Monster strike …

war / / Trade marks

… out, again. Stewart J has dismissed Monster Energy Corporation’s (MEC) opposition to the registration of MONSTER STRIKE by Mixi for computer gaming.

Mixi Inc. applied to register MONSTER STRIKE as a trade mark in Australia for computer games and software in international classes 9 and 41.[1] MEC lost the opposition before the Registrar and appealed.[2] okMEC argued that, because of MEC’s reputation in its MONSTER marks, Mixi’s use of MONSTER STRIKE for computer games and software would be likely to deceive or cause confusion.

Mixi launched its Monster Strike game in October 2013. By June 2014, there had been 8 million downloads and, by June 2018, more than 44 million downloads. Mixi had discontinued the English language version in 2017, so that the game was available only in Japanese or Chinese after that.

The priority date for MONSTER STRIKE was 27 December 2013, so that was the date MEC’s reputation in MONSTER fell to be determined and assessed.

MEC’s reputation

MEC claimed reputation variously in:

(1) MONSTER

(2) MONSTER ENERGY

(3) MONSTER RIPPER

(4) MONSTER REHAB

(5) MONSTER GIRL

(6) MONSTER ARMY

(7) MONSTER ASSAULT

(8) MONSTER KHAOS

and two stylised “M”s known as the M icon or M claw (illustrated below).

MEC did have trade mark registrations for these in Australia, but the goods and services were not for computer games and software.

MEC had launched the original “Monster” energy drink in 2002, with the product first being introduced into Australia in July 2009.

By the priority date, MEC had sold more than US$19 billion worth of drink in the USA and US$23 billion worldwide. Sales in Australia between 2011 and 2013 ranged from US$27 million down to US$15 million. More than 78 million cans of drink had been sold in Australia; of which 40 million were the Monster Energy Original product. The drinks were sold in Australia in over 10,000 outlets including grocery stores, convenience stores, petrol stations, bars, pubs, cafes and take-away food outlets.

MEC’s main witness conceded that there had not been any sales of Monster Assault or Monster Khaos in Australia before the priority date.

You probably already know what the cans look like, but Stewart J included images of typical get-up:

  • Black drink can, large green "M" like 3 claws, MONSTER with a line through the "o" and "Energy", all arranged in a vertical line
    Monster Energy Original
  • Black soft drink can with yellow/green cloud, the "M" logo like 3 claws in black against the cloud, MONSTER below and underneath it "Rehab" in a slimy green
    Monster Rehab

It was not in dispute that MEC did not provide computer software or games under its trade marks. MEC relied, however, on the fact that most of its advertising and promotional expenditure was spent on endorsements of athletes, gamers and musicians and sponsorships of sports, eSports (that is, competitive video gaming) and music festivals.

Between 2002 and 2013, MEC had spent more than US$2.5 billion on advertising, marketing and promotion. In Australia, MEC had spent US$50 million, with expenditure between 2011 and 2013 being US$31.4 million. Apparently, US$7.15 million was expenditure on athletes, musicians, competitions and other events.

MEC argued the target audience for its promotional activities were 18 –35 year olds, which was the same demographic as for computer games.

In addition to sponsoring the Evil Geniuses eSports team (starting in 2012), MEC had social media pages dedicated to gaming. Its Monster Energy Gaming page on Facebook had been operating since 2010. It had one million likes by the end of 2013; garnering about 10,000 “likes” from Australia each month between June and December 2013. MEC also used the Twitter handle @monstergaming.

There had also been extensive placements of MEC products, merchandise and advertising in video games, including t-shirts or other clothing, billboards and even some characters drinking MEC cans of drink. MEC had also sponsored at least one gaming developer, Ali-A, who had over 2 million subscribers to his YouTube channel.

In addition to the sports or gaming specific activities, MEC also engaged in the conventional provision of hospitality at pubs, sporting events, trade shows, gaming stores. The staff wore branded clothing, drove in branded vehicles and handed out branded samples.

MEC’s website had thousands of visits from Australians. Its main Monster Energy Facebook page had 24 million likes, of which 400,000 were Australians. The Monster Energy Girls Facebook page had 245,000 visits including 21,232 from Australia. There was a Monster Energy Facebook page with 3,450 visits from Australia; the Monster Energy Instagram account had almost 32,000 Australian followers and the main Monster Energy YouTube site had over 80 million views worldwide, with some 3.6 million views from Australia.

What MEC’s reputation was in

Unsurprisingly in the light of this evidence, Stewart J accepted that MEC had a well-established reputation in Australia. However, his Honour considered the reputation was closely bound up with the M claw mark and also generally involved the use of Monster and Energy together in combination.

From over 3,000 pages of written evidence, including photographs, MEC was able to identify only limited instances where MEC had used the word Monster on its own. For example (look closely):

Monster Energy drink label

At [146], Stewart J explained:

Many other cans of Monster energy drinks had the same or a similar slogan printed on them. In each instance the writing is small and the MONSTER® is dwarfed by the device marks which are distinctive and catch attention. I do not consider this use of MONSTER® to have generated any particular reputation for the use of the word MONSTER on its own.

His Honour considered that other references to Monster alone were really shorthand references to Monster Energy, which is “really the brand that has a strong reputation.” Some comments on social media by consumers referring only to “Monster” were similarly shorthand.

Accordingly, his Honour concluded at [151]:

In the result, the evidence does not support a conclusion that the MONSTER word mark on its own had any particularly significant reputation in Australia at the relevant time. Any reputation of the word MONSTER is derived from the M claw, stylised MONSTER and the MONSTER ENERGY word mark. It is these that create the association in the minds of consumers.

MEC’s trade marks Monster Assault, Monster Khaos, Monster Ripper, Monster Army, Monster Rehab had either not been used in Australia or, if used, Stewart J considered there was no evidence to support a conclusion that they had developed a significant reputation in Australia.

Stewart J accepted that MEC reputation was well-known and that its (stylised) Monster marks were associated with a range of eSports-related products and activities. However, that association was as “a sponsor” or “supporter” and not as a provider or publisher of video games themselves. At [159] – [162]:

[159] MEC submits that by the priority date, Australian consumers in MEC’s target demographic had a wide awareness of MEC’s Australian marks as emanating from a company with a long-standing and highly active presence in gaming and eSports. It further submits that MEC was strongly engaged with the international gaming community through its dedicated gaming internet sites and social media channels; closely connected with the generation of gaming content creators through its association with eSports athletes, teams and other content creators; and actively involved in the gaming industry through its promotion of, and licensing of its marks to appear in, a number of popular games.

[160] Those submissions can be accepted insofar as they apply only to the M claw and the words MONSTER and ENERGY in association with that mark. It can also be accepted that the marks were well-known in Australia, and that they were associated with a range of gaming and eSports-related products, programs and activities. However, the nature of that association and hence reputation was as a sponsor and supporter. Very often MEC’s marks, showing its sponsorship, appeared alongside many other well-known marks such as Vodafone, Samsung, Toshiba, Blackberry, Alliance and Pirelli, all apparently the names of co-sponsors. Of those with whom the marks had a reputation, there would have been a keen awareness that the trader behind the marks traded in energy drinks and not in other goods or services. MEC sponsored and promoted gaming and eSports events, and for that purpose it published material about such events, but its marks did not, in my assessment, have a reputation as a brand of origin for the provision of gaming event or publishing services; the reputation remained one of sponsor and promoter.

[161] In my assessment, an ordinary consumer would understand the presence of MEC’s Australian marks on athlete uniforms, equipment, event signage, apparel and the like to be for the purpose of advertising and promoting MEC’s energy drinks, and not to be functioning as a brand, or a source of trade origin, for the particular equipment, uniform, signage and apparel upon which the marks appear. This is similar to the findings in Qantas at [174] and [177]. Similarly, MEC’s sampling activities conducted at sports events and other venues, including by the Monster Girls, would be understood by the ordinary consumer to have been conducted for the purposes of advertising and promoting its energy drinks.

No real, tangible danger of confusion

At [167], Stewart J concluded there was no real, tangible danger that a reasonable number of people would be caused to wonder whether or not MONSTER STRIKE was associated with MEC in some way.

First, Stewart J considered that the very different goods and services was significant. As a result, the risk of confusion was “inevitably very much less” than it might have been if they were “the same or significantly overlapping.”

Secondly, the competing trade marks were distinctively different, bearing in mind the stylised or composite form in which MEC’s reputation lay. “Monster” was part of that form, but MEC had not established a significant reputation in that form.

