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

Thursday, December 24, 2015

Defining the relationship. Are we exclusive?

by Lauren John, Associate

Earlier this year, the Full Federal Court in Bristol-Myers Squibb Company v Apotex Pty Ltd (2015) 228 FCR 1 (Bristol-Myers) apparently resolved the uncertainty created by conflicting decisions by single judges as to the meaning of 'the right to exploit the patented invention' as used in the definition of 'exclusive licence' in the Patents Act. The Full Court confirmed that in order to be an exclusive license, a licensee must be granted all the rights to 'exploit' the patent to the exclusion of all others, including the patentee. The question of whether or not a license is exclusive is important in the context that an exclusive licensee has standing to commence proceedings for infringement of a patent pursuant to s 120(1) of the Patents Act.

A recent decision of the Federal Court has considered whether a party is an exclusive licensee in light of the decision in Bristol-Myers, and provides guidance for licensing entities as to how to structure their licensing arrangements to reflect their intended relationship.

Thursday, December 17, 2015

Full Court comes down hard on business method patent, but software remains patentable

by Chris Bird and Anthony Selleck

The Full Court of the Federal Court of Australia yesterday published its reasons in the eagerly-awaited appeal decision of RPL Central v The Commissioner of Patents. The Court reversed the first instance decision, deciding that the evidence-gathering method the subject of RPL Central's innovation patent was a 'mere scheme', abstract idea or business method that did not constitute patentable subject matter.

The Court's reasoning provides welcome clarification regarding the patentability of software-related inventions. Importantly, we do not see the decision as in any way preventing the patenting of inventions in these fields of technology. Indeed, the Court was at pains to point out that computer-implemented business methods are indeed patentable, provided there is technological innovation in the way in which the method is carried out by a computer or computer system. More broadly, the decision confirms that many areas of software innovation constitute proper subject matter and are thus potentially protectable by patents.

Conversely, the decision casts doubt on the validity of some granted Australian patents with broad claims directed to business methods implemented using well-known computer and Internet functionality. Such patents were relatively readily granted, particularly during the dot-com boom of the early 2000s, when the Australian Patent Office was operating under less restrictive patentable subject matter guidelines.

It is open to the patentee to apply for special leave to appeal the Full Court's decision to the High Court of Australia.

Wednesday, December 9, 2015

Databases are protected by copyright, right?

by Scott Joblin

These days, businesses are built on the back of the databases they've compiled, and fortunes are made and lost on making sure those databases are safe, secure and proprietary.

Obviously, the easiest way to keep your database secure is to never reveal it to the public. However, what happens if the content of your database must be public or your revenue model relies on revealing or publicising your data (e.g. publicly searchable indices or television programming schedules)?

If your content is out there in the wild, can you rely on copyright to stop people from copying your content and profiting from your hard work? 

The short answer is: probably not. The slightly longer answer is: it depends on what you want to protect.

Monday, December 7, 2015

And it was all Yellow, Not.

Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd

By Brydon Wang, Lawyer

A recent Trade Mark case heard on appeal by the Full Court of the Federal Court Australia has upheld the finding that the word 'Yellow' is descriptive and unable to aid in distinguishing print or online directories. The case looked at an older version of section 41 of the Trade Marks Act 1995 (Cth) (TMA) but the principles laid down by the court are relevant to the current version of section 41.

The case offers a number of points for clients:

  • When considering the level of distinctiveness of a trade mark, the court will consider whether other traders would use the same sign in the ordinary course of their business and may even consider commercial practices overseas to inform a 'hypothetical' trader in Australia.
  • Where appealing a rejected application over a broad range of goods and services, clients should consider limiting the range of goods and services for which registration is sought as the court will be reluctant to exercise its discretion to reduce and grant registration over a narrower range of classes sought.
  • The onus of proof is on the opponent to prove on the balance of probabilities that a trade mark has no inherent capacity to distinguish.
  • While not part of the ratio of the case, the court continues to provide further guidance on acquired distinctiveness (s 41(5) of the previous version of the TMA).
  • The Full Court has again clarified that marks have to be viewed as a whole and where an essential feature of a mark is taken, it may not necessarily be deceptively similar.

Friday, November 20, 2015

Are you affected by the new unfair contract terms legislation?

By Nadia Guadagno, Senior Associate

New legislation has just been enacted which extends unfair contract term protections in the Australian Consumer Law (ACL) and ASIC Act to 'business-to-business' transactions which meet prescribed criteria.

Your contract will be covered by the new law if it satisfies each of the following.

1. It relates to the supply of goods and services, the sale or grant of an interest in land or financial services and products.

2. At least one of the parties to the contract employs fewer than 20 people (including casual employees employed on a regular and systematic basis) at the time the parties enter into the contract. The relevant number of employees is the number of employees of the legal entity that is a party to the contract. If a company has subsidiaries or other related entities the employees of those companies are not included in the head count.

Wednesday, November 11, 2015

TPP comes in at 6000 pages. Here are the key bits.

By Claire McMahon, Associate

It's official – the negotiated text of the TPP has been released by DFAT, one month after the agreement was announced, but is still subject to legal review and authentication in each of the official languages. The agreement runs to more than 6000 pages. Because we know our readers are too busy to pick through that to find out how some of the most topical aspects of the IP chapter were resolved, we've summarised them here for you.

How the negotiations developed

Although the text is largely unchanged since the last WikiLeaks leak which we reported on last month, there has been a raft of changes across the history of the TPP negotiations. Sometimes this was due to shifts of position. In other cases, until the very end, parties stood firm on issues that really mattered, politically or economically. For instance, market access for agricultural products such as rice, dairy and sugar kept Japan, the US, Canada, New Zealand and Australia locked in tight negotiations right down to the line.

Wednesday, October 21, 2015

Cigar parallel importation claims go up in smoke

By Joel Barrett, Senior Associate

As any experienced smoker will tell you, one does not inhale when smoking a cigar. But Scandinavian Tobacco Group Eersel BV (STG for short), a Danish producer of hand- and machine-made cigars, is likely to be taking a few deep breaths after the Federal Court recently dismissed its claims against a parallel importer for trade mark infringement, passing off and contravention of the Australian Consumer Law.

