Following on from the earlier post, the Full Court did, however, dismiss ACER’s appeals against Besanko J’s rulings that:
Dr Hart owned the copyright in the SOQH, even though it was created while he was employed by the Department of Education; and
The assignment of the right to sue for past infringements was valid.
The ruling on the right to sue for past infringements is particularly important as it is the first substantial appellate consideration of the question. It is all the stronger because it was executed some 2 years after the assignment of copyright but Besanko J and the Full Court found there was sufficient nexus with the copyright assignment to support its validity.
It turns out that the Registrar does have power to undo an assignment of a registered trade mark that has been registered wrongly.
A Mr Brailsford was the registered owner of the Peel Away trade mark for paint stripping preparations, TM No. 741047. He died in 2008.
On 23 Setember 2010, trade mark attorney McInnes filed an application to register an assignment of the trade mark to Mediaquest.
On 8 October 2010, the Registrar registered the assignment and Mediaquest became the owner of TM No. 741047.
On 12 November 2010, trade mark attorney Wilson wrote to the Registrar complaining about the registration of the assignment without notification to him and challenging it. Mr Wilson was acting for Mr Brailsford’s heirs and had been the address for service entered in the Register when the application to register the assignment was lodged.
On 22 November 2010, the Registrar wrote to Mr McInness stating that the documentation relied on to establish the assignment was inadequate and so the Registrar intended to cancel the registration of assignment pursuant to s 81. Mediaquest objected to this and pointed out, amongst other things, that it had withdrawn a pending non-use action once the assignement was registered.
Further correspondence took place and, in due course, a hearing at which the delegate concluded Mediaquest had not established its entitlement to be registered as the assignee. Mediaquest appealed.
On appeal, Emmett J held that:
1 Mediaquest was not entitled to an assignment; and
2 the Registrar did have power to cancel the registration of the assignment.
Mediaquest claimed it had an assignment from CRT. Mr Brailsford was the president and a director of CRT. Mediaquest sought to argue that his registration of TM No 741047 in Australia was in breach of his duties to CRT as a director and consequently the trade mark belonged in equity to CRT and, as a result of an assignment from CRT to Mediaquest, to it.
It seems Mr Brailsford may well have coined the mark and used it in the USA. At one point, the US mark was owned by another of Mr Brailsford’s companies, Pilgrim. In November 1992, Pilgrim assigned all its rights to Mr Brailsford and, in August 1993, Mr Brailsford assigned all his (US) rights to CRT. It was after this, in 1997, that Mr Brailsford applied to register what became TM No. 741047 in Australia in his own name. In 1998, CRT applied to register a patent in the UK, identifying Mr Brailsford as the inventor and claiming entitlement through agreement with him.
Emmett J found Mr Brailsford was entitled to register TM No. 741047 in his own name:
CRT was clearly the owner of the US trade marks;
both Pilgrim and CRT were creatures of Mr Bailsford;
while CRT was incorporated in Jersey in the Channel Islands, there was no evidence that it had ever traded anywhere other than in the USA or the UK.
The contention advanced on behalf of Mediaquest is that Mr Brailsford acquired the opportunity to register the Peel Away Mark in Australia by reason of his being a director of CRT. However, that can only be an inference. The circumstance that Mr Brailsford had dealings with the Peel Away mark before CRT was incorporated gives rise to a contrary inference. That is to say, it does not necessarily follow that the opportunity of registering the Peel Away mark in Australia was one that came to Mr Brailsford by reason of his being a director of CRT. Rather, an inference is at least available, and may perhaps be more easily drawn, that CRT acquired whatever opportunity it had to exploit the Peel Away Mark, and associated technology and knowhow, because Mr Brailsford chose to make it available to CRT. (emphasis supplied)
In these circumstances, his Honour concluded at  that the opportunity to register the trade mark in Australia did not come Mr Brailsford’s way because of his role in CRT and so CRT was not entitled to the trade mark in equity.
