On 28 April, the Government’s Convergence Review (noted here) issued a Framing Paper.
According to p. 4 of this curious document:
This initial consultation paper seeks to identify the principles that should guide media and communications regulation in Australia, and provide stakeholders with the opportunity to raise the key issues arising from the principles. Its intent is to invite big-picture thinking about the Australian media and communications environment in its global context and how it may need to be shaped in order to achieve principles that serve the public interest. The committee will use these principles as a starting point to advise government of its preferred alternative policy framework
Accordingly (from p. 11):
the committee considers it appropriate to develop and consult with stakeholders on a set of principles to guide the committee’s consideration of specific issues. These principles have two main aims: to provide a consistent and transparent basis on which to consider specific issues and to ultimately form the basis of a set of policy objectives suitable for a converging media environment.
So your comments on the Framing Paper are sought by 10 June 2011. Then, the timetable is:
Emerging Issue paper : June 2011
Hearings: July 2011
detailed Discussion Papers: August 2011
Final Report: March 2012.
For the most part, the Framing Paper appears to relate to the regulatory regimes for broadcasting and telecommunications.
When announcing his intention to refer aspects of copyright law to the ALRC, the Attorney-General appeared to indicate that the reference (if any) will be subject to what happens in this Convergence Review. It is not so easy to identify from the Framework Paper, however, what areas might be cut across by the ALRC reviewing copyright law.
The Framework Paper does refer in several papers to “legitimate content services”. May be, it is to be found in “principle 6” which is (proposed to be):
Principle 6: Australians should have access to the broadest range of content across platforms and services as possible
This principle is taken from paragraph 5(e)(ii) of the Terms of Reference and is consistent with the objects in the BSA12, and s.3(1)(a) of the Telecommunications Act to ‘Promote the long-term interests of end-users of carriage services or of services provided by means of carriage services.’ The committee considers that a guiding principle for the review is to maximise the range of legitimate content services available to Australians. A consideration is that regulation should be flexible and adaptable to changing market and technological circumstances, and constructed with a view to enhancing audiences and consumer choice.
Principle 7 appears to be directed more to the question of ‘net neutrality.
Logan J has granted injunctions against International Hair Care UK’s use of AFFINAGE (and other trade marks) on its global website for (in effect) infringing International Hair Care Australia’s trade marks registered in Australia. The facts throw up the interesting question of what happens when 2 different people own the same trade mark in different countries and try to use it on the internet.
Facts
IHC UK is the owner of the registered trade mark AFFINAGE for hair care products in the UK and 20 other countries throughout the world, but not Australia.
In 1992, Mr Barry, the principal of IHC UK, set up IHC Australia with Mr Jolly. At that time, Mr Barry owned a majority of the shares.
IHC Australia applied for and registered AFFINAGE under the Australian trade marks act for hair care products.
In 2002, Mr Barry sold his then remaining shareholding in IHC Australia to Mr Jolly (and his wife) for $480,000. IHC Australia kept its registered trade marks and, under the terms of the sale, the parties divided up the global rights between themselves. IHC Australia got the rights to AFFINAGE in China, South-East Asia, Australia, New Zealand and the South-West and Western Pacific to the International Date Line; IHC UK had the rights to the rest of the world.
Sometime after this, Mr Barry or IHC UK incorporated a new Australian company, Affinage Salon Professional Pty Ltd, to sell hair care products under the brands A.S.P. and KITOKO.
In August 2010, the parties started legal action in Australia against each other. That litigation was compromised by a deed of settlement the terms of which, amongst other things, included Affinage Salon Professional agreeing to change its name so that it did not include AFFINAGE and IHC UK and its subsidiary undertaking:
not to use AFFINAGE … as a sign in connection with the importation, marketing, sale or manufacture in Australia of hair care products including hair colours and dyes.
In January this year, IHC Australia’s solicitor did a Google search and went to the link for IHC UK’s website at www.affinage.com. At that link, he was presented with a banner AFFINAGE and beneath it in smaller script SALON PROFESSIONAL. There was a “country box” with a drop down list of countries. When he selected “Australia”, he was taken to a page headed “ASP”. Under the “Profile tab” for Australia, there were the following passages:
In 1996 [IHC UK] conceived, created and lunched the premium hair care brand AFFINAGE. Originated as a line of hair colour, the AFFINAGE brand grew rapidly to include [reference to other types of product]… Now we are introducing our exciting new hair care brand, ASP, to the Australian and Asian markets. Having already signed distribution agreements with a number of companies we look forward to fantastic success in 2011.
….
Today our products are sold in over 50 countries – across Europe, Africa, the United States, South America and the Asia Pacific. Our brands are marketed globally by [IHC UK] and through it’s associated companies in the USA and Australia. Global distribution is achieved through a worldwide network of wholesalers and specialist distributors
A map of the world showed markers ASP Australia, ASP USA and identified the UK as Worldwide HQ. If the UK or the USA were chosen, the same information was displayed, but the landing pages were headed AFFINAGE and AFFINAGE, not ASP, was used to mark the countries.
