March 2009

3 strikes in Kiwi land

Looks like New Zealand will be repealing its law imposing a “3 strikes” ban requiring ISPs to cut off infringing downloaders.

Howard has the news at Excess Copyright. Imagine how much lobbying is going to take place now? How long before the USTR has to fly all the way down “here”?

Howard also links to an interesting article about the settlement by Eire’s biggest ISP.

Our law, s 116AG, already gives the Court power to order an ISP to do this and, of course, the case against iiNet is still winding its way through the legal process.

3 strikes in Kiwi land Read More »

WIPO UDRP annual report

WIPO’s annual report summarising developments in domain name disputes for 2008 has been published here.

The headline attracting news around the world:

a record 2,329 complaints filed

Interestingly,

the WIPO Center has received 14,663 UDRP or UDRP-based cases (gTLDs and ccTLDs), covering 26,262 separate domain names. Reflecting the truly global scope of this dispute mechanism, named parties to WIPO cases represented over 100 countries in 2008 alone. The United States of America (US), France, the United Kingdom (UK), Germany, Switzerland and Spain were the most frequent bases for complainants, while the US, the UK, China, Spain, Canada, and France were the most represented countries by named respondent party

and

almost 30% of all cases were settled without a panel decision. Of the remainder, 85% of the panel decisions favored the complainant, while 15% of the complaints were denied, leaving the names in the possession of the registration holder. Cases were handled by 285 WIPO panelists from 40 countries.

There are also short notes on what sectors were affected, and further developments in the domain name space.

WIPO UDRP annual report Read More »

Damages for breach of franchise agreement

Howard’s Storage World (HSW) granted Haviv a franchise to operate an Howard’s Storage World retail outlet at Burwood in Sydney. The terms of the franchise included a grant of an exclusive territory for a radius of 5km.

Subsequently, HSW granted someone else an franchise to operate an Howard’s Storage World franchise at a new shopping centre at Rhodes, approximately 4,840m from Haviv’s Burwood store.

The breach of the contractual exclusivity promise was found, but claims for breach of TPA by misleading or deceptive conduct were rejected.

Jagot J explores the basis on which the damages payable to Haviv should be calculated in Haviv Holdings Pty Limited v Howards Storage World Pty Ltd [2009] FCA 242.

Her Honour considered the nature of the grant of exclusivity – it did not extend as Haviv contended, to a right to be offered the franchise for Rhodes. Nor did it preclude the opening of another store with a territory radius of 5km which overlapped with the territory within 5km of the Burwood store.

On the calculation of damages, her Honour considered the following issues:

  1. Was Haviv entitled to claim damages on the scenario that, if the third party had not been granted the Rhodes franchise, Haviv would have been – No
  2. Did Haviv prove that the breach of the exclusivity promise caused it loss – Yes
  3. How to assess that damage on the basis of loss of net profits
  4. The extent to which damages should be calculated for the period after Haviv closed the Burwood store in 2007 – damages would be payable until the expiry of the last option for renewal period – 2022
  5. The date the loss should be assessed at
  6. What discount rate should be adopted and how should it be applied
  7. What gross profit percentage should be used
  8. How should fixed costs including rent and refurbishment costs be treated?

At [110] her Honour summarised her findings:

 (1) Mr Halligan’s “alternative C” period of assessment should be used (that is, with damages assessed until the end of the option period, being 17 July 2022).

(2) The benchmark group should comprise Hornsby, East Gardens, Macquarie and Bondi Junction stores.

(3) The discount rates applied should be 28% for losses to the date of judgment and 30% for losses thereafter.

(4) The rent increase should reflect the true position where known (that is, $138,490.56 per annum for seven months from 1 September 2007 and an annual rental of $187,000 from 1 April 2008 to the end of the current lease on 31 March 2013 with appropriate adjustments thereafter from that base).

(5) The figure of 50.3% should be used as the gross profit percentage for the 2007 financial year onwards.

(6) The refurbishment costs should be $40,000 in July 2007, $155,000 in July 2012 and $40,000 in July 2017 and subject to mid-period discounting. 

The parties were sent away to have their experts recalculate their reports on the basis of her Honour’s findings.

Damages for breach of franchise agreement Read More »

Productivity Commission on parallel imports

The Productivity Commission has released its draft report into the copyright restrictions on parallel importing books:

Australia’s Parallel Import Restrictions (PIRs) for books should be modified as follows. 

• PIRs should apply for 12 months from the date of first publication of a book in Australia. Thereafter, parallel importation should be freely permitted. 

• If a PIR-protected book becomes unavailable during this 12 month period, then parallel importation should be freely permitted until local supply is re- established, or the expiry of the 12 month period allows for generalised parallel importation.  

