Editorial - by Christopher Sexton
Parallel Importation Restrictions on Books in Australia to Remain for
Now
In November 2008, the then Assistant Treasurer Chris Bowen
requested the Productivity Commission (the "Commission") to
undertake a study on the current provisions of the Copyright Act 1968
(Cth) (the "Copyright Act") that restrict the parallel importation
of books and to report within six months of receiving that request.
This Inquiry was the fifth government-sponsored inquiry since the lates
1980s, and followed the liberalisation of parallel importation restrictions
('PIRs') on sound recordsings and computer software.
In 1991, amendments were made to the Copyright Act restricting the use of the rights with respect to imported books. Essentially, the amendments permit the parallel importation of lawfully published books where there has been a failure to supply the Australian market once the book has been published in another country. These changes were intended to address concerns about delays in obtaining copies of overseas books.
Parallel importation is the process of importing a non-counterfeited intellectual property such as copyright works into Australia, without the rightholder’s permission. PIRs limit the capacity for an intellectual property protected work to be imported into Australia without the permission of the rightholder. In certain quarters, PIRs are contentious because they are part of Australia’s intellectual property regime, and are argued essentially to act as a trade barrier.
Under Australia’s copyright law there are provisions that allow Australian publishers 30 days to publish an Australian version of any book that has been released anywhere in the world. If the book is published within 30 days, all booksellers are obliged to purchase the publication from the Australian publisher and cannot import the book from an overseas publisher.
Profile
In Conversation with Professor Kathy Bowrey
Kathy Bowrey is Professor of Law at the University of New South
Wales. Her research combines historical, theoretical and doctrinal
analysis. Her scholarship is highly regarded for its original,
interdisciplinary thinking about the legal and cultural aspects of new media
markets and information technology regulation.
She has published widely in books and in leading refereed journals in the
area and, more recently, by invitation in association with international
leaders in the field. She is also the co-author of a leading case-book on
intellectual property published by Law Book Company.
She has been invited to serve as a foundation member and primary
Australasian contact for a new International Society for Theory and History
of Intellectual Property, initially co-hosted by Cambridge and Harvard
universities. This organisation sprang from international interest across
the law, humanities and sciences to foster intellectual property research
and better communication across national and disciplinary boundaries.
A foundation member of the Cyberspace Law and Policy Centre at UNSW, she
remains a research associate of that organisation, and from 2000 to 2005,
she served as a board member on the Management Committee of the
Communications Law Centre at UNSW.
Articles
She Comes in Colours Ev’rywhere: Law and Practice at the
Intersection of Fashion and Registered Designs
This article explores the role of colour in registered designs, particularly
by reference to designs for garments. Issues of colour can arise in three
contexts – first, whether colour itself is sufficient to constitute a
design, second, whether alteration of colour in a design can make a design
novel (either alone or in conjunction with other variations), and third,
whether alteration of colour in a design can be sufficient to avoid
infringement.
It will be posited that real risks arise from a failure to
appreciate the effect of colour under the current law and an empirical
analysis of registration practice will demonstrate the potential
significance of the issue for the fashion industry.
Timothy Webb
Unjustified Threats
“Now, every person of common sense knows what is involved in
patent actions, and what the expense of them is, and everybody knows that to
be threatened with a patent action is about as disagreeable a thing that can
happen to any man of business” – Skinner v Perry
Intellectual property practitioners have always been fond of a stern
letter of demand as a practical means to “threaten” alleged infringers
and potentially head off expensive and time consuming litigation. Such “self
help” measures have, however, often been open to abuse.
As it is widely known that patent litigation, and intellectual property
litigation in general, is inordinately expensive and often beyond the means
of all but the best resourced litigants, many recipients of a threatening
communication may simply prefer to capitulate and accede to the demands,
irrespective of the merits of the case.
David Allison
Pre-Action Discovery – Recent Developments Principles as Applicable to
Intellectual Property Matters
The full potential for use of pre-action discovery, as a precursor
to litigation and in particular enabling a party to make a decision as to
whether to commence proceedings or not, as provided by Order 15A of the
Federal Court Rules, is often underestimated. This is particularly so in
relation to the power of the court to order examination of third parties and
also discovery, for the purpose of identifying a prospective respondent.
Richard McCormack
Internet Service Providers’ Liability for Copyright
Infringement
The liability of Internet Service Providers (ISPs) is one of the legal
issues that lacks deep analysis by authors.1 The ISP liability for digital
piracy committed through ISP lines is becoming one of the most debated
issues around the world.2 In order to access material stored in the World
Wide Web, one needs in most cases to connect through an ISP. An ISP is an
intermediary through which contents can be obtained from their electronic
storage (the web). ISPs are instrumental players in cyberspace. The internet
consists of a network that links many websites for the purpose of exchanging
information. In order for any person to access such a network, he must find
means of connection. Although, it is possible to connect to the internet
directly, the cost barrier is substantial. As such, most individuals and
small businesses choose to connect through ISPs. This service is usually
available through subscription for a fixed monthly fee. The ISP will provide
its subscribers with the ability to connect to the internet through the ISP
server and will host the subscribers’ internet web pages. Moreover, all
subscribers’ information traffic will travel through the ISP corridors.
