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

Thursday, June 9, 2016

A kick in the Uggs, and litigation to boot

By Lev Gutkin, Law Graduate

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

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

Friday, June 3, 2016

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

By Natasha Dixon, Law Graduate

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


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

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

Thursday, June 2, 2016

I, Robot. I, copyright owner?

By Emma Gorrie, Lawyer

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

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

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

Monday, May 30, 2016

US says yes to Wayback Machine, but what is the position in Australia?

By Adrian Chang, Associate

Turning back the clock on websites with the Wayback Machine is fun, but according to a recent ruling in a US District Court, it also makes for good evidence.

Most regular internet users will be aware of the Wayback Machine – a service offered by an American non-profit called the Internet Archive that allows users to browse through the Archive's records which house (mostly) complete versions of the past forms of websites.

The Wayback Machine is particularly helpful to IP lawyers because it can demonstrate how clients or the opposing side dressed their websites over time, which can be relevant in all sorts of disputes, such as the one between the parties in Marten Transport, Ltd v Plattform Advertising, Inc.

Wednesday, May 18, 2016

Draft PC Report Update: public hearings to be held in late June

By Suzy Roessel, Senior Associate

The Productivity Commission has today announced that it will be holding public hearings regarding its recent Draft Report on IP Arrangements.

The hearings will be held in Sydney, Melbourne and Canberra, with the possibility of a Brisbane hearing and a second Melbourne hearing if there is sufficient demand.

The public hearings will allow persons who have made submissions to elaborate on what they have submitted, respond to the submissions of others, and to discuss issues with Commissioners. It is also possible to attend the public hearing as an observer only. More information about the conduct of public hearings is available on the Productivity Commission's website.

Written submissions on the Draft Report are due on 3 June 2016. So far, 11 submissions have been made, all of which focus on the dramatic changes proposed in relation to the Copyright system. We expect more submissions to be filed closer to the deadline, and that the public hearings may involve a heated debate regarding the future of innovation in Australia.

Please get in touch with our team if you'd like to work with us to prepare a submission on the Draft Report.

Monday, May 16, 2016

Commonwealth allowed to sue on the usual undertaking as to damages

By Lauren John, Associate

The High Court last week dismissed applications by Sanofi and Wyeth for special leave to appeal against a Full Federal Court decision that the Commonwealth is not precluded from recovering compensation pursuant to the usual undertaking as to damages by virtue of certain provisions of the Therapeutic Goods Act 1989 (Cth) (TG Act).

As a condition on the grant of interlocutory relief in patent infringement proceedings, a patentee or exclusive licensee is ordinarily required to give the 'usual undertaking as to damages', that is, an undertaking to submit to such order (if any) of the Court for the payment of compensation to any person (whether or not a party), adversely affected by the operation of the interlocutory injunction.

In the case of Sanofi, the High Court refused the grant of special leave on the ground that there was no reason to doubt the correctness of the Full Court's conclusion, and in the case of Wyeth, on the grounds that the applications did not raise any issue of principle suitable for the grant of special leave, and if special leave were granted, the appeals would have insufficient prospects of success.

Wednesday, May 11, 2016

New Zealand's ComCom slams the spam

By Lena Balakrishnan, Associate and trade marks attorney

Back in 2014 we reported the on-going problem with trade mark owners and domain name holders receiving unsolicited notices from entities offering trade mark publication, renewal and registration services.  These notices typically are in the form of an invoice charging the owner or applicant of a trade mark or domain name for services relating to the registration, publication, renewal or monitoring of their mark, even though the trade mark applicant or owner has never agreed to buy or engage these services.

Both IP Australia and IPONZ have published warnings about these notices.

One of the companies that is renowned for issuing these unsolicited letters to New Zealand trade mark holders is TM Publisher. TM Publisher's invoices were generally for the amount of $1,638 and related to an overseas trade mark registration service.