Australia: TMC Bulletin - May 2007

Last Updated: 25 May 2007

This article is relevant to both Australia and New Zealand

The Editor of this article is Judith Miller, contributions were provided by: Rob Brown, Peter Buberis, Nicholas Cole, Michelle Dowdle, Daniel Gill, Alison Hunwick, Paul Lockyer and Judith Miller.

The privacy of Jane Doe

The Australian High Court’s decision in Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd opened the possibility of the development of a common law right to privacy in Australia.

That possibility has moved forward with the landmark decision in Jane Doe v Australian Broadcasting Corporation [2007] VCC 281. Although only a decision of the County Court, the decision is likely to lead to further developments in this area.

The decision arose out of the unlawful identification of a victim of sexual assault by ABC Radio News. The news broadcasts by the ABC were in contravention of the Victorian Judicial Proceedings Reports Act 1958, which makes it an offence to publish material that identifies a victim of sexual assault. The victim (Jane Doe) commenced separate proceedings and claimed damages for breach of statutory duty, negligence and breach of privacy, and equitable compensation including exemplary damages for breach of confidence.

Her Honour was satisfied that the identification of a victim of sexual assault was information ‘capable of being characterised as information which the person to whom it relates has a reasonable expectation would remain private’ and, on that basis, her Honour accepted that the defendants were liable for breach of confidence.

Her Honour then considered whether there was a tort of invasion of privacy in Australia and, if so, whether the defendants were liable for breaching it. Her Honour, accepting the existence of the tort, stated that the value underpinning it was the acceptance or recognition of the value of privacy as a right in itself deserving protection.

In finding that Jane Doe’s privacy had been breached, it was relevant that:

  1. There was a publication of personal information, where there was no public interest in publishing it, and where there was a prohibition on its publication.
  2. The defendants failed to exercise the care reasonably required to protect Jane Doe’s privacy.
  3. There was no public interest in the publication.
  4. The information published was clearly of a private nature.

If the decision is followed in other courts, it is clear that the requirements for any tort of privacy are likely to be further refined.

Damages of $234,190 (plus interest) were awarded.

Trade mark non-use procedure

In the December 2006 edition of the TMC Bulletin, the major changes to the Australian Trade Marks Act 1995 were described and summarised.

A further important amendment relating to the removal of a trade mark from the Trade Marks Register was introduced by the Intellectual Property Legislation Amendment Regulations 2007 (No. 1) which amended the Trade Mark Regulations 1995. Regulation 9.1 of the Trade Mark Regulations has been amended so that a person applying to remove a trade mark for non-use is no longer required to submit a statutory declaration setting out the basis for the removal action and came into effect on 27 March 2007.

Regulation 9.1 of the Trade Mark Regulations specifies how a non-use application must be made. Prior to the amendment, non-use applications had to be in an approved form and supported by a Statutory Declaration stating that an inquiry into the use of the trade mark had been made by the applicant for removal and the results of the inquiry. In effect, the inquiry undertaken had to yield the result that the trade mark was not in use in Australia before a removal action could be filed with the Trade Marks Office.

The Explanatory Memorandum relating to this amendment has made it clear that the focus of a non-use action should be on whether there is evidence showing use of the trade mark, rather than the circumstances in which the non-use application was made. Accordingly, whether there is use of the trade mark will be determined during the non-use proceeding rather than from information contained in the application.

The practical implication of this amendment is that it is no longer necessary for an applicant seeking to remove a trade mark from the Trade Marks Register to engage an investigator prior to the filing of the non-use application in order to ascertain if the trade mark has been used in Australia. A non-use action can be filed without such an inquiry. Once the application is filed and advertised in the Official Journal of Trade Marks, the registered owner of the trade mark has three months to lodge an opposition to the removal action. If the registered owner does not oppose the removal of its trade mark, the trade mark will be removed from the Trade Marks Register without the need for non-use to be established. Unless the removal action is opposed by the registered owner of the trade mark, it is now easier to remove a trade mark for non-use - it may only require the lodging of a non-use application.

Copyright in architectural plans: Concrete Pty Limited v Parramatta Design Developments Pty Limited [2006] HCA 55

The High Court has recently held that the purchaser of a development site could use the architectural plans provided by a previous owner without infringing copyright.

Parramatta Design Developments entered into a joint venture to purchase and develop a parcel of land and prepared architectural plans for this purpose. A development application was lodged and consent obtained to the development. The joint venturers subsequently had a falling out and the parcel of land (with the development consent) was subsequently sold to Concrete.

Concrete approached Parramatta Design Developments to obtain a licence of the architectural plans for $33,000. Parramatta Design Developments rejected this offer and sought $5 million for the licence. Concrete commenced proceedings.

