ISSUE 115 – March 2019

EDITORIAL – BY FIONA PHILLIPS AND FIONA ROTSTEIN

This issue of Intellectual Property Forum marks 50 years since the Copyright Act 1968 (Cth) (the “Copyright Act”) came into force in Australia and begins with messages of congratulations from Francis Gurry, the Director General of the World Intellectual Property Organization and the Minister for Communications and the Arts, Senator the Honourable Mitch Fifield.

 

Message from World Intellectual Property Organization Director General Francis Gurry

Congratulations to Australia’s copyright community on the 50th Anniversary of the Copyright Act 1968 (Cth)! Australia has been a global and regional leader in copyright since the passage of that Act.
For the World Intellectual Property Organization (“WIPO”), multilateral copyright treaty membership is one of the most important indicators of leadership in the global copyright ecosystem. Here too, Australia has been a leader, becoming a party to the WIPO Copyright Treaty (“WCT”) and WIPO Performances and Phonograms Treaty (“WPPT”) more than 10 years ago, in 2007.

 

Message from the Minister for Communications and the Arts, Senator the Honourable Mitch Fifield

I am very pleased to provide this message to the readers of the Intellectual Property Forum as we mark the 50th anniversary of the commencement of the Copyright Act 1968 (Cth) (“Copyright Act”).
On the statute books, age doesn’t necessary correspond with wisdom, and governments need to be vigilant in ensuring our legislation continues to be relevant and up-to-date. Although the Copyright Act has been with us for half a century, it remains a critical piece in our regulatory framework, underpinning investment and jobs in our creative sector and, ultimately, ensuring that Australian stories, images and voices continue to be told, seen and heard.

 

In Conversation with the Honourable Judge Julia Baird by Fiona Phillips

After a successful career as an intellectual property barrister at the New South Wales Bar, the Honourable Judge Julia Baird was appointed to the Federal Circuit Court of Australia (“FCC”) in 2018. She sat down with Fiona Phillips on a sunny day in January to discuss the FCC’s role in intellectual property matters, learning trade marks at the foot of Ann Dufy, women in the profession and much more.

 

Articles

Some reflections on 50 years of the Copyright Act in Australia

Introduction

In May this year, the Copyright Act 1968 (Cth) (“Copyright Act”) will have been operating for 50 years.2 In an environment of seemingly endless copyright reviews, in Australia and internationally, what stands out from the last 50 years? And how might it be relevant to the future development of copyright law?
This article is not (thankfully) a comprehensive review of the last 50 years. Instead, it highlights some of the key developments, many of which have continued relevance for the future directions of copyright. It also highlights areas in which Australia took a lead, in the international arena, on copyright reform.

Libby Baulch
Policy Director, Copyright Agency

 

 

Robot vs Rightsholder: Machine Learning and Copyright in the Film and Television Industries

Summary

The New Zealand and Australian copyright regimes are currently under review. This article analyses the copyright implications of data mining/machine learning, as carried out by the film and television industries. It asks how the law could best strike a balance between (a) protecting the rights of creators whose works are used in machine learning, and (b) ensuring that innovation in the film and television industries is not unjustifiably restricted. A copyright exception, combined with a system of fair compensation, is one possible solution.

Eloise Chin

BA/LLB (Hons) student, Victoria University of Wellington.
This article won third prize in the 2018 John McLaren Emmerson QC Essay Prize.


 

A New World Standard? Why Australian Businesses Should be Ensuring their Compliance with the EU General Data Protection Regulation

Introduction

The General Data Protection Regulation (“GDPR”) was the product of a revolutionary process of law-making in the European Union (“EU”). The GDPR is designed to accommodate transborder flows of information and to apply equally regardless of jurisdiction. The extra-territorial scope of the GDPR requires countries and organisations outside the EU to understand and even adopt GDPR-compliant processes in order to retain access to EU data. The result is a GDPR that intends and possibly hopes to be de facto adopted worldwide. At the very least, the GDPR will shape and inform advancements in information law for years to come, and become a foundational part of information and privacy law. Anyone processing or controlling EU data will need to be compliant with GDPR obligations.

