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June 6, 2008

Who owns employee inventions?

In University of Western Australia v Gray
(No 20)
[2008] FCA 498 the Federal Court of Australia rejected a claim by the University that ownership of an invention relating to cancer treatment belonged to it and not its employee who was appointed to teach and to conduct
and stimulate research. Gray's conditions of appointment did not expressly reserve the ownership of inventions to the University.

It was a fiercely contested and complex matter: The trial of the action lasted some 50 days with the Court sitting
extended hours most days to ensure that the trial was finished
within the
available time.  There were some 4,586 pages of transcript and more than 1,000
documentary exhibits.  Much of the case
was based on the documentary evidence which related to a 20 year period.

The trial judge remarked: It would seem that the only secure way for UWA to acquire property
rights from its academic staff in respect of intellectual property
developed by
them in the course of research at UWA is by express provision in their contracts
of employment.  Even then, as this
case demonstrates, the transaction costs of
administering and enforcing such provisions and the uncertainty surrounding
their scope
and application, raises a real question as to their utility.

In this case the employee had no duty to invent and therefore the issue was whether his inventions were created in the course of his employment.

The common law provides that "Where an employer is entitled to the benefit of an employee’s
invention by express provision or by implication, the employee
will hold the
invention in trust for the employer. " But the common law did not apply to this particular case of an academic employed by a university to undertake
research and other
duties with no duty to invent.

The judge concluded:

"Research of the kind that Dr Gray was engaged to do carried with it the
possibility that he would develop inventions capable
of attracting patent
protection.  The duty to undertake research could be discharged in a variety of
ways.  These were within the
discretion of the researcher. One of the ways in
which the duty could be discharged was the development and testing of new
It could be said therefore that an invention made in the course of
Dr Gray’s research activities as an employee of UWA was
an invention made
within the scope of his employment and doing what he was employed to do.  It
does not follow that there was an
implied term that the rights to which his
invention gave rise belonged to UWA....

In my opinion the circumstances of Dr Gray’s employment at UWA
and those of the other academics employed as researchers
with him negated the
implication of any term whereby UWA acquired rights in relation to inventions
developed in the course of their
research. In that respect the case
demonstrates the validity of the cautionary observation by Monotti and Ricketson
in their book
Universities and Intellectual Property – Ownership and
(Oxford University Press, 2003) (at p 6.59):

... it will be unwise for a university to rely upon general principles if its
intention is to claim title to inventions that are
made by its academic
employees during their working hours and using university facilities and

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Posted 6th June 2008 by David Jacobson in Intellectual Property

May 10, 2008

Nine wins Ice TV appeal

In Nine Network Australia Pty Limited v
IceTV Pty Limited
  [2008] FCAFC 71 the Federal Court of Australia Full Court allowed Nine's appeal against the original decision (discussed here) which permitted Ice to reproduce Nine's
TV schedules in electronic form.

The Full Court decided that Ice TV had infringed Nine’s copyright in
its television program schedules by indirectly copying  a substantial part of the television guides.

On the issue of substantiality of the copying the Court decided:

Ice’s use of time and title information, derived
ultimately from the Weekly Schedules, involved the reproduction
of more than a
slight or immaterial portion of Nine’s copyright work...Ice appropriated
many pieces of the time and title information, apparently on a
weekly basis. It did so in order to create something commercially
valuable out
of templates that otherwise would have had no commercial value to it...When the quality of the material taken by Ice is considered, the
substantiality of the part taken becomes even clearer.  Ice
took, via the
Aggregated Guides, precisely the pieces of information that reflected the
exercise of skill and labour by Nine in determining
the program for a particular
day or other period.

On whether there was a link between the time and title
information in IceGuide and Nine's Weekly Schedule the Court said:

Ice used Nine’s copyright work by indirectly
copying time and
title information from the Aggregated Guides.  Ice could not fulfil the
requirements of its business model unless
IceGuide incorporated accurate and
up-to-date details of Nine’s programming schedule...Ice in fact updated and confirmed
accuracy of its database by accessing, on a regular and systematic basis, the
Aggregated Guides.  Ice took time and title information
from, and checked other
details against, the Aggregated Guides.

For an analysis of the decision see Kim Weatherall's comments here.

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Posted 10th May 2008 by David Jacobson in Intellectual Property

April 27, 2008

.au domain name registration and transfers policy

A new policy on transfers of .au domain names will take effect on 1 June 2008.

auDA (the Australian Domain Name Administrator) has announced that key features of the new policy are as follows:

  • it will not be allowable to register a domain name for the sole purpose of resale or transfer to a third party
  • registrants
    will not be able to transfer their domain name for the first 6 months
    after the initial registration (this does not apply to domain names
    that have been renewed or previously transferred)
  • after 6
    months, registrants will be able to offer their domain name for
    sale/transfer by any means (eg. by listing the domain name for sale on
    a domain brokerage website, advertising the domain name for sale in a
    newspaper, or contacting a prospective buyer directly)
  • the new registrant must comply with normal eligibility and allocation rules:
    registrant transfers will be processed by the registrar of record using a standard transfer form, and the registrar may charge a transfer fee
  • parties
    to a transfer will be asked to disclose the sale method and price, on a
    voluntary and confidential basis, so that auDA may collect aggregated
    statistical data to improve access to market information for buyers and

The current Transfers (Change of Registrant) Policy (2004-03) remains in force until 1 June.

