Luật học - Chapter 17: Intellectual property law

This is the prescribed textbook for your course.Available NOW at your campus bookstore!Intellectual property lawChapter 17Learning objectivesAt the end of this chapter you should understand:‘intellectual property law’ and the philosophy behind the concept of protecting intellectual propertyhow to distinguish between the products that are protected by copyright, patent, trade mark and design legislationthe definition of the term ‘copyright’ and explain how the law relating to it protects the physical expression of ideashow the Designs Act 2003 (Cwlth) protects the visual form of articlesthe definition of the term ‘trade mark’ and the operation of the Register of Trade MarksLearning objectives (cont.)the definition of the term ‘patent’ and outline the requirements for patentability the tort of passing offthe elements in a common-law action for breach of confidence in relation to confidential informationthe remedies for breach of copyright, unauthorised use of trade marks, designs, patent infringement, passing off and breach of confidential informationthe actions for passing off, infringement of trade marks and breaches of s.18 of the Australian Consumer Law.IntroductionIntellectual property law deals with the legal rights that relate to intangible property such as:copyrightregistered designstrade markspatents.Intellectual property is not capable of being possessed like other personal property.May have significant commercial value.CopyrightCopyrightThe right to prevent the unauthorised reproduction by a third party of the tangible form in which a person has chosen to express his or her ideas.StatuteCopyright Act 1968 (Cwlth)Substance of statuteProtects the physical expression of ideas (not the idea itself).Copyright (cont.) Subject matter (categories)Original works Other than original works  Literary  Sound recordings  Musical  Films  Dramatic  Published editions  Artistic of works Examples of copyright in original worksLiterary worksBooks, tables of data, computer programsDramatic worksBalletArtistic worksPaintingsSculpturesDrawingsTo be original . . .Copyright subsists in ‘original’ works.To be original:it is not necessary for the work to be first of its kindthe work must originate with the authorthe work must be more than a copy of some other materialauthor must have used some skill or experience in making the work/product original.Ownership of copyrightAuthor generally owns copyright (author is person responsible for compiling the work).Employer owns copyright where author is under contract of service or apprenticeship.Person who commissions and pays for workMaker of sound recording or filmRights given to owner of copyrightDuration of copyrightPublished work (i.e. supplied to public):70 years after death of copyright ownerUnpublished work:70 years after publication for the first timeInfringement of copyrightOriginal works—by person performing any of the various acts in respect of the work without authorisation or consent of owner of copyright.Examples:Reproduction (i.e. copying) in a material form the whole or a substantial part of a literary, dramatic, musical or artistic work.Importing copies of an original work for sale, hire, exhibition or distribution.Performance of a work in public or broadcasting of a work without consent of the owner.Actions not amounting to infringement of copyrightUse of insubstantial partsFair dealing:Research or studyCriticism or reviewReporting of newsGiving of professional advice by a legal practitioner or a patent attorneyActions not amounting to infringement of copyright (cont.)Educational copyingIf adequate records maintained to enable compensation to owner of copyrightPublic readingsPerformances at homeCopyright work available in librariesIncidental appearances of artistic work in films or television broadcastsRemedies for infringement of copyrightInjunctionAction for delivery of infringing materialDamages, e.g.:loss sustainedadditional damages (if flagrant breach)account of profitsAnton Piller orderCopyright tribunalAuthorised to hold inquiries into matters relating to copyright.Copyright Amendment (Moral Rights) Act 2000 (Cwlth)Protects moral rights for:Authors of literary, dramatic, musical or artistic worksDirectors and producers of cinematographic filmRights covered:Right of attribution (right of creator to be identified)Right not to have works falsely attributed (right to prevent others claiming authorship of their work)Right of integrity (right to protect work from derogatory treatment)Copyright Amendment (Moral Rights) Act 2000 (Cwlth) (cont.)Defence:ReasonablenessRemedies:DamagesInjunctionPublic apology orderRemove infringementReverse the infringementCopyright Amendment (Digital) Agenda Act 2000 (Cwlth) Purpose: To extend copyright law protection into the electronic environment. Copyright Amendment Act 2006 (Cwlth)Amendments passed in direct response to Australia-US Free Trade Agreement.Amendments address:Personal use, (space shifting and recording)Fair dealing for parody or satireTechnological prevention methodsCopies for educational useCopies for librariesDesignsNew legislation:Designs Act 2003 (Cwlth)Definition of design: ‘the overall appearance of a product resulting from one or more visual features