IPwars.com

Mainly intellectual property (IP) issues Down Under

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”.

Government response to Productivity Commission IP report

The Government has published its response to the Productivity Commission’s Intellectual Property Arrangements – Final Report.

Further comment will have to await. In the meantime, the media release notes:

A key priority will be to align Australian inventive step law with international best practice to ensure that the necessary protections are available to deserving inventions. The Government has also accepted the Productivity Commission’s recommendation to phase out the Innovation Patent System.

and, in not accepting the proposal to adopt a general “fair use” defence to copyright:

It is important copyright reform is considered in a holistic context rather than focused on individual issues. We will continue to work closely with stakeholders over the next 12 months to develop effective options for copyright reform.

The Australia Copyright Council is very pleased.

There will also be a new IP Policy Group (within government) to, er, monitor IP policy!

According to the Government’s Media Release, the Government is still considering the merits of a number of other proposals and “will work on these further”.

Australian Government Response to the Productivity Commission Inquiry into Intellectual Property Arrangements (pdf)

Media release 25 August 2017

More third party website blocking injunctions

Nicholas J has granted another round of injunctions ordering ISPs to block access to offshore copyright infringing sites.

Having established the ground rules in the earlier applications (here and here), the ISPs didn’t turn up; essentially just filing submitting appearances and agreeing to be bound by the orders.

According to this News report, once these orders are implemented a total of “65 piracy sites and 340 domains” will be blocked in Australia. That is claimed to be “95 per cent of the criminal trade blocked”.

Apparently, the film companies:

plan, later this year, to sue any individual that continues to download pirated content.

Roadshow Films Pty Ltd v Telstra Corporation Limited [2017] FCA 965

Copyright amendments passed

The Copyright Amendments (Disability Access and Other Measures) Bill 2017 has now been passed by both Houses of Parliament.

The bulk of the amendments introduce reforms to improve access to copyright works by people with a disability to give effect to Australia’s obligations under the Marrakesh Treaty – and simplify the statutory licences for collecting societies and educational institutions.

Schedule 2 amends the term of copyright in unpublished works so that they will not remain in copyright indefinitely. The precise term will depend on when the work is first made public, what type of work it is and whether the identity of the author is generally known.

In broad terms, the term will be reduced to 70 years after the author’s death if the work is never made public. If the work was first made public before 1 January 2019, the term can still run for 70 years after the work is finally made public. If the work is first made public on or after 1 January 2019, anonymous works can still get 70 years after publication if they are first published within 50 years of being made.

Minister’s press release

Read the bill as passed and the explanatory memorandum via Parliament’s bills page.

Lid dip: Australian Copyright Council’s update service.

The Federal Circuit Court can grant Mareva injunctions

The Federal Circuit Court can issue mareva injunctions[1] under s 14 and s 15 of the Federal Circuit Court Act 1999.

Mr Vartzokas is an architect. Through his company he agreed to provide architectural services in connection with the development of a 5 storey apartment block in Prospect Rd Adelaide to the developer, Nazero Contructions Pty Ltd.

He provided the services and sent in his bill for $48,100.

Mr Younan seems to have been the principal of Nazero Constructions and was the person with whom Mr Vartzokas dealt.

With some difficulty, Mr Vartzokas managed to extract payments totalling $25,000 from Mr Younan. When Mr Vartzokas sent in his final bill for the remaining $23,100 with the final drawings, the drawings were endorsed with the statement:[2]

These drawings are the copyright property of the architect and are not to be reproduced or copied without prior written license of the architect.

Needless to say (this is a court case afterall), Mr Vartzokas was not paid his outstanding $23,100.

Instead, he was contacted by a Mr Chen on behalf of Yi Hong Pty Ltd, which was about to purchase the Prospect Rd property and wanted to engage Mr Vartzokas to provide further architectural services in relation to it.

Mr Chen provided Mr Vartzokas with copies of the working drawings for the property which Mr Chen had obtained from Mr Younan in connection with the proposed purchase and wanted Mr Vartzokas to work on.

Mr Vartzokas recognised the drawings as being the ones he had prepared for Mr Younan and Nacero Constructions. Only the authorship was attributed to “JB Archi-Build”!

Unbeknownst to Mr Vartzokas, around the time Mr Vartzokas was having trouble extracting his initial payments from Mr Younan, Mr Younan caused a new company, Nazero Group SA Pty Ltd to be incorporated. Nazero Constructions sold the Prospect Rd property to Nacero Group for $1,017,500. Nacero Constructions then changed its name to Zeecat Constructions.

When Mr Chen provided the “JB Archi-Build” drawings to Mr Vartzokas, Mr Vartzokas discovered the existence of Nacero Group and that it was in the process of selling the Prospect Rd property to Yi Hong for $1,190,000. Settlement on the contract was due the next day following the hearing.

Mr Vartzokas sued seeking a mareva injunction to require the proceeds from the sale (after paying out the bank holding a registered mortgage over the property) be paid into the Federal Circuit Court pending trial of Mr Vartzokas’ copyright infringement claims.

Judge Brown granted the mareva injunction ex parte. On the question whether Mr Vartzokas had demonstrated a real risk that the assets would be dissipated and the Court’s process frustrated, his Honour pointed to the sneaky swap in ownership of the Prospect Rd property between Mr Younan’s companies, his failure to pay all Mr Vartzokas’ bills and continued use of the drawings without payment or recognition:

[35] I am also satisfied that the applicant has established a prima facie case that there is a real risk of assets being dissipated, if the relief sought is not granted. In my view, the significant evidence in this regard arises as a consequence of the change of name of Nazero Constructions Pty Ltd, which coincided with that entity not honouring the invoices submitted to it by the applicant. This failure to pay its debt, to the applicant, ultimately led to the winding up of the company concerned.

