This year marks the 25th anniversary of  the founding of the Australian Intellectual Property Journal (AIPJ), Australia’s foremost specialised intellectual property law journal.

Associate Professor David Lindsay*, is the fourth person to hold the general editorship in the 25 years in which the journal has been published. David took over the role of General Editor in September 2012 from Dr David Brennan, now of Federation University, who served as General Editor from 2007 to 2012. Before that, the founding General Editor of the journal, Ann Dufty, held the role for an astonishing 15 years, from 1990 until 2005; with Professor James Lahore, a founder of Australian intellectual property law as an academic discipline, acting in the role in 2006.

While each of the editors of the AIPJ has left their mark on the journal, there have been some continuing themes. First and foremost, the journal has been a forum for informed commentary on, and analysis of, intellectual property law and policy, especially from an Australian perspective. As such, it has served as a bridge between academia and the profession; an important role, given the very different pressures that apply to those working at universities, on the one hand, and in professional practice, on the other. Throughout its lifespan, the journal has promoted high quality articles and strongly supported the work of new and emerging intellectual property scholars. This has been reinforced in recent years with the introduction of the annual AIPJ essay prize. It is therefore appropriate that the first issue of the 25th anniversary year features articles by the joint winners of the 2013 AIPJ essay competition.

The past quarter century has been a period of unprecedented growth in both the importance of intellectual property law and in the scale and scope of intellectual property laws. Given the significance of technological innovation as a driver of the economy, it is hardly surprising that intellectual property laws have been the focus of increased attention by policy-makers, industry and scholars.  While the period has witnessed an increasingly sophisticated understanding of the role of intellectual property, it has also seen a politicisation of the field. This has been accompanied by a polarisation of views between those who champion strong intellectual property laws as essential to innovation and those who point out that over-strong laws may inhibit innovation and harm consumers. In this context, the journal has sought to promote reasoned discussion and analysis from all points of view, but with a focus on the practical consequences of legal issues.

In reading editorials from the last 25 years, a consistent theme has been the importance of law reform that promotes clear, certain and better intellectual property laws. A good example of this is a magisterial editorial from the founding editor, Ann Dufty, from Volume 4(3), published in 1993. As the editorial points out:

Intellectual property is an intensely complex area of law and the rights which are created and protected by it are of great national importance. It is therefore crucial that the law, whether it be that relating to copyright, patents or one of the other areas encompassed by the term, should be as clear, precise and cheap to administer as we can make it.

Unfortunately, Australia’s intellectual property laws fall well short of these desired objectives. The main theme of the editorial is the problems that may arise from fashions in legislative drafting, such as the “plain English” movement, when these are not adequately anchored by clear thinking and good drafting. The editorial does not hold back observing, in relation to the then recently introduced Patents Act:

The Patents Act 1990, claimed by those responsible for its introduction to be a model of plain English drafting, is so badly drafted in parts that it is impossible for those working in the field to advise their clients with confidence.

Neither does the editorial confine itself to poorly-drafted statutes; it is equally blunt about some of the judicial practices that have, at times, characterised our highest court:

The insistence of members of the High Court on the need for each judge to deliver his or her judgment, apparently with little concern for what other members of the Court might have decided, has meant that in recent years the law is often less certain after the High Court has handed down its decision than it was before.

The frustrations expressed with the law-making process in this early editorial have contemporary resonance. In July of this year, the Government released an Online Copyright Infringement Discussion Paper, which outlined proposals for amending authorisation liability. The Discussion Paper produced the singular outcome of near universal opposition, both from those in favour of strong laws against online infringements and those opposed to such laws. The poorly-drafted proposal seems to have been devised in almost complete ignorance of the difficult law relating to authorisation liability, and certainly with insufficient understanding of the High Court decision in Roadshow Films Pty Ltd v iiNet Ltd (2012) 248 CLR 42. In that case, the High Court clearly changed the law, but in ways that significantly increased legal uncertainty about what is meant by authorising an infringement. One reason for this was the delivery of two judgments that concurred in the outcome, but each of which failed to engage with the reasoning in the other judgment. Other decisions in recent years, such as the judgments delivered by the Court in IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458, have tended to follow the pattern identified in the 1993 editorial.

Although the problems identified back in 1993 clearly remain, there are welcome counter-examples of positive law reforms and clearly reasoned judgments. In this, the articles published by the AIPJ have sometimes played a role in identifying and clarifying legal issues. A good recent example of this important function of law journal articles is the judgment of Dodds-Streeton J in Seafolly Pty Ltd v Fewstone Pty Ltd [2014] FCA 321, which raised issues relating to the difficult copyright/designs overlap provisions of Australia’s intellectual property laws. At key points in the judgment, Dodds-Streeton J referred extensively to two articles published in the AIPJ, by Janice Luck of Melbourne Law School ((2013) 23 Australian Intellectual Property Journal 68) and by Jani McCutcheon of the University Of WA ((2009) 20 Australian Intellectual Property Journal 39). The journal is proud of the contributions its published authors, which have included most of Australia’s prominent intellectual property academics, have made both to technical legal issues and broader policy debates.

