Archive for February, 2011

Copyright reform agenda

Friday, February 25th, 2011

The Commonwealth Attorney General’s opening address to the Blue Skies conference is here.

Some excerpts:

International reforms:

While recognising that the challenges of the digital era are a global, not just national, issue, the Attorney General identified access to cultural works by the visually impaired as an area for early action:

An example of one area in which I am particularly keen to see a result this year in the international arena is overcoming copyright barriers for visually impaired people in accessing copyright works in suitable formats. I understand that internationally, only five per cent of all works are available in accessible formats for the visually impaired.  This is an unacceptable statistic and an acute problem for developing countries.

If there were hisses and boos from the audience, let’s hope it was for the right reasons!

On the domestic front:

  • a straight bat played to yesterday’s iiNet decision
  • a consultation paper will be released soon on who should be the beneficiaries of the ‘safe harbour‘ regimes, currently limited to the indecipherable “carriage service providers

For example, the definition excludes entities that do not provide network access but provide online services – Google and Yahoo are obvious examples of this category.

(That is the Attorney General’s example, not mine.)

  • possible introduction of a new “ad hoc” exemption to the technological protection measures (see e.g. s 116AN(9))

The Copyright Advisory Group has approached me for an additional exception to allow circumvention of technological protection measures for certain education purposes.

In particular they have sought an exception that would allow schools to change the format of films from DVD to MP4 for teaching purposes.

It would seem that what is to be referred still involves considerable clarification. One area flagged:

I believe there would be merit in examining some exceptions under our law in the context of the online environment and whether the correct balance exists.

Another which the ALRC will not be allowed to cut across:

It will be important to not duplicate work undertaken by Government on various policy issues, or in the course of related reviews -for example the Government’s Convergence Review.

So, it seems the Convergence Review will not just be “regulatory”.

Lid dip: Jane Treleaven

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iiNet still wins

Thursday, February 24th, 2011

Appeal dismissed:

Roadshow Films Pty Limited v iiNet Limited [2011] FCAFC 23

SMH report

However, Jagot J dissented and Emmett J warned:

Even though the Copyright Owners are not entitled to the relief claimed in this proceeding, it does not follow that that is an end of the matter.  It is clear that the questions raised in the proceeding are ongoing.  It does not necessarily follow that there would never be authorisation within the meaning of s 101 of the Copyright Act by a carriage service provider, where a user of the services provided by the carriage service provider engages in acts of infringement such as those about which complaint is made in this proceeding.  It does not necessarily follow from the failure of the present proceeding that circumstances could not exist whereby iiNet might in the future be held to have authorised primary acts of infringement on the part of users of the services provided to its customers under its customer service agreements.

Lid dip: Sarah Matheson

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Trans Tasman IP harmonising – patents

Tuesday, February 22nd, 2011

Prime Ministers Gillard (Australia) and Key (EnZed) have reaffirmed their countries’ respective commitment to closer co-operation in (industrial) IP matters between the two countries as part of the Trans Tasman Single Economic Market.

Apparently, over the next 5 years our countries will work towards:

  1. one regulatory framework for patent attorneys;
  2. one trade mark regime;
  3. one application process for patents in both jurisdictions; and
  4. one plant variety right regime.

According to the Statement issued on 16 February, the single application process for patents in both jurisdications will involve 2 stages. In the first stage, “both countries will rely on each other’s work, where possible, to build confidence and simplify processes”. In the second stage, there will be a “single examination process”.

Apparently, this will not involve changing either country’s patent laws as the Statement explains:

Examiners will grant or refuse applications under each country’s law. It will not be necessary for our laws to be identical.

and

Australia and New Zealand will operate as one integrated patent examination entity in practice – not in law. Both countries will retain flexibility to implement legislation and policies.

All this is forecast to take 3 years.

In contrast, streams 2 and 4 envisage one (trade mark or plant breeder’s) regime. That seems to indicate than one or other of our respective trade mark or plant breeder’s laws will need to change because (so far as I understand it – not very far at all, really) EnZed trade mark law is much closer to “modern” (ie. 1994) UK legislation and hence EU rules. Is it too soon to start boning up on ECJ rulings?

See also here and here.

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DGTEK v Digiteck II

Monday, February 21st, 2011

For DGTEK v Digiteck I, see here.

Non-use

Lander J considered that the goods covered by Hills’ registration should be limited as a result of non-use for the statutory period of 3 continuous years under s 92.

