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Archive for 2012|Yearly archive page

IP Australia fees rise from 1 July 2012

In Designs, IP Australia, Patents, Trademarks on 11 May 2012 at 17:40

Following the Australian Federal Budget on Tuesday 8 May 2012, IP Australia has announced a list of changes to fees charged for its products and services.

Most fee changes will take effect from 1 July 2012. New application filing fee charges will increase from 1 October 2012.

Full fees for each type of intellectual property can be found by clicking on the headings below. In summary, the new fees will be as follows (a variety of fees indicates that some filing methods cost more than others):

Trademarks

  • Headstart request:     $120/class
  • TM application:     $200 or $220/class
  • Standard TM registration:     $300/class
  • TM renewal:     $300 or $350/class

Designs

  • Application:     $250 or $350/design
  • Examination:     $420
  • Renewal:    $320 or $370

Patents

  • provisional application:     $110 or $210
  • standard patent:
    • application:     $370 or $470
    • examination:     $490
    • renewal:     $350 (yrs 4-9), $550 (yrs 10-14), $1,170 (yrs 15-19)
  • innovation patent:
    • application:     $180 or $280
    • examination:     $500
    • renewal:     $160 (yrs 2-4), $270 (yrs 5-7)
  • opposition:     $600

Plant Breeders’ Rights

  • Application:     $345 or $445
  • Examination (single):     $1,610
  • Certificate (PBR):     $345
  • Annual renewal:     $345 or $395
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Optus loses FCA appeal in sport broadcast case (27 April)

In Copyright, FCA on 30 April 2012 at 22:49

National Rugby League Investments Pty Ltd v Singtel Optus Pty Ltd [2012] FCAFC 59

Optus has lost an appeal brought by the NRL, AFL and Telstra before the Full bench of the Federal Court of Australia (“FCA”).

The National Rugby League (“NRL”) and the Australian Football League (“AFL”) own copyright in broadcasts of their games. Telstra holds a license to broadcast these games exclusively, including online.

Optus launched a product called TV Now, which allows users of its mobile phone services to select TV programs from an electronic program guide (“EPG”) to be recorded to Optus’ cloud. The phone users can then watch those programs almost instantly, while still recording, or at any time within the next 30 days. In effect, this allows people to watch the program via the Optus recording almost as soon as Telstra has broadcast the sports events.

The plaintiffs claimed Optus was infringing copyright by broadcasting the games. Optus claimed the phone users were recording the games, albeit to Optus’ cloud, and that this activity falls within the Copyright Act 1968 s.111 exception for ‘time shifting’.

Optus prevailed at trial, with Rares J finding the recordings were made by the users of TV Now, not by Optus.

On appeal, Finn, Emmett and Bennett JJ held that Optus could not rely on the s.111 ‘time shifting’ exception as the recordings were made by either Optus, or by Optus and the TV Now user. The court held:

“The maker was Optus or, in the alternative, it was Optus and the subscriber. It is unnecessary for present purposes to express a definitive view as between the two. Optus could be said to be the maker in that the service it offered to, and did, supply a subscriber was to make and to make available to that person a recording of the football match he or she selected.”

“Alternatively Optus and the subscriber could be said to be the maker for Copyright Act purposes as they acted in concert for the purpose of making a recording of the particular broadcast which the subscriber required to be made and of which he or she initiated the automated process by which copies were produced. In other words, they were jointly and severally responsible for the act of copying. That is our preferred view.”

Optus suspended its TV Now service in response to the judgement. It may still seek leave to appeal to the High Court of Australia.

Useful Documents:

NSW Police sued for “Copyright Piracy”: ABC TV

In Copyright, FCA on 30 April 2012 at 21:54

A recent report on ABC TV’s current affairs program The 7.30 Report details a case before the Federal Court of Australia.

