Pharmaceutical patents

The European Commission has published its preliminary report into its inquiry into the state of competition in the pharmaceutical industry in the EU – comment and links via IPKat.

The IPKat also has links to what they describe as “the powerful speech” delivered by Sir Robin Jacob (aka Jacob LJ) in the Commission’s public meeting on the issue.

Meanwhile, the developing countries are developing a proposal which envisages greater involvement of WHO; see here, while there are also reports of the Director General of the WTO appearing to acknowledge some significance to the issue.

Pharmaceutical patents Read More »

bing infringed BING!

The applicant had registered BING! for

Class 9 Software for the legal profession and other industries and professions not limited in any way to a specific industry or commercial sector; Class 35 Distribution and sales of computer software.

Class 42 Design of computer software; programming maintenance, upgrading and updating of computer software for the legal profession and other industries and professions not limited in any way to a specific industry or commercial sector…

The respondent provided an internet postal service.  To enable subscribers to use the service, it supplied them with software to be downloaded and installed on the subscribers’ own computers.  

The first respondent’s promotional material uses the trade mark “bing” in relation to its software, and through installation and use of the software, the trade mark “bing” appears on the computer screen in various guises. It is clear from the respondents’ own evidence that the first respondent uses the mark “bing” in relation to at least software (class 9); distribution of computer software (class 35), and updating of computer software (class 42).

The software distributed by the first respondent has a number of components including “bing Client”, “bing Virtual Printer Driver”, “Popup bing Mailroom”, “Control bing Printer”, and “bing Help”.

Customers of the first respondent enter a software license agreement in respect of the software (and updates) provided to the customer by the first respondent under the name “bing”. Further, the software licence agreements refer frequently therein to “bing”.

Collier J rejected the argument that “bing” in its various guises was substantially identical to BING!, but found deceptive similarity.  Of potentially greater significance, her Honour went on to find that the respondent was using the “bing” mark in relation to goods and services covered by the applicant’s trade mark registration:

First:

52 …. I agree with the respondents that the first respondent is engaged in the provision of internet postal services, which prima facie are not goods or services in respect of which the applicant’s trade mark is registered. However I consider it is also clear that, as Mr Franklin submitted, the first respondent’s service is, in the manner in which it is conducted with the majority of its clients, a software-enabled service. While customers can access the first respondent’s service without specific software (an issue to which I will return later in the judgment), the first respondent provides software, bearing the trade mark “bing”, to customers to allow the customers to effect the internet postal service it provides, and to access that service.

Then, MID Sydney was distinguished:

57 So far as concerns the software provided by the first respondent to its customers bearing the moniker “bing”, in my view that software is a “good” which is both severable from the internet postal service, and would in other circumstances be capable of being the subject of a registered trade mark in its own right within Class 9. Similarly, distributing and updating that software are “services” within classes 35 and 42. The software supplied by the first respondent, and the services provided by the first respondent in support thereof, are not, to draw an analogy with MID Sydney 90 FCR 236, goods or services which lose their features as software because they form part of an overall broader service. The software remains software, which requires distribution and updating, no matter that it is used in connection with the first respondent’s internet postal service.

as was the SAP case relied on by the respondent

61 Where the analogy between these proceedings and SAP Australia 169 ALR 1 breaks down is that while the Full Court accepted in SAP Australia that “broadly based consulting services” could include supplementary training as an adjunct to the provision of custom designed computer systems for clients, in this case it does not follow that software provided by the first respondent is no more than an incident to the provision of its service. As I noted earlier, the software used by the first respondent is a product in its own right – the copyright therein is owned by a third party, and the first respondent has exclusive distribution rights (TS 66 ll 12-13). The first respondent provides the software even though, as Mr Cranitch conceded during cross-examination, the first respondent has some clients who do not use the software, but send to the first respondent documents in the form of PDF files, word documents and publisher documents (TS 71 ll 40-41). The software and associated services are an important part of the first respondent’s internet postal service.

