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Intellectual Property

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What's happening in intellectual property

October 2018

In this issue: we report on a Bill amending website blocking laws; compensation for Albert Namatjira's descendants for decades of missed royalties; an attempt to trade mark common textspeak abbreviations; amendments to the EU Copyright Directive that have been sending the Twitterverse into a frenzy; how residual reputation in a trade mark stopped a non-use application; and further Australian Patent Office decisions relating to patent ownership.

A clear path for new website blocking laws

In brief: The Copyright Amendment (Online Infringement) Bill 2018 (Cth) is the latest legislative development aimed at enabling copyright owners to enforce their rights in the online sphere. Associate Emma Gorrie reports.

Background

The Copyright Amendment (Online Infringement) Bill 2018 (Cth) (the Bill) passed the House of Representatives on 24 October 2018 and is also expected to pass the Senate.

Copyright owners already have the benefit of s115A of the Copyright Act 1968 (Cth), which allows them to seek an injunction requiring a carriage service provider (CSP) to disable access to certain online locations. The ability to seek injunctions against CSPs recognises the difficulty of taking direct action against overseas-based operators of online locations.

What will change?

If (as expected) the Bill passes:

  • the threshold test for an injunction will change from 'primary purpose' to 'primary purpose or effect' of infringing, or facilitating an infringement, of copyright (whether or not in Australia);
  • there will be a rebuttable presumption that the online location is outside Australia;
  • search engine providers may be required to restrict search results linking to online locations blocked under the regime;
  • there will be more flexibility to grant injunctions in terms that deal with proxy and mirror sites; and
  • the Minister will be able to declare certain exemptions apply in relation to online search engine providers.

'Primary purpose' to 'primary purpose or effect'

The expanded threshold test intends to catch more online locations that are deliberately and flagrantly infringing copyright, without targeting incidental infringers. For example, the 'primary effect' test aims to capture file-hosting services such as cyberlockers, on the basis that these are often used to distribute or share copyright-infringing files. The Bill offers little guidance as to how exactly the 'primary effect' test will be applied.

Rebuttable presumption

It can be challenging for copyright owners to establish that an infringing online location is based outside Australia, as operators often employ methods, such as proxy servers, to mask geographic location. The introduction of the rebuttable presumption will reduce the evidentiary burden on copyright owners, streamlining the process of seeking an injunction.

Search engine providers

While ISPs have been the focus of the s115A cases to date, the changes will bring online search engine providers into the mix. The rationale for this is that online search engine providers can play a role in reducing the efficacy of s115A injunctions, by:

  • alerting users to blocked online locations that may be popular search results; and
  • revealing alternate pathways to blocked online locations.

Flexible injunctions

References to 'whack-a-mole' are common when talking about website blocking, due to proxy and mirror sites popping up after a website is blocked. The introduction of s115A(2B) is directed at reducing the time and expense involved in blocking access to proxy and mirror sites. The current process requires copyright owners to seek a variation to existing orders from the Court. Section 115A(2B) clarifies that an injunction may include provision for the copyright owners and CSPs/online search engine providers to agree (in writing) on additional domain names, URLs and IP addresses that should also be covered by an existing injunction.

Declaratory power

The amended s115A will grant the Minister the power to declare that particular online search engine providers, or classes of online search engine providers, be excluded from the regime. This change attempts to deal with concerns about overreach.

A clear path for interested parties?

While it is generally accepted that the Bill will pass the Senate, it remains to be seen:

  • how the Court will apply the 'primary effect' test;
  • whether the application to online search engine providers will be appropriately limited; and
  • whether CSPs/online search engine providers will be able to reach agreement with copyright owners under s115A(2B).

Albert Namatjira's family wins decades-long battle for compensation

In brief: The descendants of one of Australia's most well-known artists, Albert Namatjira, have finally received compensation for decades of missed royalties. Lawyer Edward Thien reports.

Background

Albert Namatjira was a famous Indigenous artist, known for his watercolour landscape paintings. The author of approximately 2,000 paintings, Namatjira's works are displayed across Australia. However, following his death in 1959, his family has been in a battle to earn any income from his work.

Copyright ownership

In 1983, a public trustee for the Northern Territory Government sold the copyright in Namatjira's work to a Sydney family, for a mere $8,500. This contradicted his will, in which he left all his assets to his wife and children. In the years since, his works are believed to have earned more than $10 million. Following this, Namatjira's family, through the Namatjira Legacy Trust, fought to reclaim ownership of the copyright.