The dispute took place against the somewhat unusual backdrop of Australia's tobacco plain packaging legislative landscape. STG manufactures and packages cigars under the brand names Café Crème, Henri Wintermans and La Paz in Belgium and Holland, and then supplies the goods to its Australian subsidiary for sale in Australia. Under a formal distribution agreement between them, STG appointed the Australian subsidiary as the sole distributor, wholesaler and promoter of the cigars in Australia. However, since 2012, a third party named Trojan Trading Company Pty Ltd has been independently purchasing genuine STG cigars packaged for overseas markets (from a source unknown), importing them into Australia, unpacking and repackaging them so that they comply with the Tobacco Plain Packaging Act 2011 (Cth) and Tobacco Plain Packaging Regulations 2011 (Cth), and selling the cigars to Australian wholesalers and retailers in that new packaging.

Monday, October 19, 2015

IP Australia issues patent examination proposal following Myriad decision

By Trevor Davies, Partner

In light of the recent High Court decision in D'Arcy v Myriad Genetics, in which the High Court unanimously ruled that isolated nucleic acid encoding the mutant BRCA1 polypeptide was not patentable, IP Australia has issued a proposal for patent examination for public comment.

We are pleased to note that IP Australia has taken a pragmatic approach to the Myriad decision and proposes excluding only a limited class of genetic material from patent protection.

Monday, October 12, 2015

Gummy bear fails to take out its rival, the Lindt chocolate bear

By Nadia Guadagno, Senior Associate

The Lindt gold chocolate bear has been saved from destruction thanks to a recent ruling of Germany's highest court.

Nadia Guadagno reports on the ruling, in video and in text:

Haribo, the confectionery maker most well-known for its gummy bears, claimed that Lindt's gold chocolate bear infringed Haribo's word trade marks GOLDBÄR and GOLDBÄREN (meaning 'gold bear' and 'gold bears', respectively) and its 2D image trade mark of a bear.


Haribo's trade marks
Lindt's gold chocolate bear

Haribo sought a wide range of remedies including damages and the withdrawal and cessation of sales and destruction of all gold chocolate bears. What an unbearable thought!

Friday, October 9, 2015

Productivity Commission releases IP system review issues paper

By Claire McMahon, Associate

Just when you thought that there could be no more IP-related news this week, the Productivity Commission has gone ahead and released an issues paper ahead of its review into Australia's IP system. This review will cover all areas of IP: patents and data protection, copyright, trade marks, designs, plant breeder's rights, circuit layout rights and geographical indications, as well as IP enforcement and international obligations.

The Commission has invited submissions on the issues and questions outlined in the issues paper. These submissions are due by 30 November 2015. The Commission will then be required to report to the government by mid-August 2016.

This review comes after the release of the Competition Policy Review, also known as the Harper Review. One of the Harper Review recommendations was that the Productivity Commission be tasked with evaluating the existing IP system. This review will be focusing on, among other things:
  • innovation, cost and competition issues arising from the scope and duration of IP protection in Australia, including problems arising from developments in markets and technology;
  • the principles underlining Australia's position on IP provisions in international treaties; and
  • changes to the IP system that would be beneficial to Australian society, keeping in mind its international trade obligations.
Surely many will see the irony in the fact that an issues paper requesting input on Australia's international treaty obligations and the appropriate negotiation principles for such treaties was released two days after the Trans-Pacific Partnership was finally agreed.

In any case, the Commission states its overarching objective as being 'to maximise wellbeing of Australians'. It aims to achieve this goal by ensuring the system is effective, efficient, adaptable and accountable.

Although the purpose of an issues paper is to provide an overview of key issues and set out the policy areas to be considered, this issues paper does give some insight into the thought process behind the review. For example, the issues paper is concerned about striking the right balance between the rights of creators and those of consumers – not surprising given its competition policy origins – which seems to translate to reducing costs for consumers and limiting IP protection where it is not justified. It highlights the balance of rights in the pharmaceutical area as 'particularly contentious', especially regarding patents in relation to new compounds and biologic drugs.

The issues paper also notes the difficulties facing the copyright system, particularly with the development of technology that has not only made infringement easier and cheaper but has highlighted the inflexibility of the existing system.

The Commission states that it will be examining international approaches to IP enforcement, such as the model adopted by the UK Intellectual Property Enterprise Court. It will also seek input on the impact of Australia's international IP obligations on domestic innovation, production, trade and consumption, and what principles should guide future decision making in this area.

Thursday, October 8, 2015

High Court unanimously finds isolated genetic material not patentable

By Trevor Davies, Partner, and Linda Govenlock, Managing Associate

As the culmination of a hard-fought patent dispute, the High Court of Australia has unanimously ruled that Myriad Genetics' patent claims to isolated nucleic acid coding for the mutant or polymorphic BRCA1 polypeptide are not valid. This emphatic decision in D'Arcy v Myriad Genetics Inc overturns the previous decisions at trial and on appeal before the Full Federal Court, and effectively nullifies the long-standing practice that 'isolation' of material from a natural source was sufficient to meet the patentable subject matter threshold in Australia.

The High Court indicated that it was not concerned in this appeal with 'gene patenting' generally, but with whether the invention as claimed fell within established applications of the concept of 'manner of manufacture' which frames the fundamental issue of patent-eligible subject matter under the Patents Act 1990 (Cth). The High Court criticised the approach of the primary judge and Full Court for applying a 'verbal formula' adapted from the High Court's landmark decision in National Research Development Corporation v Commissioner of Patents to the question of patentable subject matter, namely, that to be patentable it was 'sufficient for a product to result in an ''artificially created state of affairs'', leading to ''an economically useful result'." The High Court found that approach was too narrow.

Wednesday, October 7, 2015

D'Arcy v Myriad: The High Court rules on gene patenting

The High Court has today unanimously overturned the Full Federal Court's decision in D'Arcy v Myriad Genetics that isolated genetic material was patentable.

