2017

Not a Comedy of Error

1 Comment / Trade marks / / / , , , , , , ,

Robertson J has overturned the Registrar’s decision to cancel a number of trade mark registrations for VOKES[1] as errors wrongly made in the Register and ruled they were properly registered in Laminar’s name.

Until 2001, Vokes was the registered owner of the trade marks.

On 15 August 2001, it applied to the Registrar under s 216 to have the name of the registered owner changed to AES Environmental Pty Ltd.

On 12 October 2005, Laminar submitted to the Registrar an assignment of the trade marks from AES to it and Laminar became the registered owner.

In December 2014, Vokes applied to the Registrar under s 81 to have the registration in the name of Laminar cancelled and the registrations restored into Vokes’ name.

The application under s 216 in 2001 had not been made because Vokes changed its name to AES. Rather, it seems Vokes had assigned the trade marks to BTR in 1998 and BTR wanted to assign them in 2001 to AES. There were no assignment documents, or at least none were submitted to the Registrar. So, it seems Vokes / BTR / AES were trying to use s 216 as a kind of short cut. AES subsequently assigned the trade marks to Laminar.

The Registrar pointed out that there was authority that s 216 could not be used to register transfers by assignment , it was only for situations where there had been a change in the name of the entity on the Register.[2] Accordingly, the Registrar held that the registration of the trade marks in the name of AES had been wrongly made and so ordered that change of name of the registered owner to be rectified.

Laminar appealed.

Robertson J clearly thought it a bit rich for Vokes to be coming back to correct the Register some 13 years after its own ruse.

HIs Honour held that the power to correct “errors or omissions” under s 81 was not triggered by the events in 2001. On the basis of the information then before the Registrar, there had been no error.

At [60], his Honour said:

There was no finding by the delegate that in August 2001, and by reference to what the Registrar then knew, there had been an error made by the Registrar. The error was on the part of the person submitting the form in circumstances where there had not, in truth, been a change of name and address: as found by the delegate, Vokes had not changed its name. This was not brought to the Registrar’s attention, so far as the delegate found, before December 2014 when Vokes made its application under s 81.

And then, by way of further explanation, at [65]:

Contrary to the conclusion of the delegate in the present case at [23], in my opinion there was no jurisdictional error on the part of the Registrar in 2001. It is true that there was not a change in the name of the registered owner of the registered trade marks but the Registrar did not know that nor should she have known it: the submission was not pressed before me that it was plain on the face of the form that there was no change of name in the registered owner. If there were no jurisdictional error then it follows that the decisions to record changes of the owner’s name on the Register were not decisions which “had no legal foundation and are no decisions at all” as found by the delegate as a consequence of his conclusion that the decisions were tainted by jurisdictional error.

Therefore, the power under s 81 was not enlivened.

In any event, Robertson J ruled that, if he were wrong in that conclusion, the intervening events (i.e., the assignment from AES to Laminar) meant that the Registrar’s power under s 81 was no longer available. A “person aggrieved” had other remedies they could pursue.

The decision in Mediaquest, which had been relied on by the Registrar, was distinguished. That case involved an application to record an assignment where the objection to the registration of the assignment was made within one month of the assignment being recorded.

Laminar Air Flow Pty Ltd v Registrar of Trade Marks [2017] FCA 1447

  1. There were also registrations for UNIVEE and VOKES VEE-GLASS.  ?
  2. Citing the continuing effects of Crazy Ron’s at [123].  ?

Not a Comedy of Error Read More »

EIFY: terms of use

1 Comment / IT, Technology / / / , , , , , , ,

Following on from this week’s earlier post about the copyright issues in the EIFY case, McDougall J also held the “clickwrap” agreement was enforceable, but the breach did not result in any compensable loss.

You will remember that EIFY and 3D Safety provide competing web-based induction services for the construction industry. The principals of 3D Safety had accessed EIFY’s site in the course of developing its websites for Mirvac and Thiess.

Before a browser could access the web-based induction services provided by EIFY, he or she had to check a box acknowledging that he or she had read and agreed to the terms and conditions of use. McDougall J found this sufficient to form an agreement.

The registration details a user was required to input included an ABN and at least one of the 3DSafety principals had entered in his company name as well.

