Copyright, compilations, originality and IceTV: Tonnex International v Dynamic Supplies

Posted by Tarryn Ryan and Paul Kallenbach

In the wake of the High Court's decision in IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14 (IceTV), a recent decision of the Full Federal Court has provided some helpful guidance on when a compilation will be an original literary work protected by copyright.

In Tonnex International Pty Ltd v Dynamic Supplies Pty Ltd [2012] FCAFC 162 the Full Federal Court upheld the primary judge's finding that Tonnex International Pty Ltd (Tonnex) had infringed the copyright of Dynamic Supplies Pty Ltd (Dynamic) in a compatibility chart for printer and computer consumables.

This compatibility chart was embodied in an electronic file called the 'March 2008 CSV file' which was used to upload the chart to Dynamic's website.  It featured certain product information arranged in columns, laid out to facilitate cross-referencing and customer searches via the website.  All of the information in the chart had been taken from the one source, Dynamic's inventory database (the Navision database). 

Dynamic's case was that by copying information from Dynamic's website, Tonnex had reproduced a substantial part of the March 2008 CSV file in compatibility charts accompanying various price lists released by Tonnex in 2008, 2009 and 2010.

The key issue at trial and on appeal was whether the March 2008 CSV file was an original literary work within the meaning of section 32 of the Copyright Act 1968 (Cth).

Was the March 2008 CSV file an original literary work?

At first instance, Yates J identified three key principles for determining whether a compilation is an original literary work.  These principles were endorsed by the Full Federal Court on appeal, and drew on recognised authorities, including (in particular) the decision in IceTV.  The principles were:

1. original works must come from authors (in the sense that they cannot have simply been copied);
2. the work must be the result of human intellectual endeavour, which means: 
• the work 'must have required some independent intellectual effort or exercise of sufficient effort of a literary nature for its creation'; but
• the work need not show any 'literary merit nor novelty or inventiveness as understood in patent law'; and
3. copyright will protect the particular form of expression that is the compilation, but will not protect 'mere facts, ideas or information contained in a compilation'. 

Had the work come from an author?

Dynamic initially sought to argue that the March 2008 CSV file was the result of the joint authorship of two Dynamic employees, Mr Campbell and Ms Sacristan.  It also argued that a number of other employees could be joint authors because of their involvement in entering product information into the Navision database.  The gist of Dynamic's argument was that it was unnecessary to make a definitive decision on the identity of the authors of the March 2008 CSV file, as all possible authors were Dynamic employees and so Dynamic would in any event, own the copyright by virtue of section 35(6) of the Act.

Yates J did not accept this argument at trial, though instead concluded that while Ms Sacristan and other employees had played a part in the creation and maintenance of the Navision database, the compatibility chart had been authored by Mr Campbell alone. 

Was the work the result of human intellectual endeavour?

This second issue formed the basis of Tonnex's main ground of appeal. Tonnex argued that the primary judge had erred in finding that Mr Campbell had exercised more than a negligible amount of skill and judgment in creating the March 2008 CSV file (this being sufficient to make it an original literary work).

Yates J held that it was irrelevant that the information in the compatibility chart had only come from the Navision database. Mr Campbell had still exercised judgment by selecting which information would be useful to customers searching a website for product information, and by arranging that information in a way that would be most convenient for customers.

On appeal, Tonnex challenged the evidence Mr Campbell had given at trial, saying that the thrust of his evidence had been that the intellectual effort was exerted in relation to the compiling of the Navision database, not the compatibility chart.   The Full Federal Court rejected this submission, saying that Tonnex had misunderstood the effect of Mr Campbell's evidence.   Their Honours stressed that it was Mr Campbell's selection and arrangement of the information (in the CSV file) that was decisive in this case, not the information itself.

Was the form of expression more than just mere facts, ideas or information?

Dynamic's arguments on the subsistence of copyright were bolstered by evidence of other compatibility charts that were laid out in very different ways, while still containing the same basic information. Yates J held that here, unlike in IceTV, the particular information did not dictate the form it was expressed in.   His Honour remarked:

... simplicity itself may be a virtue and does not deprive a work of originality for copyright purposes, unless that simplicity is a demonstration of the absence of skill or effort in the circumstances.

This finding distinguished the case from IceTV, where the High Court held that there was no originality in the form of expression of a television program schedule, as 'a chronological arrangement of times at which programmes will be broadcast is obvious and prosaic, and plainly lacks the requisite originality'.

Other grounds of appeal

On appeal, Tonnex also sought to have the matter remitted to the trial judge in light of what it claimed was further evidence about the authorship of the another file which Mr Campbell had referred to in his evidence at trial (the tab delimited file).  The tab delimited file was a price list issued by Dynamic featuring a compatibility chart which Tonnex argued had substantial similarities in composition to the March 2008 CSV file.