The report claims:

  • the NSW Police are being sued by UK software firm Micro Focus.
  • Micro Focus alleges the NSW Police exceeded its license for its ViewNow database software by installing it on too many computers, continuing to use the software after the license expired, and providing copies of the software to other law enforcement agencies.
  • The NSW Department of Corrective Services, NSW Ombudsman’s Office and the Police Integrity Commission settled out of court.
  • In an interview, cybercrime investigator Michael Speck says: “You think about copyright like a hire car agreement. When the agreement runs out you can’t continue to drive the car and you certainly can’t give it to your mates. And that’s what happened here.”
  • In a further twist, the report claims: “Micro Focus plans to launch yet another lawsuit, this time accusing the police of trying to replace the first batch of pirated software with another batch of pirated software which also belongs to Micro Focus.” The NSW Police issued a statement in response, stating: “NSW Police denies these fresh claims in relation to the NetManage Applet and will vigorously contest the matter.”

Further information:

HCA iiNet wins in HCA (20 April 2012)

In Copyright, HCA on 30 April 2012 at 21:14

Roadshow Films Pty Ltd & Ors v iiNet Ltd

The High Court of Australia (“HCA”) has unanimously dismissed an appeal in a case against internet service provider (“ISP”) iiNet. The case concerned ‘authorization’ to infringe within the meaning of section 101(1A) of the Australian Copyright Act 1968.

Roadshow Films and other members of the Australian Federation Against Copyright Theft (‘AFACT’) had alleged that iiNet ‘authorised’ its subscribers to engage in copyright-infringing downloading of material owned by AFACT members. Their appeal to the HCA followed iiNet’s majority victory before a Full Bench of the Federal Court of Australia, and its win at first instance.

The HCA found that iiNet was not technically in control of the BitTorrent system used by its subscribers to download infringing content, and that it did not authorize infringement. A summary issued by the HCA stated:

“The Court observed that iiNet had no direct technical power to prevent its customers from using the BitTorrent system to infringe copyright in the appellants’ films. Rather, the extent of iiNet’s power to prevent its customers from infringing the appellants’ copyright was limited to an indirect power to terminate its contractual relationship with its customers. Further, the Court held that the information contained in the AFACT notices, as and when they were served, did not provide iiNet with a reasonable basis for sending warning notices to individual customers containing threats to suspend or terminate those customers’ accounts. For these reasons, the Court held that it could not be inferred from iiNet’s inactivity after receiving the AFACT notices that iiNet had authorised any act of infringement of copyright in the appellants’ films by its customers.”

The HCA decision leaves open the possibility that ISPs could still be found to have authorized infringement in situations in which a rights-holder provided an ISP with more specific information.

It also paves the way for legislative change in this area of copyright law. The decision of French CJ, Crennan and Kiefel JJ noted:

“This final conclusion shows that the concept and the principles of the statutory tort of authorisation of copyright infringement are not readily suited to enforcing the rights of copyright owners in respect of widespread infringements occasioned by peer-to-peer file sharing, as occurs with the BitTorrent system.” (para.79)

In a Press Release issued shortly after the HCA’s judgment was delivered, AFACT Managing Director Neil Gane called for legislative change, stating:

“Both judgements in this case recognise that copyright law is no longer equipped to deal with the rate of technological change we have seen since the law of authorisation was last tested. They both point to the need for legislation to protect copyright owners against P2P infringements… Now that we have taken this issue to the highest court in the land, it is time for Government to act. We are confident the Government would not want copyright infringement to go on unabated across Australian networks especially with the rollout of the NBN.”

‘Raising the Bar’ Amendments now law

In Law Reform, Patents, Trademarks on 17 April 2012 at 19:18

Intellectual Property Laws Amendment (Raising the Bar) Act 2012

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 received the Governor General’s assent on 15 April 2012 and is now part of Australia’s intellectual property law.

Most provisions in the Act will come into effect on 15 April 2013 but exemptions for researchers and regulatory use took immediate effect from 15 April 2012.

