Intellectual property in Australia [Sixth edition.] 9780409345780, 0409345784

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Intellectual Property in Australia Sixth Edition

Intellectual Property in Australia Sixth Edition Andrew Stewart BA (Juris), BCL (Oxon) John Bray Professor, Law School, University of Adelaide Legal Consultant, Piper Alderman

William van Caenegem LLB, LLM, PhD (Cantab) Professor of Law, Faculty of Law, Bond University

Judith Bannister BA (SAIT), LLB (Hons)(Adel), PhD (ANU) Associate Professor, Law School, University of Adelaide

Adam Liberman BCom LLB (UNSW) Visiting Professorial Fellow, Faculty of Law, University of New South Wales Vice President Strategic Planning, Coherent Cloud

Charles Lawson BSc (Hons)(ANU), LLB (ANU), LLM (QUT), PhD (ANU) Professor of Law, Griffith Law School, Griffith University

LexisNexis Butterworths Australia 2018

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Author: Title: Edition: ISBN: Notes: Subjects: Other Authors/Contributors:

Stewart, Andrew (Andrew John). Intellectual property in Australia. 6th edition. 9780409345780 (pbk). 9780409345797 (ebk). Includes bibliographical references and index. Intellectual property — Australia. Caenegem, William van. Bannister, Judith. Liberman, Adam. Lawson, Charles.

© 2018 Reed International Books Australia Pty Limited trading as LexisNexis. First edition 1991. Second edition 1997. Third edition 2004. Fourth edition 2010. Fifth edition 2014. Cover image: ‘Capture’. Artist: Clare McShanag. Website: www.photography1555.wordpress.com Email: [email protected] This book is copyright. Except as permitted under the Copyright Act 1968 (Cth), no part of this publication may be reproduced by any process, electronic or otherwise, without the specific written permission of the copyright owner. Neither may information be stored electronically in any form whatsoever without such permission. Inquiries should be addressed to the publishers. Typeset in Futura and Sabon. Printed in Australia. Visit LexisNexis Butterworths at www.lexisnexis.com.au

Preface It is now more than 25 years since the first edition of this book appeared. Over that period, there have been many significant changes to the legal regimes with which it is concerned. But the central challenge for the law of intellectual property arguably remains the same: to find a sensible and sustainable balance between the interests of those who create, compile or seek to exploit ideas or information, and those who wish to use, imitate or build on their work. Once again, the developments considered in this edition, which is generally updated to August 2017, illustrate the difficulty in striking that balance. We review the Productivity Commission’s proposals for sweeping changes to Australia’s intellectual property regimes, including the introduction of new rights to use or access copyright material and a higher threshold for the patentability of inventions. Updates are also provided on other legislative reforms introduced since the fifth edition, relevant recommendations from the Harper Review of competition law, and the Turnbull Government’s National Innovation and Science Agenda. In addition, the new edition analyses a wide range of recent cases. These include important decisions on (among many other things) the availability of orders to require internet service providers to disable access to overseas websites that facilitate copyright infringement, the patentability of isolated genetic material, and the nature and scope of patent licences. The most notable change in this edition, which retains the structure of its predecessor, is to the team of authors. We are very pleased to welcome two new contributors. William van Caenegem has taken over Chapters 1–2 (introduction and remedies) and 16–20 (misappropriation of business reputation and trade marks), while Charles Lawson has assumed responsibility for patents and plant breeder’s rights (Chapters 11–16) and international aspects (Chapter 21). Of the remaining chapters, Andrew Stewart has updated the material on confidential information (Chapters 3–4), Judith Bannister

has been responsible for copyright and designs (Chapters 5–10) and Adam Liberman has covered commercialisation (Chapter 22). Sadly, this edition also sees the retirement of our friend and colleague Philip Griffith as an author. He had been an integral member of the writing team for the previous three editions, covering the period from 2004 to 2014. Like that of original author Jill McKeough, his stamp is very much still on this book. We thank him for his contributions, both past and ongoing, and wish him well for the future. We would also like to thank Clare McShanag for kindly allowing us to use her striking artwork on the cover, Irene Nikoloudakis and Colin Fong for assistance with research, the ever-helpful India Lopez for her diligent editing, and Jocelyn Holmes and her colleagues at LexisNexis for their role in getting this new edition out. Andrew Stewart, William van Caenegem, Judith Bannister, Adam Liberman and Charles Lawson September 2017

Cases References are to paragraph numbers 1-800-Flowers.Com Inc v Registrar of Trade Marks (2012) 201 FCR 488 …. 19.41 260 Oxford Street Pty Ltd v Premetis [2006] NSWCA 96 …. 17.17

A A v Hayden (No 2) (1984) 156 CLR 532 …. 4.17, 4.18, 4.20 A & M Records v Audio Magnetics Inc [1979] FSR 1 …. 8.27 A B Hassle v Pharmacia (Australia) Pty Ltd (1995) 33 IPR 63 …. 14.33 A G Spalding & Bros v A W Gamage Ltd (1915) 32 RPC 273 …. 16.2, 16.11, 16.12, 18.4 A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213 …. 2.25 AB Consolidated Ltd v Europe Strength Food Co Pty Ltd [1978] 2 NZLR 515 …. 4.24, 4.28 Abbott v Williams (1837) 2 Carp Pat Cas 381 …. 14.7 Abbott GmbH & Co KG v Apotex Pty Ltd (No 2) (2010) 87 IPR 561 …. 12.40 Abbott Medical Optics, Inc v Alcon Laboratories, Inc (2011) 95 IPR 359 …. 12.40 Abraham v Biggs [2011] FCA 1475 …. 4.10 Abundant Earth Pty Ltd v R & C Products Pty Ltd (1985) 4 IPR 387 …. 17.4, 17.9, 17.19 Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 …. 18.28, 19.32, 19.63, 19.65, 20.12 ACI Australia Ltd v Glamour Glaze Pty Ltd (1988) 11 IPR 269 …. 17.17 Acme Bedstead Co Ltd v Newlands Bros Ltd (1937) 58 CLR 689 …. 12.38, 12.39

Acohs Pty Ltd v R A Bashford Consulting Pty Ltd (1997) 37 IPR 542 …. 7.16 — v Ucorp Pty Ltd (2012) 95 IPR 117 …. 6.17, 6.35, 6.39, 6.40, 7.16, 22.38 Acorn Computers Ltd v MCS Microcomputer Systems Pty Ltd (1984) 4 IPR 214 …. 7.7, 7.12 Actavis Pty Ltd v Orion Corp [2016] FCAFC 121 …. 12.67, 22.24, 22.34 Adams v Quasar Management Services Pty Ltd (2002) 56 IPR 385 …. 9.5 Adhesive Dry Mounting Co Ltd v Trapp & Co (1910) 27 RPC 341 …. 12.18, 14.11 Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) (2013) 103 IPR 521 …. 18.25, 20.4 Adidas-Salomon AG v Turner (2003) 58 IPR 66 …. 20.20 Admar Computers Pty Ltd v Ezy Systems Pty Ltd (1997) 38 IPR 659 …. 8.4 Adrema v Adrema-Werke [1958] RPC 323 …. 17.17 Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1993) 26 IPR 171 …. 13.2 — v — [1995] AIPC 91-129 …. 14.14, 14.15 — v — (1998) 194 CLR 171 …. 12.19, 12.20, 12.21 Advanced Data Integration Pty Ltd v ADI Ltd (2004) 138 FCR 520 …. 20.21 Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks (1988) 12 IPR 1 …. 19.61 Advanced Hair Studio Pty Ltd v TVW Enterprises Ltd (1987) 18 FCR 1 …. 16.33 Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 …. 19.32, 19.91 ‘Advokaat’ Trade Mark [1978] RPC 252 …. 19.84 Aerospatiale Societe Nationale Industrielle v Aerospatiale Helicopters Pty Ltd (1986) 6 IPR 219 …. 2.13 AG Australia Holdings Ltd v Burton (2002) 58 IPR 268 …. 4.17, 4.22

— v — (2002) 58 IPR 327 …. 4.27 AGL Energy Ltd v Hardy [2017] FCA 420 …. 2.9 AGL Sydney Ltd v Shortland County Council (1989) 17 IPR 99 …. 8.42 Ajinomoto Co Inc v Nutrasweet Australia Pty Ltd (2008) 76 IPR 1 …. 12.52 Aktiebolaget Hassle v Alphapharm Pty Ltd (1999) 44 IPR 593 …. 12.54 — v — (2001) 51 IPR 375 …. 12.54 — v — (2002) 212 CLR 411 …. 1.4, 12.49, 12.50, 12.52, 12.53, 12.54 Alcatel NV v Commissioner of Patents (1996) 35 IPR 255 …. 12.42 Alcon Inc v Bausch & Lomb (Australia) Pty Ltd (2009) 83 IPR 210 …. 19.62, 19.64, 19.96, 19.98, 19.99 Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH (2001) 54 IPR 344 …. 19.62, 20.4, 20.9 Alexander & Co v Henry & Co (1895) 12 RPC 360 …. 20.20 Alexander Pirie & Sons Ltd’s Application (1933) 50 RPC 147 …. 19.81 Alfred Dunhill Ltd v Sunoptic SA [1979] FSR 337 …. 17.10, 21.1 Alice Corp Pty Ltd v CLS Bank International (2014) 134 S Ct 2347 …. 12.9, 12.12, 12.13, 12.14 Allen v Department of Family and Community Services (2000) 59 ALD 289 …. 4.38 Allen Hardware Products Pty Ltd v Tclip Pty Ltd [2008] ADO 8 …. 22.62 Allen Manufacturing Co Pty Ltd v McCallum & Co Ltd (2001) 49 IPR 22 …. 14.14 — v McCallum & Co Pty Ltd (2001) 53 IPR 400 …. 2.7 Allergan Inc v Di Giacomo (2011) 94 IPR 541 …. 19.43 Allied Mills Industries Pty Ltd v Trade Practices Commission (1981) 34 ALR 105 …. 7.25 Allsop Inc v Bintang Ltd (1989) 15 IPR 686 …. 12.53, 12.54, 14.21 Alphapharm Pty Ltd v H Lundbeck A/S (2014) 108 IPR 459 …. 11.56 — v Lundbeck A/S (2008) 76 IPR 618 …. 12.39

Alsop’s Patent (1907) 24 RPC 733 …. 12.57, 12.73 Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 24 IPR 461 …. 6.22 Amalgamated Television Services Pty Ltd v Foxtel Digital Cable Television Pty Ltd (1995) 32 IPR 323 …. 20.13 — v Pickard (1999) 48 IPR 133 …. 19.85 Amco Wrangler Ltd v Konckier (1987) 10 IPR 376 …. 19.66 American Cyanamid Co v Berk Pharmaceuticals Ltd [1976] RPC 231 …. 12.54, 12.73 — v Ethicon [1979] RPC 215 …. 12.49 — v Ethicon Ltd [1975] AC 396 …. 2.11 Ametex Fabrics Inc v C & F Fabrics Pty Ltd (1992) 111 ALR 565 …. 10.35 AMP Inc v Utilux Pty Ltd (1971) 45 ALJR 123 …. 12.63 — v Utilux Pty Ltd [1972] RPC 103 …. 10.1 Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 28 IPR 383 …. 12.16, 12.17, 12.25, 12.69, 12.70, 14.12 Anakin Pty Ltd v Chatswood BBQ King Pty Ltd (2008) 79 IPR 44 …. 16.20, 19.30 Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd (1971) 20 FLR 481 …. 8.14 Anderson & Lembke Ltd v Anderson & Lembke Inc [1989] RPC 124 …. 16.8 Andrew Shelton & Co Pty Ltd v Alpha Healthcare Ltd (2002) 5 VR 577 …. 3.9 Andrews v Erten Products Aust Pty Ltd (2000) 50 IPR 498 …. 13.2 Andritz Srout-Bauer Australia Pty Ltd v Rowland Engineering Sales Pty Ltd (1993) 28 IPR 29 …. 8.1 Aneeta Window Systems (Vic) Pty Ltd v K Shugg Industries Pty Ltd (1996) 34 IPR 95 …. 13.8 Angoves Pty Ltd v Johnson (1982) 43 ALR 349 …. 20.6, 20.19 Angus & Coote Pty Ltd v Render (1989) 16 IPR 387 …. 4.34 Anheuser-Busch Inc v Budejovicky Budvar NP [1984] FSR 413 ….

17.12 Anheuser-Busch Inc v Castlebrae Pty Ltd (1991) 23 IPR 54 …. 16.24, 19.31, 19.35 ANI Corp Ltd v Celtite Australia Pty Ltd (1990) 19 IPR 506 …. 4.23 Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37 …. 3.2, 3.9, 4.3, 4.6, 4.14, 4.35 Antocks, Lairn Ltd v L Bloohn Ltd [1972] RPC 219 …. 7.12 Anton Piller KC v Manufacturing Processes Ltd [1976] Ch 55 …. 2.9 A-One Accessory Imports Pty Ltd v Off Roads Imports Pty Ltd (1996) 34 IPR 306 …. 6.31, 7.12 — v — (No 2) (1996) 34 IPR 332 …. 6.31, 8.58, 8.60 Apand Pty Ltd v Kettle Chip Co Pty Ltd (1994) 30 IPR 337 …. 2.16, 16.11, 16.20, 17.4, 18.4 — v — (1999) 43 IPR 225 …. 2.17 Apotex Pty Ltd v AstraZeneca AB (2011) 94 IPR 508 …. 14.33 — v — (No 2) [2012] FCA 142 …. 14.33 — v — (No 3) (2012) 95 IPR 581 …. 14.33 — v — (No 4) (2013) 100 IPR 285 …. 13.2, 13.4 — v Les Laboratoires Servier (No 4) (2010) 89 IPR 274 …. 14.14 — v Sanofi-Aventis (2009) 82 IPR 416 …. 12.46 — v Sanofi-Aventis Australia Pty Ltd (2013) 253 CLR 284 …. 1.19, 1.20, 1.28, 1.35, 12.3, 12.17, 12.18, 14.13 — v — (No 2) (2012) 96 IPR 185 …. 14.13 Apotex Pty Ltd v Sanofi-Aventis (2008) 78 IPR 485 …. 12.39, 12.46, 12.73 Apple Computer Inc v Computer Edge Pty Ltd (1983) 50 ALR 581 …. 6.14, 17.9 — v — (1984) 53 ALR 225 …. 6.13, 6.14, 6.15, 16.35, 17.9 — v Mackintosh Computers Ltd (1987) 8 IPR 89 …. 2.7 Application by Altoweb Inc, Re (2002) 55 IPR 656 …. 10.16 Application by Grant (2004) 62 IPR 143 …. 12.10 Application for Type Font in the Name of Microsoft Corp, Re (2007) 71 IPR 664 …. 10.15

Applications by Theo and Vicky Pty Ltd, Re (1998) 42 IPR 100 …. 10.25 Aquaculture Corp v New Zealand Green Mussel Co Ltd (1985) 5 IPR 353 …. 3.9, 4.8, 4.26 — v — (No 2) (1986) 10 IPR 319 …. 4.25, 4.28, 4.30 Architects (Australia) Pty Ltd v Witty Consultants Pty Ltd [2002] QSC 139 …. 18.24 Argyll v Argyll [1967] Ch 302 …. 4.9, 4.14, 4.26 Aristoc Ltd v Rysta Ltd [1945] AC 68 …. 19.29 Aristocrat Leisure Industries Pty Ltd v Pacific Gaming Pty Ltd (2000) 50 IPR 29 …. 6.18, 6.47 Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd (2007) 157 FCR 564 …. 8.60 Armstrong Strategic Management and Marketing Pty Ltd v Expense Reduction Analysts Group Pty Ltd (2012) 295 ALR 348 …. 4.10 Arnott’s Ltd v Trade Practices Commission (1990) 97 ALR 555 …. 18.7 Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd (2016) 117 IPR 210 …. 12.57 Ashburton v Pape [1913] 2 Ch 469 …. 4.11 Ashby v Commonwealth (No 2) (2012) 203 FCR 440 …. 4.22 Ashcoast Pty Ltd v Whillans [2000] 2 Qd R 1 …. 4.3 Ashdown v Telegraph Group Ltd [2002] Ch 149 …. 8.56 Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52 …. 12.69 Associated British Ports v Transport and General Workers Union [1989] 1 WLR 939 …. 2.7 Associated Dominion Assurance Society Pty Ltd v Andrew (1949) 49 SR (NSW) 351 …. 4.34 Associated Newspapers plc v Insert Media Ltd [1991] 1 WLR 571 …. 16.4 Association for Molecular Pathology v Myriad Genetics Inc (2013) 569 US 12-398 …. 12.6, 12.14, 12.30 — v — (2013) 596 US 12-398 …. 12.30, 12.34

— v United States Patent and Trademark Office and Myriad Genetics Inc (2012) 689 F 3d 1303 …. 12.6 Aston v Harlee Manufacturing Co (1960) 103 CLR 391 .…. 19.27, 19.32, 19.33 AstraZeneca AB v Apotex Pty Ltd (2014) 107 IPR 177 …. 12.20, 12.37, 12.40, 12.52, 13.4, 14.13 — v — (2015) 114 IPR 445 …. 12.49, 12.52, 12.54, 13.4 AT&T Corp [2001] ATMO 96 …. 19.104 Atari Inc v Dick Smith Electronics Pty Ltd (1980) 33 ALR 20 …. 20.13 Atari Inc v Fairstar Electronics Pty Ltd (1982) 1 IPR 291 …. 20.13 Athletes Foot Marketing Associates Inc v Cobra Sports Ltd [1980] RPC 343 …. 17.12 Atlantis Corp Pty Ltd v Schindler (1997) 39 IPR 29 …. 12.70, 14.17 Atlas Power Co v ICI Australia Operations Pty Ltd (1989) 15 IPR 34 …. 12.69 Attorney-General (Cth) v Adelaide Steamship Co [1913] AC 781 …. 11.4 Attorney-General (NSW) v Brewery Employees Union of NSW (1908) 6 CLR 469 …. 1.5, 19.18, 19.19, 19.20, 19.29, 19.102 — v Butterworth & Co (Australia) Ltd (1938) 38 SR (NSW) 195 …. 5.4 — v Trustees of National Art Gallery of NSW (1944) 62 WN (NSW) 212 …. 7.6 Attorney-General (NSW), Re; Ex rel Elisha (1989) 14 IPR 609 …. 16.31 Attorney-General (UK) v Blake [2001] 1 AC 268 …. 2.16 — v Guardian Newspapers Ltd [1987] 1 WLR 1248 …. 4.23 — v — (No 2) [1988] 2 WLR 805 …. 4.6, 4.15 — v — (No 2) [1988] 3 WLR 776 …. 4.7, 4.13, 4.20, 4.25, 4.28, 7.9 — v Heinemann Publishers Australia Pty Ltd (1987) 8 NSWLR 341 …. 4.20 — v — (1987) 75 ALR 353 …. 4.9, 4.13, 4.19, 4.32, 4.40, 21.1 — v — (1988) 165 CLR 30 …. 21.1

— v Punch Ltd [2003] 2 WLR 49 …. 4.14 — v Times Newspapers Ltd [1992] 1 AC 191 …. 4.14 .au Domain Administration Ltd v Domain Names Australia Pty Ltd (2004) 61 IPR 81 …. 18.4 — v Network.com.au Pty Ltd (2004) 63 IPR 244 …. 19.67 Audio-Visual Copyright Society Ltd v Australian Record Industry Association Ltd (2000) 47 IPR 40 …. 22.94 — v — (2000) 52 IPR 162 …. 22.94 Audio-Visual Society Ltd, Re (2015) 116 IPR 11 …. 22.81 Ausdoc Office Pty Ltd v Complete Office Supplies Pty Ltd (1996) 34 IPR 151 …. 16.8 Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420 …. 12.57 Austen v Civil Aviation Authority (1994) 33 ALD 429 …. 4.38 Austgen Biojet Holdings Pty Ltd v Goronszy (1995) 32 IPR 193 …. 12.72 Austin, Nichols & Co Inc v Lodestar Anstalt (2011) 90 IPR 310 …. 19.101 Austral Ship Sales Pty Ltd v Stena Rederi Aktiebolag (2008) 77 IPR 229 …. 12.65 Australasian Health & Nutrition Association Ltd v Irrewarra Estate Pty Ltd (2012) 292 ALR 101 …. 20.9 Australasian Performing Right Association, Re Applications by (1999) 45 IPR 53 …. 22.95 Australasian Performing Right Association v Metro On George Pty Ltd (2004) 61 IPR 575 …. 8.28, 8.30, 22.76 Australasian Performing Right Association Ltd, Re Applications by (1999) 45 IPR 53 …. 7.20 Australasian Performing Right Association Ltd v CanterburyBankstown Leagues Clubs Ltd [1964–5] NSWR 138 …. 8.28 — v Ceridale Pty Ltd (1991) 97 ALR 497 …. 22.95 — v Commonwealth Bank of Australia (1992) 25 IPR 157 …. 8.19 — v Jain (1990) 26 FCR 53 …. 2.7, 8.28, 8.30

— v Miles (1961) 3 FLR 146 …. 8.32 — v Tolbush Pty Ltd (1985) 62 ALR 521 …. 8.19, 8.50 Australasian Performing Right Association Ltd and Australasian Mechanical Copyright Owners Society Ltd [2009] ACopyT 2 …. 22.94 Australia Post Corp v Digital Post Australia Pty Ltd (2012) 96 IPR 532 …. 17.4 Australian Broadcasting Corp v Lenah Game Meats Pty Ltd (2001) 208 CLR 199 …. 1.45, 3.11, 3.12, 4.11, 4.20, 6.7, 7.9, 16.22 — v O’Neill (2006) 227 CLR 57 …. 2.11, 4.23 Australian Chinese Newspapers Pty Ltd v Melbourne Chinese Press Pty Ltd (2003) 58 IPR 1 …. 6.23 Australian Competition & Consumer Commission v Boral Ltd [1999] FCA 1318 …. 22.93 — v Chen (2003) 201 ALR 40 …. 2.6, 18.24 — v Channel Seven Brisbane Pty Ltd (2009) 239 CLR 305 …. 16.33 — v Kingisland Meatworks & Cellars Pty Ltd (2013) 99 IPR 548 …. 18.24 — v Pfizer Australia Pty Ltd (2015) 323 ALR 429 …. 22.85, 22.93, 22.97 — v Trading Post Australia Pty Ltd (2009) 82 IPR 1 …. 16.33 — v — (2011) 93 IPR 358 …. 18.14 — v Turi Foods Pty Ltd (No 4) [2013] FCA 665 …. 16.33 — v Universal Music Australia Pty Ltd (2001) 115 FCR 442 …. 8.36 Australian Co-op Foods Ltd v Norco Co-op Ltd (1999) 45 IPR 228 …. 19.64 Australian Football League v The Age Co Ltd (2006) 15 VR 419 …. 4.6, 4.18, 4.19, 4.20 Australian Home Loans Ltd v Phillips (1998) 40 IPR 392 …. 16.20 Australian Medic-Care Co Ltd v Hamilton Pharmaceutical Pty Ltd (2009) 261 ALR 501 …. 4.28 Australian Mud Company Pty Ltd v Coretell Pty Ltd (2010) 88 IPR 270 …. 14.20

Australian National Airlines Commission, Re (1989) 16 IPR 270 …. 19.62 Australian Olympic Committee v Calder (2000) 50 IPR 635 …. 19.91 Australian Olympic Committee Inc v Big Fights Inc (1999) 46 IPR 53 …. 6.18, 7.15 — v Courier Luggage Pty Ltd (2002) 54 IPR 419 …. 12.45, 19.91 Australian Performing Right Association Ltd v Canterbury-Bankstown Leagues Club Ltd (1964) 5 FLR 415 …. 6.50, 8.20 Australian Phosphate Purchasing Association, Re [1982] ATPR 50-036 …. 22.99 Australian Postal Corp v Digital Post Australia (2013) 105 IPR 1 …. 17.4, 20.4 Australian Society of Accountants v Federation of Australian Accountants Inc (1987) 9 IPR 282 …. 16.6, 16.30 Australian Steel Co (Operations) Pty Ltd v Steel Foundations Ltd (2003) 58 IPR 69 …. 14.34 Australian Tape Manufacturers Association Ltd v Commonwealth (1993) 176 CLR 480 …. 1.7, 8.50 Australian Video Retailers Association Ltd v Warner Home Video Pty Ltd (2001) 53 IPR 242 …. 6.16, 8.3, 8.21 Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 …. 16.11, 16.22, 19.75, 19.84, 20.4 Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd (1999) 46 IPR 339 …. 8.56 Autodesk Australia Pty Ltd v Cheung (1990) 17 IPR 69 …. 8.61 Autodesk Inc v Dyason (1992) 173 CLR 330 …. 6.1, 8.10, 8.11 — v — (No 2) (1993) 176 CLR 300 …. 6.4, 8.10, 8.11 — v Yee (1996) 35 IPR 415 …. 8.62 Avel Pty Ltd v Multicoin Amusements Pty Ltd (1990) 171 CLR 88 …. 6.57, 7.14, 8.32, 8.66 — v Wells (1992) 23 IPR 353 …. 9.25, 9.27 Avnet Inc v Isoact Ltd [1998] FSR 16 …. 18.25 Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75 …. 12.59, 12.60, 14.4, 14.21

B B M Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 51 ALJR 254 …. 16.20, 17.4, 17.11 B R Gamer (Investments) Pty Ltd v Gamer [1993] ATPR 41-200 …. 18.19 Bacich v Australian Broadcasting Corp (1992) 29 NSWLR 1 …. 4.2, 4.19 Badische Anlin Und Soda Fabrik v Otto Isler (1906) 23 RPC 173 …. 13.24 Baigent v Random House Group Ltd (2007) 72 IPR 195 …. 8.10 Bailey v Namol Pty Ltd (1994) 30 IPR 147 …. 8.61 Baillieu v Australian Electoral Commission (1996) 33 IPR 494 …. 6.34 Ballarat Products Ltd v Farmers Smallgoods Co Pty Ltd [1957] VR 104 …. 17.16 Ballard v Multiplex [2012] NSWSC 426 …. 2.7 Bancorp Services LLC v Sun Life Assurance Co of Canada (2012) 687 F 3d 1266 …. 12.8 Barker v Stickney [1919] 1 KB 121 …. 7.12 Barnes v Addy (1874) LR 9 Ch App 244 …. 4.14, 4.32 Barrett Property Group Pty Ltd v Dennis Family Homes Pty Ltd (2011) 91 IPR 1 …. 8.4 Barry Artist Trade Mark [1978] RPC 703 …. 19.29 Bartlem Pty Ltd v CMMC Pty Ltd (2001) 53 IPR 124 …. 14.21 Bartos v Scott (1993) 26 IPR 27 …. 7.7 Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2017] FCA 507 …. 19.32, 19.43 Baume & Co Ltd v A H Moore Ltd [1958] RPC 226 …. 20.19 Bavaria NV v Bayerischer Brauerbund eV (2009) 81 IPR 279 …. 19.9, 19.85, 19.92, 19.93 Baxendale’s Vineyard Pty Ltd v Geographical Indications Committee (2007) 160 FCR 542 …. 16.41 Baygol Pty Ltd v Foamex Polystyrene (2005) 66 IPR 1 …. 14.20 Bayley & Associates Pty Ltd v DBR Australia Pty Ltd [2013] FCA 1341

…. 4.32 BBC Worldwide Ltd v Pally Screen Printing [1998] FSR 665 …. 16.24 Beadcrete Pty Ltd v Fei Yu (No 4) (2013) 101 IPR 542 …. 14.31 Beck v Montana Constructions Pty Ltd (1963) 5 FLR 298 …. 7.16 Bedford Industries Rehabilitation Association Inc v Pinefair Pty Ltd (1998) 40 IPR 438 …. 14.4 — v — (1998) 42 IPR 330 …. 14.5, 14.7 Beecham Group Ltd, Re Application by (1984) 3 IPR 26 …. 12.25 Beecham Group Ltd v Bristol Laboratories International SA [1978] RPC 521 …. 12.46 — v Bristol Laboratories Ltd [1978] RPC 153 …. 14.4, 14.5, 14.7, 14.8 — v Bristol Laboratories Pty Ltd (1968) 118 CLR 618 …. 2.11, 14.33 Beecham Group Ltd’s (Amoxycillin) Application, Re [1980] RPC 261 …. 12.54 Bell v Steele (No 3) (2012) 95 IPR 574 …. 8.66 Benchairs Ltd v Chair Centre Ltd [1974] RPC 429 …. 17.6 Benmax v Austin Motor Coy Ltd (1953) 70 RPC 284 …. 14.34 Bennett v President, Human Rights and Equal Opportunity Commission (2003) 134 FCR 334 …. 3.6 Bents Brewery Co Ltd v Hogan [1945] 2 All ER 570 …. 4.16 Bergy, Re (1977) 563 F 2d 1031 …. 12.27 Beringer Blass Wine Estates Ltd v Geographical Indications Committee (2002) 125 FCR 155 …. 16.41 Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 …. 19.75, 19.77 Berzins Specialty Bakeries Pty Ltd v Monty’s Continental Bakery (Vic) Pty Ltd (1987) 12 IPR 38 …. 20.9 BEST Australia Ltd v Aquagas Marketing Pty Ltd (1988) 12 IPR 143 …. 2.6, 14.11 Betts v Neilson (1868) LR 3 Ch App 429 …. 14.7 — v Willmott (1871) LR 6 Ch App 239 …. 13.24 — v — (1871) 2 Ch LR 6 …. 14.6 Betts Group Pty Ltd v Paul’s Retail Pty Ltd [2007] FCR 1983 …. 20.16

— v — (No 2) Pty Ltd [2010] FCA 1454 …. 20.16 BGC (Australia) Pty Ltd v Fremantle Port Authority (2003) 28 WAR 187 …. 4.38 Biba Group Ltd v Biba Boutique [1980] RPC 413 …. 18.19 Big Country Developments Pty Ltd v TGI Friday’s Inc (2000) 48 IPR 513 …. 19.62, 19.85, 19.99 Bilski v Kappos, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trade Mark Office (2010) 130 S Ct 3218 …. 12.11, 12.12 Bilski and Warsaw, Re Appeal No 2007–1130 (Fed Cir October 30, 2008) …. 12.11 Bing! Software Pty Ltd v Bing Technologies Pty Ltd (2008) 79 IPR 454 …. 18.25 Biogen Inc v Medeva PLC (1996) 36 IPR 438 …. 12.21, 12.68 Birdanco Nominees Pty Ltd v Money (2012) 36 VR 341 …. 4.36 Birmingham Vinegar Brewery Co Ltd v Powell [1897] AC 710 …. 16.7 Bitech Engineering v Garth Living Pty Ltd (2009) 84 IPR 78 …. 14.21 — v — (2010) 86 IPR 468 …. 12.67, 14.21 — v — (No 2) [2009] FCA 1460 …. 14.31 Bitzer Kuehlmaschinenbau GMBH, Re (2015) 112 IPR 187 …. 10.23 Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd (1921) 29 CLR 396 …. 6.1, 8.7, 8.10 Blackmagic Design Pty Ltd v Overliese (2011) 191 FCR 1 …. 4.34 Blackman v Gant (2010) 86 IPR 331 …. 9.5 BLH Engineering & Construction Pty Ltd v Pro 3 Products Pty Ltd (2015) 114 IPR 105 …. 14.34 Blount v Registrar of Trade Marks (1998) 40 IPR 498 …. 19.41, 19.56, 19.57, 19.63, 19.65 Blyth Chemicals Ltd v Bushnell (1933) 49 CLR 66 …. 4.34 Bobart, Re (2010) 88 IPR 357 …. 19.94 Bodum v DKSH Australia Pty Ltd [2011] FCAFC 98 …. 16.39 Boehringher Ingelheim International GmbH v Commissioner of Patents (No 2) (2001) 52 IPR 529 …. 11.56

Bond v Barry (2008) 173 FCR 106 …. 16.33 Boral Besser Masonry Ltd v Australian Competition and Consumer Commission (2003) 215 CLR 374 …. 22.93 ‘Bostitch’ Trade Mark [1963] RPC 183 …. 20.28 Boulton v Pull (1795) 1 Hy Bl 433; 126 ER 651 …. 12.4 Bowden Wine Ltd v Bowden Brake Co Ltd (1941) 31 RPC 385 …. 20.24 Bowman v Monsanto Co (2013) 133 S Ct 1761 …. 15.2 Boyapati v Rockefeller Management Corp (2008) 77 IPR 251 …. 6.31, 8.62 BP plc v Woolworths Ltd (2004) 62 IPR 545 …. 19.71 Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd (2008) 78 IPR 586 …. 14.34 — v — (2012) 97 IPR 424 …. 12.60 Bradmill Industries Ltd v B & S Products Pty Ltd (1980) 53 FLR 385 …. 18.19 Braemar Appliances Pty Ltd v Rank Electric Housewares Pty Ltd (1983) 2 IPR 77 …. 18.2 Brain v Ingledew Brown Bennison and Garrett (A Firm) [1996] FSR 341 …. 14.34 — v — (No 3) [1997] FSR 511 …. 14.34 Brand v Monks [2009] NSWSC 1454 …. 4.20 Brandella Pty Ltd, Re (1987) 9 IPR 315 …. 19.62 Brayley v Wilton [1976] 2 NSWLR 495 …. 4.22 Breast and ovarian cancer/UNIVERSITY OF UTAH (2007) T 1213/05 (EPO Boards of Appeal) …. 12.30 Breen v Williams (1996) 186 CLR 71 …. 3.12, 4.12 Bridge Stockbrokers Ltd v Bridges (1984) 5 IPR 81 …. 18.9, 18.10, 18.11 Brightman v Lamson Paragon Ltd (1914) 18 CLR 331 …. 4.36 Brighton v Australia and New Zealand Banking Group Ltd [2011] NSWCA 152 …. 4.3 Brilliant Digital Entertainment Pty Ltd v Universal Music Australia Pty

Ltd (2004) 63 IPR 373 …. 8.60 Bristol Conservatories Ltd v Conservatories Custom Built Ltd [1989] RPC 455 …. 16.12 Bristol-Myers Co, Re Application by (1989) 16 IPR 149 …. 19.65 Bristol-Myers Co v Beecham Croup Ltd [1974] AC 646 …. 12.59, 12.60 Bristol-Myers Squibb Co v Apotex Pty Ltd (2015) 109 IPR 390 …. 12.41, 22.24, 22.27, 22.34 — v — (No 5) (2013) 104 IPR 23 …. 13.22 — v Baker Norton Pharmaceuticals Inc [1999] RPC 253 …. 12.16, 12.18 — v FH Faulding & Co Ltd (1998) 41 IPR 467 …. 12.16, 12.17, 14.12, 14.13, 14.14 — v — (2000) 46 IPR 553 …. 12.16, 12.17, 12.20, 12.25, 12.37, 13.39, 14.12, 14.13, 14.14 Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (2012) 96 IPR 1 …. 14.30 — v — (No 2) [2012] FCA 1018 …. 14.30 — v — (No 3) [2012] FCA 1019 …. 14.1 British Acoustic Films Ltd v Nettlefold Productions (1936) 53 RPC 221 …. 12.50 British Broadcasting Corp v Wireless League Gazette Publishing Co [1926] Ch 433 …. 7.10 British Franco Electric Pty Ltd v Dowling Plastics Pty Ltd [1981] 1 NSWLR 448 …. 4.1, 4.8 British Horseracing Board Ltd v William Hill Organisation Ltd [2005] EWCA Civ 863 …. 6.42 British Industrial Plastics Ltd v Ferguson (1939) 56 RPC 271 …. 4.4 British Leyland Motor Corp Ltd v Armstrong Patents Co Ltd [1982] FSR 481 …. 8.19 — v — [1986] 2 WLR 400 …. 1.19, 7.16, 8.17 British Motor Syndicate Ltd v John Taylor & Sons (1901) 1 Ch 122 …. 14.6 — v John Taylor & Sons Ltd (1900) 17 RPC 723 …. 14.5, 14.6

British Northrop Ltd v Texteam Blackburn Ltd [1974] RPC 57 …. 6.55 British Nylon Spinners Ltd v Imperial Chemical Industries Ltd [1952] 2 All ER 780 …. 13.22 British Nylon Spinners, Ex parte; Imperial Chemicals Ltd, Re (1963) 109 CLR 336 …. 22.24 British Steel Corp v Granada Television Ltd [1981] AC 1096 …. 4.40 British Syphon Co Ltd v Homewood [1956] RPC 225 …. 13.8 British Telecommunications plc v One in a Million Ltd (1998) 42 IPR 289 …. 18.24, 18.28, 20.11 British Thomson-Houston Co Ltd v Corona Lamp Works Ltd (1922) 39 RPC 49 …. 14.17 British United Shoe Machinery Co Ltd v A Fussell & Sons Ltd (1908) 25 RPC 631 …. 12.53 — v Simon Collier Ltd (1909) 26 RPC 21 …. 12.25 — v — (1910) 27 RPC 567 …. 14.6 British-Nylon Spinners Ltd, Ex parte (1963) 109 CLR 336 …. 13.22 Britt Allcroft (Thomas) LLC v Miller (2000) 49 IPR 7 …. 20.19 Broderbund Software Inc v Computermate Products (Australia) Pty Ltd (1991) 22 IPR 215 …. 7.14, 8.33 Brookfield Communications Inc v West Coast Entertainment Corp (1999) 174 F 3d 1036 …. 18.25 Brooks Sports Inc v Paul’s International Pty Ltd (No 1) [2011] FCA 999 …. 20.16 — v — (No 2) [2011] FCA 1000 …. 20.16 Brother Industries Ltd v Dynamic Supplies Pty Ltd (2007) 73 IPR 507 …. 20.13, 20.15 Buchanan Turf Supplies Pty Ltd v Premier Turf Supplies Pty Ltd [2003] FCA 230 …. 15.23 Bucyrus (Australia) Pty Ltd v ANI Mining Services Ltd (1999) 45 IPR 643 …. 2.9 Bugatti GmbH v Shine Forever Men Pty Ltd (No 2) (2014) 105 IPR 413 …. 2.16 Bulun Bulun v R & T Textiles Pty Ltd (1998) 41 IPR 513 …. 1.25, 7.9

Burge v Swarbrick (2007) 232 CLR 336 …. 6.28, 10.36 Burica Pty Ltd v Tops to Bottoms (Australia) Pty Ltd (1997) 39 IPR 447 …. 16.40 Burke & Margot Burke Ltd v Spicers Dress Designs [1936] Ch 400 …. 6.28, 8.4, 10.31 Busby v Thorn EMI Video Programmes Ltd [1984] 1 NZLR 461 …. 2.9 Butcher v Lachlan Elder Realty Pty Ltd (2004) 218 CLR 592 …. 17.9, 18.2 Byrne v Australian Airlines Ltd (1995) 185 CLR 410 …. 13.9

C CA Henschke & Co v Rosemount Estates Pty Ltd (1999) 47 IPR 63 …. 18.6, 18.7, 20.30 — v — (2000) 52 IPR 42 …. 18.6, 19.75, 19.101, 20.30 CA Inc v ISI Pty Ltd (2012) 95 IPR 424 …. 3.9, 6.16, 8.55 Cactus Imaging Pty Ltd v Peters (2006) 71 NSWLR 9 …. 4.36 Cadbury Schweppes Inc v FBI Foods Ltd (1999) 167 DLR (4th) 577 …. 4.32 Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 2) [2006] ATPR 42-113 …. 18.7 — v — (2007) 72 IPR 261 …. 16.8, 16.38, 18.6 — v — (No 8) (2008) 75 IPR 557 …. 17.1, 17.9, 18.6 — v — (No 2) (2009) 174 FCR 175 …. 18.6 — v Pub Squash Pty Ltd [1980] 2 NSWLR 851 …. 16.6, 16.11, 16.22, 16.27, 18.2, 18.6, 18.8 Cambridge University Press v University Tutorial Press (1928) 45 RPC 335 …. 16.13 Campbell v MGN Ltd [2004] 2 AC 457 …. 4.11 Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 …. 16.2, 16.11, 16.12, 16.17, 16.21, 16.31, 16.32, 17.7, 17.19, 18.4, 18.8, 18.16, 18.17, 19.1, 19.2, 19.84, 19.97, 19.99, 20.2, 20.5 Cancer Voices Australia v Myriad Genetics Inc (2013) 99 IPR 567 …. 12.6, 12.30

Canham v Jones (1813) 2 v & B 218; 35 ER 302 …. 3.12 Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337 …. 19.55 Capital Webworks Pty Ltd v Adultshop. Com Ltd [2000] FCA 492 …. 18.24 Capral Aluminium Ltd v G & J Koutsoukos Holdings Pty Ltd (2004) 63 IPR 254 …. 11.40 Cardile v LED Builders Pty Ltd (1999) 198 CLR 380 …. 2.8 Carflow Products (UK) Ltd v Linwood Securities (Birmingham) Ltd (1996) 36 IPR 205 …. 4.10 Carindale Country Club Estate Pty Ltd v Astill (1993) 115 ALR 112 …. 4.3 Caripis v Victoria Health [2012] VCAT 1472 …. 3.11 Carlin Music Corp v Collins [1979] FSR 548 …. 2.4 Carlisle Homes Pty Ltd v Barrett Property Group Pty Ltd [2009] FCAFC 31 …. 8.15 Carnival Cruise Line Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 …. 19.32, 19.84 Carpenter v United States (1987) 108 S Ct 316 …. 3.12 Casey’s Patent, Re; Stewart v Casey (1892) 9 RPC 9 …. 13.19 Cassini v Golden Era Shirt Co Pty Ltd (1985) 10 IPR 247 …. 19.66 Castrol Australia Pty Ltd v Emtech Associates Pty Ltd (1980) 33 ALR 31 …. 4.12, 4.26 Cat Media Pty Ltd v Opti-Healthcare Pty Ltd [2003] ATPR 41-933 …. 18.6 Caterpillar Inc v John Deere Ltd (1999) 48 IPR 1 …. 2.6, 14.11 Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 48 ALR 511 …. 19.80, 20.9, 20.19 Catnic Components Ltd v Hill & Smith Ltd [1981] FSR 60 …. 14.19, 14.20, 14.21 Caxton Publishing Co Ltd v Sutherland Publishing Co Ltd [1939] AC 178 …. 8.62 CBS Records Australia Ltd v Telmak Teleproducts (Australia) Pty Ltd (1987) 9 IPR 440 …. 6.46, 8.22

CBS Songs Ltd v Amstrad Consumer Electronics plc [1988] AC 1013 …. 2.6, 2.7, 8.27, 14.11 CCH Canadian Ltd v Law Society of Upper Canada [2004] 1 SCR 339 …. 21.36 CCOM Pty Ltd v Jiejing Pty Ltd (1993) 27 IPR 577 …. 2.7, 8.4, 12.8, 14.11, 14.26 — v — (1994) 28 IPR 481 …. 12.2, 12.8, 12.9, 12.67, 12.70 Cedarapids Inc, Re Application by (1988) 13 IPR 297 …. 19.61 Centrafarm BV v Sterling Drug Inc [1974] ECR 1147 …. 13.24 Central Equity Ltd v Central Corp Pty Ltd (1995) 32 IPR 481 …. 16.40 Centrestage Management Pty Ltd v Riedle (2008) 77 IPR 550 …. 7.16 Chakrabarty, Re (1978) 571 F 2d 40 …. 12.27 Challender v Royal (1887) 36 Ch D 425 …. 20.21 Champagne Heidsieck et Cie v Buxton [1930] 1 Ch 330 …. 20.13 Chaplin v Leslie Frewin (Publishers) Ltd [1966] Ch 71 …. 7.17 Chappell & Co Ltd v Redwood Music Ltd [1981] RPC 337 …. 7.7 Chase Manhattan Overseas Corp v Chase Corp (1986) 8 IPR 69 …. 17.19, 18.9, 18.11 — v Chase Corp Ltd (1985) 9 FCR 129 …. 17.14, 17.15 Chelsea Man Menswear Ltd v Chelsea Girl Ltd [1987] RPC 189 …. 17.11 Children’s Television Workshop Inc v Woolworths (NSW) Ltd [1981] 1 NSWLR 273 …. 16.8, 16.24, 17.19, 18.2 Chiron Corp v Organon Teknika Ltd (No 3) [1994] FSR 202 …. 12.54 Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 82 IPR 13 …. 19.26, 19.56, 19.68, 19.69 Chocosuisse Union des Fabricants Suisses de Chocolat v Cadbury Ltd [1999] RPC 826 …. 16.14 Chris Ford Enterprises Pty Ltd v B H & J R Badenhop Pty Ltd (1985) 4 IPR 485 …. 10.9, 10.10, 17.8 Christian v Société Des Produits Nestlé SA (No 2) (2015) 115 IPR 421 …. 20.4 Christodoulou v Disney Enterprises Inc (2005) 66 IPR 595 …. 20.9

Chrysalis Records Ltd v Vene (1982) 43 ALR 440 …. 8.33 Chrysler Australia Ltd, Re [1976] ATPR 35-100 …. 22.97 Church of Scientology of California v Kaufman [1973] RPC 635 …. 4.17, 4.19, 4.26 Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR 309 …. 8.4, 8.8 Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 …. 19.55, 19.65, 19.71 Clark v Adie (1877) 2 App Cas 315 …. 14.18 Claudius Ash, Sons & Co Ltd v Invicta Manufacturing Co Ltd (1911) 28 RPC 597 …. 16.11 Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd (No 3) (2017) 122 IPR 395 …. 19.36 Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 …. 12.62 Clune v Collins Angus & Robertson Publishers Pty Ltd (1993) 25 IPR 246 …. 7.14, 7.15 Coca Cola, Re [1978] ATPR 35-400 …. 22.97 Coca-Cola Co v All-Fect Distributors Ltd (1998) 43 IPR 47 …. 20.10 — v — (1999) 47 IPR 481 …. 20.4, 20.5, 20.8, 20.10 — v Frucor Beverages Ltd [2016] ATMO 38 …. 19.71 Coca-Cola Trade Marks [1986] RPC 421 …. 19.68 Coco v A N Clark (Engineers) Ltd [1969] RPC 41 …. 4.5, 4.9, 4.11, 4.23, 4.24 Codelfa Construction Pty Ltd v State Railway Authority of New South Wales (1982) 149 CLR 337 …. 22.24 Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1968) 122 CLR 25 …. 2.5, 2.16, 2.17 Coles v Dormer (2015) 117 IPR 184 …. 6.3, 7.7 Colgate-Palmolive Company Inc, Re (2010) 88 IPR 434 …. 10.23 College of Law Pty Ltd, Re Application by the (1999) 47 IPR 404 …. 19.62 Collier Constructions Pty Ltd v Foskett Pty Ltd (1990) 19 IPR 44 ….

8.56, 8.58 Collins v Northern Territory (2006) 70 IPR 614 …. 14.12 — v — (2007) 74 IPR 296 …. 14.11 Colorado Group Ltd v Strandbags Group Pty Ltd (2006) 67 IPR 628 …. 16.40 — v — (2007) 74 IPR 246 …. 16.8, 19.32, 19.65, 20.19 Columbia Gramophone Co Ltd v Murray (1922) 39 RPC 239 …. 13.24 Columbia Pictures Industries Inc v Luckins (1996) 34 IPR 504 …. 8.61 Comite Interprofessionel des Cotes de Provence v Bryce (1996) 35 IPR 170 …. 16.41 Comite Interprofessionel du Vin de Champagne v N L Burton Pty Ltd (1981) 38 ALR 664 …. 16.14, 16.41, 21.65 Commercial & Accounting Services (Camden) Pty Ltd v Cummins (2011) 207 IR 351 …. 4.34 Commercial Plastics Ltd v Vincent [1965] 1 QB 623 …. 4.36 Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 …. 11.44, 12.19, 12.20, 12.21 — v RPL Central Pty Ltd (2015) 115 IPR 461 …. 12.7, 12.8, 12.9, 12.14 — v Wellcome Foundation Ltd (1983) 2 IPR 156 …. 12.25 Commissioner of Taxation v Seven Network Ltd (2016) 118 IPR 211 …. 6.47 Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39 …. 1.42, 2.19, 3.8, 4.5, 4.6, 4.11, 4.13, 4.18, 4.39, 8.40, 8.53, 8.56 — v Northern Land Council (1993) 176 CLR 604 …. 4.22 — v Oceantalk Australia Pty Ltd (1998) 39 IPR 520 …. 7.10 — v Sanofi[2017] FCA 382 …. 4.17 — v Tasmania (1983) 158 CLR 1 …. 1.6 Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160 …. 14.21 — v W G Holdings Pty Ltd (1970) 44 ALJR 385 …. 12.53 Compagnie Industrielle de Precontrainte et d’Equipment des Constructions SA v First Melbourne Securities Ltd (1999) 44 IPR

512 …. 10.32 Company’s Application, Re a [1989] 2 All ER 248 …. 4.20 Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319 …. 18.26 Computer Edge Pty Ltd v Apple Computer Inc (1986) 161 CLR 171 …. 5.10, 6.14, 6.30 Computer Generation of Chinese Characters, Re [1993] FSR 315 …. 12.8 Computermate Products (Australia) Pty Ltd v Ozi-Soft Pty Ltd (1988) 12 IPR 487 …. 7.17, 8.33 Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193 …. 16.2, 16.4, 16.5, 16.11, 16.16, 16.18, 16.20, 16.38, 17.13, 17.14, 19.35, 19.86 Concept Television Productions Pty Ltd v Australian Broadcasting Corp (1988) 12 IPR 129 …. 4.23, 4.25, 4.29 Concrete Constructions (NSW) Pty Ltd v Nelson (1990) 169 CLR 594 …. 16.30, 16.37 Concrete Ltd’s Application, Re (1940) 57 RPC 121 …. 10.16 Concrete Mining Structures Pty Ltd v Cellcrete Australia Pty Ltd [2015] FCA 888 …. 4.23 Concrete Pty Ltd v Parramatta Design and Developments Pty Ltd (2006) 229 CLR 577 …. 7.16 Concut Pty Ltd v Worrell (2000) 176 ALR 693 …. 4.34 Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864 …. 19.78 Connect TV Pty Ltd v All Rounder Investments Pty Ltd (No 5) (2016) 118 IPR 133 …. 6.49 connect.com.au Pty Ltd v Goconnect Australia Pty Ltd (2000) 50 IPR 535 …. 17.4, 18.24 Conor Medsystems Inc v University of British Columbia (No 2) (2006) 68 IPR 217 …. 13.2 Conroy v Lowndes [1958] Qd R 375 …. 4.29 Consorzio Del Prosciutto Di Parma v Marks & Spencer [1991] RPC 351 …. 16.4 Cooga Mooga Inc, Re (1978) 92 FTC 310 …. 16.26

Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 41 IPR 593 …. 6.16, 6.28, 8.4, 8.14 Cooper v Universal Music Australia Pty Ltd (2006) 156 FCR 380 …. 8.30, 14.14 Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 …. 19.75 Coopers Animal Health Australia Ltd v Western Stock Distributors Ltd (1986) 6 IPR 545 …. 12.54 — v — (1987) 11 IPR 20 …. 12.70 Cooper’s Application (1902) 19 RPC 53 …. 12.8 Copydex Ltd v Noso Products Ltd (1952) 69 RPC 38 …. 16.13 Copyright Agency Ltd v New South Wales (2007) 159 FCR 213 …. 7.10 — v — [2007] HCA Trans 700 …. 7.10 — v — (2008) 233 CLR 279 …. 1.7, 7.10, 7.16, 7.25 — v — (2013) 102 IPR 85 …. 7.25 Corby v Allen & Unwin Pty Ltd (2013) 297 ALR 761 …. 8.61, 9.5, 9.7, 9.8 Corelli v Gray (1913) 29 TLR 570 …. 6.1, 8.4 Corrs Pavey Whiting & Byrne v Collector of Customs (Vic) (1987) 74 ALR 428 …. 4.19, 4.20, 4.21, 4.26, 4.38 Cosmetic, Toiletry and Fragrance Association Foundation v Fanni Barns Pty Ltd (2003) 57 IPR 594 …. 19.90 Costa v GR & IE Daking Pty Ltd (1994) 29 IPR 241 …. 13.2 Coulthard v South Australia (1995) 63 SASR 531 …. 2.7, 3.9, 4.5, 4.40 Courier Pete Pty Ltd v Metroll Queensland Pty Ltd (2010) 87 IPR 397 …. 10.9 CPA Australia Ltd v Dunn (2007) 74 IPR 495 …. 16.35 Crane v Price (1842) 1 Web PC 393; 134 ER 239 …. 12.4 Cranleigh Precision Engineering Ltd v Bryant [1964] 3 All ER 289 …. 4.7, 4.9 Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212 …. 19.40, 19.77, 19.97, 20.4, 20.19

Crimson SRL v Claudia Shoes Pty Ltd (No 7) [2008] FMCA 109 …. 16.20 Crosfield & Sons Ltd’s Application (1909) 26 RPC 837 …. 19.55 Crowder v Hilton [1902] SALR 82 …. 4.11 Crowe Horwath (Aust) Pty Ltd v Loone [2017] VSCA 181 …. 4.36 CRW Pty Ltd v Sneddon [1972] AR (NSW) 17 …. 18.8, 18.13 C-Shirt Pty Ltd v Barnett Marketing and Management Pty Ltd (1996) 37 IPR 315 …. 18.2 CSIRO and Gilbert, Re Applications by (1995) 31 IPR 67 …. 13.2, 22.56 CSR Ltd v Resource Capital Australia Pty Ltd (2003) 128 FCR 408 …. 18.24, 18.28, 20.11 Cue Design Pty Ltd v Playboy Enterprises Pty Ltd (1983) 43 ALR 535 …. 17.19 Cultivaust Pty Ltd v Grain Pool Pty Ltd (2005) 62 IPR 11 …. 15.20 — v — (2005) 67 IPR 162 …. 15.3, 15.19, 15.20, 15.34, 15.37 Cummins v Bond [1927] 1 Ch 167 …. 6.3 — v Vella [2002] FCAFC 218 …. 8.14 Curtis v Platt (1863) 3 Ch D 135 …. 14.33 Customglass Boats Ltd v Salthouse Bros Ltd [1976] RPC 589 …. 18.7

D D v National Society for the Prevention of Cruelty to Children [1978] AC 171 …. 4.22 D A & K’s Application (1926) 43 RPC 154 …. 12.8 D Sebel & Co Ltd v National Art Metal Co Ltd (1965) 10 FLR 224 …. 10.23 ‘Daiquiri Rum’ Trade Mark [1969] RPC 600 …. 19.64 D’Arcy v Myriad Genetics Inc (2014) 107 IPR 478 …. 12.6, 12.7 — v — (2015) 258 CLR 334 …. 1.24, 1.29, 12.3, 12.4, 12.5, 12.30, 12.34 Dabscheck v Hecla Electrics Pty Ltd (1936) 57 CLR 418 …. 12.72 Dairy Vale Metro Co-operative Ltd v Brownes Dairy Ltd (1981) 54

FLR 243 …. 17.10, 17.15 Dais Studio Pty Ltd v Bullet Creative Pty Ltd (2007) 74 IPR 512 …. 4.35, 4.36, 6.16 Dalgety Australia Operations Ltd v F F Seeley Nominees Pty Ltd (1985) 5 IPR 97 …. 10.16 Dallas Buyers Club LLC v iiNet Ltd (2015) 112 IPR 1 …. 8.31 Dandy Power Equipment Pty Ltd v Mercury Marine Pty Ltd (1982) 64 FLR 238 …. 22.85, 22.93 Danisco A/S v Novozymes A/S (No 2) (2011) 91 IPR 209 …. 12.41, 12.42, 14.13 Danziger ‘Dan’ Flower Farm v Astée Flowers BV 105.003.932/01, Court of Appeal, The Hague (2009) …. 15.27 Danziger ‘Dan’ Flower Farm v Azolay 1228/03, District Court, TelAviv-Jaffa (2009) …. 15.27 Darcy v Allen (1602) 11 Co Rep 84; 74 ER 1131 …. 11.2 Darrell Lea Chocolate Shops Pty Ltd v Cadbury Ltd (2006) 69 IPR 386 …. 19.71 Dart Industries Inc v David Bryar & Associates Pty Ltd (1997) 38 IPR 389 …. 2.9, 4.22 — v Decor Corp Pty Ltd (1993) 179 CLR 101 …. 2.16, 2.17, 14.33 Darvall McCutcheon v H K Frost Holdings Pty Ltd (2002) 4 VR 570 …. 3.9, 4.30 Darwin Fibreglass Pty Ltd v Kruhse Enterprises Pty Ltd (1998) 41 IPR 649 …. 6.27 Data Access Corp v Powerflex Services Pty Ltd (1999) 202 CLR 1 …. 6.4, 6.13, 6.15, 6.16, 6.30, 6.32, 6.33, 8.10, 8.11 Datadot Technology Ltd v Alpha Microtech Pty Ltd (2003) 59 IPR 402 …. 14.31 David Syme & Co Ltd v General Motors-Holden Ltd [1984] 2 NSWLR 294 …. 4.7 Davidson v CBS Records [1983] AIPC 90-106 …. 7.14 Davies Shephard Pty Ltd v Stack (2001) 51 IPR 513 …. 13.2, 13.16 Davis v Commonwealth (1988) 166 CLR 79 …. 1.5, 19.19, 19.20 DC Comics v Cheqout Pty Ltd (2013) 101 IPR 334 …. 19.36, 19.75,

19.85, 19.86 DC Payments Pty Ltd v Next Payments Pty Ltd [2016] VSC 315 …. 4.11 De Beers Abrasive Products Ltd v International General Electric Co of New York Ltd [1975] 1 WLR 972 …. 16.2 De Forest Radio Telephone & Telegraph Co v United States (1927) 273 US 236 …. 22.3 De Garis v Neville Jeffress Pidler Pty Ltd (1990) 18 IPR 292 …. 6.51, 8.39, 8.40, 22.79 Deckers Outdoor Corp Inc v Farley (No 2) (2009) 176 FCR 33 …. 19.95, 20.19 — v — (No 5) (2009) 83 IPR 245 …. 6.25, 20.20 Decor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 …. 12.62, 12.65, 14.17, 14.21 Deeko Australia Pty Ltd v Decor Corp Pty Ltd (1988) 11 IPR 531 …. 19.77 Deeson Heavy Haulage Pty Ltd v Cox (2009) 82 IPR 521 …. 4.34 Defries & Son Ltd v Electric & Ordnance Accessories Co Ltd (1906) 23 RPC 406 …. 19.29 Del Casale v Artedomus (Aust) Pty Ltd (2007) 73 IPR 326 …. 3.2, 4.3, 4.6, 4.33, 4.35 Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd (2008) 78 IPR 463 …. 11.22, 12.19 Delphic Wholesalers Pty Ltd v Elco Food Co Pty Ltd (1987) 8 IPR 545 …. 20.13 Dennison Manufacturing Co v Alfred Holt & Co Ltd (1987) 10 IPR 612 …. 6.32 — v Monarch Marketing Systems Inc (1983) 1 IPR 431 …. 12.39, 12.50 Deputy Commissioner of Taxation v Rettke (1995) 31 IPR 457 …. 4.2, 4.40 Desktop Marketing Systems Pty Ltd v Telstra Corp Ltd (2002) 55 IPR 1 …. 1.45, 6.1, 6.17, 6.34, 6.35, 8.12 Deta Nominees Pty Ltd v Viscount Plastic Products Pty Ltd [1979] VR

167 …. 4.4, 4.6 Devefi Pty Ltd v Mateffy Perl Nagy Pty Ltd (1993) 37 IPR 477 …. 7.16 Dial-An-Angel Pty Ltd v Sagitaar Services Systems Pty Ltd (1990) 19 IPR 171 …. 20.21 Diamond v Chakrabarty (1980) 447 US 303 …. 12.6, 12.27 — v Diehr (1981) 450 US 175 …. 12.13 Diamond T Motor Co’s Application (1921) 38 RPC 373 …. 19.59, 19.62 Dickens, Re [1935] Ch 267 …. 7.13 Digga Australia Pty Ltd v Norm Engineering Pty Ltd (2008) 166 FCR 268 …. 10.37 Dioguardi, Re (2013) 113 IPR 187 …. 10.10 Director of Public Prosecutions (Cth) v Kane (1997) 140 FLR 468 …. 4.11, 4.12 Director-General of Education v Public Service Association of New South Wales (1984) 79 FLR 15 …. 4.40 — v — (1985) 4 IPR 552 …. 7.10 Distillers Co (Biochemicals) Ltd v Times Newspapers Ltd [1975] 1 All ER 41 …. 4.18 Distillers Co Ltd’s Application (1953) 70 RPC 221 …. 12.18 Dixon Investments Pty Ltd v Hall [1990] AIPC 90-714 …. 8.10 Dixon Projects Pty Ltd v Masterton Homes Pty Ltd (1996) 36 IPR 136 …. 7.7 Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd (1993) 26 IPR 261 …. 17.4, 17.5 Doe v Australian Broadcasting Corp [2007] VCC 281 …. 3.11 Domain Names Australia Pty Ltd v .au Domain Administration Ltd (2004) 63 IPR 1 …. 18.6, 18.23 Dominion Rent A Car Ltd v Budget Rent A Car System (1970) Ltd (1987) 9 IPR 367 …. 2.7, 16.8, 17.14 Donaldson v Beckett (1774) 4 Burr 2408; 98 ER 257 …. 5.4 Donlan Liquor Markets Pty Ltd, Re [1975] ATPR 13-900 …. 22.97 Donoghue v Allied Newspapers Ltd [1938] Ch 106 …. 6.2, 7.7

Dorling v Honnor Marine Ltd [1965] Ch 1 …. 8.15 Dow Chemical AG v Spence Bryson & Co Ltd [1982] FSR 397 …. 14.10 Dow Chemical Co v Ishihara Sangyo Kaisha Ltd (1985) 5 IPR 415 …. 12.24 Dowling v Dalgety Australia Ltd (1992) 34 FCR 109 …. 22.93 Dr Barnardo’s Homes v Barnardo Amalgamated Industries Ltd (1949) 66 RPC 103 …. 16.6 Dr Martens Australia Pty Ltd v Bata Shoe Co of Australia Pty Ltd (1997) 38 IPR 163 …. 16.20 — v Rivers (Australia) Pty Ltd (1999) 47 IPR 499 …. 17.7, 18.2, 18.17, 18.18, 18.24 Draper v Trist (1939) 56 RPC 429 …. 16.20 DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd (2013) 100 IPR 19 …. 12.60 Duck v Bates (1884) 13 QBD 843 …. 8.19 Duncan v Medical Practitioners Committee [1986] 1 NZLR 513 …. 4.20 — v New South Wales (2015) 255 CLR 388 …. 7.25 Dunlop Pneumatic Tyre Co v Holborn Tyre Co (1901) 18 RPC 222 …. 13.25 Dunlop Pneumatic Tyre Co Ltd v British and Colonial Motor Car Co (1901) 18 RPC 313 …. 14.7 — v David Moseley & Sons Ltd [1904] 1 Ch 612 …. 14.5, 14.6, 14.10 — v Neal (1899) 16 RPC 247 …. 13.25 Dunn’s Trade Marks, Re (1888) 41 Ch D 439 …. 19.52 Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd (2009) 81 IPR 480 …. 12.19, 12.56 — v — [2009] HCATrans 328 …. 12.56 Durkan v Twentieth Century Fox Film Corp (2000) 47 IPR 651 …. 19.85 Duthie v Nixon (2015) 47 VR 355 …. 4.23 Dynamic Supplies Pty Ltd v Tonnex International Pty Ltd (2011) 91

IPR 488 …. 8.4 Dyno Nobel Asia Pacific Ltd v Orica Australia Pty Ltd (1999) 47 IPR 257 …. 12.20, 12.51, 12.59, 14.27

E E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386 …. 19.79, 19.101, 20.4, 20.15 — v — (2010) 241 CLR 144 …. 19.25, 19.79, 19.100, 19.101, 20.8, 20.12, 20.14, 20.15, 20.30 E I Du Pont de Nemours & Co v ICI Chemicals & Polymers Ltd (2005) 66 IPR 462 …. 12.42, E I Du Pont de Nemours & Co Inc v Christopher (1970) 431 F 2d 1012 …. 3.3 E I Du Pont de Nemours & Co (Witsiepe’s) Application [1982] FSR 303 …. 12.46, 12.53 Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 43 IPR 1 …. 8.4, 8.7, 8.14 Eagle Rock Entertainment Ltd v Caisley (2005) 66 IPR 554 …. 8.61 Earl v Nationwide News Pty Ltd [2013] NSWSC 839 …. 4.6 Eastern Express Pty Ltd v General Newspapers Pty Ltd (1992) 35 FCR 43 …. 22.93 Eastland Technology Australia Pty Ltd v Whisson (2005) 223 ALR 123 …. 13.12 Eastman Photographic Materials Co v Comptroller General of Patents [1898] AC 571 …. 19.61, 19.62 Eastman Photographic Materials Co Ltd v John Griffiths Cycle Corp Ltd (1898) 15 RPC 105 …. 16.18, 17.18 Easyfind (NSW) Pty Ltd v Paterson (1987) 10 IPR 464 …. 6.33 Eclipse Sleep Products Inc v Registrar of Trade Marks (1957) 99 CLR 300 …. 19.55, 19.62 Edelsten v Edelsten (1863) 1 De G J & S 185; 46 ER 72 …. 16.1 Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd (2012) 98 IPR 1 …. 20.8, 20.12 Edsonic Pty Ltd v Cassidy (2010) 88 IPR 317 …. 7.3 Edwards Hot Water Systems v S W Hart & Co Pty Ltd (1983) 1 IPR

228 …. 10.16, 10.18, 10.31, 10.32 Elanco Products v Mandops Ltd [1979] FSR 46 …. 8.14 Elconnex Pty Ltd v Gerard Industries Pty Ltd (1992) 25 IPR 173 …. 12.53, 12.65 Elders IXL Ltd v Australian Estates Pty Ltd (1987) 10 IPR 575 …. 16.40, 17.17 Elders Rural Services Australia Ltd v Registrar of Plant Breeder’s Rights (2011) 91 IPR 532 …. 15.3 — v — (2012) 95 IPR 229 …. 15.3 Eldred v Ashcroft (2003) 123 S Ct 769 …. 6.60 Elecon Australia Pty Ltd v PIV Drives GmbH (2010) 93 IPR 174 …. 3.12, 4.2 Electrix Ltd v Electrolux Ltd [1959] RPC 283 …. 19.55 Electrolux Ltd v Electrix Ltd (1953) 71 RPC 23 …. 19.101 — v Hudson [1977] FSR 312 …. 13.7, 13.8 Eli Lilly & Co Ltd v Apotex Pty Ltd (2013) 100 IPR 451 …. 12.46, 14.17, 14.20 Elida Gibbs Ltd v Colgate-Palmolive Ltd [1983] FSR 95 …. 17.15 Elliott Brothers (London) Ltd’s Application [1967] RPC 1 …. 11.29 Ellis’s Trade Mark (1904) 21 RPC 619 …. 19.94 Elton John v James [1991] FSR 397 …. 7.19 Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd (2008) 76 IPR 83 …. 10.33 — v — (2008) 172 FCR 580 …. 6.13, 6.25, 8.10, 8.14, 8.15 — v — (2009) 81 IPR 378 …. 8.61 Embrex v Service Engineering (2000) 216 F 3d 1343 …. 14.4 EMI Ltd v Sarwar & Haidar [1977] FSR 146 …. 2.9 EMI Records (Australia) Ltd, Re [1985] ATPR 50-096 …. 22.99 EMI Records Ltd v Kudhail (1983) 4 IPR 513 …. 8.60 EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd (2011) 90 IPR 50 …. 8.14 Emperor Sports Pty Ltd v Commissioner of Patents (2005) 67 IPR 488 …. 11.40

Emrik Sporting Goods Pty Ltd v Stellar International Sporting Goods Pty Ltd (1981) 53 FLR 319 …. 16.7 Entertainment (Australia) Ltd v Smith (2005) 64 IPR 18 …. 8.61 Eos Australia Pty Ltd v Expo Tomei Pty Ltd (1998) 42 IPR 277 …. 19.97, 20.19 EPP National Buying Group Pty Ltd v Levy [2001] NSWSC 482 …. 4.6 Equity Access Pty Ltd v Westpac Banking Corp (1989) 16 IPR 431 …. 16.32, 17.5, 18.4 Equivalent Cooling Tower Co Pty Ltd v Pritchard Cooling Tower Services Pty Ltd (1998) 45 IPR 442 …. 14.33 Erica Vale Australia Pty Ltd v Thompson & Morgan (Ipswich) Ltd (1994) 29 IPR 589 …. 7.3 Erven Warnink v J Townsend & Sons (Hull) Ltd [1979] AC 731 …. 16.4, 16.8, 16.12, 16.13, 16.14 ESP’s Application (1945) 62 RPC 87 …. 12.8 Esso Australia Resources Ltd v Plowman (1995) 183 CLR 10 …. 4.3, 4.22, 4.40 Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd (1967) 116 CLR 254 …. 19.29, 19.100 Ethyl Corp (Cook’s) Patent [1970] RPC 227 …. 12.42 Ettingshausen v Australian Consolidated Press (1991) 23 NSWLR 443 …. 16.28 Eutectic Corp v Registrar of Trade Marks (1980) 32 ALR 211 …. 19.63 Evian (CB) Ltd v Bowles [1965] RPC 327 …. 16.40 Expense Reduction Analysts Group Pty Ltd v Armstrong Strategic Management and Marketing Pty Ltd (2013) 250 CLR 303 …. 4.10, 4.11 Exxon Corp v Exxon Insurance Consultants International Ltd [1982] RPC 69 …. 6.13, 6.14

F F H Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 …. 19.55, 19.64, 20.19 F Hoffman-La Roche AG v New England Biolabs Inc (2000) 50 IPR

305 …. 14.31 F Hoffman-La Roche & Co AG v Commissioner of Patents (1971) 123 CLR 529 …. 12.67 — v DDSA Pharmaceuticals Ltd [1972] RPC 1 …. 17.8 Fabwerke Hoechst AC v Commissioner of Patents (1971) 124 CLR 654 …. 12.69 Faccenda Chicken Ltd v Fowler [1986] 1 All ER 617 …. 4.33, 4.35 Facton Ltd v Erdogan (No 1) (2012) 99 IPR 46 …. 16.12, 16.20 — v Mish Mash Clothing Pty Ltd (2012) 94 IPR 523 …. 6.25, 6.33, 8.4 — v Rifai Fashions Pty Ltd (2012) 95 IPR 95 …. 8.58, 8.61 — v Toast Sales Group Pty Ltd (2012) 98 IPR 13 …. 20.15, 20.17 — v Xu (2015) 111 IPR 103 …. 6.25, 8.29 FAI Insurance Ltd v Advance Bank Australia Ltd (1986) 7 IPR 217 …. 6.4, 6.25 Fairfax Media Publications v Reed International Books Australia (2010) 88 IPR 11 …. 6.13 Falconer v Australian Broadcasting Corp (1991) 22 IPR 205 …. 4.2, 4.23 Falkenhagen v Polemate Pty Ltd (AIPO, application No 84712/91, 16 June 1995) …. 13.2 Fallshaw Holdings Pty Ltd v Flexello Castors & Wheels Plc (1993) 26 IPR 565 …. 12.19, 12.45, 12.53 Farah Constructions Pty Ltd v Say-Dee Pty Ltd (2007) 230 CLR 89 …. 3.12, 4.14, 4.32 Farley (Australia) Pty Ltd v J R Alexander & Sons (Qld) Pty Ltd (1947) 75 CLR 487 …. 19.33 Farmer & Co Ltd v Anthony Hordern & Sons Ltd (1964) 112 CLR 163 …. 20.28 Fastening Supplies Pty Ltd v Olin Mathieson Chemical Corp (1969) 119 CLR 572 …. 13.28 Fawcett v Homan (1896) 13 RPC 398 …. 12.57 Federal Commissioner of Taxation v Australia and New Zealand Banking Group Ltd (1979) 143 CLR 499 …. 4.22

— v Seven Network Ltd (2016) 241 FCR 1 …. 6.10 — v United Aircraft Corp (1943) 68 CLR 525 …. 3.12, 22.28 Feist Publications Inc v Rural Telephone Co Inc (1991) 20 IPR 129 …. 6.34 Fencott v Muller (1983) 152 CLR 570 …. 2.24 Fender Australia Pty Ltd v Bevk (1989) 15 IPR 257 …. 20.13, 20.15 Ferntree Homes Pty Ltd v Bohan (2002) 54 IPR 267 …. 8.14 Fine Industrial Commodities v Powling (1954) 71 RPC 253 …. 13.12 Finnane v Australian Consolidated Press [1978] 2 NSWLR 435 …. 4.2 Finney v United States (1975) 188 USPQ 33 …. 14.4 Fire Nymph Products Ltd v Jalco Products (WA) Pty Ltd (1983) 1 IPR 79 …. 18.10, 18.11 Firebelt Pty Ltd v Brambles Australia Ltd (2002) 188 ALR 280 …. 12.19, 12.49, 12.52, 12.53 Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483 …. 10.16 Firth Industries Ltd v Polyglas Engineering Pty Ltd (1975) 132 CLR 489 …. 2.7, 14.11 Fishburn’s Application (1938) 57 RPC 245 …. 12.7, 12.8 Fisher, Re (2005) 421 F3d 1365 …. 12.58 Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 22 IPR 1 …. 14.21 Fisher-Karpark Industries Ltd v Nichols [1982] FSR 351 …. 4.25 Fitzgerald v 33 South Pty Ltd [2008] FMCA 1132 …. 16.20, 16.28, 18.15 Flamingo Park Pty Ltd v Dolly Dolly Creations Pty Ltd (1986) 6 IPR 431 …. 16.16, 16.20 Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd [1981] 1 NSWLR 196 …. 17.14, 17.15 Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 …. 12.62, 14.17 FMC Engineering Pty Ltd v FMC (Australia) Ltd [1966] VR 529 …. 17.19

FNH Investments Pty Ltd v Sullivan (2003) 59 IPR 121 …. 7.17, 8.61 Fomento Industrial SA v Mentmore Manufacturing Co Ltd [1956] RPC 87 …. 12.39 Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 …. 19.43, 20.4 Fortuity Pty Ltd v Barcza (1995) 32 IPR 517 …. 4.3, 4.28, 4.30 Foster v Mountford (1976) 14 ALR 71 …. 1.25, 3.9, 4.2 Foster’s Australia Ltd v Cash’s (Australia) Pty Ltd (2013) 101 IPR 546 …. 12.73, 13.1, 22.27 Foxtel Management Pty Ltd v Mod Shop Pty Ltd (2007) 72 IPR 1 …. 2.9, 8.60 Fractionated Cane Technology Ltd v Ruiz-Avila (1987) 8 IPR 502 …. 4.10, 4.25 — v — (1988) 13 IPR 609 …. 4.10, 4.25 Franchi v Franchi [1967] RPC 149 …. 4.6 Francis Day & Hunter v Feldman & Co [1914] 2 Ch 728 …. 6.56 Francis Day & Hunter Ltd v Bron [1963] Ch 587 …. 8.4, 8.14 — v 20th Century Fox Corp Ltd [1940] AC 112 …. 6.13 Francome v Mirror Group Newspapers Ltd [1984] 2 All ER 408 …. 4.11, 4.20 Frank M Winstone (Merchants) Ltd v Plix Products Ltd (1985) 5 IPR 156 …. 8.15 Franklin v Giddins [1978] Qd R 72 …. 4.11, 4.27 Fraser v Evans [1969] 1 QB 349 …. 4.2, 4.17 Frearson v Loe (1878) 9 Ch D 48 …. 14.4 Freeman, Re (1978) 197 USPQ 464 …. 12.9 Freedom Motors Australia Pty Ltd v Vaupotic [2003] NSWSC 579 …. 4.25 Freeman Cosmetic Corp v Jenola Trial Pty Ltd [1993] ATPR 41-270 …. 18.4 Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230 …. 14.17 Frisby v BBC [1967] Ch 932 …. 7.15

Frito-Lay Trading Co GmbH v Aldi Stores Ltd Partnership (2001) 52 IPR 410 …. 20.19 Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 …. 19.36, 19.62 Futuretronics.com.au Pty Ltd v Graphix Labels Pty Ltd (2009) 81 IPR 1 …. 4.33 Fylde Microsystems Ltd v Key Radio Systems Ltd (1998) 39 IPR 481 …. 7.7

G G v Day [1982] 1 NSWLR 24 …. 4.6, 4.14, 4.25 G A Cramp & Sons Ltd v Frank Smythson Ltd [1944] AC 329 …. 6.33 GAIN Capital UK Ltd v Citigroup Inc (No 4) [2017] FCA 519 …. 19.78 Galaxy Electronics Pty Ltd v Sega Enterprises Ltd (1997) 75 FCR 8 …. 6.10, 6.47, 8.32, 9.25, 9.27 Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (1999) 48 IPR 625 …. 11.43 Garden City Planters Pty Ltd v Vivre Veritas Pty Ltd (2012) 99 IPR 403 …. 14.25 Gardner v Sykes [1981] FSR 281 …. 8.19 Gartside v Outram (1856) 26 LJ Ch 113 …. 4.18, 4.21 GE Trade Mark [1970] RPC 339 …. 20.28 — [1973] RPC 297 …. 16.8, 18.7 Genentech Inc v Wellcome Foundation Ltd [1989] RPC 147 …. 14.30, 21.16 General Manager, Workcover Authority of NSW v Law Society of NSW (2006) 65 NSWLR 502 …. 4.4 General Steel Industries Inc v Commissioner of Railways (NSW) (1964) 112 CLR 125 …. 13.34 General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1976] RPC 197 …. 14.33 Generic Health Pty Ltd v Otsuka Pharmaceutical Co Ltd [2012] FCA 412 …. 14.33

— v — (2013) 100 IPR 240 …. 14.13, 14.33 Geneva Laboratories Ltd v Nguyen (2014) 110 IPR 295 …. 2.9 Geodesic Constructions Pty Ltd v Gaston (1976) 16 SASR 453 …. 2.14 Geographica Ltd v Penguin Books Ltd [1985] FSR 208 …. 6.32 George C Warner Laboratories Pty Ltd v Chemspray Pty Ltd (1967) 41 ALJR 75 …. 11.25, 12.38 George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64 …. 6.28 Georgia Kaolin Co Ltd’s Application (1956) RPC 121 …. 11.29 Gianitsios v Karagiannis (1986) 7 IPR 36 …. 2.9 Gibson, Re (2010) 89 IPR 414 …. 19.69 Giller v Procopets (2008) 79 IPR 489 …. 3.9, 3.11, 4.29, 4.30 Gillette Safety Razor Co v Anglo-American Trading Co Ltd (1913) 30 RPC 465 …. 14.32 GlaxoSmithKline Australia Pty Ltd v Ritchie (2008) 77 IPR 306 …. 4.35 Glenleith Holdings Ltd, Re Application by (1989) 15 IPR 555 …. 19.66 Global Brand Marketing Inc v YD Pty Ltd (2008) 76 IPR161 …. 20.10 Global Sportsman Ltd v Mirror Newspapers Ltd (1984) 55 ALR 25 …. 16.32 Glueck v Stang (2008) 76 IPR 75 …. 16.30 Glyn v Weston Feature Film Co [1916] 1 Ch 261 …. 8.58 Gold and Copper Resources Pty Ltd v Newcrest Operations Ltd [2013] NSWSC 281 …. 4.3, 4.22 Gold Peg International Pty Ltd v Kovan Engineering (Aust) Pty Ltd (2005) 67 IPR 497 …. 7.12 Golden Editions Pty Ltd v Polygram Pty Ltd (1996) 34 IPR 84 …. 8.61 Gollel Holdings Pty Ltd v Kenneth Maurer Funerals Pty Ltd (1987) 9 IPR 109 …. 18.19 Google Inc v Australian Competition and Consumer Commission (2013) 249 CLR 435 …. 16.32, 16.33, 18.2, 18.10, 18.27 Gooley v Westpac Banking Corp (1995) 129 ALR 628 …. 4.34 Grain Pool of Western Australia v Commonwealth (2000) 202 CLR

479 …. 1.5, 1.6, 1.18, 15.2, 15.3, 19.20 Gramophone Co Ltd v Stephen Cawardine & Co [1934] Ch 450 …. 6.44 Gramophone Co Ltd’s Application (1910) 27 RPC 689 …. 19.64 Grant v Australian Temporary Fencing Pty Ltd (2003) 59 IPR 170 …. 13.22 — v Procurator Fiscal [1988] RPC 41 …. 3.12 Gray v Motor Accident Commission (1998) 196 CLR 1 …. 2.15 — v Sirtex Medical Ltd (2011) 193 FCR 1 …. 13.9 Great Tower Street Tea Co v Langford & Co (1887) 5 RPC 66 …. 16.2 Greater Dandenong City Council v Australian Municipal, Administrative, Clerical and Services Union (2001) 184 ALR 641 …. 7.10 Green v Broadcasting Corp of New Zealand (1983) 2 IPR 191 …. 6.19 Green Cartridge Co (Hong Kong) Ltd v Canon Kabushiki Kaisha (1996) 34 IPR 614 …. 7.16, 8.19 Greenfield Products Pty Ltd v Rover-Scott Bonnar Ltd (1990) 17 IPR 417 …. 6.24 Greg Cotton Motors Pty Ltd v Neil & Ross Neilson Pty Ltd (1984) 2 IPR 214 …. 18.19 Grofam Pty Ltd v KPMG Peat Marwick (1993) 27 IPR 215 …. 4.20 Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367 …. 16.8 Grosse v Purvis [2003] QDC 151 …. 3.11 Grove Fruit Juice Pty Ltd, Re Application by (2011) 91 IPR 380 …. 19.71 Grove Hill Pty Ltd v Great Western Corp Pty Ltd (2002) 55 IPR 257 …. 14.21 Gruzman Pty Ltd v Percy Marks Pty Ltd (1989) 16 IPR 87 …. 7.16, 7.17 Guyot v Thomson (1894) 11 RPC 541 …. 13.22 ‘Gyomin’ Trade Mark [1961] RPC 408 …. 19.33

H H Lundbeck A/S v Alphapharm Pty Ltd (2009) 81 IPR 228 …. 12.37, 12.39, 12.40, 12.73 — v — (No 2) [2009] FCAFC 118 …. 11.56 Habib Bank Ltd v Habib Bank AG Zurich [1981] 1 WLR 1265 …. 16.8 Hadley v Kemp [1999] EMLR 589 …. 6.21, 7.7, 9.10 Haines v Copyright Agency Ltd (1982) 64 FLR 184 …. 7.22 Half Court Tennis Pty Ltd v Seymour (1980) 53 FLR 240 …. 6.27 Halliday & Nicholas Insurance Brokers Pty Ltd v Corsiatto [2001] NSWCA 188 …. 4.28 Halloran v Henry F Halloran & Co Pty Ltd [1985] ATPR 40-501 …. 18.19 Hanna v OAMPS Insurance Brokers Ltd (2010) 202 IR 420 …. 4.36 Hansen Beverage Co v Bickford (Australia) Pty Ltd (2008) 75 IPR 505 …. 18.7 — v — (2008) 79 IPR 174 …. 16.18, 16.38, 17.13, 18.4 Harris v CSIRO (1993) 26 IPR 469 …. 13.2 — v Digital Pulse Pty Ltd (2003) 56 NSWLR 298 …. 2.15, 4.30 Harrods Ltd v Harrodian School (1996) 35 IPR 355 …. 16.16, 17.18 — v R Harrod Ltd (1924) 41 RPC 74 …. 16.12, 16.16, 17.18 Hart v Hart (1978) 141 CLR 305 …. 12.54 Hatmaker v Nathan & Co (1918) 35 RPC 61 …. 12.73 Hawkes & Son (London) Ltd v Paramount Film Service Ltd [1934] Ch 593 …. 8.10, 8.40 Hayasibara Co’s Patent (1977) FSR 582 …. 12.7 Health Services for Men Pty Ltd v D’Souza (2000) 48 NSWLR 448 …. 4.2 Health World Ltd v Shin-Sun Australia Ltd (2010) 240 CLR 590 …. 19.94 Hearn v O’Rourke (2003) 129 FCR 64 …. 16.30 Hearne v Street (2008) 235 CLR 125 …. 4.22 Hellewell v Chief Constable of Derbyshire [1995] 1 WLR 804 …. 4.11 Henderson v Radio Corp Pty Ltd (1960) 60 SR (NSW) 576 …. 16.12,

16.17, 16.18, 16.21, 16.25, 17.19 Henley Arch Pty Ltd v Lucky Homes Pty Ltd (2016) 120 IPR 317 …. 8.61 Herald and Weekly Times Ltd, Re (1982) 17 ALR 281 …. 22.99 Herbert Morris Ltd v Saxelby [1916] AC 688 …. 4.36 Hexagon Pty Ltd v Australian Broadcasting Commission (1975) 7 ALR 233 …. 6.19 Hickton’s Patent Syndicate v Patents & Machine Improvements Co Ltd (1909) 26 RPC 339 …. 12.53, 12.54 Hill v Evans (1862) 4 De G F & J 288; 45 ER 1195 …. 12.39, 12.40 Hillier’s Application [1969] RPC 267 …. 12.8 Hills Industries Ltd v Bitek Pty Ltd (2011) 90 IPR 337 …. 19.43 Hitchcock v TCN Channel Nine Pty Ltd (No 2) [2000] NSWCA 82 …. 4.5 Hoath v Connect Internet Services Pty Ltd (2006) 69 IPR 62 …. 17.16, 18.24 Hobbs v T-Tree Pty Ltd (2009) 83 IPR 395 …. 19.36 Hoffman-La Roche & Co AG v Harris Pharmaceuticals Ltd [1977] FSR 200 …. 14.6, 14.9 Hogan v Hinch (2011) 243 CLR 506 …. 3.6 — v Koala Dundee Pty Ltd (1988) 12 IPR 508 …. 16.20, 16.26, 16.27, 16.39, 18.17 — v Pacific Dunlop Ltd (1988) 12 IPR 225 …. 18.17 Hollinrake v Truswell [1894] 3 Ch 420 …. 6.1, 6.14 Holly Hobbie Trade Mark (1984) 1 IPR 486 …. 20.28 Holy Apostolic and Catholic Church of the East (Assyrian) Australia NSW Parish Association v Attorney-General (NSW); Ex rel Elisha (1989) 16 IPR 619 …. 16.6, 16.31 Honey v Australian Airlines Ltd (1990) 18 IPR 185 …. 16.25, 16.28, 18.15 Honeywell Bull Inc, Re Application by (1991) 22 IPR 463 …. 12.9 Hornblower v Boulton (1799) 8 TR 95; 101 ER 1258 …. 12.4 Hornsby Building Information Centre Pty Ltd v Sydney Building

Information Centre Ltd (1978) 140 CLR 216 …. 16.32, 16.37, 16.38, 17.2, 17.4, 18.8 Hosking v Runting [2005] 1 NZLR 1 …. 16.28 Hosokawa Micron International Inc v Fortune (1990) 19 IPR 531 …. 10.32 Hospital Products Ltd v United States Surgical Corp (1984) 156 CLR 41 …. 4.32 Hospitality Group Pty Ltd v Australian Rugby Union Ltd (2001) 110 FCR 157 …. 2.15, 2.16 House of Spring Gardens Ltd v Point Blank Ltd [1985] FSR 327 …. 8.15 Howard & Bullough Ltd v Tweedles & Smalley (1895) 12 RPC 519 …. 13.16 Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175 …. 19.61 Howard Florey/Relaxin, Re [1995] EPOR 541 …. 12.6 HP Bulmer Ltd v J Bollinger SA [1978] RPC 79 …. 16.15, 16.22 HPM Industries Pty Ltd v Gerard Industries Ltd (1957) 98 CLR 424 …. 12.39, 12.54 HRH Prince of Wales v Associated Newspapers Ltd [2008] Ch 57 …. 8.56 HTW Valuers (Central Qld) Pty Ltd v Astonland Pty Ltd (2004) 217 CLR 640 …. 16.34 HTX International Pty Ltd v Semco Pty Ltd (1983) 49 ALR 636 …. 19.99 Hubbard v Vosper [1972] 2 QB 84 …. 4.26, 8.39 Hughes Aircraft Systems International v Airservices Australia (1997) 146 ALR 1 …. 4.12 Humpherson v Syer (1887) 4 RPC 407 …. 12.39 Hunter Pacific International Pty Ltd v Martec Pty Ltd (2016) 121 IPR 1 …. 10.26 Hutchence v South Seas Bubble Co Pty Ltd (1986) 6 IPR 473 …. 16.8, 16.24, 17.19 Hyde Park Residence Ltd v Yelland [2001] Ch 143 …. 8.56

Hy-Line Chicks Pty Ltd v Swifte (1966) 115 CLR 159 …. 20.19 Hyperion Records Ltd v Sawkins (2005) 64 IPR 627 …. 6.21 — v Warner Music (UK) Ltd [1991] Ch 17 …. 8.14

I I & L Securities Pty Ltd v HTW Valuers (Brisbane) Pty Ltd (2002) 210 CLR 109 …. 16.34 IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 …. 1.44, 5.3, 6.1, 6.5, 6.17, 6.21, 6.32, 6.33, 6.35, 6.36, 6.38, 6.42, 8.8, 8.10, 8.11, 8.12, 8.24 — v Ross [2007] NSWSC 635 …. 4.36 ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc (1999) 45 IPR 577 …. 12.38, 12.39, 12.49, 12.50 — v — (2000) 106 FCR 214 …. 12.50, 12.54, 12.70, 12.73 IG Farben Industrie’s Patents (1930) 47 RPC 289 …. 12.46 IIR Pty Ltd v Buchman [1989] ATPR ¶40-955 …. 4.35 Imperial Chemicals Industries Pty Ltd v Commissioner of Patents (2004) 63 IPR 476 …. 12.37 Imperial Group Ltd v Philip Morris & Co [1982] FSR 72 …. 19.31 Inala Industries Pty Ltd v Associated Enterprises Pty Ltd [1960] Qd R 562 …. 10.16 Incandescent Gas Light Co v Brogben (1899) 16 RPC 179 …. 13.24 Indata Equipment Supplies Ltd v ACL Ltd [1998] FSR 248 …. 2.7, 4.29 Independent Management Resources Pty Ltd v Brown [1987] VR 605 …. 4.34 Independent Television Publications Ltd v Time Out [1984] FSR 64 …. 8.14 Industrial Rollformers Pty Ltd v Ingersoll-Rand (Australia) Ltd [2001] NSWCA 111 …. 4.6 Infabrics Ltd v Jaytex Shirts Ltd [1981] 1 All ER 1057 …. 8.62 Inform Design & Construction Pty Ltd v Boutique Homes Melbourne Pty Ltd (2008) 77 IPR 523 …. 8.4 Initial Services Ltd v Putterill [1968] 1 QB 396 …. 4.18, 4.20

Inland Revenue Commissioners v Muller & Co’s Margarine Ltd [1901] AC 217 …. 16.2 Innovative Agriculture Products Pty Ltd v Cranshaw (1996) 35 IPR 643 …. 12.39 Insight SRC IP Holdings Pty Ltd v Australian Council for Educational Research Ltd (2012) 96 IPR 495 …. 7.2, 7.10 Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20 …. 12.39, 14.17 Insurance News Pty Ltd v Jem Nominees Pty Ltd (2008) 80 IPR 239 …. 18.24 Intelmail Explorenet Pty Ltd v Vardanian (No 2) (2009) 82 IPR 281 …. 7.12, 20.21 Interact Machine Tools (NSW) Pty Ltd v Yamazaki Mazak Corp (1993) 27 IPR 83 …. 12.70 Interfirm Comparison (Australia) Pty Ltd v Law Society of NSW (1975) 5 ALR 527 …. 4.12, 4.30, 4.31 — v — (1975) 6 ALR 445 …. 2.15, 4.30, 4.31, 8.61 Interlego AG v Croner Trading Pty Ltd (1992) 25 IPR 65 …. 10.16, 10.31, 17.6, 18.4, 18.7 — v Toltoys Pty Ltd (1973) 130 CLR 461 …. 12.65, 14.17, 14.18 — v Tyco Industries Inc (1985) 7 IPR 417 …. 17.6 Intermatch Sweden Aktiebolag v Dick Smith Investments Pty Ltd (2003) 56 IPR 575 …. 19.91 International Business Machines Corp v Commissioner of Patents (1991) 22 IPR 417 …. 12.9 International Entertainment New Zealand (No 2) Ltd v Lewis (1998) 42 IPR 162 …. 4.3 International News Service v Associated Press (1918) 248 US 215 …. 1.30 International Paint Co Ltd’s Application [1982] RPC 247 …. 12.60 International Scientific Communications Inc v Pattison [1979] FSR 429 …. 4.1 International Writing Institute Inc v Rimila Pty Ltd (1995) 31 IPR 356 …. 8.62

Interpersonnel Pty Ltd v Reynolds (1994) 55 IR 357 …. 4.23 Interstate Parcel Express Co v Time-Life International (Nederlands) BV (1977) 138 CLR 534 …. 8.32, 13.24, 14.8 Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Ltd (2010) 85 IPR 525 …. 2.7, 12.57, 14.14 IPC Magazines Ltd v Black and White Music Corp [1983] FSR 348 …. 16.23 Irish Distillers Ltd v S Smith & Son Pty Ltd (1986) 7 IPR 509 …. 18.10 Irvine v Talksport Ltd [2002] FSR 943 …. 17.18 — v — [2003] FSR 619 …. 16.21 Irving’s Yeast-Vite Ltd v Horsenail (1934) 51 RPC 110 …. 20.9 ITP Pty Ltd v United Capital Pty Ltd (1985) 5 IPR 315 …. 6.33 ITW AFC Ltd v Loi and Tran Pty Ltd (2008) 76 IPR 129 …. 12.53, 14.20

J J Bollinger v Costa Brava Wine Co Ltd [1960] Ch 263 …. 16.14, 16.21, 16.41 — v — (No 2) [1961] 1 All ER 561 …. 16.14, 21.65 Jackson v Royal Bank of Scotland plc [2005] 1 WLR 377 …. 4.29 Jafferjee v Scarlett (1937) 57 CLR 115 …. 19.84 Janssen Pharmaceutical Pty Ltd v Pfizer Pty Ltd (1986) 6 IPR 227 …. 16.34 Jardim v Metcash Ltd (2011) 285 ALR 677 …. 4.36 Jarman & Platt Ltd v Barget Ltd [1977] FSR 260 …. 4.16 Jaybeam Ltd v Abru Aluminium Ltd [1975] FSR 334 …. 2.2 JC Techforce Pty Ltd v Pearce (1996) 35 IPR 196 …. 2.9 Jellinek’s Application (1946) 63 RPC 59 …. 19.84 Jemella Australia Pty Ltd v Internet Marketing Pty Ltd (2008) 75 IPR 59 …. 2.9 Jenning v Stephens [1936] Ch 169 …. 8.20 JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68 …. 13.2, 14.34

John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 …. 19.79 John Engelander & Co Pty Ltd v Ideal Toy Corp [1981] ATPR 40-218 …. 16.7 John Fairfax & Sons Ltd, Re [1980] ATPR 50-041 …. 22.99 John Fairfax & Sons Ltd v Australian Consolidated Press Ltd (1959) 60 SR (NSW) 413 …. 8.14 — v Cojuangco (1988) 165 CLR 346 …. 4.22 — v Deputy Commissioner of Taxation (1988) 15 NSWLR 620 …. 8.40 John Walker & Sons v Henry Ost & Co Ltd [1970] RPC 489 …. 16.14 Johns v Australian Securities Commission (1993) 178 CLR 408 …. 3.5, 4.6, 4.7, 4.10, 4.12, 4.14, 4.22, 4.29, 4.40 Johnson & Associates Ltd v Bucko Enterprises Ltd [1975] 1 NZLR 311 …. 6.32 Johnson & Johnson v Kalnin (1993) 26 IPR 435 …. 19.77 Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 21 IPR 1 …. 20.9 Johnson & Johnson Pty Ltd’s Application (1962) 32 AOJP 1214 …. 19.7 Johnson and Johnson Consumer Companies Inc, Re Application by (2000) 48 IPR 673 …. 10.8 Johnson Matthey (Aust) Ltd v Dascorp Pty Ltd (2003) 9 VR 171 …. 2.7 Joint Coal Board v Cameron (1989) 90 ALR 208 …. 4.12 Jones v University of Canberra (2016) 311 FLR 1 …. 4.34 Joos v Commissioner of Patents (1972) 126 CLR 611 …. 12.16 Joseph Szuec’s Application, Re [1956] RPC 25 …. 12.5 Joy Music Ltd v Sunday Pictorial Newspapers (1920) Ltd [1960] 2 QB 60 …. 6.31, 8.42 JP Morgan Chase Bank, NA v Datatreasury Corp (2016) 823 F 3d 1006 …. 22.91 JR Consulting & Drafting Pty Ltd v Cummings (2016) 116 IPR 440 …. 2.6, 6.35, 6.38, 6.39, 8.11

JT International SA v Commonwealth (2012) 97 IPR 321 …. 1.7, 19.1, 19.23, 20.2, 20.24 Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86 …. 12.39, 14.17, 14.21 Just Group Ltd v Peck [2016] VSCA 334 …. 4.36

K Kabushiki Kaisha Sony Computer Entertainment v Stevens (2002) 55 IPR 497 …. 8.11 — v — (2003) 57 IPR 161 …. 8.3 Kafataris v Davis (2014) 109 IPR 29 …. 13.2 — v — (2016) 120 IPR 206 …. 4.5, 13.2 Kailash Center for Personal Development Inc v Yoga Magik Pty Ltd [2003] FCA 536 …. 18.24 Kalaba v Commonwealth [2004] FCAFC 326 …. 3.11 Kalamazoo (Australia) Pty Ltd v Compact Business Systems Pty Ltd (1985) 5 IPR 213 …. 6.4, 6.34 Kalman v PCL Packaging (UK) Ltd [1982] FSR 406 …. 14.6 Kamminga and Australian National University, Re (1992) 26 ALD 585 …. 4.38 Kaufman v McGillicuddy (1914) 19 CLR 1 …. 4.36 Kauzal v Lee (1936) 58 CLR 670 …. 12.65 Kaye v Robertson [1991] FSR 62 …. 16.25, 16.28 Kean v McGiven [1982] FSR 119 …. 16.6 Keene, Re [1922] 2 Ch 475 …. 3.12 Keith Harris & Co Ltd v Bryant (1980) 30 ALR 663 …. 18.6 Keller v LED Technologies Pty Ltd (2010) 185 FCR 449 …. 10.9, 10.26, 20.20 Kelvin & Hughes Ltd’s Application, Re (1954) 71 RPC 103 …. 12.8 Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 56 IPR 30 …. 19.11, 19.26, 19.55, 19.61, 19.68, 19.69 Kenrick & Co Ltd v Lawrence & Co (1890) 25 QBD 99 …. 6.4, 8.14 Kestos Ltd v Kempat Ltd (1935) 53 RPC 139 …. 10.16

Kevlacat Pty Ltd v Trailcraft Marine Pty Ltd (1987) 11 IPR 77 …. 10.31 Kewanee Oil Co v Bicron Corp (1974) 416 US 470 …. 3.10 Khawam & Co v Chellaram & Sons (Nigeria) Ltd [1964] RPC 337 …. 10.28 Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 …. 12.63, 14.17 — v Multigate Medical Products Pty Ltd (2010) 89 IPR 330 …. 14.21 — v — (2011) 92 IPR 21 …. 14.17, 14.21 Kimberly-Clark Ltd v Commissioner of Patents (1988) 83 ALR 714 …. 2.25 Kimberly-Clark Worldwide, Inc v Goulimis (2008) 78 IPR 612 …. 19.92 Kimble v Marvel Entertainment LLC (2015) 135 S Ct 2401 …. 22.30 Kinabalu Investments Pty Ltd v Barron and Rawson Pty Ltd [2008] FCAFC 178 …. 14.17 King Features Syndicate Inc v O & M Kleeman Ltd [1941] AC 417 …. 8.14, 10.16 King Par, LLC v Brosnan Golf Pty Ltd (2014) 106 IPR 457 …. 19.32 King v Milpurrurru (1996) 34 IPR 11 …. 2.7, 8.28, 8.63 Kirin-Amgen Inc v Board of Regents of University of Washington (1995) 33 IPR 557 …. 12.6, 12.30 — v Hoechst Marion Roussel Ltd (2004) 64 IPR 444 …. 14.20 Kliniche Versuche I [1997] RPC 623 …. 14.4 Kliniche Versuche II [1998] RPC 423 …. 14.4 Klissers Bakeries v Harvest Bakeries (1985) 5 IPR 533 …. 8.10 Knight v Beyond Properties Pty Ltd (2007) 74 IPR 232 …. 18.2, 18.10 Knott Investments Pty Ltd v Winnebago Industries Inc [2016] ATMO 15 …. 16.20 — v — (2013) 101 IPR 449 …. 2.13, 16.9, 16.19, 17.13 — v — (No 2) (2013) 103 IPR 395 …. 2.16, 16.20 Komesaroff v Mickle (1986) 7 IPR 295 …. 6.23, 16.7, 17.8 Koninklijke Philips Electronics NV v Remington Products Australia Pty

Ltd (2000) 48 IPR 257 …. 1.26, 10.1, 17.2, 17.9, 18.4, 18.17, 19.11, 19.26, 19.69, 20.8, 20.10 Koowarta v Bjelke-Petersen (1982) 153 CLR 168 …. 1.6 Koppamurra Wines Pty Ltd v Mildara Blass Ltd (1998) 41 IPR 154 …. 16.8 Kosciuszko Thredbo Pty Ltd v ThredboNet Marketing Pty Ltd (2014) 223 FCR 517 …. 18.24 Kovan Engineering (Aust) Pty Ltd v Gold Peg International Pty Ltd (2006) 70 IPR 1 …. 18.2 Kromschroders AG’s Patent [1960] RPC 75 …. 12.42, 12.73 Krueger Transport Equipment Pty Ltd v Glen Cameron Storage & Distribution Pty Ltd (2008) 78 IPR 262 …. 3.9 K-Swiss Inc v Federation of the Swiss Watch Industry FH (2009) 83 IPR 635 …. 19.85 Kuntstreetwear Pty Ltd’s Trade Mark Application (2007) 73 IPR 438 …. 19.90 Ku-ring-gai Co-operative Building Society Ltd, Re (1978) 36 FLR 134 …. 16.30 Kwan v Queensland Corrective Services Commission (1994) 31 IPR 25 …. 13.11

L L B (Plastics) Ltd v Swish Products Ltd [1979] RPC 551 …. 6.32, 8.19 Labelmakers Group Pty Ltd v LL Force Pty Ltd (No 2) [2012] FCA 512 …. 4.27 — v — (No 3) [2013] FCA 1059 …. 2.16 LAC Minerals Ltd v International Corona Resources Ltd (1989) 61 DLR (4th) 14 …. 4.32 Landa v Greenberg (1908) 24 TLR 441 …. 16.7 Lane-Fox v Kensington & Knightsbridge Electric Lighting Co (1892) 9 RPC 413 …. 12.6, 12.7 Lansing Linde Ltd v Kerr [1991] 1 WLR 251 …. 3.2, 4.35 Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd (2009) 81 IPR 584 …. 7.12, 8.14

— v — (2010) 83 IPR 582 …. 8.14 Latham v Singleton [1981] 2 NSWLR 843 …. 2.7 Law v Razer Industries Pty Ltd (2010) 190 FCR 166 …. 14.25 Le v R (2007) 74 IPR 1 …. 8.67 Leah v Two Worlds Publishing Co Ltd [1951] Ch 353 …. 7.6 Leather Cloth Co v American Leather Cloth Co (1865) 11 HLC 523 …. 16.12 — v Lorsont (1869) LR 9 Eq 345 …. 13.7 LED Builders Pty Ltd v Eagle Homes Pty Ltd (1996) 35 IPR 215 …. 8.17 — v — (1999) 44 IPR 24 …. 2.17 — v — (1999) 46 IPR 375 …. 2.17 — v Masterton Homes (NSW) Pty Ltd (1994) 30 IPR 447 …. 6.32, 8.60 LED Technologies v Elecspess (2008) 80 IPR 85 …. 10.9, 10.26 LED Technologies Pty Ltd v Roadvision Pty Ltd (2012) 94 IPR 481 …. 2.7 Lee Man Tat and Lee Man Lok, Re Applications by (1988) 12 IPR 212 …. 19.61, 19.66 Lego Australia Pty Ltd v Paul’s (Merchants) Pty Ltd (1982) 42 ALR 344 …. 18.6 Lego System v Lego M Lemelstrich Ltd [1983] FSR 155 …. 16.18, 17.18 Leonardis v Sartas No 1 Pty Ltd (1996) 35 IPR 23 …. 12.53, 12.54, 12.67, 12.70, 14.21 — v Theta Developments Pty Ltd (2001) 51 IPR 546 …. 14.12 Leplastrier & Co Ltd v Armstrong Holland Ltd (1926) 26 SR (NSW) 585 …. 2.16 Les Laboratoires Serviier v Apotex Pty Ltd (2016) 117 IPR 415 …. 12.63 Lewis Trusts v Bamber Stores Ltd [1983] FSR 453 …. 8.62 LGS (NSW) Pty Ltd v Barbagallo (2012) 99 IPR 238 …. 4.35 Li v Leng (2013) 105 IPR 418 …. 6.3

Liardet v Johnson (1778) 1 WPC 53; 62 ER 1000 …. 11.4 Liberty Financial Pty Ltd v Scott (No 4) (2005) 11 VR 629 …. 4.35 Life Savers (Australia) Ltd’s Application (1952) 22 AOJP 3106 …. 19.68 Lifeplan Australia Friendly Society Ltd v Ancient Order of Foresters in Victoria Friendly Society Ltd [2017] FCAFC 74 …. 4.14, 4.16, 4.28 — v Woff (2016) 259 IR 384 …. 3.9, 4.34 LIFFE Administration and Management v Pinkava [2007] ICR 1489 …. 13.11, 13.13 Lindner v Murdock’s Garage (1950) 83 CLR 628 …. 4.36 Linoleum Co v Nairn (1878) 7 Ch D 834 …. 17.3 Lion Laboratories Ltd v Evans [1984] 2 All ER 417 …. 4.19, 4.20, 4.23 Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd (2009) 79 IPR 437 …. 19.100 Liverpool Electric Cable Co’s Application (1929) 46 RPC 99 …. 19.65 Lock International plc v Beswick (1989) 16 IPR 497 …. 2.9 Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2003) 56 IPR 479 …. 12.70 — v — (2004) 217 CLR 274 …. 12.2, 12.62, 12.63, 12.67, 12.68, 12.70 — v — (No 2) (2007) 235 CLR 173 …. 12.21, 12.48, 12.49, 12.50, 12.53, 12.54 Lodestar Anstalt v Campari America LLC (2016) 244 FCR 557 …. 20.29 Lomas v Winton Shire Council [2002] FCAFC 413 …. 19.32, 19.43 Lone Star Steakhouse & Saloon Inc v Zurcas (2000) 48 IPR 325 …. 2.12 Long v Specifier Publications Pty Ltd (1998) 44 NSWLR 545 …. 2.9 Longworth v Emerton (1951) 83 CLR 539 …. 12.39 Lonrho plc v Fayed [1992] 1 AC 448 …. 2.7 Lonsdale Australia Ltd v Paul’s Retail Pty Ltd [2012] FCA 584 …. 20.16 Lorenzo & Sons Pty Ltd v Roland Corp (1992) 23 IPR 377 …. 8.32

Louis Vuitton Malletier SA v D & L Design Pty Ltd (2003) 60 IPR 27 …. 16.20 — v Toea Pty Ltd (2006) 70 IPR 307 …. 2.6, 20.20 Lovatt v Consolidated Magazines Pty Ltd (1988) 12 IPR 261 …. 16.7 Lucasfilm Ltd v Ainsworth [2009] EWCA Civ 1328 …. 6.24 — v — (2011) 92 IPR 647 …. 6.24 Luminis Pty Ltd, Application by (2004) 62 IPR 420 …. 12.28 Lumley Life Ltd v IOOF of Victoria Friendly Society (1989) 16 IPR 316 …. 17.3 LY v R (2014) 110 IPR 1 …. 8.67 Lynson Australia Pty Ltd’s Application, Re (1987) 9 IPR 350 …. 19.37 Lyons v Registrar of Trade Marks (1983) 1 IPR 416 …. 2.26

M Mackay Airport Pty Ltd, Re (2013) 101 IPR 594 …. 19.62 Macmillan & Co v Cooper (1923) 40 TLR 186 …. 6.33 Macquarie Bank Ltd v Seagle (2005) 67 IPR 7 …. 18.24 — v — (2008) 79 IPR 72 …. 18.24 Madafferi v The Age [2015] VSC 687 …. 4.22 Madey v Duke University (2002) 307 F 3d 1351 …. 14.4 Maeder v Busch (1938) 59 CLR 684 …. 12.16 Maggbury Pty Ltd v Hafele Australia Pty Ltd (2001) 210 CLR 181 …. 1.34, 3.3, 4.4, 4.7, 4.8, 4.25 Magnolia Metal Co’s Trade Mark [1892] 2 Ch 371 …. 19.65 Major Bros v Franklin & Son [1908] RPC 406 …. 19.29 Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR 120 …. 10.16, 10.21 Malone v Commissioner of Police of the Metropolis (No 2) [1979] 2 All ER 620 …. 4.11, 4.20 Manganin Trade Mark [1967] RPC 271 …. 19.63 Mangraviti v Vardi (1976) 12 ALR 355 …. 10.16 Mangrovite Belting Ltd v J C Ludowici & Son Ltd (1938) 61 CLR 149 …. 19.58

Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 86 IPR 19 …. 2.19, 18.24, 18.26, 18.28, 19.94, 20.12, 20.19 Mantra IP Pty Ltd v Spagnuolo (2012) 96 IPR 464 …. 19.55, 19.59, 19.92 Marc A Hammond Pty Ltd v Papa Carmine Pty Ltd (1977) 28 FLR 160 …. 19.16 Marcel v Commissioner of Police of the Metropolis [1991] 1 All ER 845 …. 4.12 Mar-Con Corp Pty Ltd v Campbell Capital Ltd (1989) 16 IPR 153 …. 3.9, 4.9 Marconi v British Radio Telegraph & Telephone Co (1911) 28 RPC 181 …. 14.18 Marine Engineering and Generator Services Pty Ltd v Queensland (1997) 38 IPR 422 …. 7.25 Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190 …. 19.30, 19.62, 20.6 Mark Foy’s Pty Ltd v TVSN (Pacific) Ltd (2000) 49 IPR 303 …. 16.20, 16.26, 16.35, 16.40, 17.16, 18.24 Mark Lyons Pty Ltd v Bursill Sportsgear Pty Ltd (1987) 75 ALR 58 …. 22.93 Markman v Westview Instruments Inc (1996) 517 US 370 …. 14.30 Marks v GIO Australia Holdings Ltd (1998) 196 CLR 494 …. 16.34 Markwell Bros Pty Ltd v CPN Diesels Queensland Pty Ltd [1983] 2 Qd R 508 …. 3.12 Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 84 IPR 12 …. 17.9, 19.77 Mars UK Ltd v Teknowledge Ltd (1999) 46 IPR 248 …. 4.6 Martin v Scribal Pty Ltd (1954) 92 CLR 17 …. 12.57, 12.65 Martin Engineering Co v Trison Holdings Pty Ltd (1988) 11 IPR 611 …. 14.33 — v — (1989) 14 IPR 330 …. 12.45, 12.53, 12.57 Marzocchi, Re (1971) 439 F 2d 220 …. 12.58 Massey v Noack (1988) 11 IPR 632 …. 12.72 Mattel Inc v 3894207 Canada Inc [2006] 1 SCR 772 …. 19.2

Matthews v ACP Publishing Pty Ltd (1998) 41 IPR 535 …. 7.6 Maxam Food Products Pty Ltd, Re Applications by (1991) 20 IPR 381 …. 19.61 May v Higgins (1916) 21 CLR 119 …. 12.45 Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 75 IPR 102 …. 19.26, 19.64, 19.69, 19.97, 20.10 Mayo Collaborative Services v Prometheus Laboratories Inc (2012) 132 S Ct 1289 …. 12.6, 12.12, 12.13, 12.14 McCain International Ltd v Country Fair Foods Ltd [1981] RPC 69 …. 17.3 McCormick & Co Inc v McCormick (2000) 51 IPR 102 …. 19.79, 19.81, 19.86 McCorquodale v Masterson (2004) 63 IPR 582 …. 19.85 McCulloch v Lewis A May (Produce Distributors) Ltd (1947) 65 RPC 58 …. 17.18 McDonald v Graham [1994] RPC 407 …. 14.9 McDonalds Corp, Re Applications by (1986) 9 IPR 509 …. 19.87 McDonald’s System of Australia Pty Ltd v McWilliam’s Wines Pty Ltd (1979) 41 FLR 429 …. 18.7 McGruther v Pitcher [1904] 2 Ch 306 …. 13.24 McGuinness v Attorney-General (Vic) (1940) 63 CLR 73 …. 4.22 McHattan v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 517 …. 19.101 McIlhenny Co v Blue Yonder Holdings Pty Ltd (1997) 39 IPR 187 …. 17.19 McKernan v Fraser (1931) 46 CLR 343 …. 2.7 McLachlan Consultants Pty Ltd v Boswell (1988) 30 IR 417 …. 4.25, 4.36 McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd (1980) 33 ALR 394 …. 18.8, 18.16, 18.17 MDI International Pty Ltd v Trio Bros Trading Pty Ltd [2010] FCA 486 …. 17.19 Mechanical and General Inventions Co Ltd v Austin [1935] AC 346 …. 3.7

Mechanical Services (Trailer Engineers) Ltd v Avon Rubber Co Ltd [1977] RPC 66 …. 14.34 Mediaquest Communications LLC v Registrar of Trade Marks (2012) 96 IPR 453 …. 20.26 Medical Practitioners Board of Victoria v Sifredi [2000] VSC 33 …. 4.38 Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd (2004) 63 IPR 38 …. 19.32, 20.4 Melbourne v Terry Fluids Control Pty Ltd (1993) 26 IPR 292 …. 12.59 Melhero Pty Ltd v Club X Pty Ltd (1997) 37 IPR 151 …. 19.96 Melway Publishing Pty Ltd v Robert Hicks Pty Ltd (2001) 205 CLR 1 …. 22.93 Memcor Australia Pty Ltd v GE BetzDearborn Canada [2010] APO 18 …. 12.65 — v — [2010] APO 19 …. 12.65 Mense v Milenkovic [1973] VR 784 …. 4.6 Mentmore Manufacturing Co Ltd v National Merchandising Manufacturing Co Inc (1978) 89 DLR (3d) 195 …. 14.14 Merchandising Corp of America Inc v Harpbond Ltd [1983] FSR 32 …. 6.23 Merck & Co Inc v Arrow Pharmaceuticals Ltd (2003) 59 IPR 226 …. 11.56 — v — (2006) 68 IPR 511 …. 12.39 — v Sankyo Co Ltd (1992) 23 IPR 415 …. 11.43 Merck Sharpe & Dohme Corp v Apotex Pty Ltd (2012) 97 IPR 414 …. 14.33 Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd [1996] RPC 76 …. 12.39, 14.7 Merv Brown Pty Ltd v David Jones (Australia) Pty Ltd (1987) 9 IPR 321 …. 17.12 Meskenas v ACP Publishing Pty Ltd (2006) 70 IPR 172 …. 9.2, 9.5 Meso Scale Diagnostics LLC v Roche Diagnostics GmbH (2015) 136 S Ct 524 …. 22.3, 22.24 Messager v BBC [1929] AC 151 …. 7.15

Meth v Norbert Steinhard & Son Ltd (1962) 107 CLR 187 …. 14.34 Metrans Pty Ltd v Courtney-Smith (1983) 1 IPR 185 …. 4.35 Metricon Homes Pty Ltd v Barrett Property Group Pty Ltd (2008) 75 IPR 455 …. 8.15 Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 …. 12.37, 12.39, 12.53 Michael Sharwood & Partners Pty Ltd v Fuddruckers Inc (1989) 15 IPR 188 …. 19.31, 19.34, 19.61 Micro-chemicals v Smith Kline and French Inter-American (1971) 25 DLR 79 …. 14.4 Microsoft Corp v Auschina Polaris Pty Ltd (1996) 36 IPR 225 …. 2.7 — v Goodview Electronics Pty Ltd (1999) 46 IPR 159 …. 2.9 — v — (2000) 49 IPR 578 …. 1.21, 2.7 — v Marks (1995) 33 IPR 15 …. 8.28 Microsoft Corp, Re [2008] ADO 2 …. 10.16 Microsoft Corp v Auschina Polaris Pty Ltd (1996) 36 IPR 225 …. 14.14 MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561 …. 19.65, 19.79, 20.4 Mid-City Skin Cancer & Laser Centre v Zahedi-Anarak (2006) 67 NSWLR 569 …. 3.12, 4.2, 4.3, 22.28 Milcap Publishing Group AB v Coranto Corp Pty Ltd (1995) 32 IPR 34 …. 2.9 Mildura Fruit Juices Pty Ltd v Bannerman (1983) 1 IPR 56 …. 16.35 Miles v Genesys Wealth Advisers Ltd [2009] NSWCA 25 …. 4.36 Millenium & Copthorne International Ltd v Kingsgate Hotel Group Pty Ltd (2012) 97 IPR 183 …. 19.81 Miller v Britt Allcroft (Thomas) LLC (2000) 52 IPR 419 …. 16.24, 17.9, 17.19, 18.17 — v JLCS Pty Ltd (2007) 71 IPR 499 …. 19.32, 20.21 Millington v Fox (1838) 3 My & Cr 338; 40 ER 956 …. 16.1 Milpurrurru v Indofurn Pty Ltd (1994) 30 IPR 209 …. 1.25, 2.15, 8.61, 8.62, 8.63, 21.12 Milwell Pty Ltd v Olympic Amusements Pty Ltd (1999) 85 FCR 436 ….

6.13, 7.7, 8.61 Mining Equipment (MinQuip) Pty Ltd v Mining Supplies Australia Pty Ltd (1999) 45 IPR 566 …. 13.2 Minister for Immigration and Citizenship v Kumar (2009) 238 CLR 448 …. 4.18, 4.38, 4.39 Minister for Mineral Resources v Newcastle Newspapers Pty Ltd (1997) 40 IPR 403 …. 3.12, 4.11, 4.40 Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 …. 12.19, 12.38, 12.45, 12.48, 12.50, 12.51, 12.52, 12.53, 12.63 — v Tyco Electronics Pty Ltd (2001) 53 IPR 32 …. 12.62, 14.17 Minter v Williams (1835) 4 Ad & E 251; 111 ER 781 …. 14.6 Missingham v Shamin [2012] NSWSC 288 …. 4.6 MJA Scientifics International Pty Ltd v S C Johnson & Son Pty Ltd (1998) 43 IPR 287 …. 12.37 M’Lean v Kettle (1883) 9 VLR (E) 145 …. 14.33 Mobil Oil Corp, Re Applications by (1995) 32 IPR 535 …. 19.104 Mobil Oil Corp v Registrar of Trade Marks (1983) 51 ALR 735 …. 18.7, 19.61 Mobil Oil Australia Ltd v Guina Developments Pty Ltd (1995) 33 IPR 82 …. 4.22 Modena Trading Pty Ltd v Cantarella Bros Pty Ltd (2013) 102 IPR 382 …. 19.55, 20.9 Mond Nickel Co Ltd’s Application, Re (1956) RPC 189 …. 12.67 Monsanto v Stauffer Chemical [1985] RPC 515 …. 14.4 Monsanto Canada Inc v Schmeiser [2004] 1 SCR 902 …. 14.7 Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd (2008) 79 IPR 252 …. 12.44 Montana Tyres Rims & Tubes Pty Ltd v Transport Tyre Sales Pty Ltd (1998) 41 IPR 301 …. 19.29, 19.85, 20.15 Monte v Fairfax Media Publications Pty Ltd [2015] FCCA 1633 …. 9.8 Moore Paragon Australia Ltd v Multiform Printers Pty Ltd (1984) 3 IPR 270 …. 12.7

Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 …. 1.45, 3.12, 4.3, 4.13, 16.12, 16.21, 19.34 Morellini v Mizzi Family Holdings Pty Ltd (2016) 116 IPR 411 …. 14.34 Morgan & Banks Pty Ltd v Select Personnel Pty Ltd (1991) 20 IPR 289 …. 17.1, 18.11 Morison v Moat (1851) 9 Hare 241; 68 ER 492 …. 3.12 Morton-Norwich Products Inc v Intercen Ltd [1978] RPC 501 …. 14.6, 14.11 Moseley v Secret Catalogue, Inc (2003) 537 US 418 …. 20.5 Motorcharge Pty Ltd v Motorcard Pty Ltd [1982] ATPR 40-302 …. 17.11 Mueller Brass Co v Reading Industries (1972) 176 USPQ 361 …. 13.2 Multigate Medical Devices Pty Ltd v B Braun Melsungen AG (2016) 117 IPR 1 …. 12.67 Multigroup Distribution Services Pty Ltd v TNT Australia Pty Ltd (2001) 191 ALR 402 …. 16.34 Multisteps Pty Ltd v Source & Sell Pty Ltd (2013) 214 FCR 323 …. 10.18, 10.22, 10.26 Murex Diagnostics Australia Pty Ltd v Chiron Corp (1995) 30 IPR 277 …. 14.11 Murphy v Lush (1986) 60 ALJR 523 …. 2.11 — v Overton Investments Pty Ltd (2004) 216 CLR 388 …. 16.34 Murray v King (1984) 4 FCR 1 …. 7.7, 7.12 — v Yorkshire Fund Managers Ltd [1998] 1 WLR 951 …. 4.1 Muscat v Le (2003) 60 IPR 276 …. 8.16 Musidor BV v Tansing (1994) 29 IPR 203 …. 20.9 Mutation/UNIVERSITY OF UTAH (2008) T 0666/05 (EPO Boards of Appeal) …. 12.30 My Kinda Bones Ltd v Dr Pepper’s Stove Co Ltd [1984] FSR 289 …. 17.15

N

N P Generations Pty Ltd v Feneley (2001) 80 SASR 151 …. 4.34 N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513 …. 11.9 — v — (1995) 183 CLR 655 …. 12.2, 12.3, 12.19, 12.20, 12.21 N V Philips Gloeilampenfabrieken Application, Re (1954) 71 RPC 192 …. 12.5 Nasr v Vihervaara (2005) 91 SASR 222 …. 4.3 National Broach & Machine Co v Churchill Gear Machines Ltd [1965] RPC 61 …. 4.24 National Education Advancement Programs (NEAP) Pty Ltd v Ashton (1995) 33 IPR 281 …. 4.14 National Phonograph Co of Australia Ltd v Menck (1911) 12 CLR 15 …. 13.2, 14.6, 14.8 National Research Development Corp v Commissioner of Patents (1959) 102 CLR 252 …. 11.16, 12.3, 12.4, 12.5, 12.6, 12.8, 12.9, 12.10, 12.11, 12.16, 12.19, 12.30, 12.53, 15.30 National Rugby League Investments Pty Ltd v Singtel Optus Pty Ltd (2012) 95 IPR 321 …. 8.50 Nationwide Building Society v Nationwide Estate Agents Ltd (1987) 8 IPR 609 …. 16.19 Nationwide News Pty Ltd v Copyright Agency Ltd (1996) 34 IPR 53 …. 6.51, 8.23, 8.28 Nature’s Blend Pty Ltd v Nestle Australia Ltd (2010) 87 IPR 464 …. 20.8 Neilson v Betts (1871) LR 5 HL 1 …. 2.16 — v Minister of Public Works (NSW) (1914) 18 CLR 423 …. 12.7 Nelson’s Application [1980] RPC 173 …. 12.7 Neobev Pty Ltd v Bacchus Distillery Pty Ltd (No 3) (2014) 104 IPR 249 …. 3.12, 13.2, 22.28 Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 …. 14.17 Nestec SA v Duralit Ltd [2013] RPC 841 …. 14.5 Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (2004) 218 CLR 273 …. 6.49, 8.24

Neumann v Sons of the Desert SL [2008] FCA 1183 …. 19.32, 19.91 Neurizon Pty Ltd v LTH Consulting and Marketing Services Pty Ltd (2002) 58 IPR 93 …. 12.9 New England Biolabs Inc v Commissioner of Patents (2001) 52 IPR 1 …. 11.43 — v — (2004) 60 IPR 83 …. 11.43 — v F Hoffmann-La Roche AG (2004) 62 IPR 510 …. 11.43 New Era Publications International ApS v Henry Holt & Co Inc (1989) 873 F 2d 576 …. 8.40 New Look Ltd v Payless Shoes Pty Ltd (2011) 91 IPR 651 …. 19.91 New South Wales v Commonwealth (2006) 229 CLR 1 …. 1.5 New South Wales Dairy Corp v Murray Goulburn Co-operative Co Ltd (1989) 14 IPR 26 …. 19.20, 19.54 — v — (1990) 171 CLR 363 …. 19.99 New York Yacht Club, Re Application by (1987) 9 IPR 102 …. 19.29 New Zealand Natural Pty Ltd v Granny’s Natural New Zealand Ice Cream Pty Ltd (1990) 19 IPR 214 …. 18.13 Newall v Eliott (1858) 10 Jur (NS) 954 …. 14.33 News Ltd v South Sydney District Rugby League Football Club Ltd (2003) 215 CLR 563 …. 22.93 Newton-John v Scholl-Plough (Australia) Ltd [1986] ATPR 40-697 …. 16.25 Nexus Adhesives Pty Ltd v RLA Polymers Pty Ltd (2012) 97 IPR 160 …. 4.28, 4.35 Ng v Clyde Securities Ltd [1976] 1 NSWLR 443 …. 7.17 Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545 …. 12.37, 12.38, 12.39, 14.20 Nicholas v Borg (1986) 7 IPR 1 …. 16.16 Nichrotherm Electrical Co Ltd v Percy [1956] RPC 272 …. 4.24 Nine Films and Television Pty Ltd v Ninox Television Ltd (2005) 67 IPR 46 …. 2.2 Nine Network Australia Pty Ltd v Australian Broadcasting Corp (1999) 48 IPR 333 …. 6.7, 6.20, 8.40

— v IceTV Pty Ltd (2007) 73 IPR 99 …. 8.12 Nintendo Co Ltd v Centronics Systems Pty Ltd (1991) 23 IPR 119 …. 9.24 — v — (1994) 181 CLR 134 …. 1.5, 1.6, 1.7, 9.23 Nippon Steel Corp v BHP Steel (JLA) Pty Ltd [1999] APO 69 …. 12.51 — v — [1999] APO 70 …. 12.51 Nissan Motor Co v Nissan Computer Corp (2004) 378 F 3d 1002 …. 20.11 Nixon v Slater & Gordon (2000) 175 ALR 15 …. 16.28 Noah v Shuba [1991] FSR 14 …. 7.4 Noakes v Meharey (1915) 32 RPC 307 …. 14.7 Nobels Explosives Co Ltd v Jones, Scott & Co (1881) 17 Ch D 721 …. 14.6 — v — (1882) 8 App Cas 5 …. 14.6 No-Fume Ltd v Frank Pitchford & Co Ltd (1935) RPC 231 …. 14.6 Nokia Corp v Liu (2009) 82 IPR 452 …. 20.20 — v Mai (2003) 59 IPR 413 …. 20.19 Nomad Structures International Ltd v Heyring Pty Ltd (1992) 24 IPR 185 …. 12.38 Nominet UK v Diverse Internet Pty Ltd (No 2) (2005) 68 IPR 131 …. 8.61 Norbert Steinhardt & Son Ltd v Meth (1961) 105 CLR 440 …. 14.34, 21.1 Norman South Pty Ltd v da Silva [2012] VSC 477 …. 4.9 Northern Territory v Collins (2008) 235 CLR 619 …. 14.11, 14.12, 14.13 Norwich Pharmaceutical v Commissioners of Customs & Excise [1974] AC 133 …. 14.6 Novartis AG v Hospira Pty Ltd (2012) 98 IPR 185 …. 14.13, 14.33 Novozymes A/S v Danisco A/S (2013) 99 IPR 417 …. 12.19, 12.41 NRMA v Geeson (2001) 40 ACSR 1 …. 4.12, 4.19 NutraSweet Australia Pty Ltd v Ajinomoto Co Inc (2005) 67 IPR 381 …. 12.49

Nutrientwater Pty Ltd v Baco Pty Ltd (2010) 84 IPR 452 …. 16.11

O O Mustad & Son v S Allcock & Co Ltd (1928) [1963] 3 All ER 416 …. 4.7, 4.12 OBG Ltd v Allan [2008] 1 AC 1 …. 2.7, 4.11, 4.16, 7.9 O’Brien v Komesaroff (1982) 150 CLR 310 …. 3.8, 4.6, 7.7, 7.13 O’Farrell, Re (1988) 853 F 2d 894 …. 12.54 O’Reilly v State Bank of Victoria Commissioners (1982) 153 CLR 1 …. 4.22 O’Sullivan v Management Agency & Music Ltd [1984] 3 WLR 448 …. 7.19 Occupational and Medical Innovations Ltd v Retractable Technologies Inc (2007) 73 IPR 312 …. 14.34 — v — (2008) 77 IPR 570 …. 14.29, 14.34 Ocean Pacific Sunwear Ltd v Ocean Pacific Enterprises Pty Ltd (1990) 17 IPR 405 …. 16.8, 16.20 Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 …. 19.57, 19.62, 19.63 Office Cleaning Services Ltd v Westminster Window & General Cleaners Ltd (1946) 63 RPC 39 …. 17.4 Ogawa v Spender (2006) 68 IPR 503 …. 8.42 Old Digger Pty Ltd v Azuko Pty Ltd (2000) 51 IPR 43 …. 12.59, 12.60 — v Pasdonnay Pty Ltd (2003) 57 IPR 502 …. 2.23 Olin Corp v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 …. 14.21 Olin Mathieson Chemical Corp v Biorex Laboratories Ltd [1970] RPC 157 …. 12.49, 12.54 Open Universities Australia Pty Ltd v 1IQ Pty Ltd (2012) 99 IPR 334 …. 19.91 Optical 88 Ltd v Optical 88 Pty Ltd (2011) 93 IPR 202 …. 19.102, 20.19 — v — (No 2) (2010) 89 IPR 457 …. 18.7 Optus Networks Pty Ltd v Telstra Corp Ltd (2010) 265 ALR 281 ….

4.3, 4.28 Orion IP LLC v Mercedes Benz USA LLC (Civil No 607-451, ED Tex, May 2008) …. 22.22 Ormonoid Roofing & Asphalts Ltd v Bitumenoids Ltd (1930) 31 SR (NSW) 347 …. 3.7, 4.14, 4.27, 4.35 Orton v Melman [1981] 1 NSWLR 583 …. 4.36 Osgaig Pty Ltd v Ajisen (Melbourne) Pty Ltd (2004) 63 IPR 156 …. 16.34 Osram Lamp Works Ltd v Popes Electric Lamp Co Ltd (1917) 34 RPC 369 …. 12.49 Otsuka Pharmaceutical Co Ltd v Generic Health Pty Ltd (2012) 291 ALR 763 …. 14.32, 14.33 Otto v Linford (1862) 46 LT 35 …. 12.7 Oxford v Moss (1978) 68 Cr App R 183 …. 3.12 Oxford University Press v Registrar of Trade Marks (1990) 17 IPR 509 …. 19.65 Ozi-Soft Pty Ltd v Wong (1988) 10 IPR 520 …. 8.34

P P B Cow Ltd v Cannon Rubber Manufacturers Ltd [1961] RPC 236 …. 10.28 PAC Mining Pty Ltd v Esco Corp (2009) 80 IPR 1 …. 14.17 Pacific & Southern Company Inc v Duncan (1984) 744 F 2d 1490 …. 8.40 Pacific Dunlop Ltd v Hogan (1989) 14 IPR 398 …. 16.26, 16.27, 17.19, 18.17 Pacific Enterprises Aust Pty Ltd v Bernen Pty Ltd (2014) 109 IPR 481 …. 14.14 Pacific Film Laboratories Pty Ltd v Federal Commissioner of Taxation (1970) 121 CLR 154 …. 6.6 Pacific Gaming Pty Ltd v Aristocrat Leisure Industries Pty Ltd (2001) 116 FCR 448 …. 8.4 Painaway Australia Pty Ltd v JAKL Group Pty Ltd (2011) 91 IPR 298 …. 3.12, 20.30, 20.31, 22.28

Palmer Bruyn & Parker Pty Ltd v Parsons (2001) 208 CLR 388 …. 16.2 Panayiotou v Sony Music Entertainment (UK) Ltd [1994] EMLR 229 …. 7.19 Pancontinental Mining Ltd v Commissioner of Stamp Duties [1989] 1 Qd R 310 …. 3.12 Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323 …. 17.6 Parison Fabric Ltd’s Application (1949) 66 RPC 217 …. 19.58 Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 …. 16.32, 17.6, 17.7, 17.9, 18.2, 18.6, 18.10, 18.11, 18.14 Parker v Flook (1978) 437 US 584 …. 12.13 — v South East Railway Co (1877) 2 CPD 416 …. 13.24 Parker-Knoll Ltd v Knoll International Ltd [1962] RPC 265 …. 18.19 Parks-Cramer Co v G W Thornton & Sons Ltd [1966] RPC 407 …. 12.53 Parry-Jones v Law Society [1969] Ch 1 …. 4.3, 4.22 Patience & Nicholson (NZ) Ltd v Cyclone Hardware Pty Ltd [2002] FSR 656 …. 17.14 Patrick Stevedores Operations No 2 Pty Ltd v Maritime Union of Australia (1998) 195 CLR 1 …. 2.11 Paul’s Retail Pty Ltd v Lonsdale Australia Ltd (2012) 294 ALR 72 …. 20.17 — v — [2012] FCA 724 …. 20.16, 20.17 — v — (2012) 95 IPR 151 …. 20.16, 20.17 — v Sporte Leisure Pty Ltd [2012] HCA Trans 219 …. 20.16 Pavey & Matthews Pty Ltd v Paul (1987) 162 CLR 221 …. 3.12 PB Foods Ltd v Malanda Dairyfoods Ltd (1999) 47 IPR 47 …. 19.81 Pearce v Paul Kingston Pty Ltd (1992) 25 IPR 591 …. 14.33 Pearson v Morris Wilkinson & Co (1906) 23 RPC 738 …. 10.9 Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 33 IPR 161 …. 20.9

Perceptual Development Corp v Versi Pty Ltd (1987) 11 IPR 358 …. 18.16 Perez v Fernandez (2012) 260 FLR 1 …. 9.6 Performing Right Society Ltd v London Theatre of Varieties Ltd [1924] AC 1 …. 2.4 Perrett’s Application (1932) 49 RPC 406 …. 12.72 Pessers and Moody v Haydon & Co (1909) 26 RPC 58 …. 12.24 Peter Bodum A/S v DKSH Australia Pty Ltd (2011) 92 IPR 222 …. 16.4, 16.6, 16.11, 16.39, 17.1, 17.8, 17.9, 18.4 Peter Isaacson Publications Pty Ltd v Nationwide News Pty Ltd (1984) 56 ALR 595 …. 16.39, 17.4, 18.9 Peter Pan Manufacturing Corp v Corsets Silhouette Ltd [1963] 3 All ER 402 …. 2.16, 4.7, 4.8, 4.28 Peter Szabo and Associates Pty Ltd, Re (2005) 66 IPR 370 …. 12.3, 12.10 Peters (WA) Ltd v Petersville Ltd (2001) 205 CLR 126 …. 22.84 Petersville Sleigh Ltd v Sugarman (1987) 10 IPR 501 …. 17.19 Pfizer Corp v Commissioner of Patents (2006) 70 IPR 559 …. 11.56 — v Ministry of Health [1965] AC 512 …. 7.25, 14.5, 14.6 Pfizer Inc v Commissioner of Patents (2005) 64 IPR 547 …. 11.56 — v Commissioner of Patents (New Zealand) (2004) 60 IPR 624 …. 12.16 — v Commissioner of Patents (No 2) (2006) 69 IPR 525 …. 11.56 Pfizer Overseas Pharmaceuticals v Ely Lilly & Co (2005) 68 IPR 1 …. 11.43, 12.63, 12.73 — v — (2006) 68 IPR 1 …. 14.17 Pfizer Products Inc v Karam (2006) 70 IPR 599 …. 19.43, 19.79, 19.85, 19.86 PGA v R (2012) 245 CLR 355 …. 12.17 Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 …. 20.19 Pharmacia Italia Spa v Interpharma Pty Ltd (2005) 67 IPR 397 …. 13.22

Pharmacy Guild of Australia (Queensland Branch), Re (1983) 5 TPR 45 …. 22.99 Philip Morris Inc v Adam P Brown Male Fashions Pty Ltd (1981) 148 CLR 457 …. 2.24 Philippart v William Whiteley Ltd [1908] 2 Ch 274 …. 19.61 Philmac Pty Ltd v Registrar of Trade Marks (2002) 56 IPR 452 …. 19.63, 19.71 Phonographic Performance Co of Australia Ltd, Re [1991] ATPR 50105 …. 22.95 Phonographic Performance Co of Australia Ltd v Commercial Radio Australia Ltd (2013) 100 IPR 1 …. 6.49 — v Federation of Australian Commercial Television Stations (1998) 195 CLR 158 …. 6.47 Phonographic Performance Company of Australia v Commonwealth (2012) 246 CLR 561 …. 1.7, 7.21 Phonographic Performance Company of Australia Ltd, Re (2016) 117 IPR 540 …. 22.94 Photocrom Co Ltd v H & W Nelson Ltd [1923–28] MacG Cop Cas 293 …. 7.12 Photocure ASA v Queens University at Kingston (2005) 64 IPR 314 …. 14.20 Pianotist Co’s Application (1906) 23 RPC 774 …. 19.75 Pioneer Computers Australia Pty Ltd v Pioneer KK (2009) 80 IPR 38 …. 19.101 Pioneer Concrete Services Ltd v Galli [1985] VR 675 …. 4.36 Pioneer Electronics Australia Pty Ltd v Lee (2001) 51 IPR 291 …. 2.7, 8.32 Pioneer Electronics Capital Inc v Warner Music Manufacturing Europe GmbH [1997] RPC 757 …. 14.7 Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 …. 19.29, 20.13, 20.28, 20.30 Pitman Training Ltd v Nominet UK (1997) 38 IPR 341 …. 2.2 Pitman’s Application [1969] RPC 646 …. 12.7 PJS v News Group Newspapers [2016] AC 1081 …. 4.25

Playboy Enterprises International Inc v Hong (2004) 63 IPR 533 …. 20.13 Plimer v Roberts (1997) 39 IPR 257 …. 16.30 Plimpton v Malcolmson (1876) 3 Ch D 531 …. 12.39 Plix Products Ltd v Frank M Winstone (Merchants) Ltd (1984) 3 IPR 390 …. 6.1 Plomien Fuel Economiser Co Ltd v National School of Salesmanship Ltd (1943) 60 RPC 209 …. 16.13 Pocketful Of Tunes Pty Ltd v Commonwealth (2015) 112 IPR 346 …. 7.25 Polaroid Corp v Sole N Pty Ltd [1981] 1 NSWLR 49 …. 19.77 Politechnika Ipari Szovetkezet v Dallas Print Transfers Inc [1982] FSR 529 …. 16.7 Pollard v Photographic Co (1888) 40 Ch D 345 …. 16.28 Polo Sport Clothing America v Hill (2003) 57 IPR 288 …. 19.92 Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 26 IPR 246 …. 19.79, 20.28 Polo/Lauren Co LP v Ziliani Holdings Pty Ltd (2008) 173 FCR 266 …. 8.37, 10.34, 20.15, 20.18 Polwood Pty Ltd v Foxworth Pty Ltd (2008) 75 IPR 1 …. 4.32, 13.2, 13.11, 22.54, 22.62 Polygram Pty Ltd v Golden Editions Pty Ltd (No 2) (1997) 38 IPR 451 …. 8.62 Polygram Records Inc v Raben Footwear Pty Ltd (1996) 35 IPR 426 …. 6.45 Polygram Records Pty Ltd v Monash Records (Australia) Pty Ltd (1985) 72 ALR 35 …. 8.33 Pontello v Giannotis (1989) 16 IPR 174 …. 8.67 Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 …. 14.21 Potter v Broken Hill Proprietary Co Ltd (1906) 3 CLR 479 …. 21.1 Potters-Ballotini Ltd v Weston-Baker [1977] RPC 202 …. 4.8 Powell v Glow Zone Products Pty Ltd (1997) 39 IPR 506 …. 19.64 Powell’s Trade Mark, Re (1893) 10 RPC 195 …. 19.29

Powell’s Trade Mark [1894] AC 8 …. 19.94 Pracdes Pty Ltd v Stanilite Electronics Pty Ltd (1995) 35 IPR 259 …. 12.57, 12.73 Prejay Holdings Ltd v Commissioner of Patents (2003) 57 IPR 424 …. 11.56 Press-Form Pty Ltd v Henderson’s Ltd (1993) 40 FCR 274 …. 10.22, 10.36 Prestige Group (Australia) Pty Ltd v Dart Industries Inc (1990) 95 ALR 533; 19 IPR 275 …. 12.73 Prestige Lifting Services Pty Ltd v Williams (2015) 333 ALR 674 …. 4.35 Preston Erection Pty Ltd v Speedy Gantry Hire Pty Ltd (1998) 43 IPR 74 …. 13.1 Primary Health Care Ltd v Commonwealth (2016) 117 IPR 73 …. 19.63 Prince Albert v Strange (1849) 1 Mac & G 25; 41 ER 1171 …. 3.7, 5.4 — v — (1849) 2 De G & Sm 652; 64 ER 293 …. 3.7, 5.4 Prince Manufacturing Inc v ABAC Corp Australia Pty Ltd (1984) 4 IPR 104 …. 16.20, 16.34 Printers and Finishers Ltd v Holloway [1964] 3 All ER 731 …. 4.35 Prior v Lansdowne Press Pty Ltd [1977] VR 65 …. 7.7, 8.61 — v Sheldon (2000) 48 IPR 301 …. 7.7 Privacy Commissioner v Telstra Corp Ltd (2017) 262 IR 230 …. 3.11 Proctor v Bayley & Son (1889) 6 RPC 538 …. 14.4 — v Bennis (1887) 4 RPC 333 …. 14.33 Product Management Group Pty Ltd v Blue Gentian LLC (2015) 116 IPR 54 …. 12.56 Prosidion Ltd v Novo Nordisk (2006) 69 IPR 347 …. 12.18 Prout v British Gas plc [1992] FSR 351 …. 4.3 Purcell v Haase (1967) 37 AOJP 215 …. 12.45 Pussy Galore Trade Mark [1967] RPC 265 …. 19.31 Puxu Pty Ltd v Parkdale Custom Built Furniture Pty Ltd (1980) 43 FLR 405 …. 18.130

Q QS Holdings Sarl v Paul’s Retail Pty Ltd [2011] FCA 853 …. 20.16 — v — (No 2) [2011] FCA 1038 …. 20.16 Queensland Co-operative Milling Association Ltd, Re (1976) 25 FLR 169 …. 22.99 Queensland Newsagency System, Re [1985] ATPR 50-097 …. 22.99 Queensland Rugby Football League Ltd, Re (1994) 28 IPR 603 …. 19.62 Quigley Co Inc’s Application [1977] FSR 373 …. 12.8

R R v Stewart (1988) 50 DLR (4th) 1 …. 3.12 R & C Products Pty Ltd v S C Johnson & Sons Pty Ltd (1993) 26 IPR 98 …. 16.40 R A & A Bailey & Co Ltd v Boccaccio Pty Ltd (1986) 6 IPR 279 …. 8.36, 20.13, 20.18 R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 13 IPR 513 …. 12.37, 12.48, 12.53, 12.54 Raben Footwear Pty Ltd v Polygram Records Inc (1997) 37 IPR 417 …. 8.31, 8.61 Radio Corp Pty Ltd v Disney (1937) 57 CLR 448 …. 19.84 Radio 2UE Sydney Pty Ltd v Chesterton (2009) 238 CLR 460 …. 16.2 Rafferty v Madgwicks (2012) 203 FCR 1 …. 22.65 Raleigh Cycle Co Ltd v H Miller & Co Ltd (1948) 65 RPC 141 …. 12.73 Ralston’s Patent (1909) 26 RPC 313 …. 12.72 Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 44 IPR 481 …. 1.21, 12.37, 12.39, 14.11, 14.12, 14.15 Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC (2008) 77 IPR 449 …. 12.46, 12.57, 12.73 Rank Film Distributors Ltd v Video Information Centre [1981] 2 All ER 76 …. 2.9 Rank Hovis McDougall Ltd’s Application (1976) 46 AOJP 3915 ….

12.6, 12.27 Ravenscroft v Herbert [1980] RPC 193 …. 2.6 Rawhide Trade Mark [1962] RPC 133 …. 19.31 RCA Photophone Ltd v Gaumont British Picture Corp (1936) 53 RPC 167 …. 14.18 REA Group Ltd v Real Estate 1 Ltd (2013) 102 IPR 1 …. 16.9, 17.3, 17.4, 17.5, 18.2, 18.4, 18.26, 19.67, 20.4 Real Estate Institute of the ACT, Re [1986] ATPR 50-120 …. 22.99 Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 …. 16.4, 16.7, 17.1, 17.8, 17.9, 18.13 Reckitt Benkisser Healthcare (UK) Ltd v GlaxoSmithKline Australia Pty Ltd (2013) 103 IPR 405 …. 13.4 — v — (No 5) (2015) 112 IPR 273 …. 22.54 Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd [2001] FCA 1228 …. 16.11 Red Tulip Imports Pty Ltd, Re Application by (1984) 2 IPR 109 …. 19.66 Reddaway v Banham [1896] AC 199 …. 16.12, 19.21 Redrock Holdings Pty Ltd v Hinkley (2001) 50 IPR 565 …. 7.3, 7.4 Redwood Music Ltd v Chappell & Co Ltd [1982] RPC 109 …. 6.31, 7.15 Reed Executive plc v Reed Business Information Ltd [2004] RPC 40 …. 16.23, 18.26 Reference by APRA Ltd; Australian Broadcasting Commission, Re (1982) 45 ALR 153 …. 7.10, 7.25 — (1985) 5 IPR 449 …. 22.95 Regency Media Pty Ltd v MPEG LA LLC (2014) 231 FCR 588 …. 22.30 Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 …. 19.55 Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 …. 19.41, 19.75, 19.78, 19.79, 19.80, 19.85, 19.86, 20.4 Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 IPR 289 …. 12.57

Rentokil Pty Ltd v Lee (1995) 66 SASR 301 …. 4.36 Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 25 IPR 119 …. 12.57, 14.12, 14.13, 14.14 Research Affiliates LLC v Commissioner of Patents (2014) 109 IPR 364 …. 12.8, 12.9 Retractable Technologies Inc v Occupational and Medical Innovations Ltd (2007) 72 IPR 58 …. 4.6, 4.15, 4.16Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd (2008) 75 IPR 289 …. 10.28 — v New Cover Group Pty Ltd (2008) 79 IPR 236 …. 10.26, 10.28 Review 2 Pty Ltd v Redberry Enterprise Pty Ltd (2008) 173 FCR 450 …. 10.23, 10.26, 10.28 Revlon Inc v Cripps & Lee Ltd [1980] FSR 85 …. 20.15, 20.17 Reynolds v Herbert Smith & Co (1902) 20 RPC 123 …. 12.7 Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Ltd (1986) 6 IPR 607 …. 14.21 Richards v Kadian (2005) 64 NSWLR 204 …. 4.3 Richsell Pty Ltd v Khoury (1995) 32 IPR 289 …. 10.23 Richwood Creek Pty Ltd v Williams (2009) 82 IPR 385 …. 13.8 Riddlesbarger’s Application (1936) 53 RPC 57 …. 12.25 Rishmont Pty Ltd v Tweed City Medical Centre Pty Ltd [2002] 2 Qd R 222 …. 4.2 Riteway Express Pty Ltd v Clayton (1987) 10 NSWLR 238 …. 4.33 Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417 …. 19.94 Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 12 IPR 321 …. 19.99 Roadshow Films Pty Ltd v iiNet Ltd (2012) 248 CLR 42 …. 2.7, 8.26, 8.30, 8.31 — v — (No 3) (2010) 83 IPR 430 …. 8.31 Roadshow Films Pty Ltd v Telstra Corp Ltd (2016) 122 IPR 81 …. 8.60 Robb v Green [1895] 2 QB 315 …. 3.7, 4.34 Robert J Zupanovich Pty Ltd v B & N Beale Nominees Pty Ltd (1995) 32 IPR 339 …. 7.12, 8.60

Roche Products v Bolar Pharmaceutical (1984) 733 F 2d 858 …. 14.4 Rodi & Weinenberger AG v Henry Showell Ltd [1969] RPC 367 …. 14.18 Roger Bullivant Ltd v Ellis [1987] FSR 172 …. 4.35 Rogerson v Law Society of the Northern Territory (1993) 88 NTR 1 …. 4.22 Roland Corp v Lorenzo & Sons Pty Ltd (1991) 22 IPR 245 …. 6.13, 6.25 Rollason’s Registered Design (1898) 15 RPC 441 …. 10.17 Rolls Razor Ltd v Rolls (Lighters) Ltd (1949) 66 RPC 299 …. 16.40 Rolls Royce Ltd’s Application [1963] RPC 251 …. 12.8, 12.25 Ron Englehart Pty Ltd v Enterprise Constructions (Aust) Pty Ltd (2010) 87 IPR 476 …. 8.15 — v — (2012) 95 IPR 64 …. 8.4, 8.15 Ronneby Road Pty Ltd v ESCO Corp (2016) 118 IPR 526 …. 12.57 Ronson Products Ltd v James Ronson Pty Ltd [1957] VR 731 …. 17.19 Rookes v Barnard [1964] AC 1129 …. 2.7 Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2001) 49 IPR 225 …. 2.7, 12.37, 12.39, 14.14, 14.20 Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 …. 14.17 Roslin Institute (Edinburgh), Re (2014) 750 F 3d 1333 …. 12.6 Rotocrop International Ltd v Genbourne Ltd [1982] FSR 241 …. 14.6 Roussel Uclaf v Pan Laboratories Pty Ltd (1994) 29 IPR 556 …. 14.33 Row Weeder Pty Ltd v Nielsen (1998) 39 IPR 400 …. 13.2 Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 …. 19.80 Royal Children’s Hospital v Alexander (2011) 213 IR 94 …. 13.10, 13.11, 13.15 Rumcoast Holdings Pty Ltd v Prospero Publishing Pty Ltd (1999) 48 IPR 75 …. 16.16, 17.11 Rural Press Ltd v Australian Competition and Consumer Commission [2003] HCA 75 …. 22.93 Rutter v Brookland Valley Estate Pty Ltd (2009) 81 IPR 549 …. 9.7

Ryan v Lum (1989) 14 IPR 513 …. 14.11 Ryder v Booth [1985] VR 869 …. 4.38

S S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 43 IPR 581 …. 16.32, 17.3, 17.5, 18.4, 20.4 S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1980) 30 ALR 657 …. 8.66 — v — (1985) 159 CLR 466 …. 8.4, 8.15, 8.17, 10.31 Saccharin Corp v Anglo-Continental Chemical Works Ltd (1900) 17 RPC 307 …. 14.5, 14.7, 14.8 Sachtler Gmbh & Co KG v Re Miller Pty Ltd (2005) 65 IPR 605 …. 12.62, 14.17, 14.20, 14.21 Safe Sport Australia Pty Ltd v Puma Australia Pty Ltd (1985) 4 IPR 120 …. 10.36 SAI Global Property Division Pty Ltd v Johnstone (2016) 122 IPR 210 …. 4.34 Salinger v Random House Inc (1987) 811 F 2d 90 …. 1.42, 8.40 Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) 65 RPC 203 …. 3.8, 4.5, 4.8, 4.29 Samsung Electronics Co Ltd v Apple Inc (2011) 286 ALR 257 …. 2.12, 14.33 Samuel Parks & Co Ltd v Cocker Bros Ltd (1929) 46 RPC 241 …. 12.53 Samuel Smith & Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd [2016] FCA 1515 …. 20.9 Samuel Taylor Pty Ltd v SA Brush Co Ltd (1950) 83 CLR 617 …. 12.63 Samuelson v Producers Distributing Co Ltd [1932] 1 Ch 201 …. 16.12 San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842 …. 20.5 Sanders v Snell (1998) 196 CLR 329 …. 2.7 Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49 …. 6.32 Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No 3) (2011) 92 IPR

320 …. 14.15 — v — (No 4) (2011) 94 IPR 244 …. 8.39 SAP (Australia) Pty Ltd v Sapient (Australia) Pty Ltd (1999) 45 IPR 169 …. 20.19 — v — (1999) 48 IPR 593 …. 17.2, 18.2, 18.9, 19.77, 20.4 Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 …. 14.12, 14.13, 14.14 Saunders v Wiel (1892) 10 RPC 29 …. 10.22 Scandecor Development AB v Scandecor Marketing AB [1999] FSR 26 …. 16.8 Scandinavian Tobacco Group Eersel BV v Trojan Trading Company Pty Ltd (2016) 243 FCR 152 …. 20.17 Schering Chemicals Ltd v Falkman [1981] 2 All ER 321 …. 4.3 Schering’s Aktiengesellschaft, Re Application by (1991) 22 IPR 632 …. 12.45 Schindler Lifts Australia Pty Ltd v Debelak (1989) 15 IPR 129 …. 4.32, 16.2, 18.8 Schroeder Music Publishing Co Ltd v Macaulay [1974] 1 WLR 1308 …. 7.19 Schutz (UK) Ltd v Werit (UK) Ltd (2013) 100 IPR 583 …. 14.5 Schweppes Ltd v E Rowlands Pty Ltd (1913) 16 CLR 162 …. 19.84 Scotch Whisky Association v De Witt (2007) 74 IPR 382 …. 19.85 Scott v Metropolitan Police Commissioner [1975] AC 819 …. 2.18 — v Tuff-Kote (Australia) Pty Ltd [1975] 1 NSWLR 537 …. 16.14 Seafolly Pty Ltd v Fewstone Pty Ltd (2014) 106 IPR 85 …. 2.15, 10.30, 10.34 Seafood Innovations Pty Ltd v Richard Bass Pty Ltd (2010) 87 IPR 380 …. 11.22 Seager v Copydex Ltd [1967] 2 All ER 415 …. 4.24, 4.28 — v — (No 2) [1969] 2 All ER 718 …. 4.30 Searle Australia Pty Ltd v Public Interest Advocacy Centre (1992) 108 ALR 163 …. 3.2, 4.38 Sebel Furniture Ltd v Acoustic & Felts Pty Ltd (2009) 80 IPR 244 ….