While predicting the path of Australia’s intellectual property laws for the future is hazardous, it is safe to say that intellectual property laws will continue to be both highly significant and controversial. There will continue to be difficult and complex legal disputes, as well as hard policy decisions that must be made to ensure that we appropriately reap the benefits of the innovation and creativity of Australians.

On the AIPJ’s 25th anniversary, it is important to acknowledge the work of all those who have contributed to the journal’s success, especially the founding General Editor, Ann Dufty, and long-serving editor, David Brennan; as well as the dedicated editorial staff at Thomson Reuters. As those immersed in intellectual property issues know only too well, the commercial publishing industry faces complex challenges in adapting and surviving in the world of instantaneous digital content. That the AIPJ has not only survived, but continues to thrive, is evidence of the need for a high-quality specialised Australian intellectual property journal, but also of the commitment and hard work of those involved with publishing the journal. The strong reputation established by the journal over the past quarter century means that the AIPJ is well-placed to continue the tradition of contributing to the development of Australian intellectual property law for the next 25 years.

- Associate Professor David Lindsay, General Editor

*General Editor, David Lindsay, is an expert in information technology law at Monash Law School, where he teaches copyright, cyberlaw and trusts. In the recent past, he has been a member of the Australian Copyright Council’s expert group and the Australian Law Reform Commission’s expert advisory committee for its reference on copyright and the digital economy. David is currently a member of the Media and Communications sub-committee of the Law Council of Australia and a board member of the Australian Privacy Foundation.

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The latest issue of the Australian Intellectual Property Journal (Volume 25 Part 1) contains the following material:

EDITORIAL

Articles

Repeatability or reproducibility in Australian patent law – Ben McEniery

This article considers the extent to which a claimed process must be repeatable or reproducible in order to be patentable according to Australian patent law. It asks whether a process must yield identical or near-identical results each time the process is invoked, or if not, what degree of repeatability is required. The question is relevant when considering, among other things, the patentability of some methods of medical treatment and diagnosis, biotechnology inventions and business methods.

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Re-evaluating innocent infringement in Australia: Patent numbers and virtual marking – Johnathon E Liddicoat

If products sold in Australia are marked to indicate they are patented, such marking gives notice to third parties that the products are protected by patents. In the absence of such notice, infringers may not be aware of patent rights and patentees who are successful in providing infringement may not be eligible for monetary remedies. The reason for this is that those found liable for infringement can argue that their infringing actions were done innocently, as provided in s 123 of the Patents Act 1990 (Cth) – otherwise known as innocent infringement. In a market economy that generally relies on free competition for efficient allocation of resources, patent marking signals that at least one functional aspect of a product is not open to direct competition. Analysis in this article demonstrates that current Australian provisions on effecting notice of patent rights via patent marking are contrary to patent theory and result in notice being too easily discharged. This obviates protection that should be afforded to innocent infringers and causes inefficiencies in the patent regime – particularly in the form of additional transaction costs. On this basis, amendments to the innocent infringement provision are recommended. These recommendations are based on the mechanism by which UK law demands patent numbers be included to effect notice through patent marking, and the mechanism by which “virtual marking” is explicitly permitted in the US. Such amendments will harmonise Australia’s patent law with two major trading partners, simplify international trade of patent protected products, and increase the overall efficiency of the patent system.

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Trade mark use and misleading advertising in Google AdWords: A comparative analysis of search engine liability in Australia and Europe – James Alexander Longden

For a number of years advertisers have utilised Google’s AdWords service to select competitors’ trade marks as keywords which, upon an internet user entering a corresponding search term, trigger the display of advertisements that offer their own competing goods or services. Trade mark proprietors have run out of patience with this practice and have pursued both the advertisers and Google for misleading and deceptive conduct in Australia, and trade mark infringement in Europe. This article examines the landmark recent decisions in both continents and finds that there is a striking similarity between the analyses conducted by Australia’s and Europe’s highest courts of the role played by Google in advertisers’ infringing conduct.

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CASE NOTE

• Halal Certification Authority Pty Ltd v Scadilone Ltd [2014] FCA 614

For the pdf version of the table of contents, click here: WAU – AIPJ Vol 25 Pt 1 Contents.