The case revolved around a patent by Myriad Genetics claiming isolated nucleic acid encoding a protein implicated in predisposition to breast or ovarian cancer. The High Court decided that the substance of the claimed invention is genetic information embodied in the nucleic acid. The information is not 'made' by human action, was naturally occurring and not a 'manner of manufacture'.

Today's decision has implications for parts of the Australian biotech industry.

Allens Partner Dr Trevor Davies discussed with Boardroom Media why the High Court overturned the decision and what it means for the biotech industry.

You can listen to the interview at the Allens website.

We will publish a detailed post on the decision tomorrow on Scintilla.

Tuesday, October 6, 2015

TPP – agreement finally reached!

by Claire McMahon, Associate

For those of you who have been holding your breath, it has been confirmed – trade ministers from the twelve parties to the Trans Pacific Partnership (TPP) reached agreement yesterday, after extensive negotiations which continued over the weekend. The Australian Government has provided a summary of the final TPP market access outcomes here.

Data protection periods for biologic drugs has been one of the major outstanding hurdles for negotiators over the past several months. The United States had been seeking an eight-year data-exclusivity period, having retreated from 12 years after intense opposition from the other parties. Other parties, most notably Australia, have stood firm on a five-year data protection period, as is our existing law.

Thursday, October 1, 2015

The Saga Continues, per se

by Nick Li, Lawyer

Last week, in yet another episode in the battle in the Alphapharm v Lundbeck case, the Full Court of the Federal Court of Australia unanimously upheld the decision to grant an extension to the term of Lundbeck's escitalopram patent. In ambitious arguments that sought to side step the many earlier decisions, Alphapharm (on behalf of a number of generic companies) mounted an offensive on whether the escitalopram enantiomer as claimed in the patent qualified as a pharmaceutical substance per se under section 70(2)(a) of the Patents Act 1990 (Cth). This was a brave approach, as it effectively challenged the findings of an earlier Full Court in relation to the same patent.

The crux of the case was whether escitalopram, as claimed, was a pharmaceutical substance per se – as required for Lundbeck to obtain an extension of term for its patent – or whether the claim was escitalopram with an additional requirement as to purity.

In short, and unsurprisingly, the court declined to disagree with itself but rather disagreed with Alphapharm (again).

Tuesday, September 29, 2015

Bob Katter's proposed amendments to the Trade Marks Act

by Mark Williams, Managing Associate

Law reform in respect of trade marks in Australia moves at glacial pace. Therefore, any proposed amendment to the trade mark legislation generates significant interest amongst the IP Community. Mark Williams reports on Bob Katter's proposal for protecting Aussie icons, in video and in text:

On 14 September, the Trade Marks Amendment (Iconic Symbols of National Identity) Bill was introduced to Parliament by Federal MP Bob Katter. Prompted by Mr Katter's indignation at recent trade mark applications by various parties for trade marks consisting of the words Waltzing Matilda, the Bill proposes a new ground for rejecting a trade mark application if the trade mark consists of a sign that is of national significance, or iconic value, to the people of Australia.

Monday, September 28, 2015

A different kind of birthday suit

By Lauren John, Associate

'Happy Birthday, to you'. Although it is the most recognised and most frequently sung song in the world, many would be surprised to learn that this simple ditty, most famously performed by Marilyn Monroe in 1962, is still protected by copyright. That was, until last week.

US District Judge George King has ruled that Warner/Chappell, the purported copyright owner of Happy Birthday, does not in fact own a valid copyright in the lyrics to the song. The decision is significant given that the song may have been afforded copyright protection in the US until 2030.


A purported class action, filed two years ago, was commenced by a film-maker who paid $1500 to licence the song for use in a film about its history. Anyone seeking to publicly perform the song or use it in a commercial enterprise was required to pay a licence fee to Warner/Chappell, which is the music publishing division of the Warner Music Group. Warner/Chappell acquired the song's copyright for $15 million in 1988 and it reportedly generates $2 million in royalties per year for the company. The plaintiffs alleged that the song's copyright expired in the early 1920s and it should be dedicated to public use.

Tuesday, September 22, 2015

Locking down flighty cybersquatters – new UDRP rules

By Scott Joblin, Lawyer

On 31 July this year, an updated version of the Rules for Uniform Domain Name Dispute Resolution Policy (the UDRP Rules) came into effect. The Rules, in combination with the supplemental rules of the various dispute resolution providers, set out procedural requirements to be complied with in disputes relating to abusive registration and use of domain names. The previous Rules will continue to apply to complaints which were submitted before 31 July 2015.


The new UDRP Rules have introduced a number of changes that are, for the most part, intended to address a practice known as cyberflight. This is where a domain name holder, after learning about a complaint that has been filed against it, alters details of the registration or changes the registrar, with the intention of avoiding or delaying proceedings. This has been a tactic commonly associated with cybersquatters (ie those who try to profit from registering and reselling, or hosting paid advertising on, domains that incorporate established company or brand names).

Monday, September 21, 2015

We've created a monster! Government looks to do away with innovation patents

By Emily Cravigan, Associate

Although under scrutiny for some years, things really started to get dicey for the innovation patent system in May of this year, when the Advisory Council on Intellectual Property (ACIP) recommended that the government consider abolishing it altogether. IP Australia is now seeking public submissions on the recommendation by 28 September 2015.

A long review process

Readers of this blog will be familiar with innovation patents – they are the faster, cheaper and more accessible alternative to the standard patent, introduced to encourage innovation amongst small to medium enterprises (SMEs) by providing protection for innovations that may not meet the higher inventive step threshold requirement for standard patents.

The innovation patent has been poked, prodded and probed for some time now. Back in 2011, the Department for Innovation, Industry, Science and Research, concerned about potential misuse, asked ACIP to investigate whether the innovation patent system was meeting its intended objective of stimulating innovation amongst small Australian players. Although ACIP spent three years conducting its review (including by commissioning its own research), its final report was inconclusive - ACIP was unable to recommend whether the system should be kept or done away with.