Power to cancel
Section [88(2)(e)] provides a power to rectify the Register on the basis that an entry in the Register “was made, or has previously been amended, as a result of fraud, false suggestion or misrepresentation.” This power, however, is conferred on the Court, not the Registrar.
Emmett J noted that under s 109 and s 110 the Registrar only had power to register an assignment of a trade mark. Whether there had been a valid assignment was a jurisdictional fact and, if there had not been a valid assignment, there was no power to register the assignment. In such a case, therefore, the Registrar had power to cancel the erroneous entry. As a result at :
There was no actual assignment of the Registered Mark to Mediaquest, either from Mr Brailsford or from his executors. Accordingly, the Registrar’s decision of 8 October 2010 to record the assignment in the Register was tainted by jurisdictional error and was no decision at all. It was therefore open to the Registrar to reconsider whether the duty imposed by s 110 had been enlivened, by revisiting the question of whether there was an actual assignment or transmission of the Registered Mark to Mediaquest. Having determined that there was no actual assignment or transmission, it was open to the Registrar to take steps to cancel the earlier action. There is nothing in the Act to indicate that a decision of the Registrar under Part 10 that was affected by jurisdictional error should continue to have legal effect. Indeed the considerations outlined above suggest the contrary.
In answer to Mediaquest’s concerns about the uncertainty this would give rise, Emmett J pointed out at  that:
the scheme of the Act is not proprietorship by registration but registration of proprietorship. Registration under the Act is only prima facie evidence of ownership, as is provided by s 210. The registered owner is always susceptible to action being taken under Part 8 to revoke a trade mark that should never have been registered, or to substitute the true owner of the trade mark for that of a wrongful claimant. True ownership of a trade mark is a defence to infringement proceedings brought under the Act.
That is, registration was only prima facie evidence of ownership. Accordingly, all registrations were subject to an inherent level of uncertainty.
One interesting aspect of his Honour’s approach is that it does not appear to be based on the power conferred by s 81. Rather, it seems to have a much more fundamental underpinning in “jurisdictional error”.
No doubt, there is a sense here that the Court is not interested in technicalities that would force all of these types of disputes to be brought before it rather than knocked on the head in the Office. One might wonder, however, why the Registrar does not require documentation signed by the assignor as well as the assignee in the first place. This may well become more of an issue with the recordal of security interests as the Registrar’s practice is apparently to allow an interest to be recorded by the person claiming to have taken out a security interest alone.
Mediaquest Communications LLC v Registrar of Trade Marks  FCA 768
At the moment, as a result of Emmett J’s decision, Mr Brailsford is shown as the owner, but (presumably) Mr McInnes’ firm is shown as the address for service. ?
It is not clear from the judgment whether the agreement was in terms limited expressly to the US rights or this is an inference from the limited rights then existing. ?
The nature of the agreement is not specified in the judgment. ?
Last year, IPwars reported on Hammerschlag J’s ruling that arbitrators under the Commercial Arbitration Acts 1984 (here and here (repealed and replaced by a 2010 Act)e.g.) can settle disputes about (1) the ownership of improvements under a technology licence agreement and (2) the licence fees payable if the technology be exploited in various ways in the future.
The arbitrator has now made an award finding that the patents owned by Lloyd or its subsidiary Solfast, the Solfast and Asura patents, were improvements covered by the licence and so should be assigned to Larkden.
Larkden has secured from Hammerschlag J orders enforcing that award and so requiring Lloyd to transfer ownership to Larkden.
