Archive for September, 2011

Gene (no)patenting bill going down

Friday, September 23rd, 2011

The Senate’s Legal and Constitutional Affairs Committee has, by majority, recommended that the Senate should not pass the Patent Amendment (Human Genes and Biological Materials) Bill 2010.

The Bill is a private members’ effort and, perhaps not surprisingly, the three of its sponsor still in the Senate dissented.

(At the time of writing, it is proving difficult to get a working link to the text of the Bill itself.) According to the EM it was considered desirable to expand the ban in s 18(2) on patenting human beings and the biological processes for their generation:

The purpose of this Bill is to advance medical and scientific research and the diagnosis, treatment and cure of human illness and disease by enabling doctors, clinicians and medical and scientific researchers to gain free and unfettered access to biological materials, however made, that are identical or substantially identical to such materials as they exist in nature.

These biological materials even if they have been isolated, purified or synthetically made have not been transformed from products of nature into products of humankind.

Thus the Bill (a) reinforces the applicability of the proviso in section 6 of the Statute of Monopolies within the meaning of section 18(1)(a) and section 18(1A)(a), (b) reinforces the applicability of the distinction between discovery and invention and (c) applies that distinction by expressly excluding from patentability, biological materials which are identical or substantially identical to such materials as they exist in nature, however made.

Notwithstanding this, it is rather difficult to find an Australian research institute researching genes etc. which supported the idea.

The ALRC of course had previously recommended leave well enough alone.

The issue doesn’t seem likely to go away. Apart from whatever the Bill’s sponsors and their allies may get up to, the majority concluded:

5.26 Like many of those who gave evidence, the committee prefers the solutions offered in the proposed amendments of the Raising the Bar Bill. However, the committee does not consider that the amendments in the Raising the Bar Bill will resolve all of the issues in the patent system. In the opinion of the committee, serious consideration should also be given to the proposals for legislative enactment of the patentable subject matter test and the general ‘ethical’ exclusion made in the ACIP report on patentable subject matter. Other reforms may also be necessary in the future, particularly in relation to ensuring equitable access to healthcare. In this context, the committee recognises that the Senate Community Affairs References Committee has indicated it will maintain a ‘watching brief’ in relation to the impact of gene patents in Australia.[5] Despite the need for further reform to the patent system, the committee agrees that removing an area of patentable subject matter, as proposed by the Bill, is not an appropriate solution to this complex set of issues. (emphasis and hyperlink supplied)

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Talking head, travelling slideshow

Thursday, September 22nd, 2011

My Copyright Update 2011 for IPSANZ travels to Adelaide on 28 September.

If you’re in Adelaide, hope to see you there.

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Google’s keywords advertising

Thursday, September 22nd, 2011

News just in:

Google’s placement of advertisements, generated through its AdWords program, on search results pages is not misleading or deceptive conduct contrary to s 52 TPA / s 18 ACL (I’m afraid you have to scroll down).  However, the advertiser’s use of another trader’s name in the headline for an advertisement which had nothing to do with that trade was.

So for example, the Trading Post used the AdWords program to generate an ad:

Kloster Ford

www.tradingpost.com.au New/Used Fords – Search 90,000 + auto ads online. Great finds daily!

The advertisements at the URL did not have anything to do with Kloster Ford or vehicles Kloster Ford was offering for sale.

The Trading Post therefore had engaged in misleading or deceptive conduct; Google did not.

Australian Competition and Consumer Commission v Trading Post Australia Pty Ltd [2011] FCA 1086

 

 

357 paragraphs to read now (or a bit later)

Lid dip @wenhu

SMH report

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Coke v Pepsi

Wednesday, September 21st, 2011

The war between Coke and Pepsi over the shape of a bottle is alive and well.

Last week the parties were in court fighting over discovery.

By the tie of the hearing what was actually in dispute was quite narrow. In the end, Dodds-Streeton J ruled that Coca Cola should be allowed to get discovery amongst other things from Schweppes, Pepsi’s bottler in Australia, relating to whether or not Schweppes had sought any indemnities from Pepsi, either before or after the proceedings commenced. Schweppes et al. conceded discovery relating to any request before proceedings commenced.

