DIPLOMA IN LAWLEGAL PROFESSIONADMISSION BOARD

LAW EXTENSION COMMITTEE

LAW EXTENSION COMMITTEE SUBJECT GUIDE

22 INTELLECTUAL PROPERTY SUMMER SESSION 2017-18

This Guide includes the Law Extension Committee’s course information and teaching program and the Legal Profession Admission Board’s syllabus. The syllabus is contained under the heading “Prescribed Topics and Course Outline” and has been prepared in accordance with Rule 27H(a) of the NSW Admission Board Rules 2015.

Course Description and Objectives 1Lecturer 1Assessment 1-2March 2018 Examination 2Lecture Program 3Weekend Schools 1 and 2 3-4Texts and Materials 5-6Prescribed Topics and Course Outline 6-33Compulsory Assignment 34Assignment QuestionSample Examination Questions

3434-36

LAW EXTENSION COMMITTEE SUMMER 2017-1822 INTELLECTUAL PROPERTY

COURSE DESCRIPTION AND OBJECTIVES

The law of intellectual property includes the areas of copyright, design, patents, confidential information, business reputation and trade marks. The course provides a general introduction to intellectual property, outlining, for each principal category of protection, how the rights arise, the nature of the rights, ownership and exploitation as well as infringement and remedies.

Throughout the course, key policy issues are considered including the rationale and role of intellectual property law, the overlap between areas of protection, the growing importance of Australia’s obligations under international treaties and the interaction of intellectual property law with other areas such as trade practices law.

LECTURER

Ms Beth Oliak, BSEE (Northwestern University), JD (Washington University in St Louis School of Law) Ms Oliak is a barrister specialising in intellectual property and general commercial litigation. Prior to relocating to Australia, she practiced exclusively in patent litigation for a number of years at a major New York law firm. She is also a registered patent attorney in the United States and has drafted and prosecuted numerous patent applications. She holds an undergraduate degree in electrical engineering and thus her focus has been primarily on computer hardware and software patents. She has lectured, given presentations and prepared articles regarding issues relating to patent law on a number of occasions.

Ms Therese Catanzariti, BEc, LLB (Hons 1)(Syd), LLM (Merit) (Lond)

Ms Catanzariti is a barrister at the NSW Bar and specialises in intellectual property, commercial litigation, wills/probate and taxation. She was previously a senior associate at Mallesons Stephen Jaques (now King Wood Mallesons), as well as senior legal counsel at Nokia Corporation and GE Healthcare in Finland and Sweden. She is a graduate of the University of Sydney, holding Bachelor of Economics (Accounting), Bachelor of Laws (Hons 1) degree, and a graduate of the University of London (QMW) holding a Master of Laws (Merit) degree. Ms Catanzariti has also lectured in intellectual property at UTS, copyright law at UTS and University of Sydney, designs law at UTS, and Entertainment Law at University of New South Wales.

ASSESSMENT

To be eligible to sit for the Board’s examinations, all students must complete the LEC teaching and learning program, the first step of which is to ensure that you have registered online with the LEC in each subject for which you have enrolled with the Board. This gives you access to the full range of learning resources offered by the LEC.

To register with the LEC, go to www.sydney.edu.au/lec and click on the WEBCAMPUS link and follow the instructions. Detailed guides to the Webcampus are contained in the material distributed by the LEC, in the Course Information Handbook, and on the Webcampus.

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Eligibility to Sit for Examinations

In accordance with the Legal Profession Admission Rules, the LEC must be satisfied with a student’s performance in a subject in order for the student to be eligible to sit for the examination, conducted by the Legal Profession Admission Board (LPAB). Assignments are used to assess eligibility.

Students are expected to achieve at least a pass mark of 50% in assignments to be eligible to sit for examinations. However, a category of “deemed eligible” has been introduced to offer students whose assignment mark is between 40-49% an opportunity to sit for the examination. In these circumstances students are often advised not to sit. A mark below 40% means a student is not eligible to sit for the examination.

Assignments as part of the Board’s Examinations

Assignment results contribute 20% to the final mark in each subject.

The Law Extension Committee (LEC) administers the setting and marking of assignments. The LEC engages the LPAB’s Examiners to assess or supervise the assessment of assignments.

Submission

Assignments must be received by 11:59pm on the due date unless an extension has been granted. Extensions must be requested by email prior to the due date. Specific supporting evidence must be provided. Assignments that are more than ten days late will not be accepted. Late assignments attract a penalty of one mark out of 20, or 5% of the total marks available, per day.

Assessment

Assignments are assessed according to the “Assignment Grading and Assessment Criteria” outlined in the Guide to the Presentation and Submission of Assignments. Prior to the examination, assignments will be returned to students and results posted on students’ individual results pages of the LEC Webcampus. Students are responsible for checking their results screen and ascertaining their eligibility to sit for the examination.

Review

Where a student’s overall mark after the examination is between 40-49%, the student’s assignment in that subject will be included in the Revising Examiner’s review. The final examination mark is determined in accordance with this review. Assignment marks will not otherwise be reviewed.

MARCH 2018 EXAMINATION

Candidates will be expected to have a detailed knowledge of the six (6) principal types of intellectual property studied in the course, namely: copyright, industrial designs, patents, confidential information, business reputation (passing off and related statutory actions) and trade marks.

Candidates will be assessed on the requirements for obtaining each of these intellectual property rights, how infringement of such rights is determined, and the remedies available in the event infringement is established. Candidates will also be expected to have an appreciation for the interaction between the six (6) principal types of intellectual property studied in the course.

All enquiries in relation to the examination should be directed to the Legal Profession Admission Board.

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LECTURE PROGRAM

This elective subject will be offered by way of four evening lectures (which will be webcast for students who live outside Sydney) on Tuesdays 5 December, 12 December, 30 January and 6 February and at Weekend School classes.

Time Venue Topic

Saturday 25 November 2017 4pm - 8pm

Abercrombie Seminar Room 1080

Introduction to Intellectual PropertyTrade Marks

Sunday 26 November 2017 4pm – 8pm

Abercrombie Seminar Room 1080

Patents

Tuesday 5 December 2017 6pm – 8pm

Eastern Ave Seminar Room 119

Passing Off

Tuesday 12 December 2017 6pm – 8pm

Eastern Ave Seminar Room 119

Confidential Information

Tuesday 30 January 2018 6pm – 9pm

Castlereagh St Seminar Room 1813

Copyright

Saturday 3 February 2018 4pm - 8pm

New Law School Annexe Seminar Room 344

Copyright

Sunday 4 February 2018 4pm – 8pm

New Law School Annexe Seminar Room 344

Copyright/ Industrial Designs/Copyright/Design Overlap

Tuesday 6 February 2018 6pm – 9pm

Castlereagh St Seminar Room 1813

Design

WEEKEND SCHOOLS 1 AND 2

These programs are a general guide, and may be varied according to need. Readings are suggested to introduce you to the material to be covered in the lecture, to enhance your understanding of the topic, and to encourage further reading. You should not rely on them alone.

Weekend School 1

TIME MAJOR TOPICS KEY READINGSaturday 25 November 2017: 4.00pm – 8.00pm in Abercrombie Seminar Room 1080

4.10pm-5.20pm Introduction to Intellectual PropertyTrade Marks

See readings under "Prescribed Topics and Course Outline"5.30pm-6.35pm Trade Marks

6.45pm-8.00pm Trade Marks

Sunday 26 November 2017 4.00pm – 8.00pm in Abercrombie Seminar Room 1080

4.10pm-5.20pm Patents

3

See readings under "Prescribed Topics and Course Outline"

5.30pm-6.35pm Patents

6.45pm-8.00pm Patents

Weekend School 2

TIME MAJOR TOPICS KEY READINGSaturday 3 February 2018: 4.00pm – 8.00pm in New Law School Annexe Seminar Room 344

4.10pm-5.20pm Copyright

See readings under "Prescribed Topics and Course Outline"

5.30pm-6.35pm Copyright

6.45pm-8.00pm Copyright

Sunday 4 February 2018: 4.00pm – 8.00pm in New Law School Annexe Seminar Room 344

4.10pm-5.20pm Copyright

See readings under "Prescribed Topics and Course Outline"

5.30pm-6.35pm Industrial Designs

6.45pm-8.00pm Copyright/Design Overlap

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TEXTS AND MATERIALS

COURSE MATERIALS

Supplementary Materials in Intellectual Property (available via the link to the Law Library in the Course Materials section of the LEC Webcampus)

Guide to the Presentation and Submission of Assignments (available on the LEC Webcampus)

PRESCRIBED MATERIALS

LexisNexis Intellectual Property Collection 2017, LexisNexis. 2018 (publishing October 2017) Stewart, Griffith & Bannister, Intellectual Property in Australia, 5th ed. LexisNexis, 2014 (SGB) (6th

edition due November 2017) Ricketson and Richardson, Intellectual Property: Cases, Materials and Commentary, 5th ed. Lexis

Nexis, 2013 (RR)

REFERENCE MATERIALS

Australian current texts

Davison, Monotti, Wiseman Australian Intellectual Property Law, 3rd edition, Cambridge Press, 2015 (DMW 2015) Commentary only, no case extracts.

