Archive for the ‘Trade’ Category

Injurious falsehood and also passing off

Tuesday, August 24th, 2010

The tort of injurious falsehood (sometimes called malicious falsehood or even trade libel) has been largely superseded (but not totally extinguished) by passing off and the modern wrongs against misleading or deceptive conduct. In a helpful, practical primer, Jagot J has had to explore its operation as one of the issues in the Jack Brabham Engines case. There is also an elementary lesson to learn in passing off.

In overview, the case concerned 2 rival businesses engaged in developing car engines. They agreed to pool their resources and develop technologies through a new corporate vehicle, Jack Brabham Engines (JBE). The principals in the competitors became directors and shareholders and the great man himself was a shareholder. Things didn’t work out and one of the principals, Mr Beare, who had secured patents for technology he had developed earlier decided to invest elsewhere in competition with JBE.

Amongst other things, he published statements on his website and in ASIC documents which the applicants complained were injurious falsehoods. Jagot J rejected these allegations.

Her Honour pointed out at [246] that the tort required proof of 3 ingredients: proof that (1) the respondent has made a false statement, (2) that the respondent made the statement maliciously and (3) as a result the applicant has suffered actual damage.

Her Honour quoted Gleeson CJ on the difference between the tort and defamation:

The tort of defamation protects reputation, and it does so in a manner that involves a balancing of various considerations including the right of free speech. The tort of injurious falsehood protects against provable economic loss resulting from false and malicious statements.

Jagot J at [247] also endorsed the statement in Halsbury’s Law of Australia as a convenient summary of what is required for the statement to be malicious:

The false publication must have been made maliciously. A person who acted in good faith is therefore not liable. Malice is a question of motive, intention or state of mind and involves the use of an occasion for some indirect purpose or indirect motive such as to cause injury to another person. Malice may exist without an actual intention to injure. Malice may not be inferred from the fact of publication but will be inferred where the false publication was made with:
(1) an intent to injure without just cause;
(2) knowledge of their falsity; or
(3) reckless indifference to its truth or falsity.
No action will lie where the false publication was made with mere lack of care or with an honest belief in its truth. An honest belief in the truth of the statement will rebut any inference of malice.

The applicants failed on all heads for a wide variety of reasons. Some of the statements were not even pleaded. The applicants failed to prove that others were even false and, at every turn, the statements were not shown to be malicious because they were the honest beliefs or opinions of Mr Beare. There was also no proof of damage.

The difficulties of proving malice in particular highlight why, if the conduct is in trade or commerce, the tort has largely been supplanted by the fair trading laws such as  s 52 (in the case of corporations) and s 9 / s 42 (in the case of individuals).

The applicants also alleged passing off from use of the names “Beare Technology Engine” and “Beare Head Technology”. The names were not registered as trade marks, hence any rights had to arise at common law.

The problem for the applicants here was that Mr Beare had used these names in his business before JBE was incorporated and, while he or his company had authorised JBE to use the names, JBE was unable to identify any assignment of the earlier business and its goodwill to JBE. As a result, JBE did not own the relevant reputation.

Jack Brabham Engines Limited v Beare [2010] FCA 872

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Draft ACTA text released

Monday, April 26th, 2010

DFAT ‘welcomes‘ the release of the draft ACTA text:

http://www.dfat.gov.au/trade/acta/index.html

Draft text (pdf)

(Post updated to tidy up the links on 29/4)

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TRIPs protocol: Australian implementation consultation

Sunday, April 25th, 2010

IP Australia has issued a consultation paper on implementing the TRIPS protocol.

The TRIPS protocol is the modification (or is that clarification?) of TRIPS obligations to improve the availability of “crisis” pharmaceuticals in least developed and developing countries. From the discussion paper:

The TRIPS Protocol seeks to address this problem by amending the TRIPS Agreement to permit WTO members to issue compulsory licences to produce patented pharmaceutical products for export to least-developed and developing countries. The main features of the Protocol are:
• Licences may only be issued for products of the pharmaceutical sector needed to address public health concerns.
• Countries eligible to import pharmaceuticals under the system comprise any least-developed WTO country or any other WTO country that has notified the TRIPS Council.
• Importing countries are obliged to provide the TRIPS Council with details such as the names and quantities of the products needed and whether they need to issue a compulsory licence in their own country.
• Exporting countries are obliged to notify the TRIPS Council of a range of details and ensure that importing countries have done the same.
• Both importers and exporters must have in place anti-diversion measures to ensure the products produced under the system reach the intended market and are not re-exported.