The Full Federal Court declined to remit the matter to the trial judge, but nevertheless made some observations about the tab delimited file and the March 2008 CSV file.  Their Honours observed that possibly one of these works was created from the other, or perhaps they were both originally created as one work, but either way there was no reason why both works could not be copyright works.   Their Honours said that, at the very least, copyright subsisted in one of these works and Tonnex had infringed the copyright in that work.

Conclusion

This case provides some much needed guidance in the wake of the High Court decision in IceTV. Yates J's reasoning, approved by the Full Federal Court, followed the High Court's approach by considering whether the form of expression of the compilation is the result of some 'independent intellectual effort' on the part of the author (or authors).  Unlike IceTV, here the Court found that the author had exerted intellectual effort in selecting and arranging information, and that that effort was not negligible.

Tobacco plain packaging: when a taking is not an acquisition

Posted by Genevieve Watt and Paul Kallenbach

Introduction

Image courtesy of xoxoryan

On 5 October 2012 the Australian High Court handed down its decision in JT International SA v Commonwealth of Australia; British American Tobacco Australasia Limited v The Commonwealth [2012] HCA 43, better known as the tobacco plain packaging case. 

The case concerned separate challenges by JT International SA (JTI) and British American Tobacco Australasia Limited (BAT Australasia) to the Tobacco Plain Packaging Act 2011 (Cth), which were heard at first instance by Gummow J in the original jurisdiction of the High Court. The joint case came before the Full Court of the High Court on several reserved questions.

The first challenge was brought by JTI, a Swiss-based company that manufactures cigarettes under brands including Camel and Old Holborn, and the second challenge by three related plaintiffs, BAT Australasia (incorporated in Australia), British American Tobacco (Investments) Limited (incorporated in England and Wales), and British American Tobacco Australia Limited (collectively, BAT).  BAT imports, sells and distributes cigarettes under the brand names Winfield and Dunhill. 

Phillip Morris Ltd, Van Nelle Tabak Nederland BV and Imperial Tobacco Australia Ltd intervened in the BAT matter in support of the plaintiffs. The Northern Territory and the ACT intervened for the Commonwealth. 

Although the parties each raised several arguments, the essential question under consideration was a simple one: had the Commonwealth, by imposing restrictions on the design of the plaintiff's tobacco product packaging, acquired the plaintiffs' intellectual property (including their trade marks, patents, and get up and associated goodwill) otherwise than on just terms contrary to the Constitution? Six of the seven judges found that this was not the case.

Victorian Parliament considers regulation of R18+ computer games

Posted by Tarryn Ryan and Paul Kallenbach

A Bill which would regulate the availability of R18+ computer games in Victoria is currently before the Victorian Parliament.

 

The Classification (Publications, Films And Computer Games) (Enforcement) Amendment Bill 2012 (Vic) follows legislation passed by Federal Parliament earlier this year creating an R18+ classification for computer games, which will come into effect on 1 January 2013.  The Guidelines for the Classification of Computer Games that will be used by the Classification Board were published in September. 

 

The creation of the new classification for computer games is seen by many as well overdue.  In 2009, when the Commonwealth Attorney-General called for submissions in response to a discussion paper on the introduction of an R18+ classification, 98% of the 58,437 submissions received were in favour of the proposal.  An adult classification for computer games already exists in many other countries including the United States, Canada, New Zealand, the European Union, Singapore and Japan.   

  

In Australia, the highest classification is currently MA15+ and over recent years there have been a number of high profile 'bannings' of games that failed to fit within that classification.  These have included Mortal Kombat, Syndicate and House of the Dead: Overkill Extended Cut.  In the case of another game, Fallout 3, the Classification Board's decision to refuse classification famously led to the company behind it, Bethesda Softworks, modifying the game prior to its world wide release.  This prompted criticism of Australia's classification system from other parts of the world.      

 

The Classification (Publications, Films And Computer Games) (Enforcement) Amendment Bill 2012 (Vic), and its equivalents in other States and Territories, is the last step in the reform process.  It seeks to limit access to R18+ computer games to adults, and will make it an offence:

• to demonstrate R18+ computer games in a public place or in a manner that is visible from a public place;
• to privately demonstrate R18+ computer games in the presence of a minor;
• to sell or deliver R18+ computer games to a minor unless the person is a parent or guardian; and
• to leave an R18+ computer game in a public place or on private property without the occupier's permission.

The Bill also contains provisions restricting the advertisement of R18+ computer games, and imposes different penalties for existing offences where they involve R18+ computer games, such as copying a computer game with the intention of selling or demonstrating. 

 

New South Wales and the A.C.T. have already passed similar legislation and other States and Territories are set to follow. 

