ISSUE 116 – June 2019
EDITORIAL – BY FIONA ROTSTEIN AND FIONA PHILLIPS
This issue of Intellectual Property Forum covers a variety of issues in the intellectual property (“IP”) fields of trade marks, domain names, patents and copyright. It also features an array of distinguished and high profile authors. We are fortunate to have articles and reports by a recently retired Judge of the New Zealand Court of Appeal; three current members of the judiciary from New Zealand, Australia and the United States of America (“US”); and a range of barristers.
In Conversation with Dr Charlie Day by Fiona Rotstein
Dr Charlie Day is a Rhodes Scholar and the Chief Executive Officer (“CEO”) of “Innovation and Science Australia” (“ISA”). As CEO, Dr Day drives ISA’s provision of strategic, whole-of-government advice about innovation, research and science. Last year, ISA released Australia 2030: Prosperity through Innovation (the “2030 Plan”), a road map for Australia to become a leading innovation nation by 2030. In an interview with Fiona Rotstein, Dr Day provides some key observations regarding the state of innovation in Australia, why innovation is so infrequently discussed by politicians and the future challenges of intellectual property (“IP”) law.
Articles
The Rise of the Search Engine — A New Fight for Customer Attention
Introduction
My aim is to discuss two intellectual property issues that have emerged from the rise of the search engine, and the fight for customer attention that has developed with it. From the point of view of traditional print and visual mediums for advertising, this really has been a rise of the machines, and there is no terminator in sight.
The Honourable Raynor Asher QC
Former Judge, Court of Appeal of New Zealand
The User Principle in New Zealand Copyright – “the exercise of a sound imagination and the practice of the broad axe”?
Introduction
If A, being a liveryman, keeps his horse standing idle in the stable, and B, against his wish or without his knowledge, rides or drives it out, it is no answer to A for B to say: “Against what loss do you want to be restored? I restore the horse. There is no loss. The horse is none the worse; it is better for the exercise.”
Watson, Laidlaw & Co Ltd v Pott, Cassels and Williamson (“Watson, Laidlaw”) per Lord
Shaw.
Courts in New Zealand and overseas are well-versed in the calculation of compensatory damages. Judges develop skill and experience in awarding a sum that fairly represents the loss that a plaintiff has suffered. That is, damages which restore the plaintiff to the position they would have been in but for the defendant’s conduct.
The Honourable Justice Ian Gault
Judge of the High Court of New Zealand
The Willing Licensee and the Willing Licensor – A Sound Imagination and the Broad Axe: the Australian Approach
Introduction
How does one go about determining fair remuneration for damages for infringement of copyright? One of the important issues raised by this question goes to the very nature of the asset sought to be protected. It is intangible. It may have a trading history (in the form of licensing whether by private contract or on a compulsory basis, such as in the case of music). It may have an esteemed value in the eyes of the author, but little to show by way of monetary value.
Colin Golvan AM, QC
Barrister, Owen Dixon Chambers West, Melbourne
Censorship Meets Intellectual Property: Harmonising Copyright, Trade Mark and Free Expression
Intellectual property and free speech are not always comfortable partners. It is almost a cliché to say that copyright and the First Amendment are both in tension and in synergy with each other. While this observation is broadly true, its specific implications are often muddled. I suggest that the most discussed tension between copyright and the First Amendment – sometimes dubbed “crowding out” – is overblown. Instead, we should focus on a more real and pressing tension – the growing number of claims that invoke copyright protection to remedy a broad array of personal harms, such as invasion of privacy, and in the process tromp on the First Amendment and freedom of expression. In simple terms, a trumped-up copyright claim cannot justify censorship in the guise of authorship. The tables are somewhat turned in the trade mark arena, where free speech is implicated because legitimate marks are being rejected on the grounds that they are disparaging, scandalous, or immoral. This article traces recent developments in United States of America (“US”) courts.
The Honourable Judge M. Margaret McKeown
Judge, United States Court of Appeals for the Ninth Circuit.
Swallowing the Red Pill: Sufficiency and the New Fragility of Patent Protection
In light of a recent United Kingdom (“UK”) decision, patentees in a number of jurisdictions are obliged to consider a new and uncomfortable truth: their patents may be more vulnerable than they had previously believed.
The majority of the UK Supreme Court in the recent watershed decision Warner-Lambert Co LLC v Generics (UK) Ltd [2018] UKSC 56 (“Warner-Lambert”) took what some view as a hard-line approach to the application of the test for patent sufficiency, with the result that Warner-Lambert lost patent protection for a hugely successful drug, pregabalin (Lyrica).
This article explores the significance of the decision in Warner-Lambert for the law of patent sufficiency in Australia and New Zealand. The decision gives rise to similar issues in both jurisdictions, as the legislation relating to sufficiency in both New Zealand and Australia is now virtually identical (and is very similar to that of the UK).
Jane Glover
Barrister, Sangro Chambers, Auckland, New Zealand
Concurrent Expert Evidence: Still Flavour of the Month?
The purpose of this report and the question asked in its title is to promote discussion about the benefits and drawbacks of concurrent expert evidence and to ask whether the so-called “hot tub” method is still attractive amongst intellectual property (“IP”) lawyers.