Dr Fayyad Alqudah
Foreign Investment Companies in China: Non-competition
Clauses
The ambiguities in China’s non-competition laws have made it difficult
for Australian investors and other foreign investment enterprises doing
business in China to comply practically with their legal obligations as
employers and to understand the enforceability of non-competition clauses in
their employment contracts. A significant difference between PRC and
Australian laws is that employers in China are required to pay a monthly
compensation to their employees during a post-employment restraint period.
Such payment is a factor in determining the enforceability of a
non-competition clause beyond the term of the employment relationship. This
article discusses the law of restraints in Australia and outlines the
developments in China regarding employment restraints in the past year.
Rosena Yau
Current Developments : Australia
IP Australia
Martin Friedgut and Julie Simpson
General : Extension of IP Australia’s Customer Service Call
Centre Hours
Designs : Amendment of Statement of Newness and Distinctiveness Prior to
Registration
Trade Marks : Confirmation of Official Practice in Relation to Extensions of
Time Closer to the Final Date for Acceptance of a Trade Mark Application
NEW SOUTH WALES
Dr Chris Carter
Davies Collison Cave
Correspondents for New South Wales
Alphapharm Pty Ltd v Wyeth [2009] FCA
945 (25 August 2009)
Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2009]
FCA 1019 (11 September 2009)
QUEENSLAND
Andrew Musgrave
Barrister
Correspondent for Queensland
Uniline Australia Ltd v SBriggs Pty Ltd (No 2) [2009]
FCA 920
EzyDVD Pty Ltd v Lahrs Investments Qld Pty Ltd and Ors
[2009] QSC 227.
VICTORIA
Tom Cordiner and Alan Nash
Barristers
Correspondents for Victoria
Carlisle Homes Pty Ltd v Barrett Property Group Pty Ltd [2009]
FCAFC 31 (19 March 2009)
PAC Mining Pty Ltd v Esco Corporation FCAFC 18 (4 March
2009)
Weatherford Australia Pty Ltd v Screenex Pty Ltd
[2009] FCA 331 (9 April 2009)
Deckers Outdoor Corporation Inc v Farley (No 2)[2009] FCA 256 (24
March 2009)
NEW SOUTH WALES
Dr Chris Carter and Trevor Stevens
Davies Collison Cave
Correspondents for New South Wales
PAC Mining Pty Ltd v Esco Corporation FCAFC
18 (4 March 2009)
Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135
(23 February 2009)
QUEENSLAND
Andrew Musgrave
Barrister
Correspondent for Queensland
Television Food Network, GB v Food Channel Network Pty Ltd [2009] FCA
271
Virgin Blue Airlines Pty Ltd v Qantas Airways Limited [2009] ATMO 30
A.V. Jennings v Bogdan [2009] FCA 307
Property Group International Pty Ltd v Intellectual Properties Opportunities
Pacific Pty Ltd [2009] FCA 403
NEW ZEALAND
Andrew Brown QC
Barrister
Correspondent for New Zealand
Case Law Developments
Interplay between Copyright and Personal Property Securities
Viacom Global (Netherlands) B.V. v Scene One Entertainment Limited (In
Receivership) High Court of New Zealand, Andrews J CIV- 2009-404-4305; 5
August, 10, 18 September 2009; Court of Appeal, Robertson, Chisholm,
Priestley JJ, CA 600/09 [2009] NZCA 457; 1 October 2009 (reasons given 22
October 2009)
HONG KONG AND CHINA
Gabriela Kennedy and Deanna Wong
Lovells, Hong Kong
Correspondent for Hong Kong and China
Hong Kong Government’s Latest Proposals on Amending Copyright
Legislation to Strengthen Copyright Protection in the Digital Environment
SINGAPORE
Winnie Tham
Amica Law LLC, Singapore
Correspondent for Singapore
ASM Assembly Automation Ltd v Aurigin Technology Pte Ltd and Others [2009]
SGHC
City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2009] SGCA
53
From the Office of WIPO Geneva
WIPO’s Contribution to Meeting the Challenges of Climate Change
WIPO Welcomes EU Ratification of the WIPO “Internet Treaties” Geneva, 14
December 2009 PR/2009/626
EUROPEAN UNION
Professor Emerita Ruth Soetendorp
Centre for Intellectual Property Policy and Management
Business School Bournemouth University, UK
Correspondent for the European Union
Results of the Public Consultation on Design as a Driver of User-centred
Innovation
The European Commission publication in April 2009 of the
Staff Working Document on “Design as a driver of user-centred innovation”
led to an online public consultation, which was open to organisations as
well as to private persons. The report comprises a quantitative analysis
mainly based on the responses of the organisations, but the replies of
individuals have also been taken into account in the general conclusions. In
addition to the online responses, the Commission also received a number of
direct responses which have been taken into account.
