Australia: IPT Insights - 3 July 2012 - news on intellectual property & telecommunications

Last Updated: 6 July 2012
Article by Sarah Dolan


The Attorney-General's Department is currently examining how Australia's contract law might be reformed in order to maximise simplicity and efficiency within modern commercial and consumer transactions. To that end, on 22 March 2012, AttorneyGeneral Nicola Roxon released a discussion paper seeking views from businesses, consumers, legal practitioners, academics and other stakeholders on the way in which Australia's contract law could be reformed to achieve these goals. The paper:

  • Gives a brief outline of Australian contract law and discusses the main drivers for reform
  • Considers some of the main challenges associated with Australian and international contracting
  • Compares the contract law systems of some of Australia's major trading partners
  • Discusses international developments in the area of contract law
  • Puts forward three possible approaches to reform in Australia, namely:
    • Restatement of the current law in a new form
    • Simplification of the current law
    • More radical reform involving significant change to the substance of Australian contract law.

The discussion paper is the first step on the pathway to reform. The Department intends to obtain ongoing input from stakeholders as the reform project develops. Information about further consultation opportunities will be made available on the Department's website.


In Phonographic Performance Company of Australia Ltd (PPCA) v Commercial Radio Australia Limited (CRA) [2012] FCA 93, the Australian Federal Court determined that simultaneous internet streaming of a radio program is a broadcast for the purposes of the Copyright Act 1968 (Cth) (Copyright Act).

PPCA, a copyright collecting society, and CRA, an organisation representing radio broadcasters, had entered into a licensing arrangement that allowed CRA to "broadcast" (as defined in the Copyright Act) PPCA's sound recordings.

PPCA argued that broadcasting under the Copyright Act does not include internet streaming, relying on an exclusion in the Broadcasting Services Act 1992 (Cth).

CRA argued that broadcasting under the Copyright Act does include internet streaming when the internet streaming occurs simultaneously with the broadcast of the radio program over the broadcasting services bands.

The Federal Court found in CRA's favour, holding that the exclusion that PPCA tried to rely on does not apply to a radio station simultaneously streaming its radio program over the internet.

It can be inferred from this that, if the streaming is not simultaneous, or the program is not also broadcast over the radio (for example on a FM station), the exclusion would apply.

For this reason, the decision is specific to the particulars of the case and the licensing arrangement between PPCA and CRA.
However, the case highlights the difficulties in interpreting intersecting legislation and how that may impact on the exclusive rights granted under Australian copyright law, particularly in the context of converging technologies.

PPCA appealed this decision in March 2012.


You may recall that our previous issue featured an article titled Search Engine AdWords - Buying Someone Else's Brand Name. One of the cases discussed, Australian Competition and Consumer Commission v Trading Post Australia Pty Limited and Google Inc. [2011] FCA 1086, has since been appealed by the Australian Competition and Consumer Commission (ACCC) to the Full Court of the Federal Court.

To recap, the original proceedings were brought against the Trading Post, which purchased various third-party brands as AdWords, and Google, which provides an AdWord service. The outcome of the original proceedings was that the Trading Post had engaged in misleading and deceptive conduct in relation to its use of Google's AdWord service (this finding has not been appealed by the Trading Post), but Google had not engaged in misleading and deceptive conduct by virtue of its provision of the AdWords service (ie publishing the AdWords and accompanying advertisements on its website).

The Full Court's decision has recently been handed down (Australian Competition and Consumer Commission v Google Inc [2012] FCAFC 49). The Full Court held that Google had engaged in misleading and deceptive conduct in respect of four "cases", by publishing or causing to be published on the Google website AdWord search results that represented, contrary to fact, that there was an association or affiliation between an AdWord and the results they led to, or information on the subject of an AdWord could be found at the website the AdWord results led to.

Google is, at the time of writing, seeking leave to appeal this decision to the High Court.


An Australian company's application to register the trade mark NUCKIN FUTS for prepared nut and other snack food products should soon proceed to registration following expiration of the opposition period on 12 April 2012. The application for NUCKIN FUTS was initially rejected by the Australian Trade Marks Office (ATMO) on the basis that it was "scandalous".

