Copyright, code libraries and ownership

In Australia, copyright automatically vests in certain types of literary works, including computer programs and artistic works, upon their creation.  The general rule is that the owner of copyright in a literary or artistic work is the author of that work.[1]  An exception to this rule arises if the work is made by an employee pursuant to the terms of their employment.  In this case, the employer owns the copyright subsisting in the employee-generated work.  However, the distinction of whether an employee has created the work pursuant to the terms of employment, is not always clear.  This issue was considered in the case of Redrock Holdings Pty Ltd and Hotline Communications Ltd v Hinkley [2001] VSC 91 (Redrock). [Read more…]

Compilations from the public domain – confidential or not?

In the case of Ezystay Systems Pty Ltd v Link 2 Pty Ltd [2014] NSWSC 180 (Ezystay) it was held that the plaintiff’s business manuals were confidential despite having been compiled from the documents in “public domain”.  On Appeal, the Court had to re-visit the test for confidential information to determine whether or not the respondents’ software, business manuals and other documents collated from the public domain were in fact capable of being protected as confidential information.

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Tort of conspiracy & confidential information

The tort of conspiracy has been well established in Australia by the High Court, however it is a fairly uncommon cause of action.  The High Court has endorsed some early UK decisions with respect to damage, including the cases of Mogul Steamship Co v McGregor Gow & Co [1892] and Sorrel v Smith [1925] AC 700.  [Read more…]

Injunctions for breach of confidence

The recent Federal Court case of Howden Australia Pty Ltd v Minetek Pty Ltd [2019] FCA 981 highlights some of the challenges faced by applicants when attempting to establish that a breach of confidential information has taken place, and the steps required to obtain an interim injunction prior to the ultimate determination of a matter. [Read more…]

Computer-implemented inventions and patentability

The question of patentability of so called “computer-implemented” inventions has been the subject of legal debate in Australia for a number of years.  The September 2018 of the Full Court of the Federal Court in  Encompass Corporation Pty Ltd v Infotrack Pty Ltd [2019] FCAFC 161 was long anticipated by intellectual property lawyers and patent attorneys alike, who were eager to see a more substantial analysis about the patentability of computer-implemented inventions.  However, the expanded five-judge bench of the Full Federal Court expressly declined to provide this guidance because they did not believe the case raised any significant question of principle in this regard, and focussed  on ‘manner of manufacture’ as a ground for revocation. [Read more…]

The end of the innovation patent in Australia

The innovation patent system was originally introduced in 2001 to provide a cheaper, more efficient way for small to medium businesses to protect innovations through the introduction of the ‘innovative step’ test.  Innovation patents provide protection for inventions that do not meet the inventive step threshold required for standard patents.  However, the recent Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019 (Bill) will see the complete abolition of the innovation patent system in Australia. [Read more…]

IP contracts now subject to restrictive trade practice provisions

Agreements providing for the conditional licensing or assignment of intellectual property (IP) rights are now subject to the restrictive trade practice provisions of the Competition and Consumer Act 2010 (Cth) (CCA).  On 13 September 2019 section 51(3) of the CCA was been repealed removing the exception which applied to the licensing and assignment of IP.   This means commercial transactions involving the assignment of IP rights will be subject to the anti-competitive prohibitions, as are other transactions involving property. [Read more…]

Software litigation – how much evidence is enough?

Litigation involving software commonly involves allegations of copyright infringement and breaches of contractual obligations of confidence.  However, without an “anton pillar” style order, it can be challenging to substantiate the extent of any alleged breach due to the technological nuances involved with properly analysing available evidence.   This make it difficult for the plaintiff to decide whether or not to initiate legal proceedings against an infringing party.  In circumstances where a prospective applicant does not have complete access to the source code, it may be desirable to make an application for discovery prior to the start of proceedings pursuant to Rule 7.23 of the Federal Court Rules 2011 (Cth) (Rules). [Read more…]

Has my software been copied? – the legal test

There is an urban myth that something can be copied and changed by 20% or so and then there is no copyright infringement.   Rightly or wrongly this is simply untrue.  In the case of IPC Global Pty Ltd v Pavetest Pty Ltd (No 3) [2017] FCA 82 (IPC Global), a former employee of the applicant copied source code and passed it to a developer.  It was subsequently alleged that in doing so, the respondent had breached a contractual obligation of confidence and had also breached the applicant’s copyright. [Read more…]

The doctrine of repudiation – when good deals go bad

Contracting in business can get complicated, particularly if one party appears unwilling or unable to hold up their side of the bargain.   The common law doctrine of repudiation is one basis for terminating a contract and seeking appropriate damages for the other party’s ‘repudiatory’ conduct. [Read more…]

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