intellectual property

Top 11 legal tips when selling a technology business

Selling a technology business can be an exciting time for shareholders and directors who have worked hard towards an exit.  Because of this, it’s important for the exit to be as smooth as possible.   Below we set out our top 11 tips for selling a technology business which, if followed, will ensure greater protection for sellers and reduce their risk. [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…]

Know-how versus confidential information

In an article entitled “is your confidential information really confidential” we discussed what is and isn’t confidential information and how this term is nearly always misused.  This article discusses a category of confidential information known as “know-how” and what rights employers have over it. [Read more…]

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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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…]

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