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The latest issue of the Australian Intellectual Property Journal (Volume 25 Part 2) contains the following material:

EDITORIAL

Articles

Searching for the silver bullet: How website blocking injunctions are changing online IP enforcement – Michael Williams and Rebecca Smith

Despite online copyright infringement being widely recognised as a problem, there continues to be disagreement about the best form of response. In recent years, the focus has been on legislative and non-legislative “graduated response” schemes, which have been introduced in many countries but continue to be controversial. Australia has been slow to respond to the problem, despite the overrepresentation of Australians amongst the ranks of global internet infringers. In 2014, the Australian government undertook the first review of potential legislative options to address online infringement. One of the options identified was the potential for rights holders to be given a sui generis right of action to obtain “no fault” website blocking injunctions against ISPs. With the recent announcement that the Australian government intends to amend the Copyright Act 1986 (Cth) to allow rights holders to seek such injunctions,, this article examines the case for website blocking injunctions and how this form of relief has emerged as the preferred method of tackling online infringement in the United Kingdom and Europe.

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Another missed opportunity to reform compulsory licensing and Crown use in Australia – Jane Nielsen, Dianne Nicol, John Liddicoat and Tess Whitton

This article considers the current status of the provisions in the Patents Act 1990 (Cth) relating to compulsory licensing and Crown use, and provides an analysis of the report resulting from the Productivity Commission’s 2013 inquiry into the compulsory licensing of patents. The provisions relating to use without authorisation contain a number of deficiencies, some of which have been well documented. While the Productivity Commission was given the opportunity to rectify a number of these issues, its somewhat tentative approach to reform means that the prospect of significant clarification has been passed up. This article urges that the ramifications of implementing the proposed tests be carefully considered. Rather than promoting clarity, certainty and simplicity, the proposed amendments are likely to exacerbate the problems inherent in the current compulsory licensing provisions, and introduce a host of new issues that will require resolution.

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The limitations of the Australian resale royalty scheme and its implications for artists – Jennifer Kwong

Visual artists and craft practitioners are central to a vibrant arts sector, but their income is often lower than that of other creators. Although copies of an artwork can earn the artist some money, the sale of an artwork is more often a single, final event and artists generally receive no income from subsequent resales. In June 2010, the Resale Royalty Right for Visual Artists Act 2009 (Cth) created a resale royalty right in Australia, recognising the right of artists to an ongoing economic interest in their art, and established a scheme to collect and distribute royalties. This article explores the extent to which the current operation of the scheme provides an additional source of income to artists through royalties derived from resales. It concludes that limitations inherent in the Act restrict the scope of eligible artists and the efficiency with which artists can rely on resale royalties as a source of income.

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For the pdf version of the table of contents, click here: WAU – AIPJ Vol 25 Pt 2 Contents.

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The latest issue of the Australian Intellectual Property Journal (Volume 25 Part 3) contains the following material:

EDITORIAL

Articles

Critical examination of the principles for determining whether trade marks are deceptively similar: A quest for more predictable decision making – Janice Luck

Deceptive similarity is arguably the most important issue in Australia’s registered trade marks law. While the principles for determining whether one trade mark is deceptively similar to another trade mark are well established, the application of the principles to determine whether two particular trade marks are deceptively similar is often fraught with uncertainty. This article critically analyses the principles for determining deceptive similarity in the context of providing a framework to assist in reducing the level of uncertainty involved in this decision making process. The article finishes with a suggested new legislative definition of “deceptively similar”.

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Intellectual property rights and the PPSA: Challenges for interest holders, creditors and practitioners – Francina Cantatore

The Australian Personal Property Securities Act 2009 (Cth) (PPSA) has made significant inroads into traditional norms of dealing with intellectual property (IP) ownership and rights since its introduction in January 2012, the transitional period of two years having ended on 31 January 2014. Registration requirements under the PPSA have significantly affected a range of commercial transactions dealing with personal property, including the interests of lessors and lessees, consignors and consignees, sellers and buyers, licensors and licensees, and lenders and borrowers. This article considers how IP is treated under the PPSA, and how owners and disseminators of IP (and the practitioners who advise them) may deal with some of the challenges presented by the inclusion of IP rights under the Act. It sets out how a “security interest” may arise in commercial dealings in respect of copyright, patents, trademarks and designs, and the PPSA requirement of “perfecting” such interests for maximum property security. The article expands on potential problem areas in implementing these provisions in commercial dealings in the existing IP framework and recommends protective measures in dealing with problematic issues.

