Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.

Thursday, November 27, 2014

Inaugural Scintilla film review: Dallas Buyers Club, LLC v iiNet

By Annie Zheng, Lawyer

Online copyright infringement is back in the spotlight again – this time under scrutiny from the bright lights of Hollywood.

In this post, we provide a brief synopsis and commentary on the Dallas Buyers Club v iiNet Ltd proceeding, ahead of its highly-anticipated premiere (ie hearing) in the Federal Court on 17 February 2015.


The plot goes a little like this: Dallas Buyers Club, LLC is a company that owns the rights to the film of the same name, which earned an Oscar for actor Matthew McConaughey (surprisingly, he had not previously been nominated for performances in other classic cinematic masterpieces such as Magic Mike and The Wedding Planner). The film's success, which can no doubt be attributed to the effect of the 'McConaissance', has meant that the film has been ripe for illegal downloading via peer-to-peer file sharing websites.

Act I

In mid-October, Dallas Buyers Club, LLC initiated proceedings in the Federal Court. The company filed evidence seeking to show that it has identified the IP addresses of persons who have illegally shared the film, and applied for preliminary discovery of documents belonging to various internet service providers including iiNet (together, the ISPs), for the purpose of obtaining information contained in those documents about the identity of the ISPs' customers.

Act II

On 17 November, Justice Perram of the Federal Court refused four applications by various interested parties in the media for access to the restricted evidence filed to date. The basis for this refusal was that the interests of the parties would be at risk of being adversely affected by the release of 'filed but as-yet-unused evidence', as the material had not been made available in open court yet,  and may be subject to confidentiality regimes or objections down the track.

Friday, November 21, 2014

Boosting commercial returns from research

By Clare Young, Managing Associate

In late October, the Ministers for Industry and Education released a consultation paper entitled Boosting commercial returns from research. At this stage the proposals are fairly vague, which suggests that the industry consultation process will be a key part of shaping those proposals into more concrete policy. Clearly, universities and research organisations will be affected by these proposals, but there will also be benefits – by way of additional project funding – to business in those industries which are identified as being relevant to Australia's research priorities.

Wednesday, November 19, 2014

Is a trade mark for the flavour of pizza a taste of things to come?

By Mark Williams, Senior Associate

It was with great interest that we noted the recent reporting of the decision of the Fifth Circuit Court of the US District Court in New York Pizzeria, Inc. v Syal et al.
The case centred around a claim of trade mark infringement after NYPI's former President allegedly conspired to create a copycat restaurant using the recipes, suppliers and internal documents of NYPI. NYPI claimed that its pizza flavour was distinctive, arguing that 'the flavour of its Italian food and the way in which it plates its baked ziti and chicken and eggplant parmesan dishes are entitled to trademark protection'.

Friday, November 14, 2014

Trade mark infringer skewered by additional damages claim

By Julia Kovarsky, Associate

The 'Raising the Bar' amendments to the Trade Marks Act 1995 (Cth) (the TM Act) introduced the power of the court to award additional damages for trade mark infringement. Section 126(2) of the TM Act came into force on 15 April 2013, allowing the court to include an additional amount in an assessment of damages for an infringement of a registered trade mark, if appropriate. The provision is similar to section 115(4) of the Copyright Act 1968 (Cth) which has been in operation for quite some time and applied by the court on many occasions (from Autodesk v Cheung in 1990 to Vertical Leisure v Skyrunner in 2014). The power to award additional damages under the TM Act raises the stakes for infringers of registered trade marks. Where only a nominal amount may have been payable before, the court can now set a hefty price for infringement by awarding additional damages.

Paying the wholesale price

This lesson was learned the hard way by a kebab wholesaler, Quality Kebabs, when it forged halal certification papers using the registered trade mark of the 'Rolls-Royce' of halal certifiers – the Halal Certification Authority Pty Limited (the HCA). When two kebab shops, customers of Quality Kebabs, asked for certificates that the meat sold to them was halal, Quality Kebabs provided them with HCA-branded certificates. The only problem was, HCA had not issued those certificates. According to the director of Quality Kebabs, a rogue employee decided to forge the certificates of his own accord, complete with HCA's seal (a registered trade mark), and then absconded to Germany with the hard drive which contained the only remaining copy of the forgery. Justice Perram found this series of events to be highly improbable. Instead, his Honour held that Quality Kebabs had deliberately used HCA's seal on the forged certificates and infringed HCA's registered trade mark rights.

Tuesday, November 11, 2014

Financial scheme again held not to be patentable subject matter

By Anthony Selleck, Senior Associate

We have been closely following developments in Australia and elsewhere concerning the important question of whether, and the extent to which, computer-implemented inventions can be protected by patents. The latest chapter is yesterday's decision of the Full Court of the Federal Court of Australia, to unanimously dismiss Research Affiliate's appeal against an unfavourable first-instance decision. We reported the first-instance decision of the Federal Court in an earlier post.

In a nutshell, the Full Court decided that while the claimed method of creating an index of securities could well have been an inventive idea, it was nevertheless an un-patentable 'abstract idea' or 'mere intellectual information'. The use of the term 'abstract idea' strongly echoes the recent decision of the United States Supreme Court in Alice Corporation v CLS Bank that was also concerned (see our earlier posts about the Alice Corporation decision here and here) with the patentability of a financial scheme.

Friday, November 7, 2014

Brothers in Arms, copyright in photographs

By Joel Barrett, Senior Associate

On Father's Day 1984, residents of the Sydney suburb of Milperra witnessed a short but violent skirmish between bitter rivals, the Comancheros and Bandidos bikie gangs. By the time police arrived, seven people were dead from gunshot wounds, including an innocent 14-year-old bystander named Leanne Walters. The incident became known as the Milperra Massacre.

The Milperra Massacre was not just a tragic event, but also a watershed in New South Wales legal history, leading to radical new gun control laws, one of the largest and longest joint criminal trials in Australia, and controversial appeals. Thirty years later, only one legal controversy remains: an unlikely claim of copyright and moral rights infringement.

Thursday, November 6, 2014

Just in time: High Court confirms time for applying to extend term of pharmaceutical patent is capable of extension

By Linda Govenlock, Managing Associate

In a 3:2 majority decision handed down yesterday, the High Court of Australia has found that the remedial provisions available under section 223(2) of the Patents Act 1990 (Cth), which extend the time for completing a relevant act, are available in relation to applications for patent term extension (PTE), provided that the PTE application is filed before the expiration of the patent. This decision will bring a sigh of relief to patent owners and brings an end to this chapter of a nine-year, hard-fought battle between the Danish patentee, Lundbeck A-S, and its generic competitors, spearheaded by Alphapharm Pty Ltd.