20.10 Secretary, Department of Employment, Workplace Relations & Small Business v The Staff Development & Training Centre Pty Ltd (2001) 114 FCR 301 …. 4.38, 4.40 Secton Pty Ltd v Delawood Pty Ltd (1991) 21 IPR 136 …. 3.9, 4.35 Seekers Nominees Ltd v Target Australia Pty Ltd (1995) 32 IPR 372 …. 17.6 Sega Enterprises Ltd v Galaxy Electronics Pty Ltd (1996) 69 FCR 268 …. 6.10 — v — (1998) 39 IPR 577 …. 7.14 Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 …. 19.100 Seven Dimensions Pty Ltd, Re Application by (1996) 35 IPR 1 …. 7.25 Seven Network Ltd v Federal Commissioner of Taxation (2014) 109 IPR 520 …. 6.10 — v News Ltd (2009) 182 FCR 160 …. 22.93 Seven Network (Operations) Ltd v Endemol Australia Pty Ltd (2015) 114 IPR 287 …. 6.19 — v TCN Channel Nine Pty Ltd (2005) 66 IPR 101 …. 7.7, 7.8 — v Warburton (No 2) (2011) 206 IR 450 …. 4.36 Seven Up Co v OT Ltd (1947) 75 CLR 203 …. 19.33 Shacklady v Atkins (1994) 30 IPR 387 …. 10.16, 10.36 Shahid v Australasian College of Dermatologists (2008) 168 FCR 146 …. 16.30 Shahin Enterprises Pty Ltd v ExxonMobil Oil Corp [2005] AIPC 92132 …. 19.32 Shave v H V McKay-Massey Harris Pty Ltd (1935) 52 CLR 701 …. 12.45 Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 …. 19.30, 19.75, 20.6, 20.8, 20.9 — v Rohm & Haas Co (1949) 78 CLR 601 …. 19.32, 19.94, 22.58 Shoshana Pty Ltd v 10th Cantanae Pty Ltd (1987) 11 IPR 249 …. 16.21 Siddell v Vickers (1892) 9 RPC 152 …. 2.17

Siddons Pty Ltd v Stanley Works Pty Ltd (1991) 20 IPR 1 …. 18.4 Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth (2011) 119 IPR 194 …. 12.67 — v — (No 2) (2010) 88 IPR 633 …. 14.31 Sirdar Rubber Co Ltd v Wallington Weston & Co (1907) 24 RPC 539 …. 13.25, 14.5 Skids Programme Management Ltd v McNeill (2012) 98 IPR 324 …. 4.30 Skinner & Co v Perry (1893) 10 RPC 1 …. 14.34 Sky Channel Pty Ltd v Yahmoc Pty Ltd (2003) 58 IPR 63 …. 8.60 Slaney, Re Application by (1985) 6 IPR 307 …. 19.62, 19.91 Slater v Bissett (1986) 69 ACTR 25 …. 4.3 Slavutych v Baker (1975) 55 DLR (3d) 224 …. 4.3 Slazenger & Sons v Feltham & Co (1889) 6 RPC 531 …. 2.14 — v Spalding & Bros [1910] 1 Ch 257 …. 20.20 Slee and Harris’ Application [1966] RPC 194 …. 12.7 Slevin v Associated Insurance Brokers of Australia (Qld) Pty Ltd [1996] AILR ¶9-049 …. 4.23 Smelting Co of Australia Ltd v Commissioner of Inland Revenue [1896] 2 QB 179 …. 13.22 — v — [1897] 1 QB 175 …. 13.22 Smith & Nephew Plastics (Australia) Pty Ltd v Sweetheart Holding Corp (1987) 8 IPR 285 …. 20.19 Smith Kline & French Laboratories (Australia) Ltd v Registrar of Trade Marks (1967) 116 CLR 628 …. 19.26, 19.71 — v Secretary, Department of Community Services and Health (1990) 17 IPR 545 …. 4.9, 4.13, 4.32 — v — (1991) 20 IPR 643 …. 3.6, 4.12, 4.22 Smith Kline & French Laboratories Ltd, Re [1989] 2 WLR 397 …. 4.12 Smith Kline & French Laboratories Ltd v Attorney-General (NZ) [1989] FSR 418 …. 4.12 — v — (1991) 22 IPR 143 …. 14.5 — v RD Harbottle (Mercantile) Ltd [1980] RPC 363 …. 14.6, 14.9

Smith, Kline & French Laboratories Ltd’s Design Application [1974] RPC 253 …. 10.17 SmithKline Corp v DDSA Pharmaceuticals Ltd [1978] FSR 109 …. 14.9 SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Ltd (2011) 92 IPR 46 …. 12.56, 14.11, 14.13, 14.14 — v — (2012) 96 IPR 365 …. 12.40, 12.56 — v — [2013] HCATrans 54 …. 12.56 Snoid v Handley (1981) 38 ALR 383 …. 17.11, 18.3 Snyman v Cooper (1989) 16 IPR 585 …. 16.34 Societe des Produits Nestlé SA v Cadbury Holdings Ltd (2010) 87 IPR 654 …. 12.53 Societe des Usines Chimiques Rhone- Poulenc v Commissioner of Patents (1958) 100 CLR 5 …. 12.67 Software AG (Australia) Pty Ltd v Racing & Wagering Western Australia (2009) 175 FCR 121 …. 8.55 Solar Thomson Engineering Co Ltd v Barton [1977] RPC 537 …. 7.16, 8.19, 13.25 Solarhart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 92 IPR 165 …. 16.15, 20.11, 20.12 Sony Corp v Universal City Studios Inc (1984) 2 IPR 225 …. 8.28 Sony Music Australia Ltd v Tansing (1993) 27 IPR 649 …. 8.24, 9.11, 16.28, 17.9 Sony Music Entertainment (Aust) Ltd v CEL Music Pty Ltd (2002) 54 IPR 289 …. 2.7, 8.60 South Australian Brewing Co Pty Ltd v Carlton & United Breweries Ltd (2001) 53 IPR 90 …. 19.62, 19.85, 20.9 Southcorp Wines Pty Ltd, Re (2000) 50 IPR 655 …. 16.41 Southdown Publications Pty Ltd v ACP Magazines Pty Ltd [2003] NSWCA 34 …. 19.30 Southern v How (1618) Pop 143; 79 ER 1243 …. 16.1 Southern Cross Financial Group (Newcastle) Pty Ltd v Rodrigues (2005) 66 IPR 166 …. 4.35 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 …. 19.76, 19.79, 19.84

Space Cells Systems (Australia) Pty Ltd v EPM Concrete Pty Ltd (1979) 49 AOJP 2018 …. 12.72 Speed Seal Products Ltd v Paddington [1986] 1 All ER 91 …. 2.2, 4.25, 13.5 Speedy Gantry Hire Pty Ltd v Preston Erection Pty Ltd (1998) 40 IPR 543 …. 13.1 Spencer Industries Pty Ltd v Collins [2003] FCA 542 …. 13.11 SPI Spirits (Cyprus) Ltd v Diageo Australia Ltd (No 6) (2008) 77 IPR 62 …. 20.26, 22.36 Spincode Pty Ltd v Look Software Pty Ltd (2001) 4 VR 501 …. 4.3 Sporte Leisure Pty Ltd v Paul’s International Pty Ltd (No 3) (2010) 88 IPR 242 …. 20.16, 20.20 — v — (No 4) [2011] FCA 201 …. 20.16 Sports Break Travel Pty Ltd v P&O Holidays Ltd (2000) 50 IPR 51 …. 19.62, 20.9 Sports Café Ltd v Registrar of Trade Marks (1998) 42 IPR 552 …. 19.77 Sports Data Pty Ltd v Prozone Sports Australia Pty Ltd (2014) 107 IPR 1 …. 4.15, 4.23, 4.26, 6.39, 8.12 Stack v Brisbane City Council (1995) 32 IPR 69 …. 7.10, 13.34 — v — (1996) 35 IPR 296 …. 13.18, 13.19, 14.30 — v Davies Shephard Pty Ltd (1995) 34 IPR 117 …. 13.3, 13.4 Stanway Oyster Cylinders Pty Ltd v Marks (1996) 35 IPR 71 …. 12.39 Star Industrial Co Ltd v Yap Kwee Kor [1976] FSR 256 …. 16.2, 17.17, 22.36 Star Micronics Pty Ltd v Five Star Computers Pty Ltd (1990) 18 IPR 225 …. 8.33, 18.2 — v — (1991) 22 IPR 473 …. 16.20 Starr Partners Pty Ltd v Dev Prem Pty Ltd (2007) 71 IPR 459 …. 19.77 State Government Insurance Corp v Government Insurance Office of New South Wales (1991) 21 IPR 65 …. 18.2, 18.6 State Street Bank & Trust Co v Signature Financial Group (1998) 149 F 3d 1368 …. 12.11

Statuscard Australia Pty Ltd v Rotondo (2008) 78 IPR 625 …. 6.34 STC plc, Re Application by (1989) 15 IPR 419 …. 19.62 Stead v Anderson (1846) 136 ER 724 …. 14.33 Steers v Rogers [1893] AC 232 …. 1.18 Stena Rederi Aktiebolag v Irish Ferries Ltd [2003] RPC 36 …. 14.24 Stephens v Avery [1988] 2 WLR 1280 …. 3.9 Stephenson Jordan & Harrison Ltd v MacDonald & Evans (1951) 69 RPC 10 …. 4.15, 7.4 Sterling Drug Inc v CH Beck Ltd [1972] FSR 529 …. 14.8 Sterling Engineering Co Ltd v Patchett [1955] AC 534 …. 13.8, 13.13 Stevens v Benning (1855) 1 K & J 168; 69 ER 414 …. 7.15 — v Kabushiki Kaisha Sony Computer Entertainment (2005) 224 CLR 193 …. 6.15, 8.3, 8.67 Street v Jedsminster Pty Ltd (1988) 11 IPR 520 …. 18.9 Streetscape Projects (Australia) Pty Ltd v City of Sydney (2013) 85 NSWLR 196 …. 4.3, 4.6, 4.14, 4.30 Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd (2014) 110 IPR 82 …. 12.57, 14.14 Stringfellow v McCain Foods (GB) Ltd [1984] RPC 501 …. 16.18, 17.18, 17.19 Stuart Pharmaceuticals Ltd v Rona Laboratories Ltd [1981] FSR 20 …. 18.12 Sullivan v Sclanders (2000) 77 SASR 419 …. 4.11, 4.17, 4.19, 4.26 Sumito Electric Industries Ltd v Metal Manufacturers Ltd [1993] AIPC 91-000 …. 12.46 Sun World International Inc v Registrar, Plant Breeders Rights (1999) 42 IPR 321 …. 15.13 Sunbeam Corp v Morphy-Richards (Aust) Pty Ltd (1961) 35 ALJR 212 …. 12.39, 12.48 Surge Licensing Inc v Pearson (1991) 21 IPR 228 …. 16.20, 16.24 Surveys & Mining Ltd v Morrison [1969] Qd R 470 …. 4.32 Sutherland Publishing Co Ltd v Caxton Publishing Co Ltd [1936] Ch 323 …. 8.61, 8.62

Sweeney v Boylan Nominees Pty Ltd (2006) 226 CLR 161 …. 2.7 SWM Financial Services Pty Ltd v Lloyd [2011] NSWSC 1108 …. 4.34 Sydney Cellulose Pty Ltd v Ceil Comfort Home Insulation Pty Ltd (2002) 53 IPR 359 …. 14.34 Sydney Markets Ltd v Sydney Flower Market Pty Ltd [2002] FCA 124 …. 16.39, 18.24 Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354 …. 16.11, 16.22, 16.32, 18.2, 18.4, 18.6, 18.18 Sykes v Howarth (1879) 12 Ch D 826 …. 14.5 — v John Fairfax & Sons Ltd [1977] 1 NSWLR 415 …. 16.7 Synthetic Turf Development Pty Ltd v Sports Technology International Pty Ltd [2004] FCA 1179 …. 12.73 Synthon BV v Smithkline Beecham Plc [2006] RPC 10 …. 12.40

T T R Flanagan Smash Repairs Pty Ltd v Jones (2000) 48 IPR 19 …. 6.33 T S & B Retail Systems Pty Ltd v 3Fold Resources Pty Ltd (2003) 57 IPR 530 …. 2.9 — v — (No 3) (2007) 72 IPR 492 …. 2.16, 3.12, 4.2, 22.28 Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 …. 16.38, 17.12, 18.2, 18.4, 18.6, 18.8, 18.13, 18.16 Taddy v Sterious [1904] 1 Ch 354 …. 13.24 Taittinger v Allbev Ltd [1994] 4 All ER 75 …. 16.16 Talbot v General Television Corp Pty Ltd [1980] VR 224 …. 3.9, 4.12, 4.14, 4.26, 4.29, 4.30 Taleb v GM Holden Ltd (2011) 94 IPR 459 …. 16.20 Tallerman v Dowsing Radiant Heat Co [1900] 1 Ch 1 …. 16.13 Talmax Pty Ltd v Telstra Corp Ltd [1997] 2 Qd R 444 …. 16.20, 16.28, 16.34 Tamawood Ltd v Habitare Developments Pty Ltd (2015) 112 IPR 439 …. 7.16, 8.4, 8.28 — v — (No 3) (2013) 101 IPR 225 …. 7.16 — v Henley Arch Pty Ltd (2004) 61 IPR 378 …. 8.4, 8.14

Tan-Ichi Co Ltd v Jancar Ltd [1990] FSR 151 …. 17.10, 21.1 Targetts Pty Ltd v Target Australia Pty Ltd (1993) 26 IPR 51 …. 17.7, 17.11 Tate v Fullbrook [1908] 1 KB 821 …. 6.2 — v Thomas [1921] 1 Ch 503 …. 6.2, 6.4, 6.19 Tavenfar Pty Ltd v Life Savers (Australia) Ltd (1988) 12 IPR 159 …. 19.88 Taylor v Neville (1878) 47 LJ QB 254 …. 7.15 TCN Channel Nine Pty Ltd v Ilvariy Ltd (2008) 71 NSWLR 323 …. 16.33 — v Network Ten Pty Ltd (2001) 50 IPR 335 …. 8.40, 8.42 — v — (2002) 55 IPR 112 …. 8.41, 8.40, 8.42 — v — (No 2) (2005) 145 FCR 35 …. 6.49, 8.8, 8.24 Tec & Tomas (Aust) Pty Ltd v Matsumiya Computer Co Pty Ltd (1984) 2 IPR 81 …. 18.2 Tefex Pty Ltd v Bowler (1981) 40 ALR 326 …. 10.16, 10.22 Telefon A/B L M Ericsson’s Application (1974) 44 AOJP 846 …. 12.9 Television Food Network, GP v Food Channel Network Pty Ltd (No 2) [2009] FCA 271 …. 19.91 Telmak Teleproducts (Australia) Pty Ltd v Coles Myer Ltd (1989) 15 IPR 362 …. 16.11, 16.32, 16.38, 17.2, 17.4 Telstra Corp Ltd v APRA (1997) 191 CLR 140 …. 6.50, 8.19, 8.20, 8.22 — v Desktop Marketing Systems Pty Ltd (2001) 51 IPR 257 …. 6.41 — v First Netcom Pty Ltd (1997) 148 ALR 202 …. 4.12 — v Phone Directories Co Pty Ltd (2010) 85 IPR 571 …. 1.44, 6.36, 6.39, 6.42 — v — (2010) 194 FCR 142 …. 6.3, 6.17, 6.35, 6.36, 6.39, 6.40 — v Royal & Sun Alliance Insurance Ltd (2003) 57 IPR 453 …. 6.19, 16.12 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1987) 10 IPR 289 …. 16.20, 16.25, 16.26, 16.28, 16.34, 18.19 Terrapin Ltd v Builders’ Supply Co (Hayes) Ltd [1967] RPC 375 …. 4.8 Testro Bros v Tennant (1984) 2 IPR 469 …. 16.12

Tetra Molectric Ltd v Japan Imports Ltd [1976] RPC 547 …. 12.54 Tetra Molectric Ltd’s Application [1976] FSR 424 …. 12.63 TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc (1999) 45 IPR 43 …. 17.3 — v — [2000] FCA 720 …. 19.85 TGI Friday’s (Minnesota) Inc v TGI Friday’s (Australia) Pty Ltd (1999) 48 IPR 65 …. 20.28 Thai World Import & Export Co Ltd v Shuey Shing Pty Ltd (1989) 17 IPR 289 …. 16.8, 17.16 Theta Developments Pty Ltd v Leonardis [2002] FCAFC 170 …. 14.12 Thomas Marshall (Exporters) Ltd v Guinle [1979] Ch 227 …. 4.4 Thompson & Morgan (United Kingdom) Ltd v Erica Vale Australia Pty Ltd (1995) 31 IPR 335 …. 2.22 Thomson v B Seppelt & Sons Ltd (1925) 37 CLR 305 …. 19.65 Thornton Hall Manufacturing v Shanton Apparel Ltd (1982) 12 IPR 48 …. 8.62 Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 …. 19.34 Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 …. 12.52, 14.33 Timber Engineering Co Pty Ltd v Anderson [1980] 2 NSWLR 488 …. 4.32 Time Warner Entertainment Co LP v Just Spectacles Pty Ltd [2003] AIPC 91-616 …. 19.86 — v Stepsam Investments Pty Ltd (2003) 59 IPR 343 …. 19.91 Time Warner Entertainment Co Ltd v Channel 4 Television Corp plc (1993) 28 IPR 439 …. 8.40 Titan Group Pty Ltd v Steriline Manufacturing Pty Ltd (1990) 19 IPR 353 …. 4.8, 4.30 Tivo Inc v Vivo International Corp Pty Ltd [2012] FCA 252 …. 18.25, 19.81 Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd (2000) 51 IPR 1 …. 19.32, 19.86, 19.98, 19.99 Tolley v J S Fry & Sons Ltd [1931] AC 333 …. 16.28

Tolmark Homes Pty Ltd v Paul (1999) 46 IPR 321 …. 8.4 Tomlinson, Re Application of (1966) 363 F 2d 928 …. 12.54 Tonnex International Pty Ltd v Dynamic Supplies Pty Ltd (2012) 99 IPR 31 …. 6.35, 8.7 Tony Blain Pty Ltd v Jamison (1993) 26 IPR 8 …. 2.9 Top Heavy Pty Ltd v Killin (1996) 34 IPR 282 …. 20.9 Top Performance Motors Pty Ltd v IRA Berk (Queensland) Pty Ltd (1975) 5 ALR 465 …. 22.93 Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 59 IPR 318 …. 19.78, 19.86 Torpey Vander Have Pty Ltd v Mass Constructions Pty Ltd (2002) 55 IPR 542 …. 7.16 Tot Toys Ltd v Mitchell [1993] 1 NZLR 325 …. 16.7, 16.27, 16.28 Totalizator Agency Board v Turf News Pty Ltd [1967] VR 605 .…. 16.16, 17.19 Totally & Permanently Disabled Soldiers Association v Australian Federation of Totally & Permanently Incapacitated Ex-Service Men & Women Ltd (2001) 52 IPR 626 …. 19.83 Tourism Queensland v Dectar Pty Ltd [2001] AIPC 91-750 …. 19.67 Tournier v National Provincial & Union Bank of England [1924] 1 KB 461 …. 4.3 Townsend v Haworth (1875) 12 Ch D 831 …. 14.10 Townsend Controls Pty Ltd v Gilead (1989) 16 IPR 469 …. 14.34 — v — (1990) 21 IPR 520 …. 14.34 Tramanco Pty Ltd v BPW Transpec Pty Ltd [2012] FCA 613 …. 14.27 TransCore, LP v Electronic Transaction Consultants Corp (2009) 563 F 3d 1271 …. 22.3 Transfield Pty Ltd v Arlo International Ltd (1980) 144 CLR 83 …. 13.23, 22.97 Transport Tyre Sales Pty Ltd v Montana Tyres Rims and Tubes Pty Ltd (1999) 43 IPR 481 …. 19.95, 20.15, 20.16, 20.21, 20.26, 20.32 Trevorrow v South Australia (No 4) (2006) 94 SASR 64 …. 4.10, 4.11, 4.14

Triplex Safety Glass Co Ltd v Scorah (1938) 55 RPC 21 …. 4.4 — v — (1938) 55 RPC 237 …. 13.8 Tritech Technology Pty Ltd v Gordon (2000) 48 IPR 52 …. 21.1 Trumpet Software Pty Ltd v OzEmail Pty Ltd (1996) 34 IPR 481 …. 1.21, 7.14, 7.15, 7.17, 22.90 Truth About Motorways Pty Ltd v Macquarie Infrastructure Investment Management Ltd (2000) 200 CLR 591 …. 16.37 Tucker v Bentley (1996) 36 IPR 243 …. 7.16 Turner v General Motors (Australia) Pty Ltd (1929) 42 CLR 352 …. 16.11, 16.20, 17.14 Twentieth Century Fox Film Corp v Die Hard Pty Ltd (2001) 52 IPR 455 …. 19.85 — v South Australian Brewing Co Ltd (1996) 34 IPR 225 …. 16.27, 18.17 — v — (1996) 34 IPR 247 …. 16.12, 16.27, 17.1, 17.9 Tyburn Productions Ltd v Conan Doyle [1990] 3 WLR 167 …. 21.1

U U and I Global Trading (Australia) Pty Ltd v Tasman-Warajay Pty Ltd (1995) 60 FCR 26 …. 20.21 UCP Gen Pharma AG v Mesoblast Inc (2012) 95 IPR 562 …. 19.101 Unilever Aust Ltd v Karounos (2001) 52 IPR 361 …. 19.95 Union Carbide Corp v Naturin Ltd [1987] FSR 538 …. 4.14 United Dominions Corp Ltd v Brian Pty Ltd (1985) 157 CLR 1 …. 22.49 United States Surgical Corp v Hospital Products International Pty Ltd [1983] 2 NSWLR 157 …. 4.8 United Wire Ltd v Screen Repair Services (Scotland) Ltd [2000] 4 All ER 353 …. 13.25, 14.5 Universal Music Australia Pty Ltd v Australian Competition and Consumer Commission (2003) 57 IPR 353 …. 8.36, 22.93 — v Cooper (2005) 150 FCR 1 …. 8.30, 8.31, 8.63 — v Miyamoto (Aka DJ Moto) (2005) 62 IPR 605 …. 8.61

— v Sharman License Holdings Ltd (2005) 65 IPR 289 …. 8.30 Universal Telecasters Queensland Ltd v Guthrie (1978) 32 FLR 360 …. 16.32, 16.33 Universal Thermosensors Ltd v Hibben [1992] 3 All ER 257 …. 4.35 University of British Columbia v Conor Medsystems Inc (2006) 70 IPR 248 …. 13.1, 13.2, 13.4 University of Georgia Research Foundation v Biochem Pharma Inc (2000) 51 IPR 222 …. 12.37 University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 …. 6.12, 6.32 University of New South Wales v Moorhouse (1975) 133 CLR 1 …. 8.26, 8.28, 8.29 University of Nottingham v Fishel [2000] ICR 1462 …. 4.32 University of Western Australia v Gray (2009) 82 IPR 206 …. 1.40, 1.41, 7.4, 13.9, 13.10, 13.11, 13.13, 13.15, 22.54 — v — (No 20) (2008) 76 IPR 222 …. 13.1, 22.27 UPL Group Ltd v Dux Engineers Ltd (1988) 13 IPR 15 …. 17.6 Usines de Melle’s Patent, Re (1954) 91 CLR 42 …. 13.16

V Valensi v British Radio Corp Ltd [1972] RPC 171 …. 12.73 — v — [1973] RPC 337 …. 12.63 Van Der Lely NV v Bamfords Ltd [1963] RPC 61 …. 12.39, 14.18 Vasco Investment Managers Ltd v Morgan Stanley Australia Ltd (2014) 108 IPR 52 …. 4.28, 4.31 Vass v Nationwide News Pty Ltd [2016] NSWSC 1721 …. 9.3 Vawdrey Australia Pty Ltd v Kruger Transport Equipment Pty Ltd (2009) 83 IPR 1 …. 8.15, 8.17 Veda Advantage Ltd v Malouf Group Enterprises Pty Ltd (2016) 241 FCR 161 …. 18.28 Vehicle Monitoring Systems Pty Ltd v Sarb Management Group Pty Ltd (No 2) (2013) 101 IPR 496 …. 12.56, 14.14, 14.27 Venus Adult Shops Pty Ltd v Fraserside Holdings Ltd (2006) 70 IPR

517 …. 8.58, 8.62 Verrocchi v Direct Chemist Outlet Pty Ltd [2016] FCAFC 104 …. 17.5 Vestergaard Frandsen A/S v Bestnet Europe Ltd [2013] 1 WLR 1556 …. 4.14 V-Flow Pty Ltd v Holyoake Industries (Vic) Pty Ltd (2013) 296 ALR 418 …. 4.33 Victoria Park Racing & Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 …. 1.45, 3.11, 6.1, 6.6, 6.7 Victoria v Commonwealth (1996) 187 CLR 416 …. 1.6 — v Pacific Technologies (Australia) Pty Ltd (No 2) (2009) 81 IPR 525 …. 6.13 Victoria University of Technology v Wilson (2004) 60 IPR 392 …. 1.41, 13.8, 13.11 Vieright Pty Ltd v Myer Stores Ltd (1995) 31 IPR 361 …. 16.11, 16.38, 16.39, 17.1 Vina Concha y Toro SA v Southcorp Brands Pty Ltd (2012) 99 IPR 306 …. 19.85, 19.92 Vine Products Ltd v MacKenzie [1969] RPC 1 …. 16.14 VIP Plastic Packaging Pty Ltd v BMW Plastics Pty Ltd [2011] FCA 660 …. 14.20 Virbac (Australia) Pty Ltd v Merck Patent GmbH (1994) 29 IPR 548 …. 11.56 Virgin Enterprises Ltd v Virgin Star Pty Ltd (2005) 67 IPR 557 …. 20.5 Virginia-Carolina Chemical Corp’s Application [1958] RPC 35 …. 12.7, 12.8 Vitamins Australia Ltd v Beta-Carotene Industries Pty Ltd (1987) 9 IPR 41 …. 13.19, 13.22 Vivo International Corp Pty Ltd v Tivo Inc (2012) 99 IPR 1 …. 19.75, 19.77, 19.81, 19.95 Vokes Ltd v Heather (1945) 62 RPC 135 …. 13.8 Volunteer Eco Students Abroad Pty Ltd v Reach Out Volunteers Pty Ltd (2013) 102 IPR 161 …. 4.34, 18.4 Vu v New South Wales Police Service (2007) 73 IPR 531 …. 8.67

W W v Egdell [1990] 2 WLR 471 …. 4.19 W G & B Manufacturing Pty Ltd v Tesla Farad Pty Ltd (1999) 48 IPR 111 …. 2.24 W R Grace & Co v Asahi Kasei Kogyo Kabushiki Kaisha (1993) 25 IPR 481 …. 12.19 W’s Application (1914) 31 RPC 141 …. 12.8 Wake v Cavitas Pty Ltd (2010) 88 IPR 169 …. 13.2 — v Soniclean Pty Ltd (2010) 88 IPR 186 …. 13.2 Wake Forest University Health Sciences v Smith & Nephew Pty Ltd (No 2) (2011) 92 IPR 496 …. 14.13, 14.14 Wakim, Re; Ex parte McNally (1999) 198 CLR 511 …. 2.23 Walkabout Footwear Pty Ltd v Sunshine Australia Group Pty Ltd [1987] AIPC 90-402 …. 19.87 Walker v Alemite Corp (1933) 49 CLR 643 …. 2.7, 14.10, 14.11 Wallace v Baulkham Hills Smash Repairs Pty Ltd (1995) 32 IPR 443 …. 18.22 Walt Disney Productions, Re (1954) 71 WN (NSW) 334 …. 19.95 Walt Disney Productions v H John Edwards Publishing Co Pty Ltd (1954) 71 WN (NSW) 150 …. 8.14 Walter, Re (1987) 205 USPQ 397 …. 12.9 Walter v Lane [1900] AC 539 …. 6.3 Wanem Pty Ltd v Tekiela (1990) 19 IPR 435 …. 2.2 Ward Group Pty Ltd v Brodie & Stone plc (2005) 64 IPR 1 …. 18.3, 18.6, 20.12 Warman International Ltd v Dwyer (1995) 182 CLR 544 …. 2.16, 4.32 — v Envirotech Australia Pty Ltd (1986) 6 IPR 578 …. 2.9 Warne v Genex Corp Pty Ltd (1996) 35 IPR 284 …. 2.7 Warner v Commercial Systems Australia Pty Ltd (1995) 33 IPR 534 …. 10.22 Warwick Film Productions Ltd v Eisinger [1969] Ch 508 …. 6.31 Washburn v Cunard Steamship Co (1889) 6 RPC 398 …. 14.6 Washex Machinery Corp v Roy Burton & Co Pty Ltd (1974) 49 ALJR

12 …. 12.53, 12.57 Waterbed Association of Retailers and Manufacturers, Re Application by (1990) 20 IPR 605 …. 19.59 Waterford Glass Group Ltd, Re Application by (1987) 9 IPR 339 …. 19.65 Watson Pharma Pty Ltd v AstraZeneca AB (2012) 95 IPR 547 …. 14.33 WD & HO Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182 …. 19.29 WEA International Inc v Hanimex Corp Ltd (1987) 10 IPR 349 …. 8.28, 8.58 WEA Records Pty Ltd v Stereo FM Pty Ltd (1983) 1 IPR 6 …. 7.8, 22.95 Weir Pumps Ltd v CML Pumps Ltd (1983) 2 IPR 129 …. 7.16, 8.19, 13.25, 14.30 Weitmann v Katies Ltd (1977) 29 FLR 336 …. 18.4 Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 …. 12.19, 12.45, 12.57, 12.65, 14.17 Welcome Real-Time SA v Catuity Inc (2001) 51 IPR 327 …. 12.8, 12.9, 12.11, 12.57, 14.26, 14.27 Weld-Blundell v Stephens [1919] 1 KB 520 …. 4.12 Wellcome Foundation Ltd v Commissioner of Patents (1980) 145 CLR 520 …. 12.8 — v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 …. 12.53, 12.54 Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd [2004] FCA 438 …. 20.4 Welwyn Electrical Laboratories Ltd’s Application (1957) RPC 143 …. 11.29 West Australian Newspapers Ltd, Re [1986] ATPR 50-108 …. 22.99 West Australian Newspapers Ltd v Bond (2009) 40 WAR 164 …. 4.22 Westpac Banking Corp v Bell Group Ltd (2012) 89 ACSR 1 …. 4.14 — v John Fairfax Group Pty Ltd (1991) 19 IPR 513 …. 4.6, 4.19, 4.23 Westralian Farmers Co-operative Ltd, Re (1979) 37 FLR 244 …. 22.99

Wham-O Manufacturing Co v Lincoln Industries Ltd (1984) 3 IPR 115 …. 6.24, 6.32 Wheatley v Bell [1982] 2 NSWLR 544 …. 3.12, 4.15 Wheatley’s Patent Application, Re (1984) 2 IPR 450 …. 12.39, 12.59 Whitty v Fin Control Systems Pty Ltd [2000] NSWSC 332 …. 13.22 Wigginton v Brisbane TV Ltd (1992) 25 IPR 58 …. 4.6, 8.40 Wildash v Klein (2004) 61 IPR 324 …. 6.24 Wilkshire v Bombala Council (2009) 82 IPR 325 …. 19.36 William McCausland v Surfing Hardware International Holdings Pty Ltd [2013] NSWSC 902 …. 6.33, 9.3 Williams v Hursey (1959) 103 CLR 30 …. 2.7 — v Nye (1890) 7 RPC 62 …. 12.19, 12.45 — v Settle [1960] 1 WLR 1072 …. 8.63 — v Spautz (1992) 174 CLR 509 …. 2.2 Williamson Music Ltd v Pearson Partnership [1987] FSR 97 …. 8.42 Willmann v Petersen (1904) 2 CLR 1 …. 12.53 Wills v Australian Broadcasting Corp (No 3) (2010) 89 IPR 252 …. 6.22 Wilson HTM Investment Group Ltd v Pagliaro (2012) 226 IR 75 …. 4.36 Wilson Parking Australia 1992 Pty Ltd v Rush [2008] FCA 1601 …. 4.23 Wilson v Ferguson [2015] WASC 15 …. 4.25, 4.30 — v Weiss Art Pty Ltd (1995) 31 IPR 423 …. 7.15 Wimmera Industrial Minerals Pty Ltd v Iluka Midwest Pty Ltd [2002] FCA 653 …. 4.3 — v RGC Mineral Sands Ltd (1995) 32 IPR 89 …. 2.25 Windridge Farm Pty Ltd v Grassi (2011) 92 IPR 431 …. 7.9 Windsurfing International Inc v Petit [1984] 2 NSWLR 196 …. 12.37, 12.39, 14.6 Wineworths Group Ltd v Comite Interprofessionnel du Vin de Champagne (1991) 23 IPR 435 …. 21.65 Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 28 IPR 193 ….

20.4, 20.13 Winner v Ammar Holdings Pty Ltd (1993) 25 IPR 273 …. 12.38, 12.53, 12.54 Winning Appliances Pty Ltd v Dean Appliances Pty Ltd (1995) 32 IPR 43 …. 17.17 Wintle v RUC Cementation Mining Contractors Pty Ltd (No 3) [2013] FCCA 694 …. 4.11 Winton Shire Council v Lomas (2002) 56 IPR 72 …. 19.80, 19.85 WM Wrigley Jr Co v Cadbury Schweppes Pty Ltd (2005) 66 IPR 298 …. 12.73 WMC Ltd v Westgold Resources NL (1997) 39 IPR 319 …. 17.16 Wolanski’s Registered Design, Re (1953) 88 CLR 278 …. 10.16, 10.17 Wood v Raphael (1897) 14 RPC 496 …. 12.19 Woodbridge Foam Corp v AFCO Automotive Foam Components Pty Ltd (2002) 58 IPR 56 …. 14.32, 14.33 Woodhouse UK plc v Architectural Lighting Systems [2006] RPC 1 …. 10.26 Woodward v Hutchins [1977] 2 All ER 751 …. 4.19, 4.23 Woolgar v Chief Constable of Sussex Police [2000] 1 WLR 25 …. 4.19 Woolley v Dunford (1972) 3 SASR 243 …. 2.7 Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 51 IPR 149 …. 19.100, 19.101 Woolworths Ltd v BP plc (No 2) (2006) 70 IPR 25 …. 19.40, 19.63, 19.68, 19.71, 19.94 — v Olson (2004) 63 IPR 258 …. 8.20 — v — [2004] NSWCA 372 …. 4.36 Woo-Suk Hwang’s Application [2004] APO 24 …. 12.24, 12.28 World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd (2007) 71 IPR 307 …. 10.22, 10.28 Wrangler Apparel Corp v Classic Boots Australia Pty Ltd (1997) 38 IPR 19 …. 8.36 Wright v Gasweld Pty Ltd (1991) 22 NSWLR 317 …. 4.35, 4.36

X X v Y [1988] 2 All ER 648 …. 4.19

Y Yau’s Entertainment Pty Ltd v Asia Television Ltd (2002) 54 IPR 1 …. 20.30 Yorke v Lucas (1985) 158 CLR 661 …. 18.2 Young v Odeon Music House Pty Ltd (1976) 10 ALR 153 …. 8.62, 22.34 — v Wyllie (2010) 86 IPR 84 …. 8.20 Young and Nielsen v Rosenthal & Co (1884) 1 RPC 29 …. 14.33 Yumbulul v Reserve Bank of Australia Ltd (1991) 21 IPR 481 …. 1.25

Z Zeccola v Universal City Studios Inc (1982) 46 ALR 189 …. 6.19, 8.24 Zeus Chemical Products Pty Ltd v Jaybee Design & Marketing Pty Ltd (1998) 41 IPR 491 …. 4.12 Zhangzhou Renhe Moveable Travelling Lodge Manufacture Co Ltd v Habode IP Ltd [2007] FCA 1406 …. 14.34 Ziogas v Telstra Corp Ltd [2010] FWAFB 2664 …. 4.34 ZYX Music GmbH v King (1995) 31 IPR 207 …. 6.21, 6.31, 8.58

Statutes References are to paragraph numbers Commonwealth Aboriginal and Torres Strait Islander Heritage Act 1984 …. 1.25 Acts Interpretation Act 1901 …. 22.30 s 23 …. 22.30 s 25 …. 12.36 Administrative Decisions (Judicial Review) Act 1977 …. 2.25 ss 5–7 …. 2.25 Archives Act 1983 …. 11.17 Australian Bicentennial Authority Act 1980 …. 19.19 Australian Capital Territory (Self-Government) Act 1988 s 48A …. 2.22 Australian Consumer Law (Competition and Consumer Act 2010 Sch 2) …. 2.4, 2.15, 16.3, 16.29, 16.36, 16.37, 16.40, 18.2, 18.24, 19.103 Ch 3 …. 16.34 Ch 4 …. 16.34 Pt 2-2 …. 16.34 Pt 3-1 …. 16.29, 16.33–16.35 Pt 4-1 …. 16.34 Pt 5-2 …. 16.36, 16.37 Pt 5-2 Div 2 …. 16.34, 18.2 Pt 5-2 Div 3 …. 18.2 s 2 …. 16.30 s 2(1) …. 18.2 s 4 …. 16.32 s 18 …. 2.2, 6.13, 14.15, 15.41, 16.3, 16.29, 16.30, 16.33–16.35, 16.37–16.40, 17.1, 17.4, 17.19, 18.1, 18.5, 18.10, 18.17, 18.22,

18.25, 19.21, 19.91 s 19 …. 16.33 s 23 …. 22.67 s 23(2) …. 22.67, 22.70 s 23(4) …. 22.67 s 24 …. 22.69 s 25 …. 22.69 s 26(2) …. 22.70 s 27(1) …. 22.68 s 27(2) …. 22.68 s 29 …. 15.41, 16.29, 16.35, 17.4 s 33 …. 16.35 s 34 …. 16.35 s 151 …. 16.34 s 155 …. 16.35 s 156 …. 16.35 s 207 …. 16.35 s 208 …. 16.35 s 224 …. 16.34 s 226 …. 16.34 s 232 …. 2.13, 22.70 s 232(2) …. 16.37 s 236 …. 2.15, 16.34 s 236(2) …. 16.34 s 237 …. 16.34, 22.70 s 239 …. 22.70 s 243 …. 16.34 s 246 …. 16.34 s 247 …. 16.34 s 248 …. 16.34 s 250 …. 22.70 s 251 …. 16.33

s 290A …. 22.67 Australian Wine and Brandy Corporation Act 1980 …. 16.41, 19.92 Pt VIB …. 16.41 s 40RB …. 16.41 s 40ZC …. 16.41 Australian Wine and Brandy Corporation Amendment Act 2010 …. 16.41 Sch 1 …. 19.92 Bankruptcy Act 1966 s 138 …. 7.12 Broadcasting Services Act 1992 …. 6.49 Business Names Registration Act 2011 …. 18.20 Pt 7 …. 18.21 s 24(1) …. 18.21 s 25 …. 18.21 s 26 …. 18.21 Business Names Registration (Fees) Act 2011 …. 18.20 Business Names (Transitional and Consequential Provisions) Act 2011 …. 18.20 Circuit Layouts Act 1989 …. 1.5, 1.16, 2.5, 8.32, 9.19–9.21, 21.34, 22.97 s 5 …. 9.21 s 8 …. 9.21 s 9 …. 2.7, 9.22 s 10(a) …. 9.21 s 11 …. 9.20, 9.21 s 13 …. 9.23 s 17 …. 9.22 s 19 …. 9.23 s 20 …. 9.24 s 21 …. 9.24 s 22 …. 9.24

s 23 …. 9.24 s 24(1) …. 9.25 s 24(2) …. 9.25, 9.27 s 25 …. 9.24 s 27(2) …. 2.13, 2.15, 2.16 s 27(2)–(4) …. 9.26 s 27(3) …. 2.15, 2.16 ss 33–35 …. 2.4 s 40 …. 2.22 s 41 …. 2.22 s 42 …. 9.21 s 43 …. 2.22 s 44 …. 9.22 s 45(1) …. 1.28, 9.22 s 45(2) …. 9.22 s 45(3) …. 9.22 s 45(4) …. 9.22 s 46 …. 2.2 s 47 …. 2.22 Commonwealth Constitution …. 1.6, 1.7, 19.18 s 51(xviii) …. 1.5–1.7, 15.3, 19.18–19.20 s 51(xxix) …. 1.6, 16.35, 19.19 s 51(xxxi) …. 1.5, 1.7, 7.21 s 75 …. 2.19 s 109 …. 7.25 Competition and Consumer Act 2010 …. 1.21, 13.23, 13.27, 13.32, 16.3, 22.84, 22.85, 22.93 Pt IV …. 1.21, 4.36, 6.34, 7.20, 19.103, 22.85, 22.93, 22.97, 22.99, 22.100 Pt IV Div 1 …. 22.88 Pt VIA …. 16.34 Pt XI Div 5 …. 16.34

s 2 …. 22.84 s 4 …. 22.67, 22.90 s 4(2) …. 16.31 s 4(3) …. 16.32 s 4(4) …. 16.32 s 4D …. 22.85, 22.89 s 4E …. 22.93 s 4F …. 22.85 s 4G …. 22.85 s 4J …. 22.88 s 44ZZRO …. 22.88 s 44ZZRP …. 22.88 s 44ZZRS …. 22.88 s 45 …. 22.85, 22.89, 22.91, 22.93, 22.99 s 45(6) …. 22.89 s 45A …. 22.85 s 45B …. 22.99 s 45D …. 16.31 s 46 …. 7.20, 22.93, 22.95, 22.97, 22.99 s 46(1) …. 22.85 s 46(1)(a)–(c) …. 22.93 s 46(6) …. 22.99 s 46(7) …. 22.93 s 46A …. 22.97 s 47 …. 22.89–22.91, 22.93, 22.99, 22.101 s 47(2)–(5) …. 22.85 s 47(6) …. 22.85, 22.90 s 47(7) …. 22.85, 22.90 s 47(8)(a) …. 22.85 s 47(8)(b) …. 22.85 s 47(9)(a) …. 22.85 s 47(9)(b) …. 22.85

s 47(9)(c) …. 22.85 s 47(10) …. 22.85, 22.88, 22.90 s 48 …. 22.85, 22.92, 22.97 s 49 …. 22.99 s 50 …. 22.99 s 50(1) …. 22.85 s 51(2)(a) …. 4.36, 7.20 s 51(2)(b) …. 4.36 s 51(3) …. 1.21, 13.32, 22.84, 22.85, 22.91, 22.92, 22.97, 22.98 s 51(3)(a) …. 22.97 s 51(3)(a)(v) …. 7.20 s 51(3)(b) …. 22.97 s 51(3)(c) …. 22.97 s 51AD …. 22.64 s 75B(1) …. 16.34 s 76(1A)(aa) …. 22.100 s 76(1A)(b) …. 2.100 s 76(1B) …. 2.100 s 76C …. 22.89 s 80 …. 22.64 s 82 …. 22.64 s 86C …. 22.100 s 86D …. 22.100 s 86E …. 22.100 s 87 …. 22.64 s 88 …. 22.99 s 88(1) …. 22.99 s 88(1A) …. 22.99 s 88(8) …. 22.99 s 88(8A) …. 22.92 s 90(6) …. 22.99 s 90(7) …. 22.99

s 93 …. 22.99 s 96 …. 22.92 s 96A …. 22.92 s 97 …. 22.92 s 131 …. 16.29 ss 138–138B …. 2.23 s 138A …. 16.36 ss 138C–138E …. 2.23 s 150C …. 22.85 Sch 1 …. 22.85 Sch 2 …. 1.21, 16.3 see Australian Consumer Law Copyright Act 1905 …. 5.6 s 4 …. 6.18, 6.21 Copyright Act 1911 …. 1.7 Copyright Act 1912 …. 1.4, 5.6 Copyright Act 1968 …. 1.7, 1.9, 1.25, 2.4, 2.16, 2.18, 5.6, 6.1, 6.7, 6.8, 6.12, 6.18, 6.22, 6.24, 6.25, 6.48, 6.49, 6.58, 7.2, 7.10, 7.21, 7.24, 7.25, 8.1, 8.16, 8.28, 8.32, 9.3, 9.17, 9.19, 9.27, 10.19, 10.22, 10.30, 10.32, 11.12, 14.14, 20.15, 20.18, 21.28, 21.33, 22.23, 22.34, 22.36, 22.39–22.41, 22.48, 22.61, 22.79, 22.94, 22.102 Pt III …. 6.9 Pt III Div 5 …. 8.48 Pt IV …. 5.10, 5.11, 5.14, 6.7–6.9, 6.43, 6.48, 6.51, 6.52, 8.1, 8.19, 8.22, 8.35, 9.25, 21.30 Pt IVA …. 7.21, 8.43, 8.47 Pt IVA Div 3 …. 8.48 Pt IVA Div 4 …. 7.22 Pt IVA Div 5 …. 7.22 Pt V …. 8.58 Pt V Div 5 …. 2.18, 8.66 Pt V Div 7 …. 8.31, 8.65 Pt VAA …. 8.67

Pt VB …. 7.25 Pt VI …. 7.21 Pt VII Div 2 …. 7.24 Pt IX …. 5.6, 9.4, 9.9 Pt IX Div 2 …. 9.4 Pt IX Div 2A …. 9.4 Pt IX Div 3 …. 9.4 Pt IX Div 3A …. 9.4 Pt IX Div 4 …. 9.4 Pt IX Div 4A …. 9.4 Pt XI …. 5.6, 6.58 Pt XIA …. 1.10, 9.4, 9.10 Pt XIA Div 3 …. 2.18 s 7 …. 9.14 s 8 …. 5.4 s 8A …. 5.4 s 9 …. 9.14 s 9A …. 8.66 s 10 …. 7.6, 8.50, 8.63, 9.16, 9.27, 22.25, 22.36 s 10(1) …. 6.7, 6.8, 6.12, 6.15, 6.16, 6.18, 6.22, 6.25–6.27, 6.29, 6.45, 6.47, 6.49, 6.50, 7.7, 7.10, 7.11, 7.14, 7.15, 8.2, 8.11, 8.20, 8.30, 8.36, 8.37, 8.41, 8.43, 8.47, 8.52, 8.61, 8.67, 9.25 s 10(1)(c) …. 6.22 s 10(3)(c) …. 6.46 s 10(5) …. 8.3 s 10(6) …. 8.3 s 10AA …. 8.35 ss 10AB–10AC …. 8.37 s 10AD …. 8.36 s 10AD(1) …. 20.18 s 10AD(2) …. 8.36 s 12 …. 9.15

s 13(2) …. 8.26 s 14 …. 8.1, 8.6, 9.15 s 14(1) …. 8.23 s 15 …. 9.15 s 18 …. 9.16 s 20 …. 9.16 s 21 …. 6.19 s 21(1) …. 8.2 s 21(1A) …. 8.2 s 21(3) …. 8.2, 8.15, 10.30 s 21(5) …. 6.30, 8.9 s 22(1) …. 6.8, 6.13 s 22(2) …. 6.2, 6.13 s 22(3) …. 6.44, 7.8 s 22(3A) …. 7.8, 9.10, 9.12 s 22(4) …. 7.8 s 22(5) …. 7.8 s 22(6) …. 8.20, 8.30 s 22(6A) …. 8.20 s 23(1) …. 6.47 s 27(1)(a) …. 8.19, 8.49 s 27(1)(b) …. 8.19 s 28 …. 8.46 s 29 …. 6.57, 6.61, 7.10 s 29(1)(a) …. 6.8, 6.55 s 29(1)(b) …. 6.55 s 29(1)(c) …. 6.55 s 29(2) …. 6.55 s 29(3) …. 6.8, 6.56 s 29(4) …. 6.56 s 29(4)–(7) …. 6.61 s 29(5) …. 6.56, 8.34

s 29(6) …. 6.56 s 29(7) …. 6.56 s 29A …. 6.55, 6.58, 6.61 s 29A(1) …. 6.61 s 29A(2) …. 6.61 s 29A(3) …. 6.61 s 30 …. 7.12 s 30A …. 8.21 s 31 …. 6.57 s 31(1) …. 6.29, 7.11, 8.1 s 31(1)(a) …. 5.11 s 31(1)(a)(vi) …. 6.14 s 31(1)(a)(vii) …. 6.29, 6.30 s 31(1)(b) …. 5.11 s 31(1)(c) …. 5.11, 8.21 s 31(1)(d) …. 5.11, 8.21 s 31(3) …. 8.21 s 31(5) …. 8.21 s 32 …. 6.11, 6.32 s 32(1) …. 6.32, 6.53 s 32(2) …. 6.8, 6.32, 6.53 s 32(3) …. 6.53 s 32(4) …. 6.54 s 33 …. 9.15 s 33(2) …. 6.59, 8.53 s 33(3) …. 6.59 s 34 …. 9.15 s 35 …. 7.2 s 35(2) …. 7.2 s 35(3) …. 7.2 s 35(4) …. 7.2, 7.5 s 35(5) …. 7.2, 7.6

s 35(6) …. 7.2, 7.10 s 35(7) …. 7.5, 7.6 s 36(1) …. 2.7, 8.1, 8.26 s 36(1A) …. 8.29 s 37 …. 8.1, 8.31–8.34, 8.36, 9.25 s 37(2) …. 8.36 s 38 …. 8.1, 8.31–8.34, 8.36, 9.25 s 38(3) …. 8.31 s 39 …. 8.31 s 39(1) …. 8.1 s 39A …. 8.28 s 39B …. 8.30 s 40 …. 8.39, 8.46 s 40(2) …. 8.39 s 40(3) …. 8.39 s 40(4) …. 8.39 s 40(5) …. 8.39 s 40(6) …. 8.39 s 40(7) …. 8.39 s 41 …. 8.40 s 41A …. 8.42 s 42 …. 8.40 s 42(1) …. 8.40 s 42(2) …. 8.40 s 43(1) …. 8.41 s 43(2) …. 8.41 s 43A …. 8.30, 8.55 s 43B …. 8.3, 8.30, 8.55 s 43C …. 8.50 s 44A …. 8.34 s 44B …. 8.38 s 44BA …. 8.38

s 44BB …. 8.38 s 44C …. 8.36, 10.34, 20.18 s 44D …. 8.35, 20.18 s 44E …. 8.37, 20.18 s 44F …. 8.37, 20.18 s 45 …. 8.38, 8.49 s 46 …. 8.49, 8.49 s 47(3) …. 7.21 s 47AB …. 8.11 s 47B …. 8.3 s 47B(1) …. 8.54 s 47B(2) …. 8.54 s 47B(3) …. 8.54 s 47B(4) …. 8.54 s 47C …. 8.54 s 47D …. 8.11, 8.54 s 47E …. 8.54 s 47F …. 8.54 s 47H …. 8.54 s 47J …. 8.50 s 48A …. 8.48 s 49 …. 8.48 s 49(5A) …. 8.48 s 49(9) …. 8.48 s 50 …. 8.48 s 50(10) …. 8.48 s 51 …. 8.48 s 51AA …. 8.48 s 52 …. 8.48 ss 54–64 …. 7.21, 7.23 s 65 …. 8.52 s 66 …. 8.52

s 70 …. 8.52 s 70(3) …. 7.21 s 71 …. 8.15, 10.31 s 72 …. 7.12 s 72(1) …. 8.52 s 72(2) …. 8.52 s 73 …. 8.52 s 74 …. 10.33 ss 74–77 …. 10.19, 10.30, 10.31 s 74(1) …. 10.32 s 74(2) …. 10.33 s 75 …. 10.32, 10.35 s 76 …. 10.35 s 77 …. 6.28, 10.32, 10.36 s 77(1)(b) …. 10.31 s 77(1)(c) …. 10.31 s 77(2) …. 10.36 s 77(4) …. 10.36 s 77(5) …. 10.16 s 77A …. 8.16 s 80 …. 6.59 s 81 …. 6.59 s 84 …. 6.54 ss 85–88 …. 5.11, 8.1 s 85(1)(d) …. 8.21 s 88 …. 8.1 s 89 …. 6.44, 6.53 s 90 …. 6.47, 6.53 s 91 …. 6.48, 6.53 s 92 …. 6.51, 6.53 s 93 …. 6.59 s 94 …. 8.53

s 95 …. 9.5 s 95(1) …. 6.59 s 95(2) …. 6.59 s 96 …. 6.59 s 97(2) …. 7.8 s 97(3) …. 7.8 s 97(4) …. 7.8 s 97(6) …. 7.8 s 98(2) …. 7.8 s 98(3) …. 7.8 s 99 …. 7.8 s 100 …. 7.8 s 100A …. 8.39 s 100AG …. 2.4 s 101(1) …. 2.7, 8.1, 8.26 s 101(1A) …. 8.29, 8.30 s 102 …. 8.1, 8.31–8.34 s 102(2) …. 8.36 s 103 …. 8.1, 8.31, 8.33, 8.34 s 103(3) …. 8.31 s 103A …. 8.40 s 103AA …. 8.42 s 103B …. 8.40 s 103C …. 8.39, 8.46 s 103C(2) …. 8.39 s 104(a) …. 8.41 s 104(b) …. 8.41 s 104(c) …. 8.41 s 104B …. 8.28 s 104C …. 8.38 s 106 …. 8.49 s 107(3) …. 7.21

ss 108–109 …. 7.21 s 109A …. 8.50 s 110(1) …. 8.53 s 110(2) …. 8.53 s 110A …. 8.48 s 110AA …. 8.50 s 111 …. 8.50 s 111A …. 8.30, 8.55 s 111B …. 8.3, 8.30, 8.55 s 112 …. 8.38 s 112A …. 8.34, 20.18 s 112C …. 8.36, 20.18 s 112D …. 8.35, 20.18 s 112DA …. 8.37 s 112E …. 8.30 s 113 …. 6.43 s 113E …. 8.43 s 113F …. 8.47 s 113F(b) …. 8.47 s 113G …. 8.48 s 113L …. 8.48 s 113P …. 7.22 s 113Q …. 7.22 s 113R …. 7.22 s 115 …. 8.58, 8.61, 8.62 s 115(2) …. 2.13, 2.15, 2.16, 8.58–8.60, 8.62 s 115(3) …. 2.5, 2.15, 2.16, 8.60 s 115(4) …. 2.15, 8.60, 8.62, 10.28, 20.20 s 115(5)–(7) …. 8.60 s 115A …. 8.30, 8.59 s 115A(2) …. 8.59 s 116 …. 2.4, 2.14, 2.15, 8.58, 8.61, 8.62, 8.67

s 116(1A) …. 8.61 s 116(1B) …. 8.61 s 116(1C) …. 8.61 s 116(1D) …. 8.61 s 116(1E) …. 8.61 s 116AAA …. 7.8 ss 116AC–116AF …. 8.63 s 116AG …. 8.63 s 116AH …. 8.63 s 116AN …. 8.67 ss 116AN–116AP …. 8.67 ss 116AN–116CA …. 8.67 s 116AO …. 8.67 s 116AP …. 8.67 s 116AQ …. 8.67 s 116B …. 8.67 ss 116C–116CA …. 8.67 s 116D …. 8.67 s 116D(1) …. 2.13, 2.15, 2.16 s 116D(2) …. 2.15 s 119 …. 7.14, 22.25 s 119(a) …. 8.58 s 119(b) …. 2.4, 8.58 s 119(c) …. 2.4, 8.58 s 120 …. 8.58 s 121 …. 8.58 ss 122–123 …. 8.58 ss 122–124 …. 2.4 s 125 …. 8.58 ss 126–131 …. 8.58 s 126A …. 8.58 s 126B …. 8.58

s 130A …. 8.35 ss 130B–130C …. 8.37 s 131A …. 2.22 s 131B …. 2.22 s 131C …. 2.22 s 131D …. 2.22 ss 132AA–132AS …. 8.66 s 133A …. 2.26, 8.66 s 134 …. 2.2 s 135AOE(1) …. 2.13, 2.15, 2.16 s 135AOE(2) …. 2.15 s 135AOF …. 2.14 s 135AP …. 2.22 s 135AQ …. 2.22 s 135AR …. 2.22 s 135AS …. 2.22 s 135ATA …. 2.26 s 135AU …. 2.14 s 135ZM …. 22.80 s 154 …. 22.94 s 157 …. 22.94 s 157A …. 22.95 s 157B …. 22.95 s 161 …. 2.22 s 172 …. 2.18 s 173 …. 2.18 s 176 …. 7.10 ss 176–177 …. 7.10 s 176(2) …. 7.10 s 177 …. 7.10 s 178 …. 7.10 s 180 …. 6.59

ss 182B–183F …. 7.21 s 183 …. 7.25 s 183(1) …. 7.24 s 183(3) …. 7.24 s 183(4) …. 7.25 s 183(5) …. 7.25 s 183(11) …. 7.25 s 183A …. 7.25 ss 184–188 …. 6.53 ss 186–188A …. 6.59 s 189 …. 9.4 s 190 …. 9.3, 9.4, 9.5 s 191 …. 9.4 s 193 …. 9.5 s 194 …. 9.5 ss 195AA–195AB …. 9.5 ss 195AC–195AH …. 9.5 s 195AI …. 9.6 ss 195AJ–195AL …. 9.6 ss 195AM–195AN …. 9.4 s 195AN …. 7.13 s 195AN(3) …. 9.9 s 195AN(4) …. 9.4 ss 195AO–195AQ …. 9.7 s 195AR …. 9.5 s 195AS …. 9.6 s 195AT …. 9.6 ss 195AU–195AV …. 9.7 s 195AVA …. 9.7 s 195AW …. 9.9 ss 195AW–195AWA …. 9.9 s 195AWA …. 9.9

s 195AWB …. 9.9 ss 195AZ–195AZA …. 9.7 s 195AZA(1) …. 2.13, 2.15 s 195AZA(1)(b) …. 2.15, 9.8 s 195AZA(2)(a) …. 2.15 s 195AZA(3) …. 2.3 s 195AZGG …. 9.7 s 195AZGH(1) …. 2.22 s 195AZGH(3) …. 2.22 s 195AZGH(4) …. 2.22 s 195AZGH(5) …. 2.22 s 195AZH …. 9.5 ss 195AZI–195AZL …. 9.4 ss 195AZM–195AZO …. 9.4 s 196 …. 22.61 s 196(1) …. 1.28, 5.11, 7.11, 22.36 s 196(2) …. 5.13, 7.11, 7.12, 22.39, 22.41 s 196(2)(c) …. 7.11 s 196(3) …. 7.2, 7.12, 22.37 s 196(4) …. 7.15, 22.48 s 197 …. 5.13, 7.11, 22.38 s 197(1) …. 7.12, 22.36, 22.38, 22.39 s 197(2) …. 7.13 s 197(3) …. 7.15, 22.48 s 198 …. 7.13 s 198A …. 20.18 s 199 …. 8.19, 8.49 s 200(1) …. 8.46 s 200(1A) …. 8.46 s 200AAA …. 8.46 s 200AB …. 8.46, 8.48 s 200AB(4) …. 8.43

s 202 …. 2.2, 8.64 ss 202–202A …. 20.21 s 202(1) …. 8.64 s 202(2) …. 8.64 s 203 …. 2.22 ss 203A–203H …. 2.18 s 224 …. 6.51 s 248A(1) …. 9.4, 9.11 s 248A(2) …. 9.11 s 248CA …. 9.10 ss 248G–248J …. 9.10 s 248J(2) …. 2.13, 2.15 s 248J(3) …. 2.15 s 248K …. 2.22 s 248L …. 2.22 s 248M …. 2.22 s 248MA …. 2.22 s 248R(1) …. 2.26 s 248T …. 2.14 s 248U …. 9.11 s 248V …. 9.11 Copyright Act 1976 s 107 …. 8.38 Copyright Amendment Act 1980 …. 8.28, 8.34 Copyright Amendment Act 1989 …. 1.4, 6.18, 7.5, 7.11, 7.22, 8.15–8.17, 8.50, 9.10, 10.30–10.32, 21.30 Copyright Amendment Act 2006 …. 5.15, 7.21, 8.38, 8.42, 8.50, 8.66, 8.67, 21.37 Copyright Amendment Act (No 1) 1998 …. 8.36, 20.18 Copyright Amendment Act (No 2) 1998 …. 8.35 Copyright Amendment (Computer Programs) Act 1999 …. 8.11, 8.54 Copyright Amendment (Digital Agenda) Act 2000 …. 5.8, 21.27

s 3 …. 1.33 Copyright Amendment (Disability Access and Other Measures) Act 2017 …. 5.4, 5.15, 6.55, 6.58, 6.61, 7.22, 8.43, 8.51 Copyright Amendment (Film Directors’ Rights) Act 2005 …. 7.8 Copyright Amendment (Moral Rights) Act 2000 …. 9.3 Copyright Amendment (Online Infringement) Act 2015 …. 2.6, 8.59 Copyright Amendment (Parallel Importation) Act 2003 …. 8.37, 8.58 Sch 4 …. 2.3, 8.58 Copyright (International Protection) Regulations 1969 …. 6.53 reg 4A …. 9.11 reg 4B …. 9.11 Copyright Regulations 1969 Pt 3A …. 8.63 reg 17 …. 10.36 reg 25(4) …. 7.25 Copyright (World Trade Organization Amendments) Act 1994 …. 1.49, 5.11, 8.21, 9.10, 9.11 Corporations Act 2001 Pt 5.7B Div 2 …. 22.74 Pt 9.4AAA …. 4.34 s 45A …. 22.7 s 79 …. 4.16 s 182 …. 4.33 s 183 …. 4.16, 4.33 ss 183–184 …. 3.6 s 184 …. 4.33 s 254A(3) …. 22.8 s 1317E …. 4.33 s 1317G …. 4.33 s 1317H …. 4.33 Crimes Act 1914 s 4AA …. 20.23

s 4B(3) …. 20.23 s 70 …. 3.6 s 79 …. 3.6 Crimes (Currency) Act 1981 s 19(1) …. 10.10 Criminal Code Act 1995 Ch 2 …. 8.66 Pt 10.7 …. 3.12 Customs Act 1901 s 68 …. 20.22 Cybercrime Act 2001 …. 3.12 Designs Act 1906 …. 10.1, 10.25, 10.30–10.32, 21.13, 21.57 s 4(1) …. 10.30 s 16(1) …. 10.22 s 17(1) …. 10.23 s 27A …. 10.13 s 48(3) …. 21.57 Designs Act 2003 …. 1.13, 8.15, 8.16, 10.1, 10.4, 10.5, 10.7, 10.8, 10.16, 10.17, 10.30, 10.32, 11.12, 19.10, 22.36, 22.40, 22.62 Ch 7 …. 10.29 Ch 11 Pt 3 …. 2.18 s 5 …. 2.21, 10.4, 10.10, 10.15, 10.19, 10.22, 10.29, 22.40 s 5A …. 10.8 s 6(1) …. 10.16 s 6(2) …. 10.16, 10.19 s 6(3) …. 10.16 s 6(4) …. 10.16 s 7 …. 10.4, 10.15, 10.17 s 7(2) …. 10.8, 10.18, 10.19 s 8 …. 10.15 s 10(1) …. 10.24 s 10(2) …. 1.28, 10.25, 22.36

s 11 …. 10.25, 22.37, 22.41, 22.62 s 11(1) …. 22.40 s 11(3) …. 22.40 s 12 …. 22.42, 22.45 s 14 …. 10.25 s 13(1) …. 10.9 s 13(3) …. 10.9 s 13(4) …. 10.9 s 14(2) …. 22.62 s 14(4) …. 22.62 s 15 …. 10.11, 10.14 s 15(1) …. 10.21 s 15(2) …. 10.22 s 15(2)(a) …. 10.22 s 16 …. 10.22, 10.23 s 16(2) …. 10.22 s 16(3) …. 10.22 s 17 …. 10.22 s 17(1) …. 10.21 s 17(3) …. 10.26 s 18 …. 10.30 s 18(2) …. 10.22, 10.30 s 18(3) …. 10.22 s 19 …. 10.23, 10.26 s 19(1) …. 10.23, 10.26 s 19(2) …. 10.26 s 19(2)(a) …. 10.23, 10.26 s 19(2)(b) …. 10.23, 10.26 s 19(2)(c) …. 10.23, 10.26 s 19(2)(d) …. 10.23, 10.26 s 19(3) …. 10.23, 10.26 s 19(4) …. 10.17, 10.23, 10.26

ss 20–61 …. 10.8 s 21 …. 10.9 s 21(2) …. 10.8, 10.10 s 21(3) …. 10.9 s 22 …. 10.8 s 23(1) …. 10.10 s 25 …. 10.10 s 26 …. 10.8 s 27 …. 10.22 s 27(1)(a) …. 10.8 s 27(1)(b) …. 10.8 s 28(3) …. 10.10 s 29 …. 10.9, 22.62 s 30 …. 22.36, 22.62 s 33(1)(a) …. 10.10 s 35 …. 10.10 s 36 …. 10.10 s 38 …. 10.10 ss 39–40 …. 10.10 s 40(2)(a) …. 10.8 s 41 …. 10.10 s 43(1) …. 10.10 s 43(1)(c) …. 9.27 s 45 …. 10.10 ss 46–47 …. 10.13 s 48(3) …. 10.22 ss 51–52 …. 10.9 ss 57–60 …. 10.10 s 60 …. 10.10 s 63(1) …. 10.11 s 63(2)–(4) …. 10.11 s 65 …. 10.11

s 66(3) …. 10.11 s 67 …. 10.11 s 68 …. 10.11 s 68(6) …. 10.11 s 71(1) …. 10.26 s 71(1)(a) …. 10.26 s 71(2) …. 10.27 s 72 …. 10.20, 10.27 s 73(2) …. 2.21, 10.28 s 73(3) …. 10.11, 10.26, 10.28 s 74 …. 10.12, 10.28, 10.34 s 74(2) …. 10.34 s 75(1) …. 10.28 s 75(1)(a) …. 2.13 s 75(1)(b) …. 2.15, 2.16 s 75(2) …. 2.15, 2.16 s 75(2)(a) …. 10.28 s 75(2)(b) …. 2.5, 10.28 s 75(3) …. 2.15, 10.28 s 75(4) …. 10.28 s 76 …. 10.28 s 77 …. 10.31 ss 77–78 …. 10.28 ss 77–81 …. 2.2, 20.21 s 77(1) …. 2.21 s 77(5) …. 10.36 s 79 …. 10.28 s 83(2) …. 2.25 s 83(3) …. 2.26 s 83A(2) …. 2.25 s 83A(3) …. 2.26 s 84 …. 10.29

s 85 …. 2.21 s 86 …. 2.21 s 87 …. 2.21 s 87(2) …. 2.25 s 90 …. 10.25 s 90(2) …. 10.25 s 90(3) …. 10.25 s 92 …. 10.25 s 93 …. 10.12, 10.12, 10.27 s 93(3) …. 10.12, 10.27 s 93(3)(b) …. 10.9 s 96 …. 10.25 s 98 …. 10.25 s 106 …. 10.25 s 107 …. 10.25 s 111 …. 10.12 s 111(2)(e) …. 22.45 s 112 …. 10.12 s 114 …. 10.12 s 114(1) …. 10.12 s 114(2) …. 10.12 s 114(3) …. 22.45 s 115 …. 10.12 s 117 …. 10.12 s 118 …. 10.12 s 118(1) …. 22.45 s 118(3A) …. 10.12 s 119 …. 10.12 s 119(1) …. 22.45 s 119(2) …. 10.12 s 136 …. 2.25 Designs (Consequential Amendments) Act 2003 …. 10.30, 10.31,

10.37 s 77(1A) …. 10.36 s 77A …. 10.37 Designs Regulations 2004 …. 10.22 reg 1.05 …. 10.8 reg 2.01 …. 10.22 reg 4.06 …. 10.10 reg 9.01(b) …. 22.45 reg 9.03 …. 22.45 Environment Protection and Biodiversity Conservation Act 1999 …. 1.25 Environment Protection and Biodiversity Conservation Amendment Regulations 2005 (No 2) …. 1.25 Evidence Act 1995 …. 4.22 Pt 3.2 …. 18.7 Pt 3.10 Div 1C …. 4.22 s 80(a) …. 18.7 s 130 …. 4.22 Evidence Amendment (Journalists’ Privilege) Act 2011 …. 4.22 Fair Work (Registered Organisations) Act 2009 Ch 11 Pt 4A …. 4.34 Fair Work (Registered Organisations) Amendment Act 2016 Sch 2 cll 230A–231 …. 4.34 Federal Circuit Court Act 1999 s 39 …. 2.23 Federal Court of Australia Act 1976 s 32AB …. 2.23 Freedom of Information Act 1982 …. 4.38, 19.38 s 43 …. 4.38 s 45 …. 4.38 s 45(2) …. 4.38 s 47 …. 4.38

ss 47F–47G …. 4.38 s 91 …. 4.22 Freedom of Information Amendment (Reform) Act 2010 …. 4.38 Gene Technology Act 2000 …. 12.31 s 3 …. 12.31 Intellectual Property Laws Amendment Act 1998 …. 14.28 Sch 1 …. 11.56 Intellectual Property Laws Amendment Act 2003 …. 11.9, 11.43 Intellectual Property Laws Amendment Act 2006 …. 11.9, 14.27, 14.28, 14.33, 19.6 Sch 6 …. 14.26, 14.27 Sch 7 …. 14.28 Sch 7 item 3 …. 11.57 Sch 8 s 3 …. 13.29 Intellectual Property Laws Amendment Act 2015 …. 11.9, 11.17, 19.6, 21.20 Sch 1 …. 11.17, 13.33 Sch 2 …. 11.17 Sch 3 …. 11.17 Sch 4 …. 11.17 Sch 5 …. 11.17 Intellectual Property Laws Amendment (Raising the Bar) Act 2012 …. 2.9, 2.18, 11.9, 11.11, 11.12, 11.24, 11.27, 11.28, 11.30, 11.32, 11.33, 11.35, 11.37–11.44, 11.48–11.54, 12.34–12.36, 12.47, 12.52, 12.58, 12.61, 12.62, 12.66, 13.3, 13.4, 14.28, 19.6, 19.41, 19.42, 19.52, 19.53, 20.20, 20.22, 20.23, 21.68 Sch 1 item 2 …. 12.51 Sch 1 item 6 …. 12.58 Sch 1 item 7 …. 12.62 Sch 1 item 8 …. 12.62 Sch 1 item 9 …. 12.62, 12.68 Sch 1 item 10 …. 12.71 Sch 1 item 55 sub-item 9 …. 11.43

Sch 2 …. 14.4, 14.28 Sch 3 …. 11.46 Sch 6 …. 2.3, 14.27, 15.43 Sch 6 item 3 …. 12.43 Sch 6 item 29 …. 12.61 Sch 6 item 31 …. 13.4 Sch 6 item 32 …. 12.44 Sch 6 item 73 …. 14.29 Sch 6 item 75 …. 13.4 Sch 6 item 113 …. 19.41 Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 …. 11.46, 11.51 reg 10.2C(4) …. 11.48 Judiciary Act 1903 s 39(2) …. 2.22 s 39B …. 2.25 s 67C(c) …. 2.22 Medicare Australia Act 1973 s 41C …. 19.91 Migration Act 1958 …. 4.38 s 5(1) …. 4.38 Native Title Act 1993 …. 1.25 Nuclear Non-Proliferation (Safeguards) Act 1987 …. 11.36 Olympic Insignia Protection Act 1987 …. 19.91 Patent Reform Act 2005 …. 21.17 Patent Reform Act 2007 …. 21.17 Patent Reform Act 2009 …. 21.17 Patents Act 1903 …. 11.5 Patents Act 1952 …. 11.5, 11.18, 11.36, 12.3, 12.20, 12.36, 12.42, 12.47, 12.49, 12.52, 12.54, 12.59, 12.72, 13.6, 13.31, 13.34, 14.2, 14.3, 14.6, 14.26, 22.24, 22.27 s 6 …. 13.2, 13.22

s 34(1)(a) …. 13.2 s 34(1)(fa) …. 13.6, 22.27 s 40 …. 14.21 s 69 …. 13.1 s 100(1)(k) …. 12.59 s 101(1) …. 12.54 Patents Act 1990 …. 1.4, 1.12, 1.24, 2.3, 2.7, 7.10, 11.8, 11.9, 11.11, 11.12, 11.16, 11.17, 11.21, 11.24, 11.32, 11.33, 11.39, 11.40, 11.43, 11.57, 11.59, 12.3, 12.11, 12.16, 12.17, 12.19, 12.20, 12.22, 12.26, 12.27, 12.37, 12.39, 12.40, 12.42, 12.47, 12.51, 12.52, 12.54, 12.59, 12.62, 12.66, 12.72, 13.1, 13.2, 13.6, 13.23, 13.26, 13.31–13.34, 13.36, 14.1, 14.4, 14.6–14.8, 14.10, 14.14, 14.26, 19.64, 22.3, 22.23, 22.24, 22.27, 22.39, 22.40, 22.43–22.45, 22.54, 22.101 Ch 6 Pt 3 …. 14.28 Ch 6A …. 11.28 Ch 8 …. 11.15, 11.32, 11.35 Ch 9 …. 11.40 Ch 15 …. 11.36 Ch 18 …. 2.18 Ch 19 …. 13.19 Ch 20 …. 11.33 Ch 20 Pt 2 …. 2.18 Ch 23 …. 11.9 s 3 …. 13.20 s 6 …. 13.22 s 6(c) …. 11.49 s 7 …. 11.39, 12.42 s 7(1) …. 12.26, 12.37, 12.38, 12.41 s 7(2) …. 12.20, 12.49–12.52 s 7(3) …. 12.52 s 7(3)(a) …. 12.52 s 7(3)(b) …. 12.51

s 7(4) …. 12.55, 12.56 s 7(5) …. 12.55, 12.56 s 7(6) …. 12.56 s 7A …. 11.39, 12.58 s 9 …. 11.14, 12.59, 12.61, 13.14 s 9(1) …. 12.60 s 13 …. 14.14, 15.15, 22.13, 22.27 s 13(1) …. 2.7, 13.1, 14.3, 22.27 s 13(2) …. 1.28, 13.1, 22.27, 22.36 s 13(3) …. 14.1 s 14 …. 22.55 s 14(1) …. 13.18, 22.37 s 14(2) …. 13.18, 22.39 s 15 …. 11.39, 12.72, 13.2, 13.4, 13.16, 22.27 s 15(1) …. 11.25, 22.58 s 15(1)(b) …. 13.6 s 16 …. 13.17, 22.56, 22.57, 22.60 s 16(1) …. 22.56, 22.62 s 16(1)(a) …. 13.16, 22.60 s 16(1)(b) …. 13.16, 22.60 s 16(1)(c) …. 13.16, 13.22, 22.56, 22.60 s 17 …. 13.2, 13.17, 22.56, 22.60, 22.62 s 17(1) …. 13.17, 22.57 s 17(1)(a) …. 13.17 s 17(1)(b) …. 13.17 s 17(1)(c) …. 13.17 s 17(3) …. 13.17, 22.57 s 17(4) …. 13.17 s 18 …. 12.1, 12.2, 12.19, 12.21, 12.34, 12.58, 12.62 s 18(1) …. 11.16, 12.1, 12.2, 12.19, 12.20 s 18(1)(a) …. 11.39, 12.1, 12.2, 12.19, 12.20 s 18(1)(b) …. 11.39, 12.19, 12.22, 12.36

s 18(1)(b)(i) …. 12.19, 12.35 s 18(1)(b)(ii) …. 12.19, 12.20, 12.47, 12.55 s 18(1)(c) …. 11.16, 12.57 s 18(1)(d) …. 12.59–12.61 s 18(1A) …. 11.16, 11.21, 12.1, 12.19 s 18(1A)(a) …. 11.50, 11.52, 12.3 s 18(1A)(b) …. 11.50, 12.36 s 18(1A)(b)(i) …. 12.35 s 18(1A)(c) …. 11.16, 11.52, 12.57 s 18(1A)(d) …. 12.59, 12.61 s 18(2) …. 11.16, 11.39, 11.40, 11.45, 11.50–11.52, 12.1, 12.24, 12.28, 12.34 s 18(3) …. 11.16, 11.50–11.52, 12.1, 12.27 s 18(4) …. 12.27 s 19 …. 14.31 s 20 …. 11.41, 14.41 s 22A …. 13.4 s 22A(a) …. 13.4 s 22A(b) …. 13.4 s 23 …. 12.43 ss 23–24 …. 12.52 s 24 …. 11.14, 12.43, 14.27, 14.32 s 24(1) …. 12.43 s 24(1)(a) …. 12.44, 14.26 s 24(1)(b) …. 12.43 s 25 …. 11.29 s 27 …. 11.45 s 29 …. 11.32, 11.39, 13.16 s 29(1) …. 11.25, 11.27, 11.48 s 29(2) …. 11.48 s 29(2)–(4) …. 11.27 s 29A …. 11.32

s 29B …. 11.32, 11.39, 11.48 s 30 …. 11.32 s 31 …. 11.25, 13.16 s 32 …. 12.72, 22.57, 22.62 ss 32–36 …. 12.72 ss 33–36 …. 12.72 ss 34–36 …. 11.54 s 36 …. 13.2 s 38 …. 11.27, 11.30 s 38(1) …. 12.69, 12.71 s 38(1A) …. 11.32 s 40 …. 11.39, 11.50, 12.42, 12.62, 12.63, 12.70 s 40(1) …. 11.27, 12.63 s 40(2) …. 11.40, 11.44, 11.51, 11.52, 12.49, 12.62, 12.63 s 40(2)–(4) …. 11.27, 11.39, 11.50 s 40(2)(a) …. 11.27, 12.63 s 40(2)(aa) …. 11.27, 12.63 s 40(3) …. 11.40, 11.43, 11.51, 11.52, 12.62, 12.65–12.69 s 40(4) …. 11.39 s 41 …. 12.64 ss 41–42 …. 12.64 s 43 …. 11.30, 12.63, 12.69, 12.71 s 43(2) …. 11.30 s 43(2)(a) …. 12.71 s 43(2A) …. 12.71 s 43(3) …. 12.63 s 43(5) …. 11.32 s 43(6) …. 11.32 s 43A …. 11.37 s 44 …. 12.72 s 44(1) …. 11.38 s 44(2) …. 11.38

s 44(2)–(4) …. 11.38 s 45 …. 11.39, 12.47 s 45(1) …. 12.35, 12.62 s 45(1)(a) …. 11.39 s 45(1)(b) …. 11.39, 12.58 s 45(1)(c) …. 11.39 s 45(1)(c)(ii) …. 12.47 s 45(1)(d) …. 11.39 s 45(1A) …. 11.32, 11.39, 12.36 s 45(3) …. 11.42 s 45(3)–(5) …. 11.42, 12.35 s 46 …. 11.38 ss 46–48 …. 11.39 s 47 …. 11.38, 11.39 s 48 …. 11.38, 11.39 s 49 …. 11.44 s 49(1) …. 11.44, 12.35 s 49(1)(a) …. 12.47 s 49(3) …. 11.44 s 49(4) …. 11.44 s 49A …. 11.44 s 49A(2) …. 11.44 s 49A(3) …. 11.44 s 49A(4) …. 11.44 s 50 …. 11.16, 11.39, 12.18, 12.26 s 50(1)(a) …. 12.24 s 50(1)(b) …. 12.18 s 50A …. 11.44 s 52(1) …. 11.49 s 52(2) …. 11.49 s 53 …. 11.32, 11.32 ss 54–55 …. 11.35

s 55(1) …. 11.36 s 56A …. 11.32, 11.35 s 57 …. 11.32, 11.35, 14.1, 22.27, 22.26 s 57(1) …. 11.43, 22.27 s 57(3) …. 11.35, 14.1, 22.27 s 59 …. 2.4, 11.45 s 59(a) …. 12.72 s 59(b) …. 12.35, 12.47, 12.58, 12.59 s 59(c) …. 12.62 s 60 …. 11.45 ss 61–62 …. 11.54 s 62(1) …. 11.49 s 62(2) …. 11.49 s 63 …. 11.25 s 64(2) …. 11.27, 11.39 s 65 …. 11.30, 11.55 s 67 …. 11.30, 11.55 s 68 …. 11.30, 11.60 s 70 …. 11.56, 11.58, 11.59 ss 70–77 …. 14.28 ss 70–79A …. 11.56–11.57 s 70(2)(b) …. 11.56 s 70(3) …. 11.56 s 70(4) …. 11.56 s 70(5) …. 11.56 s 71(2) …. 11.56 s 72 …. 11.56 s 75 …. 11.56 s 76A …. 11.58 s 77 …. 11.56 s 78 …. 11.57, 14.28 s 79B …. 11.28

ss 79B–79C …. 11.48 s 79C …. 11.28 s 80 …. 11.48 ss 80–82 …. 11.29 s 82 …. 11.61 s 83(1) …. 11.29 s 85 …. 11.29 ss 88–93 …. 11.32 s 94 …. 11.48 ss 94–96 …. 11.32 s 96 …. 12.62 ss 96A–101 …. 11.40 s 97 …. 12.62 s 97(1)–(2) …. 11.40 s 97(2)–(3) …. 11.40 s 98 …. 11.40 s 98(1)(b) …. 12.35, 12.47 s 98(2) …. 12.36, 12.52 s 100(1)(e) …. 12.47 s 101 …. 11.61, 12.18 s 101A …. 11.50, 12.55, 12.72 s 101B …. 11.16, 11.50 s 101B(2)–(7) …. 11.50 s 101B(2)(a) …. 11.50 s 101B(2)(b) …. 11.50, 12.35, 12.55 s 101B(2)(c) …. 11.50 s 101B(2)(d) …. 11.50, 12.24 s 101B(2)(f) …. 11.50 s 101B(2)(g) …. 11.50 s 101B(2)(h) …. 11.50 s 101B(2)(i) …. 11.50 s 101B(3) …. 12.36, 12.55

s 101B(4) …. 12.18 s 101D …. 11.50 s 101E …. 11.50 s 101EA …. 11.50 s 101F …. 11.50 s 101F(1) …. 11.50 ss 101G–101L …. 11.52 s 101G(3) …. 11.52 s 101G(3)(a) …. 12.35 s 101G(3)(b) …. 12.55 s 101G(5) …. 12.36, 12.55 s 101J …. 11.61 s 101M …. 11.51 s 101M(a) …. 12.72 s 101M(b) …. 12.35, 12.55 s 101N(3) …. 11.51 s 101N(4) …. 11.51 s 102 …. 11.30, 12.18 s 102(1) …. 11.43 s 102(2C) …. 11.42, 11.43, 11.50, 12.35 s 102(3) …. 11.43 s 103 …. 22.24 s 104 …. 11.43 ss 104–107 …. 11.43 s 105 …. 11.30, 11.43 s 105(1A) …. 11.46 s 106 …. 11.43 s 107 …. 11.43 s 112 …. 11.43 s 112A …. 11.46 s 113 …. 11.54, 22.36, 22.44, 22.55 s 114 …. 11.30, 11.43, 22.45

s 114(1) …. 22.44 s 114(2) …. 22.44 s 115 …. 14.33 s 117 …. 14.12, 14.13, 22.44 s 117(1) …. 14.12, 17.13, 17.27 s 117(2) …. 14.12, 17.13 s 117(2)(a) …. 14.12, 14.13 s 117(2)(b) …. 14.12, 14.13 s 117(2)(c) …. 14.12, 14.13 s 118 …. 14.24, 22.44 s 119 …. 11.9, 12.59, 14.26, 14.27 s 119(1) …. 14.27 s 119(2) …. 14.26 s 119(3) …. 14.26 s 119(3)(a) …. 14.26 s 119(3)(b) …. 14.26 s 119(4) …. 14.27 s 119A …. 11.13, 11.57, 14.28 s 119A(1)(a) …. 14.28 s 119A(1)(b) …. 14.28 s 119A(2) …. 11.57, 14.28 s 119A(3) …. 11.57, 14.28 s 119B …. 11.12, 14.28 s 119C …. 11.12, 14.4 s 120 …. 2.21, 13.22, 22.24, 22.39 s 120(1) …. 14.30, 22.24 s 120(1A) …. 11.50, 14.1 s 120(2) …. 14.30 s 121 …. 11.61, 12.55, 14.1, 14.31 s 121A …. 14.16 s 122 …. 15.41 s 122(1) …. 2.13, 2.15, 2.16, 14.33

s 122(1A) …. 2.15, 11.9, 14.33, 20.20 s 123 …. 2.5, 14.1 s 123(1) …. 2.15, 2.16, 14.33 s 123(2) …. 14.33 ss 125–127 …. 14.28 s 125(1) …. 14.29 s 125(2)(a)–(b) …. 14.29 s 125(2)(c) …. 14.29 s 125(3) …. 14.29 s 126(1)(a)(i) …. 14.29 s 126(1)(a)(ii) …. 14.29 s 126(1)(a)(iii) …. 14.29 s 126(1)(b) …. 14.29 s 126(2) …. 14.29 s 127 …. 14.29 s 128 …. 14.34 ss 128–132 …. 2.2, 20.21 s 128(1) …. 2.21, 14.34 s 129 …. 14.34 s 129A(1)–(2) …. 14.34 s 129A(3) …. 14.34 s 130 …. 14.34 s 131 …. 14.34 s 132 …. 14.34 s 133 …. 13.26, 13.27 s 133(1A) …. 13.27 s 133(2) …. 13.29 s 133(2)(a)(i) …. 13.28 s 133(2)(a)(ii) …. 13.28 s 133(2)(a)(iii) …. 13.28 s 133(2)(b) …. 13.29, 13.32 s 133(3) …. 13.27

s 133(3B) …. 13.30 s 134 …. 11.61, 13.26, 13.31 s 135 …. 13.26, 13.29, 13.32 s 135(1)(a) …. 13.28 s 135(1)(b) …. 13.28 s 135(2) …. 13.28 s 136 …. 13.26 s 136A …. 13.26, 13.29 ss 136B–136M …. 13.33, 21.20 s 137 …. 11.61 s 138 …. 11.61, 12.55 s 138(1A) …. 14.34 s 138(3) …. 11.61, 14.31 s 138(3)(a) …. 12.72, 13.2, 13.4 s 138(3)(b) …. 12.35, 12.47, 12.58 s 138(3)(d)–(e) …. 12.73 s 138(3)(f) …. 12.62 s 138(4) …. 13.4 s 139 …. 22.24 s 141 …. 11.32, 11.46 s 142 …. 11.32, 11.38, 11.53 s 142(2)(c) …. 11.44 s 143 …. 14.25 s 143A …. 14.25 s 144 …. 13.23 ss 144–146 …. 22.101 s 144(1) …. 22.101 s 145 …. 22.30 s 145(1) …. 13.22 s 145(2) …. 13.22 s 146(d) …. 22.101 ss 147–153 …. 11.36

s 152(4) …. 2.18 s 154(2) …. 2.25 s 154(3) …. 2.26 s 156 …. 2.21 s 157 …. 2.21 s 158 …. 2.21 s 158(2) …. 2.25 s 160A …. 11.17 s 161 …. 13.34 s 162 …. 13.34 s 163 …. 11.17, 13.34, 14.23 s 163(3) …. 13.34 s 163A …. 11.17 s 164 …. 11.17 s 165 …. 11.17, 14.23 s 165(2) …. 13.34 s 165A …. 11.17, 13.34 s 166 …. 11.17 s 167 …. 11.17 s 168 …. 13.34 s 169 …. 11.17 s 171 …. 13.34 s 171(4) …. 13.34 s 172 …. 13.34 s 183(2) …. 11.33 s 183(3)(a) …. 13.4 s 187 …. 13.19, 13.22, 22.24 s 187(1) …. 22.43 s 187(2) …. 11.49, 22.43 s 188 …. 13.19 s 189 …. 13.20, 22.42, 22.44 s 189(1) …. 13.19, 22.45

s 189(2) …. 13.19 s 189(2A) …. 13.20 s 189(3) …. 13.18, 13.19, 22.42 s 189(4) …. 13.20 s 190 …. 13.19 s 190(2) …. 13.19 s 191 …. 2.18 s 191A …. 11.54 s 191A(1) …. 13.3 s 191A(1)(c) …. 11.50 s 191A(2)–(6) …. 13.3 s 192 …. 2.4 s 195 …. 13.22 s 195(1) …. 13.19, 22.43, 22.44 s 195(5) …. 13.20 s 196 …. 13.19, 13.22 s 196(1) …. 22.43 s 196(1)(b)(ii) …. 13.18 s 196(2) …. 13.20, 22.43 s 197AA …. 11.32 s 198(9)–(11) …. 11.33 s 200(1) …. 11.33 s 200(2) …. 11.33 s 201 …. 11.33 s 202 …. 11.33 s 210 …. 11.46 s 210A …. 11.46 s 215 …. 11.54 s 223 …. 11.32, 11.53, 14.25 s 223(7) …. 11.53 s 223(8) …. 11.53 s 223(10) …. 14.25

s 224 …. 2.25, 11.46, 13.17 s 233(4) …. 11.9 s 273(b)(1) …. 12.11 Sch 1 …. 2.21, 11.13, 11.16, 11.56, 12.3, 12.19, 12.20, 12.36, 12.52, 13.1, 13.19, 13.20, 13.22, 13.34, 14.1, 14.3, 14.8, 14.13, 14.24, 19.64, 22.13, 22.24, 22.39, 22.42 Sch 2 …. 11.12, 11.13 Sch 3 …. 11.13 Sch 4 …. 11.13 Sch 5 …. 11.13 Schs 5–10 …. 11.9 Sch 6 …. 11.14 Patents Amendment Act 1979 …. 11.18 Patents Amendment Act 2001 …. 2.3, 11.7, 11.9, 11.42, 12.36, 12.38, 12.47 Patents Amendment (Innovation Patents) Act 2000 …. 11.20 Sch 2 item 1 …. 11.20 Sch 2 item 2(1) …. 11.20 Sch 2 items 2(2)–(6) …. 11.20 Patents Amendment Regulations 2004 (No 3) …. 11.9 Patents Regulations 1991 …. 11.9, 11.15, 11.40 Ch 2 …. 11.51 Ch 5 …. 11.46, 11.51 Ch 8 …. 11.32, 11.35 Ch 10 …. 11.43 Ch 20A …. 11.33 reg 1.4 …. 11.32 reg 1.6 …. 12.61 reg 2.2 …. 12.43, 12.52 reg 2.2(1A) …. 12.44 reg 2.2A …. 12.43 reg 2.2B …. 12.43

reg 2.2C …. 12.43, 12.44 reg 2.2D …. 12.43 reg 2.3(2) …. 12.43 reg 2.4 …. 11.29 reg 3.1 …. 11.27 reg 3.1(2) …. 13.3 reg 3.1A …. 11.25, 11.32 regs 3.2A–3.2B …. 11.27 reg 3.2AB …. 11.32 reg 3.2B …. 11.32, 11.49 reg 3.2C …. 11.27, 11.32 regs 3.3–3.4 …. 11.27 reg 3.5AA …. 11.32 reg 3.5AB–3.5AG …. 11.32 reg 3.5AG …. 11.32 reg 3.10 …. 11.27, 11.53 reg 3.11 …. 11.32 reg 3.12 …. 11.30, 11.32 regs 3.12–3.13 …. 11.30 reg 3.12(2)(a) …. 12.69 reg 3.13 …. 11.30 reg 3.13A …. 11.32 reg 3.13B …. 11.32 reg 3.13C …. 12.71 reg 3.13C(3) …. 12.71 reg 3.14 …. 11.30, 11.32 reg 3.14A …. 11.37 reg 3.14B …. 11.32, 11.37 reg 3.14C …. 11.32 reg 3.15 …. 11.38, 11.53, 12.72 reg 3.15(c) …. 11.32 reg 3.15(2) …. 13.3

reg 3.16 …. 11.53 reg 3.16(2) …. 11.32, 11.38 reg 3.17(2) …. 11.38 regs 3.17A–3.17B …. 11.42, 12.35 regs 3.17A–3.17C …. 11.32 reg 3.18 …. 11.44 reg 3.18(2) …. 11.39 reg 3.18(2)(a)(iii) …. 11.39 reg 3.18(2)(f) …. 11.32, 11.39 reg 3.21 …. 11.39 reg 4.1 …. 11.34 regs 4.2–4.3 …. 11.35 reg 4.3 …. 11.36 reg 4.4 …. 11.32, 11.35 reg 5.3.l …. 11.45 reg 6.2 …. 11.54 reg 6.3 …. 11.55 reg 6.3(11) …. 11.32 reg 6A.1 …. 11.28 regs 8.1–8.4 …. 11.32 regs 8.5–8.7 …. 11.32 reg 9A.1(1) …. 12.72 regs 9A.2A–9A.2B …. 11.50 reg 10.1(1) …. 11.32 reg 10.2 …. 11.30, 11.32 reg 10.2A …. 11.30, 11.43 reg 10.2B …. 11.30, 11.43 reg 10.2C …. 11.30, 11.43 reg 10.3 …. 11.30 reg 10.3(3)(b)(i) …. 11.48 reg 11.1 …. 11.32 reg 12.1 …. 13.27

reg 13.1C …. 11.32 reg 13.3 …. 11.53 reg 13.4 …. 11.53 reg 13.4(1)(a) …. 11.44 reg 13.4(1)(b) …. 11.44 reg 13.5A …. 11.32 reg 19.1 …. 13.19, 13.22, 22.24 reg 19.1(1) …. 22.43 reg 19.1(2) …. 22.43 reg 20.1(1) …. 11.33 reg 20.6 …. 11.33 reg 20.8 …. 11.33 reg 20.28A(2) …. 11.33 reg 20.28B …. 11.33 regs 20.32–20.52 …. 11.33 Sch 3 …. 11.27, 11.49 Sch 5 …. 11.33 Patents (World Trade Organization Amendments) Act 1994 …. 1.49, 11.55, 13.28 Personal Property Securities Act 2009 …. 7.11, 10.12, 10.25, 13.20, 20.25, 20.32, 22.42 Ch 2 …. 13.20 Ch 4 …. 13.20 s 8(1) …. 13.20 s 10(d) …. 15.21 s 12 …. 13.20, 22.48 s 12(5)(a) …. 13.20 s 105 …. 13.20 s 106 …. 13.20 s 174 …. 13.19 s 308 …. 13.20, 22.42 Personal Property Securities (Consequential Amendments) Act 2009 ….

13.20, 19.6 Sch 2 …. 13.20 Personal Property Securities (Corporations and Other Amendments) Act 2010 …. 19.6 Plant Breeder’s Rights Act 1994 …. 1.5, 1.15, 11.12, 11.17, 15.1, 15.3, 15.5, 15.8, 15.24, 15.25, 15.28–15.31, 15.33, 15.41, 15.43, 15.44, 21.56, 22.97 Pt 9 …. 15.3 s 3 …. 15.6, 15.7, 15.24, 15.25, 15.43 s 3(1) …. 15.9 s 4 …. 15.24, 15.25 s 4(c) …. 15.25 s 5 …. 15.9 s 6 …. 15.7 s 10 …. 1.6, 15.1, 15.8 s 11 …. 1.28, 15.15, 15.23, 15.24, 15.28, 15.33–15.35, 15.37 s 12 …. 15.15, 15.17, 15.24 s 12(b) …. 15.26 s 13(a) …. 15.15, 15.17 s 13(b) …. 15.15, 15.17 s 14 …. 15.3, 15.15, 15.28, 15.34 s 14(1)(b) …. 15.29 s 15 …. 15.15, 15.28, 15.34 s 15(b) …. 15.29 s 16 …. 15.16 s 16(a) …. 15.16 s 16(b) …. 15.16 s 16(c) …. 15.17 s 17 …. 15.3, 15.18, 15.19, 15.35 s 17(2) …. 15.18, 15.35 s 18 …. 15.3, 15.19, 15.20 s 18(1) …. 15.29

s 18(3) …. 15.19 s 19 …. 15.24 s 19(1) …. 15.22 s 19(2) …. 15.22 s 19(3) …. 15.22 s 19(4) …. 15.22 s 19(5) …. 15.22 s 19(6) …. 15.22 s 20(1) …. 15.21 s 20(2) …. 15.21 s 20(3) …. 15.21 s 22 …. 15.21 s 23 …. 15.20, 15.24, 15.37 s 23(1) …. 15.29 s 23(1)(c) …. 15.20 s 23(1)(d) …. 15.20 s 23(3) …. 15.20 s 24 …. 15.5 s 25(1) …. 15.21 s 25(2) …. 15.21 s 26 …. 15.5 s 26(2)(e) …. 15.5 s 26(2)(f) …. 15.14 s 27 …. 15.14 s 28 …. 15.5 s 29 …. 15.5 s 30(1) …. 15.5 s 30(2) …. 15.5 s 30(3) …. 15.5 s 34 …. 15.5 s 35 …. 15.5 s 37(1) …. 15.5

s 37(2) …. 15.5 s 37(2A)(a) …. 15.5 s 37(2A)(b) …. 15.5 s 37(2B)(a) …. 15.5 s 37(2B)(b) …. 15.5 s 37(5) …. 15.5 s 38 …. 15.5 s 39(6) …. 15.39 s 40 …. 15.25 s 40(1) …. 15.24 s 40(1)(b) …. 15.26 s 40(5)(7) …. 15.24 s 40(8) …. 15.24 s 41 …. 15.5 s 42 …. 15.5 s 43 …. 15.5, 15.8, 15.43 s 43(1)(e) …. 15.13 s 43(2) …. 15.10 s 43(3) …. 15.11 s 43(4) …. 15.12 s 43(6) …. 15.13 s 43(7) …. 15.13 s 43(7A) …. 15.13 s 43(7B) …. 15.13 s 43(7C) …. 15.13 s 43(8)–(9) …. 15.10 s 44 …. 15.5 s 44(1)(b)(vii) …. 15.5 s 44(2) …. 15.5 s 45(1) …. 15.5 s 45(2) …. 15.5 s 49 …. 15.5

s 50(8) …. 15.5 s 53 …. 15.23 s 54(1) …. 15.23 s 54(2) …. 15.23 s 55 …. 15.23 s 56 …. 2.26 s 56(2) …. 15.23 s 56(3) …. 2.13, 2.15, 2.16, 15.23 s 57(1) …. 2.5, 2.15, 2.16, 15.23 s 57(2) …. 15.23 ss 58–59 …. 15.5 s 63 …. 15.3 s 74 …. 15.23, 15.41 ss 74–76 …. 2.18 s 75 …. 15.23, 15.41 s 77 …. 2.25, 15.5 s 77(1)(xiii) …. 15.25 Plant Breeder’s Rights Amendment Act 2002 …. 15.3, 15.19, 15.29 Plant Variety Rights Act 1987 …. 1.5, 15.3, 15.13, 21.56 Privacy Act 1988 …. 3.11, 4.38 Pt VIII …. 3.11 s 92 …. 4.14 s 93(1) …. 4.29 s 93(3) …. 4.2 Privacy Amendment (Enhancing Privacy Protection) Act 2012 …. 3.11 Prohibition of Human Cloning Act 2002 …. 12.24 s 20 …. 12.24 Public Governance, Performance and Accountability Act 2013 …. 7.10 Public Health Act 2010 s 54 …. 4.22 Public Interest Disclosure Act 2013 …. 4.34 Public Lending Council Amendment Act 1976

s 5 …. 9.17 Public Lending Right Act 1985 …. 9.17 Resale Royalty Right for Visual Artists Act 2009 …. 1.17, 1.25, 9.13, 22.97 s 11 …. 9.13 Research Involving Human Embryos Act 2002 …. 12.24 Telecommunications Act 1997 …. 8.30, 8.63 s 87 …. 8.30 Therapeutic Goods Act 1989 s 9A …. 11.56 Tobacco Plain Packaging Act 2011 …. 1.7, 21.21 Trade Marks Act 1905 …. 19.3, 19.18 s 114 …. 19.84 Trade Marks Act 1948 …. 20.24 Trade Marks Act 1955 …. 19.3, 19.4, 19.15, 19.16, 19.55, 19.57, 19.63, 19.65, 19.83, 19.98, 19.99, 22.97 Pt IX …. 20.28 Pt XI …. 22.97 s 22 …. 19.97, 19.99 s 22(1) …. 19.94, 19.99 s 24(1)(a) …. 19.8 s 24(1)(d) …. 19.62, 19.66 s 28 …. 19.98, 19.99 s 28(a) …. 19.76, 19.84, 19.85, 19.87, 19.96, 19.99 s 28(d) …. 19.99 s 33 …. 19.75, 19.76 s 58 …. 20.6, 20.19 s 58(1) …. 20.6 s 61 …. 19.98 s 62 …. 20.6 s 62(1) …. 20.6 s 62(2) …. 19.16

s 74(2) …. 20.28 s 82 …. 20.24 Trade Marks Act 1994 …. 1.49, 19.4 s 39 …. 19.69 Trade Marks Act 1995 …. 1.4, 1.14, 1.49, 2.5, 11.12, 19.4, 19.11–19.13, 19.15, 19.17, 19.23, 19.26, 19.30, 19.37, 19.45, 19.55, 19.57, 19.58, 19.65, 19.69, 19.73, 19.89, 19.90, 19.92, 19.95, 19.98, 19.100, 19.102, 22.37, 22.40, 22.44, 22.45, 22.47, 22.58, 22.59, 22.97 Pt 4 Div 2 …. 19.41 Pt 6 …. 19.40 Pt 9 …. 19.30, 19.103, 19.104, 22.40 Pt 11 …. 20.29, 20.32 Pt 13 …. 20.22 Pt 14 …. 2.18, 20.23 Pt 15 …. 19.102 Pt 16 …. 19.103, 19.104 Pt 17 …. 19.104 Pt 17A …. 19.43 Pt 22 …. 19.5 s 6 …. 19.7, 19.44, 19.46, 19.68, 19.92, 20.22 s 6(1) …. 19.7 s 7 …. 19.30 s 7(2) …. 19.8 s 7(3) …. 19.30, 20.31 s 7(3)–(5) …. 19.27 s 8 …. 20.29, 22.40 s 8(2) …. 19.30 s 8(3) …. 20.29 s 8(4) …. 20.29 s 8(5) …. 20.29, 20.30 s 10 …. 19.75, 20.4

s 12 …. 19.46 s 14 …. 19.79 s 15 …. 19.92 s 17 …. 19.7, 19.23–19.25, 19.27, 19.28, 19.52, 19.100 s 18 …. 19.88 s 19(1) …. 19.37 s 19(2) …. 19.37 s 20 …. 20.6, 20.8, 20.31 s 20(1) …. 19.104, 20.1, 20.2 s 20(2) …. 20.1 s 20(3) …. 20.1 s 20(4) …. 20.1 s 20(5) …. 20.1, 22.59, 22.60 s 21 …. 20.24 s 22 …. 22.42, 22.44 s 22(1) …. 20.25, 20.32, 22.36, 22.45 s 22(3) …. 20.25, 20.32 s 24 …. 19.64, 19.94 s 24(1) …. 19.57 s 25 …. 19.64, 19.94 s 26 …. 22.40 s 26(1) …. 20.31 s 27 …. 19.30, 19.69, 19.71 s 27(1) …. 22.58 s 27(1)(a) …. 19.30 s 27(1)(b) …. 19.27, 19.30, 19.104 s 27(2) …. 19.37 s 27(2A) …. 19.30, 19.102 s 27(3) …. 19.37 s 27(5) …. 19.37 s 28 …. 22.58 s 29(1) …. 19.47

s 29(2)(a) …. 19.47 s 29(2)(b) …. 19.47 s 30 …. 19.37 s 31 …. 19.40 s 32(1)(b) …. 19.45 s 33 …. 19.41, 19.103, 19.104 s 33(1) …. 19.41 s 33(4) …. 19.40, 19.41 s 34 …. 19.41 s 34(2) …. 19.82 s 35 …. 19.41 s 38(1) …. 19.41 s 38(2) …. 19.41 s 39 …. 19.41, 19.104 s 39(1) …. 19.88 s 39(2) …. 19.88 s 40 …. 19.13, 19.41, 19.89, 19.104 s 41 …. 19.23, 19.41, 19.53, 19.56, 19.103, 19.104 s 41(1) …. 19.41, 19.52 s 41(2) …. 19.41, 19.52, 19.56, 19.65, 19.69 s 41(3) …. 19.53, 19.56, 19.68 s 41(3)–(6) …. 19.41 s 41(4) …. 19.56, 19.57 s 41(5) …. 19.53, 19.56, 19.68 s 41(6) …. 19.53, 19.56, 19.57, 19.65, 19.71 s 42 …. 19.41, 19.90, 19.91, 19.104 s 42(a) …. 19.90 s 42(b) …. 19.21, 19.23, 19.73, 19.91 s 43 …. 19.21, 19.23, 19.36, 19.41, 19.73, 19.84–19.87, 19.91, 19.104 s 44 …. 19.23, 19.41, 19.49, 19.73–19.75, 19.78, 19.79, 19.81, 19.84–19.87, 19.91, 19.104, 20.4, 20.19

s 44(1) …. 19.74, 19.91 s 44(2) …. 19.74 s 44(3) …. 19.81 s 44(3)(a) …. 19.81, 19.81 s 44(3)(b) …. 19.83 s 44(4) …. 19.43, 19.82 ss 45–46 …. 19.37 s 51 …. 19.37 s 52 …. 2.4, 19.42, 20.2 s 52A …. 19.42 s 54 …. 19.43 s 54(2) …. 19.42 s 54A(1) …. 19.42 s 55 …. 19.43 s 56 …. 19.43 s 57 …. 19.43 s 58 …. 19.23, 19.30, 19.43 s 58A …. 19.43, 19.82 s 59 …. 19.29, 19.43, 19.104 s 60 …. 19.21, 19.23, 19.36, 19.43, 19.73, 19.78, 19.81, 19.84–19.87, 19.91, 19.98, 19.104, 20.5 s 61 …. 19.43, 19.92, 19.98 s 61(2)(a) …. 19.92 s 61(2)(aa) …. 19.92 s 61(2)(b) …. 19.92 s 61(2)(c) …. 19.92 s 61(2)(d) …. 19.92 s 62 …. 19.43 s 62A …. 19.23, 19.31, 19.36, 19.43 s 70 …. 19.71 s 72(1) …. 19.46 s 72(3) …. 19.93

s 74 …. 19.45, 19.45 s 74(4) …. 19.45 s 77(1) …. 19.93 s 78 …. 19.93 s 79 …. 19.93 s 80 …. 19.93 ss 80A–80H …. 19.93 s 81 …. 19.94 s 82A …. 19.37 s 83(1) …. 19.94 s 83(2) …. 19.94 s 84 …. 19.94 s 84A …. 19.94 s 84B …. 19.94 s 84C …. 19.94 s 85 …. 19.94 ss 85–88 …. 2.4, 19.94 s 86 …. 19.94 s 87 …. 19.94, 19.96 s 88 …. 19.96, 19.99, 20.19 s 88(1) …. 19.94, 19.95 s 88(1)(a) …. 19.55 s 88(2)(a) …. 19.95, 19.96 s 88(2)(b) …. 19.95 s 88(2)(c) …. 19.95, 19.96, 20.15, 22.59 s 88(2)(d) …. 19.56 s 88(2)(e) …. 19.95, 20.15 s 88A …. 19.94 s 89 …. 19.96, 19.97 s 89(1) …. 19.96 s 89(2) …. 19.96 s 92 …. 19.23, 19.100, 22.59

s 92(1) …. 20.20 s 92(2)(b) …. 19.101 s 92(3) …. 20.20 s 92(4) …. 19.100, 19.101, 20.20 s 92(4)(a) …. 19.100 s 92(4)(b) …. 19.100 s 94(2)(b) …. 19.100 s 100 …. 19.100, 19.101 s 101 …. 19.101 s 101(4) …. 19.101 s 102 …. 19.101 s 105 …. 19.101 s 106 …. 1.28, 20.26, 22.59 s 106(2) …. 20.26, 22.12, 22.40, 22.41 s 107 …. 22.36 ss 107–110 …. 20.26 s 111 …. 20.32 s 114 …. 20.32 s 114(2) …. 20.32 s 116 …. 20.32, 22.44 s 117 …. 20.32 s 118 …. 20.32 s 120 …. 19.75, 20.3–20.6, 20.8, 20.14, 20.15, 20.19 s 120(1) …. 20.3, 20.16 s 120(2) …. 20.3, 20.4, 20.5 s 120(3) …. 19.104, 20.3–20.5, 20.19 s 120(4) …. 20.5 s 121 …. 19.104, 20.7, 20.14 s 121(2) …. 20.31 s 122 …. 2.5, 20.19 s 122(1) …. 20.32 s 122(1)(a) …. 20.19

s 122(1)(b) …. 20.19 s 122(1)(c) …. 20.19 s 122(1)(d) …. 20.9, 20.19 s 122(1)(e) …. 20.19 s 122(1)(f) …. 20.19 s 122(1)(fa) …. 20.19 s 122(1)(g) …. 19.44, 20.19 s 122(2) …. 19.45, 20.19 s 123 …. 20.12–20.19 s 123(1) …. 20.17 s 124 …. 19.82, 20.19 s 124(1) …. 20.19 s 125 …. 2.21 s 126 …. 20.19 s 126(1) …. 20.20 s 126(1)(a) …. 2.13 s 126(1)(b) …. 2.15, 2.16 s 126(2) …. 2.15, 20.20 s 127 …. 19.104, 20.20 s 128 …. 20.19 s 129 …. 2.2, 20.19, 20.21 s 129(1) …. 2.21, 20.21 s 129(4) …. 20.21 s 129(5) …. 20.21 s 129(6) …. 20.21 s 130 …. 20.21 s 132 …. 20.22, 20.31 s 133A …. 20.22 s 134A …. 20.22 s 134(4) …. 20.22 s 136A …. 20.22 s 136B …. 20.22

s 136D(1) …. 20.22 s 136D(3) …. 20.22 s 136D(4) …. 20.22 s 136E …. 20.22 s 137 …. 20.22 s 139(5) …. 20.22 s 162 …. 19.102 s 163(2) …. 19.102 s 164 …. 19.102 s 165 …. 19.102 s 166 …. 19.102, 20.26 s 167 …. 19.102 s 169 …. 19.103 s 170 …. 19.103 s 171 …. 19.103 s 172 …. 19.103 s 173 …. 19.103 s 173(2) …. 19.103 s 175 …. 2.25, 19.103 s 177 …. 19.103 s 177(1) …. 19.103 s 177(2) …. 19.103 s 178 …. 2.25 s 180 …. 2.25 ss 180–180A …. 20.26 s 180A …. 2.25 s 181(2) …. 19.103 s 185(1) …. 19.104 s 185(2) …. 19.104 s 186 …. 19.104 s 187 …. 19.104 s 189 …. 19.104

s 189A …. 19.49 s 190 …. 2.21, 19.100 s 191(2) …. 2.25 s 191(3) …. 2.26 s 191A …. 2.25 s 191A(3) …. 2.26 s 193 …. 2.21 s 194 …. 2.21 s 195 …. 2.21 s 195(2) …. 2.25 s 206 …. 19.40 s 217A …. 19.38 s 224 …. 2.25 s 224(2) …. 19.38 s 224(3) …. 19.38 s 226A …. 19.38 s 227 …. 2.25 s 228A …. 19.37 s 230(1) …. 16.2, 19.21 s 230(2) …. 16.2, 16.20 s 233 …. 19.5, 19.16 s 234 …. 19.98, 19.99 s 234(2)(d) …. 19.99 s 238 …. 19.45 s 239A …. 19.38 ss 254B–254C …. 19.16, 20.19 Sch 1 …. 21.61 Trade Marks Amendment Act 1978 …. 19.3, 19.19 Trade Marks Amendment Act 2006 …. 19.6 Trade Marks Amendment (Madrid Protocol) Act 2000 …. 19.6, 19.49 Trade Marks Amendment (Tobacco Plain Packaging) Act 2011 …. 19.6

Trade Marks and Other Legislation Amendment Act 2000 …. 19.56 Trade Marks Regulations 1995 …. 19.4 Pt 3A …. 19.37 Pt 17A …. 19.49 Pt 17A Div 2 …. 19.49 Pt 17A Div 3 …. 19.50 Pt 17A Div 5 …. 19.51 Pt 17A Div 7 …. 19.51 Pt 17A Div 8 …. 19.51 reg 3.2 …. 20.31 reg 4.3 …. 19.37, 19.89 reg 4.3(7) …. 19.89 reg 4.3(8) …. 19.89 reg 4.4 …. 19.37 reg 4.4(2) …. 19.37 reg 4.5 …. 19.47 reg 4.7 …. 19.37 reg 4.15 …. 19.88 reg 4.15A …. 19.74 regs 5.5–5.7 …. 19.42 reg 5.6(3) …. 19.42 reg 5.8(1)–(2) …. 19.42 reg 5.8(3)–(4) …. 19.42 reg 5.13 …. 19.42 reg 5.14(3)–(4) …. 19.42 reg 5.18 …. 19.74 reg 8.2 …. 19.96 reg 8.3 …. 19.94 reg 10.1 …. 20.26, 22.37 reg 10.5(1) …. 22.44 reg 13.1 …. 20.22 reg 13.2 …. 20.22

reg 16.6 …. 19.103 reg 17.1 …. 19.104 reg 17.2 …. 19.50, 19.104 reg 17A.3 …. 19.51 reg 17A.4 …. 19.51 reg 17A.15 …. 19.51 reg 17A.16(3)(b) …. 19.50 reg 17A.35A …. 19.50 reg 17A.36(5) …. 19.50 reg 17A.39 …. 19.51 reg 17A.40 …. 20.19 reg 17A.41 …. 19.51 reg 17A.42 …. 19.51 regs 17A.49–17A.50 …. 19.50 regs 17A.56–17A.60 …. 20.26 regs 20.7–20.9 …. 19.37 reg 20.11 …. 19.37 reg 21.11A(1) …. 19.38 reg 21.11A(2) …. 19.38 reg 21.29 …. 19.47 Sch 1 …. 19.19, 19.37, 19.39, 19.79 Trade Practices Act 1974 …. 1.21, 13.23, 16.3, 16.30, 16.38, 16.39, 17.17, 22.84 Pt IV …. 8.35, 17.7 Pt V …. 16.8, 16.37 Pt V Div 1 …. 16.34 Pt VC Div 2 …. 16.34 s 6 …. 16.29 s 51A …. 16.32 s 52 …. 9.3, 14.15, 15.41, 16.3, 16.29–16.31, 16.34, 16.37, 16.38, 16.40, 17.1, 17.6, 17.7, 17.10, 17.12, 17.13, 18.1, 18.4, 18.10, 18.11, 18.14, 18.17, 18.25, 19.35, 19.91

s 52(1) …. 18.10 s 53 …. 15.41, 16.29, 16.38 s 55 …. 16.35 s 55A …. 16.34 s 65A …. 16.33 s 75AZC …. 16.35 ss 75AZH–75AZI …. 16.35 s 76E …. 16.34 s 80 …. 16.37, 18.2 s 82 …. 16.34, 18.2 s 85(3) …. 16.33 s 85(7) …. 16.34 s 86C …. 16.34 s 86D …. 16.34 s 86E(1B) …. 16.34 s 87 …. 16.34 Trade Practices (Industry Codes — Franchising) Regulations 1998 …. 22.64 Treasury Legislation Amendment (Small Business and Unfair Contract Terms) Act 2015 …. 22.67 United States Free Trade Agreement Implementation Act 2004 …. 6.8, 6.60, 7.8, 8.3, 8.55, 8.63, 11.9 s 3 …. 11.61 Sch 3 …. 16.41 Sch 8 …. 12.59 Sch 8 item 1 …. 12.58 Sch 8 item 5 …. 11.61 Australian Capital Territory Business Names Act 1963 …. 18.20 Business Names Registration (Transition to Commonwealth) Act 2012 …. 18.20

Evidence Act 2011 Pt 3.10 Div 3.10.1C …. 4.22 Fair Trading (Australian Consumer Law) Act 1992 s 7 …. 16.29 Freedom of Information Act 2016 …. 4.38 Sch 2 s 2.2(a)(xi) …. 4.38 Sch 2 s 2.2(a)(xii) …. 4.38 Human Rights Act 2004 …. 3.11 Workplace Privacy Act 2011 …. 4.11 New South Wales Business Names Act 2002 …. 18.20 Business Names (Commonwealth Powers) Act 2011 …. 18.20 Competition Policy Reform (New South Wales) Act 1995 …. 22.85 Copyright Act 1879 …. 1.4 Evidence Act 1995 Pt 3.10 Div 1A …. 4.22 Pt 3.10 Div 1B …. 4.22 Pt 3.10 Div 1C …. 4.22 Fair Trading Act 1987 s 28 …. 16.29 Government Information (Public Access) Act 2009 s 14 (Table, item 1(g)) …. 4.38 s 14 (Table, item 4(c)) …. 4.38 Inventions Registration Act 1852 …. 1.4 Mining Act 1992 Sch 6A cl 11 …. 7.25 Sch 6A cl 11(3) …. 7.25 Privacy and Personal Information Protection Act 1998 …. 3.11 Restraints of Trade Act 1976 …. 4.4, 4.36 Supreme Court Act 1970 s 68 …. 4.29

Trade Marks Act 1865 …. 1.4 Workplace Surveillance Act 2005 …. 4.11 Northern Territory Business Names Act 2007 …. 18.20 Business Names (National Uniform Legislation) Implementation Act 2012 …. 18.20 Business Names (National Uniform Legislation) Request Act 2011 …. 18.20 Consumer Affairs and Fair Trading Act 1990 s 27 …. 16.29 Queensland Biodiversity Act 2004 …. 1.25 Business Names Act 1962 …. 18.20 Business Names (Commonwealth Powers) Act 2011 …. 18.20 Fair Trading Act 1989 s 16 …. 16.29 Information Privacy Act 2009 …. 3.11 Public Interest Disclosure Act 2010 …. 4.34 Right to Information Act 2009 …. 4.38 Sch 4 Pt 3 s 15 …. 4.38 Sch 4 Pt 4 s 7 …. 4.38 Sch 4 Pt 4 s 8 …. 4.38 South Australia Business Names Act 1996 …. 18.20 Business Names (Commonwealth Powers) Act 2012 …. 18.20 Business Names Registration (Transitional Arrangements) Act 2012 …. 18.20 Fair Trading Act 1987 s 14 …. 16.29

Freedom of Information Act 1991 Sch 1 cl 7 …. 4.38 Sch 1 cl 13 …. 4.38 Supreme Court Act 1935 s 30 …. 4.29 Whistleblowers Protection Act 1993 …. 4.34 Tasmania Australian Consumer Law (Tasmania) Act 2010 s 6 …. 16.29 Business Names Act 1962 …. 18.20 Business Names (Commonwealth Powers) Act 2011 …. 18.20 Evidence Act 2001 ss 126A–126F …. 4.22 Right to Information Act 2009 ss 37–38 …. 4.38 s 39 …. 4.38 Supreme Court Civil Procedure Act 1932 s 11(13) …. 4.29 Victoria Australian Consumer Law and Fair Trading Act 2012 s 8 …. 16.29 Business Names Act 1962 …. 18.20 Business Names (Commonwealth Powers) Act 2011 …. 18.20 Charter of Human Rights and Responsibilities Act 2006 …. 3.11 Crimes Act 1958 ss 71–72 …. 3.12 Evidence Act 1995 Pt 3.10 Div 1C …. 4.22 Freedom of Information Act 1982 s 34 …. 4.38

s 35 …. 4.38 Health Records Act 2001 …. 3.11 Supreme Court Act 1986 s 38 …. 4.29 Western Australia Business Names Act 1962 …. 18.20 Business Names (Commonwealth Powers) Act 2012 …. 18.20 Evidence Act 1906 ss 20A–20M …. 4.22 Fair Trading Act 2010 s 19 …. 16.29 Freedom of Information Act 1992 Sch 1 cl 4 …. 4.38 Sch 1 cl 8 …. 4.38 Supreme Court Act 1935 s 25(10) …. 4.29 Surveillance Devices Act 1998 Pt 2 …. 4.11 University of Western Australia Act 1911 …. 13.9 Germany Patents Act 1936 …. 13.14 Patents Act 1981 Art 11(2) …. 14.4 India Protection of Plant Varieties and Farmers’ Rights Act 2001 …. 15.4 International Agreement on a Unified Patent Court …. 21.5 ASEAN–Australia–New Zealand Free Trade Agreement

Ch 13 …. 21.67 Australia–Chile Free Trade Agreement Ch 17 …. 21.67 Art 17.19 …. 11.10 Australia–Thailand Free Trade Agreement …. 11.10 Australia–United States Free Trade Agreement 2005 (AUSFTA) …. 1.50, 2.4, 9.12, 11.9–11.11, 11.58, 16.41, 21.68 Ch 17 …. 1.50, 11.10, 21.67, 21.68 Art 17.9.1 …. 11.10, 12.58 Art 17.9.2 …. 11.10 Art 17.9.3 …. 11.10, 13.33 Art 17.9.4 …. 11.10 Art 17.9.5 …. 11.10, 11.39, 11.45, 12.58, 12.59 Art 17.9.6 …. 11.10, 11.57 Art 17.9.7 …. 11.10, 13.33, 13.36 Art 17.9.8 …. 11.10 Art 17.9.8(a) …. 11.59 Art 17.9.8(b) …. 11.56, 11.58 Art 17.9.9 …. 12.44 Art 17.9.12 …. 11.10 Art 17.9.13 …. 11.10, 12.58 Art 17.9.14 …. 11.10 Art 17.9.15 …. 11.10 Art 17.10 …. 11.10 Art 17.11.5 …. 13.22 Beijing Treaty on Audiovisual Performances 2012 …. 21.26, 21.39 Art 1 …. 21.40 Arts 1–4 …. 21.40 Art 2 …. 21.40 Art 2(a) …. 21.40 Art 2(b) …. 21.40 Art 3 …. 21.40

Art 4 …. 21.40 Art 5 …. 21.40 Art 5(1)(i) …. 21.40 Art 5(1)(ii) …. 21.40 Art 6 …. 21.41 Art 7 …. 21.39, 21.41 Arts 7–11 …. 21.42 Art 8 …. 21.41 Art 8(2) …. 21.41 Art 9 …. 21.41 Art 9(2) …. 21.41 Art 10 …. 21.41 Art 11 …. 21.41 Art 11(1) …. 21.41 Art 11(2) …. 21.41 Art 12 …. 21.42 Art 12(1) …. 21.42 Art 12(2) …. 21.42 Art 12(3) …. 21.42 Art 13 …. 21.42 Art 13(1) …. 21.42 Art 13(2) …. 21.42 Art 15 …. 21.42 Art 16 …. 21.42 Art 17 …. 21.39 Arts 17–28 …. 21.42 Art 19 …. 21.39 Art 27 …. 21.42 Berne Convention for the Protection of Literary and Artistic Works 1886 …. 1.48, 8.37, 9.1, 9.3, 21.18, 21.26–21.31, 21.36, 21.47 Art 6bis …. 9.3 Art 9(2) …. 21.45

Art 10 …. 21.36 Art 14ter …. 9.13 Art 20 …. 21.35 Brussels Convention 1948 Art 6bis …. 9.3 Brussels Convention Relating to the Distribution of ProgrammeCarrying Signals Transmitted by Satellite 1974 …. 21.26, 21.32 Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purpose of Patent Procedure 1977 …. 12.64, 21.26, 21.53 China–Australia Free Trade Agreement …. 11.10 Ch 11 …. 21.67 Community Patent Convention Art 29(a) …. 14.9 Art 31 …. 14.14 Convention Establishing the World Intellectual Property Organization 1967 …. 1.3 Art 2(viii) …. 1.3 Convention on Biological Diversity …. 1.25 Art 2 …. 12.29 Doha Declaration …. 11.17, 21.20 European Biotechnology Directive and the Implementing Regulations to the European Patent Convention Art 3 …. 12.27 Art 4(1) …. 12.27 Art 4(2) …. 12.27 Art 6(2) …. 12.32 Rule 23d(a)–(d)…. 12.32 European Database Directive 96/9/EC Art 7(5) …. 6.42 European Directive on the Legal Protection of Biotechnological Inventions Art 3.2 …. 12.6

Art 5.2 …. 12.30 European Patent Convention 1973 …. 12.18, 12.36 Art 52(4) …. 12.16 Art 53(a) …. 12.25 Art 53(b) …. 12.27 Art 56 …. 12.51 Art 69 …. 14.20 Art 83 …. 12.63 Art 84 …. 12.68 Free Trade Agreement between the Government of Australia and the Government of the Republic of Korea …. 11.10 General Agreement on Trade and Tariffs (GATT) …. 1.49, 21.3, 21.10, 21.12, 21.15 Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs 1999 …. 21.26, 21.57 Geneva Convention for the Protection of Producers of Phonograms against Unauthorised Duplication of their Phonograms 1971 …. 21.26, 21.31, 21.61 Art 2 …. 21.31 Art 6 …. 21.31 Art 7 …. 21.31 Geneva Patent Law Treaty 2000 …. 21.68 Hague Agreement Concerning the International Deposit of Industrial Designs 1925 (London Act 1934 and Hague Act 1960) …. 21.26, 21.57 International Convention for the Protection of New Varieties of Plants 1961 (UPOV) …. 1.6, 15.2, 15.30, 21.26, 21.56 Art 1 …. 15.7 Art 15(2) …. 15.18 Art 27 …. 21.56 Art 27(3) …. 21.56 International Convention for the Protection of New Varieties of Plants 1978 (UPOV) …. 15.8, 15.43

Art 2(1) …. 15.2 Art 5(1) …. 15.2 Art 5(3) …. 15.2 International Convention for the Protection of New Varieties of Plants 1991 (UPOV) …. 15.5, 15.8, 15.10, 15.13, 15.19, 15.24, 15.25, 15.43 Art 1(iv) …. 15.9 Art 3 …. 15.6 Art 5(1) …. 15.8 Art 6 …. 15.13 Art 6(1) …. 15.13 Art 6(2) …. 15.13 Art 6(3) …. 15.13 Art 7 …. 15.10 Art 8 …. 15.11 Art 9 …. 15.12 Art 14(5)(b) …. 15.24 Art 15(1)(i) …. 15.19 Art 15(1)(iii) …. 15.2 Art 15(1)(iv) …. 15.2 Art 16 …. 15.20 Art 19 …. 15.21 Art 20 …. 15.14 Japan–Australia Economic Partnership Agreement Ch 16 …. 21.67 Korea–Australia Free Trade Agreement Ch 13 …. 21.67 Lisbon Agreement for the Protection of Appellations of Origin and their International Registration 1958 …. 21.26, 21.65 Locarno Agreement Establishing an International Classification for Industrial Designs 1968 …. 21.26, 21.58 Art 2(1) …. 21.58

Art 2(2) …. 21.58 Art 2(3) …. 21.58 Madrid Agreement Concerning the International Registration of Marks 1891 …. 21.26 Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods 1891 …. 21.26, 21.60 Madrid Convention on the Avoidance of Double Taxation of Copyright Royalties 1979 …. 21.26 Malaysia–Australia Free Trade Agreement …. 11.10 Ch 13 …. 21.67 Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled 2013 …. 21.26, 21.43 Art 2(b) …. 21.44 Art 2(c) …. 21.44 Art 3 …. 21.44 Art 4 …. 21.45 Art 4(2) …. 21.44 Art 5 …. 21.45 Art 6 …. 21.45 Art 9 …. 21.45 Art 11 …. 21.46 Nairobi Treaty on the Protection of the Olympic Symbol 1981 …. 21.26 Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks 1957 …. 21.26, 21.61 North American Free-Trade Agreement (NAFTA) …. 21.7 Paris Convention 1967 Art 10bis …. 3.6 Paris Convention 1971 …. 21.35 Art 6bis …. 9.3 Paris Convention for the Protection of Industrial Property 1883 ….

1.45, 1.48, 11.15, 19.48, 21.18, 21.26, 21.47, 21.57, 21.61 Art 2 …. 21.47 Art 5A(2)–(4) …. 13.33 Art 6sexies …. 19.19 Art 7bis …. 19.20 Art 10bis …. 1.27 Art 10bis (1) …. 1.47 Art 31bis …. 13.33 Patent Co-operation Treaty (PCT) 1970 …. 11.15, 21.26, 21.48–21.53, 21.60 Ch I …. 21.49 Ch II …. 21.49, 21.50 Art 6 …. 12.68 Patent Law Treaty 2000 …. 21.26, 21.55 Protocol Relating to the Madrid Agreement concerning the International Registration of Marks 1989 …. 21.26, 21.60 Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations 1961 …. 9.1, 21.18, 21.26, 21.30, 21.31, 21.39 Art 3 …. 9.11 Singapore–Australia Free Trade Agreement …. 11.10 Ch 13 …. 21.67 Singapore Treaty on the Law of Trademarks 2006 …. 21.26, 21.64 Stockholm Convention 1967 …. 21.9, 21.35, 21.47, 21.61 Art 6bis …. 9.3 Strasbourg Agreement Concerning the International Patent Classification 1971 …. 21.26, 21.54 Thailand–Australia Free Trade Agreement Ch 13 …. 21.67 Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement …. 1.3, 1.36, 1.46, 1.49–1.51, 3.6, 5.14, 8.37, 9.3, 9.10, 11.9, 11.17, 14.28, 19.4, 19.92, 21.3, 21.15, 21.16, 21.19–21.21, 21.24, 21.26, 21.29, 21.39, 21.56, 21.68

Pt I …. 21.18 Pt II …. 21.19 Pt III …. 21.19 Pt IV …. 21.19 Pt V …. 21.19 Pt VI …. 21.19 Pt VII …. 21.19 Art 1 …. 21.18 Arts 1–8 …. 21.18 Art 1.2 …. 1.3 Art 2 …. 21.18 Art 4 …. 21.18 Art 5 …. 21.18 Art 7 …. 21.18 Art 8(1) …. 21.18 Art 8(2) …. 21.18 Art 9 …. 9.3, 21.27 Art 10 …. 6.42 Art 10(1) …. 6.15 Art 12 …. 6.60 Art 13 …. 21.36, 21.45 Art 14 …. 9.12 Art 14(1) …. 21.39 Art 15 …. 19.19 Art 16 …. 20.5 Art 22 …. 21.65, 21.66 Arts 22–24 …. 21.65 Art 23 …. 21.65 Art 23(4) …. 21.65 Art 24(1) …. 21.65 Art 24(6) …. 21.65 Art 25(1) …. 10.21

Art 26(3) …. 10.13 Art 27 …. 12.1, 15.1 Art 27(2) …. 11.16, 12.26 Art 27(3) …. 15.1 Art 27(3)(a) …. 12.16 Art 27(3)(b) …. 15.30 Art 30 …. 13.33, 14.28 Art 31 …. 13.28, 13.33 Art 31(b) …. 13.35 Art 33 …. 11.55 Art 34 …. 14.16 Art 35 …. 9.20, 21.34 Art 39 …. 3.6 Art 39(2) …. 3.6 Art 39(3) …. 3.6 Art 65 …. 21.16 Art 66 …. 21.16 Art 67 …. 21.16 Art 72 …. 21.18 Trademark Law Treaty 1994 …. 21.26 Trademark Registration Treaty 1973 …. 21.26, 21.63 Art 3 …. 21.63 Art 5 …. 21.63 Trans-Pacific Strategic Economic Partnership Agreement …. 1.50 United Nations Declaration on the Rights of Indigenous Peoples 2007 …. 1.25 Art 31 …. 1.25 Universal Copyright Convention 1952 …. 21.26, 21.29, 21.31 Universal Declaration of Human Rights Art 27(2) …. 1.30 Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks 1973 …. 21.26, 21.62 Vienna Agreement for the Protection of Typefaces and their

International Deposit 1973 …. 21.26, 21.33 Washington Treaty on the Protection of Intellectual Property in Respect of Integrated Circuits 1989 …. 9.20, 21.26 WIPO Copyright Treaty 1996 …. 21.26, 21.35, 21.37, 21.39, 21.42, 21.68 Art 9(2) …. 21.36 Art 10 …. 21.36 Art 10(1) …. 21.36, 21.45 Art 10(2) …. 21.36, 21.45 WIPO Performances and Phonograms Treaty 1996 (WPPT) …. 9.12, 21.26, 21.38–21.40 Art 2 …. 9.12 Art 2(a) …. 21.38 Art 2(b) …. 21.38 Art 5 …. 21.38 Art 6 …. 21.38 Art 7 …. 21.38 Art 8 …. 21.38 Art 9 …. 21.38 Art 10 …. 21.38 Art 11 …. 21.38 Art 12 …. 21.38 Art 13 …. 21.38 Art 14 …. 21.38 Art 16 …. 21.38 Art 17 …. 21.38 WIPO–WTO Agreement …. 21.25 Japan Patent Law s 69(1) …. 14.4

New Zealand Crimes Act 1961 s 230 …. 3.12 Patents Act 1953 s 68B …. 14.28 United Kingdom Chancery Amendment Act 1858 s 2 …. 4.29 Copyright Act 1911 …. 1.4, 5.5, 5.6 s 19 …. 6.44 Copyright, Designs and Patents Act 1988 …. 1.4, 5.6 s 171(3) …. 8.56 Human Rights Act 1998 …. 8.56 Merchandise Marks Act 1862 …. 19.7 Patent Law Amendment Act 1852 …. 11.5 Patents Act 1949 …. 11.5, 13.13 s 10(1)(b) …. 12.24 s 32(1)(k) …. 12.24 Patents Act 1977 …. 11.5, 12.18, 12.24, 12.42, 12.70, 13.13 s 1(1) …. 12.21 s 1(3)(a) …. 12.25 s 2(2) …. 12.36 s 4(2) …. 12.16 s 6(1)(a) …. 14.9 s 7(3) …. 13.2 s 14(3) …. 12.63 s 14(5)(C) …. 12.68 ss 39–43 …. 13.13 s 42(2) …. 13.13 s 60(1)(a) …. 14.6 s 60(1)(c) …. 14.7

s 60(5)(a) …. 14.4 s 130(1) …. 22.24 Sch A2 para 3(b)–(e) …. 12.32 Sch A2 para 3(f) …. 12.27 Sch A2 para 4 …. 12.27 Patents, Designs and Trademarks Act 1883 …. 11.5, 19.7 Statute of Monopolies 1624 (21 Jac 1 c 3 1623) …. 12.3, 12.17 s 6 …. 12.2–12.4, 12.23, 12.26, 12.34, 13.2 Trade Marks Act 1905 …. 19.3 Trade Marks Act 1938 …. 19.3 Trade Marks Act 1994 …. 1.4 s 23 …. 22.60 s 23(3) …. 22.56 Trade Marks Registration Act 1875 …. 16.1, 19.3, 19.7 s 10 …. 19.57 United States Anticybersquatting Consumer Protection Act 1999 …. 18.29 Copyright Act 1976 …. 6.16 Copyright Law Amendment 1996 …. 21.43 Defend Trade Secrets Act 2016 …. 3.5, 22.28 Designing and Printing of Linens (etc) Act 1787 …. 10.1 Drug Price Competition and Patent Term Restoration Act 1984 (the Hatch-Waxman Act) …. . 14.28 Federal Trademark Dilution Act 1995 …. 20.5 Leahy-Smith America Invents Act 2011 …. 21.17 Omnibus Trade and Competitiveness Act 1988 …. 21.14 Patents Act 1952 …. 12.11 s 101 …. 12.11 s 102(b) …. 12.44 s 103 …. 12.51 Plant Patent Act 1930 …. 15.2

Semiconductor Chip Protection Act 1984 …. 9.20, 21.34 Sonny Bono Copyright Term Extension Act 1998 …. 6.60 Tariff Act 1930 s 337 …. 21.15 Trade Act 1974 …. 21.14 s 301 …. 21.14 Uniform Trade Secrets Act …. 3.5, 22.28

Contents Preface Table of Cases Table of Statutes

PART 1 Introduction Chapter 1

An Overview

Chapter 2

Enforcement of Rights

PART 2 Confidentiality Chapter 3

The Concept of Rights in Information

Chapter 4

Breach of Confidence

PART 3 Copyright, Designs and Related Rights Chapter 5

Copyright: Basic Concepts

Chapter 6

Subsistence of Copyright

Chapter 7

Exploitation of Copyright

Chapter 8

Infringement of Copyright

Chapter 9

Moral Rights and Related Rights

Chapter 10 Designs PART 4 Patents Chapter 11 The Patent System

Chapter 12 Validity of Patents Chapter 13 Ownership and Exploitation of Patent Rights Chapter 14 Infringement of Patent Rights Chapter 15 Plant Breeder’s Rights PART 5 Business Reputation Chapter 16 Misappropriation of Business Reputation: General Principles Chapter 17 Misappropriation: Establishing a Reputation Chapter 18 Misappropriation: Establishing Deception Chapter 19 Registration of Trade Marks Chapter 20 Protection and Exploitation of Registered Marks PART 6 Other Dimensions Chapter 21 International Aspects of Intellectual Property Protection Chapter 22 Commercialising Intellectual Property Bibliography Index

[page 1]

PART 1 Introduction

[page 3]

CHAPTER 1 An Overview WHAT IS INTELLECTUAL PROPERTY? Introduction 1.1 Intellectual property is one of those concepts that is largely familiar but which is exceedingly difficult to define. The uninitiated have a tendency to greet the term itself with a blank stare. Any confusion is at least partly dispelled when it is explained that intellectual property is about ‘copyright, patents — you know, that sort of thing’. However, while this will usually suffice to divert any further questioning, the problem remains of finding a more comprehensive answer. Even the most seasoned of intellectual property lawyers will struggle to go beyond a ‘that sort of thing’ definition that lists rather than justifies. Broadly speaking, we can say that intellectual property is a generic term for the various rights or bundles of rights which the law accords for the protection of creative effort — or, more especially, for the protection of economic investment in creative effort. As a generalisation, this is acceptable, but only barely so. Apart from the fact that some forms of creative endeavour (or investment therein) are not protected at all, some rights which are now described as forms of intellectual property have only a tenuous connection with the creative process, particularly those such as trade marks which are associated with business reputation and competitive relations. Moreover, the nature and scope of the rights accorded can and do vary greatly.

Historical foundations 1.2

The principal reason why it is so difficult to define intellectual

property lies in the history of the subject. As with the law of tort(s), the tale is that of a group of established actions or heads of protection coming to be treated under a common rubric.1 The basic concepts underlying the systems created to protect copyright, patents, trade marks and so on had mostly been worked out by the time it became fashionable to group them together. Not only had each system developed [page 4] independently of the others, evolving its own solutions to the problems of how best to recognise the type of effort with which it was concerned, but that system had also been shaped by different forces from country to country. Thus, the law of copyright that evolved in England after the development of the printing press in the fifteenth century differed in significant respects to that which had emerged in Europe, while having little impact on the nascent system for rewarding inventors with letters patent granting them exclusive rights over the exploitation of their inventions. Even when the link was made between the systems, as it certainly was from the middle of the nineteenth century onwards, it was common to use two terms rather than one: intellectual property for the ‘higher’ forms of literary and artistic endeavour recognised by copyright, and industrial property for the more prosaic world of commerce in which patents and trade marks operated. Given especially the modern scope of copyright, not to mention the addition of other heads of protection that cannot easily be categorised in this way, these terms are now virtually interchangeable.2 The former is in greater use as an allencompassing description and is accordingly preferred in this work. Nevertheless, despite the emergence of the subject as a popular field of study and the appearance of treatises spanning the individual regimes (notably, in an Anglo-Australian context, those of Cornish and Ricketson3) intellectual property remains more a collection of similar rights than a single theory of protection. This is not to say that general observations may not be offered, for that is indeed the

objective of much of this and the following chapter. But until the various regimes are uprooted and replaced by some general right or principle, a prospect discussed below, intellectual property must still be treated as something whose parts are greater than its sum.

The WIPO and TRIPS ‘definitions’ 1.3 This point is perfectly emphasised by the 1967 Convention Establishing the World Intellectual Property Organization (WIPO), a body whose significance is explained in Chapter 21. Article 2(viii) of the Convention defines ‘intellectual property’ to: … include the rights relating to: (1) literary, artistic and scientific works; (2) performances of performing artists, phonograms and broadcasts; (3) inventions in all fields of human endeavour; (4) scientific discoveries; (5) industrial designs; (6) trade marks, service marks, and commercial names and designations; (7) protection against unfair competition; and all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields. [page 5] Note the lack of any internal logic in this list, other than that provided by the broad term ‘intellectual activity’. In reality, this is not so much a definition as an ambit claim, enumerating all those matters that might conceivably fall within the concept of intellectual property, or perhaps ought ideally to do so. The extent to which protection is actually given varies from country to country. Some nations, Australia among them, have failed to provide any protection at all where some items on the list have been concerned.

The same point can be made about what is now the most important international convention in the field, the WTO Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement. This instrument contains no definition at all of ‘intellectual property’, other than to indicate (in Art 1.2) that the term refers to the seven categories of rights or subject matter that are dealt with in the Agreement: copyright and related rights, trade marks, geographical indications, industrial designs, patents, layout designs of integrated circuits and undisclosed information. As will be explained in 1.49, TRIPS has become a powerful force for the standardisation of intellectual property laws around the world.

CURRENT FORMS OF REGULATION Development of Australian laws 1.4 The modern law of intellectual property in this country is still deeply influenced by our former ties to the United Kingdom. The first laws on the subject in force in the Australian colonies, as they then were, emanated from the British Parliament, although as the nineteenth century wore on imperial legislation in relation to copyright, patents and trade marks came to be supplemented by local statutes of similar content.4 After federation, legislative responsibility passed to the Commonwealth, whose statutory regimes today dominate the field. Many of the early federal statutes were little more than re-enactments of their British counterparts. Indeed, the Copyright Act 1912 simply declared the Copyright Act 1911 (UK) to be in force throughout Australia, a state of affairs that continued until 1969, 13 years after the 1911 Act had ceased to apply in Britain! Nevertheless, over the course of the last century Australian legislative policy in the ‘core’ areas of copyright, patents, designs and trade marks has gradually diverged, in some instances quite considerably. This trend has become particularly evident over the past two decades, with major changes to Australian copyright and patents law occurring at a time when Britain has revamped much of its legislation, often under the influence of the European Community.5 The approaches taken by the two countries in these

[page 6] areas are still essentially predicated on common values and assumptions, and there is little question that there are more resemblances than dissimilarities. Nonetheless, the regulatory detail is increasingly different.

Constitutional power 1.5 Section 51(xviii) The Commonwealth’s legislative power in relation to intellectual property stems primarily from s 51(xviii) of the Constitution, permitting it to make laws with respect to ‘copyrights, patents of inventions and designs, and trade marks’. This formula has the disadvantage of being limited to those forms of protection that were familiar at the turn of the century. There has been only one notable instance of legislation being struck down by the High Court for exceeding the limits of s 51(xviii), that being the Union Label case6 in 1908, dealing with workers’ marks. Nevertheless, the apparently limited nature of the provision for many years cast a pall over attempts to deal with new issues. In more recent decisions, however, the High Court has tended to adopt a broad interpretation of the power. In Nintendo Co Ltd v Centronics Systems Pty Ltd7 it was argued that a grant of rights under the Circuit Layouts Act 1989 (Cth), over a computer chip that otherwise belonged to someone else, constituted an ‘acquisition of property’ that infringed the guarantee in s 51(xxxi) that such acquisitions only be made by the Commonwealth ‘on just terms’. The High Court rejected the acquisition of property argument (see 1.7) and noted that the Circuit Layouts Act was underpinned by s 51(xviii). In reaching this conclusion the court saw no difficulty in treating circuit layout rights as falling within the constitutional conception of ‘copyrights, patents of inventions and designs, and trade marks’. Indeed, Mason CJ, Brennan, Deane, Toohey, Gaudron and McHugh JJ went so far as to observe that s 51(xviii) ‘authorises the making of laws which create, confer, and provide for the enforcement of, intellectual property rights in original compositions, inventions, designs, trade marks and other products of intellectual

effort’.8 In Grain Pool of Western Australia v Commonwealth9 Kirby J interpreted this passage as supporting the view that parliament ‘is to enjoy a most ample lawmaking power in respect of “products of intellectual effort” as that notion may itself expand’. By contrast, the majority of the court (Gleeson CJ, Gaudron, McHugh, Gummow, Hayne and Callinan JJ), while also quoting the passage with approval,10 appeared to shy away from reading the highlighted phrase as somehow extending the specific categories listed in s 51(xviii). Nonetheless, their Honours emphasised [page 7] the need to make ‘allowance for the dynamism which, even in 1900, was inherent in any understanding of the terms used in s 51(xviii)’.11 In particular, ‘it would be expected that what might answer the description of an invention … would change to reflect developments in technology’.12 Hence, they rejected the applicant’s challenge to the validity of the Plant Variety Rights Act 1987 and its successor, the Plant Breeder’s Rights Act 1994, on the basis that the new plant varieties protected by the legislation could be considered to be ‘inventions’ in the constitutional sense of that term. Furthermore, the Nintendo requirement of ‘intellectual effort’, which the majority described as ‘a variable rather than a fixed constitutional criterion’,13 was met by the need for a variety to be the product of ‘origination’ or ‘breeding’. According to the majority, it should not be thought that ‘the boundaries of the power conferred by s 51(xviii) are to be ascertained solely by identifying what in 1900 would have been treated as a copyright, patent, design or trade mark’.14 They emphasised just how much in a state of flux the various regimes were at that date, both as to the requirements of each system and in terms of their interrelationship. Thus, the applicant’s argument that the plant varieties legislation lacked certain elements that were ‘traditionally’ required to obtain a patent for invention, such as the need to

demonstrate both novelty and inventiveness, was rejected on the basis that the modern distinction between novelty and inventiveness (see 12.48) had not in fact emerged by 1900. In his separate judgment Kirby J was prepared to go even further. According to his Honour, the contemporary meaning of s 51(xviii) should in no sense be ‘shackled’ by an understanding of what its specific terms would have been taken to cover in 1900. In the case of ‘patents of inventions’, it would be sufficient today for a law such as the 1987 or 1994 statute to possess certain ‘essential characteristics’, those being the grant of rights for a limited time to exploit a ‘novel object or process of potential benefit to the community’ which is recorded in a public register.15 1.6 Other options Although Nintendo and Grain Pool have plainly liberalised the interpretation of s 51(xviii), the possibility remains that a particular measure may be taken to ‘fall between the cracks’ of the specific terms it uses. Hence, it is likely that the Commonwealth will continue its now established practice of seeking to rely on the ‘external affairs’ power in s 51(xxix) of the Constitution as a fallback. This may be [page 8] used to implement protective regimes which are the subject of an international treaty or agreement to which Australia is a party.16 Since the subject of intellectual property is marked by a relatively high degree of international cooperation and comity, as we will see, the external affairs power has proved to be a valuable option in recent years.17 Nevertheless, it remains unsatisfactory that the Commonwealth lacks clear and comprehensive power over intellectual property, a view shared in 1988 by the Constitutional Commission after its review of the Constitution. Shying away from the term ‘intellectual property’ itself, on the understandable basis that it might be too narrowly interpreted, the commission recommended that s 51(xviii) be amended so as to read ‘copyrights, patents of inventions and

designs, trade marks and other like protection for the products of intellectual activity in industry, science, literature and the arts’.18 Given the abysmal track record of constitutional reform in this country at the critical stage of winning approval from the populace,19 however, it is doubtful that this sensible proposal will ever see the light of day. 1.7 Just terms As discussed above, the scope of the Commonwealth’s legislative powers has a potential impact upon the evolution of Australian intellectual property rights as new technologies evolve. Another area where constitutional issues arise is when attempts are made to reform existing intellectual property legislation that, arguably, reduces owners’ property rights without ‘just terms’ contrary to s 51(xxxi). In Nintendo v Centronics Systems20 the High Court rejected the just terms argument in relation to granting intellectual property rights over the layout of computer chips.21 The grant of rights under legislation could not be considered to involve an acquisition of property, but rather ‘the adjustment of the competing rights, claims or obligations of persons in a particular relationship or area of activity’.22 In any event, since laws made pursuant to s 51(xviii) of the Constitution were likely of their nature to ‘impact upon existing proprietary rights’, the power should not be regarded as being qualified by s 51(xxxi).23 [page 9] In JT International SA v Commonwealth24 British American Tobacco and other tobacco companies challenged the federal government’s plain packaging scheme for cigarettes25 on the ground that it was an unjust acquisition of their intellectual property. The companies’ ability to exploit their trade marks, copyright, designs, patents and established goodwill and reputation was certainly impaired by the legislation. The Commonwealth could benefit from the imposition of a plain packaging requirement in various ways, for instance through a reduction in public expenditure on health care. A majority of the High Court held that the restrictions on cigarette

packaging diminished the tobacco companies’ rights; there was no parallel acquisition of additional rights by the Commonwealth as required by the Constitution within the meaning of s 51(xxxi). The plain packaging measures in the JT International case were a public health initiative external to the intellectual property regimes that were affected. Restrictions on owners’ ability to exploit intellectual property rights are also embedded within the regimes themselves, for instance exceptions to copyright infringement that allow certain uses in the public interest. These exceptions diminish the exclusive rights controlled by owners and include compulsory statutory licences for which payments are made, and defences to infringement that allow free use.26 Statutory licences prevent owners from refusing access, but do facilitate use on just terms27 and can at least balance competing interests, although there is not always agreement on the level of payments.28 In Phonographic Performance Company of Australia v Commonwealth29 PPCA unsuccessfully argued that a ‘cap’ on the amount that broadcasters are required to pay for a compulsory licence that was introduced in 1969 unjustly acquired pre-existing copyrights in their sound recordings. The High Court held that the record manufacturers’ rights subsisted by virtue of the Copyright Act 1968 (Cth), which had terminated any rights under the Copyright Act 1911 (Cth). The capped licence scheme did not therefore involve the acquisition of any pre-1969 property. Free use exceptions, such as fair dealings with copyright material (see Chapter 8) can also raise this constitutional issue. At various times rights-owners and their representatives have met calls for the expansion of free use exceptions with the argument that such a diminution in their rights is potentially an acquisition of [page 10] property on unjust terms.30 On the other side of such law reform debates, the JT International case can give some reassurance to advocates of public use exceptions.

