Intellectual Property Breaking News

On 6 August 2008, the High Court allowed an appeal relating to government use of surveyors¹ plans. The State of NSW uses survey plans lodged with Land and Property Information (LPI), a government agency, for a variety of purposes, including sale to members of the public and sale via information brokers.

The case related to the use of lodged plans to the public, a use that extends beyond the use for a purpose to serve the surveyor's clients.  The Federal Court finding that the State had an implied licence to use the plans without payment to the copyright owner was overturned.  The lodgement of the plans for registration was an acceptable use as this was for the Surveyor's client purpose but the sale was not.

Section 183 of the Copyright Act 1968 enables the use with payment of remuneration. The High Court held that there was no implied licence relating to the ³public² use of the plans, either in the surveyors¹ contracts with their clients or independently of these contracts. The Court¹s reasons included that there was no necessity to imply such a licence, and that the State charged for copies supplied.

For details of the case, please see Copyright Agency Limited v State of New South Wales [2008] HCA 35

IP Australia and the United States ' Patent and Trademark Office (USPTO) have announced an agreement which will see IP Australia act as an international search and examination authority for international applications filed with the USPTO under the Patent Cooperation Treaty (PCT).

> Click here for details about the IP Australia the United States Patent and Trademark Office (USPTO) agreement

On 4 July 2008, the Federal Court of Australia held that Rockerfeller Management Corporation and its director infringed copyright. The infringement results from  copying of examination questions and answers in  test materials. The Court also found the respondents liable for delivery up of the copies made.

The respondents claim of lack of originality in the material failed.  The questions of damages and costs remains to be determined.  For details on the case:

> Boyapati v Rockefeller Management Corporation 2008

On 19 June 2008 The Federal Court has awarded an accounting of profits in a case concerning the use of traiing manuals in providing a seminar.  A copy of the decision in Tenderwatch v Reed Business Information Pty Ltd may be found at:

> DVD Training Manuals Copyright Case 2008

On 13 June 2008,  the Federal Court reduced a fine for copyright infringement relating to copying and distributing infringing DVDs. On 29 January 2008, the Newcastle Local Court had convicted Mr Steven Plunkett of eleven copyright infringement offences and imposed a fine of $22,000 for making and selling unauthorised copies of DVDs.

On appeal, taking into consideration the ‘devastating consequences' Mr Plunkett had suffered from his actions, affecting his financial position and psychological wellbeing since his dismissal from the NSW Police Force, the Federal Court reduced the fine to $2,200.

The decision in Plunkett v Commonwealth Director of Public Prosecutions [2008] FCA 908 may be seen at:

> DVD Copyright Case Appeal 2008

On 20 June 2008, the Federal Court has dismissed an appeal from a Federal Magistrate Court decision that the respondent was an independent contractor rather than an employee of Centrestage Management Pty Ltd. As a result the company did not own copyright in source code of software he updated.  A contractor remains the owner of the copyright unless he has assigned the copyright to his client.  The position is different with employees where the employer owns the copyright.

The decision in Centrestage Management Pty Ltd v Riedle [2008] FCA 938 may be found at:

> Centrestage Copyright Case Outcome 2008

On 18 June 2008, the Federal Court of Australia has found that Boutique Homes did not infringe copyright by developing project home plans similar to Inform¹s building designs.  Boutique's independent design process, incorporating features common to buildings, was accepted towards a finding of no copying.

The decision Inform Design and Construction Pty Ltd v Boutique Homes Melbourne Pty Ltd [2008] FCA 912 may be found at:

> Boutique Homes Case 2008

On 30 May 2008, the Federal Court delivered its decision in Krueger Transport Equipment Pty Ltd v Glen Cameron Storage & Distribution Pty Limited. The Court held that the truck body manufacturer infringed copyright by indirectly copying drawings of a “load constraint system” for cargo belonging to its competitor. indirect access to the drawings was found through disclosures by a prospective customer made, in breach of confidence. That prospective customer was also found liable for conduct in authorising the copyright infringement.

