Intellectual property litigation

Proposed amendments to use of orphan works

On 13 August 2020, Paul Fletcher MP, Minister for Communications, Cyber Safety and the Arts, announced amendments to the Copyright Act 1968 (Cth) (Act).  The amendments follow two (2) years of stakeholder consultation, and finalise the Government’s response to the Productivity Commission’s 2016 Intellectual Property Arrangements Report.  The reforms focus on the use of “orphan works”, with an aim to provide a framework for copyright that is fit for the digital age. [Read more…]

Preliminary discovery granted in patent proceedings

The Federal Court of Australia has allowed an application for preliminary discovery of documents related to the components of a ‘sealing composition’ and methods of using it to seal passages.  In the case of Sovereign Hydroseal Pty Ltd v Steynberg [2020] FCA 1084, the Federal Court considered whether preliminary discovery can be used by a patentee to inform its decision-making in relation to whether to commence a proceeding in respect of potential patent infringement. [Read more…]

Indirect patent infringement – lessons from Quaker Chemical

In the recent decision of Quaker Chemical (Australasia) Pty ltd v Fuchs Lubricants (Australasia) Pty Ltd (No 2) [2020] FCA 306 (Quaker Chemical) the Federal Court of Australia decided that a company had indirectly infringed two (2) patents by supplying its customers with a product, because its use by customers would have infringed the methods of the patents. [Read more…]

Website blocking orders – what has to be proven?

Section 115A of the Copyright Act 1968 (Cth) came into effect on 27 June 2015 and was amended on 11 December 2018 by the Copyright Amendment (Online Infringement) Act 2018 (no. 157, 2018) (Online Infringement Act).   The amendments were considered in the case of Australasian Performing Right Association Ltd v Telstra Corporation Ltd [2019] FCA 751 (APRA) which was the first case heard after the 2018 amendments where Justice Perram revisited the factors relevant in determining whether to not to make the orders pursuant to the amended section 115A of the Copyright Act 1968 (Cth) (Act). [Read more…]

What is a software licence agreement?

A software  licence agreement (Software Licence Agreement) is a contract where one party (Licensor) grants to another party (Licensee) the right to use the defined software.  It is often used by software developers (Developers) so that they can build and own a core application, customise it for particular clients and provide them with a licence to use the core.  In many cases this licence has been the start of a substantial business enterprise.  The term Software Licence Agreement can apply to both installed software as well as cloud based applications.  That said cloud based Apps are commonly referred to as “Software as a service contracts” or SaaS Contracts because they involve the right to access and use a software application as opposed to a right to reproduce the code. [Read more…]

s115A Copyright Act – infringement outside Australia

Section 115A of the Copyright Act 1968 (Cth) came into effect on 27 June 2015 and was amended on 11 December 2018 pursuant to the Copyright Amendment (Online Infringement) Act 2018 (no. 157, 2018) (Online Infringement Act).  The effect of the amendments as described in the Explanatory Memorandum to the Bill were to amend the threshold test from ‘primary purpose’ to ‘primary effect’, add a rebuttable presumption that an alleged ‘online location’ is located outside Australia, to extend the scope to online search engines (Deindexing Orders) and allow the Court to make “more responsive” orders in terms of injunctive relief. [Read more…]

Can meta tags constitute trade mark infringement?

Search engines use a variety of algorithms and methods to determine the relevancy and ranking of websites on the search results page, based on keywords.  Importantly, search engines can refer to a websites ‘meta tags’ to find relevant words to match with search results.  As a result, meta tags have become increasingly important for businesses and their online presence.  However, the case of Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554 (Accor Case) highlights the difficulties of meta tags with respect to trade mark infringement. [Read more…]

Intellectual property assignments and the right to sue

The process of identifying and protecting intellectual property (IP) rights often involves entering into IP assignment deed to transfer rights to another entity.  There are various reasons why parties will want to do such an assignment including asset protection and for the purposes of commercialisation.  The question that often arises after an assignment has occurred is whether or not the recipient (or assignee) of the IP has a right to sue for past infringement of the rights obtained. [Read more…]

Adaptions, computer code and copyright

An adaption in copyright is the exclusive right of the owner of the work in question.  Section 10 of the Copyright Act 1968 (Cth) (Act) defines adaption as it relates to literary works in dramatic and non-dramatic forms, in a computer program and in relation to a musical work.   The rights that apply to adaptions in different separate classes of literary works differ according to the respective category in question. [Read more…]

Innocent infringement of copyright

Under the Copyright Act 1968 (Cth) (Act), copyright infringement occurs regardless of whether it is intentional or not.  Artistic works are particularly susceptible to copyright infringement, because it is possible for two individuals to separately come up with the same idea, reproduce it in a material form, publish it and communicate it to the public.

The result is that an infringer may think they are absolutely entitled to exploit what they consider to be there IP, despite allegations to the contrary.  To deal with this situation, section 115(3) of the Act provides the special defence of “innocent infringement”. [Read more…]

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