Introduction to Intellectual Property

This chapter will explain what intellectual property law is, the areas of law covered, the rationale for intellectual property law and the international context.

What is Intellectual Property?

Intellectual Property (IP) is a unique kind of legal ‘property’. Unlike physical property, which can be seen and touched, intellectual property is also known as ‘intangible property’ because it does not always take physical form. Intellectual property rights aim to protect the intellectual and creative efforts of individuals and organisations.

IP plays an important role in fostering and rewarding originality, innovation and creativity in our economy. The legal system for protecting IP helps to identify and acknowledge ownership rights in creations. These ownership rights add economic value to creations and help to provide competitive advantage in the market. For example, these rights allow an IP owner to charge a fee to someone who wants to use or copy their creation or invention.

IP does not protect ideas

It is important to note that intellectual property does not protect an idea or a concept.

It is only when an idea is developed into a form of expression or into an invention that it becomes intellectual property. The law protects the way in which the idea is expressed, or a tangible invention that embodies the idea, rather than the idea itself.

For example: Copyright law will protect the way that a book, such as a Harry Potter novel, is written, but will not protect the idea behind the story, such as the idea of a school for teenage wizards and witches.

Songs, logos, theatrical plays and scientific inventions are all examples of things intellectual property can protect.

Other things that do not qualify for intellectual property protection include

  • facts
  • pure data
  • mathematical equations.

Why not?

Because these things should be free for all people to use. Also, facts exist independently of any one person – they have not been ‘created’ or ‘invented’ by anyone.

Types of IP

Video overview by Nic Suzor on the different types of Intellectual Property

The term ‘intellectual property right’ is a broad term and branches out into different types of rights. Each of these IP rights protect different forms of intellectual property. The most common types of IP are: copyright, trade marks, industrial designs, and patent law.

In this video, Rob talks about the rights he considered to protect the IP in a safety helmet he designed. Watch the video for an overview of the different types of IP as applied to a business context

The term ‘copyright’ refers to the legal rights vested in the creators and publishers of an artistic, dramatic, musical or literary work, as well as sound recordings, films and broadcasts. From the moment a work comes into existence, copyright grants its creator an automatic right to copy, publish, perform and distribute the work.
The main objective of copyright is to promote creativity and provide incentives to people who invest their time and talent in creating works of cultural and economic significance.

Copyright law does not make any judgments about the aesthetic or cultural quality of a work. Thus, a ‘literary work’ simply refers to something in writing – a book, for example, does not need to qualify as high literature to receive copyright protection. An instruction manual for a new computer may receive protection as a literary work.

Over time, copyright has evolved in its scope and application. It also covers computer programs, radio and TV broadcasts, cinematographic films (i.e. movies) and sound recordings.

Patents

A patent is a legal right granted to protect new and useful inventions. An invention might be a product (such as a machine), a process (such as a method for extracting one chemical from another), or a new technical solution to an existing problem. Some software inventions may also be protected by a patent.

The objective of patent law is to recognise inventors for their inventions and encourage development of new technologies in every field.

Trademarks

A ‘trademark’, as the name suggests, is a unique mark with which a trade or business can identify itself in the market. We commonly think of these marks as ‘logos’. A trademark helps a business to distinguish its goods and/or services from competitors in a marketplace. A trademark may consist of a letter, number, word, phrase, sound, smell, shape, logo, picture, movement, aspect of packaging, or a combination of these. While it is possible to acquire a trademark over something like a colour or smell, it is extremely rare.

Once registered, a trademark gives the owner a legal right to:

  • use the trademark in relation to its goods or services, permit others to use the mark, or sell the mark
  • stop competitors from using a same or confusingly similar trademark.

The meaning and function of a ‘trademark’ is different from that of a ‘company name’, ‘business name’ and a ‘domain name’ or URL. A business may choose to adopt the same trademark as its company name, however, registering a business name or a domain name would not give the owner the right to stop others from adopting a same or similar company or business name.

Designs

A design right aims to protect the outward appearance or aesthetic appeal of a product. It covers shapes, ornamentation, configuration and pattern. Designs differ from patents in that they cover how a product looks, rather than how it works.

To qualify for registration, a design must have a commercial application or use, and must be new and distinctive compared to what has gone before. Once registered, the law gives the owner the sole right to commercially use, license or sell the design. Design registration lasts for 5 years, with the opportunity to renew registration up to 10 years.

For designers to get protection, a design must be registered before any manufacturing starts. One-off artistic designs for things like fashion, art, and furniture will often be automatically covered by copyright law and do not require design registration unless they are mass produced (50 or more items). Once a design is mass-produced or once the owner registers for design protection, copyright in the artist design is lost.

Sources of IP law

In addition to the four main categories of IP discussed above, there are also a few other rules and sui generis laws for particular types of subject matter. These include rights such as plant breeders rights, circuit designs, and geographical indicators. The table below sets out the key Australian sources for intellectual property law.

Intellectual Property Area Rights Source of Law in Australia
Copyright to copy and distribute creative works and productions Copyright Act 1968 (Cth)
Trade marks to use words and symbols to identify your goods and services in trade Trade Marks Act 1995 (Cth)
Patents to commercially exploit an invention Patent Act 1990 (Cth)
Design to apply a shape or pattern to a creation Design Act 2003 (Cth)
Plant Breeders' Rights
Circuit designs
Geographical Indicators
Trade secrets Common law (Breach of Confidence)

Why do we have Intellectual Property?

Intellectual property law, and especially copyright and patent law, is thought to have a predominantly instrumental function. It provides creators of new work (whether it is inventors of patents or authors and publishers alike), with certain incentives in order to encourage the creation of new expression. It does this by granting creators control over certain uses of their creations for specified periods of time, limiting who may exploit, or make use of the creations. Each specific area of intellectual property law confers exclusive rights to the creator or owner. The exclusive rights vary between the types of intellectual property law, however, the concept of exclusive use of the creations remains the same.

There are several views concerning the purpose of intellectual property law. One view is that intellectual property encourages creativity and innovation by allowing creators to profit from their work. This view is most notable in the area of copyright and is reflected in the wording of many copyright laws. For example, the “Copyright Clause” of the United States Constitution states that Congress may grant authors copyright protection for their works for a limited time in order to “promote the progress of science and useful arts”. 1) Similarly, the stated purpose of the Statute of Anne, the first copyright statute in England, was to “encourage learning”. 2) Another view is that intellectual property law ensures that creators are paid fairly for their effort. A third view suggests that a creative work is an expression of the personality of its creator and should be protected from being used without the creator's permission.

Although intellectual property law grants creators many exclusive rights, it also limits these rights in many important ways. Most of these limitations are quite specific, but a few are broad. These limits are important in order to ensure that law is balanced - that the monopoly granted by intellectual property's exclusive rights does not place excessive limitations on the public's freedom to learn, express themselves and build upon existing cultural works.

The Economic (Utilitarian) Justification

The most common justifications for intellectual property is the utilitarian justification. According to the US Constitution, intellectual property law exists, “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries“. 3)

Video overview of The Utilitarian Justification for Intellectual Property.

The utilitarian perspective of intellectual property stems from the idea that expression is a “public good” and that creators therefore cannot prevent others from using their expression without legal intervention. This idea is supported by the unique “non-rival” nature of expression as an intangible good - that is - one person's use does not diminish or interfere with the use by another. However, the inability to exclude others may present problems for creators and the production of public goods. If a creator of a public good is unable to exclude others from using it, she or he will be unlikely to recoup the time and/or monetary investment in creating it. This may cause creators, or those funding creation such as publishers, record labels or movie studios, to stop spending resources on cultural production because they cannot profit from it. Intellectual property seeks to prevent this from happening by making expression excludable in order to allow producers to commercialise their creations and recover their costs. Intellectual property law does this by providing a set of “exclusive rights” to creators and inventors.

In order to make the production of public goods more profitable, intellectual property makes access more expensive. The law must then strike a delicate balance between encouraging the creation and dissemination of works by providing incentives and recognising the public interest in greater access to expression. The law must also recognise the needs of future authors who often build upon the past expression. Because of this, the stronger intellectual property protection is, the more expensive future production becomes.

Video overview of The IP Balance.

The Natural Rights Justification

While the natural rights view is not explicitly recognised and often even disclaimed, intellectual property is also supported by a justification that authors deserve property rights in their expression. This view is based in a Lockean argument that authors deserve property in the fruits of their labour. However, this view has been challenged strongly by prominent figures such as Thomas Jefferson:

"If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it. Its peculiar character, too, is that no one possesses the less, because every other possesses the whole of it. He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine, receives light without darkening me. That ideas should freely spread from one to another over the globe, for the moral and mutual instruction of man, and improvement of his condition, seems to have been peculiarly and benevolently designed by nature".

Or Benjamin Kaplan:

"[I]f man has any 'natural' rights, not the least must be a right to imitate his fellows, and thus to reap where he has not sown".

The natural rights justification is still contested today.

International Context and International Agreements

Intellectual property was not always central to international trade. As technology and trade developed so did the need to incorporate intellectual property into trade agreements and ensure there were international standards for dealing with intellectual property related matters when engaging in international trade. Below is a short timeline of the history of international intellectual property regulation. The timeline outlines when intellectual property and trade became intertwined.

Year Agreement Effect
1873 The impetus for international protection Creators refused to attend the International Exhibition of Inventions in Vienna, Austria, because they were afraid their ideas would be stolen and exploited in other countries.
1883 The Paris Convention The Paris Convention for the Protection of Intellectual Property is the first major international treaty designed to help the people of one country obtain intellectual property protection in another country. It applies mainly to patents, but also covers trade marks and industrial designs. It was first agreed on in 20 March 1883. It has now been incorporated into the TRIPS Agreement.
1886 The Berne Convention The Berne Convention for the Protection of Literary and Artistic Works aims to give creators the right to control and receive payment for their creative works on an international level. This agreement applies to copyright.
1893 BIRPI is established The United International Bureaux for the Protection of Intellectual Property (BIRPI) was an international organisation set up in 1893 to administer the Berne Convention for the Protection of Literary and Artistic Works and the Paris Convention for the Protection of Industrial Property. The BIRPI is the predecessor of the World Intellectual Property Organisation (WIPO).
1947 - 1949 General Agreement on Tariffs and Trade (GATT) In 1947, the General Agreement on Tariffs and Trade (GATT) is signed, following decades of economic instability with the Great Depression and World War II. The Agreement was negotiated during the United Nations Conference on Trade and Employment and was the outcome of the failure of negotiating governments to create the International Trade Organisation (ITO). The idea behind GATT was to set up basic trade rules and reduce tariffs between countries.
1970; 1974 The World Intellectual Property Organisation (WIPO) The Convention establishing the World Intellectual Property Organisation (WIPO) comes into force (on 26 April 1970) and BIRPI is thus transformed to become WIPO. The newly established WIPO is a member state-led, intergovernmental organisation, with its headquarters in Geneva, Switzerland. WIPO has two main purposes: (1) to provide legal and technical assistance, particularly to developing countries, to develop IP regimes; and (2) to administer the multilateral IP agreements.
1986 - 1994 The Uruguay Round The Uruguay Round was a round of multilateral trade negotiations conducted within the framework of the GATT. The round began in 1986, but negotiations stalled in 1991 when the US refused to agree to anything unless intellectual property was included within the negotiations. The Uruguay Round concluded in 1994 with the signing of the Marrakesh Agreement, which established the WTO. Members also agreed to the Dispute Settlement Understanding (DSU), which is annexed to the Marrakesh Agreement.
1995 World Trade Organisation (WTO) The WTO comes into effect on 1 January 1995, replacing the GATT system. This is widely regarded as the most profound institutional reform of the world trading system since the GATT was established.
1995 TRIPS The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is an international legal agreement between all the member nations of the WTO. It sets down minimum standards for the protection of intellectual property.
2001 The Doha Declaration The Doha Development Round commences in 2001. The Doha Declaration on the TRIPS Agreement and Public Health is adopted by the WTO Ministerial Conference on 14 November 2001.
2004/2005 Australia-US Free Trade Agreement (AUSFTA) On 18 May 2004, the Australia – United States Free Trade Agreement (AUSFTA) is signed. This is a preferential trade agreement between Australia and the United States modelled on the North American Free Trade Agreement (NAFTA). The Agreement came into effect on 1 January 2005.
2013 and beyond The Trans-Pacific Partnership Agreement The Trans-Pacific Partnership Agreement (TPP) was negotiated between twelve countries that border the Pacific Ocean: Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, the United States and Vietnam. These countries represent approximately 40% of the world's economic output, making the TPP the largest trade agreement in history. However, before negotiations were finalised, on 23 January 2017, when US President Donald Trump took office, he signed a presidential memorandum to withdraw the United States from TPP negotiations. While other TPP countries, including Australia, have stated that they plan to continue TPP negotiations, the future of the agreement looks uncertain without US involvement.

Intellectual property law has been relatively harmonised worldwide. There are a number of agreements regarding intellectual property law in general, and more specific agreements that apply to certain areas of intellectual property. The World Intellectual Property Organisation (WIPO) is an international agency, established in 1967 which administers treaties such as the Paris Convention on the Protection of Industrial Property 1883 and the Berne Convention for the Protection of Literary and Artistic Works 1886, WIPO Performances and Phonograms Treaty and WIPO Copyright Treaty. It is WIPO's obligation to administer intellectual property matters and there are approximately 22 intellectual property treaties under its administration. Whilst WIPO administers the treaties, it does not have the requisite power to ensure compliance of the treaties. As a result of this, the World Trade Organisation Agreement was enacted, specifically the part that deals with intellectual property, the Trade Related Aspects of Intellectual Property Rights 1994 (TRIPS).

TRIPS is an international agreement which identifies 5 minimum standards for intellectual property that all members of the WTO must adhere to. Further, each WTO member is required by TRIPS to enforce these standards.

There are also a number of bilateral intellectual property law agreements. These agreements are often entered into to ensure that the countries who deal in trade together have similar or compatible intellectual property laws. Some of the most notable trade agreements are:

  • Australia-United States Free Trade Agreement (AUSFTA)
  • Korea-Australia Free Trade Agreement (KAFTA)
  • Japan-Australia Economic Partnership Agreement (JAEPA)
  • China-Australia Free Trade Agreement (CHAFTA)
  • Anti-Counterfeiting Trade Agreement (ACTA)
  • Trans-Pacific Partnership (TPP)
  • Trans-Atlantic Trade and Investment Partnership (TTIP)
  • Trade in Services Agreement (TISA)

One controversial aspect of trade agreements is the use of investor-state dispute settlement (ISDS) clauses. In the case of many treaties, if there is a dispute between the parties, TRIPS can be used to enforce the standards of trade. However, in instances where an ISDS is included in contracts, individual investors can bring arbitration proceeding against a nation. This process can be very costly and may involve significant delay.

Copyright Introduction

The main objective of copyright law is to protect and promote creativity in our economy. In Australia, copyright law is governed by the Copyright Act, 1968 (Cth). It broadly protects works of literary, musical, dramatic and/or artistic creativity.

  • Literary works are textual works such as song lyrics, books, journal articles, and the code of computer programs/software. This category covers almost anything in the written form. It does not cover headings and titles, however, because these are not considered substantial enough to warrant legal protection.
  • Artistic works cover paintings, photographs, craft work, drawings and sculptures. There is no need for the work to have ‘artistic merit’ to be protected. It simply needs to take artistic form, regardless of perceived quality or skill.
  • Musical works cover only musical compositions and notations. It does not cover song lyrics (which are a literary work) or the sound recording of a song (which is protected separately). For this reason, a popular song can have many different ‘layers’ of copyright.
  • Dramatic works cover theatrical plays, choreography, and mime pieces, as well as scripts for films.

Copyright law also protects:

  • cinematographic films which includes visual images and sounds in a film;
  • broadcasts by television and radio broadcasters; and
  • sound recordings recorded in a studio or otherwise.

A copyright protected work is often denoted by the symbol ‘©’, though this is not required for copyright protection.

It's important to remember that ‘ideas’ are not protected by copyright. Unless an idea is given some form of literary, dramatic, artistic or musical expression, it cannot be protected under the copyright law.

There is no system to register copyright in Australia. Copyrightable work does not require registration for protection under the law. Copyright protection is free and automatic.

Example: a website

Dasha, Sui-Ching and Peter are working together on a website for their employer. They contribute text, photographs and videos to the website. In this example, the text will be protected as a literary work, the photographs will be protected as artistic works, and the videos will be protected as cinematograph films.

Example: video production

Kirra and Stephanie make a video to upload to YouTube. They write out a scene for the video and act in it themselves. As part of the scene, they perform an original song. Kirra writes and plays the song on her guitar, while Stephanie sings.

In this example, there are a number of different types of copyright works. The script or scene directions for the video will be protected as a dramatic work. The music for the song (i.e. the musical notations) will be protected as a musical work, and the lyrics sung by Stephanie will be protected as a literary work. The overall video will be protected as a film.

International and Historical Context

Australian copyright law was originally derived from British law. It was not until the current legislation was passed, the Copyright Act 1968 (Cth) that Australia started to find its own identify with respect to copyright.

In the UK, prior to formal copyright legislation being passed, copying restrictions were authorised by the Licensing of the Press Act 1662. The Stationers’ Company enforced the restrictions imposed by the Act. They were a guild of printers given the exclusive power to print and distribute literary works. During this time, there were concerns regarding censorship with respect to the content that was printed and distributed by the guild of printers. The guild had full control over what content was printed and made available to the public. The public protested these restrictions and eventually Parliament refused to renew the Licensing Act, which ended the Stationers' monopoly and press restrictions.

Over the next 10 years the Stationers repeatedly advocated bills to re-authorise the old licensing system, but Parliament declined to enact them. Faced with this failure, the Stationers decided to emphasise the benefits of licensing to authors rather than publishers, and the Stationers succeeded in getting Parliament to consider a new bill. This new bill became the Statute of Anne 1709.

Statute of Anne 1709 was passed in 1710. This was the first statute to regulate copyright through the government and courts, rather than through private parties. One of the foundations of this statute was the prescribed copyright term of 14 years, with a provision for renewal for a similar term, during which only the author (and the printers they chose to license their works) could publish the author's creations. Following this, the copyright in the works would expire, with the material falling into the public domain. The Statute of Anne remained in force until the Copyright Act 1842 replaced it. The statute was an influence on copyright law in several other nations, including the United States, and even in the 21st century is considered to support the utilitarian justification for copyright law.

In 1828, the UK enacted the Australian Court Act 1828 (UK) which in effect caused all the Acts (that were in force at the time) in the UK to be enforced within Australia. The UK copyright law was among these laws.

Throughout the early 1900’s Australia had two copyright acts, the Copyright Act 1905 (Cth), which was the first copyright statute and the Copyright Act 1912 (Cth), this was the second copyright statute which repealed all other related legislation and adopted the Copyright Act 1911 (UK).

In 1959 the Spicer Report was released which proposed significant changes to Australia’s copyright law. The purpose of these changes was to enable the ratification of the Brussels Act of the Berne Convention. The Spicer Report led to the enactment of the Copyright Act 1968 (Cth), which remains in force today. This Act has been updated a number of times to account for new purposes, development in international laws and trade agreements.

There have been continuous changes in the legislation as a result of changes to technology.

Below is a brief timeline of the developments of copyright law in Australia from the first types of copyright in the UK through to the nuanced aspects of copyright in today's society.

Year Development in the Law Outcome
1476 Caxton Press The printing press was established in England.
1557 Stationers Company A guild was given a monopoly over printing and distributing books. This was a royal decree.
1643 The Licensing Order The Ordinance for the Regulating of Printing also known as the Licensing Order of 1643 instituted pre-publication censorship upon Parliamentary England.
1709 The Statute of Anne The Statute of Anne was the first statute to regulate copyright (by the government and courts), as opposed to private parties.
1828 Australian Court Act 1828 (UK) The UK statues were received into Australian colonies.
1883 Ownership in copyright As a result of changes to copyright law to include photographs the question of who was the owner of the copyright in the photograph and under what circumstances became an issue for the court to decide. 4)
1886 The Berne Convention The Berne Convention for the Protection of Literary and Artistic Works is agreed, following a campaign by French writer Victor Hugo. The aim is to give creators the right to control and receive payment for their creative works on an international level.
1901 The Australian Constitution Australia became a nation.
1905 Copyright Act 1905 (Cth) The first Commonwealth copyright statute.
1912 Copyright Act 1912 (Cth) The second Commonwealth copyright statute which adopted the Copyright Act 1911 (UK).
1937 Limitations to rights over intangible property The High Court of Australia considered the case of Victoria Park Racing & Recreation Grounds Co Ltd v Taylor 5) The case considered property rights. One aspect of the case considered whether copyright law had been breached with respect to facts. It was held that, “[t]he law of copyright does not operate to give any person an exclusive right to state or to describe particular facts. A person cannot by first announcing that a man fell off a bus or that a particular horse won a race prevent other people from stating those facts”.6)
1956 Copyright Act 1956 (UK) This Act did not apply to Australia.
1968 Copyright Act 1968 (Cth) The British Copyright Act 1911 continued to apply in Australia until the Copyright Act 1968 (Cth) came into force on 1 May 1969.
1994 Trade Related Aspects of Intellectual Property Rights (TRIPS) The TRIPS agreement entered into force which prescribed minimum standards for intellectual property, including copyright law.
2004 United States Free Trade Agreement (AUSFTA) Under the IP terms of this Agreement, Australia agreed to extend its copyright term from the life of the author plus 50 years to the life of the author plus 70 years.
2017 The Copyright (Disabilities and Other Measures) Act 2017 This Act was passed on 15 June 2017. One of the primary aims of the Act was to align Australia'a copyright law with the Marrakech Treaty.

There are six basic issues that must be considered in approaching copyright and related rights.

  1. Subsistence - This asks whether the the subject matter is protected by copyright?
  2. Ownership - Who owns the copyright?
  3. Infringement - Have any of the exclusive rights of the copyright owner been infringed?
  4. Defences - Do any defences apply to the alleged infringement?
  5. Remedies - What remedies are available?
  6. Related Rights - This asks whether there are any related rights associated with the copyright. For example moral rights, anti-circumvention and designs.

Each of these issues will be discussed in detail in the following chapters.

Copyright Subsistence: Part III Works

In this section, you will learn when copyright subsists in various types of material.

Copyright protection in the Copyright Act 1968 (Cth), (CA) is split between original works (Part III) and “subject matter other than works” (Part IV). Original works include literary, dramatic, musical or artistic works. 7) Subject matter other than works includes sound recordings, films, broadcasts and published editions.

For copyright to subsist in a Part III original “work”, the conditions in s 32 must be satisfied including:

  1. Expressed in material form;
  2. A literary, dramatic, musical, or artistic work;
  3. Original; and
  4. With a connection to Australia.

Each of these conditions will be discussed in this chapter.

Material Form

An idea becomes a work when it is “first reduced to writing or to some other material form”. 8) The term “writing” means a mode of representing or reproducing words, figures or symbols in a visible form, and “written“ has a corresponding meaning. 9) The term “material form”, in relation to a work or an adaptation of a work, includes any form (whether visible or not), of storage of the work or adaptation, or a substantial part of the work or adaptation, (whether or not the work or adaptation, or a substantial part of the work or adaptation, can be reproduced). 10) Material form includes writing in any tangible medium, analogue or digital storage on any electronic or other medium. 11) Material form does not include ephemeral manifestations, projections, speech or live music.

Video overview by Kylie Pappalardo on Material Form.

The Idea/Expression Dichotomy

Copyright protects expression fixed in material form. It does not protect ideas or information. It only protects the way in which those ideas or information are expressed.

Video overview by Kylie Pappalardo on the Idea / Expression Dichotomy.

  • The idea expression dichotomy was considered in the leading case of Skybase Nominees Pty Ltd v Fortuity Pty Ltd. 12)

Skybase Nominees Pty Ltd v Fortuity Pty Ltd13)

"There is a tension in policy between the monopoly rights which are conferred upon the owner of copyright in a literary, dramatic, musical or artistic work on the one hand, and the freedom to express ideas or discuss facts on the other. While there will be an infringement of the copyright of an owner in a literary, dramatic, musical or artistic work where there is a reproduction of that work or a substantial part of it, the fact that another work deals with the same ideas or discusses matters of fact also raised in the work in respect of which copyright is said to subsist will not, of itself, constitute an infringement. Were it otherwise the copyright laws would be an impediment to free speech, rather than an encouragement of original expression". (Hill J)

Literary, Dramatic, Musical, or Artistic Work

To fall within Part III of the Copyright Act, the expression must be a literary, dramatic, musical or artistic work.

Video overview by Kylie Pappalardo on Part III works.

Each of these types of works will be considered below.

Literary Work

A literary work includes tables, compilations, expressed in words, figures or symbols (whether or not in a visible form), and computer programs or compilations of computer programs. 14)

A literary work is a work which is expressed in print or writing, irrespective of whether the quality or style is high.

University of London Press v University Tutorial Press Ltd 15)

In the case of University of London Press v University Tutorial Press Ltd it was held that exam papers were literary works.
Peterson J said at 608:

"In my view the words ‘literary work’ cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high. The word ‘literary’ seems to be used in a sense somewhat similar to the use of the word ‘literature’ in political or electioneering literature and refers to written or printed material".

This case is discussed further under 'Originality' (below).

Examples of literary works include:

  • Football pool coupons; 16)
  • A racing programme; 17)
  • Chronological lists of football matches; 18)
  • Lists of bingo numbers; 19) and
  • Accounting forms. 20)

Headlines, Titles and Names

Copyright does not normally subsist in titles and names. Generally, titles and single words are better protected through trade mark law and passing off than copyright.

Video overview by Kylie Pappalardo on Copyright in Headlines, Titles and Names.

The cases of WH Allen & Co. v Brown Watson Ltd and McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd considered passing off and copyright law.

WH Allen & Co. v Brown Watson Ltd21)

Held, there was passing off where the defendant's published a book entitled, “Frank Harris: My Life and Adventures”.

There was already a reputation in the book written by Frank Harris entitled, “My Life and Loves”.

McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd22)

In the case of McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd a wine company brought out a wine called “Big Mac”. McDonalds claimed that this was a breach of s 52 of the Trade Practices Act (the law preceding the Australian Consumer Law). McDonald's argued that people would be misled into thinking that the wine had some connection with McDonalds. The court held that there was no breach. McWilliam’s conduct might confuse people but this was not the same as being misled under the Trade Practices Act.23)

Exxon Corporation v Exxon Insurance Consultants International Ltd 24)

The oil company adopted the name “Exxon” after considerable research and expense. The defendant company, with no connection, adopted the name. Exxon sought an injunction.

Held, although the name was original, it was not sufficiently substantial for copyright to subsist in the name.

Francis Day and Hunter Ltd v Twentieth Century Fox Corporation Ltd 25)

Francis, Day and Hunter had released a song titled “The Man Who Broke the Bank at Monte Carlo”. Years later, 20th Century Fox put out a movie by the same title, but had no other connections to the song. Francis sued for copyright infringement.

Held, a name alone cannot possess copyright unless it is sufficiently original and distinctive. “To break the bank” is a hackneyed expression, and Monte Carlo is or was the most obvious place at which that achievement or accident might take place.

Fairfax Media Publications v Reed International Books 26)

In the case of Fairfax Media v Reed International Books, Fairfax, (the publisher of the Australian Financial Review) alleged that Reed had infringed copyright by copying AFR headlines as part of its media monitoring service. The question was whether headlines were “original literary works”.27)

Held, while it is possible that a particular headline or title could be a literary work, the general rule is that they are not.

"Headlines generally are, like titles, simply too insubstantial and too short to qualify for copyright protection as literary works. The function of the headline is as a title to the article as well as a brief statement of its subject, in a compressed form comparable in length to a book title or the like. It is, generally, too trivial to be a literary work, much as a logo was held to be too trivial to be an artistic work, even if skill and labour has been expended on creation". (Bennett J, [44])

However, ”[i]t may be that evidence directed to a particular headline, or a title of so extensive and of such a significant character, could be sufficient to warrant a finding of copyright protection“. ([46])

The Newspaper Licensing Agency Ltd & Ors v Meltwater Holding BV & Ors28)

"The evidence in the present case (incidentally much fuller than that before Bennett J in Fairfax…) is that headlines involve considerable skill in devising and they are specifically designed to entice by informing the reader of the content of the article in an entertaining manner" (Proudman J, [70])

“In my opinion headlines are capable of being literary works, whether independently or as part of the articles to which they relate. Some of the headlines in the Daily Mail with which I have been provided are certainly independent literary works”. (Proudman J, [71])

The decision was upheld on appeal. 29)

Computer programs (software) and databases are classified and protected as “literary works”. To understand why, it's necessary to briefly look at the definition of “literary works” under the Australian copyright law.30)
The definition of “literary works” includes “a table, or compilation, expressed in words, figures or symbols (whether or not in visible form) and a computer program or compilation of computer programs.” The law further defines a “computer program” as a set of instructions expressed in any language or code that causes “a device having digital information capabilities to perform a particular function.” Thus, the source code and object code of a computer program will be protected under copyright as a literary work. This gives a software developer the same rights as a creator of any other creative work.

Databases are also protected as literary works. However, court cases have imposed some additional requirements for databases and data compilations. For a database to be protected under copyright, it has to satisfy two requirements:

  • the database should be created by a human author i.e. not by a machine/automated process; and
  • there must be an intellectual effort involved in its creation.

These additional requirements are imposed because often data compilations consist of pure facts or information compiled in a logical order. The law considers that pure facts and information (most data) should be free for the public to use, unless there is an extra layer of creativity that goes into their compilation and organisation.

Computer Edge Pty Ltd v Apple Computer Inc 31)

In the case of Computer Edge Pty Ltd v Apple Computer Inc, it was held that programs in object code (as opposed to source code) were not literary works.

This case was pre the 1984 amendments to the Act. These amendments provided that copyright subsists regardless of the code, language or notation used.

Autodesk Inc v Dyason (No 2) 32) - Liability for reverse engineering computer programs

In the case of Autodesk Inc v Dyason, the plaintiff owned copyright in a drafting program used by architects and engineers called “Autocad”. It was sold with an electronic device, the “Autolock”, to attach to the computer. The program would not run without the “Autolock”, preventing its use on more than one computer at any one time. The defendant cracked the code and produced a device called “Autokey”, which performed the same function as the “Autolock”.

It was held that the defendant had infringed copyright in the “Autocad” by reproducing a substantial part of the program in the device.

Video overview by Zoe Cannan on Autodesk v Dyason (No 2)

Data Access Corp v Powerflex Services Pty Ltd 33)

In the Hight Court case of Data Access Corp v Powerflex Services Pty Ltd Data Access had copyright in a computer program “Dataflex”, used by programmers to develop databases. Dr Bennett created a program compatible with “Dataflex”, which was sold by Powerflex Services in competition with “Dataflex”. He did not have access to the “Dataflex” source code, nor did he seek to decompile their program.

It was held that there was no infringement of copyright except for the use of a compression table which merely reduced computer storage space. Observing a program and developing a similar program without copying the source code or decompiling the program will not infringe copyright.

Dramatic Work

Dramatic work includes choreographic shows, scenarios or scripts for a cinematograph films. 34) Dramatic work does not include a cinematograph film this form of expression is distinct from the scenario or script for a cinematograph film.

Copyright in a film is the subject of a separate copyright in Part IV.

The essential character of a dramatic work is that it is intended to be represented or performed in some way, for example, by acting or dancing. A dramatic work must not only be intended to be performed, it must also be able to be performed. Disparate elements without sufficient unity do not amount to a dramatic work.

Video overview by Brandon Hoffler on Dramatic Works

Green v Broadcasting Corp. of New Zealand 35)

A dramatic work must be capable of being performed.

Hughey Green was the longstanding host of the British television talent quest “Opportunity Knocks”. Features of the show, such as the use of a “clapometer” and various catchphrases to address the audience and the competitors, were replicated by a New Zealand television program without reference to Green.

It was held that the repetitive elements alone did not constitute a dramatic work: by themselves, their performance was meaningless since the greater part of the show, which gave meaning to the different stock elements, consisted of audience participation, varying from program to program.

Nine Network Australia Pty Ltd v ABC 36)

In the case of Nine Network Australia Pty v ABC, the Nine Network had paid $450,000 towards the Council of the City of Sydney’s fireworks display to welcome the new millennium. The Nine Network tried to restrain the ABC from broadcasting in Australia anything featuring the fireworks, the procession of lanterns on Sydney Harbour and decorations on the Harbour Bridge.

The court found that Nine’s contention that the display and parade were dramatic works was not strong.

The schedule of the fireworks display would not be such a work, since the reduction to material form was fraught with difficulties as to whether the schedule would in practice be adhered to according to the planned sequence.

"It is, one would think, common place in at least a half of the present decade that firework shows with music are planned. It has never been suggested to my knowledge, and there is no reported case in which the matter has been subjected to legal analysis which has suggested that copyright subsists in a fireworks show set to music just because the sequence of events is scripted. That does not mean that copyright might not exist. It may merely be the result either of difficulties of enforcing the non filming of such events or it may be that no one has thought deeply about the issue. At the heart of the problem may well be that copyright is a monopolistic right existing not to protect ideas as such but the physical manifestation of some original literary, artistic or dramatic work".

The ABC could have potentially used the fair dealing exception of reporting the news in this instance.

Musical Work

The term “musical” work is not defined in the Copyright Act. It is understood, however, to refer to the non-literary aspects of the song – sound, melody, harmony and rhythm. The adjective “musical” refers to the method of production and not to any artistic or aesthetic qualities which the work should possess.

Lyrics to musical works are also covered under “literary works”.

Artistic Work

Artistic work includes paintings, sculptures, drawings, engravings or photographs, buildings or a models of a buildings 37) The artistic quality of the work is not a consideration, copyright will subsist in these creations regardless of quality. Artistic work also includes artistic craftsmanship. The definition of artistic works does not apply to a circuit layout within the meaning of the Circuit Layouts Act 1989 (Cth).

Copyright in Paintings

The case of Merchandising Corp of America v Harpbond 38) outlines the copyright which subsists in paintings.

Adam Ant sought to protect his facial makeup as artistic work.

Held, although there was no statutory definition of “painting”, it is a word in the ordinary usage of the English language and it is a question of fact in any particular case whether the subject matter under discussion is a painting or not. A painting is not an idea, it is an object, and paint without a surface in permanent form is not fixed; hence, the claim failed.

Drawing is defined as including “a diagram, map, chart or plan”. 39) Architects' plans are considered artistic works. 40)

'Sculpture' includes a cast or model made for purposes of sculpture. 41)

Metix v Maughan42)

“A sculpture is a three-dimensional work made by an artist's hand”.

Held: Industrial moulds to make twin cartridges like double-barrelled syringes were not sculptures.

"It appears to me that there is no reason why the word “sculpture" in the 1988 Act, should be extended far beyond the meaning which that word has to ordinary members of the public. There is nothing in the particulars in this case which suggests that the manufacturers of these moulds considered themselves, or were considered by anybody else, to be artists when they designed the moulds or that they were concerned in any way with the shape or appearance of what they were making, save for the purpose of achieving a precise functional effect. Nothing in the particulars given here suggests that any consideration of appeal to anything other than functional criteria was in mind or achieved”. (Laddie J, 722)

Building includes a structure of any kind. 43)

Half Court Tennis Pty Ltd v Seymour 44)

Held, a half-tennis court was a building.

Darwin Fibreglass Pty Ltd v Kruhse Enterprises Pty Ltd 45)

Held, a fibreglass swimming pool was held to be a structure – particularly as the pools are as large as some small buildings and have a relatively long life.

The plug and mould used for the manufacture of precast fibreglass swimming pool was not a structure, but was a model of a building.

The term “artistic craftsmanship” is not defined in the Act. This is the only category of protection for 3D objects apart from buildings and models. A work of artistic craftsmanship includes articles made by crafts-people, such as jewellery, metalwork, and pottery.

The traditional test is whether the author in making the article had the main object of creating an article which will have a substantial appeal to the aesthetic tastes of those who observe them.

The two elements (artistic and craftsmanship) must be united in the same person. 46)

Video overview by Joseph Auclair onartistic craftsmanship and design protection

Cuisenaire v Reed 47)

The issue was whether copyright subsisted in the Cuisenaire set of variously coloured tubes used for the purpose of teaching primary school children arithmetic as a work of artistic craftsmanship.

Held, no copyright subsisted as a work of artistic craftsmanship as cutting up pieces did not constitute craftsmanship and it wasn’t a work of artistry.

George Hensher Ltd v Restawhile Upholstery (Lancs.) Ltd 48)

The issue was whether copyright subsisted in a prototype of a furniture suite for manufacture as a work of artistic craftsmanship. It consisted of pieces of wood with canvas attached (no drawing). The design was “boat shaped” with a flimsy appearance.

Held, not artistic as there was evidence it was regarded as vulgar, brash and horrible (i.e. not sufficient aesthetic appeal).

Whether there is sufficient aesthetic appeal is determined objectively – it should not depend solely on the subjective intention of the author.

Lord Morris: “although the intention of the author may provide an indication as to whether the object is “artistic”, this quality should be assessed in a “detached and objective way”.

Lord Reid: “An item will have aesthetic appeal if a substantial section of the public genuinely admires and values it for its appearance and gets pleasure or satisfaction, whether emotional or intellectual from looking at it, even though others may think it meaningless or vulgar”.

A work of artistic craftsmanship may be mass produced. Factory based products can be works of artistic craftsmanship – they need not be handmade, although the author must use a highly sophisticated machine with creative skill, knowledge, and pride in workmanship. A work of artistic craftsmanship need not be the product of a single person. This was considered in the case of Coogi Australia Pty Ltd v Hysport International Pty Ltd. 49)

Coogi Australia Pty Ltd v Hysport International Pty Ltd 50)

In this case, the plaintiff designed and manufactured a distinctive machine-knitted fabric and garments – highly textured surface, complex, abstract, multi-coloured design.

Held, the design for the fabric embodied in the first role of fabric produced was a work of artistic craftsmanship.

“The phrase “works of artistic craftsmanship” is a composite phrase that must be construed as a whole. There is nothing to suggest that any of the words is used in other than one of its ordinary senses”.

“A work will qualify as one of artistic craftsmanship only if it has an element of real artistic, that is, aesthetic, quality, whether or not it is a utilitarian article”.

“The article need not have such a high level of aesthetic quality as to make it a work of fine art”.

But: “The level of aesthetic appeal required for a work of artistic craftsmanship is higher than mere visual appeal”.

"The statute by its definition of "artistic work" requires that a work of artistic craftsmanship be "of artistic quality"; in this context, that seems clearly to require that it have some aesthetic value. That a segment of the public can be found which may have been persuaded by advertising or by a transient fad to want to own the work because of its visual appeal does not necessarily mean that it must have the requisite minimum level of aesthetic value. I do not think the Court can, in determining whether a work is one of artistic craftsmanship, avoid the task of making a judgment, on the evidence before it, whether the work has a sufficient level of aesthetic appeal to be "of artistic quality". "Before a work will qualify as a work of craftsmanship, it must be a manifestation of pride in sound workmanship and the result of the exercise of skill on the part of its creator in using the materials of which the article is made and the devices by which those materials are turned into the article".

Burge v Swarbrick 51)

The case of Burge v Swarbrick considered the copyright/design overlap.

Here, the creator of a yacht design sued for copyright infringement. The creator would only be able to assert copyright if the hull or the 'plug' (a hand-crafted full scale model) used to create the yacht was a 'work of artistic craftsmanship'

The court held that the plug was a work of artistic craftsmanship. “The creation of the JS 9000 has some similarity to the modus operandi of Auguste Rodin”.

The High Court overturned the ruling, holding that the plug was not a work of artistic craftsmanship:

"It may be impossible, and certainly would be unwise, to attempt any exhaustive and fully predictive identification of what can and cannot amount to "a work of artistic craftsmanship" within the meaning of the //Copyright Act// as it stood after the 1989 Act. However, determining whether a work is "a work of artistic craftsmanship" does not turn on assessing the beauty or aesthetic appeal of work or on assessing any harmony between its visual appeal and its utility. The determination turns on assessing the extent to which the particular work's artistic expression, in its form, is unconstrained by functional considerations".[83]((//Burge v Swarbrick// [2007] HCA 17))

The designer in this case was motivated by engineering imperatives, and was not acting as an artist-craftsperson when he created the plug. The utilitarian requirements of aerodynamics and speed influenced and, at times, dictated the design choices.

Video overview by Shonagh Hunter on Burge v Swarbrick.

Originality

In copyright, the term “originality” does not mean “novel” or new. Instead, “original” means to originate from the author, in the sense that it is the result of his or her skill, labour or judgment, and is not copied from another author. It is possible that two authors will independently produced a similar work both attracting copyright, and neither infringing copyright.

Video overview by Kylie Pappalardo on Originality.

University of London Press Ltd v University Tutorial Press Ltd 52)

Examiners were hired to create exam scripts for the University of London. A condition of appointment for examiners was that copyright in the papers belonged to the University. The University subsequently assigned copyright to the plaintiff publisher. The defendant publisher then published exams with answers and comments. The plaintiff publisher sued for infringement of copyright.

