Australia: Intellectual Property News: Copyright

Last Updated: 21 April 2008
Article by Charles Alexander

Federal Court Finds Carlisle Homes Infringed Architectural Copyright

The Federal Court has found that Carlisle Homes Pty Ltd ('Carlisle') infringed the copyright of Barrett Property Group Pty Ltd ('Barrett') by reproducing a substantial part of Barrett's home designs, namely the 'al fresco quadrant' of the home design. The Court held that copyright subsisted in the al fresco quadrant as this was a design feature that was unique at the time it was introduced and which formed a key part of a commercially successful design, and thus was not trivial or unoriginal as argued by Carlisle. Similarly, Carlisle's argument that the al fresco quadrant 'was the product of negligible or trivial skill, labour and effort' and therefore not a substantial part of Barrett's work was rejected by the Court, who regarded the quadrant as an essential part of the house and the result of significant efforts. Finally, it was held that Carlisle had used Barrett's design in creating its own design, and that a substantial part of Barrett's work had been copied because the al fresco quadrant was about one third of the total floor area, thus comprising an 'essential part of the house'. As sufficient similarity between the two designs existed, the charge of infringement was made out.

Click here to access the case.

Microsoft Awarded Indemnity Damages For Copyright Infringement

The Federal Magistrates Court has awarded Microsoft Corporation ('Microsoft') both party/party costs and costs on an indemnity basis for copyright infringement as per the judgment given in the principle proceedings: Microsoft Corporation & Ors v Mayhew [2008] (reported in our 29 February issue.) It was found that the conduct of the respondent, Mayhew, was unreasonable and had 'unnecessarily frustrated the conduct of this matter.' Examples of unreasonable conduct highlighted by the Court included Mayhew's initial avoidance of service, subsequent failure to comply with orders of the Court and appointment of a lay advocate. Furthermore, Mayhew's rejection of both an offer of compromise made pursuant to the Rules and a Calderbank offer was held to be unreasonable in light of the substantially less favourable outcome of the proceedings, and thus was a relevant factor in assessing costs. As a result, Microsoft was awarded party/party costs until the date when the Calderbank offer was made and costs on an indemnity basis thereafter.

Click here to access the case.

Federal Magistrates Court Awards Substantial Damages For Music Copyright Infringement

The Federal Magistrates Court has awarded the Australasian Performing Right Association ('APRA') significant damages for copyright infringements by the 'Options Tavern' and 'Heat' nightclub venues. The Court held Options had performed music in public by means of a background music system without a license and Heat had performed music in a manner that brings the premises into a class known as a featured recorded music venues, also without a license. Additionally, Robert Botazzi and Simon Burtonclay were held to have authorised the infringements due to the positions of authority they held with respect to the premises. APRA was awarded compensatory relief of $5,688 and $477.70 interest for the Options breach, and compensatory relief of $16,952.83 and $4,698.76 interest for the Heat breach. APRA also claimed additional damages against the respondents for the flagrant nature of the infringements, and for Botazzi's history of repeat infringement. The Court awarded additional damages of $180,000 for the Options breach, and of $175,000 for the Heat breach.

Click here to access the case.

ARIA Licence Aims To Crack Down On Pirate DJs

The Australian Recording Industry Association ('ARIA') has announced the creation of a new 'one-stop shop' license which will allow DJs to get permission from most major record labels to format shift their music for use at gigs, leaving no excuse for shifting music onto laptops in breach of the Copyright Act. A corresponding license for the musical works will also be offered through the Australasian Mechanical Copyright Owners Society ('AMCOS'). Current criminal penalties for DJs involved in music piracy include fines of up to $60,500 and 5 years imprisonment per offence, and bar and nightclub owners may also be held liable for authorising copyright infringement at their premises.

Click here to access the MIPI press release.



Patent Portfolio Sells For Record US $6 Million

A portfolio of 82 patents relating to processing of digital data in bitstreams has sold to an unkown buyer for US $6 million at an IP auction in San Francisco. The sale exceeded the previous highest price paid for an IP right at auction, which was US $4.45 million in 2007. Two other lots offered at the same auction sold for at least US $1 million, with the complete value of sales made totalling just under US $20 million for 82 lots.

