Australia: Intellectual Property News

Last Updated: 19 July 2007



US decision creates new risks for patent holders

The US Court of Appeal's decision in SanDisk v STMicroelectronics may make it more difficult for US patent holders who earn royalties under licensing agreements to avoid declaratory judgment actions. Prior to this judgment, while licensing negotiations were on foot opponents could not file for declaratory judgment, and patent holders were able to bring a suit for patent infringement at any time. In this recent ruling, the Court assessed the parties' 'dual assertion of rights', namely the right to assert a patent and the dual right to engage in the accused activity without a license. The ruling may provide potential licensees with a new strategic tool in license negotiations according to US lawyers.

Further information can be accessed at:,_Boon_for_License_Buyers



Licence fees to increase for nightclubs and dance parties

The Copyright Tribunal determined the licence fees payable by nightclubs and dance party organisers to the Phonographic Performance Company of Australia (PPCA), an organisation which represents artists and recording labels, for the use of sound recordings. The Tribunal ordered an increase in the licence fees payable by nightclub venues from $0.07 per person to $1.05 per person. As regards dance parties, the licence fee will be raised from $0.20 to $3.05 per person. The Tribunal noted that, 'the object of the tribunal in approving the proposed scheme is to fix upon a licence fee that can be regarded, as nearly as it is possible to estimate… as the fair market price for the privilege of playing the recorded music in respect of which the Society is able to grant a licence'. The respondents are considering whether avenues exist for judicial review of the decision.

The decision can be accessed at:


YouTube copyright dispute depends on whether it is found to control Content

The Californian District Court has declined to award summary judgment to either party in a copyright dispute brought by journalist Robert Tur against YouTube, a video sharing site. Mr Tur sued YouTube after users posted and viewed footage taken by Mr Tur on the site, claiming that YouTube was not entitled to the 'safe harbor' protection under US law as it received a financial benefit from users viewing his footage. The Court held that the crucial issue is the degree of control exerted by YouTube over the content posted by users on its site. The matter will proceed to the next stage of the trial. Further information can be accessed at:

Broadcast treaty proposed by WIPO fails

The Standing Committee on Copyright and Related Rights (SCCRR) met in June to discuss the development of a WIPO Broadcasting Treaty that would give broadcasters intellectual property rights over their broadcasts. Importantly, the proposed treaty would grant rights in relation to broadcasts over the Internet. The concern that gives rise to these discussions is the prevention of the unauthorised used of broadcast signals. Although sympathetic to this concern, some stakeholders opposed the proposed treaty on the basis that it would interfere with their ability to disseminate information on their own terms, and may result in complexities regarding access to underlying content. It was intended that discussions would be substantially progressed at the June meeting. However the views of the various stakeholders were so divergent that the SCCRR noted that 'it would not be possible to reach an agreement on the objectives, specific scope and object of protection' of the treaty and recommended that discussions continue in due course.

Further information can be accessed at:

US Court finds credit card processors not liable for Web copyright

violations Visa International, MasterCard International and affiliated banks have successfully defended a copyright action brought by Perfect 10, an online adult entertainment company, in a US Appeals Court. The alleged infringement concerned the reproduction and distribution of Perfect 10's images over the internet. Perfect 10 alleged this infringement was facilitated by the credit card companies who provide the 'financial bridge' between buyer and seller. The Court held that companies processing credit card payments for Web sites featuring pirated content are not liable for copyright violations. The majority stated that, 'They [credit card processors] in no way assist or enable Internet users to locate infringing material, and they do not distribute it'. Further information can be accessed at:

Trade marks


Live Earth defends interlocutory application in trade mark dispute

Live Earth, a climate change awareness campaign comprising international music concerts, merchandise and publications, has successfully defended an interlocutory application brought by Live Earth Resource Management Pty Ltd (LERM), a Western Australian business which provides environmentally focussed products and services to industry, marine entities, government and other consumers. LERM is the registered owner of a composite trade mark consisting of the words 'Live Earth' either side of a globe of the earth. LERM claimed the respondent breached and intends to breach its mark through the use of its similar unregistered logo. The applicant sought to restrain Live Earth from various acts of using the logo. The Federal Court held that although there was a prima facie case, it was not shown that the applicant would suffer any damage that could not be compensated by an award of damages or an account of profits. Dismissing the application, the Court noted that if the orders sought were granted, the respondent would suffer harm which would be difficult to quantify and impossible to compensate.