Friday, September 18, 2015

Turf war: Upholding exclusive territory rights in a licence

By Nadia Guadagno, Senior Associate

Exclusivity is one of the most valuable rights which can be granted under a licence agreement. If that right is impinged upon, then the value of the licence is eroded. Licensees will legitimately expect licensors to honour the grant of an exclusive licence, but how far is the licensor required to go to protect that right?

The Full Federal Court recently considered this issue in Marmax Investments Pty Ltd v RPR Maintenance Pty Ltd [2015] FCAFC 127 concerning a longstanding territory war between a franchisor and two franchisee neighbours.

What happened?

Spanline Weatherstrong Building Systems Pty Ltd (Spanline), a franchisor of the business of sale and installation of home additions, such as verandas and carports, entered into separate franchise agreements with RPR Maintenance Pty Ltd (RPR) and Marmax Investments Pty Ltd (Marmax) under which it granted each of them an exclusive right to conduct the franchised business in adjacent territories.

Wednesday, September 16, 2015

TPP latest: Copyright causing commotion

By Claire McMahon, Associate

Rumblings about the Trans Pacific Partnership (TPP) continue, with copyright activists (on all sides) taking issue with the existing copyright provisions in the latest leaked version of the Intellectual Property Chapter.

We discussed some of the other big ticket items in this new version in a recent post, noting that the US is still pushing to extend copyright protection under the TPP to 70 years beyond the life of the author, with longer protection afforded to corporate authors. This is consistent with current US and Australian law, but some US lobbyists are unhappy about the existing length of protection and are concerned that enshrining these copyright terms in an international treaty will make it more difficult to lobby to have them shortened. This period of copyright protection is also longer than the existing period in a number of the other countries.

Thursday, September 3, 2015

High Court delivers verdict on Crestor patent

By Tracy Lu, Senior Associate

In an unanimous decision, the bench of five Justices of the High Court in the litigation between AstraZeneca, Apotex, Watson and Ascent involving the drug rosuvastatin (brand name Crestor) found against the patentee on the ground of lack of inventive step having regard to the combination of common general knowledge (CGK) with either one of two pieces of section 7(3) prior art information.

We previously reported on the lower court decisions in this case in August 2014 and April 2015.


The patent related to methods of treatment involving the use of particular doses or dosage ranges of a cholesterol lowering agent, rosuvastatin and its pharmaceutically acceptable salts. The invention addressed the problem of developing a new statin treatment that could bring more patients to their target blood cholesterol level without the need to resort to dose titration.

Friday, August 21, 2015

The plot thickens: a twist in the Dallas Buyers Club v iiNet saga

By Richard Sawyer, Lawyer

The courtroom drama between Dallas Buyers Club LLC (Dallas) and internet service provider iiNet has had many of the hallmarks of a great film: scenes of fiery cross-examination, a suspenseful cliff-hanger judgment and now an eleventh-hour plot twist.

Following a new judgment by Federal Court Justice Nye Perram, iiNet will not have to hand over the names and contact details of any of its customers to Dallas. That is, unless Dallas undertakes to demand only a narrow category of damages from those customers and guarantee that undertaking with a $600,000 bond.

Friday, August 14, 2015

RCEP – the next big thing?

By Claire McMahon, Associate

We reported on 12 August and 13 August on the recent (failed) round of TPP negotiations. During the current TPP hiatus, focus has begun to turn to another 'secretive' proposed trade agreement in Asia, the Regional Comprehensive Economic Partnership (RCEP). Although negotiations for RCEP started in November 2012, there has been little coverage about this agreement relative to the TPP and (as yet) no leaks of texts approved or otherwise.

What is known is that the RCEP negotiations involve the ten ASEAN member states, as well as Australia, China, India, Japan, South Korea and New Zealand. The negotiations are said to cover trade in goods, trade in services, investment, economic and technical cooperation, intellectual property, competition and dispute settlement.

Thursday, August 13, 2015

Another TPP draft leaked – and no one is happy

By Claire McMahon, Associate

Another leaked draft of the intellectual property chapter of the Trans-Pacific Partnership (TPP) has been released by KEI Online, no doubt to the dismay of negotiators who are struggling to reach agreement on final outstanding issues (and they thought WikiLeaks was all they had to worry about).

The most recent draft is dated May 11, 2015. The text was released just after the most recent (failed) round of negotiations in Hawaii. (We don't like to suggest conspiracy theories – we leave that to the mainstream media here, but one has to wonder about timing…) As discussed in our earlier post, despite paddling madly to make some waves, the negotiations were a total wipeout, with all 12 trade ministers walking away without reaching agreement. Hawaii :1, TPP: 0. Gnarly.

We tried to dampen some of the media-fed flames surrounding the TPP in a post earlier this year. But the furore surrounding illegal downloading provisions is so yesterday: enforcement is the new tag word that has everyone riled up. Parties are at odds in relation to what civil measures should be implemented against entities who abuse enforcement procedures, and when criminal penalties can be imposed on infringers.

Wednesday, August 12, 2015

Trans-Pacific Partnership negotiations: a total wipeout?

By Claire McMahon, Associate

Unlike Mick Fanning in J Bay, the Trans-Pacific Partnership trade talks took a heavy dumping in Hawaii earlier this month, with the 12 trade ministers walking away from the meeting without reaching agreement. Apparently all 25 chapters of the TPP have now been drafted (and more on this in our next post), but there are several matters still making waves.

We’ve previously discussed some of the issues plaguing the TPP negotiations. This time around, Australia seems to be a sticking point. As reported, Australia is refusing to sign unless certain Australian organisations are made exempt from investor-state dispute settlement rules in relation to decisions concerning public health, safety and the environment. Australia's likely objective is to avoid investor-state claims in external tribunals in relation to the government's health and environment policies. However, existing TPP language would already effectively exempt these 'except in rare circumstances', so it is not clear whether Australia will continue to push for this amendment.

