1. This is the prescribed textbook for your course.
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2. Intellectual property law Chapter 17

3. 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

4. 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.

5. 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.

6. 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).

7. 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

8. 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.

9. 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.

10. 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

11. Rights given to owner of copyright

12. 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

13. 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.

14. 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

15. 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

16. 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

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

18. 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.

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

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

21. 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

22. 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

23. 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.

24. 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.

25. 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.

26. 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

27. 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.

28. 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.

29. Types of trade marks Certification trade marks Defensive trade marks
Collective trade marks

30. 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.

31. 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

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

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

34. 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

35. 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

36. 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

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

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

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

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

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

42. 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.

43. 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

44. Remedies for infringement of confidential information
Injunction
Anton Piller order
Damages