Designs Law and Practice
Prof. Ann Monotti and I will be teaching Designs Law and Practice in Monash Uni’s postgraduate program from 10 December to 15 December this year.
Details here.
Designs Law and Practice Read More »
2009
IPRIA Seminars
Prof. Ann Monotti and other experts will be talking about what University of Western Australia v Gray means for Universities in
- Melbourne on 17 November
- Brisbane on 23 November; and
- Perth on 20 November.
Details and registration here.
Judge Hiroki Morishita will be providing an Introduction to the High Court of Intellectual Property in Japan on 9 November in Melbourne. Details and registration here.
And, if you’ve recovered from Oaks Day, you could find out what difference a patent makes in Melbourne on 6 November.
IPwars and irregular posting
Due to the exigencies of my day job, it is unlikely that IPwars will be in a position to post with anything like a degree of frequency until after Cup Day.
Hope to see you at the other end of the tunnel!
IPwars and irregular posting Read More »
Costs, (no damages) and IP cases
The Full Federal Court (Finn, Sundberg and Edmonds JJ) has clarified how FCR O62 r 36A operates in IP infringement cases.
FCR O62 r36A provides that the costs of a successful applicant which obtains an order for damages less than $100,000 will be reduced by one third, unless the Court otherwise orders.
Nokia had sued Liu for trade mark infringement arising from a customs seizure. The proceedings settled by consent, with injunctions and delivery up. Nokia pursued damages, but obtained only nominal damages as it was unable to obtain discovery of importation in significant quantities. The trial judge refused to allow Nokia any costs of the damages inquiry.
The Full Federal Court has allowed an appeal, awarding Nokia its (taxed) costs up to the consent judgment and completion of discovery about damages; thereafter costs were at the reduced rate.
The Full Court considered that costs of the trial up to and including the consent orders should be at the usual taxed rate, without the 1/3 reduction because it was common in IP cases for trials to be split – a trial on liability and (if successful) an injunction and a subsequent trial about damages (or an account) and applicants were required to particularise only a single instance of infringement. The Full Court considered the remedy of injunction “indispensable”. It was also appropriate for the proceedings to be brought in one of the “prescribed courts”, customarily the Federal Court and it was not apparent that it would have been sensible for the matter to be referred down to the Federal Magistrates Court (unlike in copyright proceedings where the Federal Magistrates Court has direct jurisdiction).
Nokia was also entitled to costs of the damages inquiry at least until completion of discovery as it was legitimate and, until it had discovery, it could not have known of the futility. Once discovery was completed, it knew the risks it was running and, given the amount recovered, it was inappropriate to exercise the discretion not to limit the costs of that part of the proceeding by 1/3.
Nokia Corporation v Liu [2009] FCAFC 138
Costs, (no damages) and IP cases Read More »
Patentable Subject Matter: ACIP options paper
ACIP has published an Options Paper in connection with its review of “patentable subject matter”.
Press release here.
Options Paper here.
The options under consideration are too far reaching for a “sound bite”.
For example (from the Press Release)
“The test for patentable subject matter in Australia is linked to legislation introduced
in England in 1623 so it really does need addressing within the context of modern
research and business,”
“The test for patentable subject matter in Australia is linked to legislation introduced in England in 1623 so it really does need addressing within the context of modern research and business”.
Of course, the fact that this disparaged Jacobean test is perhaps the most modern, flexible, telelogical concept on our statute book since the NRDC case (in 1959) could be overlooked.
Also (from the Press Release):
ACIP have also proposed possible safeguards to ensure public concerns are reflected in decisions to grant patents.
Submissions by Friday 13th (!) November 2009.
Patentable Subject Matter: ACIP options paper Read More »
Selected microblog posts (w/e 11/09/09)
Selected microblog posts from the past week:
- RT @VogeleLaw: Found: Mary Beth Peter’s testimony (via @cathygellis – thanks!) http://bit.ly/Cijau #gbs_hearing [US Copyright Register opposes Google Book Settlement]
- Google Book in the EU? http://ff.im/-7OYfA
- RT @MegLG: A Billion Dollar Test of the DMCA Safe Harbors in Viacom v YouTube http://ow.ly/om66 via Cyberlaw Cases
- RT @michaelgeist: Microsoft wins stay of injunction on Word. Case arises from patent claim by Toronto’s i4i.http://bit.ly/oDmLU
- IP Think Tank Blog looks at i4i v Microsofthttp://ff.im/-7zfKp
- AAR on UWA v Gray – Universities and their employees: who owns developed IP? http://ff.im/-7RmgI
- Hannahland: Ph D candidate on UWA v Gray http://ff.im/-7WcoR
- RT @filemot: Useful note on Bose case and reckless US trademark intent to use statements by foreignershttp://tr.im/yb7L
- Even the Australian doesn’t believe the Govt’s attempt to filter the web (RT @nicsuzor) http://ff.im/-7zg5v
- RT @IPThinkTank: ACTA 5th negotiation roundhttp://short.to/pqtt
- SPICY IP: WTO rules in favour of Brazil, allows for cross retaliation against U.S. IPRs http://ff.im/-7KvwX
Selected microblog posts (w/e 11/09/09) Read More »
Shape and colour trade marks
Julian Lee, in the Age yesterday, reported on the concerns of “marketers” about how hard Australian regulators are making it to register a shape as a trade mark, in the wake of:
- last month’s ruling by Sundberg J against Guylian’s sea-horse shaped chocolate; and
- the commencement of Nestle’s appeal against Aldi’s successful opposition to registration of the shape of a Kit Kat bar as a trade mark (BDW discussed the decision here, but the decision itself seems to be hiding on-line).