Price, Bodkin, Arnold, Adjei, Intellectual Property Commentary and Materials Casebook, 6th edition, Thomson Reuters, March 2017

Other useful Australian texts

Ricketson, The Law of Intellectual Property, Thomson Reuters, 2d ed., 2001 Shanahan, Australian Law of Trade Marks and Passing Off, 6th ed. Thomson Reuters, 2016 Bodkin, Patent Law in Australia, 2d ed. Thomson Reuters, 2014 Phillips, Protecting Designs Law and Litigation, Thomson Reuters, 1994 Elkington, Hall & Kell, Annotated Trade Marks Act 1995, LexisNexis, 2010

United Kingdom texts

Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 8th ed. Sweet and Maxwell, 2013

Skone James, Copinger and Skone James on Copyright, 17th ed. Sweet and Maxwell, 2016

Loose leaf and online services

CCH, Australian Industrial and Intellectual Property: Copyright, Designs, Patents, Trade Marks, Legislation and Cases

Lahore, Copyright and Designs, LexisNexis Lahore, Patents, Trade Marks and Related Rights LexisNexis Garnsey, Dwyer, Duffy and Covell, Intellectual Property in Australia: Patents, Designs and Trade

Marks, LexisNexis

Periodicals

Australian Copyright Council Bulletin Australian Intellectual Property Law Bulletin Australian Intellectual Property Law Journal Copyright Reporter Intellectual Property Forum

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Blogs

http://ipwars.com/ - Warwick Rothnie (Melbourne IP barrister)http://ipkitten.blogspot.com.au/ - IPKat – English/EU IP bloghttp://www.patentlyo.com/ - Patently O – US IP blog

PRESCRIBED TOPICS AND COURSE OUTLINE

Many cases listed are relevant for more than one topic area. Most cases are reported in both the Intellectual Property Reports (“IPR”) and the Australian Intellectual Property Cases (“AIPC”).

An asterisk (“*”) in front of a case denotes that the case is recommended reading for this course. Where possible, the location of case extracts in the text books is identified next to the case reference.

1. INTRODUCTION TO INTELLECTUAL PROPERTY

Relevant chapter for Topic 1 in Prescribed Materials

RR: Ch1 SGB: Ch 1 and 2

(1) History of intellectual property Bakers Marking Law 1266 Venetian Patent Statute 1474 Statute of Monopolies 1623 Stationers Company Statute of Anne 1709

(2) Knowledge as property

Intellectual Property philosophy – personal, economic, market Millar v Taylor (1769) 4 Burr. 2303; 98 ER 201

(3) Intellectual property as property(4) Public domain(5) International aspects of intellectual property protection

Berne Convention for Protection of Literary and Artistic Works 1886 Rome Convention for Protection of Performers, Producers of Phonograms and

Broadcasting Organisations 1961 Paris Convention on Patents and Trade Marks WTO Agreement on Trade Related Aspects of Intellectual Property 1995 Copyright (International Protection) Regulations 1969

(6) Australian statutes Constitution section 51(xxix) Copyright Act 1968 Patents Act 1990 Trade Marks Act 1995 Designs Act 2003 Australian Consumer Law (part of Competition and Consumer Act 2010)

CopyleftCreative CommonsOpen Source

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Parliament’s right to create and curtailJT International SA v Commonwealth of Australia [2012] HCA 43 (Tobacco Plain Packaging)

“Rethinking the role of intellectual property”, Dr Francis Gurry, Director-General WIPO, WIPO Seminar, 22 August 2013

2. COPYRIGHT

Relevant chapters for Topic 2 in Prescribed Materials

SGB: Ch 5, 6, 7, 8.and 9 DMW 2012: Ch. 5, 6, 7, 8, and 9 PBA: 2012 Part 2 RR: Part 2

(1) What is copyright?

(a) Definitions of copyright

(b) Copyright as property: s196 Copyright Act (“CA”)

Dickens, Dickens v Hawksley [1935] 1 Ch 267 Pacific Film Laboratories v Commissioner of Taxation (1970) 121 CLR 154 JR Consulting v Cummings [2014] NSWSC 1252

(c) Fundamental distinction – ‘form of expression’ vs ‘ideas and information’

Donoghue v Allied Newspapers Ltd [1938] Ch 106 Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 Autodesk v Dyason (No 1) (1992) 66 ALJR 233 L B (Plastics) Ltd v Swish Products Ltd [1979] R.P.C. 551 Zeccola v Universal City Studios [1982] 46 ALR 189 Elwood v Cotton On (2008) 80 IPR 566

(2) Origin and rationale of copyright

Statute of Anne 1709 Millar v Taylor (1769) 4 Burr. 2303; 98 ER 201

(3) Subsistence of copyright

The four requirements for copyright protection:

(a) Authorship and connecting factors

created by a ‘qualified person’: ss 32(4), 84, 184 CA

(b) Subject matter

‘works’ and ‘subject matter other than works’: ss10, 32, 89-92 CA

(c) Material form: ss10, 22 CA

Nine Network Australia v Australian Broadcasting Corp (2000) 48 IPR 335 (Y2K fireworks)

(d) Originality: s32 CA

Walter v Lane [1900] AC 539 * University of London Press v University Tutorial Press [1916] 2 Ch 601 Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1985) 5 IPR 213 Feist Publications v Rural Telephone Service 111 S Ct 1282 (1991) * Telstra Corporation v Desktop Marketing Systems Pty Ltd (2001) 51 IPR 257

7

* Nine Network Ltd v IceTV Pty Ltd (2009) 239 CLR 458; * Telstra Corporation Limited v Phone Directories Company Pty Ltd (2010) 90 IPR

1 Ladbroke Football Ltd v William Hill Football Ltd [1964] 1 WLR 273 JR Consulting v Cummings [2016] FCAFC 20

(4) Works

The four types of ‘works’ under Part III CA:

(a) Literary

(i) Types of literary works

(ii) General principles

* University of London Press v University Tutorial Press [1916] 2 Ch 607 Hollinrake v Truswell (1894) 3 Ch D 420

(iii) Short and insubstantial literary works

* Exxon Corporation v Exxon Insurance Consultants [1982] RPC 69 Ladbroke (Football) Limited v William Hill (Football) Limited [1964] 1 WLR

273 Francis Day & Hunter Ltd v Twentieth Century Fox Ltd [1940] AC 112 Nine Network Ltd v IceTV Pty Ltd (2009) 239 CLR 458 State of Victoria v Pacific Technologies Pty Ltd (No.2) [2009] FCA 737 Fairfax Media Publications Pty Ltd v Reed International Books Australia

Pty Ltd (2010) 88 IPR 11 Elwood Clothing v Cotton On Clothing (2008) 80 IPR 566

(iv) Computer programs

Computer Edge Pty Ltd v Apple Computer Inc (1986) 161 CLR 171 * Autodesk v Dyason (1991) 22 IPR 163 * Data Access Corporation v Powerflex Services Pty Ltd (1999) 45 IPR 353 JR Consulting v Cummings [2016] FCAFC 20

(b) Dramatic

* Green v Broadcasting Corporation of New Zealand (1988) 16 IPR 1 Nine Network Australia Pty Ltd v Australian Broadcasting Corporation (2000) 48

IPR 335 * Telstra Corporation Ltd v Royal & Sun Alliance Insurance Australia Ltd (2003)

57 IPR 453 * Zeccola v Universal City Studios (1982) 46 ALR 189 Australian Olympic Committee Inc v The Big Fights Inc (1999) 46 IPR 53 at 63-67 Creation Records v News Group Newspapers Ltd (1997) 39 IPR 1 (photo shoot

for ‘Oasis’ album cover) Norowzian v Ark Ltd; Guinness Worldwide [1998] EWHC 315 (Guinness

‘Anticipation’ ad)

(c) Musical

CBS Records Australia Ltd v Gross (1989) 15 IPR 385 EMI Songs Australia Pty Limited v Larrikin Music Publishing Pty Ltd (2011) 90

IPR 50

(d) Artistic

(i) Definition: s10(1) CA

(ii) Paintings

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Cummins v Vella [2002] FCAFC 218 (Full Court unreported 16/07/2002)

(iii) Sculptures

Creation Records v News Group Newspapers Ltd (1997) 39 IPR 1

(iv) Drawings

* Elwood Clothing v Cotton On Clothing (2008) 80 IPR 566 at [14], [47]-[54] (definition of drawing)

* Interlego AG v Croner Trading (1992) 111 ALR 577 LED Builders v Eagle Homes (1999) 44 IPR 24 Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR

309 Tamawood Limited v Henley Arch Pty Ltd [2004] FCAFC 78 (31 March

2004) Barrett Property Group Pty Ltd v Carlisle Homes Pty Ltd [2008] FCA 375

(alfresco quadrant) Lott v JBW & Friends [2000] SASC 3 (opera in the outback)

(v) Engravings

(vi) Photographs

(vii) Buildings and models of buildings

(viii) Works of artistic craftsmanship

Cuisenaire v Reed (1963) VR 719 Merlet v Mothercare plc (1984) 2 IPR 456 George Henscher v Restawhile Upholstery (Lanes) Limited (1975) RPC

31 Coogi Australia Pty Limited v Hysport International Pty Limited (1998) 41

IPR 593 Sheldon v Metrokane (2004) AIPC 91-972 * Burge v Swarbrick [2007] HCA 17; (2007) 234 ALR 204

(5) Subject Matter other than works

(a) Cinematograph films

Aristocrat Leisure Industries Pty Limited v Pacific Gaming Pty Limited (2001) 50 IPR 29

Galaxy Electronics Pty Ltd v Sega Enterprises Ltd (1997) 37 IPR 462 Sega Enterprises Ltd v Gottlieb Electronics Pty Ltd (1996) 35 IPR 161

(b) Sound and Television Broadcasts

* Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (2004) 59 IPR 1 (“The Panel” case), esp at [68], [100]-[102] and [142]

WIN Corporation Pty Ltd -v- Nine Network Australia Pty Limited [2016] NSWCA 297 (meaning of broadcast)

(c) Published editions of works

Protection for the skill and labour in presenting material in an edition (ie. the layout as distinct from the words used in the story). Applies to newspaper stories, magazines and the like.