The High Court held that Concrete had an implied licence to use the architectural plans, holding that:

  1. Where an architect is engaged to prepare plans and paid a fee for doing so there is an implied licence to use the plans.
  2. The fact that no fees were paid, considered in light of the broad purposes of the joint venture and the benefit that would accrue to Parramatta Design Developments by way of profit, did not prevent such an implied licence from arising.
  3. As the plans had been prepared for the purpose of obtaining a development consent, once the development consent was granted the implied licence was irrevocable.
  4. Concrete as the purchaser of the parcel of land which was subject to the development consent also had an implied licence to use the plans.

Foxtel Management Pty Limited v The Mod Shop Pty Limited [2007] FCA 463

Foxtel Management Pty Limited has successfully brought civil proceedings in the Federal Court of Australia against a company engaged in ‘serial piracy’ of Foxtel’s satellite television broadcasts.

Foxtel commenced the civil proceedings against The Mod Shop Pty Limited, a Perth based technology business, which retailed satellite reception equipment.

The Mod Shop placed advertisements in various magazines throughout Western Australia advertising ‘free satellite TV’ and ‘card sharing’ so people could avoid paying a monthly subscription fee for pay TV services.

Foxtel conducted its own investigations and discovered that The Mod Shop stores were both supplying unauthorised Foxtel smartcards and involved in a card-sharing scheme so as to provide its customers with unauthorised access to the Foxtel subscription service.

Any customer who purchased satellite equipment from The Mod Shop was, on request, supplied with a mobile phone number to ring so that the customer could buy a cloned Foxtel smart-card or access the card-sharing scheme. When Foxtel’s own investigator went to The Mod Shop he was advised by a sales assistant that The Mod Shop could supply the card sharing hardware and the contact details for ‘the guy that can supply you with the software needed to get Foxtel channels’.

Foxtel alleged that The Mod Shop had:

  • Contravened section 135AN and section 135ANA of the Copyright Act 1968, which relate to broadcast decoding devices and piracy offences.
  • Engaged in misleading and deceptive conduct under the Trade Practices Act 1974 and the Western Australian Fair Trading Act 1987.
  • Induced breaches by Foxtel subscribers of their subscription contracts.
  • Conspired by unlawful means in relation to card sharing activities.

Justice Siopis found that the satellite reception equipment sold by The Mod Shop did not of itself allow customers to obtain unauthorised access to Foxtel broadcasts. However, his Honour did accept that The Mod Shop companies and its employees, with the help of third party suppliers, acted with the intention to supply customers with programmed smartcards.

Justice Siopis also accepted that The Mod Shop had developed and adapted card-sharing server software and client-card sharing software, thus supplying customers with broadcast decoding devices in contravention of section 135AN of the Copyright Act.

The Federal Court awarded Foxtel in excess of AU$1 million dollars in damages. This included estimated losses suffered by Foxtel as a consequence of smartcard piracy ($650,000) and the card-sharing scheme ($3,000). Justice Siopis also accepted Foxtel’s claim under section 52 of the Trade Practices Act for misleading and deceptive conduct by The Mod Shop. However, his Honour, did not accept that the defendants had induced a breach of the Foxtel subscriber agreement by subscribers.

Following the Copyright Amendment Act 2006, the law relating to signal piracy has been strengthened. Under the amended Act, it is now an offence for a pay TV subscriber to distribute a subscription broadcast to other premises, or for a subscriber to use the broadcast for commercial purposes, if the subscription fee has not been paid. An example may include people who share their Pay TV service with a neighbour. Increased fines of up to AU$60,000 and jail sentences for card-sharing should act as a deterrent to pirates and pirating schemes generally.

New Zealand anti-spam legislation

The New Zealand Unsolicited Electronic Messages Act 2007 was passed on 27 February 2007 and comes into effect after six months.

The Act is designed to regulate the proliferation of unsolicited electronic messages by:

  1. Prohibiting commercial electronic messages from being sent to a person in New Zealand without their consent.
  2. Requiring commercial electronic messages to include accurate information about the person who authorised the sending of the message and a functional unsubscribe facility.
  3. Restricting the supply, acquisition and use of address harvesting software and any electronic address list produced using that software.

The Act defines a ‘commercial electronic message’ as a message:

  1. Sent using a telecommunications service and to an electronic address (which is designed to capture emails and text messages).
  2. The primary purpose of which is to market or promote goods or services, land, interests in land or business or investment opportunities.

Voice calls, whether using standard telephony services or voice over internet protocol, and facsimiles are explicitly excluded.