Held: copyright subsisted in the papers as original literary works – originality does not require that the work be original or inventive thought, as long as there is originality in the expression of the idea.

"The word 'original' does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and, in the case of 'literary work', with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work — that it should originate from the author". (Peterson J, 609-10)

Video overview by Christine Apurel on University of London Press v University Tutorial Press.

Budget Eyewear Australia v Specsavers 53)

In the case of Budget Eyewear Australia v Specsavers the court found that there was an arguable case that the manner in which a concept was expressed in an advertisement was original because ”[i]t is necessary for the creator of the advertisement to choose words and expressions carefully and to put those words and phrases together in a particular considered way. Expressions such as ‘if your glasses are not all they are cracked up to be, don’t worry, we’ll come to the rescue’ may involve ordinary words, as does much literary language, but the fact that the words are commonplace does not mean that the way in which they are put together cannot have a degree of originality.” ([17])

Legal terms and conditions are less likely to be original.

Video overview by Emma Taylor on Budget Eyewear Australia v Specsavers.

Compilations and Databases

In Australia, a compilation will be protected by copyright as an original literary work if it has been produced by the application of independent intellectual effort by the author. This effort may involve the exercise of skill, judgment, knowledge, creativity or labour in selecting, presenting or arranging the information.

Basic Case Law Overview

  • Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273: Held, football coupons attracted copyright, even though none of the component parts were original.
  • G.A. Cramp & Sons Pty Ltd v Frank Smythson Ltd: Held, the selection and publication of seven tables of commonplace information in diaries did not attract copyright – the pieces of information were common knowledge and did not involve a sufficient degree of skill and labour by the publisher.
  • Football League Ltd v Littlewoods Pools Ltd [1959] Ch 637: Held, copyright did subsist in the chronological list of matches of the football league, having regard to the skill and labour involved.
  • Kalamazoo (Aust.) Pty Ltd v Compact Business Systems Pty Ltd: Held, copyright subsisted in compilations of blank accounting forms.
  • Primary Health Care Limited v Commissioner of Taxation [2010] FCA 419: Held, the minimal effort required for a doctor to write consultation notes was sufficient to demonstrate “a continuous narrative showing independent intellectual effort expended in expression” and therefore constitute an original literary work. Health summaries and prescriptions, however, only contained names of medications, dosage and standard directions, and the list of previous illnesses and procedures. These did not qualify as original literary works “embodying independent intellectual effort directed towards expression.”

Major Cases

Feist Publications Inc v Rural Telephone Service Co Inc. (US)

US position: original works must possess “some minimal degree of creativity”

The Supreme Court found that a compilation, even one composed purely of non-copyrightable elements (such as mere factual information), is protected under copyright law so long as the author of the compilation exercised creativity in the selection, coordination, or arrangement of those elements.

Held, a “white pages” telephone book, an alphabetical listing of all telephone subscribers in a certain area, did not reach the required threshold of originality in order to qualify for copyright protection.

Feist was not followed in Australia.

Desktop Marketing Systems Pty Ltd v Telstra Corp Ltd 54)

In the case of Desktop Marketing Systems Pty Ltd v Telstra Corp Ltd Telstra published the Yellow Pages and the White Pages. Desktop Marketing produced and sold phone directories in CD-ROMs of varying levels of sophistication with White and Yellow pages listings, which could be searched in different ways whether by name, address, postcode, industry and the like. The data used to produce the CD-ROMS was taken from Telstra’s phone books and rekeyed by a team of workers in the Philippines. Desktop Marketing also used Telstra’s headings, though it did add its own software to do the searching.

Held, copyright subsisted in Telstra’s White Pages and Yellow Pages directories, and that copyright had been infringed.

Factual compilations may be protected merely on the basis that substantial labour and expense has been devoted to their creation. This was true even of a “whole of universe” compilation such as the White Pages, where there was no element of selectivity in the organisation or presentation of the data, and even though the labour and expense here had not so much gone into the “collection” of the data (which was in fact simply received from subscribers) as into the development of systems for its verification and storage.

The court noted that it was open to Desktop Marketing to obtain all the facts contained in the Telstra directories by its own independent inquiry, and produce its own compilation of the results. As long as there had been no copying of Telstra’s product by Desktop Marketing, there would be no copyright infringement.

  • See Lindgren J at 472-478 and Sackville J at 539.

Full Federal Court held that a compilation would attract copyright protection if:

  • It was produced as a result of the exercise of skill, judgment or knowledge in the selection, presentation or arrangement of material; or
  • It required the investment of substantial labour or expense in collecting the material included in the compilation (the “sweat of the brow” approach).

Clearly Telstra incurred significant labour and expense in collecting, verifying, and collating the directories. The Full Court considered that this labour interest (“sweat of the brow”) ought to be protected against misappropriation.

  • Important: While Desktop Marketing has not been explicitly overruled, it must now be treated with caution.

IceTV Pty Limited v Nine Network Australia Pty Limited 55)

In the case of IceTV Pty Limited v Nine Network Australia Pty Limited Channel 9 created a Weekly Schedule of television programmes to be broadcast each week. They alleged that each Weekly Schedule was a compilation, and therefore a literary work under the Copyright Act, and that IceTV had infringed copyright by taking part of the time and title information from the Aggregated Guides (guides produced by third party Aggregators, authorised by Nine and to whom Nine provides the Weekly Schedule) and including it in their own (electronic) guide, the “IceGuide”.

The Weekly Schedule consisted of a spreadsheet with the details of dates, titles, start and finish times of television programs (“time and title information”); additional details such as episode titles, episode numbers, currency information, program formats, classification, etc; and short synopses of the TV programs.

IceTV conceded originality at first instance(!).

  • The High Court's discussion on originality, in terms of subsistence, was accordingly strictly obiter dicta
  • However, originality was discussed in terms of infringement.

French CJ, Crennan and Kiefel JJ at [42]-[43]:

"The expression of the time and title information, in respect of each programme, is not a form of expression which requires particular mental effort or exertion. The way in which the information can be conveyed is very limited. Expressing a title of a programme to be broadcast merely requires knowledge of the title, generally bestowed by the producer of the programme rather than by a broadcaster of it. Expressing the time at which a programme is broadcast, for public consumption, can only practically be done in words or figures relating to a 12 or 24-hour time cycle for a day. The authors of the Weekly Schedule (or the Nine Database) had little, if any, choice in the particular form of expression adopted, as that expression was essentially dictated by the nature of the information. The expression lacks the requisite originality (in the sense explained) for the part to constitute a substantial part.

Counsel for Nine sought to place importance upon the production not only of time and title information in respect of each programme, but also of the chronological arrangement of the time and title information for various programmes. Whether a selection or arrangement of elements constitutes a substantial part of a work depends on the degree of originality of that selection or arrangement. In this case, a chronological arrangement of times at which programmes will be broadcast is obvious and prosaic, and plainly lacks the requisite originality.

These considerations lead to the conclusion that the part of the Weekly Schedule (or the Nine Database) alleged to have been reproduced was not a substantial part."

French CJ, Crennan and Kiefel J also state at [48], [52] (in obiter):

"It may be that too much has been made, in the context of subsistence, of the kind of skill and labour which must be expended by an author for a work to be an "original" work. The requirement of the Act is only that the work originates with an author or joint authors from some independent intellectual effort. Be that as it may, as noted previously, since the subsistence of copyright need not be considered in this appeal, the relevance of skill and labour to that inquiry need not be considered further".

"Rewarding skill and labour in respect of compilations without any real consideration of the productive effort directed to coming up with a particular form of expression of information can lead to error. The error is of a kind which might enable copyright law to be employed to achieve anti-competitive behaviour of a sort not contemplated by the balance struck in the Act between the rights of authors and then entitlements of the reading public."

Gummow Hayne and Heydon JJ stated (at [157]-[160]):

"The issue requiring the comparison between what was taken and the whole of the work in suit may be distorted by a mediation, inspired by* Desktop Marketing*, upon the protection given by the Act against misappropriation of any investment of skill and labour by the author. In the present case, the temptation then is to classify the slivers [of information] each as original literary works…

… the more remote the level of abstraction of the "interest", the greater the risk of protecting the “ideas” of the author rather than their fixed expression.”

Gummow, Hayne and Heydon JJ accepted the submission by IceTV that the originality of the Weekly Schedule “lay not in the provision of time and title information, but in the selection and presentation of that information together with additional programme information and synopses, to produce a composite whole” ([152]). Accordingly, like French CJ and Crennan and Kiefel JJ, they found that IceTV had not reproduced a substantial part of Nine’s original copyright work.

An important obiter remark was made by Gummow, Hayne and Heydon JJ immediately following their conclusion:

"One final point should be made. This concerns the submission by the Digital Alliance that this Court consider the Full Court’s decision in Desktop Marketing and, to the contrary of Desktop Marketing, affirm that there must be some “creative spark" or exercise of “skill and judgment” before a work is sufficiently “original” for the subsistence of copyright.

It is by no means apparent that the law even before the 1911 Act was to any different effect to that for which the Digital Alliance contents. It may be that the reasoning in Desktop Marketing with respect to compilations is out of line with the understanding of copyright law over many years. These reasons explain the need to treat with some caution the emphasis in Desktop Marketing upon "labour and expense" per se and upon misappropriation. However, in the light of the admission of Ice that the Weekly Schedule was an original literary work, this is not an appropriate occasion to take any further the subject of originality in copyright works.”

Telstra v Phone Directories 56)

In the case of Telstra v Phone Directories, the question again arose as to whether copyright subsists in Telstra's White Pages and Yellow Pages directories.

At first instance, Gordon J, consistent with IceTV, rejected the notion that skill, labour or expense alone can give rise to copyright protection. There must be something more, and that something more is the exercise of “independent intellectual effort” and /or “sufficient effort of a literary nature”.

Ultimately, the case turned on two factors:

  1. Firstly, Telstra's inability to identify with any degree of certainty the “authors” of the telephone directories. Gordon J found that there were numerous people who had contributed in part to the production of the directories – some of these people were employees and some were independent contractors; some were still in the Applicants' employ but others were not; and some had played only minor roles whereas others had played more significant roles. The exact number of contributors was unknown and the Applicants had not identified who the contributors were.
  2. Secondly, Gordon J held that even if the authors could be identified with sufficient clarity and certainty (which they could not), the people suggested to be the authors of the works did not exercise “independent intellectual effort” and/or “sufficient effort of a literary nature”. The majority of the processes creating the directories were heavily automated. A system of computer-imposed “Rules” controlled the content and prescribed the form of expression of the works. Any human discretion had to be exercised in accordance with the Rules. The system was designed to limit originality, not provide for it. The tasks performed by individuals applying the Rules were mechanical and often able to be completed in large numbers swiftly. Very few people had any part to play in the final presentation of the works or the particular form of the expression of the information. Gordon J rejected the Applicants' contention that the relevant intellectual effort involved was understanding and applying the Rules, holding that the independent intellectual effort required must be directed to the creation of the work and that the independent effort claimed by the Applicant was not.

Consequently, Gordon J held that none of the works were original and none of the people said to be authors of the works exercised “independent intellectual effort” or “sufficient effort of a literary nature” in creating the works.

Justice Gordon stated:

"Authorship and originality are correlatives. The question of whether copyright subsists is concerned with the particular form of expression of the work. You must identify authors, and those authors must direct their contribution (assessed as either an “independent intellectual effort" of a “sufficient effort of a literary nature”) to the particular form of expression of the work. Start with the work. Find its authors. They must have done something, howsoever defined, that can be considered original. The Applicants have failed to satisfy these conditions. Whether originality be the product of some “independent intellectual effort” and / or the exercise of “sufficient effort of a literary nature”, or involve a “creative spark” or the exercise of “skill and judgment”, it is not evident in the claim made by the Applicants”. (Gordon J at first instance, [344])

The Full Federal Court upheld the decision at first instance and dismissed the appeal.

  • Again, Telstra had incurred significant labour and expense in collecting, verifying, and collating the directories.
    • However, the skill and labour exerted was aimed predominantly in creating the database. It was not aimed at producing the actual final expression in any way that could be said to originate in the intellectual effort of an individual.
    • Critically, the final form of the directories were generated by a computer program.
    • Skill and labour not directed to the creation of the final expression generally do not count towards originality.
"The reasons of the High Court in *IceTV* authoritatively establish that the focus of attention in relation to the subsistence of copyright is not upon a general concern to prevent misappropriation of skill and labour but upon the protection of copyright in literary works which originate from individuals. In this case copyright was said to subsist in the directories as compilations, but the directories were not compiled by individuals". (Keane CJ, [96])

Special leave to appeal to the High Court was denied.

There is still some uncertainty as to what degree of “independent intellectual effort” in determining the final form of expression is required.

  • “The level of intellectual effort necessary to produce an original literary work is not required to rise to the level of “creativity” or “inventiveness”. In determining whether a literary work is original, the focus of consideration is not upon creativity or novelty, but upon the origin of the work in some intellectual effort of the author.” (Keane CJ, [58])

Fairfax Media Publications v Reeds International Books 57)

Fairfax, publisher of the Australian Financial Review, alleged that Reed had infringed copyright by copying AFR headlines as part of its media monitoring service.

The question was whether headlines were “original literary works”.

Following IceTV, it is important to identify an author and the independent intellectual effort directed to the creation of an original work:

  • “Headlines, which are generally written by sub-editors, often derive in one way or another from the content of the body of the article, which is written by the journalists. Therefore, the authorship of the ten selected headlines cannot be assumed in the absence of specific evidence. A headline that does no more than repeat a phrase from the article is not an original literary work.” ([84])

Connection with Australia

Video overview by Kylie Pappalardo on Connection to Australia.

Unpublished Works

For unpublished works, the author must be a qualified person at the time it was made. 58)

  • If the making of the work extends over a period, the author must be a qualified person for a substantial part of that period 59)
  • A qualified person is an Australian citizen, an Australian protected person, or a person resident in Australia. 60)

Published Works

In terms of published works, the work must meet a specific criteria. 61)

The work must be first published in Australia or the author must be a qualified person when the work was first published. A qualified person is an Australian citizen, an Australian protected person, or a person resident in Australia, 62) A work is deemed to have been published if reproductions have been supplied to the public. 63)

International Reciprocity (Principle of National Treatment)

In practice, works first published internationally will be treated in the same way as Australian works. This applies only to countries who are a signatory to the Berne Convention, (Berne Convention countries). 64)

Video overview by Samuel Roach on Principles of reciprocity in the Berne Convention.

Copyright Subsistence: Subject Matter Other than Works (Part IV)

The Copyright Act 1968 (Cth) (CA) introduced new categories of subject matter in order to protect entrepreneurial investment. Part IV aims to protect “new” technologies and the investment of resources in the production of media and content.

The content protected by Part IV is known as “subject matter other than works” or, more succinctly, “other subject matter” This subject matter includes:

  • Sound recordings; 65)
  • Cinematograph films; 66)
  • Television and sound broadcasts; 67) and
  • Published editions of works. 68)

For these subject matter, there is no requirement of originality. Rights are granted to the “makers” of these subject matter. The terminology for the creator is different in Part III and IV - the creators of Part III works are called “authors” and the creators of Part IV subject matter are called “makers”.

Copyright in Part IV subject matter is “in addition to, and independent of” any copyright subsisting in the work under Part III. 69) Thus, a single item may have many layers of copyright. For example, a recording of a song will have copyright protection in the underlying musical work (the musical notation), literary work (the lyrics), as well as copyright in the actual sound recording.

Video overview by Kylie Pappalardo on Part IV Subject Matter Other Than Works.

Sound Recordings

Copyright in sound recordings subsists by virtue of s 89 of the Copyright Act. “Sound recording” is defined in s 10 as “the aggregate of the sounds embodied in a record”. 70) “Record”, in turn, is defined to mean “a disc, tape, paper or other device in which sounds are embodied”. 71) This definition is designed to be technology neutral and covers CDs, DVDs, electronic files etc.

Cinematograph Films

Section 90 of the Act provides for the subsistence of copyright in cinematograph films.

“Cinematograph films” is defined in s 10 to mean:

“the aggregate of the visual images embodied in an article or thing so as to be capable by the use of that article or thing:

(a) of being shown as a moving picture; or

(b) of being embodied in another article or thing by the use of which it can be so shown;

This includes the aggregate of the sounds embodied in a sound track associated with such visual images“. 72)

The means by which a “moving picture” is produced is not relevant in determining whether the end result is a “film”.

Sega Enterprises Ltd v Galaxy Electronics Pty Ltd; 73) Galaxy Electronics Pty Ltd v Sega Enterprises Ltd 74)

In the cases Sega Enterprises Ltd v Galaxy Electronics Pty Ltd and Galaxy Electronics Pty Ltd v Sega Enterprises Ltd Sega wanted to stop parallel imports of its video games. As there is no restriction on importing non-infringing computer programs, Sega argued that the games were “films”.

It was held that the moving images in a computer-generated video game was a film. The definition should not be interpreted narrowly, but is intended to cover new technologies, the emphasis being on the end product rather than the means adopted to create those pictures.

Virtual Cop was in reality very similar to a traditional movie; two protagonist police officers struggle to investigate criminal activities at various locations, complete with an introduction and triumphant finale.

  • it is not the means by which the video is shown on the screen, but the end result that is important.
  • The important distinction is that the video game is capable of producing the video imagery and the soundtrack, and hence that video and soundtrack was 'embodied' in the game.

Video overview by Caitlin Low on Cinematography films.

Television and Sound Broadcasts

Section 91 of the Act provides that copyright subsists in television and sound broadcasts. This copyright can subsist even if there is no copyright in the underlying material being broadcast. For example, there is no copyright in a sporting match or spectacle, but the maker of the broadcast of that match or spectacle will have copyright in the broadcast.

Specifically, section 91 provides:

"Subject to this Act, copyright subsists in a television broadcast or sound broadcast made from a place in Australia: (a) under the authority of a licence or a class licence under the Broadcasting Services Act 1992; or (b) by the Australian Broadcasting Corporation or the Special Broadcasting Service Corporation".

There are three relevant definitions in s 10 of the Act:

  • “Broadcast” is defined as “a communication to the public delivered by a broadcasting service within the meaning of the Broadcasting Services Act 1992 (Cth).”
  • “Television broadcast” means “visual images broadcast by way of television, together with any sounds broadcast for reception along with those images”.
  • “Sound broadcast” means “a broadcast otherwise than as part of a television broadcast”.

A key aspect of the concept of broadcasting, which is apparent in the definition of “broadcast”, is that it is “to the public”.

Telstra Corp Ltd v Australasian Performing Right Association Ltd 75)

In the case ofTelstra Corp Ltd v Australasian Performing Right Association Ltd APRA argued that when Telstra played music on hold to subscribers, it was broadcasting that music to the public.

It was held that music on hold played to individual callers was considered to be played “to the public”.

“The use of the words “to the public” conveys a broader concept than the use of the words “in public” since it makes clear that the place where the relevant communication occurs is irrelevant. That is to say, there can be a communication to individual members of the public in a private or domestic setting which is nevertheless a communication to the public.”

Video overview by Thomas Gardner on Telstra Corp Ltd v Australasian Performing Right Association Ltd.

Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (“The Panel”) 76)

In the High Court of Australia case of Network Ten Pty Ltd v TCN Channel Nine Pty Ltd Network Ten had a variety show called The Panel, which broadcast clips taken from other networks. A panel of commentators then provided (often humorous) commentary on the clips. The Panel used several short clips taken from Channel Nine. Nine sued under right to rebroadcast.

The Full Federal Court held that any unauthorised rebroadcasting of a broadcast would be an infringement of copyright (subject to any defence of fair dealing that Ten might have had).

Broadcast “means visual images broadcast”, not the “aggregate of visual images” like films. Therefore, the rebroadcast of very short clips from a program could still constitute an infringement.

Ten appealed to the High Court. The High Court, by a three to two majority, overturned the Full Federal Court's decision. The High Court held that a single image appearing on a television screen with accompanying audio does not constitute a television broadcast.

The majority held at [74]:

"There can be no absolute precision as to what in any of an infinite possibility of circumstances will constitute ‘a television broadcast’. However, the [twenty] programmes which Nine identified in … its pleading … answer that description. These broadcasts were put out to the public, the object of the activity of broadcasting, as discrete periods of broadcasting identified and promoted by a title, such as The Today Show, Nightline, Wide World of Sports, and the like, which would attract the attention of the public".

The majority also noted at [77]:

"… the circumstance that a prime time news broadcast includes various segments, items or ‘stories’ does not necessarily render each of these ‘a television broadcast’ in which copyright subsists …"

Copyright is only infringed if you rebroadcast the program, or a substantial part of the program. Otherwise broadcast makers would get much more protection than other copyright owners.

In dissent, Kirby J and Callinan J held in separate judgments that any short series of images will be a broadcast, so any re-broadcasting of any images must be re-broadcasting of a broadcast, regardless of length.

Published Editions of Works

Section 92 of the Copyright Act provides that “copyright subsists in a published edition of a literary, dramatic, musical or artistic work, or, of 2 or more literary, dramatic, musical or artistic works”.

The published edition copyright protects the layout and formatting of printed pages. For example, the precise layout and formatting of newspaper pages will attract separate copyright protection than the underlying literary and artistic works forming the actual newspaper articles.

This type of protection was only introduced with the Copyright Act 1968, as such, there is no copyright protection afforded to published editions of books published before 1968. 77)

Video overview by Elizabeth Morrell on Published Editions.

Duration of Copyright

Unlike other IP rights, copyright protection lasts for an exceptionally long period. Once a work comes into existence, copyright protection begins automatically. For most types of works, copyright lasts throughout the lifetime of the creator plus an additional 70 years.

Type of copyright work Length of copyright protection
Literary, dramatic, musical or artistic works where the author is known Life of the author plus 70 years
Literary, dramatic, musical or artistic works where the author is unknown (anonymous or pseudonymous works) 70 years after the work is first published
Literary, dramatic, musical or artistic works where there is more than one author (“joint authors”) Life of the author who dies last plus 70 years
Sound recordings and cinematograph films 70 years after the recording or film is first published (i.e. made publicly available)
TV and radio broadcasts 50 years after the broadcast is first made

The topic of duration of copyright is contentious in Australia. Prior to 2005 the duration of protection for literary, dramatic, musical and artistic works was life of the author plus 50 years. In 2005 this term was extended by 20 years due to the Australia-United States Free Trade Agreement, (AUSFTA) which required Australia to align its copyright law with that of the United States of America. The extension provisions are retrospective, which means that the extended duration applies to all works, not just works that were created after the extension came into force. Similarly, the duration of protection for photographs was previously 50 years, but also extended in line will all other artistic works due to the AUSFTA. There were special provisions made to ensure that any persons who exploited photographs prior to 16 August 2004 (the date to which the US Free Trade Agreement Implementation Act 2004 (Cth) came into existence) under the assumption that the works had entered the public domain were not found in breach of copyright. Since the duration terms where extended, there has been ongoing debate in Australia regarding what the appropriate duration for copyright protection might be.

Current Provisions

The following video provides a brief overview of the copyright duration, also know as the copyright term, in Australia for works and subjects matter other than works.

Video overview by Kylie Pappalardo on Copyright Duration. Note this video does not include the updated provisions as of 2019

Since the requirements of the AUSFTA were introduced, the duration of copyright for published literary, dramatic, musical, and artistic works is 70 years after the death of the author. 78) Works that are classified as sound recordings and cinematograph films are protected by copyright for 70 years from the year of publication. 79) The remainder of the copyright duration provisions are for terms less than 70 years. For Crown copyright works, the duration is 50 years from the date of creation. Similarly, copyright protection in broadcasts lasts for 50 years from the year the broadcast was first made. 80) Lastly, the duration of copyright protection in published editions is 25 years from year of first publication. 81)

As of January 1, 2019 copyright in unpublished literary, dramatic, and musical works (excluding computer programs), or works where the author is anonymous or using a pseudonymous was amended. Works that have not been made public or works where the identity of the author is not generally known (orphan works), are not protected by perpetual copyright. These works now have a fixed copyright term.82)

Unpublished Works

Works that have not been made public will be protected by copyright for the same period as works that have been made public. Works that have not been made public will generally be protected for 70 years from the year in which the author dies. However, if a dramatic, musical or literary work (other than a computer program), or an engraving, is first made public before 1 January 2019 and the author died before the work was first made public, it will be protected by copyright for 70 years after the year in which the work was first made public. Similarly, if a dramatic, musical or literary work (other than a computer program), or an engraving, was not made public before 1 January 2019 and the author died before 1 January 1948, copyright will have expired.

The copyright term for films and sound recordings, and copyright material owned by international organisations that have not been made public was also amended. In addition, the copyright term for works, sound recordings and films owned by a government were standardised. Unpublished material is no longer in perpetual copyright.83)

For copyright material first made public before 1 January 2019 the copyright continues to subsist until 70 years after the calendar year in which the copyright material was first made public if the material was first made public before 1 January 2019.

For copyright material never made public, and material first made public on or after 1 January 2019 the new duration provisions are:

  • If the subject matter other than works is first made public before the end of 50 years after the calendar year in which the material was made, the copyright continues to subsist until 70 years after the calendar year in which the material was first made public. 84)
  • If the subject matter other than works is not made public before the end of 50 years after the calendar year in which the material was made, copyright subsists for 70 years after the calendar year in which the copyright material was made.85)

Orphan Works

If the identity of the author of a work is generally unknown and the work is made public on or after 1 January 2019:

  • the work will be protected by copyright for 70 years after the year in which the work was first made public provided the work is first made public before the end of 50 years after the year in which the work is made;
  • if the work is not first made public before the end of 50 years after the year in which the work was made, the work will be protected by copyright for 70 years after the year in which the work is made.

However, if the work is first made public before 1 January 2019 and the identity of the author is not generally known before the end of 70 years after the year in which the work was first made public, the copyright will expire at the end of that 70 year period. If the work is never made public, the work will be protected by copyright for 70 years after the year in which the work is made.

Content adapted from the information sheet created by staff of the University of Sydney available for use under a CC0 Creative Commons waiver and fallback licence (CC0 1.0). No attribution is required. For more information on the new duration provisions see QUT's Copyright Guide Duration.

Finding the Balance

Governments, academics and advocacy groups both domestically and internationally have explored what the most appropriate balance may be with respect to the duration of copyright.

An economic study of copyright found that a term of approximately 25 years was appropriate to provide rights holders the opportunity to “generate revenue comparable to what they would receive in perpetuity…without imposing onerous costs on consumers”. 86) The suggested term of 25 years was considered to be “sufficient to incentivise creative effort”. 87)

Another study was undertaken into copyright protection using data from the US copyright register to measured the costs that is paid by the public when copyright protection is increased. 88) This study suggested a copyright term of approximately 15 years after the creation of the work was sufficient and factored in the benefits of copyright for rights holders and costs of the system on the public.

Most recently, the Australian Productivity Commission undertook an inquiry into Australia’s Intellectual Property Arrangements. This inquiry provided an overview of the current copyright protection provisions and noted that, “[w]hile a single optimal copyright term is arguably elusive, it is likely to be considerably less than 70 years after death”. 89)

Whilst the studies are inconclusive, some general concerns have been raised with respect to the effect overly long duration of copyright protection may have on the copyright system. These concerns include the reduction in community welfare due to access restrictions on works that are under copyright protection and the problem of orphan works. The amendments which came into force in January 2019 begin to address some of these concerns regarding duration, especially with respect to unpublished and orphan works.

The Future: Limited Scope for Change Under International Law

These studies and inquiries into the duration of copyright indicate that the current provisions in Australia may not be optimal. Despite this, Australia does not have the unilateral ability to alter the duration provisions. As such, the debates regarding the optimal balance of copyright protection in Australia are continuous but in general, are currently a moot point.

Copyright Ownership

This chapter explores copyright ownership and the different situations which may effect ownership of copyright content.

A copyright creator is a person who uses their intellectual abilities, to create a work of literary, dramatic, musical or artistic creativity. There can be more than one creator of a work. In legal documents and legislation, the creator is often referred to as the ‘author’. The term ‘author’ is used broadly, so that an author may be an artist or a music composer (not just the writer of a book).

A copyright owner is a person who owns the copyright either through creation or by assignment (legal transfer of ownership). Generally, a person who creates the work also automatically owns the copyright. However, there are certain exceptions to this rule. The creator of a work and its copyright owner will not always be the same person.

It’s interesting to note that under the law, only a human being can be the creator of a copyrightable work. However, the right to own copyright extends to artificial entities such as a company.

A copyright owner has exclusive rights in their work. This means that if anybody else wants to use a copyright protected work, they must obtain the copyright owner’s permission or they must operate under a legal exception.

Ownership of Original (Part III) Works

For Part III works, the general rule is that the author of the work is the first owner of copyright. 90) Copyright ownership can be modified by contract, and in practice it is often done so. For example, authors of books may transfer copyright ownership of their book to their publisher in the publishing contract, or a recording artists may transfer copyright in the songs they write to their record company. A transfer of copyright ownership is called an “assignment”. This practice means that the creator (author) of a copyright work and the owner of a copyright work may in fact be different people.

Section 10 of the Act provides that the author of a photograph is the person who took the photograph. Subjects of photographs (i.e the people in the photograph) have no copyright interest in the photograph.

Video overview by Kylie Pappalardo on Copyright Ownership.

There are three exceptions to the general rule that the author is the first owner of copyright. These arise in relation to:

  • Works produced in the course of employment;
  • Works created by journalists; and
  • Commissioned artistic works.

Each of these will be considered in turn.

Work Produced in the Course of Employment

Where a creator is working under a contract of employment, the rule is that the employer owns copyright of works produced in the course of employment. 91) The creator must be working under a contract of service, as distinguished from a contract for services. In other words, they must be an employee and not an independent contractor. Additionally, a person employed as a consultant retains copyright in the work he/she produces, subject to contrary express agreement. 92)

Video overview by Rachel Choi onDistinguishing Employees and Independent Contractors.

In determining whether the work is created in the course of employment, it can be helpful to ask: “Whether on the one hand the employee is employed as part of the business and his work is an integral part of the business, or whether his work is not integrated into the business but is only accessory to it, or, […] the work is done by him in business on his own account.” 93)

Beloff v Pressdram Ltd 94)

The plaintiff, a political correspondent of the “London Observer”, issued a politically sensitive internal memo to the editor and senior staff about the Prime Minister. It was published in full by the “Private Eye”. The plaintiff sued for infringement of copyright.

Held, as the plaintiff was employed under a contract of service, the copyright in the memo was vested in the owners of the “London Observer” and not in the plaintiff.

The issue of ownership also arises when dealing with student produced work. Unless specifically employed to produce work in the course of employment (as outlined above), any work produced by a student will be owned by the student.

The below table is a guide for students when considering copyright and ownership.

Copyright Ownership for Students - a step by step guide adapted from “Copyright Ownership for Students” by Laura Falkner and Harriet Salisbury CC-BY 4.0

Question If No If Yes
1. Are you a University/ College, TAFE or other student? You should refer to the ownership section of this chapter Continue to question 2.
2. Have you created an output as part of your assessment? You may need to consider whether you created the output as part of your employment. Continue to question 3.
3. Have you agreed to assign all or part of your copyright to your institutional provider or anyone else? To answer this question you should familiarise yourself with the task sheet, the submission process for the assessment item, your intellectual property policy for your institutional provider. If you work for your institutional provider you may need to additionally consult your employment contract. If you do not think you have assigned any of your copyright, proceed to question 4. If you have assigned some or all of your copyright to your institutional provider (or to some other person or entity) they may own all or part of the copyright in your output. This will depend on what you have assigned, your institutional provider's intellectual property policy and any employment contacts you may have that pertain to the output.
4. Do you own copyright in your work? If you said no to question 4. you own the copyright in your work. As the copyright owner you have the exclusive right to cause your output to be seen, heard, reproduced, or communicated to the public. Your lecturer, teacher or someone else might want to make use of your work in some way - perhaps as an example in future teaching. You have assigned some or all of your copyright to someone else. You no are no longer the copyright owner (or the sole copyright owner) in some or all of the output.
5. Do you want to give someone permission to use your work in a particular way? Has anyone asked your permission to use your work? If no, any unauthorised use of your work may amount to copyright infringement. If yes, you have the ability to agree to let someone use your work in a particular way. You can provide a license to a person to make use of your work in a set way for a specific period of time.

Journalists

Journalists are the owners of copyright in the articles they produce within the terms of their employment only with respect to s 35(4):

  • reproduction of the work for the purpose of inclusion in a book; or
  • reproduction of the work in the form of a hard copy facsimile made from a paper edition of an issue of the newspaper.

For these purposes, the journalist will not need permission from their employer. A facsimile copy is generally an exact copy made, for example, by a photocopying or fax machine.

The proprietor of the newspaper or magazine (the journalist's employer) is the owner of copyright for any other purpose. 95)

Commissioned Artistic Works

In the following cases, the person who commissioned the work, rather than the person who created the works, owns copyright in it: 96)

  • the taking of a photograph for a “private or domestic” purpose;
  • the painting or drawing of a portrait; and
  • the making of an engraving. 97)

Copyright in all other commissioned works, such as works commissioned for a commercial purposes, vests in the author. Recall, however, that copyright ownership can always be modified by agreement.

With respect to the taking of photographs, “private or domestic purpose” is defined in s 35(7) to include a portrait of family members, a wedding party or children.

Under s 35(5), if the person who commissions the relevant artistic works makes known to the author, either expressly or impliedly at the time of making the agreement commissioning the work, the purpose for which the work is required, then the author can restrain the person from using the work for other purposes.

Blackwell v Wadsworth 98)

The plaintiff artist was commissioned to make a drawing of a hotel. Two years later, ads in the paper for the sale of the hotel included a reproduction of the drawing. The plaintiff sued for infringement of copyright.

Held, the defendants had infringed copyright – there was no implied license for the defendants to reproduce the work.

Joint Ownership

One or more people can own copyright in a work jointly. They may become joint owners by written agreement or by virtue of how the work was created.

Section 10 of the Act defines a “work of joint authorship” as “a work that has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or the contributions of the other authors“.

This definition does not mean that all jointly produced works result in joint authorship. This will only be the case where each author's contribution cannot be separated from the other. Where each person supplies a distinct part of the work, then they will not own copyright in the work as a whole jointly. Instead, they will own copyright separately in their respective parts. Supplying ideas for a work does not give rise to a claim of joint authorship over the expression.

Donoghue v Allied Newspapers Ltd 99)

Held, where a person communicates an idea to an author and the author clothes the idea in the form of an article or articles, the copyright is owned by the author.

Joint authors take ownership as tenants in common – each has title to sue and can sue each other.100)

Video overview by Olivia Wright on Tenants in Common and Copyright.

Sound Recordings

Ownership of copyright in sound recordings is governed by s 97 of the Act. This section vests ownership of a sound recording in the “maker” of the recording.

Section 22(3) provides that a sound recording, other than a sound recording of a live performance, shall be deemed to have been made at the time when the first record embodying the recording was produced. It also provides that the maker of the sound recording is the person who owned that record at that time. Usually, this will be the recording company.

For recordings of live performances, the sound recording is owned jointly by the person who made the recording and the performer/s who performed the performance. 101) This arrangement can be modified by contract, such as the performer's employment contract.

Pursuant to s 97, where a person commissions a sound recording for valuable consideration, then the person who commissioned the recording is the copyright owner, subject to any agreement to the contrary. 102)

Cinematographic Films

The first owner of copyright in a cinematograph film is the maker of the film. 103)

Section 22(4) of the Act provides that a maker of a film is the person who undertook the necessary arrangements for the production of the first copy of the film. This person will generally be the producer of the film.

Pursuant to s 98(3), where a film is commissioned under an agreement for valuable consideration, then the person who commissioned the film will be the owner of copyright in the film. This rule can be altered by agreement.

Directors are given very limited economic rights with respect to cinematograph films. Under s 98(4)-(6), where a director is not an employee, then he or she is also a copyright owner in the film but only with respect to the right to include the film in a retransmission of a free-to-air broadcast.

Television and Sound Broadcasts

Under s 99 of the Copyright Act, the maker of a television broadcast or sound broadcast is the owner of any copyright subsisting in the broadcast.

Section 22(5) provides that a broadcast is taken to have been made by the person who provided the broadcasting service by which the broadcast was delivered.

Published Editions of Works

The owner of copyright in a published edition is the publisher. 104)

Proof of Ownership

In a copyright case, unless ownership is put in issue, copyright is presumed to subsist and the plaintiff is presumed to be the owner. 105)

Labels or marks indicating the year and place of the publication or the making of a work are admissible as prima facie evidence of copyright subsistence 106)

The name appearing on a work is presumed to be the author and first owner of the work.107) If s 127 does not apply, then the name of the publisher appearing on a work published in the last 70 years is presumed to be the owner. 108)

Section 132A applies these same presumptions with respect to the criminal provisions of the Copyright Act. The exception to this is found in s 132AM. This section also introduces new presumptions to recognise industry-specific labelling practices.

The term “crown copyright” refers to Government (or “Crown”) owned copyrights.

These include:

  • works made by or under the direction or control of the Crown; 109)
  • works first published by the Crown; 110) and
  • sound recording and films made by, or under the direction or control of the Crown. 111)

The duration of Crown copyright is 50 years.

The Copyright Law Review Committee (CLRC) recommended the abolition of special privileges for the Crown in their report, Crown Copyright (2005), but the Australian Government did not implement these recommendations.

Copyright Agency Limited v State of NSW 112)

In the case of Copyright Agency Limited v State of NSW the Copyright Tribunal heard a claim by the Copyright Agency Limited (CAL), whose members include surveyors, for orders under ss 183(5) and 183(A) of the Copyright Act 1968 (Cth) in respect of a number of surveyors' plans and the State of New South Wales' 'dealings' in respect of them. Following the determination of the Tribunal, questions of law were referred to the Full Federal Court.

Held, that the New South Wales Government did not own copyright in the surveyors' plans. The court stressed that, when considering the issue of Crown copyright, it is important to understand the relevant legislation under which the works are created and its history.

Finkelstein J on Crown copyright:

“As regards to work made by the Crown, we are necessarily dealing with a fiction. Generally for copyright purposes a work is made by its author. What s 176 contemplates is that, in certain circumstances, the act of the author in making a work is to be attributed to the Crown. An attribution of this kind is a concept well known in the law”.

Video overview by Kylie Pappalardo on Crown Copyright.

Copyright Assignments and Licences

Copyright is a personal property right. The interest conferred by copyright law is the exclusive rights to do acts comprised in the copyright. These rights can be assigned or licensed. An assignment of copyright is a transfer of ownership and interest in all, or some of the copyright. A license is a permission to do some of the acts comprised in copyright. Each of these will be considered in detail below.

Video overview by Nicolas Suzor on Copyright Assignments and Licences.

Assignments

An assignment is a transfer of copyright ownership from one person (the assignor) to another person (the assignee). Section 196(2) provides that an assignment may be limited in any way, including by the specific rights assigned (the copyright owner does not have to assign all of their copyright interests at once), jurisdiction, or a period of time. If the assignment is with respect to partial rights, the copyright owner splits the copyright into separate interests.

Section 196(1) of the Copyright Act 1968 provides that: “Copyright is personal property and […] is transmissible by assignment, by will and by devolution by operation of law”.

Section 197 provides that future copyright can be assigned. Future copyright refers to a copyright interest that will come into existence at a future time or at a future event. Where a future copyright interest is assigned, copyright will vest in the assignee when the work comes into existence (for example, copyright in a yet unwritten book).

For example, when musicians become members of the Australasian Performing Rights Association (APRA), they grant an assignment to APRA the performance rights in all their present and future musical works. This enables APRA to collect performing rights licence fees on the musicians' behalf.

An assignment must be in writing and signed by the assignor to be effective. 113)

When copyright is assigned, the assignee acquires full rights with respect to the copyright interest assigned - for example, they may licence the interest, assign it to someone else, or sue another person for copyright infringement. The assignor retains no special rights in relation to the work and may even be sued for infringement by the assignee.

Licences

A license is a permission to use copyright material in ways that would otherwise infringe. The license can be limited by contract.

Video overview by Kylie Pappalardo onCopyright Licences.

An exclusive license is “a licence in writing, signed by or on behalf of the owner or prospective owner of copyright, authorising the licensee, to the exclusion of all other persons, to do an act that … the owner of the copyright would, but for the licence, have the exclusive right to do”. 114) Exclusive licences give the licensee the power to sublicense and the title to sue for infringement. 115)

In the instance there is a non-exclusive licence, others may have rights to use or make use of the copyright work.

A license is the product. Where use of a product would necessarily infringe copyright (as in software), then it could be said that you are not paying for the product (i.e., CD), but the licence. You get some rights over the physical medium, but you do not have the full rights to make use of the works.

Often the licence is inside the box the software comes in – Shrinkwrap license. Or as a pre-requisite to a download – Clickwrap license.