In October last year, the Trust successfully negotiated for the copyright in Namatjira's work to be transferred to it in exchange for $1. It intends the royalties that will now flow its way be used to resource Indigenous community initiatives.

The transfer of copyright not only means a source of income for the Trust but also allows it control over how the works are reproduced and where they are displayed. In previous decades, the reproduction of these works was heavily restricted, meaning it was difficult for galleries to market them.

Compensation

The Namatjira family's next goal was to receive compensation for the decades of lost income resulting from the sale of the copyright in the artworks by the public trustee. In August 2018, the Northern Territory Government agreed to provide Namatjira's descendants with an undisclosed amount of compensation. This came after the public trustee acknowledged that it should not have sold Namatjira's copyright.

Perpetual copyright?

Copyright in Namatjira's work is set to expire in 2029. Therefore, the Namatjira Legacy Trust's next goal is to have the copyright extended in perpetuity. Being a charitable trust, the Namatjira Legacy Trust hopes that perpetual copyright in the works will allow it to continue to generate proceeds to benefit Indigenous communities.

While having a perpetual copyright seems like an unusual idea, it is not without precedent. In the United Kingdom, special legislation was passed to grant a perpetual right to royalties in the play Peter Pan. This came after the author, Sir James Matthew Barrie, gifted all his copyright in the play to a children's hospital in London. Since then, the hospital has been able to partly fund itself through the royalties it has collected.

OMG, LOL – can you trademark textspeak acronyms?

In brief: American consumer goods corporation Procter & Gamble is attempting to trade mark abbreviations common to textspeak. Is this NBD, a LOL for the courts, or simply WTF? Lawyer Phoebe St John reports.

In true sci-fi fashion, we may soon see the words we text on our smartphones on our everyday household products. Yes, the US multinational consumer goods corporation Procter & Gamble has filed applications with the US Patent and Trademark Office to register abbreviations common in textspeak, such as 'LOL', 'WTF', 'NBD' and 'FML', as trade marks. This appears to be an attempt to rebrand its traditional household products – famous for brands such as Gillette, Pantene, Oral-B and Fairy – to appeal to its younger, millennial, consumers.

Letter trade marks that are publicly recognisable abbreviations for words incapable of distinguishing themselves are not prima face capable of registration. However, in certain circumstances, acronyms, abbreviations or initials can be protected as registered trade marks. Indeed, companies wishing to register these types of trade marks may be successful if the mark is adapted to distinguish – ie if it is not likely that other persons trading in the same, relevant kind of goods will also want to use that abbreviation in connection with their goods. That is to say, the trade mark must be sufficiently distinctive, and not just a descriptive term ordinarily applied to the goods or services, or a mark that other traders would need to use. Eg 'BYO' (bring your own) is not inherently adapted to distinguish restaurant services, and 'OJ' (orange juice) is not inherently adapted to distinguish soft drinks.

With that in mind, textspeak acronyms may well be registrable on Australian soil if a company can prove that its use of the abbreviation in connection with a certain kind of goods is distinctive. In Procter & Gamble's case, a common textspeak abbreviation, eg 'LOL' (laugh out loud), could potentially be inherently adapted to distinguish household products such as detergents, toothpaste and air fresheners, despite being widely used in multiple industries and contexts.

The stance on trademarking abbreviations is quite similar across the pond in the US. You can trade mark an acronym provided that you use it as the brand name for your products or services (eg 'NBN' or 'SBS'). But in order to trade mark an acronym, your company must use it to identify its goods or services, and it must be distinct enough not to qualify as a generic acronym. Indeed, the US Patent and Trade Mark Office Examiners will need to determine if the textspeak abbreviations have meaning that is distinct or separate from the underlying generic or descriptive term that acronyms such as 'LOL' represent. Perhaps this is why the Office has requested further clarification from Procter & Gamble, which is due next January.

Procter & Gamble is not the first company that has attempted to trade mark well-known terms. Facebook has successfully trademarked the word 'face' in relation to telecommunication services, celebrity Paris Hilton has trademarked the words 'that's hot', and stylist Rachel Zoe has trademarked the expression 'bananas'. So, what does the future hold for textspeak? Well, IDK. It's TBC.