Correspondingly, MEC’s arguments based on the similar linguistic structure or brand extension failed as its evidence did not establish a reputation in the various extensions – Monster Assault, Monster Ripper, Monster Khaos, Monster Army.

Thirdly, the evidence showed that at least 40 other traders had registered trade marks for or including MONSTER in respect of video games etc. While there was no evidence of any use of these, at [174], Stewart J was prepared to infer that some of these at least would have reputation. However, this played only “a small role” in reducing the potential for confusion.

Fourthly, the likely public, being young men and women interested in computers and gaming, was “brand-savvy and not gullible or easily confused.”

Finally, there was no evidence of actual confusion.

Strike 2

As the claim under s 42(b) requires demonstrating a likelihood of deception, not just mere confusion or being caused to wonder, you won’t be surprised that it failed too.

Stewart J’s decision is the second in a year or so in which MEC has failed in its attempt to extend its rights from the field of energy drinks into what might be thought rather unrelated fields. The earlier decision, involving an infringement action against Rodney Jane’s use for tyres, is under appeal. I wonder if we have heard the last of this dispute too?

Monster Energy Company v Mixi Inc [2020] FCA 1398

  1. TMA No. 1242941. (For the attorneys amongst you, it was actually an IRDA through the Madrid Protocol.)  ?
  2. Monster Energy Company v Mixi, Inc [2017] ATMO 119.  ?

Meat & Livestock Australia loses its appeal against Branhaven’s selective breeding patent

war / / Patents

The Full Court has refused Meat & Livestock Australia leave to appeal from Beach J’s rulings to grant Branhaven’s[1] patent for the use of genetic information in the selective breeding of cattle. MLA did not seek leave to appeal the ruling that the claims to uses of the genetic information were patentable subject matter.

Image by VIVIANE MONCONDUIT from Pixabay

In its amended form as allowed by Beach J, claim 1 reads:

  1. A method for identifying a trait of a bovine subject from a nucleic acid sample of the bovine subject, comprising identifying in the nucleic acid sample an occurrence of at least three single nucleotide polymorphisms (SNPs) wherein each of the at least three SNPs are significantly associated with the trait, with the degree of statistical significance being p?0.05, and wherein the at least three SNPs occur in more than one gene; and wherein

[and wherein] (a) at least one of the SNPs corresponds to position 300 of any one of SEQ ID NOS: 19473 to 21982, or

(b) the SNP is about 500,000 or less nucleotides from position 300 of any one of SEQ ID NOS: 19473 to 21982 and is in linkage disequilibrium with the SNP at position 300 with an r2 value of ?0.7.

(The [ ] indicates deletions and the italics insertions from the original claim.)

In his Honour’s first ruling, Beach J held that claim 13[2] was invalid as a claim to genetic information, but otherwise rejected MLA’s attacks based on manner of manufacture, novelty and inventive step. His Honour, however, found that the claims lacked clarity. So Branhaven came back with the amended form.

In his Honour’s second ruling, MLA argued there was no power to amend and, in any event, the proposed amendments were not fairly based. In the result, his Honour rejected MLA’s attacks and directed the patent in amended form proceed to grant. MLA sought leave to appeal.

Did the Court have power to permit amendment?

Following the Raising the Bar Act, the power of the Court to deal with amendments was expanded by the addition of s 105(1A):

If an appeal is made to the Federal Court against a decision or direction of the Commissioner in relation to a patent application, the Federal Court may, on the application of the applicant for the patent, by order direct the amendment of the patent request or the complete specification in the manner specified in the order.[3]

At [91] and [93], the Full Court considered the plain meaning of this provision was to confer on the Court power to deal with amendments of patent applications under appeal.

The Full Court considered MLA’s argument that Beach J had decided the appeal in his Honour’s first decision and so was functus officio “untenable”.

When handing down his first reasons for judgment, Beach J had simply ordered:[4]

Within 14 days of the date of these orders, each of the parties file and serve proposed minutes of orders and short submissions (limited to three pages) to give effect to these reasons, including on the question of any steps necessary to deal with any application to amend the claims of patent application no. 2010202253 and on the question of costs.

The Full Court accepted that this order did not dispose of the appeal and so Beach J still had jurisdiction over the patent application in its amended form. At [87]:

The order made by his Honour at the time did not dispose of the appeal but was instead a procedural order requiring the parties to file and serve proposed minutes of order and short submissions to give effect to his Honour’s reasons including in relation to any application to amend the claims of the patent application. There is no substance to the applicant’s submission that either the publication of his Honour’s first set of reasons or the making of that order brought the proceeding to an end.

and [90]:

However, as his Honour correctly observed, the publication of his first set of reasons did not dispose of the appeal since no order to that effect was made. Nor could the publication of his Honour’s first set of reasons amount to an order disposing of the appeal. His Honour made it clear in his reasons that he would refrain from making any such order until any question in relation to amendment had been dealt with.

The Full Court turned then to the substantive argument about whether Beach J erred in allowing the amendments.

Were the amendments permissible?

As already noted, his Honour had found in his first reasons that the relevant claims lacked clarity. The main issue here was that claim 1 did not explicitly state the requirement of “linkage disequilibrium” (LD) for the relevant single nucleotide polymorphisms (SNPs) or what degree of LD was required: see [348] – [362] reproduced at [69] of the Full Court’s reasons.

As the elements were not disclosed in the claim, MLA argued the amendments were impermissible as they introduced new matter into the claims. Beach J, however, allowed the amendments on the grounds that they were limiting amendments and had been in substance disclosed in the specification.

The Full Court essentially accepted this conclusion on the facts. It did note that, generally, a claim which defined an invention more narrowly than the disclosure in the specification would be fairly based, but there may be some situations where that was not the case. The overriding question was whether the claim described an invention different to the disclosure in the specification. At [104] – [105]:

All other things being equal, a claim that defines an invention in terms that are narrower than a more general description in the body of the specification would support is not likely to travel beyond what is more generally described. But there may be some situations in which what is more specifically defined results in a claim that travels beyond what is described in the specification: AstraZeneca at 244 and [285]-286 where reference is made to Sir Robin Jacob’s judgment in Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly and Co Ltd [2010] RPC 9 at [26] and [28]. In these situations a claim may be invalid if the invention more specifically defined is an invention that is different from the invention described in the specification as opposed to some narrower embodiment of the latter.

In circumstances where it can be concluded that there is an implicit disclosure of the relevant feature, it is unnecessary to inquire into whether the feature is truly limiting. But even in the absence of an implicit disclosure, a claim does not necessarily lack fair basis because it includes a matter of detail that is not described in the specification so long as it defines an invention that is not different from the invention described in the specification. The proper characterisation of the invention described in the specification is critical when determining whether the claim is to an invention different from that described in the body of the specification. Each case will depend on its own facts and on the proper characterisation of the invention described in the body of the specification. (emphasis supplied)

If the feature added to the claim was implicitly disclosed in the specification, therefore, the claim could be amended. But, amendment might be permissible even if not implicitly disclosed.

At [110] – [115], the Full Court focused on Beach J’s unchallenged findings including, in particular, that the skilled addressee “would understand that the specification requires that there be high or strong LD between the limb (a) SNP and the limb (b) SNP”, but not necessarily a very high or perfect LD. The proposed amendments gave effect to that understanding by reference to more precise rather than some less precise criteria.

The Full Court accepted MLA’s criticism that the specification (before amendment) made no mention at all of r2 values. Beach J accepted expert evidence, however, that the r2 values were broadly equivalent to LD values that might fairly be regarded as high or strong. As a result, its inclusion was permissible. Noting that high LD or strong LD were “less precise criterion” than the expressed r2 vaues, at [114], the Full Court explained:

…. To hold that it is not open to use the r2 statistic or the 0.7 value for the purpose of ascertaining whether there is a high or strong degree of LD between the limb (a) SNP and the limb (b) SNP would involve, in our view, the very kind of over meticulous verbal analysis that should be eschewed when determining whether a proposed amended claim satisfies the requirements of s 102(1) of the Act. This is particularly so in circumstances where the amendment is propounded for the purpose of clarifying an ambiguity that would otherwise prevent the patent application proceeding to grant. In the present case we do not think the use of the r2 statistic in limb (b) results in a claim that defines an invention different from that which is more generally disclosed in the body of the specification as filed. (emphasis supplied)

As a result, the Full Court came to “the very clear conclusion” that MLA had not made out a clear prima facie case of error where the likely result would be allowing an invalid patent to proceed to grant. Accordingly, leave to appeal was refused.