62 In ascertaining whether software is “incidental” to its internet postal service as submitted by the first respondent, it is useful to test the first respondent’s hypothesis in this way. Computer hardware cannot properly function without the benefit of software. Yet it could scarcely be said in relation to a computer that software loaded on to a computer hard drive was “incidental” to the computer itself, merely because the software allowed the computer to operate in certain ways. This is clear from the many cases involving claims of infringement of trade mark with respect to software (for example, Microsoft Corporation v PC Club Australia Pty Ltd [2005] FCA 1522 and Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54).

63 Software is pervasive in twenty-first century Australia. In the words of one writer:

In case you have not noticed, software is now a key part of our social structure — we sense it in our cars, in our supermarkets, in our televisions, in our computers — we sense it everywhere; it is a ubiquitous, undulating, architectural, air like, water like commodity that infiltrates our daily lives. (Brian Fitzgerald, “Software as discourse?: A constitutionalism for information society (1999) AltLJ 25)

64 However its omnipresence does not, in itself, mean that it fulfils an incidental role in relation to functionalities such as the service provided by the first respondent. Further, the fact that the software used by the first respondent is not sold by the first respondent, or indeed that it has no operation other than in relation to the first respondent’s service, does not mean that it is not “software” for the purposes of classes 9, 35 and 42 for which the applicant has a statutory monopoly.

Collier J then found Mr Crainitch, the managing director, CEO and company secretary of the first respondent, liable for authorising, directing or procuring the corporate respondent’s infringements.  Her Honour dismissed the allegations of contraventions of s 52 and 53 of the Trade Practices Act and passing off.

An application to re-open the case after judgment was reserved was dismissed here and the final form of relief granted is here.  It would appear that the respondents could continue the postal service under the name “bing” if they can come up with a new name for their software.

Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1) [2008] FCA 1760 

Prof. Mark Davison reminded me that her Honour refused to award damages and points out a possible defence that the respondents might have explored here.

bing infringed BING! Read More »

Sex, videotapes and damages II

Following on from last week’s Giller v Procopets, I was asked if Max Mosley’s payment of the prostitutes precluded a claim for breach of confidence, leaving him just with his Conventional rights to privacy.

It is certainly true that the trial judge focused primarily on the invasion of Mr Mosley’s rights to privacy. However, his Lordship did also find that “Woman E” breached her obligation of confidence to Mr Mosley:

104 In the light of these two strands of authority, it becomes fairly obvious that the clandestine recording of sexual activity on private property must be taken to engage Article 8. What requires closer examination is the extent to which such intrusive behaviour could be justified by reference to a countervailing public interest; that is to say, at the stage of carrying out the ultimate balancing test. I will focus on those arguments shortly.

105 Before I do so, however, I need to address the separate question of whether Woman E owed a duty of confidence to the Claimant and the other participants in respect of the events at the flat on 28 March. In the ordinary way, those who participate in sexual or personal relationships may be expected not to reveal private conversations or activities. Evidence was given by the Claimant and the other women both generally about the recognised code of discretion on “the scene” and also, specifically, about their relationships with one another. Woman A was a close friend of Woman E and had introduced her to the Claimant. Her outrage is displayed in a text she sent on 11 April:

” … our scene is based on complete trust and complete discretion. However one of my so called close friends dominatrix [Woman E] has betrayed that confidence by doing what she has done. I am devastated by this act of pure total selfish greed, she has no morals, no integrity, no loyalty, complete disregard to others, cruel, and she is a liar!!! No one … deserves this invasion of privacy.”

106 It was often said that “there is no confidence in iniquity”, but it is highly questionable whether in modern society that is a concept that can be applied to sexual activity, fetishist or otherwise, conducted between consenting adults in private. All the other women, as well as the Claimant, felt utterly betrayed by Woman E’s behaviour in filming them without consent and selling the information to the News of the World. I was told that she was soon ostracised from “the scene”, where the need for discretion is widely accepted.

107 It is true that the Claimant on this occasion paid the women participants, although he has not always done so in the past, but this does not mean that it was a purely commercial transaction. Even if it was, that would naturally not preclude an obligation of confidence, but it is quite clear from the evidence that there was a large element of friendship involved, not only as between the women but also between them and the Claimant. For example, had it not been for the intervention of the News of the World there was a plan to offer him a (free) session for his birthday (which falls in April).