The research exemptions are intended to allow people to conduct genuine scientific research without fear of infringing patents. IP Australia summarises the exemptions as follows:

“To provide clarity for researchers, an inclusive list of activities that are deemed to be experimental has been included in section 119C of the Patents Act 1990. The following activities are exempt:

* determining the properties of the invention
* determining the scope of a patent claim relating to the invention
* improving or modifying the invention
* determining the validity of the patent or of a patent claim relating to the invention
* determining whether the patent for the invention would be, or has been, infringed by the doing of an act.

This list is not intended to be exhaustive. A court may find other activities also fall within the meaning of ‘experimental’.”

Useful background:

* Progress of the Bill through Parliament

* Summary of the changes from firm Davies Collison Cave. See also their advice to practitioners.

* Summary of the changes from firm DibbsBarker

* Summary of the changes from firm Middletons

* Summary of the changes from firm Shelston IP

* Summary of the changes from firm Sprusons

* Summary of the changes regarding trademarks from firm Clayton Utz

* Summary of the changes from firm King & Wood Mallesons

HCA iiNet decision out 10am Friday 20 April 2012

In Copyright on 17 April 2012 at 07:04

Roadshow Films Pty Ltd & Ors v iiNet Ltd

The High Court of Australia will deliver its judgment at 10am on Friday 20 April 2012, iiNet has told the Australian Stock Exchange (‘ASX’).

The case considers ‘authorization’ to infringe in Australian copyright law. Roadshow Films and other members of the Australian Federation Against Copyright Theft (‘AFACT’) allege that internet service provider (‘ISP’) iiNet ‘authorised’ its subscribers to engage in copyright-infringing downloading of material owned by AFACT members.

iiNet won at first instance and, arguably narrowly, on appeal before the Federal Court of Australia. Roadshow Films appealed to the High Court of Australia, which heard the case in late 2011.

HCA decisions are made available on the AustLII website on the day judgment is delivered.

Useful references:

FCA: the trial decision (Cowdroy J)

FCA: the Full Court’s appellate decisions (Emmett & Nicholas JJ, Jagot J dissenting)

HCA: submissions to the Court

A brief summary of the saga from ArtsLaw Centre

IP Chapter negotiations for Trans-Pacific Partnership

In FTA, Law Reform, USTR, WIPO on 14 April 2012 at 06:46

Inter-sessional negotiations on the intellectual property chapter of a proposed model free trade agreement known as the ‘Trans-Pacific Strategic Economic Partnership Agreement’ (‘Trans-Pacific Partnership’ or ‘TPP’ for short) were held in Santiago, Chile from 9-13 April 2012.

In addition to Australia, parties to the TPP negotiations are Brunei Darussalam, Chile, New Zealand and Singapore (members of the 2006 ‘Trans-Pacific Strategic Economic Partnership Agreement’), and Malaysia, Peru, the USA, and Vietnam. Canada, Japan and Mexico have also expressed interest in joining the TPP.

The confidential nature of the negotiations [criticised here], and the associated lack of media coverage, mean little information about the current state of the proposed intellectual property chapter is available at this stage. However, a draft of the proposed US text for the IP Chapter was leaked in 2011. Documents from New Zealand and Chile relating to the IP Chapter have also been leaked.

In the absence of official information, news about the TPP negotiations and the IP Chapter is mainly speculative, and critical. For example:

Report by Steven Knievel and Peter Maybarduk on the IP Chapter negotiations in Chile. This was also published on the Huffington Post website.

• A report by Professor Jane Kelsey (University of Auckland) of previous meetings in Santiago in February last year suggested “the US text is reportedly more aggressive than its previous free trade agreements (FTAs), building on the IP chapter in the Australia US FTA. A local IT expert predicted the US would use the TPPA to achieve what it failed to secure in the recently concluded Anti-Counterfeiting Trade Agreement (ACTA).”

• An analysis by Carrie Ellen Sager about the leaked February 2011 US version of the proposed TPP IP Chapter suggests it is significantly more stringent than existing Canadian and Mexican law, and existing NAFTA standards. The same author provides a useful line-by-line comparison between the TPP and the Anti-Counterfeiting Trade Agreement (‘ACTA’)

• An analysis of the impact on Chile’s law

• A blog by Rashmi Rangnath from Public Knowledge on 30 January 2012 stated: “We have heard that the countries negotiating the TPP have not agreed on the details of the IP chapter and are meeting in LA this week to work out their differences.”