of the product.’Visual features:ShapeConfigurationPattern and ornamentationDefinition of product: ‘a thing that is manufactured or hand-made.’Examples: Building materialsJewelleryCutleryDesigns Act 2003 (Cwlth)Purpose of the legislation:To protect the visual appearance of a product and not its function, uses or way it constructed.Examples:Building materialsJewelleryCutleryPatterns on wall paper or fabricProtection against infringement of designProtection is provided through a process of registration at the Designs Office which is incorporated within Intellectual Property Australia.Designs must be ‘new’ and ‘distinctive’ when compared to the ‘prior art base’ to fulfil the requirements of registration.A design may initially be registered for 5 years and can be renewed for a further 5 years; maximum registration is therefore 10 years.InfringementProceedings for infringement can only be commenced after the design has been examined and a certificate of examination granted.A person will infringe a registered design if, without consent of the owner they:makeimportsell, hire or offer for sale or hirea product that embodies a design that is identical to, or substantially similar in overall impression, to the registered design.Trade marksTrade Marks Act 1995 (Cwlth)Enables providers of goods and services to distinguish their goods and services from those of other providers.Subject matter: any combination of: – letter – brand – word – heading – name – label – signature – ticket – numeral – device – shape – colour – sound – scent – aspect of  packagingExamples:DeodorantsAir freshener spraysBrand namesLogosRegistration of trade marksThe Trade Marks Act 1995 provides for registration of trade marks in a register maintained at the Trade Marks Office.A trademark must be 'capable of distinguishing' the applicant’s goods and services.The applicant must indicate the class/classes of goods and services for which the registration is sought.Certain signs cannot be registeredThe sign cannot be registered if it:contains or consists of a sign prohibited by regulationcannot be represented graphicallydoes not distinguish the applicant’s goods or servicesconsists of scandalous matter or matter the use of which would be contrary to lawconsists of matter the use of which would be likely to deceive or cause confusionis substantially identical with, or deceptively similar to, a trade mark registered by another person.Types of trade marksCertification trade marksDefensive trade marksCollective trade marksDuration of registration of a trade mark Initially for 10 years, then renewed indefinitely for successive periods of 10 years.Why register a trade mark?Protect goodwill associated with trade markExclusive rights to use trade markAsset included in business valuationMay assist with franchising and licensingInfringement of trade marksUsing mark similar to registered trade mark, in order to deceiveTort of passing offRemedies for infringement of trade marksInjunctionDamages:Loss sustainedAccount for profitsTrade Marks Amendment Act 2006 (Cwlth)Matters addressed in the Act: 'Absolute first use rule' introducedNew ground to opposition to registration is that the application to register was made in 'bad faith'Greater recognition of the international trend to protect famous trademarksChanges to non-use provisionsProvision for undertakings regarding customs noticesPatentsPatents Act 1990 (Cwlth); Patents Cooperation Treaty 1970 Inventor has sole and exclusive right to exploit and to authorise another to exploit his/her invention.Subject matter involves:Manner of manufacturingNoveltyPractical useExamples of inventions:MachinesDrugsProcessesTreatmentsApplication for patentsThrough Patent OfficePrerequisites:DisclosureProve application meets the requirement of being ‘novel’Tested against publications (written, oral or in use) anywhere in the worldDuration of protectionInnovation patent:Replaces petty patentMaximum of 8 yearsStandard patent:20 yearsInfringement of patents If invention is copied by manufacturing or supplying goods whose use would infringe the patent.Defences to infringement of patents At date of infringement, defendant was not aware of existence of patent.Remedies for infringement of patentsInjunctionDamages:Loss sustainedAccount for profitsTort of passing off Person seeks to pass his/her own goods or services off as the product of a more successful competitor.Elements of tort of passing offMisrepresentation is made:by a trader in the course of tradeto prospective customers of the trader, or ultimate customers of goods or services supplied by the tradercalculated as injuring the business or goodwill of another trader.Must cause actual damage to the business or goodwill of the trader who is suing.Action for breach of confidential information (common law)Substance:Restrains a person from using confidential information obtained from another, when they do not have the consent of the other party.Subject matter:Information has nature of being confidentialInformation received in circumstances where obligation of confidence is expressed or impliedInformation communicated to a third person without permissionExamples:Trade secretsGovernment informationRemedies for infringement of confidential informationInjunctionAnton Piller orderDamages