Assignment

Mediaquest v Registrar

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It turns out that the Registrar does have power to undo an assignment of a registered trade mark that has been registered wrongly.

A Mr Brailsford was the registered owner of the Peel Away trade mark for paint stripping preparations, TM No. 741047. He died in 2008.

On 23 Setember 2010, trade mark attorney McInnes filed an application to register an assignment of the trade mark to Mediaquest.

On 8 October 2010, the Registrar registered the assignment and Mediaquest became the owner of TM No. 741047.

On 12 November 2010, trade mark attorney Wilson wrote to the Registrar complaining about the registration of the assignment without notification to him and challenging it. Mr Wilson was acting for Mr Brailsford’s heirs and had been the address for service entered in the Register when the application to register the assignment was lodged.[1]

On 22 November 2010, the Registrar wrote to Mr McInness stating that the documentation relied on to establish the assignment was inadequate and so the Registrar intended to cancel the registration of assignment pursuant to s 81. Mediaquest objected to this and pointed out, amongst other things, that it had withdrawn a pending non-use action once the assignement was registered.

Further correspondence took place and, in due course, a hearing at which the delegate concluded Mediaquest had not established its entitlement to be registered as the assignee. Mediaquest appealed.

On appeal, Emmett J held that:

1 Mediaquest was not entitled to an assignment; and
2 the Registrar did have power to cancel the registration of the assignment.

Ownership

Mediaquest claimed it had an assignment from CRT. Mr Brailsford was the president and a director of CRT. Mediaquest sought to argue that his registration of TM No 741047 in Australia was in breach of his duties to CRT as a director and consequently the trade mark belonged in equity to CRT and, as a result of an assignment from CRT to Mediaquest, to it.

It seems Mr Brailsford may well have coined the mark and used it in the USA. At one point, the US mark was owned by another of Mr Brailsford’s companies, Pilgrim. In November 1992, Pilgrim assigned all its rights to Mr Brailsford and, in August 1993, Mr Brailsford assigned all his (US)[2] rights to CRT. It was after this, in 1997, that Mr Brailsford applied to register what became TM No. 741047 in Australia in his own name. In 1998, CRT applied to register a patent in the UK, identifying Mr Brailsford as the inventor and claiming entitlement through agreement with him.[3]

Emmett J found Mr Brailsford was entitled to register TM No. 741047 in his own name:

  • CRT was clearly the owner of the US trade marks;
  • both Pilgrim and CRT were creatures of Mr Bailsford;
  • while CRT was incorporated in Jersey in the Channel Islands, there was no evidence that it had ever traded anywhere other than in the USA or the UK.

At [34]:

The contention advanced on behalf of Mediaquest is that Mr Brailsford acquired the opportunity to register the Peel Away Mark in Australia by reason of his being a director of CRT. However, that can only be an inference. The circumstance that Mr Brailsford had dealings with the Peel Away mark before CRT was incorporated gives rise to a contrary inference. That is to say, it does not necessarily follow that the opportunity of registering the Peel Away mark in Australia was one that came to Mr Brailsford by reason of his being a director of CRT. Rather, an inference is at least available, and may perhaps be more easily drawn, that CRT acquired whatever opportunity it had to exploit the Peel Away Mark, and associated technology and knowhow, because Mr Brailsford chose to make it available to CRT. (emphasis supplied)

In these circumstances, his Honour concluded at [36] that the opportunity to register the trade mark in Australia did not come Mr Brailsford’s way because of his role in CRT and so CRT was not entitled to the trade mark in equity.

Power to cancel

Section [88(2)(e)] provides a power to rectify the Register on the basis that an entry in the Register “was made, or has previously been amended, as a result of fraud, false suggestion or misrepresentation.” This power, however, is conferred on the Court, not the Registrar.