TPP Speculation at Forbes.com

The eleventh round of TPP negotiations was held in Melbourne from 1-9 March 2012 and attended by 500 negotiators. The twelfth round is scheduled for Dallas, Texas (USA) from 8-18 May 2012. Stakeholders interested in attending this round can register here.

Relevant documents:

• A list of TPP submissions received by DFAT in Australia

USTR TPP website, and blog on the TPP negotiations

• NZ government website about TPP

Report on the leaked IP Chapter, including links.

• A blog speculating about the IP Chapter

Critique and commentary on the TPP by the Australian Fair Trade and Investment Network Inc, including media releases from various organisations and links to parliamentary documents and questions.

Electronic Frontier Foundation’s website criticising the proposed IP Chapter and providing links to leaked and other relevant documents

TPP Watch (a New Zealand organisation describing itself as being organized by “concerned unions, groups and individuals formed to organise and support initiatives to oppose the Trans-Pacific Partnership Agreement (TPPA)”)

Govt submissions filed in HCA tobacco packaging case (5 April 2012)

In Trademarks on 6 April 2012 at 19:26

British American Tobacco Australasia Limited and Ors v. The Commonwealth of Australia

The Australian government has filed written submissions in the case brought by British American Tobacco (‘BAT’) challenging the Tobacco Plain Packaging Act 2011.

The legislation received Assent on 1 December 2011 and  will require uniform packaging of tobacco products from December 2012. Cigarette packaging will have to be a standard olive green colour, devoid of logos and most other distinctive branding (brand names will be carried in a standard font), and carry graphic health warnings. For example, Section 20 of the Act states: “(1)  No trade mark may appear anywhere on the retail packaging of tobacco products, other than as permitted by subsection (3)... (3)  The following may appear on the retail packaging of tobacco products:  (a)  the brand, business or company name for the tobacco products, and any variant name for the tobacco products; (b)  the relevant legislative requirements; (c)  any other trade mark or mark permitted by the regulations.”  The Act prescribes the manner in which the permitted markings may be presented. An example of the prescribed packaging can be viewed here.

BAT argues that legislation denying the ability of an intellectual property proprietor to use its intellectual property amounts to an acquisition of property without compensation, and is thus constitutionally invalid.  Section 51(xxxi) of the Australian Constitution states: “The Parliament shall, subject to this Constitution, have power to make laws for the peace, order, and good government of the Commonwealth with respect to: (xxxi)  the acquisition of property on just terms from any State or person for any purpose in respect of which the Parliament has power to make laws“.

BAT’s submissions were filed on 26 March 2012 and their argument can be outlined as follows:

  • Cl.37: “For there to be an acquisition of property within the meaning of s 51 (xxxi), it is necessary, but not sufficient, for the owner of the property in question to demonstrate that legislation “adversely affects or terminates a pre-existing right that [he or she] enjoys in relation to his [or her] property”.* In this case… the plaintiffs will be unable to use or exploit their trade marks, patents, designs, copyright and get-up in connection with the sale of cigarettes or in any meaningful or substantive fashion, or to exercise any meaningful or substantive control over the appearance of cigarette packets and cigarettes owned by them.” [* Tasmanian Dam Case(1983) 158 CLR 1 at 145 per  Mason)].
  • Cl.39: “It follows that, even though the plaintiffs have not been formally deprived of their trade marks, patent, design, copyright, get-up, goodwill and rights in their packaging, they have been” in a real sense, although not formally, stripped of the possession and control” of their property.” The Commonwealth has, in other words, deprived the plaintiffs of the “reality of proprietorship”* or “everything that made [that property] worth having.”** The extent of the restriction on the plaintiffs’ use of their property is plainly, it is submitted, capable of characterization as an acquisition.***” [* Bank of NSW v.  Commonwealth {1948) 76 CLR 1 at 349 per Dixon J] ; ** Minister of State for the Army v Dalziel (1944) 68 CLR 261  at  286 per Rich J; *** See Trade Practices Commission v Tooth &  Co Ltd (1979)  142 CLR 397 at 415 per Stephen]
  • Cl.47: “In the result, the Commonwealth has assumed control over a substantial aspect of the plaintiffs’ property, business, goodwill and reputation. That description of the benefits accruing to the Commonwealth (and others) by reason of the prohibition of all practical uses of the plaintiffs’ intellectual property makes clear, however, that there is yet a further dimension to the benefit accruing to the Commonwealth. By securing the benefit of the plaintiffs’ rights to use their property by refraining from deploying it in particular ways or for certain purposes , the Commonwealth has been able to assume complete control over the get-up and appearance of BAT’ s cigarettes and their packaging.”