The Honourable Justice John Middleton
Judge, Federal Court of Australia
Admission to the Manner of Manufacture Club – Patent Eligibility of Computer Implemented Business Methods
The High Court of Australia (the “High Court”) has indicated that, when it comes to the ground of patent invalidity known as “manner of manufacture”, the “right question” is whether “the invention so far as claimed in any claim” falls within the confines of “the principles which have been developed for the application of s.6 of the Statute of Monopolies”: see National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 (“NRDC”) at 264, 268-9 and D’Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at [4], [18] (“Myriad”).
Cynthia Cochrane and Catherine Bembrick
Barristers, 5 Wentworth Chambers, Sydney
Reports
Book Review: Commercialisation of Intellectual Property
Natalie P Stoianoff, Fred Chilton and Ann L Monotti
[LexisNexis 2019 pp 304].
In the foreword to the recently published Commercialisation of Intellectual Property, Bill Ferris AC, Inaugural Chair of Innovation and Science Australia (“ISA”), writes:
Innovation will be crucial to a future Australian economy less dependent upon our commodities exports and more widely driven by the commercialisation of our ideas and inventiveness. The authors of this book provide a blueprint for innovators embarking upon the commercialisation pathway.
Fiona Rotstein
Current Developments
IP Australia
Martin Friedgut and Roseanne Mannion
Spruson & Ferguson
Patents
The Australian Intellectual Property Report 2019
Designs
The Australian Intellectual Property Report 2019
Trade Marks
The Australian Intellectual Property Report 2019
CASES
Peter Heerey AM QC, Tom Cordiner QC & Alan Nash
Barristers
Davies v Lazer Safe Pty Ltd [2019] FCAFC 65 (26 April 2019)
Patents – construction – infringement – validity only if primary judge’s construction was wrong
GM Global Technology Operations LLC v S.S.S. Auto Parts Pty Ltd [2019] FCA 97 (11 February 2019)
Designs – infringement – defences – use of a component part of a complex product for the purposes of repair – proof of knowledge that a part to be used for a non-repair purpose – unjustified threats – whether potential availability of repair defence to be taken into account
SNF (Australia) Pty Ltd v BASF Australia Ltd [2019] FCA 425 (27 March 2019)
Patents – appeal from decision of the delegate – lengthy trial and voluminous evidence – alternative dispute resolution mechanisms
Taryn Lovegrove
Davies Collison Cave, Sydney
Notaras v Barcelona Pty Limited [2019] FCA 4
Dr Dimitrios Eliades
Barrister, Queensland
Hells Angels Motorcycle Corporation (Australia) Pty Limited v Redbubble Limited [2019] FCA 355 [15 March 2019]
NEW ZEALAND
Andrew Brown QC
Barrister, Auckland
Correspondent for New Zealand
International Consolidated Business Pty Ltd v S C Johnson & Son Inc
Court of Appeal of New Zealand, Kós P, French and Brown JJ
23 August 2018 – 19 March 2019
[2019] NZCA 61
Trade marks – registrability – ownership – whether an application for a trade mark may be made on a date when an identical, pre-existing registration for that trade mark exists on the register.
Target Australia Pty Ltd v Target New Zealand Ltd
Intellectual Property Office of New Zealand, Assistant Commissioner Glover
1 May 2018 – 18 May 2019
[2019] NZIPOTM 16
Trade marks – non-use application – whether trade mark use on an Australian website could amount to genuine use in New Zealand – whether trade mark use on bedsheets in New Zealand could amount to genuine use in New Zealand – whether trade mark use in email newsletters could amount to genuine use in New Zealand – whether trade mark use in negotiations with a New Zealand online retailer could amount to genuine use in New Zealand.
CHINA & HONG KONG
Dan Plane
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 II) – Appeals
JAPAN
John A Tessensohn
Board Member, SHUSAKU-YAMAMOTO, Osaka, Japan
Correspondents for Japan
Healthy Upward Trend of Accelerated Patent Examination in Japan
SINGAPORE
Winnie Tham and Huang Li Wen
Amica Law LLC
Correspondents for Singapore
Application of Confidentiality Safeguards in TWG Tea Company Pte. Ltd. v T2 Singapore Pte Ltd & Tea Too Pty Ltd [2019] SGIPOS 9
EUROPEAN UNION
Dr Marc Mimler, LL.M. (London)
Senior Lecturer in Law, Bournemouth University
Correspondent for the European Union
FRANCE
Thomas Bouvet and Eddy Prothière
Jones Day
Correspondents for France
Consequences of the PACTE Act in terms of IP
GERMANY
Christopher Weber and Sören Dahm
Kather Augenstein
Correspondents for Germany
Courts clarify Art. 16 of EC Regulation No 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks
UNITED KINGDOM
Bristows LLP London
Correspondents for the United Kingdom
Brian Cordery, Partner and Charlie French, Senior Associate
Assessment of obviousness of dosage regime patents in the United Kingdom: Supreme Court judgment in the tadalafil case
CANADA
Catherine Dennis Brooks
Partner, Miller Thomson LLP
Correspondent for Canada
Everything You Need to Know to Prepare for 17 June 2019 – The In-Force Date of Canada’s New Trade Mark Regime