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

Thursday, June 9, 2016

A kick in the Uggs, and litigation to boot

By Lev Gutkin, Law Graduate

Deckers Outdoor Corporation has recently commenced legal proceedings against Australian Leather Pty Ltd in the Illinois Northern District Court for alleged infringements of its UGG trade marks, which has re-enlivened the debate in Australia regarding how it is possible for an American company to prevent Australians from calling their classic Aussie winter boots 'Uggs'. According to a petition to Malcolm Turnbull which was started by Nick Xenophon (and has so far clocked 4826 supporters), Deckers has sought extensive remedies, including punitive damages in the millions of dollars, delivery-up and destruction of Australian Leather Pty Ltd's stock, and transfer of its bank funds to Deckers.

Deckers' Ugg boots connection traces back to a business started by Australian accountant Brian Smith, who, when travelling to California in the 1970s, identified a gap in the footwear market that he thought could be filled by the classic Australian Ugg boot. He built the business over the following years, and in 1995, his business Ugg Holdings Inc, including its US-registered 'UGG' trade mark (No. 1,973,743), was acquired by Deckers.

Friday, June 3, 2016

Federal Court rules Mum was right: Don't make promises you can't keep

By Natasha Dixon, Law Graduate

A recent Federal Court decision, Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588, has ruled that, where a patent specification makes multiple promises for an invention, a patent claim is only valid if all those promises are fulfilled.


In this case, Ronneby Road Pty Ltd (Ronneby) opposed the grant of a patent application owned by ESCO Corporation (ESCO) on the grounds that the application lacked utility, novelty and fair basis. Whilst Ronneby was partially successful in its novelty argument, and entirely unsuccessful in relation to fair basis, it succeeded in establishing that all of the claims in ESCO's application lacked utility.

The invention the subject of ESCO's patent application involved a tooth for securing to a base part on the digging edge of excavating equipment, which would, as promised in the patent specification, provide the advantages of 'enhanced stability, strength, durability, penetration, safety and ease of replacement'.

Thursday, June 2, 2016

I, Robot. I, copyright owner?

By Emma Gorrie, Lawyer

A couple of years ago we mulled over copyright ownership issues when a monkey took a selfie. Another equally hairy copyright question is: who owns copyright in robot-generated prose?' More generally, can copyright even subsist in works generated by computer programs and, if so, who is the copyright owner?

To give some context, one of Google's latest artificial intelligence projects is trying to make better conversationalists out of gadgets. To this end, researchers inputted 12,000 e-books into a language model. The researchers then commanded the model to fill the gap between an opening and closing sentence to form a paragraph. If you are curious to know more, read the research paper (PDF). So does copyright subsist in the resulting robot writing? And if it does, who owns copyright?

Currently, the position in Australia is such that copyright simply does not subsist in works not authored by humans. The UK recognises copyright in computer-generated works, which is owned by the person who undertook the arrangements necessary for the creation of the computer-generated work. The EU recognises copyright in databases, identifying the right holder as the natural person who created the base. The position in each of Australia, the UK and Europe is discussed in more detail below.