Section 35 of the Commercial Arbitration Act 2010 (NSW) provides that an arbitrator’s award must be recognised and is enforceable subject to the formal requirements of s 35 and substantive grounds in s 36. The substantive grounds are:
Grounds for refusing recognition or enforcement
(1)Recognition or enforcement of an arbitral award, irrespective of the State or Territory in which it was made, may be refused only:
(a)at the request of the party against whom it is invoked, if that party furnishes to the Court proof that:
(i)a party to the arbitration agreement was under some incapacity, or the arbitration agreement is not valid under the law to which the parties have subjected it or, failing any indication in it, under the law of the State or Territory where the award was made, or
(ii)the party against whom the award is invoked was not given proper notice of the appointment of an arbitrator or of the arbitral proceedings or was otherwise unable to present the party’s case, or
(iii)the award deals with a dispute not contemplated by or not falling within the terms of the submission to arbitration, or it contains decisions on matters beyond the scope of the submission to arbitration, provided that, if the decisions on matters submitted to arbitration can be separated from those not so submitted, that part of the award which contains decisions on matters submitted to arbitration may be recognised and enforced, or
(iv)the composition of the arbitral tribunal or the arbitral procedure was not in accordance with the agreement of the parties or, failing such agreement, was not in accordance with the law of the State or Territory where the arbitration took place, or
(v)the award has not yet become binding on the parties or has been set aside or suspended by a court of the State or Territory in which, or under the law of which, that award was made, or
(b)if the Court finds that:
(i)the subject-matter of the dispute is not capable of settlement by arbitration under the law of this State, or
(ii)the recognition or enforcement of the award would be contrary to the public policy of this State.
Lloyd argued that the award in relation to the Solfast patents fell foul of s 36(1)(a)(iii) because the shares in Solfast, originally owned by Lloyd, had been transferred to GENV. Hammerschlag J found this was untenable: the transfer of shares in Solfast was void and set aside under s 267(1) of the Corporations Act. In addition, although developed by Solfast, the Solfast patents were improvements within the meaning of the licence because Lloyd had developed the patents through the medium of Solfast.
Lloyd’s second argument was predicated on s 36(1)(b)(ii) contending that some of the orders in the award were too vague and uncertain to be enforceable. This allegation included the order that Lloyd take all necessary steps to ensure that [Lardken]’s interests in the prosecution of the Assigned Patent Applications are protected and secured.
Hammerschlag J rejected this ground too. The orders were not vague and uncertain. Further, his Honour doubted they would offend public policy as not sufficiently concerning “the State’s basic notions of morality and justice”.
If there were any doubt about it, the Full Federal Court has confirmed that the person opposing the registration of a trade mark bears the onus of proving a successful ground of opposition on appeal to the Court. (As a side note, I think this is the new Chief Justice’s first IP decision, at least since joining this Court.)
The Food Channel Pty Ltd (Channel) had applied to register TM 967804:
in class 16 for printed matter. During the application process, it assigned the trade mark application to The Food Channel Network Pty Ltd (Network). Both companies were related entities as a Mr Lawrence was the sole director and shareholder of both.
The registration of TM 967804 was opposed by Television Food Network GP (Television), a US entity. Television is the owner of TM 881666 for TELEVISION FOOD NETWORK and TM 881667, both registered in classes 9, 38, 41 and 42 and TM938228 for services in class 41. TM 881667 and 938228 were for devices:
The Registrar rejected Television’s opposition. The trial judge, however, upheld the appeal finding that Network bore the onus of establishing it was the owner of the trade mark, had used it in good faith and that it was confusingly similar to Television’s trade marks.
The onus point
The Full Court (Keane CJ, Stone and Jagot JJ) dealt with this point quite quickly as inconsistent with the the presumption of registrability established by s 33, long standing principle and the legislative scheme.
The Full Court rejected Television’s argument that the difficulties facing an opponent attempting to establish lack of ownership (s 58) or lack of intention to use (s 59) meant that an evidential onus should shift to the applicant. While the Court appeared to accept that an evidential onus might arise under s 59 where the opponent raises a prima facie case of lack of intention, it considered the difficulties that could arise in the context of s 59 did not attend s 58 which was usually directed to showing that someone else, often the opponent, had used the trade mark first.