One interesting point on this part of the case is that Bitek had sought removal of all goods in its original application for removal. It accepted that evidence filed by Hills showed use in relation to some goods. Hills argued therefore the non-use application must fail since the application was directed to all goods.

Lander J rejected that argument:

[279] Because Bitek was seeking to remove “all of the goods” for non-use, Hills submitted that it was required to rebut the allegation of non-use of all of those goods. Hills argued that the evidence demonstrated use of the DGTEC trade mark in respect of several products including televisions, DVD players, CD players, decoders and cameras. On this basis, it argued that the application should be dismissed.
[280] In the alternative, Hills argued that Bitek could not alter its position or limit its application as an application for removal under s 92(2) is required to be in an approved form: reg 9.1 of the Regulations. The only application for removal in approved form is the initial application in which Bitek seeks to remove “all of the goods” in respect of which the trade mark is registered.
[281] Hills also said that Bitek should not be allowed to limit its application because to do so would lead to a denial of procedural fairness. …

Following a review of the cases, Lander J rejected these arguments:

[295] Hills’ argument that if the Court considered Bitek’s argument that the class of goods should be narrowed would result in a denial of procedural fairness should be rejected. Bitek’s concession means that it cannot have the relief it sought in the application but in seeking to argue that it is entitled to have the restricted relief it is thereby narrowing the scope of the inquiry. In those circumstances it could not be a denial of procedural fairness to allow the matter to proceed by reference to a narrower class of goods.

[296] I also reject Hills’ submission that the application must fail because there is evidence of use of some of its goods. I accept Bitek’s argument that the Court may exercise its discretion under s 101(2) to narrow the scope of the registration where the applicant establishes that a ground exists in relation to only some of the goods to which the application relates.

The power to excise some, but not all goods, was consistent with the policy of Part 9: to ensure that Register (and freedom to trade) was not cluttered with unused marks: [304] and consistent with the terms of s 101(2).

Lander J then refused to exercise a discretion against non-removal, apparently on the basis that any reputation that had been generated in respect of the goods on which there had been use did not spill over on to the goods for which there had not been use:

Bitek submitted that s 101(3) does not save Hills’ registration because there is no evidence of use of similar or closely related goods. The only evidence of use relates to a limited group of products which Bitek mainly excluded from its application for removal.

[316] In my opinion, Hills’ argument should be rejected. The fact that it has used its mark in respect of goods which are similar to those goods marketed by Bitek is not in my opinion to the point.

[317] The circumstance which is addressed in s 101(4) is whether Hills has used the mark in respect of similar goods to those to which the application relates. In Hills’ case it has not used the goods except in relation to set-top boxes, remote controls, digital video recorders with hard drive, televisions, CD and MP3 players, DVD players, micro sound systems, iPod docking speakers and web-based cameras. I do not think there is any evidence to suggest any use of any similar goods to those proved used by Hills which ought to be retained in the statement of goods.

Perhaps rather surprisingly given the finding of non-use in respect of some products, Lander J considered Hills’ specification of goods should be amended to read:

Digital and electronic products including set top boxes, remote controls, digital video recorders with hard drive, televisions, CD and MP3 players, DVD players, micro sound systems, iPod docking speakers and web-based cameras. (my emphasis)

Infringement

Lander J accepted he was bound be the decision in Gallo that removal of a mark for non-use operated only from the date of removal of the mark from the Register.

Bitech admitted it had used DIGITECH since 2003 in respect ofantennas, cables (including speaker, coaxial, data and security), plasma TV brackets, leads, AV switch selectors, connectors, wall plates of various types, splitters, TV mounting hardware, video senders, video intercoms, industry tools, remote controls, multi-switches, set-top boxes, cable ties and cable clips.

Ultimately, his Honour found that Bitek infringed by reason of its use on set-top boxes and remote controls, but not the other products.

Consistently with his Honour’s earlier findings, DIGITECH was of course deceptively similar to DGTECH. Apart from set-top boxes and remote controls, the goods for which Bitek had used its trade mark were either covered by its own (now) registration (s 122(1)(fa)) – and all use had been after the application date – or were not shown to be within the scope of Hills’ registration or goods of the same description. S 120(3) also could not be invoked as Hills’ trade mark was not well-known.

Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94

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DGTEK v Digiteck I

Friday, February 18th, 2011

Lander J has upheld the Registrar’s decision to allow Bitech to register DIGITEK for

“TV installation accessories including external TV antennas, none of the foregoing being set-top boxes” in class 9

in the face of Hills’ prior registration for DGTEC, DGTEK and DGTECH in respect of

“Digital and electronic products including televisions, video players, DVD players, CD players, decoders and cameras” also in class 9.

While the competing marks were deceptively similar, they were not in respect of the same goods or goods of the same description. At [110]:

…. The goods are fundamentally different. The brown goods which comprise the Hills products are goods which are digital and electronic and provide the display to the consumer visually or audibly. Bitek’s goods are as they have said; goods which allow the brown goods to function. They provide support of varying types to the brown goods.

At [114]:

It is right as Hills contend that the goods are interdependent and they rely on each other for their functionality. However, that does not take the matter far. Whilst the goods cannot operate on their own, they are not interchangeable. They are not “commonly used as alternatives or substitutes” for each other:… They each have their uses which are quite separate and distinct even though when they are put together they assist to perform the end function: ….

His Honour also rejected argument that the goods passed through the same trade channels, distinguishing the Gallo Full Court’s finding that beer and wine were similar goods because:

[126] …. the clear impression I have is that goods of the kind under the Hills’ mark are marketed at the retail level and by direct advertising to consumers. TV installation accessories are mainly sold to professional installers at the wholesale level. A retail store may have for sale some accessories but only as a side line.
[127] Where a retail store does have TV accessories for sale it does not display them in the same manner as brown goods. Brown goods are used as the bait for consumers. Consumers want to see the product which will at least from the consumers’ point of view deliver the visual image or audible sound. TV installation accessories do not have the attraction from a sales point of view that brown goods have.
Lander J agreed with Kenny J’ ruling in McCormick that the s 60 ground of opposition could defeat an application independently of the operation of s 44(3).
However, his Honour rejected Hills’ opposition on the basis of the old form of s 60: although Hills proved it had more than $20 million of sales under its DGTECH mark of set top boxes, there was simply no proof that it had a reputation in the mark, the sales might well have resulted from the fact that Hills had a marketable product (apparently it was the only set top box in the market at the time). His Honour noted Kenny J had recognised in McCormick that it was often common to infer reputation from sales and advertising figures. It was not appropriate, however, to do so in this case:
[195] The evidence by itself does not prove any reputation at all. It may tend to prove that the goods sold under the mark are very marketable goods. In this case the goods being marketed under the DGTEC mark were set-top boxes which having regard to changes in the industry were marketable to persons who wanted to upgrade their analogue equipment.
[196] I do not think the bald evidence supports a finding of a reputation in the mark.
[197] In my opinion, the Hills’ mark had not acquired a reputation in Australia of the kind that is contemplated in s 60. The mark had only been used on set-top boxes prior to the priority date and although Hills, and previously the company, had sold in excess of $20 million worth of set-top boxes, there is no evidence that the mark under which the set-top boxes had been sold had a reputation of the kind contemplated in this section.
[198] For that reason alone, I would have dismissed Hills’ objection under s 60.

Striclty obiter

Even if Hills had established a reputation, Bitek’s mark would not have been like to deceive or cause confusion as a result of that reputation, so the old form of s 60 still would not have applied.

[208] Assuming, contrary to my opinion, that the Hills’ mark had acquired a reputation, it had only acquired, at the priority date, a reputation in respect of set-top boxes. Hills did not contend for any other reputation. If that was the case, the use of the Bitek mark in respect of its goods was not likely to deceive or cause confusion because the goods were unrelated to a set-top box. Bitek’s goods specifically excluded set-top boxes. A consumer wishing to acquire a TV installation accessory or external antenna bearing the Bitek brand would not in my opinion be likely to be confused or deceived as to the origin or provenance of those products because of Hills’ mark’s reputation in set-top boxes. For that further reason, Hills could not rely upon s 60 to defeat Bitek’s application for registration.

In case it became necessary on appeal, Lander J would have rejected Bitek’s attempt to rely on s 44(3) honest concurrent user or “other circumstances”.

Bitech failed on “honest concurrent user”  and “other circumstances” because the use occurred after the priority date.