FRANCE
Emmanuel Baud, Nathalie Marchand and Aurélie Verdier
Latham & Watkins
Correspondent for France
French Tennis Federation (FTF) vs. Gambling Operator: FTF is Awarded
1.2 million as Damages!
The Paris Court of Appeal had recently to rule on claims
originating from the French Tennis Federation (“FTF”) aimed at
preventing the use of the trade mark “Roland Garros” by Unibet, an
online gambling operator, and the placing of bets on the Roland Garros games
by online bookmakers.
A New Example of How Difficult it Can be to
Advertise Alcoholic Beverages in France
On 6 October 2009, the Paris Court of Appeal reversed the summary
judgment rendered by the Paris Court of First Instance on 10 July 2009 which
considered that the new advertising campaign launched by Brasseries
Kronenbourg for its 1664 beer was compliant with the “Evin” Law
(regulating advertisement for alcoholic beverages and tobacco) and the
provisions of the French Public Health Code.
UNITED KINGDOM
John Colbourn, Katie Cullinan and Sara Ashby
Redd Solicitors LLP
Correspondent for the United Kingdom
More Experience than Their Name Suggests?
Virgin Atlantic Airways Limited v Premium Aircraft Interiors (UK) Limited
[2009] EWCA Civ 1062
Lilly Icos and others v 8pm Chemists Ltd and
others [2009] EWHC 1905
URL: http://www.bailii.org/ew/cases/EWHC/Ch/2009/1905.html
Fabio Perini SPA v LPC Group Plc and others [2009]
EWHC 1929
URL: http://www.bailii.org/ew/cases/EWHC/Patents/2009/1929.html
SOUTH AFRICA
Professor Max Loubser
University of Stellenbosch
Correspondent for South Africa
Using the Word “Lotto”
In On-line Lottery Services v National Lotteries Board (536/08) [2009]
ZASCA 86 (7 September 2009), the Supreme Court of Appeal decided, inter
alia, on the following questions:
• Should the registered trade mark “Lotto”, of which the South African
National Lotteries Board (“the Board”) is the registered proprietor, be
removed from the trade mark register because it was wrongly entered and
wrongly remains on the register as envisaged by s.24(1) of the Trade Marks
Act 194 of 1993 (“the Act”)?
• Did On-line Lottery Services (“On-Line”) in conducting its business
pass that business off as that of the National Lotteries Board or as
connected in the course of trade with the business of the Board?
Global Warming not Infringing Puma Trade Mark
In Puma v Global Warming (408/08) [2009] ZASCA 89 (11 September
2009), the Supreme Court of Appeal (SCA) dismissed the appeal of the German
manufacturer Puma in its trade mark infringement proceedings against the
South African importer and distributor of footwear, Global Warming (“Global”).
CANADA
Catherine Dennis
Cassels Brock & Blackwell LLP
Correspondent for Canada
Assessment of Confusion Pursuant to Section 18 of Canadian Trade Marks Act
The Federal Court of Appeal in Canada has rejected an appeal from a decision
pursuant to s.18(1)(a) of the Canadian Trade Marks Act that a registration
for MASTERPIECE LIVING was not, at the date of registration, confusing with
a trade mark used by another party. In assessing this issue, the Court
considered the general context of the Trade Marks act, a review of prior
case law and an analysis of the French version of the Trade Marks Act, and
concluded that the appropriate test was to apply a confusion analysis at the
date of registration and not at some future date.
UNITED STATES OF AMERICA
Carol Anne Been
Sonnenschein Nath & Rosenthal
Correspondent for the United States
Bose “Waves” Good-bye to Claim of Fraud on the Trademark Office
The US Court of Appeals for the Federal Circuit reversed a Trademark
Trial and Appeal Board order cancelling a Bose registration for fraud. The
Federal Circuit determined that the Board erred by using a fraud standard of
“knows or should have known” of the falsity, despite that Federal
Circuit’s reference to that standard in an earlier decision. Instead, the
Federal Circuit held that fraud must be proven with clear and convincing
evidence. A subjective intent to deceive is necessary, although inferences
may be drawn from indirect and circumstantial evidence. Mere negligence is
not sufficient to infer fraud. In re Bose Corp., WL 2709312 (Fed.
Cir. August 31, 2009).
Reports from IPSANZ Local Organisations
VICTORIA
Ian Horak
Victorian Bar, Victorian Committee
NEW SOUTH WALES
Michael Sutton
DibbsBaker, New South Wales Committee
QUEENSLAND
Peter Kearney
Minter Ellison, Queensland Committee
SOUTH AUSTRALIA
Josh Simons
Minter Ellison, South Australia Committee
WESTERN
AUSTRALIA
Stephen Clune
Deacons, Western Australian Committee
NEW ZEALAND
Paul Sumpter
University of Auckland/Chapman Tripp, New Zealand Committee
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