The decision of Justice Gordon delivered in Melbourne can be found at:

> Copyright Infringement Case 2008

The appeal to the Full Federal Court by Nine Network Australia Pty Ltd of the decision concerning the reproduction of weekly tv guides by IceTV Limited has been determined in favour of the Network.  The Court held that IceTV appropriated the labour and skill used to create Nine¹s compilations by indirectly copying a substantial part of them.  A copy of the decision is at

> Nine Network - Ice TV case

On 13 May 2008, the Australian government announced that it would contribute $1.5M over 3 years to support the establishment of a resale royalty scheme for artists. Under the scheme, artists will receive a percentage of the sale price each time their work is resold.  A copy of the press release is available at:

> Resale royalty scheme for artists


On 12 May 2008, Hazan Hollander team delivers win in the Federal Court of Australia for Real Foods Pty Limited. The case brought against Real Foods by Ricegrowers Limited seeking injunctions to restrain Real Foods from selling its range of flavoured Corn Thins on the basis that the packaging was deceptively similar to that of the SunRice products was dismissed with costs. A copy of the decision is available on the link below


> Real Foods case won by Hazan Hollander

The Local Bloke accepted for trade mark registration:

> The Local Bloke

A court decision has confirmed that contracts formed by eBay sales are legally enforceable. The repercussions of the decision are to enforce sales and purchases made on eBay. A report of the decision is availble on the link below:

> Ebay Sales Legally Enforceable

On 6 August 2007, The Hon Bob Baldwin, Parliamentary Secretary to the Minister for Industry, Tourism and Resources, announced that the Government will amend the Patents Act to define an experimental use exception. The kinds of research that can be done without infringing  a patent, such as: determining how an invention worked; determining an invention's scope; determining the validity of patent claims; or improving an invention will be clarifeid.

> More Patent Act Amendment for Experimentation

On 13 June 2007, the Federal Government announced an increase in funding to the Australian Federal Police to enable it to more effectively fight IP Crime.

> More Enforcement Dollars for IP Rights

Hew Raymond Griffiths was extradited from Australia to America earlier this year to face criminal copyright infringement charges in that country. In the week commencing 25 June 2007 the US District Court apparently sentenced Griffiths to 51 months imprisonment for the illegal reproduction and distribution of pirated software, movies and music during his time in anetwork known as DrinkOrDie while based at his home in Bateau Bay, Australia. The network was alleged to have circumvented technological protection measures of software providers enabling the distribution of free software over the Internet, even before the original software products were made vailable by their original owners.

On 12 April 2007, Senior Associate of Hazan Hollander, Peter Whitehead, presents the Do's and Don't's of trade marks to the NSW State Government's Business Enterprice Centre workshop conducted in conjunction with IP Australia.  A summary of Peter's presentation is available by clicking below.  For further information contact Mr Peter Whitehead, peter.whitehead@hazan.com.au or telephone on (02) 9233 4266.

> Do's and Dont's of Trade Marks

The Registrar of Trade Marks is about to  direct that access to confidential information served in trade mark opposition proceedings and identified as confidential is to be restricted to those persons who reasonably need to see it for the purposes of the opposition.  This direction will significantly improve the handling of confidential material in opposition proceedings before the trade marks office and will give the parties a level of protection that overcomes concerns about lodging confidential material in evidence. For further information please see the link below. 

> Confidential Material Served in Trade Mark Oppositions

A Full Court of the Federal Court has rejected the appeal of all but one of the appellants in their appeal against a decision of Tamberlin J. The case concerns a website which contained hyperlinks to infringing MP3 files on other websites. The hyperlinks were uploaded by visitors to the site. At first instance, the proprietor of the website (Cooper) was held liable for authorising infringement. Also found liable were the ISP that hosted the site, its director, and an employee. The appeal by the proprietor of the site, the ISP and the director failed. The appeal by the employee was successful.

> Hyperlinks to infringing MP3 files on other websites case

The website of the Federal Court of Australia has a general summary of the type and status of matters

On 6 December 2006, the UK Government released report of the Gowers Review of Intellectual Property. Recommendations in the report relate to enforcement, online infringement, a private copying exception and exceptions for libraries and education. A copy of the report is available

> UK Government releases report of the Gowers Review of Intellectual Property

The International Union for the Protection of New Varieties of Plants (UPOV) has appointed Doug Waterhouse, Registrar of the Australian Plant Breeder’s Rights scheme, as President of the 62 member council. He will be the first Australian to be appointed to such a position..