Gratuitous licences may be revoked at any time. 116)

Implied licenses

Licenses can be implied from the circumstances. A newspaper editor has an implied licence to publish letters to the editor. This is always subject to directions to the contrary. An implied license also exists to use commissioned copyright material for the purposes contemplated. 117)

Beck v Montana Constructions Pty Ltd 118)

In the case of Beck v Montana Constructions Pty Ltd 119) a firm of architects was commissioned to draw plans for a block of units. When the owners sold the land they gave the purchaser the plans. The purchaser decided to build in accordance with the plans but not to retain the architect. The other architect who was retained produced plans which were a substantial reproduction of the first architect’s plans. The original architects sued the purchaser and its architect for infringement of the copyright in the sketch plans.

It was held that there was an implied licence in favour of the purchaser to use the plans in respect of the same land.

Creative Commons Licensing

Creative Commons (CC) is a non-profit organisation which created a public licensing suite. The licenses are free, easy-to-use copyright licenses that provide a simple and standardised way to give the public permission to share and use creative work. The idea of the CC licenses is to help people legally share their “knowledge and creativity to build a more equitable, accessible, and innovative world”. Creative Commons "What we do"
Creative Commons licensing can be applied by any person to their work, and can be taken advantage of by any person to use the licensed work (provided it is in accordance with the terms of the license).

There are four conditions that can be applied to a Creative Commons license.

Right Description
Attribution (BY) Licensees may copy, distribute, display and perform the work and make derivative works and remixes based on it only if they give the author or licensor the credits (attribution) in the manner specified by these.
Share-alike (SA) Licensees may distribute derivative works only under a license identical (“not more restrictive”) to the license that governs the original work.
Non-Commercial (NC) Licensees may copy, distribute, display, and perform the work and make derivative works and remixes based on it only for non-commercial purposes.
No Derivative Works (ND) Licensees may copy, distribute, display and perform only verbatim copies of the work, not derivative works and remixes based on it.

Video overview by Rachel Varshney onCreative Commons Licensing.

Statutory Licences

A statutory licence involves the copyright owner making the copyright work available for use (to a specific audience) without requiring permission. The copyright owner is then entitled to be compensated for the use of their work.

In December 2017 the statutory licensing scheme in Australia was simplified. The previous educational statutory licences in Parts VA and VB of the Copyright Act 1968 (Cth) was replaced by one simplified statutory licence. 120) The statutory licence will be discussed in more detail in Chapter 9 - Copyright Limitations and Exceptions.

Copyright Infringement

Copyright affords the copyright owner exclusive rights over their work. This means that the rights belong exclusively to the copyright owner and they may choose to exclude others from exercising the rights. The only people who can exercise one of the rights are: the right holder; a person who has the permission of the right holder; and anyone acting under a legal exception to copyright infringement.

Overview

The most common rights of copyright owners are:

Right to copy or reproduce

This includes photocopying, recording and scanning. However, for literary, artistic, musical and dramatic works, the right to reproduce is not limited to instances of just exact copying. It also covers instances of copying that produce something substantially, though not exactly, similar to the original work. The test for determining whether a work has been copied is to look not just at how much has been copied (quantity), but also the importance of what has been copied (quality).

Australian courts have said that quality will be more important than quantity. For example, it may be an infringement of copyright to copy two lines from a song, if those lines are the most memorable and important in the song, even though two lines are only a small quantitative part of the song.

Right to publish

Allows the work to be made available to the public for the first time.

Right to publicly perform

Allows the work to be performed in public either live or for recording (for example, so that it can be included as part of a film). This is the right that governs performances at concerts and theatres and in any public space. Right to ‘communicate to the public’

This is the right that allows the work to be electronically distributed through various mediums such as internet and broadcast. When a work is shared online, such as on a website or via peer-to-peer (p2p) file sharing, the communication right is used.

Right to adapt

Allows the work to be translated or adapted into a different form. For example, an adaption would include translating a literary work into another language, or writing a screenplay for a movie (a cinematographic work) based on a novel (a literary work). There is no right of adaptation for artistic works.

Right to use for economic gain either by selling or licensing

Allows the owner to either transfer (commonly known as “assign”) or license (give permission for) all or any one of their rights. Assignments and licences are often granted for monetary payment. In the case of an assignment, the rights transfer to the purchaser/new owner, and the creator is not left with any residual rights. In the case of a licence, the copyrighted material can be used for the purpose for which the licence is granted, while ownership continues to remain with the creator/owner.

The purpose of copyright is to protect and promote creativity. The law does not permit the copying of a copyrighted work without the permission of its owner or without a legal exception. Copying (or publishing, performing, or communicating) without permission or excuse is known as “infringement” of copyright. If a copyright is infringed either knowingly or unknowingly, the owner has a right to stop further use and/or claim compensation under the law.

Intent is not an element of copyright infringement, so it is possible to infringe copyright without intending to.

The Exclusive Rights

The exclusive rights of copyright holders are set out in the table below:

Part III Works Reproduce Publish Perform in Public Communicate to the public (generally electronic, s 10(1)) Adapt (defined s 10)
Literary works s 31(1)(a) s 31(1)(a) s 31(1)(a) s 31(1)(a) s 31(1)(a)
Dramatic works s 31(1)(a) s 31(1)(a) s 31(1)(a) s 31(1)(a) s 31(1)(a)
Musical works s 31(1)(a) s 31(1)(a) s 31(1)(a) s 31(1)(a) s 31(1)(a)
Artistic works s 31(1)(b) s 31(1)(b) s 31(1)(b)
Part IV Subject Matter (other than works) Copy Play in public Communicate Commercial rentals
Sound recordings s 85 Heard in public: s 85 Communicate the recording to the public: s 85 Right to enter into: s 85
Cinematograph films s 86 Seen/heard in public: s 86 Communicate the film to the public s 86
Broadcasts make a film or sound recording of the broadcast, or a copy of such a film or recording: s 87 Communicate or rebroadcast to the public: s 87
Published editions Facsimiled copy: s 88

* See ss 31(1)(c) and (d) and 31(4)-(7) for specific rights for commercial rental arrangements for Part III works.The exclusive rights of copyright owners are outlined in the below table.

Unauthorised use of the copyright owner's work may amount to infringement.

Video overview by Kylie Pappalardo onExclusive Rights in Copyright.

Part III Original works

It is an infringement of copyright to do or authorise any of the exclusive rights comprised in copyright without the permission of the copyright owner. 121)

  • The exclusive rights are set out in s 31(1):
    • For literary, dramatic and musical works: 122)
      • to reproduce the work in a material form;
      • to publish the work;
      • to perform the work in public;
      • to communicate the work to the public;
      • to make an adaptation of the work.
    • For artistic works: 123)
      • to reproduce the work in a material form;
      • to publish the work;
      • to communicate the work to the public.

Infringement - Reproduce the Work in a Material Form

There is an exclusive right to reproduce the work in material form. 124) Reproduction means copying and does not include cases where the author or compiler produces a substantially similar result by independent work without copying 125)

The notion of reproduction involves two elements 126)

  • 1. Causal connection – the defendant’s work must be derived directly or indirectly from the plaintiff’s copyright work (that is, there must be some causal connection between the two works); and
  • 2. Objective similarity – there must be a sufficient degree of objective similarity between the plaintiff’s and the defendant’s work (that is, the defendant must have produced a work which closely resembles the plaintiff's work).

Video overview by Kylie Pappalardo onInfringement by Reproduction of Works.

Deemed Reproductions

A literary, dramatic or musical work is deemed to have been reproduced in a material form if a sound recording or film is made of the work 127) Copyright in an artistic work in two-dimensional form will be infringed by its reproduction in a three dimensional form and vice versa. 128)

A lot of cases of copyright infringement concern project homes. When dealing with a work, such as a project home design, which is by its nature very simple and commonplace, it will be more difficult to prove infringement.

  • Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd 129)
  • Ownit Homes Pty Ltd v D. and F. Mancuso Investments Pty Ltd 130)

The simpler and more commonplace the design is, the more closely the defendant’s plans must follow the plaintiff’s. 131)

The copyright in a building or a model of a building is not infringed by the making of a painting, drawing, engraving or photograph of the building or model or by the inclusion of the building or model in a cinematograph film or in a television broadcast. 132)

Element 1 - Causal Connection

An infringement may be indirect. 133) In order to prove a causal link it will generally be a requirement that the plaintiff show the defendant had access to the plaintiff's work. 134)

This will not always be the case, because causal links may be established indirectly. Copyright could exist in the artistic work of a dress design drawing. A person may infringe this copyright without access to the artistic work. The could do so by copying the dress fashioned from the design drawing. 135)
Subconscious copying is sufficient provided there is evidence of copying. 136)

Francis Day & Hunter v. Bron137)

In the case of Francis Day & Hunter v. Bron the plaintiff sued alleging the defendant’s infringed copyright in a musical work. * As a question of law, it is possible to infringe by subconscious copying. * Held, similarities probably coincidental, and there was no evidence that the defendant had copied or heard the song. The Plaintiff was unable to infer that there was sufficient knowledge and memory for conscious or subconscious copying.

Video overview by Olivia Steele onSubconscious Copying in _Francis Day & Hunter v Bron_.

Video overview by John Herbet onFrancis Day & Hunter v Bron.

Element 2 - Objective Similarity

The test for reproduction requires both a causal connection and objective similarity. Literal copying of expressive elements is relatively straightforward. The courts have a difficult task in determining whether a copier has taken copyright expression or the underlying unprotected ideas. It is difficult to express a general rule as to when copying of non-literal elements will infringe.

Video overview by Greg Travers onObjective Similarity.

Video overview by Jack Howe onOriginality.

Zeccola v Universal City Studios Inc 138)

In the case of Zeccola v Universal City Studios Inc Universal owned copyright in film Jaws, screenplay Jaws, and novel Jaws. Zeccola made a film about man eating sharks called Great White. Universal sued for copyright infringement.
The court held that Zeccola had not infringed copyright in the “film” as there was no copy of the visual images.

As to whether Zeccola had infringed copyright in the novel and screenplay, the primary judge watched both films (“with some degree of fortitude”) and held there was such a marked degree of similarity between the two films that there was an inescapable inference of copying.
There is no copyright in the central idea: the idea of a shark terrorising a community cannot be protected. However, in this case, there was significant overlap in situations, characters, and location (even though the dialogue was different). The Full Federal Court wasn’t as certain, but did not find fault with the primary judge’s opinion.

Telstra Corp Ltd v Royal & Sun Alliance Insurance Ltd 139)

In the case of Telstra Corp Ltd v Royal & Sun Alliance Insurance Ltd Shannons car insurance ran a parody advertisement appropriating the format, story, and character of Telstra's Goggomobil advertisements.

It was held that there was no infringement of the script or dramatic works.

"The scripts for the two advertisements bear little resemblance to each other. The only expressions of any significance common to both scripts are those relating to the Goggomobil. Not surprisingly, there is a similar lack of resemblance between the script for the first Goggomobil advertisement and the film of the first Shannons advertisement. While the resemblances in the scripts and films relating to the Goggomobil are significant, the copying that has occurred relates more to the concept or theme employed in relation to the Goggomobil than to the expression of that concept or theme. In my view the script for and film constituting the first Shannons advertisement fall well short of constituting a reproduction of a substantial part of the script for the first Goggomobil advertisement. Whether viewed qualitatively or quantitatively the lack of resemblance to which I have referred is such that I am satisfied there is no substance in the claim of infringement based on the script of the first Goggomobil advertisement."

The court found that:

"A comparison between the series of "dramatic" events comprising both advertisements results in the same outcome. ... The common concepts or themes feature a memorable character ("Mr Goggomobil"), an unusual and distinctive motor vehicle (a Goggomobil), the use of the telephone to help solve an obscure problem in relation to that vehicle and the telling of that story in a humorous manner. However, those resemblances relate to the ideas and concepts copied rather than to their expression**, and are not sufficient to constitute the "reproduction" of a substantial part of the first Goggomobil advertisement. Plainly, the first Shannons advertisement conjures up the first Goggomobil advertisement and its ideas and concepts but does not reproduce a substantial part of the substance or expression of the "dramatic" events comprising that advertisement. Put another way, there has been an "evoking or conjuring up of recollection" of the first Telstra advertisement, but there has not been a taking of a "substantial portion of the applicant's work by the respondent[s]".

Baigent v Random House Group Ltd 140))

Authors and publishers of “The Holy Blood and the Holy Grail” alleged that Dan Brown had copied the “central theme” of the book in “The Da Vinci Code”. The “central theme” was argued to be a series of claims including that Jesus was of royal blood and Mary Magdalene carried his child.

It was held that Brown had taken ideas, but not expression from HBHG. Therefore, there could be no copyright infringement.

EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd 141)

In the case of EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd it was held that the flute riff in Men at Work's song “Down Under” reproduced two bars of the old song “Kookaburra sits in the old gum tree”

"There are limited features of similarity between Kookaburra and Down Under in terms of key, harmony, tempo and rhythm. Kookaburra was written in a major key. The relevant bars in the Impugned Recordings appear as part of an overall work in a minor key. The harmony in Kookaburra arises both from its character as a round, and the implied harmonies suggested by casting its melody in a specific key. The versions of Down Under in the Impugned Recordings have a highly distinctive harmony, arising from the voice of Mr Hay, singing very different lyrics, and the mix of instruments. While, as a result, the bars in question in the Impugned Recordings may, in some sense, sound different from Kookaburra, the melody is nevertheless clearly recognisable. Dr Ford described the change in underlying harmony as “a bit like shining a different light" on the relevant melodic phrase. Although, as the primary judge observed, that might differentiate the listener’s impressions of the same notes in the two works, I do not consider that it meaningfully detracts from the objective similarity between the works”. ([90])

Infringement - Publish the Work

There is an exclusive right to publish the work 142). Publish means to make available to the public in Australia something which has not previously been made available. 143) The definitions of published in s 29(1)(a) do not control the meaning of the words 'to publish' in s 31(1)(a)(ii) for the purposes of infringement. This is the right of first publication.

It is not an infringement of the right to republish something that has already been made public. It may however, be an infringement of the reproduction right. It is also an infringement to communicate the work without permission or legal excuse. This will be discussed below in the 'Infringement - Communicate to the Public' section of this chapter.

Video overview by Kylie Pappalardo onDirect Infringement.

Infringement - Perform the Work in Public

There is an exclusive right to perform the work in public. 144) A performance of a work given to members of the public is a performance “in public” unless it is shown to be domestic in character.

Video overview by Tom Gardner onTelstra v APRA.

Infringement - Communicate to the Public

There is an exclusive right to communicate the work to the public. 145) This right was introduced by the Copyright Amendment (Digital Agenda) Act 2000 (Cth), replacing and extending the former “broadcasting” right.

“Communicate” is defined as meaning to “make available online or electronically transmit (whether over a path, or a combination of paths, provided by a material substance or otherwise) a work or other subject-matter”. 146) Communication other than broadcast is taken to have been made by the person responsible for determining the content of the communication. 147)

This right includes cable transmissions and making available of copyright material online. For example, uploading material onto the Internet.

Infringement - Make an Adaptation of the Work

There is an exclusive right to make an adaptation of the work. 148) Adaptation includes:149)

  • the dramatisation of a non-dramatic literary work;
  • a translation;
  • a pictorial version of a literary work;
  • an arrangement of a musical work.

Direct infringement of Part IV subject matter

Where Part IV copyright is concerned, direct infringement is a much more restricted concept than in relation to works. This is because the exclusive right granted for Part IV subject matter in sound recordings and films is the right to make a copy not the right of reproduction. In practice, this means that only actual copies in the same form will infringe copyright. 150)
Video overview by Kylie Pappalardo onDirect infringement of Part IV subject matter.

Video overview by Thomas Ryan onThe Difference Between 'Copy' and 'Reproduce'.

Sound Recordings

Sound recordings are protected under s 85 of the Act. This section affords the copyright owner the exclusive rights to:

  • make a copy of the recording;
  • cause the recording to be heard in public;
  • communicate the record to the public; and
  • enter into commercial rental agreements. 151)

This is one of the few right that allows the owner to control rental agreements (the other is computer programs).

This right allows owners to control the renting of music CDs but not films.

Exclusive right to make a copy of the recording:152)

“Copy” means “a record embodying a sound recording …”. 153)

Making a “sound alike” version of a popular song does not infringe copyright in the sound recording, although it may in the underlying works (the lyrics and music).

CBS Records Australia v Telmak Teleproducts (Aust) Pty Ltd154)

In the case of CBS Records Australia v Telmak Teleproducts (Aust) Pty Ltd, Telmak produced recordings and compilation of chart hits by cover bands. CBS, who owned the sound recording copyright, sued for infringement of sound recording copyright.

It was held that copyright only protects the actual embodiment of the very sounds on the original record.

Cinematographic Films

Pursuant to s 86 of the Act, films are provided copyright protection. Copyright owners of films have exclusive rights to: 155)

  • make a copy of the film;
  • cause the film to be seen/heard in public;
  • communicate the film to the public.

Australian Video Retailers Association Ltd v Warner Home Video Pty Ltd 156)

In the case of Australian Video Retailers Association Ltd v Warner Video Pty Ltd Warner Home Video argued that DVD movies are also computer programs. They argued this because there are no commercial rental right in films, but there are in computer programs, 157)

It was held that the commands which controlled the flow of the DVD were computer programs, but that the audiovisual content was not part of the program. Accordingly, when a video store hires out a movie, the essential object of the rental is not the computer program, but the film.

Although computer programs can be “films”, films do not suddenly become programs when put on a DVD.

Television and Sound Broadcasts

Pursuant to s 87 of the Act television and sound broadcasts are protected. This section afford the copyright owner the exclusive right to: 158)

  • make a film of a television broadcast;
  • make a sound recording of a broadcast; and
  • re-broadcast or communicate to the public.

Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (“The Panel”) 159)

In the case of Network Ten Pty Ltd v TCN Channel Nine Pty Ltd Ten’s show broadcast clips taken from other networks. Nine sued under right to re-broadcast.

The Full Federal Court held that any unauthorised rebroadcasting of a broadcast would be an infringement of copyright (subject to any defence of fair dealing that Ten might have had).

The case was appealed to the High Court. It was held that copyright is only infringed if you rebroadcast the program, or a substantial part of the program. Otherwise broadcast makers would get much more protection than other copyright owners.

Published Editions of Works

Section 88 of the Act protects published editions of works by providing the copyright owner the exclusive right to make a facsimile copy of a published edition of one or more literary, dramatic, musical, or artistic works. 160)

Nationwide News Pty Ltd v Copyright Agency Limited 161)

The appellants owned the majority of Australian newspapers and a significant proportion of magazines. The respondent, Copyright Agency Limited (CAL), was a collecting society representing copyright owners of literary, dramatic and artistic works. Separate from its statutory functions as a collecting society, CAL entered into voluntary licenses with educational institutions for the copying of articles from newspapers and magazines, passing royalties back to the authors. The appellants claimed that this infringed their rights in the published edition.

It was held that the newspaper and magazine owners had rights to published editions, but that infringement must copy a substantial part of the published edition as a whole. More relevant when the aim of copying is to utilise the “typography, layout or presentation of the published edition”. As the intention was to copy the articles (which are owned by the authors), and not the presentation, there was no infringement.

Substantial Part

An infringing act need not be done in relation to the whole of the work or other subject-matter. It is sufficient if it is done in relation to a substantial part of the work. 162)

Video overview by Kylie Pappalardo on Substantial Part.

“Substantial” is a question of fact to determined in the circumstances – requires a consideration of the quality of the work taken in relation to the work as a whole.

Quality is the most important factor, not quantity:

“Whether a part is substantial must be decided by its quality rather than its quantity. The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected”. 163)

Folsom v Marsh 164)

"It is certainly not necessary, to constitute an invasion of copyright, that the whole of the work should be copied, or even a large portion of it, in form or in substance. If so much is taken, that the value of the original is sensibly diminished, or the labors of the original author are substantially to an injurious extent appropriated by another, that is sufficient, in point of law, to constitute a piracy pro tanto … Neither does it necessarily depend upon the quantity taken … [i]t is often affected by other considerations, the value of the materials taken, and the importance of it to the sale of the original work … In short, we must often, in deciding questions of this sort, look to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work."

Substantial part is assessed in respect to the work as a whole 165) and by reference to originality of the part taken.166)

IceTV Pty Limited v Nine Network Australia Pty Limited 167)

In the High Court Case of IceTV Pty Limited v Nine Network Australia Pty Limited Channel 9 created a Weekly Schedule of television programmes to be broadcast each week. They alleged that each Weekly Schedule was a compilation, and therefore a literary work under the* Copyright Act 1968*, and that IceTV had infringed copyright by taking part of the time and title information from the Aggregated Guides (guides produced by third party Aggregators, authorised by Nine and to whom Nine provides the Weekly Schedule) and including it in their own (electronic) guide, the “IceGuide”. Nine alleged that this constituted a reproduction of a substantial part of the copyright work. IceTV denied that they had reproduced in a material form a substantial part of any Weekly Schedule and denied that reproduction from any Aggregated Guide was a reproduction of any Weekly Schedule.

“… in order to assess whether material copied is a substantial part of an original literary work, it is necessary to consider not only the extent of what is copied: the quality of what is copied is critical”. (French CJ, Crennan and Kiefel JJ)

It was held that there is no infringement when unprotected facts are taken, or when expression whose form is dictated by the facts is copied.

Time and title information lacked the requisite originality: “… the expression of the time and title information, in respect of each programme, is not a form of expression which requires particular mental effort or exertion. The way in which the information can be conveyed is very limited. Expressing a title of a programme to be broadcast merely requires knowledge of the title, generally bestowed by the producer of the programme rather than by a broadcaster of it. Expressing the time at which a programme is broadcast, for public consumption, can only practically be done in words or figures relating to a 12 or 24-hour time cycle for a day”. (French CJ, Crennan and Kiefel JJ)

"in assessing the quality of the time and title information, as components of the Weekly Schedule, baldly stated matters of fact or intention are inseparable from and co-extensive with their expression. It is difficult to discern the expression of thought in statements of which programmes will be broadcast and when this will occur. If the facts be divorced from the other elements constituting the compilation in suit, as is the case with the use by IceTV of the time and title information, then it is difficult to treat the IceGuide as the reproduction of a substantial part of the Weekly Schedule in the qualitative sense required by the case law". ( Gummow, Hayne, Heydon JJ)

Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (“The Panel”)

Substantiality is a question of fact and degree.

"Questions of quality … as well as quantity arise both in respect of Pt IV copyrights and those copyrights in original works to which Pt III applies." (McHugh ACJ, Gummow and Hayne JJ) "Because substantiality is a question of fact, there is no precise test. A number of rough guides were used in* The Panel*: is it an 'essential part'? A 'highlight'? The 'heart' of the copyright work? A particularly 'memorable' part? "an important ingredient"? "central to the programme in which it appeared"?

Compared segments which 'insignificant' or 'trivial, inconsequential or insignificant'

Always a matter of fact and degree!

Examples: 168)

The Inaugural Allan Border Medal Dinner: Ten copied 10 seconds of the programme.

"The programme centred upon the dinner and presentation of the inaugural Allan Border Medal for the Australian cricket player of the year. The extract was of Glen McGrath’s reaction to the announcement that he was the winner of the award, his displayed emotion and the congratulations from his surrounding team mates. The cameras were trained on the winner to capture that moment. The cameras then followed Mr McGrath as he moved towards the stage. The excerpt was plainly a material and important part of the programme. The evidence of Mr Burns was that the announcement of Glen McGrath as the Australian cricketer of the year was 'the highlight of the dinner'". (Finkelstein J)


"this Panel Segment takes a portion of a live Nine broadcast during which a number of awards are presented. The particular segment re-broadcast shows the passage of the winner of the inaugural Allan Border medal, Mr Glen McGrath, from his seat to the stage. The Panel re-broadcast 10 seconds of a source work that was 2 hours 11 minutes 44 seconds in length. The portion taken does not include any critical moments or highlights of the original broadcast such as Mr McGrath receiving the award or giving his acceptance speech. The material used by the Panel is only incidental to the source broadcast, and the part taken is trivial, inconsequential or insignificant in terms of the source broadcast". (Hely J)

Wide World of Sports (Grand Final Celebration/Glen Lazarus cartwheel): Ten copied eight seconds of the programme.

"Wide World of Sports (Grand Final Celebration/Glen Lazarus cartwheel): Ten copied eight seconds of the programme. The footage of the Glen Lazarus cartwheel was, on any view, a "highlight". Mr Lazarus was a prop (affectionately known as "the brick with eyes"). He was playing his very last game of rugby league and was able to celebrate it with a win in the 1999 grand final". (Finkelstein J)

"this Panel Segment takes a portion of Nine’s live broadcast of the National Rugby League grand final. The particular portion taken features one of the players, Mr Glen Lazarus, performing a cartwheel as part of the post-match celebrations. He was not the only player to do so, and the footage taken does not show that there were other players following suit doing cartwheels of their own. The part taken is fleeting in character, and is not in any sense a highlight of the broadcast. Even if it be accepted that the original broadcast had as its subject matter both the grand final itself as well as the post-match presentations, the footage taken was only incidental to the source broadcast, and was trivial, inconsequential or insignificant in terms of that broadcast". (Hely J)

The Today Show (child yawning): Ten copied nine seconds of the programme.

"The footage rebroadcast involved part of an interview by Richard Wilkins with Alex Breden, and his mother. Alex was a child celebrity who featured on the HBA health insurance advertisements. The extract showed Alex yawning while being interviewed. It is a memorable part of the interview". (Finkelstein J) "The particular part taken is nine seconds in length during which a child is shown yawning in an interview with the presenter, Mr Richard Wilkins. The part taken is fleeting in nature and on the periphery of the original broadcast, making little, if any, contribution to the subject matter of that broadcast. The footage taken is only incidental to the source broadcast, and is trivial, inconsequential or insignificant in terms of that broadcast". (Hely J)

Not a substantial part:

"There has been no infringement by taking extracts from the following programmes: A Current Affair (brothel masquerading as introduction agency); The Today Show (Boris Yeltsin); The Crocodile Hunter (scuba diving); The Today Show (Prasad interview); and Nightline (Kevin Gosper interview). In each case the extracts were very short, but as I have previously said quantity does not dictate the answer. I have found that these extracts have not infringed Nine’s copyright because the extracts were insignificant (de minimis is another description) in the context of Nine’s programme. ... Moreover, as the judge pointed out, the taking of these extracts caused absolutely no injury to Nine’s interests". (Finkelstein J)

Ten appealed to the High Court, but special leave was denied. Justices Kirby and McHugh reiterated that the identification of whether a substantial part has been taken is a question of “fact and degree”.

EMI Songs Australia Pty Limited v Larrikin Music Publishing Pty Limited 169)

A two-bar flute riff in Men at Work's Down Under was held to be a substantial part of the old tune “Kookaburra sits in the old gum tree”.

The “the reproduction of the melody of Kookaburra … is a reproduction of that which constitutes Kookaburra as an original work, or gives it its creativity”.

"It is ... true that there is only a limited similarity of notes. Only five of the ninety-three bars in the ... Recording contain notes in the flute phrases that are similar to any part of Kookaburra. … However, in assessing objective similarity, quantity is secondary to quality. When one compares the relevant bars … there is a very close similarity, if not a complete identity. While the appearances of phrases … may be sparse in the overall context of the Impugned Recordings, the flute is the dominant musical element when the phrases do appear". ([93], Emmett J)

The piece taken was qualitatively important to the original – it could be described as its 'signature', although that description is not determinative.

Indirect Infringement

The main forms of indirect infringement involve infringing copies. These include importing for the purposes of trade without the license of the copyright owner; 170) selling or hiring out or otherwise made the subject of trade;171) and renting.

Video overview by Kylie Pappalardo on Indirect Infringement of Copyright.

As a general rule it is necessary to establish that a defendant knew or ought to have reasonably known that the article in which they were dealing had been made in breach of copyright, or in the case of an imported article, that it would have been an infringing copy if it had been made in Australia by the importer. 172)

Entry into Commercial Rental Arrangement

There is an exclusive right to enter into a commercial rental arrangement, but is limited to:

  • a sound recording (for example, a CD or tape); 173)
  • a literary, musical or dramatic work reproduced in sound recording; 174) and
  • a computer program. 175)

Importation of Infringing Articles

It is an infringement of copyright in any work in which copyright subsists to import an article into Australia for sale, hire or other commercial purpose, without the license of the copyright owner. This is on the basis that the importer knew, or ought reasonably to have known, that if the article had been made by the importer in Australia, it would have constituted an infringement of copyright. 176)

Milpurrurru v Indofurn Pty Ltd 177)

A company imported carpets from Vietnam which reproduced Aboriginal artworks made by the applicant.

Held, the importing company had infringed the applicant’s copyright - managing director either knew or should have known (one director’s knowledge was sufficient).

Parallel Importation

Parallel importation is where an overseas supplier who has legally acquired copies of the works, imports these works into Australia without a license of the copyright holder.
Video overview by Jordan Gregory onSection 44C and Parallel Importation.

However, parallel importation of books is now allowed in certain circumstances.178) These circumstances include:

  • When book is first published outside Australia and not published in Australia within 30 days;
  • Where the copyright owner is unable to meet an order for supply of the book within 90 days;
  • With respect to an order for a single copy for non-commercial purposes; and
  • An order for multiple copies from a non-profit library.
  • Note also that there have been other relaxations on parallel importation:
    • Labels – provisions of the Copyright Amendment Act (No. 1) 1998 (Cth) now prevent an overseas copyright owner controlling the distribution of goods in Australia by reliance on copyright in, for example, the label on a product. 179)
      • See definition of “accessory” and “non-infringing accessory”. 180)
  • New provisions came into operation 18 months after 30 July 1998 – that is 1 February 2000.
    • Sound recordings – the Copyright Amendment Act (No. 2) 1998 effectively removed the restriction on the parallel importation of legitimate “sound recordings” as from 30 July 1998. 181)
  • Amendments dealing with the seizure of imported copies of copyright material make it easier for copyright owners to use the Notice of Objection scheme and are consistent with the Trade Marks Notice of Objection scheme under the Trade Marks Amendment Act 2006.

Interstate Parcel Express Co Pty Ltd v Time-Life International (Nederlands) B.V.

Time Inc., which owned copyright in Australia and US, granted to Time-Life an exclusive license to distribute the books in countries outside US and Canada. Rather than buy from Time-Life Angus and Robertson imported copies cheaply from the US. Time-Life sought an injunction to restrain sale of the books.

Held, infringement by importation.

Sale of Infringing Articles

Copyright in a work is infringed by a person who sells or hires an article if the person knew, or ought reasonably to have known, that the making of the article constituted an infringement of the copyright or, in the case of an imported article, would, if the article had been made in Australia by the importer, have constituted such an infringement. 182)

Raben Footwear Pty Ltd v Polygram Records Inc 183)

Raben imported 1000 copies of a Cher CD from Germany. Polygram sued for infringement of copyright. Raben argued that he had no knowledge – Raben had asked the supplier about licensing for the CDs and received a guarded reply.

Held, Raben had infringed copyright – supplier’s response ought reasonably have led the defendant to assume the true position and therefore reasonably knew that making the CD in Australia would have constituted an infringement of copyright.

Copyright Limitations and Exceptions

Copyright law does not permit unauthorized use of copyrighted works. However, owners of copyright do not get total control over how their works can be reused. There are exceptions to copyright infringment that are designed to promote education, critique, and creativity. Under Australian law, the use of copyrighted works without the permission of the owner is permitted if the use falls under the “fair dealing” exceptions.

To fall within a fair dealing exception, the use must be for one of the stated purposes and it must be fair. The acceptable purposes are:

  • Research or study
  • Criticism or review
  • Parody or satire
  • Reporting news
  • Enabling access to material by a person with disability; or
  • Professional advice by a lawyer, patent or trademarks attorney.

Limitations, exceptions, or users' rights?

The exclusive rights of copyright holders are extensive and wide reaching. As a result of these rights, there is a need for copyright law to ensure that a balance of interests is reached between private interests and public interests. This balance seeks to ensure creators are encouraged and provided incentives to create innovative materials, on the one hand, and the interests of users of copyright materials, on the other hand.

The Copyright Law Reform Committee (CLRC), Copyright and Contract (2002) states:

  • The exclusive rights of copyright are partly defined by the exceptions, in that the rights only exist to the extent that they are not qualified by the exceptions.
  • The rights conferred on copyright owners are subject to competing interests which require the delineation of exceptions and limitations to the exclusive rights.

Statutory exceptions include:

  • Fair dealing.
  • Specific royalty-free exceptions.
  • Statutory licenses.

Each of these will be discussed below.

Fair Dealing

The Copyright Act 1968 (Cth) has statutory defences, situations in which the use of copyright works will not amount to copyright infringement. These are known as the fair dealing provisions. A fair dealing with a Pt III work or adaptation or a Pt IV audio-visual item (that is, a sound recording, film, sound broadcast or television broadcast) does not infringe copyright if done for one (or more) of the purposes as outlined in the table below.

Defence Subject Matter Section of the Act
Research or Study Works and audio-visual items Sections 40 and 103C
Criticism or Review Works and audio-visual items Sections 41 and 103A
Parody or Satire Works and audio-visual items Sections 41A and 103AA
Reporting the News Works and audio-visual items Sections 42 and 103B
Disability access Works and audio-visual items Sections 113E and 113F
Preservation, research, and administrationWorks and audio-visual items Sections 113G-113M
Judicial proceedings or the giving of professional legal advice Works Sections 43 and 104

The fair dealing provisions intend to mark out areas of free use of copyright materials. These provisions are in the public interest and provide a complete defence to an infringement action. These defences are commonly referred to as exceptions but are more accurately conceptualised as establishing limits to the scope of the bundle of exclusive rights. The fair dealing provisions apply to all categories of works and subject matter and to each of the exclusive rights but are confined to the doing of acts for four specific purposes. They also permit royalty-free use of a substantial part or the whole of the work or subject matter without the authorisation of the copyright owner.

Video overview of Dan Winters onThe Difference Between Fair Use and Fair Dealing.

What is 'Fair'?

‘Fairness’ will be depend on the circumstances and context of the use - there is no set rule for what makes a use fair. However, you should consider your use holistically, and particularly consider:

  • How much of the existing work are you copying?
  • How is your use likely to impact the market for the original work? (Are consumers likely to purchase your product instead of the original?)
  • Do you have an option to obtain permission to use the work within a reasonable time and cost?

These questions will not determine fairness, but they can help you reach a decision by weighing up some relevant considerations.

A use will not be unfair simply because you might have been able to get a licence (permission), but a court may consider licensing options when considering all of the circumstances. For example, a copyright owner is unlikely to give permission for a parody or satire that makes fun of them or their work, which is why we have a fair dealing exception for this purpose.

How much copying is “too much” for fair dealing?

There is no hard and fast rule for how much copying or use is too much under the fair dealing exceptions.

How much of the original work you use may be relevant to fairness, but this depends of the context and the type of work you are using. It is far more reasonable to use the whole of an artistic work, like a picture, for example, than it is to use the whole of a literary work, like a book.

Have you heard of the 10% rule? This ‘rule’ is mostly incorrect.

The only fair dealing exception with clear guidelines is the fair dealing for research or study. This exception states that if a work is available in hard copy form (e.g. a book), then up to 10% of the number of pages will be fair, and if the work is published electronically (e.g. an online journal article), then up to 10% of the number of words will be fair. In either case, if the work is divided into chapters, then generally it will be fair to copy one chapter of the work for research or study. But the 10% assessment only applies for research or study, not fair dealing generally.

It is also important to know that the fair dealing for research or study operates for students, but not teachers. You can copy work for your own study, but not for someone else’s. You generally cannot copy works for the purpose of distributing to other people in order to teach them or for their research and study.

Does “fair use” and “fair dealing” mean the same thing?

No, they are NOT the same. “Fair use” is a concept under the laws of the United States whereas the Australian law only recognises “fair dealing”. These are different concepts, with different scope and application.

As both provide exceptions to copyright use, it's easy to confuse the two. You may come across interchangeable use of “fair dealing” and “fair use” in some places. However, “fair use” provisions are broader in scope and DO NOT apply in Australia.

The difference is this: in the US, the courts only need to consider whether the use is fair. By contrast, in Australia, the courts need to consider whether the use is fair AND ensure that the use falls within one of the specified fair dealing purposes.

What purposes are permitted?

Research or Study

“Research” and “study” are not defined by the Act but are given their dictionary meaning. “Research” means “a diligent and systematic enquiry or investigation into a subject in order to discover facts or principles”.

Video overview by Nicolas Suzor on Research or Study.

The leading case of De Garis v Neville Jeffress Pidler Pty Ltd considered the meaning of the terms “research or study”.

De Garis v Neville Jeffress Pidler Pty Ltd184)

In the case of De Garis v Neville Jeffress Pidler Pty Ltd the court found that the respondent, a press clipping and media research bureau, who supplied photocopies of published material in return for a fee was not “research” or “study” in the terms of s 40.

In determining whether a dealing is for the purpose of “research or study”, the relevant purpose is that of the person making the dealing, not the purpose to which the reproduction or adaptation is ultimately put.

Held, the purpose of the respondent’s press clipping service was not to conduct research, even though research may have been the purpose of its customers.

Several non-exclusive factors may be taken into account in determining whether a dealing for research or study purposes is fair.
In the case of Part III works and adaptations, these factors apply only where the dealing is a reproduction of the whole or part of the work or adaptation, whereas for Part IV audio-visual items, the factors are relevant to the exercise of any of the exclusive rights.

The factors are: 185)

  • the purpose and character of the dealing;
  • the nature of the work or audio-visual item;
  • the possibility of obtaining the work or audio-visual item within a reasonable time at an ordinary commercial price;
  • the effect of the dealing upon the potential market for, or value of, the work or audio-visual item;
  • where only part of a Pt III work, adaptation or audio-visual item is reproduced or copied, the amount and substantiality of the part copied in relation to the whole item.

The Act provides more specific guidelines on the reproduction of literary, dramatic and musical works and adaptations (but these do not apply to audio-visual items):

  • If the work or adaptation is an article in a periodical, it is a fair dealing for research or study to copy the whole of the article. 186)
  • It is not a fair dealing to reproduce the whole or part of an article in a periodical if another article in the publication, dealing with a different subject matter is also reproduced. 187)

In other cases, it is deemed to be a fair dealing to reproduce only a “reasonable portion” of the work. 188) Where a literary, dramatic or musical work (other than a computer program) is contained in a published edition of 10 pages or more, a reasonable portion is up to 10% in the aggregate of the number of pages in the edition. 189) In instances where the work is divided into chapters, a reasonable portion is the whole or part of a single chapter even though it may exceed 10% of the number of pages in the edition. 190)

Where the reproduction is of part of a published literary work (other than a computer program or an electronic compilation such as a database) or a published dramatic work in electronic form, the reproduction contains a reasonable portion of the work if the number of words copied does not exceed, in total, 10% of the number of words in the work or, if the work is divided into chapters, the reproduction contains only the whole or part of a single chapter of the work, even though the number of words copied exceeds, in total, 10% of the number of words in the work 191)

Note: These are deemed to be fair dealings, but are not exhaustive. It might be fair to reproduce quantitatively more in all the circumstances.

Criticism or Review

The fair dealing provision for criticism or review applies only if sufficient acknowledgment is made. 192) For an acknowledgment to be sufficient, it must identify the work or audio-visual item by its title or other description, as well as the author. 193)

The term “sufficient acknowledgement” is defined as: 194)

" an acknowledgement identifying the work by its title or other description and, unless the work is anonymous or pseudonymous or the author has previously agreed or directed that an acknowledgement of his her her name is not to be made, also identifying the authors".

Video overview by Nicolas Suzor onCriticism or Review.

“Criticism” and “review” are not defined but are given their dictionary meaning.

In the case of De Garis v Neville Jeffress Pidler Pty Ltd at 299-300, Beaumont J referred to the Macquarie Dictionary definitions of “criticism” and “review”:

  • “criticism” is used in the sense of “the act or art of analysing and judging the quality of a literary or artistic work; the act of passing judgment as to the merits of something; [and] a critical comment, article, or essay, a critique”; “review” is used in the sense of “a critical article or report, as in a periodical, on some literary work, commonly some work of recent appearance; a critique”.
  • “criticism” includes all kinds of criticism – it is not restricted to literary criticism - “review” is cognate with the word “criticism”; one is the process, the other is the result of the critical application of the mental faculties.

TCN Channel Nine Pty Ltd v Network Ten Ltd 195)

In the case of TCN Channel Nine Pty Ltd v Network Ten Ltd Justice Conti noted that:

“Criticism” and “review” are words of “wide and indefinite scope which should be interpreted liberally” and extend to “the thoughts underlying the expression of copyright works or subject matter”. They involve the passing of judgment and may be strongly expressed but, provided they are genuine and not a pretence for some other purpose, need not be balanced. [66]

TCN Channel Nine Pty Ltd v Network Ten Ltd 196)

In the Full Court's decision of TCN Channel Nine Pty Ltd v Network Ten Ltd Justice Hely (Sundberg and Finkelstein JJ agreeing) at [115] said the test is:

“[I]s the program incorporating the infringing material a genuine piece of criticism or review, or is it something else, such as an attempt to dress up the infringement of another’s copyright in the guise of criticism, and so profit unfairly from another’s work? As Lord Denning said in Hubbard v Vosper [1972] 2 QB 84 at 93, ‘it is not fair dealing for a rival in the trade to take copyright material and use it for its own benefit’”.

