Editorial - by Christopher Sexton
The Challenge of Protecting Digital Copyright in
Australia
It is axiomatic, almost even trite, to assert today that advances
in technology over the past couple of decades have posed major challenges
for intellectual property law. In Australia, Federal Parliament has
periodically amended copyright law to regulate new technology products or
the new uses of such works made possible by advances in technology,
notwithstanding the fact that those same new technologies have continued to
spawn contentious copyright litigation.
In light of this history, it is hardly surprising that the advent of digital technologies and networks should bring about continuing concerns in intellectual property law, the advent dating from battles over copyright and digital information that focused on software copyright works and patents, and leading into more recent battles over the role of copyright on the internet and the world wide web.
Profile
In Conversation with Yves Hazan
F rom trade mark infringements involving some of the world’s most
recognisable brewers to the patentability of genetic sequencing of viruses,
Yves Hazan’s experiences as an intellectual property practitioner have
been many and varied. Inspired by Gregory Peck and mentored by a number of
well-known intellectual property practitioners during his early years, Yves’
practice has developed to encompass a broad range of commercial and
litigious intellectual property matters. Now the principal of Hazan
Hollander, Yves reflects on his career so far and the challenges the future
holds for intellectual property law.
Peter Maddigan
Barrister
Articles
“The Means, Baby” – ISP Responsibility for Copyright Infringement and
the Need for an Industry Code of Practice
In the 20 odd years since the internet became popular, copyright
and the internet have not worked well together. The internet is an awesome
tool for infringing copyright and there remains a prevailing culture of
infringement online, despite enforcement efforts and the continued
development of legitimate content services.1 The internet is not only a tool
for infringement, however, and the ability to quickly transmit, share and
reproduce copyright material is not necessarily bad. Indeed, the internet
supports creative industries by allowing unprecedented access to, and
engagement with, copyright material. In short, the picture is not entirely
bleak and we remain confident that copyright and the internet can reconcile
their differences
Andrew Wiseman
Matt Vitins
Allens Arthur Robinson, Sydney
Interveners in Copyright Litigation – A Rebuff for
the Internet Industry Association in the iiNet Litigation
Third-party applications to intervene in key copyright cases involving
new technology have had a high success rate in the recent past. Three
examples of this are Stevens v Sony (technological protection measures and
mod chips), the Kazaa case (peer-to-peer file sharing) and IceTV (electronic
program guides). In the recently concluded iiNet case in the Federal Court
(internet service provider (ISP) liability for copyright infringement on
peer-to-peer file sharing networks, authorisation and the safe harbour
provisions) an application to intervene, brought by the Internet Industry
Association (IIA), was rejected.1 Has the Federal Court changed its mind
about such applications generally or has it merely signalled its intention
to more closely scrutinise these applications than has been evident in the
past?
Mary Wyburn
University of Sydney
Personal Property Securities – An Intellectual Property Perspective
Te new Personal Property Securities Act 2009 (Cth) (PPS Act) will
make it easier for companies to use their intellectual property assets as
collateral in financing transactions. The current system for recording
security interests in intellectual property is complex and different rules
apply to each type of intellectual property. The legislation will establish
a single national system for registering security interests in personal
property on the Personal Property Securities Register (PPS Register), and
establish rules for determining the priority of security interests. Once the
new system is implemented (expected to be May 2011), security interests will
need to be recorded on the PPS Register to be effective and preserve
priority. The main benefit of the reforms will be a consistent approach
across the spectrum of intellectual property rights to the registration of
security interests.
Mary Saywell
Baker & McKenzie
How Broad is Your Protection? Similar Goods
and Services, Well-known Trade Marks and Defensive Registrations – An
Australian Perspective
The rights given by registration of a trade mark are set out in s.20 of
the Trade Marks Act 1995 (Cth) (the Act). They are rights to limit and
exclude others from use of the trade mark. The exclusive right given by
s.20(1) to use the trade mark and authorise others to use the trade mark in
relation to the goods or services in respect of which it is registered is
enforceable by suit. The right provided by s.20(2) to obtain relief under
the Act if the trade mark has been infringed extends the rights of exclusion
conferred under s.20(1) to encompass the exclusion of uses of signs by
unauthorised users in the circumstances set out in ss.120(2) and (3) of the
Act.
Julia Baird SC
Barrister, New South Wales Bar
How Broad is Your Protection? Similar Goods and
Services, Well-known Trade Marks and Defensive Registrations – A New
Zealand Perspective
This article reviews the statutory background to s.25(1)(c) of the Trade
Marks Act 2002 (the 2002 Act), contrasts the specific “wellknown” trade
mark infringement provision in s.89(1)(d) and explores some of the features
of s.25(1)(c) in the light of recent case law.