A scandalous trade mark is something that would, to an "ordinary" person (but subjectively assessed by the ATMO), cause a significant degree of disgrace, shock or outrage. In this case, the ATMO claimed that NUCKIN FUTS was a spoonerism of a swear word, and was therefore offensive. The applicant argued that the swear word in question was widely accepted as part of everyday language and therefore was not offensive. The ATMO subsequently accepted the trade mark on the basis that the applicant enter an endorsement that the NUCKIN FUTS products would not be "marketed" to "children".

This decision demonstrates that trade marks that may have caused offence in the past may now be acceptable to the ordinary person and available for registration, especially in circumstances where an applicant restricts use of a trade mark to a particular market. Other trade marks currently registered in Australia that may be considered scandalous include FCUK, RICH BITCH, POMMIEBASHER and UNFKNBLVBLE!


It was a short-lived victory for rights owners when the National Rugby League (NRL), the Australian Football League (AFL) and Telstra Corporation (Telstra) succeeded in their appeal to the Full Federal Court against Singtel Optus (Optus). Optus has announced that it will be appealing this decision.

The case relates to Optus' subscription television services, TV Now, which permitted subscribers to record free-to-air television programs and play them back at a later time on a compatible Optus mobile device. The service provided by Optus undermined Telstra's rights deals with the NRL and AFL, under which Telstra had paid each of the sporting bodies a significant sum to acquire a licence to the freeto-air broadcasting rights.

In its defence, Optus argued that there was no copyright infringement since the TV Now system complied with the "time shifting" exception under the Copyright Act. This permits a person to make a recording of a broadcast, solely for private and domestic use, in order to watch the program at a later, more convenient time.

At first instance, Justice Rares agreed with Optus and held that the TV Now system did not infringe copyright. Even though Optus was providing the technology that facilitated the recording, Justice Rares held that it was ultimately the subscribers who made the recordings when they clicked the "record" button on their mobile devices.

On appeal, the Full Federal Court had two questions to consider:

  1. When subscribers used the TV Now system to record a program, who, for the purposes of the Copyright Act, was the maker of the copy?
  2. If Optus' act in making such a copy would otherwise constitute an infringement of the copyright of the AFL, NRL or Telstra, could Optus rely on the "private and domestic use" defence of s 111 of the Copyright Act?

On the first question, the Court held that the "maker" of the copy was either Optus or, its preferred view, Optus and the subscriber jointly.

On the second question, having found that Optus was either the sole maker or joint maker of the recorded program, Optus could not rely on the defence of "private and domestic use".

While the Court acknowledged that its interpretation of the Copyright Act could be viewed as inconsistent with the principle of technological neutrality, it decided that it was not its role to interpret the Copyright Act in order "to secure an assumed legislative desire for such neutrality".

As a final remark, the Court accepted "that different relationships and differing technologies may well yield different conclusions to the "who makes the copy" question".

We will keep you informed of developments.


The duopoly currently enjoyed by Hong Kong's free-to-air television broadcasters, TVB and ATV, is about to come to an end as three interested parties submit applications to the Broadcasting Authority (BA) for new free-to-air television licences. At present, within Chinese free-to-air television services, TVB dominates with a market share of 79%, while ATV takes a modest 21%. For the English channels, TVB leads the market with a 75% share and ATV occupies the remaining 25%.

Many have commented that there has been deterioration of the overall quality of freeto-air television in Hong Kong over the past few years. One survey revealed that 47% of Hong Kong viewers find the quality of free-to-air programming "just so-so", while 21% criticised it as "disappointing" or "very disappointing". This is largely blamed on the lack of competition in the local broadcasting industry.

It is hoped that this situation is about to change as the BA makes recommendations to the Chief Executive in Council on the potential new entrants into the industry.

The authorities have indicated that it is the government's policy to encourage competition, investment and adoption of innovative technologies to promote the sustainable development of the local broadcasting industry. Indeed, all three applicants for the FTA television licence have undertaken to contribute to the industry by way of investment and recruitment after obtaining the licence. As there is no limit on the number of FTA television licences that may be issued by the Chief Executive in Council, it is widely speculated that at least one, if not all, of the three applicants will be granted licences.

© DLA Piper

This publication is intended as a general overview and discussion of the subjects dealt with. It is not intended to be, and should not used as, a substitute for taking legal advice in any specific situation. DLA Piper Australia will accept no responsibility for any actions taken or not taken on the basis of this publication.

DLA Piper Australia is part of DLA Piper, a global law firm, operating through various separate and distinct legal entities. For further information, please refer to

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