ownership

The onus on appeal from a trade mark opposition

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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:

TM 967804
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:

TM 881667
TM 938228

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 [77] 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 [109] – [127].

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 no intention to use point

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 [2010] FCAFC 58 (Keane CJ, Stone and Jagot JJ)

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Larrikin Merry As It Can Be

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While on the subject of Mars and darkened conference rooms, Men at Work have been found to infringe Larrikin’s copyright in Kookaburra Sits on the Old Gum Tree.

It would seem (from newspaper reports) that 2 bars were a substantial part – shades of the old Colonel Bogey newsreel case.

The video on the Age’s website has the clips of every kid’s favourite folk song and that flute riff.

Richard Acland highlights the crucial comparison in a vacuum:

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 [111]:

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 [2010] FCA 29

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

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Selected microblog posts from the past week:

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

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Procul Harum: paler shade of white afterall

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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.

IPKat has an extensive post and explanation.

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.

Fisher v Brooker [2009] UKHL 41

In October, their Lordships (?) return as members of the Supreme Court of the United Kingdom: Wikipedia here and Lord Bingham  here (pdf).

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Kookaburra gets the Vegemite sandwich

5 Comments / Copyright / / / , , , , , , , ,

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.

Larrikin alleges that Men at Work’s Down Under (you know, unfurl the Boxing Kangaroo, declare a national holiday and have a beer with Bondy) infringes the copyright in “Kookaburra”.

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.

(my emphasis)

Miss Sinclair’s entry was the winner!

Larrikin, however, didn’t claim title from the Girl Guides. Rather:

  1. 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
  2. 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 [2009] FCA 799

Lid dip: Peter Nicholas

A little bit of trivia: Men at Work, with Down Under, are one of 9 pop acts that have achieved simultaneous No. 1s in both the UK and USA, according to Wikipedia.

Wonder whether anyone from Men at Work will be appearing on Spicks and Specks now?

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The Secret – more forum wars

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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.

TS Production LLC v Drew Pictures Pty Ltd [2008] FCA 1329

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