Nationwide News Pty Limited v Copyright Agency Limited (1996) 134 IPR 53

(d) Sound recordings

CBS Records Australia Limited v Telmak Teleproducts (Australia) Pty Limited (1987) 9 IPR 440

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(e) Performers’ protection

(6) Ownership

(a) Works – owner is ‘author’

(i) ss10(1) (“work of joint authorship”), 35(2), 35(3), 35(4), 35(5), 35(6) CA

(ii) Co-ownership/joint owners

Primary Health Care Pty Ltd v Commissioner of Taxation (2010) 86 IPR 259

Prior v Sheldon (2000) 48 IPR 301

(iii) Commissioned works

(iv) Journalists’ copyright

(v) Employee authors

*Redrock Holdings Pty Ltd v Hinkley (2001) 50 IPR 565 Insight SRC IP Holdings Pty Ltd v The Australian Council for Educational

Research Limited [2012] FCA 779 (Department of Education questionnaire)

JR Consulting v Cummings [2014] NSWSC 1252

(vi) No human author

Telstra Corporation Limited v Phone Directories Company Pty Ltd (2010) 90 IPR 1

(vii) Community ownership

Bulun Bulun v R & T Textiles Pty Ltd (1998) 157 ALR 193

(viii) Equitable Ownership

JR Consulting v Cummings [2014] NSWSC 1252

(b) Subject matter other than works – owner is ‘maker’

s22 CA National Rugby League v Singtel Optus (Optus Now case) (2012) 95 IPR 321

(c) Duration

(7) Exclusive Rights

(a) Works: s31 CA

(i) Reproduction

CBS Records Australia Ltd v Telmak Teleproducts (Aust) Pty Ltd (1987) 9 IPR 440

King Features Syndicate v O&M Kleeman [1941] AC 417

(ii) Publication

Avel Pty Ltd v Multicoin Amusements Pty Ltd (1990) 171 CLR 88

(iii) Public performance

APRA v Tolbush (1985) 62 ALR 521 *APRA v Commonwealth Bank (1992) 25 IPR 157

(iv) Communication to the public

* Telstra v APRA (1997) 191 CLR 140

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* Roadshow v iinet (trial judge decision) (2011) 89 IPR 1 National Rugby League v Singtel Optus (Optus Now case) (2012) 95 IPR

321

(b) Subject matter other than works

Cinematograph films: s86 CA Television and sound broadcasts: s87 CA Published editions of works: s88 CA Sound recordings: s85 CA

(c) Performers

ss248G and 248J CA

(8) Assignment and licensing

(a) Assignment

ss196(1), 197 CA Australian Olympic Committee Inc v The Big Fights Inc (1999) 46 IPR 53 Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd [2009] FCA 799 Acorn Computers v MCS Microcomputers (1984) 4 IPR 214 Insight SRC IP Holdings Pty Ltd v Australian Council for Educational Research

Ltd [2013] FCAFC 62

(b) Licensing

(i) ss196(2), 197 CA

(ii) exclusive licence (s119)

(iii) implied licence

Beck v Montana (1963) 80 WN NSW 1578 *Copyright Agency Limited v State of New South Wales (2008) 233 CLR

279 Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (No 2) [2012] FCAFC 102

(generic drug manufacturer not implied right to use original patent owner product information documents)

(c) Statutory licences

(d) Collecting societies

APRA – Australian Performing Right Association (musical works) PPCA – Phonographic Performance Company Ltd (sound recordings) CAL – Copyright Agency (literary works) Screenrights (cinematograph films) Viscopy (artistic works) (managed by Copyright Agency)

(9) Infringement - introduction

Direct and indirect infringement

(10) Direct infringement of works

(a) Substantiality (s14 CA)

(i) Works

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Hawkes & Sons (London) Ltd v Paramount Films Services [1934] 1 Ch 593 Ladbroke (Football) v William Hill [1964] I All ER 465; 1 WLR 273 Autodesk v Dyason [2002] FCA 1206 Data Access Corporation v Powerflex Services Pty Limited (1999) 45 IPR

353 Icetv v Pty Ltd v Nine Network Australia Pty Ltd (2009) 80 IPR 451 EMI Songs Australia v Larrikin Music Publishing (2011) 90 IPR 50

(ii) Other subject matter

Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (2004) 59 IPR 1

(b) Need for a causal connection

*Corelli v Gray (1913) 29 TLR 570 *Francis Day & Hunter Ltd v Bron [1963] Ch 587 SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 EMI Songs v Larrikin Music Publishing (2011) 90 IPR 50

(c) Need for resemblance or objective similarity

(i) General

* Kenrick v Lawrence (1890) 25 QB 99

(ii) Particular example: Literary and dramatic works: plots and characters

* Universal City Studios Inc v Zeccola [1982] AIPC 90-019

(iii) ‘Look and feel ’

* Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd (2008) 80 IPR 566

(d) Proof and evidence

Allam v Aristocrat (2012) 95 IPR 242

(11) Authorisation of infringement of copyright in works and other subject matter

(a) General

ss36(1) and 101(1) CA UNSW v Moorhouse (1975) 133 CLR 1 Roadshow Films Pty Ltd v iiNet Limited (2012) 95 IPR 29; National Rugby League v Singtel Networks (2012) 201 FCR 147 (“Optus Now”

case) JR Consulting v Cummings [2016] FCAFC 20

(b) Peer to peer networks

Universal Music v Cooper [2006] FCAFC 187 (18 December 2006) (s112E does not preclude an infringement finding on the authorisation ground under s36 or s101)

Sharman Networks Ltd v Universal Music Australia Pty Ltd (2005) 220 ALR 1 (appeal to Full Federal Court was heard in February 2006, but no decision due to settlement)

A&M Records v Napster Inc 239 F3d 1004 (9th Cir 2001) 50 IPR 232 (US case) MGM Studios Inc v Grokster Ltd (US Supreme Court, 27 June 2005)

Roadshow Films Pty Ltd v iiNet Limited (2012) 95 IPR 29

Universal Music Australia Pty Limited v TPG Internet Pty Ltd [2017] FCA 435

Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503(c) Directors

JR Consulting v Cummings [2016] FCAFC 20

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(12) Secondary infringement

Importation and commercial dealings with infringing copies:

ss37 and 38 CA (works) ss102 and 103 CA (other subject matter) Computermate Products (Aust) Pty Ltd v Ozi-Soft Pty Ltd (1988) 12 IPR 487 Lorenzo & Sons Pty Ltd v Roland Corporation (1992) 23 IPR 377

(13) Defences

(a) Exceptions and limitations on protection in general

(b) Fair dealing: ss40, 41, 41A and 42 (for Pt IV – see 103A-103C)

De Garis v Neville Jeffress Pidler Pty Limited (1990) 18 IPR 292 TCN Channel Nine v Network Ten 50 IPR 335 (The Panel case) (trial – Conti J);

(2002) 55 IPR 112 (Full Court) s41A – the ‘parody or satire’ defence Campbell v Acuff Rose 510 U.S. 569 (1994)

Productivity Commission Report into Intellectual Property Arrangements 2016

http://www.pc.gov.au/inquiries/completed/intellectual-property/report

(c) Other defences

(d) Other protection available to copyright owners

Technological protection measures: Part 5, Div 2A (ss116AK-116D) Stevens v Kabushiki Kaisha Sony Computer Entertainment (2005) HCA 58

(14) Remedies

RR 2005 at 452-462

(a) Remedies in general

(b) Damages under s115 CA

(i) Compensatory damages: s115(2)

Autodesk Australia Pty Limited v Cheung (1990) 17 IPR 69 Prior v Sheldon (2000) 48 IPR 301 Aristocrat Technologies Australia v DAP Services (Kempsey) Pty Ltd

[2007] FCAFC 40 (29 March 2007) Elwood v Cotton On (2009) 81 IPR 378; (decision on damages) Norm Engineering v Digga Australia [2008] FCAFC 33 ; (2007)162 FCR 1 Insight SRC IP Holdings Pty Ltd v Australian Council for Educational

Research Ltd [2013] FCAFC 62 Seafolly Pty Ltd v Fewstone Pty Ltd [2014] FCA 321

Dallas Buyers Club LLC v iiNet Limited (No 4) [2015] FCA 838(ii)

(ii) Additional damages: s115(4)

APRA v Pashalides 2000 (2000) 48 IPR 610 Autodesk Australia Pty Limited v Cheung (1990) 17 IPR 69 Allam v Aristocrat (2012) 95 IPR 242 (commercial scale)