The statutory regimes 1.8 So far nothing has been said of the nature of copyright, patents and the other heads of protection. Accordingly, it will be helpful at this point to give a brief description of the principal statutory regimes currently in force in Australia. 1.9 Copyright, which is governed by the Copyright Act 1968 (Cth), protects the expression in material form of ideas or information. Contrary to popular conception, copyright arises without any formal steps being taken to claim it. It suffices that a person exercises originality (in the sense of some degree of intellectual effort) in creating a literary, dramatic, musical or artistic work. The work need not possess aesthetic qualities, so that everything from a catalogue of motorcycle parts to frisbees have been protected: this includes computer software, designated as ‘literary works’ as a result of 1984 amendments. Besides the category of ‘works’, copyright also subsists in four forms in which works are commonly exploited: sound recordings, films, television and sound broadcasts, and published editions. Copyright is infringed whenever the work or other subject matter is reproduced, disseminated, sold, imported, etc without the copyright owner’s consent. However, independent creation of the same work or matter will not infringe. As far as works are concerned, copyright generally subsists until 70 years from the expiration of the year of the author’s death (or after first publication, if this occurs posthumously). 1.10 Performers’ rights, although contained in Pt XIA of the Copyright Act, were in fact introduced in 1989 because live dramatic and musical performances do not attract copyright, not being fixed in a material form. The rights in question are more limited than copyright, merely allowing performers to restrain or take action against any unauthorised broadcast or recording of their performance. 1.11 Moral rights are rights that are personal to the creators of certain copyright material, regardless of who owns the copyright for other purposes. Under amendments to the Copyright Act in 2000, a creator has an inalienable right to be identified as the person responsible for a work or film (the right of attribution) and to object

to any ‘derogatory’ treatment of their material (the right of integrity). Moral rights were extended to performers whose performances are captured on sound recordings in 2007. 1.12 Patents are granted under the Patents Act 1990 (Cth). A patent, for which an application must be made to the Patent Office, provides the exclusive right to exploit an invention for a limited period, in return for which the patentee must publish details of the invention. A standard patent subsists for 20 years (see 11.55) although in certain circumstances patents for pharmaceutical substances may be extended for a further five years: see 11.56–11.58. An innovation patent, which is designed to be cheaper and quicker to obtain, may subsist for up to eight years. In order to be [page 11] patentable, an invention must be a ‘manner of new manufacture’ (that is, a product or process which has some useful commercial application). It must also be novel, in the sense that its creation has not been anticipated by others, and (in the case of a standard patent) inventive, in the sense that it is not merely an obvious advance in light of existing knowledge. 1.13 Designs are governed by the Designs Act 2003 (Cth), which establishes a system for the registration of new and distinctive designs for the visual presentation of commercial products. The design monopoly may last for up to 10 years. Since designs are typically derived from artistic works, important issues arise as to the interrelationship of design and copyright protection. 1.14 Trade marks are signs (including devices, labels, names, etc) which indicate that goods or services originate from a particular trader. When registered under the Trade Marks Act 1995 (Cth), the proprietor is entitled to restrain the use of unregistered marks that are substantially identical or deceptively similar. However, in order to obtain and maintain registration, the mark must normally be used in such a way that it becomes and remains distinctive of the proprietor’s business.

1.15 New plant varieties, which may or may not be patentable, depending on the circumstances, are the subject of a specific regime established by the Plant Breeder’s Rights Act 1994 (Cth). On registration, breeders obtain exclusive rights over their varieties for a period of 20 or 25 years. 1.16 Circuit layouts likewise attract special provision. The Circuit Layouts Act 1989 (Cth) provides copyright-style protection for up to 10 years for the layouts of integrated circuits (computer chips). 1.17 Artists’ resale rights are dealt with under the Resale Royalty Right for Visual Artists Act 2009 (Cth), which grants artists a royalty on the resale of original artworks. The resale right is associated with, but can be distinguished from, copyright. This is because it is a right to a royalty arising from the resale of original pieces of art, that is, the physical object, rather than a royalty for a copyright use such as reproduction. The royalty is calculated on the sale price when an artwork is resold, after the first transfer of ownership, in the commercial art market. The duration of the right is the same as the copyright period.

Why statutory regulation? 1.18 Legislation has obvious advantages as a method of protecting intellectual property. In theory at least, parliament, aided by advice from specialist bodies and committees, can reach decisions on all the factors involved in the extent and appropriate nature of protection, balancing questions of public access with fairness to the rights-owner. It can also provide any administrative back-up necessary and monitor the system to determine whether changes might be required. Given the fast-moving nature of the subject and the constant historical link with government interests (as will be seen in the treatment of copyright, for instance), it is not then [page 12] surprising to find the law of intellectual property dominated by statutory provisions. Even where protection did not originate in

statutes, as was the case with copyright and trade marks, the need for appropriate regulation has forced parliament to introduce new statutory systems or to expand established ones. The benefits of registration and thus an a priori determination of the object of rights can only be obtained by a statutory regime. Although there are considerable differences between the regimes outlined above, with some establishing systems of registration backed by bureaucracy and others operating automatically to confer protection, two points of similarity may be noted. In the first place, each creates a rights-owner who has rights precisely and only because the statute says so. Second, each is essentially negative in character, in that what the rights-owner is empowered to do is to prevent others engaging in unauthorised activities. Thus, for example, a patent does ‘not give the patentee any right to use the invention’, but rather confers ‘the right to exclude others from manufacturing in a particular way, and using a particular invention’.31

Role of the common law 1.19 Having said all that about legislation, it must not be thought that the common law has no part to play in protecting intellectual property.32 It has great historical significance as a precursor to some of the modern statutory systems, notably in relation to copyright, trade marks and patents. The legislature also adopts some concepts from the common law, bringing with it an existing body of case law and the expectation that the courts will continue to develop it on a case-by-case basis. The concept of ‘manner of manufacture’ in patent law (see 12.3ff) is a clear example.33 When parliament leaves a concept to be developed by the courts this introduces a level of uncertainty that some stakeholders find difficult to accept. In copyright law over recent years there has been intense debate about whether Australia should introduce a broadly based ‘fair use’ exception similar to the defence that operates in the United States.34 A broadly worded defence would require judicial interpretation that might take some years to evolve. Detailed and complex drafting is often parliament’s response to this kind of uncertainty. However, it must be remembered that it is the courts that

interpret statutory provisions, and sometimes the result can be expansive no matter how intricately those provisions have been drafted. For example, traders have sought to prevent [page 13] competitors copying their products by arguing that they are in breach of the copyright in the plans and models from which the products originated. Courts have been quite happy to allow this sort of action to succeed (see 8.15), only rarely responding to the argument that protection of this magnitude simply could not have been parliament’s intent.35 1.20 The common law is also an important source of intellectual property rights in a number of respects. In the first place, as explained in Chapters 3 and 4, trade secrets and other confidential information may be protected against use or revelation through the equitable doctrine of breach of confidence. This permits information and ideas to be safeguarded solely on the basis that they have not yet moved into the public domain. The same objective may be pursued by enforcing contractual obligations of secrecy. The law of contract indeed plays an important role in relation to all forms of intellectual property. Besides facilitating the assignment and licensing of rights, it may help to determine the initial ownership of those rights. This is particularly true in the employment context, where terms implied by the judiciary have (at least until recently) supported the notion that employers are entitled to the creative work of their employees.36 The common law also allows the integrity of the connection between a business and its customers to be protected in a way that backs up and even extends the statutory protection given to trade marks. This is achieved through the tort of passing off, discussed in Chapter 16, which makes it unlawful for a person to deceive a section of the public into identifying that person’s business with that of the plaintiff. The problem with the common law is that, viewed globally, it cannot claim to be thought out on any coherent basis. The sorts of issues in which the courts have tended to be interested have often had

little to do with the delicate balance between competing public interests that, as we shall see, is (or should be) the hallmark of policymaking in this area.37 The law of confidentiality, for instance, allows a person to sit on an idea, no matter how useful, for as long as they wish to keep it secret — a position arguably at odds with the basic premise underlying the statutory systems that ideas as such ought not to be capable of being locked up or denied to others: see 3.10.

Consumer protection legislation 1.21 One important set of provisions which has not yet been mentioned, but which has a significant impact upon the field of intellectual property, is that contained in the Competition and Consumer Act 2010 (Cth).38 As Chapter 22 explains, the Act deals with restrictive practices, and prohibits contracts, arrangements and covenants that have an anti-competitive tendency, as well as more specific manifestations [page 14] such as exclusive dealing arrangements and price-fixing. Many standard provisions in agreements that are designed to license or assign intellectual property have the potential to fall foul of Pt IV, although s 51(3) specifically exempts such agreements to a certain degree. More importantly, the consumer protection provisions in the Australian Consumer Law (which forms Sch 2 to the Act) regularly come into play, especially the prohibition on misleading or deceptive conduct in the course of trade or commerce: see 16.29ff. These provisions have principally been used to reinforce the tort of passing off, to the point indeed where common law liability for misappropriation of business reputation has virtually been subsumed. However, they may also be used to back up a claim alleging infringement of another intellectual property right, the argument being that the public is being deceived as to the ownership of or entitlement to the relevant matter.39

Administration and policy-making 1.22 Responsibility within the federal government for administration of Australian intellectual property laws is curiously fragmented. The main division is between copyright on the one hand, and the ‘industrial property’ areas of patents, designs, trade marks and plant breeder’s rights on the other. Copyright falls within the portfolios of the Attorney-General and Minister for the Arts. Patents, designs, trade marks and plant breeder’s rights fall under the aegis of the Department of Industry, Innovation and Science. Within that department, though operating more or less autonomously, is IP Australia, which administers the registration systems for each of the four regimes. Originally known as the Australian Industrial Property Office, the organisation was formed in 1992 to unite the previously separate Patents, Designs and Trade Marks Offices. Its head office is located in Canberra, and it now also has responsibility for plant breeder’s rights. This division of responsibilities with copyright separate from the other regimes means there is no single person or body responsible either for policy-making within the government, or for providing expert advice on appropriate legislative and administrative changes for all intellectual property. The Advisory Council on Intellectual (formerly Industrial) Property (ACIP),40 reporting to the Federal Minister for Industry and Science, provided advice on patents, designs, trade marks and plant breeder’s rights issues until it was abolished in April 2015.41 The Copyright Law Review Committee (CLRC) was a part-time committee appointed by the AttorneyGeneral to consider and report on specific copyright matters referred to it but [page 15] was disbanded in 2005. There is at present neither a permanent committee with responsibility for overseeing copyright law reform, nor a permanent committee responsible for the intellectual property regimes administered by IP Australia. The Australian Law Reform

Commission has been tasked with reviewing aspects of copyright law.42 Most recently, the Productivity Commission has undertaken a major review of all of Australia’s intellectual property arrangements.43 The only other broad inquiry in recent times to range across the various intellectual property regimes had a very specific focus. The Intellectual Property and Competition Review Committee (IPCRC) was an ad hoc body chaired by the economist Henry Ergas and charged by the federal government to review all intellectual property legislation (other than the Plant Breeder’s Rights Act) by reference to the 1995 Competition Principles Agreement between the Commonwealth and the states. The IPCRC’s general view was that ‘the system of intellectual property laws acts to promote competition by maintaining the incentives to innovate, while striving to strike a balance … between those incentives and society’s interest in the widespread diffusion of ideas’, though it also recognised that intellectual property rights ‘can be used for anti-competitive ends’.44 Although making a large number of specific suggestions to improve existing laws, the committee did not propose fundamental changes to the current system. The Productivity Commission’s view of Australia’s IP arrangements is expressed in stronger terms in its Overview: Australia’s intellectual property (IP) arrangements fall short in many ways and improvement is needed across the spectrum of IP rights. IP arrangements need to ensure that creators and inventors are rewarded for their efforts, but in doing so they must: foster creative endeavour and investment in IP that would not otherwise occur; only provide the incentive needed to induce that additional investment or endeavor; [and] resist impeding follow–on innovation, competition and access to goods and services. In terms of the administrative and political arrangements in place, the PC adds that: The absence of an overarching objective, policy framework and reform champion has contributed to Australia losing its way on

IP policy. Better governance arrangements are needed for a more coherent and balanced approach to IP policy development and implementation.45 The Commonwealth Government accepted the PC recommendations relating to coherent IP policy, and has established a dedicated IP Policy unit in the Department of Industry, Innovation and Science (DIIS); clarified the respective roles of IP Australia (technical policy issues) and the DIIS (broader policy issues); and created a standing Interdepartmental IP Policy Group (IPPG) to ‘support an integrated and coherent approach to developing the Government’s policy agenda for IP issues, with [page 16] regard to the Commission’s policy framework’.46 That policy framework, contained in Recommendation 2.1 of the PC report, is expressed in the following terms:47 In formulating intellectual property policy, the Australian Government should be informed by a robust evidence base and be guided by the principles of: effectiveness, which balances providing protection to encourage additional innovation (which would not have otherwise occurred) and allowing ideas to be disseminated widely efficiency, which balances returns to innovators and to the wider community adaptability, which balances providing policy certainty and having a system that is agile in response to change accountability, which balances the cost of collecting and analysing policy-relevant information against the benefits of having transparent and evidence-based policy that considers community wellbeing.

AREAS OF OMISSION General 1.23 At 1.3, we discussed the forms of intellectual activity comprehended by the WIPO definition of intellectual property. Not all of these are protected under Australian law, and some are given only scant protection. The WIPO definition itself does not cover all possibilities, for example traditional knowledge, genetic resources and folklore, an area over which WIPO member states have been engaged in lengthy negotiations for some time.48 The following paragraphs list some of the significant areas in which Australia’s current systems are ‘deficient’, whether for good reasons or bad.

Scientific discoveries 1.24 Scientific discoveries as such are not eligible for protection under the Patents Act 1990, except to the extent that their secrecy may be preserved. Once published, anyone may use them. Patents are only granted to those who invent a manner of manufacture that is new and not obvious; the person whose theoretical work contributes to the state of knowledge against the background of which inventive activity takes place, but does not contribute to the relevant invention, has no claim to the fruits of their effort.49 That principle means that the mere discovery of the existence in nature of a particular organism or chemical substance or law of physics is not patentable: they must be put to some new commercial use, and even then monopoly rights may only be acquired over the particular use, not the organism, law or substance itself: see 12.4ff. This has significant implications for the protection and exploitation of breakthroughs in fields such as biotechnology and the controversy has risen again in arguments about the patenting of genes. Biotechnology and [page 17] pharmaceutical companies assert that patent protection is a critical

factor in decisions to invest in the time-consuming and highly expensive research and development that leads to new forms of treatments based on genetic materials. They argue that the work required to identify therapeutic uses for genetic material and the application of highly sophisticated technology to produce a useful result is a process of invention, not mere discovery. Advocacy groups argue that patents over genes increase the costs of access to new and important medical breakthroughs and may inhibit the development of more sophisticated and flexible uses of the genetic material. They also argue that the innovations that seek to patent gene sequences as such should be seen as involving mere discovery rather than invention, that the developments are not novel since the basic materials exist in nature, and that the application of biotechnical procedures to either isolate or utilise the genes are merely obvious: see 12.27–12.34. The matter has now been resolved by the High Court, which has classified gene sequences as information and thus not patentable subject matter.50

Indigenous art and culture 1.25 The present regimes are ill-suited for the protection of intangible forms of cultural heritage. This is a particular problem for Aboriginal groups, as their culture has come under threat from persons ranging from the (sometimes) wellmeaning researcher to the commercial enterprise that wants to cash in on the latest craving for Aboriginal art.51 It has been possible in some instances to use the law of confidentiality to restrain the circulation of hitherto secret material52 and the law of copyright to protect relatively recent works of art against unauthorised reproduction.53 However, neither of these avenues will be available in regard to matter which has not been kept secret and which, especially in the case of ‘traditional’ designs and songs, struggles to satisfy basic requirements for the subsistence of copyright such as the identification of a particular author and the preservation of the work in a ‘material form’. Nor is the present law of copyright readily suited to claims that are essentially collective rather than individual in nature.54 Although copyright law recognises joint authorship, that does not correspond to indigenous communal

ownership.55 Many Aboriginal designs and rituals are subject to strict rules within the relevant community as to access, use and disclosure.56 However, those customary laws may count for little in the face of the assumption that copyright ownership vests in the individual creator, not the community to which [page 18] they belong.57 In some instances, indeed, copyright may be allocated to someone outside the community altogether: for instance, where a researcher who is not merely acting as an agent for the community collates or records stories or ceremonies not previously preserved in material form. There have been a number of proposals designed to overcome the lack of recognition accorded to the customary laws of indigenous groups in this country. In 1981 a working party set up by the federal government proposed an Aboriginal Folklore Act, which would prohibit any non-traditional use of sacred–secret folklore and establish a Commissioner for Aboriginal Folklore to issue clearances and negotiate payment for approved uses.58 It has also been suggested that the Aboriginal and Torres Strait Islander Heritage Act 1984 (Cth), which at present applies to areas and relics of cultural significance, be amended to allow Aboriginal communities to pursue unauthorised use of artwork.59 An alternative possibility is to amend the Copyright Act 1968 itself to incorporate such a right. There are a number of practical difficulties with the notion of vesting what might be regarded as competing rights in the original creator (as the ‘author’) on the one hand, and a community on the other.60 There have been proposals to amend the moral rights provisions in the 1968 Act to provide specific protection to both indigenous artists and communities in relation to ‘inappropriate, derogatory or culturally insensitive use’ of their work,61 or to pursue community claims under the Native Title Act 1993 (Cth)62 along with more radical ideas such as an expanded law of blasphemy.63 In 2009, the Australian Government adopted the United Nations

Declaration on the Rights of Indigenous Peoples.64 Article 31 of the Declaration provides that: Indigenous peoples have the right to maintain, control, protect and develop their cultural heritage, traditional knowledge and traditional cultural expressions, as well as the … oral traditions, literatures, designs, sports and traditional games and visual and performing arts. They also have the right to maintain, control, protect and develop their intellectual property over such cultural heritage, traditional knowledge, and traditional cultural expressions. Australia originally voted against the Declaration in 2007, but the Labor Government reversed that position in 2009. In response to Australia’s adoption of the Declaration, [page 19] Terri Janke has argued for a National Indigenous Cultural Authority65 that would administer and protect rights, along with sui generis legislation for indigenous cultural rights.66 The Resale Royalty Right for Visual Artists Act 2009 (Cth) was seen as a small step towards protecting the interests of indigenous artists, entitling them to a proportion of the resale value of their artworks beyond the initial sale. Lack of legal control over community heritage is also a concern in relation to a different issue: the attempts of ‘bioprospectors’, often acting on behalf of drug companies or foreign research institutions, to appropriate genetic material or other useful substances drawn from the environments inhabited by indigenous people — or even from those people themselves.67 Article 31 of the Declaration on the Rights of Indigenous Peoples also recognises rights to ‘manifestations of [indigenous peoples’] sciences, technologies and cultures, including human and genetic resources, seeds, medicines, knowledge of the properties of fauna and flora’. More recently, the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of

Benefits Arising from their Utilization 2010 is a global agreement that seeks to implement the access and benefit-sharing obligations found under the Convention on Biological Diversity. Parties to the Protocol must establish rules to ensure that genetic resources are only acquired through a legal process, that there is regulated access, and that there is informed consent and benefit sharing, including access to and transfer of technology to the governments and communities that provided the resources. Parties are obliged to establish one or more checkpoints to collect information on the source of genetic materials, the mutually agreed terms and the uses of the materials. The Protocol has some major exceptions in that it does not apply to human genetic material or to resources collected before the Protocol comes into effect. Australia ratified the Convention on Biological Diversity on 18 June 1993 and signed the Nagoya Protocol in January 2012. The Protocol came into force on 12 October 2014. Australia is developing an approach to implementing the Protocol.68 The Commonwealth has already passed the Environment Protection and Biodiversity Conservation Act 1999 (Cth) and in 2005 declared new regulations that came into force on 1 December 2005 to restrict ‘bioprospecting’ in certain situations.69 Queensland has also enacted the Biodiversity Act 2004 (Qld). These legislative tools, although a beginning, still appear to be more focused upon the commercial opportunities that exist for research and development industries than the interests of indigenous peoples, communities [page 20] or cultures,70 and important reforms to domestic laws will be required for Australia to implement the Nagoya Protocol. In particular, mechanisms will be required to collect information on the source and use of genetic resources and mutually agreed terms with indigenous communities.

Product simulation and the ‘gap’ in designs/patent protection

1.26 When a firm puts a new product on the market, it may be able to call on a number of different intellectual property rights to prevent (or at least delay) competitors copying the product and cutting into the firm’s profits. If the product itself or the process for making it is sufficiently novel and inventive, a patent may be acquired and used to block any commercial exploitation of the same product or process. If it is the distinctive appearance of the product that has been copied, this may infringe registered design rights. If the copy is marketed in such a way as to deceive consumers into thinking that they are getting the original firm’s product, or at least that the maker is somehow connected with the original firm, there may be a remedy in the law of passing off or under consumer protection legislation. More controversially, the firm may seek to argue that the rival product infringes copyright in the drawings or models from which the firm’s product was originally made; though attempts have been made in recent years to curtail this possibility: see 8.15, 10.30ff. In many instances, however, none of these laws is infringed, because the product is not that inventive, its functional characteristics rather than precise appearance have been copied, and the competitor has taken steps to dispel any suggestion of the products coming from the same source.71 This ‘gap’ in protection has attracted much adverse comment from manufacturers, especially in relation to products that involve ‘low level’ or ‘incremental’ innovation at a functional level. These products may require significant investment to develop and produce, yet be susceptible to rapid and relatively inexpensive copying. The scope of designs protection was considered in the 1990s by three reviews that differed on whether it ought to be broadened.72 The designs regime continues to be subjected to critical scrutiny. ACIP issued its Final Report, Review of the Designs System, in March 2015.73 The Commonwealth Government accepted many of its recommendations,74 noting that others would come within the purview of the [page 21]

Productivity Commission review of IP arrangements, and yet others were relevant to the review of IP-related fees by IP Australia.75 1.27 Unlike the position in many European countries, there is at present no general principle in Australian law that competitive conduct which does not infringe one of the specific rights already mentioned should be treated as unlawful merely because it is in some sense ‘unfair’.76 This issue is discussed further at 1.44ff.

THE NATURE OF INTELLECTUAL PROPERTY Property rights 1.28 So far one significant point has been glossed over — the description of the rights involved in the subject as a form of property. At one level this should cause little difficulty. It has long been apparent that the concept of ‘property’ is no more than a reference to the bundle of exclusive rights, whether absolute or limited, that the law is prepared to recognise as governing the relations of persons as to a ‘thing’, whether tangible or intangible.77 From this perspective it makes sense to describe those rights accorded in relation to creative endeavour as proprietary rights. Indeed, most of the relevant statutes expressly state that the rights they confer are personal property.78 Nor has the common law had any difficulty in treating business goodwill as a proprietary interest worthy of protection through the law of passing off: see 16.2. The only real point of controversy in recent times has been whether secret information can be regarded as property: see 3.12. This is not to deny that there is something different about intellectual property compared to other types of property. As Davies and Naffine point out:79 Unlike property in physical things, intellectual property protects ‘things’ which are infinitely reproducible, and which obtain their commercial value largely through the policing and protection afforded by law … [P]aradoxically, intellectual

property protects as property (and therefore as identifiable, unique, attaching to [page 22] a particular person) something which is intrinsically not unique, and which exists on a continuum with the intellectual ‘commons’ of language, science, and artistic convention. There is no inherent separability of an object of intellectual property from our abstract life — any separation and attribution of proprietary rights is purely a conventional, or legal, act. Furthermore, as MacCormick notes, items of intellectual property are like money in that they ‘have use value [only] by virtue of the regime that gives them exchange value’. That value arises because the law ‘creates an artificial scarcity by assigning an exclusive privilege of exploitation to the person it qualifies as right-owner or licensee’.80 The scarcity is artificial because inherently intellectual creations are an inexhaustible and non-rivalrous resource. Unlike the supply of coal, ‘using’ intellectual ‘property’ does not diminish its availability to others or result in its depletion. Once the conceptual nature of intangible intellectual property is recognised, significant debates emerge among commentators and rights-holders over the scope of protection that should then be granted. Not every identifiable ‘thing’ must belong to someone,81 and not all fruits of intellectual activity have some intrinsic claim to be treated as property.82 Important policy factors must be weighed up83 before it is decided what rights, if any, should be accorded. At the other end of the spectrum from those who would protect all investment of intellectual activity are those who argue that a proprietary analysis is fundamentally inappropriate in this area. It has been claimed, for instance, that ‘allocating property rights in knowledge makes ideas artificially scarce and their use less frequent’.84 It has been argued by Drahos that the ‘proprietarian creed’,85 assigning property rights a fundamental and entrenched

status, tends to ‘promote factionalism and dangerous levels of private power’86 and that the better view is to regard intellectual property as a set of privilege-bearing duties with a strongly articulated conception of the public purpose and role of intellectual property.87 This ‘instrumentalist attitude’ would locate intellectual property in the context of some broader moral theory and set of values.88 Nevertheless, the ‘highly flexible concept of personal property’ applicable to incorporeal property developed through Roman and English law has provided a useful platform for considering the relationships between information, rights, economic growth and power, even if (as Drahos would argue) a proprietary [page 23] analysis is incapable of founding a general theory of intellectual property.89 In any case, the proprietarian analysis sits uneasily with the temporary nature of most intellectual property rights.

POLICY ISSUES Importance of intellectual property 1.29 As an area of law, intellectual property is clearly very important, going back to the first printing presses and the medieval guilds. To the writer or composer or artist, their works may represent their livelihood, while to publishers they represent potential profits. To industry, intellectual property represents large investments of time and money — and the possible creation of enormous wealth. To businesses generally, their reputation, their name and the appearance of their goods represent their position in the market. Intellectual and industrial stock in trade is just as important as buildings or other tangible investments. Thus, the law has come to regard the results of intellectual and industrial endeavour as sufficiently important to warrant protection. Moreover, this protection has gained in importance over the past

century. This can be ascribed to a combination of factors. An important one has been the way that innovation has passed almost completely from the hands of individuals working on their own account. Nowadays it tends to reside more with teams of employees or contractors engaged by public or private enterprises. With the concurrent move towards ever larger conglomerations of capital, both domestically and globally, the stakes have dramatically increased where industrial creativity is concerned. Given the colossal amount of investment in innovation and the associated need for profitable returns90 it is hardly to be wondered that competition has grown fiercer and that great importance is attached to protecting both significant ‘leap forward’ inventions and the marginal improvements that can provide a longer term competitive edge. There are indeed entire industries, of which the pharmaceutical industry is an outstanding example, which were founded on such significant inventions. Nowadays, with their pipelines of blockbuster products running low, they are, among other strategies, more reliant on marginal improvements that possess longer term competitive advantages. Where these enterprises are concerned, any loss of protection is a crucial factor that can result in a significant diminution [page 24] of enterprise value.91 The same is true in the communication and entertainment industries, which are dependent on the law of copyright.92 A further factor has been the impact of new technology. The nature and sheer weight of the advances made in the last century or so, and the efforts made to exploit them, have placed great pressure on the law to respond with appropriate protective regimes. In the field of biotechnology, advances in isolating, sequencing, extracting or synthesising genes and genetic material have raised some fundamental questions about the scope of patent protection.93 Advances in information technology have had a similar impact

upon copyright law. Think, for instance, of the effect photocopiers, cassette recorders and digital scanners, not to mention the internet, have had on the ability to control the dissemination or exploitation of information and ideas. The very medium of computer data storage lends itself to unauthorised access and copying. In terms of business goodwill, there is also the influence of multinationals to consider, with their ability to transport products and create instant reputations through advertising. The result has been that the value attached to intellectual property has grown, and the ways of exploiting it multiplied, yet at the same time it has become harder and harder to protect. A number of critics have suggested that traditional intellectual property protection is neither appropriate nor effective in the digital world.94 In official circles, however, most debate has focused on how to protect material effectively in such an environment while protecting the benefits to consumers of free competition,95 rather than whether it should be abandoned.

Rationales for protection 1.30 Moral arguments Given the pressure imposed on legislatures and courts to protect creative effort, it becomes vital to identify the rationale for according such protection. Why should the law intervene at all? To a certain extent it can be said that the intervention is based on moral considerations. From the point of view of the person whose intellectual activity is in question, they might be seen as having some sort of ‘natural right’ to what they create, an entitlement recognised by Art 27(2) of the Universal Declaration of Human Rights: ‘Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he [sic] is the author’. This is often backed up by highlighting [page 25] the inherent ‘unfairness’ of appropriating another’s effort without consent. As the United States Supreme Court put it in the

International News Service case:96 [The defendant], by its very act, admits that it is taking material that has been acquired by complainant as the result of organization and the expenditure of labor, skill and money … and is endeavouring to reap where it has not sown. The harvesting metaphor used here has become a powerful image in establishing the illegitimacy of the person who ‘steals’ a reward that justly belongs to the original author or inventor. In fact, the notion of a ‘natural right of property’ in abstract objects discovered or created by individuals as a just reward for their industry has a long history — albeit modified by limitations on the sanctity of property rights arising from notions of the ‘intellectual commons’ or ‘public domain’.97 1.31 Economic arguments From the earliest times of legal protection, however, the main considerations in countries bearing the British influence have been economic rather than moral. It was not by chance, for instance, that copyright was introduced in Britain to protect publishers rather than authors, or that the patents system originated in the demands of those aristocrats and landowners of Elizabethan times who operated a certain measure of risk capital. Protection today is still based on recognising the value of creative endeavour to those who are prepared to develop and exploit it. It is also, as van Caenegem points out, ‘firmly anchored to a world view in which the pursuit of material progress plays a central role’, a pursuit whose ‘economic motor and political bedrock … is the competitive application of new knowledge within the framework of proprietary rights’.98 At this point, however, is encountered an internal or economic contradiction. As Cooter and Ulen explain: The distinguishing economic characteristic of each of [the] methods for establishing property rights in information is that they are monopoly rights. This seems paradoxical in that, in general, a monopoly is less efficient than a competitive industry, but information is an unusual commodity … By giving monopoly power to the creator of an idea, that person is

presented with a powerful incentive to discover new ideas. However a monopolist tends to discourage use of a good by overpricing it. Put succinctly, the dilemma is that without a legal monopoly not enough information will be produced but with the legal monopoly too little of the information will be used.99 The underlying problem here is that information is effectively a ‘public good’. It is an unusual commodity precisely because it can be consumed by one person and yet still be available to others, and because the cost of preventing others from appropriating it may be so high that private actors are unlikely to want to produce it in the first place. The conferral of a monopoly is thus a response to a (potential) market failure — the problem that ideas will not be developed for fear that [page 26] ‘free-riders’ will rob the risk-taker of any consequent benefit. However, as Cooter and Ulen point out, the danger of this monopoly is that the resulting product may not be delivered to the public at a price which would encourage consumption100 — thus producing market failure of a different kind. 1.32 Another adverse consequence is that the development of certain ideas may be deferred, perhaps indefinitely. This may be because their owners see some benefit in locking them up, not wanting, for example, to give an advantage to competitors who are better placed to exploit them, or wishing to get more mileage out of existing products before introducing something which will make those products redundant. This problem of socially beneficial ideas not being developed arises in its most acute form where private producers are deterred altogether from moving to exploit an idea because the potential market for it is so unprofitable, or unduly risky because the innovation cannot be patented at all in significant jurisdictions, or a possible patent would be too narrow or require complex cross permissions to be successfully commercialised. A

variant on this situation, which has prompted much discussion at an international level in recent years (see 21.20), occurs when a patented drug or medicine is produced, but is priced by the patentee well above what those who most need it in developing countries can possibly afford to pay.101 1.33 Innovation and incentive What all this comes down to is whether sufficient incentives are being provided for the right sort of innovation102 to take place. Once upon a time this might have meant looking at whether individual authors or creators were being suitably rewarded for their efforts and/or protected against the attempts of others to deprive them of their spoils (note that these are simply a rehash of the moral arguments discussed above, though placed now in an economic perspective). But if this was ever the case, which is doubtful, it certainly no longer holds given the trends and developments to which reference has already been made. In the modern world the issue is plainly one of investment, the assumption being that those with private capital or public expenditure at their disposal will themselves create the necessary incentives for individuals to be creative. This is not to say that all intellectual property laws are necessarily the product of a precise economic calculation, that in other words the creation of intellectual property rights can in each instance be explained by a desire at the relevant point in history to create appropriate incentives for investment in ideas and innovation. After all, the copyright and patents systems originated well before this kind of economic analysis became fashionable.103 It should also be borne in mind that there have been many societies in which economic or technological development has [page 27] occurred without anything in the nature of intellectual property rights. We may note, for example, the suggestion: … that far from being universal, it is the ideas of ownership embedded in modern Western intellectual property that are the

historical aberrations, and that these ideas have achieved the currency they now enjoy internationally as much because they are backed by great economic might as because of their appeal to our common sense or their innate conceptual force.104 But even accepting that the economic rationale for intellectual property rights is a thoroughly modern and indeed Western construct, this is not to deny its force today.105 The fact is that it is generally believed, certainly by policy-makers at both a national and international level, that intellectual property can and should be justified by reference to its capacity to stimulate innovation.106 So much was indeed accepted by the IPCRC in its review of intellectual property and competition (see 1.22), though the committee also noted a further justification. This is that the allocation of intellectual property rights ‘increases the ease with which intellectual property can be traded, most visibly through assignment and license’, thus encouraging efficiency in the allocation of information and ideas as well as its production.107 In the absence of such rights, the committee observed: … investors in intellectual property would have to rely on contractual mechanisms to protect their interests. In many areas of technology, and particularly those where copying or reverse engineering are relatively easy, such contractual restraints could not provide adequate protection. Even in areas where contractual mechanisms could be effective, it is not likely that they would be efficient. Rather, social costs would almost certainly be higher under such arrangements, than they are under the current panel of protective instruments.108 If the justification for the granting of intellectual property rights is economic and an aspect of its rationales is founded upon incentives to innovate, then ideally the granting of new rights or the extension of existing rights ought to be based upon sound economic analysis and their effectiveness reviewed upon that basis. A question that needs to be answered in the years following legislative reform is: did it in fact have the impact anticipated?109 1.34 The limitations of economic analysis Economic analysis can

be useful to estimate, at least in crude dollar terms, what it costs or would cost society to pursue various objectives, and even more useful to predict the likely reactions of those [page 28] subjected to particular forms of regulation.110 In the case of patents, for instance, attempts have been made to assess whether the type of system currently in place here and in most other countries provides a cost-efficient way of encouraging inventions: see 11.6. At some point, though, the decision on appropriate protection must leave the realm in which careful economic analysis may be determinative. At this juncture the relevant questions depend, or should depend, on broader issues of social policy. Do we need innovation at all? If so, what sort of innovation?111 What cultural or political factors do we consider relevant, beyond the bare financial equation?112 1.35 Patent law offers two important illustrations of public policy questions in the field of medical research, both recently before the Australian courts: first, patenting genes (see 12.30ff); and second, whether methods of medical treatment should be patentable subject matter: see 12.16–12.17. As French CJ commented in relation to the latter issue, ideally, these large questions are ‘best left to the legislature’.113 1.36 Of course, it is not always easy for these questions to be addressed in the political realm, but that is where they ultimately play out.114 It is all very well to speculate as to what sort of regulatory system we might put in place if we had the chance to start again, but in reality the opportunities to begin from scratch are likely to be rare. The roots of the established intellectual property regimes go back a long way and it would mean an enormous upheaval to displace them altogether.115 Quite apart from the administrative problems caused by radical change, it is inevitable that those with vested interests in the existing system would fight hard to retain their advantage. Moreover, countries are increasingly constrained by their international commitments. The TRIPS Agreement in particular has

acted as a powerful force for the adoption and retention of certain types of intellectual property protection in many countries, while the bilateral Australia–United States Free Trade Agreement offers a more recent example of the trade-related pressures to harmonise laws: see 1.50. [page 29] 1.37 Striking a balance The formulation of intellectual property rights requires a delicate balance to be struck. If there is too little protection, investment may not take place: for why spend time and money developing a new concept or approach if it is more efficient to behave as a free-rider? Too much protection, on the other hand, may lead to useful matter being locked up or, more probably, becoming the source of monopoly profits. Ideally, the aim is to encourage the initial decision to invest in new ideas, while thereafter providing an appropriate climate for the benefit of those ideas to spread. So long as those who are prepared to innovate are not entirely deprived of the incentive to do so and can glean at least some benefit from their risktaking, there is nothing wrong with competitors expending their own effort in engaging in further development of the ideas or products pioneered by the innovators. The Productivity Commission in its report noted that improvements were needed across the IPR spectrum in Australia: see text quoted at 1.22. The Commission also noted that: Reform efforts have more often than not succumbed to misinformation and scare campaigns. Steely resolve will be needed to pursue better balanced IP arrangements.116 The PC was not satisfied with the state of Australian IP law. In its overview of key points emerging from the report, it states that ‘Australia’s intellectual property (IP) arrangements fall short in many ways and improvement is needed across the spectrum of IP rights’. It then goes on to address the question of ‘balance’ in the following terms: ‘IP arrangements need to ensure that creators and inventors are rewarded for their efforts, but in doing so they must: foster creative

endeavour and investment in IP that would not otherwise occur; only provide the incentive needed to induce that additional investment or endeavor; resist impeding follow-on innovation, competition and access to goods and services.’ In very short outline the PC goes on to say that patents are too readily granted in Australia; copyright is broader in scope and longer in duration than needed, and access to copyright material too restrictive; the full force of competition law should be brought to bear on IP; enforcement mechanisms should be enhanced, particularly for SMEs; and Australia should have a more coherent IP policy resistant to pressures from abroad.117 The solutions proposed by the PC will be addressed in more detail in the chapters dealing with each of these areas of IP law.

Determining the scope of protection 1.38 Decisions to be made It should be apparent from the foregoing that the law must be constantly wary of the extent of the protection that it offers to creative effort; there must be a system of checks and balances. Moreover, the range of matters encompassed within the conception of intellectual property breaks down into subareas to each of which very different considerations may apply. Just as within the law of property different rules may apply to land and chattels, so there is no [page 30] automatic reason to treat, for example, literary effort in exactly the same way as business reputation. In introducing legislation, various decisions will need to be made: the subject matter to be protected and how it is to be defined; who is to be accorded the benefit of any protection; the width of that protection; the means of informing the public about the protection; the appropriate sanctions, and so on. This can be illustrated by reference to another important issue, the duration of protection. A business only needs protection for its reputation, for instance, while it is indeed in business. Once trading ceases, its style, names and get-up should be available to others, so

long as they do not deceive the public. Thus, a trade mark is lost through non-use and it is a prerequisite of passing off that the plaintiff have an existing market reputation. Artists and authors, on the other hand, were traditionally said to require protection for as long as they and their families needed to eat. When both they and their families are dead, there is no reason why their works should not be fair game: hence the copyright duration based upon the span of the author’s or artist’s life. As for inventors, they merely need an opportunity to obtain a reasonable return on their invention. The standard patent term of 20 years is intended to allow this, providing the invention is marketed with vigour; but to determine empirically whether the 20-year term is optimal for the purpose is well-nigh impossible. In any case, pharmaceutical patents benefit from an extension of term beyond 20 years, to reflect particular regulatory conditions that apply to them. 1.39 Who should own the rights? Given that a right is to be allocated, the law must identify the person who is to exercise that right and be able to transfer it to others. The question is approached in different ways across the different regimes. Most have a general rule that the initial owner is the person responsible for creating the subject matter of the right: the author or maker of a copyright work, circuit layout or registered design, the inventor of a patented invention, the breeder of a new plant variety, or the trader who builds up a reputation sufficient to found an action in passing off. However, there are exceptions to this pattern. The trade mark system, for instance, awards ‘proprietorship’ to the person who first uses a mark in Australia, irrespective of who has actually developed it or whether the mark has been used overseas: see 19.33ff. With confidential information, the question is posed in terms of standing to enforce a duty of confidence. That duty essentially arises through possession of secret information, no matter how the information came into existence: see 4.1–4.2. Even in relation to the ‘creator as owner’ regimes, there may be specific qualifications. With designs and certain types of copyright material, for example, commissioned work is presumed to vest in the commissioner rather than the creator (see 7.6, 10.9); while copyright in any work made or first published ‘under the direction or control’ of the Commonwealth or a state is taken to

belong to the Crown: see 7.10. More importantly, though, each regime has adopted a general qualification that in practice is crucial to the determination of ownership. Where the person who would otherwise be regarded as the rights-owner has performed the relevant act (creation of the work, design or invention (etc), use of a mark, acquisition of information) in [page 31] the course of employment under a contract of service,118 ownership is presumed to be vested in the employer rather than the employee unless there is an agreement to the contrary.119 In most of the statutory regimes this presumption is explicit, though in the case of patents (as with confidential information) it has traditionally been a product of terms implied by law into the employment relationship: see 13.5ff, 4.33ff.120 1.40 The notion of employer ownership is by no means uncontested, however, especially in the higher education sector.121 For many years, the only claim made by Australian universities over intellectual property generated by academic staff in the course of research or scholarship involved commercially valuable inventions, usually generated by research teams in science, engineering or medical departments. It was (and is) routine for institutions to take out patents over such inventions, subject to an agreed share of any royalties from successful exploitation being returned to the researchers and their departments.122 By contrast, no attempt was typically made to assert ownership of copyright in the books, journal articles or other creative works generated by academics, who were free therefore to enter into their own arrangements with publishers: see 7.4. However, in recent decades the position has changed dramatically, with almost all universities at one time or other making sweeping claims to ownership over the work of academics.123 Most have still avoided claiming copyright in ‘traditional’ forms of scholarship (or if they have made such a claim, failed to enforce it), but it has become more common for rights to be asserted over

teaching materials (especially those developed for external programmes or distance learning), computer software, videos, multimedia packages and the like.124 In relation to inventions, there has also been an increasing emphasis on maintaining the secrecy of the work in question so as not to threaten the chances of gaining [page 32] a patent,125 notwithstanding the obvious conflict this creates with principles of academic freedom and dissemination of information and ideas.126 The change in attitude has been prompted by a number of factors. One is simply a drive to maximise any commercial opportunities arising from innovation on campus, especially given the clear expectation on the part of government that income must be privately generated to supplement or indeed replace shrinking public funding.127 Pressure has also been exerted by organisations granting research funds or firms participating as ‘industry partners’ in joint ventures with universities. These bodies prefer to deal with the university as sole owner of any intellectual property either brought to the project or generated in the course of it and often insist that the institution take whatever steps are necessary to put itself in that position. To that end, some institutions purport to claim not only staff-generated intellectual property, but any rights arising from the work of students (with the possible exception of copyright in theses). But unless a student is also an employee, a university can make no automatic claim on the student’s work: any acquisition of intellectual property rights must therefore result from an agreement validly made with the student.128 1.41 As some universities have found, it is not always easy to ensure that a policy on the ownership and management of intellectual property is both sensibly drafted and legally effective, even in relation to its employees.129 For example, in University of Western Australia v Gray130 the plaintiff not only failed to establish ownership of a series of inventions by its professor of surgery, it also managed to create a

precedent that caused disquiet throughout the university sector. It was held that the university could not rely on the patents regulations that were in force when Dr Gray was first employed, because the university itself had failed to adhere to the procedures they required. A later and more general set of intellectual property regulations were found not to have been promulgated in time to prevent the rights to the inventions being assigned by Dr Gray to a company he had established. While these and other findings about the invalidity of the regulations were specific to UWA, the court went on to hold that it was not ‘necessary’ to imply a term into Dr Gray’s employment contract entitling the university to ownership of any inventions he might create in the course of his research. The court’s reasoning is explained in more detail in 13.9. For now, it suffices to note that the decision has cast doubt on the [page 33] ability of universities, and potentially other employers as well, to claim ownership of employee inventions in the absence of some express arrangement to that effect.131 1.42 Nature of protection and degrees of exclusivity Another important issue that must be addressed is the degree to which the rights-owner is given exclusive control over the relevant subject matter. This depends to a large extent on how that subject matter is defined in the first place. In the case of a patent, the owner is given control over the idea behind the patented process or product, to the extent that idea is disclosed in the patent specifications. The patentee’s monopoly is an absolute one, at least as far as commercial use is concerned. Nobody may exploit the invention during the term of the patent, even if they arrive at the same idea through independent research. On the other hand, this monopoly lasts for a limited time only and the patentee is required to publish details of the invention so that others will be free to learn from it, and indeed use it when protection expires. With copyright, a different balance is struck. In theory at least, copyright cannot be used to control an idea, only

the particular expression chosen by the author. Nor is it any infringement to produce the same work independently, though it may sometimes be difficult to rebut a charge of plagiarism. As against that, copyright subsists for rather longer than patent protection. Nor need the work be published, so that in some instances copyright may be used as an instrument of censorship.132 The right conferred over a registered trade mark is different again. The proprietor’s right may subsist indefinitely, but is confined to restraining others from confusing the public by using the same or a similar mark. 1.43 Compulsory licensing Depending on the scope of the particular right, demands may arise for others to be given the chance to use or exploit the relevant matter, even during the subsistence of that right. In some cases this demand may be reflected by the availability of an outright defence to infringement. The Copyright Act, for instance, contains numerous provisions which allow use to be made of copyright material without penalty: see 8.38–8.53. In other instances regulators may opt for compulsory licensing, whereby the rights-owner is compelled to permit others to pay for the privilege of using the relevant matter. This is something the courts can in effect accomplish merely by refusing to enjoin an infringement and instead ordering the payment of compensation or an account of profits, though by and large they have not chosen to do so: see 2.13. In any event, most of the statutory schemes provide for compulsory licences. The reasoning behind these provisions may vary. In some instances the purpose to which the ‘infringer’ wishes to put the protected material may be so evidently worthwhile that the rightsowner should not be allowed to refuse access to it or set too high a price. Use by educational institutions of copyright material falls into this category: see 7.22. Alternatively, the concern may be that the rights-owner should not be able to sit on an idea which others are willing to exploit to their own and [page 34] the public’s benefit. This explains the power of a court to grant a

licence to exploit a patented invention133 to any person who can show that the patentee has not been satisfying the reasonable requirements of the public: see 13.26ff.134

A general principle? 1.44 Filling in the gaps A dominant theme in the discussion so far has been the emphasis on the disunity of intellectual property. The subject, as stated a number of times already, is comprised of various regimes, each of which deal in different ways with different subject matter. The question arises as to whether it is possible, despite the distinct origins of the systems, to develop some sort of unifying principle to underpin the protection of creative effort. Suggestions have included a notion of ‘misappropriation of intangible business values’135 or of ‘unfair copying’.136 Such a principle could perform two functions. The first and less ambitious function could simply be to fill in gaps left by the existing regimes, catching situations in which there has been an unjustified appropriation of the fruit of a person’s creative or commercial effort, yet no established intellectual property right has been infringed. The second and more far-reaching function would not merely be to supplement the individual regimes, but to consolidate and replace at least some of them. A broad principle would, it has been suggested, remove the need for ‘hybrid’ or ‘deviant’ protective regimes.137 These are laws which themselves attempt, albeit in an ad hoc and unsystematic way, to plug gaps between the established systems (or ‘paradigms’) of copyright and patents in response to the ‘jostling queue of claimants to new intellectual property, who assert that their investment in what they produce is large enough to justify legal protection against corner-cutting imitators’.138 Examples from the last two decades include the sui generis statutes dealing with circuit layouts and plant varieties, as well as the cramming of computer software into the copyright regime. Rather than continue to respond in a piecemeal way, so the argument goes, why not simply adopt a general scheme which ‘does not focus on the specific objects of protection but rather at the methods of acquiring the information or making the copy that, if permitted, would result in disincentives to

create or innovate’?139 As we have already seen, the impetus for an approach of this sort received a boost with the ALRC’s call (unanswered) for an investigation into the adoption of a broad anticopying right, in order to address concerns that incremental or minor innovations are receiving inadequate protection: see 1.26. [page 35] There is another way to view these gaps, not as something to be plugged but as an intellectual property free zone, otherwise known as the public domain. In IceTV v Nine Network Australia140 the High Court heralded a raising of the originality threshold for copyright protection of compilations of information that would leave unprotected basic collections with no creativity beyond ‘sweat of the brow’ production.141 Gummow, Hayne and Heydon JJ discussed the balance between the public interest in encouraging the production of literary works and the public interest in maintaining a robust public domain that facilitates the production of further works.142 1.45 The Victoria Park Racing case There seems little doubt that if a broad unfair copying right were to be introduced, it would need to be done on a statutory basis. On the surface at least, the courts in this country have resoundingly rejected any attempt to generate a common law principle of misappropriation of effort or unfair copying. In Victoria Park Racing and Recreation Grounds Co Ltd v Taylor,143 the plaintiff company ran the Victoria Park Racecourse, and objected to the defendants broadcasting information as to starters, scratchings and winners of races, accompanied by a ‘particularly vivid’ commentary provided by another defendant, Angles. Mr Angles acquired this information by standing on a tower built on land near the racecourse, thus being able to see into the ground and read the noticeboards. The majority of the High Court confirmed the dismissal of the action as disclosing no wrong known to the law. Dixon J pointed out that the law does not necessarily protect any form of effort, enterprise, organisation and labour which may result in something of value for which others are prepared to pay

(here, the establishment and equipping of a racecourse and doing all that is necessary to conduct race meetings).144 Rather, the protection of the law is offered ‘because the intangible or incorporeal right [claimed] falls within a recognised category to which legal or equitable protection attaches’.145 This much was: … sufficiently evidenced by the history of the law of copyright and by the fact that the exclusive right to invention, trade marks, designs, trade name and reputation are dealt with in English law as special heads of protected interests and not under a wide generalisation.146 [page 36] Almost 50 years later this view was reaffirmed by the High Court in Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2),147 when it rejected the argument that a tort of ‘unfair competition’ should be recognised: see 16.21. While this decision has attracted a certain amount of criticism, it is difficult to discern a compelling public interest in outlawing conduct that presently falls outside the existing regimes. How was society harmed, for instance, by the inability of the plaintiff in Victoria Park Racing to prevent its meetings being broadcast? Nonetheless, in civil law jurisdictions an action for unfair competition (without a necessary requirement to establish consumer deception) is an accepted part of the IP landscape. The Paris Convention in its Art 10bis (1) notably provides: ‘The countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition.’148 1.46 Has the law gone too far? If anything, the problem is the reverse one of preventing the courts (and indeed legislators) going too far in their enthusiasm to remedy what they perceive to be blatant instances of misappropriation of a person’s effort and investment.149 The judicial tendency to stretch the existing systems, or at least to prefer a broader interpretation over a narrower one, has been apparent at times in relation to the use of copyright to preclude the copying of databases: see 6.34. It can also be seen in the law of

confidentiality, which has gradually been extended to confer proprietary control over information (see 3.12); and in certain aspects of the law of passing off and its statutory equivalents, particularly where the practice of character merchandising is concerned: see 16.23–16.26. More generally, concern has been expressed that the current policy mix is entirely wrong and that more protection is given than is warranted by the need to encourage innovation. As one writer has argued: Instead of encouraging beneficial innovation … the effect of the intellectual property laws may be more to aid in the concentration of wealth and raise profits. The firms that benefit can then use their increased power to further prevent competition from outside innovators and thus increase their control over the direction of innovation as a whole.150 On this view, the conferral of extensive property rights merely entrenches the position of those who would be dominant anyway by providing further barriers to entry into the relevant market. If this is right, it might be possible to reduce intellectual property rights and yet achieve a more open market in ideas by encouraging smaller [page 37] players. The task that these players face is already a formidable one, for as Arup points out:151 … policy analysis suggests that successful innovation depends not only upon the appropriation of particular inventions but also, and maybe more importantly, upon the command of less discrete and transferable assets such as technological knowhow, processing know-how, individual and institutional cumulative learning, and the control over complementary assets such as factors of production and marketing networks, and organisational ability generally. Accordingly, reform of the intellectual property regimes would merely

diminish the substantial advantage already enjoyed by some in the race to capture the benefits of innovation. The tendency of the Productivity Commission report into intellectual property arrangements in Australia is exactly to sound the warning bell in favour of competition — intellectual property rights restrict competition, which itself is intended to benefit consumers. The PC is clearly of the view that legal protection for intellectual property has gone too far in many respects, and needs to be pegged back to increase efficiency. In the final analysis, intellectual property must strike a balance between static and dynamic competition to maximise consumer welfare — the former ensuring goods and services reach consumers without unproductive monopoly rents flowing to providers, the latter ensuring that there is a sufficiently varied supply of such goods in the first place. In Capitalism, Socialism and Democracy, the Austrian economist Joseph Schumpeter, referring to the dynamic substitution of new products for old, famously wrote: The opening up of new markets, foreign or domestic, and the organizational development from the craft shop to such concerns as U.S. Steel illustrate the same process of industrial mutation — if I may use that biological term — that incessantly revolutionizes the economic structure from within, incessantly destroying the old one, incessantly creating a new one. This process of Creative Destruction is the essential fact about capitalism.152 Drahos and Braithwaite argue that the exploitation of corporate advantage based on existing intellectual property rights, coupled with the post-TRIPS emphasis on expanding intellectual property rights and enhancing enforcement processes around the world, is creating a system of ‘information feudalism’, where: … knowledge assets [are transferred] from the intellectual commons into private hands. These hands belong to media conglomerates and integrated life science corporations rather than individual scientists and authors. The effect of this, we argue, is to raise levels of private monopolistic power to dangerous global heights, at a time when states, which have been weakened by the forces of

[page 38] globalization, have less capacity to protect their citizens from the consequences of the exercise of this power.153 They contrast the increasing penchant for corporations and even universities to use intellectual property rights to ‘lock up’ information and ideas with the great innovations of the twentieth century, most of which (up to and including the development of the internet and molecular biology) were the product of public funding and dissemination of research. Indeed: In the vast sweep of the history of human creativity the impact of intellectual property rights has been negligible because for most of that history those rights have not existed and, where they have, for the most part they have been poorly designed and even more poorly enforced.154 By getting the balance between the appropriation and diffusion of information and ideas so badly wrong, they argue, modern intellectual property regimes will ultimately choke innovation rather than encourage it. 1.47 A recipe for uncertainty? Returning to the suggestion that a broad principle of misappropriation or unfair copying be adopted, the biggest problem is in seeing how such a system could ever be implemented on a cost-efficient basis. The uncertainty that would be generated by having an adjudicator weigh every claim against some necessarily nebulous standard of impermissible conduct (or even ‘market failure’), not to mention the unlikelihood of consensus emerging on the ideal policy mix, weighs heavily against abandoning the current regimes. These regimes at least offer a measure of predictability in so far as ascertaining the existence of rights is concerned, particularly where registration is required. Property rights also allow the relatively precise demarcation of the extent of rights and what exactly they vest in, but establishing and enforcing them comes at a cost. Of course, the advantage can be overstated, for in each of the registration systems it is common to find doubtful applications being accepted by the authorities on the basis that any

controversy over their validity will be resolved in court. The delays and expense occasioned by such challenges can reduce litigation to a game of bluff and encourage an environment in which rights may be obtained, asserted or denied merely in order to secure a settlement in which the rights-owner or the challenger is bought off.155 It is also true, as Pendleton points out,156 that many cases under the existing regimes may be decided, consciously or otherwise, by the judge’s perceptions as to whether the defendant has been attempting to ‘cash in’ on the plaintiff’s skill and effort — the very question that a general principle of misappropriation or unfair copying might seek to have answered overtly. Nevertheless, there does not seem to be an overwhelming case for a broad principle of liability. No doubt the present laws [page 39] could be usefully improved in many respects, but they ought, and indeed are most likely, to be retained in something close to their current form.

International dimensions 1.48 General International cooperation and coordination came relatively early to intellectual property. It was driven primarily by the obvious advantages in countries securing reciprocal protection for the efforts of their own nationals. A spate of bilateral treaties in the middle of the nineteenth century ultimately led to two major multilateral agreements, the Paris Convention for the Protection of Industrial Property in 1883 and the Berne Convention for the Protection of Literary and Artistic Works in 1886. Today there are numerous conventions and treaties, which are discussed in detail in Chapter 21, along with organisations such as WIPO which are central to their formulation and/or administration. Although reciprocal treatment is still a major theme of these arrangements, other policies too may be identified. One, for instance, is to facilitate the administrative steps needed to secure protection in a range of

countries, by ensuring that applications made to an international office will be recognised by participating countries as fulfilling procedural obligations demanded by their domestic systems. 1.49 Harmonisation of laws: the TRIPS Agreement Another more ambitious aim is to promote greater uniformity in the content of local laws. Although a perennial objective of WIPO and other agencies, the significance attached to harmonisation of intellectual property regimes has been heightened in recent years by a number of factors. The emergence of global markets and the ever-increasing clout wielded by multinational enterprises have placed pressure on countries to free up their trading laws by treating domestic and foreign producers equally. To some extent this objective can be and has been pursued by the multinationals themselves. Their capacity to choose where to invest is a powerful weapon, particularly where their annual turnover dwarfs the gross domestic product of the countries they are targeting. This is a major source of concern for developing countries in particular, whose difficulties in meeting international standards and yet furthering their own priorities in terms of economic and social progress have been the cause of great tension within the various international forums. It is also common to find a large country going in to bat for its own producers where they are world leaders in a particular field. This may translate into a demand that local laws not merely treat foreign nationals equally, but provide protection equivalent to that which the demanding country has instituted, the United States strategy over semiconductor chips being a classic example: see 9.20. United States trade policy has indeed been very effectively employed, at both bilateral and multilateral levels, to address the problem of what are perceived to be ‘impenetrable market barriers’ around the world.157 A new measure of international agreement was achieved with the conclusion in late 1993 of the Uruguay Round on multilateral trade negotiations. The World [page 40]

Trade Organization (WTO) was formed to replace the General Agreement on Trade and Tariffs (GATT) as the body responsible for administering international trade. The 150 or so nations who have joined the WTO are required to accept a number of agreements, including the TRIPS Agreement.158 This sets out minimum standards not only for the protection of intellectual property, but also — something that WIPO has been unable to provide — effective enforcement procedures. Together with continuing United States pressure, TRIPS has had a major impact on standardising intellectual property regimes around the world. While this impact has been greatest in the developing world (including, for this purpose, the former socialist economies in eastern Europe as well as many of our neighbours in the Asia-Pacific region),159 more ‘advanced’ nations such as Australia also felt its effect. Australia as a signatory to the Agreement was compelled to make a number of legislative changes in order to comply with its obligations. The most significant of these changes involved the trade mark system, with a new statute (the Trade Marks Act 1994) being rushed through parliament in order to ensure compliance with TRIPS — only to be replaced before its proclamation by the Trade Marks Act 1995: see Chapters 19–20. Changes were also made to the copyright and patents regimes,160 with perhaps the most significant amendment being the lengthening of the standard patent term from 16 years to 20 years: see 11.55. 1.50 Beyond TRIPS: the push for free trade agreements However, technology continues to advance and commercial practices have responded with new products and new business models while social, cultural, ethical and political perspectives and expectations have continued to evolve in the years since the TRIPS Agreement came into force. The Doha Development Round, which commenced in 2001 and was intended to continue the WTO process of reform, standard setting and harmonization, has stalled with no likelihood of progress in the medium term. Major trading nations have responded by negotiating with selected trading partners bilateral free trade agreements that typically include chapters concerning intellectual property and establishing so-called ‘TRIPS Plus’ or ‘TRIPS Super Plus’ obligations. These have been controversial instruments and threaten a return to the bilateralism that marked the period before the

TRIPS Agreement. While it is often argued that free trade agreements will provide an incentive for increased trade between the particular parties, this may well be at the cost of the diversion of trade from non-party countries with the result that multilateral standards are weakened but without an increase in trade overall. Australia has negotiated a number of free trade agreements: see 21.67–21.68. The most far reaching of these is the Australia–United States Free Trade Agreement, Ch 17 of which is devoted to obligations concerning intellectual property. The Agreement required Australia to make significant adjustments to the copyright, [page 41] trade mark, patent and designs systems,161 and addressed domain name protection and the operation of the pharmaceutical benefits scheme. Clearly, Australia is not in an equal bargaining position with the United States and the Agreement appears to give far more advantages to the American side. Also important is the China– Australia Free Trade Agreement (Ch 11, ‘Intellectual Property’), which reaffirms the parties’ commitment to standards of IP protection in international agreements they are both party to.162 In the absence of broad multilateralism there has also been renewed interest in regional cooperation, perhaps as much to ameliorate the pressures of bilateralism as to ensure wider acceptance of new standards: see 21.4–21.7. More recently, Australia has participated in negotiations for a new ‘plurilateral’ agreement provisionally called the AntiCounterfeiting Trade Agreement (ACTA): see 21.69.163 The original proposal for a new treaty to address issues concerning the proliferation of counterfeit and pirated goods in international trade was made by Japan at the second and third meetings of the Global Congress on Combating Counterfeiting.164 After preliminary talks with interested parties during 2006 and 2007, negotiations began in June 2008 between Australia, Canada, the European Union (including all of the then 27 member states) Japan, Mexico, Morocco,

New Zealand, Republic of Korea, Singapore, Switzerland and the United States. ACTA was not intended to raise substantive standards of intellectual property subject matters, nor to specify how member countries define infringement, but was intended to address standards for the enforcement of intellectual property rights by increasing international cooperation, strengthening the framework of enforcement practices and enhancing enforcement measures. The proposed agreement addressed the legal framework for enforcement of intellectual property rights through civil proceedings before courts, matters relating to border measures involving customs agencies or other authorities involved in preventing counterfeit goods from crossing borders, criminal enforcement procedures and penalties, enforcement in the ‘digital environment’, enforcement methods and institutional arrangements. In particular, the treaty would have prevented interference with technical protection measures and digital rights management, required internet service providers (ISPs) to take greater responsibility for online piracy and required the introduction of ‘notice and takedown’ provisions developed in the United States, with the threat of internet disconnection to terminate or prevent infringement. It would also have required criminal penalties for ‘willful infringement’ and increased ‘provisional measures’ including customs procedures and injunctions for ‘imminent infringement’. Proponents claimed that the focus of the agreement was upon commercial scale infringements rather than [page 42] private non-commercial scale activities. Another area of interest was the approach to generic drugs that might be seen to treat them as a form of counterfeit product and provided mechanisms that would allow prevention of export to or import by developing countries and the seizure or destruction of the drugs. The negotiating texts for ACTA were released in April 2010, an official version of the text in November 2010 and a Final Text in May 2011.165 Eight of the negotiating countries, including

Australia,166 signed the Agreement on 1 October 2011. The Agreement would have come into force when ratified by six states; Japan ratified the Agreement in October 2012. Negotiations having been conducted in secret, release of information about the ACTA texts prompted a wave of critical analysis167 and public opposition. In the United States 75 law professors wrote to President Obama condemning the Agreement and calling for it to be rejected.168 There were initial protests in Poland and in some 200 European cities169 and the EU Rapporteur resigned in protest against the Agreement. On 20 December 2012 the European Commission confirmed that it was withdrawing from ACTA, which effectively prevents ratification by the EU. The Australian position put by the Department of Foreign Affairs and Trade170 appeared to be that there had been misleading ‘myths’ about the impact of ACTA and that Australian laws and practices were already at a high level that could be expected to meet the standards required, but that Australian participation provided visible support for an international effort to combat what was perceived to be a common problem. The Agreement was tabled in the Australian Parliament on 21 November 2011, and referred to the Joint Standing Committee on Treaties (JSCOT) that reported on 27 June 2012.171 The Report made nine recommendations of which two were most significant. Recommendation 8 was that Australia not ratify the Agreement until (i) the JSCOT had received and considered the ‘independent and transparent assessment of the economic and social benefits’ and costs of ACTA that was the subject of Recommendation 2; (ii) the ALRC has reported on the Inquiry on the Digital Economy; and (iii) the government has issued notices of clarification on various terms in the Agreement. Recommendation 9 was that a future JSCOT should consider the events related to ACTA in other relevant jurisdictions including the EU and the United States. The government partially accepted these recommendations.172 However, ACTA is ‘in limbo’ here and overseas as there have not been sufficient ratifications to cause it to come into effect. [page 43]

With the current impasses in the Doha Round, and ACTA a spent force, the promoters of more vigorous intellectual property enforcement have turned their attention to the negotiations for an enlarged Trans-Pacific Partnership (TPP) Agreement: see 21.70. The TPP builds upon the existing Trans-Pacific Strategic Economic Partnership Agreement between Brunei Darussalam, Chile, New Zealand and Singapore. The Trans-Pacific Partnership Agreement (TPP) negotiations were between Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, Peru, New Zealand, Singapore, the United States and Vietnam. They successfully concluded on 6 October 2015. The TPP text reflects the aspirations of ACTA but in some places appears more stringent and demanding than even that apparently failed model. The draft text controversially includes an investor–state dispute settlement process that would empower foreign investors to insist on arbitration under the arbitral rules of either the International Centre for Settlement of Investment Disputes or the United Nations Commission on International Trade Law. Some proposed intellectual property clauses are clearly modelled on elements found in TRIPS Super Plus free trade agreements negotiated by the United States.173 However, President Trump of the United States formally abandoned the TPP on 23 January 2017. A report of the Senate Foreign Affairs, Defence and Trade References Committee inquiry into the TPP was tabled in the Commonwealth Parliament on 7 February 2017. The Committee recommended that the Australian Government defer undertaking binding treaty action until the future of the TPP was clarified. The continued negotiation of the TPP, without the United States, is controversial. Nonetheless, Ministers and Vice Ministers from Australia, Brunei Darussalam, Canada, Chile, Japan, Mexico, New Zealand, Malaysia, Peru, Singapore and Vietnam met on 21 May 2017 to discuss it, and at the time of writing it seems that it still has some, if uncertain, future. 1.51 Others forms of international cooperation While the various trade negotiations have been going on, IP Australia has been entering into close working relationships with equivalent offices in other countries. As part of the Australia New Zealand Single Economic Market process and the desire to deepen trans-Tasman regulatory integration there will be a progressive integration of the patent

application and examination services of IP Australia and the New Zealand Intellectual Property Office (see 11.17), the establishment of a single regulatory framework for patent attorneys, a single trade mark regime and a single plant variety right regime.174 At a more general level, in 2008, IP Australia, the Canadian Intellectual Property Office and the Intellectual Property Office of the United Kingdom established the ‘Vancouver Group’, intending to share information and experiences on common issues and contribute to a more effective multilateral approach to work sharing. The four areas that have currently been identified for cooperation are economic [page 44] research, business performance reporting, trade mark business processes and mutual exploitation.175 Meanwhile, in 2007 WIPO adopted a development agenda that required that the interests and concerns of developing nations be integrated into all of WIPO’s work: see 21.24. In part this can be seen as a response to the trade and commerce perspectives manifested in the TRIPS Agreement and the burdens that international ‘harmonisation’ towards sophisticated intellectual property policies and standards have placed upon developing countries. Many developing countries see the international intellectual property treaties and agreements as instruments of economic exploitation by industrialised countries and as operating to the detriment of their economies, societies and cultures. The usual response from those advocating the adoption, implementation and enforcement of stronger intellectual property standards is that these measures provide incentives for investment and innovation in new products, new businesses and new forms of creative endeavour that will, in the end, assist rather than hinder development. But in the meantime many developing countries believe that they are subjected to rent seeking and exploitation from the already privileged industrialised economies. While the development agenda may be an expression of this resentment and frustration, the goals and objectives of the agenda

seem diffuse and unintegrated into a coherent policy approach. It remains to be seen whether it will have any ameliorating effect upon the way intellectual property systems impact upon developing countries. With Australia committed to play a part in the process of modernisation and harmonisation of intellectual property laws around the world, we can expect further changes to our domestic regimes over the next few years. The Commonwealth Government has responded to the Productivity Commission by ‘noting’ its recommendations in that regard, but arguing that ‘Australia is already an active player, and the recommendation takes insufficient account of these efforts’.176 These recommendations were as follows:177 The Australian Government should play a more active role in international forums on intellectual property policy — areas to pursue include: calling for a review of the TRIPS Agreement (under Article 71.1) by the WTO exploring opportunities to further raise the threshold for inventive step for patents pursuing the steps needed to explicitly allow the manufacture for export of pharmaceuticals in their patent extension period working towards a system of eventual publication of clinical trial data for pharmaceuticals in exchange for statutory data protection identifying and progressing reforms that would strike a better balance in respect of copyright scope and term [page 45]

SCHEME OF THIS BOOK

An organising principle: the protection and exploitation of ideas 1.52 It should already be apparent that the nature of the subject makes it difficult to justify structuring the treatment of the various intellectual property regimes in any particular way. Given the historical development of those regimes and the relatively recent acceptance as to their common ground, it could hardly be otherwise. Most books choose to start either with patents or copyright, depending on which of these two core systems is thought to be more important or instructive. In this book, however, we have elected to follow a different scheme, one which has at least some underlying logic. We cannot claim that this is the only way to proceed, or even that it is particularly original,178 but it appeals to us nevertheless. Broadly speaking, the scheme involves following the steps that may be taken to protect and/or exploit an idea. At its inception, an idea is simply a piece of information, whose only claim to protection lies in the fact that it has not been put in the public domain. Chapter 2 provides an overview of enforcement issues and then Part 2 of the book looks at how notions of confidentiality are used to protect the secrecy of information. The next step, in all likelihood, is that the idea will be written down or recorded in some way. This takes us into the realm of copyright, which is explored in Part 3 along with the system for registering designs and the sui generis protection given to circuit layouts. If the idea is inventive, a patent may result: hence Part 4, which also deals with the plant varieties legislation. In any event, the result of any successful exploitation of an idea may be that a distinctive commercial reputation is built up. The common law and statutory mechanisms for protecting such a reputation against misappropriation are the subject of Part 5. Finally, Part 6 looks at two topics which are relevant to each of the individual regimes: the international dimensions of intellectual property law, and the commercial strategies and transactions employed to exploit the various property rights.

1. 2. 3. 4. 5.

6. 7. 8. 9. 10. 11. 12.

13. 14. 15. 16. 17.

18. 19. 20. 21. 22. 23.

For an account of how this occurred in Britain (and hence Australia), see Sherman & Bently 1999. Though the division lives on in terms of administrative responsibilities within the federal government: see 1.22. See Cornish 1981; Ricketson 1984a. New South Wales, for example, enacted the Inventions Registration Act 1852, Trade Marks Act 1865 and Copyright Act 1879. See also Finn 2000. Compare especially the changes made by the Copyright Amendment Act 1989 (Cth), Patents Act 1990 (Cth) and Trade Marks Act 1995 (Cth) with the Copyright, Designs and Patents Act 1988 (UK) and Trade Marks Act 1994 (UK). See also the admonition in the majority judgment by the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 411 at [36], [42]–[49], [76] that more recent English decisions concerning aspects of patent law reflect the approach of European law and diverge from the path of authority accepted by the High Court. The majority went on to express a preference for the reasoning in US authorities to the directions taken in English decisions ‘particularly after the 1977 UK Act’. Attorney-General (NSW) v Brewery Employees Union of NSW (1908) 6 CLR 469 (see 19.18); though see also Davis v Commonwealth (1988) 166 CLR 79: see 19.19. (1994) 181 CLR 134. Ibid at 160 (emphasis added). (2000) 202 CLR 479 at 527. See also 15.3. Ibid at 493. Ibid at 496. Ibid at 493. See also New South Wales v Commonwealth (2006) 229 CLR 1 at [815], where Callinan J, while in other respects advocating a narrow view of Commonwealth powers, was prepared to accept that ‘if ever amplitude and generality were called for, it was in relation to the protection and exploitation of intellectual innovation. To deny amplitude to [s 51(xviii)] would have been to deny intelligence and its product, intellectual innovation, itself’. (2000) 202 CLR 479 at 501. Ibid at 495–6. Ibid at 532. Koowarta v Bjelke-Petersen (1982) 153 CLR 168; Commonwealth v Tasmania (1983) 158 CLR 1; Victoria v Commonwealth (1996) 187 CLR 416. As with the introduction, for example, of legislation dealing with performers’ rights see 9.10–9.12; and see also 19.19–19.20 in relation to trade marks. See also s 10 of the Plant Breeder’s Rights Act 1994, which refers to the International Convention for the Protection of New Varieties of Plants 1961: see 21.56. The validity of the plant varieties legislation under the external affairs power was not in the end considered in Grain Pool. Constitutional Commission 1988, [10.140]–[10.153]. See Coper 1988, ch 9. (1994) 181 CLR 134. See above 1.5. See 9.18ff. (1994) 181 CLR 134 at 161; and see also Australian Tape Manufacturers Association Ltd v Commonwealth (1993) 176 CLR 480. (1994) 181 CLR 134 at 160–1.

24. 25. 26. 27.

28. 29. 30. 31.

32. 33. 34. 35. 36. 37.

38. 39. 40. 41.

42. 43. 44. 45. 46. 47. 48.

(2012) 97 IPR 321. Tobacco Plain Packaging Act 2011 (Cth). See further Chapters 7 and 8. For instance, in Copyright Agency Ltd v New South Wales (2008) 233 CLR 279 at [69] concerning the scope of the Crown use licence (see 7.24) the rights-owners group Copyright Agency Ltd conducted its case on the basis that the licence scheme afforded ‘just terms’ under s 51(xxxi). In relation to copyright licences, the Copyright Tribunal plays a role in arbitrating disputes and setting fees: see 7.21. (2012) 246 CLR 561. See eg Australian Copyright Council 2012. Steers v Rogers [1893] AC 232 at 235, quoted in Grain Pool of Western Australia v Commonwealth (2000) 202 CLR 479 at 514. See also 20.2 in relation to trade marks. For a discussion of patent rights as negative rights, see Mossoff 2009. For a more nuanced argument about the nature of trade mark rights within the TRIPS Agreement, see Frankel & Gervais 2013. Gervais has made similar arguments elsewhere which are critiqued by Voon & Mitchell 2012. See Ng et al 2010. See Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (2013) 253 CLR 284 at [8]– [18]. See 5.15. See ALRC 2013; also see Productivity Commission 2016, ch 6, ‘Fair use or fair dealing: What is fair for Australia?’. At the time of writing, the government had not responded to the Productivity Commission report. Cf British Leyland Motor Corp Ltd v Armstrong Patents Co Ltd [1986] 2 WLR 400: see 8.17. See eg the position in relation to ownership of inventions: 13.5ff. Sometimes this is a balance, sometimes a fierce battle: As French CJ has observed, ‘The field of intellectual property law generally is notoriously one in which there are public interests and private interests in fierce competition with each other’: Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (2013) 253 CLR 284 at [45]. Formerly known as the Trade Practices Act 1974 (Cth). See eg Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 44 IPR 481 at [66]–[68]. Trumpet Software Pty Ltd v OzEmail Pty Ltd (1996) 34 IPR 481; Microsoft Corp v Goodview Electronics Pty Ltd (2000) 49 IPR 578. Formerly the Advisory Council on Industrial Property, and before that the Industrial Property Advisory Committee (IPAC). At the time of writing this edition ACIP was undertaking reviews in relation to innovation patents and designs. More recently, IP Australia has also taken a proactive role, issuing consultation papers calling for submissions on major reforms: see eg the Raising the Bar reforms discussed in 11.11–11.15. ALRC 2014a. Productivity Commission 2016. IPCRC 2000, 27. Productivity Commission 2016, 2. Australian Government 2017. Productivity Commission 2016, 31. Kane 2009; and see WIPO Intergovernmental Committee (ICG) on Intellectual

49. 50. 51. 52. 53. 54. 55. 56. 57.

58. 59. 60. 61. 62. 63. 64. 65. 66. 67. 68. 69. 70. 71. 72.

73. 74.

Property and Genetic Resources, Traditional Knowledge and Folklore website . Cf Vaver’s suggestion of a ‘theory patent’: Vaver 1990, 118. D’Arcy v Myriad Genetics Inc (2015) 258 CLR 334. See generally Attorney-General’s Department 1994; McKeough & Stewart 1997a; Janke 1998; McRae et al 2009, ch 8; and see also the special issue of the Griffith Law Review (vol 9, no 2, 2000) on Intellectual Property and Indigenous Culture. See eg Foster v Mountford (1976) 14 ALR 71. See eg Milpurrurru v Indofurn Pty Ltd (1994) 30 IPR 209; Bulun Bulun v R & T Textiles Pty Ltd (1998) 41 IPR 513; and see Australian Copyright Council 1997; Kenyon 2000. See discussion of the need to identify authors at 6.2, 6.36. Janke & Dawson 2012, [2.3]. See eg Milpurrurru (1994) 30 IPR 209 at 214–15. See eg Yumbulul v Reserve Bank of Australia Ltd (1991) 21 IPR 481 at 490; though cf the flexible approach adopted to the assessment of damages for copyright infringement in the Milpurrurru case (see 8.62); and see also the recognition in Bulun Bulun v R & T Textiles Pty Ltd (1998) 41 IPR 513 that an Aboriginal artist may owe a fiduciary obligation to their community in relation to the exploitation of their work and the enforcement of any copyright in it: see 7.9. Working Party on the Protection of Aboriginal Folklore 1981: see Bell 1985. Golvan 1992, 231. See Ellinson 1994. See the Copyright Amendment (Indigenous Communal Moral Rights) Bill 2003. See Puri 1995; Gray 2000; Howden 2001; Malcolm & Meyers 2002. See Miller 1995. See . Janke & Dawson 2012; Janke 2009. Terri Janke originally raised the idea in 1998: Janke 1998, [22.1]. Janke 2009, 18. Harry et al 2000. Fact Sheet, the Nagoya Protocol ; see also Wright et al 2017. Environment Protection and Biodiversity Conservation Amendment Regulations 2005 (No 2) (Cth). Kerr 2010; Robinson 2012. See eg Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 48 IPR 257. The Bureau of Industry Economics considered that the designs system should be broadened: Bureau of Industry Economics 1995. The ALRC disagreed, but the commission called for consideration to be given to the introduction of a broad principle of ‘unfair copying’: ALRC 1995, [3.71]; cf IPCRC 2000, 182. ACIP, in its review of what was then known as the ‘petty patent’ system, recommended a new ‘second tier’ of patent protection, in the form of ‘innovation patents’: ACIP 1995. ACIP 2013. See Australian Government 2016a.

75. 76.

77. 78. 79. 80. 81. 82. 83. 84. 85. 86. 87. 88. 89.

90. 91.

92.

IP Australia 2016a. Cf Art 10bis of the Paris Convention for the Protection of Industrial Property 1883 (see 21.47), which obliges ratifying countries (including Australia) to ensure ‘effective protection against unfair competition’. The latter is defined to mean any ‘act of competition contrary to honest practices in industrial or commercial matters’, including: 1. the creation of confusion with the establishment, goods or activities of a competitor; 2. false allegations against a competitor; and 3. misleading the public as to the nature or characteristics of goods. Arguably, the common law of passing off and injurious falsehood (see 16.2), not to mention the statutory prohibitions proscribing misleading and deceptive conduct that have already been mentioned, are sufficient to put Australia in compliance with Art 10bis, without the need for any generalised law against ‘unfair competition’ as such. See Weinrib 1988, 120–3 and authorities there cited. See also Edgeworth 1988; Gray 1991. See Copyright Act 1968 s 196(1); Patents Act 1990 s 13(2); Designs Act 2003 s 10(2); Trade Marks Act 1995 s 106; Plant Breeder’s Rights Act 1994 s 11; Circuit Layouts Act 1989 s 45(1). Davies & Naffine 2001, 125–6. As to the development of this concept of intangible property, see Sherman & Bently 1999, ch 2. MacCormick 2002, 236. See Drahos 1996a, ch 7. Cf Libling 1978. A process that brings out ‘fierce competition’ among the various stakeholders: Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (2013) 253 CLR 284 at [45]. Vaver 1990, 126. Drahos 1996a, 200. Ibid, 5. Ibid, 2. Ibid, 223. Ibid, ch 9. French CJ considered proprietarianism, instrumentalism and Drahos’ work in Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (2013) 253 CLR 284 at [45]. The case concerned patenting of methods of medical treatment of the human body see: 12.17. In recent times this has been as much true of government investment in research and development as of private sector funding, something that was not always the case in the past: see Ergas 1999, 29–31. As to the value attributed to intellectual property, see eg European Patent Office & Office for Internal Harmonization in the Internal Market 2013; Economics and Statistics Administration & United States Trade Marks Office 2012; Farooqui et al 2011; IP Australia 2013a. See eg PricewaterhouseCoopers 2012. Although Wunsch-Vincent has argued that ‘only a limited number of copyright works generate the bulk of industry revenues, crosssubsidizing other less successful creations’: Wunsch-Vincent 2013, 3.

93. 94. 95. 96. 97. 98. 99. 100. 101. 102. 103.

104. 105. 106. 107. 108. 109.

110.

111. 112. 113. 114.

115.

116. 117. 118.

See 12.27ff and D’Arcy v Myriad Genetics Inc (2015) 258 CLR 334. See eg Barlow 1994; Lessig 1999. See eg the digital agenda reforms in copyright discussed at 5.8. More recently, the ALRC has conducted the Review of Copyright in the Digital Economy: ALRC 2013; see also Productivity Commission 2016. International News Service v Associated Press (1918) 248 US 215 at 239. See Drahos 1996a, ch 3. Cf van Caenegem 2002b; Lessig 2001; Boyle 2008. van Caenegem 2003a, 255–6. Cooter & Ulen 1988, 135. See also Drahos 1996a, 121ff. See Williams 2012. See eg Drahos with Braithwaite 2002, 5–9. For a definition of ‘innovation’, see 22.4. Cf the suggestion that the early patent systems were ‘evidently … based on some intuitive understanding by the rulers of the need to provide special incentives for innovation and the attraction of skilled tradesmen from abroad’: Bureau of Industry Economics 1994, 6. Alford 1994, 17. For a recent economic analysis of copyright law, see Wunsch-Vincent 2013. See eg the stated objects of the Copyright Amendment (Digital Agenda) Act 2000 (Cth) s 3: see 5.8. IPCRC 2000, 25. Ibid (emphasis in original). See also Gans 2003. James Boyle has argued for both empirical evidence of the likely effects of any expansion in intellectual property rights and ‘a formal requirement of empirical reconsideration of those policies after they have been implemented to see if they are working’: Boyle 2008, 206. For a relatively rare example of an Australian judge engaging in such analysis, see the judgment of Kirby J in Maggbury Pty Ltd v Hafele Australia Pty Ltd (2001) 210 CLR 181 at 208, discussing the effect of non-disclosure agreements in the context of negotiations for the exploitation of an invention: see 4.4. Cf Richardson & Macchi 1997. See Vaver 1991. Many such debates have been considered in earlier editions of this book. See, for instance, the account of the long-running controversy over parallel importation of books in Stewart, Griffith & Bannister 2010, [1.35]. Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (2013) 253 CLR 284 at [50]. As Loughlan puts it, the question of how broad intellectual property rights should be ‘is probably ultimately unanswerable because it is essentially a question about contested political choices and about who wins and who loses when intellectual property rights expand’: Loughlan 2002b, 427. As it was once put, ‘If national patent laws did not exist, it would be difficult to make a conclusive case for introducing them: but the fact they do exist shifts the burden of proof and it is equally difficult to make a really conclusive case for abolishing them’: Penrose 1951, 40, quoted in Vaver 1990, 115–16. Productivity Commission 2016, 2. Productivity Commission 2016. As to the distinction between a contract of service and other arrangements whereby

119.

120. 121. 122. 123.

124. 125. 126.

127. 128. 129. 130. 131. 132. 133. 134.

135. 136. 137. 138. 139. 140.

work is performed, see Stewart et al 2016, ch 8. Note, however, that this is not the case in relation to moral rights, where by definition it is the individual creator who has the rights of attribution and integrity: see 9.9. For a helpful review of some of the economic and moral debates around ownership of employee creation and know-how, see Dent et al 2010. As to the use of collective bargaining to regulate the ownership and exploitation of employee-generated intellectual property, see Howe & Newman 2013. The problem does not arise so much in relation to trade marks, though ordinary principles of agency would seem sufficient to explain why use of a trade mark on behalf of an employer will mean that the employer is the proprietor of the mark. See generally Monotti & Ricketson 2003. See Christie et al 2003. See Monotti 1999. In some instances, universities subsequently backed down and moderated their claims — most spectacularly at the University of Melbourne, which eventually decided to grant almost all rights to its staff: see Monotti & Ricketson 2003, 516–18. The university has since reverted to a more conventional position, claiming ownership of all employee-created intellectual property other than ‘scholarly works’: see . This trend has added to the importance of academic authors being able to assert their moral rights: see Wiseman 2005. Publication prior to filing a patent application may deprive an invention of ‘novelty’ and hence preclude the grant of a patent: see 12.35ff. Cf Loughlan 1996; Drahos with Braithwaite 2002, ch 14. See also University of Western Australia v Gray (2009) 82 IPR 206 at [190]–[191], [198]–[199], rejecting any suggestion of an implied duty on the part of academics to maintain the confidentiality of their research. See Monotti & Ricketson 2003, 216–26 and the plethora of government reports on the subject referred to therein. See Monotti 1998; van Caenegem 2010, 148–63. Cf the cogent advice offered by what is now Universities Australia: AVCC 2002. (2009) 82 IPR 206. See also Victoria University of Technology v Wilson (2004) 60 IPR 392, where the policy in question was found not to have been approved by the university council, or promulgated to staff. See also Arup 2008. See eg Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39; Salinger v Random House Inc (1987) 811 F 2d 90: see 8.56. See Productivity Commission 2013. The same applies to designs (see 10.25) and plant varieties: see 15.22. Cf the refusal of the common law to permit revelation of confidential information on the ground that the public would benefit from its availability: see 4.19. Ricketson 1984b; and see also Pendleton 2002. Cf Spence 1996. See eg Fellner 1985, 199–201; Lahore 1992. See Reichman 1994. Cornish 1993, 54. Lahore 1996, 17, citing Karjala 1994b. Cf the infringement test proposed in Pendleton 1985, which is grounded in the notion of taking ‘unjust or unacceptable short-cuts’. (2009) 239 CLR 458.

141.

142. 143. 144.

145. 146. 147.

148. 149. 150. 151.

152. 153. 154. 155. 156. 157. 158. 159. 160. 161. 162. 163. 164.

See 6.35. Shortly thereafter Gordon J in the Federal Court noted that there is no counterpart in Australian law of a European style Directive on the legal protection of databases and called for this to be addressed by parliament: Telstra Corp Ltd v Phone Directories Co Pty Ltd (2010) 85 IPR 571 at [30]. See also McGowan 2009. (2009) 239 CLR 458 at 485. (1937) 58 CLR 479. See McKeough 2009. But cf the cases on copyright protection for databases (see 6.34), an area of law in which at times ‘the notion that the fruits of labour and expense must be protected has been influential’: Desktop Marketing Systems Pty Ltd v Telstra Corp Ltd (2002) 55 IPR 1 at 86. (1937) 58 CLR 479 at 509. Ibid. (1984) 156 CLR 414. The need for a plaintiff to assert an established cause of action as a precondition to obtaining relief was also reasserted in Australian Broadcasting Corp v Lenah Game Meats Pty Ltd (2001) 208 CLR 199, although a majority of the court did question whether the views expressed in Victoria Park Racing on the subject of privacy protection had passed their use-by date: see 3.11. Paris Convention for the Protection of Industrial Property of March 20, 1883. As Ergas notes, where in the past ‘IP systems have been relatively careful to carve out public access bridle paths through the thicket of individually held rights … [the trend] is for these public spaces to become somewhat more confined’: Ergas 1999, 32. Goldhaber 1986, ch 10, quoted in Vaver 1990, 116. Arup 1990, 251, citing Pavitt 1984; and see also van Caenegem 2002a. See also van Caenegem 2003b, noting the extent to which an established reputation in the relevant market may serve as a barrier to entry for others, and suggesting (at 599) that ‘from an established firm’s perspective, there are many advantages in investing in goodwill rather than in “substance”; reputation rather than innovation’. Schumpeter 1942, 83. Drahos with Braithwaite 2002, 2–3. Ibid, 211. See the special issue ‘Patently Complicated: Case Studies on the Impact of Patenting and Licensing on Clinical Access to Genetic Testing in the United States’ (2010) 12(4) Genetics in Medicine Supplement. This is particularly true where patents are concerned: see 14.30–14.31. Pendleton 1990, 254. Liu 1994, 92; Drahos with Braithwaite 2002, ch 6; and see also 21.14–21.15. For background, see generally Arup 2000; Drahos with Braithwaite 2002, esp chs 7–9. See eg Blakeney 1996a. See Copyright (World Trade Organization Amendments) Act 1994; Patents (World Trade Organization Amendments) Act 1994. See eg 5.9, 6.60, 8.3, 8.55, 8.63, 8.67, 9.3, 9.12 (copyright), 11.10 (patents). The Agreement entered into force on 20 December 2015; see . See . The Global Congress on Combating Counterfeiting was organised by the WIPO, the World Customs Organisation and Interpol. The first meeting was in 2004. There have been subsequent meetings in 2005, 2006, 2008 and 2009: see

165. 166.

167. 168. 169. 170. 171. 172. 173. 174. 175. 176. 177. 178.

. See . The Final Text can be found at . The others being the United States, Canada, Korea, Japan, New Zealand, Morocco and Singapore. Representatives of the remaining ACTA negotiating parties, the European Union, Mexico and Switzerland, attended the ceremony and confirmed support. See eg McManis & Pelletier 2012. See . See . See . See Commonwealth Joint Standing Committee on Treaties 2012. See . For a collection of opinion pieces from Australian commentators, see . For a particularly critical comment, see Rimmer 2013. See The Trans Tasman Outcomes Implementation Group . See . Australian Government 2017, 23. Productivity Commission 2016, Recommendation 18.2. The scheme was originally suggested by Simon Palk, to whom we repeat the gratitude expressed in the preface to the 1st edition.

[page 46]

CHAPTER 2 Enforcement of Rights INTRODUCTION Litigation and other strategies 2.1 This chapter is devoted to some general observations concerning the enforcement of intellectual property rights. The principal focus is on civil litigation, though in some cases criminal offences may also be involved. Naturally, taking a matter to a civil court is likely to prove a costly and perhaps risky business. Evidence of infringement or of participation in infringing activities may be hard to come by. The defendant may have the resources to drag the matter out through several hearings and appeals, particularly by challenging the validity of the right which the plaintiff claims to possess, in the hope that the plaintiff’s resolve and/or bank balance will weaken. Patent litigation in particular tends to be a lengthy and expensive exercise: see 14.30.1 Against that background, it is important to be aware that strategies other than litigation may be available for the protection of rights. One approach is for individual owners to put their claims in the hands of a collecting society, or indeed any other body or enterprise with the resources to secure payments from licensees, or mount effective action against infringers. Another relates to the contractual arrangements pursuant to which intellectual property is created or exploited. By carefully structuring those arrangements, as discussed in Chapter 22, an owner may retain close supervision over the activities of potential infringers or place the responsibility for pursuing infringements on someone else.

[page 47]

Threats and unjustified actions 2.2 At the end of the day, though, the owner may be unable to avoid investigating the possibility of litigation.2 The aim will ordinarily be to have the claim acknowledged or settled without reaching court, and indeed, in many instances, it may simply be enough to rattle the sabre to induce the other party to back down. However, great care needs to be taken. Initiation of a patently unfounded action may conceivably attract tortious liability for abuse of process,3 and malicious allegations of infringement may constitute injurious falsehood or unlawful interference with the targeted person’s business.4 Even innocent but incorrect assertions that infringement has occurred may constitute misleading or deceptive conduct under the Australian Consumer Law.5 Furthermore, the copyright, patents, trade marks, designs and circuit layouts statutes each provide that any threat to institute infringement proceedings is unlawful, even if it is honestly believed that infringement is taking place.6 Liability can only be escaped under these ‘unjustified threats’ provisions by actually establishing infringement (or, where a trade mark is concerned, by instituting proceedings with due diligence); though in each case it is not considered to be a threat merely to inform someone that the relevant right exists.

Reform of enforcement procedures 2.3 Over the past two decades a plethora of reports have considered ways in which enforcement procedures could be made more effective and costs reduced. In 1992 the Industrial Property Advisory Committee (IPAC) examined whether a specialist court should be established to deal with intellectual property disputes (see 2.19), and made a range of proposals on evidentiary and procedural matters.7 These included that courts take a more ‘managerial’ or ‘interventionist’ approach to the resolution of disputes, and that greater reliance be placed on the settlement of disputes by ‘alternative’ processes such as mediation. The report in this respect

mirrored developments that had been occurring in any event over the previous decade in the administration of civil disputes generally.8 There was no systematic [page 48] response from the federal government. Instead, the Advisory Council on Industrial Property (ACIP), as IPAC was now known, was asked to conduct a further review. This produced another series of recommendations in 1999, most of which focused on patent enforcement and aimed in particular to improve the chances of granted patents being upheld.9 Although the Patents Act was duly amended to raise the threshold of patentability in certain respects,10 the government rejected ACIP’s idea of establishing an appeal board within IP Australia. In 2003 ACIP published a further report, recommending that the jurisdiction of the Federal Magistrates Court — now the Federal Circuit Court — should be extended from just copyright matters to include patent, trade mark and design matters.11 This step was eventually taken in 2012, although only in relation to trade marks and designs.12 In 2010 ACIP further recommended13 that IP Australia establish and maintain an IP dispute resolution centre for patent disputes and, if successful, disputes under the plant breeder’s rights system. This was rejected at the time: see 11.23. However, IP Australia has since established an IP Mediation Referral Service.14 The Productivity Commission (PC) also recommended that ‘The Australian Government should introduce a specialist IP list in the Federal Circuit Court, encompassing features similar to those of the United Kingdom Intellectual Property Enterprise Court, including limiting trials to two days, caps on costs and damages, and a small claims procedure’.15 In fact, the Federal Circuit Court (FCC) has commenced a pilot in its Melbourne Registry to streamline its management of IP matters, with regard to the practices and procedures adopted by the UK Intellectual Property Enterprise Court. Three judges have been allocated to this list. The PC also recommended that the Federal Circuit Court be able to hear all IP

matters, but the government in its response favours patent matters remaining the preserve of the Federal Court, due to their technicality and complexity.16 [page 49]

ESTABLISHING CIVIL LIABILITY Standing 2.4 The first issue to be considered in relation to civil proceedings alleging the infringement of an intellectual property right is the issue of standing to sue.17 The common law doctrines have developed their own rules (see 4.1–4.2, 16.8), while the Australian Consumer Law has no standing restrictions at all (see 16.34, 16.37), and the moral rights and performers’ rights schemes generally allow only the author or performer respectively to take action: see 9.4, 9.10. As to the other regimes, a few general comments may be made. The obvious plaintiff is, of course, the person designated by the relevant statute at the time of the alleged infringement as the owner of the right in question: see 1.39–1.41.18 This is not necessarily the person to whom that right first belonged, since the current owner may have acquired that status as a result of one or more assignments.19 In some instances the right to pursue an infringement may be given to a person other than the owner. While the designs and plant breeder’s rights legislation make no provision to this effect, the copyright, circuit layouts, patent and trade mark systems each confer this privilege on some at least of those to whom the relevant right has been licensed. The rationale is that in certain instances it may be the licensee who is most actively exploiting the right and who therefore should be able to take action to protect their investment, even where the owner is unwilling or unable to do so. Although the provisions differ between the four regimes, a common thread is that, other than at an interlocutory stage, the owner must always be joined as a party

to the proceedings, if necessary as a defendant, although an owner who is added as a defendant but takes no part in the proceedings will not be liable for costs. The patents legislation is the most restrictive in regard to the right to sue, conferring it only upon the patentee or an ‘exclusive licensee’. The latter is narrowly defined as a person who is given the sole right to exploit the invention, even to the exclusion of the patentee: see 13.22, 22.24. By contrast, the same term is used in the copyright and circuit layouts statutes to mean someone who is given the exclusive right to do any [page 50] act falling within the relevant right: see 7.15, 9.22, 22.25. Since copyright is divisible by reference to time, area and type of exploitation (see, for example, 5.12, 7.11), and the same is true of eligible layout rights, this means that there may be a number of exclusive licences granted by the one owner. Each exclusive licensee may sue to protect their particular interest, although no action may be maintained against the owner, or indeed other licensees. The owner also retains a right to seek relief,20 though in that instance it is the licensee who must be joined. Provision is specifically made as to how damages are to be assessed or profits apportioned where such concurrent rights exist.21 Finally, under the trade marks system an ‘authorised user’ of a mark (that is, a person with permission to use the mark, subject to a certain level of control by the owner) may institute proceedings with the proprietor’s consent, or indeed without that consent if the proprietor refuses to bring an action after being called upon to do so or neglects to do so within two months of such a request: see 20.31. Another possibility is that one of the ‘economic torts’, discussed in 2.7, may be pressed into service. These may allow a person or body to take action where the deliberate result of the infringement of an intellectual property right is that economic loss is inflicted upon them, even if they are not the owner or a statute-designated plaintiff.22

Infringement and the relevance of intention 2.5 What constitutes infringement of an intellectual property right obviously depends on how that right is defined. In the case of the statutory regimes, infringement occurs when a person, acting without consent or authority, does any of the acts in relation to the relevant subject matter which are exclusively reserved to the owner to do or to sanction. Similarly, common law rights are infringed when a person commits a wrong, as defined by the relevant doctrine. For the most part, liability is strict, in that a person committing an infringement may be held responsible whether or not they were aware of the existence of the right or that their conduct was unlawful. But while innocence is generally no defence, there are a number of exceptions. In the first place, the copyright system and some of those regimes related to it distinguish between ‘direct’ and ‘indirect’ forms of infringement, strict liability generally being imposed only in the former category. In the case of copyright, indirect infringement principally encompasses commercial dealings (importation, sale, etc) with articles whose production involves a direct infringement of copyright, but also allowing a place of public entertainment to be used for an infringing public performance of a copyright work. In each instance, liability for such indirect infringement hinges on some knowledge of wrongdoing being established: [page 51] see 8.1, 8.31.23 The same type of division applies in relation to moral rights and performers’ rights: see 9.7, 9.12. In a similar vein, a person is only liable for the commercial exploitation of integrated circuit layouts in which rights have been conferred by the Circuit Layouts Act 1989 (Cth) if they were aware or should have been aware that the owner had not authorised the conduct in question: see 9.23. Another exception is provided by the doctrine of breach of confidence. A person who has come under an obligation of confidence does appear to be strictly liable for any use or disclosure of that information, even if they are completely unaware that they are

acting unlawfully (as with subconscious plagiarism of another’s secret idea: see 4.12). On the other hand, that obligation will not generally arise in the first place unless the recipient of the information is under some sort of notice that it is confidential; thus the very creation of the right requires some element of actual or constructive knowledge: see 4.9–4.11, 4.14. Again, under the trade marks system some consideration is given to the person who innocently uses a mark which is substantially identical or deceptively similar to a registered mark. Where the former mark is used in good faith, various defences may be available to a charge of infringement, as where the mark in question consists of the defendant’s own name or place of business, or describes the character or quality of their goods or services: see 20.19. Finally, and perhaps most significantly, the innocence of a defendant is often a ground for pecuniary relief being refused to the plaintiff, whether in the court’s discretion or as a specific consequence of legislative provision to that effect.24 This is considered further in 2.15–2.16.

Finding the right defendant 2.6 It often happens that the person most directly and obviously responsible for an infringement is not the ideal defendant. It may be difficult and/or expensive to find them, as with individuals who record broadcasts at home or download off the internet. Even if they can be brought to book, they may not have the resources to meet any pecuniary judgment. In the case of a company, it may have gone out of business or lack the assets to make a suit worthwhile. Or the person or company concerned may be beyond the practical reach of the Australian courts — something that is especially likely where their infringements are committed over the internet.25 [page 52] In all these cases, the plaintiff may wish to sue someone else, either instead of or in addition to the principal infringer(s). In many instances these further defendants will themselves be infringers within

the terms of the relevant statute or doctrine. Thus, as noted above, a copyright owner may sue not only copiers, but those who ‘indirectly infringe’ by selling or importing reproductions of the work or products in which such a reproduction is contained. Similarly, a patentee may sue anyone who sells a product made by someone else using the patentee’s process (see 14.3); and someone who confides secret information to another may proceed against any third party who acquires the information as a result of the confidant’s breach of faith and seeks to make use of it: see 4.14. There is also the concept of joint tortfeasance or joint infringement to consider, whereby those who act together may be jointly and severally liable for their wrong. Joint infringers are those ‘who act in concert with one another pursuant to a common design in the infringement’,26 such as the author and publisher of a manuscript that infringes another’s copyright.27 However, the concept of joint infringement only catches ‘participation, rather than mere facilitation’;28 hence it is uncertain whether the supplier of a product is to be regarded as jointly liable with a person who uses that product in such a way as to infringe a patented process: see 14.11.

Ancillary forms of liability 2.7 Sometimes, however, the person whom the plaintiff wishes to sue has not personally infringed the plaintiff’s rights, yet nevertheless is in some way to be held responsible for the actions of the infringer(s). An employer, for example, will be vicariously liable for any wrongs committed by employees in the course of their duties, though not (at least in general) for the acts of independent contractors.29 Vicarious liability may arise even though the conduct in question is for the employees’ personal benefit rather than their employer’s.30 While liability may be escaped by clearly notifying workers that they are not to engage in or continue conduct which infringes an intellectual property right, such an instruction must be properly policed or the employer risks a finding that they are condoning the infringement.31 Conversely, employees who commit infringing acts cannot claim any ‘vicarious immunity’ from liability for their actions; although if they have acted innocently and within

the terms [page 53] of their employment they may be entitled to claim an indemnity from their employer in the unlikely event that they are indeed sued.32 A further range of possible defendants are those who have in some way facilitated or inspired the infringement. Although the point is far from settled,33 it appears that company directors will be personally liable if they have ‘procured’ or ‘directed’ infringing conduct on the part of the company,34 although not if they have played no role in the relevant decisions, even if their failure to investigate what was happening constitutes a breach of their duty to the company.35 A similar principle has been applied to senior employees, even if they do not occupy the position of director.36 However, it is unclear whether, leaving aside such cases and the principle of joint tortfeasance discussed in 2.6, Australian law recognises any general principle of liability for inciting or procuring an infringement.37 Even if it does, the House of Lords’ decision in CBS Songs Ltd v Amstrad Consumer Electronics plc38 indicates that to be wrongful the incitement must be of an identifiable infringement by a particular individual. In that case, Amstrad escaped liability for marketing twin-deck tape recorders which could obviously be used for home taping which would breach copyright, any ‘incitement’ being at most to the public at large.39 Amstrad was also held not to have ‘authorised’ such breaches. The copyright, circuit layouts and patent statutes specifically confer on the owner the exclusive power to authorise those acts which the right comprises, so that any purported [page 54] authorisation of infringing conduct is itself an infringement.40 On a liberal view, ‘authorisation’ might include conduct whose inevitable

or likely effect would be to result in infringements occurring, thus taking the concept beyond incitement to cover mere facilitation. But such a view has been consistently rejected in copyright cases — most recently the High Court decision in Roadshow Films Pty Ltd v iiNet Ltd,41 concerning the liability of an internet service provider for its customers unlawfully downloading and sharing films and television programmes. This suggests that authorisation, like the concept of inciting or procuring, adds little if anything to the notion of joint infringement: see 8.26–8.30.42 A further possibility is for a plaintiff to rely on one of the ‘economic torts’, a series of wrongs hinging on the intentional infliction of economic loss.43 These torts include: contractual interference — the interference with contractual relations by a direct approach to one of the parties or by the use of an independently unlawful act to hinder or prevent performance;44 conspiracy to injure — the combination of two or more persons to inflict economic harm, the predominant motive being to injure the plaintiff rather than further the conspirators’ own economic interests;45 conspiracy by illegal means — the combination of two or more to inflict loss by reason of an unlawful act;46 intimidation — the infliction of loss through the threat of an unlawful act;47 and unlawful interference — a ‘genus’ tort firmly recognised in the United Kingdom, though not yet definitively in Australia,48 amalgamating many of the other actions into the general principle that it is tortious to inflict economic loss deliberately by committing an unlawful act.49 [page 55] It is unclear just how practically relevant these torts are in the intellectual property field, even in relation to breach of confidence

where they offer a means of securing tort damages for what is otherwise an equitable or contractual wrong: see 4.16, 4.29. However, there are three ways in which they might conceivably be used to establish liability which would not otherwise amount to infringement under the individual regimes. In the first place, a person obstructing the performance of a contract to exploit an intellectual property right (for instance, a licence agreement) may be liable in the tort of contractual interference. As in all such cases, however, it would be necessary to prove that the defendant’s conduct was undertaken with knowledge, or at least reckless indifference, as to its effect on the plaintiff’s contractual rights.50 Second, and more controversially, it may be unlawful to ‘interfere’ with the exercise of an intellectual property right, whether or not an infringement is incited. Other than where it is a term of a contract to respect the right in question, this would have to depend on the recognition of a broad tort of ‘interference with rights’51 Third, the tort of intimidation may come into play where the infringement of a right is threatened but not ultimately effected.

REMEDIES IN CIVIL CASES General 2.8 We move now to look at the civil remedies that may be obtained in infringement proceedings. In some instances there are principles or practices which are peculiar to particular regimes. Nevertheless, there is much common ground where the remedies of injunction, damages and account of profits are concerned and the role that these play in intellectual property litigation is discussed below. Before discussing them, however, something needs to be said about pre-trial orders. While we make no attempt here to deal with the many procedural and evidentiary issues that arise in intellectual property proceedings, it would be absurd not to comment upon two particular forms of pre-trial relief, the Anton Piller order and the interlocutory injunction.52 The former has become a potent, if controversial, weapon in the fight against commercial piracy, while the latter’s practical importance is highlighted by the number of cases

which start and finish at the interlocutory stage.

Anton Piller orders53 2.9 It is not always easy to secure evidence to support an action for infringement. Use may, of course, be made of the standard pre-trial procedures for discovery of documents, and the copyright and trade mark statutes also provide a special procedure whereby customs authorities may be asked to seize infringing goods which are being unlawfully [page 56] imported: see 8.65, 20.22. The latter procedures have recently been strengthened in various ways by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth). In many instances, though, particularly where ‘pirate’ or ‘bootleg’ operations are involved, it may be difficult in court to substantiate the connection between the defendant and the illicit copies of books, CDs, DVDs or other merchandise which are unquestionably reaching the market. Where the whole nature of a business operation is based on unlawful copying, it is obviously in the interests of those running it to dissemble when asked to respond to interrogatories or orders for discovery. It was the needs of plaintiffs faced with this sort of problem that led the English Court of Appeal in Anton Piller KC v Manufacturing Processes Ltd54 to sanction the form of order now known by the name of that case. Anton Piller orders, which are usually granted on the shortest of notice after an ex parte application, typically require a named person (who may be representative of a class of traders)55 to permit the plaintiff to enter that person’s premises to search for and seize infringing articles, or other evidence relevant to the plaintiff’s claim. Such an order is often accompanied by a demand that the defendant reveal information about the documents or goods in question, for example, relating to the identities of those engaged in dealings with the defendant. The inspection is usually made under the

supervision of the plaintiff’s solicitor, who as an officer of the court will retain any material not returned to the defendant.56 The extent to which the plaintiff may then go on to make use of such material in bringing proceedings against the defendant will depend on the precise terms of the order granted.57 Any refusal to allow an inspection is usually treated as a contempt of court.58 On the other hand, the defendant is entitled to resist any part of an order which would compel them to incriminate themselves by supplying information likely to be used against them in forthcoming criminal proceedings,59 although this may be avoided by the order specifying that the information in question is not to be used for the purposes of any prosecution.60 While Anton Piller orders are often necessary if intellectual property and other rights are to be effectively protected, the threat to civil liberties posed by so drastic a remedy being available ex parte is self-evident. Despite the regularity with which they are granted, there is quite understandably a measure of reluctance on the part of [page 57] the courts to sanction what in practice look very like search warrants.61 Accordingly, stringent requirements must be met: First, there must be an extremely strong prima facie case. Secondly, the damage, potential or actual, must be very serious for the applicant. Thirdly, there must be clear evidence that the defendants have in their possession incriminating documents or things, and that there is a real possibility that they may destroy such material before any application inter partes can be made.62 While this last element will usually be a matter of inference rather than hard fact, it may be particularly important to establish ‘fraud or dishonesty or contumacy’ on the part of the defendant, or that the defendant’s business is ‘transitory’ in nature.63 A further safeguard is that the plaintiff must give an undertaking as to damages. The defendant is also at liberty to apply for the order to be discharged,

even after it has been executed. This will be done, for example, where it turns out that the plaintiff has acted fraudulently, or failed to disclose all relevant information at the time of obtaining the order.64

Interlocutory injunctions65 2.10 Injunctive relief is the dominant form of redress in intellectual property cases. Given the delay typically occasioned between the commencement of proceedings and the action coming on for trial, a period often measured in years rather than months, it is inevitable that many plaintiffs will wish to obtain relief from the effect of the defendant’s activities pending determination of the parties’ dispute. Indeed, the stakes are often high, for it is frequently the case that without such an order the plaintiff’s own activities, which may be crucial to their financial security, will be irrevocably damaged. Conversely, the effect of a restraining order on the defendant may be to deny to them what ultimately turns out to be a legitimate course of conduct, again producing irrevocable damage. Moreover, what cannot be ignored is that when the court is asked to decide an application for interlocutory relief, that may be the last the court has to do with the matter. The result at this stage is often so important in its practical effect that [page 58] it decides the entire case. A successful plaintiff may have achieved everything they desire simply by putting a temporary stop to the defendant’s conduct. The business that can prevent its competitor launching a similar product before it has itself had a good run at a market in which the smallest head start is crucial, the overseas rock star who stops the sale of unauthorised merchandise (T-shirts, etc) during their Australian tour, the company that forestalls the leaking of sensitive information about a takeover it is in the process of mounting — all these plaintiffs may well decide that they have nothing further to gain from taking the matter to a full trial. The same may be true if they lose, although there is perhaps a greater

chance that they will then go on to claim compensation. More often, the result at the interlocutory stage will be sufficient to induce the parties to settle, the winning party naturally having the edge in negotiating an appropriate outcome. Against that background, it would only be natural for a court faced with an interlocutory application to want to hear as much argument as possible as to the merits of the case. By doing so, a court would be bound to feel more comfortable in making the weighty (and possibly final) decision as to whom to favour pending trial. However, the obvious consequence of such an approach would be to turn interlocutory applications into mini-trials, something the courts have quite properly been loath to do. Although proceedings are generally conducted inter partes,66 in order to expedite matters evidence is typically presented in the form of affidavits and the opportunity for cross-examination and legal argument is deliberately cut short. Under those constraints, the opportunities for careful fact-finding and considered legal opinions must of necessity be curtailed. It simply has to be accepted that, other than in the clearest cases, the court must postpone to the trial (if it eventuates) a proper decision on the merits. If then the temptation to create a ‘trial before the trial’ is to be resisted, the problem remains of how to approach interlocutory applications in a way that accords due weight to the interests of both parties. Specifically, how strong a case must the plaintiff make out to have even a chance of obtaining relief? And in any event, how are the courts to balance the competing arguments for and against ‘temporary’ protection? 2.11 The requirement of a prima facie case In Beecham Group Ltd v Bristol Laboratories Ltd67 the High Court answered the first question by saying that the plaintiff must make out a ‘prima facie case’, in the sense that if the evidence remained as it was there would be a probability of the plaintiff being entitled to relief at trial. For a time, this test was supplanted by a somewhat lower standard, formulated by the House of Lords in American Cyanamid Co v Ethicon Ltd:68 that the plaintiff need only show that their claim was ‘not frivolous or vexatious’ and that there was

[page 59] a ‘serious question to be tried’.69 However, the High Court reconsidered the matter in Australian Broadcasting Corp v O’Neill,70 a defamation case. The majority judges preferred the ‘prima facie case’71 approach adopted in Beecham and declined to follow American Cyanamid: By using the phrase ‘prima facie case’ [in Beecham], their Honours did not mean that the plaintiff must show that it is more probable than not that at trial the plaintiff will succeed; it is sufficient that the plaintiff show a sufficient likelihood of success to justify in the circumstances the preservation of the status quo pending the trial.72 Two important considerations in this regard were stated to be the nature of the rights being asserted by the plaintiff and the practical consequences likely to flow if an order were granted, particularly where an interlocutory injunction would effectively dispose of the matter.73 2.12 Balance of convenience If the plaintiff’s case is strong enough to get over the first hurdle, then the court will ‘pass on to the second inquiry, respecting the balance of convenience’.74 It must ‘assess and compare the prejudice and hardship likely to be suffered by the defendant, third persons and the public generally if an injunction is granted, with that which is likely to be suffered by the plaintiff if no injunction is granted’.75 This does not just require an analysis as to the loss that may flow and the nature of the pecuniary relief available to the plaintiff, but also as to the defendant’s likely capacity to pay such compensation. Similarly, from the defendant’s perspective, it must be determined whether the undertaking as to damages which the plaintiff is almost invariably asked to provide as a condition of obtaining interlocutory relief will provide a sufficient safeguard against the possibility that the plaintiff’s claim is rejected at trial. Put simply, whoever appears to be in a better position to make a subsequent claim for compensation is likely to find themselves on the wrong end of the interlocutory decision.

In assessing where the balance of convenience lies, the courts may have regard to a number of factors.76 Important ones include the courts’ innate preference for [page 60] maintaining the ‘status quo’;77 the effect that the decision will have on any business being run by either or both parties, there being a strong tendency to favour an established enterprise over a newly developed one;78 the conduct of the parties, including especially any acquiescence or ‘unclean hands’ on the part of the plaintiff; and the defendant’s willingness to offer and abide by an undertaking not to engage in the conduct in question. The likelihood of an early final hearing may well influence the court’s view of the balance of convenience.79

Final injunctions 2.13 Turning to the remedies ultimately available at trial, there can be little question but that injunctive relief has become the dominant remedy in intellectual property cases. Given the essentially negative character of intellectual property rights, this is hardly surprising. The plaintiff’s principal aim is usually to stop the defendant doing something that cannot lawfully be done without the plaintiff’s permission. Accordingly, the plaintiff will seek a prohibitive injunction,80 restraining the defendant either from continuing to infringe the plaintiff’s right or, where the application is made on a quia timet basis and the plaintiff can show a probability of the defendant committing an infringement,81 from proceeding to do so. The capacity to grant such an order is specifically conferred by intellectual property statutes,82 but is in any event within the inherent power of those courts invested with equitable jurisdiction.83 Where the plaintiff is able to establish an infringement by the defendant, an injunction will be granted unless there is some reason why the court should exercise its discretion to refuse to do so. According to general principle, the most obvious justification for a

court declining to impose a restraining order is the adequacy of [page 61] any remedy in damages available to the plaintiff. However, in intellectual property cases it is very rare, with the possible exception of actions for breach of confidence (see 4.24), for this reasoning to be employed. The assumption appears to be that an owner’s capacity to control exploitation of the relevant subject matter should be treated as an absolute entitlement, and that others should not be able to secure what in effect would be a compulsory licence by infringing the right and then offering to pay damages. If an injunction is to be refused, it will typically be on other grounds: that the defendant is not likely to continue infringing and that any restraint would thus be unnecessary; that the conduct of the plaintiff has in some way been blameworthy, so that they have not approached equity with ‘clean hands’; or that they have been guilty of unreasonable delay in bringing proceedings or have in some other way acquiesced in the defendant’s conduct.84

Ancillary relief 2.14 Besides awarding an injunction, a court may also grant any ancillary relief needed to ensure that the infringing conduct is indeed brought to an end. The principal example is an order for the delivery up for destruction of articles which the defendant has created pursuant to the infringing conduct, such as products manufactured with the use of the plaintiff’s confidential information or in infringement of the plaintiff’s patent.85 In the case of a person who has infringed a trade mark, they may similarly be ordered to obliterate the offending mark from their goods.86 In either instance the defendant is usually given the option of carrying out the destruction or obliteration, though if they are not trusted to do so they will be ordered to deliver the material up to the plaintiff for the order to be carried out. This is taken further by s 116 of the Copyright Act 1968, which permits the plaintiff to sue in conversion

or detinue, not merely with respect to infringing copies, but also any ‘devices’ used to make them: see 8.61. This is one of the rare instances in which proprietary relief is given for the infringement of an intellectual property right, since the plaintiff can assert possession of the offending items rather than being forced to have them destroyed.87 [page 62]

Damages 2.15 Whether or not an injunction is awarded, a successful plaintiff may seek damages for any loss caused by the defendant’s infringement. With the partial exception of breach of confidence, where doubts linger as to the precise jurisdictional basis for their availability, damages are firmly established as the principal form of pecuniary relief in intellectual property cases. However, unless the infringement in question also amounts to a breach of contract, they will not (at least in theory) be available as of right. In the case of (non-contractual) breach of confidence, this is a function of the equitable basis of the doctrine: see 4.29. The statutory systems specifically provide that a court ‘may’ make an award,88 although there are a number of authorities in relation to breach of copyright which suggest that despite the clear terms of the legislation a court has no discretion to refuse damages once it has decided that an account of profits is inappropriate: see 8.60. In any event, it appears that damages will normally be awarded if they are sought, at least where the defendant has been aware that their conduct was unlawful. Where the defendant has behaved ‘innocently’, different positions obtain in the various regimes. At one extreme, damages will not be awarded at all for passing off unless the defendant ‘persists after notice’ (see 16.20), whereas innocence seems to be no bar at all to an award of compensation for breach of confidence or an infringement of performers’ rights, the Australian Consumer Law or a registered trade mark, though it may still be a discretionary consideration. The remaining systems each specifically

provide for innocence to be a defence to a claim for damages under certain circumstances, but in two distinct ways. Under the copyright and circuit layouts legislation, damages are not to be available where the defendant was not aware, and had no reasonable grounds for suspecting, that their conduct constituted an infringement.89 By contrast, the designs, patents and plant breeder’s rights statutes are less forgiving. They provide that the court may refuse to award damages where the defendant did not know, and could not reasonably have known, of the existence of the plaintiff’s right.90 Under these provisions, it would not be enough that the defendant believed their conduct not to be an infringement, so long as they knew or should have known that the right existed. As to the way in which damages are assessed, the Australian courts in particular have shown a commendable reluctance to be drawn into formulating unnecessarily [page 63] rigid and technical principles, preferring instead the flexibility of looking at each case on its merits.91 The overarching principle is simply that the aim of any damages award is to compensate the plaintiff for whatever loss can reasonably be traced to the defendant’s conduct. This leaves open the question of the precise measure of assessment to be adopted, which will depend upon the particular circumstances. In practice, as will become apparent from the treatment of the individual regimes later in the book, two measures predominate. Where both parties are in business and the defendant’s activities cut into the plaintiff’s profits, that loss of profits will be the basis for assessment.92 Conversely, where the infringement consists of conduct which the plaintiff would have been prepared to authorise or license, damages will typically consist of the fee which the plaintiff could reasonably have charged. As for non-pecuniary loss, damages for such things as distress or disappointment are rare, though not unknown.93 There is also the question of whether a court can look beyond the compensatory function and ‘punish’ the defendant for

particularly flagrant or ‘contumacious’ conduct, especially where the defendant has calculated that the profits to be had will exceed any loss caused to the plaintiff. The common law doctrines do appear to allow for exemplary or punitive damages to be awarded for tortious conduct,94 and most of the statutory regimes now specifically provide for ‘additional damages’ to meet such a case:95 see 8.60, 10.28, 14.33, 20.20.

Account of profits96 2.16 Whereas damages are designed to compensate the plaintiff for loss suffered as a result of infringing conduct, an account is a restitutionary remedy which looks to the profits made by the defendant, who is forced to give up their ‘ill-gotten gains’.97 Stripping the defendant of any money made from the infringement may be an attractive option where the defendant, by using superior skill or resources in exploiting the relevant subject matter, has been able to make more than the plaintiff could have done, or in any event more than the plaintiff has lost as a result of the infringement. Since the two measures (loss to the plaintiff and gain to the defendant) are diametrically opposed, it is clear that the plaintiff must in practice choose [page 64] between damages and an account98. This is an established principle at common law,99 which makes an account available both in relation to breach of confidence and passing off.100 The need to elect is also reflected in the provisions governing remedies for infringement under most of the statutory regimes.101 It is important to remember that, quite apart from the terms of those provisions, an account is a discretionary remedy which may be refused on any of the grounds mentioned earlier in relation to injunctions.102 Indeed, an account is generally accompanied by an injunction, thereby precluding the possibility of the defendant continuing to earn profits, though there is no absolute bar to the remedy being awarded on its own.103 Most

significantly, it appears that no account is to be awarded in relation to any period in which the defendant was not aware of the plaintiff’s rights,104 the remedy only being available for profits which are ‘dishonestly made’ and which it would be ‘unconscionable’ for the infringer to retain.105 This principle is by no means fully reflected in some of the statutory provisions. While the designs, patents and plant breeder’s rights statutes recognise that innocence may bar pecuniary relief,106 ‘innocence’ in this respect is narrowly defined, as we saw above in relation to damages. Moreover, the copyright and circuit layouts provisions actually state that, even where damages cannot be obtained against an innocent defendant, the plaintiff remains ‘entitled’ to an account of profits.107 Despite this wording, however, it seems likely that the courts will continue to regard the remedy of account as retaining its traditional discretionary character.108 In any event, there are a number of difficulties which greatly diminish the utility of the remedy in practice. At a substantive level, there is the problem of determining with any precision the profits of the defendant to which the plaintiff may lay claim. [page 65] Unless it can be established that the defendant would not have made a profit at all without the aid of the infringement, which is rare,109 the court will need to find a way of identifying what proportion of the profit is attributable to the infringement.110 This will be no easy matter where, for instance, the defendant has used the plaintiff’s invention merely as the basis for their own product,111 or attached the plaintiff’s trade mark to goods that would have been sold anyway.112 The upshot is that a good deal of time is likely to be taken up by the court (or, more usually, a master or some other officer) examining the defendant’s business in great detail, followed by extensive arguments as to which part of the defendant’s operations have been advantaged by the infringement and as to whether the defendant might have made the same profits by acting lawfully. 2.17 These difficulties are illustrated by Dart Industries Inc v

Decor Corp Pty Ltd,113 in which the defendants’ production of plastic kitchen canisters with press button seals had been held to infringe the plaintiff’s patent, which related only to the seal. The High Court confirmed that an account should be taken of the profits made on the whole product, not just on the seal, on the basis that the ‘whole thing came into existence’ by reason of the patent infringement.114 However, the more difficult issue was whether the defendants should be permitted any allowance for the general overheads of their business in calculating the profits made from the infringement. The court rejected an ‘incremental costing’ approach, which would have identified the gross profit from the relevant product and then deducted only the costs directly associated with making or selling that product, including overheads solely to the extent that they would not otherwise have been incurred in relation to other products. Instead, they preferred an ‘absorption costing’ method. This permitted the allocation of whatever portion of general overheads could fairly be attributed to the manufacture or sale of the product, though not any ‘opportunity cost’ (potential profits forgone from using the same capacity to make or sell something else). The reasoning was that since ‘the purpose of an account of profits is not to punish the defendant but to prevent its unjust enrichment’,115 the defendants should not be put in a worse position than if they had not infringed. This indeed would be the case if they were denied a deduction not only for the opportunity cost but also for ‘the cost of the overheads which sustained the [production] capacity that would have been utilized by an alternative product and that was in fact utilized by the infringing product’.116 The burden, however, was on the infringer to suggest a reasonably [page 66] acceptable basis for allocating an appropriate portion of the overheads, something which would necessarily vary from case to case. The problem, as it has subsequently been noted, is that ‘the variety of methods commonly used for overhead allocation would seem to

provide potential justification for a fairly broad range of acceptable methods’,117 so that there remains considerable uncertainty as to how costs are to be apportioned. The High Court’s decision indeed does little to dispel the doubts surrounding the practicality of taking an account. As one judge put it more than a century ago: Accounts … very seldom result in anything satisfactory to anybody. The litigation is enormous, the expense is great and the time consumed is out of all proportion to the advantage ultimately attained.118 Those words still ring true today, and it is hardly surprising that most plaintiffs in practice prefer to forgo their chance at a windfall and claim damages instead.

CRIMINAL LIABILITY 2.18 Apart from general offences such as conspiracy to defraud, which may come into play where rights are infringed,119 most of the intellectual property statutes establish a series of special offences relating to their particular regimes.120 For the most part these are relatively unimportant in practice, relating to matters such as failure to comply with a summons to appear before an administrative body, falsely procuring registration or falsely representing the existence of a right. However, one set of provisions that does result in prosecutions from time to time is that contained in the Copyright Act 1968 and relating to deliberate infringements and dealings in articles known to be infringing copies. Revamped several times in recent years to allow commercial piracy to be more effectively combated, some of these offences carry a maximum sentence of five years and fines that can run into the millions of dollars for companies who are repeat offenders: see 8.66. Also of potential significance are the offences designed to punish the forgery or removal of registered trade marks with an intention to defraud, which again are backed by penal provisions which can lead to up to five years in jail. These penalties too have been increased, most recently by the Intellectual Property Laws Amendment (Raising the Bar) Act: see 20.23.

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JURISDICTION OF COURTS General 2.19 The last three decades have seen important changes in the statutory provisions governing the jurisdiction of courts to hear actions or appeals arising out of the various intellectual property systems. Together with the cross-vesting scheme, introduced in 1988, these changes have had the effect of standardising most of the systems and of ensuring that, while appeals from administrative decisions must go to the Federal Court, other actions may be commenced in either the Federal Court (or in some cases the Federal Circuit Court) or a state or territory court. At the same time, a great deal of routine work has been removed from the High Court. The court was until 1976 the designated appeals court for many of the statutory systems; today its function is merely the general task of overseeing the various systems by acting as a final court of appeal in cases of particular difficulty or significance.121 In practice it is the federal courts that now play the most important role in adjudicating intellectual property cases, offering particular advantages in terms of the relative speed with which they can proceed to deal with a matter, compared to the delays often experienced in state courts.122 It has sometimes been suggested that a special court, along the lines of the Patents Court and Intellectual Property Enterprise Court in the United Kingdom or the Federal Patent Court in Germany, be created to deal with intellectual property cases. The idea was rejected in the 1990s both by IPAC and the Australian Law Reform Commission (ALRC), on the basis that there was no compelling demand for such a body, especially in light of the current volume of intellectual property litigation in this country.123 Some time later, the Intellectual Property and Competition Review Committee (IPCRC) suggested that jurisdiction in patents matters be vested in the Federal Magistrates Court (now Federal Circuit Court), as a way of offering a cost-effective avenue for enforcement at a level lower than the Federal

Court or the [page 68] state Supreme Courts.124 As noted in 2.3, this has now been done for copyright, designs and trade marks matters, but not (as yet) for patents litigation. The government has rejected the Productivity Commission recommendation that the Federal Circuit Court be given the jurisdiction to hear patent matters. The government in its response notes that ‘the Federal Court has implemented an IP National Practice Area and issued a new Practice Note for IP matters. These initiatives aim to increase the efficiency of the conduct of litigation in the Court and reduce the cost of that litigation. Such active case management initiatives are acknowledged as an effective way to streamline the court process, reducing trial duration and costs.’125 A suggestion from the ALRC that federal intellectual property matters be removed from state and territory courts,126 on the basis that it is undesirable for such courts ‘to be used on an occasional basis in a specialised field in which the uniform application of federal law is of high importance’127 has not been implemented.

Commencement of civil proceedings 2.20 The current jurisdictional arrangements for the commencement of civil proceedings vary slightly from system to system, though the end result is much the same. 2.21 Patents, designs and trade marks As a general rule, proceedings under each statute must be commenced in a ‘prescribed court’, defined to mean the Federal Court, the Federal Circuit Court (except for patents), the Supreme Court of a state or territory, or the Supreme Court of Norfolk Island.128 These proceedings include actions for non-infringement declarations, for the rectification of the designs or trade mark registers, or for the revocation of a patent. Proceedings may be transferred between prescribed courts129 and

their jurisdiction is exercised by a single judge.130 Infringement proceedings, on the other hand, may be instituted in any court, whether prescribed or not, as may proceedings in respect of unjustified threats.131 An appeal lies in any of these proceedings to the Full Court of the Federal Court or, by special leave, directly to the High Court.132 2.22 Copyright, performers’ rights and circuit layouts The Federal Court is specifically given jurisdiction over infringement proceedings arising out of these [page 69] regimes,133 as is the Federal Circuit Court in the case of copyright.134 In addition, however, and despite the absence of any explicit statement to that effect in the statutes concerned, jurisdiction is concurrently vested in the various state and territory courts.135 All appeals lie to the Full Court of the Federal Court or, by special leave, directly to the High Court.136 2.23 Other proceedings The Federal Court has ‘exclusive’ jurisdiction in respect of proceedings commenced under the Plant Breeder’s Rights Act 1994 (Cth): s 56. However, this is subject to the cross-vesting provisions of the Jurisdiction of Courts (Cross-vesting) Act 1987 (Cth). Besides allowing a state or territory court to exercise such jurisdiction, the 1987 Act permits these and other federal cases to be transferred to a more appropriate jurisdiction where that is thought necessary.137 However, the provisions of the Act (and its state equivalents) permitting cases arising under state law to be vested in or transferred to federal courts were ruled by the High Court to be unconstitutional.138 Hence, to bring actions for breach of confidence or passing off in the Federal Court, it is necessary to rely on the concept of accrued jurisdiction, discussed in 2.24. As for the Australian Consumer Law, civil proceedings may generally be commenced not only in the Federal Court, but in the Federal Circuit Court (subject to a monetary limit in respect of compensation claims) or a state or territory court.139 Provision is again made for the

transfer of proceedings in appropriate cases.140

Associated and accrued jurisdiction of the Federal Court and Federal Circuit Court 2.24 Both the Federal Court and Federal Circuit Court are able to exercise ‘associated’ or ‘accrued’ jurisdiction over certain matters. Under these concepts, if a claim has been brought before either court under the Australian Consumer [page 70] Law, for example, any other related claims may also be heard by the court, even if they arise at common law or under a statute over which the court has no express jurisdiction. However, the other claims must arise from a ‘common substratum of facts’ to those expressly within the court’s remit.141 This still allows common law claims (particularly in passing off, but also in breach of confidence) to be brought before the court as being related to another statutory claim, without any need to rely on the cross-vesting legislation, provided the federal claim relied upon to found the court’s jurisdiction is not ‘trivial’ or ‘insubstantial’.142

Decisions of administrative bodies: appeals and review 2.25 Under many of the statutory systems, administrative bodies such as the Commissioner of Patents are empowered to make various decisions as to the creation, subsistence and compulsory licensing of rights, as well as on ancillary matters such as the right to intervene or the extension of time limits. Where appeals are provided from these decisions, they lie to the Federal Court, or in some instances the Federal Circuit Court, and in turn, with leave, to the Full Court of the Federal Court.143 The statutes also confer on the Administrative Appeals Tribunal (AAT) power to review certain of the decisions.144 Alternatively, any decision of an administrative character may be reviewed by a judge of the Federal Court under the Administrative

Decisions (Judicial Review) Act 1977 (Cth), under one of the grounds for review set out in ss 5–7.145 Judicial review may also be sought in the same court under s 39B of the Judiciary Act 1903 (Cth).146

Criminal proceedings 2.26 As far as prosecutions for the various offences listed earlier are concerned, a curious split emerges between the various statutes. Under the designs, patents and trade marks legislation, prosecutions are specifically prohibited from being commenced in the Federal Court or Federal Circuit Court and must therefore be initiated in a state court.147 By contrast, prosecutions under the copyright or performers’ rights regimes may be instituted in either the Federal Court (except in the case of indictable offences) or in any other court,148 whereas prosecutions under the plant breeder’s rights legislation may only be commenced in the Federal Court.149

1. 2. 3. 4. 5.

6.

7. 8.

As to the potential role for court-appointed experts in such cases, see Heerey 1998; Freckelton & Selby 2013. Note that the limitation period for the institution of intellectual property proceedings is generally six years: see eg Copyright Act 1968 (Cth) s 134. See eg Speed Seal Products Ltd v Paddington [1986] 1 All ER 91; Pitman Training Ltd v Nominet UK (1997) 38 IPR 341; and see generally Williams v Spautz (1992) 174 CLR 509. See eg Jaybeam Ltd v Abru Aluminium Ltd [1975] FSR 334. The tort of unlawful interference is discussed in 2.7; as to injurious falsehood, see also 16.2. See eg Wanem Pty Ltd v Tekiela (1990) 19 IPR 435, where a solicitor’s letter making such an assertion on behalf of a commercial client was held to be conduct ‘in trade or commerce’ (see 16.30 for the purposes of what is now s 18 of the Australian Consumer Law). But cf Nine Films and Television Pty Ltd v Ninox Television Ltd (2005) 67 IPR 46, where an incorrect assertion of copyright infringement was found not to have misled anyone. See Copyright Act 1968 (Cth) s 202 (see 8.64); Patents Act 1990 (Cth) ss 128–132 (see 14.34); Trade Marks Act 1995 (Cth) s 129 (see 20.21); Designs Act 2003 (Cth) ss 77– 81; Circuit Layouts Act 1989 (Cth) s 46. IPAC 1992. See generally Cairns 2011, ch 2; Astor & Chinkin 2002. Note the reference to encouraging negotiated and/or mediated settlements that now appears in s 195AZA(3) of the Copyright Act 1968 in relation to the grant of injunctions to restrain moral rights infringements.

9. 10. 11.

12. 13. 14. 15. 16. 17.

18.

19.

20. 21.

22. 23.

24.

ACIP 1999. See Patents Amendment Act 2001, discussed in Chapters 11 and 12. See ACIP 2003b. Other ACIP reports have been devoted more specifically to trade mark, patent and plant breeder’s rights enforcement: ACIP 2004a, 2009b, 2010a and 2010c. See also the recommendations on copyright enforcement made in House of Representatives Standing Committee on Legal and Constitutional Affairs 2000. Although most of the committee’s suggestions were rejected by the government, some were implemented by Sch 4 of the Copyright Amendment (Parallel Importation) Act 2003 (Cth), including the conferral of jurisdiction on the Federal Magistrates Court. See Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) Sch 6. A similar proposal for enforcement of plant breeder’s rights lapsed with the calling of the 2013 federal election: see Intellectual Property Laws Amendment Bill 2013 Sch 4. ACIP 2010a. See . Productivity Commission 2016, Recommendation 19.2. Australian Government 2017, 25. Standing must also be considered for applications to rectify the intellectual property Registers, while oppositions to registration may be brought by any person. The ‘Minister or any other person’ may oppose a grant of a standard patent (Patents Act s 59) and ‘a person’ may oppose registration of a trade mark: Trade Marks Act s 52. However, when before a court for rectification of the Registers (Patents Act s 192; Trade Marks Act ss 85–88) an application may only be brought by an ‘aggrieved person’: see 19.94. Note that a person holding an equitable interest in the right, for example under a trust or pursuant to a contract, may seek interlocutory relief, but thereafter must either join the legal owner or take an assignment: Performing Right Society Ltd v London Theatre of Varieties Ltd [1924] AC 1. See also 22.35ff. There is generally no obstacle to the assignment of intellectual property rights, provided the parties observe the requisite formalities (usually that the assignment be in writing and, in the case of registration systems, that the change in ownership be officially notified). Except, under the Copyright Act 1968, in the case of an action under s 116 in respect of infringing copies or devices (see 8.61) — here only the exclusive licensee may sue: s 119(b), (c). Copyright Act 1968 ss 122–124; Circuit Layouts Act 1989 ss 33–35. However, where performers have become owners of sound recordings under provisions introduced to comply with the Australia–United States Free Trade Agreement (see 7.8), they are not entitled to certain damages, or an account of profits: Copyright Act 1968 s 100AG. See eg Carlin Music Corp v Collins [1979] FSR 548. The same applies in relation to the ‘anti-circumvention’ provisions introduced in 2000: see 8.67. Cf the position under the designs system, which imposes strict liability even in the case of indirect infringement: see 10.26. Patents Act 1990 s 123; Copyright Act 1968 s 115(3); Designs Act 2003 s 75(2)(b); Plant Breeder’s Rights Act 1994 s 57(1). There is no recognition of innocent infringement in the Trade Marks Act: Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1968) 122 CLR 25 at 35–6. But see s 122 of the Trade Marks Act 1995 for the effect

25.

26. 27. 28. 29. 30. 31. 32.

33. 34.

35. 36. 37. 38. 39.

of certain acts undertaken ‘in good faith’. See generally Finkelstein 2001; Garnett 2006; and see also 21.1. Cf Australian Competition & Consumer Commission v Chen (2003) 201 ALR 40. See also 20.11–20.12 in relation to the internet and trade marks; note also the Copyright Amendment (Online Infringement) Act 2015 (Cth), which empowers the Federal Court to issue an order against an internet service provider (ISP) to block access to an overseas website that infringes, or facilitates infringement of, copyright and where that is its primary purpose: see 8.59. CBS Songs Ltd v Amstrad Consumer Electronics plc [1988] AC 1013 at 1057; Caterpillar Inc v John Deere Ltd (1999) 48 IPR 1 at 9–10; JR Consulting & Drafting Pty Ltd v Cummings (2016) 116 IPR 440; see also 14.11. See eg Ravenscroft v Herbert [1980] RPC 193. BEST Australia Ltd v Aquagas Marketing Pty Ltd (1988) 12 IPR 143 at 147; and see eg Louis Vuitton Malletier SA v Toea Pty Ltd (2006) 70 IPR 307. See eg Sweeney v Boylan Nominees Pty Ltd (2006) 226 CLR 161. See generally Sappideen et al 2011, 480–9. See eg Warne v Genex Corp Pty Ltd (1996) 35 IPR 284; and cf Coulthard v South Australia (1995) 63 SASR 531. Cf Apple Computer Inc v Mackintosh Computers Ltd (1987) 8 IPR 89. See Sappideen et al 2011, 200–2, 499–506 and cases there cited. Note that an employee who is incidentally involved in a firm’s unlawful conduct does not commit an infringement at all provided ‘the conduct is not manifestly unlawful and the employee believes it to be lawful and acts in a purely ministerial capacity rather than exercise any independent judgment’: ibid, 477; and see further Stewart & Nosworthy 2011. See the exhaustive review of the relevant authorities in Johnson Matthey (Aust) Ltd v Dascorp Pty Ltd (2003) 9 VR 171; and see also Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Ltd (2010) 85 IPR 525 at [179]–[180]. See eg Microsoft Corp v Auschina Polaris Pty Ltd (1996) 36 IPR 225. Of the other tests that have been suggested for directorial liability (see Pioneer Electronics Australia Pty Ltd v Lee (2001) 51 IPR 291 at 306–7), the one that has attracted most support is that which requires a director to have ‘made the wrongful act his [sic] own’. But cf Allen Manufacturing Co Pty Ltd v McCallum & Co Pty Ltd (2001) 53 IPR 400 at 410, suggesting that the difference between the two tests ‘may be more apparent than real’. King v Milpurrurru (1996) 34 IPR 11. Cf APRA Ltd v Jain (1990) 26 FCR 53, where a director was held to be liable for ‘authorising’ a copyright infringement by allowing a situation to develop and continue where he must have known infringement was likely. See eg Microsoft Corp v Goodview (2000) 49 IPR 578; Sony Music Entertainment (Aust) Ltd v CEL Music Pty Ltd (2002) 54 IPR 289. See Walker v Alemite Corp (1933) 49 CLR 643 at 658; Firth Industries Ltd v Polyglas Engineering Pty Ltd (1975) 132 CLR 489 at 497; CCOM Pty Ltd v Jiejing Pty Ltd (1993) 27 IPR 577 at 627. [1988] AC 1013. The House also rejected an argument that Amstrad was liable in the tort of negligence, denying that it was under any duty of care to prevent or discourage consumers from using the recorders to breach copyright.

40. 41. 42. 43. 44.

45. 46. 47. 48. 49. 50. 51. 52. 53. 54. 55. 56. 57. 58.

59. 60. 61.

Copyright Act 1968 ss 36(1), 101(1); Circuit Layouts Act 1989 s 9; Patents Act 1990 s 13(1). (2012) 248 CLR 42. As to whether the concept of authorisation under the Patents Act is the same as or narrower than that applied in relation to the Copyright Act, see 14.14. See generally Balkin & Davis 2013, ch 21. See Woolley v Dunford (1972) 3 SASR 243; Sanders v Snell (1998) 196 CLR 329. In OBG Ltd v Allan [2008] 1 AC 1 the House of Lords took the view that this tort should be regarded as covering only direct inducement of a breach of contract, with any liability for ‘indirect’ contractual interference properly resting in the separate tort (see below) of unlawful interference. It has been suggested this view should be adopted by Australian courts as well: see eg Balkin & Davis 2013, 610. See McKernan v Fraser (1931) 46 CLR 343; Dominion Rent A Car Ltd v Budget Rent A Car System (1970) Ltd (1987) 9 IPR 367. It is rare in practice that such a motive can be established. Note that, unlike the tort of conspiracy to injure, the defendants cannot escape liability by being predominantly motivated by self-interest: Williams v Hursey (1959) 103 CLR 30; Lonrho plc v Fayed [1992] 1 AC 448. See Rookes v Barnard [1964] AC 1129; Latham v Singleton [1981] 2 NSWLR 843. See Ballard v Multiplex [2012] NSWSC 426 at [77]–[85]. See Indata Equipment Supplies Ltd v ACL Ltd [1998] FSR 248; OBG Ltd v Allan [2008] 1 AC 1. See LED Technologies Pty Ltd v Roadvision Pty Ltd (2012) 94 IPR 481. See Associated British Ports v Transport and General Workers Union [1989] 1 WLR 939 at 952, 959, 963–4; Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2001) 49 IPR 225 at 252–3. Note also the availability of ‘Mareva’ or ‘asset preservation’ orders to prevent the defendant from removing assets beyond the reach of the plaintiff: see eg Cardile v LED Builders Pty Ltd (1999) 198 CLR 380; and see Kunc & Hepburn 2003. See generally Wright 2003. [1976] Ch 55. See eg EMI Ltd v Sarwar & Haidar [1977] FSR 146; and see also Tony Blain Pty Ltd v Jamison (1993) 26 IPR 8. As to the solicitor’s responsibilities in such a case, see eg Long v Specifier Publications Pty Ltd (1998) 44 NSWLR 545. Bucyrus (Australia) Pty Ltd v ANI Mining Services Ltd (1999) 45 IPR 643. In Foxtel Management Pty Ltd v Mod Shop Pty Ltd (2007) 72 IPR 1 additional damages were awarded against the defendants because of their flagrant conduct, including the destruction of hard-drives and the shredding of documents on the day an Anton Piller order was executed. See also AGL Energy Ltd v Hardy [2017] FCA 420, as to an order being clear, unambiguous and capable of compliance. Rank Film Distributors Ltd v Video Information Centre [1981] 2 All ER 76. See eg Warman International Ltd v Envirotech Australia Pty Ltd (1986) 6 IPR 578; and see also Dart Industries Inc v David Bryar & Associates Pty Ltd (1997) 38 IPR 389. See eg Gianitsios v Karagiannis (1986) 7 IPR 36 at 39 where Young J, while granting the order requested, admitted: ‘I have a tremendous sense of unease about this case

62. 63.

64. 65. 66. 67. 68. 69. 70. 71. 72. 73. 74. 75. 76.

77. 78. 79.

80.

and I feel that I may be being talked into something by [counsel’s] expert advocacy that I will live to regret’. See also JC Techforce Pty Ltd v Pearce (1996) 35 IPR 196; Microsoft Corp v Goodview Electronics Pty Ltd (1999) 46 IPR 159. Anton Piller KC v Manufacturing Processes Ltd [1976] Ch 55 at 62. Busby v Thorn EMI Video Programmes Ltd [1984] 1 NZLR 461 at 477; Jemella Australia Pty Ltd v Internet Marketing Pty Ltd (2008) 75 IPR 59. Note also that where an application is made on notice, this may in itself indicate that the risk of destruction is not great and hence justify refusal: T S & B Retail Systems Pty Ltd v 3Fold Resources Pty Ltd (2003) 57 IPR 530 at 538. See eg Lock International plc v Beswick (1989) 16 IPR 497; Milcap Publishing Group AB v Coranto Corp Pty Ltd (1995) 32 IPR 34; Geneva Laboratories Ltd v Nguyen (2014) 110 IPR 295. See generally Maclean & McDonald 2003, 651–62; Dal Pont 2015, 986–1006. Although note the availability ex parte of interim injunctions, which are designed to preserve the plaintiff’s rights pending a proper hearing: see Maclean & McDonald 2003, 662–3. (1968) 118 CLR 618 at 622. [1975] AC 396 at 407–8. For adoption of this test by the High Court, see eg Murphy v Lush (1986) 60 ALJR 523 at 524; Patrick Stevedores Operations No 2 Pty Ltd v Maritime Union of Australia (1998) 195 CLR 1 at 24. (2006) 227 CLR 57. Gummow and Hayne JJ did not object to use of the phrase ‘serious question’ to be tried, so long as it was understood in terms of the test put forward in Beecham: Australian Broadcasting Corp v O’Neill (2006) 227 CLR 57 at 82. Ibid. Ibid at 84; see also Lawson 2010a. Ibid at 88. Samsung Electronics Co Ltd v Apple Inc (2011) 286 ALR 257 at [66]. See Maclean & McDonald 2003, 660–2. Apart from those listed below, see also 14.33, discussing a special principle formerly observed in patent infringement cases whereby an interlocutory injunction would only be granted in the case of a patent that had previously been held valid or at least been unchallenged for some years. Although much depends, of course, on which status quo is identified as worth preserving: see Tilbury 1990, 321–2. See Cornish et al 2013, 76. See eg Lone Star Steakhouse & Saloon Inc v Zurcas (2000) 48 IPR 325. Cf Samsung Electronics Co Ltd v Apple Inc (2011) 286 ALR 257, where the defendant’s refusal of an offer of an early trial on limited issues was held not to count against it, given the difficulty of satisfactorily identifying those issues in the time available. Mandatory injunctions, compelling the defendant to take positive action of some sort, are rare in intellectual property cases. However, they are occasionally used in business reputation cases to compel defendants to change their name, even at an interlocutory stage: see eg Aerospatiale Societe Nationale Industrielle v Aerospatiale Helicopters Pty Ltd (1986) 6 IPR 219; and see also 18.24 in relation to domain name registrations. The moral rights provisions also permit courts to order a public apology, or the removal or reversal of any false attribution or derogatory treatment: Copyright Act

81. 82.

83. 84. 85.

86. 87.

88.

89. 90.

91. 92. 93. 94.

95.

