Archive for September, 2010

Anti-counterfeiting Down Under

Tuesday, September 28th, 2010

The Feds (aka the Australian Federal Police in co-operation with Customs) executed 21 search warrants on 14 September and apparently

Thousands of counterfeit goods were seized, including counterfeit computer software, CDs, DVDs and luxury items such as bags and jewellery.

Lid dip: Marine Guillou. The AFP issued their own Media Release.

In typically timely fashion, Stephen Stern will be giving a Tech IP Seminar:

Australian Customs And Border Protection Service – How To Access This Service To Protect Trade Marks And Stop Replica Products At The Border

in Melbourne on 12 October.

Steve has probably forgotten more about this subject than I’ve learned so, if you act for a brand owner who could be exposed, you should get yourself along to find out more.

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Talking head, animated slideshow

Monday, September 27th, 2010

I am presenting the annual copyright update for the Victorian chapter of IPSANZ in Melbourne on 7 October at the RACV Club.

Copyright – Selected Case Law Update 2010

Registration and details here.

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The penalty for contempt

Monday, September 20th, 2010

Previously, I had noted that the remedy for breaching an injunction is proceedings for contempt of court.

Tracey J, having found various respondents in contempt arising from breaches of injunctions made in 2004 not to infringe Ugg Australia’s copyright and trade marks in connection with the manufacture and sale of ugg boots, has now handed down the punishments:

  • One of the individual respondents, a Mr Vladimir Vaysman, was sentenced in the No. 8 proceeding to 3 years’ imprisonment for the most serious contempt
  • A second principal contemnor, Mr Josef Vaysman (the father of Vladimir) has been sentenced to 18 months imprisonment, with a minimum of 6 months to be served and the balance suspended for 2 years, in the No. 9 decision,
  • a third principal, Victoria Vaysman (the daughter of Josef, and sister of Vladimir) received a sentence of 12 months, with a minimum of 2 months to be served and the balance suspended for 2 years in the No. 8 decision;
  • all also received other, shorter terms of imprisonment for lesser breaches to be served concurrently.

It would appear that copyright owners over in the UK have secured their first imprisonment for ‘camming‘, although that seems to be for a criminal offence rather than contempt.

Deckers Outdoor Corporation Inc. v Farley (No 9) [2010] FCA 1007

Deckers Outdoor Corporation Inc. v Farley (No 8) [2010] FCA 657

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A fairly close look at ACTA

Thursday, September 16th, 2010

Terry Hart embarks on a fairly detailed comparison of (what was known about the draft) ACTA and US copyright law to see how much would need to change “ACTA: Thought for FUD” in 4 parts

Part 1

Part 2

Part 3

Part 4

One might well be very sceptical about something being negotiated “in private”. Nonetheless, if you get past the reliance on proposed art. 1.2 as “not requiring new laws”, it is definitely worth a read. If nothing else, you will come away very much better informed.

Lid dip: Ben Sheffner

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Talk on keywords, adwords and trade marks

Wednesday, September 15th, 2010

For anyone who may find some value in them, I have posted the slides from my IPSANZ talk ‘Of Keywords, Adwords and Trade Mark Infringers at Slideshare.

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Appeal sinks luscious LIPS

Wednesday, September 15th, 2010

One month after the appeal was heard, the Full Court has rejected Nature’s Blend’s appeal that Nestlé used Luscious Lips as a trade mark.

Nature’s Blend argued first that the trial judge had wrongly focused on the character of Nestlé’s use instead of the proper meaning of the Nature’s Blend mark. As the mark was registered for all confectionery, not just “lips”, it was said to be inherently distinctive. The Full Court, however, rejected this requirement and re-affirmed that the test was to examine whether or not the way Nestlé used the mark (the “impugned use”) would be understood by ordinary consumers as functioning as a badge of origin.

Nestlé’s Luscious Lips are part of its ‘Retro Party Mix’ pack. The expression ‘luscious Lips’ appeared only on the back of the packaging in the expression:

That’s right! All your old favourites are back, so put on those flares & get ready to party! Up to 7 lolly varieties including … cool COLA Bottles, those radical Racing Cars, yummy Honey flavoured Bears, totally freeeekie Teeth, luscious Lips, partying Pineapples and outrageous Raspberries.

You can see the front of the packaging at the product’s very own facebook page.

Nature’s Blend contended that the trial judge had improperly diluted the significance of the ‘luscious Lips’ expression on the Nestlé packaging by reference to the presence of other, more prominent brands.