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Insight SRC IP Holdings Pty Ltd v The Australian Council for Educational Research Limited [2012] FCA 779

Bailey v Namol Pty Ltd (1994) 30 IPR 147 (surreptitious) Dynamic Supplies Pty Limited v Tonnex International Pty Limited (No 3)

[2014] FCA 909

(iii) Account of profits

Dart v Décor (1993) 179 CLR 101 Bugatti GmbH v Shine Forever Men Pty Ltd (No 2) [2014] FCA 171 (trade

mark case)

(iv) Joint tortfeasors

Keller v LED Technologies Pty Ltd [2010] FCAFC 55 (design case)

(v) Injunctions

Universal Music Australia Pty Limited v TPG Internet Pty Ltd [2017] FCA 435

(vi) Innocent Infringers

Henley Arch Pty Ltd v Lucky Homes Pty Ltd [2016] FCA 1217

(c) Offences – Part V, Div 5 CA

(15) Moral Rights – Part IX CA

Meskenas v ACP Publishing Pty Ltd [2006] (2006) 70 IPR 172; Perez v Fernandez (2012) 260 FCR 1

(16) Groundless Threats of Copyright Infringement – s202 CA

Bell v Steele (No 2) [2012] FCA 62 Australian Mud Company Pty Ltd v Coretell Pty Ltd [2017] FCAFC 44 (patents)

3. INDUSTRIAL DESIGNS

Required reading

SGB: Ch 10 DMW 2012: Ch 10 PBA 2012: Ch 14 RR 2012: Ch 9

(1) Requirements for registration

(a) Meaning of ‘design’

(i) Definition of ‘design’: s5 Designs Act 2003 (“DA”)

(ii) in relation to a product

Application for Type Font in name Microsoft (2007) 71 IPR 664 Re Wolanski’s Registered Design (1953) 88 CLR 278

(iii) ‘product’: s6 DA

(iv) ‘visual features’: s7 DA

Dart Industries v Décor (1989) 15 IPR 403

14

Firmagroup Australia v Byrne & Davidson Doors – (1987) 9 IPR 353

(v) shape or configuration

Seafolly Pty Ltd v Fewstone Pty Ltd [2014] FCA 321

(vi) ‘overall appearance of the product’: see s5 DA

(vii) monopoly in particular appearance

Re Wolanski’s Registered Design (1953) 88 CLR 278 Firmagroup Australia v Byrne & Davidson Doors – (1987) 9 IPR 353

(b) Novelty and distinctiveness

(i) Threshold statement under s15 DA

(ii) ‘prior art base’: s15(2) DA

prior public use of the design

prior publication in a document

o * J Rapee & Co Pty Ltd v Kas Cushions Pty Ltd (1990) 15 IPR 577)

disclosure in an earlier design application

(iii) ‘new and distinctive’: ss16-19 DA

‘new’ – not identical compared to prior art base: s16(1) DA

‘distinctive’ – not substantially similar in overall impression compared to prior art base: s16(2) and s19 DA

“informed user”

o Review 2 Pty Ltd v Redberry Enterprise Pty Ltd (2008) 79 IPR 214o LED Technologies Pty Ltd v Elecspess Pty Ltd (2009) 80 IPR 105o * Hunter Pacific International Pty Ltd v Martec Pty Ltd [2016] FCA 796

statement of newness and distinctiveness

o Keller v LED Technologies (2010) 87 IPR 1 o * Hunter Pacific International Pty Ltd v Martec Pty Ltd [2016] FCA 796

certain things to be disregarded: s17 DA

earlier use or publication of design as an artistic work: s18 DA

(iv) Designs excluded from registration

s43 DA and Reg 4.06 of Designs Regulations 2004

(2) Outline of process of registration

(3) Ownership

(a) Who is entitled to seek registration: s13 DA

Courier Pete Pty Ltd v Metroll Queensland Pty Ltd [2010] FCA 735 – modular rainwater tanks

Foster’s Australia Limited v Cash’s (Australia) Pty Ltd [2013] FCA 527 (beer taps)

(b) Ownership of registered design: s14 DA

(c) Exclusive rights of registered owners: s10 DA

(d) Assignment of interest in design: s11 DA

(e) Term of registration: s46 DA

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(4) Infringement

(a) Who may bring proceedings: s73(1) DA

(b) When may proceedings be brought: s73(3) DA

(c) Where may proceedings be commenced: s73(2) DA

(d) Infringement by doing any exclusive rights of registered owners: s71 DA

(e) Designs ‘substantially similar in overall impression’: s19 DA

Hunter Pacific International Pty Ltd v Matrec Pty Ltd [2016] FCA 796 (ceiling fan)(f) Use of statement of newness and distinctiveness

Review Australia Pty Ltd v New Cover Group Pty Ltd (2008) 79 IPR 236 (wrapdress)

Review 2 Pty Ltd v Redberry Enterprise Pty Ltd (2008) 79 IPR 214 (wrapdress) LED Technologies Pty Ltd v Elecspess Pty Ltd (2009) 80 IPR 105 (rear lights) Multisteps Pty Limited v Source and Sell Pty Limited [2013] FCA 743 (fruit tubs)

(g) Will it be easier for a Court to apply the new Act test compared to old Act test (fraudulent or obvious imitation)?

Gram Engineering Pty Ltd v Bluescope Steel Ltd [2013] FCA 508 (fencing panel)

(h) Counterclaim for rectification of Register: s74 DA

Foggin v Lacey (2003) 57 IPR 225 (compare infringing product to design not product)

(5) Spare parts defence (s72 CA)

(6) Remedies

(a) Remedies under s75(1) DA

(b) Defendant’s innocence and reasonable care: s75(2) DA

(c) Additional damages: s75(3) DA

(d) Importance of packaging: s75(4) DA

(e) Relief from unjustified threats: ss77-81 DA

(7) Issue of dual protection – copyright/design overlap

(a) Relevant provisions: ss 74-77 CA

(b) What is the overlap problem?

(c) Definition of corresponding design: s74 CA

(d) Copyright protection where corresponding design registered: s75 CA

(e) Artistic works applied as unregistered industrial designs: s77 CA

(i) copyright subsists in an artistic work

(ii) corresponding design has been applied industrially

Reg 17 of Copyright Regulations 1969 Safe Sport Australia Pty Ltd v Puma Australia Pty Ltd (1985) 4 IPR 120 *Press-Form Pty Ltd v Henderson’s Ltd (1993) 26 IPR 113 Gold Peg International Pty Ltd v Kovan Engineering (Aust) Pty Ltd (2005) 67

IPR 497 at [221] (decision on ‘industrial application’ not disturbed in the appeal reported at (2006) 70 IPR 1)

(iii) products are sold, let for hire

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(iv) corresponding design has not been registered under Designs Act

(f) ‘Works of artistic craftsmanship’ not included, but no statutory definition

Sheldon v Metrokane (2004) 61 IPR 1 *Burge v Swarbrick [2007] HCA 17; (2007) 234 ALR 204

(g) Certain reproductions of artistic works do not infringe copyright: s77A CA

Polo/Lauren Company LP v Ziliani Holdings Pty Ltd (2008) 80 IPR 531 (meaning of ‘embodied in’)

Seafolly Pty Ltd v Fewstone Pty Ltd [2014] FCA 321

4. CIRCUIT LAYOUTS ACT 1989

This topic will only be addressed if time permits.

Topic 4 will not be assessed in the exam at the end of semester.

Circuit Layouts Act (Cth) 1989 Avel v Wells (1992) 36 FCR 340 Nintendo Co v Centronics Systems (1994) 181 CLR 134

5. PATENTS

Required reading

SGB: Ch 11-14 DMW 2012: Ch 12 – 15 PBA 2012: Part 3 RR 2012: Part 4

(1) Origins and background

(a) History

Venetian Statute Darcy v Allin (1602) Moore KB 671 Statute of Monopolies 1624

(b) Establishment of the modern system

(c) Rationale and objects of the patent system

Powering Ideas: the innovation agenda for the 21st century "Raising The Bar” patent reforms (effective 15 April 2013) Productivity Commission inquiry into the compulsory licensing provisions in the

Patents Act 1990

(2) Requirements for patentability

(a) Requirements under s18 of the Patents Act 1990 (Cth) (PA)

(i) Types of patents: standard and innovation

(ii) Innovation patents

Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd (2009) 81 IPR 480;

(iii) s18 defines what is a ‘patentable invention’

17

manner of manufacture novelty inventive step useful not secretly used

(b) Manner of manufacture

(i) What is a ‘manner of manufacture’?