> International Union for the Protection of New Varieties of Plants (UPOV) appointment

The High Court has allowed the appeal in Concrete Pty Limited v Parramatta Design & Developments Pty Ltd. The Court held that the appellant, the owner of a building site, had an implied licence to use architectural plans developed for the site by the one of the respondents, a former owner of the site. The Court also rejected the respondents¹ claim relating to apprehended bias on the part of the trial judge.

The government has made available an exposure draft of proposed amendments to the provisions in the Copyright Act relating to the Copyright Tribunal. These provisions are to be included as part of the Copyright Amendment Bill 2006. The government has also announced that the Bill (including not only the Copyright Tribunal provisions, but also provisions relating to technological protection measures, new exceptions, amendments to existing exceptions and relating to enforcement) is to be introduced into Parliament shortly. The announcement also noted that the Bill is to be referred to the Senate Standing Committee on Legal and Constitutional Affairs, and that it is proposed that the Committee will report on 10 November 2006.

> Amendments to the provisions in the Copyright Act

On 12 October 2006 the Trade Marks Amendment Bill 2006 was passed in Parliament, making a number of improvements to the Trade Marks Act 1995 aimed to provide greater certainty for Australian business.

> Trade Marks Amendment Bill 2006 passed

The Intellectual Property Laws Amendment Bill 2006, which amends several pieces of intellectual property (IP) legislation, received the Royal Assent on 27 September 2006. Different provisions of the Intellectual Property Laws Amendment Act 2006 will commence at different times, as detailed in the Official Notice.

> Intellectual Property Laws Amendment Bill 2006 receives the Royal Assent on 27 September 2006

On 25 September 2006, Parliamentary Secretary to the Minister for Industry, Tourism and Resources, the Hon Bob Baldwin, made the announcement at a public event in Martin Place, Sydney as part of the Centenary of Trade Marks celebrations annoucing WIT-BIX as Australia's favourate trade mark of the past 100 years. The contenders for the award were ABC, Arnott's, David Jones, Penfolds, R.M. Williams, Qantas, Vegimite, the Wallabies, Weet-Bix and Woolmark. Hazan Hollander Lawyers Mr Yves Hazan and Mr Peter Whitehead attended the presentation.

> Centenary of Trade Marks celebrations

Three Exposure Drafts of Copyright Amendment bills are now available from the Attorney-General’s Department’s website:

> Drafts of Copyright Amendment bills

On 14 September 2006, The government released draft regulations dealing with exemptions to liability for circumvention of access-control technological protection measures.

> draft regulations dealing with exemptions

On 14 September 2006, The Intellectual Property Laws Amendment Bill 2006, which amends several pieces of intellectual property (IP) legislation, was passed in Parliament.

> The Intellectual Property Laws Amendment Bill

From 14 September 2006, Pharmaceutical companies will have greater incentives to develop cheap generic drugs in Australia under laws passed by federal parliament. Both major parties in the Senate today supported changes to intellectual property laws designed to make Australia's pharmaceutical industry more competitive internationally, and prevent drug manufacturers from moving offshore. The new laws allow Australian companies to more readily engage in "springboarding" - using the subject matter of an existing patent to help obtain approval for new generic versions of patented drugs. Until now, springboarding had only been possible after a patent had had its term extended. The bill passed the Senate without amendments. Liberal senator Grant Chapman said the changes would bring major benefits to the generic drugs industry.

On 13 September 2006 amendments to the Privacy Act were introduced into the Federal Parliament to allow the disclosure of personal information on a large number of people in emergency situations. The Privacy Act 1988 allows for the disclosure of personal information in times of emergency, but only on a case-by-case basis. This, Senator Ellison said, has "added to the trauma experienced by victims and their families".

> Amendments to the Privacy Act introduced into the Federal Parliamenmt

On 4 September 2006, the Full Federal Court upheld Woolworths Limited’s appeal against the registration of the colour green by BP. The court held that the colour green had not become distinctive of BP’s service stations because it had not used the colour alone as a trade mark.

> Federal Court upholds Woolworths Limited’s appeal against the registration of the colour green by BP

The Parliamentary Secretary to the Minister for Industry, Tourism and Resources, Bob Baldwin, clarified today that trade mark applicants are able to incorporate the word Ugh or Ugg in trade mark applications if they wish but should take care not to infringe other's rights. There is, of course, no substitute for legal advice and trade mark applicants are urged to seek advice before using any trade marks.