108 In any event, irrespective of payment, I would be prepared to hold that Woman E had committed an “old fashioned breach of confidence” as well as a violation of the Article 8 rights of all those involved. This may have been at the instigation of her husband, who saw the opportunity of making £25,000 out of the News of the World and who made the first approach. (emphasis supplied)

One might add that the equitable obligation of confidence long since escaped the confines of private relationships involved in (Prince) Albert v Strange and Argyll v Argyll to afford protection in many commercial situations such as employer-employee relationships where money changed hands.

So, while the obligation of confidence was recognised, it would seem the English court took the converse approach to the Victorian Court of Appeal – concentrating on the modern right to privacy.  So e.g. Eady J noted at [182]:

The cause of action now commonly described as infringement or breach of privacy, involving the balancing of competing Convention rights, usually those embodied in Articles 8 and 10, has recently evolved from the equitable doctrines that traditionally governed the protection of confidential information. Now (and especially since the formulation by Lord Nicholls in Campbell v MGN Ltd [2004] 2 AC 457) it is common to speak of the protection of personal information in this context, without importing the customary indicia of a duty of confidence. 

Max Mosley v News Group Newspapers Ltd [2008] EWQB 1777

Sex, videotapes and damages II Read More »

Served by “Facebook”

Courts have apparently been allowing service of court documents by email and in at least one high profile case against a rugby player alleged to be in breach of his club contract by text message.  Now, for those of you looking for reports of the case where the Court allowed service by Facebook, try:

here and here and here and here.

Master Harper’s decision in MKM Capital v Corbo and Poyser doesn’t appear to be online on Austlii yet.

Lid dip: Jane Treleaven

By the way, Jane asks what kind of privacy settings these people were using that their, er, Facepage (?) showed so much personal information?

While teasing out some issues about the Lori Drew prosecution, Eric Goldman also notes there are problems with the reliability of social network sites pages here, here and here (e.g.).

Served by “Facebook” Read More »

Trade mark use by non-profits

The European Court of Justice has ruled that a non-profit association – in this case a body devoted to the preservation of military traditions which performs charitable works and collects gifts – does in fact use its “trade” marks in (what we would call) the course of trade:

Case C?442/07, Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’

IPkat’s summary here.

Trade mark use by non-profits Read More »

How much reputation is enough?

The Full Court has allowed Hansen’s appeal from the dismissal of its trade practices/passing off action against Bickford’s Monster Energy drinks.

Before the trial judge, it was conceded that Bickford’s get up would be confusingly similar to Hansen’s, but the trial judge found that Hansen did not have sufficient reputation with the public in Australia to found its claim.

Hansen had never traded here nor sold its energy drinks here.  However, there was evidence that it had “indirectly” promoted its brand name and get up here through activities such as sponsorships of sporting events and logos on clothing.

The Full Court reported the trial judge as finding that Hansen could not succeed unless it established a relevant reputation within its target market in Australia – males between the ages of 18 to 30.  His Honour went on to find the evidence was insufficient to support such a finding.  The indirect advertising was too fleeting and occasional to establish a reputation within the target youth market in Australia “other than perhaps some extreme sports enthusiasts”.

The Full Court allowed the appeal on the grounds that the “target market” was not the relevant section of the public to test Hansen’s reputation. It was necessary only for Hansen to show that it had a reputation in Australia with any relevant section of the public.

Tamberlin J (with whom Siopis J agreed) held:

[46] … In our view, the language of the section and its purpose do not require the Court to select any particular group as targeted by advertisers when assessing whether a breach has occurred. The fact that certain pieces or strategies of advertising may target a particular class of people as potential customers of the relevant product does not justify the conclusion that a significant number of persons in that class must be shown to be aware of the reputation before a claim under s 52 is made out. The question which must be answered can properly be framed as being whether a not insignificant number of persons in the Australian community, in fact or by inference, have been misled or are likely to be misled. (emphasis supplied)

Finkelstein J agreed in the result, but disagreed about the need for a reputation amongst more than an insignificant number of persons.  While his Honour accepted that passing off required the establishment of a reputation amongst a significant or substantial number of the Australian public, there was no warrant to import that requirement into an action for contravention of the Trade Practices Act.