IHC Australia re-commenced proceedings for breach of the undertakings.
Following service of the court documents (no other notice of complaint having been given), IHC UK amended its website.
The landing or home page now looked like:
IHC UK's modified home page
and Australia no longer appeared in the drop down box for countries under AFFINAGE, only under A.S.P.
Findings
Logan J found that the website in both its unmodified and modified form breached the undertaking in the deed of settlement and granted injunctions, amongst other things, requiring the A.S.P. component of IHC UK’s website to be removed from www.affinage.com. In contrast, the Facebook and Twitter links on the home page did not breach the undertakings.
On its true construction, the undertaking required IHC UK not to use AFFINAGE in Australia as a trade mark (at [61]). This required that IHC UK not use AFFINAGE as a trade mark in a way which targeted Australia.
IHC UK’s use targeted Australia
His Honour recognised that IHC UK was perfectly entitled to use its trade mark in, for example, the UK where it was the registered owner. The problem was to reconcile that entitlement and the global nature of the internet with IHC Australia’s territorial rights in Australia.
At [59]:
… the reconciliation to which I have just referred is achieved, in terms of the undertaking given in this case, by an approach that finds a use of the nominated words in connection with “marketing” in Australia if the words as so used are downloaded in Australia and there is evidence that the use was specifically intended to be made in, or directed or targeted at Australia.
Unlike the Ward & Brodiecase, that targeting was effected by the country selection box: that was its whole purpose. In the case of the unmodified website (at [60]):
that global web site is, inter alia, directed to or targeted at Australia. That is the whole purpose of the “Australia” option in the drop down box selection offered on the global landing page.
This was also true of the modified website. At [62]:
…. That Australian targeted use on the global landing page controls all that follows when one selects, as did Mr Bennett, the “Australia” option in the drop down box.
It was use as a trade mark
While IHC UK could legitimately say it introduced the brand AFFINAGE into Australia as a matter of historical fact. Its usage of the term went much beyond that.
On the first or unmodified form of the website, the purpose of the profile page or tab in the Australia” section was to persuade people to buy IHC UK’s, “and materially” its Australian distributor’s, products by reference to the AFFINAGE trade mark. At [67], his Honour explained:
When one reads the language of the “Profile” page in context, the repetition of AFFINAGE and the repeated use of “our brands” in conjunction with “worldwide” and “are marketed globally by IHC UK and through its associated companies in the USA and Australia”, the reference to Affinage is not just to a matter of foreign history but part of a current promotion that our goods worldwide, including those offered in Australia, include goods with the AFFINAGE brand. ….
No doubt, part of that context included the fact that one landed on a home page emblazoned with the AFFINAGE banner. But, his Honour, as in the Mantracase, was troubled by the repetitive use of the trade mark and, particularly, the representation that “Our goods “are marketed globally … in the USA and Australia”. His Honour also made the point that nothing on the profile page made it clear that IHC UK no longer held the rights to AFFINAGE in Australia.
The modified version of the website, featuring both the AFFINAGE and A.S.P. trade marks, was much closer to the line. Despite the separation between the 2 marks and the removal of Australia from the drop down box for AFFINAGE, however, Logan J considered it was still using AFFINAGE to target Australia in a trade mark sense. At [70]:
The “setting” for the viewer of this global landing page has undoubtedly changed and changed in a way that seeks to create a discrete Australian “target”. What remains though is a determined endeavour to place AFFINAGE in the mind of the viewer who has an interest in reading further in relation to Australia. The Australian “target” remains on the global landing page as a fixed feature. A connection between the AFFINAGE brand product and the ASP brand, each formulated by IHC UK is promoted and promoted to an Australian viewer. What the global landing page does not say is that IHC UK has no connection with the AFFINAGE brand in Australia. Instead, the overall “setting” is that there is an Affinage world brand in which the Australian province is known as “A.S.P.”. This, in my opinion, remains a use of that sign in Australia in connection with marketing contrary to the terms of the undertaking.
Accordingly, IHC UK was ordered to remove :
Australia from the drop down country box;
the A.S.P. pages from its website
any references to Australia from its website; and
any links between any new A.S.P. website and the AFFINAGE website.
FCR O35 r11(2)
For those interested in procedural matters, Logan J refused to follow the Ucorpruling and concluded that FCR O35 r11(2) conferred a power only; there was a discretion whether or not to award an injunction once it was shown the terms of the undertaking had been breached.
International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited [2011] FCA 339
Over at Lawfont, Sarah reports that the terms of the Convergence Review have been announced.
This is not just about ‘regulatory’ matters. From the preamble:
…. At the same time, the globalising effect of the internet is profound and rapid, and has challenged regulatory boundaries.
New content services channelled through internet service providers and across jurisdictional borders are challenging traditional media business models and forcing governments all over the world to reconsider the assumptions behind existing legislation and regulatory frameworks.
….
The government wants to make sure that the policy framework upon which Australia’s industry structures and regulation are built is adequately designed for the convergent age and does not impede continued technological change and innovation. At the same time, the framework must ensure the ongoing protection of Australian content and cultural values, the adequate reflection of community standards and expectations and the safeguarding of privacy and other citizens’ rights.