1968 s 195AZA(1). See also 16.34 for the power to make orders for corrective advertising under the Australian Consumer Law. See Spry 2010, 377–82. See Copyright Act 1968 ss 115(2), 116D(1), 135AOE(1), 195AZA(1), 248J(2); Circuit Layouts Act 1989 s 27(2); Designs Act 2003 s 75(1)(a); Patents Act 1990 s 122(1); Plant Breeder’s Rights Act 1994 s 56(3); Trade Marks Act 1995 s 126(1)(a). See also Australian Consumer Law s 232. See generally Heydon et al 2015, ch 21. See eg 4.26 in relation to breach of confidence; and see also Knott Investments Pty Ltd v Winnebago Industries Inc (2013) 101 IPR 449. See 4.27, 14.33; and see also Geodesic Constructions Pty Ltd v Gaston (1976) 16 SASR 453 (articles made in infringement of registered design). Note also s 248T of the Copyright Act 1968, specifically empowering a court to make such an order where a person is charged with an offence under the performers’ rights provisions, whether or not they are convicted; and see also ss 135AOF and 135AU of the same Act in relation to broadcast decoding devices. See eg Slazenger & Sons v Feltham & Co (1889) 6 RPC 531. It appears that little use has been made of the constructive trust in intellectual property cases. On present authority, the defendant would probably have to be in breach of some fiduciary duty before any trust would be imposed on property created or misused as a result of the infringement: see 4.32. Note also the possibility that an intellectual property right, if created in breach of a fiduciary duty, might itself be the subject of a constructive trust: see eg 7.9. See Copyright Act 1968 ss 115(2), 116D(1), 135AOE(1), 195AZA(1), 248J(2); Circuit Layouts Act 1989 s 27(2); Designs Act 2003 s 75(1)(b); Patents Act 1990 s 122(1); Plant Breeder’s Rights Act 1994 s 56(3); Trade Marks Act 1995 s 126(1)(b). See also Australian Consumer Law s 236. Copyright Act 1968 s 115(3); Circuit Layouts Act 1989 s 27(3). Note, however, that the innocence defence is rather more restrictively defined where an action under s 116 of the Copyright Act (discussed in 2.14) is concerned. Designs Act 2003 s 75(2); Patents Act 1990 s 123(1); Plant Breeder’s Rights Act 1994 s 57(1); and see also Copyright Act 1968 s 195AZA(2)(a) in relation to moral rights. Note that under the patents legislation damages will not be awarded where the defendant has obtained a non-infringement declaration: see 14.29. See eg Interfirm Comparison (Australia) Pty Ltd v Law Society of NSW (1975) 6 ALR 445. As to a consideration of different heads of damages in a copyright matter, including loss of profits, see Seafolly Pty Ltd v Fewstone Pty Ltd (2014) 106 IPR 85. See eg Milpurrurru v Indofurn Pty Ltd (1994) 30 IPR 209: see 8.62. See 4.30, 16.20. Cf the position under s 236 of the Australian Consumer Law: see 16.34. Exemplary damages are not available for breach of contract (Gray v Motor Accident Commission (1998) 196 CLR 1 at 6; Hospitality Group Pty Ltd v Australian Rugby Union Ltd (2001) 110 FCR 157), nor, it appears, in equity: Harris v Digital Pulse Pty Ltd (2003) 56 NSWLR 298. Copyright Act ss 115(4), 116D(2), 135AOE(2), 248J(3); Designs Act 2003 s 75(3); Patents Act 1990 s 122(1A); Trade Marks Act 1995 s 126(2). By contrast, there is no such provision in relation to moral rights, with s 195AZA(1)(b) of the Copyright Act

96. 97. 98.

99. 100. 101.

102. 103. 104. 105. 106. 107. 108. 109. 110.

111. 112. 113. 114. 115. 116. 117.

118. 119.

referring only to ‘damages for loss resulting from the infringement’. See generally Davidson & Cleary 2003. Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1968) 122 CLR 25 at 32. The choice between damages and an account of profits is in the alternative and at the option of the applicants; the election may be made after the court has settled on the measure of each: see Labelmakers Group Pty Ltd v LL Force Pty Ltd (No 3) [2013] FCA 1059. See eg Neilson v Betts (1871) LR 5 HL 1. But not for breach of contract: Hospitality Group Pty Ltd v Australian Rugby Union Ltd (2001) 110 FCR 157; though cf Attorney-General (UK) v Blake [2001] 1 AC 268. See Designs Act 2003 s 75(1)(b); Patents Act 1990 s 122(1); Plant Breeder’s Rights Act 1994 s 56(3); Trade Marks Act 1995 s 126(1)(b). In the case of copyright, although not expressed in terms of the option of the plaintiff, a successful plaintiff must elect between damages and an account of profits: T S & B Retail Systems Pty Ltd v 3fold Resources Pty Ltd (No 3) (2007) 72 IPR 492 at 540; Copyright Act 1968 ss 115(2), 116D(1), 135AOE(1); Circuit Layouts Act 1989 s 27(2). Note that no provision at all is made for the remedy by the Copyright Act in relation to moral rights or performers’ rights. Warman International Ltd v Dwyer (1995) 182 CLR 544 at 559; and see eg Knott Investments Pty Ltd v Winnebago Industries Inc (No 2) (2013) 103 IPR 395. Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1968) 122 CLR 25. Ibid at 34. Dart Industries Inc v Decor Corp Pty Ltd (1993) 179 CLR 101 at 111; Apand Pty Ltd v Kettle Chip Co Pty Ltd (1994) 30 IPR 337 at 358. Designs Act 2003 s 75(2); Patents Act 1990 s 123(1); Plant Breeder’s Rights Act 1994 s 57(1). Copyright Act 1968 s 115(3); Circuit Layouts Act 1989 s 27(3). See Davidson & Cleary 2003, 958. Though cf Peter Pan Manufacturing Corp v Corsets Silhouette Ltd [1963] 3 All ER 402. The court may be prepared to accept the applicant’s calculations where the respondent has not been of much assistance and the applicant has acted fairly in the interests of speedy resolution: see Bugatti GmbH v Shine Forever Men Pty Ltd (No 2) (2014) 105 IPR 413. See eg Leplastrier & Co Ltd v Armstrong Holland Ltd (1926) 26 SR (NSW) 585. See eg Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1968) 122 CLR 25. (1993) 179 CLR 101. See Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1968) 122 CLR 25 at 42–3. (1993) 179 CLR 101 at 114; and see also ibid at 123. Ibid. Blayney & Wyburn 1994, 93. The authors go on to note the possible view that ‘the task is made impossible by the fact that various general overheads interact in such a way that any means of relating individual overhead costs to specific products is arbitrary’ and that in fact ‘no method of allocation will be verifiable’: ibid. See also the difficulties encountered in Apand Pty Ltd v Kettle Chip Co Pty Ltd (1999) 43 IPR 225 and LED Builders Pty Ltd v Eagle Homes Pty Ltd (1999) 44 IPR 24; 46 IPR 375. Siddell v Vickers (1892) 9 RPC 152 at 162. See eg Scott v Metropolitan Police Commissioner [1975] AC 819.

120.

121.

122.

123. 124. 125. 126. 127. 128. 129. 130. 131. 132. 133.

134. 135.

136.

Copyright Act 1968 Pt V Div 5, ss 172, 173, 203A–203H, Pt XIA Div 3; Designs Act 2003 Ch 11 Pt 3; Patents Act 1990 s 152(4), Ch 18, s 191, Ch 20 Pt 2; Plant Breeder’s Rights Act 1994 ss 74–76; Trade Marks Act 1995 Pt 14. For consideration of the various forms of ‘intellectual property crime’, see Speck & Urbas 2013. Under s 75 of the Constitution, the High Court does, however, have original jurisdiction over all matters: (i) arising under a treaty; (ii) affecting consuls or other foreign representatives; (iii) in which the Commonwealth or a representative thereof is a party; (iv) between states, or residents of different states, or between a state and a resident of another state; or (v) in which a writ of mandamus or prohibition or an injunction is sought against an officer of the Commonwealth.While ordinarily the court might be expected to remit such a matter to a lower court, there will occasionally be exceptions: see eg Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39; see 4.39, 8.40. The Federal Court has, for example, introduced a ‘fast track’ system for commercial litigation, including intellectual property (but so far not patents), sometimes called a ‘rocket docket’. For an example of a fast track case in trade marks, see Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 86 IPR 19. IPAC 1992, ch 6; ALRC 1995, [13.9]–[13.16]. IPCRC 2000, 176–8. See also ACIP 1995, 56–9; ACIP 2003b. Australian Government 2017, 25. ALRC 2001, [20.23]–[20.29]. Ibid, [20.28]. Figures quoted by the ALRC suggest that the state and territory courts typically handle less than 10 per cent of intellectual property matters: ibid, [20.6]. Patents Act 1990 Sch 1; Designs Act 2003 s 5; Trade Marks Act 1995 s 190. Patents Act 1990 s 157; Designs Act 2003 s 86; Trade Marks Act 1995 s 194. Patents Act 1990 s 156; Designs Act 2003 s 85; Trade Marks Act 1995 s 193. Patents Act 1990 ss 120, 128(1); Designs Act 2003 ss 73(2), 77(1); Trade Marks Act 1995 ss 125, 129(1). Patents Act 1990 s 158; Designs Act 2003 s 87; Trade Marks Act 1995 s 195. See Copyright Act 1968 ss 131C, 135AR, 195AZGH(4), 248M; Circuit Layouts Act 1989 s 47. Note that under s 161 of the Copyright Act the Federal Court may also have questions of law referred to it by the Copyright Tribunal (see 7.21), whose President is in any event a judge of the court. See Copyright Act ss 131D, 135AS, 195AZGH(5), 248MA. See Judiciary Act 1903 (Cth) ss 39(2), 67C(c); Australian Capital Territory (SelfGovernment) Act 1988 (Cth) s 48A; and see ALRC 2001, [6.22]–[6.25], [36.6]– [36.10]. The only provisions made by the intellectual property statutes in this respect are that any infringement action commenced in a state or territory Supreme Court is to be heard by a single judge (Copyright Act 1968 ss 131A, 135AP, 195AZGH(1), 248K; Circuit Layouts Act 1989 s 40); and that nothing in them confers on a court the power to grant equitable relief, where it does not otherwise have that power: Copyright Act 1968 s 203; Circuit Layouts Act 1989 s 43. Copyright Act 1968 ss 131B, 135AQ, 195AZGH(3), 248L; Circuit Layouts Act 1989 s

137. 138. 139. 140. 141. 142. 143. 144. 145. 146. 147. 148. 149.

41; and see Thompson & Morgan (United Kingdom) Ltd v Erica Vale Australia Pty Ltd (1995) 31 IPR 335. See eg Old Digger Pty Ltd v Pasdonnay Pty Ltd (2003) 57 IPR 502. Re Wakim; Ex parte McNally (1999) 198 CLR 511. See Competition and Consumer Act 2010 ss 138–138B. See Competition and Consumer Act 2010 ss 138C–138E; Federal Court of Australia Act 1976 (Cth) s 32AB; Federal Circuit Court Act 1999 (Cth) s 39. Philip Morris Inc v Adam P Brown Male Fashions Pty Ltd (1981) 148 CLR 457; Fencott v Muller (1983) 152 CLR 570. See eg W G & B Manufacturing Pty Ltd v Tesla Farad Pty Ltd (1999) 48 IPR 111. Designs Act 2003 ss 83(2), 83A(2), 87(2); Patents Act 1990 ss 154(2), 158(2); Trade Marks Act 1995 ss 191(2), 191A, 195(2). Designs Act 2003 s 136; Patents Act 1990 s 224; Plant Breeder’s Rights Act 1994 s 77; Trade Marks Act 1995 ss 175, 178, 180, 180A, 224, 227. See eg Lyons v Registrar of Trade Marks (1983) 1 IPR 416; Kimberly-Clark Ltd v Commissioner of Patents (1988) 83 ALR 714; A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213. See generally Aronson & Groves 2013. See eg Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd (1995) 32 IPR 89. Designs Act 2003 ss 83(3), 83A(3); Patents Act 1990 s 154(3); Trade Marks Act 1995 ss 191(3), 191A(3). See Copyright Act 1968 ss 133A, 135ATA, 248R(1). Plant Breeder’s Rights Act 1994 s 56.

[page 71]

PART 2 Confidentiality

[page 73]

CHAPTER 3 The Concept of Rights in Information INTRODUCTION Information as an asset 3.1 No one would seriously doubt that information is a valuable commodity in today’s society. It has never been more true that ‘knowledge is wealth’, a preoccupation reflected by the proliferation of industries based entirely on information acquisition and dissemination. The pressure for legal recognition of the value in information and of the concept of private rights in information is ever-increasing. A threshold question, of course, is whether we can meaningfully speak at all of rights in something as ephemeral and subjective as ‘information’. Common sense, however, suggests a general acceptance in our society of the notion that information may be sufficiently discrete, identifiable and capable of objective valuation to ‘belong’ to someone. Common sense would also seem to indicate that a person should not be able to monopolise information which is in the public domain, or which other people create for themselves.1 This simplifies the matter considerably: any recognition of rights to or in information must necessarily mean allowing individuals or institutions to protect their secrets.

Categories of information 3.2 The extent to which information can vary in terms of form, content and significance makes any attempt at categorisation a difficult task. It is useful,

[page 74] nevertheless, to identify three broad categories into which ‘valuable’ information may be seen to fall: business information or ‘trade secrets’;2 personal information; and governmental information. The categories primarily depend on the different contexts in which information can be generated, but also on the different interests which secrecy is intended to promote. It is these interests which give information its ‘value’ to its possessor. Thus business information is valuable to the extent that it promotes commercial gain. Since the thrust of the concept of intellectual property is to recognise the right to profit from effort and ideas, it follows that it is the legal protection of information in this category which is principally of interest in a work of this nature. Nonetheless, attention will also be given, albeit more briefly, to personal and governmental information.

The case for legal protection of trade secrets 3.3 The mere fact that secrecy is a prerequisite of information having any value does not mean that the law is compelled to assist those who possess information to keep it secret. It can be argued, however, that without legal protection there would be insufficient incentive to invest in the development and exploitation of information that might secure long-term benefits to the community as well as short-term financial gain.3 This is essentially the ‘free-rider’ argument discussed in Chapter 1 — that protection is important for reasons both positive (encouragement and reward of creative effort) and negative (penalising those who ‘reap without sowing’). Not everyone is prepared to accept this kind of economic argument without question. A society obviously has an interest in ensuring that useful ideas and information circulate effectively, in part so that they may form the basis for further innovation. The patent system strikes this balance by limiting the period during which the patent holder may exercise exclusive rights, and by requiring disclosure of the invention so that other researchers may learn from it. Likewise, the copyright system precludes unauthorised reproduction of the particular expression of ideas and information,

but not (at least in theory) the taking or use of the ideas or information as such. Some have suggested that this kind of balance would be disturbed, and creativity stifled, if innovators were permitted to ‘lock up’ useful ideas merely by keeping them secret.4 [page 75] Nevertheless, a convincing case can be made for the creation of property rights over various kinds of ‘trade secrets’ which would not otherwise qualify for protection under the established regimes of patents and copyright. These include: ideas in their protean form — discoveries, plans or suggestions which are held in someone’s head but are not yet fully worked out, or which have been reduced to material form but may nonetheless be readily appropriated without breach of copyright; unpatentable or unpatented inventions — ideas for products or processes which have been fully developed, but which cannot be patented for lack of some characteristic such as novelty, or alternatively which the inventor chooses not to patent; technical know-how — practical expertise that does not consist of a secret formula or process or design as such, but simply accumulated knowledge (often gathered by trial and error) as to what works and what doesn’t; customer information — information as to the identity and special needs of an organisation’s clientele; and organisational information — managerial techniques, structures or strategies which are distinctive to a particular organisation and which contribute to its market position.5 There are, of course, practical steps which may be taken to guard against misappropriation of such valuable information. Leaving aside the simple (though generally self-defeating) expedient of divulging it to nobody at all, the ‘owner’ may seek to confine to an absolute

minimum the number of people who have access to the information. In order to safeguard the information from others, various precautions may be taken, ranging from the simple (locking up documents in a filing cabinet, password protection on a computer file) to the elaborate (electronic alarms, security guards, etc). But apart from the ever-present risk of breach of trust by those permitted access to the information, especially employees who move on to other firms, owners must today also cope with an increasingly sophisticated array of information-gathering techniques. Moreover, the cost of effective security measures may be so high as to outweigh any benefit to be derived from the information, or at least result in consumers paying higher prices for a product or service than would be generally desirable.6 [page 76]

Contractual protection and its limitations 3.4 For these (and other) reasons it is important that owners have access to legal mechanisms that permit them to protect their trade secrets.7 One obvious possibility, and one that is indeed routinely employed, is to secure contractual commitments of confidentiality from those given access to secret information: see also 4.4. So long as effective procedures exist for the enforcement of such contracts, the owner may take action to restrain or seek compensation for any use or disclosure that exceeds the limits permitted by the agreement. Confidentiality provisions are common in employment or services contracts, binding those performing work not to make unauthorised use of their employer or client’s information both during their period of engagement and after they have left to work elsewhere. The same is true of joint venture agreements, where in order to pursue a particular project the parties must feel able to share information without fear of later misuse. It is also a standard feature of agreements for the transfer of technology that the licensee, in return for access to the technology itself or any other secret information relating to its operation, covenants not to utilise the know-how

outside the specific context of the agreement. Contractual protection, however, has two crucial limitations. The first is that even where a promise not to use or disclose has been secured, the owner may find that the person against whom they wish to take legal action is not the person who gave the promise, but some third party into whose hands the information has now passed. For example, where an employee or ex-employee breaches an obligation of confidentiality and discloses a trade secret to a competitor of their employer (or former employer), it is that competitor and its capacity to use the trade secret to the employer’s disadvantage that will be the principal concern. But contract law generally does not permit a promise to be enforced against anyone other than the promisor. Hence, the third party cannot be held to be in breach of contract, no matter how much they may have contributed to the infringement of the owner’s rights and how much they stand to gain from that infringement. This limitation is particularly infuriating when the person who has promised to maintain confidentiality and the third party who is now in possession of the information are closely related: for example, where the third party is a company set up by the wrongdoer, or where the wrongdoer and the third party are companies which belong to the same group. A second and more fundamental limitation is that there are many situations where there is no contract to which the owner of a trade secret may turn. This may occur even where the misuse arises out of a voluntary communication. For instance, the owner may disclose information to another person in the context of discussing a possible venture. If the owner has not taken the precaution of negotiating a confidentiality agreement before any disclosure, something that is often overlooked in the enthusiasm for the project and because the parties are operating on mutual trust, the result will be that if the venture does not proceed the other party is free [page 77] of any contractual commitment in relation to the information. There

may also be situations where there is no voluntary communication at all. The trade secret may simply be ‘stolen’, whether by theft of documents, unauthorised access to computer files, or intensive surveillance. Where this kind of espionage is concerned, and no employee or joint venturer is implicated in the acquisition, the question of contract is simply irrelevant.

Recognition of rights in valuable information 3.5 The need to protect trade secrets by offering remedies for misuse, in situations which may or may not also involve breach of contract, has long been recognised in many industrialised countries. In the United States, for instance, misappropriation of a trade secret attracts such remedies under the common law of tort. Most of the individual states have enacted legislation based on the Uniform Trade Secrets Act proposed by the Uniform Law Institute in 1979 to codify and refine the common law, while the recently enacted Defend Trade Secrets Act 2016 (US) provides a federal cause of action. Germany and other European countries, and more recently Asian nations such as China and Japan, have offered similar protection as a specific application of more general laws directed against acts of ‘unfair competition’.8 The European Union has recently moved to strengthen and standardise protections by adopting a Directive on trade secret protection, with which its member nations will need to comply by May 2018.9 The Anglo-Australian common law, by contrast, has never explicitly recognised misappropriation of commercially valuable information as a wrong. Nevertheless, most if not all kinds of misappropriation have come to be identified as ‘breaches of confidence’ giving rise to remedies in equity. This has created a position where, in the words of Brennan J:10 Prima facie, it is the privilege of any person who possesses information to keep the information confidential. That person may wish not to disclose it at all or may wish to disseminate it or to authorize its dissemination only for a limited purpose or to a limited class of persons.

The TRIPS Agreement 3.6 The imperative to protect trade secrets finds expression in Art 39 of the TRIPS Agreement.11 This stipulates that ‘in the course of ensuring effective protection against unfair competition as provided in Art 10bis of the Paris Convention (1967), [page 78] Members shall protect undisclosed information’. Paragraph 2 of Art 39 spells out in more detail what is required: Natural and legal persons shall have the possibility of preventing information lawfully within their control from being disclosed to, acquired by, or used by others without their consent in a manner contrary to honest commercial practices so long as such information: (1) is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; (2) has commercial value because it is secret; and (3) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret. A footnote explains that for the purposes of this provision: … ‘a manner contrary to honest commercial practices’ shall mean at least practices such as breach of contract, breach of confidence and inducement to breach, and includes the acquisition of undisclosed information by third parties who knew, or were grossly negligent in failing to know, that such practices were involved in the acquisition. Paragraph 3 goes on to deal with the specific situation of undisclosed information submitted to government bodies to gain

approval for ‘the marketing of pharmaceutical or of agricultural chemical products which utilise new chemical entities’. This must be protected against ‘unfair commercial use’.12 As already mentioned, Australia does not have a general law which explicitly prohibits misappropriation of ‘undisclosed information’, though in fact there are numerous statutory provisions dealing with specific situations in which secrecy must be preserved.13 Nevertheless, it appears that the equitable doctrine of breach of confidence is broad enough to satisfy the requirements of Art 39, and indeed goes beyond the minimum conditions set out in para 2 in a number of respects.14 It is to that doctrine, therefore, that we now turn. [page 79]

NATURE OF THE ACTION FOR BREACH OF CONFIDENCE History 3.7 The origins of the action for breach of confidence lie somewhere in the more general principles developed by equity with respect to relationships of ‘trust and confidence’.15 That it took some time for a clear jurisdiction to emerge in regard to the keeping of secrets is more or less a matter of historical accident. Until the midnineteenth century, attention was primarily focused on the protection of the secrecy of unpublished literary works. It was unsurprising, therefore, that the jurisdiction should overlap with and to some extent be subsumed by prevailing notions of common law copyright: see 5.4. In a series of famous cases, however, most memorably involving the private etchings of Queen Victoria and her consort,16 the courts clearly identified the distinct notion of an obligation of confidence imposed on the conscience of one to whom a secret has been communicated. From this point on, breach of confidence actions became commonplace. The great majority of reported cases over the

next century involved employees who had been given access to their employers’ trade secrets,17 though litigation in regard to licensing arrangements or joint ventures was not unknown.18 These cases tended to involve contractual relationships and it was unclear whether or not the injunctions typically issued to restrain breaches of confidence were grounded merely in equity’s ‘auxiliary’ jurisdiction.19 It could be argued, in other words, that the obligations of confidence being enforced were contractual in nature, being implied into a preexisting agreement between the parties. The argument found some support in cases involving negotiations as to a venture which did not eventuate, the courts being prepared to imply an enforceable agreement to respect the confidentiality of information disclosed.20

Emergence of the modern doctrine 3.8 The breakthrough came in 1948 with the decision of the English Court of Appeal in Saltman Engineering Co Ltd v Campbell Engineering Co Ltd.21 While the leading judgment of Lord Greene MR contained little if anything that could not be located in previous authorities, it proved to be immensely influential. Rejecting the suggestion that liability for breach of confidence necessitated the finding of a contract between the parties, Lord Greene accepted this broad proposition formulated by counsel:22 If a defendant is proved to have used confidential information, directly or indirectly obtained from a plaintiff, without the consent, express or implied, of the plaintiff, he [sic] will be guilty of an infringement of the plaintiff’s rights. [page 80] The decision played a major role in galvanising English and then in turn Australian courts into regarding breach of confidence as a separate cause of action based on equitable rather than contractual principles.23 It thus effectively marks the start of the modern era in this field — an era which has seen breach of confidence become as

popular with litigants as it is with commentators.24

Range of information covered 3.9 One facet of the doctrine that calls for comment is the range of information that it covers. Most cases involve a business or individual seeking to protect trade secrets against the activities either of a former employee or of another enterprise with whom some form of information transaction has been negotiated. Among other things, obligations of confidentiality have been recognised or imposed in relation to: ideas which have not been developed or reduced to material form, such as a suggestion for a specific kind of television programme;25 an invention which, although not ‘novel’, has been kept relatively secret, such as a process for freeze drying mussels so as to produce a remedy for arthritis,26 or the source code of a computer program;27 other technical information, such as the details as to the design, construction and operation of a particular machine;28 and confidential customer requirements.29 The courts have also, however, been willing to recognise and enforce confidentiality in non-commercial situations, where the relevant information is of a personal nature,30 or is generated for government purposes: see 4.37–4.40. Indeed, it now seems clear that information in any context is capable of generating obligations of confidentiality, provided it satisfies the requirement of secrecy: see 4.6. It has occasionally been said that ‘trivial’ information may not be protected,31 which might be taken as suggesting a need to show that the information for which protection is [page 81] sought has some ‘value’. In most cases, however, trivial information

will probably turn out not to be secret at all; where it is, and protection is still refused, this may be better viewed as an exercise of the court’s discretion in framing a remedy.32 With the exception of certain differences as to the burden of proof in the enforcement of confidences relating to government information (see 4.39), the Australian courts have generally treated all information alike for the purposes of the doctrine. Thus, where American lawyers speak of the ‘law of trade secrets’, that becomes merely an undifferentiated part of our law of confidential information.33

Confidentiality and the patent system 3.10 In some instances, the doctrine of breach of confidence may be used as an alternative to the patent system. An inventor may choose not to patent an idea for any number of reasons: the time and expense of the application process; the need to disclose the idea as part of that process; the fact that exclusivity of exploitation will be lost on expiry of the term of the patent; or more simply a lack of willingness to do anything with the idea other than to deny it to others. If that choice is made, the inventor may wish to keep the idea secret and rely on the doctrine of breach of confidence for protection. This trait does give some cause for concern, in that the maintenance of secrecy that it promotes arguably disrupts the central aim of the patent system: to provide an incentive for the publication of useful ideas by offering a limited period of exclusive exploitation. To the extent that the availability of information rights can be shown to be causative of any neglect to use the patent system, the view may be advanced that no such rights should be recognised in patentable ideas.34 The arguments against such a view are strong, however.35 In the first place, the non-patenting strategy is a risky one, for a person who makes the same invention independently will not thereby infringe any information rights and may on the contrary be able and willing to secure a patent of their own. Second, the strategy will not be available at all where, as will commonly be the case, exploitation necessarily involves the relevant information being placed in the public domain (for example, through the marketing of a device that

can be ‘reverse engineered’ to discover its secrets). Third, the line between patentable and non-patentable ideas is not always easy to discern with any certainty. And finally, information protection reduces the cost of and pressure on the patent system by alleviating the need for inventors to seek patents for all but the ‘basic framework of the technology’.36 In practice the ‘know-how’ surrounding the realisation of an idea will be protected by information rights, with only the central invention being patented.37 [page 82]

Confidentiality and privacy 3.11 As noted above, Australian courts have been prepared to allow plaintiffs to invoke the doctrine of breach of confidence to protect personal as well as business information. But unlike their counterparts in some other common law countries, particularly the United States, they have been slower to recognise a wider right of ‘privacy’. For many years the judgments in Victoria Park Racing38 were seen as an obstacle to the development of such a right. However, the High Court’s decision in Australian Broadcasting Corp v Lenah Game Meats Pty Ltd39 reopened the debate. The plaintiff, which processed and sold possum meat for export, wished to prevent the ABC broadcasting a film of its slaughtering operations. The film had been taken by animal rights activists, using secret cameras allegedly installed after a break-in. As in Victoria Park Racing, the plaintiff’s claim ultimately failed because it could not establish a cause of action. The majority of the court (Gleeson CJ, Gaudron, Gummow and Hayne JJ) held that injunctive relief could not be granted merely on the basis that the ABC’s conduct was in some sense ‘unconscionable’.40 There was nothing demonstrably confidential about the activities that were filmed, thus ruling out an action for breach of confidence, and the ABC had not been party to the illegal filming. But each of the judgments left open the possibility that the time might be ripe to recognise a tort of invasion of privacy, at least for individuals.41 In subsequent cases, some lower court judges have

been prepared to take this step,42 although higher courts have been more reluctant.43 Nevertheless, there remains scope for further development in this area. There has in any event been a significant expansion in statutory regulation over recent years. For example, Victoria and the Australian Capital Territory have human rights charters that explicitly mention privacy as one of the rights to be respected by public authorities and to influence the interpretation of other legislation.44 More generally, there is the Privacy Act 1988 (Cth). Originally [page 83] applicable only to Commonwealth agencies, this now covers private sector organisations as well, though most small to medium enterprises are exempted.45 The Act sets out a series of principles with which organisations must comply when collecting, storing and using ‘personal information’ — that is, information or opinions about a named or identifiable person.46 Breach of these principles can lead to a complaint being lodged with the Australian Information Commissioner, who is empowered either to issue a restraining order or to award compensation to the complainant. Part VIII of the Act also makes certain modifications to the common law of breach of confidence, at least as it applies to personal information: see 4.2, 4.29. In 2008 the Privacy Act was reviewed by the Australian Law Reform Commission (ALRC). Some of the ALRC’s recommendations were implemented by the Privacy Amendment (Enhancing Privacy Protection) Act 2012 (Cth), the bulk of which took effect in March 2014. Among other things, a new set of Australian Privacy Principles was created, while the Commissioner was given new powers to seek civil penalties for serious or repeated breaches of privacy. But other ALRC proposals have not yet been acted upon. These include making the legislation national in operation, applying it to businesses of all size, and repealing Pt VIII and instead creating a new statutory cause of action for ‘serious invasion of privacy’. Pending any move to

implement this last recommendation,47 which was also the subject of a further report in 2014,48 the debate will no doubt continue as to whether personal privacy should be protected under the common law through the action for breach of confidence, or through the recognition of a new (and potentially broader) tort.49

The great debate about jurisdiction 3.12 Despite the fact that the doctrine of breach of confidence is now firmly embedded in our jurisprudence, a number of questions remain unanswered. There is particular uncertainty as to the precise extent to which persons other than a confidant may be liable and as to the nature and scope of remedies for breach of confidence. Many (though by no means all) of these difficulties can be traced to the [page 84] failure by the courts to identify a commonly accepted and consistent rationale for such liability.50 It has sometimes been suggested that the action for breach of confidence is tortious in nature,51 or that its basis lies (in certain instances at least) in the prevention of unjust enrichment.52 But it is most commonly said that the jurisdiction is based on a broad equitable principle of good faith.53 Australian courts have generally couched their decisions in these terms and there is no lack of dicta specifically assigning the basis of the action to such a principle.54 If any dissension has arisen, it has tended to be on the subsidiary question of whether this duty of good faith should be described as a fiduciary duty: see 4.32. Another possible explanation is that the courts are protecting a proprietary interest in the secrecy of information.55 There is nothing inherently improbable about regarding secret information as a form of property. The fact that information can be shared, that rights in it may disappear when it ceases to be secret, that any protection offered may lie in the discretion of a court, that rights may exist only in a

limited respect or against a limited range of persons — none of these objections is unique to information. So long then as the law is prepared to recognise that the mere possession of secret information generates certain rights, it is conceptually appropriate to speak of those rights as proprietary in nature.56 In fact, the orthodox approach taken by the High Court is that Australian law does not treat secret information as property.57 True, many courts have used the term ‘property’ when speaking of confidential information and have been prepared to refer to it as an asset.58 It is accepted that ‘it may be transferred by one person to another and the person to whom it is transferred has standing to take action to protect the [page 85] confidentiality of the information’.59 It may also be licensed,60 bequeathed61 or held on trust,62 or form part of a bankrupt’s estate.63 Nonetheless, the dominant view is that: … it is not information per se, nor any intrinsic qualities of confidential information, which the courts are protecting. Rather, it is the intangible notion of a confidence, which is formed by the communication of confidential information for a limited purpose, and which therefore exists in relation to information.64 This analysis receives support from a series of authorities to the effect that stealing information does not constitute a criminal offence within the ordinary statutory definition of theft. Even where what is capable of being stolen is defined specifically to include things tangible or intangible,65 these cases suggest that information is not to be treated as property for that purpose.66 Although misappropriation of information and other types of conduct in regard to databases (such as hacking) are seen as problems which call for a measure of criminal sanctions, this has been accommodated in Australia by the creation of offences specifically addressing various forms of

‘computer abuse’,67 rather than a more general offence of unauthorised use or disclosure of confidential information.68 There is, however, a problem with the idea that the law protects relationships, not any ‘property’ in information: it is simply not consistent with the modern action for breach of confidence.69 The trend to a proprietary basis for the action can be seen in at least three areas. First, there is the fact that the scope of liability for breach of confidence is determined as much by the nature and value of the relevant information [page 86] as by the defendant’s ‘wrongdoing’. This is particularly true where remedies are concerned. Second, it will be seen that the courts have imposed strict liability on those who are under an obligation of confidence: see 4.12. This notion, although in itself explicable within a framework for protection of relationships, is just as consistent and perhaps more compatible with a proprietary approach. Third, and most crucially, the orthodox approach cannot explain how liability is imposed upon those who deliberately or accidentally acquire information without any consensual communication from the plaintiff: see 4.11. It is true that this liability has been couched in terms of the defendant coming under an obligation of confidentiality. But there is a clear difference between the recognition of an obligation flowing out of a relationship of confidence between the parties and the imposition of such an obligation in order to ground a liability that the court thinks ought to exist.70 In this type of case the court is in effect creating a ‘quasi-confidence’, a duty based on a fictional relationship in much the same way as ‘quasi-contractual’ actions were once employed in the law of restitution.71 It might of course be argued that it does not matter in practice whether or not secret information is treated as property, that it is enough to describe breach of confidence as an action that is ‘sui generis in nature and … difficult to confine … exclusively within one conventional jurisdictional category’.72 The answer to that is twofold.

In the first place, a concentration on confidentiality (even in a remedial sense) rather than property can conceivably make a difference to liability.73 It certainly matters whether information is ‘property’ in the context of the law of stamp duties, to take one mundane but practically significant example.74 But more generally, there is the observation that the practice of clinging to an outmoded concept — and confidentiality, as the sole basis for information protection, increasingly appears to be just that — can only be harmful in the long run. If the courts are to fashion remedies to protect information against more than broken confidences and if they are to confront the important policy issues involved, an open acknowledgment of the true basis for those remedies seems indispensable.

1. 2.

3.

4. 5.

6.

7. 8.

Cf Branscomb 1994. The term ‘trade secrets’ is sometimes reserved for highly valuable information such as secret formulae (see Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37 at 46), a usage that can lead to confusion: see 4.35. It is preferable to treat it as covering any information of a business or commercial nature: see Lansing Linde Ltd v Kerr [1991] 1 WLR 251 at 260, 270; Searle Australia Pty Ltd v Public Interest Advocacy Centre (1992) 108 ALR 163. Cf the more extensive analysis in Del Casale v Artedomus (Aust) Pty Ltd (2007) 73 IPR 326 at [108]–[137]. See generally Bok 1982, ch 10; Glasbeek 1980, 228–44. For an economic analysis, see Friedman et al 1991; Aplin et al 2012, 77–83; and see also Maggbury Pty Ltd v Hafele Australia Pty Ltd (2001) 210 CLR 181 at 208 (economic analysis by Kirby J to justify enforceability of non-disclosure agreement). Cf Richardson 2004, canvassing a broader range of ‘confidentiality theories’. See eg Hammond 1981. As to the extent to which Australian businesses actually rely on secrecy or confidentiality obligations to protect innovation and creative work, as opposed to other intellectual property rights, see the estimates in Productivity Commission 2016, 89. See eg E I Du Pont de Nemours & Co Inc v Christopher (1970) 431 F 2d 1012, in which an American court imposed liability for misappropriation of trade secrets through aerial photography of the plaintiff’s part-constructed factory. The court reasoned that it would be unreasonable and economically wasteful for the plaintiff and others in a similar situation to be expected to guard against such surveillance by building a special roof. For a survey of other possible justifications for the legal protection of confidentiality, besides the economic arguments just canvassed, see Aplin et al 2012, 84–94. See eg van Caenegem 2014, 125–92, discussing the position in France and Germany.

9.

10. 11. 12. 13.

14. 15. 16. 17. 18. 19. 20. 21. 22. 23. 24. 25.

26.

As to developments in China, see eg Xiong 2016. Directive of the European Parliament and of the Council on the Protection of Undisclosed Know-How and Business Information (Trade Secrets) Against their Unlawful Acquisition, Use and Disclosure, EU 2016/943, 8 June 2016. See Patel et al 2016, comparing the requirements of the Directive with the new Defend Trade Secrets Act in the US. Johns v Australian Securities Commission (1993) 178 CLR 408 at 426. For commentary, see eg Malbon et al 2014, 571–95. See Owoeye 2015. Cf Smith Kline and French Laboratories (Aust) Ltd v Secretary, Department of Community Services and Health (1991) 20 IPR 643: see 4.12. See generally ALRC 2009, proposing significant reforms to these laws, but to date without any government response. See also ALRC 2015, 98–101, highlighting the adverse impact of some secrecy laws on freedom of speech. Leading examples are to be found in ss 70 and 79 of the Crimes Act 1914 (Cth), dealing with disclosure by Commonwealth officers and misuse of ‘official secrets’; and in ss 183–184 of the Corporations Act 2001 (Cth), which impose both civil and criminal liability for improper use of information acquired by an employee or officer of a corporation in the course of their duties: see 4.33. Note, however, that such provisions may in some instances infringe an implied constitutional right of political communication: see eg Bennett v President, Human Rights and Equal Opportunity Commission (2003) 134 FCR 334. But cf Hogan v Hinch (2011) 243 CLR 506 (statutory power for court to issue suppression orders regarding identity of sex offenders not invalid on this ground). See Stewart 1996. There is, however, some question as to whether the same can be said of para 3: ibid, 26–7; and see Voon 1998. See generally Aplin et al 2012, ch 2; Richardson et al 2012. Prince Albert v Strange (1849) 2 De G & Sm 652; 64 ER 293; 1 Mac & G 25; 41 ER 1171. See eg Robb v Green [1895] 2 QB 315; Ormonoid Roofing and Asphalts Ltd v Bitumenoids Ltd (1930) 31 SR (NSW) 347. See eg Mechanical and General Inventions Co Ltd v Austin [1935] AC 346. See generally Heydon et al 2015, 11–12. See eg Mechanical and General Inventions Co Ltd v Austin [1935] AC 346. (1948) 65 RPC 203. Ibid at 213. For acceptance of the principle by the High Court, see eg Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39; O’Brien v Komesaroff (1982) 150 CLR 310. Of the many commentaries on the Anglo-Australian law of breach of confidence, the most comprehensive are Aplin et al 2012, Toulson & Phipps 2012, Dal Pont 2014 and Dean 2002. See eg Talbot v General Television Corp Pty Ltd [1980] VR 224; and see also Darvall McCutcheon v H K Frost Holdings Pty Ltd (2002) 4 VR 570; Krueger Transport Equipment Pty Ltd v Glen Cameron Storage & Distribution Pty Ltd (2008) 78 IPR 262. Cf cases in which ideas were considered insufficiently novel to be protectable: see eg Mar-Con Corp Pty Ltd v Campbell Capital Ltd (1989) 16 IPR 153; Andrew Shelton & Co Pty Ltd v Alpha Healthcare Ltd (2002) 5 VR 577. See generally Cornish 1990b. Aquaculture Corp v New Zealand Green Mussel Co Ltd (1985) 5 IPR 353.

27. 28. 29. 30. 31. 32. 33. 34. 35. 36. 37. 38. 39. 40.

41. 42. 43.

44. 45.

46. 47. 48. 49. 50. 51.

See eg CA Inc v ISI Pty Ltd (2012) 95 IPR 424. See eg Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37. See eg Lifeplan Australia Friendly Society Ltd v Woff (2016) 259 IR 384. See eg Foster v Mountford (1976) 14 ALR 71 (Aboriginal tribal secrets); Giller v Procopets (2008) 79 IPR 489 (private sexual activities); and see also 3.11. See eg Coulthard v South Australia (1995) 63 SASR 531 at 547. See Stephens v Avery [1988] 2 WLR 1280 at 1285, where the same view was taken about information concerning ‘grossly immoral’ conduct. See Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37 at 46; Secton Pty Ltd v Delawood Pty Ltd (1991) 21 IPR 136 at 149–50. See eg Hammond 1981, 59–60; Hammond 1984, 260–3. See Kewanee Oil Co v Bicron Corp (1974) 416 US 470; Erkal 2004. Kitch 1977, 288. See Cornish et al 2013, 322. Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479: see 1.45. (2001) 208 CLR 199. Kirby and Callinan JJ dissented on this point, though the former joined with the majority in declining to grant an injunction on the basis that to restrain the national broadcaster would infringe the implied constitutional limitation on interference with freedom of political communication. Gaudron, Gummow and Hayne JJ ruled out extending any such protection to corporations, but the other judges did not find it necessary to express a concluded opinion on the point. Cf Doyle & Bagaric 2003; but see ALRC 2008, [7.51]–[7.60]. See eg Doe v Australian Broadcasting Corp [2007] VCC 281; Grosse v Purvis [2003] QDC 151. See eg Kalaba v Commonwealth [2004] FCAFC 326; Giller v Procopets (2008) 79 IPR 489 at [167]–[168], [447]–[452]; and see 4.30. Note also the differing views in Giller as to the availability of an action in tort for intentional infliction of mental distress: see also Barker et al 2012, 54–62. Charter of Human Rights and Responsibilities Act 2006 (Vic); Human Rights Act 2004 (ACT). For an unsuccessful attempt to invoke the Victorian Charter in this context, see Caripis v Victoria Health [2012] VCAT 1472. State government agencies are not subject to the 1988 Act, but are regulated instead either by separate legislation (see eg Privacy and Personal Information Protection Act 1998 (NSW); Information Privacy Act 2009 (Qld)) or by government directives that require them to comply with similar standards. Some states also have separate laws on healthrelated information: see eg Health Records Act 2001 (Vic). See generally ALRC 2008, [2.10]–[2.88]. See Privacy Commissioner v Telstra Corp Ltd (2017) 262 IR 230. See ALRC 2008, ch 74. ALRC 2014b. See also NSW Law Reform Commission 2009. See eg Taseff 2005; Johnston 2007; McDonald 2013; Butler 2016; Barker et al 2012, 397–416. This is not a new problem: see Morison v Moat (1851) 9 Hare 241 at 255; 68 ER 492 at 498. See eg North 1972; Edelman 2002. Cf ALRC 1983, vol 1, [931]–[936]; vol 2, [1310]–

52. 53. 54. 55. 56. 57.

58. 59.

60. 61. 62. 63. 64. 65. 66.

67. 68. 69. 70. 71. 72.

[1311], declining to recommend that the action be reformulated as a statutory tort. See eg Minister for Mineral Resources v Newcastle Newspapers Pty Ltd (1997) 40 IPR 403 at 406; and see Mitchell 1997, 143–6. See Jones 1970; Stuckey 1981. See eg Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 437–8. See Ricketson 1977; Neave & Weinberg 1978; Thomas 1998. Cf Birch 2007, proposing the recognition of two causes of action, one based on property in trade secrets and the other on the protection of confidentiality in relationships. See Weinrib 1988, 126–8; and see also Gray 1991. Federal Commissioner of Taxation v United Aircraft Corp (1943) 68 CLR 525 at 534; Breen v Williams (1996) 186 CLR 71 at 81, 90, 111, 128; Australian Broadcasting Corp v Lenah Game Meats Pty Ltd (2001) 208 CLR 199 at 271; Farah Constructions Pty Ltd v Say-Dee Pty Ltd (2007) 230 CLR 89 at [118]. See eg Federal Commissioner of Taxation v United Aircraft Corp (1943) 68 CLR 525 at 547–8. Elecon Australia Pty Ltd v PIV Drives GmbH (2010) 93 IPR 174 at [35]; and see also T S & B Retail Systems Pty Ltd v 3Fold Resources Pty Ltd (No 3) (2007) 72 IPR 492. In Farah Constructions Pty Ltd v Say-Dee Pty Ltd (2007) 230 CLR 89 at [118], the High Court seemed to suggest that while ‘trade secrets’ could be transferred, other information could not. The explanation presumably lies in the principle that not all equitable choses in action are assignable: see Heydon et al 2015, [42.120]; Mid-City Skin Cancer & Laser Centre v Zahedi-Anarak (2006) 67 NSWLR 569 at [196]–[238]. Note in any event that in the absence of agreement a person who owes a duty of confidence cannot assign that obligation to another person: Neobev Pty Ltd v Bacchus Distillery Pty Ltd (No 3) (2014) 104 IPR 249. Re Painaway Australia Pty Ltd (2011) 91 IPR 298. Canham v Jones (1813) 2 V & B 218; 35 ER 302. See eg Markwell Bros Pty Ltd v CPN Diesels Queensland Pty Ltd [1983] 2 Qd R 508. See eg Re Keene [1922] 2 Ch 475. Gurry 1985, 116 (original emphasis). See eg Crimes Act 1958 (Vic) ss 71–72. Oxford v Moss (1978) 68 Cr App R 183; R v Stewart (1988) 50 DLR (4th) 1; Grant v Procurator Fiscal [1988] RPC 41. Cf Carpenter v United States (1987) 108 S Ct 316. See Dean 2002, 555–72; Cross 1991; and see generally Steel 2008 as to the difficulties with the concept of stealing intangible property. See eg Criminal Code (Cth) Pt 10.7, as enacted by the Cybercrime Act 2001 (Cth); and see generally Clough 2010. Cf Crimes Act 1961 (NZ) s 230, which makes it an offence to take, obtain or copy trade secrets: see Kingsbury 2015. Cf Nahan 2015, who prefers to explain liability as resting in all cases on notice of confidentiality, rather than any property theory. Cf Australian Broadcasting Corp v Lenah Game Meats Pty Ltd (2001) 208 CLR 199 at 224: ‘equity may impose obligations of confidentiality even though there is no imparting of information in circumstances of trust and confidence’ (emphasis added). As to the ‘implied contract’ fiction, see Pavey & Matthews Pty Ltd v Paul (1987) 162 CLR 221; Mason et al 2016, 30–8. Aplin et al 2012, [4.09]; and see also Kearney 1985, ch 3.

73. 74.

See eg Wheatley v Bell [1982] 2 NSWLR 544: see 4.15. See eg Pancontinental Mining Ltd v Commissioner of Stamp Duties [1989] 1 Qd R 310 where it was held that confidential information as to mining prospects, sold as an ‘asset’ for nearly $4.5m, did not constitute ‘property’ for the purpose of calculating stamp duty. For a useful discussion of other issues and consequences that might flow from recognising information as personal property, see Palmer 1990, 83.

[page 87]

CHAPTER 4 Breach of Confidence PRELIMINARY ISSUES Identifying the plaintiff 4.1 To whom does information ‘belong’? The action for breach of confidence assumes that a person can be identified who has ‘disclosed’ information to another in confidence and to whom an obligation of confidentiality can be said to be owed. Now whether or not a proprietary theory of liability is accepted, it is still necessary for this purpose to determine to whom the relevant information ‘belongs’. The mere fact of possession does not suffice: it would be absurd to suppose, for instance, that those who acquire information improperly could bring an action against anyone to whom they themselves subsequently disclose that information. More fundamentally, information may be brought into existence in such a way that it is unclear who ‘owns’ it.1 The problem may often be resolved by contract. Thus, for instance, a term will usually be implied into every contract of employment that any information discovered or created by the worker in the course of their employment will ‘belong’ to the employer. Absent express agreement to the contrary, it will be the employer, therefore, who has the right to sue for breach of confidence — with the defendant often being the employee who created the information in the first place: see also 4.33–4.35. Where, however, joint effort has produced the information and no agreement can be discerned on the matter, the position appears to be that each of the parties concerned will be able to enforce confidentiality against others to whom they make disclosures, but not against each other.2

[page 88] 4.2 Standing to enforce confidentiality The identification of the person to whom a duty of confidence is owed does not necessarily resolve the question of standing, for the law might allow another to enforce that duty. In Fraser v Evans,3 however, the English Court of Appeal rejected that possibility. A consultant employed by the Greek Government was held to be unable to restrain the publication of a leaked copy of his report. The court found that any duty of confidence as to the contents of the report was owed to the government and that it alone was competent to sue for breach of that duty, whatever the detrimental effects of publication on the consultant.4 Although this principle has occasionally been overlooked,5 it seems to be generally accepted as correct. It illustrates one difference between the ‘property’ and ‘relationship’ theories of informational protection. Suppose that A and B jointly possess information which B in turn communicates to C in confidence. If C misuses the information, the Fraser principle suggests that A cannot sue, even though the information ‘belongs’ to A and even though A may suffer loss as a result of C’s activities. Under a property analysis, on the other hand, it might well be that A should have a remedy — on the basis that C has committed a wrong in regard to something in which A has a valuable interest, whether or not there is a relationship between them. Similar problems may arise where there is a ‘chain’ of confidences.6 On the other hand, it appears that, regardless of whether confidential information is to be regarded as property as such, it is possible to ‘assign’ such information and with it the right to take action in equity to protect it.7 There is one situation in which the Fraser principle does not apply. Section 93(3) of the Privacy Act 1988 (Cth) has the effect that where a Commonwealth or Australian Capital Territory agency comes under an obligation of confidence in respect of personal information relating to a person other than the confider, the subject of the information is as much entitled to enforce that obligation of confidence as the confider.

[page 89]

Relationship with contractual protection 4.3 Confidentiality in a contractual context It has already been noted that in many of the early breach of confidence cases a contractual relationship existed between the parties; indeed, that is still the case today. Where performance of the contract calls for or necessarily involves the disclosure by one party to the other of secret or sensitive information, the law will have no difficulty in implying a term requiring the confidant to respect the confidentiality of the information.8 Common examples involve disclosures by a client to a lawyer,9 by customer to banker,10 by patient to doctor,11 and by employer to employee: see 4.33–4.35.12 In some situations the contractual obligation may go beyond what the equitable doctrine would otherwise require. The most obvious instance is provided by employment cases, where the employee’s implied duty to serve the employer faithfully may impose a disability during (but not after) the term of the contract in relation to information which would not be sufficiently secret to be the subject of the equitable duty: see 4.34. The same may well be true in the other contexts referred to above, where professional ethics might demand silence even on matters which are in the public domain. In other contexts, it is perhaps less likely that so stringent a restriction would be placed on consultants and other contractors who have acquired information in the course of performing their services, and who have not given any express commitment as to their use of such information once the engagement is at an end.13 [page 90] Accepting then that the circumstances of a particular relationship may call for a more stringent duty than would be imposed by equity alone (and conceivably sometimes a lesser duty),14 does this mean that the equitable duty is entirely supplanted whenever a contract

exists between confider and confidant? This is a matter on which differing views have been expressed.15 In Optus Networks Pty Ltd v Telstra Corp Ltd16 a Full Court of the Federal Court took the view that equitable and contractual obligations may co-exist, so that a plaintiff who had established a breach of the confidentiality provisions in an agreement could elect to pursue an account of profits (see 4.28) — a form of equitable relief not typically available for breach of contract.17 But in Streetscape Projects (Australia) Pty Ltd v City of Sydney18 the New South Wales Court of Appeal preferred to see the equitable duty as a ‘residual’ obligation that would arise only where relief was required for some misuse of confidential obligation not otherwise attracting liability in tort or for breach of contract.19 Where the equitable doctrine undoubtedly plays an independent role, as in Streetscape itself, is in making redress available against a person, not privy to any contract with the confider, into whose hands information comes as a result of the original confidant’s breach of contract. Unless such a third party has committed the tort of contractual interference by procuring the breach, their liability can only arise in equity: see 4.16. 4.4 The role of express commitments Where confidential information is made available pursuant to a contractual arrangement, it is not uncommon for the confider to secure an express commitment that the information will not be utilised for a purpose other than that for which it has been communicated. Such clauses will almost inevitably be found, for instance, in service agreements involving managerial employees, consultancy agreements, agreements to license technology,20 and arrangements designed to facilitate information disclosure during joint venture [page 91] negotiations. The advantage that they are intended to offer is that of enhanced certainty as to the parties’ rights and obligations.21 One potential difficulty with an express promise not to use or disclose information, however, is that it may fall foul of the common

law doctrine of restraint of trade, which proscribes undue interference with freedom of trade.22 In Maggbury Pty Ltd v Hafele Australia Pty Ltd23 the defendants signed a non-disclosure agreement prior to discussions being held as to the possible exploitation of the plaintiffs’ idea for a new design of foldaway ironing board. They undertook that if the negotiations did not bear fruit they would not ‘at any time hereafter’ make use of the (then secret) information imparted to them about the plaintiffs’ idea and would ‘forever’ treat it as confidential. This ‘emphatic’ language was construed by the High Court to mean that the obligation of non-use was to persist even after the information was published as a result of a patent application by the plaintiff.24 The majority of the court (Gleeson CJ, Gummow and Hayne JJ) held that this restriction was subject to the restraint of trade doctrine. Since the plaintiffs had made no attempt at trial to establish the reasonableness of the restraint, this made it unenforceable, even though the defendants had breached the agreement by using the information to put their own rival product on the market.25 It might well have been possible for the plaintiffs to argue that the restriction could validly operate while the information was still confidential, and also for that period following publication in which by using the information the defendants would have been unfairly exploiting the ‘head start’ on others derived from having prior access on a confidential basis.26 But this was not the plaintiffs’ case, since they were seeking a permanent injunction to restrain any future use. The lesson from this decision is that courts will require clear justification for the imposition of restrictions on the use of nonconfidential information. If, though, the parties are in an ongoing relationship such as employment, and the restriction is to be imposed only while that relationship subsists, this should be more readily upheld: see also 4.34. Curiously, the relationship between express and implied duties of confidentiality is not totally clear. On ordinary contractual principles, it might be expected that the [page 92]

adoption of an express term would oust any implied obligation on the same matter, or would at least prevail to the extent of any conflict.27 Thus, where a clause stipulates a specific duration for an obligation of confidentiality, this should oust the general rule (see 4.7–4.8) that an obligation of confidentiality subsists only for as long as the relevant information remains secret, and indeed there is some authority to that effect.28 The balance of the authorities, however, adopt a different approach.29 Thus, it has been held that an obligation of secrecy may be enforced despite the presence of an express obligation which offers only limited protection,30 or which conversely is unenforceable as being in unreasonable restraint of trade.31 On the other hand, the fact that only one party to a contract may be under an express obligation of confidentiality in relation to a particular matter may be a reason for concluding that no similar obligation should be implied in relation to the other party.32

ESTABLISHING LIABILITY A general test 4.5

In Coco v A N Clark (Engineers) Ltd33 Megarry J stated that: In my judgment, three elements are normally required if, apart from contract, a case of breach of confidence is to succeed. First, the information itself, in the words of Lord Greene MR in the Saltman case, must ‘have the necessary quality of confidence about it’. Secondly, that information must have been imparted in circumstances importing an obligation of confidence. Thirdly, there must be an unauthorised use of that information to the detriment of the party communicating it.

Subsequent decisions have cast some doubt as to the completeness or correctness of the way in which the second and third elements are formulated.34 Nevertheless, this test has been widely cited and applied, not only in the business information context to which it was specifically addressed,35 but also in cases featuring governmental and

personal information.36 The following sections discuss the three elements [page 93] identified and then examine the most important issue that the statement does not address at all, that of the liability of third parties.

Secrecy 4.6 Degree of secrecy required To attract protection, information must ‘have the necessary quality of confidence about it, namely, it must not be something which is public property or public knowledge’.37 The test is essentially a negative one: so long as the information is not in the public domain, it may be the subject of an obligation of confidence. The problem, of course, is that secrecy is not an absolute concept. Clearly, information may be known to persons other than the confider and confidant without ceasing to be a secret: but at what point is information known to or accessible by enough people to be considered public knowledge? The question is further complicated by the fact that the ‘relevant public’38 for this purpose may themselves be a fairly small group. This is illustrated in Franchi v Franchi39 where Cross J had to decide whether publication of a secret process in a patent specification filed in Belgium had the effect of destroying secrecy in England. In holding that it did, the judge relied heavily on the fact that British patent agents typically inspected foreign specifications and would thus be expected to have learned the details of this process. The assumption here was evidently that merely making the information accessible destroyed secrecy, given the vigilance of the relevant public. The same reasoning can be seen to underlie the High Court’s decision in Johns v Australian Securities Commission.40 There the plaintiff, the former managing director of the Tricontinental group of companies, challenged the ASC’s decision to release transcripts of interviews with him to a Victorian Royal Commission inquiring into Tricontinental’s affairs. The challenge succeeded on the ground that

although the ASC had a statutory power to release the information, the decision to exercise that power was invalid since the plaintiff had not been afforded natural justice in the form of a fair hearing. This meant that the plaintiff’s confidentiality had been breached. However, the plaintiff’s attempt to prevent media outlets publishing material from the transcripts failed. A majority of the court (Brennan, Dawson and Toohey JJ, with Gaudron and McHugh JJ preferring to remit the matter for further investigation) held that since the material had been tendered in evidence before the Royal Commission during a public hearing, it must be regarded as being in the public domain and thus accessible to all. By the same token, any matter published in open court or appearing in the record of parliamentary debates ought, subject to a suppression order from the court or the parliament in question, to be treated [page 94] as being in the public domain.41 The same could obviously be said of information uploaded to a website and thus made available through the internet.42 Similarly, if a product is put on the market and it is possible to determine certain information as to its operation or manufacture through a process of ‘reverse engineering’ (that is, dismantling and/or technical analysis), the information can no longer be said to be secret, even though there may be few persons with the skills and resources to accomplish the feat.43 Conversely, actual publication to a much larger group may in some cases not have the effect of putting information into the public domain. Thus, in G v Day44 the confidentiality of the plaintiff’s identity was held not to have been lost by the broadcast of his name on two occasions on a Sydney television news service, since the references were ‘transitory and brief’ and would mean nothing to anyone who did not already know him. In Australian Football League v The Age Co Ltd45 the appearance on internet discussion sites of speculation as to the identity of certain footballers, who were

alleged to have tested positive to illicit drugs, was held not to have destroyed the confidentiality of the test results. Accordingly, the AFL was able to restrain media outlets from publishing those results. According to Kellam J: If speculation, gossip or even assertion from an anonymous source, thus being incapable of being verified or in any way held accountable, is to be regarded as the putting of information in the public domain, then the opportunity for the unethical, and the malicious, to breach confidentiality and then claim that there is no confidentiality is unrestrained.46 A particularly common problem arises in regard to circulation of allegedly confidential information within a business enterprise. Some degree of access on the part of employees and even customers is inevitable if the most efficient use is to be made of the information, but at some point that circulation will be so widespread that secrecy disappears. In a number of cases judges have drawn up lists of factors to be considered in this connection. Thus, in the Ansell Rubber case47 Gowans J drew on American trade secrets law for the following criteria: (1) [T]he extent to which the information is known outside of [the employer’s] business; (2) the extent to which it is known by employees and others involved in his [sic] business; (3) the extent of measures taken by him to guard the secrecy [page 95] of the information; (4) the value of the information to him and his competitors; (5) the amount of effort or money expended by him in developing the information; (6) the ease or difficulty with which the information could be properly acquired or duplicated by others. This does not mean, of course, that it is either possible or desirable to ‘slavishly check off the factors against the information, as if one were counting spots on some strange creature to see if it was

indeed the species of leopard illustrated in the picture book’.48 The test will always be whether, in the particular circumstances, ‘relative secrecy’ can be identified,49 a matter simply not susceptible to precise formulation. One point that is clear, however, is that a plaintiff must attempt to specify with some care what is confidential and what is not. A ‘global’ claim covering a wide range of information will be rejected, no matter how clear it is that some of the information is secret.50 4.7 Effect of loss of secrecy on obligations of confidence If secrecy is a prerequisite for the creation of an obligation of confidence, then it might be thought logical to adopt a corollary principle to the effect that the persistence of secrecy is necessary to the continuance of that obligation. In other words, once information moves into the public domain the confidant should be as free as anyone else to exploit it. Unfortunately, the actual position is rather less straightforward. In part at least, it depends on who is responsible for the publication. If the publication is made by or with the consent of the confider it seems clear that, subject to the operation of the ‘springboard doctrine’ discussed in 4.8, the confidant is ordinarily released from any obligation.51 It is not so easy to see what should happen, however, where the information is published by a third party,52 or indeed by the confidant’s own action. The key to resolving the problem is to draw a clear distinction between two separate issues. The first is whether the confidant has done anything prior to the information reaching the public domain which can be considered a breach of confidence. So long as the information has been published by someone else (whether the confider or a third party) and so long as the confidant has not previously been using the information in an unauthorised manner, then (again subject to the springboard doctrine) there is no sense in placing a continuing disability on the confidant in relation to information [page 96]

which everyone else is free to use.53 Where no prior breach has been established, therefore, the obligation of confidence should ordinarily be considered to lapse on publication.54 If, on the other hand, there has been a breach, whether in prior use or in the very act of publication, the effect of publication on the confidant’s liability raises a different issue. In this situation, which will inevitably arise where the confidant is the one responsible for the publication, the only question is as to the scope of the relief to be awarded to the confider for the breach that has already occurred. In a sense it is a matter of semantics whether or not the confidant is ‘released’ from the obligation. The real issues are remedial: whether injunctive relief against further use by the confidant of the information is warranted, notwithstanding the publication, in order to protect the confider’s interests; or whether, if damages or an account of profits are to be awarded, account should be taken of loss sustained or profits made after the date of publication.55 4.8 The springboard doctrine Much of the confusion that has surrounded the issue of the duration of obligations can be traced to misapprehensions as to what has come to be known as the ‘springboard doctrine’. Its origin lies in the judgment of Roxburgh J in Terrapin Ltd v Builders’ Supply Co (Hayes) Ltd:56 As I understand it, the essence of this branch of the law, whatever the origin of it may be, is that a person who has obtained information in confidence is not allowed to use it as a spring-board for activities detrimental to the person who made the confidential communication, and spring-board it remains even when all the features have been published or can be ascertained by actual inspection by any member of the public … It is, in my view, inherent in the principle upon which the Saltman case rests that the possessor of such information must be placed under a special disability in the field of competition in order to ensure that he [sic] does not get an unfair start. The ‘doctrine’ enunciated in this passage has two effects, one going to liability and the other to remedies. Its thrust as far as liability is concerned is that what appears to be a ‘publication’ of information should not and does not necessarily relieve the confidant of the

obligation not to use the information. This does not conflict with the proposition that confidentiality lapses when information moves into the public domain. It simply calls for a sophisticated analysis of the precise moment when that lapse occurs. In Terrapin the plaintiffs had marketed a type of prefabricated portable building, together with a brochure describing its features. From that moment it was possible to ‘reverse engineer’ the product and work out how it was constructed. Working solely from these marketed items, however, and without the aid of the [page 97] plaintiff’s unpublished plans, specifications and other technical information, it would take some time before the reverse engineering was complete — and even then there would have to be prototypes constructed, tests made, etc, before the information could be fully utilised. The defendants were accordingly held to be liable for using confidential information about the design, obtained from the plaintiff, to put their own similar product on the market after the plaintiff’s launch but before the relevant information had fully reached the public domain.57 On the other hand, the ‘springboard does not last for ever’.58 If a confidant is prepared to delay any exploitation of the relevant information until the point has been reached at which a person working without the benefit of the confidential communication would have been able to ascertain and utilise it, no liability will ensue.59 This emphasis on the limited duration of any handicap to be imposed on the confidential recipient of information which subsequently moves into the public domain is also at the heart of the second function of the springboard doctrine, which relates to remedies. Where confidence has been breached, but secrecy is subsequently lost, the reference in the Terrapin judgment to placing the transgressor under a ‘special disability’ to remove any ‘unfair start’ has been used to generate a principle that relief should be framed in such a way that the defendant is ‘deprived of the fruits of

[the] wrongdoing’ without imposing ‘an unfair disadvantage vis à vis the rest of mankind’.60

Receipt of information in confidence 4.9 Receipt pursuant to a relationship Expanding on the second of his three requirements for a successful breach of confidence action, Megarry J stated in Coco v A N Clark (Engineers) Ltd61 that: ... if the circumstances are such that any reasonable man [sic] standing in the shoes of the recipient of the information would have realised that upon reasonable grounds the information was being given to him in confidence, then this should suffice to impose upon him the equitable obligation of confidence. A person must, in other words, have some understanding at the time of receiving the relevant information that they are obtaining it for a limited purpose before they can be termed a confidant.62 This requirement can be satisfied in a number of ways. [page 98] The information may, for instance, be received pursuant to, or as a natural incident of, a pre-existing relationship between the parties. If the relationship is inherently ‘confidential’, whether in terms of personal intimacy or professional ethics, the requisite understanding may readily be inferred.63 More commercially oriented relationships may also generate such inferences, however, particularly where the parties are engaged in some form of joint venture.64 The same is true of employment relationships: see 4.33–4.35. The importance of the existence of a relationship in this context is that it may negate any need to examine the particular circumstances in which the information has been acquired so as to locate an overtly confidential communication. Thus it would be no obstacle to confidentiality arising that the recipient has not given any express commitment to that effect or had the opportunity to reject the information, for consent is effectively implied by the mere fact of entry into the

relationship. Nor would it matter that the information has not been explicitly communicated by the plaintiff: as where, for instance, an employee ‘creates’ information or receives it from an external source.65 What matters is that, as part of the relationship, the plaintiff has allowed the defendant access to the information. On the other hand, it must still be demonstrated that there was at least an implicit understanding that the information was not to be freely available to the confidant. Many of the factors which are relevant in determining whether relative secrecy exists will also be relevant in this context: see 4.6. 4.10 Other forms of voluntary communication Absent an inference of confidentiality from a relationship between the parties, attention will be focused on the particular circumstances in which the information is received. The most straightforward situation is provided by an intended communication by the confider. If the communication has been solicited by the recipient, and the information is obviously sensitive, once again it will be easy to infer confidentiality. For example, in Johns v Australian Securities Commission66 all but one judge in the High Court decided or assumed that when the plaintiff was compelled by the ASC to attend a private examination and discuss the business affairs of the Tricontinental group, the resulting transcripts were subject to an equitable duty of confidentiality enforceable against third parties (besides any statutory duty cast on the ASC itself). Only Toohey J thought that the plaintiff’s failure at the time of the examination to seek an explicit assurance of confidentiality precluded any duty arising. [page 99] By contrast, in Trevorrow v South Australia (No 4)67 it was held that no duty arose when the plaintiff’s solicitor successfully applied for access to archived government records that included confidential legal advice provided by the Crown Solicitor to the South Australian Department of Aboriginal Affairs. The material was released under

the ‘30 year rule’ and no restrictions were imposed on its use. Even though the officials concerned had apparently overlooked the significance of what they were providing, it was considered that a reasonable solicitor in this situation would have been entitled to conclude that the documents were not regarded as confidential.68 An unsolicited communication, assuming the absence of some preexisting relationship between the parties from which consent might be inferred, may pose greater difficulties. Much will turn on the extent to which the recipient has been afforded an opportunity to accept or reject the confidence. In Fractionated Cane Technology Ltd v RuizAvila69 the plaintiff claimed that trials conducted on the defendants’ machinery in the presence of the defendants and other witnesses had produced results that were confidential. Since the plaintiff had not sought a prior commitment of confidentiality and since the results had been totally unexpected, it was held that ‘objective circumstances attracting an equity of confidence’ had not been established. The defendants had not been given ‘the opportunity of rejecting the attempted disclosure or of refusing to conduct the trials’.70 A confidence cannot, in other words, be forced upon an unwilling recipient. That said, even an unsolicited communication may generate an obligation of confidentiality if further circumstances can be established from which consent can reasonably be inferred. Thus, if an inventor insists on explaining over the telephone the details of an idea to an officer of a major corporation without first securing a promise of secrecy, there is plainly no duty. If, on the other hand, those details are sent by mail, it may well be that at some point the corporation, through the decision of someone in its office to read through those details rather than return them instantly, may reasonably be supposed to have accepted an obligation of confidentiality. For this reason many businesses have a policy of refusing even to read unsolicited communications from inventors unless the discloser signs a form releasing the corporation from any duty of confidence. [page 100]

4.11 Improper acquisition The extent to which liability for breach of confidence may be imposed on a person in respect of information which they have acquired other than with the consent of the ‘owner’ is a matter of some debate.71 It has been said, for example, that information ‘blurted out in public’ cannot be protected,72 and indeed that ‘a person who utters confidential information must accept the risk of any unknown overhearing that is inherent in the circumstances of communication’.73 On the other hand, there is now ample authority to the effect that information obtained ‘improperly or surreptitiously’74 may be caught by the equitable doctrine. Thus, in Franklin v Giddins75 the defendants stole budwood cuttings from the plaintiffs’ orchard and thereby acquired information as to the genetic structure of the budwood, which enabled them to grow nectarines in competition with the plaintiffs. They were held to have infringed the plaintiffs’ rights, the judge refusing to accept that ‘a thief who steals a trade secret … is less unconscionable than a traitorous servant’.76 In Franklin the acquisition was plainly unlawful. But what of deliberate acquisition of secret information by lawful means? In Malone v Commissioner of Police of the Metropolis (No 2)77 it was held that police officers who (lawfully) tapped the plaintiff’s telephone came under no duty of confidence in respect of the information which they overheard. According to Megarry V-C, a person who uses a telephone takes ‘such risks of being overheard as are inherent in the system’, which were considered to include not just crossed lines but deliberate interceptions.78 However, the alternative ground offered in the judgment seems to provide a better basis for the decision: that the police were justified in their activities by their reasonable [page 101] apprehension of the plaintiff’s participation in criminal activities and hence could plead the public interest by way of defence: see 4.17–4.21. This was the approach adopted in Hellewell v Chief Constable of Derbyshire,79 where Laws J stated that use of

information derived from photographic surveillance of ‘private acts’ would, in the absence of any defence of justification, amount to a breach of confidence. This view was explicitly endorsed by Gleeson CJ in Australian Broadcasting Corp v Lenah Game Meats Pty Ltd.80 A number of decisions in the United Kingdom have confirmed liability for breach of confidence in such circumstances,81 although recent cases there are heavily influenced by the European Convention on Human Rights. In any event, the modern case law suggests a very broad view of the circumstances in which an obligation of confidence may be imposed, to the point indeed where a person may become a ‘confidant’ merely by taking a deliberate step to acquire information or to be in a position to do so. This could potentially apply to cases of ‘accidental’ acquisition, at least where there is a point at which the recipient of information has a realistic opportunity to accept or reject the confidence. For example, while someone who casually overhears a nearby conversation has no choice but to acquire the information, it is a different story where a person finds or is mistakenly sent material that is marked ‘confidential’ or otherwise appears to be of a sensitive nature. In such a case the decision to use or disclose the material rather than seek to return it arguably should expose the recipient to liability.82 There is certainly authority to the effect that where in the course of litigation confidential documents belonging to one party accidentally fall into the hands of the other party, the equitable doctrine may be invoked to restrain that party from using them.83 The High Court has ruled that a court may also use its ‘case management’ powers to correct such a mistake, rather than having to wait for one party to seek an injunction.84

Unauthorised use or disclosure 4.12 Scope of the duty Where a duty of confidence exists, it is breached by the unauthorised use or disclosure of some or all of the relevant information — though not, it would appear, by a mere refusal to allow the confider access to the information.85 In cases where the information has been appropriated without consent, any form of use or disclosure will by definition be unauthorised.

However, where the information has been communicated with the confider’s consent, it will [page 102] usually have been envisaged that the information might be put to some proper use or disclosed to an appropriate person (especially within an organisation of any size).86 Hence there may be some question as to what constitutes an impermissible use. It has been suggested that where information has been disclosed for a limited purpose, ‘the confidence crystallises around that limited purpose’, so that use or disclosure for any other purpose will amount to a breach of confidence.87 However, in Smith Kline and French Laboratories (Aust) Ltd v Secretary, Department of Community Services and Health88 the Full Court of the Federal Court, while accepting that this test will produce a proper result in many circumstances, indicated that other factors may need to be taken into account in determining the scope of confidentiality. In particular, ‘the test of confider’s purpose will not ordinarily be appropriate where each party’s interest is quite different, and known to be so’.89 The case concerned product information supplied by a pharmaceutical company to the department in support of its application for a patent extension. The court held, emphasising the department’s duty to ensure public safety, that it was entitled to use the information when considering applications by other companies for marketing approval in respect of similar products.90 It did not matter that this was not a purpose for which the information had been supplied. It was enough that the company might reasonably have expected that ‘the information would be kept against the day when it might be needed to serve the government’s legitimate interests’.91 In the end, the true test was whether the confidant had made ‘unconscientious use’ of the information,92 something not apparent in this case. This decision can be contrasted with Marcel v Commissioner of Police of the Metropolis,93 where police who had gathered material on the plaintiff for a criminal investigation were restrained from

handing it over to a third party for use in civil litigation with the plaintiff. This was held to go beyond the purposes for which the police had been given statutory power to seize and use the material.94 If a breach of confidence is established, it will be irrelevant that the confidant may not have intended to breach confidence. Thus liability attaches where the confidant [page 103] negligently allows others to learn of the information,95 or discloses it by error,96 or subconsciously plagiarises the confider’s secret idea.97 Likewise, ignorance of the existence or legal significance of a duty of confidence is no defence.98 4.13 A requirement of detriment? It is unclear whether it must be established that some detriment has been or will be caused to the plaintiff by the defendant’s conduct. In practice, however, even those courts which have asserted a need to prove detriment have stressed that the requirement may be established merely by the plaintiff’s desire to avoid criticism or embarrassment,99 or indeed the infliction of harm on another person.100 Many of these statements come very close in substance to the proposition that: … it is in the public interest that confidences should be respected, and the encouragement of such respect may in itself constitute a sufficient ground for recognising and enforcing the obligation of confidence even where the confider can point to no specific detriment to himself [sic].101 The question of detriment will in any event be an important factor in the court’s exercise of discretion with respect to remedies and can perhaps best be considered at that stage rather than in determining liability. That said, there is one context in which detriment of a substantial nature must always be established, that being where governmental information is at issue: see 4.39.

Liability of third parties

4.14 The reach of the equitable doctrine More often than not the threat of misuse of confidential information does not come solely or primarily from the person who originally acquired it from the plaintiff/confider, but from a third party into whose hands the information has come following the breach of confidence. If confidentiality is to be protected to any meaningful extent it is logical and desirable that, in some cases at least, liability be extended to cover such third parties. Equity has readily done this. Most of the cases involve persons or companies who are intimately involved with the confidant in the exploitation of the information,102 or who are the intended instrument of disclosure to the public.103 In such instances of direct participation, [page 104] liability may rest on the Barnes v Addy104 principle, which holds third parties responsible for knowing assistance in another’s equitable wrongdoing.105 But the courts have gone much further, adopting the general principle that any person who receives information106 as a result of another’s breach of confidence may be liable for using or disclosing it, or restrained from doing so, once they have actual or constructive notice of the breach.107 Little attempt has been made to analyse the consequences of this view. For example, it is unclear whether the third party’s liability is merely an extension of the original confidant’s, or arises independently on the basis that the third party’s receipt of the information itself satisfies the requirements of the doctrine. While there are dicta which might be taken to suggest the latter approach,108 the better view seems to be that the third party’s liability is effectively parasitic on that of the original confidant.109 It has often been stressed by the courts that a third party, no matter how innocent the circumstances of their acquisition of the information, comes under a duty of confidence as soon as they are given notice of the confidentiality of the information,110 even if that occurs as late as the commencement of proceedings by the

confider.111 The rationale for this position, though it has not been articulated, is presumably that the interest in protecting the confider against the consequences of [page 105] a proven breach overrides the principle that confidentiality ought not to be imposed on a person who may not have understood at the time of receiving information that it was not their own to do with as they liked. 4.15 Mitigating third party liability Some courts have been aware of the unfairness or injustice that may be caused to third parties and have sought ways to mitigate their liability. The most far-reaching suggestion has been that the acquisition of information for value without notice of any breach may provide a defence to liability.112 In Wheatley v Bell113 Helsham CJ in Eq rejected this idea on the ground that no property rights are at stake where breach of confidence is concerned. A better explanation, it is suggested, is that the mere fact that money has been paid to obtain the information does not necessarily make it unfair to impose liability. A third party really seems to have two legitimate arguments. One is that there be no liability to pay compensation or to account for profits in respect of use of the information prior to having notice of the breach: this indeed appears to be the position. The other is that no liability be imposed where the third party has significantly altered their position to their detriment prior to receiving notice, for example, by incurring significant expenditure (which may or may not have included a purchase fee) towards exploitation of the information. While on one view ‘change of circumstances’ should be regarded as a defence in its own right,114 it is probably more accurate to say that a court may choose to take it into account in framing appropriate remedies for the confider and in particular in determining whether or not to grant injunctive relief.115 This indeed ought to be the key to dealing with third parties: that a range of factors, of which innocence and change of position are merely the most compelling, may lead a court to treat

such defendants somewhat more leniently than they would the original confidant.116 4.16 Liability in tort or under statute Apart from the equitable doctrine itself, the confider may also be able to rely on the economic torts to establish third party liability. If the third party has set out to procure or incite the original breach of confidence, the confider may have remedies in the tort of contractual interference;117 or possibly, where there is no contract between the confider and confidant, in the embryo tort of ‘interference with rights’: see 2.7. In either case, the problem for the confider lies in establishing that the third party did not merely suspect that the confidant would be breaching confidence but knew and intended that it should [page 106] happen.118 Another possibility is to allege that the confidant and one or more third parties have wrongfully combined to inflict economic loss on the confider, though as noted in Chapter 2 the tort of conspiracy is notoriously difficult to establish: see 2.7.119 Given the reach of the equitable doctrine, there is little to be gained from pleading these torts. Where a breach of confidence contravenes a statutory duty, it may also be possible to hold a third party liable under a provision such as s 79 of the Corporations Act 2001 (Cth), which creates accessorial liability for knowing involvement in such a contravention.120

DEFENCES Justified disclosure 4.17 The basic principle Liability for breach of confidence may be avoided where it can be established that the defendant has ‘just cause or excuse’121 for disclosing the information in question. Where the plaintiff’s claim is founded on a contractual obligation of secrecy, this may be regarded as an instance of public policy rendering an

agreement unenforceable.122 In other cases, the principle effectively operates as a defence, extending indeed to situations where the defendant is sued, not for breach of confidence, but for breach of copyright (see 8.56), or (necessarily as a third party) for the tort of contractual interference.123 Disagreement persists, however, as to the range of circumstances in which justification may be pleaded, or indeed as to the underlying rationale for such a concept. Two distinct approaches have emerged which, while substantially overlapping, will occasionally dictate different results.124 4.18 The iniquity rule The first approach derives from the assertion of Wood V-C in Gartside v Outram that ‘there is no confidence as to the disclosure of iniquity’.125 Although he went on to say that ‘[y]ou cannot make me the confidant of a crime or a fraud’,126 it now appears that ‘iniquity’ should be taken to include ‘any misconduct [page 107] of such a nature that it ought in the public interest to be disclosed’.127 The public interest requirement has an important confining effect, permitting the courts to reject the principle’s application to ‘trivial’ wrongs,128 or to past misconduct whose repeat is not threatened and which lacks present relevance.129 On the other hand, its very terms focus attention on situations where information arguably ought to be disclosed, yet which do not appear to involve ‘misconduct’ in any strict sense. In Commonwealth v John Fairfax & Sons Ltd,130 Mason J considered that the principle ‘makes legitimate the publication of confidential information or material in which copyright subsists so as to protect the community from destruction, damage or harm’. As the High Court noted in Minister for Immigration and Citizenship v Kumar,131 it would be ‘unsatisfactory’ for a court faced with such information to restrain its dissemination, merely because it could not identify misconduct on anyone’s part.

4.19 Balancing public interests The obvious and logical extension of the iniquity rule to matters of public danger has led some courts to adopt the broader proposition that disclosure should not be enjoined whenever the public interest in publication outweighs the public interest in confidentiality. For example, in Lion Laboratories Ltd v Evans132 a firm failed to have two former employees restrained from disclosing to the press information concerning the Intoximeter, a device manufactured by the firm and used by the British police for breathtesting drivers. The information was to the effect that government tests had revealed the device to be unreliable. In light of the possible danger of motorists being wrongly convicted and of the public controversy over the device aroused by previous media reports, the Court of Appeal considered that the public interest lay in these matters being openly debated. Although this approach has been rejected by some Australian judges in favour of the iniquity rule,133 it is really only taking the present conception of ‘iniquity’ (that is, misconduct and/or public danger) to its logical conclusion. Moreover, [page 108] the notion of balancing interests for and against publication is already well established in two closely related contexts: those of actions to protect government information (see 4.39–4.40), and of applications for the discovery of confidential documents for the purpose of litigation: see 4.22. Three points should be noted, however. The first is that a distinction should clearly be drawn between matters that ought to be disclosed in the public interest, and those which are merely of public interest in the sense that many people would like to know them.134 If the latter are to be excluded, then it is difficult to support some English decisions which suggest that secrets relating to the personal affairs of celebrities ought to be disclosed merely in order to ‘set the record straight’ and to counter impressions created by their publicity machines.135 Second, it appears that the public interest approach

could not be taken so far as to compel the publication of information relating to something of benefit to the public,136 though it is difficult to see why this should be so. Third, it may be argued that one prerequisite for any approach based on balancing public interests would be a rather more sophisticated analysis of why nongovernmental confidences are enforced than has hitherto been the case. For instance, the courts’ apparent assumption that society is better off if business secrets are kept takes little account of the arguments against this proposition that were discussed in the previous chapter. The need to weigh the importance of secrecy against that of the free flow of information may well serve to drive some of these arguments out into the open.137 4.20 Other issues Whatever the precise formulation for the defence of justified disclosure, the scope of the relevant disclosure will always be important. As a general rule, disclosure must be to the ‘proper authorities’.138 Who these are will depend on the nature and significance of the information. Prima facie, wrongdoing or matters of public danger should be disclosed to the appropriate official or semiofficial bodies: the police in the case of criminal conduct,139 public health authorities in instances of medical danger,140 and so on. Occasionally, a court may decide that wider disclosure to the general public is appropriate. In Lion Laboratories,141 for instance, the Court of Appeal considered that, given on the one hand the government’s unbending public support for the Intoximeter, and on the other the [page 109] mounting disquiet about its reliability, it was acceptable for the confidants’ fears to be aired through the media. In other cases, however, the courts have been less willing to sanction public revelation of confidential material, often chiding the media for falling into the ‘error of confusing the public interest with their own interest’.142 The requirement that any disclosure be no more extensive than the public interest dictates helps to provide an answer to two further

questions. The first is whether the defendant must adduce evidence as to the accuracy of information whose truth is contested. It has been said that ‘a mere allegation of iniquity is not of itself sufficient to justify disclosure’,143 and that the confidant must make out a ‘prima facie case that the allegations have substance’.144 Where the disclosure is to an authority whose function is to investigate such allegations, however, it would seem that this principle does not and should not apply,145 though by the same token there must be at least reasonable grounds for suspecting wrongdoing.146 The point is more obvious still in a situation where an investigating authority itself, harbouring a reasonable suspicion as to the existence or threat of wrongdoing or danger, breaches confidentiality in order to further its inquiries.147 The second issue is whether the motive of the confidant in seeking disclosure is relevant. Again, although it may be that the defence would be refused to one who sought to publish information ‘out of malice or spite’ or to ‘purvey scandalous information for reward’,148 the worst of motives will be overlooked if disclosure is solely to the proper authorities.149 4.21 Effect of establishing justification Although justification is usually thought of as a ‘defence’ to an action for breach of confidence, its precise effect is not fully settled. On one view, taking a literal interpretation of the statement that ‘there is no confidence as to the disclosure of iniquity’,150 no duty of confidence at all arises in relation to information which relates to misconduct. But that was not the approach taken by a majority of the Full Court of the Federal Court in Corrs Pavey Whiting & Byrne v Collector of Customs (Vic).151 The case arose in the context of a freedom of information (FOI) claim, which was resisted on the ground that disclosure would have constituted a ‘breach of confidence’. The FOI statutes and the questions they raise are considered at 4.38. For now it suffices to note that Jenkinson J, with whom [page 110] Sweeney J concurred, held that the breach of confidence exemption

(as it was then worded) extended to any document: … which contains confidential information received under circumstances importing an obligation of confidence, without regard to those considerations of public policy to which courts have allowed an influence in determining whether to grant or withhold remedies for ‘breach of confidence’ in exercise of equitable or common law jurisdiction.152 This suggests that justification should be treated as a matter going solely to the discretionary award of remedies. On that basis, it is conceivable that pecuniary relief might still be awarded to a confider who failed to obtain an injunction to restrain disclosure, if it could be shown that the public interest would not thereby be prejudiced. Presumably, though, this would be a rare situation.

Disclosure under legal compulsion 4.22 Statutory and court-ordered disclosure In certain circumstances a person may be obliged to disclose confidential information by a duty which overrides that imposed by contract or equity.153 Where this is so the confidant may plead the compulsion as a defence to any action brought by the confider.154 Disclosure may be required by statute, as for example where a medical practitioner is obliged to notify authorities that a patient has tested positive for HIV/AIDS,155 or a lawyer must cooperate with an investigator appointed by a professional body or complaints authority by providing access to confidential files,156 or a bank must hand over to the Commissioner of Taxation confidential documents relating to income earned by its customers.157 In such cases the person or body to whom disclosure is required will themselves come under an obligation to respect the confidentiality of the information.158 [page 111] Disclosure may also be ordered by a court for the purposes of litigation.159 It is established that the confidentiality of documentary

information is not of itself a bar to discovery being ordered. Nevertheless, in weighing up whether the public interest in the effective and fair conduct of proceedings demands that information be available to the parties, the court may treat it as a material consideration.160 In some instances the preservation of confidentiality will have a particular significance that outweighs the immediate demands of the case before the court. Thus in D v National Society for the Prevention of Cruelty to Children,161 discovery was sought from the Society of documents relating to what was alleged to be an ill-founded complaint against the plaintiff, who was now suing the Society for negligence in its handling of the matter. The order was refused, since disclosure of the complainant’s identity would have threatened the Society’s ability to use guarantees of anonymity as a means of securing information on the sensitive subject of child abuse. By contrast, journalists, who lack official or semi-official status, have had a much harder time in protecting the confidentiality of their sources from discovery orders. As a matter of common law, there is a rule of practice (the ‘newspaper rule’) that a court will not ordinarily require journalists to disclose their sources in defamation or related proceedings, but that will not apply where disclosure is considered necessary in the interests of justice.162 The federal Evidence Act and its counterpart in most states and territories also now recognise a privilege that journalists can invoke to resist disclosure, though it remains a matter for the court to weigh in each case the harm of disclosure against the desirability of evidence being given.163 Although some of these provisions have been strengthened to create a presumption of non-disclosure,164 they still fall well short of creating the kind of ‘shield law’ that some have sought.165 As with information compulsorily disclosed under statutory authority, it is a condition of an order for discovery that the party given access to the information [page 112] must not use it for purposes other than the immediate litigation.166

However, where it would be unrealistic to expect such restraint (as, for example, where a firm is seeking access to commercially sensitive information belonging to a competitor and can hardly be expected to ‘forget’ about it following the litigation), that in itself may be a reason for refusing discovery.167

REMEDIES Interlocutory relief 4.23 Relevant factors Pending the trial of a breach of confidence action the plaintiff may be able to seek one or more of the various forms of interlocutory relief described in Chapter 2.168 Without repeating the general points already made, it should be noted that actions which are primarily designed to preserve confidentiality may carry a particularly strong claim to be supported by the award of an interlocutory injunction.169 If the whole point of the plaintiff’s claim is to prevent publication, as opposed to precluding or halting a use which does not or will not necessarily have the effect of destroying secrecy, and if the plaintiff can show that pecuniary relief is not likely to be an adequate alternative given the interest sought to be protected, refusal of an interim restraint may run the risk of effectively destroying the plaintiff’s rights and making a trial pointless.170 As against that, particular factors which may bring the balance of convenience down against the plaintiff include: the fact that damages would be an adequate remedy;171 the damage that might be suffered by a defendant who has already geared up to exploit the information,172 especially where the plaintiff is not trading in the same market;173 the weakness of the plaintiff’s case,174 [page 113] or the strength of any defence likely to be pleaded;175 and the fact that the plaintiff’s claim is interwoven with a defamation action to which the defendant intends to plead justification.176 The court’s

perceptions of the balance of convenience may also be affected by its expectations as to how quickly the matter is likely to come on for a full trial.177 In some instances, indeed, an interlocutory injunction may deliberately be given a limited duration in order to prompt a speedy trial.178

Final injunctions 4.24 Injunction or damages? In so far as the essence of a duty of confidentiality is not to make unconscientious use of the information, it follows that an injunction restraining such use is the primary remedy for breach of confidence.179 Assuming that an actual or threatened breach of confidence has been established and that the plaintiff is not merely interested in pecuniary relief, the issue will therefore be whether any circumstances exist which militate against granting what would seem to be the obvious remedy. The most sweeping argument is that in certain cases an injunction would be inherently unfair, given the nature of the duty cast on the defendant. The case usually cited in this regard is Seager v Copydex Ltd,180 where the defendants were held to have subconsciously plagiarised an idea communicated to them by the plaintiff inventor in the course of unsuccessful negotiations regarding a previous invention. The Court of Appeal preferred to award damages, though making no explanation as to why an injunction was not considered appropriate. Although innocence per se does not seem to be an automatic bar to the grant of an injunction,181 Megarry J in Coco v A N Clark (Engineers) Ltd182 also alluded to the plight of the ‘law abiding and conscientious citizen’ who has acquired confidential information but then improved on it by using other information which is either in the public domain or their own. The springboard doctrine demands that such a person not be in a better position than if they had only used the non-confidential information: they must not, in other words, gain a head start by breaching confidence: see 4.8. But how, Megarry J inquired, was this duty to be fulfilled in practice? The recipient might attempt to guess how long it would have taken to reach the same point without the confidential information, an artificial and uncertain inquiry that would be particularly difficult if the information had

turned out to be the vital component in making the project successful. Or the ‘honourable [page 114] course’ might be taken of standing out of the field altogether until someone else had put the information in the public domain: but this would mean accepting ‘a unique disability. He alone of all men [sic] must for an uncertain time abjure this field of endeavour, however great his interest’.183 The solution, Megarry J thought, in line with the Seager case, might be to allow the recipient to ignore the duty, use the information and then pay a reasonable sum for it by way of damages: no injunction would be imposed. This would effectively recognise that in this sort of case the essence of the duty of confidence is ‘that of not using without paying, rather than of not using at all’. In a personal information case, the duty might of course ‘exist in the more stringent form’, presumably because the confider’s interest in secrecy is not adequately protected by the payment of a sum of money.184 There is a great deal of force in these comments, though it is doubtful that they can or should be used to support a generalisation that courts should be willing to compel the licensing of trade secrets by awarding damages rather than injunctive relief.185 4.25 Effect of publication One powerful argument that may be used against the grant of an injunction is that the point has been reached at which the relevant information, even allowing for the expiry of any head start calculated under the springboard doctrine, has moved into the public domain. In most cases of this type any existing restraints will be discharged and no further injunction issued.186 Similarly, if the court believes that the defendant’s head start has not yet expired, but is likely to do so in the near future, it may grant an injunction which is limited to the intervening period.187 There may, however, be cases where an injunction remains appropriate despite publication. Thus, in Speed Seal Products Ltd v Paddington188 Fox LJ thought it arguable that the plaintiff might at the full trial of the action receive injunctive relief:

The purpose of an injunction is protection. Whether a plaintiff, in circumstances such as the present, needs protection might depend on the state of the market. If, for example, the only traders seriously competing in the market are the plaintiff and the defendant … it may be a matter of continuing importance to the plaintiff that the defendant not get the benefit of the wrongdoing. If, on the other hand, the publication has produced a market with a large number of traders, the elimination of one trader (the defendant) might not be of consequence. [page 115] The explanation for the grant of an injunction in the first instance posited by Fox LJ is simple. Although the information is theoretically in the public domain, in actuality the only person using the information to compete with the plaintiff is the defendant, who is thus still enjoying the head start provided by the original breach. Publication will not deter the grant of an injunction if the court considers that the plaintiff still merits protection against loss caused by the defendant’s activities.189 Suppose, however, that publication has damaged the plaintiff’s interests in such a way that no further loss remains to be suffered. Apart from receiving compensation in respect of the detriment inflicted by the breach, can the plaintiff obtain an injunction to restrain the defendant’s continuing profitable use of the information, even though the profits are not strictly speaking being made at the plaintiff’s expense? So long as the underlying thrust of the doctrine of breach of confidence is to protect the confider’s interests rather than punish confidants, the answer must be that injunctive relief should be refused.190 4.26 Other reasons for refusing relief It has already been noted that the triviality of the information which the plaintiff is seeking to protect may be a ground for refusing injunctive relief, as may the fact that the information relates to immoral conduct: see 3.9. A number of other factors may also be relevant in this regard. Of particular significance is the contention that the plaintiff has come to equity

with ‘unclean hands’. Although there may be a considerable overlap with the defence of justification, slightly different issues are raised. Rather than focusing on whether the public interest demands circulation of the information in question, the unclean hands objection brings into question the propriety of the plaintiff’s personal behaviour.191 Thus, the plaintiff may be denied redress, for instance, for using ‘deplorable means’ to protect the information,192 or (possibly) for refusing to respect the defendant’s confidentiality in return.193 It is not enough, however, to establish that the plaintiff has behaved improperly: there must be some relationship between the impropriety [page 116] and the relief being sought.194 Relief may also be denied, on ordinary equitable principles, where the plaintiff is guilty of delay or laches in seeking redress.195 4.27 Ancillary relief Where an injunction is granted to restrain a breach of confidence, it is common for the court to make ancillary orders in order to ensure the efficacy of the injunction. If the defendant has appropriated or come into possession of a physical item, such as a document, which belongs to the plaintiff and which embodies the relevant information, the defendant will usually be ordered to deliver it up to the plaintiff.196 Similarly, copies made by the defendant of such an item may be ordered to be delivered up to the court or to the plaintiff for destruction.197 In some instances the court may go so far as to decree the destruction of property, such as machinery or manufactured goods, which has been independently created by the defendant in order to exploit the information,198 though the wastefulness of such an exercise may well militate against such an order being granted.

Pecuniary remedies 4.28

Account of profits In seeking pecuniary relief in relation to a

breach of confidence, the plaintiff may elect either to strip the defendant of any profits made as a result of the breach, or to seek compensation for any loss suffered thereby;199 although even if the plaintiff opts for an account, it remains for the court to determine whether such relief is appropriate.200 In practice, plaintiffs do not always pursue this remedy, because of the difficulties referred to in Chapter 2.201 An account works best where it can be established that the defendant would not have been able to engage in the relevant commercial activity at all, were it not for the breach of confidence: in such a case, the plaintiff is entitled to claim all the profits flowing from that activity.202 It is a different matter where an account would require the profits made from the breach to be segregated from those which would in any event have been made as a result of the defendant’s legitimate activities.203 For example, it would seem that no account should be taken of profits made after any head start under the [page 117] springboard doctrine (see 4.7–4.9, 4.25) has expired.204 It has indeed been suggested that unless an account would be ‘practical or simple’, the court should exercise its discretion against making the necessary order, even if sought by the plaintiff.205 Other reasons for refusing an account include delay on the part of the plaintiff,206 and, it would seem, the innocence of the defendant’s conduct: see 2.16.207 On the other hand, these factors, especially the practical difficulties of isolating the relevant profits, are likely to weigh less heavily where the defendant has been knowingly involved in the exploitation of confidential information.208 The same will be true where an account would be the only form of pecuniary relief available. This will tend to occur particularly in non-commercial cases, where it may be very difficult, as noted below, for a plaintiff to establish that compensable loss has occurred. The desire to ensure that defendants do not benefit from their wrongdoing may well lead courts to order accounts in situations where, were damages a realistic option, they would not

otherwise do so.209 4.29 Damages: availability Where an account of profits is deemed to be impracticable or inappropriate, whether by the court or by the plaintiff, damages may be sought instead to compensate for any loss suffered by reason of the defendant’s breach. Indeed, damages may now be described as the main pecuniary remedy for breach of confidence, at least in commercial cases.210 Where the defendant is a confidant who has breached a contractual obligation of confidence, such damages are available as of right for breach of contract.211 Similarly, where the defendant has induced a breach of confidence, damages may be claimed in tort.212 In theory, there should be a problem where the cause of action rests entirely in equity. However, the courts have effectively ignored any complications and awarded damages anyway, for the most part making no attempt to explain the precise basis for the remedy. [page 118] When the issue has been considered, the most common reference has been to the statutory power in each jurisdiction to award damages in addition to or in lieu of an injunction,213 it being held that breach of confidence constitutes a ‘wrong’ for the purpose of these provisions.214 An alternative explanation, advanced by diehard opponents to the ‘fusion fallacy’, is that equitable ‘compensation’ (but not damages, which is a common law remedy) may be awarded so as to compel the wrongdoer to restore the status quo.215 In Giller v Procopets216 the Victorian Court of Appeal took the view that damages could be awarded on either of these bases. Whatever their juristic basis, the damages (or compensation) awarded for breach of confidence in equity seem to differ from damages for breach of contract in two important respects. In the first place, compensation may be awarded not only for loss suffered prior to the date of the trial, but also in some instances for prospective losses (thus obviating the need for any injunction).217 Second, each of the theories advanced above would suggest that the award must lie in

the court’s discretion. 4.30 Damages: assessment The controversy as to the proper explanation for the availability of non-contractual damages has not prevented the courts from developing principles as to their assessment.218 It is now settled that the function of an award is to restore the plaintiff, as far as possible, to the position that would have obtained had the breach of confidence not occurred; and that in seeking to do this, the court will adopt whatever method of assessment is most appropriate to the particular circumstances.219 On the broadest view, it appears, this may go beyond ‘compensation’ in the strictest sense of that term and extend to requiring the defendant to make restitution for any gains they have made.220 As far as trade secrets are concerned, the appropriate method will depend upon the particular value of the information to the plaintiff and the extent to which that value has been diminished by the defendant’s actions. Two different situations may be discerned. First, the information may consist of an idea which the plaintiff is looking to sell or license to another person for that other to exploit. Where the defendant [page 119] goes ahead and exploits the information without permission, the measure of damage will be the price that the plaintiff would have expected to receive for the information, whether in terms of a one-off fee or, where the information is more ‘special’, a series of royalty payments.221 Where the information is only partially exploited by the defendant, the plaintiff’s loss will be the amount by which the chance of fully exploiting it has been diminished, though allowance must be made for the contingency that the plaintiff would not have successfully exploited it all.222 Second, the information may be used in furtherance of a business carried on by the plaintiff. The appropriate measure here will usually be the income which is lost as a result of the information being used by the defendant and/or becoming available to the plaintiff’s competitors.223 Again, however,

such damages should only compensate for loss suffered as a result of the breach and not, for instance, for loss sustained through activities of the defendant after the expiry of any head start calculated under the springboard doctrine. It has not always been clear what damages might be awarded where the information has no financial value as such to the plaintiff. However, in Giller v Procopets224 the Victorian Court of Appeal held that compensation can be awarded for mental distress suffered as a result of the disclosure of personal information. The plaintiff was awarded $40,000 for humiliation, embarrassment and distress suffered as a result of her former partner showing videotapes of their sexual encounters to her family and friends. The award included a component of $10,000 by way of ‘aggravated damages’, to reflect the fact that the loss had been aggravated by the manner of the breach — in particular, the fact that the defendant had deliberately breached his duty of confidence in order to humiliate the plaintiff, whom he had also physically assaulted on a number of occasions. A similar award was made in Wilson v Ferguson,225 in which explicit photos and videos of the plaintiff had been posted by her ‘jilted ex-lover’ to his Facebook site. There is also New Zealand authority to the effect that exemplary damages may be awarded in the case of a ‘contumelious disregard’ for the plaintiff’s rights.226 [page 120] As against that, the New South Wales Court of Appeal has taken the view that such damages are not available in the case of ‘equitable wrongs’ such as breach of fiduciary duty.227 Although Ashley JA expressed some doubt on this point in Giller,228 the court was content in that case to accept that exemplary damages should not be awarded, especially since the defendant had already been the subject of criminal sanctions for his behaviour. 4.31 Quantum meruit It has been suggested that a plaintiff may be able to recover the reasonable value of the information misused by

the defendant by seeking a quantum meruit award.229 Although no Australian court appears as yet to have made such an award,230 there seems to be no reason why it should not come into play where the information has financial value, yet the plaintiff has not been in a position to exploit it and thus has suffered no loss.

Proprietary remedies 4.32 Constructive trust Some commentators have suggested that a person who misuses confidential information may be treated as a constructive trustee of any benefits obtained as a result of the breach.231 However, the matter is far from clear. The most obvious way to explain the imposition of a constructive trust would be to treat duties of confidence as a species of fiduciary obligation.232 But while some might regard ‘fiduciary’ as a harmless label which adds nothing to the analysis of the duty of confidence,233 it can in fact be positively misleading. A ‘fiduciary’ is more usually taken to refer to a person who is under a strict duty to conserve another’s interests pursuant to a pre-existing relationship. While confidentiality is certainly one of the standards required of such a person, it may also be imposed in the absence of so [page 121] clearly defined a relationship and in situations where there is no such general duty.234 Arguably then, a distinction should be maintained between the specific obligation of confidentiality and the more general obligations of a fiduciary, lest the courts fall into the error of imposing too broad a duty on mere confidants.235 On the other hand, rejection of a fiduciary analysis does not necessarily preclude the possibility of a constructive trust, as the decision of the Supreme Court of Canada in LAC Minerals Ltd v International Corona Resources Ltd236 reveals. There a trust was imposed over property acquired as a result of a breach of confidence, despite the court’s finding that no fiduciary relationship existed. Whether the same approach would be taken in Australia remains to be seen, although

Deane J once advanced the broad (and admittedly controversial) proposition that: … a constructive trust may be imposed as the appropriate form of equitable relief in circumstances where a person could not in good conscience retain for himself [sic] a benefit, or the proceeds of a benefit, which he has appropriated to himself in breach of his contractual or other legal or equitable obligations to another.237 Similar uncertainty surrounds the possibility that a trust may be imposed by way of accessory liability on a third party who becomes involved in a breach of confidence. According to the second limb of the Barnes v Addy238 principle (see 4.14), such a person would need to have knowingly assisted in a ‘dishonest and fraudulent design’.239 Whether ‘mere’ breaches of confidence (not otherwise involving a breach of fiduciary duty) would suffice for this purpose, is again a question that remains to be answered.

SPECIAL CASES Employees 4.33 Confidentiality in the employment context A substantial proportion of breach of confidence litigation concerns actions against employees, past or present, who are seeking to use or disclose trade secrets acquired in the course of their engagement with the plaintiff. However, despite the fact that employees represent [page 122] the most numerous class of recipients of confidential business information, the principles described in this chapter require some qualification before they can be applied in the employment context. Two complicating factors in particular need to be noted. The first is that during the employment relationship the employee is subject to a

duty of fidelity which is more stringent than the general equitable duty of confidence. Accordingly, a careful distinction must be made between the employee’s obligations prior to and after the termination of the employment contract. Second, the courts have stressed that the employer’s prima facie entitlement to control and take the benefit of information generated or acquired in the course of employment must be balanced against the: … prima facie right of any person to use and to exploit for the purpose of earning his living all the skill, experience and knowledge which he [sic] has at his disposal, including skill, experience and knowledge which he has acquired in the course of previous periods of employment.240 It should also be noted that, besides the common law duties described below, employees of corporations are subject to s 183 of the Corporations Act 2001 (Cth), which provides that they must not improperly use any information acquired in their capacity as an employee (or as a director or officer) to gain an advantage for themselves or someone else, or to cause detriment to the corporation.241 Although broadly worded, this provision and its predecessors have generally been interpreted to reflect rather than extend the established common law principles as to misuse of information.242 4.34 Misuse of information during the employment period It is an implied term of each employment contract that the employee serve their employer ‘faithfully’ during the period of their employment.243 Even in the absence of an express contractual promise, therefore, the employee is bound not to damage the employer’s interests by disclosing or using any information acquired in the course of employment.244 This duty of fidelity is a strict one. It precludes not just use or disclosure while the employment relationship subsists, but also any deliberate attempts to acquire or memorise information, even if the employee does not plan to use the information [page 123]

until after the employment has terminated.245 It appears that a lower standard of fidelity may be expected of employees who have given their notice and are on the verge of departure; these employees, it would seem, are at least to be allowed to plan for their departure, even if that means using the information they have acquired.246 But beyond that, almost any use at all of information prior to leaving will be treated as an act of perfidy.247 An exception is made, as previously discussed, where it is in the public interest for an employee to reveal information: see 4.17–4.21. However, while no injunction will be issued to prevent such disclosure, there may be little (in the absence of a strong trade union) to prevent the employer dismissing the employee or subjecting them to some other form of prejudicial treatment. True, such ‘disloyalty’ is unlikely to be treated as a ground for summary dismissal,248 and the employee may well be able to seek reinstatement or compensation for unfair dismissal if they are sacked or pressured into resignation.249 But in practical terms, those who reveal wrongdoing by their employer are vulnerable to retaliation. In recognition of this, legislation has been enacted in most jurisdictions to protect ‘whistleblowers’.250 Many of these measures are confined to those who raise issues of corruption or maladministration in the public sector.251 But the South Australian Whistleblowers Protection Act 1993 does apply to people who disclose conduct in the private sector that is illegal, or that causes a risk to public safety or to the environment. Part 9.4AAA of the Corporations Act also protects employees (and others) who reveal information about what they suspect on reasonable grounds to be a contravention of the corporations legislation.252 Part 4A of Ch 11 of the Fair Work (Registered Organisations) Act 2009 has similar protections for officers, employees [page 124] or members of registered trade unions and employer associations. These have recently been strengthened, as part of a package of

reforms to the regulation of such bodies.253 In order to secure the support of Senate crossbenchers for the reforms, the Turnbull Government promised to introduce more general legislation in 2017 to bolster the protections for both public and private sector whistleblowers. It is possible that the new law may include provision for the payment of ‘bounties’ or rewards to those who expose wrongdoing.254 4.35 Misuse after the employment period Once the employment ends, a different set of obligations cuts in. The employee may now use any information without breaching the duty of fidelity, so long as it has been properly acquired. Sales officers or managers, for example, may call on their recollections as to the names and needs of their former employer’s customers in order to compete for those customers’ business, either in their own right or in the service of another employer.255 The employer is not, however, bereft of protection during the post-employment period. Employees are bound, on the principles discussed earlier in the chapter, by a duty of confidentiality which is distinct from that of fidelity and which remains binding even after the termination of the employment relationship.256 Consistently with those principles, however, the duty of confidentiality is only breached by the misuse of secret information. Where the employer has made no particular effort to prevent the information from freely circulating within or outside the enterprise, a claim against an employee who remembers that information and subsequently uses it will fail.257 In Faccenda Chicken Ltd v Fowler,258 a decision which has been extremely influential in shaping the law not just in England, but in Australia and other countries, the English Court of Appeal put it like this: It is clear that the obligation not to use or disclose information [after the employment ceases] may cover secret processes of manufacture such as chemical formulae … or designs or special methods of constructions … and other information which is of a sufficiently high degree of confidentiality as to amount to a trade secret. The obligation does not extend, however, to cover all information which is given to or acquired by the employee while in [their] employment, and in particular may not cover

information which is only ‘confidential’ in the sense [page 125] that an unauthorised disclosure of such information to a third party while the employment subsisted would be a clear breach of the duty of good faith. Unfortunately, some judges have misinterpreted the reference in this passage to the term ‘trade secret’, taking it to mean some special class of valuable commercial information which is ‘highly’ secret and thus excluding protection for more mundane information which an employer has nevertheless gone to considerable pains to keep confidential.259 This is at odds with numerous authorities on the scope of the equitable doctrine, from which it is clear that a duty of confidentiality will arise in relation to any type of information, provided only that it cannot be said to be in the public domain: see 3.9, 4.6. It is sufficient for this purpose if ‘relative’ secrecy is maintained, something which hinges on a range of factors including the number of people to whom the information is known, the steps taken to maintain its security, and the ease or difficulty with which others may be able to acquire or duplicate it.260 The better view then is that ‘trade secret’ in this context simply denotes a large subset of the range of information caught by the equitable doctrine, covering any information of a business or commercial nature which has been kept relatively secret.261 That said, even where an employer can show that some confidential material has been taken, this does not guarantee that a remedy will be forthcoming from a court. In the first place, no injunction will be granted to restrain the use of trade secrets by an exemployee unless the employer can specify the precise material that is to be covered by the order.262 Moreover, in order to be able to claim damages in respect of the breach, the employer must be able to show that any loss of business it has suffered to a rival firm that now includes the ex-employee is properly attributable to the information that was misused, rather than the personal expertise of the ex-

employee or others in the rival business.263 Finally, a court will resist granting an injunction where it feels it would be impracticable to expect the employee to be able to refrain from using the employer’s secrets while continuing legitimately to exploit their own ‘know-how’ — the stock of knowledge, skill and experience built up by working over a long period.264 The point has almost been reached where so long [page 126] as workers merely take away information in their head, having made no special effort to acquire it in the first place, they can virtually claim to ‘own’ it for future purposes, except in the case of valuable and highly specialised trade secrets such as chemical formulae.265 4.36 The role of restrictive covenants In light of the difficulties that may be faced in enforcing the duty of post-employment confidentiality (as opposed to the duty of fidelity), the natural course for employers concerned to protect their trade secrets is to have their employees agree to express covenants which restrict their postemployment freedom.266 This is a strategy which has been overtly encouraged by courts in recent years.267 Rather than securing a promise not to use confidential information, which can sometimes be just as difficult to enforce as the implied duty,268 employers often obtain better results by securing a commitment not to compete, or to work for a competitor, for a defined period after the termination of employment.269 The aim is to prevent the employee from ever getting into any position from which to threaten the employer with the use of secret information. The employer cannot, however, use such covenants with impunity. In some countries, post-employment restraints are necessarily invalid. In others, they are enforceable only within certain limits.270 The position in the United States is especially interesting. While some states apply a common law approach similar to that described below, others such as California prohibit their enforcement. The capacity that such a prohibition allows for employees and their

know-how to move from firm to firm is often cited as one of the reasons for the success of the IT industry in Silicon Valley.271 In Australia, as previously noted, restrictive covenants are subject to the common law doctrine of restraint of trade: see 4.4.272 It is established that an employer has [page 127] a legitimate interest in seeking to protect its trade secrets, and accordingly may in principle impose a post-employment restriction on employees who can be shown to have had access to confidential information and who may be in a position to use that knowledge to the employer’s detriment once their service ends.273 To be enforceable, however, the covenant must also be no wider than is reasonably necessary to protect the employer’s interests, when judged in terms of the duration and area of its coverage and the activities restrained. As an illustration of these rules, in Commercial Plastics Ltd v Vincent274 the defendant, who was the head of the plaintiff’s research and development section, had agreed not to work in the plastics industry for one year after leaving the plaintiff’s service. The English Court of Appeal refused the plaintiff’s action for an injunction to prevent him going to work for its main competitor, holding the covenant an unreasonable restraint of trade. Although the plaintiff did have trade secrets which it could legitimately seek to protect, and although the duration was reasonable, in other respects the covenant was too wide. A reasonable covenant should have been limited to the United Kingdom, where the plaintiff’s market lay, and to the particular part of the plastics industry in which the plaintiff operated.275 It should also be noted that in Commercial Plastics enforcement was denied even though, had the covenant been more reasonably framed, the defendant could legitimately have been restrained from acting in the fashion he had.276 In New South Wales, by contrast, the Restraints of Trade Act 1976 confers an express power on courts in that state to read down otherwise invalid restrictive covenants and

enforce them to the extent they are reasonable.277 It is also common today for post-employment restraints to be drafted in the form of ‘step’ or ‘cascade’ clauses which contain overlapping obligations of varying scope, the theory being that those which are too wide will be severed in favour of those that are reasonable.278 Where (as is commonly the case) an interlocutory injunction is sought to enforce a post-employment restraint, the employer will need to show that it has a legitimate prospect of establishing that the restraint is valid, and that there is evidence to suggest a breach or imminent breach by the employee.279 It will also generally need [page 128] to be shown that the employee’s activities are causing harm, or are likely to cause harm, to the employer’s business.280 Any final injunction granted will be framed to operate for the period that the employer can establish it legitimately requires protection.281 Where an employer can establish that it has suffered loss as a result of a breach of what turns out to be a valid restraint, it may also sue the ex-employee for damages.282

Government information 4.37 Information disclosed to government authorities In discussing the special position of ‘government information’, it is important to distinguish between information held by government and information relating to government. As far as the former is concerned, it is clear that government authorities to whom information is disclosed, whether voluntarily or pursuant to some statutory obligation, are as much subject to the equitable doctrine of confidence as private individuals or institutions. Accordingly, any use or disclosure of such information for purposes other than those for which it was supplied may constitute a breach of confidence. However, while blatant misuse for personal gain will plainly be unlawful, the more difficult situation occurs where an authority seeks to use information for a purpose that is within its remit, yet different to that for which it was

communicated: see 4.12. 4.38 Freedom of information and privacy legislation A further dimension to the issue of the confidentiality of information held by government is added by the enactment of legislation on the subject. As already seen, the Privacy Act 1988 (Cth) ensures that the disclosure of personal information to a Commonwealth agency confers on the subject of the information an enforceable right to confidentiality: see 4.2.283 This and other legislation at state level also establish mechanisms for complaints to be made about inappropriate practices relating to the handling of such information: see 3.11. FOI legislation also constitutes an important context in which questions of breach of confidence may be raised.284 Federal, state and territory laws provide rights of access to documents held by public agencies, subject to specific exemptions. Most FOI [page 129] statutes exempt ‘trade secrets’ and other commercially valuable information,285 although the laws in New South Wales, Queensland and the ACT are not so specific.286 It would seem in any event that such documents would fall within the broader category of confidential information which is also typically stipulated to be exempt. Considerable variation exists in the wording of this broader exemption. Under the original version of s 45 of the Freedom of Information Act 1982 (Cth), a document was exempt ‘if its disclosure under this Act would constitute a breach of confidence’. The Full Court of the Federal Court held in Corrs Pavey Whiting & Byrne v Collector of Customs (Vic)287 that this wording was not to be interpreted in a broad sense, but referred to a disclosure which satisfied the requirements for mounting an action for breach of confidence. On the other hand, the majority judges, as noted at 4.21, further held that no account should be taken of factors relevant to the discretionary grant of remedies: so that, for instance, a document would remain exempt even if its disclosure could have been justified in the public interest. In

1991 the exemption was modified to refer to information which, if disclosed, ‘would found an action, by a person other than the Commonwealth, for breach of confidence’.288 This wording confirms that the scope of the exemption is to be ascertained by reference to the common law on breach of confidence.289 But it can also be read as incorporating consideration of ‘remedial’ issues such as the public interest defence, and to that extent might be interpreted as having narrowed the exemption.290 Similar wording is to be found in the New South Wales, [page 130] South Australian and Western Australian legislation.291 By contrast, the Victorian and Tasmanian statutes refer to information or matter ‘communicated in confidence’,292 which seems wide enough to cover situations which might not ground an equitable action for breach of confidence.293 Queensland also uses that terminology, though there is no exemption as such; the confidential communication is simply a factor that favours non-disclosure in the public interest.294 Under the Freedom of Information Amendment (Reform) Act 2010 (Cth), significant changes were made to the federal FOI regime. Although seeking in general to increase public access to government information, the Amendment Act retained the existing breach of confidence exemption in s 45. Section 47 also has an exemption for trade secrets or commercially valuable information that is somewhat narrower than the equivalent provision (s 43) in the original Act. Other information relating to business affairs, or of a personal nature, is only ‘conditionally exempt’ under ss 47F–47G. This means that unless it is specifically determined that granting access would be contrary to the public interest, such information must be disclosed. 4.39 Information belonging to government authorities: the need to establish public interest in secrecyIt is where information relates to the workings of a government authority itself, or is generated within that authority, that a special approach is called for. In Commonwealth v John Fairfax & Sons Ltd295 Mason J took the view

that a [page 131] government must show that the public interest requires a restraint on publication of the relevant information: The equitable principle has been fashioned to protect the personal, private and proprietary interests of the citizen, not to protect the very different interests of the executive government … This is not to say that equity will not protect information in the hands of the government, but it is to say that when equity protects government information it will look at the matter through different spectacles … [I]t can scarcely be a relevant detriment to the government that publication of material concerning its actions will merely expose it to public discussion and criticism … Accordingly the court will determine the government’s claim to confidentiality by reference to the public interest. Unless disclosure is likely to injure the public interest, it will not be protected. The court will not prevent the publication of information which merely throws light on the past workings of government, even if it be not public property, so long as it does not prejudice the community in other respects … If, however it appears that disclosure will be inimical to the public interest because national security, relations with foreign countries or the ordinary business of government will be prejudiced, disclosure will be restrained. On the facts before him, which concerned an attempt to publish foreign and defence policy documents relating to the 1968–75 period, Mason J was not satisfied that any embarrassment caused to the government in its conduct of foreign relations was sufficient to warrant restraint, though he did grant an injunction on the basis of breach of copyright. 4.40 Scope of the Fairfax principle The Fairfax approach has been

consistently applied in subsequent cases.296 However, there are a number of issues yet to be fully resolved. For example, the principle applies to government departments and directly controlled agencies, but does it also apply to semi-autonomous public corporations such as Australia Post? In Esso Australia Resources Ltd v Plowman297 Mason CJ (as he had by then become) was strongly of the opinion that it should, accepting the view that in the public sector ‘the need is for compelled openness, not for burgeoning secrecy’.298 There is also the question of whether all information ‘belonging’ to government authorities is caught by the principle. It has been suggested that where information of a ‘commercial’ character is concerned, a government’s claim for protection should be decided on ordinary principles, public interest considerations being irrelevant in [page 132] such a case.299 Arguably too, where confidential information is supplied to a public authority on a confidential basis, it should not be necessary to establish that the public interest favours confidentiality in order to obtain a remedy against misuse or disclosure. Here the interest sought to be vindicated is that of the person concerned, not the authority.300

1. 2. 3. 4.

5.

Cf British Franco Electric Pty Ltd v Dowling Plastics Pty Ltd [1981] 1 NSWLR 448. See International Scientific Communications Inc v Pattison [1979] FSR 429. Cf Murray v Yorkshire Fund Managers Ltd [1998] 1 WLR 951 (one of six co-owners ‘bought out’ by the others, unable thereafter to enforce confidentiality). [1969] 1 QB 349. See also Finnane v Australian Consolidated Press [1978] 2 NSWLR 435; Health Services for Men Pty Ltd v D’Souza (2000) 48 NSWLR 448; Rishmont Pty Ltd v Tweed City Medical Centre Pty Ltd [2002] 2 Qd R 222. Cf Bacich v Australian Broadcasting Corp (1992) 29 NSWLR 1, where the directors and sole shareholders of a small company were held to be so involved in its business affairs that any duty of confidence owed to the company was also owed to (and thus enforceable by) them. See eg Foster v Mountford (1976) 14 ALR 71 (Aboriginal council suing on behalf of various communities to suppress publication of tribal secrets given many years earlier

6. 7. 8.

9.

10.

11.

12. 13.

14. 15.

16. 17. 18.

to anthropologist by unidentified Aborigines); Falconer v Australian Broadcasting Corp (1991) 22 IPR 205 (police officer protecting identity of police informer); Deputy Commissioner of Taxation v Rettke (1995) 31 IPR 457 (Tax Commissioner protecting confidentiality of information supplied by taxpayers). In none of these cases was the question of standing argued. See Finn 1977, 152–6. Mid-City Skin Cancer & Laser Centre v Zahedi-Anarak (2006) 67 NSWLR 569; T S & B Retail Systems Pty Ltd v 3Fold Resources Pty Ltd (No 3) (2007) 72 IPR 492; Elecon Australia Pty Ltd v PIV Drives GmbH (2010) 93 IPR 174; and see 3.12. See Finn 1992. But see Esso Australia Resources Ltd v Plowman (1995) 183 CLR 10 (no implication of confidentiality in relation to agreement for private arbitration). As to the protection of confidentiality in the course of mediation processes, see Wedding 2016. See eg Parry-Jones v Law Society [1969] Ch 1. As to the extent to which this duty (or a broader fiduciary duty) may preclude a lawyer from acting for other clients, see eg Carindale Country Club Estate Pty Ltd v Astill (1993) 115 ALR 112; Spincode Pty Ltd v Look Software Pty Ltd (2001) 4 VR 501; Nasr v Vihervaara (2005) 91 SASR 222; and see also Ross 2014, 440–50; Dal Pont 2014, 167–72. See eg Tournier v National Provincial & Union Bank of England [1924] 1 KB 461; but cf Brighton v Australia and New Zealand Banking Group Ltd [2011] NSWCA 152 at [54] (no such implication for contract between banker and guarantor). See further Tyree et al 2014, 195–202; Dal Pont 2014, 174–8, 245–50. See eg Slater v Bissett (1986) 69 ACTR 25; Richards v Kadian (2005) 64 NSWLR 204; Richards & Louise 2013, ch 6; Kerridge et al 2013, ch 14. As to the complications that may arise in relation to duties of confidentiality owed by doctors who work in partnerships or at medical centres, see Downing 2001; and see eg Mid-City Skin Cancer & Laser Centre v Zahedi-Anarak (2006) 67 NSWLR 569. For examples of employees enforcing a duty of confidentiality against their employers, see Slavutych v Baker (1975) 55 DLR (3d) 224; Prout v British Gas plc [1992] FSR 351. See eg International Entertainment New Zealand (No 2) Ltd v Lewis (1998) 42 IPR 162; Wimmera Industrial Minerals Pty Ltd v Iluka Midwest Pty Ltd [2002] FCA 653; but cf Schering Chemicals Ltd v Falkman [1981] 2 All ER 321. It may be a different story where removal or use of the information to the detriment of the client occurs during the period of the engagement: see eg Fortuity Pty Ltd v Barcza (1995) 32 IPR 517; Ashcoast Pty Ltd v Whillans [2000] 2 Qd R 1. See eg Aplin et al 2012, [9.56]–[9.57] (bank’s duty of confidence inapplicable where disclosure of customer information necessary for protection of bank’s interests). See eg the inconclusive discussion in Del Casale v Artedomus (Aust) Pty Ltd (2007) 73 IPR 326 at [34]–[35], [76]–[100], [142]–[145] as to whether the equitable doctrine is a better explanation of an ex-employee’s duty of confidentiality (see 4.35) than any implied contractual obligation. (2010) 265 ALR 281. There have been many other instances of equitable relief being awarded against parties who have breached contractual obligations of confidentiality: see eg Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37 (delivery up for destruction). (2013) 85 NSWLR 196.

19.

20. 21. 22. 23. 24.

25.

26.

27. 28. 29. 30.

31. 32. 33. 34. 35. 36. 37.

38. 39. 40.

Ibid at [150], citing Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 437–8; and see also Gold and Copper Resources Pty Ltd v Newcrest Operations Ltd [2013] NSWSC 281. This last case involved a confidentiality agreement with an ‘entire agreement’ clause, in contrast to the contract in Optus Networks which specifically preserved ‘rights, powers or remedies provided by law independent of this agreement’. For a discussion of some of the interpretation issues that tend to arise in this particular context, see Aplin et al 2012, [9.17]–[9.28]. But cf Tompkins 2008, questioning the value of confidentiality agreements. See generally Heydon 2008. (2001) 210 CLR 181. For a critical analysis of the decision, see Brennan 2005b. In the absence of an explicit contrary intent, it was said, obligations as to use and disclosure of information would ordinarily be ‘construed as limited to subject matter which retained the quality of confidentiality at the time of breach or threatened breach of those obligations’: 210 CLR 181 at 198. Kirby and Callinan JJ dissented, on the basis that the restraint was inherently reasonable in the circumstances. The defendant had gone ahead on the assumption that the plaintiff would not be granted a patent, though this had not yet been determined at the date of the decision. Ibid at 201. As to the ‘head start’ concept, see 4.8, 4.24–4.25. Note also the Restraints of Trade Act 1976 (NSW) (see 4.36), which gives New South Wales courts greater flexibility than their counterparts in other states in relation to the partial enforcement of otherwise unreasonable restraints. See Carter 2013, 233–4, 236–7. See eg Deta Nominees Pty Ltd v Viscount Plastic Products Pty Ltd [1979] VR 167. See Aplin et al 2012, [4.20]–[4.31]. See eg British Industrial Plastics Ltd v Ferguson (1939) 56 RPC 271 at 277 (express clause of limited duration); Thomas Marshall (Exporters) Ltd v Guinle [1979] Ch 227 (express clause forbidding only disclosure of information, injunction granted to restrain use). See eg Triplex Safety Glass Co Ltd v Scorah (1938) 55 RPC 21. See eg General Manager, Workcover Authority of NSW v Law Society of NSW (2006) 65 NSWLR 502. [1969] RPC 41 at 47. See Hitchcock v TCN Channel Nine Pty Ltd (No 2) [2000] NSWCA 82 at [28]; and see also 4.11, 4.13. For a recent example, see Kafataris v Davis (2016) 120 IPR 206 at [76]. The claim in this case failed on all three grounds. See eg Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39 at 51; Coulthard v South Australia (1995) 63 SASR 531 at 534, 546. Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) 65 RPC 203 at 215; O’Brien v Komesaroff (1982) 150 CLR 310 at 326–8; Johns v Australian Securities Commission (1993) 178 CLR 408 at 432, 438, 461, 475. For discussion of this requirement, see Clarke 2009. See Attorney-General (UK) v Guardian Newspapers (No 2) [1988] 2 WLR 805 at 868. [1967] RPC 149. (1993) 178 CLR 408.

41. 42. 43.

44. 45. 46. 47. 48. 49. 50. 51. 52. 53. 54. 55. 56. 57. 58. 59.

60.

61. 62.

Cf Westpac Banking Corp v John Fairfax Group Pty Ltd (1991) 19 IPR 513; and see Stewart & Chesterman 1992, 4–7. EPP National Buying Group Pty Ltd v Levy [2001] NSWSC 482. See eg Mars UK Ltd v Teknowledge Ltd (1999) 46 IPR 248. Cf Industrial Rollformers Pty Ltd v Ingersoll-Rand (Australia) Ltd [2001] NSWCA 111 (reverse engineering of friction bolt would not have fully revealed its specifications and tolerances, so that information remained confidential). [1982] 1 NSWLR 24; see also Wigginton v Brisbane TV Ltd (1992) 25 IPR 58. Cf Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39. (2006) 15 VR 419. Ibid at [55]. See also Earl v Nationwide News Pty Ltd [2013] NSWSC 839. Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37 at 49–50. Deta Nominees Pty Ltd v Viscount Plastic Products Pty Ltd [1979] VR 167 at 193; and see also Del Casale v Artedomus (Aust) Pty Ltd (2007) 73 IPR 326 at [138]. Cf Mense v Milenkovic [1973] VR 784 at 796–8. Missingham v Shamin [2012] NSWSC 288 at [62]. O’Brien v Komesaroff (1982) 150 CLR 310 at 328; Retractable Technologies Inc v Occupational and Medical Innovations Ltd (2007) 72 IPR 58; Streetscape Projects (Australia) Pty Ltd v City of Sydney (2013) 85 NSWLR 196; and see also 4.35. O Mustad & Son v S Allcock & Co Ltd (1928) [1963] 3 All ER 416; Johns v Australian Securities Commission (1993) 178 CLR 408 at 461; and see also Maggbury Pty Ltd v Hafele Australia Pty Ltd (2001) 210 CLR 181 at 198–201. See eg Cranleigh Precision Engineering Ltd v Bryant [1964] 3 All ER 289; though cf Maggbury Pty Ltd v Hafele Australia Pty Ltd (2001) 210 CLR 181 at 200–1. See Peter Pan Manufacturing Corp v Corsets Silhouette Ltd [1963] 3 All ER 402 at 408. But cf David Syme & Co Ltd v General Motors-Holden Ltd [1984] 2 NSWLR 294 at 299. See Attorney-General (UK) v Guardian Newspapers Ltd (No 2) [1988] 3 WLR 776 at 809–13. See also 4.24–4.25, 4.28, 4.30. [1967] RPC 375 at 391–2. The judgment was affirmed in the Court of Appeal without specific reference to this point: [1960] RPC 128. See also Aquaculture Corp v New Zealand Green Mussel Co Ltd (1985) 5 IPR 353. Potters-Ballotini Ltd v Weston-Baker [1977] RPC 202 at 206–7; Peter Pan Manufacturing Corp v Corsets Silhouette Ltd [1963] 3 All ER 402 at 408. See eg British Franco Electric Pty Ltd v Dowling Plastics Pty Ltd [1981] 1 NSWLR 448; Titan Group Pty Ltd v Steriline Manufacturing Pty Ltd (1990) 19 IPR 353. As to whether a confidant can realistically be expected to exercise this sort of self-restraint, see 4.24. Aquaculture Corp v New Zealand Green Mussel Co Ltd (1985) 5 IPR 353 at 384. See also US Surgical Corp v Hospital Products International Pty Ltd [1983] 2 NSWLR 157 at 228–33; Maggbury Pty Ltd v Hafele Australia Pty Ltd (2001) 210 CLR 181 at 201, 210. See further 4.25. [1969] RPC 41 at 48. See Smith Kline & French Laboratories (Australia) Ltd v Secretary, Department of Community Services and Health (1990) 17 IPR 545 at 567–9. But cf Aplin et al 2012, [7.02]–[7.35], rejecting such a test in favour of a ‘notice of confidentiality’ test.

63.

64. 65. 66. 67. 68.

69. 70.

71. 72. 73. 74. 75. 76.

77. 78.

See eg Argyll v Argyll [1967] Ch 302 at 322; Attorney-General (UK) v Heinemann Publishers Australia Pty Ltd (1987) 75 ALR 353 at 453. See also Finn 1992. Cf Norman South Pty Ltd v da Silva [2012] VSC 477, where it was found that a personal relationship was conducted in a manner not importing any obligation of confidence. Coco v A N Clark (Engineers) Ltd [1969] RPC 41 at 48. Cf Mar-Con Corp Pty Ltd v Campbell Capital Ltd (1989) 16 IPR 153. See eg Cranleigh Precision Engineering Ltd v Bryant [1964] 3 All ER 289. (1993) 178 CLR 408; see 4.6. (2006) 94 SASR 64. A similar conclusion was reached in Armstrong Strategic Management and Marketing Pty Ltd v Expense Reduction Analysts Group Pty Ltd (2012) 295 ALR 348, in relation to legally privileged documents that were mistakenly handed over by one litigating party to another when responding to an order for pre-trial discovery. The decision not to order the return of the documents was overturned by the High Court, though by reference to the relevant rules of procedure rather than the equitable doctrine of breach of confidence: Expense Reduction Analysts Group Pty Ltd v Armstrong Strategic Management and Marketing Pty Ltd (2013) 250 CLR 303; see 4.22. (1987) 8 IPR 502; (1988) 13 IPR 609. (1987) 8 IPR 502 at 521. See also Carflow Products (UK) Ltd v Linwood Securities (Birmingham) Ltd (1996) 36 IPR 205 (display of prototype at meeting held not to attract duty of confidence); Abraham v Biggs [2011] FCA 1475 (disclosure in the course of a ‘casual’ conversation). See eg McRobert 2002. Coco v A N Clark (Engineers) Ltd [1969] RPC 41 at 47–8. Malone v Commissioner of Police of the Metropolis (No 2) [1979] 2 All ER 620 at 645–6. Ashburton v Pape [1913] 2 Ch 469 at 475; Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39 at 50; Australian Broadcasting Corp v Lenah Game Meats Pty Ltd (2001) 208 CLR 199 at 224, 271–2, 289. [1978] Qd R 72. Ibid at 80. See also Crowder v Hilton [1902] SALR 82; Sullivan v Sclanders (2000) 77 SASR 419. It has been suggested that ‘equity will be far more likely to give relief’ where information has been stolen rather than communicated in confidence: Minister for Mineral Resources v Newcastle Newspapers Pty Ltd (1997) 40 IPR 403 at 405–6. [1979] 2 All ER 620. Ibid at 646. Cf Francome v Mirror Group Newspapers Ltd [1984] 2 All ER 408, where illegal tapping was held to fall outside any principle established in Malone. Most states have general prohibitions on the use of surveillance (or sometimes just listening) devices to monitor or record private conversations or activities, in the absence of consent or legal authority. These prohibitions are subject to often vague exceptions in relation to the protection of a person’s ‘lawful interests’: see eg Surveillance Devices Act 1998 (WA) Pt 2; Wintle v RUC Cementation Mining Contractors Pty Ltd (No 3) [2013] FCCA 694. Some jurisdictions also have more detailed controls on the surveillance of workplaces: see eg Workplace Surveillance Act 2005 (NSW); Workplace Privacy Act 2011 (ACT). Cf ALRC 2014b, ch 14, recommending that the present patchwork of state and territory laws be replaced by

79. 80. 81. 82. 83.

84. 85. 86. 87. 88. 89. 90. 91. 92. 93. 94. 95. 96. 97. 98. 99. 100. 101.

102. 103. 104. 105.

federal legislation that would regulate surveillance in a consistent and technologyneutral fashion. [1995] 1 WLR 804 at 807. (2001) 208 CLR 199 at 224. See eg Campbell v MGN Ltd [2004] 2 AC 457; OBG Ltd v Allan [2008] 1 AC 1. For dicta to this effect, see eg Trevorrow v South Australia (No 4) (2006) 94 SASR 64 at [80]. See eg DPP (Cth) v Kane (1997) 140 FLR 468; DC Payments Pty Ltd v Next Payments Pty Ltd [2016] VSC 315 (a case which, ironically, involved a confidential document being mistakenly disclosed during litigation over a breach of confidence claim). Expense Reduction Analysts Group Pty Ltd v Armstrong Strategic Management and Marketing Pty Ltd (2013) 250 CLR 303. Breen v Williams (1996) 186 CLR 71; Zeus Chemical Products Pty Ltd v Jaybee Design & Marketing Pty Ltd (1998) 41 IPR 491. See eg NRMA v Geeson (2001) 40 ACSR 1. Gurry 1985, 118; and see eg Telstra Corp Ltd v First Netcom Pty Ltd (1997) 148 ALR 202. (1991) 20 IPR 643. For criticism, see Voon 1998. (1991) 20 IPR 643 at 655. Similar actions failed in England and New Zealand: Re Smith Kline & French Laboratories Ltd [1989] 2 WLR 397; Smith Kline & French Laboratories Ltd v Attorney-General (NZ) [1989] FSR 418. (1991) 20 IPR 643 at 655. See also Joint Coal Board v Cameron (1989) 90 ALR 208; but cf Castrol Australia Pty Ltd v Emtech Associates Pty Ltd (1980) 33 ALR 31; Hughes Aircraft Systems International v Airservices Australia (1997) 146 ALR 1. (1991) 20 IPR 643 at 656. [1991] 1 All ER 845. See also Johns v Australian Securities Commission (1993) 178 CLR 408 at 423–4, 436, 467. See eg Weld-Blundell v Stephens [1919] 1 KB 520. See eg Interfirm Comparison (Australia) Pty Ltd v Law Society of NSW (1975) 5 ALR 527; DPP (Cth) v Kane (1997) 140 FLR 468. See eg Talbot v General Television Corp Pty Ltd [1980] VR 224. O Mustad & Son v S Allcock & Co Ltd (1928) [1963] 3 All ER 416 at 417. See eg Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39 at 51–2; Attorney General (UK) v Heinemann Publishers Australia Pty Ltd (1987) 75 ALR 353 at 454. See eg Attorney-General (UK) v Guardian Newspapers Ltd (No 2) [1988] 3 WLR 776 at 795. Ibid at 782. See also Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414 at 438, where Deane J refers only to the need for secrecy to be ‘of substantial concern to the plaintiff’, and Smith Kline & French Laboratories (Australia) Ltd v Secretary, Department of Community Services and Health (1990) 17 IPR 545 at 584. See eg Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37. See eg Argyll v Argyll [1967] Ch 302. (1874) LR 9 Ch App 244 at 252. As to the level of knowledge or indeed dishonesty that will trigger third party liability

106. 107.

108. 109. 110. 111.

112. 113. 114. 115. 116. 117. 118. 119. 120. 121. 122.

on this basis, see Farah Constructions Pty Ltd v Say-Dee Pty Ltd (2007) 230 CLR 89; Westpac Banking Corp v Bell Group Ltd (2012) 89 ACSR 1; Lifeplan Australia Friendly Society Ltd v Ancient Order of Foresters in Victoria Friendly Society Ltd [2017] FCAFC 74; and see further Shankar 2014. As to whether a third party may be restrained from dealing with property created as a result of another’s breach of confidence, despite not having received the information itself, see Union Carbide Corp v Naturin Ltd [1987] FSR 538. See also 4.32. Talbot v General Television Corp Pty Ltd [1980] VR 224 at 239–40; Johns v Australian Securities Commission (1993) 178 CLR 408 at 460, 474; Streetscape Projects (Australia) Pty Ltd v City of Sydney (2013) 85 NSWLR 196 at [153]–[156]. For examples of constructive notice, see Ormonoid Roofing & Asphalts Ltd v Bitumenoids Ltd (1930) 31 SR (NSW) 347 at 360; Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37 at 45–6; and cf National Education Advancement Programs (NEAP) Pty Ltd v Ashton (1995) 33 IPR 281. See also Privacy Act 1988 (Cth) s 92. In Vestergaard Frandsen A/S v Bestnet Europe Ltd [2013] 1 WLR 1556 the UK Supreme Court appeared to suggest that there would always need to be some form of actual notice or ‘dishonesty’ for a third party to be liable. For criticism of this approach, see Arnold 2014. See eg Trevorrow v South Australia (No 4) (2006) 94 SASR 64 at [140]. But cf Nahan 2015, contesting this view. See eg G v Day [1982] 1 NSWLR 24 at 35; Johns v Australian Securities Commission (1993) 178 CLR 408 at 460, 474. See eg Talbot v General Television Corp Pty Ltd [1980] VR 224. Note also that a person who publishes information known to be the subject of an injunction may apparently be liable for contempt of court even if they are not bound by the injunction, so long as they can be shown to have intended to frustrate the effect of the court’s order: Attorney-General (UK) v Times Newspapers Ltd [1992] 1 AC 191; AttorneyGeneral (UK) v Punch Ltd [2003] 2 WLR 49; and see Stewart & Chesterman 1992, 22–34. See eg Attorney-General (UK) v Guardian Newspapers Ltd (No 2) [1988] 2 WLR 805 at 868. [1982] 2 NSWLR 544. See Jones 1970, 477–81. See eg Stephenson Jordan & Harrison Ltd v MacDonald & Evans (1951) 69 RPC 10 at 16. See Retractable Technologies Inc v Occupational and Medical Innovations Ltd (2007) 72 IPR 58 at [81]–[88]; Sports Data Pty Ltd v Prozone Sports Australia Pty Ltd (2014) 107 IPR 1 at [49]–[55]. See eg Bents Brewery Co Ltd v Hogan [1945] 2 All ER 570. See eg Retractable Technologies Inc v Occupational and Medical Innovations Ltd (2007) 72 IPR 58; and see also OBG Ltd v Allan [2008] 1 AC 1. Cf Jarman & Platt Ltd v Barget Ltd [1977] FSR 260. See eg Lifeplan Australia Friendly Society Ltd v Ancient Order of Foresters in Victoria Friendly Society Ltd [2017] FCAFC 74, involving a contravention of (among other provisions) s 183 of the Corporations Act: see 4.33. Fraser v Evans [1969] 1 QB 349 at 362. See eg A v Hayden (No 2) (1984) 156 CLR 532; Sullivan v Sclanders (2000) 77 SASR

123. 124. 125. 126. 127. 128. 129. 130. 131. 132.

133.

134. 135. 136. 137. 138.

139. 140. 141. 142.

143. 144. 145. 146. 147.

419; Commonwealth v Sanofi [2017] FCA 382. Cf AG Australia Holdings Ltd v Burton (2002) 58 IPR 268. See Church of Scientology of California v Kaufman (No 2) [1973] RPC 635 at 648–9. See also Koomen 1994; Pizer 1994; Glover 1999. (1856) 26 LJ Ch 113 at 114. Ibid. Initial Services Ltd v Putterill [1968] 1 QB 396 at 405; A v Hayden (No 2) (1984) 156 CLR 532 at 545. A v Hayden (No 2) (1984) 156 CLR 532 at 545–6, 574; and see eg Australian Football League v The Age Co Ltd (2006) 15 VR 419. See eg Distillers Co (Biochemicals) Ltd v Times Newspapers Ltd [1975] 1 All ER 41. (1980) 147 CLR 39 at 57. (2009) 238 CLR 448 at [27]. [1984] 2 All ER 417. See also X v Y [1988] 2 All ER 648; W v Egdell [1990] 2 WLR 471; Woolgar v Chief Constable of Sussex Police [2000] 1 WLR 25. Later UK cases on this point must be treated with some caution, since they are influenced by the balancing exercise required by the European Convention on Human Rights, Art 10 of which specifically seeks to protect ‘freedom of expression’: see Aplin 2007, 44–51. See eg Corrs Pavey Whiting & Byrne v Collector of Customs (Vic) (1987) 74 ALR 428 at 445–50; Bacich v Australian Broadcasting Corp (1992) 29 NSWLR 1 at 16; Sullivan v Sclanders (2000) 77 SASR 419 at 427. But see Attorney-General (UK) v Heinemann Publishers Australia Pty Ltd (1987) 75 ALR 353 at 434; Westpac Banking Corp v John Fairfax Group Pty Ltd (1991) 19 IPR 513 at 525; NRMA v Geeson (2001) 40 ACSR 1. See eg Australian Football League v The Age Co Ltd (2006) 15 VR 419. See eg Woodward v Hutchins [1977] 2 All ER 751. See Church of Scientology of California v Kaufman (No 2) [1973] RPC 635 at 649. See generally Finn 1984 (but rejecting the need for a defence of public interest as such). Attorney-General (UK) v Heinemann Publishers Australia Pty Ltd (1987) 8 NSWLR 341 at 380–1; Australian Football League v The Age Co Ltd (2006) 15 VR 419. The proper recipient must in turn be regarded as coming under a duty not to use the information other than to take proper steps to deal with the situation: Corrs Pavey Whiting & Byrne v Collector of Customs (Vic) (1987) 74 ALR 428 at 430. See eg Francome v Mirror Group Newspapers Ltd [1984] 2 All ER 408. See eg Duncan v Medical Practitioners Committee [1986] 1 NZLR 513. [1984] 2 All ER 417. Francome v Mirror Group Newspapers Ltd [1984] 2 All ER 408 at 413; see also the various expressions of judicial outrage noted in Stewart & Chesterman 1992, 14–21. Note also the extensive and not exactly flattering comments on media practices by Callinan J in Australian Broadcasting Corp v Lenah Game Meats Pty Ltd (2001) 208 CLR 199 at 299–309. Attorney-General (UK) v Guardian Newspapers Ltd (No 2) [1988] 3 WLR 776 at 807. Ibid at 787. See also Brand v Monks [2009] NSWSC 1454. A v Hayden (No 2) (1984) 156 CLR 532; Re a Company’s Application [1989] 2 All ER 248. Grofam Pty Ltd v KPMG Peat Marwick (1993) 27 IPR 215. See eg Malone v Commissioner of Police of the Metropolis (No 2) [1979] 2 All ER

148. 149. 150. 151. 152. 153.

154. 155. 156. 157. 158. 159. 160. 161. 162. 163.

164. 165. 166. 167.

620. Initial Services Ltd v Putterill [1968] 1 QB 396 at 406. Re a Company’s Application [1989] 2 All ER 248. Gartside v Outram (1856) 26 LJ Ch 113 at 114. (1987) 74 ALR 428. Ibid at 432. Esso Australia Resources Ltd v Plowman (1995) 183 CLR 10 at 35–6; and see eg O’Reilly v State Bank of Victoria Commissioners (1982) 153 CLR 1. Cf Gold and Copper Resources Pty Ltd v Newcrest Operations Ltd [2013] NSWSC 281, where no such obligation was found to arise in the particular circumstances. See eg Parry-Jones v Law Society [1969] Ch 1 at 9. Statutes which require disclosure may expressly state this: see eg Freedom of Information Act 1982 (Cth) s 91. See eg Public Health Act 2010 (NSW) s 54. For other situations in which medical practitioners are obliged to disclose confidential information, see Kerridge et al 2013, 319–22. See eg Brayley v Wilton [1976] 2 NSWLR 495; Rogerson v Law Society of the Northern Territory (1993) 88 NTR 1. See eg Federal Commissioner of Taxation v Australia and New Zealand Banking Group Ltd (1979) 143 CLR 499. See eg Smith Kline and French Laboratories (Australia) Ltd v Secretary, Department of Community Services and Health (1991) 20 IPR 643; Johns v Australian Securities Commission (1993) 178 CLR 408; and see 4.10, 4.12. Cf AG Australia Holdings Ltd v Burton (2002) 58 IPR 268 (lawyer may not anticipate such an order and interview a potential witness who is bound by an obligation of confidence). See eg Commonwealth v Northern Land Council (1993) 176 CLR 604. The ‘public interest’ exception to discovery is codified in statutory provisions such as s 130 of the Evidence Act 1995 (Cth): see Odgers 2016, 1095–1112. [1978] AC 171. See eg McGuinness v Attorney-General (Vic) (1940) 63 CLR 73; John Fairfax & Sons Ltd v Cojuangco (1988) 165 CLR 346; but cf West Australian Newspapers Ltd v Bond (2009) 40 WAR 164. See generally Price 2003. Evidence Act 1995 (Cth) Pt 3.10 Div 1C; Evidence Act 1995 (NSW) Pt 3.10 Div 1C; Evidence Act 1995 (Vic) Pt 3.10 Div 1C; Evidence Act 1906 (WA) ss 20A–20M; Evidence Act 2001 (Tas) ss 126A–126F; Evidence Act 2011 (ACT) Pt 3.10 Div 3.10.1C; and see eg Ashby v Commonwealth (No 2) (2012) 203 FCR 440; Madafferi v The Age [2015] VSC 687. The state and territory statutes extend similar protections to ‘professional confidential relationships’ other than that of journalist and source, and also (in some cases) those who counsel the victims of sexual assaults: see eg Evidence Act 1995 (NSW) Pt 3.10 Divs 1A, 1B. See eg Evidence Amendment (Journalists’ Privilege) Act 2011 (Cth). See Senate Standing Committee on Legal and Constitutional Affairs 2009; H Ryan 2014. As to the nature and scope of this obligation, see Hearne v Street (2008) 235 CLR 125. See also Dart Industries Inc v David Bryar & Associates Pty Ltd (1997) 38 IPR 389 in relation to information obtained through an Anton Piller order. Mobil Oil Australia Ltd v Guina Developments Pty Ltd (1995) 33 IPR 82.

168. 169.

170. 171. 172. 173. 174. 175. 176.

177. 178. 179. 180. 181. 182. 183. 184. 185. 186.

187.

188. 189.

Anton Piller orders in particular may prove useful where confidential information is concerned: see Dean 2002, 470–99. Note that an injunction which is designed to protect confidentiality may cover much more than use or disclosure of the confidential information itself. For instance, a defendant may even be restrained from making use of non-confidential material, if that use would have the practical effect of destroying the confidentiality of the plaintiff’s information: see eg Falconer v Australian Broadcasting Corp (1991) 22 IPR 205. See also the ‘robust’ order made in Wilson Parking Australia 1992 Pty Ltd v Rush [2008] FCA 1601. See eg Attorney-General (UK) v Guardian Newspapers Ltd [1987] 1 WLR 1248; Westpac Banking Corp v John Fairfax Group Pty Ltd (1991) 19 IPR 513. See eg Concrete Mining Structures Pty Ltd v Cellcrete Australia Pty Ltd [2015] FCA 888. See eg Concept Television Productions Pty Ltd v Australian Broadcasting Corp (1988) 12 IPR 129. Potential damage to third parties may also be relevant: see eg Sports Data Pty Ltd v Prozone Sports Australia Pty Ltd (2014) 107 IPR 1. See eg Coco v A N Clark (Engineers) Ltd [1969] RPC 41. See eg ANI Corp Ltd v Celtite Australia Pty Ltd (1990) 19 IPR 506; Duthie v Nixon (2015) 47 VR 355. See eg Lion Laboratories Ltd v Evans [1984] 2 All ER 417. See eg Woodward v Hutchins [1977] 2 All ER 751. The courts will generally exercise a discretion not to restrain the publication of material that is alleged to be defamatory, where the defendant intends to plead justification: see Australian Broadcasting Corp v O’Neill (2006) 227 CLR 57. See eg Interpersonnel Pty Ltd v Reynolds (1994) 55 IR 357. See eg Slevin v Associated Insurance Brokers of Australia (Qld) Pty Ltd [1996] AILR ¶9-049. See generally Gronow 1995. [1967] 2 All ER 415. See eg Nichrotherm Electrical Co Ltd v Percy [1956] RPC 272; National Broach & Machine Co v Churchill Gear Machines Ltd [1965] RPC 61. [1969] RPC 41 at 48–50. Ibid at 49. Ibid at 50. See AB Consolidated Ltd v Europe Strength Food Co Pty Ltd [1978] 2 NZLR 515 at 525. See eg Fractionated Cane Technology Ltd v Ruiz-Avila (1987) 8 IPR 502; (1988) 13 IPR 609. Where the approach being protected is privacy as opposed to confidentiality, however, a different approach may be warranted: see eg PJS v News Group Newspapers [2016] AC 1081. See eg Fisher-Karpark Industries Ltd v Nichols [1982] FSR 351. If the court believes there is some possibility of secrecy being lost, but is not convinced that it will, it may grant a permanent injunction but with explicit provision for a swift hearing for vacation of the order in the event of publication: see eg G v Day [1982] 1 NSWLR 24 at 41. [1986] 1 All ER 91 at 95. See also Aquaculture Corp v New Zealand Green Mussel Co Ltd (No 2) (1986) 10 IPR 319; Maggbury Pty Ltd v Hafele Australia Pty Ltd (2001) 210 CLR 181 at 210,

190.

191. 192. 193. 194. 195. 196. 197. 198. 199. 200. 201. 202. 203. 204.