Since this is a pre-Raising the Bar patent, the old “practically certain” test applies to the opposition. That raises the question whether things would turn out differently in a revocation proceeding on the balance of probabilities. After 949 paragraphs for the first decision and 470 paragraphs for the second, perhaps the “very clear conclusion” language might help discourage that course?

Meat and Livestock Australia Limited v Branhaven LLC [2020] FCAFC 171 (Kenny, Nicholas and Burley JJ)

  1. Cargill Inc. and Branhave were joint applicants but in the course of the hearings before Beach J, Cargill assigned its interest to SelecTraits Genomics LLC.  ?
  2. Claim 13. An isolated polynucleotide identified according to the method of claim 8.  ?
  3. Sch. 3 item 6. Prior to the introduction of this amendment, the appeal to the Court was limited to the form of the specification before the Commissioner in the decision under appeal. If an application to amend was made after the Commissioner’s decision, the application could only be dealt with by the Commissioner: see e.g. Airsense Technology Limited v Vision Systems Limited [2007] FCA 828  ?
  4. Costs were also reserved.  ?

Consultations on protecting EU Geographical Indications

war / / Trade, Trade marks

IP Australia has published a Consultation Paper on a possible new Geographical Indications Right.

You probably know we are not supposed to call a fizzy or bubbly alcoholic beverage made from grapes “Champagne” unless it comes from that special part of France (that’s France in the EU, not Texas).[1]

This, and a range of other prohibitions, stem originally from the Australia-EU Wine agreement (and its successors) back in the 1990s which was supposed to give our wine producers much easier access to the EU market in return for respecting their cultural properties. (I’m not sure if anyone has ever undertaken an empirical assessment to see how that worked out.)

As previously reported, our Government and the EU are in the throes of negotiating a more wide ranging Free Trade Agreement. As part of those negotiations, the EU wants Australian law to significantly broaden the number and scope of EU “geographical indications”[2] which are protected to include a further 236 spirit (as in alcoholic beverages) names and 172 agricultural and other names.

The Consultation Paper is a further round in seeking input on this proposal. Now, it is important to note, that the Consultation Paper does state:

Nothing in this consultation paper means the Australian Government has agreed, or will agree, to make any changes to its existing GI regulatory framework or policy.

It appears that, in addition to protecting any EU GIs ultimately agreed, what the Government is now considering would put in place a mechanism for registration of new or additional GIs as well.

The Consultation Paper itself sets out 11 questions on which comments are particularly sought:

Registering a GI

Q.1 What types of goods should be eligible for protection as a GI?

Q.2 Should GIs filed under a new system cover a single good or multiple goods?

Q.3 Are there particular safeguards that should be considered for a new GI right?

Q.4 Under what circumstances should two rights, for example a new GI and an earlier trade mark, be able to co-exist?

Q.5 What level of detail should be required for any conditions of use, such as production methods, boundaries and what it means for a product to come from the region?

Standard of protection vQ.6 Should a new GI right extend the international standard of protection for wines and spirits to all goods? Are there other practices that should be prevented?

Using a GI right

Q.7 Who should be able to apply for a GI in Australia?

Q.8 Should those who meet the requirements of a GI be able to use the GI automatically, or should they need approval from the GI right holder?

Enforcing GIs

Q.9 Should any user be able to enforce a GI or should it be limited to the GI right holder?

Q.10 Should criminal enforcement be available for GIs registered in Australia?

Costs and Benefits

Q.11 What would be the costs and benefits to Australian industry, producers, and consumers of creating a new GI right?

Did I mention, the Consultation Paper does make clear:

Nothing in this consultation paper means the Australian Government has agreed, or will agree, to make any changes to its existing GI regulatory framework or policy.

The Consultation Paper mentions that a common thread in submissions from the earlier round was the need to ensure that GIs could not be used to stop the continued use of food names already in common use. It envisages that there would be an opportunity to oppose registration on the basis that the term is a common or generic name for “a plant variety or animal breed” in Australia.

It’s not clear if the grounds of opposition would be limited to common or generic terms which are names of a plant variety or animal breed, or they are just examples of what might be common or generic terms.[3] (It should be noted that the wine producers who were using “champagne”, “burgundy”, “claret” and the like didn’t get to oppose those GIs.)

Moreover, p. 2 of the Consultation Paper does note that in the previous round of consultations people could object to the EU’s proposed lists of further GIs but, if Australia agrees to protect any of them as part of the FTA, they will not go through the application and opposition process. They will go straight on to the Register.

But remember:

Nothing in this consultation paper means the Australian Government has agreed, or will agree, to make any changes to its existing GI regulatory framework or policy.

On the subject of the Register, the Consultation Paper envisages that there would be a new Register created through amendment of the Trade Marks Act 1995. Hopefully, that would bring in all the currently protected GIs as well. Hopefully, it would also be more integrated and searchable than the current hotch potch.

On the more positive side, the Consultation Paper does say (p.3) that protection would not extend to a term like “camembert” alone if the GI registered was “Camembert de Normandie”.

On the other hand, the EU is seeking protection against uses which “evoke” a registered GI. On p. 5, the Consultation Paper notes that:

in the EU a producer has been prevented from selling whisky labelled ‘Glen Buchenbach’ because ‘glen’ (meaning ‘valley’) is a term used in Scotland and was found to evoke the GI ‘Scotch Whisky’. As another example, cheese sold in packaging with images of windmills and sheep was found to evoke the Spanish GI ‘Queso Manchgeo’[4] because those images are typical of the region in Spain where the GI is produced.

Maybe camembert is made in other parts of France than Normandy? What happens if that were to change and only the Normandy producers could use camembert “over there”? How would you test whether (presumably) Australian consumers would associate windmills and sheep with Don Quixote country? Don’t the Dutch have sheep? Would it matter what kind of windmill? Would the test be what Australian consumers would understand?

According to the Consultation Paper, consultations are open until 30 November 2020. In addition, there:

  • is GI Survey (you may have to agree to the privacy policy etc. before you get in);
  • will be a Webinar – outline of GI consultation on 30 September at 12 noon to 1pm
  • will be a Virtual Roundtable – Standard of protection on 13 October at 12 noon to 1pm
  • will be Virtual Roundtable – Australian use of GIs on 15 October at 12 noon to 1pm
  • will be Virtual Roundtable – General operation of a possible GI system on 20 October at 12 noon to 1pm
  • will be Virtual Roundtable – GIs and Indigenous Knowledge on 22 October at 12 noon to 1pm

Links and more information about these via this page.

So, while:

Nothing in this consultation paper means the Australian Government has agreed, or will agree, to make any changes to its existing GI regulatory framework or policy.

we can hardly claim we are not being properly consulted.

  1. We are also not supposed to use “traditional expressions” on our wines. These matters are currently regulated under the Wine Australia Act 2013. There is a rudimentary overview with links to the Register of protected expressions here.  ?
  2. The Consultation Paper defines a “geographical indication” as “a name that identifies a product as originating in a country, region or locality where a particular quality, reputation or other characteristic of the product is essentially attributable to that geographic origin.” The definition in s 4 of the Wine Australia Act is in much the same terms, but limited to “wine goods”.  ?
  3. Although it is headed “Commercial in confidence”, a Google search on “yarra valley fetta” turned up this impassioned defence of “fetta” / “feta” as a common or generic term (but not, I think a plant variety or breed of animal).  ?
  4. I suspect that is Manchego. But it looks like Coles would be safe.  ?

Big Mac sues Big Jack

war / / Trade marks

Two all beef patties, special sauce, lettuce, cheese, pickles, onions on a sesame seed bun – it’s a …

As you have no doubt heard, late last month McDonald’s Asia Pacific sued Hungry Jacks following the launch in July of the “Big Jack”.[1]

Michaela Whitbourn at the Channel 9 paper has a clean slide over comparison or you can get messy fingers here (your choice whether you skip the ads or not).

Mr Too Aussie’s video suggests the Big Jack is a special or limited time offer. However, Hungry Jack’s did file for and has obtained registration for “Big Jack” as a trade mark, No 2050899, for hamburgers etc. in classes 29 and 30, way back in November 2019. And Ben Butler at The Guardian reports McDonalds is also seeking revocation of that registration on the grounds the application was made in bad faith.[2]

After news of the court proceeding broke, Hungry Jack’s doubled down:

Someone’s suing Hungry Jack’s. They reckon Aussies are confusing the Big Jack with some American burger. But the Big Jack is clearly bigger ….

Hmmm. Earlier this year, Katzman J, in another case about burgers, explained:

What is the line between inspiration and appropriation? That is the question at the heart of the dispute in the present case.