Friday, August 7, 2015

Copyright cook-off: Channel Nine survives Seven's bid to turn off The Hotplate

By Kaelah Ford, Lawyer

Australia's love affair with reality television is perhaps most passionate when it comes to cooking shows. From croquembouche and crayfish, to French chefs with a certain je ne sais quoi, viewers can't seem to get enough of the drama that comes with tossing contestants into the proverbial pressure cooker for a prime-time culinary contest.
The competition between rival shows recently reached boiling point with Channel Seven commencing Federal Court proceedings against Channel Nine and its production company, Endemol (together Nine) for copyright infringement. Seven alleges that Nine's show The Hotplate infringes the copyright in its show My Kitchen Rules (MKR). Seven sought an interlocutory injunction restraining the broadcast of The Hotplate until the final determination of the proceedings.

In a judgment handed down on 6 August 2015, Justice Nicholas refused to grant the injunction, allowing The Hotplate to remain on air1. Notwithstanding this, he found that Seven had a reasonably arguable case for copyright infringement.

It is unusual to see a copyright case in this context, as copyright does not protect 'ideas' for television shows. In the past, copyright infringement has been made out where one television show used excerpts from another2. Copyright may also exist in the script for a TV show – but this would be difficult to establish for an 'unscripted' reality show.  In this case, Channel Seven claims that copyright exists in the literary production materials behind MKR, as well as 'dramatic works' consisting of combinations of various elements, including incidents, plot, images and sounds in the MKR episodes.

We take a closer look at Seven's case and the court's reasons for denying interlocutory relief below.


It was accepted that two inquiries needed to be made to determine whether Seven should be granted an interlocutory injunction:
  1. Whether Seven had made out a prima facie case of copyright infringement by Nine; and
  2. Whether the balance of convenience favoured the grant of the injunction.

Seven's case

Seven alleges that by producing and broadcasting episodes of The Hotplate, Nine has reproduced in a material form, a substantial part of Seven's copyright in various original literary and dramatic works.
The original literary works said to be infringed include the format pitch and presentation for MKR, the MKR 'Production Bible' and the 'Instant Restaurant Producers Shooting Guide' (the MKR literary works).

The dramatic works said to be infringed are the combination and series of incidents, plot, images and sounds reduced to material form in:

(a) Series 1, Episode 1 of MKR;
(b) the whole of Series 1 of MKR;
(c) the whole of Series 5 of MKR; and
(d) the whole of Series 6 of MKR.
(the MKR dramatic works).

Section 10 of the Copyright Act 1968 (Cth) defines 'dramatic work' to include a scenario or script for a cinematograph film. It was not disputed by Nine that a scenario for a television program or series may qualify as a dramatic work. Justice Nicholas said that the 'choice and arrangement of plots, characters and situations may create their own dramatic effect independent of the language in which such matters are ultimately conveyed'. As with a literary compilation, a dramatic work consisting of a combination of stock elements brought together by the exercise of skill, judgment or labour may constitute an original work, even if individually, some of the elements lack originality.
Nine did not admit that copyright subsisted in any of the alleged copyright works. Nine's argument was summarised by Justice Nicholas as follows: 'Seven's dramatic work is a successful but nonetheless unimaginative collection of unoriginal ideas and situations found in earlier reality television programs.'

Each side put on evidence of the similarities and differences they allege exist in each of the shows. While not making any final determination on infringement, Justice Nicholas noted that the format of the programs 'seems to be very similar'.

Justice Nicholas considered that Seven has a reasonably arguable case that the similarity between the shows is the result of direct or indirect copying.  However, he did not accept Seven's submission that it has a strong prima facie case. The Full Court has previously held that the apparent strength of an applicant's case may be an important consideration in determining whether the balance of convenience favours granting interlocutory relief3.

Balance of convenience

Seven submitted that the following factors weighed in favour of the grant of an injunction:
  • the loss of exclusive rights in television content would affect Seven's ability to compete;
  • important and valuable licensing arrangements would be diminished if the injunction was not granted; and
  • it would be difficult to quantify damages in the event that the injunction was withheld.
Justice Nicholas was not persuaded by those arguments. He considered that any loss of exclusivity suffered by Seven could be remedied reasonably quickly, and that a final hearing of the proceeding could be heard before any new series of The Hotplate was broadcasted. He did not accept that any of Seven's commercial arrangements would suffer merely due to the refusal to grant an injunction, as Seven would have the opportunity to vindicate its rights at a final hearing.

While Justice Nicholas accepted that it can be difficult to quantify loss in cases such as this, he considered that Seven's difficulties in proving its damages would not be any greater than those that would be experienced by Nine in the event that Nine was required to prove its damages. In addition, Nine had existing commitments with advertisers for the remainder of season 1 of The Hotplate. Justice Nicholas considered that it would be difficult for Nine to re-establish momentum in The Hotplate if it were 'abruptly halted by injunction and then 'shelved' for however many months it takes to determine the proceeding'. The balance of risk of 'doing an injustice' ultimately weighed in Nine's favour.

Food for thought

This case serves as a good illustration of the factors that will be taken into account when the court is considering a grant of interlocutory relief. The strength of the applicant's case is likely to be of significance in persuading the court to grant an injunction.

While Seven has lost this battle, the war is not over. We will have to stay-tuned to see if Seven decides to proceed with its culinary crusade and more importantly, if it can establish that copyright subsists in the MKR works. No doubt the proof will be in the pudding.

1. Seven Network (Operations) Limited v Endemol Australia Pty Limited [2015] FCA 800.
2. TCN Channel Nine Pty Limited v Network Ten Pty Limited (No 2) [2005] FCAFC 53.
3. Samsung Electronics Co Ltd v Apple Inc (201) 217 FCR 238 ay [52]-[57].

Wednesday, August 5, 2015

Pipe dreams: director's liability for authorising patent infringement

By Sarah Matheson, Partner, and Vacation Clerk, Chandni Dhingra

Wastewater systems … how to connect the pipes, how to construe the patent claims… all fascinating stuff, but the focus for this post is whether a director 'authorised' his company's patent infringement or was liable as a joint tortfeasor.