It was argued that such discovery was potentially relevant to the respondents’ state of mind on the basis of the Australian Woollen Mills‘ principle that a defendant who tries to pass off is giving a sort of expert evidence that deception or confusion can be expected.

Given the concession that discovery directed to requests before proceedings commenced and there was no suggestion that the further discovery was oppressive, Dodds-Streeton J considered that discovery of any requests made after proceedings were commenced was appropriate as:

in passing off and s 52 actions, the applicant’s reputation is to be assessed at the date of the conduct complained of. As Gummow J explained in Thai World Import & Export Co Ltd & Anor v Shuey Shing Pty Ltd & Ors (1989) 17 IPR 289 at 302, that principle reflects that the reputation is not to be taken to be eroded by infringing activities which occurred before proceedings are instituted.

Other cases appeared to consider that the relevant time in (what used to be called) s 52 actions was still unresolved, but in passing off the relevant time was when the respondent commenced its conduct. (See e.g. Playcorp v bodum [54] to [62]).

Dodds-Streeton J’s reason provide a fair bit more detail about the nature of Coca-Cola’s claims; not so much about Pepsi’s defence, although apparently it had been using its “new” bottle shape since 2007 (that of course would still be well within the 6 year limitation periods).

The orders may also provide you with a useful starting point for discovery requests:

Coca-Cola Company v Pepsico Inc [2011] FCA 1069

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Optus TV Now … 2

Monday, September 19th, 2011

Follow last Friday’s post, in the twittersphere @wenhu points out that s 22(6) defines who the maker of a communication is:

(6)  For the purposes of this Act, a communication other than a broadcast is taken to have been made by the person responsible for determining the content of the communication.

(6A)  To avoid doubt, for the purposes of subsection (6), a person is not responsible for determining the content of a communication merely because the person takes one or more steps for the purpose of:

                     (a)  gaining access to what is made available online by someone else in the communication; or

(b)  receiving the electronic transmission of which the communication consists.

Example:    A person is not responsible for determining the content of the communication to the person of a web page merely because the person clicks on a link to gain access to the page.

It’s a good point, but I’m not sure at first impression why that doesn’t make the subscriber the maker.

Section 22(6) was introduced as part of the legislative clean-up of the mess made in the Music on Hold case –  to make it clear the telephone company was not communicating the music played by the subscriber to a caller when they were placed on hold. For example, para. 40 of the EM explains:

40.    The new s.22(6) provides that a communication other than a broadcast is taken to have been made by the person responsible for the content of the communication.  This provision relies on the extended definition of communicate in Item 6.  The provision has the effect that communications carriers and Internet Service Providers will not be directly liable for communicating material to the public via their networks if they are not responsible for determining the content of that material.

Meanwhile in the comments “Copyright Fanatic” asks why Optus TV Now is any different to using your TIVO at home? That (if the media reports are to be believed) is the $153 million question: is using someone else’s servers in some other point in cadastral space different to using your own equipment in the privacy of your own home?

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Optus TV Now and the threat to sports’ millions

Friday, September 16th, 2011

The media yesterday was splashed with stories about how Optus is threatening the flow of revenues to sports such as the NRL and the AFL through its TV Now service (for example, here and here and here). Hundreds of millions of dollars are apparently at stake.

Basically, it looks like you download an “app” to your phone or computer and you can then record (or perhaps more strictly, instruct Optus to record) a television program being broadcast on free to air television on Optus’ servers and then have the recording streamed to your mobile or computer at a time and place of your choosing – Optus’ promotional video suggests as your sitting on the bus. The media reports suggest you might be able to start watching as soon as 2 minutes after the game program starts broadcasting. There are a few constraints: You have to watch within 30 days of the recording. You can only nominate programs broadcast in the area where your account address is located. It looks like, if you’re an Optus (mobile) subscriber you get 45 minutes storage “free”, but you can “buy” more if you want.

Optus’ version of how it works here and here.

It is billed as just like home taping or recording only for the 21st century.

Optus is reported to be seeking an injunction against the AFL and the NRL to stop them suing it for copyright infringement. In fact, Optus has brought proceedings against both the NRL and the AFL and the first directions hearing was heard by Rares J today: NSD1430/2011. Rares J made timetabling orders for defences (and cross-claims) and evidence with the trial fixed for 19 December 2011.

