IPRIA seminar on patent infringementi

IPRIA (Ass. Prof. Beth Webster and Kimberlee Weatherall) is holding a lunch time seminar reporting on the results of their survey of patent infringement in Australia:

  • in Melbourne on 9 June 2009; and
  • in Brisbane on 10 June,

at the Blake Dawson offices in those cities.

According to the blurb:

One of the great unknowns of patent policy is how much infringement actually goes on, and how much of that infringement leads to enforcement of an informal or formal kind. IPRIA recently conducted a representative survey of over 3700 Australian inventors in order to estimate the prevalence of (alleged) infringement and what formal and informal steps were taken to stop the copying activities. We present these findings along with a discussion of what can be done to improve the efficacy of patent enforcement in Australia.

The seminar is free of charge.

More information and links to the registration pages for each event here.

Working a patent for regulatory approvals

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.

Dough Vo = no go

Arnott’s complained (e.g. here and here) that Krispy Kreme’s new dooughnut, the Dough Vo, infringed its trade mark for the Iced Vo Vo

You probably had those marshmallow and jam concoctions inflicted on you as a kid. But the trade mark, No 864, which is just for VO VO has been registered since 1906 for biscuits.

Krispy Kreme was reported in the press as saying it wasn’t going to back down – on legal advice, no less –

Arnott’s gave the Australian arm of the doughnut chain until 5pm (AEST) on Friday (April 24) to stop using the name and to undertake not to use similar names in the future.

However, Krispy Kreme Australia CEO John McGuigan said after taking legal advice, the company had decided to continue selling the Iced Dough-Vo.

Next thing we know, however, the headlines read “Dough-Vo bows to Vo-Vo” and “Krispy Kreme backs down on Vo-Vo boo-boo“.

One interesting question for trade mark students: to what extent can you look at what the Dough-Vo looks like when considering the trade mark infringement question? In this case, you probably get rather more latitude because the infringement would arise under s 120(2).

Another thing to worry about. How often do you see (or write in your letters):

we have taken legal advice and our advice is that it is not the case (that trademark was breached)

Has Mr Krispy Kreme just waived privilege in his legal advice?  Have a look e.g. at Bennett v Chief Executive Officer of the Australian Customs Service [2004] FCAFC 237 esp. at [4], [10] and [32].

Lid dip: James McDougall for word of Krispy Kreme’s retreat.

Beery barefeet on appeal

Curiouser and Curiouser!

The Full Court has affirmed the trial judge’s finding that Gallo’s registration of the trade mark BAREFOOT for wine should be removed for non-use. However, the Full Court has overturned his Honour’s finding that Lion Nathan’s use of Barefoot Radler for beer did not infringe that registration (before it was removed). Consequently, the Full Court has found that Lion Nathan did infringe the registration up until the date the registration was removed from the Register.

Gallo acquired the trade mark by assignment. Neither it nor the assignor had ever consciously used it in Australia.  However, some wine bearing the trade mark had made their way into Australia for resale via, presumably, a parallel importer. (More detailed summary of the facts from the decision at 1st instance here and here – the internal links are broken I’m afraid.)

On the question of whether or not Gallo (or its predecessor) had used the trade mark as a trade mark, the Full Court said:

34 In our opinion, the conclusion of the primary judge was correct. The contention of Gallo that an owner of a registered trademark uses the mark in Australia simply because goods to which the owner (or an authorised user) has affixed the mark are traded in the ordinary course of trade in Australia should be rejected.

and

38 …. The essence of Gallo’s case in this matter is this is all that is necessary to establish use in Australia by the manufacturer or producer. However, that is not what the Full Court said. Projection by the manufacturer of goods bearing its mark into the course of trade in Australia was the other factor which, together with the display, sale or offering for sale, led to the conclusion that there had been use of the mark in Australia by the manufacturer and its owner. We think fairly plainly what the Full Court was saying was that for there to be use in Australia of the mark by the owner, the owner of the mark must have engaged in conduct of some type which the owner might reasonably contemplate would result in dealings with its goods marked with its mark in Australia while the goods were in the course of trade.

As a matter of interpretation, the Full Court concluded, contrary to Lion Nathan, that the trade mark could be expunged only from the date the Court made the order under s 101.

This was particularly significant because the Full Court, as noted above, found that Lion Nathan’s use infringed the trade mark while it was registered.

