ISSUE 88 - March 2012

Editorial – by Christopher Sexton

The Possible Path to Privacy Protection in Australia
On 21 July 2011, the Commonwealth Government announced that it would seek to strengthen privacy laws in Australia, indicating that it would open up public consultation on the creation of a statutory cause of action for breaches of privacy. Two months later, on 23 September, the Government acted swiftly and release an issues paper, A Commonwealth Statutory Cause of Action for Serious Invasion of Privacy (Issues Paper), to inform its response to the recommendations of the Australian Law Reform Commission (ALRC), published in November 2008, to introduce a statutory cause of action for serious invasions of privacy. This paper considered whether Australia should introduce a statutory cause of action for privacy and, if so, what elements a statutory cause of action might include. The paper considered the analysis of the Australian, Victorian and New South Wales Law Reform Commissions, and the policy contact and current legal positions in Australia and comparable jurisdictions.

Profile – by Sheana Wheeldon

In Conversation with Sir Thomas Gault
It is no exaggeration to describe Sir Thomas Gault as New Zealand’s most eminent IP personage. Having begun his legal career in 1961 as a young lawyer at AJ Park in Wellington, Sir Thomas qualified as a patent attorney but soon became recognised as a skilled IP litigator, subsequently moving to the independent Bar and taking silk in 1984. In that career he was involved in many high profile IP cases, and took his depth of expertise with him on his appointment in 1987 to the New Zealand High Court Bench. Sir Thomas was quickly promoted to the Court of Appeal (eventually being appointed President), and finally to the New Zealand Supreme Court. IP practitioners enjoyed a golden period of knowing there was one Judge who spoke our language as his native tongue, and Sir Thomas penned many of New Zealand’s leading IP judgements while on the Bench. In 2001, Sir Thomas was named a Distinguished Companion of the New Zealand Order of Merit (the then equivalent of a Knighthood) for services to the law.

In what could be seen as a parallel career, Sir Thomas has throughout his lifetime been involved in the golfing world, including in its administration in New Zealand and as a referee at the British Open Championships. In 2005, Sir Thomas had the honour of being offered the Captaincy of the Royal and Ancient Golf Club of St Andrews in Scotland, and brought forward his retirement to take up this prestigious role. Sir Thomas was based at St Andrews for two years, during which he travelled and undertook extensive speaking engagements as “ambassador for the sport”. He remains involved in the golfing world, one of his ongoing obligations being to participate in appointing new Captains of the Royal and Ancient. I spoke to Sir Thomas about some of the events and highlights of his stellar careers in both the law and golf.

Articles

Competing Visions of a Cause of Action for Invasion of Privacy in Australia
The United Kingdom phone hacking controversy centred upon the new defunct British tabloid News of the World became the catalyst for renewed discussion in Australia about whether we need a new private right of action for invasion of privacy protection. The former Minister for Privacy and Freedom of Information, the Hon. Brendan O’Connor MP, invoked the spectre of phone hacking and ‘other recent mass breaches of privacy, both at home and abroad’ in his announcement of the Federal Government’s intention to consult the public on the introduction of a statutory cause of action for serious invasions of privacy in Australia. This consultation was apparently fast-tracked to the head of queue of the Federal Government’s  timetable for staged consultation as to reform of privacy legislation. The Commonwealth of Australia’s consultation document, Issues Paper: A Commonwealth Statutory Cause of Action for Serious Invasion of Privacy, was issued in September 2011. The consultation period closed on 18 November 2011 and as at early February 2012 the Federal Attorney General, the Hon. Nicola Roxon MP (who now has responsibility for privacy law), was “still considering the submissions received in response to the issues paper”.
Peter G Leonard
Gilbert + Tobin Lawyers
and
Michael Burnett
Gilbert + Tobin Lawyers