Having established that Sewerage Management Services (SMS) had infringed its standard patent for a pipe connector, Blueport turned its attention to a former director of SMS, Mr Chappell. Blueport alleged he had authorised SMS's infringement and was liable as a joint tortfeasor.

The reason may lie in Mr Chappell's evidence that at relevant periods SMS could not pay him a salary nor provide him full time employment. This may also explain why Mr Chappell had various other jobs during his directorship. More on that later…

Thursday, July 30, 2015

Court rules that domain names can be transferred at interlocutory stage

By David Stewart, Senior Associate, and Natasha Dixon, Vacation Clerk

The recent Federal Court decision in Thomas v Humantech [2015] FCA 541 shows that a court will be prepared to order the transfer of a domain name at an interlocutory stage in certain circumstances, and also provides a useful reminder of what is required by a party to satisfy an obligation to negotiate in good faith.


Thomas International (TIL) is an English company that operates a business providing psychological assessments, predominately through the internet. TIL operates a central online hub in the UK that can be accessed by TIL's distributors and customers by logging into the TIL website. Since 2007, TIL's services have been distributed in Australia by Humantech (a company that was ultimately controlled by a Mr Schutte), under an agreement by which Humantech was given exclusive rights to appoint a distributor in Australia and to register domain names relating to the business.

Tuesday, July 28, 2015

Does my domain name infringe a registered trade mark?

By Tim Golder, Partner, Sarah Matheson, Partner, and Grace Walton, Vacation Clerk

A recent 650-paragraph judgment presents a smorgasbord of trade mark law issues with some consumer law for dessert. Perhaps suffering from indigestion, his Honour commented on the disproportionate amount of resources expended on this dispute. To save our Scintilla readers from the same fate, we have focused on selected issues below.

The facts

Cairns Harbour Lights Pty Ltd (CHL) was the developer of an apartment building in Cairns known as 'Cairns Harbour Lights' or 'Harbour Lights'. Some apartments were let on a short-term basis.

In 2009 CHL applied to register two word marks: HARBOUR LIGHTS and CAIRNS HARBOUR LIGHTS in relation to 'commercial real estate agency services', 'hotel services' and 'leasing, letting and rental services'. Registration was granted.

Apartment owners were free to use any letting agent, but CHL granted Accor exclusive rights to operate a letting service on-site, and an exclusive licence to use the trade marks.

Friday, July 24, 2015

Website-blocking injunctions law now in force

By Jonathan Adamopoulos, Senior Associate

Copyright owners are now able to apply to the Federal Court for an injunction to block overseas piracy websites, after the Copyright Amendment (Online Infringement) Bill 2015 commenced recently.

The final version of the Bill, which received assent last month, adopted the recommendation of the Senate Legislative and Constitutional Affairs Committee to give courts greater flexibility in the factors taken into account in determining whether or not to grant an injunction.

Tuesday, July 21, 2015

Federal Court sheds (white) light on Section 43(3) of the Patents Act

By Joel Barrett, Senior Associate

A priority date, as the date at which novelty and inventive step are assessed, is valuable for a patentee. Section 43 of the Patents Act 1990 (Cth) provides that each claim within the same patent may have a different priority date, and that there can even be different priority dates within the same claim:
'Where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined.'

Until recently, the only Australian judicial guidance on s43(3) was from the Full Court of the Federal Court in AstraZeneca AB v Apotex Pty Ltd, in which the majority of four judges considered whether the following claim 'define[d] more than one form of an invention':
A pharmaceutical composition comprising [rosuvastatin] or a pharmaceutically acceptable salt thereof as the active ingredient and an inorganic salt in which the cation is multivalent, provided that: (i) the inorganic salt is not hydrotalcite or synthetic hydrotalcite; and (ii) the counter anion to the inorganic salt is not a phosphate. [Emphasis added]
The patentee in that case argued that multiple different 'counter anions' could be used, such as titanium oxide or ferric oxide, and so the claim defined more than one form of the pharmaceutical composition. However, the court disagreed, finding that the claim 'defines only one form of the invention even though there will be any number of potential variants that are within its scope' depending on the counter anion used.

Tuesday, June 23, 2015

Scintilla TV: Update on the Dallas Buyers Club case

The latest chapter in the significant Dallas Buyers Club Inv v iiNet case is currently playing out in the Federal Court.

The matter is now focused on the wording of the letter from Dallas Buyers Club Inc to those who illegally downloaded the movie in Australia.

Allens Senior Associate Jesse Gleeson gives us a video update on the latest manoeuvrings in the case.

Monday, June 22, 2015

Wild Turkey victorious in its quest to dominate the (alcoholic) wild bird world

By Nadia Guadagno, Senior Associate

The owners of Wild Turkey Bourbon* and Wild Geese Rare Irish Whisky (Lodestar) have been engaged in a 15-year worldwide battle regarding their respective rights to use the WILD GEESE mark. The owners of Wild Turkey have vigorously opposed use by the makers of Wild Geese Rare Irish Whiskey of the words ‘Wild Geese’. The underlying motivation? Apparently not everyone might distinguish a wild goose from a wild turkey.

Wednesday, June 17, 2015

Senate Committee recommends anti-piracy injunctions

By Jonathan Adamopoulos, Senior Associate

In a report released last week, the Senate's Legal and Constitutional Affairs Legislation Committee has recommended that the Copyright Amendment (Online Infringement) Bill 2015 (Cth) be enacted into law. The report was released following a period of public consultation with key industry groups and other stakeholders.

Friday, June 12, 2015

Queensland's biodiscovery legislation under review

By Julieane Bull, Senior Associate

The Queensland Government is reviewing the Biodiscovery Act 2004 (Qld). Those who use genetic resources for commercial biodiscovery – such as biotechnology and pharmaceutical companies, research institutions and venture capital/investment funds – should consider making a submission to the review before its closing date of midnight, 29 June 2015.

The terms of reference for the Act's review are broad, including the purposes, structure and effectiveness of the Act. Our previous Focus summarised the current regulatory framework for biodiscovery activities in Queensland. The review invites recommendations for amendments to the Act, or alternatives to legislation, which would improve the effectiveness, fairness, timeliness and accessibility of the regulatory system.