Under “other circumstances”, Bitek sought to rely on the inconvenience it would suffer through loss of the goodwill it had built up. If it had been permissible to take use after the priority date into account under “other circumstances”, Lander J would still have rejected this:

[187] However, I would not have exercised my discretion in favour of Bitek under s 44(3)(b) even if events after the priority date were relevant for two reasons. First, because Bitek had not used the mark prior to the priority date. It did not make any sales under the brand. Secondly, its case was that its goods are not sold by reference to its mark. As Hills contended, Bitek’s case was that the consumers of its goods are unlikely to be concerned with brands because brands are unimportant with TV installation accessories.

[188] If that is so, then it seems to me that little goodwill could have attached to the brand or the mark since it has been used and in those circumstances where there is a finding under s 44(1), there would be insufficient evidence to support the exercise of discretion in favour of the applicant for registration. If Bitek is right that its consumers do not depend upon brand or mark, then little would be lost to Bitek in arranging for a mark which is not deceptively similar to the Hills’ mark.

Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94

ps The decision also addresses removal for non-use and infringement issues which, in view of the length of this post, will need to be the subject of a later post.

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Patentable subject matter in Australia

Wednesday, February 16th, 2011

The Minister has released ACIP’s report into what should be patentable subject matter under Australian law.

At the moment, s 18 defines a ‘patentable invention’ and the Dictionary in Sch. 1 defines and “invention” as:

“invention” means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention.

and, from NRDC (for example) :

Section 6 of the Statute of Monopolies provides that the declarations of invalidity contained in the preceding provisions of the Act “shall not extend to any letters patents and graunts of privilege . . . hereafter to be made of the sole working or makinge of any manner of new manufactures within this realme, to the true and first inventor and inventors of such manufactures, which others at the tyme of makinge such letters patents and graunts shall not use, soe as alsoe they be not contrary to the lawe or mischievous to the state by raisinge prices of comodities at home, or hurt of trade, or generallie inconvenient”

From the Key Points and recommendations:

We recommend changing the Patents Act 1990 to codify the principles of inherent patentability (as developed by the High Court in the NRDC case and in subsequent Australian court decisions). …

Consequently:

These reforms envisage amending the legislation by:
  • replacing the words ‘is a patentable invention’ in subsections 18(1) and18(1A) with the words ‘is patentable’;
  • replacing the words ‘if the invention, so far as claimed in any claim’ in subsections 18(1) and 18(1A) with the words ‘if it’;
  • replacing the current words of paragraphs 18(1)(a) and 18(1A)(a) with the words ‘an artificially created state of affairs in the field of economic endeavour’;
  • changing the definition of ‘invention’ in Schedule 1 to be ‘the subject matter of any claim’; and
  • deleting the definition of ‘patentable invention’ in Schedule 1.

So far, so good. These proposals would keep the teleological approach adopted in NRDC that was (and is) so forward looking and which has served us so well. It looks like they would also do away with all the problems of the “threshold” requirement introduced by Phillips v Mirabella (the nature of the problem is laid out at paragraphs 19 to 27 of Bristol-Myers Squibb v Faulding).

Then, things start to get a bit hairy:

Because the principles of inherent patentability address only the economic goals of the patent system, we also recommend specific and general exclusions to address certain ethical concerns that may arise. The current specific exclusion preventing the patenting of human beings and biological processes for their generation should be retained. Instead of the general inconvenience proviso, a general exclusion would preclude the patenting of inventions the commercial exploitation of which would be wholly offensive to the ordinary reasonable and fully informed member of the Australian public. (my emphasis)

Now, I would be happy with the recommendation insofar as it gets rid of the “general inconvenient proviso” as no-one knows what it means, or is intended to mean. But to replace it with an exclusion of “something wholly offensive to the ordinary reasonable and fully informed member of the Australian public”? That will be “fun”.

In Bristol-Myers Squibb, Finkelstein J pointed out (especially at 140 to 142) that courts are not particularly happy hunting grounds for that type of inquiry; still less so, one might have thought, the Commissioner (whomever he or she might be). For example, in a different field, Lady Chatterley’s Lover was famously offensive, although apparently no more. Today, we have controversy over whether or not to fly some people at taxpayer’s expense to funerals (here vs here and here). Which side of that debate represents the ordinary reasonable and fully informed member …?

