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Intellectual property law Chapter 17

Learning objectives At the end of this chapter you should understand: ‘intellectual property law’ and the philosophy behind the concept of protecting intellectual property how to distinguish between the products that are protected by copyright, patent, trade mark and design legislation the definition of the term ‘copyright’ and explain how the law relating to it protects the physical expression of ideas how the Designs Act 2003 (Cwlth) protects the visual form of articles the definition of the term ‘trade mark’ and the operation of the Register of Trade Marks

Learning objectives (cont.) the definition of the term ‘patent’ and outline the requirements for patentability the tort of passing off the elements in a common-law action for breach of confidence in relation to confidential information the remedies for breach of copyright, unauthorised use of trade marks, designs, patent infringement, passing off and breach of confidential information the actions for passing off, infringement of trade marks and breaches of s.18 of the Australian Consumer Law.

Introduction Intellectual property law deals with the legal rights that relate to intangible property such as: copyright registered designs trade marks patents. Intellectual property is not capable of being possessed like other personal property. May have significant commercial value.

Copyright Copyright Statute Substance of statute The right to prevent the unauthorised reproduction by a third party of the tangible form in which a person has chosen to express his or her ideas. Statute Copyright Act 1968 (Cwlth) Substance of statute Protects the physical expression of ideas (not the idea itself).

Original works Other than original works Copyright (cont.) Subject matter (categories) Original works Other than original works  Literary  Sound recordings  Musical  Films  Dramatic  Published editions  Artistic of works

Examples of copyright in original works Literary works Books, tables of data, computer programs Dramatic works Ballet Artistic works Paintings Sculptures Drawings There are many examples of everyday business documents to which copyright may apply in business, including business plans, marketing plans, client advice, client profiles, training materials and business systems recorded physically.

To be original . . . Copyright subsists in ‘original’ works. it is not necessary for the work to be first of its kind the work must originate with the author the work must be more than a copy of some other material author must have used some skill or experience in making the work/product original.

Ownership of copyright Author generally owns copyright (author is person responsible for compiling the work). Employer owns copyright where author is under contract of service or apprenticeship. Person who commissions and pays for work Maker of sound recording or film

Rights given to owner of copyright

Duration of copyright Published work (i.e. supplied to public): 70 years after death of copyright owner Unpublished work: 70 years after publication for the first time

Infringement of copyright Original works—by person performing any of the various acts in respect of the work without authorisation or consent of owner of copyright. Examples: Reproduction (i.e. copying) in a material form the whole or a substantial part of a literary, dramatic, musical or artistic work. Importing copies of an original work for sale, hire, exhibition or distribution. Performance of a work in public or broadcasting of a work without consent of the owner.

Actions not amounting to infringement of copyright Use of insubstantial parts Fair dealing: Research or study Criticism or review Reporting of news Giving of professional advice by a legal practitioner or a patent attorney

Actions not amounting to infringement of copyright (cont.) Educational copying If adequate records maintained to enable compensation to owner of copyright Public readings Performances at home Copyright work available in libraries Incidental appearances of artistic work in films or television broadcasts

Remedies for infringement of copyright Injunction Action for delivery of infringing material Damages, e.g.: loss sustained additional damages (if flagrant breach) account of profits Anton Piller order

Copyright tribunal Authorised to hold inquiries into matters relating to copyright.

Copyright Amendment (Moral Rights) Act 2000 (Cwlth) Protects moral rights for: Authors of literary, dramatic, musical or artistic works Directors and producers of cinematographic film Rights covered: Right of attribution (right of creator to be identified) Right not to have works falsely attributed (right to prevent others claiming authorship of their work) Right of integrity (right to protect work from derogatory treatment) Previously we have discussed copyright, (the right to copy the original physical expression of intellectual effort) as a commercial right only—as property that can be owned, assigned and protected. Moral rights are quite different. Moral rights are based on the concept that with some copyright works or materials, there are rights which will always attach to the creator or author which can not be dealt with from a simply commercial perspective, rights which the author or creator cannot pass to another because they are linked to the act of the creation of the product or work.

Copyright Amendment (Moral Rights) Act 2000 (Cwlth) (cont.) Defence: Reasonableness Remedies: Damages Injunction Public apology order Remove infringement Reverse the infringement

Copyright Amendment (Digital) Agenda Act 2000 (Cwlth) Purpose: To extend copyright law protection into the electronic environment.

Copyright Amendment Act 2006 (Cwlth) Amendments passed in direct response to Australia-US Free Trade Agreement. Amendments address: Personal use, (space shifting and recording) Fair dealing for parody or satire Technological prevention methods Copies for educational use Copies for libraries

Designs Designs Act 2003 (Cwlth) Shape Configuration New legislation: Designs Act 2003 (Cwlth) Definition of design: ‘the overall appearance of a product resulting from one or more visual features of the product.’ Visual features: Shape Configuration Pattern and ornamentation Definition of product: ‘a thing that is manufactured or hand-made.’ Examples: Building materials Jewellery Cutlery

Designs Act 2003 (Cwlth) Purpose of the legislation: Examples: To protect the visual appearance of a product and not its function, uses or way it constructed. Examples: Building materials Jewellery Cutlery Patterns on wall paper or fabric A brief search of the Design Register demonstrates the variety of products which have been registered to protect their distinctive visual appearance—from windsurfers to fabrics, iron lace fence panels and deck chairs to the pattern of a tyre tread.