Statute of Monopolies 1624 Re GEC Application (1942) 60 RPC 1 * National Research Development Corp v Commissioner of Patents (1959)

102 CLR 252 Diamond v Diehr (1981) 450 US 175; RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871 Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd [2013] HCA 50 (skin

disorder treatment) D'Arcy v Myriad Genetics Inc [2015] HCA 35

(ii) Human treatment exception

* Joos v Commissioner of Patents (1972) 126 CLR 611 (keratin treatment for nails and hair)

* Anaesthetic Supplies v Rescare (1994) 50 FCR 1 (sleep apnoea) * Bristol-Myers Squibb Co v FH Faulding (2000) 46 IPR 553 D’Arcy v Myriad Genetics Inc [2014] FCAFC 115 (breast cancer gene

sequence) Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd [2013] HCA 50 (skin

disorder treatment)

(iii) Computer software

* International Business Machines v Commissioner of Patents (1991) 33 FCR 218

* CCOM v Jiejing (1994) 51 FCR 260 Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177

(iv) Business methods, schemes, systems

Rolls-Royce Ltd’s Application [1963] RPC 251 * Welcome Real-Time SA v Catuity Inc (2001) 51 IPR 327 * Grant v Commissioner of Patents (2006) 154 FCR 62 * Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150

(method for calculating an index for using in financial investing)

(v) Living organisms and developments in biotechnology

(c) Novelty

(i) Relevant statutory provisions

s7(1) PA dictionary definitions of: prior art information, prior art base, document,

patent area

(ii) Quantum of disclosure: anticipation

Hill v Evans (1862) 4 De GF & J 288 (1862) 45 ER 1195 * Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd

(1993) 26 IPR 171 (trial judge’s (Hill J) discussion on anticipation) * Nicaro Holdings v Martin Engineering (1990) 16 IPR 545 Meyer Taylor v Vicarr Industries (1977) 137 CLR 228 MJA Scientifics International v S C Johnson & Son [1998] 1466 FCA;

(1998) 43 IPR 287 (Sundberg J’s propositions on anticipation)

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(iii) Publicly available

* Sunbeam Corp v Morphy-Richards (Australia) Pty Ltd (1961) 35 ALJR 212 at 218

Griffin v Isaacs (1938) 12 ALJR 169 Fomento v Mentmore [1956] RPC 87

* Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) (1980) 144 CLR 253 (cannot mosaic)

Merck v Arrow Pharmaceuticals (2006) 68 IPR 511 (Lunar magazine to selected hospitals and universities)

Dennison Manufacturing v Monarch Marketing Systems (1983) 1 IPR 431

(iv) Certain kinds of prior use/publication to be disregarded

s24 PA and reg 2.2 of Patent Regulations 1991 Showing, use or publication at a recognised exhibition Publication in a paper read before a learned society

o Ralph M Parsons Co (Beavon’s Application) [1978] FSR 226

Working of the invention in public for purpose of reasonable trial

o Longworth v Emerton (1951) 83 CLR 539 o Newall & Elliott (1858) 4 CBNS 269; (1858) 140 ER 1087

Non-consensual disclosure 12 month ‘grace period’ (from 1 April 2002)

(d) Inventive step

(i) Relevant statutory provisions

ss7(2), 7(3) PA Dictionary definitions of: prior art base, prior art information, patent area

(ii) How is ‘inventive step’ assessed? When is an invention obvious?

* APO Manual of Practice and Procedure, Vol 2 at 4.1.4-4.1.5 * Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 411 Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148

CLR 262 at 286 Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd (No 2) [2013]

FCA 279 Relevance of hindsight considerations: see Lockwood v Doric [2007] 235

CLR 202 AstraZeneca AB v Apotex Pty Ltd & Ors [2015] HCA 3

(iii) Common general knowledge: the relevant prior art knowledge base

* Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) (1980) 144 CLR 253

Commissioner of Patents v Emperor Sports (2006) 149 FCR 386

(iv) ‘CGK + 1’: the operation of s7(3) PA

Firebelt Pty Limited v Brambles Australia Limited (2002) 54 IPR 449 *Lockwood v Doric [2007] HCA 21; 235 ALR 202. “Towards A Stronger and More Efficient IP Rights System” – Consultation

Paper, November 2009 Intellectual Property (Raising the Bar) Act 2012: combine any piece of prior

art with common general knowledge if the skilled addressee could reasonably be expected to combine the two, not just the prior art that the skilled addressee could be reasonably expected to have found

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(e) Useful/Utility

Rehm v Websters Security Systems (1988) 11 IPR 289

(f) Secret use

* Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75 (Full Fed Ct)

(g) Internal objections: insufficiency, ambiguity, fair basing

(i) Insufficiency of description

(ii) Ambiguity of claims

(iii) Fair basing

Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] 217 CLR 274

AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 “Towards A Stronger and More Efficient IP Rights System” – Consultation

Paper, November 2009 Intellectual Property (Raising the Bar) Act 2012 – similar to section 72(1)(c)

of English Patents Act disclose the invention in a manner which is clear enough and complete

enough for the invention to be performed by a person skilled in the relevant art

disclose the best method known to the applicant of performing the invention (Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27)

claim or claims must be clear and succinct and [fairly based on the matter described] supported by matter disclosed in the specification

(h) Other grounds of invalidity

s138 PA s18(2) PA – human beings Re Woo-Suk Hwang [2004] AIPC 92-031 Fertilitescentrum AB and Luminis Pty Ltd (2004) 62 IPR 420 D’Arcy v Myriad Genetics

(3) The application process and the role of patent attorneys

(a) The role of the patent attorney: ss200, 201 PA

(b) The application process

(4) Ownership and exploitation of rights

(a) Who may be granted a patent: s15 PA

Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9 University of Western Australia v Gray (2009) 82 IPR 206 Exclusive ‘exploitation’ rights of patent owner: s13 PAo Warner-Lambert Company LLC v Apotex Pty Limited [2017] FCAFC 58

(b) Assignment of interest in patent: s14 PA

(c) Term of grant: s67 (standard patent), s68 (innovation patent)

(d) Register: s187

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(e) Compulsory licences: s133

(f) Crown Use: s163

(5) Infringement

(a) Relevant statutory provisions

(i) Who may bring proceedings: ss120(2), (3) PA

(ii) When may proceedings be brought: s120(4) PA

(iii) Where may proceedings be commenced: s120(1) PA

(iv) Counterclaim for revocation of patent: s121 PA

(v) Infringement by doing any of the patentee ‘exploitation’ rights: s13 PA, Dictionary definition of ‘exploit'

(b) How is infringement determined?

(i) Scope of claim

*Décor Corporation v Dart Industries (1988) 13 IPR 385 Kinabulu Invstments v Barron and Rawson [2008] FCAFC 178 at [44] –[45]

(ii) Construction of patent claims – approaches to construction (literal, purposive, pith and marrow)

Catnic Components v Hill and Smith [1982] RPC 183; [1978] FSR 405

(iii) Make

Dunlop Pneumatic Typre v David Moseley (1904) 21 RPC 274 Bedford Industries v Pinefair (1999) 42 IPR 330

(iv) Sell

Windsurfting International v Petit (1984) 2 NSWLR 196

(c) Contributory infringement: s117 PA

Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 ALR 205 Bristol-Myers Squibb Co v FH Faulding & Co (2000) 46 IPR 553 Northern Territory v Collins (2008) 78 IPR 225

(d) Defences to infringement: s118, s119, s119A, 119B, 119C PA

Merck KGAA v Integra Life Sciences Limited (June 2005) US Supreme Court (defence to patent infringement in US: research exemption)

“Raising the Bar” defences – experimental purposes, obtaining regulatory approval

(6) Remedies

(a) Remedies under s122 PA

(b) Innocent infringement: s123(1) PA

(c) Importance of packaging: s123(2) PA

(d) Relief from unjustified threats: s128 PA

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(7) Plant Breeders Rights Act 1994

This topic will only be addressed if time permits. This part of Topic 5 will not be assessed in the exam. Sun World Inc v Registrar of Plant Variety Rights (1997) 75 FCR 528 Grain Pool of WA v Commonwealth [2000] HCA 14; (2000) 202 CLR 475; 46 IPR 515

6. CONFIDENTIAL INFORMATION

Reading from Prescribed Materials:

SGB: Ch 3, 4 DMW 2012: Ch 11 PBA: Ch 15 RR 2012: Ch 11

(1) Background to breach of confidence action

(a) Protection of ideas and information

(b) Information is not property

Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414

Farah Constructions v Say Dee (2007) 230 CLR 89

(c) Jurisdictional basis for breach of confidence action

(d) Contractual and equitable bases can co-exist: Optus Networks Pty Ltd v Telstra Corporation [2010] FCAFC 21; (2010) 265 ALR 281

(2) Equitable action for breach of confidence

(a) Origins and elements of the equitable action

(i) Origins

Prince Albert v Strange (1849) 47 ER 1302

Personal – Argyll v Argyll [1967] Ch 302

Government – Commonwealth v John Fairfax (1981) 147 CLR 39

(ii) Elements of the modern action

* Corrs Pavey Whiting & Byrne v Coll of Customs for Vic (1987) 14 FCR 434

Saltman Engineering Co v Campbell Engineering Co (1948) 65 RPC 203

* Coco v A N Clark (Engineers) [1969] RPC 41; 1A IPR 587

* Smith Kline and French Laboratories (Australia) v Secretary to Department of Community Services and Health (1991) 28 FCR 291

Marshall v Prescott [2015] NSWCA 110

(iii) Information identified with specificity

* Smith Kline and French Laboratories (Australia) v Secretary to Department of Community Services and Health (1991) 28 FCR 291

(iv) Information must have necessary quality of confidence

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* Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414

Del Casale v Artedomus (Aust) Pty Ltd [2007] NSWCA 172; (2007) 73 IPR 326;

Terrapin Ltd v Builders' Supply Co (Hayes) Ltd [1967] RPC 375 (springboard)