The not the owner point
The difficulty which Television seized on here was the assignment from Channel to Network and some evidence in chief from Mr Lawrence:
1. I am the Founder and Managing Director of Food Channel Network Pty Ltd (The Food Channel) and am authorized to make this affidavit. [Network] is based in Queensland Australia.
5. In 1996, and with the advent of pay television being developed in Australia, The Food Channel trademark was created and a logo device attached to its name. In 1997 after filing the required documentation with our then solicitors MALLESON STEPHEN JACQUES which was then AIPO – (Australian Industrial Property Organisation) and after their search of the database that was conducted, it was concluded that there was no applications [sic] that had been filed or applications that were pending for the trademark – The Food Channel. The Food Channel trademark proceeded to registration without any opposition. The Food Channel is a REGISTERED AUSTRALIAN TRADEMARK – NUMBER 733265 – The Food Channel trademark has been registered in Australia since 1997 and is registered until 2017 when it again comes up for renewal. Annexed hereto and marked annexure H. ….
Television’s argument was that Mr Lawrence defined “The Food Channel” as Network in his affidavit and deposed that it was The Food Channel (i.e., Network) which created and used the trade mark.
The trial judge had found that, the onus being on Network and it not being clear from Mr Lawrence’s evidence who created the trade mark, the ground of opposition was successfully made out.
The Full Court noted that Mr Lawrence had drawn his affidavit himself and commented:
61 The courts should be cautious to allow the legal fiction of the corporate veil to defeat registration in a case where one of a group of companies, all controlled by the same directing mind and will, used the mark prior to the other. This is particularly so where, as here, the conclusion that the words The Food Channel in Mr Lawrence’s affidavit meant Network and only Network depends on a single opening definition in an affidavit drafted by a layperson, in a case where Network was the sole respondent attempting to answer a notified ground of opposition that Network was not the owner of the mark, and where any distinctions Mr Lawrence drew between his companies were few, random and confused. In this case, this evidence does not establish that Network was the prior owner through use. It may establish that Network used the mark at a time before registration, but it doesn’t negate the possibility that Channel was, in fact, also a user (and indeed the first user) of the mark before registration. Further, there is no evidence as to how the mark was used by Network. Use needs to be in relation to the goods or services claimed; on the only evidence before the Court, there was “no set formula” with regard to use. This tends against a conclusion that any mark was used by Mr Lawrence, Network or Channel to distinguish one company’s goods from another. Finally, the requirement of prior user as a trademark is that it is used to distinguish one’s goods from another’s: if Network did use the mark, there does not seem to be evidence of an attempt to use it in such a manner as to distinguish its goods from those of Channel. And of course, it is inherently unlikely that Mr Lawrence, as the directing mind and will of both companies, would have had any such an intention.
62 To treat Mr Lawrence’s statement that Network ‘created’ and ‘used’ the mark as exclusive of permitted use by Channel is counter-intuitive, given her Honour’s observation at  that the “evidence …is that Mr Lawrence tended to confuse his own business interests with those of his companies, and appeared to randomly use companies and trade marks depending on the circumstances…”.
This with respect pragmatic approach may be constrasted with the very strict approach taken by a rather different Full Court in Crazy Ron at  – .
As the Full Court noted, further, to the extent there was any confusion about ownership, it fell to Television to clarify the position since the onus lay on it as the opponent.
(It would appear from the Register that TM 733265 was in fact registered by Channel and subsequently assigned to Network.)
The trial judge’s finding that Network had no intention to use the trade mark when it was filed was tied up with the confusion in Mr Lawrence’s evidence about who created the trade mark.
Mr Lawrence did give evidence that “The Food Channel” had provided recipes bearing the trade mark to butchers for distribution by the butchers to their customers. It was not clear whether or not the recipes were sold to the butchers or there was some other quid pro quo. However, the Full Court accepted that this uncontested evidence demonstrated that there had in fact been use of the trade mark in the course of trade.
Trade mark comparison
Finally, the Full Court found that Network’s trade mark was not deceptively similar to Television’s trade marks when viewed as a whole – they neither looked nor sounded similar – and having regard to the differences in the goods and services specified.