[36] More significantly, after the company had been liquidated, Mr Younan incorporated an entity with a similar name and transferred the land at Prospect to it. At the same time, Mr Younan appears to have been intent on developing the land in a similar manner to that which envisaged the intellectual input of Mr Vartzokas, but without either payment or recognition to him.

[37] In all these circumstances, I am satisfied that there is a significant risk that, if the injunction sought is not made, the proceeds of sale of the Prospect property will not be available to the applicant to either satisfy any award of damages to which he is entitled or to provide any accounting for the profits made on the sale of the land concerned, which, at least on a prima facie basis, seems to have included his architectural designs to be utilised on the property’s development.

His Honour also noted there was no prejudice to third parties as the bank mortgagee would get paid its due before money’s were paid into court.

Vartzokas Architects Pty Ltd v Nacero Group SA Pty Ltd [2017] FCCA 849


  1. Yes, I know we are supposed to call them an asset preservation order, but really ….  ?
  2. The usual implied licence can be excluded by an express written term to the contrary: Devefi v Mateffy Perl Nagy  ?

In which the lawyers don’t lose themselves

Eminem is suing a New Zealand political party for infringing his copyright in New Zealand in Lose Yourself.

A bit of background here.

Part of the barrister’s opening for Eminem plays the two songs and is attracting social media commentary on what is said to be the surrealist way lawyers in court behave.

Meanwhile, we all get to express an opinion (however well informed) on whether there’s an infringement or not.

Lid dip: Therese Catanzariti

More safe harbour consultations

You may recall that, when the Copyright Amendment (Disability Access and Other Measures) Bill 2017 was introduced into Parliament, it was missing the schedule in the exposure draft that extended the “safe harbour” provisions from “carriage service providers” to “service providers”.[1]

This is apparently a complicated issue and so the Government has announced it is engaging in a round of consultations led by no less a personage than the Secretary of the Department of Communications and the Arts.

The Secretary is required to report to the Minister on the outcome of the consultations by early June 2017.

Press announcement here and, if you want to try to be invited to the consultations, some contact details here.

Anybody wonder what President Trump would do if he found out we were in breach of the Australia – United States Free Trade Agreement?[2]


  1. The safe harbour provisions protect “carriage service providers” from liability to damages where they merely provide the facilities used by an infringer: see ss 116AC, 116AD, 116AE and 116AF.  ?
  2. Check out article 29(b) of Chapter 17.  ?

Kickass Torrents website blocked – third party injunctions

Burley J has granted Universal Music’s application[1] ordering the ISPs to block access to Kickass Torrents’ websites.

This is the second decision under s 115A of the Copyright Act 1968 empowering copyright owners (and their agents) to seek injunctions against third parties (i.e. ISPs and telcos) to block access to offshore infringing websites.

Putting to one side stylistic matters, his Honour’s orders appear in substance to be the same as the orders previously made by Nicholas J against “solarmovie” and “The Pirate Bay” (some discussion here).[2]

The Copyright Council also reports that Roadshow Films has brought a new case seeking third party blocking injunctions against 41 websites including “Watchseries”, “Putlocker” and “MegaShare”.

Universal Music Australia Pty Limited v TPG Internet Pty Ltd [2017] FCA 435 (Burley J)


  1. and also the applications by APRA and various other copyright holders.  ?
  2. The ISPs get 10 business days, rather than 7, to respond to applications by the copyright owners to extend the injunctions to “whack-a-mole” sites – see paragraph 12.  ?

Copyright Amendment (Disability Access and Other Measures) Bill 2017

The bill has finally been introduced into Parliament today.

This follows the release way back in December 2015 of an exposure draft bill.

According to the EM, the main topics covered in this version of the bill are:

  • ” replace the current exception for persons with a disability, and others acting on their behalf, with a fair dealing exception;
  • ” replace the current statutory licences for institutions assisting persons with a print or intellectual disability with a single exception that applies to organisations assisting persons with a disability;
  • ” harmonise and modernise the preservation exceptions for copyright material in libraries, archives and key cultural institutions;
  • “? consolidate and simplify the statutory licences that allow educational institutions to use works and broadcasts;
  • “? allow copyright material to be incorporated into educational assessments conducted online;
  • “? set new standard terms of protection for published and unpublished materials and for Crown copyright in original materials; and
  • “? make minor amendments to update references to Ministers and preconditions for making regulations extending or restricting the operation of the Act in relation to foreign countries.”

Those of you with long memories will notice that the amendments in the exposure draft to bring the safe harbour provisions for “carriage service providers” (see s 116AC to 116AJ) into line with Australia’s obligations under the US Free Trade Agreement (way down in chapter 17 article 29(b)) is missing from that list. The rights holders’ interests were very strongly opposed to that change and, presumably, the Government is betting that President Trump’s America will not be too fussed.

In relation to the term of copyright in unpublished works – currently perpetual (until published) – the Minister explained the intended effect of the amendments:

The bill harmonises the copyright term for works (including a literary, dramatic, musical or artistic work) by creating a new standard term of 70 years from the death of the author, irrespective of whether the relevant work has or has not been made public. This means that an unpublished work will have the same term of copyright protection as a published work. Where the identity of the author remains generally unknown, or the work is made by an international organisation to which the act applies, the standard copyright term will be 70 years from when it is made. However, if this work is made public within 50 years of being created, the copyright term will be 70 years from first being made public. For sound recordings and films, a standard copyright term of 70 years from the year in which the material is made will apply. However, if the sound recording or film is made public within 50 years of being made, the copyright term will be 70 years from first being made public.

Links to the Bill and the EM from here.

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