Australia: Intellectual Property News

Last Updated: 7 May 2008
Article by Charles Alexander

Copyright : Australia

Metricon Loses Full Federal Court Architectural Infringement Appeal

The Full Federal Court has dismissed an appeal by Metricon Homes Pty Ltd ('Metricon') against a first instance finding that Metricon had infringed the copyright of Barrett Property Group Pty Ltd ('Barrett') by reproducing a substantial part of Barrett's 'Seattle' plan without license or authorisation, and furthermore, that this infringement had been authorised by Metricon's Managing Director and Product Development Manager. On appeal, Metricon argued that the trial judge had erred in concluding that Metricon had reproduced a 'substantial part' of the Seattle plan. This argument was rejected. Following the trial judgment in Barrett Property Group Ltd v Carlisle Homes Pty Ltd [2008] (as reported in our 21 April edition), the Full Court's finding of substantiality was derived from the significant amounts of labour, skill and judgment involved in the development of the Seattle plan, and moreover from the degree of originality subsisting in the 'al fresco quadrant' which was reproduced. The Court also upheld the trial judges finding of authorisation with regards to Metricon's senior managers.

Click here to access the case.

Federal Court Dismisses Claims Of Copyright Infringement Against Cotton On

The Federal Court has dismissed claims of copyright infringement brought by Elwood Clothing Pty Ltd ('Elwood') against Cotton On Clothing Pty Ltd ('Cotton On') for the designs of a t-shirt and swing tag. Elwood alleged that Cotton On had copied its designs for the 'New Deal' t-shirt and the 'Vintage Sport Swing Tag', and thus had infringed its copyright in these designs. Although Cotton On had admitted to using the Elwood design drawings as a reference in creating its own designs, it was left to the Court to decide whether copyright subsisted in Elwood's designs and, if so, whether this protection had been infringed. Gordon J held that the designs were 'drawings' for copyright purposes, and that they possessed the requisite degree of originality, however ultimately decided that Cotton On had not copied a 'substantial part' of the designs but merely the general underlying 'idea'. A cross-claim by Cotton On, alleging the making of unjustified threats, was rejected as Cotton On had failed to bring its action when the threats were current as required by the Act.

Click here to access the case.


New Zealand Parliament Amends Copyright Laws

New Zealand has passed the Copyright (New Technologies) Amendment Bill which amends the NZ Copyright Act 1994. Significant amendments relate to internet service providers ('ISPs'), technological protection measures ('TPMs'), and format shifting provisions. The Bill adopts a 'notice and take-down' approach to the liability of ISPs for hosting infringing material. It states that ISPs 'must adopt and reasonably implement a policy that provides for termination, in appropriate circumstances, of the account with that Internet Service Provider of a repeat infringer.' The government has introduced liability for the circumvention of TPMs, but does not intend to extend this to prohibiting circumvention of 'region coding' on DVDs. Similarly, provisions concerning format shifting have been introduced but are limited to permitting the moving of music from one format to another. They have not been extended to works or other subject matter such as video.

Click here for further information.

Passing Off: Australia

Federal Court Hands Down Judgement In Cadbury/Darrell Lea Case

The Federal Court has handed down the latest decision in a long series of litigation between Cadbury Schweppes Pty Ltd ('Cadbury') and Darrell Lea Chocolate Shops Pty Ltd ('Darrell Lea'). The case was heard by Heerey J for the second time after the Full Federal Court upheld Cadbury's appeal against Heerey J's earlier decision on the grounds that his Honour had wrongly excluded evidence sought to be adduced by Cadbury from three expert witness, and thus remitted the case back to him for further hearing. Cadbury had initially alleged that the use by Darrell Lea of a shade of the colour purple in connection with its confectionary business amounted to passing off and misleading and deceptive conduct. Despite taking into consideration the evidence of the Cadbury experts in addition to the evidence adduced at the earlier hearing, Heerey J was not persuaded that the tort of passing off or allegations of misleading and deceptive conduct had been made out, stating: 'Consumers are never presented at the point of sale with a Cadbury product, in purple or not, without the Cadbury name prominently displayed. The ordinary reasonable consumer is to be credited with awareness of this when confronted with the allegedly misleading Darrel Lea product.' The two companies are also engaged in a dispute over the registration of the colour purple as a trade mark following the revision of Australian trade mark law to allow colour registrations.

Click here to access the case.

Patents: Australia

Federal Court Takes Narrow Approach To Employer Ownership Rights

The Federal Court has taken a narrow approach to the issue of when a university is entitled to ownership of inventions developed by their academic staff. The University of Western Australia ('UWA') alleged that inventions developed and patented by Dr Gray in the course of his employment were owned by UWA. UWA argued that Dr Gray had breached his contract of employment, which incorporated the provisions of UWA's intellectual property regulations, by failing to comply with these provisions in his dealings with the inventions. However, the Court held that UWA was not empowered by its enabling legislation to make regulations acquiring or interfering with its employees' property rights where it would not otherwise have had ownership rights in accordance with general legal principles, and that this was the case even where the IP regulations were expressly incorporated in the employee's contract of employment. It was also held that whether an invention is considered to be developed in the course of employment depends on the particular circumstances, including the terms on which the inventor was employed. In this case, Dr Gray's employment contract did not impose on him a 'duty to invent', nor a duty of non-disclosure. UWA's argument that Dr Gray had breached the fiduciary duties he owed as an employee was also dismissed on the basis that UWA did not have any ownership rights in the inventions that Dr Gray was obligated to preserve.

Click here to access the case.