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Posted 27th April 2008 by David Jacobson in Intellectual Property

April 11, 2008

Cadbury fails to stop Darrell Lea from using the colour purple

In a partial rehearing of its passing off action against Darrell Lea, Cadbury has failed to stop Darrell Lea from using the colour purple.[ Cadbury Schweppes Pty Ltd v Darrell Lea
Chocolate Shops Pty Ltd (No 8)
  [2008] FCA 470]

Even though certain expert evidence had to be heard, the trial judge thought the evidence made no difference and rejected Cadbury's long-running claim.

I am not persuaded that
Darrell Lea, in using the colour purple, has
passed off its business or products as those of Cadbury or contravened the Trade
Practices Act.  I am not satisfied that such usage has resulted, or would
result, in a hypothetical ordinary and reasonable member of the class
constituted by prospective purchasers of chocolate being misled or deceived,
contrary to ss 52 or 53(c) and (d).

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Posted 11th April 2008 by David Jacobson in Intellectual Property, Trade Practices

March 25, 2008

Copying other people’s designs (update)

I previously noted some recent cases on design copyright infringement, including Barrett v Metricon.

In Barrett Property Group Pty Ltd v Carlisle
Homes Pty Ltd
[2008] FCA 375 the Federal Court has upheld Barrett's claim that Carlisle
has infringed their copyright by reproducing in
its Provence home a "substantial part" of the copyright works in a home design and building , namely the al fresco
dining area, first
marketed by Barrett under the
name Seattle.

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Posted 25th March 2008 by David Jacobson in Intellectual Property

January 23, 2008

Copyright review

The Government has released an Issues Paper (pdf)calling for submissions on whether sections 47J and 110AA of the Copyright Act 1968 which permit photographs and cinematograph films to be reproduced in a different format for private use, subject to certain conditions, are operating
satisfactorily or whether either provision should be modified in some

The closing date for submissions is 29 February

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Posted 23rd January 2008 by David Jacobson in Intellectual Property

January 16, 2008

Australian domain name disputes update

Australian cricket captain Ricky Ponting has lodged an application (set for hearing in the Federal Court on 8 February 2008) claiming misleading and deceptive conduct against the operator of a website which described itself as "the official Ricky Ponting site": Ricky Thomas Ponting v Kevin Leonard Consulting Pty Limited (ACN 087 382 858) & Anor (also see Computerworld story)

It is not clear why Ricky Ponting has chosen litigation rather than the domain name disputes resolution procedure administered by .auDA. [UPDATE 17 January: David Starkoff comments]

UPDATE 13 February 2008: Ricky Ponting discontinued his action on 8 February.

According to this data from the World Intellectual Property Organization 2007 was a record year for domain name disputes. Disputes are dealt with under ICANN's Uniform Domain Name Dispute Resolution Policy (“UDRP”)

The auDRP is an adaptation of the Uniform Dispute Resolution Policy (UDRP) administered by ICANN with respect to the generic top level domains such as .com.

auDA can compel dispute resolution where:

(i) a domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights; and
(ii) the domain name owner has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or subsequently used in bad faith.

The complainant has the burden of proof.

The Australian 2007 decisions made by WIPO include decisions to transfer the domain name to the complainant as well as cancellation of the name.

The WIPO Domain Name Dispute Resolution Service has resources and past decisions.

In the UK recently Maestro (a subsidiary of Mastercard) failed in its attempt to stop another organisation using

The appeal panel ruled that it did not prove the case that the
registration was abusive, and that because maestro is a normal word
with a dictionary definition it could not monopolise its use in
domain names just because it also happened to be one of its

auDA's policy states that it accepts that a complainant has rights in the complainant's personal name.

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Posted 16th January 2008 by David Jacobson in Intellectual Property, Marketing, Trade Practices

December 5, 2007

International trade mark registration

The Madrid System provides the means to file a single application, in
one office, in one language, with a single fee, and secure trade mark
protection in multiple countries.

The advantages and disadvantages for Australian trade mark owners are discussed in this article by Nick Weston.

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Posted 5th December 2007 by David Jacobson in Intellectual Property

November 18, 2007

Proposal for Anti‑Counterfeiting Trade Agreement

The Department of Foreign Affairs and Trade has issued a discussion paper to provide information on a new treaty being proposed by Japan, the EC, the US and Switzerland, provisionally
called the Anti‑Counterfeiting Trade Agreement (ACTA).

The ACTA is proposed to establish a new
standard of intellectual property rights enforcement to
combat global counterfeiting and piracy.

DFAT welcomes
submissions from individuals and groups with views on Australia
entering into negotiations on ACTA. Participation in such
negotiations would be without prejudice to a final decision as to
whether Australia would join any future treaty.

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Posted 18th November 2007 by David Jacobson in Intellectual Property

November 8, 2006

Copyright amendments under fire

The Copyright Amendment Bill is an example of legislation compiled to deal with a range of specific issues in rapidly-changing industries:  there are too many "unintended consequences".

The Bill has attracted criticism from lawyers, technology companies, the education sector and civil liberty groups. (see all submissions). No one is happy or understands its impact.

It is not clear yet how Mr Ruddock will respond.

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Posted 8th November 2006 by David Jacobson in Intellectual Property
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