Dargan Financial Pty Ltd ATF the Dargan Financial Discretionary Trust (trading under “Home Loan Experts”) v Nassif Isaac [2017] NSWSC 1077

(v) Information must be provided in circumstances imposing an obligation of confidence

* Smith Kline and French Laboratories (Australia) v Secretary to Department of Community Services and Health (1991) 28 FCR 291

Coco v A N Clark (Engineers) [1969] RPC 41; 1A IPR 587 (moped)

TF Industrial Pty Ltd v Career Tech Pty Ltd [2011] NSWSC 1303 (database)

Franklin v Giddins [1978] Qd R 72; 1B IPR 807 (steal nectarine cuttings)

Cronulla-Sutherland District Rugby League Football Club Limited v Nationwide News Pty Ltd [2013] NSWSC 494

Armstrong Strategic Management & Marketing Pty Ltd v Expense Reduction Analysts Group Pty Ltd (2012) 295 ALR 348

(vi) Breach of confidence/Unconscionable use or disclosure

Smith Kline and French Laboratories (Australia) v Secretary to Department of Community Services and Health (1991) 28 FCR 291

(vii) Position of third parties

Wheatley v Bell [1982] 2 NSWLR 544

Ashburton v Pape [1913] 2 Ch 469

(b) Defences – the iniquity rule and public interest defence

(i) The iniquity rule

Gartside v Outram (1856) 26 LJ Ch 113

Castrol Australia v Emtech Associates (1980) 51 FLR 184

Corrs Pavey Whiting & Byrne v Coll of Customs for Vic (1987) 14 FCR 434

(ii) Public interest defence: balancing competing public interests

Lion Laboratories Ltd v Evans [1984] 2 All ER 417

Fraser v Evans [1969] 1 QB 349

Hubbard v Vosper [1972] 2 QB 84

Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2001) 208 CLR 199 at 224 (per Gleeson CJ)

(iii) Competing public interests in context of government papers, information and beyond

* Commonwealth v John Fairfax (1981) 147 CLR 39

A-G (UK) v Heinemann Publishers Australia (1988) 165 CLR 30

* Minister for Mineral Resources v Newcastle Newspapers (1998) 40 IPR 403

23

National Roads and Motorists’ Association Ltd (NRMA) v Geeson (2001) 39 ACSR 401; [2001] NSWSC 832; Appeal dismissed in [2001] NSWCA 343 (11/10/01)

(c) Remedies

(i) injunction

(ii) delivery up

(iii) constructive trust

LAC Minerals Ltd v International Corona Resources Ltd (1989) 61 DLR 4th 14; (1989) 16 IPR 27

(iv) account of profits

(v) quantum meruit

(vi) equitable compensation

* Talbot v General Television Corporation Pty Ltd [1980] VR 224

Cadbury Schweppes Inc v FBI Foods Ltd (1999) 167 DLR 4th 577

Notion of the springboard: Terrapin Ltd v Builders' Supply Co (Hayes) Ltd [1967] RPC 375

(3) Contractual obligations of confidence

(a) Co-existence of equity and contract principles: Optus Networks Ltd v Telstra Corporation Ltd [2010] FCAFC 21

(b) Contractual duties: express or implied

(i) Common law contractual duties: express or implied

(ii) Implied equitable duty to serve employer with good faith

Del Casale v Artedomus (Aust) Pty Ltd [2007] NSWCA 172; (2007) 73 IPR 326

Byrne & Frew v Australian Airlines (1995) 185 CLR 410 Codelfa Constructions v State Rail Authority NSW (1982) 149 CLR 337

(c) Scope of obligation

Maggbury Pty Ltd v Hafele Australia Pty Ltd [2001] HCA 70; (2001) 185 ALR 152

(d) Example context: Employees and restraints of trade

* Faccenda Chicken v Fowler [1985] 1 All ER 724

* Wright v Gasweld Pty Ltd (1991) 22 NSWLR 317; (1991) 20 IPR 481 (NSW CA)

Bluescope Steel v Kelly [2007] FCA 517 (12 April 2007) at [88]-[90] regarding ‘know-how’

*Del Casale v Artedomus (Aust) Pty Ltd [2007] NSWCA 172; (2007) 73 IPR 326

Printers and Finishers Ltd v Holloway

7. BUSINESS REPUTATION

Reading from Prescribed Materials

SGB: Ch 16, 17, 18. DMW 2012: Ch 2 PBA 2012: Ch 12 RR 2012: Ch 16

24

PASSING OFF

(1) Origins of passing off

Reddaway v Banham [1896] AC 199

(2) Elements of the Action

*Erven Warnink v J Townsend & Sons (Hull) Limited [1979] AC 731

*Conagra Inc v McCain Foods Australia Pty Limited (1992) 23 IPR 193

(3) 1 st Requirement: Reputation

(a) What commercial activities are covered?

(b) How is reputation fixed in the minds of consumers?

*Cadbury Schweppes Pty Limited v Pub Squash Pty Limited [1980] 2 NSWLR 851

(c) How is reputation proved?

Knott Investments Pty Ltd v Winnebago Industries, Inc [2013] FCAFC 59

(d) Need for the public to associate product/service with a particular ‘source’

(e) Is local business activity required?

* Conagra Inc v McCain Foods Australia Pty Limited (1992) 23 IPR 193

BM Auto Sales v Budget Rent-a-Car (1976) 12 ALR 363

Knott Investments Pty Ltd v Winnebago Industries, Inc [2013] FCAFC 59

(f) The problem of adopting ‘descriptive’ names/words

*McCain Foods v County Fair Foods (1981) RPC 69 (oven chips)

*Hornsby Building Information Centre v Sydney Building Information Centre (1978) 140 CLR 216

BM Auto Sales v Budget Rent-a-Car (1976) 12 ALR 363

Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited [2014] FCAFC 87

(g) Indicia of reputation

(i) Name

Mark Foys Pty Ltd v TVSN (Pacific) Ltd (2000) 104 FCR 61; (2000) 49 IPR 303

(ii) Pseudonym

Sykes v John Fairfax (“Pierpont”) 1977 1 NSWLR 415

(iii) Get-up

Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd [2001] FCA 1228 (Conti J 3/9/2001)

Reckitt & Colman Products Ltd v Borden Inc (1990) 17 IRR 1 (“Jif lemon”)

Miler v Britt Allcroft (Thomas) LLC (2000) 52 IPR 419 (Thomas Shop)

(iv) Fictitious Character

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Telstra Corporation Ltd v Royal & Sun Alliance Insurance Ltd (2003) 57 IPR 453 (Goggomobil case)

Twentieth Century Fox v Lion Nathan (Duff Beer) (1996) 34 IPR 247

Hogan v Pacific Dunlop (Crocodile Dundee) (1989) 14 IPR 398

(v) Colours and Shapes

Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 84 IPR 12 (Malt Balls)

Miler v Britt Allcroft (Thomas) LLC (2000) 52 IPR 419

(4) 2nd Requirement: Misrepresentation

(a) Types of misrepresentation

(i) Source of product, substitution of product, quality of product

*Cadbury Schweppes Pty Limited v Pub Squash Pty Limited [1980] 2 NSWLR 851

*Reckitt & Colman Products Ltd v Borden Inc (1990) 17 IRR 1

Bollinger v Costa Brava Wine Co Limited [1960] Ch 263

REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559

Spanline Weatherstrong Building Systems Pty Ltd v Tabellz Pty Ltd [2013] FCA 1019

Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited [2014] FCAFC 87

(ii) Association, sponsorship, endorsement

Henderson v Radio Corp Pty Limited [1960] 60 SR (NSW) 576 (ballroom dancers)

Honey v Australian Airlines and House of Tabor Inc (Gary Honey athlete) 1990 18 IPR 185

Talmax Pty Ltd v Telstra Corporation (Kieren Perkins swimmer) 1996 36 IPR 46

McIlhenny v Blue Yonder Holdings (1997) 39 IPR 187

Cadbury Schweppes Pty Ltd v Darrell Lea Chocolates Pty Ltd (No.8) [2008] FCA 470 (11 April 2008)

Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited [2014] FCAFC 87

(b) What is the effect of ‘intention to deceive’?