That case didn’t turn out so well for the emulators.

As you will appreciate, McDonald’s have to get TM No. 2050899 cancelled in light of s 122(1)(e). Presumably, in addition to the “bad faith” allegation, McDonald’s is also asserting s 44 and s 60.

These provisions, like s 120, raise the question whether Big Jack is substantially identical with, or deceptively similar to, Big Mac.

You might think, even on the expanded and controversial test for “substantial identity” declared in Pham Global, the side by side comparison doesn’t work out in McDonald’s favour. Mac and Jack look and sound different and, you might think, convey rather different ideas.

What about deceptive similarity tested on the basis of imperfect recollection?

There couldn’t be too many Australians, especially of the fast food consuming public, who wouldn’t appreciate that Big Jack is gunning for Big Mac. But, is there a real and appreciable risk that a significant number of them would be caused at least to wonder whether there was some association with McDonald’s?[3]

Also, you would have to think, all those ordinary Australians would know you can only get a Big Mac in a McDonald’s outlet.

You would probably have to think they pretty much know Hungry Jack’s is a direct competitor, which makes a point of being critical of McDonald’s.[4]

Similarly, pretty much all those ordinary Australians winding up in a Hungry Jack’s take away could hardly be under any illusions that they were in Big Mac land?

Now, at 50(iii), French J did wholly orthodoxly say:

In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

Does being in the shop count? Or is that violating the rule that you compare only the allegedly infringing trade mark to the registered trade mark?

What about billboards and the like? No shop context, probably a Hungry Jack’s logo – maybe not.

Also, you might think that “Big Mac” gets into the Woolworths territory of a household name and there could have lots of fun re-running the fight between Woolworths and Henschke.[5]

What do you think?

Would things be any different if we had an anti-dilution law?

Maybe, at 50c to almost $1 more, the Big Jack will turn out to be a commercial flop and Hungry Jack’s will give up. I guess we’ll have to wait and see.

Lid dip: Jasper Kwok

  1. And, by way of fig leaf, Hungry Jack’s also introduced a “Mega Jack”. NSD967/2020 – First case management hearing before Justice Burley on 2 October.  ?
  2. Shades of “merit” and “nerit”, but note the interesting approach in OHIM rejecting Banksy’s – or those representing him – attempt to “trade mark” one of his, er, graffiti.  ?
  3. See Registrar of Trade Marks v Woolworths at [50] per French J.  ?
  4. Just exactly whose burgers are Hungry Jack’s supposed to be better than?  ?
  5. Most recently addressed in the AMG case at [36] – [42]: The more famous your trade mark, the less likely people will recall it imperfectly.  ?

The Aboriginal Flag

war / / Copyright

As you know, the Aboriginal Flag has been in the news a fair bit – the AFL even had to abandon plans to paint representations of it on footy grounds for the Indigenous Round: here, here and here.

Mr Thomas, the acknowledged author of the flag’s fantastic design,[^f2] has licensed it to various companies for different types of use including WAM Clothing. WAM Clothing has been making headlines aggressively enforcing its rights, including threatening the AFL for copyright infringement.

Now, the Senate has established a Select Committee to investigate what is to be done!

The terms of reference are (in full):

That a select committee, to be known as the Select Committee on the Aboriginal Flag, be established to inquire into and report on current and former copyright and licensing arrangements for the Aboriginal flag design, with particular reference to: 

a. who benefits from payments for the use of the Aboriginal Flag design and the impact on Aboriginal organisations, Aboriginal communities and the broader Australian community of the current copyright and licensing arrangements; 

b. options available to the Government to enable the Aboriginal Flag design to be freely used by the Australian community, including:

i. negotiated outcomes with licence and/or copyright holders:

ii. the compulsory acquisition of licences and/or copyright,

iii. ways to protect the rights and interests of the flag’s legally recognised creator Mr Harold Thomas; and

c. any other matters relevant to the enduring and fair use of the Aboriginal Flag design by the Aboriginal and Australian community.

Click the terms of reference here.

The fun part: if you are wanting to make a submission, you need to get it in by 18 September 2020 as the Committee is due to report by 13 October.

We thought we had come a long from the days when the Commonwealth Government (in the guise of the Reserve Bank) could appropriate David Malangi’s artwork for the wonderful design of the (now defunct) one dollar note; Johnny Bulun Bulun and a later group of artists including George Milpurrurru rightly successfully asserted their copyrights over blatant infringers.

Now, however, it seems many people think Mr Thomas shouldn’t have the same rights.

While Minister Wyatt ruled out buying the copyright last year, this year it seems that Mr Thomas might be refusing to sell or this Senate inquiry might be upsetting the negotiations.

Placitum (xxxi) of s 51 of the Constitution does give the Commonwealth power to compulsorily acquire property on just terms:

(xxxi) the acquisition of property on just terms from any State or person for any purpose in respect of which the Parliament has power to make laws;

and, of course, placitum (xviii) confers power to make laws with respect to, amongst other things, “copyright”. It seems difficult to argue that a law to acquire one person’s copyright would not be a law with respect to copyright.[^f1]

Of course, an assignee of copyright takes subject to any licences that had previously been granted (and are still on foot): Copyright Act 1968 s 196(4). So, the Commonwealth would also have to have some power under the licence to Wam Clothing to terminate it or, presumably, acquire its property on just terms too.

[[^f2]: According to Shephard J’s judgment in Thomas, the Governor-General proclaimed the artistic work to be the flag of the Aboriginal People under s 5 of the Flags Act, back in July 1995. It seems from Sheppard J’s judgment, Mr Thomas came up with the design for use at the Aboriginal Day rally in Adelaide in 1971 “off his own bat”.

[^f1]: There are also the murky possibilities of placitum (xxvi).

Press publishers’ (new) rights Down Under

war / / Copyright

On 31 July, the ACCC published an exposure draft of the Bill aimed at forcing Google and Facebook to pay news businesses for the use of their news in services like Google Search, Google News and Facebook News Feed and Tab.

Some background

News media businesses claim that Google and Facebook make anywhere from $600 million to $1 billion a year from “using” the news the news media businesses publish.[1]

When Spain introduced a law to redress this “value gap”, Google responded by not including Spanish news in its services. Germany introduced a similar law, but publishers had to opt into the scheme, not out. Apparently, none did.

Last year, the EU introduced a press publisher’s right as part of its Digital Single Market (DSM) Directive.[2] When France implemented this (adopting the Spanish model), Google once again withdrew. The French Competition authority, however, has intervened.

Meanwhile, in Australia, the ACCC published the Final Report for its Digital Platforms Inquiry in July 2019.

Amongst other things, it concluded that Google and Facebook had become unavoidable trading parties for news media businesses wishing to reach audiences online. This created a significant imbalance in bargaining power.

In December 2019, the Treasurer directed the ACCC to facilitate negotations between the news businesses and Google and Facebook to develop a voluntary bargaining code to address this imbalance.

Those negotiations apparently not leading to the desired outcome, on April 2020, the Treasurer directed the ACCC to develop a mandatory bargaining code:

The Government has decided that the original timeframe set out in its response requires acceleration. The Australian media sector was already under significant pressure; that has now been exacerbated by a sharp decline in advertising revenue driven by coronavirus. At the same time, while discussions between the parties have been taking place, progress on a voluntary code has been limited according to recent advice provided by the ACCC following a request by the Government for an update. The ACCC considers it is unlikely that any voluntary agreement would be reached with respect to the key issue of payment for content.

The exposure draft bill and accompanying explanatory memorandum are the results of that process. I shall try only to describe what is being proposed.

What the bill will do[3]

The Bill will introduce a new Part IVB into the Competition and Consumer Act 2010.

Qualifying news business corporations may apply to the Australian Communications and Media Authority (ACMA) to register under the code: ss 52D and 52E.

Upon registration, designated digital platform corporations:

  1. must comply with minimum standards of conduct with respect to the registered news business’ “covered news content”;
  2. must participate in an arbitration to determine the remuneration payable to the registered news business for the use of its “covered news content”; and
  3. must not discriminate against the registered news business.

Designated digital platform corporations

The Bill will give the Treasurer power to designate by legislative instrument digital platform corporations and digital platform services that will be subject to the mandatory bargaining code: s 52C.

According to the explanatory memorandum, the designated digital platform corporations will be initially Google and Facebook, although other businesses may also be designated: [1.30]

The explanatory memorandum at [1.34] also “expects” that the services which will be designated are:

  • Facebook News Feed (including Facebook Groups and Facebook Pages);
  • Facebook News Tab (if and when released in Australia);
  • Instagram;
  • Google Discover;
  • Google News; and
  • Google Search.

