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






Thursday, July 31, 2014

Online Copyright Infringement — Discussion Paper

By James Gonczi, Lawyer

It has been well documented that Australia is fast becoming one of the world's hotspots for online copyright infringement. The Australian Financial Review has reported that the recent season finale of Game of Thrones was illegally downloaded almost one and a half million times by Australians in the 12 hours after the program aired in the USA. However, to borrow a line from that very popular program, it seems that 'Winter is coming' for illegal downloaders.

Late last week Australian news website Crikey.com published a leaked Australian Government discussion paper concerned with preventing online copyright infringement. The official paper was released by the Attorney General's department on 30 July 2014 in substantially the same form.

Wednesday, July 23, 2014

Protecting designs in the age of 3D Printing

By Lester Miller, Patent Attorney and Senior Associate

You really should see Theo Jansen's brilliant, articulated Animaris Geneticus Parvus emerge from a 3D printer, finished and without any assembly required, and walk itself across a boardroom table powered only by the breeze of conversation. There is brief elation, then the shock of being dumped unprepared into an unfamiliar world.

The Maker Movement has arrived, taking advantage of fast data transfer across national borders for instructing affordable machines to build tangible products. Designs law around the world is already being reviewed in an attempt to keep it relevant to this new technology.

Friday, July 18, 2014

Nagoya Protocol to come into force on 12 October 2014

By Suman Reddy, Associate

The Nagoya Protocol is set to come into force on 12 October 2014 following its ratification by 51 State parties to the Convention on Biological Diversity (the CBD).

Australia is a signatory to the Protocol, but it is yet ratify the Protocol due to Commonwealth and State and Territory laws being currently inadequate to give effect to the Protocol domestically. We previously blogged about the Commonwealth's proposed model for implementing the Protocol.

The Protocol is an international instrument made under the CBD in order to give effect to the CBD objective of achieving the 'fair and equitable sharing of the benefits arising from the utilization of genetic resources'. However, 'the benefits arising from the utilization of genetic resources' has a wide meaning under the Protocol and effectively means any beneficial product or process derived from research conducted on biological organisms or their derivatives. This is commonly referred to as 'biodiscovery'.

Tuesday, July 15, 2014

Lift your game: no infringement of Lift Shop mark

By Stephanie Essey, Lawyer

The Full Court of the Federal Court recently dismissed an appeal brought by Lift Shop Pty Ltd (Lift Shop) against a first instance decision that Easy Living Home Elevators Pty Ltd (Easy Living) had not infringed Lift Shop's composite 'LIFT SHOP' trade mark. The Australian Consumer Law and passing off components of the original decision were not revisited on appeal.


Lifting search rankings: the facts


Lift Shop and Easy Living are competitors who each supply customised and disability platform elevators. In September 2012, Easy Living amended its website to improve its ranking in search engine results. A number of its changes incorporated the words 'lift shop'. It used the words in the website's title as it appears in search results, in descriptions on the home page, and as a keyword in order to target searches. Lift Shop claimed that the use of the words in the title (but not the home page or keyword use) was an infringement of its trade mark.


Lift off: first instance decision and appeal


The primary judge made a number of findings in relation to trade mark infringement which were not challenged on appeal, including that one of Easy Living's commercial objectives was to appear in search results which would likely include Lift Shop, and thereby to compete with Lift Shop to the greatest extent possible. However, Easy Living did not suggest or intend to suggest an association with Lift Shop simply by the use of the words 'Lift Shop' in the title, on the home page or as keywords.

Friday, July 11, 2014

When Trade Marks Attack

Native American Petitioners Score a Touchdown Against the Washington Redskins

by Joel Barrett, Senior Associate
For most Australians, a ‘redskin’ is nothing more than a chewy, raspberry-flavoured lolly. But the clue to its original and, in the United States, more common and controversial meaning is in the image of the man wearing a feathered headdress that appeared, until the late 1990s, on the lolly packaging. Since the sixteenth century, when European colonists coined the word to describe the coppery-skinned indigenous peoples they found in the New World, ‘redskin’ has been used as a slang term for American Indians.

Since 1933, it has also been the official name of the NFL team based in Washington DC.

Tuesday, July 8, 2014

Yasmin sees off Isabelle (and Yelena):

Full Court refuses evidence of experiment


by Clare Young, Managing Associate
Last year we reported on Generic Health's failure to comply with the Federal Court Rules relating to the conduct of experiments in patent cases. Here’s the next (and last?) instalment.

In short, Generic Health wanted to do an experiment which, according to Generic Health, would prove that Bayer's patent for a contraceptive pill lacked novelty. Generic Health's experiment involved the manufacture of tablets in accordance with a process in the prior art and the subsequent dissolution testing of those tablets. The latter dissolution tests were the subject of directions under rule 34.50 of the Federal Court Rules, but Bayer said that Generic Health also needed to comply with rule 34.50 in relation to the manufacture of the tablets.

Thursday, July 3, 2014

Try bombed - footy injunction application fails

by Stephanie Essey, Lawyer



In a recent case, Sports Data, the NRL's former statistics supplier, sought an interlocutory injunction against what it saw as the misuse of copyright in its database and the confidential information in it by Prozone, NRL's new statistics supplier.

Sports Data had developed a database populated with fields which set out events in NRL games that were to be recorded.  Sports Data alleged that Prozone copied confidential input criteria from the Sports Data database without consent in the process of creating its own event template.  Sports Data also claimed that Prozone infringed its copyright in the input criteria by reproducing a substantial part of its copyright work in the Rugby League Definitions Guide 2014.

Tuesday, July 1, 2014

Yellow is for sharing

by Tracy Lu, Lawyer
Further to our post on a decision on disputes over the word mark 'yellow', the Federal Court has handed down its decision on disputes over the colour yellow. This time, Telstra was unsuccessful in proving that the respondents (which included Phone Directories Company Pty Ltd) had engaged in misleading or deceptive conduct and passing off in the way that they had used the colour yellow for their print and electronic directories.

Alleged infringing conduct
Telstra's complaint relates to the respondents' use, since 2005, of yellow covers for their print directories (known as the 'Local Directories') and of the colour yellow on their website and on their mobile app which both had electronic directories.
Such use of the colour yellow, Telstra contended, constituted misleading or deceptive conduct and passing off, as it misrepresents to consumers that:

  1. The respondents' print and electronic directories were Telstra's directories, Yellow Pages directories or local or regional versions of them.
  2. The respondents' print and electronic directories were produced by, connected, associated, sponsored, approved, licensed, endorsed and/or affiliated with Telstra or its directories.
  3. The respondents had a connection, association, affiliation, commercial and/or other arrangement with Telstra.