The terms and conditions, however, followed the modern form of drafting, referring to “you” and “your”. At [324] – [325], McDougall J found that this gave rise to a binding contract only with the particular user and not his or her company:

324 The strong impression conveyed by the terms of use overall is that they are directed to regulating the basis on which each person who has access to the website exercises that access. The terms of use appear to distinguish between those who access the website (“you”) and those with whom EIFY “enters into agreements” (“Clients”).

325 In the absence of any express acknowledgment, either in the registration webpages or in the terms of use themselves, that an individual who registers and thereafter accesses the site accepts the terms of use not only in his or her own right but also on behalf of his or her employer, I think that Mr Andronos’ submission on this point is correct. By clicking to acknowledge their acceptance of the terms of use, Messrs Conacher and Morrow indicated that they personally accepted those terms. That must mean that they agreed to accept those terms of use as regulating their personal access to the website. It does not follow, and I do not find, that by doing so they agreed to bind Services or Systems to those terms of use.

326 In short, Messrs Conacher and Morrow were bound by the terms of use. [3D Safety was] not.

The terms of use included clause 5:

  1. Access and Interference
    You agree that you will not use any robot, spider, other automatic device, or manual process to monitor or copy our web pages or the content contained herein without our prior written permission. You agree that you will not use any device, software or routine to interfere or attempt to interfere with the proper working of our Site. You agree that you will not take any action that imposes an unreasonable or disproportionately large load on our infrastructure. Much of the information on our Site is updated on a real time basis and is proprietary or is licensed to e-Induct® by our Clients or third parties. You agree that you will not copy, reproduce, alter, modify, create derivative works, or publicly display any content from our Site without the prior written permission of e-Induct or of the party authorised to grant such permission.

McDougall J was rather critical of the drafting of this clause. Nonetheless, he was able to find that Conacher and Morrow (the principals of 3D Safety)[1] had accessed EIFY’s site and breached the terms. However, this did not help EIFY.

This was because McDougall J found that the only breach of the terms had been accessing confidential information. The confidential information was confidential to EIFY’s clients, not to EIFY. As a result, his Honour considered EIFY would not be able to establish any loss to be compensated through damages.

EIFY Systems Pty Ltd v 3D Safety Services Pty Ltd [2017] NSWSC 1310 (McDougall J)

  • By the time of the trial, Morrow had in fact ceased being a director and only held some shares.  ?

EIFY: terms of use Read More »

Safe harbours to be Extended

1 Comment / Copyright / / / , , , , , ,

The Commonwealth Government introduced the Copyright Amendment (Service Providers) Bill 2017 into Parliament today.

As its name suggests the purpose of the Bill is to extend the class of persons who can claim the benefits of the safe harbour provisions in the Copyright Act 1968 provided in sections 116AA to 116AJ.

The way the amendments will work is essentially to remove the references to “carriage service provider” and replace them with a new reference to “service provider”.

For this purpose, “service provider” will be defined to mean:

116ABA Definition of service provider

(1) Each of the following is a service provider:

(a) a carriage service provider;

(b) an organisation assisting persons with a disability;

(c) the body administering a library, if:

  (i) all or part of the collection comprising the library is accessible to members of the public directly or through interlibrary loans; or

  (ii) the principal purpose of the library is to provide library services for members of a Parliament;

(d) the body administering an archives;

(e) the body administering a key cultural institution;

(f) the body administering an educational institution.

However:

(2) If a service provider is not:

(a) a carriage service provider; or

(b) an organisation assisting persons with a disability; or

(c) the body administering an educational institution, being an educational institution that is a body corporate;

this Division only applies to activities that the service provider carries out because of its relationship to the relevant library, archives, key cultural institution or educational institution mentioned in subsection (1).f you are not one of those people, you will be able to claim the benefit of the safe harbours

If your name is Google or Facebook, or you are some other provider of services inflicting user generated content on the world, you won’t qualify.

The new definition of “service provider” may be compared with the definition enshrined in the Australia – US Free Trade Agreement in Article 17.11.29(xii) (scroll down):

(xii) For the purposes of the function referred to in clause (i)(A), service provider means a provider of transmission, routing, or connections for digital online communications without modification of their content between or among points specified by the user of material of the user’s choosing,[1] and for the purposes of the functions referred to in clause (i)(B) through (D),[2] service provider means a provider or operator of facilities for online services or network access.