The EU Copyright Directive – what you need to know

In brief: In mid-September, the European Parliament voted to adopt changes to the Directive on Copyright in the Digital Single Market (the Copyright Directive), sending the Twitterverse into a frenzy. Described by commentators as everything from 'welcome' to 'catastrophic', the changes are designed to ensure that creators of copyright earn a fair share of the revenue their work generates. Senior Associate Kaelah Ford discusses the key points of controversy in the Copyright Directive, and why the changes may raise more questions than answers.

Article 11 ('link tax')

Article 11 grants publishers the exclusive rights to authorise or prohibit:

  • temporary or permanent reproduction of their publications; and
  • making their publications available online,

so that they may obtain fair and proportionate remuneration for the digital use of their publications by information society service providers. 'Information society service' is defined as 'any service normally provided for remuneration, at a distance, by electronic means and at the individual request of a recipient of services'.

In a nutshell, the granting of these new rights would require online platforms, such as news aggregation sites, to pay publishers for the use of snippets of news articles. Critics have raised concerns that it is unclear how much of an article would have to be shared before remuneration had to be paid. In an (arguably unsuccessful) attempt to clarify the matter, a new paragraph was inserted, stating that a publisher's rights would not extend to 'mere hyperlinks which are accompanied by individual words'. Without knowing what is meant by 'individual words', it is arguable that under such a law, a hyperlink together with the first line of an article would attract a fee (leading critics to label it a 'link tax').

Article 13 ('upload filter')

Article 13 provides that online content sharing service providers communicate a work to the public, and must therefore conclude fair and appropriate licensing agreements with rights holders. This essentially codifies an online service provider's primary liability for copyright infringement. The article also covers the liability for works uploaded by the users of such services.

If a rights holder does not want to enter into a licensing agreement, the content sharing service provider and the rights holder must cooperate in good faith, in order to ensure that unauthorised works or other subject matter are not available on their services. This is where the concept of an 'upload filter' comes in – it has been suggested that in order to ensure infringing content is not made available, platforms may have to introduce an automated filter at the upload stage. If deciding whether or not a piece of content is infringing vexes copyright lawyers and judges, it's difficult to see how making that assessment could be any easier for a bot.

In the face of millions of users sharing content at any given moment, ensuring infringing content is not made available is no mean feat for online platforms. Interestingly, the European Parliament has noted that 'small and micro platforms' will be exempt from the directive, in order to encourage start-ups and innovation – perhaps implicitly recognising the time and cost consequences of these changes.

Rights holders have welcomed the changes, as online platforms often reap the rewards of advertising via the sharing of copyright content, while the creators of that content receive little to no compensation, and are not in a strong position to negotiate royalties.

Where to from here?

The EU member states will still need to sign off on the directive before the changes can be passed into local law. In the meantime, you can expect this debate to rage on.

Fishing at one's discretion – Trident Seafoods Corporation v Trident Foods Pty Limited

In brief: Although Trident Foods was unable to demonstrate use of its TRIDENT trade marks during the relevant period, for lack of actual control over its parent company, Justice Gleeson considered that the residual reputation in the marks meant that it was in the public interest to keep them on the Register. Trade Marks Attorney Jules Thai and Trainee Trade Marks Attorney Thomas Campbell report.

Background

This is the third decision in an ongoing trade mark feud between Trident Seafoods Corporation (TSC) and Trident Foods Pty Ltd (Trident Foods) over the right to use the word mark TRIDENT for seafood products. A timeline of developments is provided below.

The decision

TSC was unsuccessful in its attempt to remove Trident Foods' registration nos. 266625 and 400953, despite establishing non-use during the relevant period. However, TSC had a minor victory in that it was partially successful in opposing registration of Trident Foods' pending application, with the application allowed to proceed to registration for limited goods.

Actual control of trade mark

TRIDENT-branded products have been sold by Trident Foods' parent company, Manassen (but not Trident Foods), since 2000. However, it wasn't until 2017 (after the Registrar's first decision and the relevant period) that Manassen was authorised by a formal licence agreement to use the trade marks. This licence was not retrospective, and the evidence was insufficient to demonstrate that Trident Foods had exercised quality control or financial control over Manassen during the relevant period. Therefore, Justice Gleeson held that there had been no actual control or use, within the meaning of section 8, by the registered owner during the relevant period. Instead, Her Honour exercised the discretion under s101(3) to keep the two Trident Foods registrations on the Register.

