Trade Agreements (1) with NZ and ASEAN and (2) with Chile.

    ASEAN as a bloc is apparently our largest trading partner.

    Chapter 13 deals with Intellectual Property. Various fact sheets, e.g. Pharmaceuticals, deal with our exports or imports thereto.

    Minister Crean’s press releases here and here.

    AANZFTA here and chapter 13 here; Australian guide with links to all sorts of things. Trade overview. The words “may” and “shall endeavour to” feature quite a lot in Chapter 13.

    Australia-Chile FTA index and chapter 17 (IP) here.

    Hey, our 12 month grace period for filing patents will work in Chile, see art. 17.22! Can’t spot a corresponding provision in the AANZFTA? Also, to facilitate domain name dispute resolution, Chile has agreed to adopt an UDRP-style dispute resolution process for its cc.TLD (assuming it doesn’t already have one, of course).

    Trying to appeal a finding that you copied

    Monday, March 23rd, 2009

    (and therefore infringed???) is very hard:

    Carlisle lost its appeal against the finding that it infringed Barrett Property Group’s copyright int eh Seattle and Memphis – the second of the alfresco cases.

    51 In our opinion, the appellant’s submissions must fail.

    52 The context in which the appellant’s submissions must be considered is an appropriate starting point. Two points are important. First, it is not suggested by the appellant that a judge, after a proper examination of the evidence, could not reach the conclusions which were in fact reached by the primary judge. In our opinion, a judge, after a proper examination of the evidence, clearly could reach the conclusions which were in fact reached by the primary judge. The handwritten notes of Mr Megens and of Mr Feldman make no mention of the Rochester and neither of them had any recollection of any mention of the Rochester. It is undoubtedly true to say, as the primary judge did, that, in view of the alleged importance of the Rochester to the derivation of the design, one would have expected that the legal practitioners at the conference would have made a note of it had it been mentioned. Secondly, Mr Megens gave his evidence in chief by affidavit and by way of a limited number of oral answers to questions. His affidavit referred to his handwritten notes and typed notes of the conference which notes were exhibited to his affidavit. He did not give any further evidence of his recollections of the conference in his affidavit.

    The Court then considered each of the appellant’s arguments and rejected them or found that the primary judge had taken the point into account.

    Carlisle Homes Pty Ltd v Barrett Property Group Pty Ltd [2009] FCAFC 31

    Kim on the monopoly in the alfresco.