Friday, May 22, 2015

Scintilla TV: Uncovering 'Dallas Buyers Club' pirates

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

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

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Thursday, May 21, 2015

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

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

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

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

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Tuesday, May 12, 2015

Google: sell us your US patents

By Lester Miller, Patent Attorney and Senior Associate

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

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

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

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

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

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

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

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

Let us know if we can help.

Tuesday, May 5, 2015

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

By Adrian Chang, Lawyer

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

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

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

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

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

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

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

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

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

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

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

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

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

Friday, April 24, 2015

Representations as to future profit – a fine balancing act

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


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

Tuesday, April 21, 2015

Court to feuding franchisor: Take down that blog post!

By Adrian Chang, Lawyer

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

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

Thursday, April 16, 2015

Federal Court prescribes harsh medicine to discount chemist

By Claire McMahon, Lawyer

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

Prevention is better than cure

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

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