Discretionary power under s101(3)

Section 101(3) of the Trade Marks Act 1995 (Cth) provides that the Registrar or court may decide that a trade mark should not be removed from the Register even if non-use has been established. In exercising the discretion, Justice Gleeson highlighted the following relevant considerations.

  • Trident Foods had since entered into a written licence agreement to formalise Manassen's use of the TRIDENT mark, and that included a quality control clause to ensure Manassen uses the trade marks under the control of Trident Foods – ie as an 'authorised user' under the Act.
  • There were sales of the relevant goods by Trident Foods bearing the trade mark after the relevant non-use period. Her Honour accepted that the sales were likely motivated by the non-use application, but nevertheless accepted this evidence because there was no argument that the sales were unprofitable or sold on an uncommercial basis.
  • Trident Foods had an intention to use the mark on goods covered by the registration; if there had not been any intention to use it on the goods as registered, the Register's integrity would be diminished.
  • Consumers are likely to identify the mark as coming from a group of companies of which Trident Foods is a member, and the long-standing use of the trade mark by Manassen took place with Trident Foods' knowledge and permission.
  • Removal of Trident Foods' registrations and subsequent use of TSC's mark would be likely to cause confusion among consumers in the marketplace, due to the reputation of the TRIDENT mark created by Manassen's use.

This decision illustrates that a successful application for removal for non-use is no certainty – even if the appropriate grounds are established. Her Honour's considerations of public policy and the parties' conduct after the relevant non-use period are worth bearing in mind when considering the prospects of a non-use removal application.

The importance of getting your entitlement ducks in a row

In brief: Ownership and inventorship disputes are a hot topic before the Australian Patent Office (the APO) in 2018. Earlier this year, we reported on the APO decision in Khoury v Sherrard Pty Ltd [2018] APO 20, which highlighted the need to carefully assess the contributions of all those involved in developing a new invention. Since then, a number of APO decisions have further emphasised the importance of getting your entitlement ducks in a row from the outset, to avoid costly disputes down the line. Associate Claire Gregg reports.

Timing can be everything

Entitlement is the right to ownership of a patent. There are several roads to ownership, but each must ultimately derive from inventorship. An inventor is any person who makes a material contribution to the inventive concept. Conception occurs when an idea is 'so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice without extensive research or experimentation', and timing can be key.

In 1414 Degrees Limited v Climate Change Technologies Pty Ltd [2018] APO 28 (1414 Degrees), the invention at issue was conceived while the inventors were employed by the applicant, Climate Change Technologies. However, it was found that the inventive concept could not have been reached without the knowledge the inventors had acquired while engaged under an earlier service agreement for the opponent's predecessor company. For this reason, 1414 Degrees Limited was held to be jointly entitled to the invention with Climate Change Technologies.

Quality over quantity

In Shaun Gregory Power v Dale Arthur John Long [2018] APO 57, Mr Long had filed a patent application naming himself and Mr Power as co-inventors, but naming only himself as the applicant. Mr Long argued that Mr Power had not been named as an applicant because he had made only a minor contribution to the development of the invention. While the APO found that the weight of evidence suggested a more substantial contribution by Mr Power, this was ultimately of little relevance because 'the role of co-inventors does not have to be equal; the assessment is qualitative, not quantitative'. Accordingly, the APO held that Mr Power and Mr Long were both entitled to be co-applicants.

Duty to invent

Inventors may enter into agreements to transfer entitlement to an invention to another party for valuable consideration, or there may a fiduciary obligation to transfer their rights. In 1414 Degrees, for example, a verbal service agreement between the inventors and the opponent's predecessor company was found to contain an implied term that any IP generated by the inventors in the course of the agreement belonged to the company.

In contrast, an aspect of the decision in William Kyunghwan Kwon v William John Trickett [2018] APO 51 concerned an application filed in the name of the sole listed inventor, Mr Trickett. Realising that one of his employees, Mr Kwon, had also contributed to the inventive concept, Mr Trickett requested that Mr Kwon be listed as a co-inventor, but asserted that Mr Kwon's rights to the invention belonged to Mr Trickett's company by virtue of his employment contract. However, the APO found that there was no contractual or fiduciary duty for Mr Kwon to assign his patent rights to his employer, because he did not have a duty to invent as part of his employment as a warehouse manager. Thus, Mr Trickett and Mr Kwon were joint inventors and joint applicants of the relevant application.