Siopis J, as noted, agreed with Tamberlin J indicating also (?) that the earlier decisions requiring a not insignificant number were not “plainly wrong”.

The significance of the High Court’s reference in [103] of Campomar v Nike to isolating a representative of the class as the hypothetical individual to test “representations to the public”, therefore, bearing in mind the references in [102] to “ordinary” or “reasonable” members of that class, remains to be tested in some future High Court case.

As the trial judge did not explicitly find that Hansen did in fact have a reputation amongst Australian extreme sports enthusiasts, matter was remitted to him for further hearing.

Importantly for the future, Finkelstein J accepted that indirect marketing activities could be sufficient to establish the foundation for a s 52 claim:

63 There are a plethora of examples of indirect advertising and it is a key topic of discussion in advertising literature. Indirect advertising of the kind with which everyone is familiar is the sponsorship of sports. Many people in many countries place great value upon entertainment, competition and accomplishment, all of which are seen in the sporting arena. Brand names and logos appear around sporting arenas, on the clothing worn by sportsmen and women and on the equipment sportsmen and women use. This form of advertising is seen by many thousands of fans who attend sporting events and, in the case of popular sports, by hundreds of thousands of people if the event is broadcast on television. There are numerous studies that show that this type of indirect advertisement is far more effective at eliciting a consumer recall response than a direct television commercial.

64 In my opinion the judge was entitled to infer that the indirect brand advertising employed by Hansen (and, for that matter, Bickfords) can establish reputation as well as, if not better than, direct advertising. After all, everyone knows that James Bond drives an Aston Martin, Janis Joplin wanted to own a Mercedes Benz and Audrey Hepburn had breakfast at Tiffany’s.

Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181

How much reputation is enough? Read More »

Trade mark dilution or well known trade marks

The European Court of Justice has handed down an important ruling clarifying aspects of trade mark dilution in the EU: Intel v CPM:

IPkat’s comments here.

Links to some other commentary here and the “Rapid Response” seminar power point slides via here.

Art.4(4) of the Trade Marks Directive provides:

4.      Any Member State may furthermore provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:

(a)      the trade mark is identical with, or similar to, an earlier national trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark;

which is similar to our very own s 120(3), so there might be some scope for understanding how s 120(3) could work?

Meanwhile, IP Dragon draws our attention to issues relating to protecting well-known trade marks in China here.

Trade mark dilution or well known trade marks Read More »

Sex, videotapes and damages

The “IP issue” arose amid a number of claims arising from the breakdown of a defacto relationship.

Ms Giller came from Russia in 1990 and shortly after commenced living with Mr Procopets. Together, they had twins, but the relationship was very rocky to say the least.  Neave JA explained the circumstances giving rise to this part of Ms Giller’s claim:

358 … Ms Giller obtained an interim intervention order against Mr Procopets on 12 November 1996. As is often the case where a relationship involves violence,[336] Ms Giller continued to see Mr Procopets after the interim intervention order was granted. Ms Giller’s claim for damages for breach of confidence, breach of privacy and intentionally causing mental harm arose out of the events which followed the granting of this intervention order. The relevant factual findings made by his Honour are summarised below.[337]

359 The couple had intercourse on 19 November 1996 and on a number of other occasions between then and 1 December 1996. Mr Procopets filmed their sexual activities on a hidden video camera. Until 25 November, Ms Giller was unaware of the filming. Thereafter she became aware of the filming and acquiesced in it.

360 Shortly after 1 December 1996, relations between Ms Giller and Mr Procopets deteriorated, to the point where Mr Procopets began threatening to show videos of their sexual activities to Ms Giller’s friends and family.

Mr Procopets also rang Ms Giller’s employer and said that he had a video showing her abusing her position to obtain sexual favours. Mr Procopets also showed the videotape to his subsequent girlfriend for the purposes of degrading Ms Giller.

The trial judge found that:

I am satisfied that the plaintiff has established that the relationship was a confidential one, that she did not authorise him to distribute the video or show it, that his unauthorised distribution was a breach of that confidence and she would be entitled to relief for that breach of confidence.