This is because, the Government has pointed out, copyright industries are highly valuable for Australia. Accordingly, the consultation process will continue:

In so doing, the Government will be mindful of the need to ensure the rights of creators are properly protected. Australia’s copyright framework ensures that creators can receive a fair return for their work. Australia’s copyright industries make a significant contribution to our economic and cultural life, including collectively generating approximately $122.8 billion in economic activity, $6.5 billion in exports and employing more than 1 million Australians.

Bill (pdf)

EM (pdf)

Minister’s Press Release

Other links

  1. That is a 116ac Category A type activity.  ?
  2. That is a Category B, Category C or Category D type activity.  ?

Safe harbours to be Extended Read More »

Copyright And Computer Software

3 Comments / Copyright / / / , , , , , , , ,

McDougall J, in the New South Wales Supreme Court, has dismissed mployeeIFY’s claims that 3DSafety infringed copyright in the “look and feel” or structure of EIFY’s website. If you are preparing terms and conditions for website use, you should read that part of his Honour’s decision too.

Amongst other things, EIFY provides web-based induction services for construction sites. Apparently, before a new employee or contractor can enter a building site and start work, he or she must undergo an induction process and pass certain tests. Historically, these induction processes were conducted “face to face” when the employee or contractor arrived on site for the first time. EIFY developed a web-based service for people to work through before they attended on site. The service included online tests to ensure that the worker had assimilated the required knowledge.

In 2011, EIFY and 3DSafety entered into a joint venture to integrate their respective systems. The joint venture vehicle was “Group”. However, the joint venture fell over fairly quickly and apart from some work for existing clients was inactive.

3DSafety subsequently secured contracts to provide web-based induction processes for Thiess and Mirvac. EIFY had evidence that at least two of the principals of 3DSafety had accessed sites prepared by EIFY repeatedly during the design process for the resulting websites. EIFY sued 3DSafety and those principals for breach of confidential information, breach of contract (the terms on which a browser was permitted to access EIFY’s website) and copyright infringement.

The copyright claims

In the end, EIFY claimed copyright in 5 types or categories of works in 8 different versions of its system:

  1. the structure or sequence or organisation of each System;
  2. the layout, format and “look” of the web pages implementing the System;
  3. the source code for the web pages;
  4. the object code for the web pages; and
  5. 34 images reproduced on 3DSafety’s websites for Thiess and Mirvac.

In the result, each claim failed.

Source code and object code

EIFY’s claims failed because there was no attempt in its evidence to compare the source code, or the object code, in the 3DSafety product to any version of EIFY’s product. There was also no evidence that 3DSafety ever had access to the source code or object code for any of the EIFY products.

At [410], McDougall J explained:

The high point of the evidence is an assertion by Professor Braun that “[i]n cases where the screens are very similar, the underlying Object Code in the Video RAM is also very similar”. Even assuming the requisite degree of similarity (and Professor Braun’s evidence, to the extent it was admitted, does not prove this), it does not follow that the object code underlying the screens in the 3D Safety online induction system (or any other functional part of that system) results from any act that could constitute an infringement of any copyright that subsists in the object code underlying the screens in any versions of the e-Induct System.

Seventeen years into the 21st century, if you want to prove infringement of the copyright in a computer program, you really do need to compare the code said to infringe to the code you are claiming copyright in.[1]

The structure, sequence or organisation of the EIFY System

McDougall J understood this to be a claim to copyright in the EIFY System as identified in paragraph 33AB of EIFY’s pleading which defined that structure in the following terms:

33AB The plaintiff’s expression of the Concept is by means of the following structure (or sequence or organisation):

(a) the preparation of a data base structure to cater to the requirements of the system;

(b) the creation of a system of modules and elements written in computer code to produce object code which creates the user interface in the appropriate sequence for the logical process;

(c) the inclusion in the user interface of digitized images to either provide information to the user for the particular stage of the induction process or to illustrate or enhance the induction procedure;

(d) a user registration process by the user entering personal information into a web interface backended by a data base to store the information, to link the employee to an employer;

(e) the acquisition of an access code (token) by the user or their employer;

(f) the collection of data and other information particular to the user as required for access to the workplace site to which the induction refers;

(g) the validation of the user’s ability to undertake the induction by verifying the existence of a pre-existing access code (token) and verification of the user’s identity;

(h) the commencement of the induction process once the token or access code is verified;

(i) a two factor authentication to confirm the user’s identity, via text message to a mobile phone or mobile device;

(j) the inclusion of user selectable actions to permit the user to move through the induction process and voiceover with relevant controls;