205. 206. 207. 208. 209. 210.

218–21; Wilson v Ferguson [2015] WASC 15. See eg Concept Television Productions Pty Ltd v Australian Broadcasting Corp (1988) 12 IPR 129; Freedom Motors Australia Pty Ltd v Vaupotic [2003] NSWSC 579; and see also McLachlan Consultants Pty Ltd v Boswell (1988) 30 IR 417. Cf AttorneyGeneral (UK) v Guardian Newspapers Ltd (No 2) [1988] 3 WLR 776, the unusual context of which is explained in Stewart, Griffith & Bannister 2010, [4.41]. Cf Corrs Pavey Whiting & Byrne v Collector of Customs (Vic) (1987) 74 ALR 428 at 451; Sullivan v Sclanders (2000) 77 SASR 419. See eg Hubbard v Vosper [1972] 2 QB 84 at 101; Church of Scientology of California v Kaufman [1973] RPC 635. Cf Aquaculture Corp v New Zealand Green Mussel Co Ltd (1985) 5 IPR 353 at 385–6. Cf Argyll v Argyll [1967] 1 Ch 302 at 330–2, where the plaintiff’s disclosure of the defendant’s personal affairs was considered to be ‘of an altogether different order of perfidy’ to the defendant’s behaviour in threatening to reveal marital confidences. Talbot v General Television Corp [1980] VR 224 at 240–1; Castrol Australia Pty Ltd v Emtech Associates Pty Ltd (1980) 33 ALR 31 at 57–8. See eg Sports Data Pty Ltd v Prozone Sports Australia Pty Ltd (2014) 107 IPR 1. See eg Labelmakers Group Pty Ltd v LL Force Pty Ltd (No 2) [2012] FCA 512. See eg Franklin v Giddins [1978] Qd R 72; AG Australia Holdings Ltd v Burton (2002) 58 IPR 327. See eg Ormonoids Roofing & Asphalts Ltd v Bitumenoids Ltd (1930) 31 SR (NSW) 347. See eg Optus Networks Pty Ltd v Telstra Corp Ltd (2010) 265 ALR 281; and see also Gronow 1996, 219–37. Australian Medic-Care Co Ltd v Hamilton Pharmaceutical Pty Ltd (2009) 261 ALR 501 at [674]. See eg Fortuity Pty Ltd v Barcza (1995) 32 IPR 517. Peter Pan Manufacturing Corp v Corsets Silhouette Ltd [1963] 3 All ER 402; AB Consolidated Ltd v Europe Strength Food Co Pty Ltd [1978] 2 NZLR 515. See eg Vasco Investment Managers Ltd v Morgan Stanley Australia Ltd (2014) 108 IPR 52. See eg Nexus Adhesives Pty Ltd v RLA Polymers Pty Ltd (2012) 97 IPR 160, where the account was limited to the five-and-a-half-month period that the breach of confidence was estimated to have saved the defendants in developing their own product. Aquaculture Corp v New Zealand Green Mussel Co Ltd (No 2) (1986) 10 IPR 319 at 332. See eg Aquaculture Corp v New Zealand Green Mussel Co Ltd (No 2) (1986) 10 IPR 319. The innocence of the defendant is often assumed to be the reason for the refusal to grant an account in Seager v Copydex Ltd [1967] 2 All ER 415. Cf Halliday & Nicholas Insurance Brokers Pty Ltd v Corsiatto [2001] NSWCA 188. See eg Lifeplan Australia Friendly Society Ltd v Ancient Order of Foresters in Victoria Friendly Society Ltd [2017] FCAFC 74. See eg Attorney-General (UK) v Guardian Newspapers Ltd (No 2) [1988] 3 WLR 776. Ibid at 788. Cf s 93(1) of the Privacy Act 1988 (Cth), which makes it clear that damages may be claimed for any breach of confidence committed by a Commonwealth agency or officer, or in breach of ACT law, in relation to personal information.

211. 212.

213.

214. 215. 216. 217. 218. 219. 220. 221.

222. 223. 224. 225.

226. 227. 228. 229.

See eg Jackson v Royal Bank of Scotland plc [2005] 1 WLR 377. The defendant in such cases is usually a third party who has induced someone else’s breach of confidence: see 4.16. But cf Indata Equipment Supplies Ltd v ACL Ltd [1998] FSR 248, where the defendant was a confidant whose ‘ruthless’ breach of confidence had intentionally inflicted loss on the confider and hence was said to be liable in the tort of unlawful interference as well as under the equitable doctrine: see 2.7. See Supreme Court Act 1970 (NSW) s 68; Supreme Court Act 1986 (Vic) s 38; Supreme Court Act 1935 (WA) s 25(10); Supreme Court Act 1935 (SA) s 30; Supreme Court Civil Procedure Act 1932 (Tas) s 11(13). These provisions are based upon s 2 of the Chancery Amendment Act 1858 (UK), otherwise known as ‘Lord Cairns’ Act’. As to the position in Queensland, see Conroy v Lowndes [1958] Qd R 375 at 383–4. See eg Talbot v General Television Corp Pty Ltd [1980] VR 224; Johns v Australian Securities Commission (1993) 178 CLR 408 at 429. See Concept Television Productions Pty Ltd v Australian Broadcasting Corp (1988) 12 IPR 129; Heydon et al 2015, 1184–5. (2008) 79 IPR 489. See eg Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) 65 RPC 203. See Stuckey-Clarke 1992, 69; Gronow 1994. Talbot v General Television Corp Pty Ltd [1980] VR 224; Titan Group Pty Ltd v Steriline Manufacturing Pty Ltd (1990) 19 IPR 353; Darvall McCutcheon v H K Frost Holdings Pty Ltd (2002) 4 VR 570 at 588–9. See Streetscape Projects (Australia) Pty Ltd v City of Sydney (2013) 85 NSWLR 196 at [187]. See eg Seager v Copydex Ltd (No 2) [1969] 2 All ER 718; Interfirm Comparison (Australia) Pty Ltd v Law Society of NSW (1975) 5 ALR 527; 6 ALR 445. In Seager Lord Denning MR suggested (at 720) that, after paying the damages, the information would, by analogy with an action for conversion, ‘belong’ to the defendant. However, it is difficult to see how this could be so. See also Edelman 2000, suggesting that an award of this kind represents ‘restitutionary’ rather than ‘compensatory’ damages, in that it is measured by the market value of the benefit transferred to the defendant, rather than the plaintiff’s loss, a view supported by the approach taken in Streetscape Projects (Australia) Pty Ltd v City of Sydney (2013) 85 NSWLR 196. See eg Talbot v General Television Corp Pty Ltd [1980] VR 224. See eg Aquaculture Corp v New Zealand Green Mussel Co Ltd (No 2) (1986) 10 IPR 319. Cf Fortuity Pty Ltd v Barcza (1995) 32 IPR 517. (2008) 79 IPR 489. [2015] WASC 15. It was held, on the authority of Giller, that compensation for noneconomic loss was available even though the plaintiff’s claim was brought purely in equity, rather than under the Western Australian ‘Lord Cairns Act’ provision: ibid at [74]–[83]. See eg Skids Programme Management Ltd v McNeill (2012) 98 IPR 324. Harris v Digital Pulse Pty Ltd (2003) 56 NSWLR 298. As to the relationship between obligations of confidence and fiduciary obligations, see 4.32. (2008) 79 IPR 489 at [157]. See Goff & Jones 2007, [34-022].

230.

231.

232. 233. 234. 235.

236. 237. 238. 239. 240. 241.

242. 243. 244.

Although damages have sometimes been assessed in such a way as to make them look very much like a quantum meruit award: see eg Interfirm Comparison (Australia) Pty Ltd v Law Society of NSW (1975) 5 ALR 527; 6 ALR 445. A quantum meruit claim did succeed in Vasco Investment Managers Ltd v Morgan Stanley Australia Ltd (2014) 108 IPR 52, although this was for the value of work done by the plaintiff rather than of the information found to have been misused by the defendant. See eg Heydon et al 2015, 1186; Dal Pont 2015, 223–5; Gronow 1996, 237–64; though cf Cope 1992, 153 and see generally Conaglen 2008. As to the difficulties of determining how far such a trust should extend, see Hospital Products Ltd v United States Surgical Corp (1984) 156 CLR 41 at 110–16; Schindler Lifts Australia Pty Ltd v Debelak (1989) 15 IPR 129 at 155–6; Polwood Pty Ltd v Foxworth Pty Ltd (2008) 75 IPR 1. See eg Surveys & Mining Ltd v Morrison [1969] Qd R 470 at 473; and see Bayliss 2002; Dal Pont 2002; Flannigan 2008. See eg Attorney-General (UK) v Heinemann Publishers Australia Pty Ltd (1987) 75 ALR 353 at 456. See Smith Kline & French Laboratories (Australia) Ltd v Secretary, Department of Community Services and Health (1990) 17 IPR 545 at 559; Austin 1987, 142–3. This is especially true in relation to employees: see University of Nottingham v Fishel [2000] ICR 1462 at 1493; Bayley & Associates Pty Ltd v DBR Australia Pty Ltd [2013] FCA 1341 at [230]–[237]. Stewart et al 2016, 504–5. Nevertheless, courts routinely grant proprietary remedies against employees who misuse their employer’s information, on the basis that the duty breached is fiduciary in nature: see eg Timber Engineering Co Pty Ltd v Anderson [1980] 2 NSWLR 488; Warman International Ltd v Dwyer (1995) 182 CLR 545. (1989) 61 DLR (4th) 14. Cf Cadbury Schweppes Inc v FBI Foods Ltd (1999) 167 DLR (4th) 577. Hospital Products Ltd v United States Surgical Corp (1984) 156 CLR 41 at 125. (1874) LR 9 Ch App 244 at 252. The first limb involves the receipt of trust property. Confidential information is apparently not to be treated as ‘property’ for the purpose of this rule: Farah Constructions Pty Ltd v Say-Dee Pty Ltd (2007) 230 CLR 89 at [118]. Faccenda Chicken Ltd v Fowler [1986] 1 All ER 617 at 619. See also Riteway Express Pty Ltd v Clayton (1987) 10 NSWLR 238 at 240. See also s 182, prohibiting employees, directors and officers from improperly using their position for similar purposes. These sections are ‘civil penalty provisions’ (see s 1317E), which expose a contravener to the imposition of a pecuniary penalty (s 1317G) or a compensation order in favour of the corporation (s 1317H); and see eg VFlow Pty Ltd v Holyoake Industries (Vic) Pty Ltd (2013) 296 ALR 418. Note also the criminal offence established by s 184 for dishonest use of position or information. See eg Del Casale v Artedomus (Aust) Pty Ltd (2007) 73 IPR 326; Futuretronics.com.au Pty Ltd v Graphix Labels Pty Ltd (2009) 81 IPR 1. See generally Austin & Ramsay 2015, 601–5. Blyth Chemicals Ltd v Bushnell (1933) 49 CLR 66 at 81–2; Concut Pty Ltd v Worrell (2000) 176 ALR 693 at 700, 704, 706. See generally McCallum & Stewart 1999; Frazer 2015. Cf Gooley v Westpac Banking Corp (1995) 129 ALR 628, where it was held that the disclosure in question was in the employer’s interests rather than against them.

245. 246.

247.

248. 249. 250. 251. 252. 253. 254. 255. 256.

257. 258. 259. 260. 261. 262.

See eg Robb v Green [1895] 2 QB 315; N P Generations Pty Ltd v Feneley (2001) 80 SASR 151. See eg Independent Management Resources Pty Ltd v Brown [1987] VR 605; SWM Financial Services Pty Ltd v Lloyd [2011] NSWSC 1108; Volunteer Eco Students Abroad Pty Ltd v Reach Out Volunteers Pty Ltd (2013) 102 IPR 161; and see also Blackmagic Design Pty Ltd v Overliese (2011) 191 FCR 1. See eg Angus & Coote Pty Ltd v Render (1989) 16 IPR 387; Deeson Heavy Haulage Pty Ltd v Cox (2009) 82 IPR 521; Commercial & Accounting Services (Camden) Pty Ltd v Cummins (2011) 207 IR 351; Lifeplan Australia Friendly Society Ltd v Woff (2016) 259 IR 384. This attitude has been adopted even in relation to employees on ‘garden leave’ (that is, excused from performing work during their notice period, but still technically employed): see eg SAI Global Property Division Pty Ltd v Johnstone (2016) 122 IPR 210. See Associated Dominion Assurance Society Pty Ltd v Andrew (1949) 49 SR (NSW) 351 at 353–4, 355. See generally Stewart 2015, ch 17. Where confidential information is disclosed without justification, by contrast, this will generally be treated as a valid reason for dismissal: see eg Ziogas v Telstra Corp Ltd [2010] FWAFB 2664. For an international perspective on whistleblower protection, see Brown et al 2014. See eg Public Interest Disclosure Act 2013 (Cth); Public Interest Disclosure Act 2010 (Qld); Jones v University of Canberra (2016) 311 FLR 1. See also Brown & Latimer 2008. As to the effectiveness of such protections, see Lombard & Brand 2014. See Fair Work (Registered Organisations) Amendment Act 2016 Sch 2 cll 230A–231. Chau 2017. For previous discussion of this idea, see Brand et al 2013. See eg Metrans Pty Ltd v Courtney-Smith (1983) 1 IPR 185; Southern Cross Financial Group (Newcastle) Pty Ltd v Rodrigues (2005) 66 IPR 166. As to whether this duty can also be regarded as resting on an implied contractual obligation, see the inconclusive discussion in Del Casale v Artedomus (Aust) Pty Ltd (2007) 73 IPR 326 at [34]–[35], [76]–[100], [142]–[145]. Cf Prestige Lifting Services Pty Ltd v Williams (2015) 333 ALR 674 at [196]–[200], where the duties of fidelity and confidentiality appear to be (wrongly) treated as coterminous. Although it is not clear from the decision, this seems in any event to have been a case where information was unlawfully removed before the relevant employment terminated. See eg Secton Pty Ltd v Delawood (1991) 21 IPR 136; Dais Studio Pty Ltd v Bullet Creative Pty Ltd (2007) 74 IPR 512. [1986] 1 All ER 617 at 625. See eg Wright v Gasweld Pty Ltd (1991) 22 NSWLR 317 at 333–4; and see Stewart 1992, 6–10. Cf Del Casale v Artedomus (Aust) Pty Ltd (2007) 73 IPR 326 at [128]– [129]. See eg Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37 at 49–50; Nexus Adhesives Pty Ltd v RLA Polymers Pty Ltd (2012) 97 IPR 160; LGS (NSW) Pty Ltd v Barbagallo (2012) 99 IPR 238. See Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37 at 46; IIR Pty Ltd v Buchman [1989] ATPR ¶40-955 at 50,426–8; Lansing Linde Ltd v Kerr [1991] 1 WLR 251 at 260, 270. Secton Pty Ltd v Delawood (1991) 21 IPR 136; Liberty Financial Pty Ltd v Scott (No 4) (2005) 11 VR 629; GlaxoSmithKline Australia Pty Ltd v Ritchie (2008) 77 IPR

263. 264.

265. 266. 267. 268. 269. 270. 271. 272.

273.

274. 275. 276. 277. 278. 279. 280.

306. Universal Thermosensors Ltd v Hibben [1992] 3 All ER 257. Cf Roger Bullivant Ltd v Ellis [1987] FSR 172. Ormonoid Roofing and Asphalts Ltd v Bitumenoids Ltd (1930) 31 SR (NSW) 347 at 358–9; Printers and Finishers Ltd v Holloway [1964] 3 All ER 731 at 735–6; and see eg Del Casale v Artedomus (Aust) Pty Ltd (2007) 73 IPR 326; GlaxoSmithKline Australia Pty Ltd v Ritchie (2008) 77 IPR 306. Note, however, the suggestion in Del Casale at [47] that ex-employees might legitimately be restrained from disclosing such information to others, even if they are free to use it themselves. See eg Nexus Adhesives Pty Ltd v RLA Polymers Pty Ltd (2012) 97 IPR 160. See generally Heydon 2008, chs 4–7; Jackson 2014; Stewart 1997; Arup et al 2013; Dent 2014; Chia & Ramsay 2016. See eg Printers and Finishers Ltd v Holloway [1964] 3 All ER 731 at 736; Rentokil Pty Ltd v Lee (1995) 66 SASR 301 at 340. For critical analysis of the use of such covenants, see Riley 2005; Arup 2012; Hyde 2012; Dent 2013. See eg Pioneer Concrete Services Ltd v Galli [1985] VR 675; Dais Studio Pty Ltd v Bullet Creative Pty Ltd (2007) 74 IPR 512. Cf Wright v Gasweld Pty Ltd (1991) 22 NSWLR 317. Note that such a commitment may be unenforceable by an employer who has wrongfully repudiated the contract of employment: see Kaufman v McGillicuddy (1914) 19 CLR 1; Crowe Horwath (Aust) Pty Ltd v Loone [2017] VSCA 181. See van Caenegem 2013; Hyde & Menegatti 2015. See eg Hyde 2003; and see further the empirical studies cited by Hyde & Menegatti 2015: 216–8. Note that the restrictive practices provisions in Pt IV of the Competition and Consumer Act 2010 (Cth) are specifically excluded from applying to employment contracts: s 51(2)(a), (b); see NCC 1999, 73–96, recommending the retention of this exemption. The exemption did not attract any specific comment in the 2015 Competition Policy Review (Harper et al 2015). Herbert Morris Ltd v Saxelby [1916] AC 688; Lindner v Murdock’s Garage (1950) 83 CLR 628; and see eg Brightman v Lamson Paragon Ltd (1914) 18 CLR 331; Rentokil Pty Ltd v Lee (1995) 66 SASR 301; Miles v Genesys Wealth Advisers Ltd [2009] NSWCA 25; Jardim v Metcash Ltd (2011) 285 ALR 677. An employer may also seek to prevent solicitation of established customers by an employee who has had personal contact with them, and possibly also the recruitment of co-workers: see Cactus Imaging Pty Ltd v Peters (2006) 71 NSWLR 9. [1965] 1 QB 623. As to the impact of the internet, which now allows products to be marketed and sold into a much wider range of markets than at the time this case was decided, see Thorpe 2015. See also Lindner v Murdock’s Garage (1950) 83 CLR 628. See eg Orton v Melman [1981] 1 NSWLR 583; Woolworths Ltd v Olson [2004] NSWCA 372. See eg Hanna v OAMPS Insurance Brokers Ltd (2010) 202 IR 420. As to the limits of what is permissible by way of severance, see eg Just Group Ltd v Peck [2016] VSCA 334. See eg IceTV Pty Ltd v Ross [2007] NSWSC 635. See eg McLachlan Consultants Pty Ltd v Boswell (1988) 30 IR 417.

281.

282.

283. 284. 285.

286.

287. 288. 289. 290.

291.

See eg Seven Network (Operations) Ltd v Warburton (No 2) (2011) 206 IR 450. As to whether the springboard doctrine (see 4.8) may be used to extend an injunction beyond the period of an agreed restraint, see Jardim v Metcash Ltd (2011) 285 ALR 677. See eg Wilson HTM Investment Group Ltd v Pagliaro (2012) 226 IR 75. In some cases the restraint itself may contain a ‘liquidated damages’ provision that stipulates what compensation must be paid for certain types of breach: see eg Birdanco Nominees Pty Ltd v Money (2012) 36 VR 341. See eg Austen v Civil Aviation Authority (1994) 33 ALD 429; Allen v Department of Family and Community Services (2000) 59 ALD 289. But cf ALRC 2008: see 3.11. See generally Cane & McDonald 2012, ch 10; Bannister 2014; Paterson 2015. As to the impact on these laws of the implied constitutional protection for freedom of political communication, see Jolly 2000. Freedom of Information Act 1991 (SA) Sch 1 cl 7; Right to Information Act 2009 (Tas) ss 37–38; Freedom of Information Act 1982 (Vic) s 34; Freedom of Information Act 1992 (WA) Sch 1 cl 4. As to the meaning of ‘trade secrets’ in this context, see Searle Australia Pty Ltd v Public Interest Advocacy Centre (1992) 108 ALR 163; Secretary, Department of Employment, Workplace Relations & Small Business v The Staff Development & Training Centre Pty Ltd (2001) 114 FCR 301. Under the Right to Information Act 2009 (Qld), the disclosure of a trade secret or other commercially valuable information is treated as a ‘factor’ that favours nondisclosure in the public interest: Sch 4 Pt 3 s 15; Sch 4 Pt 4 s 7. Section 14 of the Government Information (Public Access) Act 2009 (NSW) simply states that there is a ‘public interest consideration’ against any disclosure that would ‘diminish the competitive commercial value of any information to any person (Table, item 4(c)). The Freedom of Information Act 2016 (ACT) takes a similar approach to disclosures that would ‘prejudice trade secrets, business affairs or research’ (Sch 2 s 2.2(a)(xi)). (1987) 74 ALR 428. Note that this exception is inapplicable to information generated within an agency for internal purposes, unless the information is the subject of a duty of confidence owed to someone outside the government: s 45(2). See Re Kamminga and Australian National University (1992) 26 ALD 585. As to the difficulties for agencies in interpreting and applying s 45, see Paterson 2015, 444. Cf Minister for Immigration and Citizenship v Kumar (2009) 238 CLR 448, interpreting a similar formula (part of the definition of ‘non-disclosable information’ in s 5(1) of the Migration Act 1958) as excluding any reference to the ‘iniquity’ rule or other exceptions to confidentiality. As the High Court stressed, however, this was in the context of a regime whose clear purpose was to protect information supplied to the Migration Review Tribunal on a confidential basis from having to be disclosed. The applicant here was endeavouring to use his own alleged misconduct as a basis for identifying the person who had revealed that misconduct to the tribunal, by pleading that it could not be a breach of any duty of confidence to reveal that information. The court considered that the Act could not have been intended to have that effect, especially as it might dissuade others from providing information to the tribunal. Government Information (Public Access) Act 2009 (NSW) s 14 (Table, item 1(g)); Freedom of Information Act 1991 (SA) Sch 1 cl 13; Freedom of Information Act 1992 (WA) Sch 1 cl 8. The Western Australian provision seems clearest on this point,

292.

293. 294.

295. 296.

297. 298. 299.

300.

speaking of disclosure which ‘would be a breach of confidence for which a legal remedy could be obtained’: see BGC (Australia) Pty Ltd v Fremantle Port Authority (2003) 28 WAR 187. Some of these statutes also exempt ‘information obtained in confidence’ whose future supply might be prejudiced by disclosure. Right to Information Act 2009 (Tas) s 39; Freedom of Information Act 1982 (Vic) s 35. Note, however, that there is a further requirement: either that the information, if generated within the agency, would be exempt, or that disclosure would be against the public interest by impairing the agency’s ability to obtain similar information in the future. As to the latter, see eg Medical Practitioners Board of Victoria v Sifredi [2000] VSC 33. See Ryder v Booth [1985] VR 869 at 878, 883. Right to Information Act 2009 (Qld) Sch 4 Pt 4 s 8. Again, it must also be shown that disclosure would impair the agency’s ability to obtain future information. See also Freedom of Information Act 2016 (ACT) Sch 2 s 2.2(a)(xii), which makes prejudice to an agency’s ‘ability to obtain confidential information’ a factor militating against disclosure, without referring either to ‘breach of confidence’ or information having been ‘communicated in confidence’. (1980) 147 CLR 39 at 51–2. See also Minister for Immigration and Citizenship v Kumar (2009) 238 CLR 448 at [19]–[21]. See eg Director-General of Education v Public Service Association of NSW (1984) 79 FLR 15; Minister for Mineral Resources v Newcastle Newspapers Pty Ltd (1997) 40 IPR 403. See also Stewart, Griffith & Bannister 2010, [4.41], for a discussion of the various cases in which the British Government sought to suppress publication of the book Spycatcher, the memoirs of a former member of the security services. (1995) 183 CLR 10. Ibid at 32, quoting Finn 1984, 505. Cf British Steel Corp v Granada Television Ltd [1981] AC 1096. Attorney-General (UK) v Heinemann Publishers Australia Pty Ltd (1987) 75 ALR 353 at 364–5. Given his comments in Esso, it is not clear that Mason CJ would have agreed with this view. As to the potential difficulty in distinguishing between governmental and trading activities, see Secretary, Department of Employment, Workplace Relations & Small Business v The Staff Development & Training Centre Pty Ltd (2001) 114 FCR 301; and see also Corcoran & MacPherson 2000. See eg Johns v Australian Securities Commission (1993) 178 CLR 408 (see 4.10), where despite acknowledging that the ASC was under a duty of confidence in relation to information compulsorily obtained from the plaintiff, the High Court made no mention of any public interest hurdle. But cf Coulthard v South Australia (1995) 63 SASR 531; Deputy Commissioner of Taxation v Rettke (1995) 31 IPR 457.

[page 133]

PART 3 Copyright, Designs and Related Rights

[page 135]

CHAPTER 5 Copyright: Basic Concepts WHAT DOES COPYRIGHT PROTECT? 5.1 The basic principle behind copyright protection is the concept that an author (or artist, musician, playwright or film-maker) should have the right to exploit their work through reproduction and/or public dissemination, without others being allowed to copy that creative output. How far this concept is taken within each legal system may vary considerably, although developments at an international level are leading to a greater degree of similarity within different countries. In Australian law, copyright has been seen very much as an economic right, focusing on the protection of commercial activities designed to exploit works for profit.1 As such, publishers and other commercial enterprises are as much the beneficiaries of the copyright system as the authors themselves — perhaps even more so. Throughout the twentieth century the Australian copyright tradition could be contrasted with European systems, which have typically protected not only the economic interests of authors, but also their ‘moral rights’. These rights give authors various controls over their work, even against the publishers and others who are responsible for commercially exploiting that work. Moral rights were introduced to Australia in December 2000, with a scheme allowing for the right of attribution (to be named as author or creator) and the right of integrity (to prevent the alteration or other treatment of work in any way that affects the author’s reputation).2 More is said of moral rights in Chapter 9, but for now it may be noted that the failure of

[page 136] Australian law to protect such interests in the past may be traced to the way in which copyright developed in England.3

HISTORY AND DEVELOPMENT OF COPYRIGHT LAW Development of English copyright law: the Stationers’ monopoly 5.2 The first protection in the nature of copyright in England was the simple right to prevent the copying of books by unauthorised persons. Prior to the Statute of Anne in 1709, the Stationers’ Company had secured a monopoly over the printing of books. This guild of illuminators, bookbinders and booksellers had come to control book production following the introduction of the printing press into England in the second half of the fifteenth century. Under successive Tudor and Stuart monarchs, it also came to be licensed to control the importation and printing of books as a censorship measure. The protection against unauthorised reproduction or importation of foreign books suited the Stationers’ Company’s economic interests, while the monarchy was able to prevent the dissemination of unsuitable material to the populace. Henry VIII was particularly concerned to prevent that ‘most damnable of Heretykes’ — Martin Luther — from ‘Perverting Christes Relygion’. Seeking to control the dissemination of heretical and seditious literature but still profit from the burgeoning printing trade, Tudor monarchs aligned themselves with publishers. In exchange for an agreement to enforce the censorship laws, the government granted the Stationers a monopoly right to print, publish and sell works — a copyright. The copyright was limited to members of the guild, so that only registered members could print books. Once a publisher entered the title of a work, their name and the date of publication into the company register, they obtained a perpetual copyright in it. With what was essentially an economic right designed to protect the investment from

competition, the publisher could also trade in rights.

The Statute of Anne 5.3 In the aftermath of the Glorious Revolution, the Stationers’ censorship role diminished considerably. Demand grew for a general measure to protect the interests of authors, though the publishers remained in the forefront of those who sought that protection and stood to benefit from it. It was this identification of the interests of authors with those of publishers which helps to explain how copyright came to be viewed in such rigidly economic terms. The result was the Statute of Anne 1709, which described itself as an ‘Act for the Encouragement of Learning and for securing the Property of Copies of Books to the Rightful Owners Thereof’. It provided the author of a published book with a right to prevent unauthorised copying for up to 28 years;4 significantly, this right could be assigned to a publisher. The origins and history of copyright have been studied in some detail and academic writers have differed on what interests were intended to be protected and whose interests have, [page 137] or should have, prevailed.5 The ‘social contract’ envisaged by the Statute of Anne 1709 has been said by French CJ, Crennan and Kiefel JJ in the High Court to underlie current Australian copyright law. Their Honours described that contract in the following terms: ‘that an author [can] obtain a monopoly, limited in time, in return for making a work available to the reading public’.6

Demise of common law copyright 5.4 Although the statute thoroughly dented the Stationers’ copyright, the Stationers retained copyright for a further 21 years in respect of books already published when the statute was passed. Moreover, the procedure stipulated by the statute greatly resembled the former system. Nevertheless, the guild, perceiving that it had lost its statutory monopoly, attempted to claim for its members a

perpetual copyright at common law, independent of the Act. The issue was resolved in 1774 when the House of Lords decided that if there ever had been a common law copyright, the Statute of Anne now governed the law on that topic, at least after publication of the book.7 On the other hand, it was assumed that authors had absolute sway over use of their work before publication, so that the idea of a non-statutory copyright in unpublished work persisted for some time. Gradually, however, this notion became submerged in the general protection given by equity to confidential information.8 The distinction between published and unpublished works is now no longer relevant, except with respect to the period of copyright protection for unpublished works before 1 January 2019,9 but the criteria for subsistence of copyright are the same. These days copyright is entirely a creature of statute,10 with the only exception being copyright which emanates from a prerogative right of the Crown.11

Expansion of statutory protection 5.5 The method used in the Statute of Anne to provide protection for the economic interests of authors and publishers of books proved to be an adaptable model. A series of copyright statutes was passed to protect the interests of authors in other areas, including the artistic, dramatic and musical works recognised by the modern [page 138] law. As new subject matters were recognised, so new forms of exclusive rights were required to cover the ways in which that subject matter could be exploited. Authors of musical or dramatic works needed to be able to control not merely the printing and distribution of copies of sheet music and play scripts, but also the live performance of their works. It was not until 1911, however, that an ‘all-embracing’12 copyright statute was passed in the United Kingdom. This was the Copyright Act 1911, which repealed the piecemeal legislation enacted in the 200 years since the Statute of

Anne and was designed to take account of the Berne Convention, an international agreement by which reciprocal and reasonably uniform protection is to be afforded to authors who are nationals of any country which is a signatory to the agreement: see 21.27ff. In this new Act the nature of subject matters was taken to a higher level of abstraction and the various exclusive rights brought together. New developments could be incorporated either by recognising a new subject matter like ‘cinematographic film’, or by introducing a new exclusive right such as the right to control broadcasting. This combination of new subject matters and tailored exclusive rights had now made copyright a very flexible and multi-faceted legal instrument.

Australian legislation 5.6 The Australian colonies enacted copyright statutes during the second half of the nineteenth century.13 These were subsumed by the Copyright Act 1905 (Cth), and then by the Copyright Act 1912 (Cth). This latter statute did no more than declare the British Act of 1911 to be in force in this country.14 Australian copyright law is now governed by the Copyright Act 1968 (Cth), which took effect on 1 May 1969.15 The 1968 Act is still derived mainly from the law of the United Kingdom, being based upon the recommendations of the 1959 Spicer Report16 and modelled on the Copyright Act 1956 (UK). Significant differences do exist, however,17 and in 1989 amendments to the Australian Act were passed in an attempt to take account of new types of subject matter and methods of reproduction, as well as the requirements of libraries and educational institutions. Major changes followed in 2000 with the ‘digital agenda’ amendments, discussed further below. The need for an entirely new Copyright Act was discussed in the 1990s in response to the unprecedented pace of technological development. The many amendments to the current legislation have resulted in complex numbering and a feeling that the Act is unable to be understood by copyright creators and users. These concerns,

[page 139] and the realisation that the present separate subject matters may be unnecessarily unwieldy, prompted the federal government in 1995 to ask the Copyright Law Review Committee (CLRC) to consider the simplification of copyright law.18 The CLRC recommendations concerning categorisation of subject matter and exclusive rights were never implemented and further amendments, particularly the moral rights provisions added into Pt IX, have made the Act even more cumbersome. Some reform debates seem to re-emerge from time to time. The CLRC simplification review also made recommendations concerning the exceptions to the exclusive rights of copyright owners that allow certain free uses of protected material in the public interest.19 The question of exceptions to infringement was again considered in 2013, this time by the Australian Law Reform Commission.20

Convergence and digital technology 5.7 Copyright law, which originally arose in the wake of the invention of the printing press, has regularly had to adapt over the past century or so to new technologies for the performance, dissemination and/or copying of works, whether it be the phonogram, film, radio, television or the photocopier. In recent years the major challenge has come from the development of digital technology and from the accompanying blurring of the boundaries between broadcasting, telecommunication and computing services, a phenomenon which has been termed ‘convergence’. Forms of communication previously dependent on distinct technologies, such as broadcast spectrum, telephone, cable, microwave, satellite and print media, can now all be delivered through the internet. As well as convergence of industries and delivery systems, there has also been convergence of products. The digital era ushered in the development of multimedia, which allows voice, data, text, image, sound and vision to be carried on the same system. Coupled with developments in communication technology, it is now possible for almost instantaneous exchange of information to occur on a worldwide

basis. That information, because it can be stored so readily and in such quantities, has far-reaching implications for privacy, international relations, national security and defence. We have moved from the industrial era into the digital era, where vast quantities of information can be stored, manipulated and conveyed with great ease. This has resulted in a different sort of workforce and has implications for most aspects of our lives. 5.8 Copyright has struggled to keep pace with these developments. In 1994 the Copyright Convergence Group (CCG) was established by the Minister for Justice to examine ways of updating the Copyright Act to protect copyright materials that are increasingly channelled into the digital pathways of new communications technology. Many of the changes recommended by the CCG21 were ultimately introduced by the Copyright Amendment (Digital Agenda) Act 2000 (Cth), which [page 140] took effect in March 2001. The digital agenda amendments, among other things, extended copyright so as to confer a broad right to communicate works to the public by electronic transmission or by making them available online; sought to clarify (not always successfully) whether various dealings with material in electronic form would or would not infringe copyright; and introduced new prohibitions aimed at the circumvention of technological measures designed to protect the interests of copyright owners. The introduction of these changes saw fierce debate between lobby groups representing the interests of copyright owners (notably publishers) and copyright users (consumers, libraries, etc), and led to a number of compromises being made to secure the passage of the amendments through parliament.

International developments 5.9 The policy issues considered in Australia by the CCG also received attention at the international level, notably at WIPO’s

Diplomatic Conference on Copyright, concluded in Geneva in December 1996. The discussions were specifically directed to updating two international treaties on the protection of copyright (the Berne Convention: see 21.27) and the protection of performers and phonogram producers (the Rome Convention: see 21.30). The outcome was the two ‘internet treaties’: the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT) respectively: see 21.35–21.38. Australia played an active role in these discussions, but was slow to ratify the WCT and WPPT. A major consideration for any nation such as Australia that is a net importer of copyright material is the expense associated with significant increases in proprietary rights for activities not hitherto caught within copyright law; any extension of copyright protection is liable to adversely affect its balance of payments. Nevertheless, Australia finally acceded to the two treaties in 2007 and rights were extended. A major impetus was the bilateral Australia–United States Free Trade Agreement (AUSFTA). The amendments made by AUSFTA included the introduction of performers’ moral rights, required under the WPPT: see 9.4. Probably most controversially from a copyright perspective, the bilateral free trade agreement with the United States also extended the copyright term in Australia to life of the author plus 70 years for works (previously 50 years) and 70 years from publication (previously 50 years) for most subject matter other than works:22 see 6.58, 6.59. Copyright was but one part of a wide-ranging free trade agreement that covered issues outside intellectual property such as life insurance, foreign acquisitions and takeovers, and registration of therapeutic goods. In his second reading speech on the Bill, the Minister emphasised the trade context for the copyright reforms and listed a range of benefits it was claimed would accrue to Australian farmers, miners and other exporters.23 From the TRIPS Agreement in the 1990s to free trade agreements, [page 141]

copyright is often included in complex trade negotiations. AUSFTA is also an example of what seems to be a current trend towards negotiating trade agreements with selected trading partners rather than broad multilateral agreements: see 1.50, 21.68.

NATURE OF COPYRIGHT UNDER THE 1968 ACT Works and other subject matter 5.10 Under Australian copyright law, protection has principally been given to the traditional classes of ‘works’: literary works, dramatic works, artistic works and musical works. However, the commercial aspects of copyright protection in Australian law were emphasised by the introduction in 1968 of some new varieties of copyright, which are designed to protect the results of entrepreneurial rather than literary or artistic effort. Part IV of the Copyright Act 1968 protects four classes of ‘subject matter other than works’: films, sound recordings, television and sound broadcasts, and published editions of works. Previously there was no general protection for such subject matter, although certain sound recordings (records, perforated rolls and other contrivances) were first protected under the 1911 Act. Films or ‘cinematograph productions’ were also protected under the 1911 Act as dramatic works where an ‘original character’ was imparted to the film by the arrangement, acting form or combination of incidents represented. Under the 1968 Act a film itself has its own copyright, separate from any dramatic work on which it may be based. Material that cannot be described as one of these four types of work or that does not fall within Pt IV cannot be protected by copyright. Thus, in Computer Edge Pty Ltd v Apple Computer Inc24 the majority of the High Court refused copyright protection to computer programs which could not be classified as any ‘work’ or ‘subject matter’ then protected by copyright law, though the Act was hastily amended to bring such programs within the definition of ‘literary work’: see 6.15.

To attract copyright a work must also be expressed in a material form. The material form requirement reflects a fundamental principle of copyright law that is discussed in more detail at the beginning of the next chapter — that mere ideas or information will not be protected, unless and until expressed and preserved in some way.

Exclusive rights of the copyright owner 5.11 The right to make copies of protected subject matter belongs to the owner of the copyright, who is usually, although by no means always, the author or maker of the subject matter: see 7.2–7.6. This right, as the Copyright Act states in s 196(1), is personal property. The copyright owner has the exclusive right to do all or any of a number of things in relation to the subject matter. With respect to a literary, dramatic or musical work, copyright is defined in s 31(1)(a) as the exclusive right: (i) to reproduce the work in a material form; (ii) to publish the work; (iii) to perform the work in public; [page 142] (iv) to communicate the work to the public; (v) [repealed];25 (vi) to make an adaptation of the work; (vii) to do, in relation to a work that is an adaptation of the firstmentioned work, any of the acts specified in relation to the first-mentioned work in subparagraphs (i) to (iv), inclusive. In relation to computer programs, and any literary, musical or dramatic work reproduced in a sound recording, copyright holders have also since July 1996 had the exclusive right to enter into a commercial rental arrangement: s 31(1)(c), (d).26 Copyright in artistic works is slightly narrower, consisting of the exclusive right to do all or any of the following acts (s 31(1)(b)):

(i) to reproduce the work in a material form; (ii) to publish the work; (iii) to communicate the work to the public.27 The Pt IV copyrights are narrower than those relating to works, being mainly confined to copying of the actual subject matter, whether a film, sound recording, broadcast or published edition: ss 85–88. Commercial rental rights also apply to sound recordings. Communicating a film, sound recording or broadcast to the public is also now within the copyright owner’s exclusive domain. The scope of these exclusive rights, and of various exceptions or limitations to them (notably those imposed by the ‘fair dealing’ defences and by compulsory licensing schemes), will be referred to in greater detail in the chapters that follow.

Divisibility and exploitation of copyright 5.12 Copyright may be split up in a number of ways and the owner may license or assign any bit of it as suits. The most lucrative exploitation of copyright often comes from dealing with the material in this way. For example, a popular novel will have volume rights (to the book as a book) which may be split up as to paperback, hardcover rights and electronic publishing, possibly handled by different publishers. There will be translation rights, film rights, and dramatisation rights to have the novel reproduced as a play, opera, musical or ballet. 5.13 Splitting up copyright in this way is contemplated in s 196(2), which allows for an assignment of copyright to be ‘limited in any way’, including as to the class of acts that the owner of the copyright has the exclusive right to do. This may encompass a class of acts that is not separately specified in the Act as being comprised in the [page 143] copyright, but which falls within a class of acts that is so specified. For example, the Act does not mention ‘volume’ or ‘film’ or

‘electronic’ rights specifically. Although the Act does not give a ‘rental right’ as such to the owners of film copyright, industry practice developed a business based on the rental of videos and DVDs to Australian viewers. Other possible divisions of copyright include limiting its exercise by time and place: this means that the rights or some part thereof may be exercised only for part of the period of time for which copyright subsists, or may be limited as to a place in or part of Australia. Section 197 allows for an assignment of future copyright, so that copyright material not yet in existence may be sold before it is even created. Many authors will have such an arrangement with a publisher, or songwriters with a recording company, rather than face the prospect of hawking their work around once completed.

How to obtain copyright protection 5.14 A common misconception in Australia seems to be that an application must be made for copyright protection. However, there are no formal requirements to obtaining copyright protection, in the sense that there is no procedure for registering a copyright interest in the way that a patent, trade mark or design has to be registered in order to be protected. The United States was one of only two jurisdictions in the world (the other being Japan) where copyright protection was obtained by registration, and under the TRIPS Agreement (see 21.12ff) the registration requirement for copyright has now been phased out in those countries. For copyright to subsist in Australia, it is simply necessary for the subject matter in question to meet the criteria set down by the Copyright Act. Aside from falling within the definition of a work or Pt IV material, the subject matter must (at least in the case of a work) be original, and also be connected in some way either to Australia or to a country whose copyright laws Australia is obliged by treaty to recognise: see 6.33ff, 6.53–6.54. If these criteria are fulfilled, then the author (or others) will acquire the rights described above for a certain period of time, which may vary according to how long the author lives and whether or not the work is published: see 6.58, 6.59.

ONGOING REFORM OF COPYRIGHT LAW 5.15 To complete this introduction to the law of copyright, and before getting into the detailed treatment of copyright, mention must be made of some areas of possible future reform of copyright law. This final part of the chapter has discussed current reform issues in earlier editions, and those sections provide an interesting overview of debate on copyright reform since 1991.28 Some proposals for reform discussed in earlier editions were acted upon and now form part of the current law,29 while others [page 144] have never been implemented.30 Some reform proposals seem to have been forgotten entirely,31 while others tend to re-emerge every few years as if operating on a mysterious cycle. The parallel importation provisions have been subject to review many times over many years by the Copyright Law Review Committee (CLRC),32 Prices Surveillance Authority (PSA),33 Intellectual Property and Competition Review Committee (IPCRC),34 Competition Policy Review,35 and Productivity Commission.36 While the CLRC recommended only limited reforms, the other bodies have consistently recommended repeal. In its most recent report, the Productivity Commission has again recommended repeal of the remaining parallel import restrictions for books:37 see 8.34. There is a long tradition of intense but not always coherent38 disputes over the boundaries of copyright in many of these reform debates. One cyclical debate that is current again is exceptions to infringement, specifically a fair use defence. Arguments for a broadly based fair use exception to replace the current exceptions (see 8.39–8.42) are familiar territory for copyright law reviews. In its 1998 Simplification Review, the CLRC looked at exceptions to copyright in great detail and recommended ‘a provision akin to, but more precise than, the open-ended US “fair use” provision’.39 The proposal was for a single open-ended exception that would have

specifically referred to, but would not have been confined to, the current fair dealing provisions. In 2000, the Intellectual Property and Competition Review Committee (IPCRC)40 was not so keen about a fair use defence. When Australia introduced copyright reforms to implement the AUSFTA, including extending the copyright term, the fair use debate was revitalised. The Joint Standing Committee on Treaties recommended that Australia introduce a defence that resembled the United States’ defence of fair use.41 Ultimately, the reforms that were introduced in 200642 established new categories of exceptions, including fair dealing for [page 145] the purpose of parody and satire, but maintained the system of closed-ended exceptions.43 Since then, the debate has continued. Exceptions to copyright infringement define the scope of copyright owners’ property rights, and so major stakeholders have expressed strongly divided views during these reviews on how the exceptions are to be defined. In 2013, the Australian Law Reform Commission (ALRC) recommended the introduction of an exception for fair use,44 and the Productivity Commission supported implementation of that recommendation in 2016.45 The extension of the copyright term by the AUSFTA46 to life of the author plus 70 years for works, and 70 years from publication for most subject matter other than works, has caused particular concerns about the impact upon public access to works that are not commercially exploited, but still subject to copyright restrictions. This includes what the Productivity Commission has referred to as ‘grey literature’, which encompasses works commissioned or produced with the intention of free distribution for purposes such as to report on research, influence government policy and engage in public debate and other similar non-commercial uses.47 Another category is ‘orphaned’ or commercially unavailable works that may have once derived income for their creators and owners, but now exist in a state

of limbo. These works are still protected by copyright, but a potential user is unable to purchase or negotiate a right to use. With ‘orphaned works’, that is because the rights-holder cannot be identified. For other works, the owners may be identifiable, but they are no longer making the work available. The classic example in an older, analogue world is when a book is out of print. With digital technology, a rights-holder may not want to cover the cost of updating the work to operate with new systems, or it may simply no longer be commercially viable.48 The Productivity Commission has suggested that a broad and open-ended fair use exception would improve access to these kinds of copyright works.49 Since the last edition, the Copyright Amendment (Disability Access and Other Measures) Act 2017 (Cth) was passed. The consultation draft of the proposed Bill that was circulated to stakeholders included safe harbour provisions to give carriage service providers protection from liability for inadvertently hosting or [page 146] communicating copyright-infringing material on behalf of their users. These provisions were removed from the Bill, and the government announced that further consultations would be undertaken with stakeholders.50 The Act that was passed included the following: reformed provisions for assisting persons with a disability to implement obligations under the Marrakesh Treaty (see 21.43–21.45); simplified provisions for the preservation of material by libraries, archives and certain cultural institutions; reforms to the educational statutory licence; and harmonisation of the copyright term for published and unpublished material.

1. 2.

As to the economic case for copyright protection, see generally Landes & Posner 1989; Office of Regulation Review 1995; Richardson et al 2000; Rushton 2001. In 2007 moral rights were extended to performers, so far as the performance consists of sounds, to implement the Australia–United States Free Trade Agreement: see 9.3.

3. 4. 5. 6. 7.

8. 9. 10. 11. 12. 13. 14. 15. 16. 17. 18. 19. 20. 21. 22. 23. 24. 25.

26. 27. 28. 29.

See generally Feather 1988; Sherman & Bently 1999, 111–28. For a study of the expansion of the copyright term, see Bently 2008. For an analysis of academic use of copyright histories, see Bowrey & Fowell 2009 and, earlier, Bowrey 1996. IceTV v Nine Network Australia Pty Ltd (2009) 239 CLR 458 at 471. Donaldson v Beckett (1774) 4 Burr 2408; 98 ER 257. For analysis of the decision and the ‘myths’ that have grown up around it, see Deazley 2003. See also Deazley 2004, which challenges the established reading of copyright’s development, and Bowrey & Fowell’s 2009 analysis of Deazley’s work. See eg Prince Albert v Strange (1849) 2 De G & Sm 652; 64 ER 293; 1 Mac & G 25; 41 ER 1171. See 3.7. At the time of writing this edition the indefinite copyright protection available to a range of unpublished material was removed. See discussion of the Copyright Amendment (Disability Access and Other Measures) Act 2017 (Cth) reforms at 6.58. See Copyright Act 1968 (Cth) s 8. See ibid s 8A; Monotti 1992; and see eg Attorney-General (NSW) v Butterworth & Co (Australia) Ltd (1938) 38 SR (NSW) 195. Ricketson & Creswell 2017, [3.280]. Ibid, [3.295]. For a discussion of why Australia accepted the 1911 Act, see Burrell 2006. All references in this and the next three chapters are to this legislation, unless the contrary is indicated. As to the position of rights arising under the earlier legislation, see Copyright Act 1968 (Cth) Pt XI; and see also Ricketson & Creswell 2017, [5.240]. Spicer 1959. Especially since the enactment of the Copyright, Designs and Patents Act 1988 (UK) and subsequent standardisation of European copyright law. CLRC 1999. CLRC 1998. ALRC 2013. See further 5.15. See CCG 1994. For a detailed history of the duration of copyright in Australia from 1869 to 2014, see Bond & Greenleaf 2015. Second Reading Speech House of Representatives, 23 June 2004, 31218–19. For an assessment of the impact of AUSFTA on Australia’s copyright policy 10 years on, see Weatherall 2015a. (1986) 161 CLR 171: see 6.14. The repealed subparagraph previously referred to transmission to ‘subscribers of a diffusion service’. Together with a reference to broadcasting, it was removed as part of the digital agenda package, since the right of communication to the public now encompasses all forms of transmission: see 8.20. See Copyright (World Trade Organization Amendments) Act 1994 (Cth); see also 8.21. Here too the right of communication to the public has superseded a previous reference to inclusion in television programmes or broadcasts. See McKeough & Stewart 1991; McKeough & Stewart 1997b; McKeough, Stewart & Griffith 2004; Stewart, Griffith & Bannister 2010; Stewart et al 2014. For instance in relation to moral rights, see McKeough & Stewart 1991, [5.12]–[5.13];

30. 31. 32. 33. 34. 35. 36. 37. 38. 39. 40. 41. 42. 43. 44.

45.

46. 47. 48. 49. 50.

McKeough & Stewart 1997b, [5.12]–[5.15]; and artists’ resale rights, see McKeough, Stewart & Griffith 2004, [5.25]. For instance the Copyright Law Review Committee (CLRC) recommendations that the special Crown ownership provisions be repealed: see Stewart, Griffith & Bannister 2010, [5.15]. For example, reform of the crown ownership provisions: CLRC 2005. CLRC 1988b; CLRC 1995. PSA 1989; PSA 1990; PSA 1992. IPCRC 2000. Harper et al 2015. Productivity Commission 2009a; Productivity Commission 2016. Productivity Commission 2016, Recommendation 5.3. Weatherall 2007; Bond 2011. CLRC 1998, [6.10]. See McKeough, Stewart & Griffith 2004, [5.23]. IPCRC 2000, 15. Commonwealth Joint Standing Committee on Treaties 2004, xx. Copyright Amendment Act 2006 (Cth), after the Attorney-General’s Department fair use review: Attorney-General’s Department 2005. See Stewart, Griffith & Bannister 2010, [6.46], [8.36]. ALRC 2013, Recommendation 4.1. If not accepted, the ALRC proposed an alternative: a new fair dealing exception for a range of prescribed purposes extending beyond the current exceptions to include quotation and non-commercial private use: Recommendation 6.1. Productivity Commission 2016, Recommendation 6.1. The Productivity Commission also supported the ALRC on limitations on liability for the use of orphaned works: ALRC 2013, Recommendations 13-1, 13-2; Productivity Commission 2016, Recommendation 6.2. The government has noted Recommendation 6.1 and at the time of publication had undertaken to consult further. It supported the recommendation concerning orphaned works: Australian Government 2017, 7. See 5.9. Productivity Commission 2016, 114. Ibid, 116. Ibid, 28. Fifield 2017.

[page 147]

CHAPTER 6 Subsistence of Copyright THE IDEA/EXPRESSION SEPARATION No copyright in ideas or information 6.1 Before discussing exactly what the Copyright Act 1968 protects, it is necessary to appreciate the difference between a piece of information or an idea, and its form of expression. Copyright protection is usually said to be given for the form in which an idea is clothed, but not for information itself.1 This condition of copyright protection, that it exists not in the idea itself but in the concrete form in which it is expressed, leaving anyone free to use the basic idea, has been described as ‘probably the most difficult concept in the law of copyright’.2 If one person independently arrives at the same result as another, be it in the form of a book, play, painting, song or other expression of an idea, then there is no breach of copyright. In this way, copyright law is different from patent (or design) protection in that ‘no absolute monopoly is given to authors analogous to that conferred on inventors of patents’.3 As noted in Chapter 1, the principle that information itself is not protected unless incorporated into a special head of protected interest is fundamental to all regimes of protection with which this book deals. The closest our legal system comes to [page 148] protecting ‘pure information’ is by way of the action for breach of confidence. Typically, however, courts have been reluctant to protect

someone against the sharp practices of another, where the impugned behaviour amounted to taking information not protected in a way recognised by the law, as in the Victoria Park Racing case.4 That said, the idea/expression division has often come under strain, to the point indeed where it has been criticised for its ‘essential indeterminacy and underlying irrationality’.5 A good example of this is when protection is claimed for the effort that has gone into collecting the information in factual compilations and databases rather than for the form of expression of the work.6 Cases involving artistic works (for example, house plans and T-shirt designs) also illustrate how difficult it can be at times to clearly distinguish between artistic expression and the underlying ideas: see 6.25.

Ideas and expression, and the authorship of works 6.2 The dichotomy between an idea and its expression focuses attention upon the form of expression used by an author of a work, and indeed the need to identify an author. In Donoghue v Allied Newspapers Ltd7 the plaintiff agreed to give interviews about his racing career to a News of the World journalist. Several articles were published, with titles such as ‘Enthralling Stories of the King of Sports’. The journalist subsequently got permission from the newspaper to publish abridged versions of the interviews in another paper. Donoghue asked for damages for breach of copyright, assuming that he was the owner of copyright as the stories originated with him. However, it was held that the journalist was the author of any material in which copyright subsisted, the plaintiff having only supplied incidents in his life.8 Farwell J pointed out that there is no copyright in ideas: A person may have a brilliant idea for a story, or for a picture, or for a play, and one which appears to him to be original; but if he communicates that idea to an author or artist or a playwright, the production which is the result of the communication of the idea to the author or the artist or the playwright is the copyright of the person who has clothed the idea in form … The explanation of that is this, that in which copyright exists is the particular form of language by which the

information which is to be conveyed is conveyed … [T]he copyright exists in the particular form of language in which … the information or the idea is conveyed to those who are intended to read it or look at it.9 [page 149] Farwell J also pointed out, however, that if an author employs a writer to take down in shorthand a story which the author is composing, word for word, then that person is a ‘mere amanuensis’ and does not become the owner of the copyright.10 Section 22(2) provides that a work in the form of sounds may be reduced to material form by being embodied in an ‘article or thing’. If the skill involved in recording such material is no more than just pressing a button, then arguably that person will be regarded as a mere amanuensis and the author will be the person supplying the form of expression.11 6.3 A person who is a ‘mere scribe’ is not an author.12 Any discussion of whether a person has gone beyond being a mere scribe for the provider of ideas raises the issue of who supplies the requisite intellectual effort to make work ‘original’, a quality which is discussed further in 6.36ff. It may be that putting an idea into material form implies the exercise of that degree of original endeavour required for the subsistence of copyright protection. In Walter v Lane13 the Law Lords disagreed as to whether reporters who took down speeches in shorthand and then transcribed them to be published verbatim were mere scribes or had exercised enough effort to be the authors of copyright works. The majority decided that the latter was the case, although the Court of Appeal had dismissed the action by the newspaper for breach of their copyright, saying the reporters were not the authors.14 Cummins v Bond15 illustrates a situation where the person clothing certain communications in material form was the owner of copyright in the resulting written form, rather than the defendant who claimed he was elemental in producing the document, the

plaintiff being at best a co-author with him, or possibly a mere scribe for writings inspired by his presence. The plaintiff engaged in psychic research, acting as a spiritualist and medium at seances during which she practised automatic writing while in a trance state. The defendant was an architect who was interested in recent discoveries at the Abbey of Glastonbury and the automatic writings which related to them. Seances with the defendant in attendance resulted in ‘The Chronicle of Cleophas’, which the plaintiff wrote in her automatic writing. The nature of the writing was archaic, of the sixteenth and seventeenth centuries. Cleophas is mentioned twice in the New Testament as one of the followers of Christ. A dispute arose as to the ownership of copyright in the ‘Chronicle’, the defendant claiming that the writings were addressed to him and inspired by his presence, or that they were [page 150] not susceptible to copyright protection at all, being communicated in substance and form by a psychic agent. Eve J held that although the spirit no doubt spoke mainly Aramaic, he had selected a medium capable of translating his messages into language appropriate to a period some 16 or 17 centuries after his death. The language in which the communications were written was not so antiquated as not to be understood by excavators and others engaged in these discoveries, but not so up to date as to make the spirit appear of too modern an epoch. The communications ‘could not have reached us in this form without the active co-operation of some agent competent to translate them from the language in which they were communicated to her into something more intelligible to persons of the present day’.16 Since the court had no jurisdiction extending to the sphere in which the spirit moves, the inquiry must be confined to individuals alive at the time the work first came into existence. It would seem that authorship rested with the plaintiff, to whose gift of extremely rapid writing, coupled with a peculiar ability to reproduce in archaic English matter communicated to her in some unknown tongue, the production of these documents was owed. She was more than a mere conduit pipe

and had exercised skill in reproducing these communications. Difficult issues may arise when authors must be identified for copyright purposes among large teams of people involved in the creation of a work. In research teams, for instance in universities, being involved in experimental design, data collection and analysis may mean that researchers’ peers recognise their contribution to the published research results, but that does not necessarily make them authors for the purposes of copyright unless they contribute to the form of expression of the written paper. Equally, supervising the research work of others does not make one an author,17 nor does providing feedback and suggestions concerning another person’s work.18

When ideas and expression are inseparable 6.4 Although courts in Australia and the United Kingdom have accepted the proposition that copyright cannot be claimed in the only possible way of expressing a particular idea, the principle is not always easy to apply. An early case where the expression of an idea was too close to the idea itself to gain protection is Kenrick & Co Ltd v Lawrence & Co,19 where the publisher of a card to help illiterate voters sought protection for the sketch of a hand holding a pencil in the act of completing a cross within a square. It was held by Wills J that the copyright protection sought would protect the subject or idea rather than the expression alone, since ‘a square can only be drawn as a square, a cross can only be drawn as a cross, and for such [page 151] purposes as the plaintiff’s drawing was intended to fulfil, there are scarcely more ways than one of drawing a pencil or the hand that holds it’.20 There are contexts in which it may be more difficult to hold this particular line. Computer programs have been particularly problematic over the years given that programs are categorised as

literary works, and yet are defined in terms of bringing about a certain result: see 6.16. In Autodesk Inc v Dyason (No 2) Dawson J emphasised the fundamental principle: ‘when the expression of an idea is inseparable from its function, it forms part of the idea and is not entitled to the protection of copyright’.21 However, in Data Access Corp v Powerflex Services Pty Ltd22 Gleeson CJ, McHugh, Gummow and Hayne JJ described this as an ‘oversimplification’ when considering computer programs. There is very real potential for copyright protection of computer programs to slip over into protection of functionality.23 6.5 Tables and compilations of information, including databases, are also protected as literary works and pose similar challenges to the idea/expression dichotomy. In IceTV v Nine Network Australia the High Court emphasised that copyright does not protect expression when it is inseparable from, and dictated by, the facts being collected.24

Copyright as a right over intangible property 6.6 It is also important to highlight a distinction to which Dixon J adverted in Victoria Park Racing,25 between rights over intangible or incorporeal property and rights over goods. This is illustrated by Pacific Film Laboratories Pty Ltd v Federal Commissioner of Taxation.26 The plaintiff, a photograph processing company, objected to paying sales tax on prints processed by it and paid for by customers, arguing that there was no sale of goods (on which tax was payable) as the customers owned the negatives and the plaintiff had no general property in the prints. It was held that a distinction is to be made between copyright in the negative (owned by the customer) and property in the prints (owned by the plaintiff until sold to the customers). Property in a chattel may be in one person and copyright in another, as incorporeal property. The agreement was for the sale of a print or duplicate to the owner of copyright, who had no property in the print, viewed as a chattel, before it was delivered. The company was therefore obliged to pay sales tax on goods sold.

[page 152]

MATERIAL FORM 6.7 So far as copyright is concerned, the law will cast its protection around forms of expression that are sufficiently embodied in a material form, not, as Victoria Park Racing shows, around information or ideas per se. That material form must, furthermore, be within one of the eight categories of subject matter presently recognised under the Copyright Act: something that is either encompassed within the terms literary, dramatic, artistic or musical work, or alternatively ‘made’ into a sound recording or film or one of the other Pt IV copyrights: see 5.10. Sound and television broadcasts are the one exception to this requirement of fixation in a material form. Section 10(1) defines ‘television broadcast’ as ‘visual images broadcast by way of television, together with any sounds broadcast for reception along with those images’. ‘Sound broadcast’ is defined as ‘sounds broadcast other than as part of a television broadcast’. These provisions, introduced in 1968, would have prevented the defendants in Victoria Park Racing from intercepting and relaying a broadcast about events at the race track, but still would not confer any proprietary right in the information or events observed by Mr Angles and his co-defendants.27 It has been argued that the requirement of ‘material form’ is based on a literary model which is not appropriate for other material, and that ‘copyright is very good at fictionalising a tangible, real expression from which a right to reproduce may be determined’.28 For example, it was a pretence that the ‘author’ of a photograph created a work in material form at the moment of taking a photograph29 when that involved capturing an image on gelatin emulsion covered film and a separate process was required to stabilise the image. This ‘fictionalising’ of the point at which photographs are fixed in material form was achieved (after some struggling with the concept of ‘authorship’ of a photograph) and recognised by the courts and the Copyright Act 1968. However, with digital works it is impossible even to fictionalise a moment at which the work appears

complete.30 It is in fact the interaction between user, hardware and software that creates the expression, while simultaneously reproducing the work. Nevertheless, the law has largely developed copyright protection around the notion of a material form being given to the expression of an idea at a particular point in time.

Identifying material form 6.8 In fleshing out the concept of material form it is inevitable to refer to the concept of a ‘work’ for copyright purposes. Whereas the definitions of the subject [page 153] matter of Pt IV copyrights are found in the Copyright Act, the word ‘work’ itself is not defined, although s 10(1) informs us that a work is a ‘literary, dramatic, musical or artistic work’. One thing the Act makes clear, however, is that an idea becomes a work when it is ‘first reduced to writing or to some other material form’: s 22(1). ‘Material form’ and ‘writing’ are defined in s 10(1) as follows: … material form, in relation to a work or an adaptation of a work, includes any form (whether visible or not) of storage of the work or adaptation, or a substantial part of the work or adaptation, (whether or not the work or adaptation, or a substantial part of the work or adaptation, can be reproduced).31 writing means a mode of representing or reproducing words, figures or symbols in a visible form, and ‘written’ has a corresponding meaning. Copyright is to subsist, according to s 32(2), in published works. To have been subject to copyright before publication, the work must have taken a material form within s 22(1). If not, s 29(1)(a) provides that: … a literary, dramatic, musical or artistic work, or an edition of such a work, shall be deemed to have been published if, but

only if, reproductions of the work or edition have been supplied (whether by sale or otherwise) to the public. It would appear that the publication of a work assumes it to be in a material form. On the other hand, s 29(3) provides that publication does not take place where a work is performed, so that ephemeral expression does not count for this purpose: see also 6.55–6.56.

CATEGORIES: WORKS AND OTHER SUBJECT MATTER 6.9 As discussed above, for copyright to subsist there must be something in appropriate material form. Conversely, however, simply having some article or thing in which material is embodied does not automatically attract protection. As explained in Chapter 5, Australian copyright law grants protection to the traditional categories of ‘works’ created by authors: literary works, dramatic works, artistic works and musical works. These are dealt with in Pt III of the Copyright Act 1968. Part IV protects four categories of ‘subject matter other than works’: films, sound recordings, television and sound broadcasts, and published editions of works. These categories of ‘other subject matter’ recognise the results of entrepreneurial rather than literary or artistic effort, and tend to have ‘makers’ rather than ‘authors’.32 [page 154] 6.10 For material to be protected by copyright it must be characterised as falling in one of these eight categories of works or other subject matter. As the Copyright Law Review Committee (CLRC) commented in its 1999 Simplification Report: … the most problematic consequence of the current legislative approach to categorisation is its technological specificity … Technological developments have produced new means of creating copyright subject matter, and new means of exploiting

that subject matter.33 The courts have shown a willingness to accept that these categories can be interpreted so as to ‘take a broad view, and not to tie the copyright to any particular technology’.34 Nevertheless, a liberal reading can only go so far and the technology must be able to be encompassed within the words of the relevant definition:35 … it is not justifiable to depart altogether from [the Act’s] language and principles to protect technological developments which were not contemplated, or not completely understood, when the relevant provisions were enacted.36 The constraints of some of the technology-specific categories will become apparent as each is discussed below.

PART III WORKS 6.11 Section 32 sets out the four categories of original works in which copyright subsists: literary, dramatic, musical and artistic. Each will be discussed in turn below, followed by the additional requirement that the works must be ‘original’.

Literary works 6.12 ‘Literary’ While novels and poems might be the first works that spring to mind as being ‘literary’, many of the cases dealing with this category concern far more prosaic material, such as examination papers and accounting forms. The Copyright Act does not exhaustively define ‘literary work’, but s 10(1) provides that a literary work includes: (a) a table, or compilation, expressed in words, figures or symbols; and (b) a computer program or compilation of computer programs.37 [page 155] Case law provides the most guidance as to the meaning of ‘literary’ in this context. The classic statement concerning the concept of a literary work comes from University of London Press,38 the ‘exam paper’ case, where Peterson J said: In my view the words ‘literary work’ cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high. The word ‘literary’ seems to be used in a sense somewhat similar to the use of the word ‘literature’ in political or electioneering literature and refers to written or printed matter. One commentator has written that copyright is a legitimate

instrument of social policy where it allows individuals (and society) to develop and gain economically from the protection of the product of intellectual labour. However, the protection of such a wide variety of material as described above has also ‘degraded’ this notion:39 The group Victor Hugo drew around him in the 19th century to fight for international copyright was certainly not campaigning to protect lottery tickets, money boxes, belt buckles, routine business correspondence, forms and office memoranda … items that have since been protected at one time or another under US or Commonwealth laws. This degradation applies not only to the notion of ‘literary’ works, but also where ‘trivial artistic skill’ has qualified for protection: see 6.22ff. 6.13 Meaning and communication Since s 22(2) states that a literary, dramatic or musical work can exist in the form of sounds embodied in an article or thing, and s 22(1) refers to such works as existing if in writing or ‘some other material form’, it is obvious that writing as such does not define the essential aspect of a literary work. The fundamental criterion appears to be that the work conveys information, instruction, or perhaps pleasure, in the form of literary enjoyment. In Exxon Corp v Exxon Insurance Consultants International Ltd40 copyright protection was sought for the invented word ‘EXXON’ as a literary work, but this was denied because the word itself, although possibly new and original, ‘has no meaning and suggests nothing in itself. To give it substance and meaning, it must be accompanied by other words or used in a particular context or juxtaposition’.41 There are two aspects to this. The first, which was raised in the Exxon case, is the question of the material being substantial enough to convey meaning. The other concerns the ability of the material to communicate meaning, not because it lacks content, but because of the form in which it is presented: for example, if the form the information takes is electronic impulses embodied in a silicon chip. The Exxon case suggested that a word alone is not substantial enough to convey meaning, and that the same might be true of titles,

slogans, phrases and possibly [page 156] advertisements,42 although the decision has ‘not been treated as definitive or exhaustive by the members of the Full Court of the Federal Court’.43 In Victoria v Pacific Technologies (Australia) Pty Ltd (No 2)44 the phrase ‘Help-Help-Driver-in-Danger-Call-PolicePh.000’ was held to be too insubstantial to be a literary work. The expression was also inseparable from the fundamental idea that was being conveyed by the words.45 In Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd46 the Full Federal Court held that T-shirt designs made up of words and numbers suggesting United States college sporting teams were too insubstantial and vague to represent a literary work.47 A different approach has been taken by some other courts, to the effect that a word or phrase may be protected if original enough and of so ‘extensive a scale and of so important a character as to be a proper subject of protection against copying’.48 In Fairfax Media Publications v Reed International Bennett J did not exclude the possibility of establishing a basis for copyright protection of an individual headline. However, in that case Fairfax failed to prove that the selected newspaper headlines included in a news abstract service were substantial enough for copyright to subsist.49 6.14 Computer programs as literary works: the Apple case A significant discussion of ‘literary work’ in Australia was undertaken in the Apple litigation, where the form of presentation was ultimately held to be a barrier to copyright protection for a computer program. In this case, Apple sought an injunction, damages and an account of profits based on allegations that Computer Edge had imported into and sold in Australia a computer manufactured in Taiwan known as a ‘Wombat’, which sold for less than half the price of the Apple II computer of which it was a copy. The software or programs for the Wombat system were also copied. The original program or set of instructions for the Apple II computer was written in source code:

that is, a computer language understood by trained persons but not by the computer, which ‘understands’ electrical impulses. By typing a source program into a computer [page 157] the appropriate electrical impulses were recorded (with the use of an ‘assembler’ or ‘compilation’ program) which allowed the machine to operate. This program was then expressed in object or machinereadable code. Apple claimed that three of the silicon chips or integrated circuits in the Wombat were not what they appeared to be, that is, devices for controlling the operation of a computer, but were in fact literary works subject to copyright. These chips were said by Apple to be ‘in writing’ because their content could be deciphered through an electron microscope. It was held at trial that none of the programs was a literary work because of the definition adopted by Beaumont J that such a work is something intended to afford information, instruction or pleasure in the form of literary enjoyment.50 It was said that a computer program merely drives a machine, that is, controls the sequence of operations carried out by the computer, without performing these other functions. On appeal, Apple’s claim to copyright in its computer programs was upheld by a majority of the Full Federal Court.51 It was held that the source code attracted copyright as a literary work and that the object code was an adaptation thereof within s 31(1)(a) (vi) of the Act, since it could be viewed as a translation. The source code conveyed a meaning to suitably trained people and thus even if the object code could not itself be a ‘literary work’ it was effectively protected. On further appeal to the High Court, the trial judge’s decision was restored.52 The court did find that Apple’s programs in source code were ‘original literary works’ in which copyright subsisted, since they were apt to afford information or instruction (perhaps even pleasure?) to a qualified reader, the operator keying instructions into the machine to enable the machine to convert source code to object

code. Since writing the programs in source code involved skill, labour and experience on the part of the programmers, the programs also satisfied the requirement of originality. However, the object code was neither a literary work nor an adaptation of such a work. The programs as stored in the chips were not expressed in writing or print or any relevant material form, not being visible or otherwise perceptible. They were not capable by themselves, and were not intended to be capable, of conveying a meaning which could be understood by human beings. As Gibbs CJ put it:53 It seems to me a complete distortion of meaning to describe electrical impulses in a silicon chip, which cannot be perceived by the senses and which do not represent words, letters, figures or symbols, as a literary work; still less can a pattern of circuits be so described. 6.15 The post-Apple amendments In 1984, before the Apple case got as far as the High Court, the furore caused by Beaumont J’s judgment at first instance prompted the federal government to amend the Act to confer specific protection to programs. [page 158] As noted above, the term ‘literary work’ is now specified in s 10(1) to include ‘a computer program or compilation of computer programs’. The decision to bring programs within the category of literary works has been roundly criticised by commentators, some of whom argue that it would be more appropriate from a conceptual point of view to create a special or sui generis regime for the protection of software, as has been done for the layout of integrated circuits.54 As recently as 2005, the High Court commented on the incongruity of treating computer programs as literary works.55 Nevertheless, the protection of computer programs as literary works under a copyright regime has become the accepted international norm, due largely to pressure from the United States.56 This is specifically confirmed by Art 10(1) of the TRIPS Agreement, which states that computer programs are to be

protected under the Berne Convention. In Data Access Corp v Powerflex Services Pty Ltd57 Gleeson CJ, McHugh, Gummow and Hayne JJ noted that notwithstanding ‘the difficulties which arise from accommodating computer technology protection to principles of copyright law … the Act now expressly requires such an accommodation’. 6.16 Definition of ‘computer program’ Under the 1984 amendments, ‘computer program’ was originally defined in s 10(1) to mean: … an expression in any language, code or notation of a set of instructions (whether with or without related information) intended, either directly or after either or both of the following: (a) conversion to another language, code or notation, (b) reproduction in a different material form, to cause a device having digital information processing capabilities to perform a particular function. As a result of the digital agenda legislation in 2000, the term is now defined more simply to mean: … a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result. The CLRC had recommended this definition on the grounds that it is reasonably broad, covering programs written in source code, object code, microcode or declarative programming language.58 It is the definition used in the United States Copyright Act 1976 and thus has a considerable amount of international currency. Despite the simplification, it appears that there was no intention to change the ‘underlying concept’ of the 1984 definition.59 Hence, it seems that a set of statements or instructions may still fall within the definition of a computer program even when the device to which they relate would not be considered a ‘computer’ [page 159]

in ordinary parlance, and indeed even where the instructions themselves are stored separately from that device: as, for example, with the instructions on a DVD or a PlayStation game that cause a player or console into which they are inserted to convert information stored on them into moving images and sound.60 On the other hand, Data Access shows that there are limits to how far the definition can be stretched. The High Court held that individual command words or macros used in software for developing database applications could not themselves be considered computer programs, since they could not (in isolation from the other elements of the software) be considered a set of instructions that would cause the relevant computer to function in a certain way. The majority judgment in Data Access explained that, when executed, a macro ‘causes a sequence of other functions to be executed, so that the overall effect of performing a more complex function is achieved’.61 To be a ‘set’ the instructions must relate to one another. This requires that they interrelate and so must be more than a mere collection.62 In CA Inc v ISI Pty Ltd63 Bennett J considered a ‘set’ of macros that worked together to indirectly bring about a result. The macros related one to another, rather than being a mere collection, and the fact that other components were also needed to bring about the relevant result did not preclude them from falling within the definition of a ‘computer program’.64 6.17 Tables and compilations as literary works Compilations and tables are also specifically defined as being literary works, and, like computer programs, have generated a good deal of case law. Databases are an obvious example, but a wide range of other material can also be protected as compilations including timetables, indices and catalogues. In Australia, telephone directories,65 television broadcasting schedules,66 and safety data sheets67 have produced some significant cases over the years. The requirement that works be ‘original’ has been a particularly challenging concept when it comes to these compilations: see 6.33ff. [page 160]

Dramatic works 6.18 ‘Dramatic’ The categories of works may overlap so that a play, for example, may be a literary as well as a dramatic work. The Copyright Act does not define ‘dramatic work’ but s 10(1) states that it includes: (a) a choreographic show or other dumb show; and (b) a scenario or script for a cinematograph film, but does not include a cinematograph film as distinct from the scenario or script for a cinematograph film. Section 4 of the Copyright Act 1905, by contrast, defined a dramatic work as ‘any tragedy, comedy, play, drama, farce, burlesque, libretto of an opera, entertainment or other work of like nature, whether set to music or other scenic or dramatic composition’. It seems that in the modern context the word ‘dramatic’ has a qualifying effect, suggesting that to be protected within this category the work must essentially be intended to be performed or represented.68 It should be noted that the Copyright Amendment Act 1989 deleted the words ‘described in writing in the form in which the show is to be presented’ from the definition of dramatic work. This ensures that choreography will be protected if recorded in some material form other than laborious notation, for instance on film. 6.19 Dramatic ideas Most litigation concerning dramatic works has been centred around the question of when an idea for a play (film, etc) becomes protected. In Tate v Thomas69 a dispute arose over the ownership of copyright in a play called The Lads of the Village, which the defendant, Peterman, had arranged to have made into a film. The plaintiffs had written music, lyrics and dialogue for the production but Peterman claimed that he had supplied ideas, lines of dialogue, catchphrases and the like. It was fairly clear that his contribution amounted to ‘accessorial matters’ such as scenic effects, and he supplied nothing substantial enough in material form to be afforded copyright protection. The defendant argued unsuccessfully that he was the creator of the mood and staging of the production and it was appropriate to protect this when dealing with a dramatic

work. Although this argument did not succeed in Tate v Thomas, other cases have suggested that there could be copyright in the kind of situations, style and incidents shown on screen or stage. In Hexagon Pty Ltd v Australian Broadcasting Commission70 it was claimed that the basic theme of the Alvin Purple movies should be protected as a dramatic work, independent of any script. The plaintiffs succeeded in preventing the ABC making a series based on the Alvin Purple character, but on passing off principles rather than copyright. An example of a film theme being protected is [page 161] Zeccola v Universal City Studios Inc.71 The respondent claimed that copyright in the film and novel Jaws had been infringed by a film produced by the appellants and titled La Ultimo Squalo (‘Great White’). The infringement alleged was that of making a film about a killer shark terrorising human beings during the holiday season at a popular seaside resort. The appellant claimed that the respondent sought copyright protection for a general idea, and that this was not within the scope of the Copyright Act, which protects only the expression of ideas. It was held that although in general there is no copyright in the central idea or theme of a story or play, however original it may be, copyright does subsist in the combination of situations, events and scenes which constitute the particular working out or expression of the idea or theme. If these are totally different, the taking of the idea or theme does not constitute an infringement of copyright.72 In this case, however, the trial judge decided that the combination of the principal situations, singular events and basic characters was sufficient to constitute an original work susceptible of copyright protection. This was decided after viewing the two films and noting the marked degree of similarity between them both, which led to an inescapable inference of copying.73 It was also important in Zeccola that the Copyright Act provided that a work may be infringed by the making of a cinematograph film of it: s 21.

An issue similar to that in Tate v Thomas arose in Green v Broadcasting Corp of New Zealand74 where Hughie Green, the compere of a British television talent show called Opportunity Knocks, claimed that his title, show format and a few stock phrases75 were a literary or dramatic work to be protected by copyright law so as to prevent another person televising a similar programme in New Zealand. However, the ‘hackneyed expressions’ and idea for the programme were held not to be protected by copyright.76 6.20 Public events as ‘dramatic works’ The extent of ‘exclusive rights’ granted to a broadcaster in return for payment to the organisers of a public event was the subject of interlocutory proceedings in Nine Network Australia Pty Ltd v Australian Broadcasting Corp.77 Having paid $450,000 towards the council of [page 162] the City of Sydney’s massive fireworks display to welcome the new millennium,78 the Nine Network tried to restrain the ABC from broadcasting in Australia anything featuring the fireworks, a procession of lanterns on Sydney Harbour and decorations on the Harbour Bridge. While the arguments could not be heard in full, Hill J decided that Channel Nine’s contention that the display and parade were dramatic works was not strong. The schedule of the fireworks display would not be such a work, since the reduction to material form was fraught with difficulties as to whether the schedule would in practice be adhered to according to the planned sequence. As his Honour also observed, ‘[a]t the heart of the problem may well be that copyright is a monopolistic right existing not to protect ideas as such but the physical manifestation of some … work’.79 He also found the broadcasting by the ABC could probably have gone ahead as fair dealing for reporting the news, or under a broader policy permitting the public broadcaster to report significant events.

Musical works 6.21

The term ‘musical work’ is not defined in the Act, although

earlier legislation spoke of ‘any combination of melody and harmony, or either of them’.80 Ricketson and Creswell point out that certain types of work usually thought of as musical composition may not comprise ‘combinations of melody and harmony’ as traditionally understood, for example, atonal and synthesiser music.81 However, the adjective ‘musical’ in the present Act refers to the method of production and, as with other works, not to any artistic or aesthetic qualities which the work should possess. The score of a song is a musical work, whether it is an advertising jingle or an operatic aria. The words would be a literary work. These may be owned by separate people as they are two distinct copyrights. If the song is recorded then a distinct copyright in the sound recording also exists, quite apart from the work copyrights in the music and words. An opera or musical thus consists of a combination of musical works (the score) and literary works (the lyrics). The choreographic aspect of a ballet or opera would be a dramatic work. The requirement of ‘material form’ applicable to all works means that improvised or traditional music will not attract copyright unless or until written down or otherwise embodied. Whether or not the person who does this becomes the ‘author’ (and therefore first owner) of any copyright depends upon general principles.82 Bearing in mind the requirements of ‘originality’, exercising intellectual effort so as to produce an arrangement of an existing musical work will attract its own copyright,83 [page 163] although since adapting a work is one of the exclusive rights of a copyright owner this could also infringe the copyright subsisting in the material being arranged.84

Artistic works 6.22 ‘Artistic’ This is one category of work where the Copyright Act provides a comprehensive definition, although the further definition of individual terms is not always exhaustive. Section 10(1)

defines ‘artistic work’ to mean: (a) a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not; (b) a building or a model of a building, whether the building or model is of artistic quality or not; or (c) a work of artistic craftsmanship whether or not mentioned in paragraph (a) or (b); but does not include a circuit layout within the meaning of the Circuit Layouts Act 1989. The material must be capable of being characterised as falling within that definition.85 Although most artistic works, in common with other works, need not possess aesthetic appeal to be designated ‘artistic’ for copyright purposes,86 works of artistic craftsmanship in para (c) of the definition of artistic work do need to possess some aesthetic qualities, as well as exhibiting ‘craftsmanship’. As far as the other categories in the definition are concerned, there only needs to be a degree of originality and reduction to material form, the basic criteria for copyright protection. Problems arise with artistic works from the fact that reproducing the work indirectly, perhaps in another dimension, amounts to infringement of copyright. Thus, when a person copies a dress, car exhaust system or laser printer cartridge by ‘reverse engineering’, the copy itself will, prima facie, infringe copyright in the plans or design for such products. This includes the plans or design for many a massproduced item, and has created an environment of protection for such items which the Copyright Act and some judges have sought to cut down: see also 8.15–8.16, 10.30–10.37. 6.23 Paintings When Adam Ant, the pop singer, sought to protect his facial makeup as an artistic work, a painting, Lawton LJ said that although there was no statutory definition of ‘painting’, it is a word in the ordinary usage of the English language and it is a question of fact in any particular case whether the subject matter [page 164]

under discussion is a painting or not. It was held that a painting is not an idea, it is an object, and paint without a surface in permanent form is not fixed: hence the singer’s claim failed.87 There was another problem in this case too, apart from the unsuitability of the human face as a surface for a copyright work, in that the artwork itself would not, in the judge’s view, have been substantial enough to warrant copyright protection: ‘Two straight lines drawn with greasepaint with another line in between them drawn with some other colouring matter, in my judgment, by itself could not possibly attract copyright.’88 Another example of copyright protection being denied to material of a changeable nature is Komesaroff v Mickle,89 concerning a ‘sand sculpture’ which was designed to be moved around so that ‘sand landscapes’ would form between two sheets of perspex. 6.24 Sculptures and engravings The approach taken to defining the meaning of ‘painting’ in the Adam Ant case has also been used to decide the meaning of the other terms included within the list of artistic works. In short, this is to look to the ordinary usage of the English language. This is to be contrasted with the way that some other terms in the Copyright Act are interpreted without necessarily having regard to colloquial use. In Wham-O Manufacturing Co v Lincoln Industries Ltd90 the New Zealand Court of Appeal held that ‘frisbee’ toys were protected by copyright. A frisbee is a plastic flying disc produced by a manufacturing process which commences with drawings, then the making of wooden models, moulds and dies, ending with the finished product. The models were held to be sculptures91 and the moulds and dies engravings. The frisbee itself, the final plastic disc, was a print from an engraving but not a sculpture. However, a different approach has been taken in the Australian Federal Court. In Greenfield Products Pty Ltd v RoverScott Bonnar Ltd92 Pincus J refused to follow the Lincoln Industries case, preferring to define ‘sculpture’ in accordance with orthodox principles of construction, and ‘engraving’ in a way that did not amount to ‘straining the English language’.93 The applicant had unsuccessfully claimed that a drive mechanism for a ride-on mower was protected by copyright, the mechanism itself as a sculpture and

the moulds used in manufacture as engravings. The fact that some sculptures might also be functional will not prevent them from being sculptures,94 but not every threedimensional object with some design appeal [page 165] is necessarily a sculpture. In the United Kingdom case Lucasfilm Ltd v Ainsworth,95 the trial judge, Mann J, held that the primary function of the armour and helmets of the stormtroopers characters in the Star Wars movies was utilitarian and they were not sculptures. His Honour expressed the view that an artistic work must be capable of appealing to artistic sensibilities. This did not conflict with the fact that artistic quality is irrelevant: the sculpture must be made to have visual appeal, even though viewers may disagree about whether the artist had succeeded in his or her endeavour: A pile of bricks, temporarily on display at the Tate Modern for 2 weeks, is plainly capable of being a sculpture. The identical pile of bricks dumped at the end of my driveway for 2 weeks preparatory to a building project is equally plainly not. One asks why there is that difference, and the answer lies, in my view, in having regard to its purpose. One is created by the hand of an artist, for artistic purposes, and the other is created by a builder, for building purposes. I appreciate that this example might be criticised for building in assumptions relating to what it seeks to demonstrate, and then extracting, or justifying, a test from that, but in the heavily subjective realms of definition in the artistic field one has to start somewhere.96 Mann J’s approach that required a sculpture to have an ‘intrinsic quality of being intended to be enjoyed as a visual thing’ was upheld on appeal.97 The Court of Appeal accepted that it is not possible to devise a comprehensive definition of ‘sculpture’ and commented that ‘although this may be close to adopting the elephant test of knowing one when you see one, it is almost inevitable in this field’.98 The

Supreme Court of the United Kingdom agreed that the helmets were ‘a mixture of costume and prop’, not sculptures. Although ‘at the risk of appearing humourless’, Lords Walker and Collins99 were ‘not enthusiastic about the “elephant test”’, because courts base their decisions on evidence, including expert evidence.100 6.25 Drawings In protecting drawings, the Copyright Act covers almost anything which can be produced in a two-dimensional form (apart from paintings and photographs, which are particularly protected by the Act). The concept of a drawing includes a ‘diagram, map, chart or plan’ (s 10(1)), so that many items of a ‘prosaic and factual nature’ have been protected.101 As discussed above in relation to literary works (see 6.13), the work must be sufficiently substantial or complex to attract copyright protection, but relatively simple works such as logos have been protected.102 A drawing can represent something in the real world or be abstract. Arrangement of text can be an artistic work. In Elwood Clothing Pty Ltd v Cotton On Clothing [page 166] Pty Ltd103 the Full Federal Court held that T-shirt designs made up of words and numbers suggesting United States college sporting teams were drawings.104 The images had a visual rather than a semiotic function.105 The idea/expression dichotomy is relevant to drawings, as with any other work. In FAI Insurance Ltd v Advance Bank Australia Ltd,106 ‘how to vote’ and proxy vote forms were held not to be protected by copyright since the limits on the modes of expression suitable for conveying such information meant that the idea and expression of the idea almost entirely overlapped. However, the concept raises particular problems in relation to artistic works. In Elwood Clothing v Cotton On Clothing the Full Federal Court cautioned against applying the idea/expression dichotomy at the initial stage of identifying the work. Rather, it should be left to the point when infringement is considered, specifically whether a

substantial part of the work has been taken, or only the underlying idea or concept.107 6.26 Photographs A photograph is a product of photography or something similar, but not part of a film: s 10(1). The ‘author’ of a photograph is the person who takes it, and there need not be any particular exercise of artistic skill in the taking or composition of the photograph in order to attract copyright. On the other hand, the taking of a similar photograph of the same person or place does not infringe that copyright, which would only occur by copying the photograph itself, rather than its source. 6.27 Buildings and models of buildings Copyright can subsist in a building or model as well as in plans or drawings. Section 10(1) defines a building as being a ‘structure of any kind’. The term ‘structure’ has been described as implying ‘something which is of some substance, and is usually erected upon or constructed upon or in the ground with an element of permanence, although it need not be a fixture’.108 A mini tennis court has been held to be a building for this purpose,109 as has a fibreglass swimming pool.110 6.28 Works of artistic craftsmanship The United Kingdom Gregory Committee111 decided that this type of artistic work should not be defined by statute but would include items crafted from silver, pottery, wood and embroidery. These can be [page 167] functional objects so long as they evince the requisite artistic quality. ‘There is no antithesis between utility and beauty, between function and art’112 but the work’s expression must be unconstrained by functional considerations.113 A work can be one of artistic craftsmanship and still fall within the first two paragraphs of the definition of artistic work.114 One purpose of protecting three-dimensional items themselves, rather than protecting them as reproductions of an underlying work such as a drawing (at least where there is such a work), is to ensure

that these items do not lose protection through the operation of s 77 of the Copyright Act, which causes loss of copyright protection for most artistic works which are applied as industrial designs to massproduced objects in a three-dimensional form: see 10.30. Section 77 does not apply to works of artistic craftsmanship (nor to buildings or models of buildings). A work of artistic craftsmanship is one category of work where aesthetic considerations are relevant to the subsistence of copyright. How is the ‘artistic’ element to be determined? The approach adopted in some cases has been to look to the creator’s intention to avoid the court being called upon to make aesthetic judgments based on artistic merit. However, that approach was rejected by the High Court in Burge v Swarbrick.115 It is a matter that should be determined objectively,116 not on the basis of the artist’s intention to produce an artistic work, or his or her view about whether that result was achieved.117 Evidence from the alleged artist about his or her aspirations is admissible, but the High Court noted that intentions may fail to be realised and warned about the dangers of hindsight. Anyone claiming to have created a work of artistic craftsmanship is unlikely to admit the absence of any aesthetic element in their work. Burge v Swarbrick concerned a hand-crafted full-scale model of the hull and deck sections of a yacht known as a ‘plug’. The trial judge accepted that Mr Swarbrick had intended to design and build a yacht of great aesthetic appeal. The design brief was to produce a sports boat for ‘reasonably experienced amateur sailors, aged 45 or more, who wanted a yacht of good performance, capable of racing, but for typical use in day sailing, relatively simple to sail with a minimum crew size, and visually attractive’.118 Traditional works of artistic craftsmanship such as tapestries and glass work, although functional, are effectively unconstrained by that function. In the case of the ‘plug’ for the yacht, the aesthetic qualities were constrained by the need [page 168]

to engineer a boat that was fast and handled well. Mr Swarbrick conceded that naval architects are basically engineers.119 The ‘plug’ was not a work of artistic craftsmanship and, because there was no registered design, the design copyright overlap provisions denied copyright protection: see 10.30ff. In Burge v Swarbrick120 the High Court regarded ‘work of artistic craftsmanship’ as a composite phrase that should be construed as a whole. That phrase includes craftsmanship which has been interpreted as skill and pride in sound workmanship.121 The High Court quoted Lord Simon in the House of Lords as follows: A work of craftsmanship, even though it cannot be confined to handicraft, at least presupposes special training, skill and knowledge for its production … ‘Craftsmanship’, particularly when considered in its historical context, implies a manifestation of pride in sound workmanship — a rejection of the shoddy, the meretricious, the facile.122 The category is not confined to handicraft and there is no need for the object to be handmade. In Coogi, Drummond J considered that it is quite possible for craftsmanship to exist in a product made by: … a skilled person who uses these skills to set up and operate a machine which produces an article … even though the creator has used a highly sophisticated computer-controlled machine to produce it, if nevertheless it is a manifestation of the creator’s skill with computer-controlled machinery, knowledge of materials and pride in workmanship.123

Adaptations of literary, dramatic and musical works 6.29 The right to make an adaptation One of the exclusive rights of the owner of copyright in a literary, dramatic or musical work is the right to make an adaptation of that work: s 31(1). An adaptation will attract its own copyright protection provided sufficient originality has been exercised and the usual criteria for subsistence exist: s 31(1)(a)(vii). Under the definition of ‘adaptation’ in s 10(1), literary works in dramatic form may be adapted into non-dramatic form and vice versa; literary works in either form may be translated

or conveyed solely or principally by means of pictures; and musical works may be arranged or transcribed. 6.30 Adaptations of computer programs The definition of adaptation was amended in 1984 to include a ‘version’ of a computer program, whether or not in the original language code or notation, and not being a reproduction of the work. This amendment was made in response to judicial pronouncements in the Apple [page 169] case to the effect that object code was not an adaptation of source code since it was not turned into another language (‘translated’) but rather turned into electrical impulses.124 Furthermore, the words of s 31(1)(a)(vii) suggested that an adaptation must itself be a ‘work’, and programs in object code were not works.125 Nor could the object programs embodied in the ROMs and EPROM be a ‘reproduction’ of the source code, since two elements are required, one being the derivation of the reproduction from the original work, and also the vital threshold requirement that ‘the infringing work sufficiently resembles the copyright work’, something which requires ‘a sufficient degree of objective similarity between the two works’. This similarity was held not to exist when comparing written source programs with silicon chips and electrical impulses which may be generated in them.126 In its review of copyright protection for software, the CLRC recommended that no change be made to the definition of ‘adaptation’ adopted in 1984, but that the definition of ‘reproduction’ be expanded instead.127 These recommendations were incorporated into the digital agenda amendments and s 21(5) now provides that: For the purposes of this Act, a computer program is taken to have been reproduced if: (a) an object code version of the program is derived from the program in source code by any process, including

compilation; or (b) a source code version of the program is derived from the program in object code by any process including decompilation; and any such version is taken to be a reproduction of the program. The right to adapt has thus been narrowed but the concept of reproduction expanded with respect to computer programs. Although the comments by the High Court in Apple quoted above were made with respect to computer programs and then overtaken by amendments specifically directed to that context, there is no reason to suppose that the court’s discussion of ‘adaptation’ is inapplicable to other types of work. 6.31 Copyright in infringing adaptations Since an adaptation of a work which is not a slavish imitation of the source is also a ‘work’ with its own copyright, the question arises as to whether copyright can subsist in a work which infringes another. The answer is that it can, provided sufficient intellectual effort is expended in creating the adaptation as to satisfy the requirement of originality.128 Nor is the adaptor disentitled by their own infringement from suing for breach of copyright [page 170] if the adaptation itself is the subject of unauthorised copying or use by another person.129 In any event, care must be taken before jumping to the conclusion that an unauthorised adaptation necessarily infringes copyright. In some instances, what has been copied from the earlier work may simply be the unoriginal portions of it, meaning that the earlier work has not been ‘substantially’ reproduced.130 In others it may be determined that what has been taken is simply the idea underlying the earlier work, not the expression of that idea.131

ORIGINALITY OF EXPRESSION The need for an original work 6.32 As discussed above, s 32132 sets out the four categories of works in which copyright subsists: literary, dramatic, musical and artistic. To be protected, material must fall within one of those categories and also meet the threshold requirement of originality. Originality very much conditions the question of whether or not material can be regarded as a ‘work’. The separate requirement of originality was not included in copyright legislation until 1911, and the insertion of the word ‘original’ as an additional criterion for copyright protection therefore had to be addressed by the courts in an attempt to ascertain its meaning. From the early cases it has been clear that a work must originate from the author (not be copied from another work). To begin with, in University of London Press Ltd v University Tutorial Press Ltd133 it was said that examination papers could be original, even if composed from information regarded as a stock of knowledge common to persons in the field (in this case, mathematics). The main requirement of originality was that the work must not be wholly copied from another work, but should originate with the author:134 The word ‘original’ does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought … The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work — that it should originate from the author. [page 171] Similarly, in Sands & McDougall Pty Ltd v Robinson135 the High Court held that a map was original even if prepared from the

common stock of knowledge in Australia, since independent intellectual effort, judgment and discrimination had been applied to produce a map that was new in the requisite sense.136 The discussion of originality has mainly occurred in the context of cases concerned with literary works, but the application of the University of London Press case to other types of works has been approved in many subsequent decisions, often to do with house plans137 or other artistic works such as drawings for articles ranging from frisbees138 to plastic price labelling tags.139

The meaning of originality — the compilation cases 6.33 The issue of originality frequently arises in the context of compilations. The concept is particularly problematic when copyright is claimed in products that do little more than collect together generally available material. The focus in this section upon compilations reflects recent Australian case law, and the notable influence of the High Court decision in IceTV v Nine Network Australia.140 We do not suggest that these issues are confined to compilations, or indeed literary works. Originality is a requirement for all four categories of works.141 Nevertheless, the compilations cases are excellent exemplars. In Macmillan & Co v Cooper142 Macmillan owned copyright in a book entitled Plutarch’s Life of Alexander, Sir Thomas North’s Translation, from which Cooper, a publisher in Bombay, had selected passages and published them as a textbook for Indian students, adding some introductory notes to link passages of the text. The primary question was whether there was copyright in the Macmillan compilation of Plutarch’s work. The Privy Council held that the selection of passages by Macmillan from North’s translation had been made with a view to the requirements of school and university students. Labour, sound judgment and literary skill were all needed to fulfil this objective, and this was enough to attract copyright protection for the selected passages. Thus, expenditure of labour, skill and capital to impart to

[page 172] the product some quality of character which the raw material did not possess will result in a compilation having copyright protection.143 Although the amount of labour the author must bestow is a question of degree in every case, the requirement of originality is not fulfilled simply by making a list or putting several lists together. In G A Cramp & Sons Ltd v Frank Smythson Ltd144 certain tables of information on the weather, sunrise and sunset, times, tides and so on had been included in a diary. The trial judge, Uthwatt J, with whom the House of Lords unanimously agreed, said that this selection of ‘gobbets of information’ showed no real exercise of knowledge, labour, judgment or skill and the commonplace selection could not be said to confer originality on the whole.145 To similar effect is ITP Pty Ltd v United Capital Pty Ltd,146 where a tax manual, designed as a guide to teach persons to fill in tax return forms, was substantially denied copyright protection on the grounds that simply putting the forms together did not demonstrate a sufficient degree of labour, skill and ingenuity in the compilation of the material to make it original for copyright purposes.147 6.34 For many years the standard of originality required under Australian law had been considered to be ‘quite low’.148 The 1985 Supreme Court of Queensland decision that held a compilation of blank accounting forms used on a peg board for a ‘onewrite’ receipt system constituted an original work149 has been described as the ‘extreme end’ of the spectrum of compilation cases on the borderline of originality150 and may come to be seen as the low point. In Kalamazoo (Australia) Pty Ltd v Compact Business Systems Pty Ltd Thomas J discussed the ‘conflicting and quite irreconcilable judicial statements as to the degree of originality required’,151 reviewed the authorities and decided that the preparation of the forms in question had ‘required a degree of concentration, care, analysis, comparison, and a certain facility in using and adapting the altered forms to a composite “one-write” system’.152 In Statuscard Australia Pty Ltd v Rotondo153 Chesterman J, also in the Supreme Court of Queensland,

did [page 173] not follow Kalamazoo and noted that the decision had been ‘politely’ criticised by commentators and courts.154 Statuscard Australia Pty Ltd155 concerned computer programs that analysed TAB and Seven Network horse and dog racing information, including trends in betting behaviour of TAB customers. The idea behind the program was that it is possible to identify betting patterns and so where the ‘smart money’ was being placed before the commencement of a race. The data itself was constantly changing and was supplied by TAB and the Seven Network and the defendant had not copied the plaintiff’s computer code. Statuscard claimed that the combination of lines, columns and colours that organised the information on screen was either a literary or artistic work: the claim failed on originality. Chesterman J held ‘the framework is one of such simplicity and compelled by the function of the program as not to satisfy the admittedly easy test of originality’.156 On one view, the originality threshold should be low enough to protect the investment of time, money and effort in a compilation. However, this introduces the very real risk that copyright will end up granting protection over the information itself. In the United States and Australia, telephone directories cases have epitomised this dilemma. In Feist Publications Inc v Rural Telephone Co Inc,157 the Supreme Court of the United States referred to: … the interaction of two well-established propositions. The first is that the facts are not copyrightable; the other, that compilations of facts generally are. Each of these propositions possesses an impeccable pedigree. That there can be no valid copyright in facts is universally understood. The most fundamental axiom of copyright law is that ‘no author may copyright his [sic] ideas or the facts he narrates’. The Supreme Court held in Feist that a ‘white pages’ telephone book,

an alphabetical listing of all telephone subscribers in a certain area, did not reach the required threshold of originality in order to qualify for copyright protection. The court rejected the ‘sweat of the brow’ or ‘industrious collection’ doctrine, under which effort and investment in compiling information had been protected in some previous United States cases, insisting instead that some ‘creative spark’158 is required to make a work original. Some element of selection and organisation of the raw data was needed, over and above a simple alphabetical listing of subscribers’ names and addresses. Significantly, however, Feist was not followed in the Australian case of Desktop Marketing Systems Pty Ltd v Telstra Corp Ltd.159 The Full Court of the Federal Court found that copyright subsisted in Telstra’s White Pages and Yellow Pages directories, and that this copyright had been infringed by the defendant. The latter had produced CD-ROMs of varying levels of sophistication with white and yellow [page 174] pages listings, which could be searched in different ways whether by name, address, postcode, industry and the like. It had obtained its raw information from Telstra’s publications, having it laboriously rekeyed by a team of workers in the Philippines. It also used Telstra’s headings, though it did add its own software to do the searching. After an extensive review of the previous case law, especially in the separate judgments of Lindgren and Sackville JJ, the Full Court concluded that factual compilations may be protected under AngloAustralian law merely on the basis that substantial labour and expense has been devoted to their creation.160 This was true even of a ‘whole of universe’ compilation such as the White Pages, where there was no element of selectivity in the organisation or presentation of the data, and even though the labour and expense here had not so much gone into the ‘collection’ of the data (which was in fact simply received from subscribers) as into the development of systems for its verification and storage. At a policy level, the court recognised the

‘tension between providing incentives to produce potentially useful works and encouraging free access to information or “raw facts”’.161 Sackville J noted the particular concerns that flow from affording copyright protection to a compiler who, as with Telstra in this case, ‘happens to enjoy monopoly privileges that facilitate the making of the compilation’,162 and who may be able to use that copyright to exclude ‘innovative competitors who cannot gain access to the basic information required to establish databases of potential commercial value’.163 However, such policy issues, he considered, were better left to parliament to resolve. 6.35 The Desktop Marketing decision reinforced the prevailing view that the standard of originality required under Australian law was low164 — so low, it seemed, that it might have been difficult in practice to find a database that would not qualify for copyright protection. However, since the High Court decision in IceTV Pty Ltd v Nine Network Australia Pty Ltd,165 Australian courts have reconsidered that low threshold. In IceTV v Nine Network Australia166 Nine Network claimed the producer of an online subscription-based electronic programme guide had infringed copyright in its weekly television programming schedules. IceTV conceded that copyright subsisted in each of Nine’s weekly schedules and the case was argued on whether a substantial part had been reproduced by IceTV, including the originality of the part taken: see 8.12. Nevertheless, the High Court heard from the Australian Digital Alliance (ADA) and Telstra as amicus curiae on originality in relation to subsistence [page 175] of copyright in compilations and whether Desktop Marketing should be overruled. The ADA argued ‘labour and expense’ is insufficient to satisfy the originality threshold and that something more is required in the form of a ‘creative spark’ or the exercise of ‘skill and judgment’. Gummow, Hayne and Heydon JJ commented that the ADA may well be right and that the emphasis in Desktop Marketing

upon ‘labour and expense’ ought to be treated with caution. Their Honours also suggested: ‘It may be that the reasoning in Desktop Marketing with respect to compilations is out of line with the understanding of copyright law over many years’.167 What that understanding was is a somewhat contested history,168 but the High Court has clearly disapproved of the approach to originality adopted in Desktop Marketing, in what has been described as ‘robust obiter’.169 Gummow, Hayne and Heydon JJ considered the authors of compilations to be those who have ‘expended sufficient effort of a literary nature’.170 In a separate judgment, French CJ, Crennan and Kiefel JJ also considered originality in the context of subsistence. Their Honours began with the basic proposition that the work must originate with the author and that the creation, or production, of the work requires ‘some independent intellectual effort’.171 They went on to consider the level of skill and labour required and what are often represented as opposing ends of a spectrum: industrious collection at one end and creativity at the other. Their Honours saw these not as opposites but as ‘kindred aspects of a mental process’ that produce a literary work. A complex compilation will almost certainly involve both industrious collection of data and ‘creativity’, in the sense of productive thought in the selection and arrangement of the material.172 They commented that maybe: … too much has been made, in the context of subsistence, of the kind of skill and labour which must be expended by an author for a work to be an ‘original’ work. The requirement of the Act is only that the work originates with an author or joint authors from some independent intellectual effort.173 [page 176] Compilation cases since IceTV include another on phone directories,174 electronic material safety data sheets (MSDS) for hazardous substances,175 and a compatibility chart embodied in an

electronic file.176 The propositions in relation to originality that are now considered to be ‘well established’177 are that a work must have been ‘originated’ by an author (in the sense that it is not copied),178 the author must be an actual person, and to qualify as an author that person must have contributed ‘independent intellectual effort’ or ‘sufficient effort of a literary nature’.179 However, there is no requirement that the intellectual effort rise to the level of creativity, literary merit or inventiveness.180

Authorship and originality 6.36 The High Court in IceTV181 and subsequent Federal Court decisions have placed renewed emphasis upon the central role of authorship:182 Authorship and originality are correlatives. The question of whether copyright subsists is concerned with the particular form of expression of the work. You must identify authors, and those authors must direct their contribution (assessed as either an ‘independent intellectual effort’ of a ‘sufficient effort of a literary nature’) to the particular form of expression of the work. Start with the work. Find its authors. They must have done something, howsoever defined, that can be considered original.183 6.37 When considering works, it is essential to identify the authors. This is a necessary step in establishing a connecting factor to Australia (see 6.53), the duration of copyright (see 6.58–6.59) and the chain of title for ownership. It is the originator or author of the work who is, prima facie, the first owner of any copyright: see 7.2. The concept of authorship is also relevant when determining whether a work has been brought into existence and fixed in a material form (see 6.7), and fundamental when determining what elements are ‘original’. [page 177]

6.38 In IceTV v Nine Network Australia184 Gummow, Hayne and Heydon JJ expressed concern that earlier in the proceedings there had been no findings about the identity of the authors. This was because the defendant had conceded that copyright subsisted in the compilations and had argued the case on infringement. Their Honours commented that the concession had distracted attention from the significance of authorship in that case and that failure to precisely identify a work in suit and its authors may cause other issues before the court to go awry.185 6.39 It is not essential to identify every author who has contributed to copyright works by name, but it must be established that authors did indeed exist.186 In Telstra Corp v Phone Directories Telstra failed to identify authors for its directories. Some people claimed by Telstra to be authors had not made a contribution that could be said to be ‘independent intellectual effort’ or ‘sufficient effort of a literary nature’. Some who might have been authors were not employees of the company producing the directory. There was also ‘a real question over whether there was the requisite level of collaboration between those workers to be considered joint authors’187 because they performed their functions separately and often oblivious to the work of others. Significantly, substantial parts of the directories were automated to the point that human involvement was minor and so there were no human authors at all.188 Similar issues concerning authorship arose in the material safety data sheets case Acohs Pty Ltd v Ucorp Pty Ltd.189 Manufacturers, importers and suppliers of hazardous substances and dangerous goods must provide material safety data sheets (MSDS) with their products. Acohs Pty Ltd and Ucorp Pty Ltd are competitors in the business of producing MSDSs and Acohs brought a copyright infringement action against its competitor. Acohs claimed copyright in electronic MSDSs and in the source code for each such MSDS. Some electronic MSDSs were transcribed from sheets created by other people, some were authored by Acohs employees and others were created by users of the database. Achos could not establish copyright in the transcribed and user created material but only in the identified Acohs-authored MSDSs. Achos also claimed copyright in the source

code of each data sheet, but this was, the Federal Court held, a separate work created by the operation of the computer program and did not emanate from authors.190 In JR Consulting & Drafting Pty Ltd v Cummings191 the Full Court of the Federal Court discussed the problems arising from online literary works that are subject to [page 178] regular updating. Each individual update may be quite insubstantial. Questions the Full Court saw arising from this included: Is the text as altered, as a whole, to be regarded as a new original work? Are the changes, when analysed, just too insubstantial to bring about a new work? Do the alterations themselves reflect original authorship? If there is no new work as a whole (that is, a revised, updated whole), what ‘work’ is the true source of the rights of the copyright owner? What would be the ‘work’ once the foundation text has been amended in, for example, 30 or 50 ‘insubstantial’ ways? To identify ‘precisely’ the ‘work’ (and thus the source of the author’s rights) is it necessary to identify the state of the foundation text and then identify each and every change by addition and deletion to that text to show that at some point the ‘work in suit’ emerged.192 Similar complex questions emerge when a work has successive drafts.193

Works created by computers 6.40 Material created using a computer as a tool (for instance, a word processor) will be subject to the usual principles of copyright protection, but in circumstances where no human author is involved there will be no ‘original’ work for copyright to protect.194 Perhaps the simplest example to consider is that of satellite images of things such as weather patterns, vegetation and geological formations. In

many cases the data that makes up the images is collected automatically by remote sensors on satellites. The information is automatically processed by specialised computer programs and the final image downloaded or printed out in hard copy either automatically or at the press of a button.195 Expert systems may also generate reports without any original contribution or selection of data by a human author. Increased interactivity that allows users to play an integral role in content generation also complicates the issue of authorship. Analogies drawn between word processors and pens are readily comprehendible, and conceptualising computer technology as a tool preserves the central role of the human author. However, as the Telstra Corp v Phone Directories196 and Acohs Pty Ltd v Ucorp Pty Ltd197 cases discussed above illustrate, the reality is that with increasingly complex computer systems it is sometimes not possible to identify a human author. [page 179]

Sui generis protection for databases? 6.41 What of the situation where the compilation consists of valuable information (of commercial significance) put together at great effort and/or expense, such as databases that are large assemblies of information in electronic form, but where there is no original contribution by an author? It has been thought unreasonable that no sanction attaches to these databases being accessed, searched or reproduced without paying the appropriate fee to the database owner. It has also been argued that databases ‘provide a wealth of information to business people, professionals, scientists and consumers. If copyright protection is not given, the investment of time and money that is required to produce those compilations will not be forthcoming’.198 6.42 When databases that require significant investment to produce do not attract copyright protection this leads inevitably to calls for

the introduction of a sui generis right in non-original databases,199 to complement the protection already established for original databases as compilations.200 Such a concept has been recognised in the European Union, where a 1996 Directive on Legal Protection of Databases requires member states to confer on database owners a right to control the ‘extraction’ or ‘reutilisation’ of the whole or a substantial part of the contents of a database.201 Article 10 of the TRIPS Agreement also requires protection for databases, and at various times the protection of non-original compilations has been on the international agenda. Proposals for database protection were ultimately omitted from what became the WIPO Copyright Treaty of 1996 (see 21.35), and there remain significant differences of opinion over the issue. A database right of this kind would grant protection against repeated systematic copying of insubstantial parts which conflicted with the interests of the owner.202 In the Australian IceTV case, French CJ, Crennan and Kiefel JJ in the High Court stated that the fact that there was long-term systematic copying of information in that case did not alter their conclusion that the parts taken were not substantial and so did not infringe copyright.203

PART IV OTHER SUBJECT MATTER 6.43 Subject matter other than works Part IV of the 1968 Act introduced ‘new’ categories of subject matter upon which copyright protection is conferred in order to protect the entrepreneurial investment of producers and publishers. The Pt IV copyrights cover sound recordings, cinematograph films, television and sound [page 180] broadcasts and published editions of works. Importantly, copyright in this material does not affect the copyright in any work from which the subject matter may be derived: s 113.

Sound recordings 6.44 Section 89 establishes the circumstances under which copyright subsists in sound recordings. This category predates the 1968 Act. In 1911, s 19 of the British Copyright Act extended protection to records to overcome problems of piracy unknown before the invention of the gramophone. The extended protection was intended to allow recovery for entrepreneurial risk taken in producing and marketing such ‘industrial’ (rather than ‘intellectual’) property. The Spicer Committee reported that, at least in the case of sound recordings, a great deal of artistic and technical skill may be required.204 This artistic input is supplied by a sound engineer who, with the record producer, is often independent of the record company which presses, markets and distributes the sound recording.205 However, the first owner of copyright in the sound recording will be the recording company as the ‘maker’ (s 22(3)), this being the person who pays for the making of the recording, although this may vary by virtue of contractual arrangements between those involved in making the recording. 6.45 Definitions ‘Sound recording’ is defined in s 10(1) to mean

‘the aggregate of the sounds embodied in a record’. ‘Record’ is in turn defined to mean ‘a disc, tape, paper or other device in which sounds are embodied’. This wide definition covers not only plastic discs and cassette or reel to reel tapes, but also CDs and other digital methods of storing sound.206 In fact, the definition, formulated long before many of these products were imaginable, has proved to be ‘technology neutral’ and able to embrace new methods of recording. 6.46 Separate copyright As noted above, the subsistence of copyright in a sound recording in no way affects the copyright in any work embodied in the recording. In CBS Records Australia Ltd v Telmak Teleproducts (Australia) Pty Ltd207 one of the issues between the parties was whether a ‘sound alike’ (that is, a later sound recording by other performers which is an imitation of the original) was within the description of a copy of a sound recording which is referred to in s 10(3)(c). The dispute concerned a compilation by Telmak entitled Chart Sounds 16 Hit Songs No 1 in the form of a record and a cassette. CBS owned the ‘sound recording’ copyright in various of the re-recorded songs. In finding for the defendant on this point, Bowen CJ reiterated that this copyright only protects the actual embodiment of the very sounds on the original record.208 This is not to say that ‘sound alike’ recordings may not infringe the musical and literary work copyrights which subsist in recorded music, [page 181] but these are typically owned by the original composers or their music publishers, and a compulsory licence scheme generally allows recorded works to be ‘covered’ by other artists on payment of a fee or royalty: see 7.23.

Cinematograph films 6.47 Copyright in films and soundtracks Section 90 establishes the circumstances under which copyright subsists in cinematograph films. Since 1968, motion pictures in Australia have had a separate copyright from any underlying work copyrights in the script,

choreography or score. The Act provides in s 10(1) that: … ‘cinematograph film’ means the aggregate of the visual images embodied in an article or thing so as to be capable by the use of that article or thing — (1) of being shown as a moving picture; or (2) of being embodied in another article or thing by the use of which it can be so shown; and includes the aggregate of the sounds embodied in a soundtrack associated with such visual images. The means by which a ‘moving picture’ is produced are not relevant in determining whether the end result is a ‘film’. Thus, in Galaxy Electronics Pty Ltd v Sega Enterprises Ltd209 the moving images in a computer-generated video game were held to be a film. In that case the embodiment of the visual images was not confined to a conventional series of frames; moving pictures captured in digital formats would fall within the definition. There must be a ‘material embodiment’.210 In Commissioner of Taxation v Seven Network Ltd,211 the Full Court of the Federal Court held that international television signals of the Olympic games received by the Seven Network for broadcasting in Australia were not embodied in any ‘thing’, and so the visual images and sounds were not cinematograph films.212 The term ‘sound-track’ is defined in s 10(1) as meaning either sounds embodied in the film itself or a separate device in which sounds are embodied and which is made available by the maker of the film for use in conjunction with the film. Furthermore, it is specifically provided that sounds embodied in a soundtrack associated with visual images forming part of a film are deemed not to be a sound recording: s 23(1). The intention here is evidently that the unauthorised reproduction of a soundtrack is to be taken to infringe the ‘film’ copyright rather than a ‘sound’ right. However, this is only true of the soundtrack as such, as opposed to pre-existing sound recordings which may be embodied in the soundtrack (as frequently occurs with the inclusion of popular songs in movies). The High Court has held that s 23(1) does not have the

[page 182] effect of ‘merging’ any copyright in a pre-existing recording into the copyright of any film in which it is featured; rather, the recording copyright continues and may still be used to control or claim remuneration for any subsequent use of the recording, as, for example, where the film is broadcast on commercial television.213

Broadcasts 6.48 Section 91 establishes the circumstances under which copyright subsists in television and sound broadcasts. Both sound and television broadcasts were first granted copyright protection under the 1968 Act. Broadcasts first made before then are not protected by copyright law, but otherwise there is no limitation on the subject matter protected as a broadcast: it does not matter whether the broadcast is based on a work or other subject matter, or simply a live broadcast of a sporting event, or an unscripted interview with a politician in which there is no copyright. The ‘broadcast rights’, like all Pt IV copyrights, exist independently of any underlying copyright in the material being broadcast, although allowing a work to be broadcast is taken to be licensing further broadcasts of the material, much as a performer who gives permission for a recording of a performance to be broadcast will be taken to have licensed all subsequent broadcasts. 6.49 The definition of ‘broadcast’ The definition of ‘television broadcast’ in s 10(1) refers to visual images broadcast by way of television, together with any sounds broadcast for reception along with those images. A ‘sound broadcast’ means sounds broadcast other than as part of a television broadcast. ‘Broadcast’ itself was originally conceived as a transmission by ‘wireless telegraphy’, but is now defined to mean ‘a communication to the public delivered by a broadcasting service within the meaning of the Broadcasting Services Act 1992’.214 Conceptually, a broadcast now falls within the wider right of ‘communication’ that was introduced by the digital agenda amendments to replace what were previously the separate rights of

broadcasting and diffusion: see 5.8. Nevertheless, the Copyright Act continues to single out broadcasts as a category of copyright subject matter so as to protect the output of official broadcasters. In Network Ten Pty Ltd v TCN Channel Nine Pty Ltd215 the High Court analysed the nature of copyright in a broadcast, in the context of a complaint that the Ten Network had infringed copyright by broadcasting short segments taken from some of the [page 183] Nine Network’s programmes, as part of a satirical show called The Panel. The Full Court of the Federal Court had accepted that any unauthorised rebroadcasting will infringe a broadcaster’s copyright, no matter how brief. The High Court rejected that approach. There was no indication that the legislature intended to protect each and every image and so place broadcasters in a far more privileged position than owners of other categories of copyright material.216 McHugh ACJ, Gummow and Hayne JJ noted that ‘there can be no absolute precision as to what in any of an infinite possibility of circumstances will constitute “a television broadcast”’,217 but the programmes that were the subject of Nine’s claim in that case, such as The Today Show and Wide World of Sports, were broadcasts.218 Their Honours also agreed with the trial judge in that case that television advertisements should be treated as discrete television broadcasts. The High Court left open the question whether individual segments or ‘stories’, for instance in a news broadcast, should be characterised as separate broadcasts.219 6.50 ‘To the public’ One key aspect of the concept of broadcasting, as defined in s 10(1), is that it is ‘to the public’. In Telstra Corp Ltd v APRA220 the High Court held that the ‘public’ that must be considered here is the ‘copyright owner’s public’. This might be the public at large, or just a section of the public: what matters is the character of the audience and the intent of the transmission. In this instance the supply of music to mobile telephones while the users were being kept ‘on hold’ was held to constitute a transmission to the

public, even though at any one time the number of such users might be small. This notion of broadcasting as transmission to the public may be contrasted with ‘narrowcasting’, or transmitting to specified end-users, such as taxi radios, ship-to-shore radios and other forms of two-way communication. It could be said that cable television involves ‘narrowcasting’, but it also relies to some extent on broadcasting. Similarly, satellite delivery to hotels and clubs throughout Australia via ‘Sky Channel’ (featuring mainly sport and light entertainment) is arguably ‘narrowcasting’, but would also be regarded as being transmission to ‘the public’ on the view taken in cases such as Telstra v APRA.221 The ‘public’ for this purpose consists of persons both within and outside Australia: s 10(1).

Published editions of works 6.51 Protection for publishers The fourth category of ‘other’ subject matter protects the presentation or typographical arrangement of works in printed form: s 92. [page 184] This type of protection was only introduced with the 1968 Act, so no protection for a published edition exists in a book published before the commencement of that Act: s 224. As with other Pt IV copyrights, the published edition copyright is entirely separate from any copyright in the underlying works: hence it may be protected even if the work presented is itself in the public domain. For example, a contemporary edition of Blackstone’s Commentaries may be protected under this head, or a beautiful presentation of the score for Handel’s Messiah. The scope of the ‘published edition copyright’ was discussed in Nationwide News Pty Ltd v Copyright Agency Ltd,222 which concerned the question of entitlement to fees collected under a statutory licence for photocopying of material from newspapers. For the purposes of the action, the journalists who wrote the articles were the owners of copyright in those literary works. The proprietors of

the newspapers and magazines, being the employers of the journalists, owned copyright in the works when first published in the periodical, and had previously attempted to claim ownership of the journalists’ work when put to further use by a press clipping service (or photocopied for educational use).223 The publishers claimed, however, that copying an article from a newspaper or magazine infringed their copyright in a ‘published edition’. The Full Court of the Federal Court accepted that such copyright subsisted in various aspects of the layout of newspaper editions:224 Published edition copyright protects the presentation embodied in the edition. This form of copyright, as the legislative history shows, protects such matters as typographical layout. However, it also protects other aspects of presentation, such as juxtaposition of text and photographs and use of headlines. In the present case, a considerable volume of evidence was adduced on the importance of layout and presentation to magazines and newspapers. In modern times, the work of typesetters is shared among subeditors, layout artists or designers and production editors. It is clear that layout is often extremely important in attracting readers to read a particular story or magazine. It is also clear that the choice of layout, type size, headings and colour is a skilled operation. Published edition copyright thus protects the product of skill, labour and judgment in presenting material in an edition. The court went on to hold, however, that the copying of single articles did not constitute reproduction of a ‘substantial part’ of the edition, hence there was no infringement: see 8.23.

Originality for Pt IV copyright 6.52 Part IV makes no reference to the concept of ‘originality’ that is, as discussed above (see 6.32ff), so central to works. The requirement of originality for Pt IV copyright is implied rather than expressly required, in that the Act refers to the ‘first’ publication of such subject matter in calculating the duration of protection

[page 185] and in establishing whether the subject matter qualifies for protection in Australia: see 6.58–6.59, 6.53.

CONNECTING FACTORS Establishing a connection to Australia 6.53 In order to receive copyright protection in Australia, there must be a factor connecting the relevant work or subject matter with this country. In the absence of such a factor, any protection here will depend upon the international copyright recognition provisions being satisfied.225 The relevant connecting factors vary according to the type of work or subject matter involved: unpublished original work: the author must be a qualified person (see 6.54) when the work or matter is made or for a substantial part of the period during which it is made (s 32(1)); published original work (other than a building or artistic work attached to a building): the first publication must take place in Australia, or the author must be a qualified person when it is first published, or (if the author dies before publication) the author must have been a qualified person at the time of his or her death (s 32(2)); building or artistic work attached to a building: the building must be situated in Australia (s 32(3)); sound recording or film: the maker must be a qualified person at the time it is made, or it must be made in Australia, or its first publication must take place in Australia (ss 89, 90); broadcast: the broadcast must be made from a place in Australia by the ABC, SBS or the holder of a licence under the Broadcasting Services Act 1992 (Cth) (s 91); published edition of works: the first publication must take

place in Australia or the publisher must be a qualified person at the date of first publication: s 92.

‘Qualified person’ 6.54 Many of the connecting factors hinge on the author, maker or publisher being a ‘qualified person’. This term is defined, where original works are concerned, to mean an Australian citizen or a person resident in Australia: s 32(4). The same definition obtains for subject matter other than works, with the added alternative of an Australian corporation: s 84.

Establishing whether publication has occurred 6.55 The concept of publication is an important element in the copyright regime. It may be important to know when and where a work or subject matter is [page 186] first published in order to establish the necessary connection with Australia.226 As far as original works or editions are concerned, publication occurs when reproductions are ‘supplied (whether by sale or otherwise) to the public’: s 29(1)(a).227 It would appear that a work is ‘supplied’ when and where it is offered to the public, whether or not a sale or receipt actually results.228 Similarly, a sound recording is published when a record embodying all or part of the recording is supplied to the public (s 29(1)(c)); and a film when a copy is ‘sold, let on hire, or offered or exposed for sale or hire, to the public’: s 29(1)(b). Making a work available on the internet would constitute publication for the purpose of s 29(1)(a), assuming that the capacity for downloading by more than one user satisfies the need for reproductions (plural) to be supplied.229

Acts which do not constitute publication 6.56

Certain acts are expressly provided by s 29(3) not to

constitute publications. These are: (a) the performance of a literary, dramatic or musical work; (b) the supplying to the public of records of a literary, dramatic or musical work; (c) the exhibition of an artistic work; (d) the construction of a building or a model thereof; and (e) the supplying to the public of photographs or engravings of a building, of a model thereof, or of a sculpture. The Act also provides that publications should be disregarded where they are unauthorised (s 29(6), (7)) or where they are ‘merely colourable’ and ‘not intended to satisfy the reasonable requirements of the public’: s 29(4).230 Finally, it should be noted that a publication in Australia (or another country) may be treated as the first publication notwithstanding an earlier publication elsewhere, provided the two publications occurred within 30 days of each other: s 29(5).

‘Publication’ in the context of copyright infringement 6.57 Although s 29 sets out in detail circumstances in which publication is deemed to have occurred for the purposes of the Act, the High Court has held that it does not control the meaning of the words ‘to publish’ in s 31, which lists the acts that [page 187] a copyright owner is exclusively entitled to do in relation to a work. Publication in that context (and thus for the purpose of determining whether an infringement has occurred) is to be taken to mean ‘to make public that which has not previously been made public in the copyright territory’.231 Hence, the copyright owner’s right is one of first publication, so that, for example, it is not an infringement of the publication right for a bookseller to supply the public with copies of a book that has already been (lawfully) placed on the market.232

DURATION OF COPYRIGHT The statutory periods 6.58 As with the connecting factors, the period for which copyright protection subsists depends upon the nature of the work or subject matter. There are three important dates to keep in mind when calculating duration; these dates relate to significant reforms. The first is 1 May 1969, when the 1968 Act commenced operation.233 The second date is 1 January 1955. On 1 January 2005, the copyright term was extended by 20 years for most material, but copyright was not revived if it had already expired. Depending upon the category of material concerned, where an author had died or material had been first published before 1 January 1955, and so copyright had expired, it remained in the public domain when the new extended periods commenced operation. The third date is 1 January 2019. Before that date, there were significant differences between published and unpublished literary, dramatic and musical works. For these three categories of work, if they were unpublished at the time of the author’s death, copyright continued until 70 years after first publication. If unpublished, these works could potentially be protected by copyright indefinitely. The protection period for films, sound recordings, and copyright owned by the crown and international organisations was calculated from the year of first publication; if this subject matter remained unpublished, it was also protected indefinitely. In 2017 these distinctions between published234 and unpublished material were removed,235 with a commencement date for the reforms of 1 January 2019. [page 188] 6.59 After 1 January 2019,236 when the recent reforms commence operation, the following terms will apply: literary, dramatic, musical and artistic works: 70 years from the expiration of the year of the author’s death (s 33(2), (3))

except in the following circumstances. These circumstances seem complex, but it is helpful to keep in mind that they were introduced to facilitate access to old unpublished and anonymous works: – if the author of a literary work (other than a computer program237), a dramatic work or an engraving has died, the identity of the author is known, and the work was not made public before the author’s death, but was first made public before 1 January 2019, the duration is 70 years after the expiration of the year the work was made public; – if the identity of the author of a work was not generally known at any time after it was made public, and the work was made public either before 1 January 2019 or, if after that date, within 50 years of the work being made, the duration is 70 years after the expiration of the year the work was made public; and – if the identity of the author of the work was not generally known at any time after it was made and the work was not made public within 50 years of the work being made, the duration is 70 years after the expiration of the year the work was made; sound recordings and films: 70 years after the expiration of the year the material was made public if that happened within 50 years of the material being made (s 93). However: – if the material was not made public within 50 years of the work being made, the duration is 70 years after the expiration of the year the work was made; and – if the material was first made public before 1 January 2019, copyright lasts 70 years after the expiration of the year that happened, regardless of whether that was within 50 years of the work being made; broadcasts: 50 years from the expiration of the year of broadcast (s 95(1)); and238

published editions of works: 25 years from the expiration of the year of first publication: s 96. In the case of joint authors, the relevant death for the above purposes is that of the author who dies last: s 80. Where the identity of one or some, but not all, joint [page 189] authors is not generally known, the relevant death is that of the last author whose identity is disclosed: s 81. Where the Crown owns copyright, it lasts until 50 years after the expiration of the year the material w as made: s 180.239

Extension of the copyright term 6.60 Under Art 12 of the TRIPS Agreement, a copyright term of at least 50 years must generally be granted, whether dated from authorised publication or making of the work, or else the term must be calculated on the basis of the life of the creator. Significantly, this does not prevent member nations granting longer terms. Harmonisation of European Community copyright law, for example, led to the adoption of a common term of 70 years from the death of the author, following the German practice. This came into force from 1 January 1996 and created problems as some public domain material went back into copyright.240 The heirs of creators who died between 1925 and 1945, and whose work was out of copyright until 31 December 1995, received a windfall. Sir Edward Elgar, D H Lawrence, Rudyard Kipling, Beatrix Potter, Virginia Woolf, James Joyce, Sir Arthur Conan Doyle and many other writers, artists and composers had copyright extended to the 70-year period after their death. In fact, the music and book publishers who purchased the copyrights are the main beneficiaries; they lobbied hard for the change and were entitled to charge a ‘reasonable fee’ to anyone exploiting the revived copyrights. In the United States, similarly, the Sonny Bono Copyright Term Extension Act 1998 added 20 years to existing and future copyrights.241 In Australia, the question of

copyright duration was considered by the Intellectual Property Competition Review Committee (IPCRC), which recommended against any extension (as proposed by some copyright owners) in the absence of clear evidence that the benefits would outweigh the costs, especially for a country that is a net importer of copyright material.242 Nevertheless, Australia extended its copyright terms by 20 years to 70 years from the death of the author or publication as part of the Australia–United States Free Trade Agreement.243 These amendments commenced operation on 1 January 2005. If copyright had expired before 1 January 2005, it was not revived. The extension of the copyright term was extremely controversial.244 The Joint Standing Committee on Treaties received a considerable number of submissions and evidence for and against the extension during its review of the free trade [page 190] agreement.245 Arguments for included the benefits arising from harmonisation with Australia’s trading partners and the obvious benefits to copyright owners. One of the benefits claimed to arise from harmonisation is cost savings in managing intellectual property rights internationally, although Dr Matthew Rimmer pointed out to the Joint Standing Committee that the difference in retrospectivity (retrospective in Europe and the United States but not in Australia) may lead to transactional costs if there is confusion when dealing with the period between 1928 and 1954.246 Arguments against focused on the costs of extended terms of payment of royalties and the impact on libraries and educational and research institutions. The Joint Standing Committee on Treaties also received a number of submissions arguing that if the copyright term was to be extended then the benefit to copyright owners should be balanced against the interests of copyright users by introducing a more open-ended fair use defence, similar to that operating in the United States.247 This led to the Fair Use Inquiry and some reforms in 2006:248 see 8.38.

Establishing whether material has been ‘made public’ 6.61 After 1 January 2019, when the recent reforms to copyright duration commence operation,249 a new s 29A defines the phrase ‘made public’. Section 29A(1) provides that a work is ‘made public’ in the following circumstances: (a) the work, or an adaptation of the work, is: (i) published, performed in public, broadcast or otherwise communicated to the public; or (ii) if the work is an artistic work—exhibited in public; or (b) if the work is an artistic work included in a cinematograph film—the film is seen in public; or (c) if the work is a building—the building has been constructed; or (d) records of the work, or of an adaptation of the work, are: (i) offered to the public (whether or not for sale); or (ii) exposed for sale to the public. Section s 29A(2) provides that subject matter (other than works) is made available to the public when: (a) it is published; or (b) if the material is a sound recording—it is: (i) heard in public; or (ii) communicated to the public; or [page 191] (c) if the material is a cinematograph film—it is: (i) seen in public (to the extent it consists of visual images); or (ii) heard in public (to the extent it consists of sounds); or

(iii) communicated to the public; or (d) copies of the material are: (i) offered to the public (whether or not for sale); or (ii) exposed for sale to the public. Section 29(4)–(7) apply to these provisions in the same way they do to the concept of ‘publication’ in s 29.250 This means that unauthorised releases are to be disregarded, as are those that are ‘merely colourable’ and ‘not intended to satisfy the reasonable requirements of the public’.

1.

2. 3. 4. 5. 6. 7. 8. 9. 10. 11. 12. 13. 14.

Hollinrake v Truswell [1894] 3 Ch 420 at 427; Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd (1921) 29 CLR 396 at 400; Victoria Park Racing & Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 at 498; Autodesk Inc v Dyason (1992) 173 CLR 330 at 344–5; IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 at 472. The TRIPS Agreement maintains this as a fundamental concept. Article 9 states: ‘Copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts.’ Plix Products Ltd v Frank M Winstone (Merchants) Ltd (1984) 3 IPR 390 at 418. Corelli v Gray (1913) 29 TLR 570 at 570. Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479: see 1.45. For a discussion of the legacy of this case, see McKeough 2009. Loughlan 2002a, 43. Loughlan argues that protection of free speech through the idea/expression dichotomy is illusory. For further discussion of copyright and free speech, see Griffiths & Suthersanen 2005. Desktop Marketing Systems Pty Ltd v Telstra Corp Ltd (2002) 55 IPR 1 at 57; cf IceTV v Nine Network Australia (2009) 239 CLR 458 and see 6.33ff. [1938] Ch 106. This meant that copyright was owned by the journalist’s employer, as the work was performed pursuant to a contract of service: see 7.2–7.5. [1938] Ch 106 at 109–10. See also Tate v Fullbrook [1908] 1 KB 821; Tate v Thomas [1921] 1 Ch 503. [1938] Ch 106 at 109–10. See Elizabeth Adeney’s argument that the author of the work need not be the person who fixes it into a material form: Adeney 2011. Telstra Corp Ltd v Phone Directories Co Pty Ltd (2010) 194 FCR 142 at [59]. [1900] AC 539. It should be noted that Walter v Lane was decided under copyright legislation which did not require ‘originality’ as a separate requirement for the subsistence of copyright. Nevertheless, later courts have still referred to Walter v Lane in accepting that ‘originality’ does not necessarily mean novelty but simply that some degree of skill is

15. 16. 17. 18. 19. 20. 21. 22. 23. 24. 25. 26. 27.

28. 29. 30. 31.

32.

33. 34. 35. 36.

necessary. For a discussion of the subsequent use of the case, see Gravells 2007. [1927] 1 Ch 167. Ibid at 173. Li v Leng (2013) 105 IPR 418. See discussion in Adeney 2016. Coles v Dormer (2015) 117 IPR 184 at [43]. (1890) 25 QBD 99. Ibid at 104. Other cases on this point include Kalamazoo (Australia) Pty Ltd v Compact Business Systems Pty Ltd (1985) 5 IPR 213; FAI Insurance Ltd v Advance Bank Australia Ltd (1986) 7 IPR 217; Tate v Thomas [1921] 1 Ch 503. Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 at 345. (1999) 202 CLR 1 at 16. See Reynolds 2000, noting the unwillingness of the High Court in Data Access to address the policy consequences of affording copyright protection to functionality, as indeed arguably occurred in that case: see 8.11. IceTV v Nine Network Australia (2009) 239 CLR 458 at 477, 481, 512. See further 6.35. (1937) 38 CLR 479 at 509. (1970) 121 CLR 154. See also Nine Network Australia Pty Ltd v Australian Broadcasting Corp (1999) 48 IPR 333. Cf Australian Broadcasting Corp v Lenah Game Meats Pty Ltd (2001) 208 CLR 199 at 318, 322, where Callinan J suggested that the time may have come for the common law to fashion some kind of protection for the ‘owner’ of a spectacle, ‘under the rubric of nuisance or otherwise’. Bowrey 1995, 297. Ibid, 279. Ibid. This definition was inserted by the US Free Trade Agreement Implementation Act 2004 (Cth). The definition of ‘material form’ is relevant to subsistence, as discussed here, and also to the right of reproduction in a material form (see discussion at 8.2). The earlier definition dated from 1984 when reforms were introduced to accommodate computer programs. The CLRC had recommended removal of the words ‘whether visible or not’ from the earlier version of the definition on the grounds that they are redundant, but the phrase was retained in the 2004 version: CLRC 1995. The extension of copyright to ‘new’ subject matters in the 1968 Act had originally been recommended by the Spicer Committee, which in turn was based on the Gregory Committee report in the United Kingdom: Spicer 1959; Gregory 1952. The majority of the CLRC in its simplification reference recommended the amalgamation of subject matters into only two categories encompassing works of creation and works of production: CLRC 1999, [5.57]. The recommendations were never implemented. CLRC 1999, [5.07]. Sega Enterprises Ltd v Galaxy Electronics Pty Ltd (1996) 69 FCR 268 at 274 (Burchett J), appeal dismissed: Galaxy Electronics Pty Ltd v Sega Enterprises Ltd (1997) 75 FCR 8. Galaxy Electronics Pty Ltd v Sega Enterprises Ltd (1997) 75 FCR 8 at 17 (Wilcox J). Seven Network Ltd v Federal Commissioner of Taxation (2014) 109 IPR 520 at [55] (Bennett J), appeal dismissed: Federal Commissioner of Taxation v Seven Network Ltd (2016) 241 FCR 1.

37. 38. 39. 40. 41. 42.

43. 44. 45. 46. 47. 48. 49. 50. 51. 52. 53. 54. 55. 56. 57. 58. 59. 60. 61. 62. 63.

Note that under this definition it does not appear that a compilation of artistic works will attract copyright protection: see Monotti 1993. University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 608. Vaver 1996, 74. [1982] RPC 69. Ibid at 503. In some instances it may be possible to establish that the work in question is an artistic work: see eg Roland Corp v Lorenzo & Sons Pty Ltd (1991) 22 IPR 245; Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd (2008) 172 FCR 580 at 591. In any event, protection for these matters may more aptly be provided by protecting any business reputation attached to them, eg by an action for passing off or under s 18 of the Australian Consumer Law (ACL): see Chapter 16. Apple Computer Inc v Computer Edge Pty Ltd (1984) 53 ALR 225 at 234–5, 258–9. (2009) 81 IPR 525. There was also a public policy issue in this case. It would have been inappropriate to find a taxi driver or passerby who used the words in an emergency to have infringed copyright: ibid at 529. (2008) 172 FCR 580. Ibid at 591. However, they were artistic works: see 6.25. Francis Day & Hunter Ltd v 20th Century Fox Corp Ltd [1940] AC 112 at 123; Milwell v Olympic Amusements Pty Ltd (1999) 85 FCR 436 at [29]. Cf Data Access Corp v Powerflex Services Pty Ltd (1999) 202 CLR 1: see 6.16. Fairfax Media Publications v Reed International Books Australia (2010) 88 IPR 11 at [50]. Apple Computer Inc v Computer Edge Pty Ltd (1983) 50 ALR 581 at 591; and see Hollinrake v Truswell [1894] 3 Ch 420 at 428; Exxon Corp v Exxon Insurance Consultants International Ltd [1982] RPC 69 at 88. Apple Computer Inc v Computer Edge Pty Ltd (1984) 53 ALR 225. Computer Edge Pty Ltd v Apple Computer Inc (1986) 161 CLR 171. Ibid at 183–4. See eg Christie 1995. As to circuit layouts legislation, see Chapter 9. Stevens v Kabushiki Kaisha Sony Computer Entertainment (2005) 224 CLR 193 at 200. See CLRC 1995, [3.22]–[3.25]. (1999) 202 CLR 1 at 16. CLRC 1995, [6.32]. Australian Video Retailers Association Ltd v Warner Home Video Pty Ltd (2001) 53 IPR 242 at 258; Dais Studio Pty Ltd v Bullet Creative Pty Ltd (2007) 74 IPR 512 at 526. See Australian Video Retailers Association Ltd v Warner Home Video Pty Ltd (2001) 53 IPR 242; and see also Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 41 IPR 593. Data Access Corp v Powerflex Services Pty Ltd (1999) 202 CLR 1 at [99]. Data Access Corp v Powerflex Services Pty Ltd (1999) 202 CLR 1 at [53]; Dais Studio Pty Ltd v Bullet Creative Pty Ltd (2007) 74 IPR 512 at [36]. (2012) 95 IPR 424.

64. 65. 66. 67. 68.

69. 70. 71. 72. 73. 74. 75. 76.

77. 78. 79. 80. 81. 82. 83. 84. 85.

86.

Ibid at [146]. Desktop Marketing Systems Pty Ltd v Telstra Corp Ltd (2002) 55 IPR 1; Telstra Corp Ltd v Phone Directories Co Pty Ltd (2010) 194 FCR 142. IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458. Acohs Pty Ltd v Ucorp Pty Ltd (2012) 95 IPR 117. For examples of material held not to be dramatic works, see Australian Olympic Committee Inc v Big Fights Inc (1999) 46 IPR 53 (film of real life events which have not been ‘staged’ or ‘directed’); Aristocrat Leisure Industries Pty Ltd v Pacific Gaming Pty Ltd (2000) 50 IPR 29 (animation on electronic gaming machines, where no element of ‘performance’ by characters). [1921] 1 Ch 503. (1975) 7 ALR 233. (1982) 46 ALR 189. See eg Telstra Corp Ltd v Royal & Sun Alliance Insurance Ltd (2003) 57 IPR 453. Cf Rebikoff 2001, proposing a more systematic approach to the determination of infringement in such cases. (1983) 2 IPR 191. Such as ‘For [name of contestant], opportunity knocks’; and ‘This is your show, folks, and I do mean you’. Nor in passing off, since Green’s reputation had not extended to New Zealand. On appeal, the Privy Council endorsed this finding: Green v Broadcasting Corp of New Zealand (1989) 16 IPR 1. See also Nine Films & Television Pty Ltd v Ninox Television Ltd (2005) 67 IPR 46, involving the reality television show The Block, which did not infringe copyright in a NZ television programme called Dream Home. Although the Seven Network may have had an arguable case that its literary and dramatic copyright in My Kitchen Rules was infringed by the television programme Hotplate, it was not a strong enough case to be granted an interlocutory injunction: Seven Network (Operations) Ltd v Endemol Australia Pty Ltd (2015) 114 IPR 287. (1999) 48 IPR 333. The council had evidently decided to ‘party like it’s 1999’ and overlook arguments that the millennium actually started on 1 January 2001. (1999) 48 IPR 333 at 338. Copyright Act 1905 (Cth) s 4. Ricketson & Creswell 2017, [7.300]. See Hadley v Kemp [1999] EMLR 589. See Hyperion Records Ltd v Sawkins (2005) 64 IPR 627 (modern performing editions of baroque music). For a consideration of the approach to originality in this UK case and IceTV in Australia, see O’Bryan 2011, 103. See eg ZYX Music GmbH v King (1995) 31 IPR 207; and see also 6.29. In its report on computer software the CLRC doubted whether screen displays that are generated by a computer program fell within the definition of an artistic work because they are unlikely to satisfy the ordinary meaning of ‘painting’ or ‘drawing’ or so forth: CLRC 1995, [9.43]–[9.48]. A film cannot be characterised as a work of artistic craftsmanship, or indeed as any kind of artistic work: Wills v Australian Broadcasting Corp (No 3) (2010) 89 IPR 252 at [23], but artistic works can be incorporated into films as underlying works, for instance cartoon drawings. See eg Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 24

87. 88. 89. 90. 91. 92. 93. 94. 95. 96. 97. 98. 99. 100. 101. 102. 103. 104. 105. 106. 107. 108. 109. 110. 111. 112. 113. 114.

115. 116. 117.

IPR 461 (engineering drawings for slurry pumps). Merchandising Corp of America Inc v Harpbond Ltd [1983] FSR 32. Ibid at 35. Cf Australian Chinese Newspapers Pty Ltd v Melbourne Chinese Press Pty Ltd (2003) 58 IPR 1 (logo composed of four Chinese characters created by ‘expressive’ brush strokes held to be a painting). (1986) 7 IPR 295. (1984) 3 IPR 115. Cf Lucasfilm Ltd v Ainsworth [2009] EWCA Civ 1328 at [65]. (1990) 17 IPR 417. Ibid at 427. Wildash v Klein (2004) 61 IPR 324. In that case candle holders and mozzie coil holders in the form of critters made of wire were held to be sculptures. (2008) 78 IPR 145. Ibid at 182. Lucasfilm Ltd v Ainsworth [2009] EWCA Civ 1328 at [75]. Ibid at [77]. Lord Phillips and Lady Hale agreeing. Lucasfilm Ltd v Ainsworth (2011) 92 IPR 647 at [47]. Ricketson & Creswell 2017, [7.365]. Roland Corp v Lorenzo & Sons Pty Ltd (1991) 22 IPR 245; Deckers Outdoor Corp Inc v Farley (No 5) (2009) 83 IPR 245; Facton Ltd v Xu (2015) 111 IPR 103 at [26]– [31]. (2008) 172 FCR 580. Ibid at 591. The words and numbers were too insubstantial and vague to be a literary work. See also 6.13. See also Facton Ltd v Mish Mash Clothing Pty Ltd (2012) 94 IPR 523 at [30]–[31] (diagram upon which a trade mark was based was an original artistic work). (1986) 7 IPR 217. Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd (2008) 172 FCR 580. See 8.14. Darwin Fibreglass Pty Ltd v Kruhse Enterprises Pty Ltd (1998) 41 IPR 649 at 654. Half Court Tennis Pty Ltd v Seymour (1980) 53 FLR 240. Darwin Fibreglass Pty Ltd v Kruhse Enterprises Pty Ltd (1998) 41 IPR 649. It was held in the same case that a plug and mould used to construct such a pool each constituted a ‘model’ of a building and hence attracted separate copyright protection. Gregory 1952, [260]. Burge v Swarbrick (2007) 232 CLR 336 at 359. Ibid at 364. As previously recommended by the Australian Law Reform Commission: ALRC 1995, [17.19]–[17.25]. The Act did not, though, implement the ALRC’s further recommendation that the term ‘artistic craftsmanship’ be defined in the Copyright Act, so as to provide greater certainty as to the operation of s 77. Cf Rushton 2001, arguing on economic grounds that works of artistic craftsmanship should not be protected at all. (2007) 232 CLR 336. See also Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 41 IPR 593. Burge v Swarbrick (2007) 232 CLR 336 at 360.

118. 119. 120. 121.

122. 123. 124. 125. 126. 127. 128. 129. 130. 131. 132. 133. 134. 135. 136. 137. 138. 139. 140. 141.

142. 143.

Ibid at 361. Ibid at 362. (2007) 232 CLR 336. In Burge v Swarbrick there was no need for the High Court to consider the situation where the craft aspect and artistic input of the work have been supplied by different people: see eg Burke & Margot Burke Ltd v Spicers Dress Designs [1936] Ch 400. But cf Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 41 IPR 593. (2007) 232 CLR 336 at 359 citing George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64 at 91. (1998) 41 IPR 593 at 606. Computer Edge Pty Ltd v Apple Computer Inc (1986) 161 CLR 171 at 185. As to the effect of the amended definition, see Data Access Corp v Powerflex Services Pty Ltd (1999) 202 CLR 1 at 37–9. (1986) 161 CLR 171 at 186. Ibid. As to the requirement of objective similarity, see 8.4. CLRC 1995, Recommendation 2.04(e)(ii). Redwood Music Ltd v Chappell & Co Ltd [1982] RPC 109; A-One Accessory Imports Pty Ltd v Off Roads Imports Pty Ltd (1996) 34 IPR 306; Boyapati v Rockefeller Management Corp (2008) 77 IPR 252. ZYX Music GmbH v King (1995) 31 IPR 207; A-One Accessory Imports Pty Ltd v Off Roads Imports Pty Ltd (No 2) (1996) 34 IPR 332. See eg Warwick Film Productions Ltd v Eisinger [1969] Ch 508; and see also 8.7. See eg Joy Music Ltd v Sunday Pictorial Newspapers Ltd [1960] 2 QB 60; and see also 8.8. Section 32(1) states that copyright subsists in certain ‘original’ works, even if unpublished. Section 32(2) also requires the published work to be ‘original’ in order to acquire or retain protection under the Act. [1916] 2 Ch 607. Ibid at 608; and see Data Access Corp v Powerflex Services Pty Ltd (1999) 202 CLR 1 at 16 and IceTV v Nine Network Australia (2009) 239 CLR 458 at 474. (1917) 23 CLR 49. See also Geographica Ltd v Penguin Books Ltd [1985] FSR 208. See eg LED Builders Pty Ltd v Masterton Homes (NSW) Pty Ltd (1994) 30 IPR 447. Wham-O Manufacturing Co v Lincoln Industries Ltd (1984) 3 IPR 115. Dennison Manufacturing Co v Alfred Holt & Co Ltd (1987) 10 IPR 612. See also L B (Plastics) Ltd v Swish Products Ltd [1979] RPC 551; Johnson & Associates Ltd v Bucko Enterprises Ltd [1975] 1 NZLR 311. (2009) 239 CLR 458. For examples of cases involving artistic works decided since the High Court IceTV case see William McCausland v Surfing Hardware International Holdings Pty Ltd [2013] NSWSC 902 (computer-aided drawing of the profile of a surfboard fin); and Facton Ltd v Mish Mash Clothing Pty Ltd (2012) 94 IPR 523 (drawing upon which a trade mark was based). (1923) 40 TLR 186. For other examples of compilations qualifying for copyright protection, besides those discussed in the text that follows, see the ‘tabulation’ of cases in T R Flanagan Smash Repairs Pty Ltd v Jones (2000) 48 IPR 19 at 26; and see also Data Access Corp v

144. 145.

146. 147. 148. 149. 150. 151. 152. 153. 154. 155. 156. 157. 158. 159. 160. 161. 162. 163.

164. 165. 166. 167. 168.

169. 170.

Powerflex Services Pty Ltd (1999) 202 CLR 1, discussed in 8.11. [1944] AC 329. This does not mean that calendars or diaries may never attract copyright protection. If there is added to such commonplace material a ‘collocation of components’, perhaps artwork or a particular arrangement of the information, this may confer ‘originality’ on the material: Easyfind (NSW) Pty Ltd v Paterson (1987) 10 IPR 464. (1985) 5 IPR 315. Some parts of it were held to be original literary works. CLRC 1995, [14.63]. Kalamazoo (Australia) Pty Ltd v Compact Business Systems Pty Ltd (1985) 5 IPR 213. See also Baillieu v Australian Electoral Commission (1996) 33 IPR 494. Ricketson & Creswell 2017, [7.140]. (1985) 5 IPR 213 at 223. Ibid at 237. (2008) 78 IPR 625. Ibid at 646. (2008) 78 IPR 625. Ibid at 647. (1991) 20 IPR 129 at 132. Ibid. See discussion of the case in Ginsburg 1992. (2002) 55 IPR 1. Desktop Marketing Systems Pty Ltd v Telstra Corp Ltd (2002) 55 IPR 1. (2002) 55 IPR 1 at 106. See also ibid at 44. (2002) 55 IPR 1 at 107. Ibid at 108. As to whether the provisions of Pt IV of the Competition and Consumer Act 1974 (Cth) (see 22.79ff) may be utilised to control the activities of database monopolists, see Wyburn 1997. Telstra itself has been the subject of at least one complaint of misuse of market power in relation to access to its directory listings: Wyburn 1997, 51–2. CLRC 1995, [14.63]. (2009) 239 CLR 458. Ibid. Ibid at 516. David Lindsay has described this passage as a ‘breath-taking reinvention of legal history’: Lindsay 2012. However, given that subsistence had been conceded by Ice, the matter was taken no further by Gummow, Hayne and Heydon JJ and there was no analysis of the history. For a history of compilation copyright and a critique of the Australian Federal Court’s use of the UK cases in Desktop, see Pila 2008. McCutcheon 2013, 922. See also: JR Consulting & Drafting Pty Ltd v Cummings (2016) 116 IPR 440 at [263]. IceTV v Nine Network Australia (2009) 239 CLR 458 at [99]. The Full Court of the Federal Court has said that ‘this passage may suggest a higher level of authorial originality for the subsistence of copyright in a literary work than that adopted by French CJ, Crennan and Kiefel JJ’. But, in the Federal Court’s view, it is unlikely that Gummow, Hayne and Heydon JJ intended to introduce a requirement of literary ‘merit’ or ‘creativity’: JR Consulting & Drafting Pty Ltd v Cummings (2016) 116 IPR 440 at [260].