Protection against infringement of design Protection is provided through a process of registration at the Designs Office which is incorporated within Intellectual Property Australia. Designs must be ‘new’ and ‘distinctive’ when compared to the ‘prior art base’ to fulfil the requirements of registration. A design may initially be registered for 5 years and can be renewed for a further 5 years; maximum registration is therefore 10 years.

Infringement make import sell, hire or offer for sale or hire Proceedings for infringement can only be commenced after the design has been examined and a certificate of examination granted. A person will infringe a registered design if, without consent of the owner they: make import sell, hire or offer for sale or hire a product that embodies a design that is identical to, or substantially similar in overall impression, to the registered design.

Trade marks Trade Marks Act 1995 (Cwlth) Enables providers of goods and services to distinguish their goods and services from those of other providers. Subject matter: any combination of: – letter – brand – word – heading – name – label – signature – ticket – numeral – device – shape – colour – sound – scent – aspect of packaging Examples: Deodorants Air freshener sprays Brand names Logos

Registration of trade marks The Trade Marks Act 1995 provides for registration of trade marks in a register maintained at the Trade Marks Office. A trademark must be 'capable of distinguishing' the applicant’s goods and services. The applicant must indicate the class/classes of goods and services for which the registration is sought.

Certain signs cannot be registered The sign cannot be registered if it: contains or consists of a sign prohibited by regulation cannot be represented graphically does not distinguish the applicant’s goods or services consists of scandalous matter or matter the use of which would be contrary to law consists of matter the use of which would be likely to deceive or cause confusion is substantially identical with, or deceptively similar to, a trade mark registered by another person.

Types of trade marks Certification trade marks Defensive trade marks Collective trade marks

Duration of registration of a trade mark Initially for 10 years, then renewed indefinitely for successive periods of 10 years. Note that trade marks are the only form of legislative intellectual property protection which are endlessly renewable. Once copyright, design and patent have expired, the monopoly rights to exploit the work, product or invention also expire and the material moves into the public domain to be used by anyone who chooses to use it without fees being payable. By contrast, a trademark may have very close associations with the identity and business reputation of a particular trader and as a result, for sensible commercial reasons which benefit both the trader and its customers, can continue to be renewed beyond the initial 10 year registration period.

Why register a trade mark? Protect goodwill associated with trade mark Exclusive rights to use trade mark Asset included in business valuation May assist with franchising and licensing

Infringement of trade marks Using mark similar to registered trade mark, in order to deceive Tort of passing off

Remedies for infringement of trade marks Injunction Damages: Loss sustained Account for profits

Trade Marks Amendment Act 2006 (Cwlth) Matters addressed in the Act: 'Absolute first use rule' introduced New ground to opposition to registration is that the application to register was made in 'bad faith' Greater recognition of the international trend to protect famous trademarks Changes to non-use provisions Provision for undertakings regarding customs notices

Patents Manner of manufacturing Novelty Practical use Machines Drugs Patents Act 1990 (Cwlth); Patents Cooperation Treaty 1970 Inventor has sole and exclusive right to exploit and to authorise another to exploit his/her invention. Subject matter involves: Manner of manufacturing Novelty Practical use Examples of inventions: Machines Drugs Processes Treatments

Application for patents Through Patent Office Prerequisites: Disclosure Prove application meets the requirement of being ‘novel’ Tested against publications (written, oral or in use) anywhere in the world

Duration of protection Innovation patent: Replaces petty patent Maximum of 8 years Standard patent: 20 years

Infringement of patents If invention is copied by manufacturing or supplying goods whose use would infringe the patent.

Defences to infringement of patents At date of infringement, defendant was not aware of existence of patent.

Remedies for infringement of patents Injunction Damages: Loss sustained Account for profits

Tort of passing off Person seeks to pass his/her own goods or services off as the product of a more successful competitor.

Elements of tort of passing off Misrepresentation is made: by a trader in the course of trade to prospective customers of the trader, or ultimate customers of goods or services supplied by the trader calculated as injuring the business or goodwill of another trader. Must cause actual damage to the business or goodwill of the trader who is suing.

Action for breach of confidential information (common law) Substance: Restrains a person from using confidential information obtained from another, when they do not have the consent of the other party. Subject matter: Information has nature of being confidential Information received in circumstances where obligation of confidence is expressed or implied Information communicated to a third person without permission Examples: Trade secrets Government information

Remedies for infringement of confidential information Injunction Anton Piller order Damages