Emmett J noted that under s 109 and s 110 the Registrar only had power to register an assignment of a trade mark. Whether there had been a valid assignment was a jurisdictional fact and, if there had not been a valid assignment, there was no power to register the assignment. In such a case, therefore, the Registrar had power to cancel the erroneous entry. As a result at [54]:

There was no actual assignment of the Registered Mark to Mediaquest, either from Mr Brailsford or from his executors. Accordingly, the Registrar’s decision of 8 October 2010 to record the assignment in the Register was tainted by jurisdictional error and was no decision at all. It was therefore open to the Registrar to reconsider whether the duty imposed by s 110 had been enlivened, by revisiting the question of whether there was an actual assignment or transmission of the Registered Mark to Mediaquest. Having determined that there was no actual assignment or transmission, it was open to the Registrar to take steps to cancel the earlier action. There is nothing in the Act to indicate that a decision of the Registrar under Part 10 that was affected by jurisdictional error should continue to have legal effect. Indeed the considerations outlined above suggest the contrary.

In answer to Mediaquest’s concerns about the uncertainty this would give rise, Emmett J pointed out at [56] that:

the scheme of the Act is not proprietorship by registration but registration of proprietorship. Registration under the Act is only prima facie evidence of ownership, as is provided by s 210. The registered owner is always susceptible to action being taken under Part 8 to revoke a trade mark that should never have been registered, or to substitute the true owner of the trade mark for that of a wrongful claimant. True ownership of a trade mark is a defence to infringement proceedings brought under the Act.

That is, registration was only prima facie evidence of ownership. Accordingly, all registrations were subject to an inherent level of uncertainty.

One interesting aspect of his Honour’s approach is that it does not appear to be based on the power conferred by s 81. Rather, it seems to have a much more fundamental underpinning in “jurisdictional error”.

No doubt, there is a sense here that the Court is not interested in technicalities that would force all of these types of disputes to be brought before it rather than knocked on the head in the Office. One might wonder, however, why the Registrar does not require documentation signed by the assignor as well as the assignee in the first place. This may well become more of an issue with the recordal of security interests as the Registrar’s practice is apparently to allow an interest to be recorded by the person claiming to have taken out a security interest alone.

Mediaquest Communications LLC v Registrar of Trade Marks [2012] FCA 768

  1. At the moment, as a result of Emmett J’s decision, Mr Brailsford is shown as the owner, but (presumably) Mr McInnes’ firm is shown as the address for service.  ?
  2. It is not clear from the judgment whether the agreement was in terms limited expressly to the US rights or this is an inference from the limited rights then existing.  ?
  3. The nature of the agreement is not specified in the judgment.  ?

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Ramifications of IceTV

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Last February, Gordon J ruled that there was no copyright in White Pages subscriber listings and (perhaps more surprisingly) Yellow Pages listings. Now, Stone J has applied IceTV (here and here) to find that copyright did not subsist in medical records held by a range of general practitioners.

Primary Health Care (PHC) is a publicly listed company that has been buying up medical practices. As part of the purchase, the medical practitioner contracted to work at the new practice for a period. The vendor practice’s patient records consisting of (1) consultation notes, (2) prescriptions and (3) referral letters were transferred to the new PHC practice. PHC claimed deductions from its income tax for depreciation of the value of the copyright said to subsist in the patient records and the Commissioner disallowed the claim.

Stone J accepted that copyright subsisted in the sample patient referral letters written by the medical practitioners and one sample consultation note (the so called di Michiel patient 6), but rejected the claim to copyright in all the other sample patient records. Her Honour did note that her ruling was not a finding that copyright could never subsist in any patient records, only that it did not subsist in the particular samples addressed in the case.

The case could easily become a ready instructional tool for students and “new” intellectual property lawyers.

The consultation notes

Each practice maintained a file for each patient. The file usually consisted of a summary sheet which contained information such as the patient’s name, address, age, medicare number and, sometimes, important medical issues. This information was usually taken down by the receptionist or other clerical staff. In addition, there were cards, or sheets of paper, or in some cases electronic records containing a series of notes entered sequentially about each consultation with the patient.

All the notes recorded for di Michiel patient 6 were in fact made by Dr di Michiel himself. In the case of all the other samples tendered in evidence, however, the individual notes were made by different practitioners: sometimes the principal, sometimes an employee, sometimes a locum and sometimes another partner in the practice.