Intention to deceive is not required: Australian Woollen Mills v FS Walton & Co (1937) 58 CLR 641

(c) Misrepresentation in the context of ‘character merchandising’

* Hogan v Pacific Dunlop Limited (1989) ATPR 40-948 (Crocodile Dundee)

*Henderson v Radio Corp Pty Limited [1960] 60 SR (NSW) 576 (ballroom dancers)

*Hogan v Koala Dundee (1988) 83 ALR 187; 12 IPR 508

*Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd (1996) 66 FCR 451 (Duff Beer case)

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(d) Disclaimers

*Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd (1996) 66 FCR 451 (Duff Beer case)

Miler v Britt Allcroft (Thomas) LLC (2000) 52 IPR 419;

Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited [2014] FCAFC 87

(e) Distinguish “misappropriation” from “misrepresentation”

ambush marketing: Nike “London Calling” advertisement during London 2012 Olympic Games

(5) 3 rd Requirement: Damage

Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354

Passing off trumps trademark: CI JI Family Pty Limited v National Australian Nappies (NAN) Pty Limited [2014] FCA 79

RELATED STATUTORY ACTIONS

1. Relevant statutes and provisions

Sections 52 and 53, Trade Practices Act 1974 (Cth) (pre-1 January 2011) Sections 18 and 29, Australian Consumer Law, Schedule 2, Competition and Consumer

Act 2010 (Cth) and Fair Trading Act 1987 (NSW)

2. Misleading and deceptive conduct – the statutory action

Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 Equity Access Pty Ltd v Westpac Banking Corporation (1990) 16 IPR 431 at 440 (Hill J) Campomar Sociedad Ltd v Nike International Ltd (2000) 46 IPR 481 Spanline Weatherstrong Building Systems Pty Ltd v Tabellz Pty Ltd [2013] FCA 1019

(steel roof sheets)

(i) ‘trade or commerce’

Concrete Constructions (NSW) v Nelson (1990) 169 CLR 594 Re Ku-Ring-Gai Co-operative Building Society (No 12) Ltd Argy v Blunt & Lane Cove Real Estate Pty Ltd (1990) 26 FCR 112

(ii) Identify the ‘misrepresentation’ said to arise

Identifying what the misrepresentation might be also involves considering what the reputation is of the plaintiff’s good/service

Does reputation need to be established in all cases? Woodtree Pty Ltd v Zheng [2007] FCA 1922 at [34].

(iii) ‘misleading or deceptive’

Who must be misled or deceived? How is the relevant class identified? Mere confusion is not enough Evidence of actual deception is persuasive but not essential Court must decide if a reasonably significant number of consumers in the class

would be likely to be misled or deceived Campomar Sociedad Ltd v Nike International Ltd (2000) 46 IPR 481

27

(iv) Intention to deceive is not required

(v) Who made the representation

Google Inc v Australian Competition and Consumer Commission [2013] HCA 1

(vi) An additional provision:

s53 TPA (old law);

s29 in Australian Consumer Law (ACL), Sch 2 of CCA (new law)

3. Liability of individuals under TPA/CCA (ACL)

s75B TPA; s224 ACL Houghton v Arms (2006) 231 ALR 534 Sony Music Entertainment (Aust) Ltd v CEL Music Pty Ltd (in liq) (2002) 54 IPR 289

Remedies: Trade Practices Act 1974, ss 80, 82, 87, 87CB-87CI (proportionate liability) ACL ss 233-236; see generally Part 5-2 ‘Remedies’; CCA ss 87CB-87CI (proportionate

liability)

8. TRADE MARKS

Required reading from Prescribed Materials

SGB: Ch 19, 20 DMW 2012: Ch 3, 4 PBA: Part 4 RR 2012: Part 5

(1) Origins of trade mark system

Bakers Marking Law 1266

(2) Registration procedure application acceptance or rejection by IP Australia advertise acceptance opposition registration

(3) What is a trade mark?

(a) Definition of trade mark

Trade Marks Act 1995 (Cth) (“TMA”): s17 – ‘trade mark’; s6 – ‘sign’

(b) Case law on what constitutes a trade mark

Attorney-General (NSW) v Brewery Employees Union (1908) 6 CLR 469 Smith Kline French (Australia) Limited v Registrar of Trade Marks (1967) 116

CLR 628 Re Coca Cola Trade Marks [1986] RPC 421 * Coca Cola v All Fect Distributors Ltd (1999) 47 IPR 481

28

* Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 48 IPR 257

* Kenman Kandy v Registrar of Trade Marks (2001) 52 IPR 137 * Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891 (18 August

2009) Baird J, “The Registrability of Functional Shape Marks” (2002) 13 AIPJ 218

(c) Classes of designated goods and services

Nice Classification – 45 classes

(4) Other requirements incorporated within s17

(a) Requirement of ‘use or intended to be used’

‘use’ - s7 TMA

*Imperial Group Limited v Phillip Morris & Co Limited [1980] 1 FSR 146 (‘Nerit’) defensive marks - s185 TMA

(b) Trade mark must distinguish goods or services

(i) notion of ‘capability to distinguish’

(ii) benefits of invented words, coined expressions, concocted shapes

(iii) effect of s41 TMA: ways that a trade mark can be ‘capable of distinguishing’:

s 41(2) – presumption of registrability unless 41(3) or 41(4) applies

s41(3) – trade mark not to any extent ‘inherently adapted to distinguish’ and not used before filing date so that does distinguish

s41(4) – trade mark to some extent ‘inherently adapted to distinguish’ and does not distinguish by reference to extent, use and other circumstances

(iv) cases on ‘capability to distinguish’:

Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624

*Mark Foy’s Limited v Davies Coop & Co Limited (1956) 95 CLR 190 (‘Tub Happy’)

*Howard Auto Cultivators Limited v Webb Industries Pty Limited (1946) 72 CLR 175 (‘Rohoe’)

Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (‘Michigan’)

* Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 (‘Oregon’) Woolworths Ltd v BP Plc (2006) FCAFC 132 (colour green’) (HC Special

Leave application dismissed)

Ocean Spray Cranberries v Registrar TM (Cranberry Classic) (2000) 47 IPR 579

Sports Warehouse v Fry Consulting (Tennis Warehouse) (2010 186 FCR 519; (2010) 87 IPR 300 (Kenny J)

Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212;

Modena Trading Pty Ltd v Cantarella Bros Pty Ltd (HC pending – Full Federal Court [2013] FCAFC 110 (foreign words “oro” and “cinque stelle” – Molinari v Vittoria coffee)

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Mastronardi Produce Ltd v Registrar of Trade Marks [2014] FCA 1021 (Zima)

(c) Dealt with in course of trade

Re New York Yacht Club Application

(5) Certain ‘signs’ will not be registered – grounds for rejection of an application

Part 4 Div 2 TMA (ss39-44) sets out the grounds upon which an application will be rejected:

(a) s39 – mark contains certain signs (ie. prescribed signs)

(b) s40 – mark cannot be represented graphically

(c) s41 – mark does not distinguish applicant’s goods and services

Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428 (30 April 2009)

(d) s42 – mark is scandalous or contrary to law

(e) s43 – mark is likely to deceive or cause confusion

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Limited (1954) 91 CLR 592

Pfizer Products Inc v Karam [2006] FCA 1663 at [27] (1 December 2006)

Scotch Whisky Association v De Witt [2007] FCA 1649 at [48]-[63]

McCorquodale v Masterton (2004) 63 IPR 592 (Diana’s Legacy in Roses)

Big Country Developments Pty Ltd v TGI Friday's Inc (2000) IPR 513

(f) s44 – mark is identical etc to trade mark

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Limited (1954) 91 CLR 592

Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411

(6) Grounds for opposition to registration

Part 5 Div 2 TMA (ss57-62A) sets out the grounds upon which a trade mark application can be opposed:

(a) s57 - same grounds as for rejection of application under Part 4 Div 2, except s40

(b) s58 – applicant not owner of mark

Shell Co (Aust) Ltd v Rohm & Haas Co (1949) 78 CLR 601

Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406

(c) s58A – opponent’s earlier use of similar trade mark (a new ground from 23/10/06))

(d) s59 – applicant not intending to use mark

Food Channel Network Pty Ltd v Television Food Network GP (2010) 86 IPR 437

Aston v Harlee Manufacturing Co (Tastee Freez) (1960) 103 CLR 391

(e) s60 – trade mark similar to mark that has acquired a reputation (amended from 23/10/06)

DC Comics v Cheqout Pty Ltd [2013] FCA 478

(f) s61 – mark consists of a false geographical indication

(g) s62 – application is defective

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(h) s62A – application made in bad faith (a new ground from 23/10/06)

Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 [2012] FCA 81 (Dodds-Streeton J)

DC Comics v Cheqout Pty Ltd [2013] FCA 478

(7) Ownership, rights, assignment and licensing

(a) Who can make an application

s27 TMA

*Aston v Harlee Manufacturing Co (1960) 103 CLR 391

Moorgate Tobacco Co Limited v Phillip Morris Limited (No 2) (1984) 59 ALJR 77

(b) Rights of registered owner

s20 – rights given by registration

s21 – trade mark is personal property

s22 – power of registered owner to deal with trade mark

(c) Licensing – the ‘authorised user’

ss6, 8 – definition of ‘authorised use’

s26 – powers of authorised user

E & J Gallo Winery v Lion Nathan (2010) 86 IPR 224

(8) Infringement

(a) Overview of infringement principles

(i) Key provision: s120 TMA

(ii) Categories of infringement under s120 TMA:

s120(1) : infringing use in relation to registered goods or services

s120(2) : infringing use in relation to ‘same description’ or closely related goods or services

s120(3) : infringement of well-known trade marks

(iii) Infringing mark must be ‘substantially identical or deceptively similar’

(b) Requirement that there is ‘use’ by the infringer as a trade mark

Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) CLR 407

Coca Cola Distributors v All Fect Distributors Pty Ltd (1999) 47 IPR 481 *Johnson & Johnson Australia v Sterling Pharmaceuticals (1991) 21 IPR 1 *Top Heavy v Killin (1996) 34 IPR 282 Pepsico Australia Pty Limited (t/a Frito-Lay) v Kettle Chip Co Pty Limited (1996)

33 IPR 161 Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000)

48 IPR 257 E & J Gallo Winery v Lion Nathan (2010) 86 IPR 224

(c) Secondary dealings (including parallel imports)

s123 TMA *R A & A Bailey & Co Limited v Boccaccio Pty Limited (1986) 6 IPR 279

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Transport Tyre Sales Pty Ltd v Montana Tyres and Rims Pty Ltd (1999) 43 IPR 481 at [40] to [54]

