Category: IP and Trade Practices

Copyright, ISPs and authorisation

The Commonwealth Government released an Online Copyright Infringement discussion paper (pdf) on 30 July 2014. Responses are required by 1 September 2014. The problem the discussion paper identifies is the high level of usage of the Internet by Australians to infringe copyright by downloading illegally movies, recorded music and the like and a perceived need, following the High Court’s decision in Village Roadshow v iiNet, to compel ISPs to negotiate with copyright owners about the introduction of systems such as ‘Notice and Takedown (and Put back)’ procedures.

Successful patentee not required to amend patent to reflect adverse findings in respect of certain claims before obtaining relief for infringement

Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. Following on from his Honour’s decision reported above, JAI Products asserted that, because the only patent claims upon which Damorgold succeeded were dependent on claims that had been found invalid, it was necessary for Damorgold to amend the patent pursuant to section 105 of the Patents Act before it was entitled to an order for injunctive relief. JAI Products plainly wished to argue that the Court should exercise its discretion not to amend the patent because of culpable delay or the like.

Administrators establish power of sale over patent rights held in trust, but not without Court supervision

Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. Following on from Neobev Pty Ltd v Bacchus Distilleries Pty Ltd (Administrators Appointed) [2014] FCA 4, where the assignee of certain rights to an invention used to manufacture clean skin spirits obtained a declaration in the Federal Court that the registered proprietor of the corresponding patent held that patent on trust for itself and the applicant as co-owners in equity.

Pre-action discovery application difficult to stomach for potential respondent to patent infringement action

Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. AstraZeneca is the patentee of a proton pump inhibitor marketed in Australia as NEXIUM as a treatment for gastric reflux and other stomach acid problems. In late 2013, it sought and obtained pre-action discovery of certain documents submitted by Alphapharm to the Therapeutic Goods Administration in relation to a product, NOXICID, that treats similar conditions. By the present application, AstraZeneca sought pre-action discovery of other documents submitted to the TGA and supporting documentation, and delivery of samples of various NOXICID products.

Respondent’s prior product demonstrations of a competing article sufficient to destroy novelty of most of the claims in the patent in suit

Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. The applicants (Damorgold) were the owner and exclusive licensee of a patent for a spring assisted blind mechanism, which had a priority date of 25 August 1999. The issue of the licensee’s right to relief was stayed. Damorgold claimed that JAI Products had infringed a suite of claims of the patent and JAI Products asserted the patent was invalid. In the end, Middleton J found two claims infringed and valid.

Swimwear manufacturer’s use of prior copyright works for “inspiration” steps over the line into infringement.

Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. This was a claim of copyright infringement brought by Seafolly in respect of three artistic works printed on fabric used to manufacture various of Seafolly’s swimwear and beachwear. It alleged that certain artwork of a similar nature used by the respondent (trading as City Beach) on its products reproduced a substantial part of those works and that reproduction was not the result of independent creation.

Telstra sees red over rejection of YELLOW trade mark

Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. These were two appeals from decisions by delegates of the Registrar to allow registration by Telstra of the mark YELLOW in respect of, among other things, online and print phone directories. Each of the applicants (respectively PDCA and Yellowbook) was unsuccessful in opposing Telstra’s application before the Registrar. Yellowbook also appealed the delegate’s decision to allow Telstra’s opposition to Yellowbook’s own application for YELLOWBOOK for the same goods and services. Murphy J dismissed all three appeals.

The hazards of using the Internet to source promotional images

Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. Mr Tyler is a Hawaii based photographer who sells and licenses his works as stock photographs. The respondent is a travel agent whose business is conducted over the Internet. She used one of Mr Tyler’s photographs without obtaining a licence from him, and rather than take down the image when confronted with her conduct sought to blame an unnamed web developer.

2 years gaol for contempt

Failure to comply with an injunction not to infringe someone’s intellectual property right is not only an infringement of that intellectual property right but also a contempt of court. The sanctions for contempt of court are many including, potentially, fines and imprisonment – even in intellectual property cases. The Full Federal Court has confirmed that imprisonment was the appropriate sanction for Mr Vladimir Vaysman’s repeated breaches of injunctions not to infringe trade mark and copyright, but reduced the sentence from 3 years to 2 years.