News business corporations and news sources

A news business corporation may apply for registration of its news business(es) under the scheme if:

  1. the news corporation’s annual revenue exceeds $150,000 or exceeded $150,000 in three of the last five financial years: s 52G;[4]
  2. the news source(s) its seeks to register create and publish online content that is predominantly “core news content”: s 52H;
  3. the news source(s) operate predominantly in Australia for the dominant purpose of serving Australian audiences: s 52J; and
  4. the news source(s) adhere to professional quality standards: s 52K.

Once registered, the rights of the news business corporation extend to “covered news content”, not just its “core news content”.

Core news content and covered news content

The definition in s 52A of “core news content” is content that:

(a) is created by a journalist; and

(b) that records, investigates or explains issues that:

(i) are of public significance for Australians; or

(ii) are relevant in engaging Australians in public debate and in informing democratic decision-making; or

(iii) relate to community and local events.

The explanatory memorandum explains at [1.51] – [1.53] that “core” news content can relate directly to matters of public policy and decision making at any level of government such as political, court and crime reporting. The activities of private sector entities may also be included if of sufficient public importance.

Core news content is a subset of “covered news content” which, in addition to “core news content”, also includes:

content that is created by a journalist and is relevant in recording, investigating or explaining issues of interest to Australians.

According to the explanatory memorandum at [1.66] – [1.67] covered news content is intended to extend to:

sports and entertainment related news such as interviews with coaches and players, reporting about the entertainment industry and coverage of reality television.

(This is not intended to be an exhaustive description of what is included.) However, it does not include sports broadcasts or the results or scores of sports, “entertainment content such as drama or reality TV programming” or:

specialty or industry reporting, product reviews, talk-back radio discussions, content produced by academics and documentaries.

Professional quality standards

The Bill proposes two requirements for quality standards: s 52K. The news source:

  1. must be subject to the rules of the Australian Press Council, the Independent Media Council, the Code of Practice of the Commercial Television Industry or the Commercial Radio industry or the Subscription Broadcast industry, or rules substantially equivalent to these; and
  2. the news source must have editorial independence from the subjects covered.

The explanatory memorandum explains at [1.58] that the second requirement of editorial independence means the news source must not be controlled by a political advocacy group such as a political party, trade union or lobby group. It also means that the news source cannot be controlled by someone with a commercial interest in the coverage and gives the example of sports coverage owned or controlled by the sport’s governing body.

The minimum standards

Once a news business is registered, the digital platform corporation must comply with the minimum standards: s 52L.

These include, for each digital platform service:

  • listing and explaining what data is collected about users of the news business (s 52M);
  • explaining how the data about such users made available to the news business differs from the data the digital platform corporation collects about users of its service; and
  • explaining how the news business can access that additional data;
  • giving the news business notice of any changes to algorithms used by the digital platform service likely to have a significant effect on the ranking of the news content on the platform or specifically directed at the ranking of paywalled content: s 52N, 52O;
  • giving notice of other changes to policies or practices likely to have a significant effect on the display and presentation of the news business’ covered news content or advertising directly associated with that content: ss 52P and 52Q;
  • if requested, provide the news business with flexible content moderation tools so that the news business can remove or filter comments on the digital platform service about the news content: s 52S; and
  • develop a proposal, in consultation with all registered news businesses, to recognise original covered news content when ranking and displaying news content: s 52T; and
  • must discriminate between registered news businesses or registered news businesses and news business which are not registered: s 52W.

The arbitration scheme

In addition to the rights afforded it throught the minimum standards, a registered news business may also initiate a bargaining and arbitration process with the digital platform for the use of news content.

The registered news business (or its representative) inititates the bargaining process by giving notice “it wishes to bargain over one or more specified issues relating to its covered news content”: s 52Y.

While the publicly funded ABC and SBS may initiate bargaining, they cannot bargain about remuneration: s 52Y(6).

The parties must negotiate in good faith (s 52ZB) and can demand the provision of information and data relevant to the issues the subject of bargaining, a kind of discovery process: s 52ZC. This includes discovery about the benefits the digital platform derives from use of the news content.

Either party may refer the dispute to compulsory arbitration if:

  1. there has been at least one day of mediation; and
  2. the parties have not reached agreement within three months of bargaining starting: s 52FZ

Provided there has been at least a one day mediation, the parties can also agree to refer the dispute to compulsory arbitration after 10 days.

The arbitration itself is particularly interesting. It is “final offer” arbitration.

Although the news businesses can initiate bargaining over “issues”, the arbitral panel must make a determination about the remuneration payable by the digital platform corporation to the news business(es).

Ten days after the arbitration is established, both parties must submit their final offers about the amount of the remuneration. Once submitted, the parties cannot amend or withdraw their respective “final offers”. They may, however, submit a response to the other party’s final offer. The arbitral panel must accept one or other of the final offers: s 52ZO.

The only exception to this requirement is where the arbitral panel considers both final offers are “not in the public interest because they are highly likely to result in serious detriment to the provision of covered news content in Australia or Australian consumers.” In that case, the arbitral panel must adjust one or other of the final offers as required by the public interest.

The final offers must also be provided to the ACCC, which is authorised to provide its comments about the final offers to the arbitral panel before the panel hands down its decision: s 52ZS.

The “final offer” process has the considerable advantage that it avoids the expense and delay usually associated with rate setting proceedings for access to essential facilities or under the licensing schemes overseen by the Copyright Tribunal.

In deciding which final offer to accept, the arbitral panel must have regard to (s 52ZP):

  • the direct benefit (whether monetary or otherwise) of the registered news business’ covered news content to the digital platform service;
  • the indirect benefit (whether monetary or otherwise) of the registered news business’ covered news content to the digital platform service;
  • the cost to the registered news business of producing covered news content;
  • whether a particular remuneration amount would place an undue burden on the commercial interests of the digital platform service.

It is striking that the matters which must be taken into account do not include the benefits (direct or indirect) that the news business derives from being carried in the digital platform service.

Once the arbitral determination has been handed down, the parties must enter into a written agreement to ensure the digital platform corporation will pay the news business the remuneration determined in the arbitration: s 52ZT.

Sanctions

The ACCC may issue an infringement notice to a person who contravenes that person’s obligations under this scheme. The penalty for a corporation found to be in contravention is up to 600 penalty units: s 51ACF – i.e., up to $132,000.

In addition, s 76 of the Competition and Consumer Act 2010 will apply so that civil penalties may be imposed up to the greater of:

  • $10 million;
  • 3 times the total value of the benefits reasonably attributable to the non-compliance; or
  • 10% of the contravenor’s annual turnover in the previous 12 months.

EU’s DSM Directive

The EU’s press publisher’s right under the DSM Directive is an obvious inspiration for this new right for news businesses. There are a number of significant differences, in addition to the far greater detail elaborated into the Bill.

For example, unlike the DSM Directive, the Code to be imposed by the Bill is not tied to use of copyright or other (at this stage) recognised property right. Instead, the Bill creates a right to payment for some “intangible value”.

The DSM Directive expressly excludes from the obligation for payment:

  • hyperlinking; or
  • “the use of individual words or very short extracts of a press publication” – which seems a lot like the snippets returned in a Google Search for example.

At least since the Victoria Park Racing case, the High Court has declared that Australian law does not protect all intangible value, only those sources of value falling within recognised legal rights. Later, in the Blank Tapes case, the High Court struck down a “royalty” imposed on the sale of blank cassette tapes on the grounds it was not a payment for use of copyright and so was invalid as a tax or, possibly, an acquisition of property on other than just terms. It will be interesting to see whether the resort to an access regime – one in which the facility provider pays, not the user – changes the calculus.

Under the DSM Directive, the obligation to pay does not apply to articles or materials published before 6 June 2019.[5] Further, it applies to articles and materials only for two years following publication.[6]

Another difference is that art. 15.5 of the DSM Directive imposes an obligation to ensure that the authors of the press publication receive “an appropriate share” of the remuneration the press publisher receives from the digital platforms.