Food Channel Network Pty Ltd v Television Food Network GP  FCAFC 58 (Keane CJ, Stone and Jagot JJ)
Even though there was evidence that the pitch, key, rhythm, melodic shape, harmony, musical sentences and context are different, Justice Jacobson found that there was nonetheless a reproduction of a substantial part of Kookaburra in Down Under. This is not to say that Kookaburra amounted to a substantial part of the pop song.
but it all seems rather academic when Jacobson J found at :
Mr Hay also accepted that for a period of about two or three years from around 2002, when he performed Down Under at concerts, he sometimes sang the words of Kookaburra at about the middle of Down Under, at the point at which he reached the flute line.
Looks rather like the crucial battle was last year’s fight over whether or not the Girl Guides or Larrikin owned the copyright in the first place.
Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited  FCA 29
In its last ever IP judgment, the House of Lords restored Matthew Fisher’s claim to a declaration that he owned 40% of the copyright in Whiter Shade of Pale, after the Court of Appeal found his claim barred by delay.
As summarised by IPKat, their Lordships focused on the fact that Mr Fisher was seeking a declaration and not an injunction. In doing so, they indicated that the remedy of injunction might well not follow as opposed to damages:
If the declarations set aside by the Court of Appeal are reinstated, then, were Mr Fisher subsequently to apply for injunctive relief to prevent unauthorised use of the work, such an application would be dealt with on its merits. If the court was satisfied that it would be oppressive to grant an injunction in the particular circumstances, for instance because of prejudicial delay, it would refuse an injunction to restrain the infringement, and leave Mr Fisher to his remedy in damages …
Their Lordships also pointed out that the Copyright legislation, unlike real property, does not recognise a concept of acquisition of property by adverse possession.
Jacobson J has upheld Larrikin’s claim to be the owner of copyright in Kookaburra sits in the Old Gum Tree, which means, at least, that Larrikin has standing to sue Men at Work et al. for infringing copyright in that music.
The trial was supposed to start in June, but wasn’t ready so Jacobson J heard, as a preliminary question, Men at Work’s defence that Larrikin didn’t own the copyright.
How did this come about?
Margaret Sinclair wrote “Kookaburra” back in 1934 and submitted it into a competition being run by the Girl Guides for “A Singing Round with Music”. The published terms of the competition were:
RULES for ENTRY.
(a) The entrance fee for each entry in any of the Competitions to be 6d.
(b) A prize of 10/6 to be given to the winner of each section.
(c) The Competitions to be open to all enrolled members of the Guide Association in Australia.
(d) All matter entered to become the property of the Guide Association.
(e) The decision of the Judges to be final.
(f) All entries to be accompanied by the entrance fee of 6d. also name and address of entrants.
(g) All entries to be in by July 31st.
Miss Sinclair’s entry was the winner!
Larrikin, however, didn’t claim title from the Girl Guides. Rather:
in 1987, shortly before her death, Miss Smith donated some manuscripts, including an adaptation of Kookaburra for violin, to the State Library in South Australia and there was an accompanying form which said all copyright “owned by me” in the deposited documents shall vest in the Library on my death; and
by her will Miss Sinclair left to the Public Trustee in South Australia all her estate and assets.
Larrikin obtained assignments from first the Public Trustee (for the princely sum of $6,100 through public auction) and, later, the Library.
Jacobson J held that Men at Work hadn’t proved that Miss Sinclair assigned the copyright in Kookaburra to the Girl Guides back in 1934, so (although Men at Work argued the terms of the assignments were defective for reasons which his Honour is not alone in having trouble following) one or other of the assignments from the Public Trustee or the Library did the job.
The first problem for Men at Work was that there was no assignment in writing to the Girl Guides with Miss Sinclair’s signature on it. There was a manuscript with her signature and initials, but that was equivocal; it might have just been to identify the manuscript as hers and not some other entrant in the competition.