• Booksellers should be allowed to overtly offer an aggregation service for individual orders of imported books under the single use provisions. 

All other aspects of the current PIR arrangements should continue unchanged, including the 30 day rule. 

All to be topped up with what appears to be the now mandatory 5 year review to see if it’s working.

I wonder how many books your local bookseller will have to order at once before he or she will start to consider absorbing the cost of freight? Of course, we can always hope that they also find out about addall.com and all those other internet sites rather than using that complicated clunky thing they play with on their computers while you are growing a beard.

Links to the full report here.

Productivity Commission on parallel imports Read More »

Landmarks in Australian IP

Dr Emmerson QC (who surely needs no introduction) is going to launch the new book edited by Andrew Kenyon, Megan Richardson and Sam Ricketson – all professors well known to you on 25 March 2009.

Chapters include:

  1. Potter v Broken Hill: misuse of precedent in cross-border IP litigation by Richard Garnett;
  2. The Union Label case: an early Australian IP story by Sam Ricketson; 
  3. RPM for RPM: National Phonograph Company of Australia v Menck by (Hon.) Peter Heerey and Nicole Malone; 
  4. Horses and the law: the enduring legacy of Victoria Park Racing by Jill McKeough; 
  5. We have never been modern: the High Court’s decision in National Research Development Corporation v Commissioner of Patents by Stephen Hubicki and Brad Sherman; 
  6. Of vice-chancellors and authors: UNSW v Moorhouse by Sam Ricketson and David Catterns; 
  7. Foster v Mountford: cultural confidentiality in a changing Australia Christoph Antons; 
  8. Cadbury Schweppes v Pub Squash: what is all the fizz about? by Mark Davison; 
  9. The Firmagroup case: trigger for designs law reform by Janice Luck; 
  10. Larger than life in the Australian cinema: Pacific Dunlop v Hogan by Megan Richardson; 
  11. O Fortuna! On the vagaries of litigation and the story of musical debasement in Australia by Elizabeth Adeney; 
  12. The protection of At the Waterhole by John Bulun Bulun: Aboriginal art and the recognition of private and communal rights by Colin Golvan; 
  13. The grapes of wrath: geographical indications, international trade and the Coonawarra case by Matthew Rimmer; 
  14. Waiting for the ‘Billy’® to boil: the Waltzing Matilda case by Leanne Wiseman and Matthew Hall; 
  15. The Panel case by Melissa de Zwart.

and what IP nerd could ask for more to read as the dark cold nights of winter peek over the horizon?

Details of the launch here.

Landmarks in Australian IP Read More »

Copyright in a superhero

Copyright in a superhero Read More »

IP mapping?

So I’m watching a clever YouTube which Josh Gans points out has been annoyingly marred by a running stream of “subscript” advertisements.

On of the ads is for IP Mapping which seems like a clever description of patent searching. No doubt, I’m being a bit perfunctory here. Anyone know what I’m missing?

IP mapping? Read More »

Unfair contracts

The Australian Government has announced that it will be fastracking new consumer laws protecting against unfair contracts, with the aim of the law being introduced in June 2009 and in force by January 2010.

David Jacobson has a detailed report with links to consultation papers etc. here.

Stephen King gets exercised about the economics here.

Whatever happened to that old case involving Fleetwood Mac and Clifford Davis management or Amadio?

Unfair contracts Read More »

Not using (but keeping) Pioneer

Not using (but keeping) Pioneer Read More »

Leading the expert

PAC Mining has successfully appealed the finding that it infringed Esco’s patents for wear assemblies protecting excavating buckets, but failed in its appeal against the finding that the patent was valid.

The point that mainly struck my eye was that PAC Mining’s independent expert’s attack on the patent as obvious failed:

The primary Judge took the view that the value of Prof Wightley’s evidence was compromised by reason of the circumstance that, from the outset, he had been exposed to the shortcoming to which Toplok was perceived to be subject, and to the terms of Jones I, as well as to those of the patents in suit. In other words, Prof Wightley, from the outset, knew the problem, and he knew the solution. The authorities make it clear that the caution with which his Honour approached the evidence of Prof Wightley was both justified and desirable: Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228, 242; Alphapharm 212 CLR at 423-424 [21]; Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 ALR 202, 215 [46]. At this level of analysis, nothing put on behalf of the appellants on appeal has cast any doubt upon the approach which his Honour took. Within the confines of that approach, the matter of obviousness was essentially one of fact. We are not persuaded that his Honour erred in declining to be satisfied that Prof Wightley’s evidence, of itself, warranted the conclusion that the adjustment assembly introduced by Jones II and Jones III was obvious.

The Full Court went on to find no error in the trial judge’s assessment of the inventor’s evidence.

PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18 (Sundberg, Jessup and Middleton JJ)

Leading the expert Read More »