Google’s reaction has been swift. It has cancelled, or suspended, a licensing deal it had reached with a number of independent publishers. It has come out strongly against the scheme.[7] Now, when one initiates a search on Google or seeks to watch something on YouTube, one is met with the following banner:

Comments should be submitted to the ACCC by 28 August 2020

Exposure Draft Treasury Laws Amendment (News Media and Digital Platforms Mandatory Bargaining Code) Bill 2020

  1. For example, Mason and Kehoe, [‘Tech giants should pay media $600m: Costello’][600m]. Google disputes this and claims that the news media business gain much more value from its services than it receives.  ?
  2. Directive (EU) 2019/790 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC, art. 15. For Communia’s outline and guidelines see here and here.  ?
  3. Treasury Laws Amendment (News Media and Digital Platforms Mandatory Bargaining Code) Bill 2020.  ?
  4. The $ may change as they are included in “curly” brackets.  ?
  5. It presumably being a coincidence that date was the 75th anniversary of the D-Day landings.  ?
  6. Strictly speaking, it is 2 calendar years commencing on 1 January following the year in which the article was published: art. 15.4.  ?
  7. For exmple, here and here. The ACCC has denounced Google’s position as misleading.  ?

More copyright reforms

war / / Copyright

Yesterday, the Government announced its plans for reforms to the Copyright Act 1968 to improve “access”.

No fair use – so much for all those expert reports!

Instead, according to the Press Release, the amendments will involve:

  • a new fair dealing exception for non-commercial quotation;
  • a limited liability scheme for use of orphan works;
  • amendments to the library and archive exceptions;
  • amendments to the educational use exceptions;
  • streamlining of the government use provisions.

There is a press release here. Apparently, the Government is planning to release an exposure draft of the proposed legislation later this year.

Lid dip, Carolyn Hough

Love was not in the air – Part 2

war / / Copyright

In a previous post, we looked at why Perram J held that Glass Candy’s “Warm in the Winter” and Air France’s “France is in the Air” reproduced a substantial part of the musical work in Love is in the Air, but not the literary work comprising the lyrics.

A further set of issues his Honour had to untangle was which acts involving the streaming and downloading of Warm or France infringed and who owned those rights.

You will recall that Glass Candy are an American electronic duo based in America who, in 2011, released “Warm in the Winter”. Glass Candy wrote and recorded “Warm in the Winter” in the USA. They made it available for streaming and download on, first, the Big Cartel website and then the IDIB website.[1] They or their rights management agent, Kobalt, also made the recording available through iTunes / Apple Music, Google Play, Youtube, Spotify etc.

Subsequently, Glass Candy provided a version of “Warm in the Winter” to Air France for use by the latter in its Air France: France is in the Air promotional campaign. Until this litigation started, Air France used “France is in the Air” in TVCs and radio advertisements in 114 countries (but not Australia), posted the advertisments on its Youtube channel (which could be downloaded from Australia) and, if you rang up its office from Australia and all its customer service operators were tied up, for its “music on hold” service.

Infringement, or not

Having found that Warm and France reproduced a substantial part of Love, Perram J turned to determing which conduct engaged in by Glass Candy, Kobalt and Air France actually infringed any copyright in Australia and who owned those rights.

In summary, Perram J held that:

(1) the streaming and downloading of Warm from the Big Cartel and IDIB websites infringed the copyright in Love;

(2) the streaming and downloading of Warm from the streaming services iTunes/Apple Music, Google, Play, Spotify and Youtube did not infringe copyright as it was licensed; and

(3) the playing of France to Australians via Air France’s music on hold service did infringe, but the streaming and downloading via Youtube did not.

The infringing acts

The streaming of Warm to Australia and its downloading by subscribers in Australia entailed a number of acts:[2]

(1) the making and recording of Warm;

(2) the uploading of a copy of Warm on to the servers of each streaming service;

(3) the making available of that copy to be accessed by end-users in Australia;

(4) the streaming of the recording to someone located in Australia; and

(5) in the case of downloads, the downloading of a copy of Warm on to the end user’s computer (or smart device) in Australia.

Making and recording – the reproduction right

The making and recording of Warm and France did reproduce a substantial part of Love but, having taken place in the USA (or the USA and France), were not infringements of the copyright in Australia.[3]

There does not appear to have been evidence about where the servers of the streaming services such as iTunes / Apple Music, Google Play, Spotify or Youtube were located, but Perram J was not prepared to assume they were in Australia. So loading the copy on to the streaming service’s server was not an infringing activity either.

Making the recording available to be accessed – the communication right[4]

Although storing the copies on the streaming services’ servers was not a reproduction implicating Australian copyright, Perram J considered that Glass Candy’s acts of communicating the copies of Warm to the streaming services (uploading them) could infringe copyright in Australia and the acts of streaming and downloading in Australia would be damage suffered by the copyright owner in Australia. At [376], his Honour said:

…. That act of infringement seems to me to occur by communicating Warm to iTunes (and if it had been proven the other online music services). That was the infringement. Each time thereafter that the streaming service raised revenue by streaming or downloading Warm that was evidence of the damage suffered by the Applicants or the profits made by Glass Candy. Viewed that way, whether the streaming and downloading of Warm from the online music services is a contravention is irrelevant.

From the context, however, it appears that that act of communicating the copy to the streaming service(s) was not an infringement alleged against Glass Candy. I am not sure how that “infringement” would work, however, given his Honour’s further findings.

The alleged infringements the subject of the proceeding

That left as infringing acts being pursued by the Applicants:

(1) the streaming of Warm to Australians from the Big Cartel and IDIB websites – an exercise of the communication right;

(2) the making of the copies of Warm by users in Australia from the Big Cartel and IDIB websites – an exercise of the reproduction right; and

(3) the streaming of Warm to Australians from the streaming services – also an exercise of the communication right;

(4) the making of the copies of Warm by users in Australia from the streaming services – (at [276]) an exercise of both the communication right (by the streamng service) and the reproduction right (by the end-user); and

(5) in the case of France, the playing of “music on hold” to callers from Australia.

These allegations gave rise two problems: (a) who was the owner of the relevant right and (b) what licences of these copyrights had been granted. The issues that arose are a good illustration of the kind of tracing the chain of title fun the long term of copyright requires you to engage in to make sure you have identified the right person as the copyright owner.

In summary, Perram J found that Boomerang had no standing to sue anyone for infringing the communication right as it was not the owner of the relevant copyright; APRA was. Boomerang was the owner of the copyright in respect of the reproduction right, but its interest was partial or concurrent with AMCOS’ interest as the exclusive licensee of that right.

However, the streaming and downloading from the streaming services, iTunes / Apple Music, Youtube, Google Play and Spotify did not not infringe as those services held licences from APRA and AMCOS for those acts.

The copyright and ownership – a chain of title history

Harry Vanda and the late George Young – the Easybeats, Flash in the Pan – composed Love is in the Air in 1977.

In 1978, they assigned all their copyright in the literary and musical works comprised in Love to Alberts.

Subsequently, in 2016, when Alberts sold its business to BMG, it excluded from the sale the back catalogue of songs written by Vanda, Young and a third member of the Easybeats, Stevie Wright. Alberts instead assigned these rights to Boomerang – a new company owned by members of the Albert family.

However, in 1972 Vanda and Young had become members of the Australasian Performing Right Society (APRA), the collecting society for public performance rights and, as it was before the introduction of the broadly based communication right[5] by the Copyright Amendment (Digital Agenda) Act 2000, the cable diffusion right.

When Vanda and George Young became members of APRA, like everyone else who becomes a member, they assigned to APRA the exclusive rights:

(a) to perform in public; and

(b) to transmit via a diffusion service,

in all of their existing copyrights and any copyright works made in the future while still a member of APRA.[6]

So, the rights in Love is in the Air assigned by Vanda and Young to Alberts did not include the public performance or diffusion rights, as they had already been assigned to APRA.

An interesting point to note here is that the assignment to APRA in 1972 was not an assignment of the broad communication right, as there was no such right under Australian law at that time. Further, the repeal of the diffusion right and its replacement with the broad communication right did not affect that earlier assignment. The earlier assignment did not catch, however, the broader rights encompassed in the communication right, apart from the diffusion service, when the broader right came into force as the terms of the assignment were limited just to the diffusion right.

After the assignments from Vanda and Young, Alberts had also entered into agreements which affected the rights of reproduction and communication.

In 1986, Alberts had entered into a licence with AMCOS granting AMCOS the exclusive rights to authorise the making of records from the Alberts catalogue, including Love. Over time this was amended so as to include the making of digital records. The exclusive licence included the right to authorise the making of reproductions for the purposes of broadcasting in Australia. There were, however, three exclusions from these exclusive rights: they did not extend to making reproductions for inclusion in advertisements, or cinematographic films for the purpose of being broadcast in Australia. They also did not extend to licensing a number of named record companies.

In 1992 and again in 2005, Alberts had also entered into assignments with APRA. The 2005 assignment included an assignment of the right of communication to the public (introduced by the Digital Agenda Act in 2001).