Reporting of the News

Copyright in a Pt III work or adaptation or a Pt IV audio-visual item is not infringed if it is dealt with for the purpose of, or associated with, the reporting of news in the following:197)

  • in a newspaper, magazine or periodical, provided sufficient acknowledgement is made of the work or audio-visual item;
  • by means of an electronic communication;
  • in a cinematograph film.

This section pertains to music incidentally recorded in the course of reporting news by means of broadcast or film, but does not extend to music added to the soundtrack which does not form part of the news being reported 198)

The fact that news coverage is interesting or may even be entertaining does not negate the fact that it is news, even though it may sometimes be difficult to draw a distinction between news and entertainment.

News reported with humour may still fall within the ambit of the fair dealing provisions. 199)

Disability Access

In December 2017 Australia's copyright laws were amended to reflect our international obligations under the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled.

The new disability access provisions ensure more equitable access to copyright material. The new provisions consist of two free exceptions: fair dealing for access by persons with a disability, and use of copyright material by organisations assisting persons with a disability. 200)

For more information on the changes to Australia's Disability Access seeQUT's Copyright Guide.

The Act provides that it is not an infringement to make a fair dealing with a Part III work for the purposes of giving of professional advice by a legal practitioner, a registered patent attorney or a registered trade mark attorney. 201)

There is no fair dealing counterpart in relation to the use of audio-visual items for these purposes.

Judicial Proceedings

The Act provides that any act done in relation to a literary, dramatic, musical or artistic work for the purpose of a judicial proceeding or the report of a judicial proceeding is exempted from copyright infringement. 202) A general exception from infringement of copyright in sound recordings, films, broadcasts and published editions applies for acts done in the course of judicial proceedings or the reporting of such proceedings 203) or in the course of obtaining professional advice from a lawyer, patent attorney or trade marks attorney. 204)

Parody or Satire

The provisions of the Act apply where a person or organisation can demonstrate that their use of copyright material (both works and audio-visual subject matter) is a fair dealing for parody or satire. 205) The Act does not include a definition of ‘parody’ or ‘satire’ or require sufficient acknowledgment of the work to be made.

Defences relating to parody can be found in other jurisdictions, including the US and member countries of the European Union. The defence for satire may be unprecedented.

The case of TCN Channel Nine Pty Ltd v Network Ten Ltd (Panel case)206) involved parody and satire, however, the case was finalised before defence was introduced in Australian law. Whether this defence would have made a different is a point of debate.

Historically parody and satire has been accommodated within copyright law to some degree by:

“substantial part”: Joy Music v Sunday Pictorial Newspapers; 207) AGL Sydney v Shortland County Council; 208) TCN Channel Nine Pty Ltd v Network Ten. 209)

  • fair dealing for the purposes of criticism or review:
    • TCN Channel Nine Pty Ltd v Network Ten Ltd 210)
    • TCN Channel Nine Pty Ltd v Network Ten Ltd 211)
  • fair dealing for the purposes of reporting the news:
    • Beloff v Pressdram 212)
    • BBC v BSB 213)
    • Nine Network Australia v ABC 214)
    • TCN Channel Nine Pty Ltd v Network Ten Ltd 215)

What is the likely scope of the parody and satire exception?

The US courts, in interpreting fair use, have traditionally made a distinction between parody and satire: Parody involves some degree of criticism on the subject-matter or author; whereas satire is more directed towards an unrelated target or society at large.

Parody is generally more likely to be considered fair use.

Under the fair use doctrine, the courts have regard to four factors:

  • the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  • the nature of the copyrighted work;
  • the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  • the effect of the use upon the potential market for or value of the copyrighted work.

Campbell v Acuff-Rose 216)

The Supreme Court held that 2 Live Crew’s Parody of Roy Orbison’s ‘Pretty Woman’ was a fair use. They used the familiar first line and opening melody, but changed all the rest of the lyrics (referring variously to ‘pretty woman’, ‘big hairy woman’, ‘bald headed woman’, ‘two-timing woman’) 2 Live Crew asked for a licence but were refused. They continued with the parody anyway. Even though 2 Live Crew took the ‘heart’ of ‘Pretty Woman’, “that heart is what most readily conjures up the song for parody, and it is the heart at which parody takes aim”.

The new version was a transformative use – markedly different from the original and not substitutable in the market.

Dr Seuss Enterprises v Penguin Books USA, Inc 217)

  • Used the style of a Dr Seuss book while retelling the facts of the OJ Simpson murder trial.
  • Ninth Circuit held that the book was a satire, not a parody, because it did not target Dr Seuss.
  • It merely used Dr Seuss characters and style to tell the story of the murder.

Leibovitz v. Paramount Pictures Corp. 218)

  • Paramount photoshopped Leslie Nielsen’s head onto a photo of a naked pregnant woman, mimicking the famous portrait of Demi Moore by Annie Leibovitz for Vanity Fair.
  • Second Circuit found fair use: the studio’s use was a transformative parody because it imitated the original for comic effect or ridicule.

Sun Trust v Houghton Mifflin 219)

  • Alice Randall wrote ‘The Wind Done Gone’, reinterpreting Margaret Mitchell’s classic Gone with the Wind from the point of view of Cynara, a slave.
  • Eleventh Circuit found that the use was probably a fair use. While it was a satire of society, it was also critical of the racist perspectives embedded in the original.

Salinger v. Colting 220)

  • An author created a book with the lead character modelled after Holden Caulfield from J.D. Salinger’s Catcher in the Rye. The new character was aged and placed in modern day New York.
  • The Court held that the use was not fair use, as ageing the character and placing him in new settings was not particularly transformative, particularly as the character’s personality was largely unchanged.

Specific, Royalty Free Exceptions

Private Copying: Time Shifting

There is an exception for the purpose of time shifting found in the Act.221)

If a person makes a cinematograph film or sound recording of a broadcast solely for private and domestic use by watching or listening to the material broadcast at a time more convenient than the time when the broadcast is made, then the making of the film or recording does not infringe copyright in the broadcast or in any work or other subject matter included in the broadcast.

This exception will not apply if an article or thing embodying the film or recording is:

  • sold;
  • let for hire;
  • by way of trade offered or exposed for sale or hire;
  • distributed for the purpose of trade or otherwise (not including loaning the article or thing to a member of the lender's family or household for the member's private and domestic use);
  • used for causing the film or recording to be seen or heard in public;
  • used for broadcasting the film or recording.

Video overview by Jennifer Singleton onTime Shifting.

National Rugby League Investments Pty Limited v Singtel Optus Pty Ltd 222)

Video overview by Stuart Efstathis on Optus TV Now.

In the case of National Rugby League Investments Pty Limited v Singtel Optus Pty Ltd Optus provided a “TV Now” subscription service whereby it copied and stored a television broadcast selected by a subscriber after subscriber clicked the “record” button on the subscriber’s Optus compatible device, to be played back at other times (“time-shifting”) with minimum delay of 2 minutes.

Issue: Television broadcast copied = film + sound recording made: then who is the maker of the recording?

It was held that the maker was either Optus or both Optus and the subscriber.

"we consider that Optus’ role in the making of a copy – ie in capturing the broadcast and then in embodying its images and sounds in the hard disk – is so pervasive that, even though entirely automated, it cannot be disregarded when the “person" who does the act of copying is to be identified”. [67]

The Court said:

"Put shortly Optus is not merely making available its system to another who uses it to copy a broadcast… Rather it captures, copies, stores and makes available for reward, a programme for later viewing by another". [68]

Optus cannot rely on the “private and domestic use” defence of s111: “There is nothing in the language, or the provenance, of s111 to suggest that it was intended to cover commercial copying on behalf of individuals”. [89]

Private Copying: Format Shifting

In addition to allowing private users of copyright to make recordings (as discussed above in time shifting), there is also a provision which allows private users to format shift. Format shifting involves reproducing copyright content in a different format without attracting copyright infringement. An example of this would be reproducing a copy of a CD onto an iPod or other listening device.

Video overview by Lindsay Mengel onFormat Shifting.

Video overview by Lachlan McCormick onFormat Shifting.

Books, Newspapers and Periodicals

The Act also allows for books, newspapers or periodicals that are in a private collections to be reproduced into another format (eg. scanning an article from a magazine onto your personal computer to keep as a reference). 223)

Photographs

The Act also permits photographs to be reproduced in instances where the copy owed is in hardcopy form and the user is seeking to format shift this into an electronic form (for example by scanning into a computer). This section also applies where the copy owned is in electronic form and the user is seeking to format shift this into a hardcopy form (for example by printing a digital file). 224)

Videotapes

The Act permits the reproduction of video cassettes that are owned, into an electronic form (for example reproducing a video cassette onto a DVD). 225)

Backups of Computer Programs

The Act provides limited backup rights for software. The rights only extends to literary works – copying computer games is not allowed. 226)

The limits to the exceptions are:

  • The original copy you own must be a legitimate copy.
  • You cannot sell, hire, lend or give away any copy made but you can lend a copy to a member of your family or household.
  • You are free to dispose of the original legitimate copy of a sound recording, but you must not keep any copy you have made from the original.
  • Making multiple copies in a similar format is not allowed, either from the original copy you own or from a later copy.
  • You are not authorised to remove any anti-copying measures applied by the manufacturer to the material you own.

Private Copying: Music

Private copies of music are permitted to be made only if:227)

  • the owner of a copy (the earlier copy ) of a sound recording makes another copy (the later copy ) of the sound recording using the earlier copy; and
    • the sole purpose of making the later copy is the owner's private and domestic use of the later copy with a device that:
    • is a device that can be used to cause sound recordings to be heard; and
      • he or she owns; and
      • the earlier copy was not made by downloading over the Internet a digital recording of a radio broadcast or similar program; and
      • the earlier copy is not an infringing copy of the sound recording, a broadcast or a literary, dramatic or musical work included in the sound recording;
  • then the making of the later copy does not infringe copyright in the sound recording, or in a literary, dramatic or musical work or other subject matter included in the sound recording.

This exception will not apply if the earlier copy or the later copy is:

  • sold;
  • let for hire;
  • by way of trade offered or exposed for sale or hire;
  • distributed for the purpose of trade or otherwise (not including loaning the earlier copy or the later copy to a member of the lender's family or household for the member's private and domestic use);
    • used for causing the film or recording to be seen or heard in public;
    • used for broadcasting the film or recording.

Computer Software

The Copyright Amendment (Computer Programs) Act 1999, introduced a new Division 4A into Part III of the Copyright Act 1968 – “Acts not constituting infringements of copyright in computer programs”.

The owner or licensee of a computer program does not infringe copyright by making a reproduction of the program:

  • in the course of running the program for the purposes for which the program was designed, unless contrary to an express direction or license. 228)
  • in the course of running the program for the purpose of studying the ideas behind the program and the way it functions. 229)
  • for use in lieu of the original copy, or if the original copy is lost, destroyed or becomes unusable. 230)
  • to obtain information necessary to make independently another program or article to interoperate with the original program any other program, but only to the extent that it is reasonably necessary to obtain such information and to achieve such interoperability; and the information was not readily available to the owner or licensee.231)
  • for the purpose of correcting an error in the original copy which prevents the program from operating as intended by the author. 232)
  • for the purpose of testing the security of the original copy or network or system of which the original copy is part. 233)
  • Note that most of these exceptions are not excludable by contract. 234)

Other Specific, Royalty Free Exceptions

Other specific, royalty-free exceptions include:

The performance of a literary, dramatic or musical work or playing a sound recording or film in a school classroom will not infringe copyright. 235) Similarly, the public performance of a literary, dramatic or musical work or an adaptation of such a work, by the use of reception equipment or a record, at a “premises where people reside or sleep, as part of the amenities provided exclusively for residents or inmates of the premises or for those residents or inmates and their guests” will not be infringing. 236)

It is not an infringement to photograph, paint, draw, film or include in a television broadcast a building, a model of a building, a sculpture or a work of artistic craftsmanship which is permanently displayed in a public place or in premises open to the public. 237)

Copyright in an artistic work is not infringed if the work is included in a film or television broadcast, incidentally to the principal matters represented in the film or broadcast. 238) It is also not an infringement to read or recite in public or to include in a sound or television broadcast of a reading or recitation, a reasonable length extract from a published literary or dramatic work or an adaptation of such a work, as long as the work is given sufficient acknowledgement. 239)

Copyright in an artistic work is not infringed by the creator of that work if he or she makes a later artistic work which does not repeat or imitate the main design of the earlier work. 240)

Where there is copyright in a building, copyright is not infringed by reconstructing it. 241)

Statutory Licenses

As noted in Chapter seven, the Copyright Act has a statutory license which regulates the copyright material used by educational institutions, “for the services of the State”.

The statutory licence which took effect on 22 December 2017, provides greater flexibility over what can be negotiated and agreed with Copyright Agency and Screenrights in relation to copying and communications. This includes the copying and communication limits for works.

The licenses assist educational institutions and institutions assisting persons with a print disability or an intellectual disability. The license allows the institutions to copy and communicate sound and television broadcasts and to reproduce and communicate works and published editions, on condition that equitable remuneration is paid to an approved collecting society.

The license pertains to:

  • the re-recording of musical works, as long as the subsequent recording does not debase the work; 242)
  • the making of sound broadcasts of literary and dramatic works by the holders of a print disability radio licence; 243)
  • recording of musical and literary works; 244)
  • retransmissions of free-to-air broadcasts; 245) and
  • public performance and broadcasting of sound recordings. 246)

Video overview by Kate van der Heyden onStatutory Licences in Copyright

Note this video does not include the updated new statutory licence.

There are ongoing issues within Australia regarding the available defences and exceptions under the Copyright Act. Particularly, a number of review bodies, the Australian Law Reform Commission (ALRC) and the Australian Government Productivity Commission (PC), have recommended that Australia adopt a fair use provision modelled off the US doctrine of fair use to replace our current fair dealing provisions. 247)

Video overview by Nicolas Suzor on Reform for Australian Copyright Defences and Exceptions.
The central feature of the recommendations made by the ALRC and the PC was to replace the purpose specific copyright infringement exceptions (the fair dealing provisions) with a general open ended fair use test.

In the US, the fair use exception is based on an assessment of four separate factors:

  • 1. The purpose and character of the use depending on whether the use is commercial or not for profit;
  • 2. The nature of the copyrighted work;
  • 3. The amount and substantiality of the proportion used; and
  • 4. The effect of the use upon the potential market.

The four fairness factors enables users of copyright to effectively use works (depending on the purpose, nature, amount and effect on the market) without having to obtain a licence for such use. This allows users to make an argument as to why they should be able to use the material freely.

The main argument supporting the recommendation to adopt a fair use based exception is the benefits derived from using a tried and tested system such as the doctrine of fair use as opposed to applying the current complex fair dealing exceptions found in Australian law.

Both the ALRC and the PC proposed that the fair use exception was advantageous as it is technologically neutral, promotes the public interest in transformative uses of works and provides breathing room for innovation. It was also proposed that a fair use provision would better align with social norms and consumer expectations. According to recent research into use practices of creatives, “the rules of fair dealing are confusing … with many creators … believ[ing] Australia already has fair use”. 248)

The fair dealing exceptions are a complex set of specific, royalty free exceptions for copyright infringement. A lot of these come under exceptions for private copying and format shifting for example. This system creates a complex Act. The US approach to fair use simplifies these tests and leaves it open to the courts to come up with jurisprudence for when uses will be considered to be fair. Whilst there are some concerns that a judicial based approach (such as the one in the US) may be more unpredictable, empirical evidence suggests that this claim is unfounded. 249)

A key issue with Australia’s current fair dealing exceptions is its inability to recognise and account for transformative uses of copyright law. A transformative use exception allows for a more technological neutral law. For example, the Copyright Act includes provisions that enable time shifting and format shifting of particular works, however the language used in these provisions is specific about the technologies that are used. Because our law is always drafted in retrospect, it can take quite a long time to adapt to new uses.

The debate around fair use really centres on core issues of flexibility, simplicity, and future-proofing Australian law, however, opponents of fair use worry that now is not the time to weaken copyright. They worry that copyright owners need to have stronger rights to control the uses of their works and that any weakening of the right might undercut their incentives and the revenues they can receive from selling access to particular works. There’s a different view of how innovation and creativity occurs which underpins a lot of these debates. On one hand creators need to protect their work and argue that the incentive to create new works is based on the premise their work is protected.

On the other hand, there is a strong social justice component to copyright law. The ability to access and reuse existing culture and knowledge is central to creation and innovation. This argument focuses on an individuals ability to speak and to express themselves and the ability of people to access knowledge. The idea that consumers of information need to be able to exercise their rights to access information underpins the social justice component of copyright law. Fair use provides a fundamental part of the copyright balance by drawing the limitations around what copyright owners can control. This is particularly important in the digital age because nearly everything with copyright material becomes a potential infringement.

In the analogue world, it was never an infringement to read a book or to share a book with a friend. These were in the analogue world, important limits to the monopolies of copyright owners. In the digital world, these acts become infringements. They are reproductions of communications of copyright works. This means that the structure of the balance between rights holders and consumers has once again been shifted. The arguments consumer groups make is that the use is required to restore some of that balance. The argument that the copyright owners make is that the correct balance has also been shifted in the other direction by making infringement much easier and therefore copyright should not be weakened any further and in fact it should be strengthened in order to enable return on investment.

Whether Australia should adopt the recommendations of the ALRC and the PC is still an ongoing debate.

Remedies for Infringement of Copyright

The Copyright Act provides that a copyright owner may bring an action for infringement of the copyright. 250)

There are a number of remedies available to copyright owners which include civil remedies such as injunctions and damages 251) and remedies available through criminal proceedings. These remedies will be discussed in detail in this chapter.

Civil Remedies

Part V of the Copyright Act provides a range of civil remedies for infringement of copyright.

The Act is not exhaustive of available remedies, and that indeed any remedy which a court hearing a copyright matter may award in its inherent jurisdiction is available, for example, a declaration. 252)

Injunctions

An injunction is one of the most common remedies and may either be an interlocutory injunction or a final injunction. An injunction is an equitable remedy which seeks to prevent a person from doing a particular thing or demands a person to do a particular thing.253)

An interim injunction (or interlocutory) is granted in a situation where the person seeking the injunction can establish that there is a question which needs to be tried by the court. 254)

A final injunction will be made to ensure a particular course of action is taken - whether to stop or demand action. The principles upon which relief will be available are those applicable under the general law.

Damages

Pursuant to the Act, damages is an available remedy and can be awarded in certain circumstances. 255)

Damages cannot be obtained from an innocent infringer – that is, damages are not available if, at the time of the infringement, the defendant was not aware, and had no reasonable grounds for suspecting, that the act constituting the infringement was an infringement of the copyright. 256)

Kiama Constructions v MC Casella Building Co Pty Ltd257)

  • The plaintiff builder drew up a plan for a couple to build a house on a block of land. The couple made a pencil sketch of the plan and showed the defendant builder. The defendant builder suggested a draftsman should draw up more detailed plans.
  • Held, infringement of copyright, but that the defendant builder was an innocent infringer and was not liable to pay damages – the builder was unaware the couple did not own copyright in the plans.

Additional Damages

Additional damages of a punitive and/or aggravated nature may also be awarded in certain circumstances. 258)

In these instances the court has regard to:

  • (i)  the flagrancy of the infringement;
  • (ia)  the need to deter similar infringements of copyright;
  • (ib)  the conduct of the defendant after the act constituting the infringement or, if relevant, after the defendant was informed that the defendant had allegedly infringed the plaintiff’s copyright;
    • (ii)  whether the infringement involved the conversion of a work or other subject matter from hardcopy or analogue form into a digital or other electronic machine readable form;
    • (iii)  any benefit shown to have accrued to the defendant by reason of the infringement; and
    • (iv)  all other relevant matters.

Milpurrurru v Indofurn Pty Ltd259)

The case of Milpurrurru v Indofurn Pty Ltd involved the artwork of eight Aboriginal artists which had been reproduced without their permission on carpets manufactured overseas and imported into Australia by the defendants.

The Court held that copyright had been infringed. Further, the Court assessed additional dames in the sum of $70,000, having regards to the cultural harm and personal distress caused.

Account of Profits

Pursuant to the Act, an account of profits is an available remedy. 260)

An account of profits is an alternative remedy to damages and the applicant must choose which they will be seeking. An account of profits provides for the applicant to recover a sum which represents that proportion of the respondent’s profits that was fairly attributable to the infringement of the applicant’s copyright. 261)

Conversion Damages

There is also another remedy available known as conversion damages. 262)

In conversation, the plaintiff takes control of infringing copies or devices used in the making of infringing copies.

These provisions were substantially amended by the Copyright Amendment Act (No 1) 1998 with the effect of making the remedy a matter of discretion by the court. These new provisions are intended to avoid the possibility of the award of excessive damages.

An owner of copyright in a work or other subject-matter may bring an action for conversion or detention in relation to: 263)

  • an infringing copy.

An “infringing copy” is defined as an article, the making of which constituted an infringement of copyright in the work, sound recording, film, broadcast or edition, as the case may be, or in the case of an imported article would have constituted such an infringement if the article had been made in Australia by the importer. 264)

  • a device used for making infringing copies.

A court may grant those remedies that would be available as if: 265)

  • the copyright owner had been the owner of the infringing copy since the time the copy was made.
  • the owner of the device was used or intended for use in making them.

Conversion damages is a remedy in addition to, for example, compensatory damages. 266) But, the court is not to make an award for conversion damages where it is satisfied, in essence, that an award of compensatory damages under s 115 is a “sufficient remedy” in the circumstances. 267)
In deciding whether to grant conversion damages and in assessing the amount of such damages the court is to have regard, for example, to the expenses incurred by the defendant in manufacturing or acquiring the infringing copy and “any other matter that the court considers relevant”. 268)

If only part of the infringing copy consists of material that infringes copyright, the court considers:269)

  • the importance to the market value of the article of the material that infringes copyright.
  • the proportion of the infringing material.
  • the extent to which the material that infringes copyright may be separated from the article.

Conversion damages cannot be obtained from an innocent infringer. A copyright owner is not entitled to conversion damages if it is established that at the time of the conversion that:270)

  • the defendant was not aware, and no reasonable grounds for suspecting that copyright subsisted in the work or other subject-matter; or
  • where the articles were infringing copies the defendant believed, and had reasonable grounds for believing, that they were not infringing copies.

Anton Piller Order

The last civil remedy available to copyright owners is an Anton Piller Order. An Anton Piller Order is an ex parte interlocutory order that requires the defendant to permit the plaintiff’s solicitors to enter their premises forthwith to inspect and remove defined articles and documents.

In order for an Anton Piller Order to be granted, the plaintiff needs to show a strong prima facie case that there is a real risk that evidence will be destroyed if an order was not made. 271)

Criminal Provisions

The Copyright Act includes non-civil remedies which are found in the criminal provisions. Not every infringement of copyright is a criminal offence. Generally, only infringements of copyright that involve commercial dealings or infringements that are on a commercial scale are criminal.

Examples of criminal provisions:

  • commercial-scale infringement prejudicing copyright owner; 272)
  • making infringing copy commercially; 273)
  • selling or hiring out infringing copy; 274)
  • offering infringing copy for sale or hire; 275)
  • exhibiting infringing copy in public commercially; 276)
  • importing infringing copy commercially; 277)
  • distributing infringing copy; 278)
  • possessing infringing copy for commerce; 279)
  • making or possessing device for making infringing copy; 280)
  • advertising supply of infringing copy; 281)
  • causing work to be performed publicly; 282) and
  • causing recording or film to be heard or seen in public. 283)

Following the Copyright Amendment Act 2006 (Cth), there are now three tiered offences for most offences – indictable, summary and strict liability offences relating to copyright piracy.

The most serious offences are indictable. These offences have default fault elements of intention and recklessness. They carry maximum penalties of 5 years imprisonment and/or between 550 to 850 penalty units ($60,500 to $93,500) for natural persons.

The summary offences have a lower threshold, with most containing fault elements of intention (by default) and negligence. The maximum penalties of 2 years imprisonment and/or 120 penalty units ($13,200).

Strict liability offences do not have a fault element. The maximum penalty for a strict liability offence is 60 penalty units ($6,600) for a natural person.

Regulations may provide for a scheme of infringement notices (on-the-spot fines) to be issued for strict liability offences up to 20% of the maximum penalty. 284)

Regulations in Part 6A of the Copyright Regulations 1969 set up an infringement notice and forfeiture scheme.

So far, we have seen little use of infringement notices by police in Australia.

Where a matter goes to court, courts can order circumvention devices, infringing copies, and devices and equipment used to infringe, be destroyed, or handed over to relevant copyright owners, or otherwise dealt with.

Emerging Issues in Copyright Law

There are many emerging issues in copyright law. The majority of these issues arise due to changes in technology and social norms. This chapter explores some of the prominent issues in copyright law today.

Open Access

Open access to information and knowledge is a central issue in the copyright space. According to the Scholarly Publishing and Academic Resources Coalition (SPARC), “[o]pen access is the free, immediate, online availability of research articles combined with the rights to use these articles fully in the digital environment. Open Access is the needed modern update for the communication of research that fully utili[s]es the Internet for what it was originally built to do— accelerate research”. 285)

For more information view the SPARC Open Access Factsheet

Video overview by Nick Shockey and Jonathan Eisen on What is open access? licensed under CC-BY.

Safe Harbours and Website Blocking

Safe Harbours Scheme

The Safe Harbours scheme was introduced in Australia in 2005 as part of the implementation of the Australia-US Free Trade Agreement. The Safe Harbour scheme provides an incentive for service providers to establish efficient mechanisms for the removal from their platforms of material that infringes copyright. In return, service providers are protected from liability relating to any such infringement. See Electronic Frontiers Australia, 'Safe Harbours' Policy Position 2017 286)

Under the Copyright Amendment (Service Providers) Act 2018 Australian disability organisations, education providers and cultural institutions will now be covered by the copyright safe harbour scheme, which will protect them from being held liable when their online services – from public access computers to digital hubs – are used by others to infringe copyright. According to the Australian Digital Alliance, “[e]xtending the scheme means these organisations now have the same legal protection as commercial ISPs, providing them with a more certain and supportive legal environment and allowing them to confidently provide more innovative services.”

“Bringing these organisations into the safe harbour scheme will also improve the system for Australian creators to take down infringing materials while also ensuring users of these services are guaranteed a right of appeal. It’s a win for all involved.”

For more information see the Australian Digital Alliance's Press Release, Extension of Safe Harbour Welcomed as an Incremental Step

Website Blocking

In terms of website blocking, in November 2018 Australia passed the The Copyright Amendment (Online Infringement) Act 2018. This Act updates the Copyright Act 1968 (Cth) with a new provision making it easier for rights holders to obtain an injunction to block foreign based piracy websites.

The amendment expands the scope of Australia's online copyright infringement scheme by:

  • amending the threshold for capturing overseas online locations to those with the primary purpose or effect of infringing copyright;
  • reducing the evidentiary burden on copyright owners;
  • enabling copyright owners to seek injunctions requiring online search engine providers to take such steps as the Federal Court considers reasonable so as not to provide search results that refer users to online locations blocked under the scheme;
  • clarifying that the Federal Court may make blocking orders which follow copyright infringing activity where operators of an overseas online location attempt to avoid the application of an injunction by creating new pathways to online locations; and
  • enabling the minister to declare that particular online search engine providers be exempt from the scheme.

According to the Australian Digital Alliance, the new provision poses concerns as, “the government has removed important public interest protections from the legislation, dangerously lowering the bar set by the scheme, and putting legitimate sites and the legitimate activities of the public at risk”.

For more information on the amendment seeGovernment Drops Public Interest Safeguards from Website Blocking.

It is becoming increasingly difficult to determine situations where human authors exist, especially in light of computer programs and the increasing popularity of using AI technology in creations. As discussed in earlier chapters, copyright subsists only in works that are original, meaning originate from an author/s.

Video overview by Isabeau Williams on Human Authors and Copyright in Databases and Compilations

Correction to video Australian law does not require a 'creative spark' for originality.

The Internet of Things

The Internet of Things (IoT) is digitised inter - connectivity of products and programs, people and places. It is essentially, the concept of connecting devices “with an on and off switch to the Internet”. 287) The idea underling the IoT is that this network of physical devices, coupled with embedded electronics, software, etc will enable a higher level of efficiency, increased economic benefits, and reduced human exertions.

Video overview by Charmaine Cowan on The Internet of Things.

VPNs and Geo-blocking

Geo-blocking is technology that restricts access to Internet content based upon the user's geographical location. There are circumvention measures such as Virtual Protection Networks (VPN) that can be used to work around geo-blocking to allow access to the geo blocked content.
This type of activity is becoming more popular when trying to access content that is not currently available in Australia. For instance, when using a streaming service to access films, “Australian consumers can only access one third of the films available to American consumers…” 288)

A VPN can be used to reroute an IP address to 'trick' servers into thinking the geographic location of the IP address is in the US as opposed to Australia. This allows the person in Australia to access US content via the VPN.

The legality of VPN's under Australian law is a prominent issue.
Video overview by Mitch Hughes onGeoblocking and Netflix.

Let's Play Videos

Producing 'lets play videos' involves a person recording themselves playing a video game online and uploading this to the internet (such as YouTube).

These videos involve the recording of computer content where the player adds value through commentary and is sometimes accompanied by an image of the player.

The question is, does this type of content (when uploaded to the internet), infringe copyright?

It is proposed that this type of activity potentially infringes the owners exclusive right to communicate the work to the public.

The below video explores some of the issues involved in Let's play videos.

Video overview by Guy the law guy on Lets play videos.

Moral Rights and Performers Rights

Creators of copyright have a special right known as “moral rights”, in addition to the rights covered earlier in this topic. Moral rights ensure that:

  • a creator is credited for their work at all times even if it is sold or assigned;
  • a creator may take action if their work is falsely attributed (i.e. credited to someone else, or their name is credited incorrectly); and
  • a work is not treated in a manner that is prejudicial to a creator’s honour or reputation.

Moral rights can only be owned by individuals (not corporations). A creator will hold their moral rights for the entire duration of copyright; moral rights cannot be transferred to anyone else.

The concepts of moral rights and performers rights are still relatively new in Australia, with the first mention of moral rights being introduced by the Copyright Amendment (Moral Rights) Act 2000 (Cth) and additional performers rights being implemented as a result of the US Free Trade Agreement Implementation Act 2004 (Cth). These moral rights protect authors, creators and directors - they protect individuals not the copyright owners. These rights operate parallel to the copyright regime and act as inalienable rights.

The philosophy underpinning moral rights is that creators deserve respect integral to the act of creativity which remains even after copyrights has been assigned.

Video overview by Nicolas Suzor on Moral Rights.

Moral rights were introduced by the Copyright Amendment (Moral Rights) Act 2000 (Cth) which provides that creators are protected from three sources of harm:289)

  • a right of attribution of authorship;
  • rights against false attribution of authorship; and
  • a right of integrity.

As noted above, the moral rights were extended in 2004 to include performers.

Rights Granted to Authors

Right of Attribution

The right of attribution requires that an author must be identified where attributable acts are done in respect of the work 290). The right of attribution is also applied to performers. 291)

Creators of copyright material have the right to be attributed when the work is:

  • for literary, dramatic, or musical works: reproduced, published, performed, communicated, or adapted.
  • for artistic works: reproduced, published, exhibited, communicated;
  • for films: copied, exhibited, communicated.
  • For performances: communicated, staged, or copied.

If a creator has not stated the way in which he or she wishes to be identified, any clear and reasonably prominent form of identification may be used. 292)

Attribution must be clear and reasonably prominent. 293)

It is not necessary to attribute the creator if:

  • the creator has consented in writing not to be identified; or
  • it is reasonable in all the circumstances not to identify the author. 294)

Right against False Attribution

Authors of literary, dramatic, musical and artistic works and films and performers have the right not to have the authorship of their works falsely attributed. 295)

False attribution means:

  • crediting the wrong person as the creator or performer; or
  • crediting the creator of a work that has been altered without acknowledging the alterations.

It is also an infringement of this right to knowingly deal with or communicate a falsely attributed work.

  • NOTE: the reasonableness test is unavailable as a defence.

Right of Integrity

The right of integrity is the right not to have your work subjected to derogatory treatment. 296)

Derogatory treatment means doing anything that results in a material distortion of, the mutilation of, or a material alteration to, the work that is prejudicial to the author's honour or reputation. It also includes doing anything else in relation to the work that is prejudicial to the author's honour or reputation. In the case of artistic works, exhibiting in a way or place that is prejudicial to the author’s honour or reputation.

It is not clear to what extent the test for whether a derogatory treatment is prejudicial to the author’s honour or reputation takes into account the author’s subjective view, as opposed to an objective test. To date, there have been no cases in Australia to clarify what this might mean.

It is not an infringement if the derogatory treatment or other action was reasonable. 297)

There are special exceptions to infringement of the right of integrity in relation to artistic works (including buildings and architectural drawings).

It is not an infringement of moral rights to destroy a moveable artistic work, if the creator, or the creator's representative, is given a reasonable opportunity to remove the work. Further it is not an infringement to change, relocate, demolish or destroy a building of which an artistic work forms part, or to which it is affixed, provided certain conditions (including the giving of notice and provision of access for the purpose of making a record and consultation) are met.
It is not an infringement of moral rights to change, relocate, demolish or destroy a building, provided certain conditions (including the giving of notice and provision of access for the purpose of making a record and consultation) are met; or to remove or relocate site-specific artworks, provided certain conditions (including the giving of notice and provision of access for the purpose of making a record and consultation) are met.

It is not an infringement of moral rights to do anything in good faith to restore or preserve a work.

Defence of Reasonableness

A failure to properly attribute the creator, or a derogatory treatment of copyright work, does not infringe the creator’s rights if the action was reasonable in the circumstances.

The Act sets out a number of factors to be taken into account in working out whether the action was reasonable. These include:

  • the nature of the work;
  • the purpose, manner and context for which it is used;
  • relevant industry practice;
  • whether the work was created in the course of employment or under a contract of service; and
  • if there are two or more authors, their views about the failure to attribute or derogatory treatment.

Video overview by Madeline Menzies-Miha onMoral Rights and Reasonableness

Video overview by Courtney Steffens onMoral Rights and Reasonableness

Waiver and Assignment

Moral rights can be waived. This is not explicitly stated in the Act but the term consent is used on several occasions.

Moral rights cannot be assigned. Even after the economic components of copyright have been assigned, the creators still retains the moral rights.

Examples

As the moral rights are relatively new, no significant body of case law has been developed in Australia.

Moral rights are loosely derived from the French system of droit moral. The French authorities are not directly relevant, but may serve as an illustration of the types of treatments which may be found to be derogatory in Australia.

Perez & Ors v Fernandez 298)

The case of Perez & Ors v Fernandez involved Perez 'Pitbull', the US-based author of the song “Bon, Bon”. Fernandez, a Perth-based DJ, had planned to host Perez on-tour in Australia, and Perez had recorded a promo referring to and supporting Fernandez 'DJ Suave'. After the tour was cancelled, Fernandez deleted a 'prominent part' of the recording, and substituted the previously made recording in a way that “made it appear that Mr Fernandez was a subject of the song”.

The Federal Magistrates Court held that the new recording infringed Perez's right of integrity on the basis that:

  • It was a material alteration or distortion; and
  • It was prejudicial to Perez's honour and reputation because
    1. It created a false association that Perez had endorsed or deliberately associated himself with Fernandez; and
    2. It caused Perez “anger and distress” (a subjective factor) and the false association was likely to be concerning for similar artists, who go to great lengths to control the people they are associated with (an objective factor).
    3. It was also likely to be prejudicial to an audience who were more familiar with Perez's work, because it mocked Perez and sought to promote Fernandez at Perez's expense.

    Fernandez's use was not reasonable in the circumstances.

Schott Musik International GmbH v Colossal Records of Australia 299)

The case of Schott Musik International Gmbh v Colossal Records Australia involved a a techno remix of a classical musical work and questioned whether this remix ‘debased’ the original. Before the introduction of moral rights, Section 55(2) previously prevented a recording artist from obtaining a statutory licence to record a musical work if the adaptation 'debases' the original work.

The Federal Court held that a wide approach should be taken, taking into account the broad spectrum of community tastes and values. At first instance, Tamberlin J considered that “[t]he term 'debase' calls for a value judgment based on a significant lowering in integrity, value, esteem or quality of the work.”

Justice Tamberlin considered the evidence, and concluded that the techno remixes did not debase the original, taking into account the lack of reduction in value of the original, the lack of “any widespread perception of reduction in quality, rank or dignity” of the original, the fact that sales and interest in the original may have increased due to the remix, and the fact that the remix “preserves substantial and essential elements of the original intact, communicates a powerful exuberance and rhythmic character quite consistent with the character of the work”.

On appeal, the Full Federal Court used a number of tests: Justice Wilcox stated that, “the adaptation must be so lacking in integrity or quality that it can properly be said to have degraded the original work”. Justice Lindgren noted that “another… way of formulating this question is to ask whether the allegedly infringing arrangement is an impermissible distortion, mutilation or other modification of the musical work. Of course the word 'impermissible' itself invokes questions of evaluation and degree”.

The FCAFC held that “'debase' is a strong term which requires much more than an opinion, even an expert opinion, that the adaptation is musically inferior”.

Buffet v Fersing (1962) D Jur 570 (Fr)

Bernard Buffet had painted six panels of a refrigerator, and signed only one panel. Fersing bought the refrigerator at a charity auction and resold the panels individually for a profit. Buffet was able to recover damages for infringement of his moral right of integrity because Fersing had mutilated his expression, which was intended to stand as a whole.

Huston v Societe de l'Exploitation de la Cinquieme Chaine (1991) 149 Revue Internationale du Droit d'Auteur 197 (Cour de cassation)

The estate of John Huston successfully sought an injunction against a French television broadcaster to prevent the broadcast of a colourised version of Huston's black and white film 'Asphalt Jungle'. - An earlier suit brought in the US failed. - Material distortion of his work prejudicial to honour or reputation.

Snow v The Eaton Centre Limited 300)

A Canadian shopping centre had bought a sculpture of 60 flying geese from the plaintiff. When the shopping centre tied Christmas ribbons around the necks of the geese, Snow applied for an injunction. The Ontario High Court ordered that the ribbons be removed, holding that the treatment of the sculpture was prejudicial to Snow's honour or reputation. Snow said it was prejudicial to his honour – reducing it to crass advertisement of Christmas.

Morrison Leahy Music Limited and another v Lightbond Limited 301)

In 1993, George Michael was granted a preliminary injunction preventing the release of a medley of a number of George Michael's songs. The Court of Appeal in London found that it was arguable that the remix record could constitute derogatory treatment of George Michael's works.

Confetti Records v Warner Music 302)

In 2003, the UK High Court found that there was no infringement of moral rights when rap lyrics were recorded over the top of a remix of an original song, at least without any expert evidence as to what the lyrics actually meant.

Remedies

There are three main remedies available for breach of moral rights. These include:

  • An injunction to prevent people from harming a person's work or to ensure proper attribution for use;
  • Damages; and
  • An apology and rectification.

Passing Off

This chapter will explain the law of passing off, the elements required to establish passing of and how it applies in practice.

Introduction to Passing Off

Passing off protects against the misappropriation of a trader’s business reputation or goodwill by the misrepresentation of another trader.

According to Lord MacNaghten in Inland Revenue Commissioners v Muller & Co’s Margarine Ltd a trader's goodwill and reputation is:

'The benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old-established business from a new business at its first start.'

Business reputation can be protected in a number of ways:

  • Trade mark infringement
  • Tort of passing off
  • Tort of injurious falsehood
  • Misrepresentation (misleading & deceptive conduct)

The core of passing off is trying to stop another trader from linking their product to that of another trader if it causes or is likely to cause the other trader's business some damage. 303) Passing off seeks to stop a person from associating themselves with the trader and taking some of their goodwill for themselves, either overtly or covertly, by implication or directly.

Video overview by Nicolas Suzor on Passing Off

No Established Definition of Passing Off

There is no strict definition of what constitutes the tort of passing off as there are sufficient nooks and crannies to make the cause of action flexible.

Lord Oliver in Reckitt & Coleman v Borden [1990] RPC 341 stated that:

"It would, however, be impossible to enumerate or classify all the possible ways in which a man may make the false representation relied on".

Gummow J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 356 noted that:

"The law of passing off 'contains sufficient nooks and crannies to make it difficult to formulate any satisfactory definition in short form".

The Origins of Passing Off

Passing off was originally recognised by both common law court and courts of equity.

Passing Off as a Common Law Tort

Commons law considered passing off a form of fraud. The commons law focus in therefore on the representation of traders and whether consumers have been deceived by the representations of traders. A common law action for passing off would be brought by a consumer who had been deceived into trading with one proprietor on the assumption that they were in fact dealing with another trader. The action of passing off expanded over the 20th Century into the tort known today.