I also find in respect of the threats to show, the distribution and the showing of the tape in December 1996, that the defendant intended to cause the plaintiff mental harm and that in distributing the video the plaintiff was distressed, annoyed and embarrassed.

His Honour explained why the videotapes were subject to an equitable obligation of confidence:

In my view persons indulging in a sexual activity in the privacy of their own home create a confidential relationship during such activity. In my view it is difficult to think of anything more intimate than consensual sexual activities between two parties in the privacy of their home. It involves a relationship of mutual trust and confidence which is to be shared between the persons but is not to be divulged to others without the consent of both parties.

(Salacious) shades of (Prince) Albert v Strange.

His Honour however refused damages in the equitable jurisdiction because Ms Giller did not seek an injunction and, further, equitable damages (my terminology used impermissibly loosely for the monetary remedy available under Lord Cairn’s Act) were not available for mental harm falling short of psychological or psychiatric injury.

The Victorian Court of Appeal unanimously held that damages (or perhaps equitable compensation for the purists amongst you), including aggravated damages, were available. If damages had been available, the trial judge would have awarded $5,000 + $3,000 by way of aggravated compensatory damages.  Neave JA, with whom Maxwell P agreed, awarded $50,000 included $10,000 by way of aggravated damages.  Ashley JA would have awarded $27,500 (including $7,500 by way of aggravated damages).

One might think that the availability of such damages for defamation and copyright infringement (e.g. Milpurrurru v Indofurn) admittedly, respectively, legal and statutory wrongs should mean the Court’s conclusion should not ultimately be controversial.

Nonetheless, while it is clearly very, very carefully considered – running to over 500 paragraphs (dealing with several other claims as well) – Mr Procopets represented himself.  

In addition, as the Court acknowledged, no Australian court has gone this far before.  

The Court also took into account House of Lords and Court of Appeal decisions, recognising that the most directly relevant also involved the application of the European Convention on Human Rights and appear to have assumed the availability of the remedy in these circumstances.  Also, the decision bears on territory in which the learned authors of Meagher, Gummow and Lehane have expressed vigorous views, although perhaps more about whether it is ‘damages’ under Lord Cairn’s Act or equitable compensation in the inherent jurisdiction that is being invoked.

Neave JA explained that, if it ever were the case that the Victorian enactment of Lord Cairn’s Act required an injunction to be sought, that had been conclusively changed by the wording adopted in s 38 of the Supreme Court Act 1986.

As to damages for mental distress and embarrasment, her Honour considered:

422 In Smith Kline & French v Secretary, Department of Community Services and Health, Gummow J said the conferring of equitable jurisdiction on a court:

… brings with it, in a case such as the present, the inherent jurisdiction to grant relief by way of monetary compensation for breach of an equitable obligation, whether of trust or confidence.[407]

423 Equitable remedies such as injunctions are available to prevent publication of confidential material because of its private nature.[408] It is unnecessary in such applications to show that, if unrestrained, the breach of confidence will cause financial loss or psychiatric injury. By parity of reasoning there should be no barrier to the making of an order for equitable compensation to compensate a claimant for the embarrassment or distress she has suffered as the result of a breach of an equitable duty of confidence which has already occurred. As Morland J said in Cornelius v De Taranto:

…[I]t would be a hollow protection of [the right to protection of confidential information] if in a particular case in breach of confidence without consent details of the confider’s private and family life were disclosed by the confidant to others and the only remedy that the law of England allowed was nominal damages. In this case an injunction or order for delivery up of all copies of the medico-legal report against the defendant will be of little use to the claimant. The damage has been done. … In cases of commercial or business breach of confidence the powers of the court are not barren. Such remedies as injunction, delivery-up, account of profits and damages may be available… similarly in the case of personal confidences exploited for profit or peddled to the media. … In the present case in my judgment recovery of damages for mental distress caused by breach of confidence, when no other substantial remedy is available, would not be inimical to considerations of policy but indeed to refuse such recovery would illustrate that something was wrong with the law.[409]