Brendan Brown QC
Book Review
Landmarks in Australian Intellectual Property Law
Edited by Andrew T. Kenyon, Megan Richardson and Sam
Ricketson
Review by Christopher Sexton
Current Developments : Australia
IP Australia
Martin Friedgut and Julie Simpson
General : Public Consultation on Implementing the TRIPs Protocol
Patents : Refund of Standard Patent Examination Fees
Designs : Part 2 of the Designs Examination Manual Has Been Revised
Trade Marks : Amendments to the Trade Marks Office Manual of Practice &
Procedure
VICTORIA
Tom Cordiner and Alan Nash
Barristers
Correspondents for Victoria
Rosemin Pty Ltd v Gasp Jeans Chadstone Pty Ltd [2010] FCA 228
(16 March 2010)
Nature’s Blend Pty Ltd v Nestle Australia Ltd [2010] FCA 198 (10
March 2010)
NEW SOUTH WALES
Dr Chris Carter
Davies Collison Cave
Correspondents for New South Wales
Inverness Medical Switzerland GmbH v MDS Diagnostics Pty
Limited [2010] FCA 108 (22 February 2010)
NEW ZEALAND
Andrew Brown QC
Barrister
Correspondent for New Zealand
Legislative Developments
Patents Bill Emerges from Select Committee
On 30 March 2010, the Commerce Select Committee reported back on the
Patents Bill. A number of changes were made including one surprise.
Lucky Strike v Lucky Dream and Lucky Draw. Court of Appeal
Reaffirms Key Aspects of Tests for Comparison of Trade Marks NV Sumatra
Tobacco Trading Co v British American Tobacco Court
of Appeal of New Zealand, Glazebrook, O’Regan and Baragwanath JJ, 24
February 2010
HONG KONG AND CHINA
Deanna Wong
Hogan Lovells, Hong Kong
Correspondent for Hong Kong and China
Draft Amendments to the China Trade Mark Law
SINGAPORE
Winnie Tham and Abhiroop Baus
Amica Law LLC, Singapore
Correspondent for Singapore
Mühlbauer AG v Manufacturing Integration Technology Ltd [2010]
SGCA 6
Chong Peter (trading as Myths KTV & Disco Pub) v
Triple 8 Enterprise Pte Ltd (trading as Mirage Deluxe KTV & Nightclub) [2010]
SGHC 9
Valentino Globe BV v Pacific Rim Industries Inc [2010]
SGCA 14
JAPAN
John A. Tessensohn
Correspondent for Japan
Estoppel Boots out Design Infringement Claim
From the Office of WIPO Geneva
Brands Tackle Cybersquatters in 2009 – UDRP Becomes
Eco-Friendly Geneva, 23 March 2010 PR/2010/635
WIPO Country Code Top Level Domains and Cases
WIPO Arbitration and Mediation of Intellectual Property Disputes
WIPO Mediation and Expedited Arbitration Rules for Film and Media
WIPO Unveils its New Logo Geneva, 26 April 2010 PR/2010/638
FRANCE
Emmanuel Baud and Nathalie Marchand
Jones Day
Correspondent for France
23 March 23 2010, joined Cases Nos. C-236/08, C-237/08 and C-238/08,
Google v Louis Vuitton Malletier SA and Others
UNITED KINGDOM
Michael Browne, Katie Cullinan and Charters
Macdonald-Brown
Redd Solicitors LLP
Correspondent for the United Kingdom
Trading Name Can Be an “Own Name”, But Still Not Enough for
Cipriani London
Hotel Cipriani and others v Cipriani (Grosvenor Street) Ltd and others
[2010] EWCA Civ 110
URL:
http://www.bailii.org/ew/cases/EWCA/Civ/2010/110.html
No Immediate and Concrete Benefit for HGS in Court
of Appeal Patent Case
Eli Lilly & Co v Human Genome Sciences Inc [2010]
EWCA Civ 33
URL: http://www.bailii.org/ew/cases/EWCA/Civ/2010/33.html
What is “Obvious”? Analysis of Approaches to
the Question
Actavis UK Limited v Novartis AG [2010] EWCA Civ 82
URL:
http://www.bailii.org/ew/cases/EWCA/Civ/2010/82.html
Vodkat Fails to Land on its Feet in Vodka Passing
Off Case
Diageo North America, Inc and Another. v Intercontinental Brands (ICB)
Limited and Others [2010] EWHC 17 (Ch)
URL:
http://www.bailii.org/ew/cases/EWHC/Ch/2010/17.html
CANADA
Catherine Dennis
Cassels Brock & Blackwell LLP
Correspondent for Canada
New Evidence and Relevant Dates in Trade Mark Opposition Appeals
In a recent appeal from the decision of the Registrar of Trade Marks,
the Federal Court considered substantial new evidence filed by the trade
mark opponent in support of its position that the trade mark “GOURMET”
had acquired distinctiveness through extensive use of the mark in Canada. In
allowing the appeal and refusing registration of the trade mark “WISE
GOURMET”, the Court confirmed that the relevant date to assess whether
there is a likelihood of confusion between two marks pursuant to s.12(1)(d)
of the Trade-Marks Act is at the date of disposition of the matter by the
Registrar or by the Court.
UNITED STATES OF AMERICA
Carol Anne Been
Sonnenschein Nath & Rosenthal
Correspondent for the United States
Social Networking Sites that Collect “Hot News” Are in the Hot
Seat
An internet subscription news service that aggregated and disseminated
research recommendations of financial services firms without authorisation
is liable for misappropriation of “hot news”, a type of unfair
competition [Barclays Capital Inc. v Theflyonthewall.com, 1:06-cv-04908
(S.D.N.Y. March 18, 2010)].
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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