Passing Off and Equity

The court of equity were interested in passing off, not as a form of fraud, but in relation to the property aspects, namely the reputation of the trader. The equity court's focus on business reputation is one characteristic which is still central to todays tort of passing off.

The Elements of Passing Off

Passing off has three core elements known as “the classic trinity”. 304)

  1. That the plaintiff’s goods, business or get-up, including any brand name, enjoy a certain reputation or goodwill, to be recognised by the public as distinctive in the geographical area; and
  2. A misrepresentation by the defendant (intentional or otherwise) in the course of trade; and
  3. That the plaintiff suffers, or in a quia timet action is likely to suffer, damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff.

Passing off is not about stopping competition it is about dealing with the misrepresentation regarding the reputation of the plaintiff. The classic cases of passing off concern a misrepresentation as to the source of origin of goods. Some courts have gone further, extending the tort of passing off and providing protection where there has been passing off as to the quality of goods.

Element 1: Reputation or Goodwill

To establish this element for the purpose of passing off, the following must be shown:

  • reputation/goodwill embodied in or attached to certain trade indicia; and
  • that indicia must have acquired a secondary meaning as being distinctive of the trader’s goods or services;
    • in the relevant jurisdiction;
    • within the minds of consumers or likely consumers.

Who can Establish Business Reputation

Courts have taken a very liberal approach to this question – so, only even vaguely commercial activity would satisfy this – ie professional associations and charities. There is no requirement that the public be aware of the plaintiff’s identity as a proprietor, but only that the public think that the goods come from a particular source which in fact is the plaintiff. 305)

There is no need for plaintiff to be the only source of the goodwill attached to a particular trade indicia. The plaintiff may be one of many, perhaps hundreds who share in the goodwill attached to a particular indicia – ie Advocaat case and Champagne Case – the goodwill attached to Advocaat and Champagne respectively were shared by many manufactures. 306) Two traders may also be honest concurrent users of particular indicia, in which case each will not normally have an action against the other. This is because the first trader will not normally have had a sufficient reputation at the time the second-comer had also begun trading under the name.

When must Reputation be Established?

The plaintiff’s reputation must be assessed at the date of the commencement of the conduct complained of. 307) This means that a plaintiff who would not have succeeded at that date will not do so by the acquisition of a greater reputation. Note, however, that a right of action may be sustained even where the plaintiff no longer trades – provided there is residual goodwill. However, it is vital that the necessary reputation remain. It can be assumed that, over time, reputation will fade, and hence, any rights under passing off will also fade.

Types of Trade Indicia

This may include trade names, the get-up of goods, the title of goods, aspect of packaging, descriptive material, advertising formats, slogans, jingles, characters in a television campaigns, mastheads of newspapers. A Plaintiff’s reputation may be established not only in a trade mark or trade name or in a distinctive description but in any other material or activity which has become associated or identified in the minds of the public, or a sufficient section of the public.

Reckitt & Coleman Products Ltd v Borden Inc (1990) 17 IPR 1

Facts: Since 1956 Reckitt & Coleman sold lemon juice under the name JIF. The product was sold in a plastic squeeze container in the size, shape and colour resembling a lemon. The word JIF was embossed on the side of the container. Attached to the top of the lemon was a green triangular label with the word JIF prominently displayed. Reckitt & Coleman had packaged its JIF lemon juice in this way since 1956. The Defendant (who had previously sold bottled lemon juice under the trade mark ReaLemon) sought to repackage its product in a lemon shaped container similar to that used by Reckitt & Coleman. It had developed three prototypes of the lemon shaped containers, which they were considering adopting as their new packaging. Upon discovering the first prototype, Reckitt & Coleman brought an action for passing off against the Defendant. Upon discovering the second and third prototype, Reckitt & Coleman commenced another action.

Issues: (1) Have Reckitt & Coleman proved that their get-up under which their lemon juice was sold has become associated in the minds of substantial numbers of the purchasing public specifically and exclusively with their JIF lemon juice? (2) If yes, does the get-up under which the Defendants propose to market their lemon juice amount to a representation by the Defendants that the juice which they sell is JIF lemon juice?

Held: At Trial Walton J found the action for passing off had been made out in both cases (noting that the Defendants had acted with fraudulent intent). Walton J relied on the clear evidence that the purchasing public had come to associate the get-up of the lemon shaped container with Reckitt & Coleman’s JIF lemon juice. There was also evidence of a substantial body of brand loyalty for the JIF brand and that the public who purchased lemon juice in plastic containers did not read the label, but looked only for the plastic lemon which they could assume was JIF lemon juice. The Defendant appealed to the Court of Appeal which held that Walton’s J findings could not be interfered with. The Court of Appeal supported the trial judges finding that the lemon shaped contained had acquired a secondary meaning as indicating that the source of the product was JIF and that only Reckitt & Coleman had the exclusive right to use that get-up. The Defendants further appealed to the House of Lords, with Reckitt & Coleman cross appealing (although the cross appeal was not heard).

The appeal was dismissed by the House of Lords, which agreed with the decision of the Court of Appeal affirming the permanent injunction against the Defendant preventing him from selling its lemon juice in the proposed packaging (Lord Bridge of Harwich; Lord Brandon of Oakbrook; Lord Oliver of Aylmerton; Lord Goff of Chieveley; Lord Jauncey of Tullichettle).

Video overview by Jess Walker on Reckitt & Coleman Products Ltd v Borden Inc

Trade Indicia - Acquiring Secondary Meaning

It is commonly held that descriptive marks must have acquired a secondary meaning, or secondary signification, indicating goods or services connected exclusively with the plaintiff. 308) Where a word has acquired a secondary meaning as indicating the plaintiff’s goods or services, it might be difficult for others to use it without committing a passing off.

However, using a descriptive term, rather than an inventive term, will require much more effort on the part of a plaintiff to establish a secondary meaning that the term is exclusively distinctive of the plaintiff’s goods.

For example in Reckitt & Coleman, the court accepted that the shape of a lemon was used exclusively as indicating that the goods were that of the plaintiff. Other examples of descriptive words having acquired secondary significance include:

  • 'Special Brew’ for beer.
  • ‘Top of the Pops’ for records.
  • ‘Budget’, for a discount car hire company.
  • 'Pure and simple’ for vegetable oil.
  • ‘Plantland’ for a plant nursery.

Advocaat Case: Erven Warnink v J Townsend & Sons [1979] AC 731

Facts: Plaintiff and other Dutch companies manufactured and marketed 'advocaat' in the UK for some time (Dutch standards required brandewijn, egg yolks, sugar). Substantial reputation and goodwill. Defendants marketed 'Keeling's Old English Advocaat' (egg powder and sherry). Not able to be mistaken for the Dutch product.

Held that the name 'advocaat' had become distinctive of a certain style. Defendants misrepresented the nature of their product to consumers.

J Bollinger v Costa Brava Wine Co.(The Spanish Champagne Case) [1960] Ch 262

Facts: 150 growers would have been entitled to use the description 'champagne'.

Held: Name was distinctive of both place of origin and quality.

Reputation established in the relevant jurisdiction

The reputation must be established in the jurisdiction, but note that there is no requirement that the trader has actually traded in the jurisdiction, or even that their goods have been sold in the jurisdiction. Rather, reputation can be established by showing that people in the jurisdiction would be aware of the plaintiff’s reputation 309) For sufficient reputation to be found there must also be a substantial number of persons in the jurisdiction who are aware of the plaintiff’s goods/services. 310)

Con Agra Inc v McCain Goods (Aust) Pty Ltd [1992] FCA 159

Facts: McCain copied the name “Healthy Choice” from a product seen in US.

Held: Trader must have a reputation in the jurisdiction. No need to show actual trade, but reputation must be established with reference to a substantial number of local consumers. Necessary reputation not established.

Proving Reputation

May be proved by expert evidence, witness evidence or survey evidence. Expert evidence will be admissible if the expertise of the witness arises from specialised knowledge for example marketing experts or experts in a certain type of marketing (such as wine marketing). 311) Consumers may be brought into court to testify where they have actually been deceived but this type of evidence is not very probative. 312) While the court may accept expert and witness evidence, the probity of this evidence will vary greatly.

Survey evidence was not accepted until 1990s, before this it was rejected as hearsay. Survey evidence will only be admissible if testimonial evidence from the persons responsible for the survey evidence would also be admissible and subject to cross-examination. Factors that go towards whether survey evidence would be accepted by the court include whether:

  • The interviewees are selected so as to represent a relevant cross-section of the public;
  • the size is statistically relevant;
  • It was conducted fairly;
  • All the surveys carried out have been disclosed;
  • The totality of the answers given have been disclosed and made available to the defendant;
  • The questions are leading;
  • The exact answers are recorded and not abbreviated answers;
  • The coding has been accurately carried out;
  • The instructions to the interviewees have been disclosed; and
  • The coding instructions have been disclosed.

Again, while such evidence is admissible the probity varies and often courts have given little weight to such evidence, often criticising it on the basis of methodology.

Overseas Brands

The court's recognition of the value and impact of indirect advertising techniques makes it easier for owners of well-known brands overseas, that are not sold or directly marketed in Australia, to establish brand reputation in this country. This recognition will make it increasingly difficult for Australians to copy profitable overseas products and to defend such imitations successfully on the basis that the product was not yet officially launched in Australia, and therefore that the reputation was not yet established in this jurisdiction.

Hansen v Bickfords (Monster Energy Drink)

Facts: Hansen marketed and sold the Monster Energy drink in a number of countries around the globe. The drink was not launched in Australia yet because H was attempting to first familiarise Australia with the product before launch. It was doing this through indirect marketing - sponsoring athletes, athletic competitions, clothing, merchandise etc. B, a manufacturer and distributor of beverages in Australia, decided to expand into energy drinks and their own Australian version of the Monster Energy drink. The two drinks had the same name, contained the same ingredients, and came in a can of the same size marked with the same colours. In response to these actions, Hansen brought proceedings seeking an injunction and damages, on the grounds that by selling their Monster Energy drink in Australia, Bickfords had engaged in passing off, among other things. The main issue was whether Hansen had a sufficient reputation in Australia in the MONSTER ENERGY mark, at the relevant date, in relation to energy drinks.

Held: On appeal from the Federal Court to the Full Federal Court it was held that in a passing-off claim, it is necessary to demonstrate that a significant or substantial proportion of persons within a relevant market, as opposed to the target market, were misled. He emphasised that this was the case, even if the relevant market was smaller than the target market. Justice Finkelstein was the most vocal on the issue of indirect advertising. On this subject he noted, that on the facts it was open to the primary judge to infer that the indirect advertising employed by Hansen could establish reputation as well as, if not better than, direct advertising and that in the first instance greater weight should have be given to the indirect marketing campaign undertaken by Hansen to establish its reputation. The case was remitted back to the trial judge but was settled before the hearing.

Element 2: Misrepresentation

A misrepresentation in passing off refers to conduct on the part of the trader which relies on the reputation or goodwill of the plaintiff usually by misrepresenting some sort of connection with the plaintiff’s business, goods or services and results in consumers coming to an erroneous conclusion about or being confused about a connection between the goods/services of that traders and those of another trader.

It is necessary to show that the defendant's conduct caused customers to be deceived. The misrepresentation must be capable of causing deception or foreseeable cause deception. 313) The misrepresentation may be express or implied, but it will usually be implied. Whether or not there has been a misrepresentation is ultimately question of fact for the court to determine. It is a matter of impression and there is no determinative factor that the court will necessarily turn to answer the question. 314). The existence of a misrepresentation is gauged by the court’s objective assessment of its impact on consumers.

Possible Forms of Misrepresentation

  1. There is a connection between the plaintiff’s and the defendant’s goods or services, when one does not exist;
  2. The plaintiff’s and the defendant’s goods or services originate from the same source;
  3. The defendant’s product is the plaintiff’s product;
  4. The plaintiff sponsors, endorses, or somehow approves of the defendant’s product; and
  5. The defendant’s product shares some exclusive quality with that of the plaintiff, such as where the defendants’ goods are represented as being made in a particular way or in a particular place when they are not, but the plaintiff’s are.

Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851 (PC)

Cadbury Schweppes (Solo): Advertising campaign on TV and radio. Themes of manliness and nostalgia for hotel squash. Campaign had considerable impact. Sold in bottles and cans. Pub Squash: Advertisements with intentionally similar themes of manliness and nostalgia. Similar sized can, colours and image. Held: no passing off. Similar advertising themes did not misrepresent the origin of the goods, despite respondent's intention to capitalise on the Solo advertising. Therefore no damage to reputation or goodwill. Not trying to pass off the product as connected to solo. Doesn’t prevent copying, only prevent misrepresentation as to associations.

Similarity of product:

“the evidence would seem to demonstrate that in most, although not all, cases in which there has initially been a wrong selection by a customer, or the wrong product has been offered by the shopkeeper, the error has been recognised before the purchase has been completed…. This being so, it seems to me that the defendant has sufficiently differentiated its product from that of the Plaintiffs'.” (Powell J at first instance)

Scope of protection:

“It is only if a plaintiff can establish that a defendant has invaded his “intangible property right” in his product by misappropriating descriptions which have become recognised by the market as distinctive of the product that the law will permit competition to be restricted. Any other approach would encourage monopoly.” ((at 863 C-D [44]))

Philips v Remington (2000) 100 FCR 90

Facts: Philips sold the only triple headed rotary electric shaver on the market. Philips registered trade marks were two-dimensional device marks depicting an equilateral triangular shape containing three circular shaving heads. Remington introduced a shaver of similar design.

Held: An action in passing was not successful. Passing off does not ground a monopoly on products, that is the realm of patent law. Patent has appropriate restraints on the monopoly, passing off does not and are indefinite so it is not appropriate that they function to restrict competition in this way. Remington absolutely copied but this could not be protected under passing off.

Lego System Aktieselskab v Lego M Lemelstrich Ltd (1983) 9 FSR 155

Facts: Loss of opportunity for business expansion. Defendant legitimately sold garden equipment under the name 'LEGO' in Israel.

Held: EWHC found that LEGO's reputation extended beyond toys and was a 'household word'. No intention to extend to gardening equipment was necessary. Substantial number of consumers would be deceived.

Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd (1996) 66 FCR 451

Facts: The Simpsons' producers had acquired substantial goodwill and reputation in Australia in the characters, names and images of The Simpsons, including “Duff Beer”. Duff's dictionary meaning not descriptive of beer, but had acquired a powerful secondary meaning associated with The Simpsons. The breweries’ use of “Duff Beer” was sufficient to create associations between the product and The Simpsons in consumers' minds. The breweries, in using the name “Duff Beer”, made use of an element which belonged to the reputation and goodwill of The Simpsons. The breweries intended to exploit the association between their product and The Simpsons - not an element of passing off, but can assist an applicant's case. Extensive licensing by the producers in Australia of T-shirts, caps and other merchandise depicting images from the series, including Duff Beer.

Held:The false impression created by the breweries’ product was that the producers had licensed the name - passing off.

Tamberlin J at 466-467:

"Their intention was to “sail as close as possible to the wind” in order to “cash in” on the reputation of The Simpsons without stepping over the line of passing off or deceit. The breweries knew that they were able by use of the name “Duff” alone to evoke the powerful association without using names or images. I do not think that the changes in can colour or the “tidying up” of the way “Duff” was written was effective to eliminate the association. Accordingly, I consider this knowledge is important evidence to support the inference that the goal of creating and exploiting the powerful association with The Simpsons had been achieved".

Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354

There was no evidence of intention to deceive or imitate by using the name MALT BALLS in relation to a product similar to MALTEASERS. Difference in names, and the appearance of those names, was decisive. Red floating balls conventional in the confectionary industry. No passing off – upheld on appeal.

Perram J at 362 [32]:

"Because the principal component in the Maltesers get-up is the word “Maltesers”, it is highly unlikely that any ordinary consumer of chocolate confectionary could mistake something which is not called a Malteser for a Malteser. In that sense, Mars is a victim of its own success. The fact that the Delfi jars carry the name “Malt Balls” and use slightly different visual features is sufficiently clear to distinguish them from the Maltesers products".

Video overview by Caroline Burrows on Mars Australia Pty Ltd v Sweet Rewards Pty Ltd

Henderson v Radio Corp (1960) 60 SR (NSW) 576

Facts: Image of the Hendersons used as a cover for a compilation entitled 'Strictly for Dance'. Held: NSW SC found that consumers could be misled to thinking that the Hendersons had approved or recommended the record. Misrepresentation amounted to passing off. There was no need for a common field of activity.

Fraud is Not an Essential Element

Proof of fraudulent misrepresentation is not necessary to prove passing off there is no requirement that deception be intended, but such an intention will be relevant to damages, and proof of an intention to deceive will assist in proving actual or likely deception (ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193; Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd (1980) 32 ALR 387). Deliberate appropriation of attractive features of a competitor’s product may lead to an inference of an intention to deceive. 315)

The Full Federal Court in Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157 held:

"… where a trader, having knowledge of a particular market, borrows aspects of a competitor’s get-up, it is a reasonable inference that he or she believes that there will be a market benefit in so doing. Often, the obvious benefit will be the attraction of custom which would otherwise have gone to the competitor. It is an available inference that such borrowing was “fitted for the purpose and therefore likely to deceive or confuse… Of course, the trader may explain his or her conduct in such a way as to undermine the availability of that inference. Obviously, this reasoning will only apply where there are similarities in get-up which suggest borrowing …"

In determining intent to defraud the conduct of the defendant must be viewed as a whole - consideration cannot be given to words or acts which in isolation would be likely to mislead if those words or acts, when put into context, were not capable of misleading. 316) In Parkdale the defendant's furniture closely resembled that of the plaintiff in a way that suggested deliberate copying. However, because the defendant adequately labelled their furniture so as to show the true origin of the goods, there was no passing off.

Whether or not there has been deception or likely deception is tested against a group of relevant persons, which is generally the class of potential customers likely to be affected by or exposed to the conduct. 317) It is necessary that a significant segment of the relevant class would be deceived. 318)

In practice, the issue is not who is likely to be deceived but rather whether the court decides, based on all the evidence, that conduct is deceptive. To do this the court will place itself in the shoes of a representative member of the relevant class of consumers and assess whether this hypothetical reasonable consumer would likely be deceived. 319)

The hypothetical consumer will take reasonable care, will not be overly gullible or astute, experienced or inexperienced. 320)

When considering whether conduct is likely to deceive the courts consider:

  • the price of the goods. The more expensive the goods, the more likely it is that consumers will spend more time enquiring about them and the less likely it is that conduct will deceive.
  • The court will allow for imperfect recollection. Deception will be more likely where items are not place side by side, if they are side by side (for example of a super market shelf) it is less likely deception will occur.

Other Requirements for Misrepresentation

Authority suggests misrepresentation must continue up until the point of sale and if cleared up before the point of purchase this will be insufficient for misrepresentation. 321) There must be likelihood of actual deception, mere confusion or a cause to wonder whether there is an association is not sufficient (Parkdale). However, if there is a deliberate attempt to create uncertainty, then this would amount to deception. 322)

Proving Misrepresentation

Expert evidence and survey evidence will be less useful in establishing deception than it will be in establishing reputation.

Witness evidence will be crucial where special markets are concerned. For example, goods of a kind which are not normally sold to the public. Consumer evidence will be permitted if it establishes the habits of purchasers. For example, whether goods are normally sold side by side so that visual comparisons are made before purchase. Consumer evidence regarding whether consumers would be deceived is irrelevant as this is a matter for the judge. Evidence of actual deception would be admissible.

Survey evidence will not be admissible to establish whether potential consumers would have been deceived, but evidence of instances of actual deception would be.

Element 3: Damage

There is no requirement that actual damage be shown, only a likelihood of damage - a real and tangible risk of damage. 323) Moreover, damage must only really be established if the plaintiff wants more than nominal damages or an injunction – ie where the plaintiff is seeking damages or an account of profits. Where the first two elements have been established in an action for passing off, damage will often be presumed. Damage must be by reason of an erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff.

Types of Damage

Courts have been liberal with the types of damage that will satisfy the cause of action, the following are some examples:

In a classic passing off action, where a defendant is trying to pass his goods off as those of the plaintiff, damage may be proven through a loss of sales or existing trade – that trade has been diverted away from the plaintiff and towards the defendant.

Damage may simply be to reputation – that the defendant will depreciate or destroy the plaintiff’s goodwill in the particular field in which the unauthorised conduct takes place, ie where the misrepresentation is to the quality of the goods on offer.

It may be damage to the plaintiff’s ability to launch products in the future or to expand into new areas of business.

Misrepresentation as to association may damage reputation or may deprive the plaintiff of possible licence fees for the use of the mark, or it may be the loss of potential to exploit their goodwill in the future etc.

Dilution may occur where there is a loss of to the distinctiveness of the product or business.

Disclaimers

It may be possible to avoid passing off by disclaiming any association with the plaintiff. To be effective any such disclaimer must be as bold, precise and compelling as the trade description itself and must be effectively brought to the notice of any person to whom the goods may be supplied. 324)

It is far less likely that a disclaimer will neutralise the effect of a particularly distinctive trade mark. More often than not, courts will take the view that a disclaimer will not be noticed or understood or that it might be too easily removed. 325) A disclaimer will be less likely to be effective where goods are ‘low involvement goods’ – goods where purchasing decisions are made quickly and without much thought or examination - generally cheap goods.

On the other hand, where goods are expensive, disclaimers are likely to be more effective because the goods will be subject to closer inspection prior to purchase. Courts will also consider whether normal labelling of product and if the product is labelled in the normal and reasonable way to indicate its correct origin, this will go against a finding of passing off. 326) There are no blanket rules when it comes to disclaimers.

Tamberlin J in Twentieth Century Fox v South Australian Brewing:

"In considering cases involving associations between a name and a product there must always be room for differences in each case arising from variations in the target market; the nature and strength of the associations conveyed by the use of the name; the way in which the product is distributed; and the way in which the use of the name is calculated to attract the market. These considerations make it unsafe to treat any particular decision as a precedent. Of course, some general guidance can be derived from particular decisions, but there is no formula to the effect that the use of any particular words of disclaimer such as “unauthorised” or that disavowal in the form of an express statement of disassociation will always serve to dispel such association in the marketplace".

Remedies

There are two main remedies available for an action in passing off. These are injunctions and damages. In instances involving fraud, an account of profits may be sought. Further, where there is evidence of fraud exemplary damages may be sought. 327)

Defences

There are a number of defences which apply to passing off.

These include:

  • Honest concurrent use;
  • Bona fide use of one's own name;
  • Consent;
  • Shared goodwill; and
  • Effective use of a disclaimer/sufficiently distinguishing the defendant's goods from the plaintiff's goods.

Passing Off Outside “Trade or Commerce”

A-G ex rel Elisha v Holy Apostolic Church of the East (1989) 37 NSWLR 293

Facts: Dispute as to which group within a church had the right to use the Church’s name in Australia.

Held: Young J recognised that a body formed to conduct religious services does not engage in trade or commerce. A religious organisation is entitled to the same protections of any goodwill in its name as commercial organisations. Passing off established.

Extension of Passing Off - Character Merchandising and Celebrity Endorsements

Passing off can be used in instances of character merchandising or celebrity endorsement. This provides, for famous people, an ability to prevent others from using their likeness. The basis for this is that consumers may be mislead into thinking the reputable person has endorsed the goods or services.

Character merchandising = using the reputation of a well-known fictitious character to give a name to and add to the popularity of goods not otherwise connected with the character.

Celebrity endorsements = Using a celebrity to endorse and contribute to the popularity of a particular product (that may or may not be connected to the particular celebrity).

Video overview by Billy Young on Character Merchandising

Elements

The elements of passing off for character merchandising and celebrity endorsements are:328)

  • The subsistence of some reputation acquired by the fictional character or celebrity; and
  • A misrepresentation by the defendant; and
  • The existence or threat of actual damage or likelihood of damage to the plaintiff as a result of the conduct in question.

Examples of Character Merchandising

Children’s Television Workshop Inc v Woolworths (NSW) Ltd [1981] 1 NSWLR 273

Korean-made toys looked sufficiently like the characters in the television program ‘Sesame Street’ such that persons (especially children) would be misled into believing that the toys were produced and sold with the approval of the CTW (the owner and producer of the television program and the characters and who licensed the right to reproduce the characters as soft toys).

Hogan v Koala Dundee Pty Ltd [1988] FCA 333

The inventor of a sufficiently famous fictional character having certain visual or other traits can prevent others from using his/her character to sell their goods and may assign the rights to use the character. In this case, Pincus J remarked:

‘The essence of the wrong done … is not in truth the misrepresentation that there is a licensing or sponsoring agreement between the applicant and the respondent; it is .... namely the wrongful appropriation of a reputation or, more widely, wrongful association of goods with an image properly belonging to the applicant.’

Pacific Dunlop Ltd v Hogan [1989] FCA 185**

Beaumont J said:

"The question for the judge to decide in the present case was whether a significant section would be misled into believing, contrary to the fact, that a commercial arrangement had been concluded between the first respondent and the appellant under which the first respondent agreed to the advertising".

Burchett J said:

"The consumer is moved by a desire to wear something belonging in some sense to Crocodile Dundee (who is perceived as a persona, almost an avatar, of Mr Hogan). The arousal of that feeling by Mr Hogan himself could not be regarded as misleading, for then the value he promises the product will have is not in its leather, but in its association with himself. When, however, an advertisement he did not authorise makes the same suggestion, it is misleading; for the product sold by that advertisement really lacks the one feature the advertisement attributes to it".

Twentieth Century Fox Corporation v The South Australian Brewing Co [1996] FCA 1484 Per Tamberlin J:

"There is no necessity to demonstrate that the viewer or consumer must think in specific terms of permission or allowance in order to constitute deceptive conduct. The intentional use of the name “Duff Beer” which produces the false association is sufficient …"

Examples of Celebrity Endorsements

Henderson v Radio Corp Pty Ltd (1960) 1A IPR 620

The defendant’s use of the image of two well-known ballroom dancers on a record cover gave the impression that the Hendersons had sponsored or authorised the use of their image.

Gary Honey v Australian Airlines Ltd and House of Tabor Inc [1988] FCA 177 Northrop J said:

"The groups and members of groups receiving the poster would have been aware that the poster was but one of many published and distributed by Australian Airlines depicting sporting activities in which, mainly, the persons whose photographs appeared were non-celebrities. On a true analysis, the poster should be described as promoting excellence in sport and the desirability of participating in sport".

Talmax Pty Ltd v Telstra Corporation Ltd [1997] 2 Qd R 444

An advertisement (including an article) promoting the Telecom Australian Open Swimming Championships and which featured a picture of Kieran Perkins suggested to the ordinary reader that he was endorsing Telecom products/services or had consented to the article and that he was a member of the Telecom Dolphins, which he was not.

Irvine v Talksport Ltd [2002] EWHC 367 (Ch)

Laddie J could not conceive of a clearer example of endorsement than the manner in which the defendant had used Eddie Irvine’s image, namely the use of a ‘doctored’ image of Irvine so as to make him appear to be holding a Talksport Radio and placing the said image on the front cover of their brochure.

Buttrose & Anor v The Senior’s Choice (Australia) Pty Ltd & Anor [2013] FCCA 2050

The defendants had no reasonable prospect of defending claims of copyright infringement, passing off and breaches of the ACL with respect to their use of an image of Buttrose together with a link to an interview she had done with the ABC

Passing Off and Misleading and Deceptive Conduct

Passing off protects reputation and the legitimate rights and business interests of traders. Consumer protection (misleading/deceptive conduct) legislation protects consumers from being misled or deceived.

Campomar Sociedad Limitada v Nike International Ltd (2000) 202 CLR 45 at 88

Passing off v trade marks: passing off operates similarly to trade mark infringement, however trade mark infringement is easier to prove. Where a trade mark is not applicable, passing off may prove a remedy.

Be aware of s 29 Australian Consumer Law: false or misleading representations about goods or services: (1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

  • (g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or
  • (h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation.

Parkdale v Puxu (1982) 149 CLR 191

Note: this is a Trade Practices Act 1974 (Cth) s 52 case (now Australian Consumer Law s 18), not a passing off case.

Puxu made and sold expensive furniture of distinctive appearance and design. It was advertised widely and had an established reputation. The design had not been registered under the Designs Act. Parkdale made and sold cheaper imitation furniture virtually identical to Puxu’s. Both company's furniture bore labels that could be tucked under the upholstery and hidden.

Not enough that Parkdale’s conduct is confusing or causes people to wonder [cf deceptively similar trade marks]. An ordinary person reading the labels could not be deceived or misled: purchasers of $1,500 furniture would look for a label to check the brand. If an article is properly labelled to name its manufacturer, then close resemblance to another article will not mislead an ordinary reasonable person.

Advantages of Trade Mark Claim over Passing Off

With trade mark infringement, there is no need to prove reputation. Defendants in trade mark actions cannot rely on disclaimers to the same extent as in passing off. Additional damages for trade mark infringement now available under new s 126(2) TMA – not available for passing off. Trade mark law will be considered in the following chapters in more detail.

Breach of Confidence

The equitable doctrine of breach of confidence is a remedy that protects all sorts of interests such as privacy and trade secrets. It sometimes operates as a quasi-privacy right. Whilst it is not as straight forward as enforcing a contractual non disclosure agreement for example, in some instances the breach of confidence doctrine can be used to prevent the disclosure of private or secret information.

Video overview by Nicolas Suzor on Breach of Confidence.

Origins of Breach of Confidence in Australia

There is no one body which governs confidential information. In Australia, we have a number of statues and relationship specific situations which seek to protect various types of confidential information. These are specific to types of relationships or duties owned in situations. For instance, a lawyer has a legal professional privilege and the Corporations Act 2001 (Cth) s 183(1) imposes obligations of confidence. These are just two examples, there are many others which set out specific obligations of confidence or protect secret information. Confidence may also be contractual, such as in a non-disclosure agreement.
In situations where there is no statue, contract or relationships which expressly protect confidential information, the doctrine of breach of confidence may assist.

What is Breach of Confidence?

As an equitable doctrine it is not as easy to enforce as contractual agreements. The doctrine of breach of confidence does not confer a property right but it does bind the conscience of a person receiving a secret. There are many uses for the doctrine such as:

  • Trade secrets, know-how, customer information, commercialisation information;
  • Non-contractual remedy to protect development of ideas / patentable information; and
  • As a quasi-privacy right.

Video overview by Benjamin Odman on Breach of Confidence and Personal Privacy

Elements

There are three elements to an action of breach of confidence:

  1. Confidential information;
  2. Disclosed in circumstances of confidence;
  3. Actual or threatened disclosure.

There is a fourth element which applies in instances of Government information. This applies where disclosure of information would be against the public interest.

Each of these elements will be considered in turn.

Element 1: Quality of Confidence

This element requires is based on a requirement of secrecy. Should the information enter the public domain, the quality of confidence is lost. It is sufficient for relative secrecy 329), total secrecy is not required.

Information can be disclosed if recipient is under an obligation of confidence. 330)

Ansell Rubber Co v Allied Rubber Industries [1967] VR 37

Trade secret case. The machine was patented but improvements were not. Have regard to:

  • the extent to which the information is known outside the owner's business;
  • the extent to which it is known by employees and others involved in his business;
  • the extent of measures taken to guard the secrecy of the information;
  • the value of the information to him and to his competitors;
  • the amount of effort or money expended by him in developing the information; and
  • the ease or difficulty with which the information could be properly acquired or duplicated by others.

Argyll v Argyll [1967] Ch 30

Duchess of Argyll obtained an injunction to prevent disclosure of marital secrets by her ex-husband.

“Secrets […] relating to her private life, personal affairs or private conduct, communicated to the first defendant in confidence during the subsistence of his marriage to the plaintiff and not hitherto made public property.”

Commonwealth v Fairfax (1980) 147 CLR 39

Leaked information was embarrassing to Cth Government. Once the information was published, it lost its character of confidentiality.

“The sales of the book already made, including those made to Indonesia and the United States, the countries most likely to be affected by its contents, and the publication of the first instalment in the two newspapers, indicate that the detriment which the plaintiff apprehends will not be avoided by the grant of an injunction. In other circumstances the circulation of about 100 copies of a book may not be enough to disentitle the possessor of confidential information from protection by injunction, but in this case it is likely that what is in the book will become known to an ever-widening group of people here and overseas, including foreign governments”. (54, Mason J)

AG v Guardian (No 2) (Spycatcher)

  • Former MI5 agent moved to Tasmania to escape UK law and write a book revealing some MI5 secrets.
    • British could not enforce UK legislation here.
    • Information was leaking rapidly.
    • Injunction to prevent further publication not available.

Video overview by Sam Turner on Spycatcher, Breach of Confidence

Video overview by Cam McCall on Spycatcher, Breach of Confidence

Element 2: Circumstances give rise to an obligation of confidence

There are certain circumstances which give rise to a situation where confidence is expected. This situation would be present where a reasonable recipient (of information) would believe that the information was given in confidence.

An obligation of confidence may also be present in situations where:

  • Information received pursuant to a contract (Bate's Case);
  • Information received in a course of relationship – employment, contractual, or fiduciary;
  • Could extend to a third party if third party knows or ought to know that the information is confidential; and
  • Surreptitiously obtained information.

Coco v A N Clark (Engineers) [1969] RPC 41

This cases asked whether a reasonable person in the position of the recipient would have recognised that the information was given in confidence (Megarry J). The information was provided in the course of contractual negotiations around a new moped engine. It was held that the circumstances imposed an obligation of confidence, however the information was not sufficiently novel.

AG v Guardian (No 2) (Spycatcher)

Duty not limited to relationships:

"also to include certain situations, beloved of law teachers, where an obviously confidential document is wafted by an electric fan out of a window into a crowded street, or when an obviously confidential document, such as a private diary, is dropped in a public place, and is then picked up by a passer-by” (Lord Goff, in obiter)

Douglas v Hello! [2005] EWCA Civ 595

In this case, Douglas' negotiated to commercialise the photography rights at their wedding. The wedding had the quality of confidence. The photographs were taken by a surreptitious gatecrasher. It was held that the circumstances satisfied the equitable obligation.

Element 3 - Actual or Threatened Use

The third element involves actual or threatened use of the confidential information. This includes:

  • Use without consent;
  • Use beyond scope of limited purpose; and
  • Unauthorised use of the information.

Intention to breach is not an element of the doctrine.

There must be detriment sufficient to show either:

  • Loss of commercial advantage;
  • Ability to exploit;
  • Embarrassment; and
  • Exposure to discussion and / or criticism.

Justification Defence

The defence of justification may be used to defend the disclosure. Information can be disclosed where there is just cause or excuse.

There are three main reasons that may be evoked under a just cause or excuse defence. These are an argument in support of iniquity, a disclosure of wrongdoing or for public safety of community (strongest approach) or, to balance the public interest. The justification on the base of balancing the public interest is not an accepted argument in Australia but has been used in the UK.

Video overview by Paris Hamrey on Breach of Confidence and the Public Interest

Corrs Pavey Whiting and Byrne v Collector of Customs (Vic) (1987) 10 IPR 53

The applicant represented patentee; sought documents under FOI relating to importation of patented drug. Customs declined, citing breach of confidence. Gummow J, dissenting, discussed the existence public interest test, suggesting that it was better thought of as equity barring the plaintiff on the basis of unclean hands; and no quality of confidence in equity for information that shows crimes, wrong or misdeeds of public importance.

Naomi Campbell v Mirror News (2004)

Campbell's attendance at Narcotics Anonymous may have had the necessary degree of confidentiality (doubted on appeal). Confidence was lost by Campbell's deliberate courting of the media and an anti-drug reputation. (Public interest test).

Remedies

There are a number of remedies available for breach of confidence.

These include:

  1. Injunctions - Interlocutory or Permanent.
  2. Damages, account of profits - Usually plaintiff seeks an injunction.

Beware of the Streisand effect. The Streisand effect is a phenomenon whereby an attempt to hide, remove, or censor a piece of information has the unintended consequence of publicising the information more widely, usually facilitated by the Internet. 331)

Registered Designs

Designs are used to protect the unique and distinct appearance of mass produced products. This protects one or more aspects of the visual appearance such as pattern. Designs do not protect the materials the products are made of.

Video overview by Nicolas Suzor on Registered Designs.

Designs

Designs are protected under the Designs Act 2003 (Cth) (DA). A design protects the visual appearance of mass produced goods. To gain protection of a design, it must be registered.

Design Definition

A design is “the overall appearance of the product resulting from one or more visual features of the product”. 332)

A visual feature “includes the shape, configuration, pattern and ornamentation of the product”. 333) A visual feature is not the feel of the product or the materials used.

Video overview by Amara Boustead on What a 'Product' is in Design Law

Video overview by Sophia Shen on What a 'Product' is in Design Law

Registration of Designs

In order to obtain registration, a design must be “new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design”.334) Pursuant to s 16(1) of the Act, a design is new unless it is identical to a design that forms part of the prior art base for the design. Under DA s 16(2), a design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design.

Substantial Similarity

In determining substantial similarity 335) more weight must be given to the similarities than differences.
There must be regard to:

  • the state of development of the prior art base;
  • the features described in the application;
  • the importance of a similar component in the context of the whole; and
  • the freedom of the creator of the design to innovate.

Registration Process

The owner of a design is entitled to apply for its registration. 336) A design application may be in respect of more than one design. 337) Registration occurs without substantive examination - only the formal requirements are checked. 338)

Request for Registration or Publication

Applicants must request either registration or publication. 339)

Publication is an alternative to registration. It does not give the design protection, but prevents subsequent registration of the same design by a third party. It may entitle the applicant to rely on copyright protection. The application will be checked to see if it satisfies the minimum requirements. 340)

Registration of an application will occur after an initial formalities check. 341) Once registered, the details of the design will be published and the Registrar will issue a certificate of registration. 342) If the Registrar is not satisfied with the application, the applicant will be given the opportunity to amend it. 343)

Post-Registration Examination

Examination now occurs post-grant, if a person requests or the court orders examination. 344) Infringement proceedings cannot be launched until examination has occurred. 345) If there is no ground for revocation, a certificate of examination is issued. 346) However, if grounds of revocation are found, either the owner must be allowed to amend it if possible, 347) or the registration will be revoked. 348)

Duration

A design is initially valid for 5 years, but can be renewed for a total of ten years if the renewal fee is paid. 349)

Exclusive Rights

A design gives the owner exclusive rights to control the way that products embodying the design are used. 350)

These rights include:

  • Make or offer a product which embodies the design;
  • Import for sale or for trade or business;
  • Sell, hire, or otherwise dispose of;
  • Use in any way for trade or business;
  • To keep to sell, hire, or use; and
  • To authorise others to do any of the above.

Embodies the design

A design will not be registrable or may be infringing if it is considered to “embod[y] a design that is identical to, or substantially similar in overall impression to, the registered design”. Same factors as for registrability. 351)

In Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd (2008) 246 ALR 119, the court decided that the Lili dress was substantially similar to a Review dress.

Infringement

Infringement proceedings can be brought once the design is examined and a certificate of examination is issued. 352) The onus is on the registered owner to show infringement. 353) Infringement occurs when, without licence or authority: 354)

  • A person makes or offers to make a product, in relation to which the design is registered, which embodies a design that is identical to, or substantially similar in overall impression to, the registered design;
  • Imports such a product;
  • Sells, hires or otherwise disposes of such a product;
  • Uses such a product in any way for the purpose of any trade or business; or
  • Keeps such a product for the purpose of doing any of these things.

Spare Parts Defence

The spare parts defence allows use of a product to repair a complex product. Does not cover use of the component part as original equipment or non-repair uses. 355)

Remedies

In the case of infringement of a registered design, a court may award an injunction subject to such terms as the court thinks fit; or they may award damages or an account of profits.

A court may refuse to award damages, if at the time of the infringement, the defendant was not aware that the design was registered and had taken all reasonable steps to ascertain whether the design was registered. 356)

The Design/Copyright Overlap

An important principle of design protection is that the courts and legislature attempt to prevent people from being simultaneously protected by both the design and copyright systems. Industrial applications of visual features are best suited to be protected by designs (as opposed to copyright).

Particular designs that might be protected by copyright may loose its copyright protection if the design has been applied industrially to mass produced products. This will be discussed in more detail below.

Not all copyright protections are lost in the copyright design overlap. The copyright design overlap does not apply to flat designs such as printing on T-shirts. It only applies in visual features of the 3D product.

Importantly, the copyright design overlap doesn’t apply to industrial works of artistic craftsmanship.

Video overview by Nicolas Suzor on The Overlap Between Copyright and Design.

Recap: Copyright Infringement

Reproduction of an artistic work is an infringement. 357)
2D ↔ 3D reproduction of an artistic work is an infringement. 358) Artistic work includes paintings etc; buildings and models; and works of artistic craftsmanship. Reproduction of works of artistic craftsmanship is also an infringement (3D to 3D).

Application on a 3D object

Reproduction of an artistic work. If design is registered, also embodied on a product.

Plans

Reproduction of an artistic work to copy the plans. Reproduction of an artistic work to make the dress.

Models, mock-ups

If the model is a work of artistic craftsmanship, the reproduction will be an infringement (covers 3D to 3D). Sometimes applies to the first production item of some garments.