Elizabeth Englezos

PHD candidate, Griffith Law School, Griffith University.

 

 

Federal Circuit Court’s National Intellectual Property Pilot Scheme

Introduction

The Federal Circuit Court of Australia (“FCC”) is emerging as an appealing forum for Intellectual Property (“IP”) stakeholders to commence enforcement proceedings in respect of a number of recognised IP rights including copyright, design and trade marks as well as appeals against decisions, directions or orders of the Registrars of Trade Marks and Designs.

Now with the appointment to the FCC of Judge Julia Baird in February 2018, the FCC has adopted a dedicated approach to allocating matters involving IP, to judges with experience in those areas.

Dr Dimitrios Eliades
Barrister, Queensland

 

 

Brexit and Copyright: a Pyrrhic Victory

As things currently stand, the United Kingdom (“UK”) is set to leave the European Union (“EU”) in March 2019. At the time of writing (early January 2019) it is unclear on what terms the withdrawal of this Member State from the EU is going to happen, and whether there will be also a withdrawal from the European Economic Area (“EEA”).

Eleonora Rosati
Associate Professor in Intellectual Property, University of Southampton
Counsel, Bird & Bird LLP.

 

 

The case for Perpetual Copyright in Albert Namatjira’s artistic works

 

The Indigenous artist Albert Namatjira was the founder of the Western Desert watercolour movement, located in Western Aranda lands (around Hermannsburg) west of Alice Springs. Namatjira’s landscapes of the rust-red MacDonnell Ranges with their ethereal blue hues and illuminous ghost white river gums, which were painted in the mid-20th century, became well regarded and well recognised across Australia at that time and his legacy as the foremost Indigenous painter of his generation has endured to this day.

The story of copyright ownership in relation to Namatjira’s artistic works is, however in the writer’s view, one of injustice, ineptitude and absolute disregard for the proper interests and needs of the Namatjira family. This resulted in Namatjira and, in turn, his descendants being deprived of the financial benefits that were derived from the exploitation of the rights in his works.

The unique circumstances surrounding the copyright ownership of Namatjira’s works give rise to a compelling case for perpetual copyright to be granted by the Australian Government in relation to the works.

Shaun Miller
Principal, Shaun Miller Lawyers
Senior Fellow at The University of Melbourne within the Faculty of Fine Arts and Music.

 

 

Reports

Book Review: Non-Conventional Copyright: Do New and Atypical Works Deserve Protection?

Edited by Enrico Bonadio and Nicola Lucchi

[Edward Elgar, 2018, pp.520].

Seldom a week goes by without reading about a new controversy relating to non-traditional forms of copyright: street art, tattoos, dance moves and even cheese spreads! Aside from the stories sensationalised by social media, serious discussions are under way about whether and how new technologies such as artificial intelligence and 3D printing should be accommodated by copyright. For example, as this issue of Intellectual Property Forum goes to press, the European Union has just finalised negotiations on a new Copyright Directive for the Digital Single Market. Some of the most controversial issues in the negotiations concerned how machine-learning could be accommodated through a text and datamining exception and a new right to remuneration for press publishers. In Non-Conventional Copyright: Do New and Atypical Works Deserve Protection? the editors, Enrico Bonadio and Nicola Lucchi, bring these issues together, in a single, thought-provoking volume.

Fiona Phillips

 

 

Current Developments

IP Australia

Martin Friedgut and Roseanne Mannion
Spruson & Ferguson

General

No recent developments.