The government recognises that any discussion of the production and distribution of Australian content raises issues of copyright in the digital age. The Review Committee may offer views on copyright and the ongoing protection of content in a converged environment, noting that the Attorney-General will ultimately determine these matters.
(my emphasis)
and point 2 of the terms of reference:
the Committee shall have regard to all legislation and regulatory frameworks relevant to these terms of reference and, where necessary, advise the government on issues outside the purview of the Minister’s portfolio responsibilities.
(my emphasis again)
[remembering, as the preamble noted, that copyright is within the Attorney General’s portfolio, not the Minister for Communications etc.]
The review is specifically directed to take into account amongst other things by point 5(b), (c) and (d):
b) ensuring the ongoing production and distribution of local and Australian content that reflects and contributes to the development of national and cultural identity;
c) the impact of policy settings on industry and government revenue;
d) appropriate ways to treat content, and the services and applications used to deliver content, which are cross-border in nature;
We also heard (or read) last week that the ALRC will be told to keep its hands off the issues covered by the Convergence Review.
The Review is to deliver their final report to Government by the first quarter of 2012.
The Minister’s speech (not to Parliament) announcing the release of the terms of reference.
A Mr Boreham, from IBM, will chair the review; a Mr Long, with a background from the regulatory agencies, will be the second member and a third member is to be announced.
An earlier time, when “convergence” seemed new (and iTunes and P2P) were not even twinkles in our computer monitors (pdf).
All papers, including the interim intervention order, the extract, explanation and contacts were transcribed was typed out into private messages and sent to the respondents account. A video was recorded of Leading Senior Constable Walton reading the Interim order to the accused, as if the Respondent was being directly spoken to – and served.
It sounds like the order was for substituted service, after all other attempts to serve proved fruitless.
For anyone who may find some value in them, I have posted the slides from my IPSANZ talk ‘Of Keywords, Adwords and Trade Mark Infringers at Slideshare.
Patentology looks at the problems that arise with serving documents in Opposition proceedings before the Commissioner / Registrar (i.e. IP Australia) (a) electronically and (b) outside business hours.
Obviously (well, not so obviously when you’re used to dealing with the pragmatic approach of the Federal Court), if the material is served outside business hours, it is not served until the next business day, but it may be even more complicated if you are trying to effect service electronically.
All very quaint and so 19th century, but fatal!
The rules are rather different than, for example, the postal rules which apply in a contractual relationship; but it isn’t really a contractual relationship.
Where personal service is not required, the Federal Court Rules (O7 r4 and 4A) permit service by document exchange, facsimile or email, however, they (O7 r7) require that the party on whom service is to be effected to have specified the facsimile number or email address to have been specified in a Notice. O7 r4 and 4A also make provision for the time of service. I suspect, however, that these are deemed times of service which would be displaced if one could prove an earlier time of service.
World Trademark Review is running an online survey to gauge understanding of ICANN’s proposed new gTLDS and get some insight into what people are doing to prepare for these.
If you are a trademark professional or in “marketing”, participate here.
DFAT (the Department of Foreign Affairs and Trade) will be holding “whole of government” consultations on the draft ACTA text on 11 June 2010 in Canberra, commencing at 10.00a.m.
If you’re a stakeholder wanting to be consulted, register by COB 9 June.
Logan J has granted an interlocutory injunction under the Spam Act 2003, pending trial for civil penalties.
Apart from the fact that cases under the Act are not exactly thick on the ground, the debate in the case really turned on:
whether ACMA would be required to provide an undertaking as to damages – in the end, it wasn’t;
whether the injunction should take the narrower form of undertakings proferred by the respondents or the wide form, corresponding to the final relief, sought by ACMA.
Logan J considered the narrower form would suffice, but refused to limit it by reference to “reasonable endeavours”:
Subject to one qualification, I consider that the undertakings proffered by the remaining Respondents sufficiently meet the case for interlocutory injunctive relief that ACMA has established. That qualification relates to Winning’s undertaking only that it will “use reasonable endeavours” to remove or otherwise deactivate, or cause to be removed or deactivated, any fictitious profiles on dating websites or social networking websites it has registered or otherwise placed on those websites, whether by itself, its servants or agents. Winning seems, prima facie, to have control in respect of such websites. ACMA, in my opinion, has established a case for an interlocutory order that Winning remove or deactivate the websites concerned. If it transpires, for some unforeseen reason, that Winning cannot, notwithstanding what it shows to be endeavours which the Court regards as reasonable effect removal or deactivation, it and its officers would not be found guilty of a contempt. That though is to anticipate. Further, what, prospectively, amounts to “reasonable endeavours” may be a subject upon which reasonable people might reasonably differ. It is undesirable, in my opinion, that that degree of imprecision attend either an interlocutory injunction or an undertaking which upon acceptance will have the same practical effect.
Australian Communications and Media Authority v Mobilegate Ltd A Company Incorporated in Hong Kong [2009] FCA 539
