Mainly intellectual property (IP) issues Down Under

Penalties and additional damages for trade mark infringement

IP Australia has issued an options paper reviewing the criminal penalties and whether or not additional damages should be available for trade mark infringement in Australia.

Some of the considerations for reforming the criminal penalties under the Trade Marks Act relate to the wide ranging reform of the criminal penalties structure in the Copyright Act effected by the amendments in 2006 and a perception that Australia’s penalties may be out of line with other countries’ approaches.  (No mention of the behind the scenes ACTA negotiations is made).  A key issue emerging from the paper, however, is that IP Australia is seeking to quantify the extent of counterfeiting activity in Australia – the paper suggests that the empirical evidence available to IP Australia does not seem to support the anecdotal claims.

Unlike copyright, patents and registered designs, additional damages are not available for infringement of registered trade marks.  The options paper questions whether this should still be the case.

Apart from the anomalous treatment of trade marks compared to the other main statutory rights, I would have thought the US Free Trade Agreement (art. 17.11.7) leaves room for debate only about whether there are additional damages or statutory damages.  May be there’s a transitional provision or side agreement that someone can point me to which makes this optional?

Written comments are required by 27 February 2009.

The options paper is here (pdf).  ACIP’s earlier report here (pdf).

A scientific approach to typosquatting

Typosquatting can occur when someone registers a misspelling of your domain name in the hope that your customers will mistype the domain name in their web browser and land on that someone’s website. (Apparently, a significant portion of people who do so then click on a link on the typosquatted website, thus generating pay per click advertising revenues for the site ‘squatter’.)

Apart from the potential diversion of custom, FairWinds Partners also makes the point that typosquatting can harm the reputation of the brand.  As an example they speculate about the impact on Disney’s customers if they landed on a typosquatted page promoting pornography.

Recognising that it is not feasible to register every possible variation of your domain name to defend against such practices, FairWinds Partners have published a attempt to analyse typosquatting scientifically.

The study looked at 3,000 top level domains that had more than 2,000,000 hits per month.  From this universe, they found that most typosquatting appears to fall into 1 of 10 categories.  They also concluded that the typosquatters were targetting domain names fairly scientifically.

Apart from typosquatting, FairWinds Partners notes that consideration should be given to registering the domain name in other tlds –  e.g. consider .biz and .net, not just .com; also consider country specific domains. This, however, is already problematic – there are already 21 gTLDS, not to mention of the country specific ccTLDS such as .com.au and .co.uk etc.  And its going to get much worse with ICANN, in the interests of competition and diversity no less, planning to allow a potentially unlimited number of tlds.

Download the paper here (pdf).

Other research suggests that about 10% of internet searches don’t land on their expected destination (Lid dip Marty).

Vale Sir Hugh Laddie

There are many tributes throughout the blawgosphere marking the passing of Sir Hugh Laddie.

One of the best places to get a sense of Sir Hugh’s place in the IP world is the thoughtful overview provided by Bill Patry.

At a more mundane level, should you find yourself involved with an ‘Anton Piller’ bear in mind that Sir Hugh was there before you.

Gene Patenting Inquiry

The Commonwealth Senate has launched an inquiry into the patenting of genes.

According to the terms of reference:

The impact of the granting of patents in Australia over human and microbial genes and non-coding sequences, proteins, and their derivatives, including those materials in an isolated form, with particular reference to:

(a)     the impact which the granting of patent monopolies over such materials has had, is having, and may have had on:

(i)     the provision and costs of healthcare,

(ii)    the provision of training and accreditation for healthcare professionals,

(iii)   the progress in medical research, and

(iv)   the health and wellbeing of the Australian people;

(b)     identifying measures that would ameliorate any adverse impacts arising from the granting of patents over such materials, including whether the Patents Act 1990 should be amended, in light of the any matters identified by the inquiry; and

(c)     whether the Patents Act 1990 should be amended so as to expressly prohibit the grant of patent monopolies over such materials.

The terms of reference do not say so but, presumably, the inquiry has been triggered by the recent controversy when Genetic Technologies announced it was going to commence enforcing its exclusive licence to patents relating to breast cancer detection.  It would seem, however, that the company rescinded its threat.

The Senate Community Affairs committee is due to report by the last sitting day of 2009.  Written submissions have been sought, however, by 19 March 2009.

Anyone else looking forward to learned consideration of TRIPS art. 27, 30 and 31 after all that hard work that’s been done by the ALRC.  See now ACIP’s review of patentable subject matter (pdf) which includes some notes on the AUSFTA obligations.  Then, of course, there is always Patents Act s 163.

Resale royalty right

The previously foreshadowed bill to introduce the resale royalty right has been introduced into Parliament.

The Resale Royalty Right for Visual Artists Bill and EM can be found here.

The Bill has been referred to the House’s (not the Senate’s) Standing Committee on Climate Change, Water, Environment and the Arts for consideration and an advisory report to the House by 20 February 2009.

Presumably, if the Government and the “Coalition” can reach agreement on the terms of the Bill, it won’t be necessary to deal with those pesky independents and greenies.

Lid dip, the Australian Copyright Council.