171. 172. 173. 174. 175. 176. 177. 178. 179. 180. 181. 182. 183. 184. 185. 186. 187. 188. 189. 190. 191. 192. 193.

194. 195. 196. 197. 198. 199. 200.

IceTV v Nine Network Australia (2009) 239 CLR 458 at 474. Ibid at 478–9. Ibid at 479. This begs the question: how much intellectual effort? Some commentators have suggested that the intellectual effort required by French CJ et al is minimal: McGowan 2009, 846; Davison 2009c, 55, 57. Telstra Corp Ltd v Phone Directories Co Pty Ltd (2010) 194 FCR 142. Acohs Pty Ltd v Ucorp Pty Ltd (2012) 95 IPR 117. Tonnex International Pty Ltd v Dynamic Supplies Pty Ltd (2012) 99 IPR 31. Telstra Corp Ltd v Phone Directories Co Pty Ltd (2010) 194 FCR 142 at [100]. Transcribing material safety data sheets did not create an original work in Acohs Pty Ltd v Ucorp Pty Ltd (2012) 95 IPR 117 at [85]. IceTV v Nine Network Australia (2009) 239 CLR 458 at [33], [99]. Ibid at [33]; Telstra Corp Ltd v Phone Directories Co Pty Ltd (2010) 194 FCR 142 at [58]; JR Consulting & Drafting Pty Ltd v Cummings (2016) 116 IPR 440 at [260]. IceTV v Nine Network Australia (2009) 239 CLR 458 at [22]–[24] (French CJ, Crennan and Kiefel JJ), [96] (Gummow, Hayne and Heydon JJ). For reflections on the concept of authorship from an international perspective, see Ricketson 2012a. Telstra Corp Ltd v Phone Directories Co Pty Ltd (2010) 85 IPR 571 at [344], upheld on appeal: Telstra Corp Ltd v Phone Directories Co Pty Ltd (2010) 194 FCR 142. IceTV v Nine Network Australia (2009) 239 CLR 458. See 6.35, 8.12. Ibid at 493–6. Discussed in JR Consulting & Drafting Pty Ltd v Cummings (2016) 116 IPR 440 at [266]. Telstra Corp Ltd v Phone Directories Co Pty Ltd (2010) 194 FCR 142 at [57], [127]. Telstra Corp Ltd v Phone Directories Co Pty Ltd (2010) 85 IPR 571 at [337], upheld on appeal: Telstra Corp Ltd v Phone Directories Co Pty Ltd (2010) 194 FCR 142. Ibid. Telstra Corp Ltd v Phone Directories Co Pty Ltd (2010) 194 FCR 142 at [118], [169]. (2012) 95 IPR 117. Ibid at [57]. (2016) 116 IPR 440. Ibid at [275]. Ibid at [277]–[278]. See also consideration of whether a copyright work might be an extract from a much larger work, such as a database: National Rugby League Ltd statistics: Sports Data Pty Ltd v Prozone Sports Australia Pty Ltd (2014) 107 IPR 1 at [71], [78], [83]–[84]. Jani McCutcheon has critiqued the application of traditional, pre-computer, concepts of human authorship to computer-generated works. See McCutcheon 2013. CLRC 1995, [13.11]. The CLRC recommended that copyright protection be afforded to ‘computer generated material’ as a new class of subject matter other than works: CLRC 1995, Recommendation 2.42. The recommendation has not been implemented. (2010) 194 FCR 142. (2012) 95 IPR 117. Telstra Corp Ltd v Desktop Marketing Systems Pty Ltd (2001) 51 IPR 257 at 280. See Telstra Corp Ltd v Phone Directories Co Pty Ltd (2010) 85 IPR 571 at [30]; and McGowan 2009, 848. For a critical view on such proposals, see Davison 1998; Gosnell 2003; and see

201. 202. 203. 204. 205. 206. 207. 208. 209. 210. 211. 212. 213. 214.

215. 216. 217. 218. 219. 220. 221. 222. 223. 224. 225. 226.

generally Davison 2003. In the United Kingdom, this has been given effect through the Copyright and Rights in Databases Regulations 1997: see eg British Horseracing Board Ltd v William Hill Organisation Ltd [2005] EWCA Civ 863. See Art 7(5) of the European Database Directive 96/9/EC. IceTV v Nine Network Australia (2009) 239 CLR 458 at 470. See Gramophone Co Ltd v Stephen Cawardine & Co [1934] Ch 450 at 454. See Simpson & Stevens 1986, ch 10. See Polygram Records Inc v Raben Footwear Pty Ltd (1996) 35 IPR 426. (1987) 9 IPR 440. Ibid at 444. (1997) 75 FCR 8. Cf Aristocrat Leisure Industries Pty Ltd v Pacific Gaming Pty Ltd (2000) 50 IPR 29 (simulated spinning symbols on electronic gaming machine not a film). Commissioner of Taxation v Seven Network Ltd (2016) 118 IPR 211 at [70]. (2016) 118 IPR 211. A taxation case that needed to determine whether payments were made for use of copyright in a cinematograph film. Ibid at [75]. The separate subject matter of ‘broadcast’ was not relevant in that case. See 6.48. Phonographic Performance Co of Australia Ltd v Federation of Australian Commercial Television Stations (1998) 195 CLR 158. A note to the definition states that it does not include any transmission in connection with ‘a service (including a teletext service) that provides no more than data, or no more than text (with or without associated still images)’, or ‘a service that makes programs available on demand on a point-to-point basis, including a dial-up service’. Hence, online demand services are excluded. A broadcast arrives at every receiver at the same time. Internet streaming is also not a delivery by a broadcast service: Phonographic Performance Co of Australia Ltd v Commercial Radio Australia Ltd (2013) 100 IPR 1. (2004) 218 CLR 273. The case is discussed in de Zwart 2009. See also discussion in Connect TV Pty Ltd v All Rounder Investments Pty Ltd (No 5) (2016) 118 IPR 133 at [36]. Network Ten Pty Ltd v TCN Channel Nine Pty Ltd at 287. Ibid at 302. The case was remitted to the Full Court of the Federal Court to determine whether a substantial part of the broadcasts had been used. See TCN Channel Nine Pty Ltd v Network Ten Pty Ltd (No 2) (2005) 145 FCR 35 (discussed at 8.23). Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (2004) 218 CLR 273 at 302–3; TCN Channel Nine Pty Ltd v Network Ten Pty Ltd (No 2) (2005) 145 FCR 35 at [6]. (1997) 191 CLR 140. See APRA Ltd v Canterbury-Bankstown Leagues Club Ltd (1964) 5 FLR 415. (1996) 34 IPR 53. De Garis v Neville Jeffress Pidler Pty Ltd (1990) 18 IPR 292. (1996) 34 IPR 53 at 71. See ss 184–188; Copyright (International Protection) Regulations 1969. For discussion and analysis, see Ricketson & Creswell 2017, [16.610]ff. After the commencement on 1 January 2019 of the reforms to copyright duration

227. 228. 229. 230. 231. 232. 233. 234. 235. 236. 237. 238. 239. 240. 241. 242. 243. 244. 245. 246. 247. 248. 249. 250.

introduced by the Copyright Amendment (Disability Access and Other Measures) Act 2017 (Cth), the phrase ‘made public’ (s 29A) applies in relation the duration of copyright. ‘Made public’ includes publication, but extends to other public uses. See 6.61. See 8.2 for the meaning of ‘reproduction’. Note, however, that s 29(2) effectively provides that substantial (but not total) reproduction is not sufficient to constitute publication. See British Northrop Ltd v Texteam Blackburn Ltd [1974] RPC 57. See Ricketson & Creswell 2017, [5.105], arguing that ‘to the public’ must be interpreted more strictly in this context than it has been in cases exploring the scope of the performance right: see 6.50, 8.19. See Francis Day & Hunter v Feldman & Co [1914] 2 Ch 728. Avel Pty Ltd v Multicoin Amusements Pty Ltd (1990) 171 CLR 88 at 93. If the copies in question have been unlawfully published by someone else, then the bookseller may (depending on their state of knowledge) be guilty of indirect copyright infringement: see 8.31. For works created before that date, the duration of copyright is different in some (but not all) instances: see the transitional provisions in Pt XI. Section 29A sets out when works and other subject matter are made public: see 6.61. Copyright Amendment (Disability Access and Other Measures) Act 2017 (Cth). For details of duration of copyright operating before 1 January 2019, see Stewart et al 2014, [6.55]. The general rule above applies to computer programs. Note that copyright in a rebroadcast only subsists for as long as the copyright in the original broadcast: s 95(2). See also duration for international organisations declared by regulation: ss 186–188A. See Parrinder 1993. A challenge to the validity of the Act, on the grounds that it ‘robs the public of a rich and varied public domain guaranteed by the Constitution’, was rejected by the US Supreme Court: Eldred v Ashcroft (2003) 123 S Ct 769. IPCRC 2000, 80–4. Some commentators have argued that the copyright term should be reduced, rather than extended: see eg Puri 1994; and see also Karjala 1994a; Seville 2003; but cf Campbell 1999. See generally Ricketson 1992. US Free Trade Agreement Implementation Act 2004 (Cth). Burrell & Weatherall 2008. Commonwealth Joint Standing Committee on Treaties 2004. Ibid, 231–2. Ibid, 234–7. See also Senate Select Committee on the Free Trade Agreement between Australia and the United States of America 2004, 56–77. A debate that continued with ALRC 2013. Reforms introduced by Copyright Amendment (Disability Access and Other Measures) Act 2017 (Cth): see 6.58–6.59. Section 29A(3).

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CHAPTER 7 Exploitation of Copyright INTRODUCTION 7.1 The death of copyright was famously predicted by John Perry Barlow (lyricist for the Grateful Dead) back in 1994 in Wired magazine. Barlow argued ‘our interests will be assured by the following practical values: relationship convenience, interactivity, service and ethics’1 — meaning that property rights are not required to provide rewards to creators, and knowledge workers will find that relationships (contracts) determine their remuneration as grateful users access content. However, despite such predictions the proprietary rights discussed in this chapter are being pursued as vigorously as ever. Methods of using and exploiting copyright material are constantly developing with the advent of new technology. Live performance of works and remuneration from ticket sales were overtaken by revenue from recording and broadcasting. Television and video/DVD returns outstriped income earned from cinema release of films, and television has in turn faced the rise of internet streaming. Multiple copyrights are involved with all these methods of disseminating material.

OWNERSHIP Works 7.2 General The owner of copyright in a literary, artistic, dramatic or musical work and the author or creator of the work are not necessarily the same person, but the basic rule is that the creator, called in the Copyright Act 1968 the ‘author’, is the first

[page 193] owner of copyright: s 35(2).2 There are three exceptions to this basic rule, although each exception may be excluded or modified by agreement: s 35(3).3 In the first place, s 35(4) gives the proprietor of a newspaper, magazine or periodical copyright in works produced for publication by a journalist pursuant to employment under a contract of service or apprenticeship, except that the journalist owns the copyright in certain ‘hard copy’ versions of the work. Second, the copyright in certain artistic works — specifically photographs taken for private or domestic purposes, portraits and engravings — may in some limited circumstances be owned by a client who has commissioned them, rather than the artist who created them: s 35(5). Third, and where neither of the above applies, the copyright in any work made by an author ‘in pursuance of the terms of his or her employment by another person under a contract of service or apprenticeship’ belongs to the employer: s 35(6). Each of these exceptions is considered in more detail below. 7.3 Copyright in the employment context In the absence of any express or implied agreement between the parties, which may always be used to vary the default position under the legislation, issues of ownership of copyright in the employment context usually turn on two key questions. First of all, is the author an employee working under a contract of service? The alternative is that they might be an independent contractor, engaged under a contract for services and thus in business on their own account. General principles of employment law will inform the concept of a ‘contract of service’ and the means by which it may be distinguished from a contract for services.4 Who is an employee may not always be immediately obvious; for example, in Erica Vale Australia Pty Ltd v Thompson & Morgan (Ipswich) Ltd5 the directors of a company were paid salaries, not directors’ fees, and so were held to have written instructions on seed packets as employees under a contract of service. Assuming that the author is an employee, the second question is whether the work is created ‘in pursuance of the terms of [the] employment’, so that copyright automatically vests in the employer.

The question is: ‘did the employee make the work because the contract of employment expressly or impliedly required or least authorised the work to be made’?6 This may be a far from easy question to answer. It can be especially difficult to determine what falls within the scope of a contract of employment for professionals, and this is well illustrated by a dispute between a company (Redrock) and a computer programmer (Adam Hinkley) who had been engaged on an informal and largely undocumented basis to write software.7 [page 194] Having successfully argued that Hinkley had been hired as an employee rather than as a contractor, Redrock laid claim not only to the specific programs he had developed at its request, but the ‘class library’ or software tools he had used to write them. Even though Hinkley had originally developed his class library before coming to work for Redrock, it was held that the modifications and improvements he made during his time there were so substantial that they resulted in a new work, and one that was created during the course of his employment. Thus, despite Hinkley’s argument that it had always been understood that this was his own material, in effect his tools of trade, Redrock was able to claim ownership of the class library. On the other hand, the court held that a further program that Hinkley had developed on his own initiative, rather than at Redrock’s request, belonged to him. Although he had used the class library to write the program, and occasionally worked on the program at Redrock’s premises, the bulk of the work was done at home and accordingly did not fall within the course of his employment. The situation was all the more tricky to analyse because, as with so many professionals these days, Hinkley did not have fixed hours, worked both at home and at the office, and at any given time might be involved in a variety of projects both for his employer and for himself. 7.4 University academics As the Redrock case discussed above shows, there may be situations where, although the employee is

performing a normal duty, in the sense that creation of the work bears a clear relation to the principal duties of the position and can in no way be regarded as extraordinary, nevertheless copyright does not vest in the employer. This was also the case in Stephenson Jordan & Harrison v MacDonald & Evans8 in relation to a section of a book written by a former executive of a firm providing managerial services. Copyright was held to remain with the executive despite the section being based on a series of lectures prepared and delivered during his time with the firm. Although the decision is somewhat difficult to follow, the director’s duty to promote the company by giving such lectures was evidently regarded as somehow ancillary to his main work.9 In the same case, Evershed MR went so far as to suggest that: … prima facie … a man [sic], engaged on terms that he is called upon to compose and deliver public lectures or lectures to some specified class of persons, would in the absence of clear terms in the contract of employment to the contrary be entitled to the copyright in those lectures.10 While this may be of some comfort to university academics jealous of the (modest) royalties accruing from their monographs and textbooks, it is hard to defend as a matter of principle. On the face of it, universities and other educational institutions would seem to have a legitimate claim to copyright in the work of academic employees — certainly where lecture notes are concerned. Lord Denning drew a distinction in Stephenson Jordan & Harrison between the duty to give oral lectures and the [page 195] additional work involved in writing the lecture down, the latter, in his Lordship’s view, being outside the scope of an academic’s employment.11 This view of teaching from the 1950s seems completely out of step with modern electronic systems of delivery that routinely involve recording of lectures and the provision of notes and

other course materials.12 On the other hand, the Full Federal Court in University of Western Australia v Gray appeared to endorse the suggestion that a university would not ordinarily have copyright in an academic’s lectures, at least in the absence of an express agreement.13 Given that engaging in research and publishing is a term of most academics’ employment, arguably universities also have a right to the copyright in those publications. It may be that any entitlement that academics have had in the past to the copyright fruits of their work has rested on the basis of a contractual term implied by reason of custom and practice, given the longstanding failure of universities to contest the point.14 In any event, most universities now have policies that expressly allow academics to own and negotiate with commercial publishers over the copyright in books and other forms of published research.15 For one thing, the expense and effort of policing and collecting a ‘cut’ of the royalties is not considered worthwhile, and disruptive industrial issues are created by assertions of ownership by universities in this context.16 On the other hand, it is increasingly common for institutions to claim the copyright in ‘courseware’ and teaching material specifically created for electronic delivery.17 7.5 Journalists Section 35(4) places employed journalists in a special position, in that they are entitled to copyright in their work for the purpose of reproduction either in a book or in the form of a ‘hard copy facsimile’ made from a ‘paper edition’ of a newspaper, magazine or similar periodical. The latter would most obviously include a photocopied article.18 The proprietors of the publications in which the journalists’ work appears own the copyright for all other purposes. The proprietors’ copyright used to be limited to publication in a newspaper, magazine or periodical, [page 196] and also broadcasts. However, amendments in 1998 secured a broader entitlement, crucially including the ‘electronic rights’. Proprietors can now distribute their newspapers or magazines via the internet without having to secure agreement from their employees.19

7.6 Commissioned works Section 35(5) provides that a person who commissions a portrait20 or engraving owns the copyright in such a work. The same applies where a photograph is commissioned, though only where it is for a ‘private or domestic purpose’. Prior to being amended in 1998, this provision applied to all commissioned photographs. The introduction of the ‘private or domestic’ criterion has ensured that while wedding photos and the like continue in most cases to be owned by their subjects,21 the copyright in photos taken for commercial purposes now rests with their author22 in the absence of agreement to the contrary. Section 35(5) goes on to provide that where the purpose for which a work covered by the subsection is made known to the author at the time of commission, the author does have the right to restrain use of the work for any other purpose, even though they do not own the copyright.23 The fact that copyright in most commissioned works is presumed to vest in the author rather than the commissioning client presents a potential pitfall to any business that engages a contractor or consultant to produce material that may have ongoing value or uses, such as a computer program, a logo, promotional photos, and so on. The business will plainly have an implied licence from the author to use the material for the purpose for which it was commissioned, even in the absence of agreement to that effect: see 7.16. But as soon as the business wishes to put it to a different or more extensive use (for example, to upload to a website photos or artwork originally prepared for an in-house publication), it may find the author quite legitimately demanding an additional fee for permission to do so, on the basis that the new use exceeds the scope of the original licence. A similar problem may arise where the business wishes to modify the material in some way. For this reason, businesses commissioning copyright material are strongly advised to do so on written terms that either include an assignment of copyright to the business, or at least an express licence that anticipates the need to modify the material or put it to different uses. The moral rights of the author, especially the right of integrity (see 9.6), may also need to be considered in this context.

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Joint ownership 7.7 Joint ownership may arise from joint authorship, by agreement, assignment, will or devolution by operation of law. A work of joint authorship is one that is ‘produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or the contributions of the joint authors’: s 10(1).24 Not all jointly produced works result in joint authorship: for example, separate copyrights exist in the words and music respectively of a song (unless, of course, two or more persons produced them together in such a way as to come within the definition of joint authorship).25 Someone who supplies ideas but has no input into their material form will not be a joint author,26 unless there is an agreement to that effect.27 The owners of a work of joint authorship take as tenants in common, any one of whom may sue in respect of an infringement and obtain an injunction and damages for a moiety without necessarily joining the other authors as plaintiffs.28 The consent of both owners is required to grant a licence to a third party.29 In certain cases one joint owner may be able to sue another for infringement, as in Prior v Sheldon30 where a composer adapted some of her work and claimed royalties in relation to its use, without reference to or acknowledgment of the plaintiff, who was found to have collaborated with her in creating the music in question. Copyright may be a partnership asset although it is not always easy to decide who owns copyright material produced by partners. Rather than leave it to be decided in court, it may be best specifically to address the issue of ownership of copyrights so that it is not in doubt,31 and also to determine the property, assets or effects of a business upon sale.32

Part IV copyrights 7.8 The first owner of copyright in other subject matter (recordings, films, broadcasts and published editions) is, subject to

contrary agreement and the [page 198] rights of the Crown, the ‘maker’ or publisher of the subject matter. As discussed in Chapter 6, this is separate from and additional to any copyright in works that are incorporated in the other subject matter.33 The owner of copyright in sound recordings, films and broadcasts is the person who makes them: ss 97(2),34 98(2), 99. The maker of a sound recording is the owner of the first record embodying the recording (s 22(3)), usually a recording company. The makers of a sound recording of a live performance also include the performer: s 22(3A).35 The maker of a film is the person who has arranged for it to be made (s 22(4)), usually the producer.36 The maker of a broadcast is the person who provided the broadcasting service (that is, the relevant licence holder): s 22(5). In the case of commissioned recordings or films, the maker is displaced as owner by the commissioning person, though this is subject to agreement to the contrary: ss 97(3), 98(3). Copyright in published editions is owned by the publisher: s 100.

Constructive trusts 7.9 Mention must also be made of the possibility that equity may impose a constructive trust upon the property in copyright. Before a constructive trust can arise it is necessary to consider ‘whether or not it would be inequitable and against good conscience for the maker to assert ownership in the copyright’.37 The possible outcome could be a declaration as to the subsistence of the trust, orders to deliver up material, or orders for assignment of the legal title. However, the case law tends towards discussion of these possibilities, rather than actual examples of such orders. One such case involved the Spycatcher book written by former MI5 operative Peter Wright. The House of Lords, unprompted by counsel, assumed that the breach of Wright’s duty of confidence might vest copyright in the Crown in equity.38 Although there might

be scope for deriving from these comments a general principle that copyright in material created by an employee in breach of an obligation of confidence is to be held on trust for the employer, even where the employer would not otherwise be entitled to that copyright, the comments are better regarded as judicial hyperbole occasioned by extreme disgust at the activities of the ‘treacherous’ Wright. [page 199] Nevertheless, the principle received implicit support in the suggestion (once again unprompted) by a majority of the High Court in Australian Broadcasting Corp v Lenah Game Meats Pty Ltd39 that the copyright in a film obtained by a trespasser might be subjected to a constructive trust in favour of the owner of the premises.40 These observations in Lenah Game Meats were considered in Windridge Farm Pty Ltd v Grassi.41 In that case trespassers entered onto land operated as a piggery and took photographs and video footage. They gave the material to Animal Liberation to initiate an investigation. Hall J held that there was no basis for an order for delivery up of the material, or for assignment of the legal title to the intellectual property rights.42 Factors relevant to deciding against a constructive trust included: that the premises were not residential, the film and photographs did not have any intrinsic value, and there was no intention to publish beyond supplying the material to the investigation. In Bulun Bulun v R & T Textiles Pty Ltd43 von Doussa J rejected a claim of ‘community ownership’ of paintings produced by an indigenous artist authorised to reproduce images ‘belonging’ to his community. However, he went on to accept that the artist owed a fiduciary obligation, if necessary enforceable in equity, ‘not to exploit the artistic work in a way that is contrary to the laws and custom of the [community], and, in the event of infringement by a third party, to take reasonable and appropriate action to restrain and remedy [the] infringement’.44 Since in this particular case the artist had not

breached his obligations, there was no occasion for equity to intervene and accordingly the community could not be said to have an equitable interest in the copyright. Nevertheless, the judgment is important in acknowledging the potential for an indigenous community interest to be asserted.

Crown ownership of copyright 7.10 Special provision is made for the Crown45 to own copyright in works, recordings or films made ‘by, or under the direction or control of, the Commonwealth or a State’: [page 200] ss 176, 178.46 The same applies to works which, even if not originally made for the Crown, are first published in Australia by, or under the direction or control of, the Commonwealth or a state: s 177. The concept of material being made or published ‘under the direction or control of’ the Crown is potentially extremely wide,47 and contemplates that Crown copyright may arise in material that does not otherwise fulfil the criteria of the Copyright Act as to the subsistence of copyright. Thus, the nationality or residence of the author, or place of first publication, may not matter if the Crown is involved. Similarly, the existence of an employment relationship may be irrelevant, as the phrase does not seem to be confined to situations where a contract of service exists, though of course copyright may arise in the usual way and belong to the Crown by virtue of s 35(6).48 In a case concerning survey plans submitted to the New South Wales Land and Property Information (LPI) (formerly the Land Titles Office) as part of the registration process, the New South Wales Government was unsuccessful when it argued that it had directed or controlled the making of the survey plans because they were brought into existence to satisfy statutory requirements.49 The government did determine the form of the plans through the legislative and administrative processes for registration, but the decision whether or not to create and submit a plan remained with the surveyors and their

landowner clients.50 A work made under the direction or control of the Crown ‘must involve the concept of the Crown bringing about the making of the work’.51 Emmett J in the Full Court of the Federal Court suggested that the phrase ‘direction or control’ ‘might not extend much, if at all, beyond commission, employment and analogous situations’.52 The Full Court in the survey plans case also decided that the plans had been published before they were registered and so the subsequent release of copies by the New South Wales Government was not a ‘first’ publication.53 The distribution of copies before registration by the New South Wales Government was limited in that case. The surveyors supplied copies of their plans to the owners of the land who commissioned the surveys and Emmett J concluded that that was a publication.54 With respect to their Honours, limited supply of works to clients is not a supply to [page 201] the public as that concept is used in s 29 of the Copyright Act. Supply of copies to a client does not make them available to the public. In the surveyors’ case, Copyright Agency Limited (CAL) argued for publication by this limited supply to clients to avoid the loss of their members’ copyright by first publication by the New South Wales Government. This was described by counsel for CAL in the special leave argument before the High Court as a ‘fall back position’ that had led to an unsatisfactory resolution of the problem in the Full Federal Court decision.55 Emmett J also held that the supply of the plans to local municipal councils to obtain subdivision certificates was a publication that preceded publication by the New South Wales Government. Whether or not this supply was to the public is a little unclear from the judgment. Supply of copies to a government decision-maker for a certificate will not be a publication for the same reason that supply to a client is not. The question will be whether the supply of copies meets the reasonable requirements of the public. The special position of the Crown in relation to copyright

ownership has been questioned in various ways. In 2000 the Intellectual Property Competition Review Committee (IPCRC) recommended that s 176 be amended to leave the Crown in the same position as any other contracting party when acquiring copyright material,56 following submissions to the effect that by virtue of not being subject to normal contractual negotiations the Crown enjoys a disproportionate power in the marketplace. The principles of competitive neutrality set out in cl 3(1) of the intergovernmental Competition Principles Agreement provide that one aim is to eliminate resource allocation distortions arising out of the public ownership of entities engaged in significant business activities, including government businesses.57 In 2005 the Copyright Law Review Committee (CLRC) recommended that the special Crown subsistence and ownership provisions be repealed.58 The recommendations have not been implemented. In December 2009, the Government 2.0 Taskforce59 recommended a shift in Commonwealth copyright policy involving the use of Creative Commons licences.60 The taskforce envisaged that large amounts of public sector information (PSI)61 could be automatically licensed under a Creative [page 202] Commons licence when it was published.62 At a Commonwealth level, the starting position for published public sector information is a Creative Commons licence,63 but it is important to emphasise that Crown copyright has been retained.

CONVEYANCE OF INTERESTS IN COPYRIGHT Disposal and divisibility 7.11

Since copyright is personal property64 it can be transmitted

‘by assignment, by will and by devolution by operation of law’: s 196(1). Future copyright65 can also be assigned: s 197. For example, the authors of this book assigned copyright to the publisher before any part of it was written. As previously explained (see 5.12), copyright is transmissible either as a whole or in its different parts (s 196(2)), so that the author of a book may assign (or license) the right to publish the book to one company, and the right to make a film using a script based on the book to another. These rights may be further limited so as to apply to a place in or part of Australia: s 196(2)(c). Furthermore, the class of acts which a copyright owner may sell or license to others is not limited to the exclusive rights set out in s 31(1): these may all be divided up further according to industry practice. Thus, the right to publish a work may be subdivided into ‘book rights’ (hardcover and paperback ‘rights’ may belong to separate companies) and newspaper and magazine rights. A further example of splitting up copyright into separate components in order to exploit it more effectively is provided by the music industry, which has long recognised ‘performing rights’.66 The term ‘performing right’ is an industry expression denoting the nondramatic rights of public performance, broadcasting and diffusion (now communication to the public) in relation to musical works. Typically, the author or publisher of a musical work (or arrangement or lyrics thereof) assigns these rights to a collecting society,67 which exercises these aspects of the copyright on behalf of the author or publisher. The partial assignment of copyright made to the collecting society in this example does not usually include the ‘grand’ or dramatic performance rights, as the author of music written for a ballet, opera, musical play or long choral work is usually able to control the use of material for such purposes. It is the fleeting [page 203] and widespread use of musical works on radio, in shopping centres and many other venues that the collecting society can conveniently administer.

Assignment of copyright 7.12 Assignments of copyright must be in writing, signed by or on behalf of the assignor (s 196(3)), although an informal assignment may be given effect in equity.68 No particular form of words is required,69 but an intention to effect an assignment of copyright must be evident.70 A person who acquires a limited copyright as a result of a partial assignment71 is treated as the owner of a separate copyright for that particular purpose: s 30. Where future copyright is assigned, the relevant copyright vests in the assignee or the assignee’s successor on coming into existence, provided at that time no other has a better claim: s 197(1). Once an assignment takes effect, the assignor, absent express provision to the contrary, is divested of any control over the copyright assigned. Thus, unless otherwise specified, the assignor has no greater right to infringe the copyright than any other person.72 Nor, at least as a general principle, can they prevent the assignee from further assigning or licensing all or part of the copyright or from altering the work or subject matter in any way; though the capacity of the ‘new’ owner to deal with copyright material as they wish may now be constrained by the recognition of moral rights: see 9.2–9.9. These may allow the original author to insist on being acknowledged as such, to object to any false attribution of their work, or to complain of any ‘derogatory treatment’. It should also be noted that assignment in return for royalties might pose problems for the assignor where the assignee further assigns the copyright. While the original assignee may be liable in damages, the assignor, it would seem, has no rights against the further assignee.73 Where copyright passes to the original assignee’s trustee in bankruptcy, on the other hand, s 138 of the Bankruptcy Act 1966 (Cth) operates to protect the assignor’s entitlement to royalties. [page 204]

Other transmissions 7.13 Copyright may be disposed of by will or may pass to another by operation of law, in the case, for instance, of intestacy or bankruptcy.74 Two provisions should be noted. Under s 197(2), where copyright comes into existence after the death of the person who would otherwise have owned it, it devolves as if that person had owned it immediately before their death. Section 198 also provides that a bequest of an unpublished artistic work or of a manuscript of an unpublished literary, dramatic or musical work will be presumed, unless a contrary intention appears, to include the copyright therein.75 Moral rights (other than in a film) also survive the death of the author and are exercised by his or her legal personal representative: s 195AN.

VOLUNTARY LICENSING General 7.14 Licensing is a means of retaining an ongoing interest in the property that is licensed out, rather than the transfer of ownership and control that occurs when copyright is assigned. A licence is simply permission to do what would otherwise infringe copyright.76 Unlike an assignor of copyright, a licensor is free to limit the licensee’s right to alter the licensed material.77 A licensee may be one of several authorised to deal with the copyright in the same way, although an exclusive licence is defined in s 10(1) as ‘one authorising the licensee to do an act within the copyright to the exclusion of all other persons’. An agreement to give exclusive ‘distribution’ rights in relation to articles containing copyright material does not, without more, create an exclusive licence in relation to copyright.78 On the other hand, it appears that an agreement may be found to create an exclusive licence even where it relates only to a narrow category of acts that fall within a copyright.79 The significance of having an exclusive licence is that where copyright is infringed, an exclusive licensee is specifically entitled by s 119 to initiate proceedings: see 8.58.

Licensing of copyright is discussed further in Chapter 22 in the context of commercialising intellectual property.

Express licences 7.15 A licence granted by a copyright owner binds both the grantor and the grantor’s successors in title, even as against a subsequent assignee: s 196(4). The same applies to licences of future copyright: s 197(3). It is not always easy to determine whether a given agreement is intended to be a licence or an assignment: [page 205] the question is ultimately one of construction,80 and even express words may not be determinative.81 The distinction is important, the courts often being prepared to imply restrictions on a licensee that they would not impose on an assignee. Thus, for instance, a licence is usually construed as personal between the parties, so that its benefit may not be assigned by the licensee without the licensor’s consent,82 and the licensee may be restrained from altering the work in question.83 A licence need not be in writing, unless it is an ‘exclusive licence’ as defined in s 10(1), although in practice it may be hard to ascertain the grant or scope of an informal licence.84 A common situation today is for material (software, text, images, etc) to be made available on the internet for downloading, subject to specified terms and restrictions. It may be difficult in such a case to determine whether a person accessing such material has entered into a contract with the owner or simply has a ‘bare’ licence to use the material; whether any conditions displayed by the owner on the relevant website do in fact govern the licence;85 and if there are matters not addressed in those conditions, whether it is possible to imply any further terms.86

Implied licences 7.16

A licence may be implied from the circumstances in which the

owner deals with the work or subject matter. For example, a person who accesses material on a website can usually infer from its availability that it may at the very least be downloaded, subject to any directions to the contrary. Similarly, the purchaser of an article is usually entitled to repair it without infringing copyright in the drawings from which the article was made.87 A licence will only be implied, however, when there is a necessity to do so.88 A purchaser of a computer program will have an implied licence to use it, but that did not extend to an implied licence to access [page 206] the source code in Centrestage Management Pty Ltd v Riedle89 when the purchaser sought to upgrade the software. Perhaps the most common situation in which a licence will be implied is where copyright material is specifically commissioned. In his ‘landmark judgment’90 in Beck v Montana Constructions Pty Ltd,91 Jacobs J expressed the principle thus: The engagement for reward of a person to produce material of a nature which is capable of being the subject of copyright implies a permission or consent or licence in the person making the engagement to use the material in the manner and for the purpose in which and for which it was contemplated between the parties that it would be used at the time of the engagement. The ‘purpose’ in question is to be determined objectively, by reference both to the parties’ contract and the circumstances in which it is made.92 In Beck it was held that a landowner who pays for an architect to develop building plans may legitimately expect to be able to use those plans even after the architect’s engagement is terminated, and indeed may assign that licence to anyone else who purchases the land.93 It appears that such a licence may include the capacity to alter the plans to suit the licensee’s purposes.94 In Concrete Pty Ltd v Parramatta Design and Developments Pty Ltd95 the architect was

involved in a joint venture that broke down and an implied licence to use the plans passed to the purchaser when the land was sold with development consent. However, no licence permitting subsequent use will be implied where this would contradict the express terms of the contract, or otherwise be inconsistent with the nature of the original engagement.96 In Acohs Pty Ltd v Ucorp Pty Ltd,97 the case concerning electronic material safety data sheets (MSDS) for hazardous substances (see 6.39), the court considered a situation where users have an implied licence to reproduce the data sheets and then request a service provider to do the work for them. The Full Federal Court held that the trial judge was wrong to go beyond that limited situation and extend an implied licence to allow a MSDS supplier to make copies without the permission of [page 207] the copyright owner in anticipation that a user with an implied licence might request them in the future. There was no necessity to extend the implied licence so far.

Revocation of licences 7.17 Whether a licence can be revoked depends on its nature. Applying the general law relating to licences, it would seem that an exclusive licence, being a licence coupled with the grant of a proprietary interest, is irrevocable except in accordance with the terms expressly set out in the grant,98 whereas a ‘bare’ licence is revocable at will.99 In between these extremes are contractual licences. Although the position is far from clear, it appears that a licensor may be restrained from revoking the licence, or at least required to give reasonable notice, where there is a clear express or implied promise not to revoke.100 For example, it has been held that where a licence should be implied permitting subsequent use of building plans, as discussed in 7.16, the nature of the licence is such that it cannot be revoked by the copyright owner, even where the

owner has not been paid for their work by the original client.101

Open-source and the Creative Commons 7.18 Some of the most interesting licensing issues in current times have been created by the ‘open-source’ movement, which is the practice of sharing access to computer code.102 Other terms for this are ‘freeware’ and ‘copyleft’, an industry ethic of various forms of software licensing that allow free access to computer code on certain conditions ranging from requiring simple acknowledgment of the source to terms compelling those using open-source code to make their own improvements available for others. Open-source is generally considered to have begun with dissatisfaction with restrictive licences on software and the development by Richard Stallman of GNU, a UNIX-compatible software system to which other contributors added. Among other things, this led to the development (initiated by Linus Torvalds) of the prominent Linux operating system.103 Inspired by the Free Software Foundation’s GNU General Public License (GNU GPL), in December 2002 the Creative Commons licence was released in the United States to assist creators of copyright material to license their work freely for certain uses, on certain conditions, or indeed dedicate their work to the public [page 208] domain without conditions.104 National versions of the licence are now available in over 50 countries, including Australia.105 Creators can choose from a selection of conditions that require attribution but may prohibit commercial use, or allow copying but prohibit derivative use, or allow derivative use but only if the user agrees to the same share alike conditions. At the other end of the spectrum, the potential for contractual arrangements to overtake proprietary rights and negate the inherent statutory restrictions on those rights was investigated by the CLRC in

its 2002 report106 on access to and use of copyright material in the context of electronic commerce. The concern is that copyright owners can use a combination of contractual restrictions and technological protection measures to increase their control and lock out users who might once have relied upon fair dealing and other such exceptions. This issue has been revisited by the Australian Law Reform Commission107 and Productivity Commission; both commissions recommended108 restrictions on contracting out.

Restraint of trade 7.19 Licences or assignments of future copyright may operate to restrict the activities of the creator of works over which no control can be exercised. If a songwriter or author of books gets tied up by one publisher, they may not be able to exploit their creative output in order to earn a living. In Schroeder Music Publishing Co Ltd v Macaulay109 the defendants, music publishers, obtained the exclusive services of a songwriter for a period of at least five and possibly 10 years, ‘full copyright for the whole world’ in anything he wrote being assigned to the publisher. The latter was not obliged to publish any music, although the plaintiff was unable to recover copyright in material that the defendant refused to publish. Similarly, in O’Sullivan v Management Agency & Music Ltd110 Gilbert O’Sullivan, the pop singer and composer, had, as a young performer, entered into agreements with the defendants whereby they were to manage all the details of his musical output for a period of five years with an option to extend the arrangement for two more years if the defendants wished. O’Sullivan subsequently signed agreements with the defendants to extend the arrangements beyond this seven-year period. The defendants gave exclusive rights in respect of recordings of O’Sullivan’s music to EMI, in return for an advance of $US1.2m to them. O’Sullivan had become more and more unhappy [page 209] with his contractual arrangements, which prevented him controlling

production of his recordings and exercising his own artistic judgment. He had also thought the effect of the contracts was to give him 50 per cent ownership of his copyrights in a ‘joint publishing’ arrangement, rather than a total assignment. In both these cases the agreements were held to be void and unenforceable because they were in restraint of trade, being unreasonably long in duration, thereby sterilising the creative output of both plaintiffs and preventing them exploiting their talents in their best interests. The financial arrangements between the parties were also disadvantageous to the songwriters. As well as being in restraint of trade, the agreements were unfair from the plaintiffs’ point of view, the defendants having used their superior bargaining position to obtain unconscionable contracts. Although O’Sullivan said that no actual pressure had been exerted to make him sign the agreements, undue influence was to be presumed because of the special relationship between O’Sullivan and the defendants. They knew they were dealing with a young and inexperienced man who had relied on them entirely and had no independent legal advice. They knew they would not have been able to tie O’Sullivan so firmly to their organisation and get his services on such bargain basement terms if such advice had been given.111 Elton John and his lyricist Bernie Taupin found themselves in a similar situation when they were young and inexperienced and in fact minors. In 1967 they had entered into agreements assigning full copyright throughout the world in every musical composition written during the term of the agreement for the full period of the copyright. These agreements were renewed, and tied in with performing and recording contracts. It took some considerable time for the plaintiffs to realise that the agreements might have been unfavourable to them: in fact, it was publicity over the Schroeder litigation that led them to seek legal advice in the early 1970s. In the meantime, the defendants had begun to erect a framework of subsidiary companies throughout the world, whereby the income stream to the main companies paying royalties to the plaintiffs was diminished, thus reducing their personal income. In this case the agreements themselves were not overturned. Although they constituted an unfair bargain in tying two young men at the beginning of their career to such an all-encompassing control of

their work, the plaintiffs had in fact obtained sizeable benefits under the agreements. The unfair depletion of the source of income, however, was held to constitute a breach of fiduciary duty.112 In 1994 the singer George Michael lost a case against Sony, his record company, in which he alleged that a 15-year exclusive commitment to them amounted to ‘slavery’ for the whole of his creative life. In fact, the agreement had been signed in 1988 when he was at the height of his powers and the length of the contractual tie was within his control. [page 210] Michael had actually negotiated higher advances and royalties for himself than previously, and had been aware of the terms and implications of the contracts.113

Restrictive practices legislation 7.20 Part IV of the Competition and Consumer Act 2010 (Cth) regulates restrictive dealings affecting competition and prices. Various contractual or other arrangements are exempted from the operation of Pt IV, including restraints on employees as to their postemployment work (s 51(2)(b)), and there is an exception applying to licences and assignments to the extent that provisions in such agreements relate to ‘the work or other subject matter in which the copyright subsists’: s 51(3)(a)(v). However, controls over the licensing activities of a licensee appear not to be exempted from the operation of Pt IV and, since the exceptions do not in any event cover the prohibition on monopolisation under s 46, some licensing activities may be caught. For example, the assignment of performance and broadcasting rights to a collecting society which negotiates with the users of such aspects of copyright may mean that the collecting society, due to the aggregation of assigned rights, ‘has a substantial degree of power in a market’ within the terms of s 46 and may well be in a position to deter competitive conduct and exercise significant power over those seeking to perform or broadcast copyright

material.114

COMPULSORY LICENSING The statutory schemes 7.21 The Copyright Act in many instances permits acts to be done which would otherwise infringe copyright, on condition that a royalty be paid to the copyright owner. These compulsory licensing schemes115 include the following:116 recording or filming works for the purpose of ephemeral broadcast by another person, or copying such a recording (ss 47(3), 70(3), 107(3)); recording of musical works (ss 54–64); broadcasting sound recordings or causing them to be heard in public (ss 108–109); copying and communication of copyright material by educational institutions (Pt IVA); and Crown use of copyright material: ss 182B–183F. [page 211] A feature of many of these schemes is the role played by the Copyright Tribunal of Australia. The tribunal was established under Pt VI of the 1968 Act and its jurisdiction includes the fixing of royalties or equitable remuneration in respect of compulsory licences and the power to arbitrate disputes in relation to the terms of the licences or proposed licensing schemes. The first time the tribunal was called into action was late in 1977, to inquire into the royalty payable in respect of compulsory licensing of musical works. In December 2000 the CLRC recommended, among other things, that the tribunal’s jurisdiction be extended to cover collectively administered licences outside of the statutory schemes and so extend to voluntary licences administered by collecting societies.117 That recommendation

was implemented by the Copyright Amendment Act 2006 (Cth).

Copying by educational institutions 7.22 Since 1980, educational institutions, on payment of a royalty, have been licensed to make multiple copies of certain works for the teaching purposes of the institution. The 1980 provisions followed the recommendations of the Franki Committee, which investigated the extent of copying by means of reprographic reproduction (photocopying) and recommended, in effect, that if you can’t beat them, join them and ask for royalties.118 Educational institutions were permitted to make multiple copies of periodical articles or other works for the teaching purposes of the institution, provided a record was kept of the material copied. The royalty paid in return for this copying was collected by Copyright Agency,119 which was established in anticipation of the introduction of the compulsory licensing scheme: see 22.75. Copyright Agency inspected records made by educational institutions and distributed the royalty to relevant copyright owners. The record-keeping involved in this scheme proved to be extremely onerous and expensive both for Copyright Agency and the recording institutions. In 1987 Copyright Agency and educational bodies began entering into voluntary licences which bypassed the wholesale record-keeping and calculation of an actual royalty in favour of a per capita sum to be paid for each enrolled student, with revenue distributed according to a statistical sampling. In light of this, the Copyright Amendment Act 1989 (Cth) streamlined the existing licences to educational institutions to photocopy works which facilitated the voluntary arrangements previously negotiated and allowed a choice between full record-keeping or per capita payments with distribution to copyright owners determined by a sampling system.120 The 1989 amendments also established a statutory licensing scheme to allow educational institutions to make copies of radio and television broadcasts [page 212]

to be played or shown at a more convenient time, and to be retained for repeated use. The educational copying provisions were amended again in 2000 as part of the digital agenda package to allow for the administration of ‘licensed communication’ in addition to licensed copying. Further reforms were introduced in 2017121 to consolidate and simplify the statutory licences for educational institutions. The new Pt IVA Divs 4 and 5 have removed the record-keeping requirements of the old systems and introduced flexibility for the negotiation of terms for equitable remuneration between educational institutions and collecting societies. The provisions apply to copying and communication of works and broadcasts.122 An educational institution does not infringe copyright if the copying or communicating occurs solely for educational purposes and a remuneration notice is in force. The remuneration notice123 is given to the relevant collecting society124 and is an undertaking by the educational institution to pay equitable remuneration for licensed copying and communication, and to give the collecting society reasonable assistance with collection and distribution of that money. The amount of equitable remuneration is either agreed between the parties or determined by the Copyright Tribunal.125

Musical works 7.23 Another important and widely exercised statutory licence is that in respect of the recording of musical works: ss 54–64. The provisions are detailed and complex, but in practice the system operates under an industry-wide agreement. The compulsory licence applies to making records for retail sale but does not extend to the use of music in films. This use of materials is negotiated and licensed by the Australasian Mechanical Copyright Owners’ Society (AMCOS): see 22.73. The licence is for recordings known as ‘cover versions’. Record-making is described as an exercise of the ‘mechanical right’ in the copyright in musical works. The effect of the compulsory licence is that the mechanical rights may be exercised without the composer’s permission, once a musical work has been made or imported into Australia for sale. The initial recording of the

work does, however, require the copyright owner’s licence.

Crown use of copyright material 7.24 Division 2 of Pt VII provides for Crown use of copyright material, allowing a form of statutory licence for government (Commonwealth, state or territory) use of works and other subject matter in circumstances which would otherwise constitute infringement.126 The Commonwealth in particular is an extremely large user of [page 213] copyright materials because of the extensive range of functions discharged by various departments and authorities. Where the use of copyright material is ‘for the services of the Crown’ it will not infringe copyright in that material: s 183(1). This covers use not only by government agencies, but by anyone authorised by government to do something for the services of the Crown. Importantly, that authority may be given before or after the doing of the relevant act: s 183(3). 7.25 The meaning of the phrase ‘for the services of the Crown’ is not entirely clear, but some guidance has been given in decided cases. In Allied Mills Industries Pty Ltd v Trade Practices Commission127 Sheppard J held that the use by the Trade Practices Commission of documents owned by the plaintiffs in preparation for court proceedings was ‘for the services of’ the Commonwealth.128 The phrase has also been considered in the context of the use of patented inventions: see 13.34. In Pfizer Corp v Ministry for Health129 the supply of drugs to patients in National Health Service hospitals in Britain was held to be a use ‘for the services of the Crown’: It appears that the natural meaning of use ‘for the services of the Crown’ is use by members of such services in the course of their duties. Sometimes, as in the case of the armed services, that use will or is intended to benefit the

whole community; sometimes such use will benefit a particular section of the community; and sometimes it will benefit particular individuals. I cannot see any good reason for making a distinction between one such case and another.130 In short, ‘for the services of the Crown’ may cover activities by government employees performed in the ordinary course of their employment; though copying or communication for educational purposes by a public educational institution is specifically excluded (s 183(11)), leaving Pt VB to regulate such matters. Examples of acts which would fall within the statutory formula would include copying of materials by government employees for training purposes or seminars; copying of materials for inclusion in departmental reports, submissions or briefing; copying in response to requests from members of the public for information; and the display of material on government agency websites. As a general rule, the government must as soon as possible (unless contrary to the public interest) inform the copyright owner of any act done pursuant to the s 183 licence: s 183(4). If the name or address of the copyright owner is unknown, notification in the relevant Gazette is sufficient: reg 25(4). The terms of the doing of the act, including in particular any fee to be paid, must also be agreed upon between the Crown and [page 214] the owner, or, in default of agreement, fixed by the Copyright Tribunal: s 183(5).131 These general provisions as to reporting and remuneration do not apply to any class of copying for which a collecting society has been given responsibility. In such a case, the government will simply make a payment to the collecting society, calculated according to a method (which must include some form of sampling system) either agreed between the government and the society or otherwise determined by the tribunal: s 183A. In practice, many forms of government copying are now regulated and paid for in

this way. The Copyright Tribunal has declared Copyright Agency to be the collecting society for government copying of works and published editions under the licence. In Copyright Agency Ltd v New South Wales132 Copyright Agency won a case concerning survey plans submitted to the New South Wales Land and Property Information (LPI) (formerly the Land Titles Office) that were copied as part of the registration process and also incorporated into databases. The New South Wales Government argued that when the surveyors submitted their plans for registration they knew the uses that would be made of them and licensed those uses without the need for the government to pay any licence fees. Copyright Agency successfully argued that these uses were not impliedly licensed by the surveyors and that remuneration must be paid under the statutory licence.133 In a different context, the statutory licence for government use (s 183) was advantageous for the NSW Government when compelling disclosure of information. In Duncan v New South Wales134 the NSW Government successfully relied upon the statutory licence to defeat an argument that state legislation135 granted the government rights to use copyright-protected material that were inconsistent136 with the Commonwealth Copyright Act. A provision in the Mining Act required disclosure and use of information for future mining purposes and stated: No intellectual property right or duty of confidentiality (whether arising by agreement, under a relevant licence or otherwise) prevents the use or disclosure of information by the appropriate official as authorised by this clause or the use or disclosure of that information by or on behalf of a person to whom it has been disclosed as authorised by this clause.137 No inconsistency with the Commonwealth Copyright Act arose in this case because the NSW Government stated it would discharge its obligations to pay equitable remuneration under s 183A for use of reports submitted to it under the Mining Act.138

1. 2. 3.

4. 5. 6. 7. 8. 9. 10. 11. 12. 13.

14. 15. 16. 17. 18.

19. 20. 21. 22. 23. 24. 25. 26.

Barlow 2000, 3. As to the concept of authorship, see 6.2–6.3, 6.36–6.39. ‘This would be an agreement as to the operation of the s 35 … not an assignment of copyright which must be in writing by virtue of s 196(3) of the Act. An agreement for the purposes of s 35(3) of the Act need not be in writing’: Insight SRC IP Holdings Pty Ltd v Australian Council for Educational Research Ltd (2012) 96 IPR 495 at [41]. See Stewart et al 2016, ch 8; and see eg Redrock Holdings Pty Ltd v Hinkley (2001) 50 IPR 565. (1994) 29 IPR 589. Edsonic Pty Ltd v Cassidy (2010) 88 IPR 317 at [41]. Redrock Holdings Pty Ltd v Hinkley (2001) 50 IPR 565. (1951) 69 RPC 10. See also Noah v Shuba [1991] FSR 14. (1951) 69 RPC 10 at 18. Ibid at 22. See discussion in Monotti & Ricketson 2003, 270. University of Western Australia v Gray (2009) 82 IPR 206 at [180]. The case concerned the rather different implied term for academics producing patentable inventions: see 13.9–13.10. After noting Stephenson Jordan & Harrison, the Full Court examined the matter no further in relation to copyright. Cf Noah v Shuba [1991] FSR 14. As to the legal effectiveness of these policies in terms of either vesting ownership of copyright in university staff or assigning it to them, see Monotti 1997a. See Monotti 1994. See Monotti 2002a. ‘Hard copy facsimile’ is defined to mean a facsimile ‘in a material form and from which the work is visible to a human being without the use of any device’, thus clearly excluding storage of a work in a computer: s 35(7). It is also made clear in s 35(4) that the journalist has no rights in relation to reproductions of their work made for the purpose of publication of the newspaper or magazine itself. Copyright Amendment Act (No 1) 1989 (Cth). See also Borland & Williams 1993. As to the meaning of ‘portrait’, see Attorney-General (NSW) v Trustees of National Art Gallery of NSW (1944) 62 WN (NSW) 212; Leah v Two Worlds Publishing Co Ltd [1951] Ch 353. See s 35(7), which (presumably to avoid any doubt on the matter) specifically states that ‘private or domestic purpose’ includes ‘a portrait of family members, a wedding party or children’. The person who took the photograph — definition of ‘author’ s 10. As to the enforcement of this provision, see Matthews v ACP Publishing Pty Ltd (1998) 41 IPR 535. For a discussion of the complexities of collective authorship using online media such as Wikipedia, see Rimmer 2009a. Chappell & Co Ltd v Redwood Music Ltd [1981] RPC 337. Donoghue v Allied Newspapers Ltd [1938] Ch 106; Bartos v Scott (1993) 26 IPR 27; Hadley v Kemp [1999] EMLR 589: see 6.2. Similarly, assisting in the testing and refinement of software does not confer joint authorship of copyright in the program: Fylde Microsystems Ltd v Key Radio Systems Ltd (1998) 39 IPR 481. See also Coles v

27. 28. 29. 30. 31. 32. 33. 34.

35.

36. 37. 38. 39. 40. 41. 42. 43. 44. 45.

46. 47. 48.

Dormer (2015) 117 IPR 184 at [43]: feedback and suggestions by a client to an architect about house plans did not make the client a joint author. See eg Prior v Lansdowne Press Pty Ltd [1977] VR 65. Ibid; Acorn Computers Ltd v MCS Microcomputer Systems Pty Ltd (1984) 4 IPR 214; Dixon Projects Pty Ltd v Masterton Homes Pty Ltd (1996) 36 IPR 136; Milwell Pty Ltd v Olympic Amusements Pty Ltd (1999) 85 FCR 436. Seven Network (Operations) Ltd v TCN Channel Nine Pty Ltd (2005) 66 IPR 101. (2000) 48 IPR 301. See O’Brien v Komesaroff (1982) 150 CLR 310. See Murray v King (1984) 4 FCR 1. See WEA Records Pty Ltd v Stereo FM Pty Ltd (1983) 1 IPR 6 at 10. Since 2005, ownership of copyright in films that have not been commissioned has been extended to their directors, but only for the purposes of retransmission of a free-to-air broadcast: s 97(4), (6), inserted by the Copyright Amendment (Film Directors’ Rights) Act 2005 (Cth). Ownership of copyright in sound recordings of live performances was extended to performers by the US Free Trade Agreement Implementation Act 2004 (Cth) and came into operation on 1 January 2005. If the operation of these provisions results in acquisition of property from the person who owns the record otherwise than on just terms, the performer may be liable to pay compensation: s 116AAA. Seven Network (Operations) Ltd v TCN Channel Nine Pty Ltd (2005) 66 IPR 101. Windridge Farm Pty Ltd v Grassi (2011) 92 IPR 431 at [127]. Attorney-General (UK) v Guardian Newspapers Ltd (No 2) [1988] 3 WLR 776 at 788, 791, 800–1: see Stewart, Griffith & Bannister 2010, [4.41]. (2001) 208 CLR 199 at 231, 246–7, 320: see 3.11. Cf OBG Ltd v Allan [2008] 1 AC 1 where the argument was not run. (2011) 92 IPR 431. Ibid at [141]. (1998) 41 IPR 513. Ibid at 531. This is a broad term that is capable of embracing not just governments as such, but arguably includes local councils. As to the status of local councils as state agencies or instrumentalities, see Greater Dandenong City Council v Australian Municipal, Administrative, Clerical and Services Union (2001) 184 ALR 641; and see also Stack v Brisbane City Council (1995) 32 IPR 69, holding a council to be an ‘authority of a State’ for the purpose of Crown use provisions in the Patents Act 1990: see 13.34. The CLRC also considered the possibility that ‘schools, municipal councils and land management councils’ might be listed among state government entities: CLRC 2005, 115. The same may apply to agencies and statutory corporations which help carry on the business of government. Cf Reference by APRA Ltd; Re Australian Broadcasting Commission (1982) 45 ALR 153 (ABC not part of ‘government’ for this purpose). Note that ‘the Commonwealth’ for this purpose includes the administration of a territory: s 10(1). But cf British Broadcasting Corp v Wireless League Gazette Publishing Co [1926] Ch 433. See Director General of Education v Public Service Association of New South Wales (1985) 4 IPR 552; and see also Commonwealth v Oceantalk Australia Pty Ltd (1998)

49. 50. 51. 52. 53. 54. 55.

56. 57. 58. 59. 60. 61.

62. 63.

64. 65. 66. 67. 68.

39 IPR 520. ‘[B]oth s 176(2) and s 35(6) may apply to the one factual situation’: Insight SRC IP Holdings Pty Ltd v Australian Council for Educational Research Ltd (2012) 96 IPR 495 at [42]. Copyright Agency Ltd v New South Wales (2007) 159 FCR 213. See also discussion in Insight SRC IP Holdings Pty Ltd v Australian Council for Educational Research Ltd (2012) 96 IPR 495 at 504–5. Ibid at [138]. Ibid at [125]. Ibid at [126]. Copyright Agency Ltd v New South Wales (2007) 159 FCR 213 at [146]. Ibid at [148]. Copyright Agency Ltd v New South Wales [2007] HCA Trans 700. The case went to the High Court on the statutory licence issue but New South Wales did not challenge the Full Court’s decisions concerning ownership under ss 176–177: Copyright Agency Ltd v State of New South Wales (2008) 233 CLR 279, discussed at 7.24. See further Bannister 2008. IPCRC 2000, 114. Ibid, 113. CLRC 2005, xxii. Government 2.0 Taskforce 2009. See 7.18; Bannister 2011. See also Economic Development and Infrastructure Committee 2009, ch 6. Defined as ‘information, including information products and services, generated, created, collected, processed, preserved, maintained, disseminated, or funded by or for the government or public institutions, taking into account [relevant] legal requirements and restrictions’: Government 2.0 Taskforce 2009, xix. The CC BY (attribution) licence lets others distribute, remix, tweak, and build upon the work, even commercially, as long as they credit the author for the original creation: see . For agencies that are subject to the Public Governance, Performance and Accountability Act 2013 (Cth), see Australian Government 2016b, Principle 11(b). For a discussion of agency perceptions of barriers to open licensing, see Office of the Information Commissioner 2013. Copyright is included among the intellectual property rights covered by the registration scheme for security interests in personal property: Personal Property Securities Act 2009 (Cth); see 13.20, 20.32, 22.42–22.48. That is, copyright which is ‘to come into existence at a future time or upon the happening of a future event’: s 10(1). This is not to be confused with the performers’ rights introduced by the Copyright Amendment Act 1989: see 9.10. The Australasian Performing Right Association, or APRA: see 22.72. See eg Acorn Computers Ltd v MCS Microcomputer Systems Pty Ltd (1984) 4 IPR 214; Robert J Zupanovich Pty Ltd v B & N Beale Nominees Pty Ltd (1995) 32 IPR 339. For other examples of equitable interests in copyright, see eg Photocrom Co Ltd v H & W Nelson Ltd [1923–28] MacG Cop Cas 293; Antocks, Lairn Ltd v L Bloohn Ltd [1972] RPC 219; A-One Accessory Imports Pty Ltd v Off Roads Imports Pty Ltd (1996) 34 IPR 306; Gold Peg International Pty Ltd v Kovan Engineering (Aust) Pty

69. 70. 71. 72. 73. 74. 75. 76. 77. 78. 79. 80. 81. 82. 83. 84. 85.

86. 87.

88. 89. 90. 91. 92.

93.

Ltd (2005) 67 IPR 497; Intelmail Explorenet Pty Ltd v Vardanian (No 2) (2009) 82 IPR 281. See Murray v King (1984) 4 FCR 1 at 13. Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd (2009) 81 IPR 584. Section 196(2). For a detailed discussion of divisibility based upon the class of acts, place and time, see Ricketson & Creswell 2017, [14.230]ff. Though cf s 72, which gives some protection to artists who draw on previous works in which they do not or no longer have the copyright: see 8.52. See eg Barker v Stickney [1919] 1 KB 121. As to partnership property, see O’Brien v Komesaroff (1982) 150 CLR 310. Cf Re Dickens [1935] Ch 267. Clune v Collins Angus & Robertson Publishers Pty Ltd (1993) 25 IPR 246. See eg Trumpet Software Pty Ltd v OzEmail Pty Ltd (1996) 34 IPR 481. Cf Davidson v CBS Records [1983] AIPC 90-106. Avel Pty Ltd v Multicoin Amusements Pty Ltd (1990) 171 CLR 88. Cf Broderbund Software Inc v Computermate Products (Australia) Pty Ltd (1991) 22 IPR 215. See eg Sega Enterprises Ltd v Galaxy Electronics Pty Ltd (1998) 39 IPR 577. See eg Wilson v Weiss Art Pty Ltd (1995) 31 IPR 423; Australian Olympic Committee Inc v Big Fights Inc (1999) 46 IPR 53. See eg Messager v BBC [1929] AC 151. Stevens v Benning (1855) 1 K & J 168; 69 ER 414. Cf Taylor v Neville (1878) 47 LJ QB 254. See Frisby v BBC [1967] Ch 932. Note that any adaptation of a work by a licensee may itself attract copyright as an original work: see eg Redwood Music Ltd v Chappell & Co Ltd [1982] RPC 109. See eg Clune v Collins Angus & Robertson Publishers Pty Ltd (1993) 25 IPR 246. This may depend on whether ‘reasonable notice’ has been given: see Willmott et al 2013, 224–5. See also Johnson 2003; Lewis 2003, who discuss ‘shrink-wrap’ licences — terms of use supplied with packaged or shrink-wrapped software that are accessible by the purchaser/licensee only after the transaction has been made. See eg Trumpet Software Pty Ltd v OzEmail Pty Ltd (1996) 34 IPR 481; and see also Brennan 1997; Lambert 2000. See eg Solar Thomson Engineering Co Ltd v Barton [1977] RPC 537. See also British Leyland Motor Corp Ltd v Armstrong Patents Co Ltd [1986] 2 WLR 400; Weir Pumps Ltd v CML Pumps Ltd (1983) 2 IPR 129; Green Cartridge Co (Hong Kong) Ltd v Canon Kabushiki Kaisha (1996) 34 IPR 614. Copyright Agency Ltd v New South Wales (2008) 233 CLR 279 at [92]; Acohs Pty Ltd v Ucorp Pty Ltd (2012) 95 IPR 117 at [145]. (2008) 77 IPR 550. Torpey Vander Have Pty Ltd v Mass Constructions Pty Ltd (2002) 55 IPR 542 at 545. (1963) 5 FLR 298 at 304. Acohs Pty Ltd v R A Bashford Consulting Pty Ltd (1997) 37 IPR 542 at 562. Merkel J suggested in the same case (at 560–2) that the Beck principle is based on a term implied by law into contracts of this sort: see also Torpey Vander Have Pty Ltd v Mass Constructions Pty Ltd (2002) 55 IPR 542 at 547. See also Tucker v Bentley (1996) 36 IPR 243. Note, however, that whether such a licence is capable of being assigned in the context of a mortgagee sale will depend on

94. 95. 96. 97. 98. 99. 100. 101.

102. 103. 104. 105. 106. 107. 108.

109. 110. 111. 112. 113. 114. 115.

116. 117.

the terms of the mortgage: Torpey Vander Have Pty Ltd v Mass Constructions Pty Ltd (2002) 55 IPR 542. Gruzman Pty Ltd v Percy Marks Pty Ltd (1989) 16 IPR 87. (2006) 229 CLR 577. Devefi Pty Ltd v Mateffy Perl Nagy Pty Ltd (1993) 37 IPR 477; Tamawood Ltd v Habitare Developments Pty Ltd (No 3) (2013) 101 IPR 225; Tamawood Ltd v Habitare Developments Pty Ltd (2015) 112 IPR 439. (2012) 95 IPR 117. See Chaplin v Leslie Frewin (Publishers) Ltd [1966] Ch 71 at 94. Trumpet Software Pty Ltd v OzEmail Pty Ltd (1996) 34 IPR 481. Computermate Products (Australia) Pty Ltd v Ozi-Soft Pty Ltd (1988) 12 IPR 487 at 490; and see Ricketson & Creswell 2017, [14.475]. Ng v Clyde Securities Ltd [1976] 1 NSWLR 443; Gruzman Pty Ltd v Percy Marks Pty Ltd (1989) 16 IPR 87. Cf FNH Investments Pty Ltd v Sullivan (2003) 59 IPR 121, where the terms of the contract made it clear that no licence was to be obtained in the first place unless and until payment was made by the client. For information on the open-source movement, see and Boyle 2008, 185–94. Potter 2000. For information on the Creative Commons, see and Boyle 2008, ch 8. See . CLRC 2002. ALRC 2013, Recommendation 20-1. Productivity Commission 2016, Recommendation 5.1. The government has supported this recommendation in principle. At the time of publication, a review of the Copyright Regulations was proposed that would consider, among other things, restrictions on contracting out and permitting circumvention of technological protection measures for legitimate uses: Australian Government 2017, 4. [1974] 1 WLR 1308. [1984] 3 WLR 448. Although the agreements were struck down, it was held that the defendants should get an allowance for reasonable remuneration, including a profit element for all the work done in promoting O’Sullivan and his compositions. Elton John v James [1991] FSR 397. Panayiotou v Sony Music Entertainment (UK) Ltd [1994] EMLR 229; see Coulthard 1995. See Re Applications by Australasian Performing Right Association Ltd (1999) 45 IPR 53; and see 22.79ff for further discussion of trade practices issues, including various proposals for the reform of s 51(3). In Phonographic Performance Company of Australia v Commonwealth (2012) 246 CLR 561, the High Court held that a capped statutory licence scheme for broadcasts of music did not acquire pre-1969 property and so did not raise a ‘just terms’ argument contrary to s 51(xxxi) of the Constitution: see 1.7. The Australian Law Reform Commission recommended reforms in relation to the statutory licences: ALRC 2013, ch 8. CLRC 2000, [11.2].

118. 119. 120. 121. 122. 123. 124. 125. 126.

127. 128.

129. 130. 131. 132. 133. 134. 135. 136. 137. 138.

Franki 1976. Cf Haines v Copyright Agency Ltd (1982) 64 FLR 184, which involved an attempt to use the fair dealing provisions of the Act to get around the compulsory licensing provisions. Formerly Copyright Agency Ltd (CAL). The possibility, in due course, of a vast licensing system based on contracts, with the potential to bypass statutory exceptions to proprietary rights, was a matter for investigation by the CLRC in its Copyright and Contracts reference. See CLRC 2002. Copyright Amendment (Disability Access and Other Measures) Act 2017 (Cth). Section 113P. Section 113Q. Copyright Agency and Screenrights (see 22.79–22.81). Section 113R. See Campbell & Monotti 2002, which also examines other rights of governmental use provided under the Copyright Act and other legislation. The Australian Law Reform Commission has recommended a number of reforms in relation to the statutory licence for government use: ALRC 2013, ch 15. (1981) 34 ALR 105 at 147. Cf Reference by APRA Ltd; Re Australian Broadcasting Commission (1982) 45 ALR 153 where it was held that radio and television broadcasts conducted by the ABC were not done ‘for the services of the Crown’; the commission, in any event, was not held to be ‘the Commonwealth’ for the purposes of s 183. [1965] AC 512. Ibid at 535. See eg Re Application by Seven Dimensions Pty Ltd (1996) 35 IPR 1; Marine Engineering and Generator Services Pty Ltd v Queensland (1997) 38 IPR 422; Pocketful Of Tunes Pty Ltd v Commonwealth (2015) 112 IPR 346. (2008) 233 CLR 279. Copyright Agency Ltd v State of New South Wales (2008) 233 CLR 279. For calculation of that remuneration, see Copyright Agency Ltd v New South Wales (2013) 102 IPR 85. (2015) 255 CLR 388. Mining Act 1992 (NSW) cl 11 of Sch 6A. A constitutional law argument: Commonwealth Constitution s 109. Mining Act 1992 (NSW) cl 11(3) of Sch 6A. Duncan v New South Wales (2015) 255 CLR 388 at [54].

[page 215]

CHAPTER 8 Infringement of Copyright TYPES OF INFRINGEMENT 8.1 It is an infringement of copyright under the Copyright Act 1968 for any person other than the copyright owner to do any of the things a copyright owner is exclusively entitled to do in respect of the work or other subject matter,1 unless permission has been granted to perform such acts: ss 36(1), 101(1). The bundle of exclusive rights encompassed in copyright is enumerated in s 31(1) with respect to works and in ss 85–88 with respect to other subject matter: see 5.11. Thus, reproducing, publishing, performing, adapting or 2 communicating a work may be an infringement, and so may renting out a computer program or a work embodied in a sound recording. In respect of Pt IV copyrights, reproducing, performing or communicating to the public sound recordings, films or broadcasts constitutes infringement, as also does commercial rental of recordings. A published edition of a work, on the other hand, is only infringed by making a ‘facsimile copy’ of the edition: s 88. Authorising any of these acts also amounts to infringement. The doing of an act comprised in the copyright is termed a ‘direct’ infringement. No intention to infringe need be established: a person is still liable if they act in innocence of the plaintiff’s copyright.3 By contrast, certain other ‘indirect’ infringements do generally require actual or constructive knowledge of wrongdoing. These occur when (subject to a growing list of exceptions) infringing articles are [page 216]

imported into Australia for trade purposes (ss 37, 102), or sold or otherwise dealt with by way of trade (ss 38, 103); or when a place of public entertainment is allowed to be used for an infringing public performance of a literary, dramatic or musical work: s 39(1).

DIRECT INFRINGEMENT OF COPYRIGHT Infringement through reproduction of works: general principles 8.2 The concept of reproduction The most common form of direct infringement is for a work to be reproduced in material form without the copyright owner’s permission. The term ‘reproduction’ is not generally defined in the Act, although there are a number of provisions which seek to clarify its meaning in particular contexts. Hence, it is specifically provided that a reproduction of a literary, dramatic or musical work includes a recording or film thereof (s 21(1)), and that an artistic work can be reproduced in another dimension: s 21(3). Section 21(1A) also provides, for the avoidance of doubt, that conversion of a work to digital (or other electronic machine-readable) form, including the ‘first digitisation’ of that work, is taken to be a reproduction of the work.4 In all cases the ‘material form’ requirement must be satisfied. Material form is defined in s 10(1) as follows: … in relation to a work or an adaptation of a work, includes any form (whether visible or not) of storage of the work or adaptation, or a substantial part of the work or adaptation (whether or not the work or adaptation, or a substantial part of the work or adaptation, can be reproduced). 8.3 This definition was inserted by the United States Free Trade Agreement Implementation Act 2004 (Cth). The previous definition had referred to a form of storage from which the work or adaptation could be reproduced. That left open the possibility that an ephemeral reproduction, which did not result in sufficiently stable storage that a further reproduction could be made from it, would not infringe.5 In Stevens v Sony it was found that when the PlayStation console played

a computer game it copied a portion of the program that was stored in the CD-ROM into its RAM. The data was only stored in the RAM until the console was shut down and that stored portion could not be extracted and reproduced without developing hardware that would reverse the copyright process. The High Court held that the phrase ‘can be reproduced’ was a reference to reproduction in the ordinary course and not to what might result if additional steps were taken.6 The new definition has removed the reproduction requirement.7 [page 217] 8.4 Objective similarity and causal link It is generally accepted that the concept of reproduction has two distinct, if related,8 elements.9 The first is that there must be an objective similarity between an alleged reproduction and the copyright work, such that one is recognisable as a copy of the other. What will constitute sufficient similarity in any given case will depend on the category of work in question, as the next few paragraphs will demonstrate. But it also depends on the ‘well known, if often difficult, distinction between ideas and concepts on the one hand and the form of expression or manifestation of them on the other’.10 In theory at least, there must be similarity not merely in the underlying idea or purpose of the respective works, but in the way that idea or purpose is expressed. Second, the very notion of copying that is implicit in the term ‘reproduction’ means that there must be a causal link between the defendant’s article and the plaintiff’s work, since independent creation does not infringe copyright.11 The copying may be deliberate, but can also be subconscious.12 In general, the plaintiff must prove that the defendant has had access to the plaintiff’s work,13 or at least to something from which it might be copied. It is important in this context to appreciate that copying need not be direct. Thus, a dress copied from another dress may infringe copyright in a sketch of the garment, even if the infringer has never seen the artistic work on which the garment was based.14 Again, though, it is the expression that must be copied, not just the idea. For

example, a computer program written to achieve the same effect as an existing program will not infringe where the function of the two is similar but the ‘particular form of expression’ has not been copied.15 The blurring between the two elements of objective similarity and causal link is evident in two subsidiary principles. The first is that where the plaintiff and defendant’s works are objectively similar, a presumption of copying may arise which the defendant [page 218] then has to rebut.16 In other words, even where it cannot be proved that the defendant had access to the plaintiff’s work, a court may nonetheless infer that copying has taken place on the basis that the similarities between the respective works ‘are so striking as to preclude the possibility of the defendant having arrived at the same result independently’.17 For example, in Corelli v Gray18 the author of a novel alleged her copyright had been infringed by a dramatic sketch. Sargant J looked at the striking aggregate of similarities between the sketch and the novel and decided that this indicated copying by the defendant. Although the events in the novel were not very distinctive or original: … the combination of these ordinary materials may nevertheless be original, and when such a combination has arrived at a certain degree of complexity it becomes practically impossible that it should have been arrived at independently by a second individual.19 Reproduction of errors and idiosyncrasies from one database to another was an indication of copying in Dynamic Supplies v Tonnex.20 Yates J thought it inconceivable ‘that the same idiosyncrasies, in the same number and combination, and in relation to the same products’ would have found their way into the alleged copy by chance.21 Conversely, where the plaintiff can independently prove actual copying by the defendant, or where such copying is admitted, there

may be no need to show the ‘specially close similarity’ that is needed to raise a presumption of copying.22 Indeed, in Eagle Homes Pty Ltd v Austec Homes Pty Ltd23 Lindgren J (with whom Finkelstein J concurred) went so far as to say that ‘where subjective copying occurs there can be expected to be found an infringement, unless it transpires that the [defendant’s] product is so dissimilar to the copyright work that the copyright work can no longer be seen in the work produced’. As Starke J once put it, ‘it is not for the court to make the way of the taker of copyright matter easy’.24 However, in Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd25 the Full Court of the Federal Court, while accepting that in cases of ‘unmeritorious use’ it is appropriate [page 219] ‘to show greater latitude in the plaintiff’s favour’, cautioned that the plaintiff must still establish the element of objective similarity. In Tamawood Ltd v Henley Arch Pty Ltd26 Wilcox and Lindgren JJ observed that the decision in Eagle Homes must be read in context (the case involved reproduction of the whole of the copyright work) and emphasised that subjective copying alone is not enough. A substantial part of the copyright work must be reproduced.27 8.5 Substantiality There is likely to be an obvious overlap between the question of whether the defendant has substantially reproduced the plaintiff’s material, and the issue of whether there is sufficient similarity between the parties’ work for the requirement of copying to be established. Nevertheless, ‘they are discrete issues and the answer to one does not necessarily produce an answer to the other’.28 8.6 The Act provides that a reference to the doing of an act (other than publication) comprised in a copyright includes a reference to the doing of that act in relation to a substantial part of the material: s 14. Thus, it is an infringement to reproduce only part of a work, so long as that part is ‘substantial’. This has been described as the heart of copyright law and yet ‘one of its most elusive aspects’.29

8.7 The concept of a ‘substantial part’ has been defined by the courts primarily in reference to the quality of what is taken. Accordingly, infringement will be found when an important part of a work is used even if, in terms of quantity, that part is only small.30 In particular, ‘if the part taken represents the application of a high degree of skill and labour on the part of the author, it may be regarded as substantial, although comparatively slight in quantitative terms’.31 Conversely, infringement will not occur if an unoriginal part of a work is taken,32 even if substantial in terms of quantity.33 8.8 The Full Court of the Federal Court has suggested that it is at this stage in the analysis that the idea/expression dichotomy becomes relevant: a substantial part [page 220] will not have been taken if only the underlying idea or concept has been used.34 In relation to assessment of the part taken for the purposes of infringement in the IceTV compilation case (see 8.12) Gummow, Hayne and Heydon JJ in the High Court said ‘baldly stated matters of fact or intention are inseparable from and coextensive with their expression’ and once the facts were divorced from the other elements of the compilation they were not a substantial part.35

Reproduction of works: particular situations 8.9 Reproduction of computer programs The application to computer programs of the general principles described above has caused considerable difficulties. One of those difficulties was addressed by s 21(5), inserted in 2000 by the digital agenda amendments. This makes it clear that a computer program is reproduced if an object code version of the program is derived from the program in source code, or vice versa. However, other problems are illustrated by two cases that have come before the High Court in this area.

8.10 The Autodesk case In the first of these cases the plaintiff, Autodesk Inc, had developed AutoCAD, a very sophisticated (and quite expensive) program designed to facilitate the drafting of architectural and engineering plans and designs. In order to deter copying of the program and encourage further sales, the plaintiff developed a method of limiting its use to one computer at a time. A part of the program (known as ‘Widget C’) contained instructions to the computer on which it was run, requiring the computer to send a ‘challenge’ to a hardware lock supplied with the program and required to be plugged into the computer. On receipt of the challenge, the lock would ‘answer’ and, if correct, the program would continue to run. Without the lock, therefore, no computer could run a copy of the program. The key to the exchange between Widget C and the lock was a ‘pseudo random sequence’ of 127 digits stored in a ‘look-up table’. Using an oscilloscope to analyse the electrical impulses sent between the AutoCAD program and lock, the defendants were able to deduce the 127-bit string. They produced their own lock, the Auto-Key, to simulate the function of the AutoCAD lock and advertised it for sale at less than a quarter of the price of AutoCAD. The plaintiff sued for infringement of its copyright in the AutoCAD program. The central issues in the case were (i) whether or not that program was in part contained within the AutoCAD lock, and (ii) whether the Auto-Key was a reproduction in material form or an adaptation of the AutoCAD program. At first instance, Northrop J held that the Auto-Key was a reproduction of the lock, having regard to the reference to ‘function’ in the definition of computer program that then appeared in the Act: see 6.16. The Full Federal Court rejected this approach, on the basis that there was no objective similarity between the devices, the Auto-Key lock on the one [page 221] hand and AutoCAD on the other. However, the High Court reversed the appeal decision, taking the view that in creating a device to

interact with Widget C that allowed the AutoCAD program to run, the defendants had reproduced a substantial part of a literary work, in the form of Widget C’s message from the look-up table.36 Despite the fact that the look-up table was not a computer program itself, because it was not a ‘set of instructions’, it was still a ‘substantial, indeed essential part’ of the computer program comprised in Widget C.37 The defendants subsequently applied to the High Court to reopen this decision, arguing that the look-up table was not a substantial part of the Widget C program, and that they had not in any event been given an opportunity to be heard on this point before it was made the basis of the court’s decision. The application was dismissed by the majority of the court (Brennan, Dawson and Gaudron JJ, with Mason CJ and Deane J dissenting). In his dissenting judgment, Mason CJ rejected the idea that the functional aspect of a program determines its substantiality and said that in copyright law the emphasis is on originality of the part allegedly taken.38 However, the emphasis on the function of a computer program as determining what is a ‘substantial part’ was maintained by the majority, who emphasised that the table was ‘essential’ or ‘critical’ to the operation of Widget C. There has been much criticism of Autodesk. The fact that the defendant could be held to have infringed copyright without ever having seen the look-up table was described by the Copyright Law Review Committee (CLRC) as ‘a far-reaching and questionable extension of copyright’.39 Or, as Lahore put it: … the question is whether it would be an infringement of copyright in a railway timetable to stand on a station and observe and write down the times of train arrivals and departures, assuming that those times were the same as those printed in the timetable. This is in essence what [the defendants] did in relation to the output from the lock. To assert infringement in such a case is to confer a monopoly in the information.40 While the finding of copyright infringement in Autodesk seems problematic, the plaintiff appeared to have a legitimate grievance

with the defendants’ conduct in undermining its anti-copying strategy. The CLRC’s proposed solution was to recommend prohibition of the manufacture, importation, dealing with or possession for commercial purposes of devices designed to facilitate the unauthorised circumvention of locks or other devices applied to protect computer programs from unauthorised copying.41 As discussed later in the chapter (see 8.67), this recommendation has now been implemented. [page 222] In his dissenting judgment in Autodesk Mason CJ drew a distinction between works that attract protection as a means in themselves (such as novels, films or dramatic works) and functional works, such as computer programs, or works that are a means to an end, such as compilations and tables. With the latter works, it is particularly important to focus upon the originality of the part taken.42 In his Honour’s opinion the data in the look-up table was akin to unoriginal material simpliciter in a table or compilation.43 This emphasis by Mason CJ on originality of the part allegedly taken in Autodesk, and in Data Access Corp v Powerflex Services Pty Ltd,44 was cited with approval by French CJ, Crennan and Kiefel JJ in the High Court in IceTV Pty Ltd v Nine Network Australia Pty Ltd.45 8.11 Data Access and interoperability In Data Access Corp v Powerflex Services Pty Ltd46 the High Court recognised some of the problems created by its decisions in Autodesk and significantly modified its stance. Gleeson CJ, McHugh, Gummow and Hayne JJ specifically rejected the view of the majority in Autodesk No 2 that anything that is an ‘essential’ element of a program must be a substantial part, since in practice every element is critical to the functioning of a program. They preferred Mason CJ’s view that in determining whether a substantial part of a program has been reproduced, regard must be had to the originality of the part taken. Bearing in mind the nature of a computer program, that must be

assessed with respect to the originality with which the part in question expresses an ‘algorithmic or logical relationship between the function desired to be performed and the physical capabilities of the [computer]’.47 They went on: That being so, a person who does no more than reproduce those parts of a program which are ‘data’ or ‘related information’ and which are irrelevant to its structure, choice of commands and combination and sequencing of commands will be unlikely to have reproduced a substantial part of the computer program. We say ‘unlikely’ and not ‘impossible’ because it is conceivable that the data, considered alone, could be sufficiently original to be a substantial part of the computer program.48 On this basis, Autodesk could only be regarded as correctly decided if the data in the look-up table ‘had its own inherent originality’,49 a matter on which they were not prepared to venture an opinion. But while this was an important clarification, the decision in Data Access created its own problems. The defendants had developed and marketed a product called [page 223] PFXplus, which was designed to be interactive with the plaintiff’s existing software called Dataflex, a program allowing the creation and manipulation of customised databases. As noted earlier (see 6.16), the High Court rejected the plaintiff’s argument that its copyright had been infringed through the use in PFXplus of various commands and macros also found in Dataflex. Nevertheless, the defendant was found to have infringed copyright merely through the reproduction of a ‘Huffman compression table’ contained in Dataflex. Huffman compression is used to reduce the amount of memory consumed by storing data files, and involves each different character

being expressed by a ‘bit string’ which is shorter for more frequent characters and longer for those used less often. In order for PFXplus to be able to compress and decompress Dataflex files, and vice versa, it was necessary for PFXplus to use a Huffman compression table that was identical to that devised for Dataflex by the plaintiff. As in Autodesk, the defendants did not decompile the Dataflex source code to arrive at a copy, but devised an ingenious method to deduce it. Once again, however, this was considered to be a reproduction of the table. The table itself was not a computer program, but a literary work in its own right, being ‘a table, or compilation, expressed in words, figures or symbols’ under the definition of that term in s 10(1). Furthermore, it was an original work because of the ‘substantial skill and judgment’ used to create it, albeit this was ‘perhaps more directed to writing the program setting out the Huffman algorithm and applying this program to a representative sample of data than to composing the bit strings in the Huffman table’.50 In practical terms, therefore, the need to copy this relatively minor element of Dataflex rendered unlawful the defendants’ efforts to create a different, but interoperable piece of software, even though they had not reproduced the program itself. Gleeson CJ, McHugh, Gummow and Hayne JJ acknowledged the ‘practical consequences’ that their decision might have for the production of programs compatible with those of others, but considered that this was a matter that could only be resolved by the legislature.51 In fact, the issue has now been addressed through the addition of s 47D, which permits the reproduction or adaptation of a computer program for the purpose of creating a new program or article that will ‘connect to and be used together with, or otherwise … interoperate with, the original program or any other program’.52 ‘Computer program’ for this purpose includes a literary work that is incorporated in or associated with a computer program, or that is essential to its effective operation (s 47AB), which would presumably include the compression table in Data Access. The intention here is clearly to facilitate competition in the software market and enhance common access to new programs which interact with

[page 224] those already on the market. In the context of software, which is largely supplied by a small number of major developers, this is particularly relevant.53 8.12 Factual compilations and databases In Desktop Marketing Systems Pty Ltd v Telstra Corp Ltd54 the Full Court of the Federal Court, as previously explained (see 6.35), held that the defendant infringed copyright by producing telephone directories on searchable CD-ROMs with raw information copied from Telstra’s directories. The defendant had argued that its products bore no objective similarity to Telstra’s, since the information was presented in a different way. However, while an element of visual similarity is generally demanded in relation to artistic works before infringement can be established (see 8.4), the court rejected any suggestion that this applied to factual compilations. Indeed, Lindgren J, with whom the other members of the court concurred on this point, went so far as to suggest that: ... where copyright protection is attracted to a compilation of factual information by the labour of collecting, verifying, recording and assembling the data and not by reference to the form of the compilation, reproduction does not require formal resemblance, and the notion of a substantial part of the compilation is not defined by reference to its form.55 The fact that the originality of Telstra’s directories lay in the time and expense of assembling a comprehensive listing, and that the defendant had appropriated ‘the benefit of Telstra’s whole-of-universe certification’ by copying the details of all subscribers, sufficed to establish reproduction of a substantial part — whatever the form in which those details were presented.56 Although the High Court refused Desktop Marketing Systems special leave to appeal that decision, it must now be read with caution in light of the High Court’s decision in IceTV Pty Ltd v Nine Network Australia Pty Ltd.57 In IceTV broadcaster Nine Network refused to license its weekly

television programming schedules to IceTV, the producer of an online subscription based electronic programme guide. The case was fought over control of the time and title information in the schedules, but the underlying dispute was over the ability of commercial free-to-air broadcasters to restrict the use of that information in electronic programme guides in conjunction with digital personal video recorders with sophisticated ‘ad-skipping’ functions.58 IceTV had arrangements with the public broadcasters SBS and the ABC, but failed to obtain agreements from networks Nine, Seven and Ten.59 Undeterred, IceTV took legal advice on how to avoid copyright infringement and set about producing the online TV guide without direct access to Nine’s weekly schedules. IceTV’s content manager compiled a weekly schedule template by watching television over a three-week period in 2004 and writing down [page 225] the day, time and programme information for each timeslot in the period60 — a process he described as ‘torture’.61 Once the initial templates had been produced, IceTV continued to produce weekly guides by ‘predicting over’ from the previous week and updating the predicted schedules to include recent changes by referring to information published in other guides such as the magazine TV Week.62 Referred to as the ‘aggregated guides’, these publications reproduced the broadcasters’ weekly schedules under licence. It was IceTV’s taking of time and title information indirectly from the aggregated guides that Nine claimed was the infringing act. IceTV conceded that copyright subsisted in Nine’s weekly schedules as compilations and so the central issue in the case was whether it had reproduced a substantial part of those schedules. The IceGuide included date, time and title information about forthcoming television programmes along with other material written by IceTV staff, such as critical or humorous synopses. At first instance, Bennett J characterised what IceTV copied as ‘slivers’ of information that were not of sufficient quantitative or qualitative significance to

infringe.63 As discussed in Chapter 6 (see 6.32ff), originality is required for copyright subsistence, but it is also relevant when one considers whether a substantial part of a work has been reproduced.64 Nine staff decided what and when programmes would be broadcast, and so in that sense the time and title information originated with them, but originality in this context means more than that the work originated with the author: the originality must be in the expression of the work.65 Central to the question of whether IceTV had taken a substantial part of the weekly schedules was whether Nine’s staff’s preparatory skill and labour in programming could be taken into account for the purposes of the originality of the particular form of expression.66 Programming staff at Nine devoted a great deal of time and effort to selecting, acquiring and scheduling programmes for broadcast, but relatively little effort was involved in setting down the schedules in their chronological arrangement. At first instance, Bennett J separated the two tasks, but the Full Court of the Federal Court treated all this work as part of a single process leading to the creation of the copyright work. The High Court agreed with Bennett J’s approach and held that the skill and labour devoted to programming decisions for [page 226] particular timeslots, while very important to business matters such as advertising revenue, was not relevant to the form of expression of the time and title information in the weekly schedules.67 Once confined to the ‘extremely modest’ skill and labour involved in expressing the weekly schedules, the High Court held that IceTV had not reproduced a substantial part of the works. Both judgments observe the importance of separating out facts or information when determining whether a substantial part of a compilation has been reproduced.68 The High Court rejected the rhetoric of ‘misappropriation’ of skill and labour that was apparent in the Full Court’s approach.69

Gummow, Hayne and Heydon JJ were also critical of the ‘interest protected’ approach adopted by the Full Federal Court.70 In the IceTV case, the interest was in the commercial value71 of the information and that was threatened by competition from IceTV. By considering the commercial value, there was a real danger of copyright protecting information that ought to be freely available in the public domain. Gummow, Hayne and Heydon JJ also thought that the significant effort expended by IceTV when preparing the IceGuide was relevant when considering whether a substantial part had been taken. IceTV staff had started ‘with a clean sheet of paper’72 and had not copied from Nine to avoid doing the work themselves.73 8.13 Musical works Musical works are assessed aurally in deciding whether an alleged infringement possesses the requisite degree of objective similarity. The impression on the ear is what counts, not a strict note for note comparison,74 although a court may make both an aural comparison and a visual comparison of the notated songs with the assistance of evidence from experts.75 Popular music is particularly vulnerable to attack on the grounds of copyright infringement due to the adoption of similar styles, drawing from a common musical tradition, and the [page 227] use of ‘common tricks of composition’.76 The authorities indicate that similarities in popular music can be sometimes put down to coincidence.77 However, the sound of a flute riff in the Men at Work song ‘Down Under’ was not a coincidence. There was a frank admission of a causal connection78 and Jacobson J in the Federal Court held that there was sufficient objective similarity between two bars in the flute riff and the well-known Australian tune ‘Kookaburra Sits in the Old Gumtree’79 that had been composed by Marion Sinclair in 1934 for a competition conducted by the Girl Guides.80 Interestingly, the

resemblance between the two was not immediately obvious and it did not come to light until a question was asked on the ABC television musical panel quiz Spicks and Specks in 2007; ‘even then, the musical experts who make up the panel had some difficulty in answering the question’.81 The fact that this had gone unnoticed for over 20 years was not relevant: ‘the question is one of objective similarity. The aural resemblance need not be resounding or obvious’.82 When it comes to digital sampling of portions (ranging from a single note to an entire vocal or instrumental track) of an earlier recording, inserted (with or without modifications) into a new recording, there will be objective similarity. Whether such deliberate copying requires authorisation from the holder of the various copyrights in the earlier recording and the work(s) embodied in it depends once again on whether a ‘substantial’ part has been taken, something which may be far from easy to determine.83 8.14 Artistic works The test to be applied in deciding infringement of an artistic work is purely visual, the work and alleged infringement ‘being compared oculis subjecta fidelibus’.84 The fundamental rule of copyright law is that form is protected but not content: see Chapter 6. If it is not possible to take the content of a work without also adopting the form then in theory there can be no infringement.85 Taking ideas is not prohibited by copyright law, only the copying of their expression. Thus, the idea of ‘Donald Duck’ and three nephews (Huey, Dewey and Louie) involved in adventures with a dog (Goofy) and a donkey (Basil) was not necessarily [page 228] infringed by a comic featuring ‘Superduck’, a duckling, dog and donkey engaged in similar escapades, unless the drawings of these characters were actually copied.86 In Cummins v Vella87 the Full Court of the Federal Court overturned a finding that the defendants had infringed the copyright in a series of paintings (mostly of daisies and irises) produced by the plaintiff in a ‘naif impasto style’. Although the first defendant admitted seeing the plaintiff’s work and

being ‘influenced’ by his style and application technique, the Full Court nevertheless concluded that there were sufficient differences between the parties’ works for infringement to have been avoided. It was not to the point that the works might appear to be the product of the same artist. The court emphasised the need to maintain a clear distinction between the legitimate use of another’s ‘style, concept and technique’ and the illegitimate copying of ‘form and expression’. In a case such as this, where the plaintiff’s paintings were both numerous and fairly basic in appearance, ‘[o]ne would not expect to find very great differences sufficient to show non-reproduction and thus noninfringement’, lest the plaintiff be granted a ‘statutory monopoly’ in works of that nature.88 In Coogi Australia Pty Ltd v Hysport International Pty Ltd89 copying of a distinctive style of highly textured knitwear was alleged by the company that developed the material. In deciding whether the work (which was found to be one of artistic craftsmanship) was reproduced, the judge was unable to find infringement in the absence of evidence of what was ‘visually significant, that is, sufficient to give to [the respondent’s] fabric the “look” of the [applicant’s] fabric’.90 While ‘exact replication of the appearance of the whole’ of the applicant’s fabric need not be shown, sufficient elements of the distinctive appearance did need to be demonstrated.91 House plans, specifically plans for project home builders, are artistic works that have produced a good deal of litigation and numerous problems for the courts. In Tamawood Ltd v Henley Arch Pty Ltd92 Wilcox and Lindgren JJ observed that there is a pressure towards sameness in the project homes market where builders are competing in the same price ranges. ‘The idea-form distinction, often elusive, is particularly so in the case of project homes.’93 Where infringement of architectural plans is alleged, the absorption of an architectural concept and the application of that idea to a later plan is not infringement.94 As previously noted, close similarity will suggest copying, ‘even though that person was unaware of the impact which the [page 229]

copyright plans were having upon him or her’.95 In some cases the Barrett Property Group successfully argued that a combination of rumpus room, family and meals area around a semi-enclosed courtyard under a single roof line was a substantial part of its plans and when rival builders copied that so-called ‘alfresco quadrant’ they had infringed.96 However, in other circumstances the similarities may be coincidental.97 Another example of a case involving artistic works that has challenged the idea/ expression dichotomy is Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd.98 Elwood produced T-shirt designs with text suggesting United States college sporting teams.99 Cotton On admitted using Elwood’s shirts as a reference point but claimed that only the underlying idea was used. Cotton On had not used the same words and numbers but had copied the placement of the graphics on the T-shirt in a V shape with curved sections.100 The Full Court of the Federal Court held that these features were matters of expression, not merely matters of idea or concept, and that by reproducing the layout Cotton On had used a substantial part of Elwood’s work.101 8.15 Copyright infringement and mass-produced items Somewhat controversially, the concept of indirect copying of artistic works has been used to make the ‘reverse engineering’ of functional items unlawful, even though most three-dimensional objects do not possess copyright in their own right unless they are sculptures or buildings, or qualify as ‘works of artistic craftsmanship’: see 6.28. An important provision in this regard is s 21(3), which provides that the production of a three-dimensional version of a two-dimensional artistic work is deemed to be a reproduction of that work (and vice versa, where a two-dimensional version is produced of a three-dimensional work).102 This means that copyright in drawings or plans may be infringed by the [page 230] creation of the item shown in those drawings or plans — even if the

item in question is not itself an artistic work.103 The notion of indirect copying was first fully articulated in 1963 in the case of Dorling v Honnor Marine Ltd,104 where it was held that building a boat copied from a model of another boat, the model being a reproduction of the plans for the original boat, infringed artistic copyright in those plans. Many similar cases have followed as manufacturers have sought to protect themselves from clever competitors. Thus, reverse engineering a car exhaust system may infringe copyright in the drawings of that system;105 and reproducing a solar hot water system infringed copyright in the design drawings.106 A verbal or written communication may also be the medium through which copyright in drawings is infringed by the making of an item according to the instructions given. In House of Spring Gardens Ltd v Point Blank Ltd107 a bullet-proof vest was copied by means of a verbal description being given to a designer (through a third party, who had been told about the vest by the intending infringer, who had himself seen it made up from the copyright drawings). In Frank M Winstone (Merchants) Ltd v Plix Products Ltd,108 the Court of Appeal of New Zealand confirmed that indirect copying can be perpetrated through the medium of a verbal description of a copyright work, in that case plastic trays in which kiwifruit were packed for export. The Kiwifruit Marketing Authority made it a requirement that exported kiwifruit be packed in these trays. The defendant, wishing to manufacture these green plastic trays, had obtained the specifications from the authority and instructed a designer to design a tray fitting the specifications. After some 200 hours of work the defendant’s tray pack was ready to go into production, but the tray was held to infringe the plaintiff’s artistic copyright — their drawings, patterns and moulds. The expression of the idea had been taken, not just the idea itself.109 8.16 Restricting protection for functional items: the link to designs protection The extension of copyright protection to mass-produced items has been regarded by many as undesirable. The long term of protection conferred by copyright, along with uncertainty as to its subsistence and duration, is thought to make it inappropriate

[page 231] for products for commercial use. The Copyright Act therefore attempts to cut down this sort of protection for such items by providing that artistic works used as designs for mass-produced items lose copyright protection in certain circumstances: see 10.30ff. Until 1989 there had been an anomaly in this scheme, in that plans, blueprints and construction drawings which did not qualify for registration under the Designs Act 1906 (Cth) had been left fully protected by copyright. However, the Copyright Amendment Act 1989 removed copyright protection for all three-dimensional massproduced items and the drawings, etc on which they are based, whether or not the latter were registrable under the designs legislation: see 10.36. A further anomaly was that copyright in artistic works such as plans and drawings might still be infringed if reproduced in two-dimensional form in the course of manufacturing a three-dimensional product, even though the product itself would not infringe under the design/copyright overlap provisions.110 This was resolved with the insertion of s 77A in 2003 that exempts such incidental reproductions made in the process of manufacturing the product. 8.17 The ‘spare parts’ exception Similar concerns with the anticompetitive potential of copyright protection have prompted English courts to place restrictions on the reach of the principle of indirect copying. Thus, it has been established that reverse engineering of spare parts must be possible to some extent in order to allow ‘fair repair’ and that this should not constitute copyright or patent infringement.111 Orthodox authorities state that the line between repair and creating a new article altogether must not be crossed, the latter situation leading to a finding of infringement of intellectual property rights.112 By contrast, the wholesale manufacture of spare parts was held not to infringe copyright in British Leyland Motor Corp v Armstrong Patents Co Ltd.113 In fact, all the courts from first instance to the House of Lords found that there was infringement in the sense that the exhaust systems in question had been reproduced from the plaintiff’s design, albeit by reverse engineering. The House

of Lords, however, enunciated a ‘spare parts exception’, the majority deciding that British Leyland should be barred from invoking copyright legislation to prevent such reproduction by the defendant, since ‘the tentacles of copyright’ should not be allowed to reach out too far, thereby protecting monopolies for the sale of functional items and taking copyright protection ‘into fields far beyond its main original intent and properly to be covered by other forms of protection if at all’.114 This case has been described as a ‘remarkably unashamed case of judicial legislation’.115 The legislative changes wrought in this country by the Copyright Amendment Act 1989, as mentioned in 8.16, reveal an apparent relish for the British Leyland policy by [page 232] removing copyright protection for such articles. Indeed, the designs legislation effectively denies designs protection for spare parts as well: see 10.20.

Works: other forms of direct infringement 8.18 General Of the rights other than reproduction that are exclusively granted to the owner of copyright in a work, those relating to adaptation and (first) publication have already been discussed: see 6.29–6.31, 6.57. The following paragraphs deal with the remaining rights of public performance, communication to the public and commercial rental. 8.19 Performing works in public It is an infringement of copyright in a literary, dramatic or musical work to perform it in public without the copyright owner’s permission. Performance includes ‘any mode of visual or aural presentation’, whether by radio, film, record or otherwise (s 27(1)(a)), and also delivery by lecture, address, speech or sermon: s 27(1)(b). In APRA Ltd v Tolbush Pty Ltd116 a shop selling car radios was said to be performing musical works by turning the radios on to demonstrate them to customers. Since the premises were not licensed by APRA to play music broadcast on radio this was

an infringement of copyright.117 Infringing performances take place ‘in public’. This term has been defined in relation to the nature of the audience. A domestic circle or private gathering is contrasted with ‘the public’. The purpose for a group coming together may be relevant — whether it is to see a performance or whether the gathering is part of the domestic or home life of the person providing the entertainment. In Duck v Bates118 a play performed in a room of Guy’s Hospital was said to constitute a private or domestic performance, since the author’s right to money was not injured and the audience were those employed at the hospital, not people who would otherwise go to a performance licensed by the author as a commercial transaction. On the other hand, a play performed at a meeting of the Duston Women’s Institute was held to be a public performance119 and playing dance music at a Leagues Club constitutes public performance of the works despite restriction of the audience to club members and their guests.120 These authorities were discussed in APRA Ltd v Commonwealth Bank of Australia121 where Gummow J found that the playing of a training video to 11 employees of a bank constituted a public performance of music added as background to ‘enliven what intrinsically is unexciting subject matter’,122 despite the small number of viewers and the short amount of music played: Running through the authorities I have discussed is the notion that for the purposes of this performing right a performance will be ‘in public’ if it is not ‘in private’, and the perception of an antithesis between performances which are [page 233] in public and those which are ‘domestic’ or ‘private’ in character. In determining whether a performance answers the latter description, the nature of the audience is important. In coming together to form the audience for the performance were the persons concerned bound together by a domestic or private tie or by an aspect of their public life? Their ‘public life’ would

include their presence at their place of employment for the supply of a performance to assist the commercial purposes of their employer.123 This approach was endorsed by the High Court in Telstra Corp Ltd v APRA,124 a case concerning the question of whether music heard by mobile phone users while ‘on hold’ was being transmitted ‘to the public’: see 6.50. 8.20 Communication to the public This right was introduced in 2000 to replace what were previously the separate rights of broadcasting and transmission to ‘subscribers of a diffusion service’. It applies in relation to all works and other subject matter, apart from published editions. ‘Communicate’ is defined in s 10(1) to mean ‘make available online or electronically transmit (whether over a path, or a combination of paths, provided by a material substance or otherwise)’, and is intended to be ‘technology-neutral’ in its scope and application. Besides broadcasting, it clearly covers uploading material to a server for access through the internet and various other forms of online delivery.125 It should make no difference in this regard whether the intended recipient or user accesses the material through a cable or through wireless technology, or a combination of the two. The fact too that the recipient/user may be an individual who is accessing the material in the privacy of their own home would not prevent there being a communication ‘to the public’, given the broad interpretation of that concept adopted by the High Court in Telstra v APRA. On the basis of that decision, it would suffice that potential recipients/ users can be said to constitute the ‘copyright owner’s public’, a determination that is far more likely to follow where the communication in question is of a commercial nature and/or threatens the copyright owner’s economic interests.126 That said, there must be limitations as to what constitutes an infringement of the new right. The forwarding by email of someone else’s text or other copyright work to a single recipient would not, for example, involve communication to the public127 — though it would constitute an infringement of the reproduction right if done without the express or implied authority of the copyright owner,128 given the

[page 234] technical processes involved.129 On the other hand, the broader the distribution (for example, to some form of online discussion group, or simply to a large number of recipients), the harder it may be to draw a line. It should also be noted that under s 22(6), ‘a communication other than a broadcast is taken to have been made by the person responsible for determining the content of the communication’. Hence, a person or organisation (such as a telecommunications company or internet service provider) who provides another with the means to make an unauthorised communication, but who does not control the content of that communication, cannot be sued for infringing the communication right. Nor is a person responsible for determining the content because he or she receives a communication, or because he or she accesses material online, for instance by clicking on a link: s 22(6A). 8.21 Commercial rental Under the rental right introduced by the Copyright (World Trade Organization Amendments) Act 1994 (Cth), a licence must be obtained for any commercial rental arrangement with respect to sound recordings and works reproduced therein, and also computer programs: ss 31(1)(c), (d), 85(1)(d). The definition of ‘commercial rental arrangement’ in s 30A ensures, however, that it is not an infringement to lend out a recording or program without requiring payment, or to do so only in return for a refundable deposit. Section 31(3) also ensures that the copyright owner does not have the right to control rental of a copy of a computer program embodied in a machine or device (other than media normally used for storage of programs), where the program is not able to be copied in the course of the ordinary use of the machine or device. An example here would be a program embodied in a car or washing machine. The rental right in relation to computer programs is also provided not to extend to arrangements where the program is not the ‘essential object of the rental’: s 31(5). Hence, it cannot be used to control the rental of DVDs, notwithstanding that each disc contains a computer program, since the essential object is to access the disc’s audio-visual

content.130

Direct infringement of Pt IV copyrights 8.22 General Where Pt IV copyrights are concerned, direct infringement is a much more restricted concept than in relation to works because reproduction is only achieved by copying in like form. Therefore, making a ‘sound-alike’ version of popular songs does not infringe copyright in the sound recording, although it may in the underlying works (the lyrics and music).131 Similarly, copying a film in the sense of making a new version by taking all the ideas and working out of the theme has been held to infringe copyright in the book or screenplay upon which the film is based, but not to infringe any copyright in the film itself.132 [page 235] 8.23 Substantial reproduction Moreover, even where copying of the exact form has taken place, it must usually still be determined whether a ‘substantial part’ has been taken: s 14(1). In Nationwide News Pty Ltd v Copyright Agency Ltd133 newspaper publishers sought to argue that the unauthorised photocopying of individual newspaper articles by or within educational institutions would infringe their published edition copyright.134 Their claim was rejected, the Full Court of the Federal Court holding that such copying did not constitute the reproduction of a substantial part of the edition (that is, the entire newspaper). In reaching this conclusion, the court did not merely emphasise the fact that the items in question represented only a small part of each edition (in both quantitative and qualitative terms), but also looked at other factors. It was stressed that the interest protected by a published edition copyright lies in the ‘presentation and layout of the edition, as distinct from the particular words or images’.135 Accordingly, it was relevant to consider the extent to which the allegedly infringing activities interfered with that interest.136 Here, any copying was not designed to appropriate or take advantage of the work put into the layout or presentation of the

articles, but merely their content. The Full Court of the Federal Court considered ‘substantial part’ in relation to television broadcasts in The Panel case.137 Here, the interest being protected was ‘the cost and skill in assembling or preparing and transmitting programmes to the public’.138 The question boiled down to whether the heart, an essential part, an important ingredient, or highlights of the broadcast had been taken.139 A majority held that six140 extracts from Channel Nine programmes ranging from 8 to 26 seconds rebroadcast by Channel Ten on its own programme The Panel had infringed Nine’s copyright. Those extracts that had not infringed were held to be insignificant in the context of the programme. 8.24 ‘Piracy’ of Pt IV copyrights In practice, a great deal of copyright infringement occurs in the form of piracy of sound recordings and films, as well as computer [page 236] software.141 Piracy is the unauthorised copying of copyright materials for commercial purposes.142 Unlike the original producers of the subject matter, pirates do not have any investment to recoup and usually offer copies at a reduced price, thereby undermining the author’s and investor’s return for their work and investment. Piracy is to be contrasted with ‘bootlegging’, which is the unauthorised recording of a live performance. Bootlegging raises different issues, since recording a live performance may infringe work copyrights but not those subsisting in other subject matter. Until 1989 there was no copyright protection for bare performances not fixed in a tangible medium of expression. As discussed in Chapter 9, the Copyright Act now provides for a ‘performer’s right’ which may be infringed by bootleggers: see 9.10–9.12. An interesting example of a ‘gap’ in performers’ rights occurred in Sony Music Australia Ltd v Tansing,143 where the respondents, trading as Apple House Music, had introduced onto the Australian market ‘unauthorised’ recordings of Michael Jackson. As

Jackson was a United States citizen and the recordings were ‘bootlegged’, there was no relevant protection for them here. The United States was not a signatory to the relevant international agreement144 that would have conferred reciprocal protection on the performer. The main hope of getting an injunction to restrain the sale of the compact discs and cassettes accordingly lay in fair trading legislation or the tort of passing off, but since the packaging carried large, bold, red print disclaimers to the effect that the recordings were unauthorised and might not be of good quality, any association with the performer or the recording company was negated: see 17.9. 8.25 Everyone a pirate? It has only been within the last 20 years that inexpensive high-quality copying of audio material has been possible. Off-air taping of music has long been of concern to the recording industry but the capacity of individual consumers to capture digital material and produce high quality copies is an unprecedented threat. File-sharing networks have created vast amounts of music use outside traditional channels of sale. Downloading music from the internet is now a mainstream activity. Major record labels responded to these developments with ‘a technological and legal blitzkrieg’145 against file-sharing networks such as Napster, Kazaa and The Pirate Bay. Record companies have also provided official websites from which music may be sourced, notably iTunes, and other business models to promote non-infringing access.146 Prohibitions (see 8.67) on bypassing anticircumvention measures and interfering with electronic rights management systems shore up these activities. As discussed below, the movie industry, represented by the [page 237] Australian Federation Against Copyright Theft (AFACT), has endeavoured to impose responsibility for subscribers’ infringements onto internet service providers.147

Authorisation of infringement

8.26 General Authorising the doing of any act comprised in the copyright of a work or other subject matter, without the licence of the owner, amounts to a direct infringement of the copyright (ss 36(1), 101(1)), since authorising others to do an act in relation to a copyright in a work is one of the owner’s exclusive rights: s 13(2).148 This can include a situation where a person in authority in an organisation allows a situation to develop in that organisation in which copyright infringements may occur.149 However, there can be no liability for authorisation if the person in question did not know or have any reason to suspect that the conduct was taking place.150 It must also be established that an act of infringement has in fact taken place, before any question of authorisation can arise.151 In past years the issue of authorisation of infringement particularly arose in two contexts: home taping of audio material and photocopying in educational institutions. In recent years the focus has been on website operators and internet service providers: see 8.30. ‘Authorisation of a performance in public’ also provides a useful avenue for pursuing recalcitrant managers of venues offering live or recorded music who decline to enter into appropriate licensing agreements.152 8.27 Copying of music In CBS Songs Ltd v Amstrad Consumer Electronics plc153 it was argued that the sale of twin-deck taperecording machines capable of reproducing music cassettes directly onto blank tapes was an authorisation of the practice, and therefore an infringement of copyright on the part of the manufacturers and sellers of such equipment. However, the House of Lords rejected this argument, on the basis that the manufacturers had no control over the use to which the machines were put once sold, and that they might in any event be used for both lawful and [page 238] unlawful purposes.154 A similar finding had earlier been made in A & M Records v Audio Magnetics Inc,155 where the suppliers of blank tapes were likewise held not to be authorising copyright infringement. 8.28 Photocopying A major Australian case on authorisation is

University of New South Wales v Moorhouse.156 The respondent (plaintiff) suspected that some of the photocopying going on in universities contravened copyright, and alleged that the university had authorised infringing reproductions of works by allowing students free access to photocopying machines installed in the library, while failing to exercise control or supervision over what books were copied and how much of any work was taken. The respondent, an author of a book of short stories to be found in the library, organised a former student of the university to make an infringing copy of one of the stories on the photocopy machines provided. The High Court declared that the university had authorised the breach of copyright by providing an unqualified supply of books and photocopying machines, amounting to an invitation to users of the library to make such use of the machines as they saw fit. Any steps taken to supervise machine use and exclude illegal copying were inadequate and directed towards giving students access to machines rather than safeguarding copyright owners’ rights. As a result of this case a new provision, s 39A, was inserted into the Act by the Copyright Amendment Act 1980 to the effect that a library providing photocopying services will not be taken to have authorised the making of infringing copies if a notice bringing the provisions of the Act to the attention of users of the machine is put up near the machine. This has the effect of making it very easy for universities to avoid ‘authorising’ copyright infringements perpetrated by students and staff. The Act was also amended at the same time to allow educational institutions, on payment of a royalty, to make multiple copies of certain works for the teaching purposes of the institution. This and similar schemes were considered in 7.22. Section 39A has now been broadened by the digital agenda amendments of 2000 to apply to any machine in a library, including a computer, on which an infringing copy may be made.157 8.29 Sections 36(1A) and 101(1A) The digital agenda amendments of 2000 also effectively codified some of the principles developed by the courts in cases such as University of New South Wales v Moorhouse. Sections 36(1A) and 101(1A) now provide that in determining whether authorisation has occurred, the factors to be taken into account are to include:

(a) the extent (if any) of the person’s power to prevent the doing of the act concerned; [page 239] (b) the nature of any relationship existing between the person and the person who did the act concerned; (c) whether the person took any reasonable steps to prevent or avoid the doing of the act, including whether the person complied with any relevant industry codes of practice. In Facton Ltd v Xu158 the court considered the power of the second respondent and the nature of her relationship with her former husband, who was responsible for copyright infringement. The court did not accept that Ms Ma had authorised the infringements. ‘As a matter of practical reality, Ms Ma had very little or no power to control or even influence Mr Xu.’159 8.30 Internet service providers The second change introduced in 2000 was directed to service providers and other intermediaries involved in processes of electronic communication. In providing the means by which copyright works may be disseminated, and not necessarily with the permission of the copyright owner, such persons are open to the charge that they have authorised any infringements that may occur. To provide some measure of protection in this regard, ss 39B and 112E state that a person (including a ‘carrier’ or ‘carriage service provider’)160 who facilitates the making of a communication is not taken to have authorised an infringement ‘merely because another person uses the facilities so provided’ to do an act that falls within the copyright.161 It is not clear what effect ss 39B and 112E have — if indeed they have any effect at all.162 The mere supply of equipment or facilities which might be used to infringe copyright has never been regarded as enough in itself to found a complaint of authorisation (see 8.27–8.28); something more is required, such as the failure to prevent infringing activity when there is the power to do so. But if so, then arguably any liability for

authorisation would not arise merely because the internet service provider’s services were being used, so that ss 39B and 112E would have no application. By providing the exemptions, the legislature has assumed that liability for authorisation could arise in such circumstances.163 In two of the authorisation cases discussed below, the website operators and internet service providers (ISPs) were doing more than merely providing the communication conduits. In the case of the internet peer-to-peer file-sharing system Kazaa,164 the something more that amounted to authorisation included the fact that the respondents had the [page 240] capacity to curtail the sharing of copyright protected music files on the Kazaa system but failed to do so. Indeed, it was in the respondent’s financial interest to maximise file sharing in that case because of the advertising revenue that flowed from it. The Kazaa end-user licence and website did contain warnings against sharing copyright protected files, but Wilcox J commented that it has long been obvious that such methods alone are ineffective to prevent copyright infringement.165 The copyright warnings were also completely undermined by far more prominent statements such as ‘Join the Revolution’ that ‘conveyed the idea that it was “cool” to defy the record companies and their stuffy reliance on their copyrights’.166 The operator of the website MP3s4FREE in Cooper v Universal Music was also held to have authorised the infringing activities of its users because he had the power to prevent copying and had not done so.167 The website provided hyperlinks that granted access to music files on remote servers and was, the trial judge held, deliberately designed to facilitate infringing activity.168 Disclaimers on the website misstated Australian copyright law and were described by Branson J in the Full Court of the Federal Court as ‘merely cosmetic’.169 The MP3s4FREE operator benefited financially from sponsorship and advertising and the name of the website was itself an indication that

copyright infringement was authorised.170 The ISP E-Talk that hosted Mr Cooper’s ‘MP3s4Free’ website could not rely on s 112E in that case because it did not take reasonable steps to prevent the infringements and also received a commercial advantage from advertising on the website.171 In Roadshow Films Pty Ltd v iiNet Ltd172 major film companies argued that the ISP iiNet authorised customers to download illegal content using the BIT torrent system. The case attracted a great deal of public and media attention, so much so that at first instance Cowdroy J in the Federal Court allowed journalists to ‘tweet’ from court.173 In the cases discussed above involving Kazaa and MP3s4FREE, the website and software were structured to achieve infringement. In the Cooper case the ISP actively supported that activity. In this case iiNet did not extend an invitation to users to infringe and did not provide the means of infringement.174 The means of infringement was the BitTorrent system and there was no evidence before the court that iiNet had any connection with that. The High Court held that iiNet had [page 241] not authorised the infringements by its customers. As explained above, s 101(1A) requires consideration of the power to prevent the infringing acts, the nature of any relationship, and whether the person alleged to have authorised took any reasonable steps to prevent or avoid the infringement. In this case iiNet had some indirect control over its customers because it could cancel accounts, but no direct control over the way its customers used the internet. The Australian Federation Against Copyright Theft (AFACT) sent notices to iiNet about its customers’ copyright infringements but iiNet refused to terminate accounts on the basis of the AFACT’s notices. The High Court considered whether iiNet had taken reasonable steps to prevent infringements, and concluded it was not reasonable to expect iiNet to undertake the level of further investigation required and to enforce the rights of copyright owners in respect of widespread

infringements.175

INDIRECT INFRINGEMENT Forms of indirect infringement 8.31 Indirect infringement is not to be confused with indirect copying (see 8.15), but refers to dealing with unauthorised reproductions of works, rather than actually reproducing the material itself. The main forms of indirect infringement involve infringing articles being imported for the purposes of trade without the licence of the copyright owner (ss 37, 102), or sold, hired out or otherwise made the subject of trade: ss 38, 103.176 Copyright owners can file notices of objection with Australian Customs to prevent infringing goods from being imported into Australia. Customs may then seize the goods pending infringement action by the copyright owner: Pt V Div 7. These indirect infringement provisions extend beyond trade to the distribution of articles for any other purpose to an extent that will affect prejudicially the interests of the copyright owner, which could include wide-scale free distribution that undermines sales. As a general rule, it is necessary to establish that a defendant knew or ought reasonably to have known that the article with which they were dealing had been made in breach of copyright, or in the case of an imported article, that it would have been an infringing copy had it been made in Australia by the importer.177 [page 242] The only exception to this requirement of actual or constructive knowledge concerns the importation of certain items: see 8.32–8.37. In Raben Footwear Pty Ltd v Polygram Records Inc178 the Full Court of the Federal Court considered the test for determining whether the defendant ‘ought reasonably to have known’ that they were dealing with an infringing copy. According to Burchett J, while

the test requires an objective assessment, regard must still be had to the ‘knowledge, capacity and circumstances of the particular defendant’.179 In that case an importer of a batch of CDs which contained unauthorised copies of recordings by the artist Cher was found to have indirectly infringed copyright on the basis of constructive knowledge. The importer had sought an assurance from the manufacturer that all copyright permissions had been obtained, but received an answer only in relation to the ‘mechanical rights’ (that is, the right to make a recording: see 7.23). It was held that the importer was sufficiently knowledgeable to be aware that this would not necessarily cover other aspects of the copyright in the recordings, and accordingly that it could reasonably have been expected to make further inquiries. Permitting a place of public entertainment to be used for a public performance which infringes copyright in a work also constitutes indirect infringement, though only if the defendant should have known that such a performance would infringe and if the permission was given for profit: s 39.180

Parallel importing 8.32 Of the indirect infringement provisions, ss 37 and 102 have been the subject of most debate. They have allowed a copyright owner or exclusive licensee to control the importation into Australia of works and other subject matter,181 even if the items in question are not ‘pirated’ copies but have been acquired quite lawfully overseas. However, as explained below, these provisions have been substantially modified with respect to books (1990), sound recordings and accessories to imported goods (1998), and later computer software and electronic versions of books, periodicals and sheet music (2003). The key words in ss 37 and 102 are ‘without the licence of the owner of the copyright’. The onus is on the party alleging infringement to establish that this licence is lacking. Thus, if no evidence is produced as to the attitude of the owner

[page 243] towards the importation, any action under these sections must fail.182 But as long as the owner is the plaintiff, or is prepared to back up an exclusive licensee who is seeking to prevent ‘parallel’ importation, the unauthorised importer cannot rely on the fact that their acquisition of the material was itself perfectly legal. The courts have consistently held that for the purposes of ss 37 and 102, the word ‘licence’ connotes a positive authorisation to import. The fact that at the time of acquisition no prohibition was explicitly imposed on importation into Australia will not protect the parallel importer. The leading case in this regard is the High Court’s decision in Interstate Parcel Express Co Pty Ltd v Time-Life International (Nederlands) BV.183 Angus and Robertson, a retail bookseller owned by the appellant, purchased cookbooks from a book wholesaler in California, and imported them into Australia to sell for $8.95. The respondent, the Time-Life Co, had an exclusive licence from the American publisher of the cookbooks to publish them throughout the world, other than in North America. They sold the books in Australia for $16.95. Time-Life argued that Angus and Robertson’s importation of the books into Australia infringed their copyright by virtue of ss 37 and 38 of the Act. Angus and Robertson argued that the importation involved no infringement because they were impliedly licensed to deal with the books, having purchased them legally in the United States, and that the sale had contained no restrictive terms as to the use to which the buyer might put the books. It was held that the sale of a book does not involve the sale of the copyright, only the loss of rights in respect of that particular copy of the work as a chattel. Since no positive licence to import had been established, Angus and Robertson were in breach of the Act. The provisions of ss 37 and 102 have also been utilised in respect of other items such as software,184 records185 and videotapes. In Galaxy Electronics Pty Ltd v Sega Enterprises Ltd186 the respondent’s video games, involving computer-generated images embodied in integrated circuits, were held to be cinematograph films within the Copyright Act and therefore entitled to protection against

parallel importing, despite the fact that there is no such prohibition on the importing of integrated circuits under the Circuit Layouts Act 1989 (Cth): see 9.25.

The reform debate 8.33 Restrictions imposed by copyright owners on the free movement of copyright products allow the division of the world into self-contained market segments so that optimum exploitation can occur, maximising profits and restricting or preventing [page 244] competition in the sale of copyright products of the same type or brand within national boundaries.187 In the case of books, for example, exclusive rights over the Australian market were traditionally the preserve of British publishers, even in relation to works originally published in North America. So long as Australian booksellers were unable to import in competition with these publishers, readers in this country were often forced to wait months for books long since published abroad, and to pay higher prices into the bargain. The same appears to have been true in relation to records and software. Attempts to modify the restriction on parallel importing have tended to centre on these products, although in 2000 (as discussed below) the Intellectual Property Competition Review Committee (IPCRC) recommended the general repeal of the provisions restricting parallel importation. In 1988 an extensive inquiry was made by the CLRC into the question of whether any changes should be made to ss 37, 38, 102 and 103 of the Copyright Act. The CLRC unanimously reached the conclusion that the sections should continue to apply to parallel imports but with certain exceptions, allowing the importation of nonpirated copyright material where: (a) the material was not available in Australia; (b) the copyright material was a work comprised in a label or

mark attached to a product or its packaging; or (c) a customer placed an order with an importer for material not required for the purposes of trade or commerce.188 The CLRC recognised that publishers and distributors of books, records and films were the main beneficiaries of the importation provisions of the Act, rather than authors, composers and other originators of copyright material.189 The burden of the prohibitions was borne by consumers in the form of higher prices and inhibited access to copyright material.190 In 1989 the Prices Surveillance Authority (PSA) went further and recommended that territorial copyright should be removed altogether, so that the delay in arrival in Australia of books published overseas would be greatly reduced and prices would be lower.191 The report of the PSA provoked a hostile reaction not only from publishers but also from authors, who perceived detriment from the disruption of existing marketing arrangements. A similar response greeted the recommendations of the IPCRC in 2000. It reviewed the restrictions on parallel importation in the light of the objectives of the Copyright Act, and discussed issues of price, availability, access to copyright material, marketing, ownership, piracy, market power, effects on the community and economic arguments. By a majority of 2:1 the committee concluded that the restrictions work against the interests of consumers.192 [page 245] The CLRC and IPCRC reviews were conducted by way of written submissions and public hearings. Representations were made by the major copyright industries, with book publishing, record, film and video and computer software companies all asserting that the importation provisions should be retained or indeed strengthened. One problem for both pro and anti lobby groups was that the arguments as to the economic effects of lifting import barriers were mainly speculative. Since the justification for the existence of copyright is essentially economic, the question of parallel importing must presumably be answered with reference to the question as to the

extent to which the function of copyright is to promote the efficient allocation of resources.193

Books: relaxing the prohibition 8.34 As a result of the 1988 CLRC and 1989 PSA reports, the Australian Government was faced with two conflicting recommendations: abolition of the parallel importing controls being urged by the PSA, as against the CLRC view that the provisions be retained in a modified form. The government’s response was to introduce the Copyright Amendment Act 1990. Sections 37 and 38 (dealing with works) were amended by making them subject to a new s 44A, while ss 102 and 103 were similarly restricted in relation to published editions by a new s 112A. Sections 44A and 112A apply only to ‘non-infringing books’, meaning books which are legitimately manufactured in their country of origin. Specifically excluded (and therefore still subject to the nonimportation regime, except to the extent they are now caught by later amendments) are books consisting mainly of musical scores, as well as computer software manuals and periodicals. The two provisions draw a crucial distinction between books first published overseas and books first published in Australia. In the case of the former, the importation provisions do not apply, allowing foreign books to be imported without restriction. Where, on the other hand, a book is first published in Australia, or was first published overseas prior to the amendments taking effect, the importation provisions are only partially relaxed. In the first place, a single copy of such a book may be imported at any time for a customer who has ordered it and undertaken not to make it the subject of commercial dealings; and one or more copies may be imported to fill an order from a nonprofit library. Second, some commercial importation is allowed, but only where necessary to satisfy local orders which have remained unfilled for at least 90 days. The effect of the reforms was intended to be that, in order to preclude unauthorised importation, a publisher or authorised distributor would need to ensure that books are ‘first published’ in Australia and that reasonable stocks are kept in the country to meet demand. There is an obvious element of

discrimination here in favour of the local publishing industry, although it is important to note that foreign publishers do not automatically lose out. As with pre-existing provisions in the Act,194 ‘first publication’ is deemed to take place in Australia if a book is published here within 30 days of publication overseas, giving overseas interests at least some opportunity of avoiding an open market in non-infringing copies. The most obvious consequence [page 246] of these reforms was improved availability of foreign books. The Act did not attempt to deal with the question of prices. In June 2009 the Productivity Commission recommended that parallel import restrictions for books should be repealed (allowing three years to implement the change).195 The Productivity Commission also publicly released legal advice it had received from the Attorney-General’s Department Office of International Law that addressed a suggestion made by some booksellers that parallel importation protection be retained for ‘Australian versions’ of books. The Attorney-General’s Department advised that that would be contrary to the ‘national treatment’ provisions in the international agreements (AUSFTA, TRIPS and the Berne Convention). The Productivity Commission report was prepared after the Council of Australian Governments (COAG) had identified this as a major issue for competition reform. The commission undertook a public consultation process and initially received 273 submissions, and then a further 291 submissions after release of its draft report. However, the debate did not end with the final report. Unsurprisingly, the Productivity Commission’s recommendations were actively opposed by Australian publishers. The Australian Publishers Association commissioned its own research report by two European economists: Professor Oswin Maurer and Professor Markus Walzl. Their report disputed the economic analysis used by the Productivity Commission as a basis for policy reform.196 This prompted the Productivity Commission to release a supplement to its

research report, responding to the issues raised in the Maurer and Walzl paper.197 The government did not accept the Productivity Commission’s recommendations.198 On that occasion the publishers prevailed, but the matter continues to be debated. In recent reports the Competition Policy Review199 and the Productivity Commission200 have again recommended repeal of the remaining parallel import restrictions for books.

Sound recordings 8.35 In 1990 the PSA conducted an inquiry into the price of sound recordings, particularly compact discs, whose importation into Australia was subject to the provisions of the Copyright Act in the same way as books. Once again, it recommended that the prohibition on parallel importing be relaxed.201 In December 1992 a Copyright Amendment Bill was introduced to achieve that objective in relation to sound recordings, but it lapsed with the March 1993 election. The legislation was not reintroduced at that time, and indeed the government struggled for the next [page 247] three years to come to any definite decision on the matter. Amendments freeing up the market were finally introduced by the Howard Government in 1998,202 allowing Labor politicians to voice their opposition to their own (previous) policy. As the Act now stands, a ‘non-infringing copy’ of a sound recording (as defined in s 10AA) may in certain circumstances be imported and sold without infringing the copyright in either the recording itself (s 112D) or any work embodied in that recording: s 44D. The provisions are complex, but in general terms the recording must have previously been published either in Australia or (with the copyright owner’s consent) elsewhere; the relevant copy must have been made by or with the owner’s consent; and the copy must not have been made in breach of copyright under the law of the country in which the copy was made. Significantly, however, in any

infringement proceedings a defendant carries the burden of proving that the copy in question is non-infringing (s 130A) — something that may be difficult in practice to establish given that the identity of the relevant copyright owner may not be apparent, and/or may vary from country to country. The likelihood of importers or local retailers of CDs finding it hard to resist potentially spurious claims that they were dealing with pirated rather than non-infringing copies was indeed noted by Hill J in upholding a complaint that major record companies had abused their market power, contrary to Pt IV of the Trade Practices Act (as it was then known), in the way that they sought to deter unauthorised importation of CDs following the 1998 amendments.203 Another potential problem is that the freedom to import noninfringing copies of sound recordings may be curtailed by the simple expedient of adding other copyright material (such as video clips) to CDs, and then complaining that the unauthorised importation of such material infringes copyright in that additional material. As explained in 8.36, however, this has been addressed by provisions which excuse the importation of a ‘non-infringing accessory’ to a non-infringing copy of a sound recording. In their original form these covered only the information and artwork on and accompanying discs and tapes, but have now been broadened to include almost all copyright material that might accompany an imported recording.

Accessories to imported goods 8.36 In the case of R A & A Bailey & Co Ltd v Boccaccio Pty Ltd,204 ss 37 and 38 were used to prevent the importation and sale of a product (Bailey’s Irish Cream liqueur) not itself protected by copyright, but whose label was an artistic work. Amendments to prevent copyright being used in this way were recommended by [page 248] the CLRC, as noted in 8.33, and finally introduced by the Copyright Amendment Act (No 1) 1998 (Cth). Sections 44C and 112C now

provide that the importation or consequent sale of a ‘non-infringing accessory’ to an article does not constitute an infringement of any copyright that may subsist in relation to the accessory. To be ‘noninfringing’, s 10(1) requires the accessory to have been made in a country that is a party to the Berne Convention or the TRIPS Agreement, and the making of the relevant copyright material to have been authorised by the copyright owner in that country. An ‘accessory’ is defined in two different ways. Under the general definition in s 10(1), the term is limited to a label, packaging or container used on or for the relevant article; a written instruction, warranty or ‘other information’ provided with the article; or an instructional recording or film: s 10(1). The ‘accessory’ must have a separate existence from the article. It need not be physically separate but must be conceptually distinct. The Federal Court has held that a logo (the well-known polo player logo of Polo Ralph Lauren) embroidered onto a garment was conceptually distinct because it identified the clothing and so was a label.205 As a result of the 2003 amendments, discussed in 8.37, the term ‘accessory’ also takes on a broader definition when the article in question has embodied in it a copy of a sound recording, a computer program or an electronic version of a book, periodical or sheet music: s 10AD. In relation to such an article, a copy of any work or subject matter that is on it, embodied in it or included with it will constitute an ‘accessory’, other than a feature film.206 This has effectively legalised the parallel importation of items such as computer games, which will invariably include a sound recording, if not a computer program. The effect of ss 44C and 112C is to diminish the scope and value of copyright in a potentially wide range of material, at least in the context of importation. Offsetting that, however, is the concession that where an accessory is imported without the consent of the copyright owner in the country where it was made, the importer may be liable for indirect infringement even in the absence of any knowledge of the infringement: ss 37(2), 102(2).

Computer programs and electronic books, periodicals and

sheet music 8.37 In the wake of the IPCRC report, the government sought to amend the Act to remove all limitations on parallel importation, except with respect to films.207 Eventually the Copyright Amendment (Parallel Importation) Act 2003 (Cth) was [page 249] passed, though the need to negotiate its passage through the Senate resulted in its scope being narrowed to deal only with software and certain electronic publications.208 As from April 2003, s 44E of the Copyright Act has the effect that it is not an infringement of copyright to import or subsequently deal with an article that has embodied in it a non-infringing copy of a computer program previously published in Australia or in a ‘qualifying country’ (essentially, a country that is a party to the Berne Convention or the TRIPS Agreement: s 10(1)). Sections 44F (in relation to works) and 112DA (published editions) make similar provision for non-infringing copies of any ‘electronic literary or music item’. The latter term is defined to mean a book, a periodical publication or sheet music, though in each case only if in electronic form: s 10(1). In order for a copy of a program or an electronic literary or music item to be ‘non-infringing’, it must have been made in a qualifying country without infringing copyright under that country’s law: ss 10AB–10AC. As with sound recordings, though, a concession for copyright owners and authorised distributors is that a defendant carries the burden of proving that an imported copy of a computer program or electronic literary or music item is a noninfringing copy: ss 130B–130C.

‘FREE USE’ EXCEPTIONS TO INFRINGEMENT Introduction

8.38 The rights of copyright owners are not entirely untrammelled, but are subject to considerations of what is fair and reasonable use: Mediating between past and future creators and more generally between the specific interests of copyright owners and the broader public interest is central to copyright’s mission. Copyright achieves this mediating role in society by establishing strong rights and subjecting them to certain limits and exceptions.209 Thus, besides the compulsory licensing schemes described in Chapter 7, whereby specified uses of copyright material are sanctioned in return for payment of an appropriate fee to the owner (or a collecting society acting on their behalf), the Act allows certain use of works and other subject matter without the need for permission or payment. These defences to infringement: … may be seen as serving one or more of four laudable objectives … the administration of justice, the advancement of education, the protection of the public’s right to be informed and fixing the limits beyond which it is unreasonable to assert a proprietary right in one’s own or another’s work.210 [page 250] How these exceptions are described and characterised can disclose a good deal about the views of the commentators involved, and in turn determine the direction any debate over reform might take. A copyright owner is likely to see these public interest exceptions as a diminution in their property, and owners sometimes argue that ‘acquisitions’ of this kind require just terms.211 If looked at from a user’s perspective, copyright is more likely to be perceived as a potential monopoly that must be kept within strict limits. In recent years, some commentators have developed the concept of ‘users’ rights’212 or ‘public rights’213 as a counterpoint to owners’ interests.214 In the United States, s 107 of the Copyright Act 1976 seeks to

meet these objectives through an ‘omnibus and open-ended’215 defence of ‘fair use’ that is potentially applicable in any context. By contrast, the Australian statute allows ‘fair dealing’ with copyright material only for the specific purposes of research or study, criticism or review, reporting news, parody or satire, and seeking professional advice.216 In its 1998 Simplification reference, the CLRC discussed in detail the fair dealing exceptions to the Australian Copyright Act and recommended by majority the introduction of a broad concept of open-ended ‘fair use’, rather than the present closed categories.217 In 2000 the IPCRC took a different approach.218 The IPCRC considered the ‘balance’ in the Copyright Act between owners and users, and saw the capacity for the ground to shift if the current categories were abandoned in favour of an open-ended model. As discussed in Chapter 6, when the copyright term was extended under the Australia–United States Free Trade Agreement critics of that extension argued that it granted significant benefits to owners without adopting in Australia the wide-ranging fair use doctrine that is a major device for balancing owners’ and users’ interests in the United States. In May 2005, the federal government published an issues paper on fair use219 and received submissions from major stakeholders that represented divided views on whether an openended exception should be adopted or the existing system of specific categories of uses should be maintained with some additions.220 The leave well enough alone approach was the one adopted by parliament and in 2006 new exceptions, including for time and format shifting (see 8.50) and fair dealing for the purpose of parody or satire (see 8.42), were introduced while maintaining the closed categories.221 The format shifting provisions for films and photographs were reviewed [page 251] by the Attorney-General’s Department in 2008.222 The report recommended that no changes be made to the exceptions but that there should be ongoing monitoring and improved public education

about how the exceptions operate. In 2013 the Australian Law Reform Commission (ALRC) recommended the introduction of an exception for fair use,223 and the Productivity Commission supported implementation of that recommendation in 2016.224 Despite these recommendations for a US-style broadly based ‘fair use’ defence, the Australian statute allows ‘fair dealing’ with copyright material only for specific purposes. Each of the fair dealing defences is discussed below, together with the way in which the concept of fair dealing has somewhat tortuously been applied to the digital environment by subsequent amendments. If a dealing with a work is fair under these provisions, then an exception to infringement also applies in relation to the published edition: s 112. There is also a plethora of other exceptions scattered through the legislation that apply to particular types of work or use, without reference to the notion of fair dealing. Whether it is reading extracts of literary or dramatic works in public (s 45), or reproducing labels on chemical products and product information for medicines (ss 44B, 44BA225), or authorised sharing of healthcare information (ss 44BB, 104C), numerous exceptions have been introduced over the years in response to very particular requirements. The result is a complex web of provisions. In addition, there is some authority for a non-statutory defence to breach of copyright actions, based on the public interest in the disclosure of certain information; and there may also be further circumstances where public policy considerations militate that copyright not be enforceable.

Fair dealing 8.39 Fair dealing for research or study In Hubbard v Vosper226 Lord Denning stated that fair dealing was ‘impossible to define’, and that it ‘must be a question of degree’ to be decided in all the circumstances of the case. However, in 1980, s 40 was amended to provide at least vague guidelines as to when ‘fair dealing’ with a work for the purposes of research or study takes place and these were revised in 2006.

[page 252] Similar guidelines were included in s 103C when it was added to the Act in 1989 in order to provide the same defence in relation to ‘audio-visual items’, a term defined by s 100A to mean sound recordings, films and broadcasts. Under the guidelines, regard must be had to a range of factors, including the purpose and character of the dealing, the nature of the work in question, its commercial availability, the effect of the dealing on the value of the work and the amount and substantiality of the part copied: ss 40(2), 103C(2). Notwithstanding these general considerations, a dealing is specifically deemed to be fair if any or all of an article in a periodical is reproduced, provided no other article that appears in the same issue is reproduced for the purpose of different research: s 40(3), (4). In any other case, the reproduction of a ‘reasonable portion’ of a literary, dramatic or musical work (but not an artistic work, a computer program or audio-visual item) is deemed to be fair: s 40(5). A reasonable portion of a literary, dramatic or musical work will have been taken by a person who copies not more than one chapter or 10 per cent of the pages (whichever is greater) of a published edition in which the work appears in hard copy. Similarly, 10 per cent of the words or a single chapter (again, whichever is greater) is taken to be a reasonable portion of a published literary or dramatic work that is in electronic form: s 40(5), (6). However, these reasonable portion provisions do not apply to computer programs or to electronic compilations or databases, and will not apply to any subsequent reproduction made by the same person of any other part of the same work: s 40(7). An extensive discussion of s 40 and the other ‘fair dealing’ defences took place in the De Garis v Neville Jeffress Pidler case,227 where it was held that the defendant, a press-clipping service, had infringed copyright in newspaper articles belonging to the journalists who wrote them. In considering and ultimately rejecting the s 40 defence, Beaumont J consulted the Macquarie Dictionary to ascertain the definition of key words such as ‘research’ and ‘study’. The overriding purpose of the defendant’s retrieval of copyright material

was purely commercial, to supply a photocopy of the published material in return for a fee. The dictionary meanings and case law all indicated a private purpose behind research and study on the part of the user of the material, not the supplying of copyright matter to a customer.228 In any event, quite apart from the primary purpose for which these articles were taken failing to come within the statutory grounds of fair dealing, the amount taken (the whole of each work) was certainly not ‘a reasonable portion’ so as to be ‘fair’. 8.40 Fair dealing for criticism, review and reporting news Fair dealing with a work is also permissible for the purpose of ‘criticism or review’, whether of the work itself or of another work (s 41); and for the purpose of, or associated with, ‘reporting news’ in a newspaper,229 magazine or similar periodical, or by means of an electronic [page 253] communication or a film: s 42. The same exceptions apply in relation to the use of audio-visual items: ss 103A, 103B. There must be a sufficient acknowledgment of the copyright material in question, except where news is reported by film or electronic communication. Playing music in the course of reporting news by means of electronic communication or in a film is not protected if the music is not part of the news being reported: s 42(2).230 In the press clipping service case Beaumont J held that ‘criticism’ and ‘review’ are cognate terms: ‘one is the process and the other is the result of the critical application of mental faculties’.231 On the facts, the defendant did not supply this element in collecting material, their purpose being location rather than evaluation of the articles. ‘Reporting of news’ was considered to be for the purpose of conveying information, usually about recent events but not inevitably so;232 however, having a commercial motive in compiling clips of news material meant that the activity was not for the purpose of reporting that news.233 In Commonwealth v John Fairfax & Sons Ltd234 the High Court

had previously considered both these defences. The litigation concerned a book entitled Documents on Australian Defence and Foreign Policy 1968–1975, which included documents produced by the Department of Foreign Affairs, as well as unpublished government memoranda, assessments, briefings and cables.235 Injunctions to prevent instalments of this book being published in the defendant’s newspaper were granted to the federal government, on the basis of breach of copyright in the documents. Mason J held that any dealing with unpublished work would not normally be ‘fair’ within s 41, if an author had not released it to be the subject of public criticism or review.236 Apart from this, any criticism or review was ‘merely a veneer’, since the reproduction of [page 254] the plaintiff’s documents was to occur on a large scale with little actual comment and in several instalments.237 Similarly, s 42 required rather more selective judgment to be applied to the material than simply reproducing vast tracts of the plaintiff’s documents, although this did not mean that ‘news’ is to be given a narrow meaning confining the concept to reporting of current events.238 The difficulty of distinguishing between ‘news’ and ‘entertainment’ was referred to by Hill J in Nine Network Australia Pty Ltd v Australian Broadcasting Corp239 in the context of the celebrations centred on the City of Sydney on New Year’s Eve 1999. The ABC intended to have the celebrations, including fireworks and a parade of lanterns on Sydney Harbour, televised with commentary by the wellknown comedians ‘Roy and HG’ but still covering, in their iconoclastic manner, the events of the night. The use of humour ‘does not necessarily negate the fact that what is being broadcast may be news’.240 A notable illustration of how hard it is to draw a line in this regard is TCN Channel Nine Pty Ltd v Network Ten Pty Ltd.241 Both at trial and in the Full Federal Court, the rebroadcasting on Ten’s show The Panel of snippets of television shows from competing

channels, in the context of a light-hearted discussion of the week’s events, was found to constitute fair dealing under s 103B with respect to some but not all of the extracts. However, the four judges involved did not necessarily find the same extracts constituted fair dealing, confirming that there is a great deal of ‘judgment and impression’ in deciding whether humorous treatment of news overwhelms the ‘reporting of news’ aspect with an entertainment flavour.242 Thus, while Sundberg and Hely JJ agreed with the trial judge that the spectacle of the Prime Minister singing ‘Happy Birthday’ to Don Bradman was not ‘news’ if simply shown for the ‘entertainment value’,243 Finkelstein J found that ‘silly’ behaviour by a Prime Minister should arguably be brought to voters’ attention and that this extract did indeed ‘report the news’.244 Another ground of fair dealing argued in this case, for criticism or review, was more readily made out as ‘[c]riticism may involve “poking fun at” the object of criticism’.245 Such criticism need not be confined to the work itself but may extend [page 255] to underlying themes, although not necessarily to harming the interests of a trade rival; ‘the path of criticism is a public way’.246 Again, though, there was an element of disagreement among the judges on the facts. Hence, while Sundberg and Finkelstein JJ considered that comments passed by panellists on the formats and sets of a programme hosted by Ray Martin called Simply the Best fell into the category of criticism or review, Hely J (dissenting) agreed with the trial judge that they were not recognisable as such. However, in other instances the Full Court was prepared to overrule decisions by the trial judge that the defence was made out. For example, one segment concerned the ineffectiveness of disguises used to protect the anonymity of certain interviewees on Nine’s A Current Affair. While the trial judge interpreted these as criticising Nine for inadequate protection of the interviewees, the Full Court considered that the panel was simply ‘poking fun’ at the disguises and using the segment

‘for the purposes of entertainment’.247 The outcome of the decision has rightly been labelled ‘both confused and confusing’.248 8.41 Professional advice and judicial proceedings Legal practitioners and patent and trade marks attorneys are also permitted to engage in fair dealing with a literary, dramatic, musical or artistic work for the purpose of giving professional advice: s 43(2). Curiously, however, there is a much broader defence in relation to subject matter other than works. Not only does this cover ‘anything done’ for the purpose of giving such advice, whether or not it involves a fair dealing, but the defence also extends to anything done for the purpose of seeking such advice: s 104(b), (c). There is also a blanket exception, affecting both works and other subject matter, for anything done for the purpose of a judicial proceeding, or the reporting thereof: ss 43(1), 104(a). A judicial proceeding is defined in s 10(1) as a proceeding before a court, tribunal or person having by law power to hear, receive and examine evidence on oath. This covers litigants and practitioners who use copyright material in the course of proceedings before a court but does not extend to the court itself, which is protected by the judicial immunity doctrine and so is in no need of a statutory exception.249 8.42 Fair dealing for parody or satire It can be particularly difficult to mediate between creators and their critics, and the broader public interest, when parody and satire are used. To jump too readily to the conclusion that a parody or satire infringes copyright in the original work would be to stifle what is sometimes (though by no means always) a valuable form of expression. A parody must of its nature draw heavily on another work; typically, indeed, the greater the similarity, the more effective the parody can be. The copyright question is, therefore, whether a ‘substantial part’ of the original work has been taken: see 8.5ff. Until 2006 there was no special defence applicable to parodies in Australia,250 but even without a specific [page 256]

exception Australian and English judges were willing to avoid finding infringement where the defendant had expended considerable effort in creating what was plainly itself an original work,251 or where the defendant had done no more than ‘evoke’ or ‘conjure up’ a recollection of the original.252 In the 2001 first instance decision in The Panel case,253 Conti J discussed in some detail the meanings of ‘parody’ and ‘satire’.254 He concluded that the essence of parody is imitation, whereas satire is ‘a form of ironic, sarcastic, scornful, derisive or ridiculing criticism of vice, folly or abuses, but not by way of an imitation or take-off’.255 This distinction is important for copyright when imitation involves copying all or a substantial part of a work, but Conti J noted that the distinction is sometimes ‘blurred at the edges by every day usage’ and references can also be found to ‘satirical imitation’.256 In The Panel case Channel Nine’s TV programmes were rebroadcast by Ten along with ‘entertaining and unscripted’ comments by a panel of celebrities ‘musing irreverently over the topical issues of the week’. Conti J suggested that what took place was more in the nature of satire than parody, in the sense that the panellists were commenting on the work rather than seeking to imitate it.257 The copyright use was the broadcasting of the extracts that preceded and illustrated the satirical comments. A satirist may also make social and political comments that are unrelated to the copyright work being used.258 In 2006259 a new fair dealing exception was introduced in Australia that exempts from infringement uses of works and audiovisual items for the purpose of parody or satire: ss 41A, 103AA. The inclusion of satire along with parody in the new defence was controversial. If a parody uses parts of the original work to comment upon it then there is an obvious relationship with the long recognised exception to copyright infringement for the purposes of criticism or review: see 8.40. However, if the new exception allows satirists to use distinctive elements of works that are familiar to an audience to make social and political comment that is unrelated to the works, that would seem to extend the scope of the exception. During the Senate Inquiry into the 2006 Bill some copyright owners’ representatives opposed the defence and particularly the inclusion of satire: they

argued that satirical uses that are unrelated to the work would not be ‘fair’ dealings.260 Despite those concerns, both parody and satire were included and the Commonwealth Attorney-General described the new [page 257] exception in his second reading speech introducing the Bill as one that ‘promotes free speech and Australia’s fine tradition of satire’.261 McCausland recounts that in the final stages of the parliamentary debate on the 2006 Bill the media reported a dispute between music publisher EMI and the Australian cricket fan club, the ‘Fanatics’, concerning a book of popular songs with changed lyrics that ridiculed the English fan club, the ‘Barmy Army’.262 That controversy focused public attention on the parody and satire exception in the Bill while it was before parliament, and also provides an interesting example of a use of familiar works, such as The Monkees’ ‘Daydream Believer’ and The Village People’s ‘Go West’, to satirise something quite unrelated to the original works. The Attorney-General commented in the press on the record company’s dispute with the fan club and concluded that to ‘retain the law in its current form just wouldn’t be cricket’.263 The interaction of this new defence and the moral rights (discussed at 9.2ff) of the authors of the original works that are the subject of the parodies is an area of potential conflict264 that has divided opinion in the past.265 The fair dealing exceptions (ss 41A, 103AA) relate to infringement of copyright, not moral rights. In some cases it may be that the parody or satire is not prejudicial to the honour or reputation of the author of the original work, and that may be arguable particularly in cases where something other than the work is the subject of the satire. In cases where there is an infringement of the author’s moral right of integrity, the parodist or satirist will need to argue that the derogatory treatment of the work was reasonable in the circumstances: see 9.5–9.6. 8.43 Fair dealing for the purpose of access by persons with a disability In 2017266 a new defence was introduced for fair dealing with copyright material267 for the purpose of access by one or more

persons with a disability (s 113E).268 The dealings may be by the persons with the disability or by other people on their behalf. 8.44 Fair dealing with digital material A major issue for copyright owners and users has been the operation of the Copyright Act in the digital environment, particularly extending ‘fair dealing’ to an environment where owners’ rights can be so easily infringed and where it is difficult to monitor, to the extent of affecting online markets for sale or licensing of copyright works. The existing notion of fair dealing reflects cultural values [page 258] relating to the use of material in the interests of access for the purposes of those concerned with, inter alia, ‘the preservation and promotion of learning, culture, knowledge and ideas’.269 For creators of material, the ease of access, wholesale copying, manipulation and amalgamation with other material poses great threats to their economic rights. 8.45 On the other hand, digital technology carries within it the ability to lock up content and possibly prevent any fair dealing. As Lawrence Lessig puts it, it is ‘private fences, not public law’ that will increasingly be used ‘as the primary defense of intellectual property in cyberspace’.270 Technological protection measures can be used in conjunction with contractual arrangements to restrict access to copyright material that may not respect the balance struck by the fair dealing provisions.271 The CLRC addressed these issues in its 2002 report on Copyright and Contracts. Its view was that the legislative exceptions to the unfettered exercise of control over copyright material are ‘fundamental to the copyright interest in Australia’, and that the use of agreements to exclude or modify those exceptions ‘undermines the copyright balance’.272 Accordingly, it recommended that contracting out be prohibited in relation to the fair dealing defences and also the library and archive provisions (see 8.48), on the basis that they ‘embody the public interest in education, the free flow of information and freedom of expression’.273 In 2013 the Australian

Law Reform Commission (ALRC) recommended that contractual terms be unenforceable if they restrict or prevent permitted acts by libraries and archives. While the ALRC did not recommend limitations on contracting out of fair use (if introduced),274 if the alternative fair dealing exception was implemented, then contracting out should be limited.275 The Productivity Commission made the following recommendations in 2016:276 Make unenforceable any part of an agreement restricting or preventing a use of copyright material that is permitted by a copyright exception. Permit consumers to circumvent technological protection measures for legitimate uses of copyright material.