The injunction part is easy: someone who is on the receiving end of threats of copyright infringement can bring an action for groundless threats of infringement and, if successful, the remedies include an injunction against continuation of the threats and possibly damages for loss suffered.

Presumably, the AFL and/or the NRL sent Optus letters of demand telling it to stop or else. If so, there will be a threat and then it will be over to the AFL and/or the NRL to establish that what Optus is doing infringes their copyright.

In the case of a (largely unscripted) sporting spectacle like a footy final, the copyright is going to subsist only in the broadcast (hmmm, what about the jumpers and logos and ….)

I am guessing (but I don’t know) that the AFL’s and the NRL’s contracts with the broadcasters involve the broadcasters assigning their copyright in the broadcast to, respectively, the AFL and the NRL.

As I haven’t seen Optus’ claim or, more likely, defence to cross-claim, I am also guessing Optus will be relying on s 111 of the Copyright Act:

(1) This section applies if a person makes a cinematograph film or sound recording of a broadcast solely for private and domestic use by watching or listening to the material broadcast at a time more convenient than the time when the broadcast is made. Note: Subsection 10(1) defines broadcast as a communication to the public delivered by a broadcasting service within the meaning of the Broadcasting Services Act 1992 . Making the film or recording does not infringe copyright

(2) The making of the film or recording does not infringe copyright in the broadcast or in any work or other subject-matter included in the broadcast.

Note: Even though the making of the film or recording does not infringe that copyright, that copyright may be infringed if a copy of the film or recording is made.

Dealing with embodiment of film or recording

(3) Subsection (2) is taken never to have applied if an article or thing embodying the film or recording is:

(a) sold; or

(b) let for hire; or

(c) by way of trade offered or exposed for sale or hire; or

(d) distributed for the purpose of trade or otherwise; or

(e) used for causing the film or recording to be seen or heard in public; or

(f) used for broadcasting the film or recording.

Note: If the article or thing embodying the film or recording is dealt with as described in subsection (3), then copyright may be infringed not only by the making of the article or thing but also by the dealing with the article or thing.

(4) To avoid doubt, paragraph (3)(d) does not apply to a loan of the article or thing by the lender to a member of the lender’s family or household for the member’s private and domestic use.

The first thing here will be who makes the recording. Will the Optus subscriber’s use of the technology to get a recording made on Optus’ servers (in the cloud) mean that the subscriber is the person who makes the recording or will it be Optus?

If Optus is the person who makes the recording (a) can the subscriber delegate the making to them as an agent or (b) does the recording need to be made for Optus’ private and domestic use or will the private and domestic use of its subscriber suffice?

As to who makes the recording, the US Circuit Court of Appeals for the Second Circuit in the rather different legislative setting of the US Copyright Act considered that the party in the position of Optus did not make the recording: Cartoon Network v Cablevision Inc. 536 F. 3d 121.

On the other hand, while recognising the possibility of a person making a fair dealing copy through an agent, in Australia Beaumont J found that a news monitoring service infringed copyright by making clippings of newspaper articles for its clients. While the clients may have had a relevant fair dealing purpose, the news monitoring service’s purpose was not a fair dealing purpose but a commercial purpose of making copies for its clients: De Garis v Nevill Jeffris Pidler Pty Limited [1990] FCA 218.

(You will have noticed that s 111(2) applies to not just to the copyright in the broadcast, but also any other copyright included in the broadcast. So that takes care of the logo, jumpers and all the other copyrights in scripted shows like, er, Home and Away etc.)

Section 111(2) only immunises the making of the recording. What happens when Optus streams the recording back to the subscriber? If it is set up so that the recording is streamed only to the individual subscriber, it will be difficult to call it a broadcast. But is it otherwise a communication to the public? This might turn on whether the communication is made by the subscriber (or his or her agent) to themselves or Optus. In the Music on Hold case (largely superseded now as a result of significant changes in the legislation), Dawson and Gaudron JJ emphasised that the public were people whom the copyright owner might fairly regard as its public and downplayed the number of persons involved. Will the commercial nature of Optus relationship with its subscribers colour the characterisation of this situation?

I guess we will have to wait and see.

Singtel Optus v National Rugby League and the Australian Football League NSD1430/2011.