 

The Classification (Publications, Films And Computer Games) (Enforcement) Amendment Bill 2012 (Vic) will be debated in the Victorian Legislative Assembly at the end of October.

Federal Government considers mandatory data breach notification

Posted by Paul Kallenbach

The Federal Government has released a Discussion Paper on mandatory data breach notification.  You can read our alert here.

Federal Government announces Review of Pharmacuetical Patents

Posted by Daniel Fuller and Peter Kearney

On 15 October 2012, the Federal Government announced the appointment of an expert panel to review pharmaceutical patents in Australia (Review). 

The Review will focus particularly on the extension of term provisions in Chapter 6, Part 3 of the Patents Act 1990 (Cth). Those provisions currently allow the extension of pharmaceutical patents up to five years beyond their standard 20-year term. Medicines Australia has expressed concern that current patent terms are too short given the time taken for patent applications to pass through the Government's administrative processes. On the other side is the Generic Medicines Industry Association, whose view is that too lengthy patent terms and too regular extensions stifle innovation and competition.

The Terms of Reference of the Review specifically require it to 'consider whether there is evidence that the patent system is being used to extend pharmaceutical monopolies at the expense of new market entrants'. If such evidence is found, the Review must consider its impact on competition, innovation and investment. The panel must have particular regard to:

• The availability of competitively priced pharmaceuticals in the Australian market 
• The role of Australia's patent system in fostering innovation and hence to bringing new pharmaceuticals and medical technologies to the market
• The role of the patent system in providing employment and investment in research and industry
• The range of international approaches to extensions of term and arrangements for pharmaceutical inventions
• Australia's obligations under international agreements (including free trade agreements and the World Trade Organisation agreements)
• Australia's position as a net importer of patents and medicines

The Review comes as the Australian Government's Advisory Council on Intellectual Property (ACIP) continues its review of the innovation patent system in Australia. That review has also emphasised issues around patent terms, particularly the practice of 'evergreening' to effectively extend terms using secondary derivative patents. It is expected to produce an interim report this month.

The Review of Pharmaceutical Patents also comes in the wake of a number of other Government reviews and consultations on patents that have commenced since the 'Raising the Bar' reforms passed in March this year.

The Review panel is chaired by Tony Harris (former New South Wales Auditor-General and Parliamentary Budget Officer). Its other members are Professor Dianne Nicol (Associate Dean, Research, Faculty of Law at the University of Tasmania) and Dr Nicholas Gruen (CEO of Lateral Economics).

The panel will begin consulting stakeholders and invite public submissions in the coming months, before reporting in early 2013.

Geographical connotations: When a building name can be trade marked

Posted by Lucy McGovern and John Fairbairn

Can a building name become a geographical indicator with the consequence that businesses operating from that building cannot include the name in their trade marks?

The recent decision of the Federal Court in Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769 has held that the mark "Q1" is inherently adapted to distinguish the services of the accommodation provider, Mantra IP Pty Limited (Mantra), even though "Q1" was also the name of the iconic high rise apartment in which the services were delivered. The judgment analyses the test under section 43 of the Trade Marks Act 1995 (Cth) for rejecting a trade mark on the basis that it has a geographical connotation.

Background

Q1 is a skyscraper located on the Gold Coast; it is advertised as Australia's tallest residential Tower. Mantra holds and licenses certain intellectual property rights on behalf of the Mantra Group. Companies within the Mantra Group operate from Q1 including conducting leasing, conference and resort businesses. Mantra applied to register the trade mark 'Q1' in classes 36, 39 and 43.

The trade mark was opposed by someone who owned apartments in the building and operated a short term holiday accommodation business under the name 'Ql Holidays Gold Coast' and domain name qlholidaysgoldcoast.com.au.

Delegate's decision

The Registrar's delegate originally rejected the mark pursuant to section 43. Section 43 provides:

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

The delegate found that "Q1" was a geographical connotation for the location where the services were provided, rather than being a badge of origin. On this basis, she considered that other traders may wish to use the name "Q1" to promote their rental accommodation in the Q1 building. The delegate considered that the sign was the only name of a building and, as such, had become "part of the common heritage". Due to the geographical connotation in the mark, consumers would be likely deceived or confused by the use of the mark for Mantra's services.

Federal Court

On appeal, the Federal Court rejected the delegate's conclusion, and found that the mark was inherently adapted to distinguish Mantra's services. In essence, Reeves J thought that the delegate had incorrectly focused on the use of the sign "Q1" as the name of a building, rather than focusing on the mark, and the inherent adaptability of the coined word "Q1" to distinguish Mantra's services.