The battle for gold continues

By Nadia Guadagno, Senior Associate

The fight for the right to own ORO (which means 'gold' in Italian and Spanish) is on again – this time between biscuit and snack food companies in the EU.

You may recall that at the end of last year, the High Court ruled that Cantarella's mark ORO was inherently adapted to distinguish its coffee products from those of other traders in Australia. This was based on the finding that ORO does not convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee products. (See our Scintilla blog for a summary of the High Court's decision in Cantarella v Modena).

The position, albeit in relation to biscuits, is the same in Europe.

Friday, May 29, 2015

House Rules Rule One: Don't copy someone else's plans

By Tracy Lu, Senior Associate

In the recent appeal decision of Tamawood Limited v Habitare Developments Pty Ltd (Administrators Appointed) (Receivers and Managers Appointed) [2015] FCAFC 65, the Full Federal Court found that a firm of architects had infringed the copyright in construction plans created by another company and also that the directors of the developer which had engaged the architects had authorised the infringement.

Under commercial circumstances which the primary judge described to be 'relatively casual', the applicant Tamawood and the developer Habitare entered discussions relating to the potential development of some 'low-cost, intensive housing projects' in Brisbane. Tamawood created plans for the projects for which it was not paid, but there was common expectation that Tamawood would be appointed as the builders of the projects.

Tuesday, May 26, 2015

Scintilla TV: The countdown is on for the Trans-Pacific Partnership

The Trans-Pacific Partnership is a proposed multi-lateral trade agreement between 12 Pacific Rim nations, including Australia.

Reports last week indicated that the deal is close to being finalised after more than five years of negotiations. Speaking after those reports, Allens Partner Sarah Matheson discusses the progress of the deal, and how it may affect Australia's IP laws.

Friday, May 22, 2015

Scintilla TV: Uncovering 'Dallas Buyers Club' pirates

Dallas Buyers Club LLC was recently successful in its application for preliminary discovery requiring that a number of Australian ISPs disclose the details of customers it alleges have illegally shared copies of its film Dallas Buyers Club.

Rights holders may soon also have recourse under a draft industry code submitted to ACMA by Communications Alliance on behalf of Australian ISPs.
Allens Senior Associate Jesse Gleeson discusses these important milestones in the fight against piracy in Australia.

Thursday, May 21, 2015

Scintilla TV: Australia's registered designs may see grace period, longer term

There is potential good news for designers who intentionally or inadvertently disclose their design before seeking a monopoly right: ACIP has recommended to the Australian Government that the Designs Act 2003 be amended to include a six-month grace period before filing a registered design.

There may also be other changes such as a 15 year maximum term if Australia seeks to join the Hague Agreement.

Allens Partner Tim Golder discusses design strategy and further potential changes.

Tuesday, May 12, 2015

Google: sell us your US patents

By Lester Miller, Patent Attorney and Senior Associate

A fortnight-long window just opened to allow patent owners to sell their US patents directly to Google. The window is part of a program called the Patent Purchase Promotion, which is an experiment by Google that invites patentees to nominate a dollar value for a patent at which it will be offered for sale. There will be no negotiation.

Google says in its announcement that it would like to cut out intermediaries and make the patent marketplace more efficient. The conditions include a non-transferable licence back to the owner at no cost, so this experiment may appeal to clients who seek additional traction for their patented concept without losing the ability to commercially exploit the invention themselves in the US marketplace. Only one patent is allowed per offer, but a person or company may offer as many patents as they like under separate offers.

Google has about US$63 billion in cash on hand, and its more than 51,000 patents and patent applications extend across a wide array of technology areas, so it may be time to dig your Rembrandts out of the attic:

• renewable energy: data centres powered and cooled by sea-water;
• implantable devices;
• transport: tunable vibration dampers; and
• apps: ordering ahead with a smartphone

There are some further conditions on this experimental marketplace, including that the company or individual will need to eventually supply relevant US tax ID numbers; a waiver that the offer is not notification of a patented technology for some alternative purpose such as infringement litigation; notification that they are legally able to deal with the patent unencumbered; and that the seller agrees to join any terminally-disclaimed patents with the offered patent.

Google notes that it has no idea how much interest this experiment will generate, and it stresses that any interested potential seller should consult an attorney before proceeding.

Having said all that, if this is all too experimental for you, or there is some other reason for your patent not suiting the promotion conditions, Google has another option to receive patent submissions for sale or otherwise.

The Patent Purchase Promotion window closes at 11:59pm, US Pacific Daylight Time on 22 May 2015.

Let us know if we can help.

Tuesday, May 5, 2015

EA takes one on the chin while Valve's Steam still under fire

By Adrian Chang, Lawyer

Big time game publisher Electronic Arts has bowed to ACCC pressure by pledging to refund customers burned by faulty games purchased through EA's Origin online digital delivery platform.

This latest scalp demonstrates the ACCC's commitment to ensuring that overseas companies marketing their products in Australia do not attempt to dissuade Australian consumers from exercising their legal rights under the Australian Consumer Law by having policies that are inconsistent with those rights.

The Australian competition watchdog accused EA of misleading customers by suggesting that Origin users who purchased games that were faulty or failed to work were not entitled to a refund.

EA has now made court-enforceable undertakings that, for the next three years, it will not make any representations to Australian Origin customers that:
  • EA has no refund policy for games purchased via Origin;
  • EA's policies exclude any rights an Australian customer might have under the Australian Consumer Law; and
  • Australian customers are not entitled under any circumstances to a refund from EA for games purchased via Origin.
You can see a copy of those undertakings (which also sets out a bit more background) here.

Generally speaking, the Australian Consumer Law requires a retailer (like EA) to give a refund for a product if it is faulty. Like most digital retailers, EA didn't offer refunds for faulty games. However, it does offer a 'Great Game Guarantee'.

On its face, EA's Great Game Guarantee appears to suggest that customers only have very limited timeframes and circumstances in which they may request or receive a refund.

