auDA Policy implementation review

auDA, the body regulating the .au domain, has embarked on a Policy review, through a Review Panel chaired by John Swinson.

The first issue being considered is how to implement the decision to allow “second level” domain name registrations: e.g. domain.au in addition to domain.com.au and domain.net.au etc.

One issue that gives rise to is how to resolve conflicting reapplication for registration if different people have “domain” registered already in e.g. .com.au and .net.au. The Issues Paper explains:

53. Given the extensive stakeholder consultation already undertaken on whether existing registrants should be given priority registration rights, the Panel has decided not to revisit this issue but to focus on developing a priority registration policy. The development of a priority registration policy requires consideration of the following issues:
• cut-off date for determining registrant eligibility for priority registration;
• process for resolving competing claims to the same second level domain name; and
• the priority registration period in which registrants will have exclusive rights to register the second level domain name.

auDA is seeking your views by 10 November 2017.

Issues Paper and further details here .

A second, later phase of the review will look at the policies relating to registration in the established second level domains (such as .com.au).

Losing yourself (again)

The New Zealand High Court has found the NZ National Party’ 2014 advertising campaign theme infringed the copyright in Eminem’s “Losing Yourself”.

you might remember the social media stir when the lawyers managed to appear sober and, er, lawyerly, when they played the two songs in court.

Now, we have the 300+ paragraph ruling.

The Copyright Society’s summary.

Eight Mile Style, LLC v New Zealand National Party [2017] NZHC 2603

ps Probably not,the National Party’s biggest loss this month.

 

IP Amendment (Productivity Commission Part 1 …) Bill – exposure draft

IP Australia has released an exposure draft bill and regulations to implement some of the Productivity Commission’s recommendations from its Intellectual Property Arrangements report. Intended to be the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2017.[1]

According to the news release, the amendments will:

  • commence the abolition of the innovation patent system (PC recommendation 8.1)
  • expand the scope of essentially derived variety declarations in the Plant Breeder’s Rights (PBR) Act (PC recommendation 13.1)
  • reduce the grace period for filing non-use applications under the Trade Marks Act (PC recommendation 12.1(a))
  • clarify the circumstances in which the parallel importation of trade marked goods does not infringe a registered trade mark (PC recommendation 12.1(c))
  • repeal section 76A of the Patents Act, which requires patentees to provide certain data relating to pharmaceutical patents with an extended term (PC recommendation 10.1)
  • allow PBR exclusive licensees to take infringement actions
  • allow for the award of additional damages, under the PBR Act
  • include measures intended to streamline a number of processes for the IP rights that IP Australia administers,

and everyone’s favourite “a number of technical amendments”.

On the parallel imports front, the bill would introduce a new s 122A to replace s 123(1) with the object of overruling the Federal Court’s case law severely restricting the legality of “parallel imports” since the 1995 Act came into force. It’s a “doozy”.

For example, it attempts to reverse the onus of proof that the courts have imposed on parallel importers by providing that

at the time of use, it was reasonable for the [parallel importer] to assume the trade mark had been applied to, or in relation to, the goods by, or with the consent of, a person who was, at the time of the application or consent (as the case may be):

(i) the registered owner of the trade mark; or

(ii) an authorised user of the trade mark; or

(iii) a person authorised to use the trade mark by a person mentioned in subparagraph (i) or (ii), or with significant influence over the use of the trade mark by such a person; or

(iv) an associated entity (within the meaning of the Corporations Act 2001) of a person mentioned in subparagraph (i), (ii) or (iii).

 

I suppose “reasonable to assume” does at least require some objective support for the “assumption”.

The second part – (iii) and (iv) above – is trying to deal with the situation where the registered owner assigns the trade mark to someone in Australia, but with the capability of calling for a re-assignment.[2]

This will require considerable flexibility by the Courts in interpreting “significant influence”.

If you have made such and assignment, or your client has, you had better start re-assessing your commercial strategy, however. The transitional arrangements say the amendment will apply to any infringement actions brought after the section commences. Moreover, this will be the case even if the “infringing act” took place before the commencement date.

Comments should be submitted by 4 December 2017.

Exposure draft bill

Exposure draft EM

Exposure draft regulations

Exposure draft explanatory statement


  1. Seems like the “short title” of bills are reverting to the old form “long” titles!  ?
  2. For example, Transport Tyre Sales Pty Ltd v Montana Tyres Rims & Tubes Pty Ltd [1999] FCA 329.  ?

AIPPI Sydney 2017 – Day 3: patents, copyright and …

Some more reports from the AIPPI Congress 2017 in Sydney – Day 3:

  1. My post on the panel discussing the issues patenting medical devices (apparatus or apparatus + drug) including significant changes in the EU next year;
  2. Clare Cunliffe reporting on the panel discussing issues arising when an innovator is seeking a final injunction against another innovator (rather than a generic); and
  3. James Elmore’s report on the Business of IP – IP venturing.
  4. Clare also reports on intermediary liability for copyright infringement.
  5. Finally, James reports on the panel on whether not identification of the technical problem solved by the patent is required in the USA, the EPO, China and Japan.

AIPPI Sydney 3 – sufficiency

My attempt to summarise Parma Session 1 ‘Sufficiently plausible’ has been posted on IPKat here.

Clare Cunliffe’s report on the session about IP and competition is here.

AIPPI Sydney 2 – music and the digital revolution

i was lucky enough to attend a panel on the impact of the digital revolution on the music industry featuring discussants with real world experience.

You can see my report over on the IPKat.

My barristerial colleague, Clare Cunliffe, also has a report on inventor remuneration.

i understand more reports of other sessions are in the pipeline.

AIPPI Sydney

Over the weekend, I shall be attending the annual Congress of AIPPI in Sydney.

Lots of interesting sessions and practitioners from all round the world

If you are attending or in the vicinity, say “hello”.