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Copyright duration in Australia: 1869 to 2014 – Catherine Bond and Graham Greenleaf

One of the most significant features of any copyright statute is the duration of the rights granted to works and subject matter other than works pursuant to that law. The most “appropriate” length of copyright also continues to be a recurring theme in legislative, policy and academic debates. However, despite both the significance of and interest in the term of copyright, there has been little empirical evidence presented on how long, in light of both statutory term and life expectancies, copyright will likely protect a work. This article provides a historical account of both the duration of copyright and its various extensions, from the introduction of the first colonial copyright statute through to today. It reveals that, while multiple legislative extensions have lengthened the term of protection, continual increases in life expectancies have also added to the duration of copyright, to the point where, today, copyright will likely protect a work for well over 100 years.

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For the pdf version of the table of contents, click here: AIPJ Vol 25 No 3 Contents.

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The latest issue of the Australian Intellectual Property Journal (Volume 25 Part 4) contains the following material:

Articles

Gene-related patents in Australia and New Zealand: Taking a step back – Jessica Lai

In September 2014, the Full Court of the Federal Court of Australia handed down D’Arcy v Myriad Genetics Inc, holding that simply isolated genetic sequences are capable of constituting “manners of new manufacture” and are thereby inventions, as opposed to discoveries. In doing so, the court came to the opposite conclusion to the United States Supreme Court in an analogous case. Given the long-standing practice of granting gene-related patents in Australia and around the world, the outcome was by no means surprising. This article analyses if the Full Court’s decision was correctly reasoned in light of the High Court of Australia’s decision in National Research Development Corporation v Commissioner of Patents and the existing flexibility regarding subject matter eligibility in Australia and New Zealand.

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Do software patents inhibit open source licensing in Australia? – James Scheibner and Dianne Nicol

Open source licences are a particular form of intellectual property licensing arrangement where the licensor allows the development and redistribution of their derivative works, provided that the licensee complies with the terms of the licence. Open source licences can be distinguished from closed source licences, where the program cannot be modified beyond its released form and distributive development is not permitted, and are an increasingly popular form of licensing arrangement for software. While open source advocates argue that the framework of copyright law supports such licences, this has never been tested in an Australian court. Furthermore, it is uncertain whether software patents could inhibit open source licensing through the creation of exclusive exploitation rights. The now-settled dispute in the United States between Twin Peaks Software and Red Hat is used in this article as a hypothetical case study to explore the interface between open source licensing and software patents in Australia. This article also considers alternative strategies that could be used to protect software under an open source licence against a case of patent infringement.

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Swim at your own risk: Patent pools in Australia – Richard Hoad and Deborah Polites

The use of common industry standards, and resulting aggregation of essential patented technology into “patent pools”, is a well-established worldwide practice, most notably in the fields of electronics, computing and telecommunications. Typically, these patent pools operate on the basis that the pooled technology will be offered to third parties on “fair, reasonable and non-discriminatory” terms. Although such arrangements have many benefits, developments in the United States and Europe have illustrated the importance of continuing scrutiny of their establishment and operation. This article considers recent developments in relation to patent pools and the possible implications for Australia, where clear direction from courts and regulators has yet to evolve.

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For the pdf version of the table of contents, click here: AIPJ Vol 25 No 4 Contents.

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The latest issue of the Australian Intellectual Property Journal (Volume 26 Part 1) contains the following material:

EDITORIAL

Articles

At the intersection of public service and the market: Libraries and the future of lending – Rebecca Giblin and Kimberlee Weatherall

Most library uses of books occur outside the purview of copyright and the market. Loans fall outside copyright’s exclusive rights; libraries have exceptions for many activities that involve copying. Author remuneration for library uses via the public lending right is governed by distinctly non-market considerations. This changes when works take digital form: electronic lending involves copies and transmissions which copyright owners have a right to license. As a result, libraries’ ability to engage in electronic lending is governed by private contract, which means market forces largely determine the terms on which libraries can provide access – and whether they may do so at all. This has potentially significant implications: libraries have traditionally played an important role in furthering the public’s interest in access to content and other societal goals including the encouragement of Australian authorship. This article provides a doctrinal mapping of the regulation of physical and digital lending. It also identifies avenues of investigation which need to be explored to inform the practices of libraries and policymaking. What could we lose by a wholesale operation of market forces? And what could we gain?

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Information, intellectual property and the global information system for plant genetic resources for food and agriculture – Charles Lawson

The International Treaty on Plant Genetic Resources for Food and Agriculture (Plant Treaty) establishes a mechanism for the accessing and sharing of some plant materials. An essential element of that accessing and sharing is information about the materials including information (and data) about the characterisation, regeneration and evaluation of the materials. A Global Information System (GLIS) will allow much of this information to be made available and shared. This article reviews the information obligations imposed by the Plant Treaty and its associated Standard Material Transfer Agreement on the collection and disclosures of information and other legal obligations that will likely shape the form and function of the GLIS. The article concludes that the GLIS will need to carefully distinguish between information that is freely available and information that is subject to legal restrictions.