Other statutory exceptions 8.46 Educational use Besides the defences in ss 40 and 103C for fair dealing for research or study, a variety of other provisions permit educational uses to be made of copyright material. Unlike the compulsory licences referred to in 7.21–7.22, no payment is required. For example, certain performances and communications of material in class [page 259] or in a way limited to the educational purposes of a place of education are permitted: s 28. Examination questions and answers will not infringe copyright in material reproduced therein (s 200(1A), and nor will any other reproduction or adaptation of a work by either teachers or students in the course of educational instruction, providing printing or copying technology is not involved: s 200(1). Section 200AAA allows proxy webcaching by educational institutions if the computer system is operated primarily to gain online access for educational purposes. There is also a ‘special case’ exception in s 200AB (discussed below at 8.51) that applies to educational institutions.

8.47 Organisations assisting persons with a disability Copyright material277 may be used by organisations assisting persons with disabilities to access it in a format that they require because of their disability: s 113F.278 The exception applies to educational institutions and not-for-profit organisations: s 10(1). The organisation must be satisfied that the material cannot be obtained in that format ‘within a reasonable time at an ordinary commercial price’.279 8.48 Libraries, archives and key cultural institutions Libraries, archives and key cultural institutions280 have long been allowed to reproduce material in their collections for various purposes. The provisions in Div 5 of Pt III of the Act include the reproduction and communication of material (within stipulated limits) for specific purposes such as responding to a request by a library user for the purposes of research or study (s 49), or a request from another library: s 50. Libraries may also provide users with access to material acquired in electronic form, though only if this occurs on the premises and the user cannot use library equipment to copy or communicate such material: s 49(5A). This last provision would not, however, entitle a library to digitise any hard copy holdings to improve public access. Other provisions deal with copying by parliamentary libraries for Members of Parliament (s 48A), unpublished works and films held in libraries (ss 51, 52, 110A), the Australian Archives (s 51AA), and various dealings for the purposes of preservation: Pt IVA Div 3. See also the ‘special case’ exception in s 200AB (discussed below at 8.51) that applies to libraries and archives. 8.49 Public recitation and performance Section 45 allows a public recitation or reading of a literary, dramatic or musical work, or the inclusion of this in a broadcast, [page 260] provided sufficient acknowledgment is given. Similarly, performance of a literary, dramatic or musical work, or an adaptation thereof, ‘at premises where persons reside or sleep’ is excused under s 46, as is causing a sound recording to be heard on such premises and as part

of the activities of a registered charity: s 106. Performance of works or other subject matter is one of the rights comprised in the copyright and ‘performance’ has been given a wide interpretation under s 27(1) (a).281 The effect of s 46 is thus that institutions such as hotels, guest houses, hostels and hospitals may avoid the need to obtain a licence from the owners of these copyrights, usually administered by a collecting society. Similarly, occupiers of such premises will not be liable for copyright infringement in sound recordings or films playing on a television or sound broadcast: s 199. 8.50 Some copying for private and domestic use As discussed at 8.38, a number of narrowly drafted specific categories of exceptions to infringements were introduced in 2006.282 These included recording broadcasts for replaying at a more convenient time (‘time shifting’) and copying sound recordings and some other material into a different form (‘space shifting’ or ‘format shifting’) for private and domestic use. ‘Private and domestic’ use is defined to mean private and domestic use on or off domestic premises: s 10.283 In his second reading speech introducing the 2006 Bill the Attorney-General explained that these free exceptions recognised ‘the common consumer practices of “time shifting” broadcasts and “format shifting” some copyright material’.284 The stated purpose of these exceptions was to make the law more ‘sensible and defensible’ by making ‘sure that ordinary consumers are not infringing the law through everyday use of copyright products they have legitimately purchased’ while at the same time protecting copyright owners against those who would ‘flout’ the law in the digital environment.285 The exceptions are quite specific. It is not possible to refer to a defence for ‘private’ copying or ‘format shifting’ in general: the specific exception for the relevant material and use must be carefully considered. The ‘time shifting’ exception (s 111)286 allows copying of television and radio broadcasts, and any work or other subject matter included in the broadcasts, ‘solely [page 261]

for private and domestic use by watching or listening to the material broadcast at a time more convenient than the time when the broadcast is made’. Any commercial dealing or other distribution of the copy will exclude the use from the exception, and further copies must not be made, but the user may lend the copy within their family or household, again for private and domestic use. In National Rugby League Investments Pty Ltd v Singtel Optus Pty Ltd287 Optus was unable to rely upon the inaccurately, but conveniently, termed ‘private and domestic use’ defence under s 111. The technology Optus provided to its subscribers enabled users to watch live, or almost live, free-to-air broadcasts of live AFL and NRL football games. The Optus ‘TV Now’ system recorded the games and allowed users to watch them on mobile phones and other devices. While the users may have been the maker of the copies, Optus was also making copies on behalf of its subscribers and this commercial service did not fall within the scope of s 111 private copying.288 The exception for sound recordings (s 109A) allows the owner of a non-infringing copy of a sound recording to make another copy using a device he or she owns, for the owner’s private and domestic use. The exception applies to the sound recording and any underlying works or other subject matter. This exception was aimed at copying CDs to MP3 players and the exception allows digital to digital copying, but the original copy must not have been downloaded over the internet. Because digital to digital copying is allowed, this exception is referred to by commentators as ‘space shifting’ rather than ‘format shifting’.289 Again, commercial dealings or other distribution of the copy will result in infringement, but lending the copy within the family or household is allowed. ‘Format shifting’ for films and underlying works (s 110AA) is more restrictive than for sound recordings and only allows making a single electronic copy from a non-infringing videotape in analogue form for private and domestic use. Commercial dealings or other distribution of the copy, disposing of the original videotape to another person, or retaining any ‘temporary’ copies that are made as a necessary technical part of the copying process will all result in infringement.

‘Format shifting’ is also allowed for works and published editions in non-infringing books, newspapers and periodical publications (s 43C) and photographs (s 47J) by making a single reproduction in a different form for private and domestic use. Again, commercial dealings or other distribution of the copy, or retaining any ‘temporary’ copies that are made as a necessary technical part of the copying process, will all result in infringement and the original material must not be disposed of to another person. 8.51 Special cases The 2006 Bill also introduced an exception to allow cultural and educational institutions290 to make use of copyright where that use does not [page 262] undermine the copyright owner’s normal market. In his second reading speech the Attorney-General explained that this ‘special cases’ defence was intended to ‘provide some of the benefits that the fair use doctrine provides in the United States under their law’.291 The exception applies if: the use is a special case made by a library, archives, educational institution or person with certain disabilities; the use does not conflict with a normal exploitation of the material; and the use does not unreasonably prejudice the legitimate interests of the copyright owner. These conditions reflect the ‘three step test’ under the Berne Convention and TRIPS. Concerns were raised in submissions to the Senate inquiry about the uncertainty of incorporating this test into the text of the Act. It was criticised because the ‘three step test’ is a device for determining whether a proposed exception is in compliance with international agreements, but is not, it was argued, appropriate as an internal limitation within the Act.292 The exception is further restricted by a ‘no commercial advantage or profit’ limitation that goes beyond cost recovery. It is not clear what use these institutions will make of the exception. 8.52 Artistic works There are a variety of defences specifically relating to artistic works. For example, a sculpture or work of artistic craftsmanship permanently exhibited in a public place can be

reproduced in two dimensions (for example, by drawing, painting or photographing) without fear of infringement: s 65. The defence does not extend to other ‘two-dimensional’ artistic works such as drawings, paintings, engravings, prints and photographs, so that photographing these in an art gallery, for example, will be a breach of copyright. Copyright in buildings or models of buildings is not infringed by drawing, painting, photographing or filming the building: s 66. Also permitted are the incidental filming of artistic works (ss 67–68), and their reproduction for broadcasting purposes: s 70. Artists who reproduce parts or aspects of an artistic work of which they were the author (as defined in s 10(1)) will not infringe copyright in that earlier work as long as the ‘main design’ of the earlier work is not repeated: s 72(1). Thus, an artist who assigns away copyright will still be able to continue pursuing their creative line of development and may use moulds, casts, sketches, plans, models or studies made for the purposes of the earlier work: s 72(2). A building may also be reconstructed without copyright being infringed: s 73. 8.53 Old films Copyright in a cinematograph film may well expire before copyright in the underlying works (script, music, artwork), since the film copyright is 70 years from first publication (s 94) and work copyrights generally last 70 years from the end of the year in which the author died: s 33(2). To meet this, the Act provides in s 110(2) that exhibiting an ‘old’ film in which copyright has expired does not infringe any work copyright in it. Old news films can also be exhibited in public (but not otherwise dealt with) 50 years after the principal events depicted in the film occurred: s 110(1). Interestingly, this period was not extended when the copyright [page 263] protection periods were extended by 20 years: see 6.60. Since this exception is confined to films intended as ‘means of communicating news’, it is likely that the principal events depicted and publication of

the film are very close in time, so when the exception was introduced the term of copyright protection would not have been cut short by very much, but there is now a disparity. If, however, the definition of ‘news’ is wider than just recent or current events,293 then perhaps a documentary film (for example, concerning World War II) would never have enforceable copyright protection against public exhibition. 8.54 Computer programs Mention has already been made of s 47D, which permits the reproduction or adaptation of a computer program for the purpose of creating an interoperable program or article: see 8.11. The reproduction or adaptation is only allowed to the extent reasonably necessary to obtain the information necessary to independently make another interoperable program.294 This exception was enacted by the Copyright Amendment (Computer Programs) Act 1999 (Cth), which also added provisions allowing the decompilation of programs for the purpose of correcting errors (s 47E) and security testing: s 47F.295 Section 47B(1) further provides that copyright in a program, or in an incorporated or associated literary work, is not infringed by a reproduction that is ‘incidentally and automatically made as part of the technical process of running a copy of the program for the purposes for which the program was designed’. This is designed to counter the difficulty that the normal use of a program on a computer will entail it being temporarily reproduced in the computer’s memory, thus potentially constituting an infringement. Ordinarily, of course, any reproduction in the course of using an authorised copy would be with the express or implied licence of the copyright owner. Since the ‘normal use’ defence can only be invoked by the owner or licensee of the relevant copy, and does not apply to an infringing copy or where the reproduction is contrary to an express direction or licence given by the copyright owner (s 47B(2)), it in fact does little more than ‘codify’ the implied licence that would otherwise have existed in the absence of any stipulation from the owner.296 The Act also excuses a reproduction that is ‘incidentally and automatically made’ in running a program for the purpose of ‘studying the ideas behind the program and the way in which it functions’; though again only the owner or licensee of a noninfringing

copy may invoke this exception: s 47B(3), (4). It is also permitted for an owner or licensee to make back-up copies of a program for specified purposes, such as to guard against the possibility of the original being lost, destroyed or rendered unusable: s 47C. [page 264] It is specifically provided that none of these various defences in relation to computer programs, save that relating to ‘normal use’, can be excluded or limited by agreement: s 47H.297 8.55 Temporary or incidental reproductions As discussed in 8.3, the United States Free Trade Agreement Implementation Act expanded the definition of ‘material form’ so that it covered a wider range of ephemeral reproductions. At the same time, exceptions to infringement for temporary reproductions incidentally made as a necessary part of the technical process of using digital material were inserted: ss 43B and 111B. These defences protect users of legitimate copies but do not apply if an infringing copy of the work or other subject matter is used. The digital agenda amendments in 2000 had previously included exceptions (ss 43A and 111A) for temporary reproductions made as part of the technical process of making or receiving a communication, though an exception is made in relation to the making of a communication that itself infringes copyright. The purpose of these defences is to avoid infringements occurring in the course of ordinary and otherwise lawful computer operations.298 For example, when an email is sent it will often be stored, no matter how briefly, on the server of at least one internet service provider used by a party to the communication to obtain an internet connection. Similarly, when material is accessed from a website and viewed on screen, it will be stored or ‘cached’ for a time by the user’s computer, even if not downloaded to a disk or hard drive. It may also of course be displayed on the user’s screen. Depending on the circumstances, it is possible that those involved in the communication could rely on an implied licence from the copyright owner, but these provisions are

designed to avoid any such uncertainty. The exceptions for reproductions made in the course of communication are unlikely to extend to ‘proxy caching’. When an internet user accesses material from a computer or server in a remote location, a copy will often be held on a server operated by their carriage service provider and if the same material is accessed again, by the same or another user, the proxy cache can enhance the speed of transmission and reduce the amount of traffic. Although not kept permanently, it is unlikely that this copying could be characterised as ‘temporary’ for the purpose of the defences. Caching has been included as one of the activities covered by the limitation on remedies available against carriage service providers if they take certain action against repeat infringers who use their services. These are not exceptions to infringement; carriage service providers may still infringe, but in certain circumstances the remedies available against them may be reduced. These provisions are discussed below in 8.63. [page 265]

Non-statutory defences 8.56 A public interest defence? Besides the exceptions expressly provided under the Act, it is possible that certain non-statutory defences may be invoked to an action for breach of copyright. One is the defence of justified disclosure in the public interest, long established in relation to the equitable doctrine of breach of confidence (see 4.17–4.21), and now recognised by the British courts as applicable in the copyright context as well.299 However, the position in Australia is unclear. In Commonwealth v John Fairfax & Sons Ltd300 Mason J assumed that the defence would in principle justify the refusal of an injunction to restrain the dissemination of information in breach of copyright, although on the facts of the case (see 8.40) he found it to be inapplicable: It has been acknowledged that the defence applies to disclosures of things done in breach of national security, in

breach of all law (including fraud) and to disclosure of matters which involve danger to the public. So far there is no recorded instance of the defence having been raised in a case such as this where the suggestion is that the advice given by Australia’s public servants, particularly its diplomats, should be ventilated, with a view to exposing what is alleged to have been the cynical pursuit of expedient goals …301 By contrast, in Collier Constructions Pty Ltd v Foskett Pty Ltd302 Gummow J refused to recognise the existence of such a defence, insisting that at most a court may exercise its discretion on equitable principles to withhold injunctive relief on the basis that the plaintiff has ‘unclean hands’.303 8.57 Public policy and the enforcement of copyright It is also possible that in some cases an action for breach of copyright may fail on the ground that it would be contrary to public policy for the plaintiff to be assisted by the courts, as, for example, where the work in question is considered obscene. Courts in the United Kingdom have held that copyright does not subsist in immoral material,304 or at least will not be enforced on public policy grounds.305 The Federal Court has held that there is no basis in the Australian Copyright Act for denying protection on [page 266] public policy grounds,306 a position that is consistent with Gummow J’s rejection of the public interest defence in this country;307 though again, courts have discretion at the remedial stage.308 In addition, the enforcement of laws for the confiscation of proceeds of crime may have the effect of denying copyright to criminal offenders who seek to ‘profit’ by writing about their experiences.309 On the other hand, the fact that the plaintiff’s work has been created in breach of another’s copyright is not a ground in itself for withholding a remedy.310

REMEDIES FOR COPYRIGHT

INFRINGEMENT Civil remedies in general 8.58 Part V of the Copyright Act provides a range of civil remedies for infringement of copyright.311 The main ones are set out in s 115(2), which provides that a court may award injunctive relief and either damages or an account of profits,312 and in s 116 concerning ‘infringing copies’. The Federal Court has stated that the Act is not exhaustive of available remedies, and that indeed any remedy which a court hearing a copyright matter may award in its inherent jurisdiction is available, for example, a declaration.313 It is not just the copyright owner who may sue for infringement. Where an exclusive licence has been granted (see 7.14), the licensee is entitled to initiate proceedings under s 115, except against the owner, as if the licence had been an assignment: s 119(a).314 Where either the owner or exclusive licensee wishes to bring an action under s 115, other than for interlocutory relief, the court’s leave must be obtained unless the other is joined as a plaintiff or added as a defendant: s 120.315 By contrast, only the exclusive licensee may bring an action under s 116 in respect of infringing copies, the owner having no concurrent right: s 119(b), (c). [page 267] A defendant in an action for copyright infringement may of course seek to resist liability not merely by denying they have engaged (or are about to engage) in certain conduct, but alternatively (or additionally) by asserting that the relevant copyright did not subsist, and/or by challenging the plaintiff’s claim to that copyright. However, the plaintiff’s task in this regard is made easier by a series of presumptions in the legislation as to these matters: ss 126–131. As part of the compromise that led to the passage of the Copyright Amendment (Parallel Importation) Act 2003 (see 8.37), these now include provisions which allow labels or marks on packaging or

containers to be used as prima facie evidence as to the subsistence or ownership of copyright in the material within: ss 126A, 126B.

Injunctive relief 8.59 Section 115(2) provides that the court may grant an injunction concerning unauthorised use or threatened use of copyright material. The principles upon which relief will be available, including at an interlocutory stage, are those applicable under the general law: see 2.10–2.13. In cases where evidence of copyright infringement may be destroyed, the courts may also grant an Anton Piller order to allow a person bringing an action to enter a defendant’s premises and seize offending material: see 2.9. In Australia, such orders have been sought in connection with record, video and software piracy.316 In 2015 s 115A was inserted317 to enable copyright owners to apply for injunctions against carriage service providers to prevent access to online locations outside Australia that have infringement as their primary purpose. The injunctions require the carriage service provider to take reasonable steps to disable access to the online location.318

Damages or an account of profit 8.60 Damages are compensatory; the ‘award should endeavour to put the owner back in the position the owner would have been in if the infringement had not occurred’.319 An account of profit serves a different purpose; it allows ‘the owner to recover the net gain made by the infringer of the copyright’.320 Whether a court provides pecuniary relief against infringement by way of an award of damages or an account of profits is a matter for its discretion, although there are authorities to the effect that once it is determined that an account of profits is inappropriate, damages [page 268]

should be available more or less as of right.321 This is subject to s 115(3), however, which provides that damages are not available where the defendant was unaware and had no reasonable grounds for suspecting that the plaintiff’s copyright was being infringed.322 The basic measure of damages is the loss in value of the copyright caused by the infringement,323 although other measures (such as fair remuneration for the use of the plaintiff’s work or loss of profits due to the defendant’s activities) may be adopted where appropriate.324 Additional damages of a punitive and/or aggravated nature may be awarded under s 115(4),325 having regard, inter alia, to the flagrancy of the infringement, the benefits accruing to the defendant therefrom, the behaviour of the defendant,326 the need to deter similar infringements,327 the conduct of the defendant after being informed of the alleged infringement,328 and whether the infringement involved conversion of copyright materials from hard copy into digital or other machine-readable format. The courts have also recognised, on occasions, [page 269] that copyright infringement involves more than just damage to property and may also be a cause of injury to reputation or feelings.329 If the infringing act that has been proved involved a communication of the work or other subject matter to the public, and the defendant was engaged in commercial scale infringing that is likely to have included other infringements that have not been proved, the court may have regard to the likely as well as the proved infringements when deciding what relief to grant: s 115(5)–(7). This provision was introduced as part of the 2006 amendments that were intended to strengthen enforcement.

Remedies for infringing copies and devices 8.61 A further form of relief is provided by s 116, whereby the plaintiff may sue in conversion or detinue in respect of ‘infringing

copies’330 or a ‘device’ (including a circumvention device) used to make such copies.331 This appears to catch all those in possession of such items, even if they have not committed any infringement.332 Innocence is to some extent a defence to such proceedings (s 116(2)), though only in relation to any pecuniary remedy and even then on somewhat narrower grounds than apply under s 115.333 In 1998, s 116 was amended to provide greater discretion to courts as to the remedies available under this provision. The court may grant ‘all or any of the remedies that are available’ in an action for conversion or detinue, as if the plaintiff were the owner of the infringing copy or device: s 116(1A). Those remedies may be an order for the delivery up of the offending items,334 or an award of damages. Prior to 1998 such damages were available as of right, and were calculated simply according to the market value of the offending items.335 However, it is now provided that the court may take into account additional factors, not only in assessing damages but in determining whether to grant relief at all. These include the expenses incurred by the defendant and the extent of copyright material in an infringing article: s 116(1D), (1E). Remedies awarded under s 116 are cumulative with any relief granted under [page 270] s 115 (s 116(1B)),336 although double counting will not be permitted.337 Importantly too, it is now provided that relief should not be granted under s 116 if, in the opinion of the court, a sufficient remedy under s 115 has been made available: s 116(1C). The remedy is discretionary and so a copyright owner ought not to assume that he or she can elect to pursue conversion damages.338 Furthermore, damages may not be claimed under s 116 in conjunction with an account of profits, for the latter involves waiving the infringement and hence any title to the infringing copies or devices.339

The Milpurrurru case

8.62 Milpurrurru v Indofurn Pty Ltd340 offers a useful illustration of the different bases on which damages may be awarded under ss 115 and 116 and the flexible approach to assessment taken by the courts. The action was brought by or on behalf of eight Aboriginal artists whose artworks had been reproduced without their permission on carpets manufactured overseas and imported into Australia by the defendants.341 In awarding damages for infringement of copyright, von Doussa J accepted that it would be inappropriate to apply the well-established principle of awarding separate judgments in favour of each applicant, assessed as to individual loss and damage, where Aboriginal law and custom would treat each of the applicants in the case equally. He agreed that the defendants’ liability, although assessed according to the usual rules, should be aggregated and judgment would be awarded to the plaintiffs as a group. The plaintiffs were awarded damages on three distinct bases. The first was an amount by way of conversion damages for the value of the infringing copies, in this case the carpets. Their value was assessed at an average cost, as if the carpets were worth $190 per square metre. This came to $90,981.50. Second, an award was made under s 115(2) to compensate for the loss of value of the plaintiffs’ copyright. These damages were assessed at $1500 in respect of each artwork, reflecting the loss of value resulting from the degradation of the artwork and the resulting commercial use to which it had been put by the defendants. Von Doussa J noted that damages awarded under s 115(2) are usually assessed with reference to monetary loss, but may include compensation for anger, distress or personal suffering caused by the copyright infringement, not just on the [page 271] part of the copyright owner but of ‘those around’ them.342 Importantly, he accepted that the ‘personal and cultural hurt’ suffered by the artists and their communities should be compensable. However, he decided not to compensate for this ‘pirating of cultural heritage’ under s 115(2). Such damages could not be quantified by

reference to the liability of the defendants (as had been requested by the plaintiffs), but only by reference to the individual circumstances of each of the plaintiffs. Assessment along those lines, artist by artist, would not have been in accordance with the principle of equality which the judge had agreed to follow. However, the Copyright Act does allow for additional damages for flagrant infringement under s 115(4) and in this instance the copyright infringement was found to be deliberate and calculated. Accordingly, the element of ‘cultural harm’ was reflected in an award under that provision. These additional damages were assessed at $70,000 and would have been higher but for the other damages already granted.

Limitation on remedies against carriage service providers 8.63 In 2004 the Australia–United States Free Trade Agreement amendments introduced provisions that limit the remedies available against carriage service providers. Often discussed in relation to internet service providers,343 the terminology used in the Copyright Act is ‘carriage service provider’ which is a more limited concept that does not extend to the hosting of material.344 Referred to as ‘safe harbour provisions’,345 they limit the remedies available against carriage service providers for infringements when the providers cooperate with copyright owners to deter infringement by service users. The service provider must be carrying out a relevant activity which includes: providing facilities or services for transmitting, automatic caching, storing at the direction of the user, or referring users to an online location using tools such as hyperlinks: ss 116AC– 116AF. If carrying out one of those activities the service provider must satisfy specific conditions set out in a table in the Act (s 116AH) and regulations.346 Those conditions include things such as adopting policies about termination of accounts of repeat offenders, not benefiting financially from the infringing activity, and removing or disabling access to infringing material. [page 272]

If those conditions are satisfied, a court must not grant monetary relief but can grant orders requiring the service provider to remove or disable access to infringing material or terminate specific accounts: s 116AG. Carriage service providers are not required to monitor their services looking for copyright infringements but are required to act if they become aware of infringing material. The provisions did not apply retrospectively in the Cooper case (see 8.30), but in obiter dicta Tamberlin J commented that the ISP E-Talk that hosted Mr Cooper’s ‘MP3s4Free’ website in that case could not have relied on the provisions because it received a financial benefit from the infringements (in the form of free advertising on the website), and because it failed to take action against the website operator despite knowing that infringements were taking place.347

Unjustifiable threat of action 8.64 Section 202 provides that a person shall not threaten another with an action for infringement of copyright. In the event that such threats are made, any aggrieved person (who need not be the person threatened, but merely someone damaged by the threats),348 may seek a declaration that the threats are unjustifiable, an injunction and/or damages.349 It is a complete defence to such a charge that the action in relation to which the threats were made was indeed a breach of copyright (s 202(1)), though it is not enough that the defendant believed this to be the case, no matter how honestly.350 On the other hand, a person who does no more than give notice as to the existence of a copyright, without threatening proceedings, will not attract liability on this score: s 202(2).

Seizure by customs 8.65 Under Div 7 of Pt V of the Act, the CEO of Customs may be asked to seize material which is alleged to be imported in breach of copyright and hold it pending a court decision on the question of infringement. However, the onus is on the person objecting to the importation to commence proceedings for infringement; if this is not done within a stipulated time, the material will be released. The CEO may also ask the objector for a sum of money to be deposited with

the request for seizure in order to cover expenses.

Criminal offences 8.66 Part V Div 5 of the Copyright Act 1968 (Cth) sets out a range of criminal offences for certain dealings with infringing copies and devices: these are generally commercial scale dealings. The offences are numerous and complex (ss 132AA–132AS) but include making, importing, selling or hiring, exhibiting, performing, and in some [page 273] cases possessing, infringing articles and devices on a commercial scale and also circumvention of technological protection measures and removing or altering electronic rights management information.351 The scope of the criminal offences and the severity of the penalties attached to them have been expanded over the years in conjunction with other major reforms such as opening up parallel importation of sound recordings and as part of the Australia–United States Free Trade Agreement reforms. There were wide-ranging reforms in 2006352 when a new offence for commercial scale infringements that have prejudicial impacts upon owners was introduced and the offences were divided into indictable, summary and strict liability categories. The Federal Court has jurisdiction to determine cases involving summary and strict liability offences (s 133A), but not prosecutions for the more serious indictable offences which are heard in the state and territory courts and may be tried by jury. Section 9A provides that the fault elements for the different category of offences are determined by Ch 2 of the Criminal Code (Cth). For the indictable offences the fault element is intention or recklessness and for summary offences negligence.353 As the name suggests, for the ‘strict liability’ offences there is no fault element, but a defence of mistake of fact may apply; however, mistake or ignorance of the law is no excuse. The strict liability offences are the lower level offences and can be dealt with by an infringement notice and a fine. The penalties for the higher level offences include fines and terms of

imprisonment of up to five years. Despite the steady expansion in both the scope of criminal offences and the severity of the penalties attached to them, and despite the acknowledged prevalence of copyright piracy in Australia, prosecutions remained relatively rare. Also, when prosecutions have resulted in convictions, terms of imprisonment have rarely been imposed,354 but in 2007 a woman was imprisoned for 12 months for renting infringing videos to the public.355 The case involved high volume commercial scale infringement with over 35,000 videos and the defendant had previous convictions for copyright offences.

Anti-circumvention measures 8.67 The digital agenda amendments of 2000 added a number of remedies that are directed not to copyright infringement as such, but to the circumvention of technological protection measures adopted by copyright owners to protect against copyright infringement or to identify their material. This implemented some of the obligations in the WIPO ‘internet treaties’ of 1996: see 21.35–21.38. The provisions [page 274] were strengthened in 2006356 to extend protection to devices that control access to copyright material, again to implement Australia’s obligations under the Australia– United States Free Trade Agreement. A ‘technological protection measure’ (TPM) is defined in s 10(1) as a device, product, technology or component (including a computer program) that in the normal course of its operation controls access to copyright works and other subject matter (access control TPM) or prevents, inhibits or restricts copyright infringement (copy control TPM). Devices that attempt to control films and computer programs by geographic regions are expressly excluded from the definitions.357 Copyright owners may bring civil actions against a person who circumvents these devices, or assists others to do so. Section 116AN is concerned with circumventing an access control technological

protection measure, s 116AO with the manufacture, importation, sale, distribution (including online) and advertisement of a ‘circumvention device’, and s 116AP with the provision or advertisement of a ‘circumvention service’. For ss 116AN–116AP to be infringed, the person concerned must have known, or ought reasonably to have known, that the device or service is for circumvention of a technological protection measure. However, the usual burden of proof is reversed in this regard, so that such knowledge is presumed unless the defendant can prove otherwise. There are specific exceptions for law enforcement and national security purposes, and to allow users to get access to noninfringing copies to create interoperable products, research encryption technology, do computer security testing, or protect online privacy,358 but not for fair dealing. There are associated prohibitions in relation to the unauthorised removal or alteration of ‘electronic rights management information’ (s 116B), and the importation, distribution or communication of material where such information has been tampered with: ss 116C– 116CA. This is information attached to or embodied in copyright material that identifies the material, the author or owner, and/or the terms on which it may be used (s 10(1)), and would, for example, include a digital ‘watermark’359 as well as more visible forms of identification. To be liable, a person must know or suspect that their actions would facilitate or conceal an infringement of copyright in the material, but again the burden is on them to show they lack such knowledge. Any breach of ss 116AN–116CA entitles either the copyright owner or an exclusive licensee to take civil action.360 As with infringements of copyright, a court may grant an injunction and award either damages (including additional damages) [page 275] or an account of profits: ss 116AQ, 116D. As previously mentioned, a circumvention device may in addition be the subject of an action for

conversion or detention under s 116: see 8.61. Unauthorised decoders that decrypt encoded broadcasts are also proscribed. Part VAA imposes both civil and criminal liability for manufacturing or dealing with such devices or gaining unauthorised access.

1. 2. 3. 4. 5. 6. 7.

8. 9. 10. 11. 12. 13. 14. 15. 16.

Or a ‘substantial part’ of that work or subject matter (s 14): see 8.5ff and 8.23 for discussion of this in the context of reproduction. Note, however, that copyright in an artistic work is not infringed by a ‘performance’ or by an adaptation of the work. See eg Andritz Srout-Bauer Australia Pty Ltd v Rowland Engineering Sales Pty Ltd (1993) 28 IPR 29. Cf Hastie 1995. Cf Pacific Gaming Pty Ltd v Aristocrat Leisure Industries Pty Ltd (2001) 116 FCR 448. See eg Australian Video Retailers Association Ltd v Warner Home Video Pty Ltd (2001) 53 IPR 242. Stevens v Kabushiki Kaisha Sony Computer Entertainment (2005) 224 CLR 193. In response to Kabushiki Kaisha Sony Computer Entertainment v Stevens (2003) 57 IPR 161. The definition of ‘copy’ for films and sound recordings was also amended in the same way: s 10(5), (6). The US Free Trade Agreement Implementation Act 2004 (Cth) inserted exceptions to infringement for temporary reproductions incidentally made as a necessary part of the technical process of using digital material: ss 43B, 111B; see also 8.55. See also s 47B for computer programs: see 8.54. The two cannot be divorced: Tamawood Ltd v Habitare Developments Pty Ltd (2015) 112 IPR 439 at [167]. See eg S W Hart and Co Pty Ltd v Edwards Hot Water System (1985) 159 CLR 466 at 472. Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 43 IPR 1 at 22; and see Pacific Gaming Pty Ltd v Aristocrat Leisure Industries Pty Ltd (2001) 116 FCR 448 at 473– 5. See also 6.1ff. See eg CCOM Pty Ltd v Jiejing Pty Ltd (1993) 27 IPR 577; Ron Englehart Pty Ltd v Enterprise Constructions (Aust) Pty Ltd (2012) 95 IPR 64. Francis Day & Hunter Ltd v Bron [1963] Ch 587 at 614; Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR 309 at 315. Barrett Property Group Pty Ltd v Dennis Family Homes Pty Ltd (2011) 91 IPR 1. Burke & Margot Burke Ltd v Spicers Dress Designs [1936] Ch 400. See also the examples of indirect copying discussed in 8.15. Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 41 IPR 593 at 621; and see also Admar Computers Pty Ltd v Ezy Systems Pty Ltd (1997) 38 IPR 659. Francis Day & Hunter Ltd v Bron [1963] Ch 587; Corelli v Gray (1913) 29 TLR 570. In Facton Ltd v Mish Mash Clothing Pty Ltd (2012) 94 IPR 523 the similarities were ‘so striking as to justify the inference, in the absence of evidence from the respondents’:

17. 18. 19. 20. 21. 22. 23. 24. 25. 26. 27. 28. 29. 30.

31. 32. 33. 34. 35. 36. 37. 38. 39. 40. 41. 42.

at [38]. Contemporaneous documentation from defendants that shows how their work was independently developed will rebut such a presumption: Inform Design & Construction Pty Ltd v Boutique Homes Melbourne Pty Ltd (2008) 77 IPR 523 at 547. Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR 309 at 314; and see eg Tolmark Homes Pty Ltd v Paul (1999) 46 IPR 321. (1913) 29 TLR 570. Ibid at 571; and see also 6.19. Dynamic Supplies Pty Ltd v Tonnex International Pty Ltd (2011) 91 IPR 488 at [109], [141]. Ibid at [109]. The appeal on subsistence of copyright was dismissed: Tonnex International Pty Ltd v Dynamic Supplies Pty Ltd (2012) 99 IPR 31. Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 43 IPR 1 at 21. Ibid at 20. Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd (1921) 29 CLR 396 at 404. (1999) 46 IPR 309. (2004) 61 IPR 378. Ibid at 388. Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR 309 at 316. TCN Channel Nine Pty Ltd v Network Ten Pty Ltd (No 2) (2005) 145 FCR 35 at [9]. See also: IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 at 508. Hawkes & Son (London) Ltd v Paramount Film Service Ltd [1934] 1 Ch 593; IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 at 473. Gummow, Hayne and Heydon JJ in the High Court noted in IceTV that the requirement that the part taken be ‘substantial’ assumes that some measure of appropriation is legitimate: at 509. Ricketson & Creswell 2017, [9.30]. See eg Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd (1921) 29 CLR 396; Autodesk Inc v Dyason (1992) 173 CLR 330; (1993) 176 CLR 300. IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458; Baigent v Random House Group Ltd (2007) 72 IPR 195: taking an assortment of historical facts and information was not a substantial part. Klissers Bakeries v Harvest Bakeries (1985) 5 IPR 533; Dixon Investments Pty Ltd v Hall [1990] AIPC 90-714. Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd (2008) 172 FCR 580: see 8.14. IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 at 512. See also French CJ, Crennan and Kiefel JJ at 477. Autodesk Inc v Dyason (1992) 173 CLR 330. Ibid at 346. Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 at 305. CLRC 1995, [5.25]. Lahore 1992, 432. CLRC 1995, [2.73]. Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 at 305.

43. 44. 45. 46. 47. 48. 49. 50. 51. 52. 53. 54. 55. 56. 57. 58. 59. 60.

61. 62. 63. 64.

65. 66. 67. 68. 69. 70. 71. 72. 73.

Ibid at 306. (1999) 202 CLR 1. (2009) 239 CLR 458 at 476: see 8.12. See also discussion in JR Consulting & Drafting Pty Ltd v Cummings (2016) 116 IPR 440 at [267]–[272]. (1999) 202 CLR 1. For comment, see Kremer 2000; Voon 2000. (1999) 202 CLR 1 at 33. For an application of this reasoning, see Kabushiki Kaisha Sony Computer Entertainment v Stevens (2002) 55 IPR 497. (1999) 202 CLR 1 at 33. Ibid at 33–4. Ibid at 42. Ibid. See Copyright Amendment (Computer Programs) Act 1999 (Cth). For other provisions introduced by the Act, see 8.54. See IPCRC 2000, 104. (2002) 55 IPR 1. Ibid at 61. Ibid at 61–2. (2009) 239 CLR 458. See discussion in Lindsay 2008. Nine Network Australia Pty Ltd v IceTV Pty Ltd (2007) 73 IPR 99 at [117]. Nine disputed IceTV’s account of how its guide was produced and argued that the ‘extraordinary correlation’ suggested that all of the IceGuide was copied directly from the published guides, but the primary judge accepted IceTV’s explanation: Nine Network Australia Pty Ltd v IceTV Pty Ltd (2007) 73 IPR 99 at [130]–[132]. Nine Network Australia Pty Ltd v IceTV Pty Ltd (2007) 73 IPR 99 at [125]. This process raised the issue of indirect copying (see 8.15), but the High Court’s decision that no substantial part was copied meant that the matter did not need to be decided. Nine Network Australia Pty Ltd v IceTV Pty Ltd (2007) 73 IPR 99 at 144, 149. French CJ, Crennan and Kiefel JJ directed attention to the originality in the expression of the part being reproduced. Gummow, Hayne and Heydon JJ warned against looking at the originality of the part being copied if that were to distract one into considering whether the part taken could be an original works in its own right, and instead directed attention to the work as a whole: IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 at 476, 509, 511–512. Ibid at 475–6. Ibid at 479–80. Ibid at 481–511. Ibid at 477, 481, 512. See discussion of objective similarity and substantial part in a case of alleged infringement of a compilation in Sports Data Pty Ltd v Prozone Sports Australia Pty Ltd (2014) 107 IPR 1 at [89]–[90]. Ibid at 479–80, 485, 502–3. Ibid at 509–10. See also ibid at 473–4. Ibid at 512. Ibid at 512–13. Known as animus furandi (intention to steal), this was considered by von Doussa J in Milpurrurru v Indofurn (1994) 30 IPR 209 at 228; cf Baigent v

74. 75. 76. 77. 78. 79. 80. 81. 82. 83. 84. 85.

86. 87. 88. 89. 90. 91. 92. 93. 94. 95. 96.

Random House Group Ltd (2007) 72 IPR 195 at 222; and see Garnett et al 2011, 446. See also Goddard 2009, 117–18. French CJ, Crennan and Kiefel JJ held it was not necessary to consider this issue in IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 at 481. It should be noted that it is not necessary to establish intention and subconscious copying may infringe copyright, although proof of intention may be relevant to establishing causal connection: Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd (2010) 83 IPR 582 at [96], [221]. Francis Day & Hunter Ltd v Bron [1963] Ch 587. See Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd (2010) 83 IPR 582 at [158]. Brown 1987. See eg Francis Day & Hunter Ltd v Bron [1963] Ch 587. Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd (2010) 83 IPR 582 at [161]. Ibid at [208]. His Honour also held that a substantial part had been reproduced: at [228]. An appeal to the Full Court was dismissed: EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd (2011) 90 IPR 50. Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd (2009) 81 IPR 584 at [12]. Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd (2010) 83 IPR 582 at [203]. EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd (2011) 90 IPR 50 at [86]. See eg Hyperion Records Ltd v Warner Music (UK) Ltd [1991] Ch 17. King Features Syndicate Inc v O & M Kleeman Ltd [1941] AC 417 at 435; Walt Disney Productions v H John Edwards Publishing Co Pty Ltd (1954) 71 WN (NSW) 150. Kenrick & Co Ltd v Lawrence & Co Ltd (1890) 25 QBD 99; but cf Independent Television Publications Ltd v Time Out [1984] FSR 64; Elanco Products v Mandops Ltd [1979] FSR 46; John Fairfax & Sons Ltd v Australian Consolidated Press Ltd (1959) 60 SR (NSW) 413. Walt Disney Productions v H John Edwards Publishing Co Pty Ltd (1954) 71 WN (NSW) 150. [2002] FCAFC 218. Ibid at [41]. (1998) 41 IPR 593. Ibid at 613. Ibid at 614. (2004) 61 IPR 378 at 386. Ibid. Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd (1971) 20 FLR 481; and see also Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 43 IPR 1 at 18–22 and the cases cited there. Ferntree Homes Pty Ltd v Bohan (2002) 54 IPR 267 at 271. Metricon Homes Pty Ltd v Barrett Property Group Pty Ltd (2008) 75 IPR 455; Carlisle Homes Pty Ltd v Barrett Property Group Pty Ltd [2009] FCAFC 31. Susan Gatford has argued that decisions such as these may be explained by the way the cases are run and the adverse credit findings against the alleged infringers who, having lost

97. 98. 99. 100. 101. 102.

103. 104. 105. 106. 107. 108. 109. 110. 111. 112.

113. 114. 115. 116.

their ‘I didn’t copy’ defence, then find it difficult to run a credible argument on substantial part. However, in the T-shirt design case Cotton On did not succeed when it admitted the source of an idea for its T-shirts, but argued that it was not a substantial part of the work: Gatford 2009, 41–2. Ron Englehart Pty Ltd v Enterprise Constructions (Aust) Pty Ltd (2010) 87 IPR 476; Ron Englehart Pty Ltd v Enterprise Constructions (Aust) Pty Ltd (2012) 95 IPR 64. (2008) 172 FCR 580. The Full Federal Court held that the designs were drawings, not literary works: see 6.13. Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd (2008) 172 FCR 580 at 592. Ibid at 579. Sophie Goddard has argued that much of Elwood’s work was based on earlier ‘hackneyed’ college style sporting teamwear and that the non-original elements ought to have been disregarded: Goddard 2009. Prior to 1989, this was qualified by s 71 which provided a ‘non-expert’ defence, so that a reproduction of an artistic work in another dimension would not infringe the work unless a non-expert would be able to see the reproduction as having been derived from the work. The object of the defence was to prevent complicated machinery and the like from gaining copyright protection, even if not qualifying for design registration. This was repealed by the Copyright Amendment Act 1989 (Cth), but had been rendered fairly innocuous by the High Court before that time: see S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466; and see also 10.31. The Australian Law Reform Commission (ALRC) proposed in the course of its review of the Designs Act that a new approach be adopted by repealing s 21(3), enacting new provisions to ensure that in most instances it would not be an infringement of copyright to reproduce a two-dimensional artistic work in three-dimensional form, and at the same time extending copyright in an artistic work to include an adaptation right. The recommendation was not implemented: see 10.32. Vawdrey Australia Pty Ltd v Kruger Transport Equipment Pty Ltd (2009) 83 IPR 1. [1965] Ch 1. British Leyland Motor Corp Ltd v Armstrong Patents Co Ltd [1986] 2 WLR 400; but see also 10.30ff. S W Hart and Co Pty Ltd v Edwards Hot Water System (1985) 159 CLR 466. [1985] FSR 327. (1985) 5 IPR 156. See also LED Builders Pty Ltd v Eagle Homes Pty Ltd (1996) 35 IPR 215. See also Vawdrey Australia Pty Ltd v Kruger Transport Equipment Pty Ltd (2009) 83 IPR 1. See eg Muscat v Le (2003) 60 IPR 276. Weir Pumps Ltd v CML Pumps Ltd (1983) 2 IPR 129. Ibid; Solar Thomson v Barton Engineering [1977] RPC 537; Gardner v Sykes [1981] FSR 281; British Leyland Motor Corp Ltd v Armstrong Patents Co Ltd [1982] FSR 481; L B Plastics Ltd v Swish Products Ltd [1979] RPC 551; Green Cartridge Co (Hong Kong) Ltd v Canon Kabushiki Kaisha (1996) 34 IPR 614. [1986] 2 WLR 400. Ibid at 420. Hampton 1986. (1985) 62 ALR 521.

117. 118. 119. 120. 121. 122. 123. 124. 125. 126. 127. 128. 129. 130. 131. 132. 133. 134. 135. 136. 137.

138. 139. 140. 141. 142. 143. 144.

This does not infringe a Pt IV copyright, however: s 199. (1884) 13 QBD 843. Jenning v Stephens [1936] Ch 169. APRA Ltd v Canterbury-Bankstown Leagues Club Ltd (1964) 5 FLR 415. (1992) 25 IPR 157. Ibid at 159. Ibid at 171. (1997) 191 CLR 140. But not ‘selling or offering for sale a DVD version (that is, the chattel comprising the disk, any plastic covering and any printed artwork etc) of the film on the internet’: Young v Wyllie (2010) 86 IPR 84 at [68]. Cf Weatherall 1999, criticising aspects of the reasoning in Telstra v APRA and, more generally, the extension of copyright protection that has resulted from treating pointto-point, interactive communications as ‘public’ in character. Woolworths Ltd v Olson (2004) 63 IPR 258. Ibid. See Pascoe & Garlick 2001. Australian Video Retailers Association Ltd v Warner Home Video Pty Ltd (2001) 53 IPR 242. CBS Records Australia Ltd v Telmak Teleproducts (Australia) Pty Ltd (1987) 9 IPR 440: see 6.46. Zeccola v Universal City Studios Inc (1982) 46 ALR 189. (1996) 34 IPR 53. The publishers were forced to rely on their published edition copyright because copyright in the articles as literary works vested (at least for this purpose) in the journalists who wrote them: see 7.5. Ibid at 72. Gummow, Hayne and Heydon JJ in the High Court were critical of the ‘interest protected’ approach in IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 548 at 509–10. See 8.12. TCN Channel Nine Pty Ltd v Network Ten Pty Ltd (No 2) (2005) 145 FCR 35. Earlier in the proceedings, before the High Court decision in Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (2004) 218 CLR 273, the Full Court had held that infringement of copyright in a television broadcast may effectively be established without reference to the notion of substantial part: see 6.49. Once the nature of broadcasts was determined by the High Court, the substantial part issue was reconsidered by the Full Court. The case is discussed in de Zwart 2009. Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (2004) 218 CLR 273 at 300. TCN Channel Nine Pty Ltd v Network Ten Pty Ltd (No 2) (2005) 145 FCR 35 at [27], [54]. Hely J found that three programmes had been infringed. As to the nature and extent of copyright infringement in Australia, see House of Representatives Standing Committee on Legal and Constitutional Affairs 2000, ch 2. As to the use of the language of ‘piracy’ in this context, see Drahos with Braithwaite 2002, ch 2. (1993) 27 IPR 649. The Rome Convention: see 21.30. The United States has now ratified the WIPO

145. 146. 147. 148. 149.

150.

151. 152. 153. 154. 155. 156. 157. 158. 159. 160. 161.

162. 163. 164. 165.

166. 167. 168.

Performers and Phonograms Treaty: see 21.38. Lawton 2002, 42. James 2008. Roadshow Films Pty Ltd v iiNet Ltd (2012) 248 CLR 42. See 8.30. University of New South Wales v Moorhouse (1975) 133 CLR 1. See eg APRA v Jain (1990) 26 FCR 53. In that case the proprietor of a tavern had the power to control what music was played on the premises and whether a licence was obtained. See also Tamawood Ltd v Habitare Developments Pty Ltd (2015) 112 IPR 439 at 484. A developer had the power to prevent copyright infringement by starting again with new building plans, but instead opted for a ‘shortcut’ to comply with development approvals. See eg Microsoft Corp v Marks (1995) 33 IPR 15. Note that the separate question of whether such a person is jointly responsible for any infringement committed by the organisation is decided according to the common law principles relating to joint tortfeasors: see eg King v Milpurrurru (1996) 34 IPR 11; and see 2.6. WEA International Inc v Hanimex Corp Ltd (1987) 10 IPR 349; Nationwide News Pty Ltd v Copyright Agency Ltd (1996) 34 IPR 53. See eg APRA Ltd v Canterbury-Bankstown Leagues Clubs Ltd [1964–5] NSWR 138; APRA Ltd v Jain (1990) 26 FCR 53; APRA v Metro on George Pty Ltd (2004) 61 IPR 575. [1988] AC 1013. See also Sony Corp v Universal City Studios Inc (1984) 2 IPR 225, where the US Supreme Court made a similar finding in relation to manufacturers and retailers of VCRs. [1979] FSR 1. (1975) 133 CLR 1. See Ricketson & Catterns 2009. See also the s 104B equivalent for audio-visual items inserted in 2000. (2015) 111 IPR 103. Ibid at [306]–[307]. Gleeson J distinguished the case of APRA v Jain (1990) 26 FCR 53 at 61 where the respondent had the power to control what music was played in a tavern and whether an APRA licence was applied for. Defined as having the same meaning as used in the Telecommunications Act 1997 (Cth); Copyright Act 1968 (Cth) s 10(1); Telecommunications Act 1997 (Cth) s 87. See also the protection provided by s 22(6) as to the making of a communication (see 8.20), and by ss 43A, 43B, 111A and 111B concerning temporary reproductions in the course of a communication or as part of a technical process of use: see 8.55. See Docker 2002. Ginsburg & Ricketson 2008. Universal Music Australia Pty Ltd v Sharman License Holdings Ltd (2005) 65 IPR 289. Ibid at 293. In another context, the inclusion of a warranty in a contract that the hirer of a venue would obtain copyright licences was a warning to hirers about their obligations, but was held to be insufficient action by the venue owner to avoid authorisation of infringement: APRA v Metro on George Pty Ltd (2004) 61 IPR 575. Ibid at 386. Cooper v Universal Music Australia Pty Ltd (2006) 156 FCR 380. Universal Music Australia Pty Ltd v Cooper (2005) 150 FCR 1 at [84].

169. 170. 171. 172. 173. 174. 175.

176.

177.

178. 179. 180. 181.

182. 183. 184.

185. 186. 187. 188. 189. 190. 191. 192. 193. 194.

Cooper v Universal Music Australia Pty Ltd (2006) 156 FCR 380 at 391. Ibid. Ibid at 392. (2012) 248 CLR 42. Roadshow Films Pty Ltd v iiNet Ltd (No 3) (2010) 83 IPR 430; Moses 2010, 3. Roadshow Films Pty Ltd v iiNet Ltd (No 3) (2010) 83 IPR 430 at [414]. Roadshow Films Pty Ltd v iiNet Ltd (2012) 248 CLR 42 at [79], [138], [146]. Section 115A, inserted in 2015, allows copyright owners to apply for injunctions against carriage service providers to prevent access to online locations outside Australia that have infringement as their primary purpose. See 8.59. Copyright owners have also used discovery to obtain account-holder details from internet service providers: Dallas Buyers Club LLC v iiNet Ltd (2015) 112 IPR 1. For the purposes of sale and other dealings an article includes a reproduction or copy in an electronic form: ss 38(3), 103(3). Before this definition was inserted in 2006, Tamberlin J had held that ‘article’ referred to a material thing or tangible object: Universal Music Australia Pty Ltd v Cooper (2005) 150 FCR 1 at [92]. As to the curious and unsatisfactory nature of the inquiry required in relation to imported articles, which centres on what the defendant knew or should have known about a hypothetical making in Australia rather than the actual importation, see Raben Footwear Pty Ltd v Polygram Records Inc (1997) 37 IPR 417 at 433–5. (1997) 37 IPR 417. Ibid at 420. See APRA Ltd v Miles (1961) 3 FLR 146. As to what constitutes public performance, see 8.19. Note that there is nothing to stop foreign copyright owners invoking these provisions to prevent importation of their material into Australia, even though they have not previously imported or licensed the importation of the material themselves: Pioneer Electronics Australia Pty Ltd v Lee (2001) 51 IPR 291. Avel Pty Ltd v Multicoin Amusements Pty Ltd (1990) 171 CLR 88. (1977) 138 CLR 534. See also Lorenzo & Sons Pty Ltd v Roland Corp (1992) 23 IPR 377. See eg Computermate Products (Australia) Pty Ltd v Ozi-Soft Pty Ltd (1988) 12 IPR 487; Star Micronics Pty Ltd v Five Star Computers Pty Ltd (1990) 18 IPR 225; Broderbund Software Inc v Computermate Products (Australia) Pty Ltd (1991) 22 IPR 215. See eg Polygram Records Pty Ltd v Monash Records (Australia) Pty Ltd (1985) 72 ALR 35; Chrysalis Records Ltd v Vene (1982) 43 ALR 440. (1997) 75 FCR 8. This is obviously much harder to achieve in relation to copyright material in digital form that can readily be transmitted around the world. CLRC 1988b, 3–7. Ibid, 31. See Ozi-Soft Pty Ltd v Wong (1988) 10 IPR 520 at 525. PSA 1989. The Final Report was issued in January 1990. IPCRC 2000, 41–78. As to which, see generally Landes & Posner 1989. Cf Fels & Walker 1990. See eg s 29(5): see 6.57.

195. 196. 197. 198. 199. 200. 201. 202. 203.

204. 205. 206. 207. 208.

209. 210. 211. 212. 213. 214. 215. 216. 217. 218. 219. 220. 221. 222. 223.

Productivity Commission 2009a. Maurer & Walzl 2009. Productivity Commission 2009b. Emerson 2009. Harper et al 2015, Recommendation 13. Productivity Commission 2016, Recommendation 5.3. The government has supported this recommendation in principle. At the time of publication, further consultation with the book industry was planned: Australian Government 2017, 5. PSA 1990. See Davison 1992. Copyright Amendment Act (No 2) 1998 (Cth). For criticism, see Park 1999. See Australian Competition & Consumer Commission v Universal Music Australia Pty Ltd (2001) 115 FCR 442 at 449, 539. On appeal, the record companies were only partially successful in overturning the various findings of Pt IV infringement, with the Full Court in fact increasing the penalties to be imposed: Universal Music Australia Pty Ltd v Australian Competition & Consumer Commission (2003) 57 IPR 353. (1986) 6 IPR 279. See also Wrangler Apparel Corp v Classic Boots Australia Pty Ltd (1997) 38 IPR 19. Polo/Lauren Co LP v Ziliani Holdings Pty Ltd (2008) 173 FCR 266 at 274. ‘Feature film’ here means a film of more than 20 minutes’ duration that is produced for exhibition in the cinema or on television, or otherwise for sale or rental for noninteractive viewing: s 10AD(2). See Copyright Amendment (Parallel Importation) Bill 2001 (Cth); Copyright Amendment (Parallel Importation) Bill 2002 (Cth). Cf the recommendation of the CLRC in its final report on computer software protection that the restrictions on parallel importing of computer programs remain in place, but computer manuals produced separately be subject to the general regime in place for books: CLRC 1995, Recommendation 2.39. Interestingly, the CLRC had moved from its position in its draft report, where the majority had recommended lifting the prohibitions on parallel importation for all software and manuals. Vinje 1999, 207. Phillips & Firth 2001, [14.17]. See the constitutional implications discussed at 1.7. Burrell & Coleman 2005, 279. See Bond & Greenleaf 2013. A related debate concerns the reconceptualisation of the public domain in terms of positive rights of access rather than the more traditional absence of copyright protection: see Bond & Greenleaf 2013. Ricketson & Creswell 2017, [11.25]. For a discussion of the fair dealing defences in the United Kingdom, see Burrell & Coleman 2005. CLRC 1998, [2.01]. IPCRC 2000, 128–9. Attorney-General’s Department 2005. For an analysis, see de Zwart 2006. Copyright Amendment Act 2006 (Cth). Attorney-General’s Department 2008. ALRC 2013, Recommendation 4.1. If not accepted, the ALRC proposed an

224.

225. 226. 227. 228. 229. 230. 231. 232. 233.

234. 235. 236.

237.

238. 239. 240.

alternative: a new fair dealing exception for a range of prescribed purposes extending beyond the current exceptions to include quotation and non-commercial private use: Recommendation 6.1. Productivity Commission 2016, Recommendation 6.1. The government has noted this recommendation and at the time of publication had undertaken to consult further: Australian Government 2017, 7. The Productivity Commission also supported the ALRC on limitations on liability for the use of orphan works: ALRC 2013, Recommendations 13-1, 13-2; Productivity Commission 2016, Recommendation 6.2. The government has supported this recommendation: Australian Government 2017, 7. The purpose of the provision is to ‘ensure that the same product information may accompany all brands of the same medicine irrespective of copyright’ Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No 4) (2011) 94 IPR 244 at [34]. [1972] 2 QB 84 at 94. De Garis v Neville Jeffress Pidler Pty Ltd (1990) 18 IPR 292. For a discussion of this focus on ‘purpose’ in relation to the parody or satire exception, see McCutcheon & Holloway 2016. For an interesting history and analysis, see Bowrey & Bond 2009. See Hawkes & Son (London) Ltd v Paramount Film Service Ltd [1934] Ch 593 for an example of infringement of a musical work by a newsreel before such a provision was introduced into the UK Act. De Garis v Neville Jeffress Pidler (1990) 18 IPR 292 at 299. Ibid at 301–2, citing Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39 at 56. (1990) 18 IPR 292 at 301, citing Pacific & Southern Company Inc v Duncan (1984) 744 F 2d 1490 at 1496. In any event, the defence provided in s 42(1) is only available where the reporting is in a newspaper, magazine or similar periodical, which the press clipping service was not: cf John Fairfax & Son Ltd v Deputy Commissioner of Taxation (1988) 15 NSWLR 620. (1980) 147 CLR 39. For a discussion of Commonwealth v John Fairfax & Sons Ltd in the light of Wikileaks, see Bond 2013. Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39 at 56–7. In the United States the application of a ‘strong’ presumption to this effect has generated considerable controversy, with historians and biographers arguing that they cannot work effectively without being able to draw on the unpublished letters, manuscripts, etc of public figures. It has been claimed that the practical effect of decisions such as Salinger v Random House Inc (1987) 811 F 2d 90 and New Era Publications International ApS v Henry Holt & Co Inc (1989) 873 F 2d 576 has merely been to enrich the estates of such figures since they can demand payment for use of those writings. Cf Time Warner Entertainment Co Ltd v Channel 4 Television Corp plc (1993) 28 IPR 439 where a documentary including clips of the film A Clockwork Orange was held to be fair dealing since the length of extracts was balanced by commentary. Furthermore, the film had been in the public domain despite being restricted in the United Kingdom, and it was not unfair to review it in that way. (1980) 147 CLR 39 at 56. See also Wigginton v Brisbane TV Ltd (1992) 25 IPR 58. (1999) 48 IPR 333. Ibid at 339.

241. 242. 243. 244. 245. 246. 247. 248. 249. 250. 251. 252. 253. 254. 255. 256. 257. 258. 259. 260.

261. 262. 263. 264. 265. 266. 267. 268. 269. 270. 271. 272. 273. 274. 275.

(2002) 55 IPR 112. For previous discussion of this case, see 6.49, 8.23. See also de Zwart 2009. TCN Channel Nine Pty Ltd v Network Ten Pty Ltd (2001) 50 IPR 335 at 387. (2002) 55 IPR 112 at 136. Ibid at 118. Ibid at 132. Ibid at 131, citing the summary of fair dealing principles compiled by Conti J at trial: TCN Channel Nine Pty Ltd v Network Ten Pty Ltd (2001) 50 IPR 335 at 381. (2002) 55 IPR 112 at 136. Brennan 2002a, 163; and see de Zwart 2003; Handler & Rolph 2003. Ogawa v Spender (2006) 68 IPR 503 at 506. AGL Sydney Ltd v Shortland County Council (1989) 17 IPR 99 at 105. See eg Joy Music Ltd v Sunday Pictorial Newspapers (1920) Ltd [1960] 2 QB 60. See eg Williamson Music Ltd v Pearson Partnership [1987] FSR 97. Cf AGL Sydney Ltd v Shortland County Council (1989) 17 IPR 99. TCN Channel Nine Pty Ltd v Network Ten Pty Ltd (2001) 50 IPR 335. His Honour also discussed ‘burlesque’, a vulgarised form of parody: ibid at 348. Ibid at 348. Ibid at 348. Ibid at 348. For a discussion of the distinction recognised in some US cases, see de Zwart 2007, 16–18. Copyright Amendment Act 2006 (Cth): see 8.38. See Copyright Agency Ltd, ‘Submission to the Senate Legal and Constitutional Affairs Committee on Provisions of the Copyright Amendment Bill 2006’ Submission 29 at [4.22]; Australian Copyright Council, ‘Submission to the Senate Legal and Constitutional Affairs Committee on Provisions of the Copyright Amendment Bill 2006’, Submission 22 at [45]. Commonwealth Attorney-General, Hansard, 19 October 2006, 2. McCausland 2007, 291. Ruddock 2006. Sainsbury 2007; McCausland 2007, 291–2. See discussion at CLRC 1988a, [44], [165]–[167]; Attorney-General’s Department & Department of Communications and the Arts 1994, [3.67]. Copyright Amendment (Disability Access and Other Measures) Act 2017 (Cth). Section 10(1) definition of ‘copyright material’ means anything in which copyright subsists and avoids the duplication of the defence in Pts III and IV. It appears in a new Pt IVA: uses that do not infringe copyright. Section 113E replaced the former exception in s 200AB(4): Copyright Amendment (Disability Access And Other Measures) Bill 2017 Explanatory Memorandum, 6. CLRC 1996, 13. Lessig 1999, 126. See eg Brudenall 1997; Vinje 1999; Forsyth 2001. CLRC 2002, [7.48], [4.145]. Ibid, [7.25]. See 8.38. ALRC 2013, Recommendations 20-1, 20-2.

276.

277. 278. 279. 280.

281. 282. 283.

284. 285. 286. 287. 288. 289. 290. 291. 292. 293. 294. 295. 296. 297.

Productivity Commission 2016, Recommendation 5.1. The government has supported this recommendation in principle. At the time of publication, a review of the Copyright Regulations was proposed that would consider these matters, among other things: Australian Government 2017, 4. Section 10(1) definition of ‘material’ means anything in which copyright subsists and avoids the duplication of the defence in Pts III and IV. It appears in a new Pt IVA: Uses that do not infringe copyright. Section 113F replaced the statutory licences for institutions assisting persons with print or intellectual disability: Copyright Amendment (Disability Access and Other Measures) Bill 2017 Explanatory Memorandum, 6. Section 113F(b). ‘Library’ and ‘archives’ are defined to limit the exceptions to institutions with collections accessible to the public, either directly or indirectly through interlibrary loans, or to members of Parliament: ss 49(9), 50(10), 113G. ‘Key cultural institutions’ is defined in s 113L: these are bodies administered under Commonwealth or state laws for the maintenance of library or archive collections, or institutions prescribed by the Regulations. See eg APRA Ltd v Tolbush Pty Ltd (1985) 62 ALR 521. Copyright Amendment Act 2006 (Cth). Illegal copying of sound recordings and home taping of broadcasts had been rife for many years in Australia before these exceptions were introduced. An attempt was made in 1989 to introduce a blank tape royalty scheme: Copyright Amendment Act 1989 (Cth). However, the scheme was successfully challenged on constitutional grounds by the Australian Blank Tape Manufacturers Association. The blank tape royalty was regarded by the High Court as a tax, and so could not be introduced in legislation that dealt with other matters simultaneously: Australian Tape Manufacturers Association Ltd v Commonwealth (1993) 176 CLR 480. The scheme was never re-enacted. Commonwealth Attorney-General, Hansard, House of Representatives, 19 October 2006, 1. Ibid. This replaced an earlier version of s 111 that allowed copying of broadcasts for private use, but not the underlying works. (2012) 95 IPR 321. Ibid at [89]–[90]. The terms ‘space shifting’, ‘format shifting’ and so forth are not used in the legislation. Also certain individuals with print disabilities, now removed: Copyright Amendment (Disability Access and Other Measures) Act 2017 (Cth). Commonwealth Attorney-General, Hansard, 19 October 2006, 2. Senate Standing Committee on Legal and Constitutional Affairs 2006, 24–7. See eg Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39. A very limited exception: see discussion in CA Inc v ISI Pty Ltd (2012) 95 IPR 424 at [350]– [351]. Considered in Software AG (Australia) Pty Ltd v Racing & Wagering Western Australia (2009) 175 FCR 121 at [67] (confined to security testing the original copy). Ricketson & Creswell 2017, [11.170]. It was precisely this sort of provision that the CLRC recommended should apply to

298. 299.

300. 301. 302. 303. 304. 305. 306. 307. 308. 309. 310. 311.

312. 313. 314. 315. 316.

317. 318. 319. 320. 321.

certain other defences as well: see 8.44–8.45. See also the ‘normal use’ defence in relation to computer programs discussed at 8.54. See eg Hyde Park Residence Ltd v Yelland [2001] Ch 143; Ashdown v Telegraph Group Ltd [2002] Ch 149; HRH Prince of Wales v Associated Newspapers Ltd [2008] Ch 57 at [178]– [180]; Associated Newspapers Ltd v His Royal Highness The Prince of Wales [2008] Ch 57 at [82]–[83]. Note, however, that the possibility of such a defence is specifically preserved by s 171(3) of the Copyright, Designs and Patents Act 1988 (UK), which has no counterpart in the Australian statute; and the British position is also affected by the Human Rights Act 1998 (UK). See Sims 2006. (1980) 147 CLR 39. Ibid at 57. (1990) 19 IPR 44. See also Thomas 2003. As to the application to copyright suits of other equitable defences such as laches, acquiescence and delay, see Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd (1999) 46 IPR 339. See eg Glyn v Weston Feature Film Co [1916] 1 Ch 261. See Bently & Sherman 2014, 122; Sims 2008. Venus v Fraserside (2006) 70 IPR 517 at 536–9. Collier Constructions Pty Ltd v Foskett Pty Ltd (1990) 19 IPR 44: see 8.56. Venus v Fraserside (2006) 70 IPR 517 at 539. See Freiberg 1992. ZYX Music GmbH v King (1995) 31 IPR 207; A-One Accessory Imports Pty Ltd v Off Roads Imports Pty Ltd (No 2) (1996) 34 IPR 332: see also 6.31. For proposals to expand the remedies, see House of Representatives Standing Committee on Legal and Constitutional Affairs 2000, ch 5. Some but not all of these proposals were implemented by the amendments in Sch 4 of the Copyright Amendment (Parallel) Importation Act 2003 (Cth). A plaintiff must elect to seek either damages or account of profits, but not both: Facton Ltd v Rifai Fashions (2012) 95 IPR 95 at [16]. WEA International Inc v Hanimex Corp Ltd (1987) 10 IPR 349 at 354. Note also s 121, to the effect that any defence that would have been available against the owner may also be pleaded against the licensee. Note that a party who is added as a defendant in this way but does not enter an appearance or take part in proceedings will not be liable for costs: s 125. See also ss 122–123 as to the assessment of damages and apportionment of profits recovered. See eg EMI Records Ltd v Kudhail (1983) 4 IPR 513; Sony Music Entertainment (Aust) Ltd v CEL Music Pty Ltd (2002) 54 IPR 289; Brilliant Digital Entertainment Pty Ltd v Universal Music Australia Pty Ltd (2004) 63 IPR 373; but see also Sky Channel Pty Ltd v Yahmoc Pty Ltd (2003) 58 IPR 63; Foxtel Management Pty Ltd v Mod Shop Pty Ltd (2007) 72 IPR 1 (illegal broadcast decoding devices). Copyright Amendment (Online Infringement) Act 2015 (Cth). Section 115A(2). See Roadshow Films Pty Ltd v Telstra Corp Ltd (2016) 122 IPR 81. Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd (2007) 157 FCR 564 at [17]. Ibid at [18]. See LED Builders Pty Ltd v Masterton Homes (NSW) Pty Ltd (1994) 30 IPR 447 at 466–8; Robert J Zupanovich Pty Ltd v B & N Beale Nominees Pty Ltd (1995) 32 IPR

322.

323. 324.

325.

326. 327. 328.

329.

330. 331. 332. 333. 334. 335.

339 at 355; A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (No 2) (1996) 34 IPR 332. As to the remedy of account of profits, see 2.16. See Golden Editions Pty Ltd v Polygram Pty Ltd (1996) 34 IPR 84; Milwell Pty Ltd v Olympic Amusements Pty Ltd (1999) 85 FCR 436. Section 115(3) provides that the plaintiff remains ‘entitled’ to an account in this situation, though it appears the court retains the discretion to refuse it: see Davidson & Cleary 2003, 958. The defence is not available simply because the defendant is unaware of the identity of the owner: Corby v Allen & Unwin Pty Ltd (2013) 297 ALR 761 at [101]. Sutherland Publishing Co Ltd v Caxton Publishing Co Ltd [1936] Ch 323 at 326; Prior v Lansdowne Press Pty Ltd [1977] VR 65. See eg Interfirm Comparison (Australia) Pty Ltd v Law Society of NSW (1975) 6 ALR 445; Autodesk Australia Pty Ltd v Cheung (1990) 17 IPR 69; Bailey v Namol Pty Ltd (1994) 30 IPR 147; Columbia Pictures Industries Inc v Luckins (1996) 34 IPR 504; Eagle Rock Entertainment Ltd v Caisley (2005) 66 IPR 554; Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd (2009) 81 IPR 378. See eg Bailey v Namol Pty Ltd (1994) 30 IPR 147; Raben Footwear Pty Ltd v Polygram Records Inc (1997) 37 IPR 417; FNH Investments Pty Ltd v Sullivan (2003) 59 IPR 121. These are additional damages, and can only be awarded if damages, rather than account of profits, have been awarded under s 115(2): see Facton Ltd v Rifai Fashions (2012) 95 IPR 95 at [31]. In Facton the Full Court avoided duplicating damages in that case across copyright and passing off: at [10]. Entertainment (Australia) Ltd v Smith (2005) 64 IPR 18 (violent threats made by the defendants); Henley Arch Pty Ltd v Lucky Homes Pty Ltd (2016) 120 IPR 317 (deliberate concealment of infringing conduct). Nominet UK v Diverse Internet Pty Ltd (No 2) (2005) 68 IPR 131; Universal Music Australia Pty Ltd v Miyamoto (Aka DJ Moto) (2005) 62 IPR 605. Corby v Allen & Unwin Pty Ltd (2013) 297 ALR 761. In this case the publisher of a book about the arrest and imprisonment of Australian traveller Schapelle Corby in Bali for drug trafficking reproduced photographs taken by members of the Corby family without permission. The judge was particularly critical of the publisher’s ‘calculated business decision’ to continue with another print run knowing that no defence was realistically open: at [122]. Facton Ltd v Rifai Fashions Pty Ltd (2012) 95 IPR 95 (a reputation diminished by the sale of counterfeit items). See also Milpurrurru v Indofurn Pty Ltd (1994) 30 IPR 209: see 8.62. This may include electronic copies uploaded to a website: Boyapati v Rockefeller Management Corp (2008) 77 IPR 251 at 267. These terms are defined in s 10(1). Note in particular that a film of a work is not an ‘infringing copy’ for this purpose. As to circumvention devices, see 8.67. For example, an importer who lacks the requisite knowledge under ss 37 or 102: see Young v Odeon Music House Pty Ltd (1976) 10 ALR 153; but cf Infabrics Ltd v Jaytex Shirts Ltd [1981] 1 All ER 1057. See Ricketson & Creswell 2017, [13.1300]. Cf the equitable remedy of delivery up for destruction: see Sutherland Publishing Co Ltd v Caxton Publishing Co Ltd [1936] Ch 323 at 338. See Caxton Publishing Co Ltd v Sutherland Publishing Co Ltd [1939] AC 178; International Writing Institute Inc v Rimila Pty Ltd (1995) 31 IPR 356; Autodesk Inc

336. 337. 338.

339. 340. 341.

342. 343.

344.

345. 346. 347. 348. 349. 350.

351. 352. 353. 354.

v Yee (1996) 35 IPR 415. See Caxton Publishing Co Ltd v Sutherland Publishing Co Ltd [1939] AC 178. Cf Thornton Hall Manufacturing v Shanton Apparel Ltd (1982) 12 IPR 48. See eg Lewis Trusts v Bamber Stores Ltd [1983] FSR 453; Polygram Pty Ltd v Golden Editions Pty Ltd (No 2) (1997) 38 IPR 451. In Venus Adult Shops Pty Ltd v Fraserside Holdings Ltd (2006) 70 IPR 517 at 541 the plaintiff limited the claim for damages under s 115(2) to a nominal figure so that conversion damages could be pursued. Although not a relevant matter in the appeal, French and Kiefel JJ queried the assumption that the plaintiff could elect in that way. Sutherland Publishing Co Ltd v Caxton Publishing Co Ltd [1936] Ch 323 at 336. (1994) 30 IPR 209. Two of the four defendants successfully appealed against the finding that they were responsible for the infringement: King v Milpurrurru (1996) 34 IPR 11; see 2.7. However, the appeal did not involve any challenge to the aspects of the first instance decision discussed below. (1994) 30 IPR 209 at 244, citing Williams v Settle [1960] 1 WLR 1072 at 1086–7. See eg Department of Broadband, Communications and the Digital Economy 2009, 21. The federal government announced in that report that it would consider whether to expand the safe harbour provisions to a wider range of online service providers. The Productivity Commission has recommended that the safe harbour scheme be expanded to cover all providers of online services: Productivity Commission 2016, Recommendation 19.1. The government has supported this recommendation in principle. At the time of publication, further consultation was being undertaken: Australian Government 2017, 24. The term is defined in s 10 as having the same meaning as in the Telecommunications Act 1997 (Cth). Jane Ginsburg and Sam Ricketson explain the ‘merry chase’ that pursuit of this definition takes one upon and conclude that it covers what was traditionally called a ‘phone company’ and not the wider services of operating or hosting websites: Ginsburg & Ricketson 2008, 29–30. Department of Broadband, Communications and the Digital Economy 2009, 22. Copyright Regulations 1969 (Cth) Pt 3A. Universal Music Australia Pty Ltd v Cooper (2005) 150 FCR 1 at [108]. See S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1980) 30 ALR 657. As to the principles for assessing damages in such cases, see Bell v Steele (No 3) (2012) 95 IPR 574. S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1980) 30 ALR 657. If a breach can be shown, however, it does not matter that the copyright in question belongs to someone other than the defendant: see Avel Pty Ltd v Multicoin Amusements Pty Ltd (1990) 171 CLR 88. There are also a range of other offences scattered throughout the Act, for instance for unauthorised recording of performances or making false or misleading declarations. Copyright Amendment Act 2006 (Cth), which commenced operation on 1 January 2007. The fault element that applied before 1 January 2007 was whether a person knew or ought reasonably to have known: see Pontello v Giannotis (1989) 16 IPR 174. See eg Vu v New South Wales Police Service (2007) 73 IPR 531. A video shop owner sold counterfeit DVDs; an original sentence of six months’ periodic detention was

355. 356. 357. 358. 359. 360.

reduced on appeal to a three-year good behaviour bond and a penalty of $5000. Le v R (2007) 74 IPR 1. See also LY v R (2014) 110 IPR 1. Copyright Amendments Act 2006 (Cth). The pre-2006 provisions were considered in Stevens v Kabushiki Kaisha Sony Computer Entertainment (2005) 224 CLR 193. Such as the region codes in Stevens v Kabushiki Kaisha Sony Computer Entertainment (2005) 224 CLR 193. Or as prescribed in the Regulations. See Sheppard et al 2001. There are also criminal provisions: see 8.66.

[page 276]

CHAPTER 9 Moral Rights and Related Rights INTRODUCTION 9.1 This chapter brings together five sets of rights that are related to copyright, but are not copyright as that concept was traditionally understood in Anglo-Australian law. Each has been introduced relatively recently in Australia, at least in terms of copyright history, with various forms of public lending rights schemes from the 1970s, performers’ rights and circuit layouts in 1989, moral rights for authors in 2000, moral rights for performers in 2007, and the resale royalty right for visual artists in 2009. Each of the five has a close relationship with copyright, and indeed moral rights and performers’ rights have been incorporated into the Copyright Act itself. While circuit layouts, resale royalty rights, and public lending rights have sui generis legislation, they also have a close relationship with copyright. Some readers may disagree with our decision to separate out moral rights in a chapter that otherwise deals with rights ‘related’ to copyright. From an author’s perspective, moral rights are an integral part of copyright. Some European countries have a long tradition of moral rights for authors and in those countries the idea that moral rights would be discussed separately from economic rights, and be located alongside performers’ rights, would seem very strange indeed. In the European tradition, a distinction has been drawn between the ‘authorial’ rights protected under the Berne Convention and ‘neighbouring’ rights that are granted to performers and producers of material such as sound recordings and broadcasts1and are protected [page 277]

under the Rome Convention.2The division in Australian copyright law between ‘works’ and ‘other subject matter’ (discussed at 5.10) hints at that division, but as will be discussed below in relation to moral rights, Australian law has never quite treated film as an ‘authorial’ work as the Berne Convention does. Following an English tradition, Australian law dealt with copyright as primarily an economic right and took a very long time to embrace moral rights for authors. When moral rights were finally introduced in 2000, the complex provisions, with myriad special stipulations, exemplified the torturous negotiations that had been conducted with economic rightsholders in a range of industries.3Given that history, this chapter deals with moral rights and rights related to copyright.

MORAL RIGHTS Background 9.2 Moral rights centre around the author or creator of material in which copyright subsists and have long been known in Europe and other countries. The components of the European conception of moral rights include: ‘paternity’, the right of the author to be made known to the public as the creator of the work; ‘integrity’, which prevents distortion of the work; and the right to choose whether to disclose or divulge.4The term ‘moral’ does not bear its English meaning concerned with proper conduct; rather: ‘“spiritual”, “noneconomic”, and “personal” convey something of the intended meaning’.5 These rights are completely independent of the author’s economic rights and continue to exist even after those rights have been sold or otherwise transferred away. In Meskenas v ACP Publishing Pty Ltd,6copyright in a portrait of renowned cardiac surgeon Victor Chang was held to be owned by the doctor’s estate, not the artist. However, the artist was able to assert his moral right of attribution, and right not to have authorship falsely attributed, against the publishers of the magazine Woman’s Day when Princess Mary was photographed standing beside the portrait. The caption to the photograph attributed the portrait to the wrong artist.

Introduction of moral rights in Australia 9.3 Australia had been obliged to protect authors’ moral rights under the Berne Convention for over 60 years7before they were formally incorporated into the Copyright Act in 2000. For much of that time Australia, and also the United Kingdom,8argued that other laws offered sufficient protection. In July 1988 the [page 278] Copyright Law Review Committee (CLRC) recommended against the introduction of moral rights for authors into Australian copyright law. The majority of the CLRC were of the view that the existing legal framework provided some protection for such rights, including through: contractual arrangements between an author and user of the work; s 190 of the Copyright Act, which at that time prohibited false claims of authorship; and actions in passing off to prevent the misappropriation of reputation, and under what was then s 52 of the Trade Practices Act 1974 to prohibit misleading or deceptive conduct: see Chapter 16. Despite the limitations of these avenues of protection, the CLRC considered that there were practical problems associated with the protection of moral rights, that the move would be electorally unpopular and a waste of legislative time in view of the apparent infrequency of violations of moral rights, and that there was a lack of identification of a theoretical basis for moral rights protection in a common law system.9 The recommendations, which attracted some criticism,10were made despite the fact that the moral rights of authors are recognised in Art 6bis of the Brussels (1948), Stockholm (1967) and Paris (1971) Acts.11 The minority views in the CLRC report, that Australia should have legislation conferring at least the right of attribution and

integrity on authors, were based on a number of grounds. These included that there was a demand from a sufficiently significant section of the copyright community that believed such legislation was fair and equitable and necessary to give effect to Australia’s treaty obligations, and that the worldwide trend was towards recognition of such rights.12 Despite the CLRC report, the issue of moral rights did not die away, and as part of the ‘assiduous cultivation of arts industries’13 by the Keating Labor Government, moral rights remained on the agenda, leading to the release of a discussion paper in June 1994 prepared jointly by the Attorney-General’s Department and the Department of Communications and the Arts.14 The discussion paper considered the CLRC’s 1988 report but, unlike the majority on that occasion, went on to propose amendments to the Copyright Act to recognise the rights of attribution and integrity [page 279] for authors of literary, dramatic or artistic works, composers of musical works and directors and producers of films. A further spur to introducing such rights was the desirability of accession to international conventions protecting films, sound recordings and new technologies, including the ‘internet treaties’ referred to in 5.9. Although an exposure draft of legislation to give effect to these proposals was released in February 1996, and the incoming Howard Government committed itself to introducing a moral rights regime, it took a further four years for the Copyright Act to be amended. The intervening period was marked by continuing debate over two issues in particular: whether and to what extent it should be possible for moral rights to be waived by the author; and more generally how they should apply in relation to films, where screenwriters in particular mounted an ultimately successful campaign to be placed on an equal footing with directors and producers. Eventually the Copyright Amendment (Moral Rights) Act 2000 was passed by parliament, taking effect in December of that year.

Moral rights were extended to performers whose performances are captured on sound recordings in 2007 as a result of bilateral free trade agreements that required Australia to accede to the WIPO Performers and Phonograms Treaty (WPPT): see 21.38. There have been relatively few moral rights cases brought before the courts since 2000. This is more likely to be attributable to the costs of legal proceedings and the inaccessibility of the courts to artists than to the absence of breaches of the rights. Facts concerning an artist’s moral rights emerged in a recent defamation case brought by an art collector against a newspaper. The Sunday Telegraph published an article in 2015 entitled ‘Painter has Art Attack After Buyer “Ruins” Work’. The article reported allegations that a purchaser of a five-panel work by artist Del Kathryn Barton had split the work by selling one of the panels. The art collector, Damien Vass, claimed the newspaper had published defamatory imputations that he had damaged the work and infringed the artist’s moral rights.15 Significantly, the case concerned the art collector’s reputation, not the artist and her moral rights.

The moral rights provisions16 9.4 Part IX to the 1968 Act provides the authors of literary, artistic, musical and dramatic works, and also cinematograph films, with a right of attribution of authorship (Div 2), rights against false attribution of authorship (Div 3) and a right of integrity: Div 4. Part IX is detailed and extremely (some would say unnecessarily) complex. The debates surrounding the application of moral rights in the film industry are reflected in the number of provisions that apply separately or differently to films. Hence, while, for instance, infringements may ordinarily be pursued in relation to works created prior to December 2000, provided the infringing acts themselves occurred after that date, the rights of attribution and integrity may only be asserted in films (or works included in films) made since the amendments took [page 280]

effect: ss 195AZM–195AZO. Similarly, while the moral rights created by Pt IX generally last as long as copyright in a work, and may be enforced after an author’s death by their legal personal representative, the right of integrity in relation to a film dies with the author: ss 195AM–195AN. In the case of a film, the definitions in s 189 make it clear that a director, screenwriter and producer can all claim status as an author, though only in each case if they are the ‘principal’ person in that role: s 191.17 Corporate producers are excluded, however, as only individuals can have moral rights: s 190. The Pt IX provisions were made even more complex when moral rights were extended to performers. Alongside the rights of authorship are now the rights of attribution (and against false attribution) of ‘performership’, and rights of integrity of ‘performership’: Divs 2A, 3A and 4A. ‘Performership’ is defined to mean participation in a performance, but is confined to performances consisting of sounds: s 189. Other than that limitation, ‘performance’ has the same meaning as used in Pt XIA for performers’ rights and includes performances of dramatic, musical and literary works, improvisations, circus and variety acts, and expressions of folklore: s 248A(1); and see 9.11. To streamline the following discussion it has been confined to moral rights of authorship, but readers should keep in mind that the rights of performership also interweave these provisions.

Attribution 9.5 An author has the right to be identified as such if any ‘attributable acts’ are done in respect of their work: s 193. These acts differ somewhat according to the type of work involved, but include reproducing, publishing, performing or exhibiting the work, or communicating it to the public: s 194.18 The identification must be clear and reasonably prominent: ss 195AA–195AB. Any reasonable form of identification may be used, though if the author makes known their desire to be identified in a certain way (such as through a pseudonym), this must ordinarily be accommodated: s 195. Unlike some other countries, however, no express right is conferred to remain anonymous. The right of attribution is also qualified by the

fact that it is a defence to any action for infringement to establish that it was ‘reasonable in all the circumstances not to identify the author’: s 195AR. Factors to be taken into account for this purpose include: the nature and purpose of the work; the manner or context in which it is used; any industry practice or code of practice relating to the work or its use; any difficulty or expense likely to be incurred in identifying the [page 281] author; and whether the work was made pursuant to an employment contract or contract for services. In practice, for example, this would excuse many organisations from worrying about attributing authorship in relation to mundane paperwork or computer files. In Corby v Allen & Unwin Pty Ltd19 the publisher of a book about the arrest and imprisonment of Australian traveller Schapelle Corby in Bali for drug trafficking reproduced photographs taken by members of the Corby family without permission. This was a copyright infringement and also an infringement of the moral right of attribution because the photographers were not identified. Allen & Unwin argued that it was industry practice that authorship of photographs is not always attributed and so it was reasonable in this case not to attribute. The s 195AR defence failed. Buchanan J was not convinced that the publisher was following any particular industry practice and held that it would not have been difficult to establish authorship.20 An author may also complain about various forms of false attribution of authorship: ss 195AC–195AH.21 Again, these vary according to the character of the work, but include inserting or affixing a person’s name on a work so as to falsely imply that they are an author of the work and ‘dealing with’ (that is, selling, hiring, exhibiting, distributing or publishing) a work on which a person’s name has been inserted or affixed, in the knowledge that the person is not the author. It is also false attribution for work of an author that has been altered by someone else to be dealt with as their unaltered

work. It is important to note that it is the author of a work who has the right to bring an action for false attribution of their work.22 If an artistic work is falsely attributed to a well-known artist (what would in everyday language be called a fake) these provisions in the Copyright Act will not assist the artist whose name has been used wrongly. In such a case the artist must rely upon consumer protection legislation or an action in passing off: see Chapter 16. In Blackman v Gant the well-known Australian artists Charles Blackman and Robert Dickerson succeeded in their fair trading and trade practices actions against a valuer who had misrepresented faked works as being genuine.23

Integrity 9.6 The right of integrity is the right to not have work subjected to ‘derogatory treatment’: s 195AI. Derogatory treatment is defined to mean distorting, mutilating or materially altering a work, or indeed doing ‘anything else’ in relation to a [page 282] work, in such a way as to prejudicially affect the author’s ‘honour and reputation’: ss 195AJ–195AL.24 In Perez v Fernandez a disc jockey and music promoter, Fernandez, distorted the work of a rap artist known as ‘Pitbull’ by substituting words spoken by the rapper in another context into a song. The altered recording that was made available on the internet misrepresented a connection with the promoter. This was held to be prejudicial to the author’s ‘honour or reputation’.25 The right of integrity is significantly qualified by the availability of a defence of reasonable treatment similar to that described above in relation to the right of attribution, judged in light of a similar list of factors: s 195AS.26

Infringement 9.7 Moral rights are directly infringed by doing an attributable act without identifying the author, doing an act of false attribution, or subjecting a work to derogatory treatment, in breach of the rights described above: ss 195AO–195AQ.27 Indirect infringements, in the form of importing or commercially dealing with an infringing article (for example, a painting or copy of a film that has been subjected to derogatory treatment), are also prohibited where the person concerned knew or should have known of the infringement: ss 195AU–195AV. Neither type of infringement is an offence, but civil remedies may be granted by a court in the form of an injunction or declaration, damages for any loss sustained, an order for the defendant to publicly apologise, or an order that any false attribution or derogatory treatment be removed or reversed: ss 195AZ–195AZA. Damages recovered for infringement of moral rights are to be taken into account when assessing damages for copyright infringements arising out of the same events, and vice versa, and so double counting is not allowed: s 195AZGG.28 9.8 In the Corby case29 Buchanan J made a declaration that the moral rights of attribution of the photographers had been infringed. However, no loss had resulted from lack of attribution: there was ‘no reason to conclude that any of the applicants would have wished their name to be published in connection with a photograph’.30 Nor was there any basis for aggravated damages.31 While the applicants had [page 283] experienced distress caused by publication of the photographs, it had been as family members and not as the authors of photographs.32

The loss or non-exercise of moral rights 9.9 One function of moral rights should arguably be to shore up the economic potential of protected material by increasing the bargaining power of the creator in negotiating with publishers,

producers or employers. It is far from clear, however, whether this will occur in practice under the Australian provisions. The moral rights accorded under Pt IX are personal to the author and cannot be assigned to third parties: s 195AN(3). Contrary to earlier proposals, the Act makes no mention of the rights being able to be ‘waived’ by authors. However, the concept is effectively preserved through provisions which allow authors to give written ‘consent’ to acts or omissions that might otherwise infringe their rights: ss 195AW– 195AWA. Some limitation on the routine exaction of such consents is imposed by the need to specify the works or types of work in relation to which the consent is to operate, and also (except where films are concerned) the type of acts or omissions to be covered. However, a significant exception allows for blanket consents to be given by employees for the benefit of their employers in relation to all works made or to be made in the course of employment. In practice, it is common for consent clauses to be incorporated as a standard feature of employment contracts drafted by lawyers. The reality is that many publishers and producers are able to insist on limiting (if not entirely eliminating) the exercise of moral rights, through carefully drafted consent provisions. In theory, such provisions have no effect if procured by duress or false or misleading statements: s 195AWB.33 But in practice, it will generally be superior bargaining power and control over the fine print of contracts that can deliver the necessary consents, not threats or deception.

PERFORMERS’ RIGHTS 9.10 Although playwrights, composers, set designers and choreographers may acquire copyright protection for their work, the performer does not gain any copyright protection for a performance as such. Even if the performance is recorded, the copyright will belong to the maker of the film or sound recording: see 7.8.34 Those who write their own material are in a position to enforce their rights against unauthorised recording or copying as long as they are the ‘author’ of the work and not a mere performer;35 and performers may also obtain protection through a

[page 284] contractual arrangement with the producer or entrepreneur which may provide for payment for the performance, and perhaps also for residuals or royalties for repeat broadcasts and ancillary uses. The concept of performing rights as a ‘neighbouring right’ to copyright — something that does not fall within the traditional ambit of copyright but is nevertheless closely related — was recognised at an international level under the Rome Convention 1961 (see 21.30) and was introduced into the Australian Copyright Act in 1989 with Pt XIA. Some commentators at the time asserted that the rights that were introduced were minimal, and intended mainly to allow Australia to join the Rome Convention,36 although on an ungenerous interpretation of the provisions they may not in fact even provide the minimum protection needed for that purpose. To date, performers’ rights have not been extended beyond the rights conferred by the 1989 Act, which last for 20 or 50 years,37 and mean that a performer’s consent is required for the broadcast or recording of a live performance, subject to certain exceptions. The exceptions include recordings made for the purpose of reporting news or current affairs or for criticism or review, as well as recordings of broadcasts of performances where the recording is for educational, private or domestic use or for scientific research purposes. Once consent is given, an authorised recording may be used in any way without further consent being obtained, except that a sound recording may not be used in the soundtrack of a film without permission. Performers have some rights over the use of unauthorised recordings, though only if they can show that the person using an unauthorised recording knew, or ought reasonably to have known, it was not authorised: ss 248G–248J. The legislation confers unassignable civil rights on performers, but unlike copyright these are not property rights. 9.11 ‘Performance’ The sort of performances protected are those of dramatic, musical and literary works and improvisations; dance, circus and variety acts; and expressions of folklore: s 248A(1). News and documentary presentations with an informational content are not

included, and nor are sporting activities and judicial proceedings: s 248A(2). The Copyright (World Trade Organization Amendments) Act 1994 (Cth) removed the requirement that one or more performers (of a group) be an Australian citizen or resident. This was not a change required by the TRIPS Agreement, but was introduced in response to the sale of bootleg recordings of Michael Jackson concerts, not protected here because the artist was a United States citizen and the performance took place in a non-Rome Convention country.38 Protection is now provided to performers from countries which offer reciprocal protection to Australian performers, including the United States: ss 248U, 248V; Copyright (International Protection) Regulations regs 4A, 4B. [page 285] There is no definition of performer in the Australian Act; rather, a performer is a person doing one of the things itemised in the definition of ‘performance’. The term ‘performance’ is defined according to the characteristics of the activity undertaken rather than according to any judgments as to artistry or quality of the performance. This is in line with normal copyright definitions which do not import critical acclaim as part of the definition of subject matter protected by the Act. In the same vein, the Rome Convention defines performers in Art 3 as, inter alia, actors, singers, musicians, dancers, and other persons who act, sing, deliver, declaim, play in or otherwise perform literary or artistic works. The distinction between an actor or singer and others who act or sing is presumably to reinforce the point that quality of performance is irrelevant. 9.12 Extending performers’ rights In May 1995 the Keating Government announced an in-principle agreement to extend performers’ rights to correspond to the copyrights given to the creators of sound recordings and film. In 1997 the Howard Government released a discussion paper on the issue as part of its consideration as to whether Australia should accede to the WPPT.39 The discussion paper put forward a model for extending performers’

rights to include the moral rights of attribution and integrity; the rights to authorise communication to the public of performances and to authorise reproduction, distribution, rental and online transmission; and the right to share with producers the remuneration payable for broadcasting and playing of performances in public. It was considered appropriate to regard producers of phonograms40 and performers together since many issues affect both. The idea of extending performers’ rights was not without critics. The record industry and broadcasters preferred the long-established system of contracts and industrial awards involving performers and those for whom they work. Increasing performers’ rights would add to the complexity and cost of administering those rights, not to mention a corresponding increase in economic power.41 Extending performers’ rights is consistent with the TRIPS Agreement, which equates the rights of performers with those of producers of sound recordings (phonograms) and broadcasters: Art 14. The improvement of performers’ rights (and those of sound recording producers) was also incorporated into the WPPT,42 to which Australia acceded as part of the Australia–United States Free Trade Agreement reforms. Moral rights were extended in Australia to performers whose performances are captured on sound recordings to comply with the Treaty (see 9.4) [page 286] and the definition of ‘maker’ of a sound recording of a live performance was amended to include the performer along with the owner of the first record embodying the recording, usually a recording company: s 22(3A); and see 7.8.

RESALE ROYALTY RIGHT FOR VISUAL ARTISTS Artists’ resale right

9.13 This is another reform that took a very long time to come to fruition. For many years artists’ representatives had supported a resale royalty scheme involving a right to payment to the creator of an artistic work that has increased in value since the original sale (known as droit de suite).43 However, a lack of community support for such a scheme curtailed debate in Australia for some time.44 In 2001 the European Union agreed on a Directive for the general introduction of a droit de suite. Such a right had been in place in several European Union jurisdictions for many years and was introduced in Britain in 2006.45 The impact of the right on the business of auction houses and dealers was controversial.46 The right was introduced in Australia in 2009. The resale right is associated with copyright and the Berne Convention includes a provision on it: Art 14ter. However, the resale right is not a copyright right as that has been discussed in previous chapters and it has been introduced in a separate Act: Resale Royalty Right for Visual Artists Act 2009 (Cth). This is because it is a right to a royalty arising from the resale of original pieces of art — that is, the physical object — rather than a royalty for a copyright use such as reproduction. Nevertheless, the new right has been closely associated with copyright.47 The Explanatory Memorandum to the Bill explained that the right is intended to cover ‘works of art from which artists have limited ability to earn money by exploiting their copyright’ because the value of these works depends primarily upon their being the original object created by the artist.48 The Resale Royalty Right for Visual Artists Act commenced operation on 9 June 2010. However, introduction of the scheme was gradual because it only applied to works created, or acquired by the seller, on or after the date of commencement of the Act when they are later resold through the secondary commercial art market. This protects owners of existing artworks who bought them before the scheme [page 287]

was introduced.49 In June 2013 the former Arts Minister announced a review of the resale royalty scheme. At the time of writing this edition, no report had been released.50

Artworks covered 9.14 The royalty scheme applies to original works of visual art. A non-exhaustive list of works includes the traditional fine arts such as paintings, sculptures, drawings and engravings, along with applied or decorative arts such as jewellery, glassware, ceramics and tapestries. Contemporary art forms such as installations and digital, multimedia, and video artworks are also included: s 7. The resale royalty does not apply to buildings, or plans or models for buildings, circuit layouts, or manuscripts: s 9.

Artists entitled 9.15 Artists, or joint artists, identified as the artist at the time of the commercial resale of their work are entitled to the royalty. Artists must be Australian citizens or permanent residents, or be nationals of a country that offers reciprocal rights: s 14. The right is absolutely inalienable and a waiver has no effect: ss 33, 34. The right lasts for the life of the artist plus 70 years.51 After the death of the artist the right passes by will or under the laws of intestacy, or to others entitled with a beneficial interest: s 15. Successors in title must also satisfy the residency test: ss 12, 14.

Commercial resale 9.16 Artists are entitled to a royalty of 5 per cent (s 18) of the sale price when an artwork is resold, after the first transfer of ownership, in the commercial art market. Commercial resales are those transacted by an ‘art market professional’ in auction houses, art galleries or museums or by art dealers and other such people involved in the industry. The sale price (including GST but excluding other taxes and buyer’s premiums) must be more than $AU1000: s 10. The seller is liable to pay the royalty but the buyer, art market professional, and any agents are also jointly and severally liable to

pay: s 20. The Explanatory Memorandum explains that in practice it is anticipated that the seller and other relevant parties to the resale will include in their contractual negotiations who will pay the royalty, but that in the absence of any such agreement they are all jointly and severally liable. The Act imposes civil and criminal penalties for contraventions. Collection and distribution of the royalties is administered by the collecting society Copyright Agency: see: 22.75. [page 288]

LENDING RIGHTS 9.17 Although a writer, illustrator or other owner of copyright in a book can prevent the unauthorised reproduction of their work, copyright protection does not generally extend to further control of the physical item once a work (or a lawfully made copy of it) has been sold.52 Thus, the Copyright Act gives no control over the lending out of books by libraries (or individuals, for that matter). The organised borrowing system in which libraries engage is of no financial benefit to an author or publisher, apart from revenue generated by the original sale, so that multiple users of a book may benefit without authors or publishers receiving a correlative return. To remedy this, a Public Lending Right Committee was established by s 5 of the Public Lending Council Amendment Act 1976 (Cth). The Public Lending Right Act 1985 (Cth) established a statutory basis for the scheme. The present scheme came into effect on 1 July 1987 and is administered by the Public Lending Right Committee. The committee determines the eligibility of claimants for payment under the scheme. An eligible claimant may be anyone involved in the creation of a book, including authors, illustrators, translators, editors and others. Publishers may also be eligible. All claimants must be Australian citizens or residents or, in the case of publishers, persons whose business consists mainly of book publishing and who regularly publish in Australia. The public lending right (PLR) applies only in respect of loans of

books from public libraries. An educational lending right (ELR) was originally to have been introduced from October 1995 to operate in respect of university and school libraries. The number of ELR claimants far exceeded expectations and in August 1996 the Howard Government announced that in light of funding constraints the scheme would be scrapped and no payments made. This decision could be taken executively since the scheme had only ever been established on an administrative rather than legislative basis. However, in 2000 the government changed its mind and reintroduced ELR payments.53

CIRCUIT LAYOUTS Computer chips 9.18 Also known as integrated circuits, silicon chips or semiconductor chips, a computer chip consists of an electrical circuit in which a connected arrangement of transistors in a threedimensional design performs functions assigned by software and/or hardware within a computer system. The chip in a computer is capable of storing and processing enormous amounts of information. They are employed in a wide range of other home, industrial and commercial equipment with electronic components. There is a constant process of technical advance in the integrated circuits industry and the continued expansion and evolution of information technology presently [page 289] depends upon sustained innovation and development in the capacities of chips. The creation of a new and original computer chip requires extensive research and development (and sometimes some trial and error experimentation) and then a complex design process to arrange the transistors. The earliest designs were achieved by hand drawing maps or plans of the circuit on sometimes enormous pieces of paper

and then painstakingly working out the distribution of transistors into layers. Modern designing utilises computer design programs and is a less cumbersome but still highly skilled and complex task. Design of the circuit is followed by complex process manufacturing technology. Despite the fact that integrated circuits are expensive and time-consuming to create, they can be relatively easily copied. Australia is not a major manufacturer of computer chips. Indeed, few countries are. The United States, Japan, Korea, Taiwan and China have dominated the industry, although Australian computer chips are used in some important innovative items which have achieved success domestically and on the international market, such as bionic ears, heart pacemakers and photo-electric cell technology converting sunlight to electricity. It is also the case that Australia imports nearly all chips used in this country, either already installed in products imported into the country or imported as chips for installation in items manufactured locally.

Australian legislation 9.19 As explained in 6.16, the Copyright Act 1968 was amended in 1984 to make it clear that the ‘instructions’ embodied in computer software may attract copyright as literary works. However, it took a further five years for parliament to address the unauthorised copying of computer chips themselves, as opposed to the programs stored in them. Rather than conferring copyright in the layout of such chips, it was decided instead to create a new or sui generis form of protection, albeit one still modelled on copyright principles. This was achieved through the Circuit Layouts Act 1989 (Cth), which took effect on 1 October 1990.

International precursors 9.20 The Circuit Layouts Act allowed Australia to join the WIPO Treaty on the Protection of Intellectual Property in Respect of Integrated Circuits (the Washington Treaty), which was declared in April 1989: see 21.34. Protection for member countries to the Treaty is provided on the national treatment principle familiar from the Berne Convention. Article 35 of the TRIPS Agreement also now

requires members to provide protection for ‘layout designs’ in accordance with the Washington Treaty. The regime of protection for topographical layouts broadly follows the pattern of similar legislation enacted in the United States, Japan, Scandinavia and Europe. The United States Semiconductor Chip Protection Act 1984 was the first example of such sui generis legislation for a new technology. The first attempts to pass such legislation foundered because of disagreement as to the form and extent of appropriate protection, with some arguing that there should be no protection at all since competition in the industry provided the impetus which made America the world’s leader in chip innovation. The Act attempted to accommodate these different [page 290] points of view, and similar features appear in the Australian Circuit Layouts Act. For example, the chip monopoly is limited in several ways, perhaps most significantly in the Act’s recognition of reverse engineering, analogous to the doctrine of ‘fair use’. This allows the exchange of new information in the industry in that reverse engineering is permissible for the purpose of teaching, analysing or evaluating the concepts or techniques embodied in the ‘mask work’ or plan for the layout. The information thus gained can be used in new designs, but not to replicate the original chip. Chips must be ‘original’, that is, not consist of ‘staple familiar or commonplace designs’, before protection will be given under the Act. The scope of this requirement of originality in the United States legislation is not clear and the Circuit Layouts Act shares this uncertainty: hence the references in s 11 (discussed below) to what is not original, rather than what is. One practical effect of the United States tailor-made chip protection (which took semiconductors outside the ambit of copyright legislation) was that no obligation arose under the Universal Copyright Convention 1952 to grant equivalent protection to foreign chips under the doctrine of national treatment. Congress

was concerned that amendments to the Copyright Act would, under the Universal Copyright Convention or other treaties, mean that foreign chips were protected in the United States, but American chips would not be protected by what were regarded as inadequate copyright laws in other countries. A policy of comity (adopting the level of protection of a foreign law) rather than national treatment (treating foreign and local rights holders equally) was included in the Act. That meant reciprocal protection for United States chips was required before foreign chips could be protected by the Semiconductor Chip Protection Act. In view of the TRIPS affirmation that computer software is to be protected as a literary work, circuit layouts legislation will continue to take second place in the international scheme of protection of computer technology. Nevertheless, the legislation was required to remove any doubt that Australia could continue to import cars, washing machines and other consumer items functioning with silicon chips.

Circuit Layouts Act 1989 9.21 Eligible layouts Under the Circuit Layouts Act 1989, protection applies automatically when an eligible layout is made, as defined in s 5. An ‘eligible layout’ (EL) is an original ‘circuit layout’, which is defined as a ‘representation, fixed in any material form, of the three-dimensional section of the active and passive elements and interconnections making up an integrated circuit’. ‘Integrated circuit’ is in turn defined to mean ‘a circuit, whether in final form or an intermediate form, the purpose, or one of the purposes, of which is to perform an electronic function, being a circuit in which the active and positive elements, and any of the interconnections, are integrally formed in or on a piece of material’. The maker54 of the layout [page 291] must have been an eligible person55 at the time the layout was made, or else the layout must have been first commercially exploitable in Australia or in an eligible foreign country.56

Other key definitions include ‘original’ and ‘commercial exploitation’. In s 11 it is provided that a circuit layout is not original if it involved no creative contribution by the maker; it was commonplace at the time it was made; or its features are dictated solely by the function it is required to perform. Commercial exploitation involves selling, hiring, distributing by way of trade or offering to do so, as well as importing a layout or an integrated circuit made in accordance with the layout: s 8.

Nature of eligible layout rights 9.22 Under the Act, the creator of an eligible layout enjoys the exclusive rights to copy the layout, that is, the ‘plan’ or ‘mask’ for the chip; to make a chip in accordance with the layout; to be the first to commercially exploit the layout or a chip made in accordance with such a layout; or to authorise any of these acts: ss 17, 9. The ‘protection period’ lasts for a minimum period of 10 years calculated, in general, from the time when the layout is first commercially exploited: s 5. EL rights are personal property and are transmissible by assignment, by will and by devolution by operation of law: s 45(1). Assignments, which must be in writing, may be total or partial: that is, an owner may limit an assignment to some only of the rights, or to a certain area or for a certain period: s 45(2), (3). The grant of a licence, which may be exclusive, binds the grantor’s successors: s 45(4). Provision is also made for agreements in relation to the assignment or licensing of future EL rights: s 44.

Infringement 9.23 An infringement of EL rights occurs when a person, acting without the owner’s authority, does anything substantially falling within the scope of the owner’s exclusive rights, although the right of commercial exploitation is only infringed if the person knows or should reasonably know that the owner has given no authorisation: ss 13, 19. In Nintendo Co Ltd v Centronics Systems Pty Ltd57 the High Court held that it is not enough that the defendant be aware that the plaintiff has given no authorisation for their use of the

layout. For infringement to be established, the defendant must also know or have reason to believe that the plaintiff is in fact the owner of the layout rights. On the other hand, the High Court also indicated that a person who had that knowledge would be guilty of infringement even if they were unaware that their particular use of the layout amounted to a commercial [page 292] exploitation and thus fell within the scope of the owner’s exclusive rights. In other words, ignorance of the existence of layout rights or the identity of their owner may constitute a defence, but ignorance as to the extent of those rights may not.

Exceptions and defences 9.24 Certain acts are not to be taken as infringements. These include commercial exploitation, where at the time the layout was acquired or the circuit made, the person did not know, and could not reasonably be expected to have known, that EL rights subsisted in the layout, and provided equitable remuneration is paid to the owner or exclusive licensee of the rights from the time of awareness (s 20); copying for private use or for research or teaching purposes (ss 21, 22); reverse engineering of a layout, including the use or exploitation of any original circuit layout created as a result (s 23);58 and use for defence or security purposes: s 25.

Parallel importation 9.25 Commercial exploitation of a copy of a layout or of a circuit made in accordance with the layout is also excused where the copy or circuit has been acquired as a result of authorised commercial exploitation of the layout here or overseas: s 24(1). Thus, unlike conventional copyright protection (see 8.32ff), the owner cannot prevent parallel importation. It may be different, however, where the imported chip also contains material that attracts its own copyright.

Section 24(2) specifically provides that where the importation and subsequent exploitation of a circuit would not infringe the eligible layout rights in that circuit, neither will they be taken to infringe the copyright in any copy or adaptation of a work ‘contained’ in the circuit. In Avel Pty Ltd v Wells59 this was held to apply not only to works embodied in a circuit at the time it was manufactured, but also to works (in this instance computer programs) subsequently stored there by someone other than the maker of the chip. Section 24(2) makes an exception where the copy or adaptation was originally made in breach of copyright, so that the provision has no effect on pirated works, as opposed to works that were lawfully acquired and embodied in the circuit. But in addition to that, it speaks only of ‘works’ and specifically refers to ss 37 and 38 of the Copyright Act. Hence, it has no application to subject matter other than works, whose importation and exploitation may be prohibited under Pt IV of that Act. This was the case in Galaxy Electronics Pty Ltd v Sega Enterprises Ltd,60 where the respondent’s video games, involving computer-generated images, were classified as ‘cinematograph films’ under s 10(1) of the Copyright Act and could thus be protected against parallel importing, despite being embodied in lawfully imported circuits. [page 293]

Remedies 9.26 Where an infringement can be made out, the owner (or an exclusive licensee) may obtain an injunction and either damages (including exemplary damages) or an account of profits; except that damages may not be awarded against a person who neither knew nor reasonably should have known that they were committing an infringement: s 27(2)–(4).

Value of circuit layout protection 9.27

Circuit layouts are specifically excluded from copyright

protection as artistic works, and nor indeed can they be registered as designs.61 However, as Avel v Wells and Galaxy v Sega show, a computer chip as a memory device can hold or store embodiments of information which are ‘works’ or ‘subject matter other than works’ within the meaning of the Copyright Act. Except to the extent provided by s 24(2), the ability to assert copyright in such material is unaffected by the exclusion of copyright in the layout itself.

1. 2. 3. 4. 5. 6. 7. 8. 9. 10. 11.

12. 13. 14. 15. 16. 17.

18. 19.

See discussion in Bently & Sherman 2014, 32. The Berne and Rome Conventions are discussed in Chapter 21. For a detailed history, see Banks 2007, 2008. Moral rights were first recognised in France. See discussion in Davies & Garnett 2016, 415–16. Ricketson & Ginsburg 2006, [10.02]. (2006) 70 IPR 172. For an overview of the history of moral rights in Australia, see William McCausland v Surfing Hardware International Holdings Pty Ltd [2013] NSWSC 902 at [841]–[845]. Moral rights were introduced in the United Kingdom in 1988. CLRC 1988a, 10–11. For a rather different set of reasons for rejecting the notion of moral rights, see Loughlan 2000a. See eg Vaver 1988. These are revisions of the Berne Convention 1886 (see 21.27–21.28) and see also Ricketson 1990b. Interestingly, the TRIPS Agreement does not incorporate the Berne moral rights provisions: Art 9 of TRIPS states that ‘members shall not have rights or obligations under this Agreement in respect of the rights or obligations conferred under Art 6bis of the (Berne) Convention or the rights derived therefrom’. CLRC 1988a, 35–6. Cooper 1995, 1. Attorney-General’s Department & Department of Communications and the Arts 1994. Vass v Nationwide News Pty Ltd [2016] NSWSC 1721. For a useful overview of the legislation, comparing it to moral rights provisions in other countries, see Adeney 2001. As to the assertion of moral rights by joint authors, including joint principal directors (etc), see ss 195AZI–195AZL. Specific provision is made for joint authors of a film, or of work included in a film, to enter into a ‘co-authorship agreement’ whereby each agrees to exercise their right of integrity in a joint fashion: s 195AN(4). Cf Rimmer 2002, noting the differences in this regard between the treatment of creative contributors to films on the one hand, and dramatic works such as plays on the other. Note that since moral rights ‘apply in relation to a whole or a substantial part of the work’ (s 195AZH), the right of attribution (as with the other moral rights) may be activated where a work is only partially reproduced, published, etc. See Adeney 2002. Corby v Allen & Unwin Pty Ltd (2013) 297 ALR 761.

20. 21. 22. 23. 24. 25. 26. 27. 28. 29. 30. 31. 32. 33.

34. 35. 36. 37.

38. 39. 40.

41. 42.

(2013) 297 ALR 761 at [130]. This right existed in an earlier form before the 2000 amendments (s 190): Adams v Quasar Management Services Pty Ltd (2002) 56 IPR 385. Meskenas v ACP Publishing Pty Ltd (2006) 70 IPR 172. This was held to be misleading and deceptive conduct. The artists obtained a declaration that the works attributed to them were not by their hand, and an order for delivery up of the faked works: Blackman v Gant (2010) 86 IPR 331. As to the various meanings that might or should be accorded to the terms ‘honour’ and ‘reputation’ in this context, see Ellinson & Symonds 2001; Loughlan 2001. Perez v Fernandez (2012) 260 FLR 1. For a discussion of the case and how the court inferred prejudice to the author’s reputation from the false association, see Lim 2016, 162–3. See also the specific defences set out in s 195AT, concerning for instance relocation or destruction of moveable artistic works or works affixed to or forming part of a building. Note that in some (though not all) cases the rights are defined in such a way that ‘authorising’ an act may itself be a direct infringement; see also s 195AVA. See Rutter v Brookland Valley Estate Pty Ltd (2009) 81 IPR 549 at 580; Corby v Allen & Unwin Pty Ltd (2013) 297 ALR 761 at [133]. Discussed in 9.5. Corby v Allen & Unwin Pty Ltd (2013) 297 ALR 761 at [134]. Section 195AZA(1)(b). Corby v Allen & Unwin Pty Ltd (2013) 297 ALR 761 at [135]; see also Monte v Fairfax Media Publications Pty Ltd [2015] FCCA 1633. It is also specified in s 195AWA that the author’s consent must be ‘genuinely’ given in relation to works other than films. Curiously, though, there is no such requirement under the corresponding provision (s 195AW) relating to films! This was presumably just an oversight. But see 7.8: the definition of ‘maker’ of sound recordings of live performances has been extended to performers under s 22(3A). Hadley v Kemp [1999] EMLR 589. See Bridge & Baulch 1988. The Copyright (World Trade Organization Amendments) Act 1994 (Cth) introduced s 248CA, which gives a general protection period of 20 years from the end of the year in which the performance was given, but extends protection to 50 years where the TRIPS Agreement requires this, that is, in relation to sound recordings of performances. See Sony Music Australia Ltd v Tansing (1993) 27 IPR 649. Attorney-General & Minister for Communications, the Information Economy and the Arts 1997. ‘“Phonogram” means the fixation of the sounds of a performance or of other sounds …’; ‘“fixation” means the embodiment of sounds, or of the representations thereof, from which they can be perceived, reproduced or communicated through a device’: WIPO Performers and Phonograms Treaty (WPPT) Art 2. For further information on the WPPT see 21.38. Attorney-General & Minister for Communications, the Information Economy and the Arts 1997, 1. See also discussion of the WIPO Beijing Treaty on Audiovisual Performances at

43. 44. 45. 46. 47. 48. 49. 50. 51. 52. 53. 54. 55. 56. 57. 58. 59. 60. 61.

21.39–21.42. Australian Copyright Council 1989. In 2002 the Myer Report into Contemporary Visual Arts and Crafts canvassed the introduction of a droit de suite for Australian creators of artistic works: Myer 2002, 348–53. Statutory Instrument 2006 No 346. In 2008, the UK Intellectual Property Office released a report on the operation of the resale right: Graddy et al 2008. It has been described as artists’ ‘residuals’ in terms similar to those used in the film and television industries. Resale Royalty Right for Visual Artists Bill 2009 (Cth) Revised Explanatory Memorandum cl 7. For the important distinction in copyright law between the intangible or incorporeal property and rights over goods, see 6.6. Resale Royalty Right for Visual Artists Act 2009 (Cth) s 11. See . The same duration as copyright: see 6.58–6.59. The commercial rental right that applies to sound recordings and computer programs is an exception in this regard: see 5.11. For details of the scheme, see . A person will be the ‘maker’ of a layout even if a computer was used to design it: s 10(a). An Australian citizen or resident, a body corporate incorporated in Australia, or such a person from an eligible foreign country: s 5. Foreign countries will only be declared eligible if they are parties to a relevant convention to which Australia is also party or if they extend reciprocal protection to Australian layouts: s 42. (1994) 181 CLR 134. See Nintendo Co Ltd v Centronics Systems Pty Ltd (1991) 23 IPR 119. (1992) 23 IPR 353. (1997) 75 FCR 8. See Copyright Act 1968 (Cth) s 10 (definition of ‘artistic work’); Designs Act 2003 (Cth) s 43(1)(c).

[page 294]

CHAPTER 10 Designs INTRODUCTION Background to design protection 10.1 Consumers show distinct preferences for products that not only function well but also have style. Good design is important for all sorts of items, ranging from kitchenware and bathroom accessories to cars, spare parts, toys, furniture, computer keyboards, pens, trains, phones and light fittings. In fact, the appearance of a whole range of manufactured products may be protected by the designs regime. Good design also aims at making products easy to manufacture, ergonomically sound and ‘user friendly’ and is crucial to the market success of most everyday items. Designing products that the manufacturing industry can sell overseas creates new export markets and reduces the bill for imported products. It is this link between innovative product design and economic success that provides the most obvious justification for having a system for registering new designs. The Australian Law Reform Commission (ALRC) has stated that the primary objective of designs law is to encourage innovation in Australian industry for the country’s net economic benefit, and that it is a key element in innovation and marketing processes.1 Anyone doubting the assumption that marketers regard effective design as important in selling a product would be interested to read the evidence in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd,2 where electric shavers with a triple rotary head were sold on the basis of a ‘motoring theme … a “masculine” association with a fantasy world of fast sports cars — Jaguars and Porsches … [with] the three heads

as three wheels’.3 The Australian designs regime is based on these considerations: it is specifically aimed at preserving ‘to the owner of the design the commercial value resulting from customers preferring the appearance of articles which have that design to that of those which do not have it’.4 [page 295] 10.2 As with so many areas of law, Australia’s registered designs system traces its origins in English history. Design protection became important when the Industrial Revolution made possible the mass production of articles previously produced individually. When England began to lose its pre-eminence as a producer of industrial goods (particularly fabrics), parliament, in an attempt to stimulate and protect manufacturing activity, conferred a ‘copyright’ upon the owner of designs which satisfied certain criteria of novelty or originality. The first designs statute was the Designing and Printing of Linens (etc) Act 1787, which gave protection to designs for certain textiles such as linens, cottons, calicos and muslins. From this developed other statutes giving protection in respect of the ornamentation of any ‘article of manufacture’ as well as the shape and configuration of any such article.5 10.3 For almost a century, Australian designs were registered under the Designs Act 1906 (Cth). However, designers now work in a world of interactive graphics, computer-aided design and networking, allowing design and manufacturing teams to work cooperatively and with reference to a variety of considerations beyond basic visual appeal. In September 1995, the ALRC published its final report6 on designs law following an investigation into the registered designs system, particularly its adequacy and appropriateness in terms of providing protection and remedies for users of the system. The ALRC was asked to modernise and simplify the existing legislation and remove difficulties that had arisen in the operation of the 1906 Act. The ALRC report pointed out that a ‘mismatch’ between modern designs and available legal protection occurred as the scope of

industrial designs has expanded. It may not be sensible to distinguish between, for example, engineering design, fashion design, graphic design, environmental design and systems and processes to achieve a certain end. Where objects and our surroundings are contrived with particular attributes of structure, appearance, safety, function (and others) it is not appropriate to conceive of design protection as confined to simple visual features. The Designs Act 2003 (Cth) repealed the 1906 Act. While many features of the previous registered designs regime remain recognisable, the Designs Act 2003 (Cth)7 was intended to provide a simpler, more cost-effective system that provided industrial designers with rights which were easier to enforce. Conversely, registration is harder to obtain and the term of registration was reduced from 16 to 10 years. The operation and effectiveness of the new designs system was reviewed by the Advisory Council on Intellectual Property (ACIP) in 2012-2015.8 ACIP used administrative data from IP Australia and commissioned a survey of users of the system to study the impact of the 2003 reforms.9 The results were somewhat mixed, [page 296] and ACIP noted a decline in the renewal of registrations.10 ACIP recommended that a number of changes be made, including: making it clear when a registered design had not been examined by using the terminology ‘uncertified design’; removing the option of publication without registration; making it compulsory for a design to be examined before its registration was renewed; introducing a system for opposition proceedings; and introducing a six-month grace period before the filing date.11 The Federal Government responded positively to the ACIP review and accepted most of the recommendations. At the time of writing, the implications of Australia joining the Hague Agreement,12 which would require extending the term of protection from 10 to 15 years, had been left for further investigation by IP Australia.13

In its 2016 Intellectual Property Arrangements report14 the Productivity Commission noted concerns raised by stakeholders about the low uptake of design rights when compared with registration applications for standard patents and trademarks.15 The costs of registration and enforcement were a particular concern.16 The Productivity Commission’s general recommendation that a specialist IP list be established in the Federal Circuit Court for all intellectual property matters, which would introduce small claims procedures and caps on costs and damages,17 was advocated as a low-cost avenue for enforcement of design rights.18 The commission recommended a ‘wait and be convinced approach to joining the Hague Agreement’19 and expressed particular concerns about the extension of the protection period from 10 to 15 years that the Hague Agreement would require.20

Scope of design rights: protecting visual appearance 10.4 Under the Designs Act 2003 (Cth), to be registered, a design must have distinctive visual appeal. ‘Design’ is defined in terms of overall appearance resulting from the visual features of a product. ‘Visual features’ include shape, configuration, pattern and ornamentation of the product: ss 5, 7. There is an important conceptual distinction between the design of a product and the product itself. [page 297]

Protecting functional features? 10.5 At least since 1981, the fact that a design includes features that serve a functional purpose has not operated as a bar to registrability: see 10.18. Nevertheless, the focus must still be on visual appearance. If that appearance is not new and distinctive there can be no design right. Moreover, there is nothing to stop a competitor copying the functional aspects of a registered design without infringement, provided that a different visual appearance is given to

the rival product. As the ALRC noted in its 1995 review, limiting design registration to visual features of products attracted much criticism from designers and manufacturers.21 What many firms want is protection against their designs being copied and losing the benefits of their hard work, whether those designs relate to the visual appearance or to the functioning of their products — or indeed some underlying engineering principle that has guided the creation of those products. Submissions were made to the ALRC review advocating a broader design right that went beyond the more aesthetic aspects of product appearance and protected function directly.22 The ALRC’s recommendation was that the focus of the designs system should continue to be the protection of visual features. It took the view that to provide designs protection for all forms of functional innovation would run the risk of undermining other intellectual property regimes, especially in terms of the level of innovation required to obtain patent rights over a product or process. Any extension to protection should only be countenanced after a broadranging review of intellectual property rights in general, or at least of the patent system.23 The commission also considered an alternative approach which had been suggested as a way of providing appropriate protection for the broader aspects of industrial designs: the creation of an anti-copying right, either to supplement or replace the registered design system, and either limited to designs or more broadly embracing ‘unfair copying’ of any type. However, the commission contented itself with a recommendation that a review be commissioned as to the advantages and disadvantages of introducing such a right.24 In the meantime, it saw its own task to be one of strengthening the present system, not radically recasting it. The Designs Act 2003 (Cth) limited design protection to visual features.25 In 2000 the Intellectual Property Competition Review Committee (IPCRC) formed the view that further changes to address an alleged gap in protection for functionality were not warranted in the absence of evidence of significant social costs due to lost innovation.26 [page 298]

Designs and copyright 10.6 It is not just the potential overlap (or gap) between the designs and patent systems that may create controversy. Where a design is based upon an artistic work, or indeed constitutes such a work, copyright protection may also be available for that work, something that has always presented difficulties. The legislature’s attempts to prevent dual protection have had, at times, unintended consequences; amendments in 1989, designed to straighten out some of the anomalies, created their own problems and this is one of the issues the ALRC was asked to address in its designs reference. The provisions dealing with the design/copyright overlap are considered in 10.30ff.

Registered vs unregistered designs 10.7 When considering a broader anti-copying right in its 1995 review the ALRC noted that there were some strong arguments in favour of a short-term unregistered design right (UDR). A UDR would be cheap, simple and accessible for designers.27 The unregistered right being considered by the ALRC would only have been infringed by copying; as with copyright, independently created designs without copying would not have infringed. The commission also recognised disadvantages with an unregistered system, the primary concern being uncertainty for manufacturers when there is no formal register to refer to.28 There was little support expressed during the review for an unregistered right, and the potential economic impact was unclear.29 The ALRC recommended further review30 and the Designs Act 2003 (Cth) did not introduce an UDR. In its 2012-2015 review, ACIP considered a UDR; it elicited strong submissions both for and against. There could be great advantages for industries that produce products with short ‘life cyles’, such as fashion garments. Submissions to ACIP that were opposed to a UDR again emphasised the potential uncertainty.31 ACIP recommended that unregistered designs should not be introduced.32 In its 2016 Intellectual Property Arrangements report the Productivity Commission supported ACIP’s recommendation against unregistered designs.33

THE REGISTRATION PROCESS Application for registration 10.8 The designs system established by the Designs Act 2003 is administered by IP Australia under the auspices of a Registrar of Designs. Sections 20-61 of the Act deal with application and registration and the procedure is intended to be more [page 299] streamlined than under the 1906 Act. A key difference is that an application for a design will only be examined to check compliance with formal requirements; a substantive examination on the criteria ‘new and distinctive’ may be requested by any person, but will only be undertaken after registration of the design. Applications must comply with minimum filing requirements as set out in the regulations: s 21(2). Section 22 allows for a single application to cover a common design that applies to more than one product, or several designs in relation to a particular product. However, an application can only relate to multiple designs for multiple products where each of those products belongs to the same class specified under the Locarno Agreement on Classification of Industrial Designs: s 40(2)(a).34 The priority date of an ordinary application is the filing date (as determined by the regulations: ss 26, 27(1)(a)). For applications in respect of designs for which protection has been sought within the previous six months in a ‘Convention country’, the priority date is defined in the regulations: s 27(1)(b). ‘Convention country’ means a country that is a member of the union established by the Paris Convention for the Protection of Industrial Property, originally made in 1883, or a full member of the World Trade Organization: s 5A and reg 1.05.35 The priority date for such an application is normally the date of the foreign application, as determined by the regulations: s 27(1)(b). This priority date is important because any design rights

subsequently granted are deemed to commence on that date, so that any infringements after that date may be pursued.36

Ownership 10.9 Normally, the owner of a design who is entitled to register it will be its designer: s 13(1). The designer is the person who created the design; there is no definition of designer, but design and copyright notions of authorship apply. The designer is the person who conceives the design and reduces it to visible form.37 Under s 21, ‘a person’ may apply for registration; s 13 sets out who is entitled to be registered as the owner of a design. Section 13(1) provides that where a person commissions a design they will be entitled to be registered as the owner; and similarly, the employer of a designer acting in the course of employment38 or a person to whom ownership of a design has been assigned, or who is entitled to have the design assigned to them, will be the owner. The subsection also provides for representatives [page 300] of deceased designers and those deriving title by devolution by will or operation of law to be entitled to be registered as the owner of a design. No one else is entitled to be registered as an owner (s 13(4)), and a registration may be revoked by a court39 if one of the original registered owners was not an ‘entitled person’: s 93(3)(b). There is nothing to stop more than one person making an application or being entitled to ownership (ss 21(3), 13(3)), as for example where there are joint designers. In the event of a dispute between two or more persons as to ownership, the Registrar may make a determination as to who is entitled to a design and/or how a design application should proceed (s 29), or entertain an application to revoke a design that has already been granted on the basis that one or more of the owners was not an ‘entitled person’, or that an ‘entitled person’ was excluded: ss 51-52.

Processing the application: choosing registration or

publication 10.10 An application will be considered by the Registrar, who, once satisfied that the design application meets the minimum filing requirements under s 21(2), will issue the applicant a notice to that effect and proceed to publish prescribed details of the application: s 25. If the applicant has not already made such a request in the application itself, the notice will remind the applicant that under s 35 they may request either registration or publication. Under this system, applicants may elect to have their design published rather than go through with the process of registration. Although publication would offer no protection under the designs legislation, the applicant would be safe from any later attempt by someone else to register the same design (which would then lack novelty). Publication could be especially suitable for designers who have large numbers of designs or seasonal/short life products for which registration is too slow, such as in textile or fashion.40 A request under s 35 for either registration or publication must ultimately be made, within the time limits prescribed by the Regulations, in relation to all designs in an application, or the application will lapse: s 33(1)(a). It is possible for an applicant to choose registration for some designs in an application, but publication for others: s 36. Where registration has been requested, this may subsequently be changed to a request for publication instead, but not vice versa: s 38.41 Where registration is requested, the application will proceed to a formalities check: ss 39-40. The matters to be considered at this stage will be prescribed by the Regulations. The Registrar must also consider s 43(1), which precludes the registration [page 301] of designs for integrated circuit layouts (though not their external housing), certain Olympic insignia and any other design proscribed by the regulations.42

If the Registrar is satisfied the necessary formalities are met, and that registration is not prohibited by s 43(1), the design(s) will proceed to registration. The Registrar will enter it or them in the Register, issue the applicant a certificate of registration and publish a notice to that effect: s 45. Various documents associated with the applications will also be published: s 60. If, on the other hand, the Registrar is not satisfied with the design application then the applicant must be given a chance to correct it: s 41. Amendments to the application may be allowed by the Registrar, but not so as to cause the application to include matter not in substance originally disclosed: s 28(3).43 Where an amendment has the effect of excluding a design, that ‘excluded design’ may be the subject of a further application at any time up to the grant or refusal of the original application: s 23(1). Any such further applications obtain the benefit of securing the priority date of the original ‘initial’ application.44

Examination: post-grant 10.11 A significant change to the designs registration system introduced under the 2003 Act is that applications are not to be examined before grant; as discussed above, formalities must be complied with, but the application will proceed if the minimum requirements are met. It is intended that post-grant examination will speed up the grant of design rights and examination will be restricted to a minority of designs, mainly those being litigated. Any person may request examination or a court may order examination: s 63(1).45 Infringement proceedings cannot be launched until a design has been examined and a certificate of examination granted: s 73(3). The Registrar must determine whether there is a ground for revocation of the design: s 65. This includes whether the design is a registrable design within the meaning of s 15, bringing into play the statutory requirements of novelty and distinctiveness: see 10.14ff. If, after giving the relevant parties an opportunity to be heard, the Registrar is satisfied there is no ground for revocation, a certificate of examination will be issued: s 67. If, on the other hand, grounds for revocation are found, the owner must be notified and allowed to resolve any problems through amendment of the application: s 66(3).

However, if the Registrar decides that amendment will not solve the problem, and again after giving the parties an opportunity to be heard, then a notice will be issued stating that the registration is revoked and the Register will be amended accordingly: s 68. There is an appeal to the Federal Court or the Federal Circuit Court against a decision to revoke: s 68(6). [page 302] The result of this system of examination after grant is that there are registered designs that have been through a formalities check but have not yet undergone a substantive examination. ACIP has expressed the following concern about the current system: One consequence of the streamlined process under the Designs Act is that a registered design is not necessarily valid, but may be understood by people unfamiliar with the system as creating enforceable rights. If design owners are confused, this could lead to disappointment or frustration with the system. If third parties are confused, and in particular if they think registered designs are enforceable where they are not, this could lead to unnecessary ‘chilling’ of commercial activity.46 ACIP has recommended a change of terminology so that registered but unexamined designs become known as ‘uncertified designs’ to make their status clearer.47

The Register 10.12 The details to be kept on the Register are set out in s 111 and it may be amended from time to time to record changes in ownership of designs (s 114) and of course where a design is revoked following court action, an ownership dispute or examination: s 115. Any assignee or transmittee of a registered design will, on application, be registered as its owner (s 114(1)), as will persons inheriting the design under the will of a deceased owner: s 114(2). Provision is also made for the details of persons with an inte rest in the design such as

mortgagees or licensees to be noted, although not trusts: s 117. The Register is prima facie evidence of any particulars entered upon it (s 118)48 and may be kept in electronic form: s 112. An unregistered instrument relating to a registered design will not in general be admissible in any proceedings as proof of title to the design or an interest therein: s 119.49 Section 93 allows any person to apply to a court for an order for revocation, though (as with infringement proceedings) only after the design has been examined and a certificate of examination issued.50 The grounds for such an application are that [page 303] the design was not registrable, that one or more of the owners was not an entitled person or that an entitled person was excluded, that the registration was obtained by fraud, false suggestion or misrepresentation, or that the design is a corresponding design to an artistic work in which copyright has expired: s 93(3).51 Importantly, s 93 may be invoked by way of counterclaim to an action for infringement: s 74.

Period of protection 10.13 The term of protection of a design is a maximum of 10 years from the filing date, with an initial five-year period and the possibility of another five years on application by the owner: ss 46-47. Previously, design protection was available for up to 16 years under s 27A of the Designs Act 1906. This is a rare example of a reduction in an intellectual property protection period. Under the ALRC’s recommendations, the term of protection was to be 15 years, and this found expression in versions of the Bill until a late stage. However, the Explanatory Memorandum to the 2003 Bill stated that it would not be in Australia’s interests to provide a period of registration in excess of international obligations.52 The period of protection for registered designs will be subject to

further review as part of ongoing investigations into the implications of Australia joining the Hague Agreement.53 If Australia did opt to join the Hague Agreement, the term of protection would have to be increased to 15 years.54 In its 2015 report, ACIP was ‘hesitant to recommend an extension of exclusive rights in the absence of any economic or empirical evidence suggesting that such an extension is necessary’.55 In its 2016 Intellectual Property Arrangements report, the Productivity Commission ‘found no evidence for extending the term of design protection as necessary to encourage innovation’ and concluded that an extension was not warranted.56 The commission argued that: … promoting international consistency in design protection is a poor reason for extending the term of design protection in Australia from 10 to 15 years. It assumes that other countries have struck the right balance between incentives for innovation and the interests of consumers and other businesses.57 [page 304] The commission emphasised the importance of undertaking a costbenefit analysis of the implications of joining the Hague Agreement, and the need to consider the interests of Australian consumers.58

REGISTRABLE DESIGNS General 10.14 A number of criteria must be satisfied for a design to be validly registered. The two main elements of validity relate to the definition of ‘design’ and the innovation threshold requiring both ‘newness’ and ‘distinctiveness’: s 15.

Definition of design 10.15

Design defined: ‘visual features of products’ Section 8

provides that the term ‘design’ is used in the sense of a design relating to a product.59 A conceptual distinction is drawn between the design and the product that embodies it. The definition of ‘design’ in s 5 refers to ‘the overall appearance of the product resulting from one or more visual features of the product’. ‘Visual features’ is explained in s 7: see 10.17. 10.16 Products A product is ‘a thing that is manufactured or hand made’: s 6(1). A design generally applies to the whole product, but the design for component parts of a complex product may be registered if they are made separately: s 6(2). Conversely, a kit of parts can be a product if it forms a product when assembled: s 6(4). With these exceptions, it is not possible to register a design for a part of a product.60 The word ‘article’ used in the 1906 Act was taken to exclude naturally occurring substances and it had further been held that the relevant article must have some function other than that of merely carrying the design;61 it was not the article itself that was protected by a registered design, but rather a conception of visual appearance that might be applied to that article.62 Where three-dimensional features were concerned (shape and configuration), this entailed distinguishing between the ‘fundamental form’ of an article — its shape as an article of that type — and features introduced in order to give it a particular and individual appearance.63 Thus, in [page 305] Re Wolanski’s Registered Design64 a ‘neck-tie support’ could not be registered because the shape defined the article. Similarly, in Kestos Ltd v Kempat Ltd65 a brassiere could not be registered as a design when the article itself could not be distinguished from the design. The Designs Act was considered to give a monopoly in design only and not to the trading of the article to which it was applied: If something said to be a design does not by appeal to the eye take the article beyond the fundamental form of the class of

article under consideration it is not a registrable design.66 The ALRC intended that designs for models of buildings should be capable of protection, although buildings and fixtures had generally been taken to be outside the scope of the term ‘article’,67 except where they were portable and manufactured elsewhere prior to delivery.68 In accordance with the ALRC’s recommendation,69 no special definition was included in the 2003 Act. Thus, buildings or models of buildings may only be the subjects of a registrable design under the Designs Act 2003 (Cth) if they can be considered to fall within the general definition of a product as ‘a thing that is manufactured or hand made’. By contrast, packaging and designs for products with one indefinite dimension, such as extruded roof guttering manufactured in a continuous process, are explicitly given protection. However, there must be some uniformity of appearance in products of indefinite length. Section 6(3) provides that: A thing that has one or more indefinite dimensions is only a product for the purposes of this Act if any one or more of the following applies to the thing: (a) a cross-section taken across any indefinite dimension is fixed or varies according to a regular pattern; (b) all the dimensions remain in proportion; (c) the cross-sectional shape remains the same throughout, whether or not the dimensions of that shape vary according to a ratio or series of ratios; (d) it has a pattern or ornamentation that repeats itself. The requirement that there be a ‘product’ means that designs for screen displays on computers, phones and other such devices will not be eligible on general principles: [page 306] the screen display itself is not a product, but is displayed on a product.70 When a design is related to a physical product, IP

Australia (Designs Office) has adopted a practice that requires the product to be considered in its resting state, which has placed further restrictions on designs for screen displays.71 10.17 Visual features Section 7 is to the following effect: (1) In this Act: visual feature, in relation to a product, includes the shape, configuration, pattern and ornamentation of the product. (2) A visual feature may, but need not, serve a functional purpose. (3) The following are not visual features of a product: (a) the feel of the product; (b) the materials used in the product; (c) in the case of a product that has one or more indefinite dimensions: (i) the indefinite dimension; and (ii) if the product also has a pattern that repeats itself — more than one repeat of the pattern. It is worth noting that the words ‘shape’, ‘configuration’, ‘pattern’ and ‘ornamentation’ that appear in s 7 are taken from the 1906 Act. Looking at the elements of the definition, the terms shape, configuration, pattern or ornamentation refer, in a composite way, to features both two and three dimensional.72 While colour is not specifically mentioned in the definition, the particular colour(s) in which a design is expressed may in some instances be an integral part of that design.73 Under s 19(4) of the 2003 Act, the eye of the court is to be informed by the standard of the ‘informed user’ of the product, at least for the purpose of assessing the distinctiveness of a design: see 10.23. This sort of assessment using an objective standard is familiar from patent law, where patent specifications are to be read from the viewpoint of a person experienced in the field: see 14.17ff. 10.18 Functional aspects of a registered design Products with a ‘designer look’ have a greater market value than those of more pedestrian appearance and good design presumably enhances functionality. While it is the advantage of the visual appeal created by

a designer that the designs system sets out to protect, this inevitably may encompass functional features of a product as well as aesthetic ones. Designs law has at times struggled with allowing ‘useful’ elements to be protected [page 307] even if incorporated in visual features. Section 7(2) of the Designs Act provides that functionality of visual features will be no bar to registration. However, as Franki J pointed out in Edwards Hot Water Systems v S W Hart & Co Pty Ltd,74 there still needs to be an element of appeal to the eye when an article is also functional.75 10.19 Spare parts As discussed above (10.15), a design is defined in terms of the overall appearance of a product (s 5), and a component part of a complex product may be a product in its own right if it is made separately: s 6(2). The fact that a visual feature of a product also has a functional purpose does not preclude registration of the design (s 7(2)): see 10.5. This means that designs for spare parts of complex products may be registered. There has long been contention as to whether spare parts should be protected by designs law.76 Typically, bumper bars, tyre tread patterns, motor vehicle body parts and indeed many other bits and pieces of cars and other machinery may possess the appropriate criteria for registration as designs. Concern has often been expressed as to the potential monopoly effects of protecting spare parts, particularly where the relevant market relates only to that part; for example, if a make of car must be fitted with a particular exhaust system, bumper bar or door panel.77 Submissions supporting both design protection and its abolition were received by the ALRC for its 1995 review; the economic and competition issues were hotly debated on both sides. The ALRC originally recommended a simpler regime referring potentially anticompetitive designs to the Australian Competition and Consumer Commission (ACCC), which would then assess whether the granting of design rights would have the effect of substantially lessening competition in a market. Potentially anti-competitive designs would

be identified by a number of characteristics.78 This would be likely where: (a) the design was a design of a component part; (b) the component part was to be used to repair a product that was durable, likely to require repair during its expected life, and assembled from many component parts; and (c) the component part was manufactured by or under licence from the product manufacturer or importer. If the ACCC decided that the grant of a design right would be anti-competitive, [page 308] registration could be excluded, or allowed subject to certain conditions being met. However, those recommendations did not survive the public comment and government response following the ALRC designs report. The idea of having a law that allowed overlap of copyright and designs protection for spare parts, with some sort of scope for the ACCC to exercise bureaucratic intervention, was not thought workable. In 1999 the federal government response to the ALRC recommendations was to take the course of clarifying the meaning of ss 74-77 of the Copyright Act and the interaction with designs law.79 In 2000 the Intellectual Property Competition Review Committee (IPCRC) also received submissions on the ‘complex issue of how applications for design registration of spare parts (including motor vehicle spare parts) should be treated’.80 The IPCRC considered a submission from the ACCC recommending that design protection be removed from spare parts altogether, and found the proposition to be problematic. For one thing, the IPCRC was concerned that it would be an extremely difficult and administratively complex task to define what constituted a spare part so as to exclude such things from design registration. Even if this could be successfully accomplished, ‘it is likely to lead to complex and arcane legislation which in itself may inhibit innovation and competitive entry’.81 The NRMA and the Australian Consumer Association made a joint submission to the IPCRC indicating that they did not support the Designs Act as it

stood and that changes were required to ensure a reasonable level of competition in spare parts aftermarkets. However, those parties supported the proposed government amendments, and did not seek special treatment for component parts of designs. 10.20 The legislative outcome: ‘spare parts defence’ Having rejected the ALRC’s recommendation, the government canvassed various options for the treatment of spare parts and ultimately the 2003 Act introduced a ‘right of repair’ defence against infringement. Section 72 now provides a defence against infringement of a design where a component part embodying a registered design is to be used for genuine repair purposes (that is, as a spare part), with the onus on the design owner to show that the alleged infringer knew the part sold was not for the purpose of genuine repair.82

New and distinctive 10.21 The innovation threshold: ‘new and distinctive’ Australia, like most countries, requires a minimum standard of novelty before a design may be registered. Article 25(1) of the TRIPS Agreement uses the formulation ‘new or original’ that was also found in s 17(1) of the 1906 legislation. Previously, the requirements were alternatives; designs had to be new or original but did not have to be both.83 [page 309] The ALRC recommended some modification of that test but not so as to conflict with Australia’s international obligations.84 To this end, the Act now states that a registrable design is to be ‘new and distinctive when compared to the prior art base’ as at the design’s priority date: s 15(1). The tests for distinctiveness and infringement now correspond, ‘so that an infringing design is not a distinctive design and vice versa’.85 The higher threshold for design protection is intended to increase the difficulty of obtaining registration; however, once satisfied, the higher threshold is coupled with broader protection against infringement.

This is to meet the common charge that designs under the 1906 Act were ‘always valid, never infringed’. 10.22 ‘New’: prior art base Section 16 provides that a design is new unless ‘identical’ to a design that forms part of the prior art base (s 16(1)), and distinctive unless ‘substantially similar in overall impression’ to existing designs: s 16(2). The concept of novelty ensures that the design is one that has not been known or used before the priority date, which, as noted in 10.8, is generally the date of filing, including the filing date of a foreign application on which a Convention application is based: s 27. As in patent law, the concept of prior publication is a familiar one and the ALRC stated that it includes use in ‘trade magazines, textbooks, dictionaries, pamphlets, patent specifications or any similar document’, a ‘broad interpretation [which] should be maintained’.86 Accordingly, the Act provides a definition of ‘prior art base’ as including designs registered or used87 within Australia or published anywhere, including in other design applications with an earlier priority date: s 15(2). The system of publication as an alternative to registration (see 10.10) will of course amount to prior use that invalidates a later attempt at design registration. However, a design will not be disqualified from registration on the ground of prior use merely because it has been adapted from something not itself novel. In Saunders v Wiel88 a design for a spoon handle made to represent Westminster Abbey was held to have been validly registered; the fact that it was taken from a source to which all the world could resort did not destroy the novelty of the design as applied to an article of that sort.89 Section 17 allows that certain uses of designs are to be disregarded in assessing novelty (and also distinctiveness) and this includes publication without the owner’s consent and certain publications ‘prescribed by the regulations’ concerning [page 310] officially recognised international exhibitions within six months

before application for registration: reg 2.01.90 For the avoidance of doubt, s 16(3) also makes it clear that the validity of a design is not affected by publication or use after the priority date, or by the registration of a design with the same or a later priority date. In addition, special provision is made in s 18(2) for designs that have been taken from artistic works. Where copyright subsists in an artistic work under the Copyright Act 1968 and an application is made by the owner (or with the owner’s consent)91 to register a ‘corresponding design’, that design will not be treated as having been anticipated by use of the artistic work unless that use consisted of commercial dealings by or with the owner’s consent with products to which the design had been ‘applied industrially’.92 Thus, for instance, an artist who draws a cartoon character will be able to publish drawings (artistic works) in newspapers, books or magazines or make a film depicting the character, without prejudicing any subsequent application for registration of a design based on the character. It should be noted, however, that a design that is only registrable by reason of s 18(2) cannot remain registered after copyright in the relevant artistic work expires: s 48(3). 10.23 ‘Distinctive’ The criterion of distinctiveness expresses a requirement for something more than subtle distinguishing features. ‘Special’, ‘noticeable’, ‘captures and appeals to the eye’, ‘bold’ or ‘different’ are how the cases have explained such a quality.93 A design will be taken to be distinctive unless it is ‘substantially similar in overall impression’ to existing designs: s 16.94 Section 19 provides guidance on determining ‘substantial similarity in overall impression’ and stipulates that more weight must be given to similarities between designs than differences: s 19(1). Other factors relevant in determining similarity include: having regard to the prior art base (s 19(2)(a)); taking note of any statement of newness and distinctiveness lodged by the applicant (s 19(2)(b)) or, if there is none, the ‘whole design’ for the product (s 19(3));95 and the overall importance to the design of the particular aspects in which similarity exists: s 19(2)(c). The freedom of the designer to innovate is also made relevant to assessing similarity of overall impression (s 19(2)(d)), as in practice it may be difficult to reconceive fairly common products such as items

of [page 311] furniture in such a way as to come up with a wholly different design.96 The test of ‘substantial similarity’ determines both infringement and eligibility of a design for registration and is discussed further in 10.26 in the context of infringement. In Review 2 Pty Ltd v Redberry Enterprise Pty Ltd97 a design for a sleeveless, V-necked, cross-over or ‘fixed wrap’ dress was held to be validly registered but the monopoly was closely confined. The prior art base included many ‘cross-over’ or ‘fixed wrap’ dresses and there was little scope for a designer to innovate with that element.98 It was the shape of the skirt combined with the pattern of the dress that gave the design its different overall impression from the prior art.99 Importantly, in applying all of the factors listed in s 19 regard must be had to the ‘standard of the informed user’, in the sense of someone who is familiar with the product(s) in question, or at least similar products: s 19(4). The standard is ‘familiarity’ and so informed users do not need to be design experts. In a toothbrush design case an IP Australia hearing officer explained the informed user as follows: ‘the relevant person is not a toothbrush designer nor is it a person who is unaware of what is available in toothbrush design, but would probably include both professionals and consumers who had (in either case) made it their business to be particularly aware of options available by way of the layout of toothbrush bristles’.100 A specialised product might require a specialised informed user. For example in a case involving a refrigeration compressor not typically found on the shelf of a retail store but integrated into other machines, and not bought for its aesthetic appeal, the informed users were specialists familiar with the product such as engineers and designers of large machines and people involved in their repair.101

THE DESIGN OWNER’S RIGHTS Exclusive rights 10.24 The owner of a registered design has the exclusive right102 to do the following (s 10(1)): (a) to make or offer to make a product, in relation to which the design is registered, which embodies the design; and (b) to import such a product into Australia for sale, or for use for the purposes of any trade or business; and (c) to sell, hire or otherwise dispose of, or offer to sell, hire or otherwise dispose of, such a product; and [page 312] (d) to use such a product in any way for the purposes of any trade or business; and (e) to keep such a product for the purpose of doing any of the things mentioned in paragraph (c) or (d); and (f) to authorise another person to do any of the things mentioned in paragraph (a), (b), (c), (d) or (e). Thus owners exercise an exclusive right to make or commercially deal with products that embody the registered design, and may authorise others to exploit those rights.

Exploitation of rights: ownership, transmission and licensing 10.25 The rights of an owner of a registered design are personal property and thus may be assigned or transmitted by operation of law: s 10(2).103 Any assignment must be in writing signed by or on behalf of the owner (s 11), although licences require no formality. Where a registered design is owned by more than one person, it is held by them in equal shares (and thus as tenants in common), with each entitled to make use of it without accounting to the others. Joint

owners must not grant a licence or assignment without the consent of the other owners: s 14. Each of these provisions is subject to contrary agreement. An application for a compulsory licence of a registered design may also be made to a prescribed court by ‘a person’: s 90. The applicant must establish that the design is being applied overseas by manufacture to any article and is not being applied to a reasonable extent in Australia: s 90(3). A person may only apply for a compulsory licence after the design has been examined (s 90(2)) and may apply for revocation of the registration of the design at the end of the period of compulsory licence if the owner of the rights is still recalcitrant about exploiting the design appropriately: s 92.104 Another form of compulsory licensing allows a design to be used for the services of the Commonwealth or a state (s 96), subject to appropriate remuneration to the owner: s 98. The Commonwealth may also compulsorily acquire a design (s 106) or take an assignment thereof: s 107.105

Infringement 10.26 As noted in 10.11, a registered owner may only institute infringement proceedings once the design in question has been examined and a certificate of examination has been issued: s 73(3). Section 71(1)(a) provides that infringement occurs if a person, without the ‘licence or authority’ of the registered owner, makes or offers to make a product in relation to which the design is registered, which embodies a design that is identical [page 313] to, or substantially similar in overall impression to, the registered design. It is also an infringement to import such a product into Australia for sale or any trade purpose, to sell, hire or dispose of such a product (or offer to do so), or to use or keep such a product for a trade or business purpose: s 71(1). In determining whether an allegedly infringing design is

‘substantially similar in overall appearance’, the factors specified in s 19 (and discussed in 10.23) are to be applied: s 71(3). Substantial similarity is decided on the basis of a visual comparison of the registered design and the alleged infringement. This must be a studied comparison, not a fleeting inspection.106 The allegedly infringing product must be compared to the design as it is depicted on the Register, rather than comparing it with one of the applicant’s manufactured products that embodies the design.107 Section 19(1) requires a court to give more weight to similarities than differences, even if they are only part of the product as a whole. In its 1995 report the Australian Law Reform Commission recommended this focus on similarities ‘to overcome the narrow approach of limiting protection to one individual and specific appearance of the article bearing the design’.108 Other factors relevant in determining similarity include: having regard to the prior art base (s 19(2)(a)); and taking note of any statement of newness and distinctiveness lodged by the applicant (s 19(2)(b)) or, if there is none, the ‘whole design’ for the product (s 19(3)).109 The freedom of the designer to innovate is also relevant to assessing similarity of overall impression (s 19(2)(d)). If only part of the allegedly infringing product is substantially similar to the design then the amount, quality and importance of that part in the context of the design as a whole is relevant: s 19(2)(c). This ‘requires the Court to make a qualitative rather than a purely quantitative assessment of the visual similarities and differences between the two designs’.110 Under s 19(4), the court must apply the standard of ‘the informed user’, being a ‘notional’111 person who is familiar with the product to which the design relates and the allegedly infringing product.112 This is intended to introduce an objective test for infringement and result in more transparency and predictability of outcome. The ‘informed user’ is not a design expert,113 but nor are they necessarily an ‘ordinary [page 314]

user’ of the product.114 He or she must be ‘familiar with the product to which the design relates’, or similar products (s 19(4)), but need not necessarily have used the product. While an ‘informed user’ might become familiar with a product by using it, it is not a requirement.115 Informed users do not need to be design experts,116 but they are more informed than an ordinary consumer. A person familiar with a container for packing fruit could be a producer of the package, a person involved in the packing operation, or a ‘sophisticated’ wholesale purchaser. The general body of retail consumers who purchase packaged fruit would not be an informed user, although it is possible that some consumers might have a particular interest.117 In two cases involving a design for a dress, Kenny J in the Federal Court held that women are the ordinary users of such a garment, ‘but not all women have the requisite degree of familiarity to be described as informed users’.118 An informed user of women’s dresses would, her Honour held, be likely to have particular familiarity with fashion trends. The two Review dress-design cases illustrate how the new test giving greater weight to similarities than to differences may be applied: s 19(1).119 Both cases were commenced by Review Australia Pty Ltd for infringement of its registered design for a sleeveless, Vnecked, cross-over or ‘fixed wrap’ dress.120 There was no statement of newness and distinctiveness included in the design application and so the court was required to consider the design as a whole: s 19(3). Kenny J considered the state of development of the prior art base (s 19(2)) which included many ‘cross-over’ or ‘fixed wrap’ dresses. It was the shape of the Review skirt combined with the colour121 and pattern of the dress that gave the design its different overall impression from the prior art. In both cases, the dresses that Review claimed infringed its design were ‘cross-over’ or ‘fixed wrap’ dresses made of different coloured and patterned material. Colour and pattern aside, the New Cover ‘Spicy Sugar’ dress, and specifically the skirt, was otherwise substantially similar (if not identical). While the differences in pattern and colour could not be ignored, the focus on the similarities resulted in infringement.122 Conversely, the Redberry dress had a different shaped skirt that

[page 315] was floppy or blousy looking, while the Review dress was figure hugging to about halfway down, and so the Redberry dress did not infringe.123

Defences 10.27 In terms of defences to infringement, mention has already been made of the ‘right of repair’ defence in s 72 for spare parts: see 10.20. Another new defence featured in the 2003 Act is an ‘exhaustion provision’, excusing from infringement the parallel importation of products to which a registered design has been applied with the licence of the design owner: s 71(2). This is in line with the general lessening of prohibitions against parallel importation, particularly with respect to copyright products: see 8.32-8.37.124 Defendants in infringement proceedings may also counterclaim for revocation of the registered design: s 93. The grounds that may be raised for revocation are: that the design is not a registerable design; that one or more of the original registered owners were not entitled; that another person was entitled to be a registered owner of the design; that the registration was obtained by fraud, false suggestion or misrepresentation; or that the design is a corresponding design to an artistic work in which copyright has expired: s 93(3).