Parallel imports and books

The Productivity Commission has published its issues paper on its reference relating to the parallel importation of books.  You can download the pdf here.  At present:

(1) anyone may “parallel” import a book for their own use (i.e., not to resell or distribute it);

(2) books first published after 22 December 1991 and not published first simultaneously in Australia may be parallel imported;

(3) for any other books, however, there is a very convoluted regime,

see Copyright Act 1968 s 44A and 112A.

Things have apparently changed since all the earlier studies by the then Prices Surveillance Authority, the ACCC and the Ergas Committee as now they would have us believe:

While requiring the Commission to examine options for reform, the terms of reference should not be taken as meaning that the current restrictions are necessarily inappropriate. That is a matter to be examined in this study.

Nonetheless, the Productivity Commission appears to have started from the former Prices Surveillance Authority’s proposition that the right to control imports is some how additional or extraneous to copyright:

It has been argued that restrictions on the parallel importation of books provide an incentive, additional to that provided by copyright alone, for people to create literary works.

At an impressionistic level, one clear benefit under the current regime has been the faster availability of paper-back editions. My recollection is that the Prices Surveillance Authority found paperbacks were usually not published until at least one year after the publication of the hardback edition in Australia – and often longer.  Walk into any Dymocks, Borders or whatever these days and you will often see 2 or even 3 different versions of the same book – the UK paperback, the US paperback and often the trade or mass market versions as well (the ones that smudge when you press your thumb too hard on the page).

It will be very interesting to see how the Productivity Commission explains its competition theory to support repeal when anyone with an internet connection can jump online and order the book from overseas (for their own use).

The sector most affected by the current regime might be thought to be the booksellers who can’t use this form of arbitrage (at least for books first published simultaneously in Australia – unless they already have a written or verifiable telephone order).  Would we all be better off if the booksellers could use the threat of parallel importing in volume to negotiate a better price from the the local publisher/distributor?

It will also be interesting to see how the Productivity Commission deals with possible cultural considerations, which have proved so powerful in Canada in trying to block parallel imports.  The Productivity Commission raises the possibility, however, that such issues can be better addressed by direct subsidies – so in the interests of market forces operating, the Government would have a more active role in trying to pick ‘winners’ and taxpayers generally would subsidise readers.

Your comments should be submitted to the Productivity Commission by 20 January 2009.

The Internet Wars (copyright campaign) come to ISPs down under

The big movie studios have brought proceedings against iiNet, one of the larger (in a non-Bigpond sort of way) ISPs seeking to impose liability on the ISP for infringing downloading by its subscribers.

The Application is here (pdf) and the Statement of Claim is here (pdf).

Various analyses:

Nic Suzor has a detailed view here

Kim Weatherall here

Australian PC Mag here

The Film Industry outlines its position here

IPRoo carries a quote from the Internet Industry Association’s CEO here.

As you can see from this coverage, this has really set the cat among the pigeons.  The striking thing about this action, however, is that one might have characterised iiNet as a general purpose ISP, not existing just to promote infringing downloads like the Court’s found Mr Cooper’s mp3s4free.com or substantially like Kazaa.

Thus, the distinction propounded by the record companies in Cooper (at [123]) and both questioned and side-stepped by Branson J (at [40]) appears to be very squarely off the table. So, as many of the bloggers note, it is not too much of a stretch to claim that the future of the internet is at stake here.  Will the old Copyright Convergence Group‘s analogy to the postal system – imposing liability only on the person who introduces (posts) the material – be confirmed or will we, through the Courts, turn back into a closed, monitored system?

The ISPs can hardly be surprised:

(a) s 101(1A(c) expressly provides for the development of an industry code to establish norms;

(b) the copyright owners have directly attacked the ISPs in Eire;

(c) the UK government has “brokered” some sort of more “pro-active” role on ISPs too.

No doubt, if the matter goes to trial, we can expect to see a volume of evidence about the volume of iiNet’s P2P traffic vis a vis its other activities and, before then, perhaps some applications for discovery of traffic details.

Given that liability appears to be predicated on authorisation, it will also be particularly interesting to see how the movie producers circumvent the prohibition on intercepting communications over a telecommunications system and, perhaps, (if an ISP is a carriage service provider) the prohibition on use or disclosure of information the contents of any communication carried by a carriage service provider.


How to organise a cartel or what the damages might be (apart from the penalties/fines) when if you get found out: John Asker ‘A Study of the Internal Organisation of a Bidding Cartel’ (pdf).

Warning: lots of economist-ese and formulas.

Lid-dip Prof. Joshua Gans.

Business method patenting?

The US Federal Circuit (9 panel bench) has handed down its decision ruling that Bilski’s method of hedging risks in commodities trading was not patentable.

As summarised by Patently-O, the majority opinion substantially retreats from State Street.

a process claim [must be] tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself. A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.

Judge Newman would have found the invention patentable; Judge Rader would have rejected the patent, without the need to develop a new principle, on the grounds that all that was claimed was an abstract principle.

Read Patently-O’s summary, which also has a link to the decision itself.  Compare our Full Federal Court in Grant.

Google book

You may recall that some time ago, Google started scanning/digitising every book they could find and putting on the internet for searching.

Court actions ensured and the project was scaled back somewhat to out of print/out of copyright books.

Now the court case has been settled (subject to the Court’s approval) and the project goes on:

IPkat here (with press releases etc.) – the horse’s (well, Google’s) mouth here.

Publisher’s Weekly here via Marty.

Australian Copyright Council here.

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