As the Act only prohibits the sending of unsolicited commercial electronic messages, there is no prohibition on sending a commercial electronic message if the recipient consents. In relation to withdrawal of that consent, the Act requires that such a withdrawal be at no cost to the person withdrawing (which may cause some concern for providers of text message marketing campaigns). The Act deems such a withdrawal to take effect five working days after the withdrawal is made.

There are a number of types of electronic messages exempted from the Act, including:

  1. Quotes or estimates requested by the recipient.
  2. Messages that facilitate, complete or confirm a commercial transaction that the recipient previously agreed to enter into with the person who authorised the sending of the message.
  3. Messages that provide warranty information, product recall information or security or safety information about goods or services used or purchased by the recipient.
  4. Notification of factual information about a subscription, membership, account, loan or similar relationship involving:

    1. The ongoing purchase or use by the recipient of goods or services offered by the person who authorised the sending of the message; or
    2. The recipient’s ongoing subscription, membership, account, loan or similar relationship.
  5. Messages relating to the delivery of goods or services, including product updates or upgrades, that the recipient is entitled to receive under the terms of a transaction that the recipient has previously agreed.

An ISP Spam Code of Practice, which sets out ISP obligations and complaint handling procedures, is currently being prepared. It is expected that the Code will come into effect at the same time as the Act.

Fines for breaches of the Act can be up to NZ$200,000 for individuals and NZ$500,000 for companies.

New Zealand High Court: use of sculptures in public places

The New Zealand High Court was recently asked to consider the ambit of an exception in the New Zealand Copyright Act 1994 relating to the use of sculptures in public places (Radford v Hallenstein Bros Limited (22/2/2007)).

T-shirts were produced which featured two sculptural works by John Radford. The two works are in a park in New Zealand. Mr Radford claimed, amongst other things, that the t-shirt producer infringed the copyright in the underlying works embodied in the sculptures.

Section 73 of the Act relevantly provides that copying of a sculpture in a public place by making a graphic work representing it or a photograph or film of it does not infringe the copyright in the work. Mr Radford argued that this provision did not extend to the copyright in the underlying works, that is, the sketch or design of the sculpture.

The Court held that on a literal reading the section only extended to the work itself, that is, the sculpture, and not the underlying works embodied in the sculpture. However, in order to give the section a sensible effect, the Court held that such indirect copying is excused by section 73. The Court also held that section 73 includes where the excused acts (graphic representation, photograph or film) are done for a profit.

New Zealand Commerce Commission: misleading claims

GlaxoSmithKline has been fined NZ$227,500 and is required to undertake corrective advertising after pleading guilty to charges that it breached section 10 of the New Zealand Fair Trading Act 1986 by making misleading claims concerning the amount of vitamin C in its Ribena drink (Ribena is a blackcurrant fruit juice which comes in ready-to-drink and concentrate forms).

The advertising for Ribena claimed the ready-to-drink version of the product contained a specified amount of vitamin C. Advertising for Ribena products also claimed that ‘the blackcurrants in Ribena had four times the vitamin C of oranges’. In relation to the first claim, testing disclosed that the ready-to-drink product contained no detectable level of vitamin C. In relation to the second claim, although literally correct, the Commission argued it was likely to mislead consumers as to the amount of vitamin C in Ribena compared to orange juice (when diluted as recommended, the syrup product resulted in much lower levels of vitamin C).

The size of the fine was partly due to the fact that GlaxoSmithKline did not act when first notified that its claims were incorrect.

The Commission’s investigation followed a complaint by two school students who had tested the product as part of their entry in a science fair.

The Australian ‘Do Not Call’ Register

The ‘Do Not Call Register’ legislation, which was passed on 22 June 2006 establishes a scheme for individuals to place their names on a register if they do not want to receive certain unsolicited telemarketing calls. It is expected to come into effect on 31 May 2007.

The regulator, the Australian Communications and Media Authority, has recently made the Telecommunications (Do Not Register) (Telemarketing and Research Calls) Industry Standard which commences at the same time as the Act. The Standard:

  1. Restricts the calling times and days for making telemarketing and research calls.
  2. Requires the caller to provide specific information to the recipient of the call, terminate the call on request by the recipient and enable caller ID by the recipient.

Phillips Fox has changed its name to DLA Phillips Fox because the firm entered into an exclusive alliance with DLA Piper, one of the largest legal services organisations in the world. We will retain our offices in every major commercial centre in Australia and New Zealand, with no operational change to your relationship with the firm. DLA Phillips Fox can now take your business one step further − by connecting you to a global network of legal experience, talent and knowledge.

This publication is intended as a first point of reference and should not be relied on as a substitute for professional advice. Specialist legal advice should always be sought in relation to any particular circumstances and no liability will be accepted for any losses incurred by those relying solely on this publication.

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