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Legal support for the interests of Aboriginal and Torres Strait Islander peoples in the commercial development of new native plant varieties: Current status and future options – Kylie Lingard

Australia’s Aboriginal and Torres Strait Islander peoples have many different needs and aspirations in relation to their traditional plants (herein “interests”). Aboriginal and Torres Strait Islander peoples face particular challenges in realising these interests in the commercial development of new native plant varieties. This article offers a set of legal and institutional options that may improve support for the diverse interests of Aboriginal and Torres Strait Islander peoples in this commercial context. The “transactions systems” approach applied in this article may be useful in other commercial contexts.

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BOOK REVIEW

• The Law Emprynted and Englysshed – The Printing Press as an Agent of Change in Law and Legal Culture 1475-1642 by David J Harvey

For the PDF version of the table of contents, click here: AIPJ Vol 26 No 1 Contents

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The latest issue of the Australian Intellectual Property Journal (Volume 26 Part 2) contains the following material:

EDITORIAL

Articles

The innovation patent system: Lessons for Australia in the IP reform process – Mark Davison

This article considers the key substantive matters surrounding the recommendations by the Advisory Council on Intellectual Property (ACIP) for the innovation patent system and the process by which IP law reform is conducted in the future. It commences with an overview of the innovation patent system and proceeds to consider various factors relevant to the re-consideration of its appropriateness, including increased reliance on newly available data. In particular, it is suggested that while the availability of those data is an increasingly important part of future reform processes, there remains a need to consider other factors and to ensure that the relevant data is suitably scrutinised. It is also noted that the availability of data may lead some stakeholders to rethink their particular beliefs and fixed views as to what IP law reform should look like.

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Invisible trademark infringement and passing off on the internet: Meta-tags, search engines, initial interest confusion and reform – Mahmoud Mando

E-commerce and the internet have given rise to novel legal issues, including whether new uses of words amount to trademark infringement. Considerable attention has focused on disputes between trademark owners and domain name registrants. To date, much less attention has been given to the trade mark issues relating to the use of marks as meta-tags in HTML documents. This article examines the main issues that arise under Australian trade mark law, namely: whether an invisible meta-tag amounts to a “sign”; and whether use of a mark in a meta-tag amounts to “use as a trademark”. The article also surveys the applicability of the allied actions of passing off and s 18 of the Australian Consumer Law to the use of marks as meta-tags. While Australian courts have yet to address these issues, a body of precedent has developed in the US and, to a much lesser extent, the UK. Following an explanation of a selection of these decisions, the article concludes with recommendations for law reforms to address the gap in current Australian trademark law, including the express adoption of a modified version of the US legal doctrine of “initial interest confusion”.

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For the PDF version of the table of contents, click here: AIPJ Vol 26 No 2 Contents.

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This issue of the Australian Intellectual Property Journal (Volume 26 Part 3) is the Janice Luck Special Edition, and contains the following material:

Editorial

Janice Luck: IP teacher, scholar and law reformer

Articles

A requiem for Champagne Heidsieck: Trade mark use and parallel importation – Robert Burrell and Michael Handler

The “Champagne Heidsieck rule”, under which the importation and sale of legitimate branded goods has been held not to involve use as a trade mark, has historically provided an important mechanism to facilitate the parallel importation of trade marked products in Australia. However, following a number of recent Federal Court decisions, the rule has been written out of Australian law. This means that parallel importers and sellers of second-hand goods need to rely on the problematic defence contained in s 123 of the Trade Marks Act to avoid liability. This article traces the history and reception of the Champagne Heidsieck rule in Australia, and argues that the courts have taken a wrong turn by doing away with the rule, in part based on a misunderstanding of the history of the role of confusion in registered trade mark law. After discussing the numerous problems with the current s 123 defence, we consider how the Australian law on parallel importation and sale of second-hand goods could be improved, concluding that the best option is to resurrect the Champagne Heidsieck rule.

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The luckless plan to plan infringer – David J Brennan

In copyright law, at the point of interface with design law, residual plan to plan liability creates remedial uncertainty for the person who today might be found to be an infringer. This article suggests that the remedial logic of the springboard doctrine in breach of confidence law should be considered appropriate for cases of plan to plan copyright infringement within the scope of that residual liability.