BAT’s submissions go on to explain its claim that this constitutes a taking that is not on just terms.

The Australian government’s 49-page submissions counter these claims, arguing that:

  • Cl.1;  Section 51(xxxi) protects property, not the general commercial and economic position of traders;
  • Cl2: the Act does not effect an unjust acquisition of property.
  • Cl.5: tobacco companies’ statutory rights to trademarks, patents, registered designs and copyright do not include a positive right to use the intellectual property. Further, these statutory rights are inherently subject to statutory modification or extinguishment without compensation.
  • Cl.6: the Act does not confer upon the Commonwealth, or anyone else, a benefit of a property-like nature.
  • Cl.8: “The TPP Act restricts the use of property no more than is appropriate and adapted to reduce harm to members of the public and public health. The TPP Act otherwise allows tobacco companies to continue to use their brand names and variant names on retail packaging to indicate trade origins of their tobacco products and not to use trade marks and registered designs through non-use.” It argues that this does not amount to acquisition on unjust terms.

The government’s submissions go on to elaborate on its arguments, characterising the Act as involving “regulation” not “acquisition” (Cl.79ff). Cl.36 argues that plain retail packaging will reduce the appeal of tobacco products, increase the effectiveness of health warnings, reduce the potential for retail packaging to mislead, and thus improve public health and comply with Australia’s obligations under the World Health Organization Framework Convention on Tobacco Control (“FCTC”).

The Hearing before the HCA is due to commence on 17 April 2012.

Useful documents:

Collecting Societies to Merge

In Copyright on 5 April 2012 at 18:30

Collecting societies Copyright Agency Limited (‘CAL’) and Viscopy have received regulatory approval to merge.

The Australian Competition and Consumer Commission (‘ACCC’) today issued a draft determination authorising a services agreement between the organisations. Under the agreement, CAL will provide membership, licensing and administrative services to Viscopy’s members and licensees. Viscopy’s board will continue to serve its members.

“It will create a ‘one-stop-shop’ for any organisation wanting licence approval to use domestic or internationally created text and artistic content,” Viscopy said.

Regulatory approval will last for five years and the arrangement is expected to take effect from mid-2012.

Viscopy provides copyright management services to visual artists, such as fine artists, photographers and cartoonists. CAL provides rights management services to holders of copyright in print materials, including publishers, authors and visual artists.

Collecting societies are  not-for-profit organisations. They act as non-exclusive agents managing rights on behalf of copyright holders under provisions of the Copyright Act 1968. Membership of the collecting societies is free and voluntary, and both CAL and VIscopy are signatories to the Australian Code of Conduct for Copyright Collecting Societies.

Useful Links:

HCA: PPCA v Cth (28 March 2012)

In Copyright on 1 April 2012 at 16:11

Phonographic Performance Company of Australia Limited (PPCA) & Ors v Commonwealth of Australia & Ors

The High Court handed down its decision confirming the constitutional validity of the 1% (of the broadcaster’s gross earnings) cap on royalties payable for the radio broadcast of sound recordings.