Don't be a sitting duck

While the failure to identify the correct inventors or owners is not necessarily fatal to a patent in Australia, the Commissioner of Patents and the courts can direct that the Patents Register be amended to reflect the correct entitlement details. This can involve long and costly disputes, and can also have far-reaching consequences for any commercial agreements (eg licences, assignments), which may be invalid. Past and future revenues and royalties distributions may also be affected.

If there is any doubt over who is entitled to the grant of a patent, don't be a sitting duck. Talk to a patent attorney before it's too late!

Our leading Intellectual Property team

Allens' Intellectual Property group is at the top of its game, having been ranked band 1 in Chambers Asia-Pacific for 16 consecutive years.

Our IP lawyers and Patent and Trade Mark Attorneys are widely recognised across all leading legal directories and specialist IP publications, including:

Top tier for Copyright, Patent Contentious and TM Contentious
Managing Intellectual Property, 2018
World Trademark Review, WTR 1000, 2018Top tier for Enforcement and Litigation
World Trademark Review, WTR 1000, 2018
Top tier for Non-contentious and Contentious IP
Doyle's Guide, 2018
Top tier for Trade Mark Contentious and Patent Contentious
Asia IP Law, 2018
Band 1 for IP, Sports Law and Life Sciences
Chambers Asia-Pacific, 2018
Ranked for Litigation, IP Transactions and Prosecution
IAM Patent 1000, 2018
Ranked for Intellectual Property
Asia-Pacific Legal 500, 2018
Ranked for Trade Mark Prosecution and Copyright
Asia IP Law, 2018

Miriam Stiel
Practice Group Leader
Miriam.Stiel@allens.com.au

  • Top 250 Women in IP – Managing Intellectual Property
  • Band 3 – IP: Trade Marks and Copyright – Chambers Asia-Pacific
  • Patent & Trade Mark Star – MIP IP Stars
  • Best Lawyers 2018
  • Ranked – World Trademark Review, WTR1000
  • Leading IP Lawyer, Doyle's Guide

Tim Golder
Partner
Tim.Golder@allens.com.au

  • Band 1 – IP: Trade Marks and Copyright – Chambers Asia-Pacific
  • Trade mark Star – MIP IP Stars
  • Best Lawyers 2018
  • Gold – World Trademark Review, WTR1000
  • WIPR Leader 2019
  • Preeminent Lawyer, Doyle's Guide

Andrew Wiseman
Partner
Andrew.Wiseman@allens.com.au

  • Patent & Trade mark Star – MIP IP Stars
  • Band 3 – Life Sciences – Chambers Asia-Pacific
  • Top Patent Professional – IAM Patent 1000
  • Silver – World Trademark Review, WTR1000
  • Preeminent Non-contentious Lawyer, Doyle's Guide

Sarah Matheson
Partner
Sarah.Matheson@allens.com.au

  • Thought Leader, Patents – WWL 2018
  • Band 2 Life Sciences and Recognised Practitioner IP: Patents – Chambers Asia-Pacific
  • Patent Star – MIP IP Stars
  • Top Patent Professional – IAM Patent 1000
  • Best Lawyers 2018
  • Leading IP Lawyer, Doyle's Guide

Richard Hamer
Partner
Richard.Hamer@allens.com.au

  • Band 1 – IP: Patents – Chambers Asia-Pacific
  • Top Patent Professional – IAM Patent 1000
  • Best Lawyers 2018
  • Patent Star – MIP IP Stars
  • Leading IP Lawyer, Doyle's Guide

Philip Kerr
Senior Patent & Trade Mark Counsel
Philip.Kerr@allens.com.au

  • Band 1 – IP: Patents – Chambers Asia-Pacific
  • Top Patent Professional – IAM Patent 1000
  • Leading Individual – APL 500
  • Patent Star – MIP IP Stars
  • Gold – World Trademark Review, WTR1000
  • WIPR Leader 2019
  • Preeminent Lawyer, Doyle's Guide

Linda Govenlock
Partner, Allens PTA
Linda.Govenlock@allens.com.au

  • Top Patent Professional – IAM Patent 1000
  • Patent Star – MIP IP Stars
  • WIPR Leader 2019

Trevor Davies
Partner, Allens PTA
Trevor.Davies@allens.com.au

  • Patent Star – MIP IP Stars
  • Recommended: Life Sciences – Patent
  • Counselling – PLC Which lawyer?

Ric Morgan
Special Counsel
Ric.Morgan@allens.com.au

  • Recognised Practitioner – Life Sciences – Chambers Asia-Pacific

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