This led to PHC’s first problem.

Stone J held that the consultation notes where the entries were made at different times by different practitioners were not works of joint authorship. Her Honour did accept that that, at least in some cases, the consultation notes for each patient could be seen as a continuous narrative. They were not, however, the fruits of a collaborative effort in which the contributions of each author could not be distinguished. To the contrary, each individual contribution could be simply identified by looking at the different handwriting for each entry. (Hmm. I wonder what would happen if all the entries were made electronically and it was not possible to identify who made them?)

A first consequence of this conclusion was that large swathes of many of the consultation notes fell out of consideration as, following IceTV, (1) the person who had actually written them – the author – had not been identified and (2) nor was it established that those unidentified individual authors were “qualified persons” as defined in s 10(1).

The principals of the sample practices (well, some of them) were able to identify various individual entries in particular consultation notes that they had written. That, however, led to the second problem.

Some entries were simply listings of medical conditions. Three examples particularly relied on by PHC by 3 different doctors for 3 different patients were given in [127]:

(a) Triferne 28 Microgynon 20 C&N
(b) H/T, NIDDM, Asthma
(c) Hypertension, Uterine Fibroids, Pagets D, Lumbar Disc Deg

While these entries conveyed information, her Honour held that such clinical data and the names of particular medications did not originate with the doctor who recorded them.

Some were more developed – 3 further entries for 3 different patients:

7kg – growing well. On fresh milk and vitamins

Now c/o diarrhoea – possibly antibiotic induced …

Last 2/12 notices wheezy breathing if lies flat – associated with dry irritant cough – Says doesn’t feel SOB

These too “were not sufficiently substantial to qualify as works the product of independent intellectual effort directed at expression.” Stone J explained at [133]:

None of this denies the intellectual effort and professional skill needed to form the diagnoses, to select methods of treatment or to understand the significance of clinical data that is recorded, however, copyright protects a form of expression not this underlying expertise.

On the other hand, Dr di Michiel patient 6 record, which did constitute a continuous and single work as a whole, was an original work.

Sample prescriptions

The sample prescriptions [113]-[114] and summary notes were at [135] similarly too insubstantial to qualify “as original literary works embodying independent intellectual effort directed towards expression.”

A problem of assignment

A further problem for PHC was that only one of the sale  agreements included an express assignment of copyright. Stone J refused to infer an intention to assign the copyright, as distinct from the property in the physical record, from the sale of the medical practice as a going concern. It simply wasn’t necessary to infer such a term. The lack of such necessity was supported both by the fact that PHC did not claim copyright in third party documents forming part of the patients’ medical records, such as x-rays and letters from specialist consultants, and a consideration of how the records were in fact used after the sale.

No use of copyright

As to the second point, while PHC claimed that the copyright was used after the sale, most of the evidence was not consistent with this. In one case, her Honour accepted that the records had been transferred into a computerised database (and so the copyright was used) but, in the other cases, the most that could be said was that some information only had been used.

Primary Health Care Limited v Commissioner of Taxation [2010] FCA 419

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Kookaburra gets the Vegemite sandwich

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Jacobson J has upheld Larrikin’s claim to be the owner of copyright in Kookaburra sits in the Old Gum Tree,  which means, at least, that Larrikin has standing to sue Men at Work et al. for infringing copyright in that music.

Larrikin alleges that Men at Work’s Down Under (you know, unfurl the Boxing Kangaroo, declare a national holiday and have a beer with Bondy) infringes the copyright in “Kookaburra”.

The trial was supposed to start in June, but wasn’t ready so Jacobson J heard, as a preliminary question, Men at Work’s defence that Larrikin didn’t own the copyright.

How did this come about?

Margaret Sinclair wrote “Kookaburra” back in 1934 and submitted it into a competition being run by the Girl Guides for “A Singing Round with Music”. The published terms of the competition were:

RULES for ENTRY.
(a) The entrance fee for each entry in any of the Competitions to be 6d.
(b) A prize of 10/6 to be given to the winner of each section.
(c) The Competitions to be open to all enrolled members of the Guide Association in Australia.
(d) All matter entered to become the property of the Guide Association.
(e) The decision of the Judges to be final.
(f) All entries to be accompanied by the entrance fee of 6d. also name and address of entrants.
(g) All entries to be in by July 31st.