Patents
Published in the Australian Official Journal of Patents on 17 January 2019
Published in the Australian Official Journal of Patents on 29 November 2018

Designs
Published in the Australian Official Journal of Designs on 24 January 2019

Trade Marks

 

 

CASES

Peter Heerey AM QC, Tom Cordiner QC & Alan Nash
Barristers

Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 2) [2018] FCA 1109
[27 July 2018]
Abuse of process – consecutive actions for infringement of divisional innovation patents

Lumen Australia Pty Ltd v Frontline Australasia Pty Ltd [2018] FCA 1807
[22 November 2018]
Lumen Australia Pty Ltd v Frontline Australasia Pty Ltd (No 2) [2019] FCA 18
[18 January 2018]
Copyright – technical drawings and instructions – circuit markings on printed circuit boards – whether original artistic and/or literary works – whether copyright/design overlap provisions apply – defences – innocent infringement – whether party engaged to produce near-identical copies of electrical components lacked reasonable grounds to suspect infringement

Circuit layouts – “circuit layout” – “integrated circuit” – whether third party components moulded onto a board are “integrally formed” in or on the material

 

 

Lauren Eade
Davies Collison Cave, Sydney

Cut out of whole cloth: Calico Global Pty Ltd v Calico LLC [2018] FCA 2096

 

 

Karl Dittko
Davies Collison Cave, Sydney

Nichia Corporation v Arrow Electronics Australia Pty Ltd [2019] FCAFC 2
Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988

 

 

NEW ZEALAND

Andrew Brown QC
Barrister, Auckland
Correspondent for New Zealand

Review of Copyright Act 1994

 

 

CHINA & HONG KONG

Dan Plane and Doug Berman
Simone Intellectual Property Services (“SIPS”) Hong Kong
Correspondents for China & Hong Kong

Prosecuting Trade marks in China – An Insider’s Guide for Foreign Brand Owners in 2019 (Part 1)

 

 

JAPAN

John A Tessensohn
Board Member, SHUSAKU-YAMAMOTO, Osaka, Japan
Correspondents for Japan

Nursing Bed 3D Trade mark Succumbs at IP High Court of Japan

 

 

SINGAPORE

Winnie Tham, Angus Koh, Zachary Foo, Megan Pang and Rodney Yap
Amica Law LLC
Correspondents for Singapore

Disney Enterprises, Inc and Others v M1 Ltd and others [2018] SGHC 206
Proposed Changes to the Singapore Copyright Act

 

 

EUROPEAN UNION

Dr Marc Mimler, LL.M. (London)
Senior Lecturer in Law, Bournemouth University
Correspondent for the European Union

The Court of Justice of the European Union finds that copyright does not subsist in the taste of cheese spread (Levola Hengelo BV v Smilde Foods BV (Case C-310/17))

 

Consultation on Design Protection in the EU: Questionnaire Commentary
Dr Faye Fangfei Wang
Senior Lecturer in Law, Brunel University London

Overview of the public consultation on Design Protection

 

 

FRANCE

Thomas Bouvet and Céline Ruste
Jones Day
Correspondents for France

Patent infringement – Damages

 

 

GERMANY

Christopher Weber and Sören Dahm
Kather Augenstein
Correspondents for Germany

European Court of Justice (“CJEU”) clarifies interpretation of Art. 8(1) of Designs Directive
Decision of 8 March 2018 – C-395/16 – DOCERAM GmbH/CeramTec GmbH

 

 

UNITED KINGDOM

Bristows LLP London
Correspondents for the United Kingdom

Brian Cordery, Partner and Charlie French, Senior Associate
Infringement of second medical use patents in the United Kingdom: Supreme Court judgment in the Lyrica case

 

Toby Headdon, Senior Associate
Recent developments concerning blocking injunctions in the UK 

 

CANADA

Catherine Dennis Brooks
Partner, Miller Thomson LLP
Correspondent for Canada

Transitioning to the New Trade Marks regime in Canada in 2019

 

 

UNITED STATES OF AMERICA

Eric L. Sophir, Kamyar Maserrat David R Metzger and Kyle Morse
Dentons
Correspondent for United States of America

USPTO publishes revised patent eligibility guidelines to clarify examination under 35 USC §101

Helsinn confirms that pre-AIA secret sales case law has not gone away