Intellectual Property

Copyright review report released

The final report of the Australian Law Reform Commission’s inquiry into Copyright and the Digital Economy has been released.

The ALRC was asked to consider whether the current exceptions and statutory licences in the Copyright Act are adequate and appropriate in the digital era.

The Report contains 30 recommendations for reform. The key recommendation is for the introduction of a fair use exception to Australian copyright law.

Copyright infringement defences

The key recommendation is to replace the nearly 30 current prescriptive exceptions with “fair use” as a general defence to copyright infringement.

Because “fair use” is flexible, the Report notes […]

Fraudulent IP protection services

IP Australia has warned inventors, designers and businesses to be wary of unsolicited or fraudulent IP protection, promotional or advertising services.

If you own a registered patent or trade mark, you may find yourself the target of letters regarding overseas registration of your application. Letters from unfamiliar organisations, especially letters requesting payment for unsolicited services, should be treated with caution.

Examples of unsolicited service requests include:
• offers to register patents or trade marks in international registers;
• invoices for registration of patents or trade marks in registers;
• offers of patent or trade mark monitoring services.

IP Australia […]

Quick trade mark checks

In conjunction with the new National Business Names Register, IP Australia has introduced TM Check to help Business Name applicants more easily identify pending and registered trade marks which may be similar or identical to their proposed business name.

TM Check is a simplified search for trade marks that have been applied for or registered with IP Australia. It is intended to provide the user with an indication only – It is not a substitute for the comprehensive ATMOSS database search.

Senate Committee report on Business Names Bill

The Senate Economics Committee Report on the Exposure draft of the Business Names Registration Bill 2011 has recommended that the Bill be passed in time for a May 2012 commencement notwithstanding its concerns in the following areas:

  • restrictions on the ability to verify the identity of credit applicants through the national business names register
  • jurisdictional conflicts between the Bill and state and territory probate laws. There are no procedures in the bills as to how ASIC will determine who is a rightful heir to a deceased business name owner and the measures they will take should a new and different […]

When are your secrets safe with your employees? Case note: Seven v Warburton

When we talk about keeping secrets secret we mean we want to keep them secret from competitors and other parties as well as physically secure. But not every secret is genuinely confidential and not every secret will be legally protected. Disputes occur when employees leave with knowledge about a business including commercially sensitive information. And when we retain a consultant, enter a joint venture, seek an investor or pitch a deal we want a confidentiality and non-disclosure agreement signed. Whilst information you provide your external lawyers is usually protected by legal professional privilege, information exchanged between executives and in-house counsel […]

Roadshow v iiNet: film studios appeal to High Court

Following the dismissal of their appeal to the Federal Court Full Court (Roadshow Films Pty Limited v iiNet Limited [2011] FCAFC 23) from the trial judge’s decision that iiNet did not authorise the infringements of copyright by the iiNet users, the film studios are seeking special leave to appeal to the High Court.
UPDATE 12 August 2011: special leave granted.
UPDATE 20 April 2012: High Court dismisses appeal.

In lengthy judgments the Full Court judges split 2:1 against the film studios but were all critical of iiNet and Judge Emmett suggested a better way in which the film […]

Telstra loses directories’ appeal

In Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCAFC 149 the Federal Court Full Court rejected Telstra’s appeal against Justice Gordon’s decision earlier this year that Telstra does not have copyright in the White Pages and Yellow Pages directories as they are not original literary works.

Chief Justice Keane accepted the contention of the defendants that “the directories were compiled, not by the individuals engaged to facilitate the process, but by a computerised process of storing, selecting, ordering and arranging the data to produce the directories in the form in which they were […]

By |December 16th, 2010|Intellectual Property|

National business names registration

A new national business names registration system is due to start in the first half of 2011. The proposed changeover date is 4 April 2011.

The purpose of business name registration is to protect consumers by identifying persons trading under names that aren’t the same as their personal, company or other entity name.

The scheme will also reduce administration for businesses trading in multiple jurisdictions.

Currently business names must be registered in each state or territory a business operates in. The new system requires business name registration nationally only, regardless of whether a business is not carried on in every state. […]

Telstra loses copyright claim over White Pages and Yellow Pages

In Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44 Justice Gordon of the Federal Court decided that, applying the principles of the High Court decision in IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14, Telstra does not have copyright in the White Pages and Yellow Pages directories as they are not original literary works.

Justice Gordon decided that:

1. None of the directories is an original literary work: there were many contributors to each Work, but Telstra could not identify who provided the necessary authorial contribution to each Work.
2. Even if the human or humans who […]

By |February 13th, 2010|Intellectual Property|

Ice TV wins High Court appeal

In IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14, the High Court has decided (6-0) that IceTV's use of some of Nine Network's time and title information obtained from aggregated program guides did not infringe Nine's copyright in its weekly schedules. The High Court restored the trial judge's original decision (see here and here).

The court was aware of the commercial implications.

Here's what French CJ, Crennan and Kiefel JJ (who delivered a separate judgment from Gummow, Hayne and Heydon JJ) said:

So as to indicate that the time and title information […]