Expanding the Safe Harbour Scheme – The Existing Law, the Government Consultation Paper and the Industry Response
The “safe harbour scheme” in the Copyright Act 1968 (Cth) limits the remedies available against carriage service providers for copyright infringement arising from certain online activities, in they adhere to specified conditions.
The Australian Government recently released a consultation paper proposing that the term “service provider” replace the term “carriage service provider”, thus seeking to expand the scope of the safe harbour scheme to cover other internet intermediaries (for example, search engines, website hosts and social media sites).
Submissions received indicate a mixed response to the proposed amendments, with internet intermediaries supported broader protections while rights holders have either opposed the changes or sought to have them deferred.
Timothy Webb
Senior Associate, Clayton Utz, Sydney
and
Jessica Cowell
Lawyer, Clayton Utz, Sydney

Storms Batter Not-so-safe Harbours – Liability of Internet Intermediaries in Australia
There has been extensive analysis and debate about the application of copyright law to internet access and carriage service providers and internet users in the USA, European Union, Australia, Canada and other major jurisdictions. This debate has been passionate and polarised. Frequently the debate has descended into trading of slogans between content owners and internet access service provider (ISPs), enflamed by some of the more extreme pronouncements of the ‘internet should be free’ and the ‘ISPs should police pirates’ contingents.
Peter Leonard
Partner, Gilbert + Tobin Lawyers

To Self-publish or Not to Self-publish – A Legal Review of Dymock’s D Publishing Agreement
Right now, the literary world is buzzing questions about what the future of publishing is. The past 15 years have seen incredible advancements in technology which have disturbed the traditional relationship between publishers and authors, resulting in the balance of control shifting, to some extent, away from publishers and in favour of authors. Enter self-publishing contracts; which turn the traditional publishing relationship on its head, by virtue of the author publishing his or her work independent of an established publisher.
Krystil Carter
Claton Utz, Brisbane

Pharmaceutical Extension Law in the 21st Century
Richard McCormack of counsel has recently expressed views concerning the patent extension regime where he argues for the broadening of the scope for extension cases beyond the Full Court’s decisions in Boehringer v The Commissioner of Patents (Boehringer) and Prejay Holdings v Commissioner of Patents (Prejay) to include claims which integrate physical and other features with the drug. In our opinion, there is currently no basis to suppose that the limitations imposed in the Boehringer and Prejay cases have changed. Indeed, they have been adopted many times since and certainly never overtuned.
It is clear that the legislature intended that s.70(2)(a) relate only to claims to new and inventive pharmaceutical substances. Accordingly, it is only claims to new and inventive pharmaceutical substances per se which are capable of being extended pursuant to s.70.
Glenn McGowan SC
Victorian Bar
and
Benjamin Fitzpatrick
Victorian Bar

Australian Trade Mark Law by Robert Burrell and Michael Handler, Oxford University Press, December 2010, 568pp.
It is exactly 20 years since Shanahan’s landmark text, Australian Law of Trade Marks and Passing Off, appeared on Australian intellectual property bookshelves, and now in its fourth edition, it remains the first truly substantive tome of Australian trade mark law. The appearance of Australian Trade Mark Law by Robert Burrell and Michael Handler is particularly timely, as it fills a long-held void offering and more progressive, critical overview of the state and evolution of Australian trade mark law over the last two decades.
Reviewed by Christopher Sexton

Current Developments: Australia
IP Australia
Martin Friedgut and Amanda Caldwell
General: Personal Property Securities Register
Patents: Change in PCT Fees
Patents, Designs, Trade Marks : Intellectual Property Legislation Amendment Regulations 2011 (No. 2)
Trade Marks : Trade Marks Manual of Practice and Procedure
International Classification of Goods and Services

SOUTH AUSTRALIA, VICTORIA AND WESTERN AUSTRALIA
Tom Cordiner and Alan Nash
Barristers
Correspondents for South Australia, Victoria and Western Australia
Taleb v GM Holden Limited [2011] FCAFC 168 (27 December 2011)
Idameneo (No 789) Limited v Symbion Pharmacy Services Pty Ltd [2011] FCAFC 164 (15 December 2011)
Facton Ltd v Mish Mash Clothing Pty Ltd [2012] FCA 22 (27 January 2012)
Complete Technology Integrations P/L v Green Energy Management Solutions P/L [2011] FCA 1319 (18 November 2011)