> Trade mark applicants able to incorporate the word Ugh or Ugg in trade mark applications

A French fabric company, Les Tissus Marey, was on 23 August 2006 ordered to pay $70,000 in security of costs after an action was commenced by them against the well known Australian designer label Lisa Ho in the Federal Court of Australia alleging copyright infringement. Les Tissus Marey has claimed that the Lisa Ho companies and a number of other fabric makers have manufactured and distributed clothing which depicted a particular print that was sold by Les Tissus Marey to their exclusive distributor in Australia, Sportsgirl. Les Tissus Marey claims copyright in the print as a result of it being an ‘original artistic work’ under Part III of the Copyright Act 1968 (Cth). They are claiming an injunction to prevent Lisa Ho from using the print, as well as damages or an account of profits. The parties have been ordered to undertake mediation and a directions hearing has been set for October.

> Fabric company copyright case

A Federal Government Senate committee reviewing proposed changes to Australia’s intellectual property laws under the Intellectual Property Laws Amendment Bill has suggested the federal government should reconsider adding a competition test as a reason for a compulsory patent licence to be obtained.

> Proposed changes to Australia’s intellectual property laws

The Kazaa case has now been settled with the company behind the software agreeing to pay US$115 million in compensation to the major music labels and movie companies around the world. this will end the copyright infringement lawsuits that the company has had to deal with. In addition to the payment, the company says it will introduce filtering technology and will obtain licenses from the record companies.

The Parliamentary Secretary to the Minister for Industry, Tourism and Resources, Bob Baldwin on 16 August 2006 released his report on the Review of Innovation Patent System. T report concludes that no changes are required to the system. A copy of the final report is available by following the link below:

> Report on the Review of Innovation Patent System

On 7 August 2006, Mc Donalds lost case in Australian Trade Marks Office seeking to prevent the registration of "McBrat" as a trade mark displayed on a rugby team's shorts. The ruling was handed down after a trade marks office hearing in April 2006, when McDonalds sought to stop the registration of the trade mark. Apparently, the trade mark will soon be seen on a range of casual clothing, including jerseys and t-shits.

On 23 June 2006 the federal government released a report, Review of the “Spare Parts” Provision in the Designs Act 2003.The report recommends that no changes be made at this time to the provision as it has yet to have a significant effect on industry and consumers and is yet to be tested before the courts in Australia. For a copy of the report, please follow the link below

> Review of the Spare Parts Provision in the Designs Act

On 21 June 2006, the Trade Marks Amendment Bill 2006 was introduced into the Senate, making a number of incremental improvements to the Trade Marks Act 1995. The Act has been in force for 10 years and has recently been subject to review.

> Iimprovements to the Trade Marks Act

Proposed changes to Trade Mark Law were introduced into Federal Parliament on 21 June 2006.

> Changes to Trade Mark Law

For information on Australian developments and reform initiatives in Intellectual Property, please follow the link below:

> Reform initiatives in Intellectual Property

The Australian Labour Party has released a paper on its Art policy that involves changes to instances in which public craft and sculpture may be reproduced and published, issues relating to Indegenous art and cultural material and the introduction of a resale royalty for original works of art. The paper is available at the link below:.

> Indegenous art and cultural material resale royalty for original works of art

On 13 April 2006, the Federal Court of Australia handed down its first decision under the Spam Act 2003 concerning unsolicited electronic mail. Penalties have not been determined and this decision may present a deterrant to the continuing spam mail that is issued. A full copy of the decision of His Honour Mr Justice Nicholson in Australian Communications and Media Authority v Clarity1 Pty Ltd is availble on the link below.

> Federal Court Spam Act 2003

The legal actions in Australia and the United States by record companies against the operators of the Kazaa internet filesharing software have been settled. The settlement agreement includes an undertaking by the Kazaa operators to introduce filtering technology to bock access to infringing music files.

> Internet filesharing software case

Federal Government introduces new Work Choices Legislation.

> Work Choices Legislation

Federal Government Announces Major Reforms to Australian Copyright Law.

> Reforms to Australian Copyright Law

Intellectual Property Laws Amendment Bill 2006 introduced in Federal Parliament

> Intellectual Property Laws Amendment Bill