(my emphasis)

Miss Sinclair’s entry was the winner!

Larrikin, however, didn’t claim title from the Girl Guides. Rather:

  1. in 1987, shortly before her death, Miss Smith donated some manuscripts, including an adaptation of Kookaburra for violin, to the State Library in South Australia and there was an accompanying form which said all copyright “owned by me” in the deposited documents shall vest in the Library on my death; and
  2. by her will Miss Sinclair left to the Public Trustee in South Australia all her estate and assets.

Larrikin obtained assignments from first the Public Trustee (for the princely sum of $6,100 through public auction) and, later, the Library.

Jacobson J held that Men at Work hadn’t proved that Miss Sinclair assigned the copyright in Kookaburra to the Girl Guides back in 1934, so (although Men at Work argued the terms of the assignments were  defective for reasons which his Honour is not alone in having trouble following) one or other of the assignments from the Public Trustee or the Library did the job.

The first problem for Men at Work was that there was no assignment in writing to the Girl Guides with Miss Sinclair’s signature on it. There was a manuscript with her signature and initials, but that was equivocal; it might have just been to identify the manuscript as hers and not some other entrant in the competition.

Similarly, Jacobson J considered it was pure speculation to assume that there must have been a signed entry form. Miss Sinclair was closely involved in the Girl Guides movement and it could not simply be assumed that she had submitted a form – she was well-known to the Guides – or even that she was aware of the terms of the competition.

Further, Jacobson J considered that clause (d) set out above was insufficient to do the work of an assignment. It might have just referred to property in the manuscript. Afterall, when you buy a book from your local (or online) bookseller, you get ownership of the physical copy, not the copyright.

Finally, there was evidence of conduct after the competition which indicated to Jacobson J that Miss Sinclair had never intended to assign her copyright. For example, in 1934 and 1935 she had donated to the Guides royalty payments she received from sales of printed copies of Kookaburra. The Guides, in turn, had thanked her for her generous gifts. They also sought permission from her in later years to reprint the music.

Where does that leave the case?

Well, first, it is interesting that Men at Work had to prove the assignment to the Guides and not Larrikin having to disprove it. I suppose that is because Larrikin was relying on the assignments from the Public Trustee and the Library so Men at Work had the burden of showing those documents didn’t work.

Secondly, presumably, it is yet to be decided whether or not some part of Down Under does actually reproduce the whole or some substantial part of Kookaburra. That would have been part of the postponed trial.

Then, there will be the question – assuming infringement be established – of how damages or profits are payable and whether or not the “innocence” defences in 115(3) and 116(2) are available.

The terms of the assignments set out in the judgments don’t appear to include assignments of the right to sue for past infringements. However, the assignments themselves should be sufficient to cover the 6 years before the proceedings commenced.

Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2009] FCA 799

Lid dip: Peter Nicholas

A little bit of trivia: Men at Work, with Down Under, are one of 9 pop acts that have achieved simultaneous No. 1s in both the UK and USA, according to Wikipedia.

Wonder whether anyone from Men at Work will be appearing on Spicks and Specks now?

Kookaburra gets the Vegemite sandwich Read More »

Assigning copyright and material breach reversions

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The author’s of “songs” assigned their respective copyrights to Rive Droite with the latter having an obligation to pay royalties. The assignments included a clause providing that, if Rive Droite remained in material breach for x days after notice, the copyright reverted to the assignor. There was also one of those nice clauses that defined the assignee to include its successors and assigns.

Rive Droite assigned the copyright to Crosstown.

Disputes arose, however, about non-payment of royalties by Rive Droite.

The author assignors gave notice of material breach and Mann J (in the Chancery Division) upheld the automatic reversion of the copyright to them.

Crosstown Music Company v Rive Droite Music Ltd and others [2009] EWHC 600 (Ch) – lid dip IPKat who notes the impact of the reversion clause on the separate and independent national copyrights.

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