(k) the inclusion of safeguards at each stage of the induction process to ensure the user has correctly assessed the information, risks and requirements of each stage of the induction process, and to prohibit the user moving forward from one stage to the next without successfully completing a prior stage; and

(l) a final result screen to illustrate the final result of the induction procedure undertaken by the user, and including an option such as printing out a certificate or induction card

As with novels, plays and films, McDougall J accepted that “textual” infringement was not the only way copyright could be infringed. At [412], his Honour cited Arnold J’s decision in SAS Institute Inc v World Programming Ltd [2010] EWHC 1829 (Ch) to that effect:

…. I accept that copyright protection is not limited to the text of the source code of the program, but extends to protecting the design of the program, that is, what has been referred to in some cases as its “structure, sequence and organisation”. …. But there is a distinction between protecting the design of the program and protecting its functionality. It is perfectly possible to create a computer program which replicates the functionality of an existing program, yet whose design is quite different.

McDougall J also accepted that the application of the “structure, sequence, organisation” approach poses particular problems in the context of computer programs because it was perfectly possible to emulate the functionality of a computer program, even its ease of use, without copying (or even access) to the underlying code.[2] His Honour accepted Jacob LJ’s summation in Nova Productions Ltd v Mazooma Games Ltd [2007] EWCA Civ 219 at [52]:

Pumfrey J in Navitaire was quite right to say that merely making a program which will emulate another but which in no way involves copying the program code or any of the program’s graphics is legitimate.

In the absence of analysis of the code, McDougall J concluded that EIFY’s case confused the functionality of the respective programs with the protectable elements of the design of EIFY’s software. At [423], McDougall J said:

Returning to the distinction that Arnold J drew in SAS Institute at [232][110] , 3D Safety’s online induction programs for Thiess and Mirvac may well have replicated the functionality of EIFY’s existing online induction program. It does not follow that 3D Safety has thereby copied the design of EIFY’s program, and such other evidence as there is does not prove copying of design as opposed to replication of functionality.

One might add, if one turns to the definition of “computer program” in the Copyright Act 1968:

“computer program ” means a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.

it would seem to follow that one should be comparing the structure, sequence and organisation of the set of statements or instructions constituting the program.

“look and feel”

McDougall J noted there was already Australian authority rejecting protectability of the “look and feel” of a computer program.[3]

EIFY, however, argued that American case law provided for such protection and so StatusCard should not be followed. McDougall J rejected this submission for two reasons.

First, at [428] – [429] McDougall J pointed out that the US Copyright Act defined copyright subject matter differently to the approach taken in the Australian Act. Under the Australian Act, s 31 requires identification of something which fits within the specific category of a “literary work” – the pigeonhole approach. §102 of the US Act, however, defines copyright subject matter inclusively, not exhaustively.

Secondly, McDougall J pointed out at [430] that cases in the US subsequent to Whelan v Jaslow had questioned, or even refused to accept, that copyright extended to the “look and feel” of a program.

Turning to EIFY’s case, McDougall J held at [431] – [432] that the “Structure” of its System as defined was not itself a literary work. Further, its case impermissibly sought to conflate the “structure, sequence or organisation” of the System with those elements of the underlying program. Accordingly, this part of EIFY’s case failed too.

The 34 Images

There doesn’t seem to have been much debate that the 34 images in question were copies of the images EIFY claimed copyright in. The problem was that EIFY did not own copyright in the images.

It turned out that the original images had been created either by Group or by an entity called Clearsite, for Mirvac when Group was operating and had a contract to create a web-based induction service for a Mirvac site. Group of course was not EIFY, being the failed joint venture vehicle.

The evidence showed that employees of Clearsite had created a number of the images in question. Clearsite had been commissioned to create the images by Group, not EIFY, had invoiced Group and had been paid by Group.

Clearsite did execute an assignment of its copyright to EIFY. This did not help for two reasons.

First, at [446] – [448] the terms of the assignment defined the intellectual property assigned as the intellectual property resulting from the provision of consultancy services by Clearsite to EIFY. The images in question, however, had been created in the course of providing consultancy services to Group, not EIFY.

Secondly, the assignment was made on 14 May 2015. The allegedly infringing use of the images took place before that date. The assignment, however, did not include an assignment of the rights to sue for past infringements.

There may be a short post on a couple of points arising from the dispute over the “terms of use” later in the week.