The decision can be accessed at:


Mini Maglite torch registered as 3D trade mark in Japan

The Intellectual Property High Court in Japan has found in favour of Mag Instrument, a torch manufacturing company, in their application for registration of the Mini Maglite torch as a three-dimensional trade mark. The Court overturned a decision by the Japan Patent Office in 2001 which rejected the application. Lawyers for Mag Instrument commented, 'This Mini Maglite case gives the manufacturers of well-known, distinctively shaped goods in the market a bright future'.

Further information can be accessed at:

New Zealand's PM objects to 'Maori' trade mark used by French Company

A French security company has faced opposition from New Zealand's Prime Minister, Helen Clark, over its use of the word 'Maori' in its trade mark. Legal proceedings have not been instituted, the Prime Minister conceding that 'the problem is that there are not international mechanisms in place which can address this issue right now'. The leader of New Zealand's Maori Party commented that the trade mark is 'an absolute affront to our intellectual and cultural proprietary rights'.

The article can be accessed at:

Google loses legal battle for 'gmail' name in Germany

A German court has found in favour of Daniel Giersch, an entrepreneur, in a trade mark dispute against Google over the 'gmail' name. Google launched its gmail service in 2004, however Giersch had been running his own gmail service since 2000. The Court found that Google infringed Giersch's trade mark that had previously been registered. As a result of the judgment Google is unable to use the gmail name in Germany, however Google has declared that it will continue to provide 'Google Mail' services to users in Germany without the 'gmail' name.

Further information can be accessed at:



Belgian ISP held responsible for file sharing

A Belgian court has found in favour of the Belgian Society of Authors, Composers and Publishers in a copyright dispute against Scarlet Extended, an internet service provider (ISP). The Court held that the ISP is responsible for blocking or filtering out copyrightinfringing traffic on its network, and has given Scarlet Extended six months to introduce technology which prevents its users from sharing pirated music and video files. The ruling is based on the Court's interpretation of the E.U. Copyright Directive and the Ecommerce Directive, and could set a precedent for other cases in Europe according to the International Federation of the Phonographic Industry.

Further information can be accessed at:

.asia to be recognised as valid domain name

ICANN has approved the registration of domain names ending in '.asia'. Registration for the '.asia' name will be open to governments and existing trade mark owners from October, while registration for other trade marks and company names will begin in mid November. General registrations will be open to the public in 2008. The move is seen as a way to unify business and other internet users in the Asia-Pacific region. The 'DotAsia Organisation', an organisation comprising groups which run domain names for China, Japan, South Korea and Vietnam, will operate '.asia', and will restrict registrations to those in the region, which includes Australia.

The article can be accessed at:,24897,21988243-5013040,00.html



Icon Plastics Pty Ltd [2007] ADO 2

The Australian Designs Office (ADO) has registered a design on application by Icon Plastics Pty Ltd (Icon), a company which designs and manufactures plastic products, overturning a decision by the delegated examiner of designs which refused registration. The design, an 'Electrode Plate Cover Edge Strip', was refused registration by the examiner on the grounds that it was 'substantially similar in overall impression' to an earlier design, also owned by Icon. However, the ADO held that the design was new and distinctive compared to the cited prior art, and the designs were not substantially similar. The ADO noted that although the design was a minor refinement of the existing one based on functional principles, suggesting that revocation might be appropriate, the particular field is one where shape is limited and functionality is paramount. Consequently, this was not a bar to registration, and the ADO granted registration.

The decision can be accessed at:

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