Remedies 10.28 With respect to remedies, the 2003 legislation changed very little from the regime under the 1906 Act. The ALRC report discussed damages awards, reviewed the then current state of the law and endorsed many aspects of existing practice.125 The report recommended against introducing conversion damages for infringement but favoured additional damages in cases of flagrant infringement, following s 115(4) of the Copyright Act in this respect and, accordingly, this finds expression in s 75(3) of the 2003 Designs Act. Actions for infringement may be instituted in a prescribed court (s

73(2)), in which event the Registrar may be given leave to appear: s 76. As noted in 10.11, such proceedings may only be instituted once the design in question has been examined: s 73(3). The relief that a court may grant includes an injunction and, at the plaintiff’s option, either damages (including additional damages126) or an account of profits: s 75(1). The latter remedies may be refused, however, or damages reduced, where at the time of infringement the defendant was unaware that the [page 316] design was registered and, in the case of a ‘primary infringement’ (making or offering to make an infringing product), had taken all reasonable steps to ascertain whether a registration for the design existed: s 75(2)(a).127 In the case of a ‘secondary infringement’ (any other type of infringement such as importation or commercial dealing in infringing products), the criterion for reducing or denying pecuniary relief is subtly different: that the defendant was unaware, and could not reasonably have been expected to be aware, that the design was registered: s 75(2)(b). Importantly, though, awareness of the design is to be presumed where the plaintiff’s product or its packaging is marked so as to indicate registration of the design: s 75(4).128 Where damages are awarded, various measures may be employed so as to compensate the plaintiff for loss in fact suffered as a result of the infringement.129 As with the other intellectual property legislation, action may be taken against unjustified threats of infringement proceedings (ss 77-78),130 with the possibility of a counterclaim for infringement by an aggrieved respondent: s 79. Indeed, a defendant in infringement proceedings may seek revocation of a design by way of defence to those proceedings: s 74.

Jurisdiction of courts 10.29 Chapter 7 of the Designs Act 2003 provides that the Federal Court and Federal Circuit Court have jurisdiction in relation to

matters arising under the Act; however, ‘other prescribed courts’ also have jurisdiction: s 84. ‘Prescribed court’ includes state and territory Supreme Courts: s 5. Part of the ALRC’s task in its 1995 report was to ensure that design protection is adequate, quick, effective and inexpensive. Chapter 13 of the report131 reviewed enforcement and dispute resolution, noting that many of the problems with delay and expense were hardly confined to the designs area. However, of registered design owners who had been involved in litigation, 75 per cent were unhappy with the outcome.132 A variety of measures to educate designers in using the system (along with the suggested substantive changes to the legislation) were canvassed. The suggestion that a specialist intellectual property court be set up was rejected, with the expertise of the Federal Court in design law (and all intellectual property matters) being noted: see 2.19. In its 2016 report the Productivity Commission made a general recommendation that a specialist IP list be established in the Federal Circuit Court for all intellectual property matters, which would introduce small claims procedures [page 317] and caps on costs and damages.133 This was advocated as a low-cost avenue for enforcement of design rights.134

INTERFACE BETWEEN COPYRIGHT AND DESIGN PROTECTION General 10.30 One of the most troublesome areas in the entire field of intellectual property has been the relationship between copyright protection for artistic works under the Copyright Act and protection for registered designs under the Designs Act.135 The fundamental issue arising from the relationship between copyright and designs law

is the policy intent of removing copyright protection for essentially industrial products.136 A closely related issue is the possibility of ‘dual protection’ under both designs and copyright legislation due to the complexity and, in the past, uncertainty over the interaction of copyright and designs law. The policy of excluding industrial designs from copyright protection (or dual protection under both copyright and designs law) is based on the necessity of providing designers and manufacturers with a registration system that is simple to use and where the rights granted last for a finite period of time, after which manufacturers of a product to which an expired design is applied will not infringe. Copyright provides a much longer period of protection and it may be difficult to ascertain ownership of works. This is regarded as likely to hamper innovation in manufacturing. The possibility of dual protection under both designs and copyright law arises because the rights of a copyright owner in a twodimensional artistic work (typically, engineering drawings or plans) include the right to reproduce the work in a three-dimensional form: Copyright Act s 21(3).137 As a result, copyright potentially protects all commercial and industrial products which originate as drawings. Examples include solar hot water systems, pumps, machinery, and spare parts. Indeed, as has been seen in 10.22, s 18(2)138 of the Designs Act provides that prior use of an artistic work will not necessarily deprive a later design based on that work of novelty. In order to prevent copyright owners acquiring what may be considered to be excessive rights to control the industrial application of their artistic works, ss 74-77 of the Copyright Act limit copyright protection [page 318] for works which are applied industrially as designs.139 In their original form, these provisions were criticised for their complexity and for creating anomalies, particularly with respect to unregistrable designs. The anomaly whereby copyright protection remained intact for

unregistrable designs arose because copyright continued to protect an artistic work that did not qualify for design registration. If, for example, that artistic work could be regarded as instructions for building a product140 rather than contributing to the visual appearance of the product, it would be unregistrable as a design. Engineering drawings and blueprints are generally not capable of being designs, but rather provide instructions for building or constructing machinery, spare parts, and so on. This anomaly, which had led to copyright protection being retained for mass-produced items such as spare parts, was intended to be dealt with by the Copyright Amendment Act 1989, which largely removed the possibility of copyright protection for three-dimensional industrial applications of designs, whether or not those designs were registrable.141 The changes, which took effect on 1 October 1990, were introduced following a review of the provisions by the AttorneyGeneral’s Department, and were largely those recommended by the Franki Committee.142 In reviewing these amendments, the ALRC, while supporting the policy underlying ss 74-77 of the Copyright Act, found there was ‘an unacceptable degree of confusion surrounding the designs/copyright overlap’143 and recommended reform of this arcane area. The ALRC reviewed a number of options, ranging from one extreme — repealing the sections outright and allowing full copyright and design protection for all designs — to the other extreme of removing all copyright protection for commercially exploited artistic works by limiting the term of copyright. The favoured option was to repeal ss 74-77 and 21(3), expressly provide that a two-dimensional work is not reproduced by the production of a threedimensional version, and introduce an adaptation right for artistic works into the Copyright Act. The ALRC was clearly of the view that copyright is inappropriate to protect more than copying the drawing, and should not extend to control of marketing of products as such, unless the products are themselves artistic works, [page 319]

being works of artistic craftsmanship, buildings or models. The ALRC’s fallback option was to retain ss 74-77 with modifications to clarify existing policy,144 and this was ultimately the course taken in the 2003 legislation.145

The original provisions: too much protection, too much confusion 10.31 Under the original form of ss 74-77 before the 1989 changes, most commercial use of artistic works used as designs and applied to articles resulted in an initial loss of copyright protection in relation to unauthorised reproduction of the articles in question, so long as the corresponding design had been registered or was registrable. In the case of registered designs, this loss of copyright protection lasted for the period of registration; and in the case of unregistered (but registrable) designs, for 16 years from the date of the relevant articles being marketed. Thereafter, in each case, the loss of protection was extended further: no infringement of copyright in the underlying work would occur in respect of any act falling within the widest possible design monopoly that could have been acquired by registering every other related design under the Designs Act 1906. Apart from their complexity, the most notable feature of these provisions, as mentioned, was that unregistrable designs retained full copyright protection.146 The one statutory mechanism designed to cut down protection for massproduced machinery and the like was the so-called ‘non-expert defence’ in s 71 of the Copyright Act. This provided that a representation of an artistic work in another dimension would not infringe copyright in that artistic work ‘if the object would not appear to persons who are not experts in relation to objects of that kind to be a reproduction of the artistic work’. The ‘non-expert’ in question was the judge hearing a copyright infringement action, who would have to apply the defence once experts had shown that there had in fact been reproduction of the artistic work in question. Decided cases revealed judges who could not recognise a dress having been derived from a sketch147 and, at the other extreme, members of the High Court of Australia who could recognise a solar hot water

[page 320] system as having been derived from the underlying engineering drawings.148 In any event, s 71 was repealed by the Copyright Amendment Act 1989, which introduced amendments to ss 74-77 to limit the design/copyright overlap by making a distinction between use of artistic works and manufacture of industrial products.149 However, the 1989 amendments were not entirely clear and did not necessarily achieve the intended effect.

The revised provisions: ‘corresponding design’ 10.32 A major source of confusion and uncertainty for product manufacturers trying to sort out the design/copyright overlap issue has been the meaning of the word ‘design’ as used in the Copyright Act. Prior to the most recent amendments, it had been held that the word had the same meaning as in the Designs Act 1906.150 However, this implied that a design (drawing) that did not fall within the Designs Act definition was not a ‘corresponding design’ for the purposes of the Copyright Act. As a result, such ‘non-designs’ fell outside the reach of ss 75 and 77 of the Copyright Act and received full copyright protection. Thus, drawings of utilitarian threedimensional articles such as pump parts not registrable as designs (because they constituted a method or principle of construction) remained entitled to copyright protection because the drawings were not ‘corresponding designs’.151 This was an anomalous result contrary to the intention of the legislature to limit copyright protection for utilitarian three-dimensional products.152 The amended definition of ‘corresponding design’ that now appears in s 74(1) of the Copyright Act clarifies existing policy by focusing on the three-dimensional aspects of a design. It refers to ‘visual features of shape and configuration which, when embodied in a product, result in a reproduction of [the artistic work],153 whether or not the visual features constitute a design that is capable of being registered under the Designs Act 2003’.

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Dual protection for ‘flat designs’ 10.33 There is some tolerance of dual protection for artistic works exploited as twodimensional designs (‘flat’ or ‘surface’ designs). These two-dimensional designs continue to receive copyright protection and may also be registered as a design. The previous definition of ‘corresponding design’ in s 74 of the Copyright Act excluded designs consisting ‘solely of features of two-dimensional pattern or ornamentation applicable to the surface of an article’. This exclusion, introduced in 1989, was intended to give effect to the policy that artistic works should continue to receive copyright protection as artistic works when exploited as two-dimensional ‘surface’ designs. Unfortunately, no one ever discovered what a flat design was if not strictly applied to the surface but forming part of an article such as textured designs, bas-relief, embroidery, weaves and knits. This created uncertainty for designers of flock wallpaper and textile manufacturers as to whether their designs would receive copyright protection or should be registered as designs. For the purpose of the amended definition of ‘corresponding design’, it is specifically provided that a design is ‘embodied in a product’ when it is ‘woven into, impressed on or worked into the product’: s 74(2). This should catch artistic works exploited in products such as tapestry, knitted items or carpets, but not (it would seem) anything that involves ‘surface’ printing.154 Artistic works exploited in two dimensions as visual features of pattern or ornamentation, but not ‘embodied in a product’, remain excluded from the definition of ‘corresponding design’ and therefore retain copyright protection.155 This includes (flat) wallpaper, book covers, calendars, greeting cards, CD covers and the like.

‘Embodied in a product’ 10.34 The Federal Court has held that an embroidered logo on a garment (the well-known polo player logo of Polo Ralph Lauren) made up of 784 stitches that protrudes, albeit slightly, from the

surface was not a corresponding design embodied into a product.156 This was not decided on the basis of whether or not the logo was sufficiently three-dimensional, but because the logo design was not ‘embodied’ in the garment. The reference to weaving and working into a product in s 74(2) introduced by the 2003 amendments was intended to clarify that an object such as a carpet embodies a design that is woven into it (rather than applied to the surface). However, the Full Federal Court rejected the respondents’ argument that the words ‘woven into, impressed on or worked into the product’ in the definition of ‘embodied in’ covered something merely because it was woven into something else; the article must ‘embody’ the design. The Full Court interpreted embody as [page 322] ‘give a material or discernible form to an abstract principle or concept’157 and the polo player logo design was not embodied in the garment in that sense.158 The issue of ‘embodiment’ in a product came up again in a case involving two competing swimwear manufacturers.159 The Federal Court held that City Beach infringed copyright in artistic works for a number of floral designs reproduced from Seafolly swimwear. One of the bikinis produced by City Beach featured a diamond pattern smocking embroidery that was held by the Federal Court to be a reproduction of an original artistic work created by the Seafolly designers. Evidence emerged in the case that City Beach employees had ‘provided the Seafolly Senorita garment to [City Beach’s] Chinese manufacturer with instructions to make a swimwear sample as close as possible’.160 City Beach argued that the embroidered fabric was a ‘corresponding design’ (s 74) and sought to rely upon the copyright/design overlap provisions as a defence. Dodds-Streeton J interpreted the Full Court decision in Polo/Lauren161 and its understanding of ‘embodiment’: … not simply or principally because the logo remained conceptually distinct from the garment, but because the

garment was not made in the shape or configuration of the artistic work, irrespective of whether it was three dimensional.162 In the Seafolly case although the smocking was not as distinct or independent of the garment as the polo player logo had been, nevertheless the smocking occupied a small part of the swimwear and the garment was ‘not itself made in the shape or configuration of the artwork’.163 Dodds-Streeton J held that the embroidered artwork was not ‘emodied in’ the garment and was therefore not a ‘corresponding design’ and so the defence was not available to City Beach.164

Registered designs 10.35 As the Copyright Act now stands, s 75 covers the situation where there has in fact been registration of a ‘corresponding design’. As soon as the design is registered, any copyright in the work is not infringed by its reproduction in the course of embodying that or any other corresponding design in a product: s 75. The owner must therefore rely on the design registration (assuming it has not been taken out by someone else with consent) for protection, though copyright protection is retained in respect of uses of the work falling outside the design monopoly and, more particularly, two-dimensional use of the work. Thus, commercial application of a flat or surface design will be disregarded and copyright protection retained.165 [page 323] Furthermore, no account is taken under s 75 of any design falsely registered without the consent of the owner of the design: s 76.

Unregistered and unregistrable designs 10.36 Where a corresponding design has not been registered, s 77 of the Copyright Act provides that copyright protection will still be lost if the design is applied industrially by or with the licence of the copyright owner and the resulting products are marketed in Australia

or elsewhere.166 A design is deemed to have been ‘applied industrially’ when it is applied to more than 50 articles or to one or more articles manufactured in lengths or pieces: s 77(4); Copyright Regulations reg 17. In other situations it will be a question of fact.167 A new subsection, s 77(1A), was added by the Designs (Consequential Amendments) Act 2003 to provide that products illustrated in published patent specifications, or drawings submitted in a design application, will be regarded as having been ‘industrially applied’ and therefore also lose copyright protection under s 77. From the first date on which the products are marketed or the patent specification or design application is published in Australia, any copyright in the relevant artistic work (other than a building, a model of a building,168 or a work of artistic craftsmanship)169 is not infringed by its reproduction in the course of embodying that or any other corresponding design in a product: s 77(2).

Reproductions of artistic works when making non-infringing products 10.37 The Designs (Consequential Amendments) Act 2003 also introduced additional protection against infringement of copyright in artistic works if the reproduction is made in the course of, or incidental to, making or selling a noninfringing product under these provisions. This means that if, as discussed above, it is not any infringement of copyright to embody a corresponding design in a product, it is also not an infringement to produce drawings, casts or moulds as part of the manufacturing process, or depict the product in sales material: s 77A.170

1. 2. 3. 4. 5. 6. 7. 8.

ALRC 1995, 31; see also ACIP 2015, 14. (2000) 48 IPR 257. Ibid at 279. AMP Inc v Utilux Pty Ltd [1972] RPC 103 at 108. See Sherman & Bently 1999, chs 3 and 4. See ALRC 1995, ch 2. All references in this chapter are to the Designs Act 2003 unless otherwise indicated. ACIP 2015.

9. 10. 11. 12. 13. 14. 15. 16. 17. 18. 19. 20. 21. 22. 23. 24. 25. 26. 27. 28. 29. 30. 31. 32. 33. 34. 35. 36. 37.

38. 39.

Ibid, 47. Ibid, 57. Ibid, 10-12. Hague Agreement Concerning the International Deposit of Industrial Designs 1925. The Agreement facilitates the deposit of designs with the International Bureau of WIPO: see 21.57. . Productivity Commission 2016, ch 11. Ibid, 337-8. Ibid, 336. Recommendation 19.2, ibid, 579. The government has noted this recommendation, and at the time of publication a pilot project had been established in the Federal Circuit Court to streamline IP matters: Australian Government 2017, 24. Ibid, 370. Ibid, 351. Ibid, 352. See further 10.13. ALRC 1995, [2.44]. It is also the subject of much ignorance. Many respondents to the ALRC’s design users survey were under the mistaken belief that the designs system confers protection on the way a product works: ibid, [4.44]. Ibid, [3.49]. Ibid, [32.58]. ALRC 1995, [3.59]-[3.71]. A visual feature may also serve a functional purpose, but it is the appearance that is protected: Designs Act 2003 s 7(2): see 10.17. IPCRC 2000, 182. ALRC 1995, [3.63]. Ibid, [3.64]. Ibid, [3.68]-[3.69]. Ibid, [3.71]. ACIP 2015, Appendix D, [5.8]. Ibid, Recommendation 22, [2.8.4]. Productivity Commission 2016, 361. See 21.58. Designs Regulations 2004 (Cth). See Re Application by Johnson and Johnson Consumer Companies Inc (2000) 48 IPR 673 (discussing plural convention priority claims). See Chris Ford Enterprises Pty Ltd v B H & J R Badenhop Pty Ltd (1985) 4 IPR 485 at 491; approved in LED Technologies v Elecspess (2008) 80 IPR 85 at 96; Keller v Led Technologies Pty Ltd (2010) 185 FCR 449. A person who merely follows another’s instructions in producing a drawing or model, etc, does not displace that other as the author: see eg Pearson v Morris Wilkinson & Co (1906) 23 RPC 738; LED Technologies v Elecspess (2008) 80 IPR 85 at 96. The designing must fall within the scope of their employment: Courier Pete Pty Ltd v Metroll Queensland Pty Ltd (2010) 87 IPR 397. Federal Court, Federal Circuit Court or a Supreme Court of a state or territory — see definition of ‘prescribed court’: s 5.

40.

41. 42. 43. 44. 45. 46. 47.

48. 49. 50.

51. 52. 53. 54. 55. 56. 57. 58. 59.

The Advisory Council on Intellectual Property (ACIP) has recommended removal of the option of the publication (without registration): ACIP 2015, Recommendation 5. ACIP noted that the publication regime was not often used, and could cause confusion: [2.3.2]. At the time of writing, the government had accepted this recommendation: . As to the details of what will be published if that option is chosen, see ss 57-60. For example, the Designs Regulations 2004 (Cth) reg 4.06 prohibits designs that resemble Australian currency and so contravene Crimes (Currency) Act 1981 (Cth) s 19(1). See Re Dioguardi (2013) 113 IPR 187. See Chris Ford Enterprises Pty Ltd v B H & J R Badenhop Pty Ltd (1985) 4 IPR 485. See IP Australia, Designs Examiners’ Manual of Practice and Procedure (2003 Act), [11.2]. The Registrar may also examine a registered design on their own initiative, though not where court proceedings regarding the design have been initiated: s 63(2)-(4). ACIP 2015, 19. Ibid, Recommendation 4. At the time of writing, the government had accepted this recommendation: . ACIP also recommended compulsory examination before the first renewal deadline (five years): Recommendation 6. The government has noted this, but it will be considered as part of a larger investigation into the implications of Australia joining the Hague Agreement: see 21.57. This section does not apply in relation to any particulars recorded in relation to a Personal Property Securities Act (PPSA) security interest: s 118(3A). This does not restrict the admissibility in evidence in a court of a document or instrument in relation to a PPSA security interest: s 119(2). ACIP has recommended that a system of post-certification opposition be introduced: ACIP 2015, Recommendation 7. This would be modelled upon opposition processes within IP Australia for other rights, specifically trade marks. Opposition proceedings conducted by IP Australia would offer a low-cost forum in addition to the s 93 revocation process in the courts. At the time of writing, the government had noted the recommendation, but it will be considered as part of a larger investigation into the implications of Australia joining the Hague Agreement: . See 21.57. As to this last ground, see 10.32ff. Note that Art 26(3) of the TRIPS Agreement requires industrial designs protection to subsist for a minimum of 10 years. See 21.57. ACIP has recommended further investigation: ACIP 2015, Recommendations 2 and 3. Ibid, 18. Productivity Commission 2016, 251-352. Ibid, 352. Ibid, 370. In Re Application for Type Font in the Name of Microsoft Corp (2007) 71 IPR 664 the hearing officer refused to register a design for a type font because the design was

60. 61. 62. 63.

64. 65. 66. 67. 68.

69. 70.

71. 72.

73. 74. 75.

76. 77.

not applied to a tangible thing. See discussion in ACIP 2015, 29-30. See King Features Syndicate Inc v O & M Kleeman [1941] AC 417; Edwards Hot Water Systems v S W Hart & Co Pty Ltd (1983) 1 IPR 228. See Re Clarke’s Registered Design (1896) 13 RPC 351 at 358; Wolanski’s Registered Design (1953) 88 CLR 278 at 279. Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR 120; Mangraviti v Vardi (1976) 12 ALR 355; Dalgety Australia Operations Ltd v F F Seeley Nominees Pty Ltd (1985) 5 IPR 97; Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483; Interlego AG v Croner Trading Pty Ltd (1992) 25 IPR 65. (1953) 88 CLR 278. (1935) 53 RPC 139. Dalgety Australia Operations v F F Seeley Nominees Pty Ltd (1985) 5 IPR 97 at 109. Re Concrete Ltd’s Application (1940) 57 RPC 121; Inala Industries Pty Ltd v Associated Enterprises Pty Ltd [1960] Qd R 562. See eg Tefex Pty Ltd v Bowler (1981) 40 ALR 326. See also Shacklady v Atkins (1994) 30 IPR 387 (yacht held to be an ‘article’). See also s 77(5) of the Copyright Act, which defines ‘building or model of a building’ as excluding portable, demountable or preconstructed buildings for the purpose of the copyright/design overlap provisions: see 10.36. ALRC 1995, [4.15]. See Re Application by Altoweb Inc (2002) 55 IPR 656 at [37]: ‘the pattern of the design is displayed on the computer screen by software that is totally independent of the computer screen as manufactured and sold’. Re Microsoft Corp [2008] ADO 2 held that a font was not a product: the design for the font did ‘not disclose a product bearing visual features. It only discloses visual features’: at [14]. ACIP 2015, 31. ACIP recommended that the treatment of virtual or non-physical designs should be reconsidered: Recommendation 14. See Rollason’s Registered Design (1898) 15 RPC 441 at 446; Wolanski’s Registered Design (1953) 88 CLR 278 at 280. The Designs Act 2003 continues to allow registration of ‘flat designs’ where the pattern or ornamentation is applied to the surface of an article. See Smith, Kline and French Laboratories Ltd’s Design Application [1974] RPC 253. (1983) 1 IPR 228 at 257-8. In Multisteps Pty Ltd v Source & Sell Pty Ltd (2013) 214 FCR 323, Yates J considered a design for a fruit produce container and noted: ‘the fact that a closure method might exhibit a “functional preference” is not to the point. What is relevant is the contribution that such a feature makes to the visual appearance of the container, considered as a whole’: at [155]. See eg Horton 1994. Submissions to the ALRC estimated the market for car spare parts in Australia at $800m a year: ALRC 1995, [16.11], citing NRMA and RACV submissions. In more recent submissions to the Senate Legislation Economics Committee, in May 2003, the Australian Automotive Aftermarket Association (AAAA) indicated that the organisation represents in excess of 640 members, most of which would be classified as small and medium sized businesses involved in manufacturing, remanufacturing, importing, distributing, wholesaling, reselling and retailing of automotive parts,

78. 79. 80. 81. 82. 83. 84. 85. 86. 87. 88. 89. 90. 91. 92.

93. 94.

95. 96. 97. 98. 99. 100. 101. 102. 103.

accessories, tools and equipment in Australia. ALRC 1995, Recommendation 166. The operation of the Copyright Act in preventing ‘dual protection’ is highly relevant to the issue of spare parts: see 10.20ff. IPCRC 2000, 182. Ibid, 184. In its most recent review, ACIP recommended that there be no change to the repair defence: ACIP 2015, Recommendation 20. Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR 120. ALRC 1995, [5.4]. Ibid, [5.22]. Ibid, [5.37]. World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd (2007) 71 IPR 307 (a brochure distributed at a fair in Canton). Supply of a sample to a government department to obtain a certificate for electrical safety was not a public use in Australia for the purposes of s 15(2)(a): World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd (2007) 71 IPR 307 at 326. (1892) 10 RPC 29. Evidence of prior public use (s 15(2)(a)) must be carefully scrutinised: Multisteps Pty Ltd v Source & Sell Pty Ltd (2013) 214 FCR 323 at [103]-[109]. Designs Regulations 2004 (Cth). ACIP has recommended that a six-month grace period be introduced; during that time inadvertent disclosure by the applicant would not be included in the prior art base: ACIP 2015, Recommendation 12. See Tefex Pty Ltd v Bowler (1981) 40 ALR 326. See Press-Form Ltd v Henderson’s Ltd (1993) 40 FCR 274; cf Warner v Commercial Systems Australia Pty Ltd (1995) 33 IPR 534. The terms ‘corresponding design’ (s 5) and ‘applied industrially’ (s 18(3)) are given the same meaning as in the Copyright Act 1968: see also 10.32. ALRC 1995, [5.7]-[5.9]. Cf s 17(1) of the 1906 Act which, in an attempt to clarify the requirements of novelty or originality, provided that those requirements were not satisfied in the case of a design which (a) differed only in ‘immaterial details’ or in ‘features commonly used in the relevant trade’ from a previous design in respect of the same article; or (b) was an ‘obvious adaptation’ of a previous design in respect of any other article. ACIP has recommended that the distinctive requirement be maintained in its current form: ACIP 2015, Recommendation 10. Review 2 Pty Ltd v Redberry Enterprise Pty Ltd (2008) 173 FCR 450. See D Sebel & Co Ltd v National Art Metal Co Ltd (1965) 10 FLR 224. Cf Richsell Pty Ltd v Khoury (1995) 32 IPR 289. (2008) 173 FCR 450. Ibid at [42]. Ibid at [60]. Re Colgate-Palmolive Company Inc (2010) 88 IPR 434 at [29]. Re Bitzer Kuehlmaschinenbau GMBH (2015) 112 IPR 187 [31]. Informed users are discussed further in 10.23 in relation to infringement. During the term of registration: see 10.3. As discussed later in relation to patents and trade marks (see 13.20, 20.32, 22.4222.48), the scheme for the registration and enforcement of security interests in

104. 105.

106. 107. 108. 109. 110. 111. 112. 113. 114. 115. 116. 117. 118. 119. 120. 121. 122. 123. 124. 125. 126.

127. 128.

personal property also applies to designs: Personal Property Securities Act 2009 (Cth). For grant of a compulsory licence under the Designs Act 1906, see Re Applications by Theo and Vicky Pty Ltd (1998) 42 IPR 100. The provisions as to Crown use essentially replicate Pt VIA of the previous legislation. The ALRC found no examples of the Crown’s power being exercised and recommended that the provisions not be retained. This recommendation was not accepted by the government: ALRC 1995, [7.23]-[7.28]. Multisteps Pty Ltd v Source & Sell Pty Ltd (2013) 214 FCR 323 at [55]; Hunter Pacific International Pty Ltd v Martec Pty Ltd (2016) 121 IPR 1 at [38]-[39]. LED Technologies v Elecspess (2008) 80 IPR 85 at 109; Keller v LED Technologies Pty Ltd (2010) 185 FCR 449 at [259]. ALRC 1995, [6.24]: discussed in Hunter Pacific International Pty LTD v Martec Pty Ltd (2016) 121 IPR 1 at [43]. Review 2 Pty Ltd v Redberry Enterprise Pty Ltd (2008) 173 FCR 450. Hunter Pacific International Pty Ltd v Martec Pty Ltd (2016) 121 IPR 1 at [46]. Nicholas J drew an analogy with the test of substantiality in copyright law. See 8.7. Review 2 Pty Ltd v Redberry Enterprise Pty Ltd (2008) 173 FCR 450 at [21], citing Woodhouse UK plc v Architectural Lighting Systems [2006] RPC 1 at [50]. Hunter Pacific International Pty LTD v Martec Pty Ltd (2016) 121 IPR 1 at [39]. ALRC 1995, [6.13]. Review 2 Pty Ltd v Redberry Enterprise Pty Ltd (2008) 173 FCR 450 at [27]. Multisteps Pty Ltd v Source & Sell Pty Ltd (2013) 214 FCR 323 at [66]. Multisteps Pty Ltd v Source & Sell Pty Ltd (2013) 214 FCR 323 at 337. Ibid at 338. Review 2 Pty Ltd v Redberry Enterprise Pty Ltd (2008) 173 FCR 450 at [26]-[27]. See also Review Australia v New Cover Group Pty Ltd (2008) 79 IPR 236. Review Australia v New Cover Group Pty Ltd (2008) 79 IPR 236; Review 2 Pty Ltd v Redberry Enterprise Pty Ltd (2008) 173 FCR 450. For a discussion of the two cases, see Atkinson et al 2016, 526-7. It was relevant that the design was registered with a colour photograph of the dress: Review 2 Pty Ltd v Redberry Enterprise Pty Ltd (2008) 173 FCR 450 at [52]; Review Australia v New Cover Group Pty Ltd (2008) 79 IPR 236 at [37]. Review Australia v New Cover Group Pty Ltd (2008) 79 IPR 236 at 245. Review 2 Pty Ltd v Redberry Enterprise Pty Ltd (2008) 173 FCR 450 [45]-[46]. ACIP has recommended that a new prior-use defence be added for defendants who derive their knowledge of a design from publication during a grace period that has also been proposed: ACIP 2015, Recommendation 12. ALRC 1995, ch 14. In Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd (2008) 75 IPR 289, $10,000 additional damages were awarded because the respondents continued to sell the infringing dress after it had been informed of the applicant’s registered design. In Review Australia v New Cover Group Pty Ltd (2008) 79 IPR 236, $50,000 additional damages were awarded because the respondent refused to participate in the proceedings. See Khawam & Co v Chellaram & Sons (Nigeria) Ltd [1964] RPC 337. Once the design has in fact been registered. Kenny J has doubted that notice prior to registration attracts s 75(4): Review 2 Pty Ltd v Redberry Enterprise Pty Ltd (2008)

129. 130. 131. 132. 133. 134. 135. 136. 137. 138.

139.

140.

141. 142. 143. 144. 145.

146.

173 FCR 450 at [81]; Review Australia v New Cover Group Pty Ltd (2008) 79 IPR 236 at 249. See P B Cow Ltd v Cannon Rubber Manufacturers Ltd [1961] RPC 236. See World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd (2007) 71 IPR 307. ALRC 1995. Ibid, [13.5]. Productivity Commission 2016, 579. Ibid, 370, Recommendation 19.2. At the time of writing the government was considering its response to the Productivity Commission report. Described as: ‘complex legislation which has undergone substantial successive amendment’: Seafolly Pty Ltd v Fewstone Pty Ltd (2014) 106 IPR 85 at [434]; and ‘contentious and unsatisfactory’: ACIP 2015, 33. For a discussion on how this issue is dealt with in other jurisdictions, and the international conventions, see Ricketson 2012b. See the discussion of indirect reproduction in 8.15-8.17. For a detailed discussion of s 18(2) and arguments for its reform, see Luck 2013. ACIP has recommended that s 18 of the Designs Act 2003 be amended to ensure that it is consistent with the overlap provisions in the Copyright Act 1968: ACIP 2015, Recommendation 15. The Designs (Consequential Amendments) Act 2003 amends ss 74-77 to clarify definitions and update the terminology to be consistent with the new Designs Act, but essentially retains the same scheme of preventing dual protection as existed under the Designs Act 1906. Under the previous Act, a ‘method or principle of construction’ was refused registration as a design, which had to be ‘applicable to an article to provide shape or pattern’ within the definition of ‘design’ under s 4(1) of the 1906 Designs Act. The present Act also concentrates on visual appearance and will thus exclude from registration blueprints or plans which are not part of the overall appearance of the product. However, a problem with the definition of ‘corresponding design’ cast doubt on the operation of the amendments. See 10.32. Designs Law Review Committee 1973. ALRC 1995, [17.3]. The ALRC did in fact favour an ‘adaptation right’ as an additional part of the package in the fallback position, but this was not introduced by the 2003 reforms. ACIP discussed the copyright/designs overlap provisions in its 2016 review, and commented on the lack of consensus amongst stakeholders on any form of reform: ACIP 2015, 33. ACIP’s review was confined to the Designs Act and it made no recommendations for reform of the overlap provisions in the Copyright Act 1968. The commission did recommend amendment of s 18 of the Designs Act 2003: ACIP 2015, Recommendation 15. This included designs previously excluded from registration under s 17(2) of the 1906 Act, as well as designs otherwise incapable of registration: see Edwards Hot Water Systems v S W Hart & Co Pty Ltd (1983) 1 IPR 228 at 255-6. However, a design unregistrable only for lack of novelty or originality would still be caught by s 77, so that copyright protection would be lost: Kevlacat Pty Ltd v Trailcraft Marine Pty Ltd (1987) 11 IPR 77; Interlego AG v Croner Trading Pty Ltd (1992) 25 IPR 65.

147. 148.

149.

150. 151. 152.

153. 154. 155.

156. 157. 158. 159. 160. 161. 162. 163. 164. 165. 166. 167.

Burke & Margot Burke Ltd v Spicers Dress Designs [1936] Ch 400. S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466. Although the majority in the Federal Court (Fox and Franki JJ) had decided that the defence did apply and that the drawings were too difficult to be understood by a nonexpert ((1983) 1 IPR 228 at 240), this was ascribed by Gibbs CJ in the High Court to ‘a subconscious compensation for their own expertise’: 159 CLR 466 at 478. No transitional provisions were provided by these amendments, which created some confusion: see ALRC 1995, [17.42]-[17.44]. Section 77(1)(b) and (c) are amended by the Designs (Consequential Amendments) Act 2003 to ensure the application of the new version of the section to all industrial application and sales of products whether before October 1990 or subsequently, including after the commencement of the 2003 version of s 77. Edwards Hot Water Systems v S W Hart & Co Pty Ltd (1983) 1 IPR 228 at 255; Hosokawa Micron International Inc v Fortune (1990) 19 IPR 531 at 534-5. See eg Compagnie Industrielle de Precontrainte et d’Equipment des Constructions SA v First Melbourne Securities Ltd (1999) 44 IPR 512 (expansion joints). In introducing the Copyright Amendment Act 1989, the Attorney-General, Lionel Bowen, had said that industrial works were ‘excessively protected’ by the Copyright Act, and that this protection was uncertain and its effects ‘often inequitable’: Second Reading Speech, 8 November 1988. It was intended that after the amendments someone wishing to copy a massproduced item need only search the Designs Register to discover whether it was protected. For a discussion of the relationship between the corresponding design and the artistic work, see Luck 2013, 78-80. In a strict sense, all printing involves ink or some other substance being ‘worked into’ the paper, card or fabric that is being printed. But to interpret ‘worked into’ so broadly would defeat the evident intent of the new provisions. The printed designs on the T-shirts in the Elwood case (discussed at 8.14) were not deprived of copyright protection even though the T-shirts were produced in industrial quantities: Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd (2008) 76 IPR 83 at 85. Polo/Lauren Co LP v Ziliani Holdings Pty Ltd (2008) 173 FCR 266. Ibid at [56]. The court held that the logo was a label that was distinct from the garment and so was an ‘accessory’ for the purposes of s 44C of the Copyright Act 1968: see discussion at 8.36. Seafolly Pty Ltd v Fewstone Pty Ltd (2014) 106 IPR 85. Ibid at [423]. Polo/Lauren Co LP v Ziliani Holdings Pty Ltd (2008) 173 FCR 266. Seafolly Pty Ltd v Fewstone Pty Ltd (2014) 106 IPR 85 at [481]. Ibid at [482]. Ibid at [487]. See eg Ametex Fabrics Inc v C & F Fabrics Pty Ltd (1992) 111 ALR 565. The new definition of ‘corresponding design’ includes designs that are not registrable: see 10.32. See Safe Sport Australia Pty Ltd v Puma Australia Pty Ltd (1985) 4 IPR 120; PressForm Pty Ltd v Henderson’s Ltd (1993) 40 FCR 274; Shacklady v Atkins (1994) 30

168.

169.

170.

IPR 387. A new subsection 77(5) was added to the Copyright Act by the Designs (Consequential Amendments) Act 2003, defining ‘building or model of a building’ so as to clarify that this exemption does not encompass portable buildings such as sheds, pre-constructed swimming pools and demountable buildings. Design protection is available for such products and it is not appropriate that drawings relating to designs should retain copyright protection upon industrial application. Section 77(5) also defines ‘complete specification’ and ‘design application’ as having the meanings given in the patent and designs legislation, respectively. Considered in Burge v Swarbrick (2007) 232 CLR 336: see 6.28. In that case a fullscale model of the hull and deck sections of a yacht was not a work of artistic craftsmanship and, because there was no registered design, the design copyright overlap provisions denied copyright protection. Considered in Digga Australia Pty Ltd v Norm Engineering Pty Ltd (2008) 166 FCR 268.

[page 325]

PART 4 Patents

[page 327]

CHAPTER 11 The Patent System HISTORY1 Early patents 11.1 The common law has traditionally been suspicious of monopolies of any description. Freedom of competition has been considered desirable to prevent the development of rigid structures in the economy, which may fail to adapt promptly to changing conditions, thus becoming inefficient and having a deleterious effect on prices and product quality. Nevertheless, from the time a market economy began to develop in Europe it has been considered necessary to confer monopolies in certain areas to provide an incentive for innovation of new products and processes valuable to an evolving society and to reward the inventor. A Venetian law of 1474 granted privileges for 10 years to inventors of new arts and machines so that devices ‘of utility and benefit’ would be built;2 and in England, the boroughs and guilds of the Middle Ages began to emerge with exclusive trading privileges and control of the market and training of craftsmen. In the time of Elizabeth I (reigned 1558–1603), the Crown adopted the continental practice of granting monopolies to individuals who introduced new inventions into the realm.3 Elizabeth was also in the habit of granting other monopolies, such as the exclusive right to conduct trade in a foreign country or area, and it was not long before the known world was parcelled out to the Merchant Venturers, the Russia Company (1553), the Levant Company (1581) and the East India Company (1600). The Crown reaped great profit from these monopolies. Substantial sums were demanded in return for the initial grant of the monopoly and then

annual payments, known as royalties, were required for the [page 328] maintenance of the right conferred. The official documents conferring the right or privilege were called letters patent.

Monopolies under challenge 11.2 By the end of Elizabeth’s reign there was a large number of monopolies, and the prerogative power of the Crown to make such grants had become a grave constitutional issue (as indeed was the prerogative power of the Crown generally). In 1601 a parliamentary debate on monopolies took place at which outrage was expressed concerning ‘divers patents granted since the last parliament’, including those for currants, iron, powder, ox shin-bones, train oil, transportation of leather, lists of cloth, ashes, aniseed, vinegar, seacoals, steel, aqua vitae, brushes, pots, saltpetre and lead, as well as others already in existence, such as those for dice, starch, cards and salt.4 It was claimed that the grant of such patents was ‘grievous’ to the subjects of the Queen, that ‘great oppressions’ were wrought by the holders of monopoly rights in the trade of such commodities, and that ‘from the thraldom of those monopolies … there was no town, city or country free’.5 Elizabeth abolished some of the most offensive grants of privilege but more importantly gave the common law courts jurisdiction to determine the validity of monopolies. In 1602 Darcy v Allen,6 otherwise known as the Case of Monopolies, was decided. Darcy had been granted the sole right to import foreign playing cards, and he sued Thomas Allen for infringing his letters patent by ordering and selling such goods. The court declared the patent void and gave judgment for the defendant. Monopolies were declared to be generally invalid because they operated in restraint of trade and tended to increase prices and reduce quality, but the court did recognise a justification for valid grant:7 … where any man … by his own … industry or … invention

doth bring any new trade into the realm, or any engine tending to the furtherance of a trade that never was used before — and that for the good of the realm — … the King may grant him a monopoly patent for some reasonable time until the subjects may learn the same in consideration of the good he doth bring by his invention to the Commonwealth. Otherwise not.

Statute of Monopolies 11.3 James I continued Elizabeth’s practice of granting monopolies,8 but was unable to withstand the Commons as well as his predecessor. In 1624 the Statute of Monopolies9 was passed which declared void all monopolies for the sole buying, selling, making or using of anything in the realm. However, there was an exception for inventions. Patents for the ‘sole working or making of any manner of new manufacture’ could be granted to ‘the first and true inventor’ for 14 or not more than 21 years provided that the patent ‘be not contrary to the law nor mischievous [page 329] to the state, by raising prices of commodities at home, or hurt of trade, or generally inconvenient’. An ‘inventor’ in 1624 was taken to include a person who imported an invention from abroad. It was an important feature of the early patent systems that they were designed to encourage the importation of foreign innovation, increasing trade, employment and perhaps foreign investment. Indeed, this is still an aim of patent systems today, especially for developing countries.

Evolution of the patent system 11.4 Patents continued to be granted in increasing numbers under the royal prerogative, as limited by the Statute of Monopolies, particularly as the Industrial Revolution got under way. As the system evolved, the need for an inventor to file ‘specifications’ in support of an application gradually emerged as a key feature. The specification was (and still is) a technical document which described the invention,

explained how it could be made or put into practice and claimed an area over which the patentee would have exclusive domain for the term of the patent. During the eighteenth century judges began to express the idea that the object of patent law was to secure the revelation of beneficial secrets, which could be generally exploited when the inventor’s term of protection expired. This required the inventor to prepare a specification sufficient to allow the invention to be used for posterity. Patentees had begun to enrol statements of their inventions with the Court of Chancery around this time. Although this began as a device to help protect against infringers, the courts came to require a sufficient statement of the patent as ‘consideration’ for the monopoly conferred. In Attorney-General (Cth) v Adelaide Steamship Co10 Lord Parker said: The right of the Crown to grant monopolies is now regulated by the Statute of Monopolies, but it was always strictly limited at common law. A monopoly being a derogation from the common right of freedom of trade could not be granted without consideration moving to the public, just as a toll, being a derogation from the public right of passage, could not be granted without the like consideration. In the case of new inventions the consideration was found either in the interest of the public to encourage inventive ingenuity or more probably in the disclosure made to the public of a new and useful article or process.11 Much of patent law revolves around the issues of what is patentable, whether the specification is adequate, whether the monopoly claimed is supported by the documentation, and whether the supposed invention is novel and inventive when measured against the ‘prior art’ — that which was already known in the relevant field at the time the patent was sought. All these issues are relevant to the balancing act at which the patent system aims: that is, the encouragement of innovation for the mutual benefit of inventor and public, while at the same time not tying up areas of industry and technology by having the right to exploit inventions belonging to any individual

[page 330] for a long period of time. After a patent expires, the invention enters the public domain and can be used freely by anyone. The patent specification was therefore required to give sufficient detail to allow an expert to perform the invention. Indeed, even before the filing of specifications became usual practice it had been intended that inventors should pass on their knowledge. Thus, the patent term of 14 years provided for by the Statute of Monopolies was set to span two apprenticeship periods, during which time apprentices would be instructed in the technology.12

Modern legislation 11.5 By the mid-nineteenth century the procedures for both obtaining and enforcing patent rights had become extremely cumbersome. Legislation was introduced in Britain to simplify and codify the relevant processes, providing the model on which the current system is founded.13 As with other areas of intellectual property, Australian legislation tended to follow the British lead. Thus, the Patents Act 1952 (Cth),14 which until 1991 was the operative statute in Australia, was based on the Patents Act 1949 (UK), although the link was subsequently broken with the considerable changes made to the British system by the Patents Act 1977 (UK). The 1952 Act established a system whereby patents could be granted for a term of 16 years. Apart from domestic applicants, protection might also be extended in certain circumstances to those who had obtained, or were in the process of obtaining, an overseas or international patent. The system was administered by the Patent Office, headed by the Commissioner of Patents, which processed applications and maintained a Register of Patents.

The economic impact of the patent system 11.6 Critics of the patent system have argued that ‘there is no empirical evidence that [patents] serve to increase innovation and productivity … [but] strong evidence that patents have negative

consequences’ and that the system should be abolished.15 In 1984 the Industrial Property Advisory Committee (IPAC) undertook a review of the Australian patent system from an economic perspective.16 IPAC’s report recommended that the patent system continue to operate in Australia, but that changes should be made to enhance the fostering of innovation in Australia and the development of export markets, to reduce anti-competitive conduct involving patents, and to improve the efficiency of the patent system with a consequent reduction of direct costs through the streamlining of procedures. One of the experts on the committee, Professor Lamberton, dissented from the majority’s findings on a number of central issues and co-wrote a separate report.17 Neither report was unequivocally in favour of or opposed to the patent system, although the minority [page 331] characterised any benefits as being tenuous and subtle, with a probable negative overall cost:benefit ratio.18 A later review by the Bureau of Industry Economics, while agreeing with the general thrust of IPAC’s assessment, was slightly more positive. It pointed out that the patent system made at least some contribution to narrowing the gap between private returns and social returns on investment in research and development, increasing the incentive for such investment in a reasonably cost-effective way.19 It is true that only some industries make extensive use of the system. While patents are regularly used in relation to pharmaceutical products and some chemicals (which are costly to develop but often relatively easy to imitate), it is rarer for all but the simplest engineering innovations to be patented, with new engineering processes typically being protected as trade secrets.20 The review also commented on the significance of the fact that more than 90 per cent of Australian patents are granted to non-residents: This is indicative that the majority of patents are used to protect foreign suppliers from imitations either from domestic or overseas sources. In other words, the patent system enables

foreign patentees to charge ‘monopoly’ prices in Australia without being exposed to competition by imitators.21 However, the review cautioned against any temptation for Australia to modify its patent laws to favour local interests, or indeed to abandon the patent regime altogether. Such moves would breach Australia’s international obligations under the TRIPS Agreement, inviting retaliation from other countries and from some of the large multinationals which use the patent system, and potentially deny local industry some of the imported technology on which it is so dependent.22 11.7 More recently, the Intellectual Property Competition Review Committee (IPCRC)’s review of intellectual property legislation under the Competition Principles Agreement addressed similar issues and made similar findings but seemed to take a more optimistic approach. For example, the fact that most Australian patents are granted to non-residents was countered with the proposition that ‘an effective patent system accessible to foreign technology suppliers allows Australian firms to import technology that would otherwise be unavailable, or would only be available at higher cost’, thus increasing productivity and enhancing competition in the Australian economy.23 The IPCRC also quoted with approval the observation that [page 332] ‘[p]rovided patents are granted for real innovations … there is no conflict between patents and competition from the welfare economics perspective because patents stimulate inventive activity that usually would have been more costly to induce by other means’.24 The patent system was said to have: … strong advantages relative to alternatives — such as trade secret [sic] and government subsidisation — even though these alternatives have an important role to play in promoting innovation.25

The IPCRC concluded by agreeing with Scherer’s view that:26 … the patent system is recognised to be an imperfect instrument. Nevertheless it may be the best policy solution man can devise to the difficult trade off between, on the one hand, maintaining incentives for investment and, on the other hand, fostering the diffusion of new technology’s benefits to consumers and to those who might make leapfrogging inventions. Its imperfections include uncertainty as to which of several contending parties will receive patent protection and how much protection patents will afford, the costs of concomitant legal services, and the ease in most cases (but not in pharmaceuticals) of ‘inventing around’ existing patents. The issue then is how to maximise the net social benefits that can be obtained from the patent system. The IPCRC went on to say, however, that Australia would benefit if the thresholds of patent grant were raised and more closely screened, so that successful applicants could have greater confidence in the validity of the rights they had obtained.27 11.8 The Productivity Commission also recently reviewed Australia’s intellectual property arrangements, including patents. While accepting that patents can have a role in encouraging socially valuable innovation that would not have otherwise occurred, the Productivity Commission cautioned:28 Australia’s patent system fails the principles of a wellfunctioning intellectual property system. – Australia provides stronger patent rights than most other advanced countries. As a large net importer of patented technology, overcompensation is particularly costly for Australia. – The rules and processes for granting patents lead to a multitude of patented innovations of little or no community benefit, some of which are used for strategic purposes. The Productivity Commission then recommended various changes on the basis that there was no single solution but rather a requirement

for a package of reforms that collectively improved the effectiveness and efficiency of the patent system. These reforms included an objects clause in the Patents Act 1990 (Cth), better targeting [page 333] patent criteria like the inventive step, some changes to examination practices, some changes to patent fees, some changes to compulsory licensing, abolishing innovation patents, and better targeting patent term extensions. In response, the Australian Government has accepted including an objects clause in the Patents Act 1990 (Cth), raising the inventive step threshold to something like the European standard, requiring applicants to identify the technical features of inventions in the claims, abolishing the innovation patents system, and reviewing patent term extensions.29

Patents Act 1990 11.9 The present patent regime is governed by the Patents Act 1990 (Cth),30 which was enacted to implement a number of policy changes flowing from the 1984 IPAC review. The 1990 Act made relatively few substantive changes to the system established by the 1952 statute, although it did bring the legislation more into line with practice in the Patent Office. The Act is also notable for ‘relegating’ to regulations many matters of detail formerly contained in the text of the 1952 Act. Although the Patents Regulations 1991 have so far contained few departures from the procedures established under the previous statute, the effect is that the patents system may in future be altered in quite significant ways without recourse to parliament. This ‘unconstitutional’ approach to law-making is just one of a number of aspects of the legislation which has been criticised by commentators.31 There has been particular concern with the drafting of both the Act and the Regulations, parts of which fall a long way short of meeting any reasonable standards of ‘plain language’. This is ironic in light of the stated intention to bring ‘the language and structure of the Act down to earth, so that mere mortals without law

degrees have some chance of understanding what it is all about — at least in general terms’.32 As a subsequent report to the Prime Minister’s Science and Engineering Council put it:33 The Patents Act (1990) was drafted in a ‘Plain English’ style that was obviously intended to make this area of law more comprehensible to users of the patent system. Unfortunately, this laudable object has not been achieved and concepts that were previously clear under the old law are now more difficult to understand and apply. A good example of this can be illustrated with regard to the question of obviousness and inventive step: under the Patents Act (1952), a five line provision set out the ground of obviousness for the purposes of revocation, but under the Patents Act (1990) the application of this concept now requires the reader to ‘track’ through three separate sections of the Act, refer to the Dictionary in Schedule 1, refer to the Acts Interpretation Act, and read more than fifty lines of text. The Patents Act 1990 (Cth) took effect on 1 May 1991. Under transitional arrangements in Ch 23 of the Act any patent granted or application made under the 1952 Act was treated as if it had been granted or made under the new legislation, with [page 334] the important rider that no ground of objection or invalidity could be raised against such a patent or application that was not available under the former Act: s 233(4).34 Since its enactment the 1990 Act has been amended on a number of occasions: notably in 1995 when the term of a standard patent was extended from 16 to 20 years in accordance with Australia’s obligations under the TRIPS Agreement (see 21.18–21.21); in 2000 when (as discussed below) the Act ceased to allow the filing of applications for petty patents and introduced ‘innovation patents’; and in 2001 when, among other important changes, the threshold

requirements of novelty and inventive step were raised to increase the likelihood of validity and align Australian legislation with international standards.35 The Act was amended in 200336 with changes relating to extensions of time and with the applicant being required to inform the Commissioner of the results of documentary searches by, or on behalf of, a foreign patent office for the purpose of assessing the patentability of an invention disclosed in the complete specification or a corresponding application filed outside Australia. This information assists IP Australia when examining an application in Australia. More significantly, the Act was amended in 2004 by the United States Free Trade Agreement Implementation Act37 to give effect to obligations arising from the Australia–United States Free Trade Agreement (see below) while other related changes were effected by amendments to the Patent Regulations.38 In 2006 amending legislation39 introduced: a form of punitive or exemplary damages for flagrant patent infringement (s 122(1A)); exemption from infringement for continued prior use (s 119); an exemption related to what is referred to as ‘springboarding’, to allow for acts that exploit a pharmaceutical patent and would otherwise be an infringement, provided those acts are in order to obtain regulatory approval of pharmaceuticals in Australia or in a foreign country (s 119); and changes to the sections establishing compulsory licensing of patents and some minor revisions affecting the specification of claims and the making of divisional applications in innovation patents. The 1990 Act was also amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), to impose higher patent thresholds and improve procedures, and the Intellectual Property Laws Amendment Act 2015 (Cth), to introduce the recently agreed arrangement to manufacture pharmaceutical products in Australia for export to an eligible importing country to address the public health problems in that country. Both these Acts are addressed in more detail below. [page 335]

Free trade arrangement and patent law in Australia 11.10 Following the minimum-standard-setting TRIPS Agreement in 1995, Australia has entered into a number of free trade agreements that have included provisions affecting patents.40 The main agreement affecting patents is Ch 17 of the Australia– United States Free Trade Agreement (AUSFTA).41 While some of the provisions relating to patents were apparently consistent with existing Australian law and practice, the AUSFTA appeared to affect other aspects of patent law in Australia by: providing for a very broad scope for patentable subject matter (Art 17.9.1); narrowing the limitations on permissible exclusions from patentability (Art 17.9.2); allowing some freedom to adopt limitations and exceptions (Arts 17.9.3 and 17.9.6); providing for parallel importation restrictions in certain circumstances (Art 17.9.4); providing that a patent can only be revoked upon grounds that would have justified a refusal to grant or on the basis of fraud, misrepresentation or inequitable conduct. In effect this requires consistency of the grounds for testing the validity of a patent both before and after grant and so changes the progressive expansion of grounds from examination to revocation previously a feature of Australian patent law (Art 17.9.5); imposing limitations upon compulsory licensing (Art 17.9.7); introducing a system of extensions of term of patents where grant has been subject to unreasonable delay (Art 17.9.8); requiring a more extensive disclosure or description of the invention at the filing date (Art 17.9.12); introducing new terminology in relation to the requirement of utility (Art 17.9.13); requiring endeavours to reduce differences in patent law and practice between the two countries (Art 17.9.14) and

establishing a cooperative framework between the patent offices (Art 17.9.15); and extending protection for pharmaceutical and agricultural products: Art 17.10. [page 336] These requirements have the effect of locking in certain aspects of current Australian patent law, in particular arrangements concerning the period of five-year data exclusivity, the system of patent term extensions for delays to grant caused by delays in Therapeutic Goods Administration processing and restrictions on parallel importation, so that successive governments will have difficulty reforming the law without abrogating the treaty.

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 11.11 The obligations Australia incurred under AUSFTA provided both a stimulus and a focus for further reform of the Patents Act. A number of documents discussed possible reforms and policy settings. In December 2002 the Australian Law Reform Commission (ALRC) was tasked to inquire into and report on the intellectual property laws and practices that pertained to genetic materials. The ALRC’s report Genes and Ingenuity: Gene Patenting and Human Health42 was delivered in 2004 and after a comprehensive discussion of issues in patent law and practice made 50 recommendations, many of which called for detailed changes to the Patents Act 1990. In 2008 the Senate referred matters concerning patenting human genes and genetic material to the Senate Community Affairs References Committee. That Senate Committee produced the Senate Gene Patents Report in November 2010 and it made 16 recommendations directed to amendment of patent law, practice and policy. In 2008 an independent panel undertook a review of the innovation system in Australia.43 Chapter 7 of the review touched on

aspects of the patents system. The review made a number of broad assertions about the role of intellectual property as an aspect of economic policy, questioned whether patents were too easily granted, and noted that software and business methods patents were now granted and that the tests for inventive step and ‘analogous use’ had become much less stringent, and that there was anxiety about ‘patent thickets’ and ‘patent pools’ and the difficulties and costs of litigation. The panel considered that there was ‘mounting evidence’ that these trends were ‘impeding rather than stimulating innovation’. The review included Recommendation 7.2, calling for patent law to be reviewed to ensure that the required threshold of inventive step was ‘considerable’ and that patents were well defined to minimise litigation and maximise scope for subsequent innovation. Throughout 2009 IP Australia published a series of consultation papers making proposals for a range of reforms and calling for submissions from interested parties.44 The consultation papers were: ‘Getting the Balance Right’, March 2009; ‘Exemptions to Patent Infringement’, March 2009; ‘Resolving Patent Opposition Proceedings Faster’, June 2009; ‘Resolving Divisional Applications Faster’, June 2009; ‘Streamlining the Patent Process’, August 2009; and ‘Flexible Search and [page 337] Examination’, August 2009.45 Following submissions, IP Australia then published two further consultation papers, both entitled ‘Towards a Stronger and More Efficient IP Rights System’, one in November 200946 which explained IP Australia’s intentions in relation to the issues raised in the March and June papers, and one in December 200947 detailing intentions in relation to the August papers. The Advisory Council on Intellectual Property (ACIP) was also involved in several important reviews. In 2006 ACIP had been asked to inquire and report upon postgrant enforcement strategies for patents to assist patentees to enforce their rights and in January 2010

ACIP delivered the Post Grant Enforcement Strategies Final Report48 (see 11.23) making a number of recommendations. During 2008–9 ACIP began a review into the test for Patentable Subject Matter (see 11.16) and published an issues paper49 in 2008, an options paper50 in 2009, conducted forums with interested parties and issued the Final Report dated December 201051 in February 2011. The government provided a combined response52 to the ALRC Report, the Senate Gene Patents Report and the ACIP Patentable Subject Matter Report in November 2011 in the course of a response to the Senate Community Affairs References Committee’s Gene Patents Report. 11.12 The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) is informed by this series of reform proposals and reports. The Act includes amendments to the Copyright Act 1968 (Cth), the Designs Act 2003 (Cth), the Plant Breeder’s Rights Act 1994 (Cth) and the Trade Marks Act 1995 (Cth) but the largest number of amendments are to the Patents Act 1990 (Cth) and set out the most extensive changes to Australian patent law and procedure since the original passing of the Patents Act 1990 (Cth). The Act consists of six schedules. The changes contained in Sch 2 that provide for exemptions for infringement for uses for obtaining regulatory approval53 and also for experimental use54 commenced on 15 April 2012 and apply to all uses from that date. Otherwise, all of the changes in the other schedules came into force on 15 April 2013. The changes in the Act are indeed intended to ‘raise the bar’ by effectively establishing a new class of patents from 15 April 2013 when higher requirements for patentability of an invention and for a valid specification and more stringent [page 338] procedures for applications apply, while patents where the application was made prior to the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act will continue to be

governed by the relatively lower standards of validity established in the earlier legislation. The transition provisions are complex and multi-faceted but in many situations have the effect that the higher standards relating to patentability, the specification and application procedures, apply to patent applications where examination had not been requested by 14 April 2013. Some intellectual property practitioners advised clients that there might be advantages in fasttracking applications for patents to allow an application for examination before this date and so obtain the relative advantage of less onerous requirements in the prosecution of an application and lower standards of validity applicable in any opposition, reexamination or revocation proceeding. It is reported that in the first two weeks of April 2013 around 16,000 patent applications were filed with IP Australia.55 There is the prospect that Australian courts will have to analyse and adjudicate different patents according to different applicable law for at least 20 years after the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act, that is to say until 2033, and in the case of patents where an extension of term is granted, for a potentially longer period. 11.13 Explanations of the various amendments and discussion of possible implications will be found throughout the patent chapters of this book but this section includes a short summary of amendments concerning standards of validity, infringement and procedure. Schedule 1 is primarily concerned with amendments concerning requirements for validity. These amendments change the requirements for inventive step (see 12.47) and innovative step (see 12.55); introduce a new form of the requirement of utility (see 12.57); change the consideration of the requirement of fair basis (see 12.66–12.71); raise the level of disclosure for a provisional application (see 12.71); raise the threshold for written description and enabling disclosures in a complete specification (see 12.63, 12.64); prevent the amendment of the specification in a way that adds to the subject matter after the date of filing a complete specification (see 11.43); change the burden of proof against which the Commissioner decides whether to accept an application to a higher requirement based on the balance of probability that the application is valid (see 11.44); require assessment of prior use, usefulness and utility in the course of

examination and not merely at opposition or revocation (see 11.39); exclude omnibus claims and remove the possibility of modified examination: see 11.39. Schedule 2 provides two new exceptions to infringement of a patent. The first is that acts done only for purposes connected with obtaining an approval required by law, of the Commonwealth, state or territory of Australia or the law of another country, in relation to a non-pharmaceutical patent, will not be an infringement. A similar exception for pharmaceutical patents was already provided by s 119A: [page 339] see 14.28. The second exception is that acts done for experimental purposes will not be an infringement of patent: see 14.4. Schedule 3 provides amendments intended to reduce delays in the processing of patent and trade mark applications. These amendments change the permissible timings for the filing of divisional applications (see 11.22, 11.28, 11.46); give authority to the Federal Court to direct amendments to a patent application (see 11.46); remove the capacity to progress an amendment to an application before the Patent Office if a decision in an opposition proceeding to that application is being appealed (see 11.46); limit an applicant’s ability to withdraw an application that is subject to opposition by requiring the consent of the Commissioner to that withdrawal (see 11.46); clarify the Commissioner’s powers to summon witnesses and require production of documents or articles and replace the criminal sanctions applicable to failure to comply with a summons or a notice to produce a document or article with non-criminal sanctions: see 11.46. Schedule 4 is concerned with aspects of regulation of the patent and trade marks attorney professions. The amendments permit Australian patent attorney firms to incorporate. New offences are introduced to deal with individuals, members of a partnership or a company that hold themselves out as registered patent attorneys, or

hold themselves out as being a registered patent attorney company, or that carry out the business of a patent attorney without being properly registered by the Professional Standards Board for Patent and Trade Marks Attorneys: see 11.33. This schedule also extends the scope of professional and client privilege for patent and trade mark attorneys: see 11.33. Schedule 5 is concerned with amendments intended to strengthen mechanisms for the enforcement of copyright (see Chapter 8) and trade marks (see Chapter 20) and does not address issues in patent law or practice. 11.14 Schedule 6 includes amendments intended to simplify the intellectual property system and addresses a detailed miscellany of technical issues. Only some of the more significant changes are listed below. The concepts of secret use in s 9 (see 12.59–12.61) and the grace period in s 24 (see 12.44) are extended by providing protection for prior commercial secret use of the invention, and for disclosures that are outside the scope of the relevant claim but would be relevant to assessment of obviousness. Omnibus claims (see 11.13) are not permissible except where ‘absolutely necessary to define the invention’. An amendment clarifies the requirements for making available to the Commissioner a relevant basic application and also the circumstances in which the Commissioner will consider the disclosures in that basic application: see 11.31, 11.32, 11.37. The provisions of the Act that required an applicant to notify the Commissioner of the results of patentability searches in other jurisdictions (see 11.42) have been repealed and even if the applicant had failed to notify the Commissioner while the provisions were in force there is now no sanction. The Commissioner may decline to examine or report on a Patent Cooperation Treaty (PCT) application until the formal requirements prescribed in the Regulations are met. [page 340] The Commissioner’s power to determine that an application

proceed where a dispute arises between applicants is restricted to those circumstances where the dispute is between joint applicants (see 13.16, 13.17), but the Commissioner may determine how an application will proceed even if it has lapsed: see 11.53. The Commissioner is granted discretion to refuse an application for postponement of acceptance of an application and discretion to postpone acceptance even if a request to postpone has not been made. Further, and more significantly, the Commissioner now has a broad power to revoke acceptance of an application for a standard patent, or revoke the certification of an innovation patent (see 11.61) where an administrative error has led to acceptance or certification that should not have been made. 11.15 A number of amendments in this schedule restructure the Patents Act 1990 to co-locate all of the provisions for applications under the Patent Cooperation Treaty (see 11.31, 21.49) or the Paris Convention (see 11.31, 21.50) to sit with the equivalent provisions relevant to standard domestic patent applications and further clarify where the application process is governed by the Regulations. Chapter 8 of the Patents Act 1990 (Cth) is repealed and the texts of the Patent Cooperation Treaty and the Budapest Treaty, formerly found in the Patent Regulations 1991, are removed and there is a reference to online versions of those treaties. Modified examination of an application based upon a corresponding patent granted in a recognised jurisdiction is no longer available unless it was requested prior to 15 April 2013. Deferral of examination is no longer available. The ‘whole contents’ approach to novelty assessment is amended so that the previous requirement — that information in an Australian application with an earlier priority date but published later than the application under consideration is relevant prior art provided that information was present in the specification at the time of the application and the time of publication — is changed to remove the requirement that the information is present in the prior specification at the date of publication: see 12.42. Patents will no longer be sealed. The process of grant of a standard patent or an innovation patent will now be effected by the

entry of particulars of grant on the Register of Patents. This change applies to all patents granted on or after the commencement of the Act. A patent will not be considered invalid only because it is granted to a person not entitled to it and the Commissioner has power to rectify the Register to correct an error or omission or correct the ownership of the patent, although these corrections may not be made if court proceedings in relation to the patent are pending: see 13.4. A court may not revoke a patent granted to a person not entitled to it unless revocation is just and equitable in all the circumstances. The exception to copyright protection that allows the reproduction in two dimensions of the whole or a part of a complete or provisional specification that is [page 341] open for public inspection is extended to allow communication of the document to the public and translation of the document. Amendments clarify that an applicant for a non-infringement declaration (see 14.29) need not have been an applicant or grantee of a patent but that the application must be made in relation to a respondent’s standard patent that has been granted or innovation patent that has been certified. The declaration may now extend to apply to past, present or future acts. The court has a discretion to award costs. Applicants for a non-infringement declaration may now challenge the validity, and seek revocation of, the respondent’s patent in the same proceedings.

ACIP review of patentable subject matter 11.16 During 2008–9 ACIP began a review into the test for patentable subject matter. In the course of the ALRC’s various reviews of the patenting of genes56 it was said that the manner of manufacture test was flexible but also obscure and ambiguous and it was recommended that the test should be reviewed,57 paying

particular attention to the criteria for determining when an invention was ‘generally inconvenient’. There was also a recommendation to amend the law relating to utility.58 ACIP, when carrying out the independent review that the ALRC had recommended, published an issues paper59 in 2008, an options paper60 in 2009, conducted forums with interested parties and issued the Final Report dated December 201061 in February 2011. The Final Report acknowledged that the patenting of genetic materials, computer software and business methods had given rise to recent debate about the scope of patentable subject matter. ACIP noted that there were concerns (by some) that the current thresholds for manner of manufacture and inventiveness allowed the patenting of discoveries and abstract ideas rather than inventions, that undesirable, unethical or offensive inventions could be patented, and that patents could hamper innovation in some fields. ACIP made a number of recommendations to provide a framework to respond to these issues. ACIP recommended that the Patents Act 1990 (Cth) should contain a statement of objectives62 that described the purpose of the patent system as a mechanism to promote the national interest and balance the competing interests of patent holders, users of technological knowledge and Australian society in general63 and that took into account both economic and ethical considerations. While concluding that the current test for patentable subject matter was the most flexible available, and had [page 342] the advantage of evolution through long use and consideration, ACIP noted that the current wording of the Patents Act 1990 (Cth) was obscure, did not clearly express the principles developed by the courts, overlapped with other threshold criteria, was confusing and did not resolve uncertainties about residual exclusions of patentability under the rubric of ‘generallie inconvenient’. ACIP recommended defining patentable subject matter in ‘clear

contemporary language’ to embody the principles developed by the NRDC case64 and to remove any overlap between the subject matter provision and considerations of novelty, inventive step and usefulness.65 The report suggested specific wording to avoid potentially confusing uses of the word ‘invention’ in s 18(1) and (1A) and Sch 1. ACIP recommended that the requirement of ‘usefulness’ in s 18(1) (c) and (1A)(c) should encompass the requirement of ‘utility’, currently part of consideration of the requirement of manner of manufacture, and become a ground of examination for standard and innovation patents.66 ACIP recommended the retention of the specific exclusions denying patentability for human beings and biological processes for their generation (s 18(2)) and in innovation patents for plants, animals and biological processes for their generation: s 18(3).67 ACIP further recommended repeal of s 50, and corresponding grounds of revocation in s 101B, that gave the Commissioner a discretion to refuse an application for an invention considered to be ‘contrary to law’, or a substance capable of being used as a medicine or food that is a mere mixture of known ingredients or a process of mere admixture to produce such a substance.68 ACIP then recommended that a new general exclusion should be introduced that would be compliant with the limitations imposed by Art 27(2) of the TRIPS Agreement,69 and refuse patentability to an invention where the commercial exploitation of that invention would be ‘wholly offensive to the ordinary reasonable and fully informed member of the Australian public’.70 To assist the Patent Office in operation of the new exclusionary principle, ACIP recommended that the Patent Commissioner should have an ‘explicit power’ to seek advice from any person the Commissioner considered appropriate.71 Lastly, ACIP recommended that the Patents Act 1990 (Cth) be amended so that the standard of proof required for the Commissioner to accept an application for a patent, or certify an innovation patent, should be raised from the level of the ‘benefit of [page 343]

the doubt’ to one where the Commissioner should be satisfied ‘on the balance of probabilities’ that the invention is patentable.72 The government provided a combined response73 to the ALRC Report, the Senate Gene Patents Report and the ACIP Patentable Subject Matter Report in November 2011 in the course of a response to the Senate Community Affairs References Committee’s Gene Patents Report. The government accepted all of the ACIP recommendations, qualifying the acceptance of Recommendations 3 and 4 as acceptance ‘in principle’ given the need for any amendment to comply with Australia’s international treaty obligations, and lastly noting that it had already acted upon Recommendation 11 by incorporating it in the Intellectual Property Amendment (Raising the Bar) Bill 2011 that is now successfully passed. The government stated that it would develop legislation to give effect to the recommendations and that there would be a ‘considered and comprehensive public consultation process’ that would include public exposure of the drafting instructions and draft legislation.

Intellectual Property Laws Amendment Act 2015 (Cth) 11.17 The Intellectual Property Laws Amendment Bill 2013 (Cth), consisting of six schedules covering five major topics, was introduced to the House of Representatives on 30 May 2013, but further passage of the legislation was cut off when the 43rd parliament was prorogued on 5 August 2013 and a general election was called. The new government introduced the Intellectual Property Laws Amendment Bill 2014 (Cth), which was the same Bill except for the amendments directed to the Crown Use provisions were not included. This Bill became the Intellectual Property Laws Amendment Act 2015 (Cth). Schedule 1 of the Intellectual Property Laws Amendment Bill 2013 (Cth) addresses Crown Use provisions in the Patents Act 1990 (Cth) in the light of recommendations in the Productivity Commission Inquiry Report ‘Compulsory Licensing of Patents’.74 The proposed amendments clarify the scope of Crown use to more

carefully define the extent to which the phrase ‘for the services of the Commonwealth or a State’ includes non-government bodies delivering services that are funded by a government, and they also provide a codified scheme to increase transparency and accountability for the process of Crown use, starting with negotiations with the patent owner. Amendments are proposed to ss 160A, 163, 163A, 164, 165, 165A, 166, 167 and 169. These amendments were not included in the Intellectual Property Laws Amendment Bill 2014 (Cth) and their future is unclear. Schedules 1 and 2 of the Intellectual Property Laws Amendment Act 2015 (Cth) set out amendments to the Patents Act 1990 (Cth) to provide the Federal Court with powers to grant compulsory licences to Australian pharmaceutical producers to manufacture and export pharmaceuticals that are the subject of one or more Australian patents where they are sought by a developing country seeking to [page 344] respond to a health crisis and where there is no effective manufacturing capacity in that country. This accords with the agreement reached under the TRIPS Agreement.75 Schedule 1 provides a regime to respond to the interim waiver of aspects of the TRIPS Agreement established under the Doha Declaration.76 Schedule 2 provides amendments to apply when the ongoing waiver in the TRIPS Protocol77 comes into force. Schedule 3 vests the Federal Circuit Court (formerly the Federal Magistrates Court) with jurisdiction to deal with actions for infringement of rights granted under the Plant Breeder’s Rights Act 1995 (Cth): see Chapter 15. Schedule 4 continues the rationalisation of the administration of the patent system between Australia and New Zealand. Many applicants for patents in Australia will also apply in New Zealand and in order to reduce duplication and inefficiency the schedule provides for a single patent application process between the two countries in which either country may accept the filing of an

application and examine the application for grant in accordance with either or both countries’ laws. This is not the creation of a single unified patent; it is a system in which the examiners in each country act as if they are delegates of each country’s Patent Commissioner applying the domestic laws of the country for which grant is sought. In accordance with the objectives of the Trans-Tasman Mutual Recognition Arrangement 1996, and a specific agreement made in March 2013,78 Sch 4 also provides a single trans-Tasman regulatory regime for patent attorneys allowing for a single register of patent attorneys, a single set of qualifications for registration as an attorney, a single governing board and a single disciplinary tribunal. The schedule also provides that applicants for patent, trade mark, design and plant breeder’s rights may provide a single address for service in either Australia or New Zealand. Schedule 5 relieves IP Australia of the obligation to retain documents and provides that documents must now be kept under the Archives Act 1983 (Cth). The remainder of the schedule tidies up some errors and omissions in the drafting of the Intellectual Property Laws Amendment (Raising the Bar) Act.

Petty/innovation patents 11.18 In 1979, in line with international trends, the Patents Act 1952 was amended to introduce petty patents, known as utility models in Germany and Japan, or patents brevet in France.79 These were designed to provide protection for small-scale innovations with a short commercial life, such as gadgets, small appliances and accessories, while ‘standard patents’ were more suitable where [page 345] there was greater investment in the invention, the possibility of export sales and an intention to obtain patents in other countries. A petty patent was cheaper and quicker to obtain than a ‘standard’ patent, and the term of protection limited to a maximum of six years. Although the substantive requirements of patent law were applicable

to petty patents, novelty was assessed against what was known or used in Australia rather than against an international prior art base. 11.19 A review by the ACIP identified a number of drawbacks in the petty patent system.80 Chief among these was what it perceived as a significant gap in intellectual property protection. This gap, also identified by the ALRC in its review of the registered designs system (see 10.3 and 10.5), ‘relates to functional innovations that are not sufficiently inventive under the present standard or petty patent system to warrant protection, and are not protectable under the designs system which protects the appearance of articles, but not “the way they work”’.81 Although acknowledging the success of the petty patent system in being relatively cheap and easy to use, ACIP noted: … a widely held perception among the patent attorney profession that in the Patent Office there is relatively little difference between the inventive height required to obtain a standard and a petty patent … [and] that under normal circumstances there is little reason to apply for a petty patent as a standard patent can be obtained for a slightly higher cost and for a much longer term.82 ACIP recommended that petty patents be replaced by an ‘innovation patent’ system to be specifically aimed at ‘minor or incremental innovations’ and to provide a ‘second tier’ of patent protection significantly different from that offered by standard patents and more effective in meeting the needs of small and medium Australian businesses. Most importantly, the inventive level required would be lower than that for standard patents. The government accepted the majority of ACIP recommendations, rejecting only a proposal that it should be possible to obtain an innovation patent and a standard patent for the same invention. 11.20 The innovation patent system was eventually established by the Patents Amendment (Innovation Patents) Act 2000 (Cth), which came into force on 24 May 2001. The Patents Act no longer allows for new applications for petty patents, although transitional provisions meant that the petty patent system still continued for: (a) petty patents in force or which had expired before 24 May

2001; (b) petty patents granted on or after that date from applications that had already been filed; and (c) applications for petty patents filed but not decided upon before that date. These last could be converted to applications for an innovation patent.83 [page 346] Innovation patents may be obtained for most inventions, including micro-organism products or processes, but not for inventions that are plants, animals or essentially biological processes for the generation of plants and animals.84 The subject matter of an innovation patent must satisfy similar requirements to that of a standard patent, with the crucial exception that it need only involve an ‘innovative step’, as opposed to an ‘inventive step’: see 12.47–12.54, 12.55–12.56. An innovation patent may involve no more than five claims and has a maximum term of eight years, as opposed to six years for a petty patent. The procedure of initial grant suggests a readily accessible system, because if an application for an innovation patent satisfies a formality check it will then be granted and registered without substantial examination for validity. However, as explained in 11.47ff, an innovation patent cannot be enforced unless and until it has been ‘certified’ after an examination, which may be requested either by the patentee or any other person. An innovation patent that does not pass examination will be revoked. The system of grant has the advantage that it does not create a major initial workflow for the Patent Office while allowing the creator of an innovation to register without undue expense and so notify the public of their interest in the technology. The owner of an uncertified innovation patent who finds that others are taking advantage of their innovation may then choose whether to run the risk and undertake the expense of examination and certification. The introduction of the innovation patent as a form of industrial

property protection was controversial and the government undertook to review the effectiveness of the system within five years of its introduction. In 2004–5 the Intellectual Property Research Institute of Australia (IPRIA) conducted a preliminary review85 and some months thereafter IP Australia, drawing heavily upon the work done by IPRIA, released an issues paper86 that attracted a limited number of submissions and in 2006 published a Final Report.87 The Final Report concluded that the objectives of the innovation patent system were generally being met in that the majority of the applications were by individuals or small to medium enterprises (SMEs) and the applications related to ‘less knowledge-intensive inventions’ than those for standard patents, the low rate of certification after initial application (13 per cent of applications) suggested that the optional examination system was working as intended, the application process appeared to be appropriate, the system was speedier than the standard patent application process, fees were lower, there was a reasonable level of awareness of the system, and a higher application [page 347] rate than for the previous petty patent system indicated that it was considered to be useful. The IP Australia Final Report noted, as had the IPRIA Review, that it was difficult to measure whether the system had stimulated lower level innovation and so bridged the ‘gap’ identified in the earlier ACIP report on the petty patent system, but tentatively concluded that the higher use of the system suggested that it had. 11.21 The Final Report also identified some possible weaknesses in the system. There was some evidence in 2006 that 7 per cent of applications were being used to provide a quick and cheap level of tactical protection for higher level inventions while a standard patent was being pursued. This was not an objective of the system and the Final Report recommended investigation and monitoring to prevent it becoming a serious issue. The lower fees did not allow for full cost recovery so the innovation patent was effectively being cross-

subsidised by the standard patent fee structure. More serious problems were considered to arise from uncertainty about the effect of uncertified patents and inadequate knowledge of the system. It had been suggested in the commentary that accompanied the introduction of the innovation patent that the issue of an unexamined patent right may cause patentees, potential licensees and the public to misunderstand what was being granted and that this could lead people who wrongly believed they enjoyed rights which were in fact not fully secured to take business risks they would not otherwise take, or act in some other way to their own disadvantage, and furthermore, that others might decide not to take up a piece of technology when they were free to do so.88 The Final Report did find that ‘[t]he granting of unexamined innovation patents appears to result in a significant number of applicants and other parties not understanding what has been obtained, with some applicants either accidentally or deliberately misrepresenting their granted patents as enforceable rights’.89 The report noted that these ‘costs of the system’ were anticipated but that it was considered that the benefits outweighed the disadvantages which could be addressed through an awareness raising programme and the provision of clear and easily accessible information on the IP Australia website. The Final Report also concluded that there was no reason to change the nature of the subject matter that could be protected by an innovation patent, nor the eight-year term, nor the limit to five claims. Although the Final Report did not shed further light on the correct interpretation of innovative step, regarding this as a matter for determination by the courts, some concern was expressed that the words ‘is a patentable invention’ and ‘if the invention, so far as claimed in any claim’ in s 18(1A) of the legislation might be interpreted to require a threshold of inventiveness on the face of the specification higher than innovative step and that this would undermine the system and require signification modification. It was recommended that this issue should be included in any future ACIP review of patentable subject matter. In the ACIP Final Report on Patentable Subject Matter

[page 348] (see 11.16) it was found that the then wording of the Patents Act lacked clarity ‘leading to confusion and the potential to interpret … in a circuitous manner’.90 ACIP recommended defining patentable subject matter for both standard and innovation patents ‘using clear and contemporary language’91 and that the Patents Act 1990 (Cth) be amended to enhance clarity ‘… and to remove overlap of the patentability subject matter provision with provisions on novelty, inventive step and usefulness’.92 ACIP proposed removing the references to ‘invention’ in s 18(1A). 11.22 In February 2011 the then Minister of Innovation, Industry, Science and Research, Senator Kim Carr, requested ACIP to conduct another review of the innovation patent system to consider whether it was effective in stimulating innovation in small and medium business enterprises, whether there were unintended consequences arising from implementation of the system and whether it could be improved. In August 2011 ACIP published an issues paper entitled Review of the Innovation Patent System.93 While the issues paper sought general advice from stakeholders about whether the system was effective in stimulating innovation in Australia for small and medium businesses, much of the paper canvassed a number of concerns about the equity of the system and whether it was too generous in ways that permitted undesirable manipulation. The paper identified a number of current concerns.94 It was first observed that the legislation made grant of an innovation patent extremely easy provided formalities were met, and further, that at examination for certification the threshold requirement of innovative step was easy to satisfy. It was noted that a significant proportion of innovation patents were being used, not as the appropriate form of protection for innovations, but as a form of easily obtainable interim protection of higher level inventions during the pendency period in the course of applications for standard patents. Second, it was noted that the remedies for infringement of innovation patents were the same as for standard patents despite having a much lower and more easily satisfied threshold criteria and that this may be too generous.

A third issue raised for discussion was the ability to use applications for innovation patents as divisional applications from a standard patent during the pendency period of a standard patent application. This gave rise to two separate concerns. The first was that a person making an application for a divisional innovation patent from a standard patent application could obtain the advantage of fast-track grant and examination to provide protection that sidestepped the opposition procedures in the standard patent application, while calculating that opposition to an innovation patent judged against a much lower threshold would be unlikely to succeed. The second was that while the standard patent remained in pendency it would be possible to make multiple applications for divisional innovation patents and a person defending an [page 349] infringement proceeding against one divisional patent may find themselves faced with another divisional applied for after weaknesses in the first divisional had been exposed during the proceedings. This occurred in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd95 and Seafood Innovations Pty Ltd v Richard Bass Pty Ltd.96 The paper also identified concerns about the possibility of ‘evergreening’ pharmaceutical patents by filing innovation patents to protect different methods of use or administration of patented pharmaceuticals just before expiry of the standard patent term. ACIP conducted public forums in October 2011 but there was little public or industry response. ACIP published the Review of the Innovation Patent System in 2014, unable to assess the effectiveness of the innovation patent system in stimulating innovation in Australian SMEs because it was unable to find sufficient empirical evidence to make assessment. ACIP made four substantive recommendations to change the innovative patent system.97 Following the release of the report, IP Australia’s Office of the Chief Economist was able to take advantage of the then new data capabilities of the Intellectual Property Government Open Data to

conduct a comprehensive economic analysis. The ACIP report was updated with this analysis in 2015, concluding that the innovation patent system was failing to incentivise SMEs to innovate and was imposing an overall net cost on SMEs.98 ACIP concluded the system should be abolished. IP Australia consulted further, attracting a significant number of submissions although no final report. Meanwhile the Productivity Commission’s inquiry into Intellectual Property Arrangements addressed the same issues and concluded that innovation patents were generally low-value patents with some unintended consequences including creating uncertainty, increasing noise, promoting thickets and enabling strategic claims to expand the scope of a patent thicket.99 The Productivity Commission also concluded that the innovation patent should be abolished. This conclusion has been supported by the Australian Government.100

ACIP Post Grant Enforcement Strategies Final Report 11.23 In 2006 ACIP was asked to inquire and report upon postgrant enforcement strategies for patents to assist patentees to enforce their rights. In January 2010 ACIP delivered the Post Grant Enforcement Strategies Final Report101 making a number of recommendations. The government released a response on 3 June 2011.102 The first, and most important, recommendation was that Australia establish and maintain an IP dispute resolution centre based upon the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre, focusing in the [page 350] first instance on patent disputes and operating according to a cost recovery model.103 Government did not accept this, although it was decided that IP Australia would work to establish a new alternative dispute resolution (ADR) resource that would include a register of accredited ADR providers with IPR expertise. Recommendation 2 was that the centre should administer a register of experts who could provide expert assessments, including opinions on validity and

infringement, and make non-binding determinations, mediation and arbitration.104 This was only accepted to the extent that IP Australia would maintain the register of ADR experts capable of offering such services. Recommendation 3 described a Patent Tribunal of up to three people combining legal and technical expertise, drawn from the register of experts to make determinations on disputes. The tribunal was to use more simplified procedures and evidentiary rules than a court and take a pro-active inquisitorial approach with patent attorneys having a right to appear. Mechanisms would encourage parties to comply with the non-binding determinations, and discourage the use of courts when it was appropriate to use the tribunal instead.105 The government rejected this recommendation. ACIP also recommended that Australia establish an undefined resource providing information about patent enforcement,106 and this was accepted. It was also recommended that the Patents Act and rules of court be amended so that the Patent Commissioner would be informed about all court proceedings concerning patents and such information would be made available to the public through an appropriate means of access.107 This was accepted to the extent that IP Australia would obtain information administratively and make it publicly available, but the recommendation for legislative change was rejected. Recommendations 6 and 7 were concerned with enforcement in foreign countries and proposed that IP Australia continue its efforts to encourage and assist countries in the region to improve patent enforcement systems and expand its advocacy programmes to other countries where Australian companies do business.108 This was accepted. The more substantial and concrete recommendation that the Australian Customs Service be empowered to seize patented goods at the border to prevent suspected counterfeited or pirated infringing goods from reaching the market was not accepted. This proposal was based upon the TRIPS provisional measures standards and the similar provisions in Australia relating to counterfeit or pirated copyright or trade mark protected goods. Not surprisingly, the Customs Service, and others, expressed concern about this

proposal, arguing that it was an inefficient and costly use of the service. Customs themselves pointed to a lack of technical expertise that would allow them to identify infringing patented goods, a lack of resources, [page 351] an existing list of higher priorities, including anti-narcotic and counter-terrorism activities, a lack of storage space, the need for procedures to deal with disposal of the detained goods and questions about whether the patent holder would bear costs. ACIP also discussed the desirability of introducing criminal penalties for patent infringement but decided against such a recommendation.109 ACIP declined to recommend changes to the pre-grant opposition process but recommended that the situation be monitored,110 and that was accepted.

OBTAINING A PATENT Procedural requirements of patenting 11.24 Various aspects of patent law are easier to grasp if the procedure for obtaining registration is understood. The 1990 Act was originally designed to streamline the procedural aspects of obtaining a patent by improving the efficiency of the administration of the system and there have been ongoing refinements with the most recent, and so far most far reaching, being introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act. The system is administered by the Patent Office, part of IP Australia.111

Applying for a patent 11.25 Who may apply? Any person may apply for a patent (s 29(1)), but a patent may only be granted to an eligible person under s 15(1) and an application should nominate such a person as the ultimate recipient of any grant. For applications filed on or after 24

May 2001 the applicant is in all cases taken to be the nominated person: reg 3.1A. Under s 15(1), the potential grantee must be a person who: (a) is the inventor; (b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to them; (c) derives title to the invention from either of the above;112 or (d) is the legal representative of a deceased person who falls into one of the previous categories. In practice, most inventions are owned by corporations as persons entitled to take an assignment from the actual inventor(s). The provision covering this class of applicant was added to the 1952 Act in 1960 and reflects the operation of express or implied provisions in employment contracts which give employers the right to claim ownership of inventions made by workers during the course of their employment: see 13.5–13.15. It should also be noted that it is possible to make joint applications and to hold a patent jointly: ss 31, 63; see also 13.16. [page 352] 11.26 Types of applications There are three possible processes for applying for a patent: an entirely domestic process conducted by national patent offices; partly international through the Patent Cooperation Treaty (or PCT) (‘PCT applications’); and relying on the national treatment required by the Paris Convention for the Protection of Industrial Property (‘Convention applications’). Under these processes there are essentially six types of applications: standard patent applications; innovation patent applications; divisional applications; patents of addition; ‘Convention applications’; and ‘PCT applications’. Standard patent applications and innovation patent applications can have two parts: provisional and complete. 11.27 The standard/innovation patent application (provisional

and complete) An application may be for a standard patent or an innovation patent, although some applicants may pursue ‘parallel applications’ and have applications for both on foot at the same time. However, an applicant cannot hold both a standard patent and an innovation patent for the same invention: s 64(2). The applicant must file a patent request and such other documents as are prescribed (s 29(1); reg 3.1), including an abstract which summarises the invention, indicates the technical field to which it pertains and facilitates the prior art searches that will be undertaken if and when the application proceeds to examination: regs 3.3–3.4. The application must be either a provisional application, accompanied by a provisional specification, or a complete application, accompanied by a complete specification: s 29(2)–(4). A provisional application is made where the applicant wishes to secure a ‘priority date’ (see 11.30) as soon as possible, with the applicant then having 12 months in which to lodge a complete application in relation to the same matter: s 38; reg 3.10. The Intellectual Property Laws Amendment (Raising the Bar) Act amended the requirements for both provisional and complete specifications. Prior to the commencement of the amending legislation a provisional specification only needed to ‘describe the invention’ (s 40(1)), but after commencement a new s 40(1) raised the standard of disclosure required so that ‘[a] provisional specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art’. After the amendments, the requirement for disclosure of the nature of the invention is the same for provisional and complete specifications. A complete specification must provide more detailed information: s 40(2)–(4). Prior to commencement of the amending legislation a complete specification was required to fully describe the invention, including the best method of performing the invention known to the applicant, and end with a claim or claims (no more than five in the case of innovation patents) defining the invention. These claims were required to be clear, succinct and fairly based on the matter described. After commencement of the amending legislation the requirement for full description was replaced so that a complete specification must, as for a provisional application, disclose the

invention in a manner clear enough and complete enough to be performed by a person skilled in the relevant art (s 40(2)(a)), and in a new s 40(2)(aa), ‘disclose the best method known to the applicant of performing the invention’. The complete [page 353] specification must set out claims that must be clear and succinct, but the requirement that they be ‘fairly based on the matter described’ was amended to the claims being ‘supported by matter disclosed’. IP Australia explained that these changes to the legislation were made to better align Australian standards for disclosure and scope of claims with standards found overseas.113 The complete specification must also meet the detailed requirements of Sch 3 of the Regulations: regs 3.2A–3.2B prior to commencement of the amendments. After commencement of the amendments of the Regulations, regs 3.2A– 3.2B were subject to some changes and a reg 3.2C added to requirements. 11.28 Divisional application A ‘divisional’ application allows an applicant to make a further application, for either a standard or innovation patent, in respect of an invention already disclosed in the complete specification of a previous or ‘parent’ application that is in the course of being processed: s 79B. Such an application, which is usually for an invention that was not specifically claimed as such in the parent application, must be lodged before any patent is granted on the parent application: reg 6A.1. A divisional application may also be lodged on the basis of an innovation patent that has already been granted (s 79C), but only where the application seeks a further innovation patent: the legislation does not allow a granted innovation patent to be converted into a standard patent. The Intellectual Property Laws Amendment (Raising the Bar) Act repeals the previous s 79B and substitutes a new section, s 79B, applicable on or after commencement, that allows for the Regulations to restrict the time of filing of a divisional application and similarly restricting the conversion of an application to a divisional application

to within three months of acceptance of the parent. The intention of this change is to prevent divisional applications being filed or converted during any opposition proceedings. The amendments should also have the effect of reducing the opportunity to overcome a novelty objection based on a previous filing by the same applicant by the device of turning the later application into a divisional of the first. Further, where a standard patent application is subject to opposition proceedings that reveal that the claimed invention lacks an inventive step it will no longer be possible to file a divisional application for an innovation patent. The amended Regulations prescribe information to be provided in a divisional application including details of the applicable parent patent. Similar amendments to s 79C restrict the allowable time for filing an innovation patent application to be within one month from the day of notice of examination of the first patent, and permit the Regulations to require prescribed particulars including details of the parent patent. A new Chapter 6A — Divisional Applications — is found in the Regulations. 11.29 Patents of addition An application may be made for a ‘patent of addition’ to a standard (but not innovation) patent to protect improvements in or modifications of [page 354] the parent invention (the complete specification of a previous application): ss 80–82.114 A patent of addition is not open to challenge on the ground of obviousness, even if the improvement is not an inventive step in light of the main invention: s 25; reg 2.4. If granted, a patent of addition will remain in force for the term of the patent for the main invention (s 83(1)) and may continue in force even if the main patent is revoked, subsisting thereafter as an independent patent for the unexpired term of the main patent: s 85. 11.30 Priority date Each claim in a complete patent specification must have a priority date: s 43. Priority dates establish the date used to assess novelty or inventive step in relation to the relevant ‘prior art’ that exists before the priority date: see 12.36, 12.49. Further patent

rights, if eventually granted, will usually subsist from this date (ss 65, 67, 68) and the applicant will have priority over any later applications. The priority date of a claim made in a specification is usually the date on which the complete specification is lodged. However, where a complete specification is based upon an earlier provisional application (s 38), in some circumstances the priority date of the claim will be the date of filing the provisional specification. Prior to the coming into effect of the changes in the Intellectual Property Laws Amendment (Raising the Bar) Act, the test was whether the complete specification was ‘fairly based’ upon matter disclosed in the provisional specification. For a claim to be ‘fairly based’ on a prior provisional specification that specification must have contained a ‘real and reasonably clear disclosure’ of the subject matter of the claim: s 43; regs 3.12–3.13; see 12.69ff. After the coming into effect of the amending Act the test has become whether the provisional specification ‘discloses the invention in the claim in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art’: s 43(2); regs 3.12, 3.13 (as amended). Under the system that applied before the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act, where a claim was amended to reveal substantial new subject matter a new priority date was determined for that claim (s 114; reg 3.14), so that separate claims in such a specification may have different priority dates. Where an application is governed by the regime introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act applicants are no longer permitted to add matter that goes beyond the disclosure made in the complete specification at its filing date so that amendments are only allowable to correct an obvious mistake or clerical error: ss 102, 105, 114; regs 10.2, 10.2A, 10.2B, 10.2C, 10.3 (all as amended). [page 355] 11.31

Convention and PCT applications A priority date may also

be secured in connection with a patent application filed in another country. This may occur in one of two ways. In the first place a ‘Convention application’ may be made. Where an application has previously been made in a country which, like Australia, is a party to the Paris Convention for the Protection of Industrial Property, the applicant may also seek protection in Australia. Provided the Convention application is made within 12 months of the original foreign application, the Act provides that the date of the latter is taken to be the priority date for Australian purposes. A Convention application must, however, be accompanied by a complete specification and by a certified copy of the foreign specification. Alternatively, a ‘PCT application’ may be made under the terms of the Patent Cooperation Treaty 1970. A Convention application is essentially founded on the notion of reciprocity between member nations, with lodgment of an application in one country effectively creating a priority period in which protection may be sought in others. By contrast, the PCT seeks to establish a more genuinely international system. A single PCT application is made within any contracting state designating those countries in which it is intended to seek a patent. If the application designates Australia as a country in which patent protection is sought, and if the application has been given an international filing date, it will be treated as an application under the domestic legislation and the international filing date will become its priority date for domestic purposes. From this point on the application will, as far as Australia is concerned, be governed by Australian legislation. The terms of the PCT further require that an international search be conducted to identify prior discoveries and publications bearing upon the issue of patentability, and that WIPO publish the application. An optional international preliminary examination may also be sought in order for a tentative conclusion to be reached on patentability. Although such searches and examinations have no binding effect in relation to the success of the application under domestic law, they might be expected to be of significant aid to the domestic authorities. Apart from being used by foreign corporations to secure patent protection in Australia, PCT applications have also proved to be fairly popular with local inventors. They offer a useful way of reducing the complexity of

seeking patent protection both in Australia and in other countries.115 The PCT system also has the advantage that, after payment of an initial processing fee, filing fees for the countries designated in the application need not be paid until at least 18 months after the priority dates. 11.32 Prior to the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act, Ch 8 of the Patents Act 1990 (Cth) and Ch 8 of the Patents Regulations 1991 (Cth) governed applications for Convention applications (ss 94–96; regs 3.12, 8.5– 8.7) and PCT applications: ss 88–93; regs 3.12, 8.1–8.4. After commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act, the Patents Act 1990 was restructured so that the previous Ch 8 was repealed, as were the supporting regulations, and the various provisions for Convention applications [page 356] and PCT applications were located with the equivalent provisions for a standard patent application. A new power to prescribe special rules for such applications was introduced by amendment to s 29 and as a result a large number of regulations were either repealed, relocated, introduced and/or amended.116 11.33 Role of patent attorneys Patent attorneys play a key role in preparing and conducting patent applications. Under Ch 20 of the Act, an individual applying for registration as a patent attorney is required to have a tertiary qualification ‘in a field of technology that contains potentially patentable subject matter’ (reg 20.6), and must also satisfy the Designated Manager of the Professional Standards Board for Patent and Trade Marks Attorneys that ‘the applicant has the knowledge of intellectual property law and practice that is required for a person to practice as a patent attorney’: reg 20.8. That knowledge should include the minimum requirements set out in Sch 5 of the Regulations which cover the legal and practical aspects of the patent system, as well as the trade marks and registered designs systems (fields in which they are also regularly consulted). Only

registered patent attorneys are permitted to carry on the business of preparing patent documentation and prosecuting applications (ss 200(1), 201), though inventors may always take the (often unwise) step of acting for themselves. Solicitors are specifically prohibited from drafting specifications (a task which has been described as ‘an exercise in draftsmanship, prophecy, scientific exegesis and delimitation’),117 unless they are also patent attorneys or acting under the instructions thereof: s 202. Their statutory monopoly in relation to specifications has helped patent attorneys assume a general role of expert providers of advice in relation to the entire process of patenting and as a consequence they are subject to a regulatory regime that includes provision for a code of conduct and disciplinary actions for professional misconduct, unsatisfactory professional conduct and obtaining registration by fraud: regs 20.32–20.52. Prior to the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act, only individuals could seek registration as a patent attorney, but after commencement of the amending Act the Patents Act 1990 was amended to permit a company to be registered as a patent attorney provided that at least one director of the company is registered as a patent attorney as an individual: s 198(9)–(11); Regulations Ch 20A. This reform allows patent attorneys to practice through a company structure. The amendments provide a new regime to allow registration of an incorporated patent attorney and include arrangements for discipline offences and permit the Designated Manager to provide relevant information about incorporated patent attorneys to the Australian Securities and Investments Commission: s 183(2). [page 357] The Patents Act 1990 was also amended to allow the Designated Manager to suspend the registration of a patent attorney charged before the Disciplinary Tribunal with a ‘serious offence’: regs 20.1(1), 20.28A(2), 20.28B. The amendments also extend the scope of the privilege in relation to communications, records or documents made

for the purpose of a registered patent attorney providing intellectual property advice to clients to the same extent as if the patent attorney were a legal practitioner providing advice. This privilege extends to client relations with foreign patent and trade mark attorneys: s 200(2).

Processing of standard patent applications 11.34 Preliminary processing Once a complete application for a standard patent is filed, the specification documents, drawings and abstracts will be subjected to a preliminary formalities examination; various details (including name of applicant, title, filing date and priority particulars) will be published in the Australian Official Journal of Patents (s 53; reg 4.1); and the subject matter will be classified according to the Strasbourg Agreement Concerning the International Patent Classification: see 21.54. 11.35 Publication and ‘open for public inspection’ Eighteen months from the earliest priority date, unless previously lapsed, refused or withdrawn, the specification will be ‘laid open for public inspection’ (OPI) by publication of a notice in the Official Journal: ss 54–55; regs 4.2–4.3. After commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act, the law previously found in the now repealed Ch 8 is relocated to Ch 4 and PCT applications are taken to have become open for public inspection and published in Australia through a notice in the Official Journal under a new section and sub-regulation: s 56A; reg 4.4. The effect of publication is significant because from the day of OPI ‘the applicant now has the same rights he or she would have had if a patent had been granted’ (s 57) and may seek remedies against acts of infringement committed from that day. However, infringement proceedings cannot be commenced until the patent is in fact granted: s 57(3). A patent specification may be laid open for public inspection before it has been accepted for grant and indeed often before it has been subject to examination for validity. It is a general objective of the patent system that the teaching of the specification should be made available to the public. 11.36 Restrictions on publication Not every invention is one that

the public should have available. Documents subject to legal professional privilege, documents subject to court orders prohibiting disclosure and documents that the Commissioner has reasonable grounds for believing should not be OPI will not be published at this time: s 55(1); reg 4.3. In 1987 the Nuclear Non-Proliferation (Safeguards) Act (Cth) amended the Patents Act 1952 (Cth) to allow appropriate safeguards to prohibit or restrict publication of the information contained in a patent specification for an invention applicable to enrichment of nuclear material, reprocessing of irradiated nuclear material, production of heavy water or nuclear weapons, or nuclear information that is covered by an international agreement and declared by the [page 358] Minister to be information relating to ‘associated technology’. These provisions are reproduced in Ch 15 of the 1990 Act (ss 147–153). 11.37 Preliminary search and opinion The Intellectual Property Laws Amendment (Raising the Bar) Act introduces a new procedure that allows the Commissioner to conduct a ‘preliminary search and opinion’ in relation to a request for a standard patent. Most applications for a standard patent in Australia are made through a PCT application with only 3 per cent of applications originating as domestic applications. A PCT application will enjoy the benefit of a preliminary search and in some cases an international examination report that will provide the applicant with information concerning possible deficiencies in the specification, the likelihood of a patent being granted or the possible scope of any monopoly. Having this information at an early stage in the application process is useful in deciding whether to proceed with a national application. Introducing a ‘preliminary search and opinion procedure’ for domestic applications for standard patents similar to the international search and preliminary examination available under the PCT allows domestic applicants not using the PCT system access to comparable information and could assist them when deciding whether to proceed

with their application and continue to examination: s 43A; regs 3.14A, 3.14B. 11.38 Requesting examination Australia operates a system of deferred examination and the Patent Office will process applications only as requested (s 44(1)), although the Commissioner may nudge applicants along by directing applicants to ask for examination of their patent request and complete specification: s 44(2)–(4). An applicant may request an expedited examination in order to hasten progress towards grant (reg 3.17(2)), or in some cases where a request was made prior to 15 April 2013 a modified examination,118 and in special circumstances, also where a request was made prior to 15 April 2013, ask for a deferment:119 s 46. In practice, many inventors do not proceed with examination of their specification, either because they have lost interest in obtaining a patent or else because they are in the course of developing some other aspect of their research that is not necessarily relevant to the application already filed. An application will lapse under s 142 if the applicant does not request examination within five years of filing a complete specification (s 44(1); reg 3.15); or, for applications governed by the law prior to the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act, within six months of a direction to request an examination (s 44(2); reg 3.16(2)); or within two months of a direction to request examination in the case of applications governed by the law [page 359] applicable after the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act: s 44(2); reg 3.16(2) as amended. If the Patent Office examined every application made, without waiting for the applicants to indicate whether they intended to proceed, it would still be processing applications made decades ago. Where requested, the time lapse between lodgment and examination tends to be between six and nine months. 11.39 Criteria for examination For applications governed by the

law applicable prior to the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act on 15 April 2013, the then s 45 and reg 3.18(2) required the Patent Examiner to report on whether the application and specification complied with the requirements in the Act and the Regulations, including whether: the person to be granted the patent is eligible under s 15; the application satisfies the formal requirements of (or prescribed under) s 29; the content of the specification complies with s 40; the invention is a ‘manner of new manufacture’ which is both novel and inventive (see 12.3); the invention is excluded from patentability under s 18(2) or the application could be refused under s 50 (see 12.18, 12.24, 12.26); and the application contravenes the prohibition in s 64(2) on ‘double patenting’ (that is, the same person applying for two patents through claims that have the same priority date). The Intellectual Property Laws Amendment (Raising the Bar) Act repealed s 45(a), (b) and (c) of the legislation and substituted new paragraphs applicable on and after 15 April 2013 for all applications that required the examiner to report on whether: the specification complied with s 40(2)–(4) of the Act (s 45(a)); ‘to the best of his or her knowledge the invention so far as claimed satisfies the criteria mentioned in paragraphs 18(1) (a), (b) and (c)’ (s 45(b)); and the invention is a patentable invention under s 18(2): s 45(c). The existing para 45(d) was retained, which requires the examiner to report on such other matters as are prescribed in the Regulations. Regulation 3.18(2) was amended to refine the matters the examiner is to consider although essentially all the headings in the previous legislation are retained except that para (d) relating to patentable inventions under s 18(2) is now in the body of the Act rather than the Regulations, paras (vi) and (vii) referring to Convention applications are removed and replaced with a requirement under reg 3.18(2)(a)(iii)

to comply with the new s 29B, and a new requirement for PCT applications is established under reg 3.18(2)(f). Section 45(1A) was repealed and not replaced. There are two immediately noticeable effects of these changes. The first is that in response to the requirements of Art 17.9.5 of AUSFTA, questions of utility (see 12.57–12.58) are now to be considered at examination, as well as at re-examination, opposition and revocation. The requirement of usefulness will only be satisfied if the [page 360] patent specification discloses a specific, substantial and credible use for the invention: s 7A. The second is that the prior art information to be considered at examination and re-examination for novelty and inventive step, previously limited to documentary evidence, now includes evidence of prior use of the invention: s 7. Prior to the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act, the Patents Act 1990 made provision for modified (and effectively less rigorous) examinations in the case of a Convention application, or where a patent has been granted in a prescribed foreign country in respect of a comparable application: ss 46–48.120 The amending Act repealed ss 47 and 48 and the system is no longer available for requests made after commencement. Where a request for modified examination had been properly made prior to 15 April 2013 modified examination is still available for that application so that compliance with s 40 is not examined, although some details of micro-organism deposit (see 12.64) must be considered. Modified examination was especially attractive where a United States patent had been granted with sets of claims which would not comply with Australian laws about unity of invention,121 because it allowed a single Australian patent to be granted incorporating all of these claims. Once acceptance has taken place following modified examination the usual requirements of the Act apply so that all of the grounds available at re-examination,

opposition, revocation and voluntary amendment are available and it may be necessary to lodge an amendment once the patent has been granted to avoid non-compliance with s 40, a process for which a well-established procedure has been developed. 11.40 Re-examination Chapter 9 of the Act also provides for reexamination of applications for standard patents and granted standard patents (ss 96A–101). Prior to commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act the only matters considered were whether the invention lacked novelty or inventiveness against a restrictively defined documentary prior art base: see 12.36, 12.47. After commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act, the Patents Act 1990 (Cth) and Patents Regulations 1991 (Cth) have been amended so that all of the grounds now available at examination, including manner of manufacture, novelty, inventive step, utility, ‘prior use’, compliance with s 40(2) and (3), and with s 18(2) are to be considered at re-examination: s 98. Re-examination usually addresses documents not previously considered in original searches.122 The Commissioner has discretion to initiate re-examination at any time [page 361] prior to grant, including during opposition proceedings, or after grant of the patent: s 97(1)–(2). After grant the Commissioner must reexamine if asked to do so by any person, including the patentee, and may be directed by a court to do so where there are proceedings before such a court in which validity is in dispute:123 s 97(2)–(3). Relatively little use has been made of this procedure to date,124 though it has been suggested that ‘in the right circumstances it can be an effective inexpensive approach to patent disputes and a useful complement to the opposition process’.125 11.41 Significance of the examination process An application must clear the hurdle of examination but success in doing so does not assure the validity of any resulting patent. For one thing, for patent applications and granted patents that are governed by the law

applicable prior to the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act, the prior art base against which the Patent Office assesses the application for novelty and inventiveness is narrower than the prior art base available, first, to opponents under that regime, who may point to disclosures through the doing of acts which examiners are not in a position to discover; and second, to petitioners for revocation, who under that regime have a wider range of grounds to contest validity than are available to examiners. The alignment of available grounds at all stages of patent testing provided by the Intellectual Property Laws Amendment (Raising the Bar) Act should reduce this area of uncertainty. However, the Act specifically provides that there is no guarantee of the validity of a granted patent: s 20. In this sense the system is basically self-enforcing, in that competitors may oppose the grant or seek revocation of a patent despite the Patent Office finding no fault. Given that any published document anywhere in the world may reveal an invention (see 12.36), it is unlikely that the Patent Office will discover all possible disclosures. In fact, it has been said that the majority of patents granted are either invalid for want of novelty or could be described as such if enough money were spent on the search of their antecedents.126 11.42 Disclosure of search results In an attempt to bring some foreign disclosures to the attention of the Patent Office, a new s 45(3) was introduced by the Patents Amendment Act 2001 to require a patent applicant to actively inform the Commissioner of the results of certain documentary searches carried out in relation to the application or a corresponding application filed in another country. From 1 February 2004 the results were to be disclosed at the time the applicant requests an examination, or six months after the search is completed, whichever comes later. Following amendments made by the Intellectual Property Laws Amendment Act 2003, the searches that were required to be disclosed were limited to those carried by a foreign patent office, and completed before the grant of the Australian patent: s 45(3)–(5); regs 3.17A–3.17B. The sanction for failing to make such disclosure

[page 362] was that if any of the withheld information was subsequently used (whether by the Commissioner or an opponent) to challenge the novelty or inventiveness of the applicant’s invention, the application could not be amended so as to remove that ground of objection: s 102(2C). These provisions have all been repealed by the Intellectual Property Laws Amendment (Raising the Bar) Act so that such search results do not have to be notified to the Commissioner and even where search results were not notified while the provisions were in force there is now no sanction to be applied. 11.43 Amendments If examination results in an adverse report the applicant may either voluntarily (s 104) or at the Commissioner’s direction (s 107) propose amendments to the application or specification for the examiner’s consideration.127 Prior to the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act an applicant or patentee could request an amendment at any time, or be directed to do so by the Commissioner or by a court whenever it appeared that a patent or a patent application would otherwise have to be treated as invalid: ss 104–107. There were restrictions on permissible amendments, including most importantly, that an amendment would be disallowed if its effect would be to have the specification claim matter not in substance disclosed in the specification as originally filed: s 102(1). However, the tendency of courts had been to adopt a liberal interpretation so as to allow any fair amendment which has previously been disclosed in substance.128 Further, in Pfizer Overseas Pharmaceuticals v Eli Lilly129 the Federal Court confirmed that under the then applicable legislation an invention need only be fully described at the date of grant, which meant that a patentee could acquire patent rights enforceable from the date the specification was laid open for public inspection under s 57(1) before they had in fact provided a complete and accurate disclosure of the invention to the public and accordingly created a period of uncertainty for the public between publication of the specification and actual grant.

After commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act an applicant must fully disclose the invention at the time of filing a complete specification in a manner clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. An applicant or a patentee may still request an amendment (s 104) or an amendment may be directed by a court (s 105) or the Commissioner: s 106 (granted patents), s 107 (standard patent requests). Under the newly drafted s 102(1), amendments to the [page 363] complete specification after the date of filing will not be permitted if the amendment would add matter that would go beyond the disclosure made in the complete specification on the filing date. In some circumstances the disclosure in the complete specification as filed may be taken together with any other prescribed documents that are not technically part of the complete specification as filed, but do form part of the disclosures made during the application, or are missing at filing: reg 10.2A. If the description filed by the applicant does not fully disclose the invention then the applicant would have to either narrow the scope of monopoly being sought to match the disclosure as filed, or choose to file a new application which would then attract a new priority date. The Patents Act 1990 was further amended by introducing s 102(2C) to allow Regulations to prescribe amendments that are not allowable by either the Commissioner or the courts in relation to patent requests (reg 10.2B) or for complete specifications: reg 10.2C. Amendments will not be allowable when court proceedings are pending (s 112), unless directed by a court under s 105. Amendments will be allowed to correct a clerical error or an obvious mistake in relation to a complete specification or for the purpose of complying with s 6(c) concerning deposit details under the Budapest Treaty: s 102(3). There is a procedure to deal with amendments that are not allowable but that have been inadvertently accepted: s 114.

Transition provisions in the Intellectual Property Laws Amendment (Raising the Bar) Act130 mean that the previous law on amendments continues to apply to a standard patent granted or an innovation patent certified before commencement of the Act, to standard or innovation patent applications where a request for amendment has been made prior to commencement or to an innovation patent where the Commissioner has decided to examine prior to commencement of the Act. All other requests or directions for amendment after commencement will be governed by the amended legislation. 11.44 Acceptance In relation to applications for standard patents where the applicant had requested examination prior to commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act, if after examination the Commissioner is satisfied that the invention is novel and inventive, and considers that there is no lawful ground of objection, the patent request and specification must be accepted: s 49. In relation to novelty and inventiveness at least, this effectively places the burden on the applicant to justify the grant of a patent, though they may expect to be given the ‘benefit of the doubt’ on other issues. Prior to 2001, the wording of s 49 was such that the applicant was given that benefit on all issues: indeed, the view taken by the courts was that the Commissioner should not refuse to accept an application unless it was ‘practically certain’ that the patent would be invalid.131 The provision was amended, however, in response to recommendations from both ACIP and the IPCRC as to the need to raise the threshold of patentability [page 364] and increase the chances of granted patents being found to be valid.132 An applicant may request that acceptance be delayed (s 49(3)), not beyond a date 21 months from the date of a first examination report, and the Commissioner must so postpone: ss 49(4), 142(2)(c); reg 13.4(1)(a).

Where the applicant has not requested examination prior to 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act changes not only the standard of proof, but also the matters about which the Commissioner must be satisfied. The Commissioner must now be satisfied, on the balance of probabilities, that the specification complies with s 40(2) and (3), that the invention is a manner of manufacture, is novel, has an inventive step, is useful, is not a human being or a biological process for their generation and that the matters prescribed in the Regulations are fulfilled: s 49(1); reg 3.18 (both as amended). The amending legislation introduces a new s 49A that gives the Commissioner a discretion whether or not to postpone acceptance of the application, either on his or her own initiative or if requested by the applicant. The Commissioner has discretion to determine the length of postponement but it must not be longer than 12 months from the date of the first examination report: s 49A(2), (3), (4); reg 13.4(1)(b). This reduction in maximum possible length of postponement is in keeping with other amendments designed to speed up the process of application to acceptance and grant. The amending legislation also gives the Commissioner a widely drawn discretion to revoke acceptance where administrative error has led to an acceptance that should not have been made: s 50A. Acceptance of a patent application and specification is advertised in the Official Journal and various documents associated with the application become open to public inspection, if they have not already done so: see 11.35. Almost all relevant documentation is published in this way, with the exception of examiners’ reports. 11.45 Opposition Once accepted and published it is now possible to oppose the grant of the patent.133 The Minister or ‘any other person’ may commence opposition proceedings within three months from the date of advertisement of acceptance: s 59; reg 5.3.l. The Commissioner is then required to decide the opposition, hearing both applicant and opponent if they desire, with an appeal lying to the Federal Court: s 60. Under s 59, a grant may be opposed on the grounds that the nominated person is not entitled to a grant of a patent for the invention, that the invention is not a ‘manner of manufacture’, is not novel, does not involve an inventive step, is not useful, is not patentable because it contravenes s 18(2) or that the

content of the specification filed in respect of the complete application does not meet the statutory requirements. The earlier narrower grounds of opposition have been widened to respond to the [page 365] obligation in Art 17.9.5 of AUSFTA (see 11.10ff), requiring consistency of grounds for testing validity of a patent both before and after grant. 11.46 Schedule 3 of the Intellectual Property Laws Amendment (Raising the Bar) Act, entitled ‘Reducing Delays in Resolution of Patent and Trade Mark Applications’, made a number of changes affecting the role and powers of the Commissioner in relation to patent oppositions. These include introducing s 105(1A) to provide that a court may consider and direct an amendment to an application while there is an appeal from a decision made by the Commissioner, which required a consequential amendment in s 112A so that only the court can deal with amendments to an application during an appeal from a decision made by the Commissioner. Schedule 3 also amended s 141 so that the Commissioner has discretion to refuse to allow an applicant to withdraw an application that has been opposed. This change was introduced in order to prevent applicants simply withdrawing the application being opposed but still pursuing a patent by filing a new divisional application for the same subject matter. A decision by the Commissioner to refuse to allow withdrawal of an opposed application is subject to review by the Administrative Appeals Tribunal: s 224. The amendments also provide a higher threshold test for the exercise of the Commissioner’s powers to summons witnesses, receive evidence or require production of documents or articles so that the Commissioner can reject requests by parties for the exercise of those powers where the Commissioner believes the evidence will have limited relevance or value in resolving the issues in dispute: s 210. Failure to comply with an exercise of the Commissioner’s powers will no longer attract criminal sanctions and the Commissioner has discretion to apply sanctions appropriate to

the particular circumstances and the person’s interest: s 210A. This might include refusal to grant a patent to a non-compliant applicant. Chapter 5 of the Patents Regulations 1991 that provides regulations regarding opposition proceedings has been substantially restructured in the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013. Even when opposition is unsuccessful and the patent is subsequently granted, the patent is not immune and may be challenged through re-examination proceedings or through an application for revocation. However, an important advantage for a patentee resisting revocation is the reversal of onus of proof which occurs once the patent is granted. Before grant the patentee has (at least to some extent) to make out the validity of the patent and adequacy of the documentation. Afterwards, the presumption is that the requirements of the Act have been fulfilled and the person seeking revocation has the onus of making out the grounds upon which they rely.

Processing of innovation patent applications 11.47 General An innovation patent application will be accepted, granted and registered after a formality check without first being examined as to substantive validity; but a granted innovation patent can only be enforced once it has been ‘certified’ following a substantive examination. Examination and possible certification will only occur on a request from the patentee or any third party or at [page 366] the initiative of the Commissioner. A granted innovation patent may also be opposed and subjected to re-examination. 11.48 Filing The innovation patent was part of an IP Australia New Patent Solution project and dealt with under a new ‘workflow process’. An application can be made in paper form, but can also be filed electronically through a page on the IP Australia website134 that allows an applicant to keep track of the application as it progresses

through the system. A paper request will be scanned into this system and the electronic file so created will become the official application file.135 It is intended that in the future paper applications will be returned to applicants after being scanned. An innovation patent application may be a complete application or a complete application based on a provisional application (s 29(1), (2)), a Convention application (previously s 94 but after commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act s 29B) or a divisional application (ss 79B–79C), but cannot be an application for a patent of addition: s 80. There is also no provision allowing a PCT application to designate anything other than a standard patent application for Australia. However, once a PCT application for a standard patent reaches the ‘national phase’ it may be converted to an application for an innovation patent. Such a conversion of an application must be done prior to acceptance because a proposal to amend an accepted patent request in a way that would convert an application for a standard patent to an innovation patent application or vice versa is not allowable: previously reg 10.3(3)(b)(i), but after the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (Cth) reg 10.2C(4). 11.49 Formality check, acceptance and publication After filing of a complete application for an innovation patent, there will be a formalities check (s 52(1) to establish (among other things) that the application is in the approved form, that the complete specification complies with the requirements of Sch 3 of the Regulations, and that the subject matter is not a human being, a plant or an animal or a biological process for their generation: reg 3.2B. If the application passes the formality check the Commissioner must accept the application (s 52(2)) and grant the patent. Prior to the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act, grant would be effected by sealing a patent deed (s 62(1)) and registering the patent (s 187(2)), and after the commencement of the amending legislation by ‘registering prescribed particulars of the patent in the Register’: ss 62(1) and 187(2). The Commissioner will then publish a notice of grant in the Official Journal and declare the complete specification open for public inspection: s 62(2). The content of the complete specification is now

‘made available to the public’ and cannot again be novel. However, if an application fails the formalities check it will not proceed to OPI. [page 367] 11.50 Examination for validity and certification Once an application has been granted, the Commissioner may either choose to initiate an examination to assess the validity of the innovation patent, or be required to do so in writing by the patentee or a third party: s 101A. Where the law prior to the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act applies, if the innovation patent is found not to be valid against any of the grounds in the then s 101B(2)–(7) it will be revoked, although only after the patentee has been given an opportunity to be heard and, if they wish, to amend the specification so as to overcome whatever problem has been identified: s 101F. The grounds for revocation under this regime are found in the earlier version of s 101B and are: that the specification does not comply with s 40 (s 101B(2)(a)); that it was not novel or involve an innovative step as required by s 18(1A)(a) or (b) (s 101B(2)(b)); that the invention was not patentable because it was for a human being or a process of their generation, or was a patent for an animal, a plant or a biological process for their generation and so in contravention of s 18(2) and (3) (s 101B(2)(c)); and that the use of the invention would be contrary to law: s 101B(2)(d). Determination of whether the invention is novel or involves an innovative step carries a higher onus on the patentee, in that the Commissioner must be satisfied that there are no grounds of objection in relation to those two matters, but the benefit of any doubt is given to the patentee in relation to the other grounds: s 101E. The patentee was also required to disclose the results of any relevant documentary searches carried out by an overseas patent office and completed before the Australian patent is certified, or face the prospect of being unable to amend the specification to overcome any problem disclosed by those searches: ss 101D, 102(2C). This

must be done when requesting an examination (or when someone else does so, or three months after the Commissioner decides to undertake an examination, as the case may be) or three months after the search is completed, whichever comes later: regs 9A.2A–9A.2B. After commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act the previous ss 101B, 101E, 101F(1) were all repealed and new sections substituted. The grounds for revocation under s 101B were changed and expanded so that the Commissioner must now report upon: whether the specification complies with s 40(2)–(4) in that there is disclosure clear and complete enough for the invention to be performed by a person skilled in the art; there is clarity, succinctness and the supported claims relate to one invention only (s 101B(2)(a)); whether the invention complies with s 18(1A)(a), (b) and (c) so that it is a manner of manufacture, is novel, involves an innovative step, and is useful (s 101B(2)(b)); whether the invention is unpatentable under s 18(2) and (3) because it is for a human being or a biological process for their generation, or for an animal or a plant or a biological process for their generation (s 101B(2)(c)); [page 368] whether the use of the invention would be contrary to law (s 101B(2)(d)); whether it claims a substance capable of being a food or medicine for humans or animals and is a mere mixture of ingredients (s 101B(2)(f)), or claims a process for producing such a substance by mere admixture (s 101B(2)(f)); whether a claim includes the name of a person as the name or part of the name of the invention (s 101B(2)(g)); whether the patent claims an invention that is the subject of another patent made by the same inventor where there is a

claim or claims with the same priority date (s 101B(2)(h)); and such other matters as are prescribed by regulation: s 101B(2) (i). The amended s 101E raises the standard of proof so that the Commissioner should be satisfied on the balance of probabilities that the patent meets the requirements and that none of the grounds of revocation in s 101B are made out. If the Commissioner is not so satisfied the Commissioner can refuse to certify the innovation patent. Where the Commissioner has examined the patent, has refused to certify the patent and it has not otherwise ceased, the Commissioner must revoke the patent: s 101F(1). The requirement to provide results of previous searches at overseas patent offices is removed by the repeal of s 101D. If after examination an innovation patent in force is found not to contravene any of the grounds for revocation, the Commissioner will issue a certificate of examination and the specification will be published again: s 101E. The Intellectual Property Laws Amendment (Raising the Bar) Act introduced a new s 101EA giving the Commissioner power to revoke a certificate of examination to correct an administrative error, and amend the Register under a new s 191A(1)(c). Once certified the patent becomes enforceable and the patentee may sue for infringement: s 120(1A). Significantly, opposition and re-examination actions can also now be initiated. 11.51 Opposition to innovation patents After certification a granted innovation patent may be opposed at any time during its term. Opposition to an innovation patent is very similar to the process of opposition to grant of a standard patent: Regulations Ch 5. The Minister or any person may oppose an innovation patent on the grounds that the patentee is not entitled to the patent, or is entitled only with some other person; that the invention is not a manner of manufacture or is not novel, or does not involve an innovative step; that it is not patentable under s 18(2) or (3); or that the specification does not comply with s 40(2) or (3): s 101M. The Intellectual Property Laws Amendment (Raising the Bar) Act expands these grounds by adding the ground of lack of usefulness. The

Commissioner may consider any ground on which an innovation patent may be revoked, whether raised or relied upon by the opponent or not: s 101N(3). If the Commissioner is satisfied on the balance of probabilities that any of the grounds is made out an innovation patent will be revoked: s 101N(4). Chapter 5 of the Patents Regulations 1991 were extensively [page 369] redrafted and restructured by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013. 11.52 Re-examination of innovation patents A certified innovation patent may be re-examined at any time and will be revoked if it is found deficient: ss 101G–101L. The procedure is essentially similar to re-examination of a standard patent: see 11.40. Prior to the Intellectual Property Laws Amendment (Raising the Bar) Act the Commissioner would consider whether the patent was novel and involved an innovative step in the light of new documentary evidence but s 101G(3) was amended to apply to all innovation patents, whether granted before or after commencement, and expanded the grounds for revocation for innovation patents during reexamination136 to include full description (s 40(2)); clarity, succinctness and fully supported claims (s 40(3)); manner of manufacture (s 18(1A)(a)); utility (s 18(1A)(c)); non-patentability of human beings and biological processes for their generation (s 18(2)); and non-patentability of plants and animals and biological processes for their generation: s 18(3).

Lapse and restoration of applications 11.53 Section 142 provides for a number of situations in which a patent application will be taken to lapse. These include, where a provisional specification has been lodged for either a standard or innovation patent, the failure to lodge a complete specification within 12 months as required by reg 3.10. Other situations in which a standard patent application will lapse include:

failure to request an examination within five years of lodging a complete specification (reg 3.15) or within the period prescribed by the Regulations where there has been a direction to request examination by the Commissioner (reg 3.16);137 failure to pay the prescribed continuation fee (reg 13.3); and where an application is not accepted within the period prescribed in the Regulations from the date of the examiner’s first report: reg 13.4.138 Provision is made under s 223 for extensions of time to be granted in various circumstances, with a general power to cover any situation where a time limit has been exceeded by reason of some error on the part of the Patent Office or the person affected, or by reason of circumstances beyond that person’s control. Where an extension of time is given in respect of a period which has already expired, the application is taken to have been restored: s 223(7), (8). [page 370]

GRANT AND SUBSISTENCE OF PATENTS Grant of patent 11.54 Once an application has been accepted and, in the case of a standard patent application, any opposition overcome, the patent will be granted by the entering of particulars upon the Register: ss 61–62; reg 6.2. Prior to the Intellectual Property Laws Amendment (Raising the Bar) Act the patent was ‘sealed’ but this will no longer occur; there will only be a certificate of grant and the legislation has been consequentially amended throughout to refer to to the grant of a patent. If the right to patent the invention has been assigned prior to grant or the person nominated as the grantee of the patent has died, the patent will be granted to the assignee or the applicant’s legal representative respectively: ss 113, 215. The Act also deals with a number of situations in which it becomes apparent that a person

other than the current applicant for, or existing holder of, a patent is entitled to obtain a patent in respect of the relevant invention. This might come to light in court proceedings relating to the patent, following revocation of the patent, or on the non-acceptance of a request and complete specification. In each instance the person identified to be eligible may, on making a complete application, be granted the patent: ss 34–36. The Commissioner has power to declare who is the owner of a patent and to amend the Register to correct an error or omission: s 191A.

Term of standard patent 11.55 The term of a standard patent is 20 years from the ‘date of the patent’ (s 67), which in most cases is the date on which the complete specification was lodged: s 65; reg 6.3. Prior to 1995 the term was set at 16 years, with the possibility in some cases of an extension being granted. The 1952 Act originally allowed for an extension of either five or 10 years on the grounds of inadequate remuneration due to no fault of the patentee, or (less commonly) because its exploitation had been inhibited due to war. In 1989 the Act was amended, doing away with extension of term for any products other than pharmaceutical substances for human therapeutic use, and limiting the extension to four years. The 1990 Act also adopted these provisions. In order to comply with obligations under Art 33 of the TRIPS Agreement the term for all standard patents granted after 1 July 1995, and all patents granted before that date but due to expire after it, was changed to 20 years by the enactment of the Patents (World Trade Organization Amendments) Act 1994. Whether this general lengthening of patent term has been beneficial to the national economy is far from clear. A paper prepared for the Industry Commission in 1996 estimated that, as a net importer of patented products and processes, Australia stood to lose anywhere up to $3.8 billion over the following 30 years in additional licence fees, even after offsetting the additional revenue that will accrue to Australian patent holders.139

[page 371]

Extension of term for drug patents 11.56 The 1994 amendments made no provision for standard patent terms to be extended beyond 20 years. However, pharmaceutical industry associations have consistently argued that governmental health and safety laws significantly reduce the effective term of their patents. New pharmaceutical products cannot be sold, distributed or used until extensive test data and other information to prove that the product meets stringent standards is supplied to the Secretary of the Department of Health in support of an application for inclusion on the Register of Therapeutic Goods and marketing permission. Conducting the trials and tests, preparing the documentation and data and pursuing the application for approval is often an expensive and lengthy process which can last years. The government accepted this argument and the Patents Act was amended in 1998 to introduce a system of extension of term140 for a period of up to five years of standard patents for pharmaceutical substances141 ‘in substance disclosed’142 and claimed in the complete specification for therapeutic use:143 ss 70–79A. An application may only be made under s 70 in relation to a pharmaceutical substance claimed per se, a requirement that means that it is the pharmaceutical substance itself that is the subject of a claim — not a pharmaceutical substance that is the subject of a ‘method’ claim.144 The only exception, recognised in s 70(2)(b), is where the method in question involves the use of recombinant DNA technology to produce the substance. Extensions of term will only be granted where goods containing or [page 372] consisting145 of the substance are included in the Australian Register of Therapeutic Goods146 and there is at least five years between the date of the patent and the first regulatory approval: s 70(3).147 The

patent must not have been previously extended: s 70(4). Patents granted after 27 January 1999, or granted before that date but due to expire after 1 July 1995, may be extended. An application for extension must be made during the term of the patent (s 71(2)); the Commissioner will advertise the application in the Official Journal (s 72) and extension can be opposed: s 75. The intention is to provide 15 years of effective life for the patent from the first date of regulatory approval to the end of the period of extension, subject to a maximum term of 25 years. The length of a permissible extension can be calculated by taking the period equal to that between the date of the patent and the first regulatory approval and deducting five years with the extension limited to a maximum of five years: s 77. 11.57 An important feature of this system is what are called the ‘springboarding provisions’, which place intricate limitations on the patentee’s exclusive rights during the period of extension: s 78. These provisions effectively mean that a third party may make use of a pharmaceutical substance for non-therapeutic purposes, or for uses which are solely connected with making an application to obtain marketing approval in Australia (by having goods included in the Australian Register of Therapeutic Goods) or ‘similar regulatory approval’ overseas, without infringing the patent. The object is to provide a strictly controlled opportunity for people who wish to commercially manufacture and market generic substitutes of the pharmaceutical to carry out activities towards obtaining marketing approval during the period of patent extension so they can release their own product more quickly once the patent does expire. In late 2002 the Department of Industry, Tourism and Resources began a review of pharmaceutical patent extensions and ‘springboarding’ in WTO TRIPS legal consultations. A matter of particular interest in those consultations was the exploration of an option to allow export during the extension period without it being an infringement, but while subsequently AUSFTA provided for the ‘springboarding’ provisions to continue, it expressly excluded the possibility of export of the pharmaceutical product made under those provisions for any purpose other than the seeking of marketing approval.148 Following AUSFTA, Australia introduced a new and additional form of ‘springboarding’ provisions as exceptions to infringement to

cover all ‘pharmaceutical [page 373] patents’ regardless of whether an extension of term had been applied for, or granted, or indeed whether the patent was eligible for a term of extension. Schedule 7 item 3 of the Intellectual Property Laws Amendment Act 2006 (Cth) amended the Patents Act 1990 by introducing s 119A which provides that the rights of a patentee in a pharmaceutical patent are not infringed by a person exploiting the patent solely for purposes connected with (a) obtaining inclusion in the Australian Register of Therapeutic Goods of goods that are intended for therapeutic use, or (b) obtaining similar regulatory approval under foreign law. Where foreign regulatory approval is being sought the pharmaceutical product cannot be exported unless the term of the patent has been extended: s 119A(2). The term ‘pharmaceutical patent’ is defined at s 119A(3) and includes ‘a pharmaceutical substance’ or a ‘method, use or product relating to a pharmaceutical substance’. This covers a wider range of patents than encompassed by the system under ss 70–79A, although pharmaceutical goods not intended for human therapeutic use, such as agricultural or purely veterinary chemicals, are not included. The overall effect of this system is to align Australia with the positions in the United States, Europe and New Zealand. See also 14.28. 11.58 On 15 October 2012 the government announced a review of pharmaceutical patents. In the course of the review the Pharmaceutical Patents Review Panel (PPRP)149 was requested to pay particular attention to the system of extensions of term for pharmaceutical patents found in the s 70 of the Patents Act 1990. A Final Report submitted to government in May 2013 was not published before the parliament was prorogued and a general election called. The new government’s response to this report stated, ‘The government has no plans to respond to the report at this stage but may take information in the report into account when considering future policy.’150 Significantly, the Pharmaceutical Patents Review

report was taken up by the Productivity Commission in its review of Intellectual Property Arrangements (2016). The Productivity Commission considered that pharmaceutical patents were high stakes for both the pharmaceutical firms because of development costs and times and government and the community because of access to new drugs and affordability (ultimately borne by taxpayers).151 The Productivity Commission rejected the argument that term extensions were required to maintain the incentive to invest in developing new drugs. This, the Productivity Commission reasoned, was not borne out by attracting additional investment, the high costs to taxpayers for providing extensions, and that those resources might be better targeted in other ways, such as direct grants. The Productivity Commission recommended the Australian Government should reform extensions of patent terms for pharmaceuticals so that they are only available for patents covering an active pharmaceutical ingredient, they [page 374] are calculated based on the time taken by the Therapeutic Goods Administration for regulatory approval over and above 255 working days (one year), the data collection requirements for extensions of term should be improved (s 76A), and no extensions of term should be granted until data is provided in a satisfactory form.152 Importantly, the Productivity Commission accepted some form of extension was required for regulatory delays because of the requirements in the AUSFTA that ‘compensation’ be offered for ‘unreasonable curtailment’ of the patent term (Art 17.9.8(b)). While not accepting the Productivity Commission’s recommendations, the Australian Government has committed to discuss ways to improve patent term extensions with affected stakeholders.153

Extensions of term for unreasonable delays in granting patents 11.59

Article 17.9.8(a) of AUSFTA requires that if there are

‘unreasonable delays in … issuance of patents, [a] Party shall provide the means to, and at the request of a patent owner, shall, adjust the term of the patent to compensate for such delays’.154 Unreasonable delays would include a delay of more than four years from application, or two years after an applicant has made a request for examination, whichever is later. Delays caused by the applicant are not to be included in the calculation of the delay. The Patents Act 1990 only provides for extensions of term for pharmaceutical patents: s 70. On 20 February 2005 IP Australia published an Official Notice155 discussing the methods and alternatives available to an applicant in prosecuting an application for grant and concluded that there were only a very limited set of circumstances in which a delay of the kind contemplated by the AUSFTA could occur. It concluded by claiming that IP Australia currently did not experience such delays on a systematic basis and did not anticipate that they would occur in the future but that the situation would be monitored to ensure that ‘all requirements continue to be met’. 11.60 The term of an innovation patent is a maximum of eight years from the date on which the patent was granted: s 68. There is no provision for extension of an innovation patent.

Revocation 11.61 A patent, including an innovation patent following its certification, may be revoked either by a prescribed court or by the Commissioner. A court may act either on a petition by the Minister or any other person (s 138), or on a counterclaim for revocation by a defendant accused of infringing the patentee’s rights: s 121. The grounds for revocation are set out in s 138(3). They are that: (a) the patentee is not entitled to the patent; (b) the invention was not patentable; [page 375] (c) repealed;156

(d) the patent was obtained by fraud or misrepresentation; (e) an amendment to the request or specification was made or obtained by fraud or misrepresentation; or (f) the specification does not comply with the requirements of s 40. The court may revoke either the whole patent or one or more of the claims in the complete specification. The Commissioner may revoke a patent in a number of situations. In the first place, this may be done where the patentee has offered to surrender the patent, although if any revocation or infringement proceedings are pending, the leave of the court and the consent of the parties must be sought: s 137. Second, where a standard patent covers an invention that is an improvement in or modification of an invention covered by another patent held by the same patentee, an application may be made to have the former patent revoked and a patent of addition granted instead: s 82. Third, the Commissioner may be asked to revoke a standard patent under s 134 for nonworking, a compulsory licence having earlier been granted: see 13.31. Finally, where an adverse report has been received after a reexamination (see 11.40, 11.52), the Commissioner may revoke the patent in whole or in part, though the patentee must be given a hearing and no action is possible while court proceedings in relation to the patent are pending: ss 101, 101J.

1. 2. 3. 4. 5. 6. 7. 8. 9. 10. 11.

See generally Hulme 1896; Ricketson 1984a, 859–68. See Mandich 1948. The aim was also to encourage innovators to come to Venice. See Hulme 1896. Evans & Jack 1984, 256. Ibid, 257. (1602) 11 Co Rep 84; 74 ER 1131. See also Corre 1996. Ibid at 74 ER 1139. See Davies 1932. 21 Jac 1 c 3 1623. [1913] AC 781 at 793. See also Liardet v Johnson (1778) 1 WPC 53; 62 ER 1000. Note criticism of the ‘bargain theory’ by Drahos & Mayne 2002, 15. They argue that the benefits of the system (the ‘bargain’) are only available to those with sufficient resources to engage in the legal activity required to obtain and enforce them.

12. 13. 14. 15. 16. 17. 18. 19. 20. 21. 22. 23. 24. 25. 26. 27.

28. 29. 30. 31. 32. 33. 34.

35. 36. 37. 38. 39.

See Eisenschitz 1987. Patent Law Amendment Act 1852 (UK); Patents, Designs and Trademarks Act 1883 (UK). The Act replaced the Patents Act 1903 (Cth) and was based on the report of the Dean Committee (Dean 1952). The 1903 Act had replaced the various colonial Patent Acts. Boldrin & Levine 2012, 1. IPAC 1984. Mandeville et al 1982. Ibid. Some commentators believe that too much is made of the cost/benefit equation: see eg Norman 1984. Bureau of Industry Economics 1994. Ibid, 24–6, 35; and see 3.9–3.10 as to the relationship between trade secrets law and the patents system. Ibid, 47. For an interesting and more recent empirical study of medical technology in Australia, see Nicol & Nielsen 2003. And for follow-on innovation in pharmaceuticals, see Christie et al 2013. Bureau of Industry Economics 1994, 47–50. See also 11.55 as to the impact of extending the standard patent term to 20 years, something required of Australia by the TRIPS Agreement. IPCRC 2000, 139. Bureau of Industry Economics 1994, as quoted by IPCRC 2000, 138. IPCRC 2000, 143. Scherer 1999, as quoted by IPCRC 2000, 143. See 11.44, 12.35 for discussion of the changes to the burden of proof on an applicant in relation to the threshold requirements of novelty and inventive step introduced by the Patents Amendment Act 2001 (Cth) in response to the committee’s recommendations. Productivity Commission 2016, 199. Australian Government 2017, 8–12. All references in this and the next three chapters are to the 1990 Act and the Patents Regulations 1991, unless otherwise stated. See eg Marsh 1993; Speagle & Dowling 1993. Barry Jones, Minister for Science, Customs and Small Business, Hansard, 1 June 1989, 3479. Prime Minister’s Science and Engineering Council 1993b, 80. As to the interpretation of the transitional provisions, which have caused no little difficulty in practice, see eg N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513; and see also Speagle & Dowling 1993, 177– 80. Patents Amendment Act 2001 (Cth), which came into force on 1 April 2002. Intellectual Property Laws Amendment Act 2003 (Cth). The US Free Trade Agreement Implementation Act 2004 (Cth) came into force with the grant of Royal Assent on 16 August 2004. The Patent Amendment Regulations 2004 (No 3) provides a procedural framework for the changes to opposition to grant under the Act. The Intellectual Property Laws Amendment Act 2006 (Cth) introduced amendments to the Patents Act 1990 in Schs 5–10 inclusive. This Act has a complicated

40.

41. 42. 43. 44. 45. 46. 47. 48. 49. 50. 51. 52. 53. 54. 55. 56. 57. 58. 59. 60. 61. 62. 63. 64. 65. 66. 67. 68. 69. 70. 71. 72. 73.

commencement timetable for the commencement of differing schedules. Singapore–Australia Free Trade Agreement [2003] ATS 16; Australia–United States Free Trade Agreement [2005] ATS 1; Australia–Thailand Free Trade Agreement [2005] ATS 2; Australia–Chile Free Trade Agreement [2009] ATS 6, Art 17.19; Agreement Establishing the ASEAN–Australia–New Zealand Free Trade Area [2010] ATS 1; Free Trade Agreement between the Government of Australia and the Government of the Republic of Korea [2014] ATS 43; Malaysia–Australia Free Trade Agreement [2013] ATS 4; China–Australia Free Trade Agreement [2015] ATS 15; Agreement between Australia and Japan for an Economic Partnership [2015] ATS 2. See signed on 8 May 2004, in force from 1 January 2005. See Arup 2004a; McLeod et al 2004; Weatherall 2004; Drahos & Henry 2004. ALRC 2004a. Department of Industry, Innovation, Science, Research and Tertiary Education 2008. For an outline of all of the IP Australia Consultation Papers of 2009, see Stewart, Griffith & Bannister 2010, 358–64. There was also a consultation paper entitled ‘Resolving Trade Mark Opposition Proceedings Faster’, June 2009. IP Australia 2009a. IP Australia 2009b. ACIP 2010a. ACIP 2008. ACIP 2009a. ACIP 2010b. Australian Government 2011a. Patents Act 1990 (Cth) s 119B. Patents Act 1990 (Cth) s 119C. Summerfield 2013a, 2013b. ALRC 2003; ALRC 2004a; ALRC 2004b. ALRC 2004b, Recommendation 6-2. Ibid, Recommendation 6-3. ACIP 2008. ACIP 2009a. ACIP 2010b. ACIP 2010b, Recommendation 1. Ibid, Recommendation 2. National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252: see 12.4. ACIP 2010b, Recommendations 3–4. See Lawson 2007. Ibid, Recommendation 5. Ibid, Recommendation 6. Ibid, Recommendation 7. Ibid, Recommendation 8. Ibid, Recommendation 9. Ibid, Recommendation 10. Ibid, Recommendation 11. Australian Government 2011a.

74. 75. 76. 77. 78. 79. 80. 81. 82. 83. 84.

85. 86. 87. 88. 89. 90. 91. 92. 93. 94. 95. 96. 97. 98. 99. 100. 101. 102. 103. 104. 105. 106. 107. 108. 109. 110. 109. 112.

Productivity Commission 2013. See Malbon et al 2014, 396–7, 507–17. Implementation of para 6 of the Doha Declaration on the TRIPS Agreement and public health, WTO, General Council, WT/L/540 and Corr. 1, 1 September 2003. Protocol Amending the TRIPS Agreement, WTO, General Council, WT/L/641, 8 December 2005. Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, . Patents Amendment Act 1979 (Cth). ACIP 1995. Ibid, 5. Ibid, 24. See Patents Amendment (Innovation Patents) Act 2000 Sch 2 items 1, 2(1). There are detailed exceptions to these general principles: see items 2(2)–(6). ACIP conducted a review into whether these restrictions should be removed. The Final Report advised Mr Warren Entsch, Parliamentary Secretary to the Minister for Industry, Tourism and Resources, that, on balance, a case to remove the exclusion had not been made out. Mr Entsch accepted the recommendations of the report: ACIP 2004b. Christie & Moritz 2004. IP Australia 2005a. IP Australia 2006. Royal 2001. IP Australia 2006, 5. ACIP 2010b, 3.4. Ibid, Recommendation 3. Ibid, Recommendation 4. ACIP 2011. Ibid, Pt 7, 21–4. (2008) 78 IPR 463. (2010) 87 IPR 380. ACIP 2014. See also Davison 2015. ACIP 2015, 1–2. Productivity Commission 2016, 239–62. Australian Government 2017, 10. ACIP 2010a. Australian Government 2011b. ACIP 2010a, 6, 32–6. Ibid, 6, 36–8. Ibid, 7, 38–45. Ibid, 7, 45–6. Ibid, 7, 46–7. Ibid, 8, 48–51. Ibid, 52–3. Ibid, 8, 53–6. For an overview of the governance arrangements see Lawson 2008e. See George C Warner Laboratories Pty Ltd v Chemspray Pty Ltd (1967) 41 ALJR 75.

113. 114.

115. 116.

117. 118.

119. 120.

121. 122. 123. 124. 125. 126. 127.

128.

IP Australia 2013b. Georgia Kaolin Co Ltd’s Application (1956) RPC 121; Welwyn Electrical Laboratories Ltd’s Application (1957) RPC 143. Claiming the same invention from a different perspective or claiming matter described but not claimed in an earlier specification is not an improvement or modification. There must be a novel contribution: Elliott Brothers (London) Ltd’s Application [1967] RPC 1. See discussion in Australian Patent Office Manual of Practice and Procedure, Vol 2 — National, [2.19.3] Improvement and Modification. There were 152 PCT contracting states as at July 2017. Major amendments include: Convention applications: ss 29B, 38(1A), 43(5) and (6); regs 1.4, 3.5AG, 3.11, 3.13B, 3.14, 3.14B, 3.14C, 11.1; PCT applications: ss 29A, 30, 43(5) and (6), 45(1A), 53, 56A, 57, 141, 142, 197AA, 223; regs 3.1A, 3.2AB, 3.2B, 3.2C, 3.5AA, 3.5AB–3.5AG, 3.13A, 3.14C, 3.15(c), 3.16(2), 3.17A–3.17C, 3.18(2)(f), 4.4, 6.3(11), 10.1(1), 10.2, 13.1C, 13.5A. There are also a substantial number of consequential minor amendments not noted here. Bannon 1984, [96]. The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) repealed ss 47 and 48 of the Patents Act 1990 so that modified examination is not available for requests made on or after 15 April 2013. An explanation of Patent Office procedures for requests made before, or after, this date can be found in the Australian Patent Office Manual of Practice and Procedure, Vol 2 — National, [2.24.1.3]. The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) repealed s 46 of the Patents Act 1990 from 15 April 2013 and with it the possibility of requesting a deferment if the request had not been made before that date. The prescribed countries presently listed in reg 3.21 are the US, Canada, NZ and the signatories to the European Patent Convention currently being Austria, Belgium, Cyprus, Denmark, Finland, France, Germany, Hellenic Republic, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, Netherlands, Portugal, Spain, Sweden, Switzerland and UK. In practice, where modified examination is sought it is usually based on a US patent, since other applications are seldom granted early enough. The claim or claims in an Australian patent must relate to one invention only and this requirement is known as unity of invention: s 40(4). US patent law permits patents to contain sets of claims that would not meet the Australian tests for unity of invention. Australian Patent Office Manual of Practice and Procedure, Vol 2 — National, [2.22.4.3]. Capral Aluminium Ltd v G & J Koutsoukos Holdings Pty Ltd (2004) 63 IPR 254. See McCormack 2007. See eg Emperor Sports Pty Ltd v Commissioner of Patents (2005) 67 IPR 488. Spann 2002, 101. See also Quan & Wadeson 2008. Phillips & Firth 2001, [5.5]. For discussion of the role of amendments in the examination process, see Australian Patent Office Manual of Practice and Procedure, Vol 2 — National, [2.23]. See also Ch 10 of the Regulations; and see New England Biolabs Inc v Commissioner of Patents (2001) 52 IPR 1 as to the extent of the Commissioner’s discretion in determining whether to allow an amendment. See also discussion in New England Biolabs Inc v F Hoffmann-La Roche AG (2003) 60 IPR 83; (2004) 62 IPR 510. See Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (1999) 48 IPR 625 at 631–2; Merck & Co Inc v Sankyo Co Ltd (1992) 23 IPR 415.

129. 130. 131. 132. 133.

134. 135. 136. 137. 138. 139. 140.

141.

142. 143.

144. 145. 146. 147.

Pfizer Overseas Pharmaceuticals v Eli Lilly (2005) 68 IPR 1 at [347], [356]. Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) Sch 1 item 55 sub-item 9. Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 at 244–5. ACIP 1999, 15; IPCRC 2000, 166–7. For a fuller discussion of the opposition procedure, see Australian Patent Office Manual of Practice and Procedure, Vol 2 — National, [3.1] –[3.14], Oppositions Court Extensions and Disputes. Note also the provision for a person, after publication of a complete specification, to notify the Commissioner of reasons for the belief that the invention is not patentable: s 27. See and