 

EIFY Systems Pty Ltd v 3D Safety Services Pty Ltd [2017] NSWSC 1310 (McDougall J)

    1. There are now more recent cases, but really you can’t go past Ibcos Computers Limited v Barclays Mercantile Highland Finance Limited [1994] FSR 275; 29 IPR 25 for a comprehensive tutorial on proving ownership, copying and substantial part.  ?
  1. At [414 – [420] citing in particular Navitaire Inc v Easyjet Airline Co [2004] EWHC 1725 (Pumfrey J).  ?
  2. Referring to StatusCard Australia Pty Ltd v Rotondo [2009] 1 Qd R 599 at [87].  ?

Copyright And Computer Software Read More »

My Angel is a …*

1 Comment / Trade marks / / / , , , , ,

Rares J has ordered that Centrefold Entertainment’s trade mark registration for CENTREFOLD, No 1695466, be expunged from the Register on the grounds that it is not capable of distinguishing “Entertainment’s” services.

Both Entertainment and Metro are in the business of providing “promo models” and adult entertainment services.[1] Metro promoted its services under the sign “Centrefold Strippers”. Having secured its registration for CENTREFOLD, Entertainment sued Metro for infringement. Things did not turn out how it hoped!

Entertainment argued that CENTREFOLD was a “covert and skilful allusion to its services, not descriptive of them.” It argued that the ordinary meaning of the word was of a person or the particular pages in particular types of magazine.

Rares J rejected this argument on the grounds that the word registered was a “noun” and not an adjective. However, Entertainment used the word in an adjectival sense as part of the composite mark “Centrefold Entertainment”. Hmmm.

Perhaps more compellingly, his Honour pointed out at [93] that there were at least three businesses in the adult entertainment field using names which included CENTREFOLD: Centrefold Lounge, Centrefold Strippers (i.e., Metro) and Centrefold Entertainment itself.

Also, the evidence showed that models who had achieved the status of being Centrefolds, promoted themselves as such and could often command a premium for their services.

In these circumstances, the word was not metaphorical or allusive. At [101], his Honour explained:

“Centrefold” is an ordinary English word that is apt to describe the kinds, qualities and characteristics of performers, models and others, as persons who appear, or have appeared or are prepared to appear, nude or scantily clad before strangers and in pages of magazines. Any supplier of adult entertainment services of the kind comprised in the designated services, without improper motive, might desire to use the word “centrefold” to describe that supplier’s services. That is because of the ordinary signification of the word: Cantarella 254 CLR at 358 [58].[2]

Next, his Honour held that Entertainment’s use of “Centrefold” was not sufficiently substantial to warrant registration under (the “new” version of) s 41(4).

Bear in mind that the trade mark was registered from 22 May 2015.

It appears to have been common ground that Entertainment had not used “Centrefold” alone before it applied to register its trade mark.

Secondly, until about March 2014 (i.e. just over a year before the filing date of the trade mark), the principal of Entertainment had been running two businesses, “XXX Princess” and “Centrefold Entertainment”. XXX Princess was the business promoting the adult entertainment services – by reference to XXX Princess. As part of a deliberate strategy, Centrefold Entertainment’s website and Facebook page did not explicitly promote adult entertainment services. It was only from March 2014 that Entertainment’s website explicitly promoted adult entertainment services by reference to its composite mark (see below). In that period (March 2014 to May 2015), the evidence showed Entertainment had only 2,000 customers. Rares J ruled at [107]:

It is unlikely that the limited use of “centrefold” in Entertainment’s dealings with perhaps, at maximum, the 2,000 individuals who made the bookings (but none of whom, on the evidence, ever received a tax invoice), would have brought its name to their attention, or that of others who may have telephoned the business, as a brand or trade mark rather than, if at all, as a mere reference to a business name. This limited usage would not have brought into the public consciousness the use of “centrefold” as a brand or trade mark in association with the designated services of Entertainment.

The evidence also showed that neither Entertainment nor Metro spent much (if anything) by way of Google AdWords on “centrefold”, focusing their expenditure instead on “strippers” and “waitresses”. There was also evidence a mere 0.39% of hits on Metro’s “Centrefold Strippers” website came via “centrefold”.[3]

Now that all seems uncontroversial. There are some potentially problematic issues.

First, here is one of Entertainment’s Facebook posts from 6 May 2013:

It appears that that was essentially the form of Entertainment’s page from at least early 2012.