Similarly, Jacobson J considered it was pure speculation to assume that there must have been a signed entry form. Miss Sinclair was closely involved in the Girl Guides movement and it could not simply be assumed that she had submitted a form – she was well-known to the Guides – or even that she was aware of the terms of the competition.
Further, Jacobson J considered that clause (d) set out above was insufficient to do the work of an assignment. It might have just referred to property in the manuscript. Afterall, when you buy a book from your local (or online) bookseller, you get ownership of the physical copy, not the copyright.
Finally, there was evidence of conduct after the competition which indicated to Jacobson J that Miss Sinclair had never intended to assign her copyright. For example, in 1934 and 1935 she had donated to the Guides royalty payments she received from sales of printed copies of Kookaburra. The Guides, in turn, had thanked her for her generous gifts. They also sought permission from her in later years to reprint the music.
Where does that leave the case?
Well, first, it is interesting that Men at Work had to prove the assignment to the Guides and not Larrikin having to disprove it. I suppose that is because Larrikin was relying on the assignments from the Public Trustee and the Library so Men at Work had the burden of showing those documents didn’t work.
Secondly, presumably, it is yet to be decided whether or not some part of Down Under does actually reproduce the whole or some substantial part of Kookaburra. That would have been part of the postponed trial.
Then, there will be the question – assuming infringement be established – of how damages or profits are payable and whether or not the “innocence” defences in 115(3) and 116(2) are available.
The terms of the assignments set out in the judgments don’t appear to include assignments of the right to sue for past infringements. However, the assignments themselves should be sufficient to cover the 6 years before the proceedings commenced.
Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited  FCA 799
Late in July, Sundberg J found that Australia was clearly an inappropriate forum to litigate the dispute over ownership and infringement of copyright in the film and the book, The Secret. Now there is an appeal on foot.
To recap: interests associated with Ms Rhonda Byrne commenced proceedings in Australia claiming to be the owner of copyright in the film of The Secret. Drew Heriot was the director of the film – there is a dispute between the parties over whether he was employed by one of the Byrne interests or the respondent in this proceeding. In any event, the Heriot interests brought parallel proceedings in the USA.
Sundberg J considered Australia was clearly an inappropriate forum. Broadly, this was on the basis that it was necessary to have regard to the whole dispute between the parties, not just the component of the litigation relating to Australia. On that basis, by far the greater amount of damages at stake were those for infringement in the USA (the book has featured on Oprah, amongst others) and only the US court would have power to amend or correct the US Register of Copyrights. The judge in the US has apparently reached a similar conclusion.
Now, the question in Australia is who should hear the application for leave to appeal: a single judge or the Full Court. Heerey J has directed that the matter go before a Full Court and, subject to any directions by the Full Court, be heard concurrently with, or immediately before, the appeal.
His Honour considered that the Byrne interests would suffer substantial prejudice if it turned out that Sundberg J’s decision was wrong:
9 However the US proceeding will deal not only with copyright ownership, but with questions of infringement and damages, issues which do not arise in the Australian proceeding. There will be a significant burden, both financial and otherwise, on the applicant in having to contest that proceeding. Moreover, as Mr Batt for the applicant points out, his client’s Australian proceeding was commenced first, seeking a remedy under Australian legislation arising out of events which allegedly took place in Australia. The opportunity for the applicant to contest, and possibly win, the Australian proceeding, without having to defend the more extensive US proceeding, is something of real value, the loss of which arguably amounts to real injustice, supposing Sundberg J’s decision to be wrong. Apart from anything else, victory in the Australian proceeding may create some issue estoppel in favour of the applicant, or give it leverage in commercial negotiations.
Heerey J did avoid the question of whether the decision was in fact wrong. It was not the subject of detailed submissions by either party. In any event, experience taught that the two questions could not often be treated in a vacuum. Moreover, there was a chance the matter could be dealt with in the November sittings if not before.