Trade marks: International

EJC Rules In Favour Of Adidas In Trade Mark 'Stripe' Dispute

The European Court of Justice ('ECJ') has found in favour of adidas in a trade mark dispute with European retailers including H&M over its famous three stripe trade mark. adidas alleged that the selling of sports clothing bearing two stripes infringed its own mark, stating that the similarity of the marks and identity of goods was to the point that there was a likelihood of confusion for the relevant consumer. The retailers argued that the mark should not have been registered in the first place as it was not inherently distinctive, and should be available for others to use on their goods for decorative purposes. The Court held that the requirement of availability cannot in general be taken into account when assessing the scope of the exclusive rights provided by a trade mark, stating: 'The competitors of adidas cannot be authorised to infringe the three-stripe logo registered by adidas by placing on the sports and leisure garments marketed by them stripe motifs which are so similar to that registered by adidas that there is a likelihood of confusion in the minds of the public.'

Click here to access the case.

Policy Update Australia Federal Government Considers Email Interception Powers

The Federal Government is considering the implementation of new laws which will allow companies to intercept the emails and internet communications of their employees in a bid to protect Australia's cyber infrastructure from a terrorist attack. Fearing an attempt to disable the computer networks sustaining the financial and transport systems, stock exchange and electricity grid that 'would reap far greater economic damage than would&the case of a physical attack', the Government is hoping to put in place new laws by mid-2009 which will allow the interception of electronic communication of all employees of companies providing services 'critical to the economy'. Although civil liberties groups have highlighted the impact the proposed legislation could have on privacy rights, Attorney-General Robert McClelland has identified the reforms as necessary, citing recent instances of hackers infiltrating sensitive systems in Australia.

Click here for further information.

IP Issues Raised Amongst Broader Policy Issues At 2020 Summit

Leading up to this event, the broader public were invited to make submissions to the Summit in relation to 10 key policy areas. Over 8000 submissions were received in advance of the summit and amongst these, several took the opportunity to call for reform to laws regulating access to and protection of intellectual property, and content regulation in the online environment. Submissions raising IP issues were provided by the following groups:

The Library Sector

Represented by the Australian Libraries' Copyright Committee (ALCC), the National Library of Australia, TAFE Libraries Australia and the Australian Library Information Association (ALIA), this group called for:

  • a national policy which acknowledges and provides a mechanism for ensuring that digital resources are collected, preserved and made available for access to all Australians;
  • copyright policy reform to allow digitisation of institutions' collections;
  • easier access to Government information through open access licences such as Creative Commons licences; and
  • mandatory collection of digital materials under an extended legal deposit scheme (an issue which was initially raised by the Howard government and i currently the subject of a review by the Attorney-Generals' Department).

The Australian Digital Alliance (ADA)

This group raised a range of issues concerning the interests of copyright users specifically with regards to the cultural and education sectors, including:

  • copyright law reform to introduce more flexible exceptions to copyright infringement to encourage innovation; and
  • a broadening of the ISP safe harbour scheme to make it accessible to search engines and other web 2.0 sites such as YouTube and MySpace. Currently, the ISP safe harbour scheme covers only Carriage Service Providers as defined by the Telecommunications Act 1997.

Australian Lawyers for Human Rights (ALHR)

ALHR represents a network of Australian lawyers active in practising and promoting awareness of international human rights standards in Australia, and accordingly promoted the adoption of the Adelphi Charter ( and emphasised the need to limit intellectual property law protection to facilitate access to information and knowledge for all.

The National Association For The Visual Arts (NAVA)

As the peak body representing the interests of the Australian visual arts and craft sector, NAVA called for sui generis legislation to protect indigenous cultural intellectual property (ICIP). Whilst Australian law protects ICIP to the extent that it overlaps with intellectual property laws (for example, the moral rights of individual artists) it does not protect other aspects of ICIP such as a community's rights in artwork. The previous government considered a draft Bill to cover indigenous communal moral rights, however a final draft Bill was not put before the Parliament.

Copyright Collecting Societies And Owner Representative Groups

Groups that made submissions include the Australian Federation Against Copyright Theft (AFACT), Music Industry Piracy Investigations (MIPI), the Australasian Performing Rights Association and the Australasian Mechanical Copyright Owners Society (AMCOS). These groups all sought:

  • stronger IP protection and enforcement; and specifically
  • a 'notice and disconnect' regime or 3 strikes system requiring ISPs to be responsible for infringing activities on their networks and disconnecting IP addresses of users involved in infringing activity.

Submissions to the summit and the interim report of the summit are available on the 2020 website at

Whilst IP matters were not key issues considered by summit delegates, digitisation of the collections of major cultural institutions did make it onto the list of key ideas to come out of the Summit.

The final report is expected to be released next month.


UK Parliament Launches Internet Safety Guidelines

The UK Parliament's House of Lords have launched new international guidelines called 'The Good Practice Guidance for Providers of Social Networking and Other User Interactive Services' to promote safer use of social networking sites such as Facebook and MySpace. Developed in conjunction with the Australian Communications and Media Authority, the guidelines aim to create a 'global safety net' for online safety issues. Recommendations include making social networking profiles for minor aged users private by default and the implementation of reporting mechanisms for bullying and other anti-social behaviour on networking sites. The 'Guidance' will also attempt to track the evolution of the internet in respect of social networking.

Click here to access the ACMA media release.

UKIPO Releases Report On Artists Resale Rights

The UK Intellectual Property Office has released a report on the operation of the resale right in the UK in the two years since it has been introduced, and the impact that this right has had on the UK art market. The right currently only applies to living artists , but from 2010 it will be extended to works created by artists who have been dead for less than 70 years. The overall findings of the report indicated that the right has not had a significant negative impact on the UK art market.

Click here to access the UKIPO press release.

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