Australia: Intellectual Property News

Last Updated: 15 February 2008
Article by Charles Alexander



Federal Court Finds Against Polo/Lauren In Dispute Over Polo Logo

The Federal Court has found in favour of Ziliani Holdings Pty Ltd ('Ziliani') in its dispute with Polo/Lauren Company ('Polo') over an alleged infringement of Polo's copyright in its polo player logo. Polo alleged that Ziliani was infringing its copyright by importing and selling in Australia authentic goods which had the Polo logo embroidered on them. Ziliani argued that it had not infringed copyright as the logo was a 'label' embroidered on an article of clothing and hence a non-infringing accessory to an article (s 44C of the Copyright Act). Ziliani also argued that the label was a 'corresponding design' within the meaning of s 74 of the Copyright Act and that therefore the defence set out in s 77(2) applied. The Federal Court agreed with both of Ziliani's contentions. In relation to the finding that the embroidered logo was a 'corresponding design', the Court stated that the logo had 'visual features of shape or configuration being the distinctive alteration of the fabric created by the embroidery of the logo'. Thus, there had been no infringement of copyright by Ziliani.

Click here to access the case.


EU Law Does Not Force ISPs To Disclose Details Of Downloaders Suspected Of Infringing Copyright

The Court of Justice of the European Communities has held that European Union Law does not force Internet Service Providers (ISPs) to disclose names and addresses of filesharers suspected of infringing copyright. However, the court stated that individual European countries had the option of introducing rules which would oblige companies to provide such details. The case resulted from music rights-holder group, Promusicae, seeking to have telecoms firm, Telefonica, disclose details of their subscribers. After Promusicae won at first instance, Telefonica appealed arguing that, under EU law, disclosure of personal data was limited to criminal and national security cases. The court upheld this argument and stated that it was a matter for individual European nations to balance the right to privacy and the right to protect intellectual property.

Click here to access the case.

IFPI Urges Countries To Follow France's Copyright Strategy

The International Federation of the Phonographic Industry (IFPI) has called on more countries to adopt the approach taken by France to tackle copyright infringement on the Internet. The French plan, reported on in our 20 December edition, gives Internet service providers (ISPs) the capacity to disconnect persistent copyright infringers. The IFPI released its Digital Music Report '08 stating that the French plan demonstrates that 'disconnecting the accounts of serious infringers is feasible and reasonable for ISPs'. In addition, the report stated that ISPs not only have the technical ability to diminish copyright infringement, but they also have commercial incentive to do so.

Click here for further information.



UK Courts Revisit Software Patents

The England and Wales High Court (Patents Court) has found in favour of four high-tech companies in upholding their appeal against a refusal by the UK IP Office (UKIPO) to accept patent claims covering software embodied in computer disks and internet downloads. The Court has held that claims to computer programs are 'not necessarily' excluded by the European Patent Convention. If the decision is not appealed further, it is expected the UKIPO will need to amend its current practices regarding claims of this sort. Some suggest this would bring the UK's practice in this area closer to the more permissive approach to software patents taken by the European Patent Office.

Click here to access the case.

USB Memory Stick Inventor Loses Appeal Against Revocation Of Patent

The UK High Court has ruled that the UKIPO correctly revoked Trek 2000's patent for a USB memory stick. The court upheld the revocation on the basis that the patent lacked novelty. Trek 2000 had attempted to keep its patent to the invention by filing two amendments to the patent, however, the court found that the amendments changed the patent materially and thus should not be allowed. In addition, the court held that the Hearing Officer correctly stated that Trek 2000 had not provided sufficient information to permit the Officer to exercise his discretion to allow the amendments.

Click here to access the case.

Misleading Or Deceptive Conduct


Full Federal Court Dismisses Pan Pharmaceutical's Appeal

The Full Federal Court of Australia has dismissed Pan Pharmaceutical Ltd's ('PPL') appeal in its dispute with Australian NaturalCare Products ('ANP'). PPL was appealing, amongst other things, the Federal Court's finding that PPL had engaged in misleading or deceptive conduct. The two alleged representations were that PPL would conduct its manufacturing processes in a particular way (the 'quality assurance representation') and that PPL would supply all or most of ANP's requirements for therapeutical goods (the 'supply representation'). The Full Federal Court held, by majority, that although the supply representation was not misleading or deceptive, the quality assurance representation was misleading or deceptive as there were no reasonable grounds to make the representation upon entry into the agreement. Emmett J, in dissent, disagreed with this finding as his Honour believed that there were reasonable grounds for PPL to make both representations.

Click here to access the case.



MySpace Wins Domain Name In Arbitration

An independent expert has ruled that MySpace has the right to have the domain name '' transferred to it, despite the name having been registered to Total Web Solutions Ltd ('TWS') since 1997. MySpace alleged that TWS's use of the name had great potential for confusion and erosion of the goodwill MySpace has built up in its mark. It also alleged that TWS was unfairly taking advantage of MySpace's rights and that TWS's registration of the domain name was abusive. TWS argued that 'MySpace' was wholly descriptive of its business of providing internet space to users and that their registration of the name was not abusive. However, the arbitrator found that TWS had altered its use of the site in such a way that TWS had begun profiting unfairly from its perceived association with MySpace. The expert directed that the domain name be transferred to MySpace.

Click here to access the decision.

Policy Update

Government Releases Guidelines For 'Key Cultural Institutions'

The Government has released guidelines for organisations seeking to be prescribed as 'key cultural institutions' under the Copyright Act. Under copyright exceptions introduced in 2006, key cultural institutions are permitted to make three preservation copies of works in their collections that are 'of historical and cultural significance to Australia' where certain conditions are met. The exceptions operate in addition to the general preservation exceptions for libraries and archives and do not require the library or archive to wait for material to deteriorate or be lost or stolen before making the preservation copies. However, with limited exclusions, the exceptions only apply where a copy of the work can no longer be purchased.

Click here to access the guidelines.

Resale Right For Visual Artists Bill

Following the ALP's election commitment to introduce a resale royalty scheme for visual artists, the Resale Right for Visual Artists Bill has been listed for debate in the 2008 Autumn Parliamentary sittings. This development follows the recommendation of the Contemporary Visual Arts and Craft Inquiry (Myer) Report (2002) that a resale royalty arrangement be introduced, and the previous government's detailed discussion paper on the issue (released in 2004) which sought public submissions in relation to:

  • whether or not Australia should introduce a resale royalty;
  • what form an Australian resale royalty scheme should take;
  • how a resale royalty scheme could operate; and
  • whether or not alternative means of support for visual artists are more appropriate.

It appears that the Department of Environment, Water, Heritage and the Arts (DEWHA) will have portfolio responsibility for this matter and conduct a series of consultations before the bill is introduced to the Parliament in the coming months. A program for consultations is not yet available, however, given that the Autumn sittings finish on 20 April 2008 the consultation period will necessarily be limited. Submissions made in response to the previous government's discussion paper are available on DEWHA's website.

Click here to access the 2004 discussion paper.

IP Index To Be The First Statistical Comparison Of IP Protection

A 'Global IP Index' is currently being developed by risk/reward management firm Z/Yen to provide a statistical rating of IP protection in different jurisdictions. The Index will be based on instrumental factors (including number of cases, specialised judges and IP lawyers) and assessments of jurisdictions provided by IP practitioners' responses to a questionnaire. The Index will cover patents, trade mark, designs and copyright and is set to be published in May.

Click here for further information.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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