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How wide should an injunction be?

Wednesday, September 14th, 2011

Having granted summary judgment against Paul’s Retail for infringement of a range of fashion brands trade marks and copyright, Kenny J has now made orders for the remedies flowing from the infringements. One point of general interest was the dispute about the scope of the injunctions.

Her Honour accepted that injunctions were a conventional remedy for intellectual property infringement and were appropriate for grant in this case, largely because it appears the respondents did not offer undertakings and continued to engage in infringing conduct after they had claimed to have ceased it.

The applicants sought broad injunctions in terms typically granted in patent cases (where the order is often as broad as “thou shalt not infringe the patent” – expressed in modern plain English of course). The respondents argued such wide injunctions would travel well beyond the pleaded and proved infringements. Kenny J referred to cases identifying the Court’s concerns against overly broad injunctions, especially as they carried with them the risk of contempt.

Kenny J accepted, on the basis of those cases, that an injunction could in appropriate cases be framed in terms of the statutory command and need not necessarily be tied to prescribe specific conduct. Nonetheless, her Honour considered:

23 As noted above, in Universal Music Branson J stated that it may be permissible to incorporate in an injunction the terms of a statutory prohibition. It does not follow from this, however, that it is permissible to include in injunctions prohibitions against forms of infringing conduct that have not been proven, let alone alleged: compare Microsoft Corp v Goodview Electronics at 592. Bearing these considerations in mind, I propose to grant injunctions in terms incorporating the statutory language but substantially designed to guard against the infringing conduct that has been proven.

Thus, the specific terms of the injunctions granted differed according to the nature of the infringing conduct.

For example, instead of granting an injunction to restrain the respondents from infringing copyright [or the applicant's copyright in a particular work], Kenny J granted an injunction:

Pursuant to section 115(2) of the Copyright Act 1968 (Cth), the first respondent be permanently restrained from:

(a) reproducing or authorising the reproduction of the whole or a substantial part of any of the Ug Manufacturing Copyright Works without the licence or authority of the fifth applicant;

(b) publishing and communicating to the public or authorising the publication and communication to the public of the whole or a substantial part of any of the Ug Manufacturing Copyright Works without the licence or authority of the fifth applicant;

(c) selling, offering for sale, supplying, offering to supply, importing or distributing any articles bearing any Infringing Ug Manufacturing Copyright Works (such Works being a copy of the whole or a substantial part of any of the Ug Manufacturing Copyright Works which has not been made or applied by or with the licence or authority of the fifth applicant);

(d) authorising, directing or procuring any other company or person to engage in any of the conduct sought to be restrained by sub-paragraphs (a), (b) and (c).

Apparently, the injunctions against the proven trade mark infringements were also tailored more narrowly.

QS Holdings Sarl v Paul’s Retail Pty Ltd (No 2) [2011] FCA 1038

 

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Telstra v PDC update

Thursday, September 8th, 2011

The transcript of Telstra’s unsuccessful application for special leave has now been posted here.

The Sydney Morning Herald speculates that Telstra is seeking talks with the Attorney General “to close the loophole”.

One consequence of the High Court’s revolution in copyright law is that the privacy regime which prevents the use of the Integrated Public Number Database (and IPND Industry Code) to create reverse-number directories has been undermined.

As its name suggests, a reverse-number directory is one where you have the telephone number and you can use it to identify who the subscriber is. Now, you may question whether that is an invasion of privacy (and many people happily (or maybe unknowingly) permit their telephone number to be transmitted to the person they are calling, but Parliament, the ALRC and the Privacy Commissioner (pdf see p. 402) have taken the view that it is, or should be.

Now, it could well be argued that copyright (I mean) a sui-generis database protection right would be a blunt instrument for protection of privacy and that privacy concerns would be better addressed, if necessary, by amending privacy laws. The economic case for database protection, therefore, would be key.

The Full Federal Court’s decision from which leave was not granted.

Lid dip: Copyright Council.

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Names and transfer policies for .au domain names

Tuesday, September 6th, 2011

auDA is the body regulating the .au “name space” or ccTLD.

