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The latest issue of the Australian Intellectual Property Journal (Volume 29 Part 3) contains the following material:

EDITORIAL – General Editor: David Lindsay

Articles

In Vino Veritas? The Dubious Legality of the EU’s Claims to Exclusive Use of the Term “Prosecco” – Mark Davison, Caroline Henckels and Patrick Emerton

The European Union (EU) maintains that the word “Prosecco” is a geographical indication for a type of wine made in northern Italy, rather than a grape variety. This position has been relied on by the EU to ban the importation of any wine labelled as Prosecco into the EU, and into other countries with which the EU has free trade agreements. Moreover, the EU is demanding that Australian wine producers be prohibited from marketing wine labelled Prosecco in Australia, as a condition of its entry into a bilateral trade agreement. Based on a detailed historical analysis of the use of the term Prosecco in Italy, this article argues that the EU’s characterisation of the term is erroneous and is intended to operate to protect Italian Prosecco producers from international competition. By implication, the EU regulation is likely to contravene Art 20 of the World Trade Organization’s Trade Related Aspects of Intellectual Property Agreement (which prohibits governments from unjustifiably encumbering the use of trademarks) and Art 2.1 of the Agreement on Technical Barriers to Trade (which prohibits, inter alia, technical regulations pertaining to terminology and labelling that unjustifiably discriminate between similar domestic and imported products). Furthermore, a prohibition on the use of the word Prosecco on Australian products in the Australian market may be inconsistent with the Australian Constitution, which prohibits the acquisition of property by government on other than just terms. These issues also point to a more fundamental question: namely, whether and if so to what extent domestic legal systems may permissibly be used to generate claims to intellectual property that are then used to leverage international protection for that intellectual property.

Australian Laws and Regulations on Regional Branding on Food and Wine Labels: Part 2 – Paula Caroline Zito

This is the second of a two-part article series which analyses the current laws and regulations in Australia that apply to the usage of Australian regional names on food labels to make origin claims. The first article in the series explained the deficiencies of current Australian consumer protection and passing off laws. This article summarises the main deficiencies that exist with Australian trade mark laws, before providing a summary of the main deficiencies identified with consumer protection laws, passing off and trade mark laws. Furthermore, this article identifies four main problems that result from the deficiencies with these current laws. It identifies that the main deficiency of these laws is that none of them adequately regulate whether there is a connection between food and origin before food producers and traders can use Australian regional names on food labels to make an origin claim. Consequently, the article highlights that these laws allow food producers and traders to use Australian regional names on food labels in a way that falls short of being misleading or deceptive or involving passing off, even though their food products do not have a clear or strong connection with the region named on their food label. This article explains that food producers who use Australian regional names on food labels in this way are taking advantage of, and free-riding on, the reputation that Australian regions have for producing authentic quality regional food and the value that accordingly exists in Australian regional names. It explains and justifies a potential solution to the deficiencies that have been identified with Australia’s law by proposing a legal framework be implemented that is dedicated to identifying and protecting the connection between food and origin. This article explains and analyses the Australian wine Geographical Indications (GI) system, which may serve as a model for a proposed food GI law. It examines the lessons that can be learnt for food GI from the Australian wine GI system, and proposes improvements to the wine GI system by introducing a “second tier” of GI protection. As a whole, the series of articles recommends that a sui generis food GI system would be the ideal legal framework to implement in Australia to identify and protect the connection between food and origin, drawing on some features of the Australian wine GI system, but being more prescriptive than the Australian wine GI system, so as to provide for a “true GI” system in relation to food products. This article explains that the implementation of a food GI framework is important for Australia not only at a national level, but also at an international level given that food GIs have become a major trading issue. This is particularly relevant given Australia’s recent commencement of negotiations with the European Union in relation to the Australia-European Union Free Trade Agreement.

For the PDF version of the table of contents, click here: AIPJ Vol 29 No 3 Contents.

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The latest issue of the Australian Intellectual Property Journal (Volume 29 Part 4) contains the following material:

EDITORIAL – General Editor: David Lindsay

Articles

Music in Campaigns: Does the Moral Right of Integrity Protect Musicians from Political (Mis)Appropriation? – Jessica Turley

Music regularly features in political campaigns and rallies, often without the express consent of songwriters and performers. This political appropriation of music can threaten the integrity of songwriters and performers through false implications of endorsement or association. Australian copyright law protects songwriters from the political appropriation of music – within prescribed limitations – through the moral right of integrity of authorship. However, it fails to provide sufficient protection for recording artists, who receive the lesser moral right of integrity of performership. This article explores the different treatment of these two rights in Australia and abroad, and it concludes that the lack of protection of recording artists deserves rectification. In the absence of other effective protection, this article calls for legislative intervention to better protect performers against the political appropriation of music.

The Impact of Interlocutory Injunctions on the Biosimilars Industry: Re-adjusting the Balance of Convenience with Public Interest – Bryanna Workman

This article considers the granting of interlocutory injunctions in the context of patents for biologic medicines. Bringing these life-saving products to market can be very expensive because of the need to show they are safe and effective. Biosimilars are reproductions of original biologic medicines that can often be sold at a lower price, allowing greater access to medicines. Interlocutory injunctions play an important role in regulating the balance between enforcing patent rights and allowing access to cheaper forms of medicine before final judgment. The article outlines the principles for granting interlocutory injunctions and how these principles may need to be adjusted to take account of the unique challenges faced by the biologic and biosimilar industries. The article discusses F Hoffman-La Roche AG v Sandoz Pty Ltd, the first Australian case to consider an interlocutory injunction against a biosimilar, highlighting lessons for future respondents in such proceedings and possibilities for reform.