Meanwhile, the Senate’s Legal and Constitutional Affairs Committee is waiting (until 25 February 2011) for your submissions on the Patent Amendment (Human Genes and Biological Materials) Bill 2010, the private Senators’ bill (introduced by Senators Coonan, Heffernan, Siewert and Xenophon) to amend the Patents Act 1990 to prevent the patenting of human genes and biological materials existing in nature.

ACIP’s report.

ACIP’s press release.

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Wild Geese survive Wild Turkey attack

Monday, February 14th, 2011

Anita Brown, over at IPanz, reports on Cowdroy J’s exercise of discretion to leave the Wild Geese trade mark for whiskey on the Registrar, even though non-use throughout the relevant statutory period was proved, on the basis of the perceived risk of public confusion.

His Honour also addressed the standing requirement for a non-use action.

His Honour’s reasons in full:

Austin, Nichols & Co Inc v Lodestar Anstalt [2011] FCA 39

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Convergence review

Friday, February 4th, 2011

It’s never too late to discover a government inquiry (at least before the legislation comes through)!

Back in December, the Minister for Broadband, Communications and the Digital Economy announced a Convergence Review.

Media Release, draft Terms of Reference and “home page“.

Given its departmental provenance and some of the discussion in the Background Paper, it might be thought the Review is mainly targeted at the Telco Act, the Radiocommunications Act and the Communications/Media regulator.  There are some interesting straws in the wind for IP however:

First, the first draft term of reference:

In light of convergence, the Committee is to review the current policy framework for the production and delivery of media content and communications services. The Committee is to:
  1. develop advice for Government on the appropriate policy framework for a converged environment;
  2. advise on ways of achieving it, including implementation options and timeframes where appropriate; and
  3. advise on the potential impact of reform options on industry, consumers and the community.

(my emphasis).

In the Background Paper, there are also some interesting IP-related aspects:

So, at pp. 14-15:

Another trend affecting business models is the trend towards the ‘granular’ nature of media consumption; for example consumers can now download songs, not albums; watch specific TV shows on demand and not the linear programming of a channel, and read a single news article through an online search engine, rather than purchase and read the day’s newspaper edition. In the online world the consumer is in the driving seat of their own media and entertainment consumption patterns with more choice and control than ever before. In addition to the rise of competing online platforms and fragmentation of the consumer market, another challenge to established business models is that digital revenues are not yet matching analog ones. In 2008, NBC Universal CEO Jeff Zucker famously stated that media companies should not ‘trade analog dollars for digital pennies’24. By 2009, he quipped that this may have increased to ’digital dimes’25. While online revenues are growing and the gap is reportedly closing26, ensuring ongoing investment while balancing the difference between analog dollars and digital cents presents challenges to established media companies.

On p. 16 under the heading ‘Policy settings that encourage Australian, local, and children’s content’, the discussion about Australian content quotas imposed on tv and radio, ends:

The rise of these alternative audiovisual services and the growing fragmentation of the media market raises questions as to appropriate policy settings to ensure the ongoing production and distribution of Australian media content which reflects and contributes to the development of national and cultural identity.

(Their emphasis)

And, of course, the paranoid among you out there in cyberspace, will no doubt recall the rather cavalier treatment (e.g. here and here) meted out to iiNet before it won the (first round of) the Roadshow case.

Now, you could have fun (and spend lots longer than a year) on this: e.g. Prof Gans lambasts the authors (and, I guess, indirectly the other copyright owners who have similar ideas), but (for balance) also the App Store and, of course, until the Floods came, we were all twisted up with Gerry Harvey wondering if putting a GST on online purchases (overseas) will change the fact that you can often buy things online from overseas for prices 30-40% less than in stores here. Assuming of course you can “buy”: compare the tv shows or movies or books in the iTunes store or on Kindle or audible from Australia to what you can get with a US address, maybe. Somehow, I have avoided mentioning Google so far. Wonder how many examples the Review will come up with which lead to peeling back regulation?

Now, the time for commenting on the draft Terms of Reference closed on 28 January, so the scope of the review may become clearer. Then, there will be an independent committee to conduct the review, with their report scheduled for 1st quarter 2012.

One to watch!

Lid dip: Mary Wyburn

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Daily List

Tuesday, February 1st, 2011

For those of you with an iPhone (and who practise in the Victorian courts) a free app with the daily court listings:

The Daily List

Lid dip: James McDougall.

Now, if only there were one that covered the Federal Court and the Federal Magistrates Court! (Yes, I know you can get them emailed automatically.)

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