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The various legal challenges to tobacco packaging regulations – Mark Davison

Since the introduction of plain packaging for tobacco products in Australia, three legal actions have been brought against the Australian Government. In addition, various other legal actions have been taken or threatened in relation to the proposals of governments to introduce similar legislation in other jurisdictions. This article provides an overview of the different types of regulatory action taken by governments and the legal actions that have been or are currently being taken against government regulation of tobacco packaging and gives an indication of future action that might be taken in various fora.

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Registering non-traditional signs as trade marks in Australia: A retrospective – Dr Amanda Scardamaglia and Mitchell Adams

This article provides a 20-year retrospective on non-traditional trade marks in Australia. It presents the initial findings from an empirical study on the application and registration of such trade marks in Australia, since the introduction of the Trade Marks Act 1995 (Cth). It concludes that while the data shows that shape and colour trade marks remain popular subjects of trade mark applications, sounds and scents have yet to live up to the hype or pose the kinds of controversies that these categories of marks were anticipated to present.

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For the PDF version of the table of contents, click here: AIPJ Vol 26 No 3 Contents.

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The latest issue of the Australian Intellectual Property Journal (Volume 26 Part 4) contains the following material:

Editorial

Articles

Three dimensions of patent infringement: Liability for creation and distribution of CAD files – John Liddicoat, Jane Nielsen and Dianne Nicol

3D printing is contributing to a global trend toward customisation, user innovation and democratisation of design and manufacture. A key element of 3D printing is that computer-aided design (CAD) files are used to instruct printers to create physical 3D products. This article explores patent liability for creators of CAD files that provide directions for the creation of potentially infringing products. This analysis compares the Australian position to that in the US and UK. One US commentator has suggested that 3D printing will leave patentees helpless to combat widespread infringement. By examining primary and secondary infringement case law, this article finds that Australian law creates relatively clear liability for the creation and distribution of CAD files.

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The secondary sale, copyright conundrum: Why we need a secondary market for digital content – Jessica Stevens

This article considers the resale of digital copyright content. Other jurisdictions, including the EU and the US, have recently considered whether consumers have rights to buy and sell second-hand digital content. In Australian copyright law, there is no clear principle of first sale or exhaustion that positively permits the second-hand sale of copyright goods. In the context of physical goods, resale is generally not an infringement in Australia; but without a clear right, the resale of digital goods will be an infringement of Australian copyright law. This article considers the public policy considerations around establishing a digital secondary market. It first provides a review of recent US and EU cases that reflect upon the legality of secondary digital markets, with reference to the history and development of the first sale doctrine and the principle of exhaustion. This article then reviews the potential impact of secondary markets on consumers’ access to copyright goods. It is proposed that, given the indeterminacy of economic analyses in this context, careful consideration should be given to the social and personal impacts of restrictions on alienation of digital goods, compared to their physical equivalents. It is suggested there is good reason to think enabling digital secondary markets could improve access to content and foster the innate human desire to share and gift. Finally, this article considers the potential legal framework that would support and enable digital secondary markets to exist under Australian law.

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IP in transition: Desperately seeking the big picture – Jeremy Phillips

This is the edited text of the Sixth Francis Gurry Public Lecture on Intellectual Property, delivered by the author at the Melbourne Law School on 12 November 2014.

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For the PDF version of the table of contents, click here: AIPJ Vol 26 No 4 Contents.

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The latest issue of the Australian Intellectual Property Journal (Volume 27 Part 1) contains the following material:

EDITORIAL

Articles

To Boldly Reform IP Dispute Resolution: Experience in the IP Enterprise Court – The Hon Mr Justice Birss

Between 2010 and 2013 a series of reforms took place in the Patents County Court in London which led to the foundation of the Intellectual Property Enterprise Court. The reforms were an attempt to improve access to justice in intellectual property cases, particularly for disputes involving small and medium-sized enterprises. Justice Birss was appointed as a judge in 2010 to take charge of the Court and implement the reforms. In the seventh Francis Gurry Lecture on Intellectual Property, Justice Birss shares his experiences of the Court – addressing the nature of the reforms and how they worked in practice.

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Cantarella Bros Pty Ltd v Modena Trading Pty Ltd: A Step in the Wrong Direction for Trade Mark Registration in Australia – Alexander Thomas

Section 41(2) of the Trade Marks Act 1995 (Cth) formerly provided that an application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered. Section 41(3) then provided that in deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons. The article considers the recent High Court decision in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, which concerned whether certain Italian words were inherently adapted to distinguish within the meaning of what was then s 41(3). Although the wording of s 41 has since been amended, the section still relies on the concept of a trade mark’s inherent adaptation to distinguish. The article argues that the decision is flawed and may carry significant implications for trade mark law in Australia.