To digress for a moment from the “shape” issue – Mr Lee also reports that Cadbury and Darrell Lea have settled their long running litigation and Cadbury has secured registration of its trade mark for the colour purple.
Back to “shape” marks, you might have thought from the tenor of Mr Lee’s article that Australia is yet again embarking on anutochthonous experience, but it seems that the Europeans are playing hardball too; e.g. here and here.
Shape and colour trade marks Read More »
IPRIA, parallel imports
IPRIA has organised a seminar in Melbourne on 15 September and Sydney on 16 September to discuss whether freeing parallel imports will make books cheaper.
Speakers include both Prof. Fels, who started it all, and Dr Rhonda Smith.
Details from here.
Has anyone established how far the prices of CDs and computer software fell once the markets for those products became open?
IPRIA, parallel imports Read More »
Injunctions or damages?
This week’s Victorian Reports publish a 2007 decision in which the Court of Appeal (Dodds-Streeton JA, Ashley and Cavanough JJA agreeing) exhaustively reviewed the relatively limited circumstances in which equitable damages will be awarded in place of an injunction.
Now, the Court of Appeal was dealing with a question of trespass to land but, having regard to the House of Lords’ remarks in Fisher v Brooker, may be worth bearing in mind in intellectual property cases as, generally, an IP owner seeks an injunction when their rights are being infringed.
[135] The appellant’s reliance on an alleged divergence of principle in the applicable authorities was, in my view, ill-founded. The relevant authorities evince no fundamental difference of principle. They uniformly uphold the established view that an injunction is the prima facie remedy for trespass and that the alternative remedy of damages will be ordered exceptionally, as indicated by the working rule in Shelfer or by such other relevant considerations as may apply in a particular case. The authorities do not dictate or authorise the balancing of potential detriment to the parties on the basis of equivalent entitlement, or indicate that trespass may be negatived by undertakings to minimise its potential
20 VR 311 at 336
effect on future use. The tests embodied in the working rule of Shelfer are cumulative, and assume a significant inequality of entitlement between the parties (as the injury to the plaintiff from the trespass must ordinarily be small and the harm occasioned by an injunction to the defendant must be so disproportionate as to constitute oppression). Oppression in that context imports consideration of, inter alia, specific detriment, including disproportionate harm to the defendant relative to injury to the plaintiff, the deliberate or unintended quality of the trespass and all other relevant circumstances.
[136] The authorities’ consistent recognition that damages in this context may properly be assessed by reference to the advantage or gain to the defendant where the injury to the plaintiff is small facilitates an award of damages where that is otherwise appropriate, but does not disturb the traditional primacy of injunctive relief.
[135] …. [The relevant authorities] uniformly uphold the established view that an injunction is the prima facie remedy for trespass and that the alternative remedy of damages will be ordered exceptionally, as indicated by the working rule in Shelfer or by such other relevant considerations as may apply in a particular case. The authorities do not dictate or authorise the balancing of potential detriment to the parties on the basis of equivalent entitlement, or indicate that trespass may be negatived by undertakings to minimise its potential effect on future use. The tests embodied in the working rule of Shelfer are cumulative, and assume a significant inequality of entitlement between the parties (as the injury to the plaintiff from the trespass must ordinarily be small and the harm occasioned by an injunction to the defendant must be so disproportionate as to constitute oppression). Oppression in that context imports consideration of, inter alia, specific detriment, including disproportionate harm to the defendant relative to injury to the plaintiff, the deliberate or unintended quality of the trespass and all other relevant circumstances.
[136] The authorities’ consistent recognition that damages in this context may properly be assessed by reference to the advantage or gain to the defendant where the injury to the plaintiff is small facilitates an award of damages where that is otherwise appropriate, but does not disturb the traditional primacy of injunctive relief. (my emphasis)
Her Honour had earlier quoted the good working rule in Shelfer which (in part) was:
In my opinion, it may be stated as a good working rule that —
(1) If the injury to the plaintiff’s legal rights is small,
(2) And is one which is capable of being estimated in money,
(3) And is one which can be adequately compensated by a small money payment,
(4) And the case is one in which it would be oppressive to the defendant to grant an injunction:
then damages in substitution for an injunction may be given.
Doods-Streeton JA did immediately point out how limited this all was:
[46] While the factors potentially relevant to the exercise of the discretion cannot be exhaustively stated, Shelfer, in my opinion, correctly accorded primary importance to identifying a small injury to the plaintiff, and disproportionate hardship constituting oppression, to the defendant.
[47] In determining whether a substitution of damages for in specie relief is just, the interests of the parties are not of broadly equivalent weight. It will not suffice that the hardship entailed to the defendant by an injunction marginally outweighs the relief that the plaintiff will obtain thereby. Rather, the courts have typically required a significantly disproportionate damage to the defendant, reflected in the criterion of oppression in the Shelfer working rule.
This might be another area where US law is different, following eBay v MercExchange.
Break Fast Investments Pty Ltd v PCH Melbourne Pty Ltd [2007] VSCA 311
Injunctions or damages? Read More »