In reaching this conclusion, Reeves J referred to the test in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (Clark Equipment) and its application in MID Sydney Pty Ltd v Australian Tourism Co Ltd (998) 90 FCR 236 (MID Sydney). In Clark Equipment, the court commented that a sign is not inherently adapted to distinguish the goods or services of a particular trader where it "includes words or names over which there is a common or public right of use in that they form part of the "common heritage", either in the English language..., or in a geographical name such as that of a town, suburb, district, municipality, region or state."

In MID Sydney, the court determined that "Chifley Tower" could distinguish the services of a trader, as it was not part of the "common heritage" in the same sense as a town, suburb or municipality. However, the court suggested that there may be a borderline exception, where a plaza or other public space adjoining a building has become part of the common heritage.

Applying MID Sydney, Reeves J held that a sign does not lose its inherent adaptability to distinguish services merely by being applied as the name of a privately owned building at the same time as the mark is applied to distinguish certain services provided from, or in relation to, that building.

Like the Chifley Tower, his Honour found that the name "Q1" was developed to signify the building; when the sign was first coined it did not have any obvious meaning and did not adopt or incorporate a geographical name, like "Surfers Paradise" or the "Gold Coast" into it. As the mark was distinctive of Mantra's services at the time of inception, it necessarily remained so. The mark did not lose its inherent adaptability to distinguish the services by virtue of concurrent use as the name of a privately owned building. Reeves J cast doubt on whether a "borderline exception" in the sense expressed in MID Sydney exists, and made clear that such an exception would not arise in these circumstances.

His Honour held that there was no connotation or secondary meaning contained in the Q1 mark itself.

Conclusion

The Mantra case shows the ability of traders to register the name of a building for their services, where the building has a "coined" or inventive name.

The case also demonstrates the inherent danger for service providers who seek to promote their services using a building's name as a badge of origin, without first conducting trade mark searches or registering protection in the trade mark for the services provided. It may be that the building owner or other tenants have registered trade marks and can prevent other residents from using it.

When one design looks much like another, what are your rights?

Posted by Rachel Cox and Peter Kearney

From 25-31 August, Brisbane will host the Mercedes-Benz Fashion Festival. Emerging and established designers and well-known Australian labels will showcase their latest collections. In an industry where one of the key drivers is to capitalise on popular trends and have the 'it' item, copycat fashion is rife. In these circumstances, how can designers and fashion labels protect their designs and brand from copycats?

Registered designs

The Designs Act 2003 allows for the protection of the overall appearance of the product resulting from one or more visual features ie shape, configuration, pattern or ornamentation. For example, this could include ruffles, pleating or a signature fabric pattern. To be registrable, a design must be new and distinctive compared to other designs. The design must not be identical or give a substantially similar impression when compared with other designs. As such, prior publication of a design (photo spreads in magazines, runway shows) can affect whether a design is registrable.

It is important to keep a design confidential until an application is made for a registered design. The process to obtain a fully registered and enforceable design involves two general steps: registration and certification.

1. Registration: The applicant for a registered design has six months in which to decide whether to seek a registered design. Provided that an application complies with formal requirements, registration is usually 'automatic'.
2. Certification is a rigorous process which can be instigated by the design owner or a third party. It is during this process that the design is assessed against the 'new and distinctive' and 'not substantially similar' criteria. If the criteria are satisfied, the registration of the design will stand and the design will be certified. However, if the design is shown to be not new and distinctive or is substantially similar to another design, the registration of the design may be revoked.

Registration of a design gives the registered holder an exclusive right to use or licence use of the design. Certification of the design enables the design owner to undertake infringement proceedings if necessary to prevent others from using the design without their permission. The initial term of registration of the design is 5 years from the date the application was filed (with an option to renew the registration for a subsequent term of 5 years).

Practicalities

The full certification process can be time-consuming and costly and it is not guaranteed that a design will pass certification. It can be particularly difficult for emerging designers or small players to register every design they create for a short season.

Designers should keep in mind that the Designs Act enables applicants to file an application containing several designs of the same classification class. Once an application for a registered design is filed, the applicant has six months to decide whether to register any of the designs. This means that if one or more styles are copied, the applicant need only register the infringed designs. Given the cyclical nature of the fashion industry, this may provide adequate protection, particularly where designs are trend focussed and unlikely to be used for an extended period of time.

If an application does proceed to registration, it can be beneficial to deter infringement by placing a registered design notice on the swing tag or packaging.

Other methods of protection

Design registration generally only protects the shape and configuration of designs. These factors are not necessarily the most important component of every design and other methods of protection relevant to the fashion industry can include:

• copyright to protect photos, graphics, logos and swing tickets as 'artistic works';
• trade marks to protect branding and names and unique signature elements of designs like fabric patterns and buckles; and
• patents to protect inventions and innovations.