In that role, it has issued a number of policies including the auDRP (modelled on the UDRP) for the resolution of disputes between rights “holders” and the registrants of confusingly similar domain names.

auDA’s Board has now announced its acceptance of a number of the recommendations of:

2010 Names Policy Panel

Among the recommendations that have been accepted are:

Domain Name Eligibility and Allocation Policy Rules for Open 2LDs:

  • That the requirement for registrants to be Australian (or registered to trade in Australia) should remain in place.
  • That the “special interest club” eligibility criterion for org.au and asn.au domain names should be more clearly defined.
  • That auDA should publish the results of its periodic audits.
  • That auDA’s position on third party rights with respect to domain name leasing or sub-licensing arrangements should be clarified and published.
  • That the close and substantial connection rule for id.au should be relaxed to include domain names that refer to personal hobbies and interests.
  • That direct registrations under .au should not be allowed at this time.
  • the list of reserved names (i.e., those you can’t have) should be maintained and updated.
  • the misspellings policy should be continued in its current form (e.g. you can’t register acebook.com.au, aaami.com.au etc.).
  • A revision of the “domain monetisation” policy so that it will no longer be a standalone policy and “the definition of “domain monetisation” will be replaced with a description of permissible practice, to accommodate a range of monetisation models”.

When the “domain monetisation” policy was originally adopted:

a monetised website was easily recognisable and mostly followed a common format, which meant that enforcement of the policy was relatively straightforward. However, the practice of domain monetisation has significantly changed from a simple webpage with click-through advertising links, to incorporate other formats such as news articles, blogs, images and so on. Methods employed by domainers (ie. people who register domain names for monetisation purposes) are becoming increasingly sophisticated and complex. In some cases it may be that domainers are attempting to circumvent the policy. However, to be fair to the domainer industry, the practice itself is constantly evolving as domainers test and refine ways of generating revenue.

If this were a gTLD, the trade mark owners would be going ballistic – “to be fair to the domainer industry”?????

The proposed revisions, however, would still prohibit allow objection on grounds that “the domain name must not be, or incorporate, an entity name, personal name or brand name in existence at the time the domain name was registered.” See chapter 3 and p. 20 of the Name Policy Panel’s final report (pdf).

Some recommendations still under consideration:

  • That registrants should be able to license a domain name for a 1, 2, 3, 4 or 5 year period.
  • That, in the absence of any compelling technical or policy reason to maintain the restriction, single character domain names should be released (subject to the registrant being eligible to register the name).

Secondary Market working group

The accepted recommendations of this group effectively aim to put in place a mechanism to transfer domain names from one registrant to another in place of the current “workaround” involving surrender and (re-)registration (with the attendant risk that someone might get the name in between those two events.

Announcements: Names policy, Secondary Market

Reports: Names policy (pdf), Secondary Market (pdf)

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IPSANZ and patent amendments

Monday, September 5th, 2011

One of the interesting sessions at the IPSANZ conference was David Catterns QC and the 2 Gregs talking about amending patent specifications – before and after grant.

I certainly wouldn’t disagree with the view that, all other things being equal, you should amend before litigation rather than during (although how often are all other things equal, especially for patents in multiple jurisdictions). Australian law, at least insofar as it concerns amendments before the Commissioner, however, may be moving closer to the New Zealand situation.

The Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 includes in Sch 1 at item 31 an amendment to s 102:

(2D) An amendment of a patent request or a complete specification is not allowable if it is of a kind prescribed by regulations made for the purposes of this section.

For some reason I have a (vague) recollection that this provision may be used to confer on the Commissioner through the Regs a discretion similar to that which the Court has under s 105. I am afraid I have not been able to re-locate wherever it was that I read or heard this.

Does anyone know any better or differently?

It doesn’t seem to be what the EM contemplates as the role for item 31 and one might have thought that there might be scope to expand the regulations made for the purposes of s 104 to effect that goal (if it were intended to be achieved) as it is the “narrowness” of those regulations which leads to the present situation.

One might question the constitutional desirability of putting such ‘substantive’ matters in the Regs rather than expressing them in the Act itself. However, that fight seems, sadly, to have been well and truly lost. In any event, if the introduction of such a discretion in the Commissioner be intended, it would surely be in everyone’s interests to amend the terms of s 104 itself to track the terms of s 105(1) rather than bury it away in the Regs.

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