First, the Full Court rejected the trial judge’s finding that beer and wine were not goods of the same description:

72 The primary judge accepted that there were a number of factors which supported the view that Lion Nathan’s beer and wine were goods at the same description. They were both alcoholic beverages and generally distributed by this same major wholesale distributors. The beer was intended to be an appealing alternative to wine and in developing the product, Lion Nathan deliberately set out to attract people who did not drink beer. Indeed it was developed with the deliberate objective of enticing consumers who previously drank wine but not beer. Producers of alcoholic beverages are no longer confined to the production of beer, as opposed to wine, and large producers of alcoholic beverages now produce a range of products and market themselves as doing so. Companies which were once brewers now market and distribute a range of products including beer, wine, spirits, cider and non-alcoholic drinks. Wine and beer are now frequently distributed by the same retailers. We agree that these matters point, and in our opinion point convincingly, to Lion Nathan’s beer and wine being goods of the same description.

73 The considerations which led his Honour to reach the opposite conclusion are, in our opinion, of materially less significance. The first, which concerned the origin of the goods, focused on the manner of manufacture of beer on the one hand and wine on the other. While this clearly establishes that they are not the same goods, it is unlikely that this difference would be significant to the consuming public if, as his Honour found, large producers of alcoholic beverages produce a range of products. Additionally it is important to bear in mind that this issue is being considered in the more general context of whether consumers might see the goods as having the same trade origin: Southern Cross at 606. The same can be said of the next consideration relied on by his Honour, namely the specific manner of sale in restaurants on the one hand and retail outlets on the other. If large producers of alcoholic beverages are producing a range of products then the fact that the wine might be sold in a slightly different way would not be a difference of significance to the consuming public who may come to consider the trade origins of Lion Nathan’s beer. The next consideration was the manner in which beer is consumed, that is drunk for its refreshing qualities, and not, like wine, consumed in a “sipping fashion”. For our part, we doubt this is a relevant consideration. Nor do we think the last consideration, the detailed corporate structure of Lion Nathan, is of any real significance.

Then, the Full Court upheld the trial judge’s finding that Lion Nathan’s BAREFOOT RADLER trade mark was deceptively similar to Gallo’s trade mark.

Finally, the Full Court rejected Lion Nathan’s attempt to rely on the (rarely used) proviso to s 120(2)(b) which provides:

However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.

The Full Court foreshadowed that this was a tough requirement to hurdle:

76 …. However, any conclusion about deceptive similarity would usually inform consideration of whether the actual use was likely to deceive or cause confusion. In a sense, an affirmative answer to the question of whether the alleged infringing mark was deceptively similar would be the starting point. If it was, then it would, in many instances, render it more likely (though not inevitable) that the actual use of the allegedly infringing mark was likely to deceive or cause confusion. Also relevant, in our opinion, would be the matters considered in determining whether the alleged infringer’s goods are of the same description as the goods in respect of which the registered mark is registered.

Lion Nathan had not satisfied this requirement here. The facts that the usage was on beer, the beer was packaged in six packs and in retail stores from the “beer” section did not help:

77 …. The use of the image of a bare foot with the words “BAREFOOT RADLER” would be more likely to reinforce the significance or prominence of the word “BAREFOOT”. The fact that the allegedly infringing mark was on beer packaged in the way described does not, in our opinion, tell against the likelihood that a person looking at beer packaged in this way would think that the beer originated from Gallo. If, in a retail liquor outlet, there was beer bearing the trade mark “BAREFOOT RADLER” where the word “RADLER” was the description of a type of beer and also wine with the trade mark “BAREFOOT” immediately followed by a description of the type of wine (by reference to grape type), then there is, in our opinion, little room to doubt that it is likely many would view the former as originating from the producer of the latter.

The matter will be remitted to the trial judge to deal with remedies. Wonder what the damages will be?

So, it would seem you should bring and conclude your non-use action before you launch the product. That will require a client with a very long term commitment to the brand!

E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27 (Moore, Edmonds and Gilmour JJ)

Is copying enough to infringe Down Under?

The Full Court (Lindgren, Goldberg and Bennett JJ) has allowed the appeal in Elwood v Cotton On. So, for example, contrary to the trial Judge’s ruling, Elwood’s copyright in this:

 

Elwood New Deal T-shirt
Elwood New Deal T-shirt

was infringed by this:
  

Cotton On Moscow T-shirt
Cotton On Moscow T-shirt

First, the Full Court agreed with the trial Judge that Elwood’s t-shirt design was properly classified as an artistic work and not a literary work nor both an artistic work and a literary work: the semiotic component – the words and numbers – was too slight for the design to be viewed as an artistic work.

As an aside, the Full Court did not express a view of whether or not the ruling in Anacon that a circuit diagram was both an artistic work and a literary work represented the law in Australia.