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Pay or Else: How Protected are Australian Internet Account Holders from Speculative Invoicing after Dallas Buyers Club? – Joshua Yuvaraj

To combat online copyright infringement, rights holders or their representatives may engage in “speculative invoicing”: threatening alleged infringers with litigation unless they pay an excessive settlement fee. This article explores the extent to which Australians are protected from speculative invoicing in light of recent litigation. The copyright owner of the movie Dallas Buyers Club applied for preliminary discovery of account holder details under the Federal Court Rules. The Court denied access to these details because the owner sought to use them to claim damages that, in the opinion of the Court, it could not plausibly sue for. This approach significantly protects alleged individuals against speculative invoicing. However, the Court should more broadly supervise the draft correspondence that rights holders propose to use. As this article contends, the Court should ensure that these letters are drafted in good faith to protect individuals against speculative invoicing. Decisions in Canada and the United Kingdom provide guidance as to the factors the Court could consider in assessing draft correspondence.

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For the PDF version of the table of contents, click here: AIPJ Vol 27 No 1 Contents.

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The latest issue of the Australian Intellectual Property Journal (Volume 27 Part 2) contains the following material:

EDITORIAL

Articles

Whose Fair Dealing? Third-Party Reliance on the Fair Dealing Exception for Parody or Satire – Jani McCutcheon and Simon Holloway

The Copyright Act 1968 (Cth) exempts from infringement a fair dealing “for the purpose of parody or satire”. The statute is silent as to whose purpose falls within the ambit of the exception, and whether it extends beyond the parodist’s purpose to the purpose of third parties involved in the production and dissemination of parody. A 1990 Federal Court case, De Garis v Neville Jeffress Pidler Pty Ltd, effectively excluded third-party purpose, and while occasionally overlooked it has not been overruled or expressly disapproved. De Garis isolates many third parties from immunity, and its potential application to the parody exception is particularly problematic, because parody relies on third parties for its dissemination. This may defeat or seriously hamper Parliament’s objective in introducing the exception, which was to enhance public access to copyright material and allow it to be used for socially useful purposes. The potential for De Garis to fetter the parody exception has been noted by the Australian Law Reform Commission and others in advocating the introduction of a US-style fair use exception. The Commission’s 2013 recommendation to introduce a fair use defence was ignored, which dilutes confidence that the Productivity Commission’s identical recommendation in 2016 will be adopted. If fair use reform seems unlikely, it is more important than ever to perfect the purpose construction in the fair dealing regime. This article explains the problems generated by De Garis and advocates for a flexible interpretation of purpose that accommodates the important role played by third parties in disseminating parody.

The Protection of Plant Varieties and Farmers Rights Act 2001 (In) and New Plant Varieties, Extant Varieties and Farmers’ Varieties: A New Form of Property? – Emma Trustum-Behan and Charles Lawson

The Protection of Plant Varieties and Farmers Rights Act 2001 (In) provides for the protection of new plant varieties, extant varieties and farmers’ varieties. This article reviews the form and scope of these variety rights compared to existing international intellectual property standards for new plant varieties to demonstrate a significant evolution in the conception of a property right. The article asserts that the form of the new plant variety, extant variety and farmers’ variety rights establish a de facto permanent property right by requiring applicants to declare lawful acquisition and document plant material histories. While for extant varieties and farmers’ varieties this might provide some guidance about the form and content of the presently uncertain Farmers’ Rights and Traditional Knowledge, the article concludes that for new plant varieties this orders the public domain so that future breeders, evolvers and developers may not have unrestricted access and use to breed, evolve and develop new plant varieties.

Some Observations on Trans-Tasman Trade Mark Law – Paul Sumpter

One of the peculiarities of the ever closer economic relationship between Australia and New Zealand is the dissimilarity of the intellectual property laws, at least in matters of detail. The legislation that protects trade marks is no exception. New Zealand’s Trade Marks Act 2002 is largely based upon the United Kingdom model, which is in turn influenced by European law. That can make for challenges when interpreting key sections. It also means that the New Zealand legislation contains provisions not seen in the Australian law. New Zealand has, too, some truly indigenous provisions such as a prohibition on culturally offensive signs. The Australian Act follows its own distinctive structure and wording, although both countries share a British heritage. The aim of this article is to discuss particular areas of interest in trade mark law in order to draw out some contrasts between the two countries. Three broad aspects are covered: trade mark “use”, infringement and registerability. Hard conclusions are elusive, with a number of provisions remaining untouched by case law. But whilst on occasion there may be room for disagreement, it seems that in general the respective judges have a similar approach to the issues, and despite the, sometimes stark, differences in the provisions, much the same legal result is likely to arise in each jurisdiction.

For the PDF version of the table of contents, click here: AIPJ Vol 27 No 2 Contents.