Read the paper here (pdf).

Submissions due by 4 June 2010.

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ACTA coming a little bit more out of the shadows

Thursday, November 12th, 2009

Michael Geist has a link to the leaked EU comments on the chapter for third party liability on the internet – being drafted by the USA.

The Guardian has weighed into the debate.

Kim Weatherall has emerged from her self-imposed seclusion to comment here, here and here.

DFAT’s must recent summary and overview of key elements. Anondyne USTR statement.

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Selected microblog posts (w/e 11/09/09)

Sunday, September 13th, 2009

Selected microblog posts from the past week:

  • RT @VogeleLaw: Found: Mary Beth Peter’s testimony (via @cathygellis – thanks!) http://bit.ly/Cijau #gbs_hearing [US Copyright Register opposes Google Book Settlement]
  • Google Book in the EU? http://ff.im/-7OYfA
  • RT @MegLG: A Billion Dollar Test of the DMCA Safe Harbors in Viacom v YouTube http://ow.ly/om66 via Cyberlaw Cases
  • RT @michaelgeist: Microsoft wins stay of injunction on Word. Case arises from patent claim by Toronto’s i4i.http://bit.ly/oDmLU
  • IP Think Tank Blog looks at i4i v Microsofthttp://ff.im/-7zfKp
  • AAR on UWA v Gray – Universities and their employees: who owns developed IP? http://ff.im/-7RmgI
  • Hannahland: Ph D candidate on UWA v Gray http://ff.im/-7WcoR
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Working a patent for regulatory approvals

Wednesday, May 6th, 2009

Patently-O considers a new Federal Circuit case in the USA dealing with the scope of s 271(e)(1) – a defence to infringement by working the patent to prepare regulatory data.

It would appear that the defence should now apply in proceedings against imports before the ITC.

Patents Act 1990 (Cth) s 119A (introduced with effect from 25 October 2006 following ACIP’s report) permits such activity where the working:

  • is for purposes of having a therapeutic pharmaceutical product included in the Australian Register of Therapeutic Goods;
  • or a similar foreign regulatory approval.

Although working for a foreign regulatory approval may take place only in the supplementary protection period (see e.g. ACIP on experimental use p. 44 (pdf)).

See now Alphapharm Pty Ltd v H Lundbeck A/S [2008] FCA 559 at [643]ff.

IP Australia is considering extending this: see paragraphs 9 and 17 of IP Australia’s Consultation Paper on experimental use (pdf) [NOTE: submissions should be in by 8 May 2009. Submissions on the Getting the Balance Right paper (pdf) are also due by then.]

WIPO’s Standing Committee on Patents has a study paper on exceptions and limitations as an area of increased focus.

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Patents, pharmaceuticals and exports

Wednesday, May 6th, 2009

I’m not quite sure why, but the blogosphere is increasingly chattering again about relaxing the rules against infringing a patent by making the protected product (esp. a pharmaceutical) for export:

IP’s What’s Up reviews the TRIPS status including the DOHA declaration and its rather tentative take up.

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ACTA

Sunday, April 26th, 2009

The USTR has released a 6 page (pdf) outline of issues being dealt with under the proposed ACTA.

Link via Intellectual Property Watch.

The IP Dragon has links to a 48 page document with rather more information.

More tea leaf sifting here.

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(Sino) Free Trade Agreements

Tuesday, April 21st, 2009

IPDragon reviews Professor Yu’s analysis of why free trade agreements (STAs) are different from the things the USA imposes on people or EU agreements here (with links to Professor Yu’s article Sino Trade Agreements and China’s Global Intellectual Property Rights).

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Free trade Dream Time

Tuesday, March 24th, 2009

Australia has entered into Free Trade Agreements (1) with NZ and ASEAN and (2) with Chile.

ASEAN as a bloc is apparently our largest trading partner.

Chapter 13 deals with Intellectual Property. Various fact sheets, e.g. Pharmaceuticals, deal with our exports or imports thereto.

Minister Crean’s press releases here and here.

AANZFTA here and chapter 13 here; Australian guide with links to all sorts of things. Trade overview. The words “may” and “shall endeavour to” feature quite a lot in Chapter 13.

Australia-Chile FTA index and chapter 17 (IP) here.

Hey, our 12 month grace period for filing patents will work in Chile, see art. 17.22! Can’t spot a corresponding provision in the AANZFTA? Also, to facilitate domain name dispute resolution, Chile has agreed to adopt an UDRP-style dispute resolution process for its cc.TLD (assuming it doesn’t already have one, of course).

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