One might think that was use of the composite mark as a trade mark for adult entertainment services, albeit not use of the trade mark as registered alone. It seems that the phone number appearing in the ads was a common phone number for XXX Princess and Entertainment and, as already noted, Entertainment’s case seems to have been that the performers were actually arranged by “XXX Princess”. That said, I am rather mystified what Entertainment’s page was doing.

Secondly, there was some evidence of a period late in 2012 where the principal of Entertainment answered the telephone to those calling in to book a performer “Centrefold Entertainment”. It appeared likely that, if the caller was surprised they had not reached XXX Princess, that some business patter was deployed to dispel any confusion. His Honour unsurprisingly, with respect, characterised that use in effect as de minimis.

Thirdly, Entertainment’s evidence was that from September 2012, invoices to all customers were sent out under the composite mark. There was a glitch in the system, however, so it appears no-one received them. Somehow, the performers and Entertainment got paid.

There was also evidence from at least one of the performers that she sent (at least) one invoice for her services into Entertainment by reference to the composite mark. Rares J, however, discounted this as evidence of use on the basis that which entity they were billing was hardly of any moment to the performers and they were rather confused about which company or website they were providing their services through.

The passing off and ACL claims by each party against the other failed on a straightforward application of the Hornsby Building Information Centre case.

By reference to the use of the word “may” in s 126, Rares J considered that the power to grant an injunction was discretionary. If his Honour had not found the trade mark invalid, Rares J would have refused an injunction on the basis of “lack of clean hands”. In promoting its services on the web, Entertainment used photographs of scantily clad young ladies. 90% of the photographs, however, were not of any of its models. They were photographs found on the Internet, including from sources such as “Sports Illustrated”. The Court would not condone such deceptive practices through the coercive power of an injunction.

Metro Business Centre Pty Ltd v Centrefold Entertainment Pty Ltd [2017] FCA 1249

  • with apologies to Seth Justman and the J Geils Band.
  1. Apparently, a “promo model” is someone who provides his or her services to promote a business by, for example, handing out advertising or business cards in a public venue, or acting as an adornment at an event, such as appearing in a manufacturer’s clothing or livery at a trade or motor show. They do not appear naked, or partially naked and get paid $20 – $30 per hour. An adult entertainer (or, often, a “stripper”) would perform naked or partially naked and could earn 10 to 20 times that for a 20 – 30 minute show.  ?
  2. Entertainment’s case was no doubt “assisted” by its principal’s evidence to the effect that he had never heard the term being used to describe “centrefolds”!  ?
  3. The Google Analytics report showed almost 830,000 hits on the website for the relevant period.  ?

My Angel is a …* Read More »

Primary Health Care

1 Comment / Because I felt like it / / / , , , , ,

The Full Court has dismissed Primary Healthcare’s appeal from the decision rejecting its attempt to register “Primary Health Care” for medical services.

The judgment is 438 paragraphs long; Greenwood J providing 77 paragraphs on aspects of s 41 (old form), Katzmann J providing 80 paragraphs and the balance being the leading judgment of Rangiah J.

While Greenwood J and Katzmann J agreed generally with Rangiah J on s 41 (old form), it appears there are some nuances to consider! Katzmann J disagreed with Rangiah J about the application of s 43.

Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174

Primary Health Care Read More »

auDA Policy implementation review

1 Comment / Domain names / / / , , , , ,

auDA, the body regulating the .au domain, has embarked on a Policy review, through a Review Panel chaired by John Swinson.

The first issue being considered is how to implement the decision to allow “second level” domain name registrations: e.g. domain.au in addition to domain.com.au and domain.net.au etc.

One issue that gives rise to is how to resolve conflicting reapplication for registration if different people have “domain” registered already in e.g. .com.au and .net.au. The Issues Paper explains:

53. Given the extensive stakeholder consultation already undertaken on whether existing registrants should be given priority registration rights, the Panel has decided not to revisit this issue but to focus on developing a priority registration policy. The development of a priority registration policy requires consideration of the following issues:
• cut-off date for determining registrant eligibility for priority registration;
• process for resolving competing claims to the same second level domain name; and
• the priority registration period in which registrants will have exclusive rights to register the second level domain name.

auDA is seeking your views by 10 November 2017.

Issues Paper and further details here .

A second, later phase of the review will look at the policies relating to registration in the established second level domains (such as .com.au).

auDA Policy implementation review Read More »

Losing yourself (again)

1 Comment / Copyright / /

The New Zealand High Court has found the NZ National Party’ 2014 advertising campaign theme infringed the copyright in Eminem’s “Losing Yourself”.

you might remember the social media stir when the lawyers managed to appear sober and, er, lawyerly, when they played the two songs in court.