Click here for further information.

Trade marks


USPTO Rules Motorola 'Chirp' Not A Trade Mark

The Trial and Appeal Board ('TTAB') of the United States Patent and Trademark Office ('USPTO') has ruled that the signature 'chirp' made by Motorola's two-way radios, which are used mainly by law enforcement officers and emergency personnel, cannot be registered as a trade mark. Motorola's attempt to register the sound was challenged by Nextel, who argued that 'first the sound fails to function as a mark and second, that even if used as a mark, the chirp is not inherently distinctive and has not acquired distinctiveness.' The TTAB agreed with Nextel, citing Motorola's failure to promote recognition of the chirp as a trade mark as a salient factor in the failure of the application. This case is one of a number of sound mark decisions in the area of nontraditional marks.

Click here for further information.

'Parody' Held Not To Infringe Wal-Mart Trade Mark

US retail giant Wal-Mart has lost a trade mark infringement suit against computer store owner Charles Smith, who has been selling merchandise branded with the terms 'Wal- Qaeda' and 'Walocaust' from two websites with the same names. Atlanta District Judge Timothy C. Batten Sr. adopted the view that famous marks, due to the strength of their reputations, deserved less protection than their less well-known counterparts, saying 'the fact that the real Wal-Mart name and marks are strong and recognisable makes it unlikely that a parody – particularly one that calls to mind the genocide of millions of people, another that evokes the name of a notorious terrorist organisation – will be confused with Wal-Mart's real products.'

Click here for further information.



Seven Network And IOC Broker Historic Deal To Screen Games Clips

In an international first, Internet sites in Australia will be permitted to show short video clips of Olympic events during the Beijing Games, although these websites will need to be 'geoblocked' so they cannot be seen by users outside Australia. Under the agreement between Seven Network and the International Olympic Committee ('IOC'), non-official sites that are not rights holders will be allowed to show three minutes of Olympic footage every day. The new rules are similar to the Olympic news coverage rules set by the IOC for non-rights holder television networks, and stipulate that footage may only be used by bona fide new organisations and only after it has been broadcast by rights holding networks Seven and SBS.

Click here for further information.


Virgin Media Trials Anti-Online Music Piracy Project

Internet service provider and Telecom company Virgin Media is likely to become the first UK internet company to crack down on subscribers who download music illegally in the most recent development in rights holders' efforts to involve ISPs in the fight against online piracy (see our 2 April issue for similar developments in Japan.) Virgin Media has been collaborating with music trade body BPI on a project which could see infringing customers sent warning letters and ultimately have their internet service disconnected if they ignore the warnings and continue to infringe. A Virgin Media spokesperson has stated that Virgin 'is taking this problem seriously and would favour a sensible voluntary solution', however the UK Government has indicated that it will implement legislation by April 2009 unless ISPs came to a voluntary agreement with the film and music industries.

Click here for further information.

Policy Update Australia

IP Australia And USPTO Launch Patent Prosecution Highway

IP Australia and the US Patent and Trademark Office ('USPTO') have announced the April launch of a new trial cooperation initiative called the Patent Prosecution Highway ('PPH'). The PPH aims to expedite the patent application approval process by allowing an applicant who has received a ruling from either the USPTO or IP Australia that at least one claim in an application is patentable, to request that the other office fast track the examination of corresponding claims in corresponding applications. The initiative is expected to run for an initial period of 12 months, but may be extended or terminated earlier depending upon the volume of activity.

Click here to access the IP Australia Press Release.


European Report Suggests Search Engines Delete Data After Six Months

A European Commission advisory body known as the Article 29 Working Party has published a report which suggests that search companies should delete data collected about their users after six months. The report, which focused on advertising-supported search engines as opposed to search functions embedded in web sites, indicates that personal user data should not be retained for longer than necessary for the specific purposes of processing, stating: 'in view of the initial explanations given by search engine providers on the possible purposes for collecting data, the Working Party does not see a basis for a retention period beyond 6 months.' Highlighting above all the need for greater privacy in search engines, the suggestions may adopted by the European Commission in due course.

Please 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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