424 I respectfully agree with that view.[410] An inability to order equitable compensation to a claimant who has suffered distress would mean that a claimant whose confidence was breached before an injunction could be obtained would have no effective remedy.

and, if damages were to be assessed under Lord Cairn’s Act:

428 Damages under Lord Cairns’ Act are sui generis, and can be awarded in some circumstances where common law damages are not recoverable.[416] In my view, such damages should be available where the essence of the plaintiff’s case is that he or she has been embarrassed by the exposure of private information, rather than that the defendant has profited from the wrongful use of that information. In Talbot v General Television Corporation Pty Ltd,[417] Young CJ treated damages under Lord Cairns’ Act as compensating the plaintiff for what he or she had lost.[418] It is consistent with that approach to compensate Ms Giller for the mental distress suffered as a result of the defendant’s actions.

Her Honour considered that awarding damages was also consistent with the injunctions by Gleeson CJ, Hayne and Gummow JJ in ABC v Lenah Meats on the need for breach of confidence to develop appropriately to protect privacy interests.

Ashley JA considered that it was unnecessary to consider Ms Giller’s claim to a generalised tort of invasion of privacy because breach of confidence was available and adequate to address the situation.

Giller v Procopets [2008] VSCA 236.

Sex, videotapes and damages Read More »

Patent appeals from the Commissioner

Merck & Co. had successfully opposed Sherman’s application for a patent.  Sherman appealed to the Federal Court from that rejection.  Merck subsequently withdrew from the proceeding in the Court and the Commissioner was added as a party.  The Commissioner filed an affidavit exhibiting a copy of the delegate’s decision upholding the opposition and the declarations which Merck had relied on in the opposition.

The trial judge ruled these materials were inadmissible.  The Full Court (Heerey, Kenny and Middleton JJ) upheld the Commissioner’s appeal against this exclusion of material. 

When an appeal is brought in the Federal Court from the Commissioner (or the Registrar of Designs or of Trade Marks), FCR O 58 r8 provides that evidence before the Commissioner may, with leave of the Court and saving all just exceptions, be admissible in the Court.

Unlike the usual situation in “appeals” of this kind where the parties to the opposition may be relying on the statutory declarations they had filed in the Office, Merck had withdrawn and so the statutory declarations of its witnesses were hearsay – presumably, the Commissioner did not intend, or was unable, to call them.

The Full Court confirmed that the rules of evidence still apply to the evidence sought to be “uplifted” so that, if there are objections such as that the evidence is hearsay, evidence which was before the Commissioner may be excluded before the Court.  However, the Full Court went on to find that both the decision and the declarations were admissible.

The delegate’s decision itself was relevant on two bases (at [37]):

First, the fact that it was made was a fact on which the jurisdiction of the Court depended.

Secondly (and more substantively), the Commissioner’s decision and the reasons for it were admissible before the Court as a form of expert evidence because (unlike the Court) the Commissioner (and the various Registrars) is credited with having some technical expertise which the Court is entitled to take into account.

As the decision itself was relevant and admissible, the Full Court went on to hold that so too were the materials on which it was based.

The weight actually to be accorded to the Commissioner’s decision ultimately would depend on what other evidence was adduced before the Court.

Depending on the extent to which the evidence before the Commissioner and the Court overlaps, the decision-maker’s opinion on these matters carries some weight in the Court’s assessment. Viewed in this way, the decision of the delegate is plainly not inadmissible on the ground that it is irrelevant. 

The Full Court noted that, because the declaratory evidence was admissible on the grounds that it was relevant to an understanding of the Commissioner’s decision, it was admissible for all purposes.  Further, however, the Full Court agreed with Lindgren J’s analysis in Alphapharm v Lundbeck (at [762 – 770]) of why articles cited by an expert were admissible even though hearsay.  

The Court did not address Heerey J’s earlier decision in Cadbury v Darrell Lea (No. 3) in which market survey reports were excluded as ‘double’ hearsay.  It would seem that the difference is that in Sherman and Lundbeck the materials were adopted or referred to by the expert as the basis for the expert opinion.

Commissioner of Patents v Sherman [2008] FCAFC 182.

Patent appeals from the Commissioner Read More »

Online Reputation

Online Reputation Read More »