Design/Copyright Overlap

Articles that can be registered as designs are not eligible for copyright protection. Shorter term of design protection is more appropriate for industrial designs.

Pursuant to the Copyright Act 1968 (Cth), where a design is or has been registered, it is not an infringement of an artistic work to reproduce the work by embodying that, or any other, corresponding design in a product.359)

Pursuant to the Copyright Act 1968 (Cth) where a design has been applied industrially, it is not an infringement of an artistic work to reproduce the work by embodying that, or any other corresponding design in a product. 360) 'Applied industrially' is a question of fact, although a design will definitely be industrially applied if there is more than 50 articles (Copyright Regulations 1969 (Cth) r 17). This is the presumption set out in the Copyright Regulations 1969 (Cth). Once this has occurred, the design is considered to be a mass produced industrial application and the right holder looses their ability to be protected by copyright protection. Creators who intend to mass-produce their designs should apply for design protection.

Note this does not apply to works of artistic craftsmanship, buildings or models of buildings.

Corresponding Design

Corresponding design “means visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work, whether or not the visual features constitute a design that is capable of being registered under the Designs Act 2003”. 361) Does not cover flat designs (artistic works printed on a product are still protected under copyright).

Coogi v Hysport (1998) 157 ALR 247

The first production run of a knitted fabric was a work of artistic craftsmanship. Produced by refining a mechanical process in line with aesthetic decisions. Could show reproduction of a substantial part of the fabric by showing that another fabric had “the essential 'look'” of the original. Objective similarity not made out on the facts.

Muscat v Le [2003] FCA 1540

Sample pants were not works of artistic craftsmanship:

“The sample garments were not created as works of art. They came into existence for the purpose of determining how the design would look and to enable Ms Muscat to decide whether any changes should be made before production commenced. In any event, the sample garments are not works of craftsmanship and Ms Muscat never intended them to be”. (Finkelstein J, [49])

Copyright did subsist in the patterns. Right to prohibit manufacture lost under 1996 Act (and 2003). Pattern was indirectly copied when the defendant created their own patterns from the pants. Copyright infringement under 1996 Act. 'Plan to plan' copyright protection is now also lost under the 2003 Act.

Plan-to-Plan and Advertising Exception

It is not an infringement of copyright in an artistic work to reproduce if reproduction is derived from a 3D product that embodies a corresponding design; and reproduction is in the course of making, selling, or advertising a non-infringing product.362)

Burge v Swarbrick (2007) HCA 17

Naval architect hand-built life size prototype ('plug') for fibreglass moulds. Held - not a work of artistic craftsmanship. Matters of visual and aesthetic appeal were secondary to function. Therefore s 77 removed copyright protection.

IP in the Fashion Industry

Intellectual property is a valuable tool used protect works in the fashion industry. Many aspects of intellectual property are involved in protecting fashion such as copyright, trade marks, patents and designs.

The following video discusses the way intellectual property operates in the fashion industry and outlines the copyright design overlap and how it effects fashion works.

Video overview by Emily Burns on IP in the Fashion Industry

Trade Mark Overview

This chapter explores trade mark law including the origins of trade marks, the law in Australia and international trade mark law.

History and Source of Trade Mark Law

The origins of trade mark law can be traced back to medieval times when traders often used signs and symbols to direct customers to their goods within a market place. Some historians believe that the use of marks in trade can be traced back even further to ancient civilisations where these marks were used to identify the origins of goods and indicate attributes such as quality and ownership.

In Australia, there are a number sources of trade mark law including:

  1. International law and treaties; and
  2. The common law tort of passing off.

Introduction to Trade Marks

As noted above, trade mark law is governed by the Trade Marks Act 1995 (Cth) (TMA). Trade mark protect gives the registered owner the exclusive right to use the trade mark or authorise another person to use the trade mark in relation to the goods or services in which it is registered. These exclusive rights include the right to obtain relief if the trade mark has been infringed. 363) Trade mark law overcomes some of the limitations of passing off.

Video overview by Dan Hunter on The Need for the Trade Mark Law System.

Rationale for Protection

Trade marks serve the economic function of reducing consumer search costs by helping consumers to find products they know and like. At the same time, trade marks give producers incentives to maintain quality standards and promotes investment.

Video over by Brian Hensel on The Rationale for Trade Marks

International Law and Trade Marks

The trade marks legislation was amended in 1995 to align with Australia's obligations under the Agreement of Trade-Related Aspects of Intellectual Property Rights (TRIPS). As Australia is a WTO country, there are a number of minimum standards relating to trade marks that each WTO country must meet. This includes having a trade mark registration system. Whilst trade marks do not have to be registered, there are a number of benefits of using the trade mark system as opposed to relying on the common law to recognise ownership of trade marks through reputation. These benefits include 'prima facie proof of ownership'.

The Registration Process

The process of registering trade marks involves seven steps.

  1. Application: An application is made under s 27 TMA;
  2. Examination: The Trade Mark Office examines the trade mark, and an amendment is made if necessary;
  3. Acceptance/Rejection: The Trade Mark Office either accepts or rejects the trade mark;
  4. Opposition: The Trade Mark Office advertises the trade mark for two months, during which time any third party can object to the trade mark;
  5. Registration: If no oppositions are lodged, or after oppositions are successfully overcome, the trade mark is registered;
  6. Renewal: A trade mark is valid for 10 years, and must be renewed every 10 years to remain on foot under s 75 TMA;
  7. Amendment/Cancellation: Once a trade mark is registered, it can be amended or cancelled on application of interested third parties or the registrar. The onus is on the party seeking the amendment or cancellation.

The process of registering domestic and international applications for trade marks will be discussed in the following chapter.

Trade Marks Act 1995 (Cth)

The TMA made significant changes to the law relating to trade marks and, as noted earlier, this was in part a response to Australia’s new obligations under the TRIPS. As a result of the changes, the TMA was broadened to offer protection where a trade mark is used in relation to goods of the same description or in relation to closely related service.

The TMA also offers extended protection to well-known marks, by granting protection where the trade mark is used on unrelated goods or services.

The TMA further permits the registration of trade marks that are not inherently distinctive but become distinctive through use. 364)

While there are significant differences between the 1955 Act and the TMA, many existing concepts were left in place in the current Act, and so cases decided under the 1955 Act are still relevant.

Why Have a Registered Trade Mark System?

The TMA was introduced to help overcome some of the limitations of passing-off law. In particular, the legislative regime for registration sought to overcome the difficulty of having to prove reputation before an action could be brought against the misappropriation of a trade mark. It also provided a system of property rights in the mark itself, the appropriation of which was not dependent on their being a misrepresentation.

The TMA provides certainty, by clearly defining the boundaries of a trade mark. It also gives property rights in the trade mark itself, rather than in the goodwill attached to the mark.

What Does Trade Mark Registration Give You?

Registration gives the registered owner the exclusive right to use the trade mark or authorise another person to use the trade mark in relation to the goods and services in which it is registered. 365) The trade mark owner also has the right to obtain relief if the trade mark is infringed. 366) A trade mark is infringed if it is used in a manner specified in TMA s 120.

Definition of a Trade Mark

A trade mark is defined as a sign which is used in trade or commence to distinguish a product from another. There are three elements which make up a trade mark.

A trade mark must:

  1. Be a sign (or a symbol);
  2. Used or intended to be used; and
  3. Distinguishing goods or services in the course of trade.

These elements will be outlined in more detail below.

Video overview by Dan Hunter on The Definition of a Trade Mark.

A Sign

A sign includes the following or any combination of the following, namely: letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent. 367)

Used or Intended to be Used to Distinguish

Use ‘as a trade mark’ is use of the mark as a badge of origin whether the trade mark would have been understood by consumers as being used to indicate a connection in the course of trade between the goods or services and the person using it.

Use of a trade mark in relation to goods/services also means use of the trade mark upon, or in physical or other relation to, the goods (including secondhand goods) or services. 368)

Distinguishing Goods or Services in the Course of Trade

There is no requirement that trade result in actual sales or dealing in the goods – it is enough if the goods or services have been offered or advertised for sale or hire. However, a trade mark must be registered with respect to one or more classes of goods and/or services. 369) There are 34 classes of goods and 11 classes of services. See IP Australia, Trade Marks Classification Search, Classes of Goods

Video overview by Morgan Beames on The Classification System for Trade Marks

Video overview by Maddy Ryan on The Classification System for Trade Marks

Types of Trade Marks

There are four types of trade marks which can be registered:

  1. Standard trade mark: A sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade, from goods or services dealt with or provided by any other person. 370)
  2. Collective trade mark: A sign used by members of an association to distinguish goods or services provided by persons who are not members of that association. For example, Industry Super Funds
  3. Defensive trade mark: Protects well-known marks where a trade mark has been used to such an extent for goods or services that its use on other goods or services is likely to mislead the public. A defensive trade mark is not subject to use requirements. For example Holden, Coke, Levi's.
  4. Certification trade mark: A sign distinguishing goods or services in respect of origin, material, mode of manufacture, accuracy or some other characteristics. For example Woolmark, Heart Foundation Tick, Fresh Care.

Video overview by Luke Chandler on Defensive Trade Marks

Video overview by Ethan McCann on Certification Marks

Non-Traditional Trade Marks

Aspect of Packaging, Shape

An aspect of packaging or part of a product may constitute a trade mark. For example, in Re Application by Hamish Robertson, 371) the crest on the neck of a bottle of alcohol was capable of being registered as a trade mark, as it was very unusual and quite distinctive.

A shape may include the entirety of the goods. If the shape of the goods is not essential and is separate from the function of the goods, the shape can be registered as a trade mark. However, a shape cannot be registered if it is entirely functional. 372)

In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks, 373) the 3D shape of an imaginary six-legged spider-like creature (the millennium bug), was capable of registration as a trade mark as it had no functional significance, was distinctive of the applicant's product and was not based on an actual bug that existed in nature.

However, in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd, 374) the design of a triple-headed rotary shaver could not be registered as a trade mark since the configuration of the three heads was the best design and did not add anything extra to distinguish the product.

Colour

Colour is an important element to brands. The colour often acts as a visual symbol provoking memories and attachment. Colour is expressly listed as able to constitute a sign. 375)

The legal requirements for colours to be trade marks are

  1. needs to be distinctive; and
  2. needs to be used as a trade mark.

In order for a colour to be distinctive it needs to be capable to distinguish goods and services from other products and services and can't be the submissive element of the trade mark.

In order for a colour to be distinctive it needs to be capable to distinguish goods and services from other products and services. To determine whether a colour is being used as a trade mark an objective analysis of the purpose and nature of the use of the colour must be undertaken. The colour must be used as a ‘ badge of honour’ to distinguish the product form those of other competitors.

Video overview by Emily Rees on Colour Marks

Video overview by Kate Clinton on Colour Marks

Colour can be registered as a trade mark if the colour is distinct and has no functional purpose.

In Philmac Pty Limited v The Registrar of Trade Marks, 376) a terracotta shade on plastic pipes and pipe fittings could be registered as a trade mark as the colour had no functional purpose. In contrast, in Smith Kline and French Laboratories (Australia) Ltd v Registrar of Trade Marks,377) the colour scheme of a pharmaceutical capsule which was half transparent and revealed multi-coloured pellets of medicine was refused registration as the trade mark could not be described apart from the capsule.

Video overview by Paula Harrison on Colours

Sound

Sound trade marks are considered non-traditional trade marks and require more detailed information in order to be registered. This includes sheet music to represent the sound and an audio copy of the sound.

Much like other types of trade marks, in order to register the sound mark the sound must be distinctive and needs to be used as a trade mark.

To be distinct it must provide an audible identifier that sets the product out as being unique (as opposed to common functional sound).

Video overview by Darren Brown on Registering Sounds

Registering Scents

According to s 6 of the TMA a scent is capable of being a trade mark. In order to be considered a trade mark, the scent must be distinctive enough to distinguish the product from other products and services.

Scents alone can’t be registered as a trade mark, they must form only part of the trade mark application.

The trade mark legislation was amended in 1995 to include scents, and to date, there has been no cases heard within Australia regarding scents and trade mark law.
As with all other types of trade marks, scents are only registrable if they distinguish and so long as the scent does not form part of the product. For example, a coffee shop could not trade mark the scent of coffee as the scent forms part of the product.

Scents also must be adequately described in writing or graphically represented in the trade mark application and the applicant needs to be able to outline how the scent will be applied in the trade mark.

There is no requirement to provide a sample of the scent when applying for trade mark registration, however it can be requested at the point the registration application is reviewed.

Video overview by Luana Maeyke on Scent Marks

Video overview by Rica Ehlers on Scent Marks

Trade Mark Registration

Registration Process

Trade mark applications is a relatively simply process. Applications can be made online and do not always require legal assistance. The below video provides an overview of the registration process.

Video overview by Dan Hunter on Registration of Trade Marks.

There are five stages in the application process.

The first stage is completing the application which can be filled out either online or by paper. The application is in a prescribed form. 378) In order to complete the application, the applicant needs to set out the sign and class which the sign will operate in. In order to determine the particular class the mark is to be registered in, the applicant will need to consider the 45 classes and choose the one which best suits the purpose of the sign. Once the application is complete the applicant will pay the required fee and attend to filing.

The second stage of the process is the examination. The examiner reviews the application and determines whether there are any reasons why the trade mark should not be registered. There are two main reasons a mark may not be registered. First, if another person already has a mark registered in the same class which is deceptively similar to the mark being sought for registration. Second, if the mark is scandalous, such as a profanity. There are a number of other potential reasons a trade mark may not be registered. These will be discussed below in this chapter.

The third stage involves the outcome of the application; the decision. The application will be either accepted or rejected. If the application is accepted the trade mark is then published for opposition.

The fourth stage is the opposition. The trade mark is published in the journal of the Trade Mark Office for the purpose of the public, especially other traders to oppose the trade mark if they believe they are effected. This may involve other trade mark holders opposing on the basis of a number of reasons including deceptive similarity. The opposition period is two months. If the trade mark is opposed there will be a hearing. If there is no opposition at the end of the two month period or if the opposition is dismissed the registration will be formalised.

The final stage is registration. The registrar must register the trade mark. 379) The trade mark will be afforded 10 years of protection from the date of filing of the application. As noted in the previous chapter, this period of protection can be extended indefinitely.

The below video is a detailed overview of the mechanics of the trade mark registration process.

Video overview by Dan Hunter on The Trade Mark Registration Process

Benefits of Registration

Registered trade marks are registered for a period of 10 years initially and can be renewed indefinitely after this time. The basic requirement to renew the trade mark is continuous use of the mark. 380)

Trade marks are not domain names or business names or company names. They are signs that are applied to a product or service to distinguish a product or service from something else. The difference is that whilst names are significantly important, they are not trade marks. Unlike names, trade marks denote the origins of a product or service.
There are 45 goods and services classes within trade marks which refer to the different sorts of goods. These classes divide up the trade mark system so that you can have the same trade mark word in different classes.

Trade marks are geographic. Australian trade marks only apply in Australia and US trade marks only apply in the US. An example of this is Burger King and Hungry Jacks. Whilst Burger King owns Hungry Jacks in Australia, the trade mark for Burger King was already owned by another company in relation to burgers in Australia and as such, Burger King chose a new brand for their Australian chains. Burger King has since taken over the trade mark of Burger King in Australia, however due to the positive reputation of Hungry Jacks, Burger King has not changed the brand of Hungry Jacks in Australia.

Trade marks are also considered a form of personal property. This allows the owner to license the mark to other people and companies. This can be very effective when using one brand on another product such as using the superman logos on bed sheets.

Video overview by Dan Hunter onThe Benefits and Requirements of Registration

Entitlement to Apply for Registration

A person may apply for registration if the person claims to be the owner of the trade mark. 381) A person may apply for registration by showing actual use of the trade mark within the jurisdiction, before any other person. A person can also apply for an un-used mark if the person created the trade mark, intends to use it and applies for registration before anybody else.

Pursuant to s 17 of the TMA, trade marks must be used in order to be registered. Use is generally straightforward; a mark is applied to a product or service which satisfies the use requirement. There are some marks where use is not as clear. These situations are where consumers do not recognises the mark as an indication of source. In these instances the use requirement may not be satisfied.

The key question to be considered is whether the mark, in the eyes of the consumer, denotes the source. The following video discusses this complexity of use in trade mark law.

Video overview by Dan Hunter on The Use Requirements of Trade Mark Registration

Registrability: Grounds for Refusal

There are a number of grounds for refusal of a trade mark application.

These include:

  • The applicant is not the owner of the trade mark; 382)
  • The trade mark contains a prescribed sign; 383)
  • The trade mark cannot be represented graphically; 384)
  • The trade mark is not capable of distinguishing; 385)
  • The trade mark is scandalous or contrary to law; 386)
  • The trade mark is likely to deceive or cause confusion; and 387)
  • The trade mark is substantially identical or deceptively similar to a registered trade mark. 388)

There is a presumption of registrability.389)

The Applicant is Not the Owner of the Trade Mark

The application for registration may be refused on the basis that the applicant is not the owner of the trade mark. 390)

Contains a Prescribed Sign

A trade mark cannot be registered if it contains or consists of a prescribed sign – as set out in Schedule 2 of the Trade Mark Regulations 1995. 391) For example, a trade mark cannot contain ©, Patent, National Flags, Coat of Arms, names of cities, towns, public authorities etc.

Graphically Represented

A trade mark cannot be registered where it cannot be described in writing and/or drawing. A trade mark must not be solely graphically represented. 392) See Trade Marks Office Manual of Practice and Procedure Part 21.

Video overview by Chris Ormandy on Graphic Representation

Video overview by Jacob Briggs on s 40

Not Capable of Distinguishing

An application for registration must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services from the goods or services of other persons. 393)

Video overview by Nic Suzor on The Requirement of Distinctiveness

There are three categories of distinctiveness

  • Inherently adapted to distinguish;
  • Trade marks that in fact distinguish; and
  • Trade marks adapted to distinguish to some extent.

A trade mark must be rejected if it meets the negative criteria set out in TMA s 41.

Inherently Adapted to Distinguish

TMA s 41 Note 1 deals with trade marks that are inherently adapted to distinguish. Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a) The kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of the goods or services; or

(b) The time of production of goods or of the rendering of services.

Trade marks that are capable of distinguishing due to their intrinsic characteristics will be inherently distinctive, irrespective of use, intended use or other circumstances. Kitto J in Clark Equipment Co v Registrar of Trade Marks, 394) outlined the test for inherent distinctiveness:

‘The question whether a trade mark [MICHIGAN for earthmoving equipment] is adapted to distinguish [must] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated by only proper motives ... will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.’

The following trade marks are not inherently adapted to distinguish:

Trade Marks that in Fact Distinguish

TMA s 41(3) applies where a trade mark is not to any extent inherently adapted to distinguish; and the applicant has not used the trade mark before the filing date to such an extent that it does in fact distinguish the goods/services as being those of the applicant.

Trade marks that have no inherent adaptation to distinguish should be dealt with exclusively under s 41(3) and will require a significant amount of pre-filing date use of the mark to show that it is factually distinctive at the time of filing.

In Ocean Spray Cranberries v Registrar of Trade Marks, 399) 2.5 years of pre-filing use was not enough to overcome the marks lack of distinctiveness.

Video overview by Patrick Johnson on Distinctiveness

Trade Marks Adapted to Distinguish to Some Extent

TMA s 41(4) applies where the trade mark is to some extent adapted to distinguish AND the trade mark does not and will not distinguish the designated goods/services having regard to the combined effect of the following:

  • (i) The extent to which the trade mark is inherently adapted to distinguish the goods/services from the goods/services of other persons;
  • (ii) The use, or intended use, of the trade mark by the applicant;
  • (iii) Any other circumstances.

Gazal Apparel Pty Ltd v Fine Lines Extraordinary Apparel Pty Ltd400)

In Gazal Apparel Pty Ltd v Fine Lines Extraordinary Apparel Pty Ltd, 401) it was held that the word combination 'Fineform' had some descriptive connotation, but it is not one most appropriate for normal description of the goods in question. However, when combined with the other relevant factors (evidence of sales, promotion, etc), the trade mark 'Fineform' for lingerie could be registered.

Video overview by Jessica Bell Distinctiveness

Distinctiveness of Non-Traditional Trade Marks

There are two types on non-traditional trade marks. These are:

  • Shape trade marks; and
  • Colour trade marks.

Each of these will be discussed below.

Shape Trade Marks

Whether a shape trade mark is distinctive often involves determining whether the shape has any functional significance.

Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd402)

In Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd, 403) the design of a triple-headed rotary shaver could not be registered as a trade mark since the configuration of the three heads was the best design and did not add anything extra to distinguish the product.

Chocolaterie Guylian N.V. v Registrar of Trade Marks

In Chocolaterie Guylian N.V. v Registrar of Trade Marks, 404) the seahorse shape of Guylian chocolates could not be registered as a trade mark as Guylian did not use the shape as its trade mark. Despite evidence that consumers associated the shape with Guylian chocolates, Guylian solely used its name as a badge of origin for goods. The seahorse shape was thus not distinctive.

Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks405)

In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks, 406) the 3D shape of an imaginary six-legged spider-like creature (the millennium bug), was capable of registration as a trade mark as it had no functional significance, was distinctive of the applicant's product and was not based on an actual bug that existed in nature.

Colour Trade Marks

Philmac Pty Limited v The Registrar of Trade Marks407)

In Philmac Pty Limited v The Registrar of Trade Marks, 408) a terracotta shade on plastic pipes and pipe fittings could be registered as a trade mark as the colour had no functional purpose. In contrast, in Smith Kline and French Laboratories (Australia) Ltd v Registrar of Trade Marks, 409) the colour scheme of a pharmaceutical capsule which was half transparent and revealed multi-coloured pellets of medicine was refused registration as the trade mark could not be described apart from the capsule.

Woolworths Limited v BP p.l.c. 410)

In Woolworths Limited v BP p.l.c., 411) Woolworths successfully opposed BP's application to register a shade of green in respect of service stations. BP failed to show it used the colour as a trade mark, as the colour was always used in conjunction with the BP logo. The shade of green alone was not capable of distinguishing BP's goods.

Contrary to Law and Scandalous Trade Marks

A trade mark will be contrary to law if its use would violate another law, 412) (such as defamation, copyright, or Australian Consumer Law, Competition and Consumer Act (Cth) 2010) or if the trade mark is not allowed to be registered pursuant to law (e.g. Sydney Olympics, Melbourne Commonwealth Games, Australian Grand Prix). See for example Advantage Re-A-Car v Advantage Car Rental P/L. 413) where the trade mark was refused because it would contravene the Copyright Act 1968 (Cth), as it would give rise to copyright infringement of an artistic work.

A trade mark will be deemed scandalous if it is found to cause a significant degree of disgrace, shame or outrage.414) 415)

Connotation Likely to Deceive or Cause Confusion

An application for registration must be rejected if, because of some connotation the use of the trade mark (or a sign contained in the trade mark), in relation to those goods/services, would be likely to deceive or cause confusion.416) The connotation may exist because the mark falsely suggests some quality or connection to the goods or services that it does not have.

Scotch Whisky Association v De Witt 417)

In Scotch Whisky Association v De Witt, 418) an application for the trade mark 'Glen Oaks' for bourbon was refused on the basis the words 'Glenn Oaks' (particularly 'Glenn') conveyed a clear connotation of Scottish origin, and its use in relation to bourbon products was likely to deceive or cause confusion.

Video overview by Roohi Gill on the Likelihood of Deception or Confusion

Video overview by Trent Stephens on Section 43 Deceptive and Confusing Marks

Substantially Identical/Deceptively Similar

An application must be rejected if the trade mark is substantially identical with or deceptively similar to an existing trade mark.419) This applies:

  • Where the application is for goods – the existing trade mark is for similar goods or closely related services
  • Where the application is for services – the existing trade mark is for similar services or closely related goods.

TMA s 44 requires the goods/services to be either similar or closely related.

TMA s 14 defines what 'similar' goods and services are. Under TMA s 14(1), goods are similar to other goods if they are the same as the other goods; or if they are of the same description as that of the other goods. Under TMA s 14(2), services are similar to other services if they are the same as the other services; or if they are of the same description as that of the other services.

If the public would not expect the same business to supply both the goods/services, then the two are unlikely to be considered closely related. In Registrar of Trade Marks v Woolworths Ltd, 420) retailing and wholesaling services in the nature of supermarkets, department stores, variety stores, boutiques, speciality products stores, liquor outlets and discount stores were services closely related to the following goods: meat of all kinds, confectionery, mens, womens and children under and outer wear but not including footwear, games, toys and playthings but not including scooters, bicycles or exercise bikes, chairs, combs and hairbrushes.

Substantially Identical

Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd421)

Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd, 422) observed that:

‘In considering whether marks are *substantially identical* they should … be compared side by side, their similarities and differences noted and the importance of these assessed by having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.’

Whether trade marks are substantially identical is a question of fact which requires a side-by-side comparison of the marks. Regard must be to the similarity and differences of the ‘essential features’ of the marks. However, the test is not purely visual – aural similarity will also be relevant. The totality of the characteristics of the trade mark will be taken into account.

Substantial identity cannot be established simply on the basis that one trade mark is contained within another trade mark. For example, 'St Agnes Liquor Store' was held not to be substantially identical to 'St Agnes'.423)

Coca Cola Co v All-Fect Distributors Ltd424)

In Coca Cola Co v All-Fect Distributors Ltd, 425) the Full Court observed:

'compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from that comparison.'

The case concerned coke bottle lollies, which used a similar shape that Coca-Cola had protected by a shape trade mark. The court held that even when the confectionary was laid out flat, it didn't have the pronounced waisting effect that the bottom quarter of Coca-Cola's mark had. While there was space for the label on the confectionary, it was of a different shape and had 'Cola' written across it. The only similarities between the mark and the confectionary was the fluting. Therefore, a total impression of similarity did not emerge by comparison of the mark and the confectionary and therefore they are not substantially identical.

Video overview by Matt Gamble on Test of Substantial Identity

Video overview by Laura O'Brien on the Test of Substantial Identity

Woolworths v Register of Trade Marks426)

In Woolworths v Register of Trade Marks, 427) the 'Woolworths Metro' logo was held to be registrable, despite the fact that the word 'metro' was already registered. This is because when the logo, which included wavy lines, was compared to the word, they could not be said to be similar.

Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited428)

In Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited, 429) Torpedoes Sportswear owned two trade marks for 'Paradise Legends Torpedoes' word and 'Torpedoes' logo. It opposed the registration of 'Thorpedo' for sportswear.

The court said the respective wholes (essential components) of the marks had to be compared. In relation to the 'Paradise Legends Torpedoes' mark, the first two words formed part of the substantial identity and therefore the marks were not similar. In relation to the logo, the visual elements of it were an essential part, which was not substantially identical to the 'Thorpedoes' word - the aural differences also gave an impression of dissimilarity. Therefore, the trade marks were not substantially identical.

Deceptively Similar

A trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion. 430) Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd 431) observed:

‘On the question of *deceptive similarity* a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibition … An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained in necessarily.'

The marks need not be compared side by side. Instead, the residual impression on consumers that the trade mark leaves in considered - both aural and visual. respective meaning of the marks (visual and aural). To some extent, common prefixes and suffixes are discounted to make this comparison. It is the net impression of the mark that must be considered – how the mark is perceived as a whole – are consumer likely to be ‘caused to wonder' if the goods or services are connected.

Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd432)

In Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd, 433) the High Court approved the wonderment test - the trade mark will be deceptively similar if it causes a reasonable person to wonder whether it might not be the case that the two products come from the same source. In that case, the words 'Southern Cross' were applied for in respect of refrigerators. This was successfully opposed by Toowoomba Foundry, which owned the mark 'Southern Cross' in respect of well drilling machinery, milking machines, engines and windmills. There was evidence of actual confusion between the marks. Particularly relevant was that the 'Southern Cross' mark was used for many years over a large range of goods, sold at country stores that sold a wide range of products. Therefore, the marks were deceptively similar.

Berlei Hestia Industries v the Bali Co, Inc434)

In Berlei Hestia Industries v the Bali Co, Inc, 435) the aural similarities between 'Berlei' and 'Bali' made the mark deceptively similar by reason of phonetic confusion. A consumer would be caused to wonder if there was a relationship between the two brands.

Campomar Sociedad Limited v Nike International Limited436)

In Campomar Sociedad Limited v Nike International Limited, 437) Campomar marketed a 'Nike Sports Fragrance' and applied for a trade mark in class 3. Nike had no registration in this class. The court held there was no likelihood of confusion in 1986 when the first mark was applied for, but some likelihood of confusion from 1992 when the second mark was applied for, once Nike engaged in a worldwide advertising campaign.

Crazy Ron's v Mobileworld438)

Crazy Ron's v Mobileworld, 439) concerned Crazy Johns, which operated since 1993 and Crazy Ron's, which operated since 1996. It was held the words CRAZY RON'S did not infringe the Crazy Johns globe device mark, as the words 'Crazy John's' was not an essential feature of the logo. However, a different conclusion might have been reached if the reputation of Crazy John's was greater.

Wingate Marketing v Levi Strauss440)

In Wingate Marketing v Levi Strauss, 441) 'Revise' was held to be deceptively similar to 'Levis', both aurally and visually - 'Revise' was pronounce 'Ree-vise' to sound like 'Levis', as it was remade second-hand Levis.

Video overview by Nicholas Cassidy on Wingate Marketing v Levi Strauss

Video overview by Yanery Ventura-Rodriguez on Wingate Marketing v Levi Strauss

CA Henschke & Co v Rosemount Estates Pty Ltd442)

In CA Henschke & Co v Rosemount Estates Pty Ltd, 443) compared the applicants trade mark 'Hill of Grace' with the respondents' 'Hill of Gold' and concluded that there was no infringement. The judgement applied the common law test for deceptive similarity by considering the impression an ordinary person with ordinary recollection would derive from the marks. The case turned on the finding of a distinct character of the metaphorical connotations of the marks. Notably, the case established that evidence as to reputation of the initial mark was not relevant to proving infringement by deceptive similarity where the initial mark is not notoriously so ubiquitous that consumers must be familiar with it. 444)

Video overview by Julia Bolam on CA Henschke & Co v Rosemount Estates Pty Ltd

Video overview by Scott Thompson on Scandalous Marks

Grounds for Opposition

A trade mark can be opposed by an interested third party within two months of the trade mark being advertised for opposition purposes. 445) The grounds on which a trade mark can be rejected include:

  • All grounds on which an application may be rejected, except graphical representation; 446)
  • The applicant is not the owner of the trade mark; 447)
  • The applicant is not a prior continuous user of the trade mark; 448)
  • The applicant is not intending to use the trade mark; 449)
  • The trade mark has acquired reputation and the other trade mark would deceive or cause confusion; 450)
  • The trade mark contains or consists of false geographical indication; 451)
  • The application was defective; 452) and
  • The application was made in bad faith. 453)

Video overview by Lucy Jorgensen on Opposing a Trade Mark Application

Video overview by Louis Jennings on Australian IP Law open textbook

Video overview by tcava3 on Opposition on Grounds that Applicant Has no Intention to Use

Trade Mark Infringement & Defences

Trade mark infringement occurs when a defendant uses a registered sign as a mark within the course of trade in a way that attempts to distinguish their goods or services.

Not all uses of registered trade marks will be infringements. Uses which merely refer to a product or brand or other descriptive uses of a trade mark are not going to be infringements unless they are used in a way that amounts to use as a trade mark. This means that infringement only occurs if the sign is used in a way that seeks to distinguish products or services. 454)

The below video by Nicolas Suzor provides an overview of The Trademark Infringement Framework.

Exclusive Rights Granted Upon Registration

Registration gives the registered owner the exclusive right to use the trade mark or authorise another person to use the trade mark in relation to the goods or services in which it is registered. 455) The trade mark owner also has the right to obtain relief if the trade mark has been infringed. 456)

A trade mark initially provides the owner with 10 years of protection, which can be renewed indefinitely as long as the trade mark is still in use. 457) A registered trade mark becomes a type of property and may be licensed to others for use.

Types of Infringement

Section 120 of the TMA sets out the three ways in which a trade mark can be infringed. These are:

  1. A person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the registered trade mark in relation to goods or services in respect of which the trade mark is registered. 458)
  2. A person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the registered trade mark in relation to goods of the same description or services that are closely related to registered goods; or services of the same description or goods that are closely related to registered services.459)
  3. A person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to a registered trade mark that is well-known in Australia, in relation to: 460)

    * The goods or services are not of the same description or not closely related; and

    * Because the registered trade mark is well-known, the sign would be likely to be taken as indicating a connection between the unrelated goods/services and the registered owner of the trade mark; and

    * The interest of the registered owner are likely to be adversely affected.

    In relation to well-known trade marks, take into account the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason. 461)

Video overview by Ria on The Different Forms of Infringement in s 120

Video overview by Rohan Davies on The Different Forms of Infringement under s 120

Same Goods/Services

Infringement may occur with when an alleged infringing mark is used in the same class of goods or services as the registered mark. 462) This type of trade mark infringement is known as 'vanilla' infringement, where the defendant is using a mark as a trade mark, which is substantially identical or deceptively similar to the registered mark, with respect to the same goods or services for which the trade mark is registered. For example, the registered trade mark is used with respect to cola flavoured drink and the alleged infringing mark is used on cola flavoured drink. The onus is on the registered owner to show trade mark infringement.

For more information read Amanda Scardamaglia's The Coca-Cola Company v Pepsico Inc & Ors VID 876/2010‘Storm in a Contour Bottle? – The Coca-Cola Company v Pepsico Inc & Ors VID 876/2010’, Fortnightly Review of IP & Media Law, Edition 18 (11 November 2010) Licensed for reuse under a Creative Commons Attribution-NonCommercial 2.5 Licence).

Infringement may occur where the defendant is using a mark as a trade mark, which is substantially identical or deceptively similar to the registered mark, with respect to goods or services of the same description or goods or services that are closely related. 463) Note this section also functions as an informal defence (see below). The onus is reversed so the defendant must prove a lack of likelihood of deception or confusion.

This subsection protects traders and the public from unscrupulous dealers who want to pass off a new product as someone else’s. It also protects against dilatation of the value of the trade mark by allowing others to use it as they like, but in different categories.

The principles of goods and services being of the same description or closely related are largely the same as those that apply in the context of TMA s 44. Goods will not be of the ‘same description’ if their sale under the same mark by different companies would not be likely to lead to confusion or deception. If the public would not expect the same business to supply both of the goods and/or services, then the two are unlikely to be considered closely related.

E & J Gallo Winery v Lion Nathan Australia Pty Limited464)

In E & J Gallo Winery v Lion Nathan Australia Pty Limited 465) Gallo Winery was the registered owner of the trade mark 'Barefoot' in relation to wines in Australia. Lion Nathan (Australia) started selling a specialty beer under the trade mark 'Barefoot Radler' from January 2008. Infringement was established as beer and wine were held to be goods of the same description.

Musidor BV v Tansing (t/as Apple Music House466)

In Musidor BV v Tansing (t/as Apple Music House), 467) concerned Musidor selling Rolling Stones bootlegs. Musidor made it plain in its advertising and get-up that the source of the origin of the goods was not authorised. Held, the disclaimer was effective to show that the goods were not related. It was held that no infringement occurred.

Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd468)

In Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd, 469) 'Duff' beer which disclaimed any association with The Simpsons was still held to amount to infringement. The disclaimer was too simplistic in approach. The beer was an express reference to The Simpsons and therefore the disclaimer was not effective.

Unrelated Goods Where Trade Mark is Well-Known

Trade mark infringement may occur where the defendant is using a mark as a trade mark, which is substantially identical or deceptively similar to the registered mark, with respect to unrelated goods or services where the mark is well-known or famous. 470)

To establish this type of infringement the trade mark must be well-known in Australia; the person must use as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to or not closely related goods or services; because the trade mark is well-known, the sign must be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and for that reason, the interests of the registered owner are likely to be adversely affected.

To determine if a trade mark is well-known in Australia, must take account of the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason. Must be significant brand with interests in many different categories or an international company. If their reputation is not large enough, if they are really a niche trader and it is unlikely a consumer would think they produced a product in a completely different category, then this is unlikely to apply. The onus is on the trade mark owner.

Examples of well-known trade marks:

Nintendo Co Ltd v Care471)

In Nintendo Co Ltd v Care – the Nintendo trademark in 'Super Mario' allowed the company to prevent a person from dressing up as Mario when wrestling. 472)

Virgin Enterprises Limited v Klapsas473)

In Virgin Enterprises Limited v Klapsas – Virgin obtained judgement against people trying to sell Virgin limousines or Virgin rentals. The court stressed the large investments made by Virgin in marketing and promoting the brand globally was such that if the defendant ran a Virgin ad, it was likely customers would be confused. 474)

San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd475)

In San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd - there was a serious question to be tried as to whether the use of SAN REMO on coffee machines infringed the (potentially) well-known trade mark for 'San Remo' pasta. Note this decision was made with some reluctance. 476)

Whether goods are unrelated or not closely related is a question of degree. The less ‘unrelated’ the goods or services are, the more likely that trade mark infringement will be made out. For example, PUMA for use on beer or CADBURY for use with respect to motorcycles. The use must indicate a connection with the owner.

Coca-Cola Co v All-Fect Distributors Ltd477)

In Coca-Cola Co v All-Fect Distributors Ltd, 478) the court held that cola lollies would not give rise to consumers questioning whether there was a connection between Coca-Cola and the lollies.
This connection can arise:

  • Statutory passing off: connection based on some actual deceit or confusion – the sign indicates the goods/services are connected with whoever owns the well-known mark with which the consumer is so familiar.
  • Dilution protection: connection as to a mental association with well-known mark – whether the sign used by the defendant brings the well-known trade mark to mind and reminds the consumer of the well-known trade mark.

Finally, the owner's interests must be adversely affected. Usually it is quite easy to show harm at least by arguing their capacity to use, or distinguish their items has diminished due to the defendant’s use of the mark. Makes it harder for the trade mark owner to expand its market. Harm can occur in two ways:

  • Statutory passing off: lost opportunity to licence, loss of custom etc (damage element in passing off).
  • Dilution protection: dilution of the well-known trade mark.

General Elements of Trade Mark Infringement

Use

Not all use constitutes trade mark infringement. A person will only infringe a trade mark if they ‘use’ a protected mark as a trade mark – a defendant must use a protected mark or very similar mark in the course of trade as an attempt to distinguish their goods or services for another. 479) An infringement will not be made out if a mark is used but not used to distinguish. The alleged infringing trade mark must be used or intended to be used as a trade mark in the course of trade – to distinguish one person’s goods/services from another. 480) The trade mark must be used or intended to be used physically in relation to goods or services. 481)

A registered trade mark is likely to amount to use as a mark if the manner in which it has been employed does not serve some other purpose – it is a descriptive term, it serves some functional requirement or to communicate some other message. Ordinarily, the use of an invented word or words will amount to use as a trade mark but not always – even an invented word or words used out of context can be taken by consumers as suggestive of some quality other than commercial origin or descriptive to some degree.

Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd482)

Kitto J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd held:483)

[T]he purpose and the only purpose that can be seen in the appearance of the little man on the screen is that which unites the quickly moving series of pictures as a whole, namely the purpose of conveying by a combination of pictures and words a particular message about the qualities of Shell petrol. This fact makes it … quite certain that no viewer would ever pick out any of the individual scenes … and say to himself: “There I see something that the Shell people are showing me as being a mark by which I may know that any petrol in relation to which I see it used is theirs. And one may fairly affirm with even greater confidence that the viewer would never infer from the films that every one of the forms which the oil drop figure takes appears there as being a mark which has been chosen to serve the specific purpose of branding petrol in reference to its origin.

Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd484)

In Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd, 485) it was held that Johnson & Johnson had only used 'caplets' in a descriptive sense as to shape and dosage and not as indicative of origin or identity.

Video overview by Annabel Burton on Use as a Trade Mark and Johnson & Johnson

Top Heavy v Killin486)

In Top Heavy v Killin, 487) the words 'Chill out' were not indications of the provenance of the T-shirts. The message which the mark conveyed in general terms is an exhortation to the reader to relax. Coca-Cola could thus not assert trade mark infringement.

Mark Foy’s Ltd v Davies Co-op Co Ltd488)

In Mark Foy’s Ltd v Davies Co-op Co Ltd, 489) Williams J held that the trade mark 'Tub Happy' was capable of registration. He said:

‘Any reference that the words 'Tub Happy' have to the character or quality of articles of clothing is very remote. They are in the nature of a coined phrase. Inanimate objects including articles of clothing cannot have the character or quality of happiness whether they are in a tub or not.’

Since 'Tub Happy' was not being used to describe the qualities of the product (washability, freshness, cheapness), it could be registered as a trade mark.

Substantial Identity and Deceptive Similarity

The phrases 'substantial identity' and 'deceptive similarity' hold the same meaning as outlined in the previous chapter, Trade Mark Registration.