Now, we have the 300+ paragraph ruling.

The Copyright Society’s summary.

Eight Mile Style, LLC v New Zealand National Party [2017] NZHC 2603

ps Probably not,the National Party’s biggest loss this month.

 

Losing yourself (again) Read More »

IP Amendment (Productivity Commission Part 1 …) Bill – exposure draft

1 Comment / Enforcement, Patents, PBR, Trade marks / / / , , , , , , , ,

IP Australia has released an exposure draft bill and regulations to implement some of the Productivity Commission’s recommendations from its Intellectual Property Arrangements report. Intended to be the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2017.[1]

According to the news release, the amendments will:

  • commence the abolition of the innovation patent system (PC recommendation 8.1)
  • expand the scope of essentially derived variety declarations in the Plant Breeder’s Rights (PBR) Act (PC recommendation 13.1)
  • reduce the grace period for filing non-use applications under the Trade Marks Act (PC recommendation 12.1(a))
  • clarify the circumstances in which the parallel importation of trade marked goods does not infringe a registered trade mark (PC recommendation 12.1(c))
  • repeal section 76A of the Patents Act, which requires patentees to provide certain data relating to pharmaceutical patents with an extended term (PC recommendation 10.1)
  • allow PBR exclusive licensees to take infringement actions
  • allow for the award of additional damages, under the PBR Act
  • include measures intended to streamline a number of processes for the IP rights that IP Australia administers,

and everyone’s favourite “a number of technical amendments”.

On the parallel imports front, the bill would introduce a new s 122A to replace s 123(1) with the object of overruling the Federal Court’s case law severely restricting the legality of “parallel imports” since the 1995 Act came into force. It’s a “doozy”.

For example, it attempts to reverse the onus of proof that the courts have imposed on parallel importers by providing that

at the time of use, it was reasonable for the [parallel importer] to assume the trade mark had been applied to, or in relation to, the goods by, or with the consent of, a person who was, at the time of the application or consent (as the case may be):

(i) the registered owner of the trade mark; or

(ii) an authorised user of the trade mark; or

(iii) a person authorised to use the trade mark by a person mentioned in subparagraph (i) or (ii), or with significant influence over the use of the trade mark by such a person; or

(iv) an associated entity (within the meaning of the Corporations Act 2001) of a person mentioned in subparagraph (i), (ii) or (iii).

 

I suppose “reasonable to assume” does at least require some objective support for the “assumption”.

The second part – (iii) and (iv) above – is trying to deal with the situation where the registered owner assigns the trade mark to someone in Australia, but with the capability of calling for a re-assignment.[2]

This will require considerable flexibility by the Courts in interpreting “significant influence”.

If you have made such and assignment, or your client has, you had better start re-assessing your commercial strategy, however. The transitional arrangements say the amendment will apply to any infringement actions brought after the section commences. Moreover, this will be the case even if the “infringing act” took place before the commencement date.

Comments should be submitted by 4 December 2017.

Exposure draft bill

Exposure draft EM

Exposure draft regulations

Exposure draft explanatory statement

  1. Seems like the “short title” of bills are reverting to the old form “long” titles!  ?
  2. For example, Transport Tyre Sales Pty Ltd v Montana Tyres Rims & Tubes Pty Ltd [1999] FCA 329.  ?

IP Amendment (Productivity Commission Part 1 …) Bill – exposure draft Read More »

AIPPI Sydney 2017 – Day 3: patents, copyright and …

Leave a Comment / Copyright, IP generally, Patents / / / , , , , , , ,

Some more reports from the AIPPI Congress 2017 in Sydney – Day 3:

  1. My post on the panel discussing the issues patenting medical devices (apparatus or apparatus + drug) including significant changes in the EU next year;
  2. Clare Cunliffe reporting on the panel discussing issues arising when an innovator is seeking a final injunction against another innovator (rather than a generic); and
  3. James Elmore’s report on the Business of IP – IP venturing.
  4. Clare also reports on intermediary liability for copyright infringement.
  5. Finally, James reports on the panel on whether not identification of the technical problem solved by the patent is required in the USA, the EPO, China and Japan.

AIPPI Sydney 2017 – Day 3: patents, copyright and … Read More »