Finally in 2016, after the assignment from Alberts of its copyright in Vanda, Young and Wright works, Boomerang also granted an exclusive licence over its copyright to AMCOS and assigned its public performance and communication rights to APRA.

At [299], Perram J found Boomerang and AMCOS had mutually abandoned the earlier licence granted by Alberts and replaced it with the 2016 licence.[7] The 2016 licence granted AMCOS exclusive rights to authorise reproduction of Love to make records, for digital downloading and communication to the public. AMCOS was not licensed to authorise use of Love in advertisements or synchronisation into a film.

A summary

So, at [326] and [342] Boomerang had no standing to sue Glass Candy or Air France in respect of any streaming or the playing of ‘music-on-hold’ as APRA was the owner of the relevant rights.

Boomerang was the owner of the reproduction right (at [334] – [335], [342]), but its interest was concurrent with AMCOS as the exclusive licensee under s 119 and s 120. AMCOS of course also had concurrent rights under those sections.

Which acts of streaming / downloading infringed?

The straightforward case on infringement was the streaming and downloading from the Big Cartel and IDIB websites. The position of iTunes / Apple Music, Google Play, Spotify, Youtube was complicated by licences those entities had from APRA and AMCOS.

iTunes / Apple Music, Spotify et al.

The evidence showed that sales of Warm through Apple’s services amount to $85.41 (although some of these were probably to the Applicants’ solicitors).

Perram J held that the streaming and downloading of Warm from these services did not infringe as they held licences from APRA and AMCOS which permitted these acts.

In January 2010, Apple Pty Ltd had entered into a licence agreement with APRA and AMCOS. By cl. 9.1, the licence was a non-exclusive licence to:

(a) reproduce AMCOS Works;

(b) authorise the reproduction of AMCOS Works;

(c) communicate in the Territory the APRA Works (including authorising their electronic transmission from Your Digital Music Service to Your customers);

(d) authorise Your Affiliates to communicate the APRA Works to customers in the Territory as necessary in the course of providing the Digital Music Service,

in the form of Downloads (whether by You, or Your customers in the Territory, onto storage devices) for the purpose of Sale or to complete a Sale, including in the form of Clips provided at no charge for the sole purpose of demonstrating the Clip to customers and potential customers of Your Digital Music Service …

Love was included in the APRA and AMCOS Works.

Perram J held that the rights to reproduce and communicate to the public included the rights, not just to reproduce or communicate the whole of Love, but also a substantial part of it through the operation of Copyright Act 1968 s 14. As Warm and France reproduced a substantial part of Love, they were covered by the licences. At [352], his Honour explained:

Because Love is in the AMCOS and APRA catalogues it follows that since 2010 Apple has been fully licensed to provide digital streaming and downloading of Love. And because the doing of an act in relation to a work is taken by s 14 of the Copyright Act to include a reference to the doing of that act in relation to a substantial part of the work, it also follows that Apple has at all material times been licensed by APRA and AMCOS to make available for streaming or digital download a substantial part of Love. Of course, the Applicants’ principal contention in this case is that making Warm available for streaming or digital downloading involves the communication or reproduction of a substantial part of Love. However, it would appear that iTunes is lawfully entitled to make Warm available for streaming or downloading even if it does involve a communication or reproduction of a substantial part of Love. Consequently, the Applicants can have no possible case against Apple for making available Warm for streaming or downloading from iTunes.

Similar conclusions followed in respect of the other streaming services which also had licences with APRA and AMCOS.

As Apple did not infringe by streaming or authorising the downloading of Warm, so also Glass Candy could not be liable for authorising the (non-)infringement.

There was an additional wrinkle on this part of the case. Kobalt admitted there had been streaming from Google Play, Spotify and Youtube, but Glass Candy did not. Perram J considered the evidence did not actually establish there had been streaming or downloading from these services so, if the licences did not cover these activities, Kobalt alone would have been liable by reason of its admissions.

The Big Cartel and IDIB websites

The evidence showed that Warm had been downloaded 12 times for $11.50 in revenue from Big Cartel and only once from IDIB. There were also payments to Kobalt Australia of $266.60 from AMCOS and $366.43 from APRA. Warm was still being advertised for sale for $1 from the IDIB website.

The position of downloads from the websites Big Cartel and IDIB was straightforward. The evidence showed Padgett uploaded Warm or caused it to be uploaded and Ida No received payments from time to time from the sites. Therefore, at [348] they were liable for authorising the communications to the public and downloading from those websites.

The position of streaming was more complicated. Padgett and Ida No had licensed their distribution / streaming rights to BMI in 2010. APRA’s own records recorded BMI as the owner of copyright in Warm for the public performance and communication rights. IDIB had also licensed streaming rights in relation to its website to Kobalt US. At [390], this meant that the person liable for authorising the streaming from the idib website was either BMI or Kobalt US, neither of which was a party. The receipt of royalties by Kobalt Australia from APRA was not sufficient to find it liable for authorising the streaming.

I am not sure why, if Padgett and Ida No had licensed their rights to BMI or Kobalt USA, they were nonetheless not liable for authorising infringing conduct by those entities or authorised by them.

Air France

The case against Air France for streaming promotional videos from Youtube failed because of Youtube’s licence from APRA for the reasons Apple’s licences protected streaming and downloading. There was still liability for the music-on-hold, however, as Air France did not hold a licence from APRA.

Remedies

Glass Candy contended that any damages would be de minimis and so relief should be withheld.

At [432] Perram J rejected this argument. First, his Honour found that the copying of Love had been deliberate so the infringements were flagrant. That meant additional damages may well be awarded. In addition, his Honour anticipated that the compensatory damages award might not be so modest:

Further, whilst it is tempting to think that the damages might be limited by the apparently modest infringements I have found, the Respondents (other than Kobalt) will no doubt have to deal with a contention by the Applicants that their damages should be assessed on a foregone licence basis. Without wishing to lend colour to that contention, damages on that basis may not be so modest.

[Boomerang Investments Pty Ltd v Padgett (Liability)][2020] FCA 535[8]

  1. Italians Do It Better – a record label jointly owned by Padgett (aka Johhny Jewel) and a DJ, Mike Simonetti.  ?
  2. Similar analysis applies to the uses of France by Air France which, additionally involved the transmission of France via a diffusion service to callers on hold.  ?
  3. As noted in my previous post, Perram J may have been interested in exploring whether or not an Australian court could hear and determine questions of infringement under US law.  ?
  4. Copyright Act 1968 s 31(1)(a)(iv): the exclusive right to communicate the work to the public.  ?
  5. Copyright Act 1968 s 31(1)(a)(iv): the exclusive right to communicate the work to the public.  ?
  6. Of course, that would not apply to copyright which had been assigned to someone else before becoming a member of APRA.  ?
  7. As Alberts successor in title, Boomerang was bound by the terms of the 1986 licence granted to AMCOS: Copyright Act 1968 s 196(4).  ?
  8. The applicants’ subsequent attempt to have the Reasons revised or to re-open their case was given short shrift.  ?

Registered designs consultation

war / / Designs

IP Australia has released exposure drafts of the proposed:

As the naming of the draft legislation indicates, these amendments are intended to implement the Government’s acceptance of the simpler, or less controversial, recommendations made by ACIP.

IP Australia’s landing page for the consultations states that proposals included in the draft include:

  • “Introducing a 12 month grace period to help protect designers from losing their rights through inadvertent disclosures made prior to filing.
  • “Expanding the existing limited prior use defence to protect third parties who started preparations to make a design before someone else tried to register it.
  • “Simplifying the design registration process by removing the publication option and making registration automatic six months after filing
  • “Aligning with the other IP Rights by giving exclusive licensees legal standing to sue for infringement
  • “Making several technical improvements to the Designs Act”.

You can find some background, including links to the various consultation papers, ACIP’s Review of the Designs System on the landing page.

If you are planning to submit comments, they should be in by 28 August 2020.

The landing page says that a number of proposals which are not being progressed in the draft legislation at this stage are still under consideration and invites your comments via IP Australia’s Policy Register. Proposals identified are:

  • “Protection of partial designs – Policy ID 42
  • “Protection of virtual, non-physical and active state designs – Policy ID 43
  • “Clarify ambiguity in section 19 of the Designs Act – Policy ID 35 
    Please note the part of this proposal relating to the standard of the informed user will be progressing and is included in the draft legislation
  • “Clarification of ‘registered’ and ‘certified’ designs – Policy ID 37
  • “Some of the amendments proposed in Recommendation 18 of the ACIP Designs Review (18b, 18d, 18e and 18g are not progressing at this time) – Policy ID 45“.