This issue can be tricky because the Courts have long held that one does not take into account extraneous matters such as disclaimers or the presence of other trade marks when considering the question of deceptive similarity. On the question of use as a trade mark, it is permissible.

While the Full Court acknowledged that the fact that other trade marks were used more prominently on the packaging did not preclude ‘luscious Lips’ from being used as a trade mark, the characterisation of the impugned use depended on the particular usage in question in its own particular setting. In this case, the presence of ALLEN’s and Retro Party Mix did in fact undercut the likelihood that consumers would read ‘luscious Lips’ as a trade mark.

The Full Court also agreed that Nestlé had used the trade mark in good faith as a description.

Nature’s Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117 (Stone, Gordon and Mckerracher JJ)

Comment on decision at first instance.

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No copyright in newspaper headlines

Wednesday, September 8th, 2010

Bennett J’s reasons for ruling that Fairfax does not hold copyright in the Australian Financial Review’s headlines have now been published.

In conclusion, Bennett J stated:

159 As to the subsistence of copyright in the contended works, I have reached the following conclusions:

  • None of the ten selected headlines are capable of being literary works in which copyright can subsist.
  • Fairfax has failed to prove that any of the ten selected Article/Headline Combination is a discrete work of joint authorship in which copyright can subsist.
  • Copyright subsists in the Article Compilation and the Edition Work in each of the June and November editions as original literary works and this copyright is owned by Fairfax.
160 Reed takes the whole of each headline. As to whether Reed, in reproducing and communicating headlines of the AFR as part of the Abstracts, takes a substantial part of any of the contended works:
  • Even if the Article/Headline Combination constitutes a copyright work, Reed does not take a substantial part of such a work.
  • Reed does not take a substantial part of either the Article Compilation or the Edition Work.
161 Although it is not necessary to decide whether Reed is entitled to rely on the defences claimed, I nonetheless consider that:
  • Reed’s conduct in reproducing and communicating the AFR headlines as part of the Abstracts is a fair dealing for the purpose of reporting news such that Reed’s conduct would not constitute an infringement of copyright by reason of s 42(1)(b) of the Act;
  • Fairfax is not estopped from asserting that Reed’s reproduction and communication of AFR headlines in the Abstracts as part of the ABIX service amounts to infringement of its copyright in the contended works.
162 It follows that Fairfax’s application should be dismissed.

[160] is strikingly reminiscent of her Honour’s ruling at first instance in IceTV. As you will see from [161], her Honour also addressed the fair dealing defence and rejected Reed’s argument that Fairfax was estopped.

While the courts have been careful not to say there can never be copyright in film titles and the like, one wonders, if there wasn’t copyright in The Man Who Broke The Bank at Monte Carlo, whatever were they thinking?

The Australian (rather ironically given News Corp’s campaign) has some fun at Fairfax’ expense picking out some key points and repeats Alan Kohler’s question what would they have achieved commercially even if they succeeded?

Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd [2010] FCA 984

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Electronic filing / service in the Office (IP Australia)

Friday, September 3rd, 2010

Patentology looks at the problems that arise with serving documents in Opposition proceedings before the Commissioner / Registrar (i.e. IP Australia) (a) electronically and (b) outside business hours.

Obviously (well, not so obviously when you’re used to dealing with the pragmatic approach of the Federal Court), if the material is served outside business hours, it is not served until the next business day, but it may be even more complicated if you are trying to effect service electronically.

All very quaint and so 19th century, but fatal!

The rules are rather different than, for example, the postal rules which apply in a contractual relationship; but it isn’t really a contractual relationship.

Where personal service is not required, the Federal Court Rules (O7 r4 and 4A) permit service by document exchange, facsimile or email, however, they (O7 r7) require that the party on whom service is to be effected to have specified the facsimile number or email address to have been specified in a Notice. O7 r4 and 4A also make provision for the time of service. I suspect, however, that these are deemed times of service which would be displaced if one could prove an earlier time of service.

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More on ‘Whiskas Purple’ TM

Thursday, September 2nd, 2010

Tim Golder, a partner at AAR, and Sandi Montalto have published an article with their take on the Federal Court’s recent decision directing that Mars’ trade mark application for the colour ‘Whiskas Purple’ proceed to registration.

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IPSANZ Annual Conference

Wednesday, September 1st, 2010

IPSANZ’ Annual Conference is on over the weekend beginning 10 September, at Noosa.

Apparently, there are still some places available.

From the USA, Judge Kathleen O’Malley and Covington & Burling’s George Pappas are the headline speakers.

Siobhan Ryan and I will be talking on aspects of trade marks’ use in the trade marks session.

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