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The latest issue of the Australian Intellectual Property Journal (Volume 27 Part 3) contains the following material:

EDITORIAL

Articles

Enhanced Enforcement of IP Rights in Transnational Cases in Australia – Richard Garnett

The emergence of new forms of technology in the past 20 years has dramatically increased the scope for cross-border IP disputes. While Australian courts have traditionally been reluctant to adjudicate claims concerning foreign IP rights and restrictive in their enforcement of foreign judgments, this article advocates a more liberal approach to both issues that should assist claimants to obtain greater redress in future cases. Specifically, the current subject matter jurisdiction bar on determination of cases involving foreign IP rights should be replaced with a discretionary appropriate forum test and new grounds of indirect jurisdiction should be created to allow increased recognition and enforcement of foreign judgments on IP matters.

The Protection of Origin Marks in China and Japan – William van Caenegem, Jen Cleary and Lucie Treguier

A significant question in the debate about a registration system for geographical indications (GIs) for food products other than wine is whether Australian registered GIs could provide useful protection in important markets such as Japan and China. Those countries have both regional collective trade mark and sui generis GI registration options, as do other Asian nations. The GI registers are open to foreign applicants, but only where the application is based on a domestic registration in the source country. This is an argument in favour of establishing a GI register for food in Australia. The sui generis GI protection regimes in China and Japan also offer considerable forensic and substantive advantages compared to trade marks and reliance on unfair competition laws. IP protection is fairly absolute in a manner analogous to Australian wine GI laws, and the authorities are more engaged with policing and enforcement of GIs than of trade marks.

China’s Copyright Public Domain: A Comparison with Australia – Yahong Li and Graham Greenleaf

A definition of the public domain by Greenleaf and Bond, based on the question “what can users do with works, without obtaining the permission of a copyright owner” and an analysis of it as being comprised by 15 distinct categories of “public rights”, has previously been proposed as necessary and sufficient to describe Australia’s copyright public domain. This article uses this approach to compare Australia’s copyright public domain with that of the very different social and legal system of the People’s Republic of China, and discovered that, compared with Australia, China’s public domain appears rather narrow, at least when only formal legal sources are compared. Out of the eight categories where the two countries differ significantly, Australia’s public domain is stronger in five. The public domain in modern Chinese copyright law is, not unexpectedly, somewhat different from that found in a “western” country such as Australia, but not in the radical way that could be naively expected to stem from arguments concerning China’s traditional philosophy, or its socialist modern history. The harmonising effects of international treaties and the pressures of international trade are the most obvious reasons for the relatively high degree of homogeneity. This comparison also suggests that the definition of the copyright public domain used requires modification in order to include China’s opt-out provisions in relation to free-use exceptions and collective licences. However, the comparison does not suggest that any new public domain categories are needed.

For the PDF version of the table of contents, click here: AIPJ Vol 27 No 3 Contents.

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The latest issue of the Australian Intellectual Property Journal (Volume 27 Part 4) contains the following material:

EDITORIAL

Articles

The Multiple Dimensions of Intellectual Property Infringement in the 3D Printing Era – Jane Nielsen and John Liddicoat

3D printing is a technology that has the potential to revolutionise manufacturing as we know it. While 3D printing is becoming mainstream, few consumers of printing services have the capacity to undertake their own printing. Around the technology, a service industry is burgeoning, as consumers increasingly seek to explore what the technology has to offer via printing studios. This article explores the intellectual property (IP) implications of the services offered by these providers as 3D printing apparently increases the capacity of ordinary consumers to infringe IP rights under multiple regimes. As such, the primary aim of this article is to consider whether the perception of legal risk possessed by stakeholders operating in this space necessarily aligns with actual legal risk. It does so by exploring the results of a study conducted in respect of 3D printing studios, and aligning this with the legal issues that may emerge in the context of patent, copyright and designs under Australian law.

E-Books and the Principle of Technological Neutrality: Should Public Lending Right Schemes Apply to E-Lending? – Rita Matulionyte

Public Lending Right (PLR) and Educational Lending Right (ELR) schemes are remunerating Australian authors and publishers for making available their books in Australian libraries. However, e-books are currently not included under these schemes. With the expansion of the e-book market and e-lending services within Australian libraries, it has been suggested that the schemes should be technologically neutral and extend to include e-books. After an extensive analysis of the technological neutrality principle, this article concludes this principle does not impose a legal obligation to extend PLR and ELR to e-books since traditional lending and e-lending are not functionally and economically equivalent services. Nevertheless, such an extension could be favourable when taking into account other economic, cultural and political circumstances.

For the PDF version of the table of contents, click here: AIPJ Vol 27 No 4 Contents.

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