Love was not in the air

war / / Copyright

but don’t go humming (or whistling or singing) that refrain in public!

There are probably not that many Australians who aren’t familiar with John Paul Young’s Love is in the Air[1] either as a popular song from the 70s or featuring prominently in the movie, Strictly Ballroom.

Glass Candy are an American electronic duo based in America who, in 2011, released “Warm in the Winter”. Glass Candy wrote and recorded “Warm in the Winter” in the USA. They made it available for streaming and download on, first, the Big Cartel website and then the IDIB website.[2] They or their rights management agent, Kobalt, also made the recording available through iTunes / Apple Music, Google Play, Youtube, Spotify etc.

Subsequently, Glass Candy provided a version of “Warm in the Winter” to Air France for use by the latter in its Air France: France is in the Air promotional campaign. Until this litigation started, Air France used “France is in the Air” in TVCs and radio advertisements in 114 countries (but not Australia), posted the advertisments on its Youtube channel and, if you rang up its office and all its customer service operators were tied up, for its “music on hold” service.

Boomerang, APRA and AMCOS sued Glass Candy, Air France and Kobalt for infringing the copyright in the musical work and the literary work comprised of the lyrics of Love is in the Air in respect of only the streaming to Australia, downloading by customers in Australia and playing the music on hold to customers in Australia.

The making of the recordings in the USA, the streaming and downloading outside Australia and the running of Air France’s advertisements in those 114 other countries were not part of the case.[3]

Perram J has found that Glass Candy and Air France have infringed the copyright in the musical work comprising Love is in the Air, but the streaming and downloading through iTunes, Youtube, Spotify, Google Play and others did not.

Following the Kookaburra case, Perram J recognised that infringement required a three step analysis:

  • first, identifying the copyright work in which the copyright in Australia subsists;
  • secondly, identifying the part (or parts) of the allegedly infringing work which is said to have been reproduced from the copyright work – involving identifying some sufficiently similar matter which has been copied from the copyright work; and
  • thirdly, determining that the taken part (or parts) were the whole or a substantial part of the copyright work.

To these steps, one should also add two further requirements:

  • identifying the act or acts said to infringe and which right or rights comprised in the copyright that act (or those acts) implicated (e.g. reproduction or communication to the public); and
  • identifying who owned the relevant copyright acts

It’s a long story. Perram J devoted 434 paragraphs to get there. Given that, this post will look at why Perram J found Warm and France did, or did not, infringe Love. A later post may look at the untangling of the ownership.

Infringement, or not

The central question was whether “Warm” and “France”[4] reproduced a substantial part of either the musical work or the literary work comprised in “Love”.

Boomerang et al. contended that the substantial parts of “Love” reproduced in “Warm” (and “France”) were the music and lyrics (1) for the phrase “love is in the air” in (a) the first two lines of the verses and (b) the chorus and (2) the couplet comprising the first two lines of each verse.

In case you are one of those Australians who can’t recite it from memory, you will recall the first verse is:

Love is in the air, everywhere I look around

Love is in the air, every sight and every sound

And I don’t know if I’m bein’ foolish

Don’t know if I’m bein’ wise

But it’s something that I must believe in

And it’s there when I look in your eyes

At [83]: Perram J linked to an audio file of the first two lines.

The chorus is:

Love is in the air

Love is in the air

Whoa, oh, oh, oh

At [87]: Perram J linked to an audio file of the chorus.

Love in the single version released by John Paul Young runs for about 3:28. The phrase “Love is in the air” in the verses runs for about 2.2 seconds, appearing eight times for a total of 20 seconds.

By way of comparison, the relevant parts of “Warm” were the first two lines in two blocks:

Block 1

Love’s in the air, whoa-oh

Love’s in the air, yeah

We’re warm in the winter

Sunny on the inside

We’re warm in the winter

Sunny on the inside.

Woo!

Block 2

Love’s in the air, whoa-oh

Love’s in the air, yeah

I’m crazy like a monkey, ee, ee, oo, oo!

Happy like a new year, ee yeah yeah, woo hoo!

I’m crazy like a monkey, ee, ee, oo, oo!

Happy like a new year, yeah, yeah, woo hoo!

As published in 2011, Warm had a running time of about 6 minutes 45 seconds. The sung line “love is in the air” appeared in Warm at about 1:00–1:02, 1:07–1:09, 2:00–2:02 and 2:08–2:10 of the recording. His Honour linked at [95] to the audio files for the phrase “love is in the air” by way of comparison.

The musical work

A first point of interest is that Perram J accepted at [66] – [77] the musical work included the “instructions to the singer on what sounds to make with the mouth”. This included the sounds comprising the sung lyric including “the non-literary phonetic instructions”:

l?v ?z ?n ði e?, ??vri we?r a? l?k ??ra?nd

l?v ?z ði e?, ??vri sa?t ænd ??vri sa?nd.

However, it did not include the quality of John Paul Young’s actual performance (which was part of the copyright in the sound recording and the performer’s right).

Perram J accepted that the comparison between Love and Warm depended on aural perception and not a ‘note-for-note comparison’.

Applying the ‘ordinary, reasonbly experienced listener’ test, Perram J held at [99] – [104] that the passages in the musical work accompanying the phrase “Love’s in the air” in the Warm blocks was objectively similar to the musical work accompanying that phrase in lines 1 and 2 of Love’s verses, but not in the chorus. At [109], lines 1 and 2 as a couplet were not.

Perram J accepted that there were differences between the relevant parts of Love and Warm. The transcription of the respective scores were different, the difference in styles – disco vs death disco, the presence of a moving bass line in Love, but not Warm were, on the aural test, not significant. It was:

common ground that the vocal lines of both … comprise five notes, the first two or three notes … being in same pitch, the next note dropping down in pitch by a minor third, and the next note returning up in pitch by a minor third.

and according to the experts ‘the pitch and rhythmic content of the opening vocal phrase is notably similar’ between Love and Warm and that ‘there is a basic aural connection between this phrase and the corresponding phrases in Warm’.

At [110] – [202], Perram J considered and rejected Glass Candy’s claim that they were not aware of John Paul Young’s recording of Love before Warm was composed and had not copied it. Rather, his Honour found that they had deliberately copied Love in making Warm.

Perram J then held that the objectively similar part of Love copied into Warm was a substantial part of the copyright in the Love musical work.

Glass Candy argued that the musical phrase for “love is in the air” was ‘too slight and too mundane’ to be a substantial part of Love. It was only five notes in length, did not contain much musical information and, as Vanda conceded, it was a ‘fragment of a melody’. Further, it was too slight to be a copyright work in its own right.

Perram J held, at [205] – [208], however, that the phrase as a sung lyric was original and an essential part of Love, even if it was not a copyright work in its own right. The issue was whether it was a substantial part of Love is in the Air. Assessed qualitatively, therefore, it was a substantial part of Love.

Perram J accepted that the phrase ‘love is in the air’ is a common English idiom and that ‘by industrial combing of the archives’ examples of the melody could be found, but for the purposes of the musical work the literary meaning of the phrase was not relevant. The issue was:

whether the line ‘love is in the air’, as a set of instructions, sung by a human to that melody and with its accompanying orchestration is original. In my view, that question answers itself.

In undertaking the comparison, his Honour discounted parts of the musical work in Love not included in Warm, such as the tambourine track.

His Honour also considered that a cumulative total of the phrase occurring in Love of 20 seconds was not insignificant quantitatively.

The literary work

In contrast to his finding on musical work, Perram J at [216] – [219] rejected the case on infringement of Love as a literary work. The phrase ‘love is in the air’ as a commonplace was a famous idiom which nobody owns. It was not sufficiently original to be a substantial part of the literary work on its own.

Boomerang Investments Pty Ltd v Padgett (Liability) [2020] FCA 535

  1. Which of course is really Vanda and George Young’s Love is in the Air performed by John Paul Young.  ?
  2. Italians Do It Better – a record label jointly owned by Padgett (aka Johhny Jewel) and a DJ, Mike Simonetti.  ?
  3. At [16], Perram J speculated this might have been because the action would “probably” have needed to brought in the USA and the potential for a jury trial might have been unattractive. There is a suggestion in his Honour’s reasons that he would have liked to explore an Australian court hearing claims for infringement under US law, presumably based on the Supreme Court’s ruling in Lucas Films v Ainsworth.  ?
  4. For present purposes, the main difference between “Warm” and “France” is that the latter substituted the word “France” for “warm” in the phrase “Love is in the air”.  ?