Secondly, the Full Court reiterated that infringement was to be tested in 3 steps:

(1) to identify the work in suit in which copyright subsists;

(2) to identify in the alleged infringing work the part taken (ie derived or copied) from the work in suit; and

(3) to determine whether the part taken constitutes a substantial part of the work in suit.

At the stage of identifying the work in suit, the Full Court ruled that it was the work as a whole which needed to be identified.  The Full Court held, however, that the trial Judge had erred by excluding from consideration at this stage those matters which her Honour found were matters of “idea” rather than “expression”.

Cotton On was found, both at trial and on appeal, to have blatantly copied from Elwood’s work. As a comparison of the work and Cotton On’s designs above shows what Cotton On took was the the layout, positioning of elements and the overall “look and feel”.  What it didn’t take were the actual words, symbols and images.

The trial Judge had found this significant, ruling that:

The text and symbols matter. The colours matter. Similarly, unlike Finkelstein J in Autocaps [a reference to Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd (1999) 46 IPR 339], I cannot say that what is conveyed by the two prints is the same – it is not.

Having found the error identified above, the Full Court disagreed.  Their Honours found that the layout, selection , arrangement and style of the various elements were a substantial part of the copyright work and so there had been an infringing reproduction.

The means by which the Full Court arrived at this conclusion is significant.

The Full Court had appeared to accept that there may be a role for “ideas” and “expression” at the infringement stage of the inquiry.  However:

35 While the idea/expression dichotomy is basic to the law of copyright, it is a difficult one, particularly in the case of artistic works. What principles are to govern the demarcation? The “idea” underlying a copyright work can plausibly be identified at different levels of generality. The higher the level of abstraction, the more that is left as protectable expression. The lower the level of abstraction, the less that is left as protectable expression. ….

….

37 A difficulty associated with the idea/expression dichotomy is that the choice of the level of abstraction is subjective and uncertain. Mr Simons’s identification of the underlying concept (see [21] above) was not conclusive.

In contrast, the Full Court preferred a rather more mechanistic approach.  The layout, etc., “look and feel” were substantial because the evidence showed that far more effort went into achieving them:

70 Mr Gillott said that he and Mr Simons tried to achieve a “balance” of the six elements on the front and the five elements on the back, and the proportion they bore to one another. He estimated that there were at least 10 to 15 printouts by Mr Simons on which he (Mr Gillott) wrote his comments and his “scribbles”. He said that the entire process took a good two weeks, but no more than three weeks, from the time he handed over his initial draft to Mr Simons.

71 Mr Gillott described Elwood’s design procedure. He said that the form and shape was settled upon first, and the “type elements”, “wording and text elements”, last. It was after that two to three week period that attention was directed to finalising the wording and text. Mr Gillott said that “once we’re down to inputting the words that we would like in the art, that happens quite quickly”. He explained that it took no more than two days to put those elements into the design, because he “already had the ideas to carry “Raging Bulls” through”, and the expression “Durable by Design” was Elwood’s “core logo”. He said that once those elements were introduced, he signed off on the NewDeal print and it took no more than two days for production to commence.

….

73 Mr Gillott’s evidence recounted above, which was not contradicted, was to the effect that by far the greater part of the effort, skill and time involved in designing of the NewDeal T-shirt was devoted to layout rather than with the choice of words and numerals. (emphasis supplied)

Two weeks versus two days may seem, perhaps, a rather quantitative approach to the qualitative assessment of judgment and degree which the traditional inquiry into a substantial part is acknowledged to require.

It also turned out that Elwood’s design was in fact a development of its earlier 96ers T.  Unfortunately, an image of that earlier design is not included in the judgment.  Their Honours explained, however, that the New Generation design involved the following differences:

74 There are obvious similarities between the 96ers and the NewDeal design but the NewDeal design contained artistic expressions of an underlying idea that were not found in the 96ers. Mr Gillott and Mr Simons introduced the following features:

curved sections;

some changes to the presentation of the bull’s head trade mark;

new letter forms;

accentuation of the overall V shape;

a balance of the six elements on the front and the five elements on the back; and

changes in the proportions borne by the respective elements to one another.

By taking these features of the NewDeal design or layout, Cotton On reproduced something that was or included a substantial part of that design or layout.

Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd [2008] FCAFC 197

Review cases handed down

On Friday, Kenny J handed down the 2nd and 3rd substantive design cases under the new Act:

  • in Review v Redberry [2008] FCA 1588, her Honour found the design valid but not infringed;
  • in Review v New Cover [20089] FCA 1589; valid and infringed including $85,000 damages (of which $50,000 were for additional damages).

The judgments will no doubt be up on Austlii soon but, until then, students can download pdfs from the links below:

review-v-redberry-judgment

review-v-new-cover-judgment

Lid dip, Sue Gatford.