NEW SOUTH WALES
Simon Reynolds
Davies Collison Cave
Correspondent for New South Wales
Samsung Electronics Co. Limited v Apple Inc. [2011] FCAFC 156 (30 November 2011)

NEW ZEALAND
Andrew Brown QC
Auckland
Correspondent for New Zealand

Case Law Developments
Fonterra Brand (Tip Top Investments) Limited v Tip Top Restaurant Limited
Wellington High Court, Ronald Young J
4 November 2011

Mars New Zealand Limited v Roby Trustees Limited
Auckland High Court, Venning J
7 December 2011

HONG KONG AND CHINA
Davina Lee, Wendy Lim and Chaz Kittrell
Hogan Lovells, Hong Kong
Correspondents for Hong Kong and China

Image Factor Limited v Registrar of Companies [2012] HKEC 72 English Judgement

SINGAPORE
Winnie Tham, Gu Jian Hui, Magdalene Lie and Anna Toh
Amica Law LLC, Singapore
Correspondent for Singapore

Intellectual Property Office of Singapore Public Consultation on Proposed Amendments of Patents Act

IPOSPublic Consultation of Proposed Changes to the Patents Act (Consequential to the Proposed Changes to the Health Products Act)

Mediation Option in Trade Mark Proceedings Before IPOS

Case Law Developments
Astrazeneca AB v Ranbaxy (Malaysia) SDN BHD [2012] SGHC 7
Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd & Anor (First Currency Choice Pte Ltd, Third Party) [2011] SGHC 268

JAPAN
John A. Tessensohn
Shusaku Yamamoto, Osaka, Japan
Correspondent for Japan

Pre-Issuance Third Party Submissions against Patentability in JapanGame Changing Supreme Court Patent Term Extension decision Warmly Welcomed by Innovator Pharma

FRANCE
Emmanuel Baud, Edouard Fortunet and Julien Canlorbe
Jones Day
Correspondent for France

The Trade Mark “Wel Scotch” for Beers Does Not Harm the Geographical Indication “Scotch Whisky”

Zinc Plates Used to Print Lithography Are Not Protected by Copyright Says the French Supreme Court

UNITED KINGDOM
Charters Macdonald-Brown, John Colbourn and Michael Browne
Redd Solicitors LLP
Correspondent for the United Kingdom

Lack of Notice Leads to Loss of Half of Repackaging Profits for Medik
(1) Hollister Incorporated (2) Dansac A/S v MedikOstomy Supplies Limited [2011] EWPCC 40

Obvious to Try? Maybe not as Obvious as First Thought
Omnipharm Ltd v Merial [2011] EWHC 3393 (Pat)

The Supreme Court Clarifies the Law on Industrial Applicability
Human Genome Sciences Inc. v Ely Lilly and Company [2011] UKSC 51, S.C., 2 November 2011

The “Mental Act” Exclusion from Patentability is Narrow
Re Halliburton Energy Services Inc. [2011] EWHC 2508 (Pat)

UNITED STATES OF AMERICA
Carol Anne Been
SNR Denton US LLP
Correspondent for the United States

Drafting of “Exclusive” Patent Licence is Crucial – Court Holds Patent Licensee Lacks Rights to Enforce Patent

Federal Circuit Upholds Permanent Injunction in Patent Dispute Despite eBay’s Limitation on Injunctions

US Supreme Court Sides with Congress and Foreign Copyright Owners on Restoration of Copyright Protection

Reports from IPSANZ Local Organisations

VICTORIA
Robynne Sanders
DLA Piper
Victorian Committee

NEW SOUTH WALES
Shelley Einfeld
Jirsch Sutherland IP,
New South Wales Committee

QUEENSLAND
Gary Coveney
Queensland Bar,
Queensland Committee

WESTERN AUSTRALIA
Madeleen Rousseau
Freehills
Western Australia Committee

NEW ZEALAND
Sheana Wheeldon
Kensington Swan
New Zealand Committee