Polo/Lauren Company LP v Ziliani Holdings Pty Ltd [2008] FCA 49 (trial); [2008] FCAFC 196 (appeal)

Paul’s Retail Pty Ltd v Lonsdale Australia Limited [2012] FCAFC 130 Scandinavian Tobacco Group Eersel BV v Trojan Trading Company Pty Ltd

(2016) 119 IPR 247; [2016] FCAFC 91

(d) Tests of ‘substantially identical’ or ‘deceptively similar’

(i) ‘ substantially identical ’

* Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) CLR 407

(ii) ‘ deceptively similar ’

* Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) CLR 407

* Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 Wingate Marketing Pty Ltd v Levi Strauss & Co Ltd (1994) 28 IPR 193 Polaroid Corporation v Sole N Pty Limited [1981] 1 NSWLR 49 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Limited

(1954) 91 CLR 592 Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 (‘Woolworths

Metro’) Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd (2006) 69 IPR 243

(‘Schmackos’) Beecham Group Plc v Colgate-Palmolive Pty Ltd [2005] FCA 838 (22 June

2005) (‘Macleans’) Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA

901 (27 August 2003) Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty

Ltd (2004) 61 IPR 212 Pierre Fabre Dermo-Cosmetique v Senator Automation Pty Ltd [2007] FCA

1391 (18 July 2007)

(e) Closely related services/closely related goods

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Limited (1954) 91 CLR 592

Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 (Woolworths Metro)

Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 48 ALR 511

(9) Defences to infringement

(a) s122 – use in ‘good faith’ and other exemptions (including honest concurrent use; s122(1)(f))

(b) McCormick & Company Inc v McCormick (2000) 51 IPR 102 (honest concurrent use)

(c) s124 – prior and continuous use

(10) Remedies for infringement

(a) s20(2) – registered owner can commence proceedings

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(b) s26(1)(b) – authorised user entitled to commence proceedings in certain circumstances

(c) s125 – where relief can be sought

(d) s126 – relief that can be claimed: injunction, account of profits or damages

(e) s127 – special case where plaintiff not entitled to damages

(f) Pt 14 TMA – criminal procedures and penalties for counterfeiting

(g) s129 – groundless threats

(11) Amendment and cancellation of registration

(a) Pt 8 Div 1 – action by Registrar of Trade Marks

(b) Pt 8 Div 2 – action by Court

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COMPULSORY ASSIGNMENT

In Intellectual Property, there is only ONE ASSIGNMENT. This assignment is compulsory and must be submitted by all students. Students must submit the assignment by the due date. A pass mark is 50%. Refer to the Guide to the Presentation and Submission of Assignments for the assignment grading and assessment criteria. Students who fail to satisfy the compulsory requirement will be notified through the Results screen on the Webcampus before the examination period of their ineligibility to sit the examination in this subject. The maximum word limit for the assignment is 2000 words (inclusive of all footnotes but not bibliography).

The rules regarding the presentation of assignments and instructions on how to submit an assignment are set out in the LEC Guide to the Presentation and Submission of Assignments which can be accessed on the LEC Webcampus. Please read this guide carefully before completing and submitting an assignment.

The completed assignment should be lodged through the LEC Webcampus, arriving by 11:59pm on the following date:

Compulsory Assignment Monday 15 January 2018 (Week 8)

ASSIGNMENT QUESTION

To obtain the Intellectual Property assignment questions for the Summer Session 2017-18, please follow the instructions below:

1. Register online with the LEC (see page 24 of the Course Information Handbook for detailed instructions). Once you have registered, you will have access to all the facilities on the LEC Webcampus.

2. Then go into the Webcampus, select the Course Materials section and click on the link to the assignment questions for this subject.

SAMPLE EXAMINATION QUESTIONS

In May of this year, the Carlington Blues Football Club sacked its embattled coach, Mike Barleyhouse. Carlington had been sitting at the bottom of the ladder with only one win in eight games.

Megan Hale, a computer programmer (and part-time model), is one of Carlington’s biggest supporters. She is fed up with Carlington’s recent string of unsuitable coaches and wants to see Carlington win a flag so badly that she develops BLUES CLUES, a computer program for rating potential coaches. BLUES CLUES works as follows:

(a) it receives from members of a selection panel (via an online evaluation form), for each coaching candidate, assigned values from 1 to 10 for the following categories: playing experience, coaching experience, emotional intelligence, humility, ingenuity, vision, ability to look fashionable in a navy blue tracksuit and ability to charm journalists at a press conference (something the often rude and condescending Barleyhouse was incapable of doing);

(b) it inputs the values into an algorithm with an assigned weight for each of the categories (the last two set out above being rated the highest) which calculates a total score from 1 to 100 for each coaching candidate; and

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(c) it generates a list of the coaching candidates from highest to lowest scores in a spreadsheet, which also provides information such as the coaches’ current positions and salaries.

While she was developing BLUES CLUES, Megan read an article from last year about how a Japanese soccer team selected its coach according to a computer-generated ranking that was based on the results of an online fan survey. The fans were provided a list of potential coaches and were asked to assign a value from 1 to 10 for each coach based on his/her perceived suitability. The coaches were then ranked according to their total scores (from highest to lowest). At the time Megan also recalled the 2011 movie “Honeyball” in which an algorithm used to determine the true value of baseball players assigned more weight to non-traditional statistics such as the player’s speed and “NERD” (i.e., quantitative measure of the aesthetic appeal of the player), as opposed to, for example, the player’s batting average.

Megan files a provisional patent application for BLUES CLUES.

A week later, upon learning of BLUES CLUES at Megan’s photo shoot for Carlington’s new line of licensed swimwear, the Carlington President hands Megan a list of the twenty candidates (the “Candidates”) that have confidentially applied for Carlington’s vacant coaching position, as well as contact information for the members of the selection panel. He asks her to provide to each of the members an online evaluation form that includes all of the Candidates and to have the values received from the members input to BLUES CLUES. He further asks her to present the results generated by BLUES CLUES at the next meeting of the selection panel. However, he instructs her to find an interesting way to present the results so that the members remain engaged during the presentation.

Megan modifies BLUES CLUES to include an additional feature (the “Add-On”) that produces, on a big screen and in video game style, an animated version of each of the Candidates kicking a ball at the goal from 50 metres out. The program corresponds the Candidate’s success at kicking the goal to the Candidate’s rating; for example, a 95-rated Candidate’s ball will go straight through the centre posts and into the crowd (with cheering sound effects) and a 60-rated Candidate’s ball will fall short and wide (with a collective sigh sound effect).

For the Add-On, Megan has uploaded photos of the Candidates from their current clubs’ web sites and has utilised cut-outs of their faces for the animated figures. She has also uploaded a photo of a Carlington cap from the official club web store and placed copies of it on the heads of the animated figures. She has also included recordings of crowd sound effects that she obtained from a broadcast of a recent game on the FOXY FOOTY channel.

Megan files a standard patent application (including BLUES CLUES in its original form plus the Add-On) which claims priority from the provisional patent application.

A day before the meeting, after all of the evaluation forms have been completed and the received values have been input to BLUES CLUES, BLUES CLUES generates a list of the Candidates ranked from highest to lowest. At the top of the list are the words “Confidential – property of the Carlington Football Club – for the eyes of authorised recipients only”. Megan intends to send an advance copy of the list to the Carlington President (Mark LoBlue) but accidentally emails it to the wrong “Mark”, i.e., Mark Robinhood, a renowned football journalist. Robinhood immediately publishes a story entitled “No More Blues About Carlington’s Coaching Dilemma” that identifies the top five Candidates on the list.

Megan wants to present each member of the selection panel with an action figure of the top Candidate at the end of the presentation. She orders an action figure depicting a player wearing a black and white guernsey and holding a ball as if just about to kick it from the online store of Collingbark (a competing football club). She has exact replicas (except wearing the Carlington guernsey and bearing the facial likeness of the top Candidate) made in China and shipped to her. Collingbark has a registered design in Australia for its action figure. The members of the selection panel are so impressed by Megan’s action figure that they then arrange for a replica of the action figure (except depicting the likeness of Carlington’s top player) to be specially made and available for purchase.

Question 1 (25 marks)

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(a) Analyse whether Megan’s standard patent application for BLUES CLUES would be accepted without the inclusion of the Add-On; and

(b) Analyse the effects (if any) that the inclusion of the Add-On in the standard patent application would have on the acceptance of the application.

Question 2 (25 marks)

Identify all of the copyright materials in the Add-On that are not owned by Megan and, for each of them, analyse whether Megan has infringed copyright and whether she has any defences to copyright infringement.

Question 3 (10 marks)

Analyse the breach of confidence claim against Mark Robinhood.

Question 4 (10 marks)

Analyse Collingbark’s design infringement claims against both Megan and Carlington.

Question 5 (10 marks)

If the design drawings for the registered design were created by one of the staff at the marketing company that Collingbark contracts to do marketing work for the club:

(a) Will this affect Collingbark’s ability to bring the design infringement claims referred to above?

(b) Does it matter whether or not Collingbark has expressly contracted to acquire the design and copyright rights to the drawings?

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