Substantially identical requires a side by side comparison, having regard to the similarities and difference between the essential features. 490) Deceptive similarity involves trade marks that so nearly resemble each other that they are likely to deceive or cause confusion. 491)

Mars Australia Pty Ltd v Sweet Rewards Pty Ltd492)

In Mars Australia Pty Ltd v Sweet Rewards Pty Ltd, 493) the registered trade marks, label and words 'Malt Balls' were sufficiently different from 'Malteasers', and purely descriptive.

Video overview by Sarah Griffin-Breen on Deceptive Similarity

Types of Trade Mark Dilution

Dilution in the United States and European Union does not require confusion between two trade marks. Instead, blurring and tarnishing will amount to dilution. The Australian infringement provisions bear more similarity to passing off, and there is no explicit or clear link to dilution.

Blurring

Blurring is the result of the unauthorised use of a trade mark which mars the selling power of that trade mark. For example dilution by blurring might occur when the trade mark 'Kodak' is used with respect to motorcycles or the trade mark 'Cadbury' is used with respect to chainsaws. 494)

Tarnishment

Occurs when the use of a trade mark results in the tainting or downgrading of the positive associations the trade mark has come to convey. Often it will occur when a trade mark is linked to products of inferior quality or products of an immoral or unwholesome character or where the trade mark is portrayed in an unsavoury context likely to evoke negative thoughts about the trade mark owner. 495)

Anti-dilution

Courts tend to dislike anti-dilution provisions and favour the use of consumer protection. The requirement of connection can be read down so that it doesn’t provide protection where there is no likelihood of confusion. If this happens, then the situation will not be considered a form of anti-dilution. The correct characterisation – consumer protection vs anti-dilution is still being debated. In the Nike Perfume case, the High Court said it was important to weigh competing interests carefully – ensure consumers aren’t deceived but also allowing them to access competition. The court will be reluctant to block uses of marks that are not likely to cause confusion where the category is so different from where the trade mark in question is not used.

Prohibition of Certain Acts

Under section 121 TMA a trade mark owner may prohibit certain acts in relation to the use of the trade mark and the doing of any of these acts in the course of trade also constitutes trade mark infringement. This provision operates if the registered owner of the trade mark has caused to be displayed on the registered goods a notice of prohibition as to any of the following matters:

  • Applying the trade mark to the goods, or using the trade mark in physical relation to the goods, after the state, condition, get-up or packaging in which they were originally offered to the public has been altered;
  • Altering, or partially removing or obliterating, any representation of the trade mark applied to registered goods or used in physical relation to them;
  • Removing the trade mark without also removing associated material;
  • Applying another trade mark to the registered goods or using another trade mark in physical relation to them; or
  • Using the trade mark on registered goods or in physical relation to them in a manner which would injure the reputation of the trade mark.

    So a person will infringe a trade mark where he or she engages in such conduct, unless the goods are acquired in good faith and without awareness of the notice of prohibition.

Defences to Trade Mark Infringement

According to the TMA s 120(2) and (3), there is no infringement where the trade mark is used in related goods or services where there is no likelihood of confusion. This is an informal defence.

Defences to trade mark infringement are found in s 122 of the TMA. The table below outlines each of these.

Section Defence
s 122(1)(a)(i) The person uses in good faith the person’s name or the name of the person’s place of business.
s 122(1)(b)(i) The person uses a sign in good faith to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services (descriptively – not used much as often wont be using as a TM).
s 122(1)(c) The person uses the trade mark in good faith to indicate the intended purpose of goods (in particular as accessories or spare parts) or services: Can use a TM to show goods (e.g. spare parts or peripherals) are compatible with another trader’s goods; Ensures TM does not provide TM owners with an extensive monopoly.
s 122(1)(d) The person uses the trade mark for the purposes of comparative advertising; Traders can use other people’s marks to compare their products to another trader’s; Use to distinguish from the competition (E.g. say my brand is better than Apple); Encourages competition and genuine comparative advertising between the two.
s 122(1)(e) The person exercises a right to use a trade mark given to the person under this Act. (E.g. if two conflicting registrations).
s 122(1)(f) A trade mark will not be infringed where the court is of the opinion that the person would obtain registration of the trade mark in his or her name if the person were to apply for it.
s 122(1)(fa) A trade mark will not be infringed where the person uses a trade mark that is substantially identical with or deceptively similar, the first-mentioned trade mark; and the court is of the opinion that the person would obtain registration of the substantially identical or deceptively similar trade mark in his or her name if the person were to apply for it.
s 122(1)(g) The trade mark will not be infringed if its use falls within a limitation or condition imposed on the registration of the mark.

Video overview by Craig Sherritt on The Comparative Advertising Defence

Video overview by Natalie Cruickshanks on Trade Mark Spare Parts Defence

Video overview by Andrew Avenell on The s 122(1)(c) Spare Parts and Accessories Defence

In the above sections, 'good faith' means an absence of ulterior motive. 496) Absence of good faith cannot be inferred merely from striking similarity between the two marks. 497) Use of the trade mark cannot be calculated to divert business from the registered trade mark owner or to confuse customers as to the origin of goods.

Video overview by Abigail Hill on The Good Faith Defence in s 122 (1)(b)

Video overview by Shelby McGreachan on The Good Faith Use of Own Name

A person who uses a registered trade mark in relation to goods that are similar to goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered trade mark owner. 498)

This does not apply to TMA s 120(3). For example, if goods are either purchased overseas and imported or are second hand goods, then cannot infringe as you have paid for it and obtained consent because owners of goods can use goods in this way. Ensures owners can't get a bigger monopoly. This is specifically included to allow parallel importing and second hand markets.

Video overview by Alex Trezise on Section 123 of the Trade Marks Act

Prior Use

If a person has used a sign that is deceptively similar or substantially identical to the registered trade mark and they have been using concurrently for a period, at least before the filing date of the trade mark application, then they wont be infringing. 499) This is equivalent to TMA s 44(4) honest concurrent use provisions.

Registration of a trade mark is not necessary. But if you don’t register a trade mark, other people might be able to (in some circumstances), especially if you don’t object, register your mark or a deceptively similar or substantially identical mark for the same or similar categories. If this happens defence of prior concurrent use will apply so that the person who was using the mark before the date the registered trade mark was filed, they can continue to use.

There are limitations on the prior use provision. This includes instances where a person is trading under a particular name but only in business. The person may be allowed to keep using where the reputation exists. For instance, if the reputation exists only in Brisbane Australia, the mark can't be used to expand the business beyond.

Rectification

Under TMA s 88(2), an aggrieved person or the Registrar can apply to the Court for an order that the register be rectified on the following grounds:

  • Any of the grounds for opposition;
  • The registration was obtained as a result of fraud, false suggestion or misrepresentation;

    * At the time the application is filed, the use of the trade mark is likely to deceive or cause confusion.

    Under s 88(1), if one of these grounds is satisfied, the court can cancel the registration of the trade mark, remove or amend the entry wrongly main or remaining on the Register, or enter any condition or limitation affecting the registration of the trade mark that ought to be entered.

Video overview by Nicolas Suzor on Grounds for Rejection, Opposition or Rectification

In spite of s 120, if a disclaimer has been registered in respect of a part of a registered trade mark, a person does not infringe the trade mark by using that part of the trade mark. 500)

Video overview by Corrine Leach on Section 88 of the Trade Marks Act

Video overview by Jessica Hine on Section 88 of the Trade Marks Act

Cross Claims to Trade Mark Infringement

If trade mark infringement under TMA s 120(1), (2) or (3) is claimed, the defendant can make the following cross-claims:

  • That the trade mark is not substantially identical with or deceptively similar to the registered trade mark;
  • That there has been no use as a trade mark – E.g. The Panadol Case, The Esso Man Case;
  • A defence to infringement found in s 122 of the TMA;
  • Consent; 501)
  • Prior Use; 502)
  • The plaintiff’s trade mark is not valid – cross claim for rectification or removal; 503)
  • The plaintiff's registered trade mark is generic; 504)
  • The plaintiff's mark contravened a limitation or condition;505) and
  • Removal for non-use. 506)

Further, the following claims can also be made in TMA s 120(2) infringement cases:

  • The defendant's use of the mark is not likely to deceive or cause confusion. 507)
  • The defendant's use of the mark is not n relation to goods or services of the same description or goods or services that are closely related to the goods or services for which the mark is registered with respect to.

Velcro's advertisement explains The Dangers of Genericide for an Established Brand

Video overview by Stephanie Derrington on Genericide

Video overview by Ayaka Nakashima Edwards on Genericide

Remedies

There are a number of remedies available in trade mark infringement cases. Section 126 of the TMA provides a right to an injunction on any conditions the Court thinks fit, an election between damages (if harm) or an account of profits (if enriched by use of the trade mark) and additional damages where appropriate.

Where there has been trade mark infringement and the defendant has applied to remove the trade mark under TMA s 92 and the court finds that the trade mark has not been used during the critical period in good faith by the registered owner and there are grounds for removing the trade mark the court may not grant relief to the plaintiff by way of damages or an account of profits in respect of any trade mark infringement that has occurred during the critical period (TMA s 127).

Patent Overview: an introduction to the patent system

What is a Patent?

Patents are governed by Patents Act 1990 (Cth) (PA). A patent is a grant by the Crown (the Commonwealth government), which gives the owner of the patent the exclusive right to exploit an invention ('exploit' means a right to prevent others using the invention). This exclusive right applies throughout the patent territory (territorially limited – Australia), for the duration of the patent. The period of protection provided by the patent depends on the type of patent. The most recent amendment to the patent legislation is the Intellectual Property Laws Amendment (Raising The Bar) Act 2012 (Cth).

Examples of Granted Patents

There are many famous and notable products which were granted patents. These products include:

  • Ball point pen;
  • Victa lawn mower;
  • Computer software;
  • Synthetic genes;
  • Orbital engine;
  • Cochlear's Bionic Ear;
  • Water purification devices.

Annotated drawings often from part of patents.

Kinds of Patents & Duration

There are two types of patents: a standard patent and an innovative patent. Each of these will be explained in turn.

Standard Patents: A standard patent requires an inventive step. An inventive step means that the invention is not an obvious thing to do for someone with knowledge and experience in the technological field of the invention. The invention must differ from existing technology. A standard patent will only be granted after a period of examination to ensure the patent meets the legislative requirements. This process can take from six months – several years depending on the type of protection and circumstances. The period of protection afforded by a standard patent is up to twenty years from the date of the patent (or up to 25 years for pharmaceuticals). 508)

An extension of up to five years can be sought for pharmaceuticals. 509) Pharmaceuticals require regulatory approval before they are sold to the public and approvals can only be sought during the patent term, so patentees are compensated for the time taken to obtain regulatory approval.

Not all pharmaceutical patent applications are automatically given the extension of five years. Three requirements must be met to obtain an extension for a pharmaceutical patent:

First requirement:

a) The first part of this requirement is that a pharmaceutical substance per se must be disclosed and claimed, including compounds, active metabolites, a composition or a mixture of substances. 510)

For a claim to related to a pharmaceutical substance per se, it must be unqualified by process, temporal or environmental components.

b) A Pharmaceutical substance produced by a process that involves the use of recombinant DNA technology.

Second requirement:

Must be included in the Australian Register for Therapeutic Goods (ARTG). A substance can be included in the ARTG if it is included in some way. The substance does not have to be explicitly named as an active ingredient to be considered ‘included’ and can be an impurity, which has been noted.

Final requirement:

The final requirement for a pharmaceutical patent is that regulatory approval for the pharmaceutical substance must have occurred more than five years after the date of the patent.

There are specific rights that are valid during the extended term of the patent. These include that a patent will not be infringed if a person exploits the pharmaceutical substance a purpose other than a therapeutic purpose or if a person exploits any form of the invention other than the pharmaceutical substance per se.

The extended period of protection only protects the pharmaceutical substance itself.

Video overview by Fern Doyle on Requirements For Extension of Time for Pharmaceutical Patents.

Innovative Patents:

An innovative patent is suitable for inventions with short market life. An innovative patent requires an innovative step, which involved a lesser degree of inventiveness compared to the standard patent. An innovative step is one where the invention is different from existing technology and provides a substantial contribution to the working of the invention. The innovation patent seeks to protect incremental advances in technology as opposed to ground-breaking technology (which would be covered under a standard patent).
The duration of an innovative patent is for the period of eight years from the date of the patent. 511) Innovative patents can be granted within one month of filing, as there is no requirement for examination.

Video overview by Maddison D on The Difference Between a Standard Patent and an Innovation Patent.

IP Australia Quick guide to innovation versus standard patents CC-BY 4.0.

Innovation Patent Standard Patent
Your invention must: Be new, useful and involve an innovative step. Be new, useful and involve an inventive step.
The application should include: A title, description, up to five claims, drawings (if applicable), an abstract and forms. A title, description, any number of claims, drawings (if applicable), an abstract and forms.
A patent is granted if: The application satisfies formality requirements (note: a 'granted' innovation patent cannot be enforced unless examined). The application is examined and found to satisfy the relevant requirements of the Patents Act 1990.
Examination: Optional. Examination can be requested by you or anyone else. Mandatory. The relevant requirements of the Patents Act 1990 must be met before a patent is granted. Can only be requested by the applicant.
Certification: Is given if the innovation patent complies with the relevant requirements of the Patents Act 1990 in examination. Only after certification can the patent be enforced. N/A
Publication in the Australian Official Journal of Patents: At grant and again at certification. 18 months from earliest priority date and again at acceptance.
Protection period: Up to eight years if annual fees are paid. Up to 20 years if annual fees are paid (or up to 25 years for pharmaceuticals).
How long does the process take? Approximately one month for grant. Six months for examination if you make a request. Six months to several years depending on circumstances.

*Duration of protection for both types of patents is measured from the date the complete specification is filed. 512)

Rationale of the Patent System

It is usually accepted that there are two main goals of the patent system. First, to encourage innovation: patents enable inventors a period of monopoly in which to exploit their invention and recoup their costs. This is not a reward for an inventor’s natural rights, but rather so that the public may ultimately benefit from the technological advancement that invention brings. Exclusivity is, in this sense, a necessary evil - it restricts the use of new inventions in order to encourage them.

The second goal of the patent system is to disseminate new knowledge. Inventors are encouraged, through a statutory monopoly, to publish a full description of their new inventions and explain, in the patent specification, exactly how it works. The patent system is designed so that the incentive to publish (and gain protection) is greater than the inventor's incentive to keep new inventions secret.

Video overview by Brandon Vagnini on The Goals of The Patent System.

Overview of Patent Law

The object of patent law is to encourage invention and disseminate new knowledge. For an invention to be patentable, the following elements must be met:

  • Patentable subject matter
  • Product or process
  • Specific practical application
  • Not an excluded category of subject matter
  • Novel (not publicly available)
  • Inventive step (for standard patents) - not obvious to a person skilled in the art
  • Innovative step (for innovation patents) - makes a substantial contribution to the working of an invention, according to a person skilled in the art
  • Useful - must work according to specification (does not require commercial viability)
  • No secret use - i.e. no commercial use of the invention, although testing is allowed.
  • Invention must be disclosed in the patent application.

Patent law seeks to achieve a balance between the private right to exploit an invention (an incentive granted by the State so that the public can benefit from new inventions), with the public benefit of adding to the store of public knowledge and increasing public access to new products and processes.

Origins of Patent Law

Patents were systematically granted in Venice from 1450, where they issued a decree by which new and inventive devices had to be communicated to the Republic in order to obtain legal protection against potential infringers. King Henry II of France introduced the concept of publishing the description of an invention in a patent in 1555. Patents were granted by the monarchy and by others institutions like the “Maison du Roi” and the Parliament of Paris. The novelty of the invention was examined by the French Academy of Sciences.

By the 16th century, the English Crown would habitually grant letters patent for monopolies to favoured persons (or people who were prepared to pay for them). This power was used to raise money for the Crown, and was widely abused, as the Crown granted patents in respect of all sorts of common goods (salt, for example). Consequently, the Court began to limit the circumstances in which they could be granted.

Statute of Monopolies

After public outcry, James I of England was forced to revoke all existing monopolies and declare that they were only to be used for “projects of new invention”. This was incorporated into the Statute of Monopolies in which Parliament restricted the Crown's power explicitly so that the King could only issue letters patent to the inventors or introducers of original inventions for a fixed number of years. According to s6 of the Statute of Monopolies, all existing monopolies and dispensations were voided with the exception of:

...the sole working or making of any manner of new manufactures within this realm to the true and first inventor and inventors of such manufactures which others at the time of making such letters patent and grants shall not use...

The Statute of Monopolies voided monopolies on the principle that monopolies are generally anti-competitive. The main exception to this principle is that sometimes monopolies are required in order to encourage new inventions or products. So while the Statute of Monopolies declared that all monopolies were void, it specifically excluded any patent or grant of privilege that was limited in duration (14 yrs here, the duration of two period of apprenticeship) that covered any new manner of manufacture (new product/process), was territorially limited, and granted directly to inventor (not importers). The Statute imposed further restrictions that the patent granted could not be contrary to law (particularly competition law), raise existing price of commodities, harm trade in general products, or be 'generally inconvenient'.

The Statute of Monopolies became the foundation for later developments in patent law in England and elsewhere. The English patent system evolved from its early medieval origins into the first modern patent system that recognised intellectual property in order to stimulate invention; this was one of the crucial legal foundations upon which the Industrial Revolution could emerge and flourish.

Development of Patent Law in Australia

The notion of patent law, like many Australian laws comes from the Anglo-Saxton heritage of the UK. The letters patent was the first type of patent which was issued by the Crown. These letters patent provided the recipient with their rights to practice their trade or craft.

The States and Territories enacted the first patent laws in Australia independently. It wasn’t until 1903 that a Commonwealth Act was enacted, Patents Act 1903 (Cth.) This was enacted pursuant to the Constitution under s 51 (xviii). Since this time there have been a number of changes to the Patents Act. The current Act, which is in force, is a result of changing times in technology and innovation. Alongside the legislation is the Patents Regulation 1991 (Cth), which is positioned to compliment the Act.

Patent Registration

In order to register a patent the invention must meet a strict criteria. This chapter will discuss the requirements of patentability. All sections within this chapter are referring to the Patents Act 1990 (Cth) unless otherwise noted.

Definitions

Term Definition
Priority date The date at which the novelty and inventiveness of the invention are assessed against the prior art base - usually the date the patent application is filed. 513)
Prior art base Publicly available information that describes the state of the art (state of existing known technology - latest and greatest)
Novel Has not been disclosed publicly in a document or used in the public in a way observable by members of the public, or two or more documents or acts which together disclose the invention.514)
Inventive Not obvious to a person skilled in the relevant art (or field of technology)
Patent area Australia and the Australian continental shelf. 515)
Complete specification is made open to public inspection ('OPI') 18 months after filing. 516)

The Requirements of Patentability

In order to be patentable, an invention is required to meet the specifications found in s 18 of the Act. An invention is patentable if it is “manner of manufacture” within the meaning of s 6 of the Statute of Monopolies (i.e. is patentable subject matter, being either a product or process). The invention must be novel 517) and must involve an inventive step (for standard patents) or an innovative step (for innovation patents). The inventiveness and novelty of the invention are compared against the prior art base as it existed at the priority date. The invention must be useful which means it must work or be possible. The final requirement is that the inventions must not have been secretly used before the priority date.

Patents are examined by IP Australia to decide whether the inventions are worthy of a patent. IP Australia bases their decision on the above specifications. 518)

Express Exclusion From Patentability - Non-patentable Subject Matter

There are a few categories of subject matter that are considered not patentable. These categories include:

  1. Human beings and biological processes; 519)
  2. Plants and animals;520)
  3. Products that would be contrary to law; 521) and
  4. Mere mixtures. 522)

According to s 18 of the Act (2): Human beings, and the biological processes for their generation, are not patentable inventions. This means that generally, methods of in vitro fertilisation are excluded from patentability.

According to s 18 of the Act (3): For the purposes of an innovation patent, plants and animals, and the biological processes for the generation of plants and animals, are not patentable inventions.

There are also twos area where there is scope to exclude inventions from patentability found in the TRIPS Agreement. First TRIPS excludes inventions to “…protect human, animal or plant life, or health, or to avoid serious prejudice to the environment”.523) The second area allows for exclusions with respect to medical treatments, plants and animals.524)

"Invention"

The opening words of s 18 (1): “an invention is a patentable invention for the purposes of a standard patent if the invention…” ‘Invention’ is defined in Schedule 1: ‘[I]nvention means any manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statute of Monopolies, and includes an alleged invention.’

The word 'new' does not appear in s 18, only in the definition of invention. In s 18, an invention is considered patentable if it is a manner of manufacture, but according to the definitions in Schedule 1, the invention must be a manner of “new” manufacture. Despite the wording, this difference does not create an additional element of patentability. Instead, the wording of s 18 is considered to override any discrepancy and there is no need to incorporate the 'new' aspect of manner of manufacture. 525).

Requirement 1: Manner of Manufacture (Patentable Subject Matter)

In order to be a patentable invention, the invention must be a manner of manufacture. 526) Whilst the statute does not expressly outline what a manner of manufacture is, there are express provisions which state what the invention must not be, including contrary to law, harmful to trade or generally inconvenient.

The meaning of manner of manufacture has been debated by the Australian High Court. In the case of National Research Development Corporation v Commissioner of Patents 527) it was concluded that:

the correct inquiry to determine manner of manufacture is 'not into the meaning of a word so much as the breadth of the concept which the law has developed by its consideration of the text and purpose of the //Statute of Monopolies//.

Video overview by Natalie McIntosh onManner of Manufacture.

The Patents Act 1990 (Cth) incorporates the guidelines for manner of manufacture within s 18. Pursuant to s18 of the Act an invention is to be a manner of manufacture within the meaning of s 6 of the Statute of Monopolies.

National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252

Facts: Appeal to High Court from a rejection by the Deputy Commissioner. The patent in question was a process involving a method of mixing known chemicals together and applying the mix to crops (alfalfa) in specific quantities to eliminate weeds, but not the crops. The method of producing a weedicide is not a patent for a product, it is a patent for the process of creating that product. The application had been rejected because the the method was considered to be merely a new use of a known substance and did not result in the creation of a physical or tangible ‘vendible product’. Vendible product concept comes from cases before NRDC.

General principles outlined by the case:

The term, ‘manner of manufacture’, is a dynamic concept whose meaning has evolved over time since it first appeared in Statute of Monopolies. Has common law meaning, and is not interpreted literally.

Patentable subject matter is broad and flexible. The principles are to be applied flexibly as technological developments and inventions are excitingly unpredictable.The concept of patentability must accommodate inventions not yet envisaged.

Must be a vendible product - a product means every end produced; 'vendible' means an artificially produced state of affairs. This is very broad. A process is a vendible product where it offers an advantage to the useful arts in material form, as opposed to fine arts (which are protected by copyright).

Must be of economic significance - i.e. its value to the country must be in the field of an economic endeavour. It must have an industrial, commercial or trading character.

Cannot be a mere discovery, idea, scientific theory or law of nature.

The Courts Decision: The process of mixing the known chemicals together – the effects of which were not known before in the context of alfalfa and weeds that commonly hinder its growth, the process was patentable subject matter. It’s a new process, vendible product (new end produced – alfalfa output in the absence of weeds).

Patentable Subject Matter: Computer Software

In relation to computer software, copyright protects against the reproduction of a computer program in material form, but does not prevent independent creation. Patent protection for computer software provides protection against independent creation and for the means by which a result is obtained.

IBM v Commissioner of Patents (1991) 22 IPR 417

Facts: invention was a method of creating an improved (smoother) curve on a computer screen. This implemented an algorithm that could be manually calculated, the application of which resulted in a smoother curve.

Held: producing an improved curve image is commercially useful in the field of computer graphics – a smoother curve allows better graphics and more accurate portrayal of information. It is more than just a mathematical algorithm or pleasant image. It is the application of a mathematical algorithm to produce a commercial valuable and useful result. Therefore is the proper subject matter of a patent.

CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 902

Facts: Chinese language word processor. Based on an algorithm. Involved using ordinary English keyboard but placing parts of common Chinese characters on keys.

Held: This is patentable subject matter. Computer software can be protected by patent.

Patentable Subject Matter: Business Methods

The development of technology and innovative business practices lead to question of whether business methods could be considered patentable subject matter. This was a very controversial area of patent law. The current position appears to be that the invention must produce a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation. 528)

Video overview by Stephen Kuhn on Business Method Patents.

State Street Bank & Trust Co. v Signature Financial Group Inc (1998) (‘State Street’) - United States Case

Facts : The invention was a machine-implemented data processing system that used a mathematical algorithm to implement a financial investment structure. This allowed an investment fund to be monitored with its only output being information produced by the end of the day report. Essentially the program did what humans could do by hand but made this much faster and automated the process.

Held: The Court held that the invention was patentable subject matter as there is no business method exclusion from the scope of patentable subject-matter.

Welcome Real-Time v Catuity (2001) FCA 445 (Heerey J)

Facts: Patent for a method of operating a customer loyalty scheme by configuring a smart card.

Held: In terms of the business methods exception, this case found the State Street decision ‘persuasive’ ([129]), i.e. the case appears to agree there is no business method exception against patentability.

Grant v Commissioner of Patents (2006) 154 FCR 62

Facts: Involved a method of structuring a financial transaction with the aim of protecting an individual’s assets - a person creates a trust, the person makes a gift of money to the trust, the trust makes a loan of money to the person, the trust secures the loan by taking a charge over an asset held by the person. This thus gave priority in the person's bankruptcy.

Held: the physicality requirement was introduced - the invention must involve a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation ([30], [32], [47]). The method here had no concrete, tangible, physical or observable effect - it was a mere scheme, an abstract idea, mere intellectual information (30], [32], [33], [47]). Therefore, it was not patentable subject matter.

The court observed that a method merely because a method is a business method does not prevent it from being patentable subject matter ([26]). However, things such as legal advice, schemes, arguments and the like are not manners of manufacture ([34]).

Patentable Subject Matter: Biotechnology

Biotechnology is another area which is controversial within the patent landscape. Biotechnology was considered to be patentable subject matter on the basis that the product subject to patentability is an invention derived from human ingenuity and is a non-naturally occurring manufacture. This issue of patentability was considered in the US case of Diamond v Chakrabarty. 529)

Diamond v Chakrabarty 447 US 303 (1980) - United States Case

Facts: The invention was a bacterium capable of breaking down crude oil, useful in treating oil spills. The process involved inserting non-native elements into the genome of a strain of naturally occurring bacteria and allowed it to be produced in commercial quantities. The naturally occurring bacteria did not occur in enough quantity to make it commercially viable.

Held: patentable subject matter is broad and includes 'anything under the sun that is made by man'.

Burger CJ:

“Judged in this light, the respondent‘s micro-organism plainly qualifies as patentable subject matter. His claim is ... to a non-naturally occurring manufacture or composition of matter - a product of human ingenuity.”

Patentable Subject Matter: Treating the Human Body

The way in which medical technology can be used to treat humans has long been a contentious issue. The treatment of the human body has been considered to be patentable subject matter. This issue was considered in the case of Apotex Pty Ltd v Sanofi-Aventis 530) where the court was asked to considered whether methods of medical treatment were excluded from scope of patentable subject matter. The court held that they were not excluded.

Apotex Pty Ltd v Sanofi-Aventis [2013] HCA 50

The 4:1 majority of this case confirms that methods of medical treatment are patentable.

Facts: The patent was titled 'pharmaceutical for the treatment of skin disorders'. This patent contained a single claim for a method of preventing or treating psoriasis by administering a pharmaceutical composition containing the active ingredient leflunomide. Leflunomide (and other therapeutic uses other than psoriasis) was the subject of an earlier Sanofi-Aventis patent, which expired in 2004. Apotex marketed a generic version of leflunomide for treatment of psoriatic arthritis and rheumatoid arthritis. Sanofi then sued Apotex for infringement. Apotex counter-sued saying Sanofi’s patent was invalid.

Issue: Are methods of medical treatment for some reason excluded from scope of patentable subject matter?

Held: Patent at issue is valid – no exception for methods of medical treatment. For policy reasons, some earlier courts said should not be patentable so they are more available to people – however counter-argument for incentive principle. The court held that the patent had not infringed because s117 (contributory infringement by supply of products) could not be made out.

Video overview by Thalia Ho on Swiss style claims' on application of pharmaceuticals.

Patentable Subject Matter: Genes

One of the most contentious areas within patent law is the patentability of genes or the process of isolating genes. In the seminal case of D’Arcy v Myriad Genetics Inc 531) the court was asked to consider whether the process of chemically isolating genes amounted to patentable subject matter. The court held that this process was not patentable subject matter.

D’Arcy v Myriad Genetics Inc

Facts: This case concerns a product, namely nucleic acid sequences (DNA or RNA) that have been isolated from the cell nucleus of a BRCA1 human gene. BRCA1 – breast and ovarian cancer disposing gene. Mutations indicate a predisposition to breast or ovarian cancer. The purpose of a cancer screening test is to compare a health genetic sequence to a patient’s sequence to make a diagnosis. This process costs approximately $3,000 in US, comparatively this process is free in AU). In order to diagnose the gene has to first be chemically isolated by separating it from the cellular environment in which it naturally exists.

Held: isolation of genes not patentable

Video overview by Nicholas Chinon D'Arcy v Myriad Genetics.

Requirement 2: Novelty

In order to be patentable the invention must be new. This requires the invention to have not been disclosed to the public before the priority date. The invention is compared to the prior art base, which consists of prior art information that is publicly available in a document or through doing an act, or in two or more related documents or acts anywhere in the world. 532)

Novelty is required by ss 18(1)(b)(i), 18(1A)(b)(i) and 7(1) of the Act.

Video overview by Georgia Ardouin on The test of Novelty in patent law.

Video overview by Jess Smith on Novelty.

The concepts of priority date and prior art base will be considered in turn.

Priority Date

The priority date is the date at which the novelty and inventiveness of the invention are assessed against the prior art base. A priority date is established by the earliest of filing either: a complete application or a provisional application.

Filing a provisional application creates an earlier priority date, by filing a simplified version of the patent specification, with the complete application required to be filed within 12 months. If this does not occur, the provisional application will lapse and another application cannot be made, as the provisional application will destroy novelty of the subsequent application. A provisional application may be desirable where a competitor is working on a similar invention and you want to get a patent first.

A foreign application's an be made wither provisional or complete via The Paris Convention or the PCT. This will be discussed below in Patent Protection Overseas.

Prior Art Base

Historically, the prior art base was confined to documents and acts that were made available within Australia. 533) The Patents Amendment Act 2001 (Cth) extended the breadth of the prior art base to include a worldwide comparison of all documents and acts available.

Video overview by Tracey Bryan on Prior Art Base.

One of the key ways to determine if a patent has been anticipated by content within the prior art base is to apply the reverse infringement test. The reverse infringement test was established in Meyers Taylor Pty Ltd v Vicarr Industries Ltd. 534)His Honour Aickin J stated at 235:

“The basic test for anticipation… is the same as that for infringement… whether the alleged anticipation would, if the patent were valid, constitute an infringement.”

The prior art must disclose all the essential features of the invention as claimed. 535) It is not permissible to “mosaic” the prior art information to invalidate a patent. 536) However, reading together different publications is permissible where it is plain there is incorporation by reference, for example because an invention may involve putting things that exist together in a new way that hasn’t been done before. 537)

An inventor who discloses his/her invention to the public before the priority date will anticipate his or her own invention. This may result in the invention lacking novelty. However, disclosure of an invention to a person who is subject to an obligation of confidence will not destroy novelty. There is also a grace period where an applicant can file a complete patent application within 12 months of the disclosure and still be granted a patent. 538)

Video overview by Jacob Corbett onNovelty in patents and the reverse infringement test.

Disregarding Certain Types of Public Information

Section 24 of the Act states that a person making a decision can disregard certain types of information made publicly available through any publication or use of an invention, provided the patent application is made within 12 months of such publication. This section applies to both the question of novelty an inventive/innovative step.

This is invoked where an inventor, patentee or predecessor in title self-publishes the patent. This covers circumstances where an inventor has inadvertently disclosed their invention prior to seeking patent protection. A complete patent application must be filed within 12 months of the disclosure.

This is enlivened, for example, when scientists working at Universities wanting to disseminate their work and then get a patent after. This won't destroy novelty so long as the application is made within the 12 month period. If the application is made outside of this time frame the novelty may be considered destroyed.

This provision also applies where:

• The patentee shows, uses or publishes at a recognised exhibition or publication at such an event. The specifics of this are found in the regulations;

• Publication or reading of a paper written by inventor before a learned society;

• Working the invention in public for purpose of reasonable trial where type of invention makes it reasonably necessary for the working to be in public. For example, testing a rail car has to be done in public, cannot do so in enclosed environment; and

• Information made publicly available without the consent of patentee.

The specifics relating to this provision can be found in the Patents Regulations 1991.

Requirement 3: Inventive step (Standard Patents) or Innovative Step (Innovation Patents)

An applicant can choose to apply for either a Standard Patent or an Innovation Patent.

Video overview by Marcus de Witt-Ryall on Innovative vs Inventive steps.

Video overview by Rebecca Mync on Inventive Step vs Innovative Step.

Inventive Step

According to ss 18(1)(b)(ii) and 7(2) of the Act, there will be an inventive step unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed before the priority date. The threshold for this test is relatively low - ‘if it would not have been obvious’.

“Obvious” has the ordinary English meaning of “very plain”. 539) A “scintilla of inventiveness” (very small amount) is sufficient to support an inventive step. 540) It is necessary to guard against the use of hindsight - an invention always seems more obvious when you know about it.

Video overview by Shiva Abassi onInventive Step.

Video overview by Emily Sakzewski onInventive Step.

A 'person skilled in the relevant art' is a hypothetical “non-inventive” person who possesses “ordinary skill” who works in the art or science of the invention. 541) This can be a team of researchers. 542)

Video overview by Carrick Brough onA person skilled in the art. Video overview by Nathan Dowrick onA person skilled in the art.

Common general knowledge is the body of knowledge known or used by all those in the relevant trade, which forms the background knowledge and experience of those working in that field. Not simply information that could be found – must be information that is generally accepted and assimilated by the relevant technical community. It is the knowledge the person skilled in the relevant art has in the back of their mind when considering whether the invention is not obvious. 543)

Innovative Step

Sections 18(1A)(b)(ii), 7(4): An invention is taken to involve an innovative step when compared to prior art base unless a person skilled in the relevant art in the light of the common general knowledge before the priority date of the claim would consider the invention only varied from the prior art information in ways that make no substantial contribution to the working of the invention. 544)

Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd (2009) 177 FCR 239; [2009] FCAFC 81

Facts: Concerned improved flexible roadside posts. Utilised sheet spring steel to overcome the problems of resilience and durability in existing flexible roadside posts. Stopped them from just cracking and breaking when hit. * Held: Innovation patents were designed for patenting improvements. The poles were patentable. The court held that the process to identify inventive step is to:

  • Compare invention claim by claim with each prior disclosure;
  • Identify variations between invention and each prior disclosure; and
  • Determine whether variations make a substantial contribution to the invention as claimed.

The question of whether an invention makes a substantial contribution as claimed has not been explained in greater detail. It is a factual enquiry that requires the perspective of a person skilled in the art having regard to relevant common general knowledge. It is decided on a case by case basis.

Video overview by Daniel G on Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd.

Requirement 4: Usefulness

Pre-Raising the Bar Amendments

Prior to the 2012 amendments, the term useful was not as clearly defined as it is today. Although usefulness is still a requirement of patentability, the new legislation requires other factors to be considered. Pursuant to ss 18(1)(c) and 18(1A)(c) (which still apply post-Raising the Bar) an invention must operate as claimed or produce the claimed result if the steps are followed by a person skilled in the art. It does not depend on whether the end product is commercially viable. 545)

Post-Raising the Bar Amendments - Additional Definition

As a result of the Raising the Bar Amendments, ss 18(1)(c) and 18(1A)(c) were added which inserted a new definition of 'useful' in s 7A.

7A Meaning of useful:

  • (1) For the purposes of this Act, an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification.
  • (2) The disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art.
  • (3) Subsection (1) does not otherwise affect the meaning of the word useful in this Act.

The Raising the Bar Amendments bring Australian law in line with that of the US. In the US there is no requirement for ‘specific, substantial and credible use’ to be considered, as these grounds will not be examined. These grounds may however, may be raised in post-grant challenges to a patent’s validity.

Requirement 5: Prohibition on Secret Use

Patents must not be secretly used. This prohibits a patentee from effectively extending the patent term by making commercial use of the invention before the priority date. Patent protection provides a twenty-year monopoly to patent holders, before the invention falls into the public domain. It thus forces a patentee to choose between patent or trade secret protection. Secret use and public use are mutually exclusive - i.e. secret use will not affect novelty, and it is thus a separate area of invalidity. 546)

Video overview by Zoe Busch onSecret Use.

Pursuant to s 9 of the Act the following acts are not considered to be secret use of the invention:

• Use for the purpose of reasonable trial or experiment only; • Use occurring solely in the course of a confidential disclosure of the invention; • Any other use for any purpose other than the purpose of trade or commerce; and • Any use of the invention by or on behalf of the Commonwealth, a State, or a Territory.

There is a new 12 months grace period in respect of secret use. 547) The grace period provisions in s 24 apply to any secret use of the invention made within 12 months of filing a complete application (as opposed to a provisional application). In other words, secret use will be treated in the same way as public use as far as the grace period is concerned.

Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75

  • Facts: Concerned a hammer used in mining for exploratory drilling. A friend of the inventor, who had tested the hammers inventor, ordered a number from the inventor. However, the inventor had not accepted the order. It also decided that the manufacture of 15 to 20 hammers was reasonable in order to conduct trials to determine their commercial viability.
  • Held Has the patentee obtained a commercial benefit before the priority date? One instance is sufficient, no matter how close to the priority date it occurs. Rationale: Prevents a patentee gaining a longer monopoly than the statutory period. Production of 15 – 20 hammers in condition for commercial sale and order having been received for 5-6 cannot be considered a matter of trial and experiment, this indicates trial and experiment had been concluded earlier and commercial product had commenced since. Lack of evidence as to any trials or experiments on hammers, so inference drawn is that this wasn’t occurring.

Video overview by Sam D'Arro onSecret use in Azuko Pty Ltd v Old Differ.

Video overview by Diana Chiknaikin on Azuko Pty Ltd v Old Digger.

Patent Applications: Description and Claim Requirements

What does a Patent Contain?

A patent contains three key parts. These include:

  1. Abstract – briefly described invention and field or area it applies.
  2. Description (including the best known method of performing the invention).
  3. Claims (define the scope of the monopoly claimed).

Patent attorneys in Australia have exclusive monopoly on the right to draft a patent application; only inventor, applicant or an attorney can draft application. Lawyers are excluded from drawing patent applications: they don’t have the requisite qualifications; patent attorneys require science degrees and other attorney studies.

The specification in s 40 of the Patents Act 1990 (Cth) provides that:

A provisional specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. 548)

It also must be a complete specification which includes: 549)

  • Disclosure of the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art (note pre-Raising the Bar, a specification had to 'describe the invention fully'); and
  • Disclosure of the best method known to the applicant of performing the invention; and
  • End with a claim or claims.

Section 40(3) of the Act further outlines that the claim or claims must be clear and succinct and supported by matter disclosed in the specification - has to be some correlation between what is disclosed in the specification and what is claimed, if the claims try to gain monopoly in areas beyond the disclosure, will fail – however, if one claim is invalid it is not fatal to all, each is considered on its merits (note pre-Raising the Bar, claim has to be 'fairly based on the matter described' in the specification). Aim of this requirement is to ensure the claim is not broader than the contribution to the art described in the specification.

Lastly, s 40(4) notes that the claim or claims must relate to one invention only.

Claim Construction

Claims are used to define the limitations of the patent monopoly. The patent specification is intended to be given a purposive construction as opposed to a pure literal construction.
Principles in constructing claims:

  • Claims define the invention subject of the patent.
  • Must be construed according to their terms, on ordinary principles of construction of written documents.
  • It is not legitimate to confine the scope of claims by reference to limitations found in the body of the specification but which are not expressly or by proper inference reproduced in the claim themselves.
  • Don’t expand or narrow the boundaries of monopoly as fixed by the words of a claim by adding to those words, glosses or interpretations draw from other parts of the specification.
  • Construction – read specification as a whole.
  • In some cases, the meaning of words use may be qualified or defined by what is said in the body of the specification.
  • If an expression used in a claim is not clear or is ambiguous it is permissible to resort to the body of the specification to define or clarify words used in the claim.
  • A patent specification should be given a purposive construction rather than a purely literal one.
  • If it is possible to ascertain what the invention is from a fair reading of the specification as a whole it will be invalid.
  • But the specification must be construed in light of the common general knowledge in the art as it existed before the priority date. 550)

Patent Application Process

The patent application process is complicated and involves many steps which are drawn out over a period of time. The following section will outline the process involved with both standard patents and innovation patents.