EA appears to have answered its obligations with this addition to its guarantee for Australian customers. In summary, the addition makes it clear that the EA's Great Game Guarantee is in addition to any statutory rights an Australian customer would have under the Australian Consumer Law.

EA is also obliged to amend its other policies and agreements to make it clear that Australian consumers have their statutory rights despite anything else in those policies and agreements.

The action against EA adds to the growing pile of scalps collected by the ACCC based on this issue.

Apple has previously been pinged in relation to its product warranties and the EA undertakings extend the ACCC's reach into the realm of purely digital products.

The ACCC is clearly keen to add Valve Corporation to the pile. Valve, which runs Steam, the grand-daddy of all digital delivery platforms, is duking it out with the ACCC in the Federal Court of Australia over similar allegations. The case is still at a preliminary stage but is set for a trial in July.

Valve's subscription agreement currently includes a special mention to New Zealand customers expressly stating that Valve's no-returns policy does not exclude any statutory remedies under New Zealand's Consumer Guarantees Act.

No doubt the ACCC would like to see a special mention of its own.

Friday, April 24, 2015

Representations as to future profit – a fine balancing act

By Nadia Guadagno, Senior Associate, and Catherine Francis, Law Graduate

Franchisors making representations regarding profitability has been flavour of the month in the courts. Recently, a cleaning company franchisor, South East Melbourne Cleaning, was ordered to pay a hefty penalty of $500,000 for unconscionable conduct and making false and misleading representations about earnings to its franchisees. Bank of Queensland (BOQ) franchisees, on the other hand, were unsuccessful in their claims that the bank had made misleading and deceptive statements about future profitability. Let's take a quick look at each case to understand the contrasting results.

Tuesday, April 21, 2015

Court to feuding franchisor: Take down that blog post!

By Adrian Chang, Lawyer

The recent Madden v Seafolly appeal sent a very clear warning to business owners about spruiking their own businesses or taking down the competition through their personal social media accounts: that sort of thing can get you in trouble under the Australian Consumer Law's section 18 prohibition against misleading and deceptive conduct.

Even though Ms Madden was speaking her mind to friends on Facebook, the circumstances linked her comments to her business interests in a Seafolly competitor. So that case was quite clearly 'in trade or commerce'.

Thursday, April 16, 2015

Federal Court prescribes harsh medicine to discount chemist

By Claire McMahon, Lawyer

The Federal Court has dismissed claims made by owners of Chemist Warehouse outlet stores of misleading and deceptive conduct and trade mark infringement, instead ordering that their trade mark is invalid for lack of distinctiveness and therefore should be cancelled from the Register.

Prevention is better than cure

To avoid suffering a similar fate as the owners of Chemist Warehouse outlet stores, traders should note that:

  • long-term, widespread use of a trade mark will not necessarily 'cure' a claim of invalidity if the mark is not inherently adapted to distinguish;
  • the use of bright colours is a common marketing ploy used by discount stores and so cannot be claimed by one particular outlet to be theirs alone to use, unless the colours are claimed as part of a valid trade mark;
  • if you want to use a descriptive phrase in a trade mark, consider also filing an application for a composite mark (ie combining the phrase with devices, shapes, sounds, scents and / or colour elements) to avoid a finding that your mark is not inherently adapted to distinguish.

Tuesday, April 14, 2015

I am, you are, we are … entitled to appropriate compensation

By Kaelah Ford, Lawyer

I Am Australian is one of the most recognisable Australian songs of all time. Co-written by Bruce Woodley of The Seekers, the song has long been a staple of major Australian sporting events, including the Sydney Olympics. According to a survey of the general public in New South Wales and Victoria, when just a short segment of the song was played, 97 per cent of the general public and 100 per cent of 4 to 12 year olds said that they recognised the song.

Recently, the song has again found itself in the spotlight when the Commonwealth Government commissioned the creation of a recording of the song that was used without the appropriate licence on a video that was played at citizenship ceremonies. The Copyright Tribunal has ordered that the Government pay $150,000 to the copyright owner for its use of the song – some 50 times more than the Government originally paid for the licence to perform and broadcast the song! Music licensing can be a complicated business. Here's what happened.


In December 2008, the Department of Immigration and Border Protection commissioned the production of an 'Australian citizenship video montage' for use in citizenship ceremonies. The Commonwealth paid $2,954.20 for certain licences through APRA AMCOS (the organisation that collects royalties for music owners that are derived from the use of a song's composition and lyrics, as distinct from the actual recording of a song) to use I Am Australian. However, those licences did not include the 'synchronisation right' in the song, which her Honour summarised as 'the right to reproduce and use the lyrics on the sound-track to a cinematograph film or other audio visual presentation'. In fact, APRA AMCOS did not have the right to grant a licence for such use in the first place.

Wednesday, April 8, 2015

Dallas Buyers Club v iiNet: a real cliffhanger

By Richard Sawyer, Lawyer

A Federal Court order will require several Australian internet service providers (ISPs) to hand over some of their account holders' details to Dallas Buyers Club LLC (Dallas), the owner of the copyright in the 2013 film Dallas Buyers Club. The details will be used by Dallas to attempt to identify end-users who have illegally downloaded the film. The decision to grant the order has already been described as landmark in the area of online piracy by several media outlets. However, other impending developments in the law may limit the long-term impact of the decision.


In October 2014, Dallas applied to the Federal Court for an order requiring iiNet (and some other Australian ISPs) to disclose the identities of some of their customers. Dallas filed evidence that it claimed proves that it had identified the IP addresses of people who illegally shared the film in 2014.  iiNet refused to hand over its customers' details unless ordered to do so by a court and opposed the making of the order. For more detail, you can see our two previous blog posts on this matter here and here.

The decision

Federal Court Justice Nye Perram handed down a judgment yesterday indicating that he will grant the order for preliminary discovery. Justice Perram was satisfed that Dallas has a 'real case' against some of the ISPs' customers for copyright infringement. Furthermore, he held that Dallas could not identify those customers independently and that the ISPs could help to identify them.