Standard Patent

  1. Optional - provisional application filed:

    * The filing of a provisional patent application creates a priority date;

    * If a provisional application is filed a complete application within 12 months of filing provisional application.551)

  2. Complete application filed:

    * The filing date becomes the date of the patent; 552)

    * Once the completed application has been filed time starts running; 553)

    * At this point the patent becomes open to public inspection ('OPI') 18 months after the priority date. 554)

  3. Examination

    * Application must request an examination within 5 years of lodging a complete application; 555)

    * Applicant has 21 months to address examiners objections;

    * Re-examination can occur at the Registrars discretion. 556)

  4. Acceptance and publication

    * Can appeal to the Federal court if rejected; 557)

    * Once accepted, becomes open to public inspection; 558)

    * The application has the same rights he or she would have if a patent had been granted on the day the specification becomes open to public inspection. 559)

  5. Opposition

    * The validity of a patent is not guaranteed; 560)

    * Opposition to the grant of a patent can occur on the grounds set out in s 59.

  6. Patent granted

    * Infringement proceedings can be brought; 561)

    * Defendant can bring a counter-claim for revocation of the patent. 562)

For more information seeIP Australia’s Patent Application Guide

Video by Kimberley Dorrian on How to Obtain a Standard Patent.

Innovation Patent

Only a formalities check is conducted prior to grant of the patent. 563) The patentee must comply with the specification disclosure requirements in s 40. The patent can only be enforced once it is certified, which requires a substantive examination. 564) If an innovation patent is examined and found to be invalid, it is revoked. 565)

Ownership: employees and employers

Video overview by Matthew Egerton-Vernon on When an Employer Will Own The Invention of an Employee.

Converting Patent Applications

Converting an Innovation Patent Application

An innovation patent application can be converted to either a provisional application or a standard patent application. In terms of a provisional patent application, an innovation patent can be converted so long as the request to convert is made between the filing date of the innovation patent application and the earliest of these dates: the application acceptance or 12 months from the filing date.

In terms of converting the innovation patent into a standard patent the request to convert must be made before the innovation patent has been accepted.

Converting a Standard Patent Application

A standard patent application can be converted to either a provisional application or an innovation patent application. In terms of a provisional application, the request to convert must be made between the filing date and the earliest of these dates: 12 months from the filing date, before the application is accepted or three weeks before its publication. In terms of an innovation patent, the request to convert must be made before the standard patent has been accepted.

International Patents

Australian patents only provide protection to the invention within Australia. The following sections consider patent protection outside of Australia.

Territorial Principle

A patent for an invention gives a monopoly within the territory of the country which grants it. Outside that territory, it has no force or effect. A patentee can apply to have a patent outside the territory.

Norbert Steinhardt and Son Ltd v Meth

In the case of Norbert Steinhardt and Son Ltd v Meth Fullagar J stated: 566)

The English Patents Act relates exclusively to English patents, and the infringements which it makes unlawful are infringements of English patents only. In the same way, the Australian Patents Act relates exclusively to Australian patents, and the infringements, which it makes unlawful, are infringements of Australian patents only. If, therefore, an Australian patentee sues in Australia for an infringement alleged to have been committed in England, and it is asked whether the act complained of was actionable in England, the answer must be: No. For his Australian patent gives him no monopoly in England, and what the defendant has done in England is perfectly lawful according to English law.

Patent Protection Overseas

If a patentee wants to extend the protection of their invention outside of Australia they have two choices: first to file patent applications in each country they seek protection within, or to file a single international application under the Patent Cooperation Treaty (PCT). The PCT is governed by the World Intellectual Property Organisation (WIPO). The Paris Convention also assists in the filing of applications as it allows applications to be filed in many countries at about the same time. This overcomes the difficulties of novelty that occurs where there is a patent filed in another country prior to filing in Australia. In instances such as this, the Australian application would lack novelty due to disclosure of the patent in other countries. A Paris Convention application overcomes this by allowing later applications in Paris Convention Countries without destroying novelty.

The PCT facilitates the filing of a patent application in a number of countries simultaneously, however the result is still multiple patent applications in multiple countries. A PCT application is subject the examination processes and standards of each of the countries. The PCT allows applicants to file one application for many countries. This is one single application, which split into multiple applications for each jurisdiction. Filing in this way may create a priority date. This can be used in conjunction with national applications. E.g. might file PCT for inventions in 3 countries and a national application in Australia – Paris Convention makes this possible. The PCT makes the process of applying for patents in multiple countries easier.

For more information see WIPO Patent Cooperation Treaty Applicant’s Guide

Patent Infringement

Ownership and Exploitation

Exclusive Rights of Patentee

The patentee has the right to ‘exploit’ the invention. 567) 'Exploit' is defined in Schedule 1 to mean:

  • In relation to a product: ‘to make, use, sell or otherwise dispose of the product’ or offer to do so, or ‘import it or keep it for the purpose’ of doing so;
  • In relation to a process/method: to use the process.

The rights granted to a patentee are considered personal property. 568)

Ownership

Ownership, within s6 of the Statute of Monopolies traditionally referred to the ‘first and true inventor’, which included the person who first introduced the invention into the realm. 569) This definition of ownership is not the case today. Pursuant to the Patents Act 1990 (Cth), an inventor has a right to apply for a patent, but a person can also acquire rights to an invention. Rights can be acquires through the course of employment or by purchasing the right. 570) Mere importation is no longer sufficient to apply for a patent.

There can be joint inventors of a patent. 571) Joint inventors take the patent as tenants in common 572) Each is entitled to work the invention without accounting to the others 573) However, all joint inventors must consent to the grant of a licence or assignment of an interest. (s 16(1)(c) )) The Commissioner of Patents will be engaged to resolve instances of dispute between co-owners of a patent. 574)

Video overview by Taylor Lennox onWhen the rights to an invention will be owned by an employer.

Employee Inventions

Ownership of employee inventions vests in employers where there is an express term in the employment contract. Any express term should not be so wide as to constitute a restraint of trade. 575) In Electrolux, an adaptor to fit a bag to a vacuum cleaner was invented by a storekeeper and the terms of his employment had nothing to do with inventing in relation to vacuum cleaners.

Ownership can also vest in employers by way of implied terms. Where employees are engaged to use their inventive faculty, they will be considered to be doing work they are paid to do. In these instances, the benefits to the employer include the rights to invention. 576)

Ownership and Exploitation: Assignment and Licensing

Assignment

Patents are considered personal property. 577) The rights conferred to a patent owner/s are the exclusive rights to exploit the invention.578) Patents can be bought, sold, traded, assigned or licensed. An assignment must be in writing signed by or on behalf of the assignor and assignee. 579) A patent may be assigned for a place in, or part of, the patent area. 580) The patent right can be divided up geographically (e.g. in different states in Australia).

There is a possibility of unregistered equitable interests in a patent. 581) Pursuant to s 189(3), in some instances, “equities in relation to a patent may be enforced against the patentee except to the prejudice of a purchaser in good faith for value”.

The assignment sale of patent right gives the assignee rights to the patent. Once complete, the assignee owns the patent and the assignor has no residual rights. The details of the assignment must be recorded on the patent register.

Licenses

License provide permissions for others to make use of the patent. For patents owned jointly, all co-owners must consent the grant of a licence. 582) Licences do not need to be in writing (but should be for evidentiary reasons)). Licences should be registered. 583) Licences can be contractually supported by consideration and for a particular term or can be bear licences determined by will of the licensor.

A licensee may terminate the licence agreement even if it is still in force at the time the patent expires. 584)

Video overview by David Taylor onCommercialisation and licensing of inventions.

Regency Media Pty Ltd v MPEG LA, L.L.C. [2014] FCAFC 183

  • Facts: Single licence agreement for multiple patents. Can you terminate for single patent that has expired where the other patents have not expired?
  • Answer is no – must be termination of the whole agreement.

Licence may be exclusive, sole or non-exclusive.

  • Exclusive licence granted to one persons who can exploit to exclusion of all others including patentee.
  • Sole licence like exclusive but patentee can still use.
  • Non-exclusive licences are a licence to more than one person and patentee can still exploit. Non-exclusive licences may be limited by geography, duration, purpose, scope, field of industry, etc.

There can also be implied licences, for example a purchaser's right to use a patented product, or a purchaser's right to repair a patented product. Such uses will not breach the patent.

Compulsory licences also exist under the Act. A court application is required to evoke compulsory licenses. These arise where a patentee has failed to exploit the patent in the patent territory. 585)

Exclusive Licences

An exclusive licensee may commence infringement proceedings. 586) The licensee must join the patentee as a party as co-plaintiff (joint legal representation) or as a defendant. 587)

An exclusive licensee means a licensee under a licence granted by the patentee and conferring on the licensee, or on the licensee and persons authorised by the licensee, the right to exploit the patented invention throughout the patent area to the exclusion of the patentee and all other persons. 588)

Multiple exclusive licenses for patents in respect of different uses of the invention are not permitted. 589)

Infringement

Patent infringement proceedings are outlined in s120 of the Act. Proceedings can be commenced by a patentee or exclusive licensee, although an exclusive licensee must join the patentee as a defendant or plaintiff. 590)) 'Infringement' is not defined by the Act however is considered to occur when a person exercises one of the exclusive rights of the patentee without their consent. The concepts of knowledge and intent are not elements of patent infringement. Infringement depends purely on whether a person other than the patentee, licensee or someone authorised is exploiting the exclusive rights of the patentee.

As noted previously, the exclusive rights of the patentee are to exploit the invention; including using, selling or making the invention 591). These exclusive rights commence on publication of the complete specification. 592) Infringement proceedings can only be commenced once the patent is granted. 593)

Proceedings must be started within the later of 3 years of the patent being granted, or 6 years from the date of the infringing act. 594)

Test for Infringement

The test for infringement is whether all essential integers (elements) of the patent have been taken - this is a question of fact. 595) A literal interpretation of the patent claims will not always suffice. 596) This is known as the 'pith and marrow' (purposive) approach.

Pith and Marrow

The pith and marrow refers to the 'essence and substance' of the invention. 597) Whilst this phrase is rarely used in modern patent law cases, the phrase is intended to refer to the “novel features only that [the patentee] claims to be essential”, these are the essential integers of the patent claim. 598)

Catnic Components Ltd v Hill & Smith Ltd (No 1) (1982) RPC 183

  • Facts: Patent for steel lintels for use in spanning the spaces above window and door openings. Specification required a bar to “extend vertically”. Hill created a virtually identical invention that had a bar that extended upwards 6 degrees from being vertical. The device worked entirely in the same way as Catnic's invention. Created invention that worked in entirely same way as patentee’s invention but was 6 degrees from vertical.
  • Held: This was taken to be infringement.
"[A] patent specification is a unilateral statement by the patentee, in words of his own choosing, … by which he informs them what he claims to be the essential features of the new product or process… that constitute the so-called “pith and marrow” of the claim. A patent specification should be given a purposive construction rather than a purely literal one… The question in each case is: whether persons with practical knowledge [in the relevant field] would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked. The question, of course, does not arise where the variant would in fact have a material effect upon the way the invention worked."

Contributory Infringement

The doctrine of contributory infringement applies in patent law to allow a patentee to seek remedies from a person who has indirectly infringed the patent. This may occur in situations where a person has supplied another the ability to infringe the patent.

Section 117 of the Act outlines the doctrine of contributory infringement.

  • Section 117(1) If the use of a product by a person would infringe a patent, the supply of that product by one person to another is an infringement of the patent by the supplier unless the supplier is the patentee or licensee of the patent.
  • Section 117(2) A reference in subsection (1) to the use of a product by a person is a reference to:
    • (a) if the product is capable of only one reasonable use, having regard to its nature or design that use; or
    • (b) if the product is not a staple commercial product any use of the product, if the supplier had reason to believe that the person would put it to that use; or
    • (c) in any case the use of the product in accordance with any instructions for the use of the product, or any inducement to use the product, given to the person by the supplier or contained in an advertisement published by or with the authority of the supplier.

    The mere completion of supply of the patentable product amounts to infringement. It is immaterial whether the product is put to an infringing use. 599)

In Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd & Ors [2013] HCA 50, this defence was raised by could not be made out.

Defences and Exemptions to Infringement

Prior Use Exemption

Section 119 allows a person to continue to exploit a product or process if immediately before the priority date the person was using it in the patent area or had taken definite steps (contractually or otherwise) to exploit the product or process in the patent area.

There must be a continuous use of the invention. This defence can apply where a prior user learns of invention through publication or use in the prescribed circumstances mentioned in s 24(1)(a). A prior user can assign his or her rights to another.

The examination process is susceptible to error, this is why the Act makes it clear that a grant of a patent is no guarantee of validity. This defence is largely relevant where the prior user does not wish to challenge the validity of the patent.

Exemptions for Obtaining Regulatory Approvals

Pursuant to s 119A of the Act, a pharmaceutical patent is not infringed if a person exploits an invention solely for the purpose of obtaining TGA approval of goods intended for therapeutic use; or obtaining similar regulatory approval in a foreign country.

This exception is for generic versions of drugs and for regulatory approval to be sought during the patent term. This is in place to ensure that when the patent expires patent protection can be sought immediately. This does not apply to medical devices or therapeutic devices

Section 119B applies to obtaining regulatory approval of non-pharmaceuticals (eg agricultural chemicals, medical devices etc.)

Experimental Use Exemption

Section 119C of the Act was introduced with the Raising the Bar amendments. This section outlines experimental use of the patent.

Video overview by Sophie Williams onExperimental use.

Section 119 C

  • (1) a person may do an act that would otherwise amount to an infringement of the patent, if the act is done for experimental purposes relating to the subject matter of the invention (scientific research, unfortunately this experimental use exemption is narrow and doesn’t relieve may concerns raised).
  • (2) “Experimental purposes relating to the subject matter of the invention” include, but are not limited to:
    • (a) determining the properties of the invention
    • (b) determining the scope of a claim relating to the invention
    • (c) improving or modifying the invention
    • (d) determining the validity of the patent or of a claim relating to the invention
    • (e) determining whether the patent for the invention would be, or has been, infringed by the doing of an act.

Focuses on the invention, patent, or infringement of the patent – doesn’t extend to using patented invention to discover things not relating to the patent. E.g. if patent is syringe, can only use to see how it works, or to see if patent is valid, cannot use it for experimental purposes to see if you can find a new cure for a disease.

Remedies

Remedies for Infringement

Remedies for infringement are contained in ss 122 and 123. A court may grant an injunction (on any terms the court deems fit) or, at the option of the plaintiff, either damages or an account of profits.

The court may order infringing articles to be delivered up for destruction or issues Anton Piller orders (to preserve evidence). The court may “refuse to award damages, or to make an order for an account of profits, in respect of an infringement of a patent” if the infringement is considered an innocent infringement. 600)

Other Remedies

A non-infringment declaration can be awarded. 601) These remedies can only be sought in respect of specified granted patents or certified innovation patents. 602) The patentee must be joined as a respondent to these proceedings. 603) The applicant must first notify the patentee with full written particulars of the use or proposed use, and patentee must fail to admit that the use would not infringe before bringing non-infringement declaration (designed to prevent non-essential litigation). 604) A potential defendant can approach the court to seek a declaration if their actions don’t infringe a registered patent.

A counterclaim for revocation of the patent can be brought by the alleged infringer. 605) A respondent may allege a patent is not valid and ask for revocation of the patent. This is available since the validity of patent is not guaranteed. 606) A patentee whose claims survive a challenge to their validity in litigation may apply for a certificate of validity pursuant to s 19. The certificate outlines that the claim has been challenged and survive. This can be used in the future – and provides a judge further opportunity to grant an order for costs.

Video overview by Jack Longley onSection 19 Certificates of Validity.

Unjustified Threats

The provisions dealing with unjustified threats are contained in Part 3, Chapter 11 of the Act. Section 128 allows a person to apply to the Court for:

  • (a) a declaration that the threats are unjustifiable;
  • (b) an injunction against the continuance of the threats;
  • (c) the recovery of any damages sustained by the applicant as a result of the threats.

However, mere notification of the existence of a patent or a patent application is not a threat for the purposes of s128. 607)

The objective of these provisions is to prevent patentees making unjustified threats, where person has not infringed a patent. A threat of litigation may be made via letters, orally, gossip, adverts or other means. The alleged infringer should be free of unjustified threats.

U and I Global Trading (Australia) Pty Limited v Tasman – Warajay Pty Limited (1995) 32 IPR 494 (Cooper J):

  • Whether the language used would convey to any reasonable person that the author of the letter… intended to bring proceedings for infringement against a person said to be threatened. It is not necessary that there be direct words that action could be taken.
  • Threat may be implied from the circumstances of communication.

To avoid being named as a respondent to an unjustified threats proceedings:

  • Only assert actions that can be proved.
  • Only refer to multiple forms of IP rights if infringement can be proved for each and every IP right asserted.
  • Only threaten proceedings if the rights holder is ready and willing to institute proceedings promptly.
  • Commence infringement proceedings promptly if the infringing conduct does not cease.

International agreements on patent law

In 1970 the Patent Co-operation Treaty (PCT) was drafted. The PCT was drafted within the existing framework of the Paris Convention. There are over 147 countries who are members of the Paris Convention. The PCT is a comprehensive guide to patent law standards. The PCT not only makes it easier for patentees to file applications in multiple countries, it also seeks to harmonise the national patent laws of the countries. The PCT has been considered successful is assisting in the development of patent law globally.
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which built upon the foundations of the PCT was enacted to address the gap in the laws and the demands of modern technology and innovation, TRIPS is administered by the World Trade Organisation (WTO) and seeks to facilitate international trade and promote stability in the global economy by setting minimum standards for IP. TRIPS sought to further minimise the deviations between national patent laws. For instance in Australia, as a result of TRIPS, the term of patent protection was increased from 16 years to the international standard of 20 years.608)

TRIPS also set out the basic criteria for patentability. Pursuant to Article 27 Patentable subject matter is considered to be:

“…Products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.”

In 2005 Australia entered intro a bilateral trade agreement with the US, The Australia-US Free Trade Agreement (AUSFTA), which also required a number of significant changes to Australia’s IP laws including patent legislation.

TRIPS is administered by the WTO and seeks to facilitate international trade and promote stability in the global economy by setting minimum standards for intellectual property.609)

Since 2004 there have been other amendments made to the Patents Act 1990 (Cth), predominantly motivated by the need to ensure Australia’s laws were comparable and compatible with Australia’s international trading partners.610))

Access to Medicine

Video overview by Tess Van Geelan onThe Doha Declaration and global access to medicines.

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US Constitution, Article 1, Section 8, Clause 8
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8 Anne Chapter 19 (1710)
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Nottage v Jackson (1883) 11 QBD 627
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(1937) 58 CLR 479
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Victoria Park Racing & Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479, [479]
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CA s 22(1)
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(1996) 36 IPR 529
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(1996) 36 IPR 529 at 531
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[1916] 2 Ch 601
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Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 27
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Mander v O’Brien (1934) SASR 87
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Football League Ltd v. Littlewoods Pools Ltd [1959] Ch 637
19)
Mirror Newspapers Ltd v Queensland Newspapers Ltd [1982] Qd R 305
20)
Kalamazoo (Aust.) Pty Ltd v Compact Business Systems Pty Ltd (1985) 5 IPR 213
21)
[1965] RPC 191
22)
[1980] FCA 159
23)
According to Australian Consumer Law ss 18, 19
24)
[1982] Ch. 119
25)
UKPC 68
26)
[2010] FCA 984
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(2010) 189 FCR 109
28)
[2010] EWHC 3099 (Ch)
29)
The Newspaper Licensing Agency Ltd & Ors v Meltwater Holding BV & Ors [2011] EWCA Civ 890
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See the definitions of “literary work” and “computer program” in s 10 of the Copyright Act 1968
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[1984] ANZCompuLawJl 13
32)
[1993] HCA 6
33)
[1999] HCA 49
35)
[1989] RPC 469
36)
[1999]48 IPR 333
38)
[1983] FSR 32
40)
Ancher, Mortlock, Murrary & Woolley Pty Ltd v Hooker Homes Pty Ltd
42)
[1997] FSR 718
44)
(1980) FLR 240
45)
(1998) 41 IPR 649
46) , 135)
Burke & Margot Burke Ltd v Spicers Dress Designs [1936] Ch 400
47)
[1963] VR 719
48)
[1976] AC 64
49) , 50)
(1998) 86 FCR 154
51)
[2007] HCA 17
53)
[2010] FCA 507
54)
[2002] FCAFC 112
55)
(2009) 239 CLR 458
56)
[2010] FCAFC 149
58) , 59)
CA s 32(1)
60) , 62)
CA s 32(4)
61)
CA s 32(2)
63)
CA s 29(1)(a)
64)
Copyright (International Protection) Regulations 1969 reg 4
65)
CA s 89
66)
CA s 90
67)
CA s 91
68)
CA s 92
69)
CA s 113(1)
72) , 180)
s 10(1)
73)
[1996] FCA 761
74)
[1997] FCA 403
75)
(1997) 191 CLR 140
76)
(2004) 218 CLR 273
77)
CA s 224
78) , 82)
CA s 33
79) , 83)
CA s 93
80)
CA s 95
81)
CA s 96 Cth
84) , 85)
CA s 93(3)
86) , 87)
Landes, W. and Posner, R. 2002, Indefinitely Renewable Copyright, John M Olin Law & Economics Working Paper No 154, University of Chicago, Chicago
88)
Pollock, R. 2007, Forever Minus a Day? Some Theory and Empirics of Optimal Copyright, 24 September, MPRA Paper No. 5024, Munich Personal Research Papers in Economics Archive, Munich
89)
Australian Productivity Commission, Inquiry Report, Intellectual Property Arrangements No. 78, 23 September 2016
90)
CA s 35(2)
91)
CA s 35(6)
92)
Oceanroutes (Australia) Pty Ltd v M C Lamond [1984] AIPC 90
93)
Mr Diljeet Titus v Mr. Alfred A Adebare 130 (2006) DLT 130 (Delhi High Court)
94)
[1973] FSR 33
95)
CA s 35(4)
96) , 97)
CA s 35(5)
98)
(1982) 64 FLR 145
99)
[1938] Ch 106
100)
Prior v Sheldon
101)
CA s 22(3A)
102)
CA
103)
CA s 98(2)
104)
CA s 100
105)
CA s 126
106)
CA ss 126A and 126B
107)
CA s 127
108)
CA s 128
109)
CA s 176
110)
CA s 177
111)
CA s 178
112)
[2007] FCAC 80
113)
CA s 196(3)
114)
CA s 10(1)
115)
CA s 119
116)
Trumpet Winsock v Ozemail [1996] 560 FCA 1
117)
Beck v Montana Constructions Pty Ltd (1963) WN (NSW) 1578
118)
[1964-5] NSWR 229; (1963) WN (NSW) 1578
119)
(1963) WN (NSW) 1578
120)
CA ss 113N - 113U
121)
CA s 36
122)
CA s 31(1)(a)
123)
CA s 31(1)(b)
124)
CA ss 31(1)(a)(i) and 31(1)(b)(i)
125)
Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273
126)
SW Hart & Co. v Edwards Hot Water Systems (1985) 159 CLR 466, 472; Francis Day & Hunter v Bron [1963] Ch 587, 614
127)
CA s 21(1)
128)
CA s 21(3)
129)
(1971) 20 FLR 481
130)
[1987] AIPC 90-426
131)
Dixon Investments Pty Ltd v Hall [1990] FCA 477
132)
CA s 66
133)
LED Builders Pty Ltd v Eagle Homes [1999] FCA 584
134)
Barret Property Group Pty Ltd v Dennis Family Homes Pty Ltd (2011) 91 IPR 1
136)
Francis Day & Hunter v. Bron [1963] Ch 587 per Willmer J
137)
[1963] Ch 587
138)
(1982) 46 ALR 189
139)
(2003) 57 IPR 453
140)
[2007] All ER (D) 456 (Mar
141) , 169)
[2011] FCAFC 47
142)
CA ss 31(1)(a)(ii) and 31(1)(b)(ii)
143)
Avel Pty Ltd v Multicoin Amusement Pty Ltd [1990] HCA 58
144)
s 31(1)(a)(iii)
145)
CA ss 31(1)(a)(iv) and s 31(1)(b)(iii)
147)
CA s 22(6)
148)
CA s 31(1)(a)(vi)
150)
CBS Records Australia Ltd v Telmak Teleproducts (Aust) Pty Ltd (1987) 9 IPR 440
151) , 152)
CA s 85
153)
CA s 10(3)(c)
154)
[1987] FCA 138
155)
CA s86
156)
[2001] FCA 1719
157)
See CA s 30A
158)
CA s 87
159)
[2002] FCAFC 146
160)
CA s 88
161)
1996] FCA 257
162)
CA s 14(1)
163)
Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273
164)
9 Fed Cas 342, 348 (Mass 1841) (US)
165)
Ladbroke v William Hill [1964] 1 WLR 273
166)
IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14
167)
[2009] HCA 14 (22 April 2009)
168)
TCN Channel Nine Pty Limited v Network Ten Pty Limited (No 2) [2005] FCAFC 53
170) , 176)
CA ss 37 and 102
171) , 182)
CA ss 38 and 103
172)
Raben Footwear Pty Ltd v Polygram Records Inc [1997] FCA 370
173)
CA s 85(1)(d)
174)
CA s 31(c)
175)
CA s 31(d)
177)
[1994] FCA 975
178)
CA ss 44A and 112A
179)
CA s 44C
181)
CA ss 44D and 112D
183)
[1997] FCA 370
184)
18 IPR 292
185)
CA ss 40(2) and 103C(2)
186)
CA s 40(3)
187)
CA s 40(4)
188)
CA s 40(5)
189) , 190)
CA s 10(2)
191)
CA s 10(2A)
192)
CA ss 41 and 103A
195)
[2001] FCA 108
196)
(2002) 55 IPR 112
197)
CA ss 42 and 103B
198)
CA s 42(2)
199)
TCN Channel Nine Pty Ltd v Network Ten Ltd (2002) 55 IPR 112 at [66] per Conti J and at [98] per Hely J
200)
CA ss 113E and 113F
201)
CA s 43(2)
202)
CA s 43(1)
203)
CA s 104(a)
204)
CA s 104(b) and (c)
205)
CA ss 41A and 103AA
206)
TCN Channel Nine Pty Ltd v Network Ten Ltd [2001] FCA 108; Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (2004) 218 CLR 273
207)
[1960] 1 All ER 703
208)
(1989) 17 IPR 99
209)
(2001) 108 FCR 235
210) , 215)
(2001) 108 FCR 235 at [66] per Conti J
211)
(2002) 118 FCR 417 Hely J (Sundberg and Finkelstein JJ agreeing) at [115]
212)
[1973] 1 All ER 241
213)
[1992] Ch 141
214)
(1999) 48 IPR 333
216)
510 US 569 (1994)
217)
109 F.3d 1394 (9th Cir. 1997)
218)
137 F.3d 109 (2d Cir. N.Y. 1998)
219)
268 F.3d 1257 (11th Cir. 2001)
220)
641 F. Supp. 2d 250 (S.D. N.Y. 2009)
221)
CA s 111
222)
[2012] FCAFC 59
223)
CA s 43C
224)
CA s 47J
225)
CA s 110AA
226) , 230)
CA s 47C
227)
CA s 109
228)
CA s 47B(1) and (2)
229)
CA s 47B(3)
231)
CA s 47D
232)
CA s 47E
233)
CA s 47F
234)
CA s 47H
235)
CA s 28
236)
CA s 46 – see also s 106(1) in respect of sound recordings)
237)
CA ss 65 and 66
238)
CA s 67
239)
CA s 45
240)
CA s 72
241)
CA s 73
242)
CA s 55
243)
CA s 47A
244)
Part III, Div 6
245)
Part VC
246)
CA ss 108(1) and 109(1)
247)
Australian Law Reform Commission, Copyright and the Digital Economy, Final Report Mo. 122 (2014); The Australian Government Productivity Commission, Intellectual Property Arrangements, Final Report (2016)
248)
Pappalardo, Kylie, Aufderheide, Patricia, Stevens, Jessica, & Suzor, Nicolas (2017) Imagination foregone: A qualitative study of the reuse practices of Australian creators
249)
See P Samuelson, 'Unbundling Fair Uses' 2009 77 Fordham Law Review 2537
250)
CA s 115)(1)
251) , 255) , 260)
CA s 115(2)
252)
WEA International Inc v Hanimex Corp Ltd
253)
CA s 115(2
254)
Castlemaine Tooheys Lyd v South Australia (1986) 161 CLR 148
256)
CA s 115(3)
257)
(1980) 10 IPR 345
258)
CA s 115(4)
259)
[1994] FCA 1544
261)
Robert J Zupanovich v B & N Beale Nominees Pty [1995] FCA 1424
262)
CA s 116
263)
CA s 116(1)
265)
CA s116(1A)
266)
CA s 116(1B)
267)
CA s 116(1C)
268)
CA s 116(1D)
269)
CA s 116(1E)
270)
CA s 116(2)
271)
Anton Piller KG v Manufacturing Processes Ltd [1976] Ch. 55 (C.A.); Polygram Records Pty Ltd v Monash Records (Australia) Pty Ltd[1985] FCA 472
272)
CA s 132AC
273)
CA s 132AD
274)
CA s 132AE
275)
CA s 132AF
276)
CA s 132AG
277)
CA s 132AH
278)
CA s 132AI
279)
CA s 132AJ
280)
CA s 132AL
281)
CA s 132AM
282)
CA s 132AN
283)
CA s 132AO
284)
CA s 133B
286)
Information taken from the Electronic Frontiers Australia, 'Safe Harbours' Policy Position 2017 CC-BY
287)
Jacon Morgan, 'A Simple Explanation Of 'The Internet Of Things' (2014), Forbes
288)
Suzor, Nicolas P., Van Geelen, Tess, Pappalardo, Kylie M., Burgess, Jean, Wikstrom, Patrik, & Ventura-Rodriguez, Yanery (2017) Australian consumer access to digital content. Australian Communications Consumer Action Network
289)
Part IX of the Copyright Act 1968 (Cth)
290)
CA s 193
291)
CA s 195ABA
292)
CA ss 195, 195ABC
293)
CA s 195AA, 195ABD
294)
CA ss 195AR, 195AXD
295)
CA ss 195AC, 195AHA
296)
CA ss 195AJ-195ALB
297)
CA ss 195AS and 195AXE
298)
[2012] FMCA 2
299)
(1996) 71 FCR 37 (Carmina Burana case), [1997] FCA 531
300)
(1988) 70 CPR (2d) 105
301)
[1993] E.M.L.R. 144.
302)
[2003] EWCh 1274 (ch) [150]
303)
ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193 at 233
304)
ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 355-356 (Gummow J) citing Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341 at 406 and Consorzio del Prosciutto di Panna v Marks and Spencer plc [1991] RPC 351 at 368-369; TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc (1999) 45 IPR 43, [25]
305) , 306)
Reckitt & Coleman
307)
Cadbury v Squash
308)
Reckitt & Coleman; Reddaway v Banham
309)
ConAgra
310)
ConAgra per Gummow J
311)
Henschke v Rosemount
312)
(Parkdale v Puxu
313)
AG Spalding v Gamage (1915) 32 RPC 273
314)
Interlego Ag v Croner Trading Pty Ltd (1992) 39 FCR 348
315)
Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157
316)
Parkdale Custom Built Furniture Pty Ltd v Puxo Pty Ltd (1982) 149 CLR 19
317) , 318) , 320)
Parkdale
319)
Campomar v Nike
321)
Cadbury Schweppes
322)
Lockhart J in Bridge Stockbrokers v Bridges (1984) 5 IPR 81
323)
Henderson v Radio Corporation
324)
Norman v Bennett
325)
Hutchence v South Sea Bubble Co
326)
Parkdale v Puxu
327)
Hogan v Koala Dundee Pty Ltd* [1988] FCA 333, Pacific Dunlop Ltd v Hogan [1989] FCA 185 and Irvine v Talksport Ltd [2002] EWHC 367 (Cth)
328)
Irvine v Talksport Ltd (2002) 57 IPR 621
329)
Gee v Day
330)
NDA
332)
DA s 5
333)
DA s 7
334)
DA s 15
335)
DA s 19
336)
DA s 13
337)
DA s 21
338)
DA ss 24, 39 and 40
339)
DA s 35
340) , 341)
DA ss 39 - 40
342)
DA s 45
343)
DA s 41
344)
DA s 63
345) , 352)
DA s 73(3)
346)
DA s 67
347)
DA s 66(3)
348)
DA s 68
349)
DA ss 46 and 47
350)
DA s 10
351)
DA s 71(3)
353)
DA s 72(2)
354)
DA s 71
355)
DA s 72
356)
DA s 75(2)
357)
CA s 31
358)
CA s 21
359)
CA s 75
360)
CA s 77
361)
Copyright Act 1968 (Cth) s 74
362)
CA s 77A
363)
TMA s 20
364) , 385)
TMA s 41
365) , 455)
TMA s 20(1)
366) , 456)
TMA s 20(2)
367) , 375)
TMA s 6
368)
TMA s 7(4) and (5)
369)
TMA s 19
370) , 480)
TMA s 17
371)
(1998) 13 IPR 69
372)
Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [1999] FCA 816
373) , 405) , 406)
[2002] FCAFC 273
374) , 402) , 403)
[1999] FCA 816
376) , 407) , 408)
[2002] FCA 1551
377) , 409)
[1967] HCA 42
378)
TMA s 27
379)
TMA s 68
380) , 457)
TMA s 72(3)
381) , 382)
TMA s 27(1)
383) , 391)
TMA s 39
384) , 392)
TMA s 40
386)
TMA s 42
387) , 416)
TMA s 43
388) , 419)
TMA s 44
389) , 390)
TMA s 33
393)
TMA s 41(1)
394)
[1964] HCA 55
395)
[1973] HCA 15
397) , 399)
[2000] FCA 177
398)
[1998] FCA 440
400) , 401)
[1999] ATMO 90
404)
[2009] FCA 891
410) , 411)
[2013] ATMO 61
412)
TMA s 42(b)
413)
[2001] FCA 683
414)
TMA s 42(a)
415)
See for example Nuckin Futs Trade Mark Application No. 1408134 (24 February 2011) and Pommiebasher (Peter Hanlon [2011] ATMO 45
417) , 418)
[2007] FCA 1649
420)
[1999] FCA 1020
421) , 422)
[1963] HCA 66]
423) , 496)
Angoves Pty Ltd v Johnson (1982) 43 ALR 349
424) , 425)
(1999) 96 FCR 107
426) , 427)
[1999] FCAFC 1020
428) , 429)
[2003] FCA 901
430) , 491) , 507)
TMA s 10
431) , 482) , 483)
[1963] HCA 66
432) , 433)
[1954] HCA 82
434) , 435)
[1973] HCA 43
436) , 437)
[2000] HCA 12
438) , 439)
[2004] FCAFC 196
440) , 441)
[1994] FCA 1001
442) , 443)
[2000] FCA 1539
444)
Distinguishing Woolworths v Register of Trade Marks [1999] FCAFC 1020 and Coca Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107
445)
TMA s 52
446)
TMA s 57
447)
TMA s 58
448)
TMA ss 58A, 44(4)
449)
TMA s 59
450)
TMA s 60
451)
TMA s 61
452)
TMA s 62
453)
TMA s 62A
454)
Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66
458)
TMA s 120(1)
459) , 463)
TMA s 120(2)
460)
TMA s 120(3)
461)
TMA s 120(4)
462)
TMA s120(1)
464) , 465)
[2009] FCAFC 27
466) , 467)
[1993] FCA 645
468) , 469)
[1996] FCA 1484
470)
TMA s 120(3)
471)
[2000] FCA 1538
472)
Nintendo Co Ltd v Care [2000] FCA 1538
473)
[2001] FCA 1502
474)
Virgin Enterprises Limited v Klapsas [2001] FCA 1502
475)
[2000] FCA 1842
476)
San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842
477) , 478)
[1999] FCA 1721
479)
Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407
481)
TMA s 7
484) , 485)
[1991] FCA 310
486) , 487)
(1996) 34 IPR 282
488) , 489)
[1956] HCA 41
490)
Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66]
492) , 493)
[2009] FCA 606
494)
See for example Eastman Photographic Materials Co Ltd v John Griffiths Cycle Corp Ltd and Kodak Cycle Co Ltd, Re Trade Mark No 207006 15 RPC 105
495)
See for example Toys ‘R Us Inc v Akkaoui (40) USPQ 2d 1836 (ND Cal, 1996)
497)
Geoffrey Inc v Luik (1997) 38 IPR 555
498) , 501)
TMA s 123
499) , 502)
TMA s 124
500)
TMA s 122(2)
503)
TMA s 88
504)
TMA s 87
505)
TMA s 86
506)
TMA s 92
508)
PA s 67
509)
PA ss 70 - 79A
510)
LTS Lohmann Therapie-Systeme Gmbh & Co KH [2002]
511)
PA s 68
512) , 552)
PA s 65
513)
PA s 43
514) , 517)
PA s 7
515)
Sch 1
516)
PA ss 54-55
518)
PA s 18
519)
Re Luminis Pty Ltd & Fertilitiescentrum AB(2004) 62 IPR 420
520)
PA s 18(3)
521)
PA s 50(1)(a)
522)
See WM Wrigley Jr Co v Cadbury Schweppes Pty Ltd (2005) 66 IRP 298 [315]
523)
TRIPS art 27(2)
524)
TRIPS art 27(3)
525)
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2)(2007) 235 CLR 173, 211
526)
s 6 Statute of Monopolies
527)
(1959) 102 CLR 252, [269]
528)
Grant v Commissioner of Patents (2006) 154 FCR 62
529)
447 US 303 (1980)
530)
[2013] HCA 50
531)
[2015] HCA 35
532)
PA s 7(1)
533)
Patents Act 1952 Cth
534)
(1977) 137 CLR 228
535)
Nicaro Holdings Pty Ltd v Martin Engineering Co* (1990) 91 ALR 513 at 517
536)
Minnesota Mining & Manufacturing Co v Beiersdorf (1980) 144 CLR 253
537)
Nicaro Holdings Pty Ltd v Martin Engineering (1990) 91 ALR 513
538)
PA s 24
539)
Aktiebolaget Hässle v Alphapharm Pty Ltd (2002) 212 CLR 411, 426 [30]
540)
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 28, 249 (Aicken J
541)
H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151, 190, [173] per Bennett J
542)
Aktiebolaget Hässle v Alphapharm Pty (2002) 212 CLR 411, 426 [30]
543)
Minnesota Mining & Manufacturing Co and 3M Australia Pty Ltd v Beiersdorf (1980) 29 ALR 29
544)
PA s 7(4)
545)
Rehm Pty Ltd v Websters Security System (International) Pty Ltd (1988) 11 IPR 289, 307-8; Rescare Ltd v Anaesthetic Supplies (1992) 25 IPR 119, 142
546)
Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75
547)
PA s 9
548)
PA s 40(1)
549)
PA s 40(2)
550)
See Décor Corporation Pty Ltd v Dart Industries Pty Ltd (1988) 13 IPR 385, 400, Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183
551)
PA s 38
553)
PA ss 67 and 68
554)
PA s 55; Reg 4.12
555)
PA s 44, Reg 3.15
556)
PA s 97
557)
PA s 51
558)
PA s 55
559)
PA s 57
560)
PA s 20
561)
PA s 120
562)
PA s 121
563)
PA s 52
564)
PA s 101E
565)
PA s 138
566)
(1961) 105 CLR 440, 443-444
567)
s 13(1)
568) , 577)
s 13(2)
569)
Edgeberry v Stephens* (1693) 2 Salk 447
570)
s 15
571)
s 31
572)
s 16(1)(a)
573)
s 16(1)(b)
574)
s 17
575)
Electrolux Ltd v Hudson [1977] FSR 312
576)
UWA v Gray (2009) 82 IPR 206
578)
s 13
579)
s 14(1)
580)
s 14(2
581)
Stack v Brisbane City Council (1996) 35 IPR 297 at 299; ss 189(3) and 196(b)(ii
582)
s 16(1)(c)
583)
ss 187, 195, 196
584)
s 145
585)
ss 133(2), 135 and 144
586)
s 120(1)
587)
s 120(2)
588)
Ex parte British Nylon Spinners (1963) 109 CLR 336
589)
Bristol-Myers Squibb Company v Apotex Pty Ltd (No 5) [2013] FCA 1114, [425]-[439] per Yates J
590)
s120(2
591)
s 13, Sch 1
592)
s 57(1)
593)
s 57(3)
594)
s 120(4)
595)
Rodi & Wienenberger AG v Henry Showell Ltd
596)
Populin v HB Nominees Pty Ltd
597)
Clark v Adie (1875) 10 Ch App 667
598)
Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183, 243; Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230, 245
599)
Collins v Northern Territory (2007) 161 FCR 549, [61] French J; Generic Health Pty Ltd v Otsuka Pharmaceutical Co Ltd (2013) 296 ALR 50, [140]
600)
s 123(1)
601)
ss 125-127
602)
s 125(2)
603)
s 125(3
604)
s 126
605)
s 121
606)
s 20
607)
s131
608)
Article 12 TRIPS
609)
The US Free Trade Agreement Implementation Act 2004 (Cth) Sch 8
610)
See the Intellectual Property Laws Amendment Act 2006 (Cth) and Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth
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