Patenting Bioprinted Structures in a Clime of Moral Uncertainty: Time to Amend the Patents Act? – Olumayowa O. Adesanya

The role of morality in Australia’s patent regime has remained largely uncertain owing in part to a general reluctance to engage with the “general inconvenience” proviso. The prevailing view is that matters of morality and indeed ethics are within the exclusive purview of the legislature. Unfortunately, despite repeated attempts at law reform, the situation remains largely unchanged. Drawing from the words of the Australian Law Reform Commission in its 2004 Genes and Ingenuity Report, it appears there has been no compelling case for amending the Patents Act 1990 (Cth) to allow expressly for the exclusion of particular subject matter from patentability on social or ethical grounds. More than a decade on, the question is whether this statement holds true. Accordingly, this article evaluates the current ethical exclusions in Australia’s patent regime in light of the dilemma posed by patenting bioprinted structures and considers whether this presents a compelling enough case for the amendment of the Patents Act 1990.

For the PDF version of the table of contents, click here: AIPJ Vol 29 No 4 Contents.

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The latest issue of the Australian Intellectual Property Journal (Volume 30 Part 1) contains the following material:

EDITORIAL – General Editor: David Brennan

Articles

An Empirical Analysis of 15 Years of Australian Domain Name Disputes – Andrew F Christie, James Gloster and Sarah Goddard

The .au Dispute Resolution Policy (auDRP) creates an online mandatory administrative procedure for resolving disputes about .au domain names that contain another’s trade mark. This study is the first – and, to date, the only – detailed quantitative analysis of every one of the 470 determinations made in the procedure’s first 15 years of operation. By identifying the characteristics of each case and its decision-maker, and by analysing which of those are associated with particular outcomes, we provide previously unknown information about the factors that contribute to a case’s success, and about the procedure’s integrity. We find that the rate at which cases succeed has not changed over time and does not differ between the two service providers or between the most prolific panelists. When there is a statistically significant difference in the success rate, it is associated with a difference in the characteristics of the individual case – namely, that the complaint is based solely on a trade mark rather than on a name alone or together with a trade mark, or on a registered rather than an unregistered trade mark, or that the complaint is not defended by the respondent. Importantly, these findings support the conclusion that, contrary to some commonly expressed opinions, the auDRP produces outcomes that are consistent and fair.

Protecting Profits Post-Patent Expiry: ACCC v Pfizer, Patents and Competition Law – Arlen Duke and Rhonda L Smith

In the lead up to patent expiry, pharmaceutical companies often engage in strategies designed to delay the production of generic medicines. This article considers whether such conduct is likely to be caught by competition law prohibitions. The article focuses on the recent Full Federal Court decision in Australian Competition and Consumer Commission v Pfizer Australia Pty Ltd. The court’s analysis of the conduct engaged in by Pfizer Australia is interesting in its own right. Further, the judgment provides guidance as to whether or not a firm will be viewed as possessing market power in the period leading up to patent expiry. The judgment also indicates that a firm may escape liability on the basis that it acted to protect profits, not substantially lessen competition. The article concludes by identifying other strategies employed by pharmaceutical companies and, drawing on the Pfizer decision, considers the legality of such practices.

Mitey Marks and Expressive Uses of Culturally Significant Trade Marks in Australia – Genevieve Wilkinson

Trade marks are important and valuable because they can benefit the interests of owners, consumers and the public. However, they can also impermissibly restrict the human right to freedom of expression. One example of freedom of expression restriction occurs when individuals seek to make expressive use of well-known marks on blogs. This article uses the example of expressive use of the well-known Vegemite mark on an opinion blog entitled Straylemite to consider how Australian trade mark legislation deals with expressive uses of well-known marks and whether those restrictions are permissible restrictions on freedom of expression. It compares the limited legislative protection for freedom of expression in Australia to American and European jurisdictions that have fundamental protection of freedom of expression for individuals as well as broader protection regimes available for well-known marks. Approaches to addressing freedom of expression concerns raised by trade mark protection in these jurisdictions are considered. To reduce the restrictions for freedom of expression posed in the blog example, a statutory fair expressive use defence to infringement is proposed to balance the competing interests engaged by trade mark protection.

For the PDF version of the table of contents, click here: AIPJ Vol 30 No 1 Contents.

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The latest issue of the Australian Intellectual Property Journal (Volume 30 Part 2) contains the following material:

EDITORIAL – General Editor: Dianne Nicol

OBITUARY

• Vale Jim Lahore: A Personal Tribute

Articles

Do Wrongs Make a (Copy)right? Illegal Works and Copyright Subsistence Under Australian Law – Jordan Leahy and Jani McCutcheon

Whether copyright subsists in works that were created in contravention of a law is a legal question that generates important social and policy issues. There are significant normative implications in granting wrongdoers a property right as powerful, enduring and extensive as copyright. This reward may encourage or at least normalise unlawful behaviour, and permit wrongdoers to profit from their misconduct. Yet, if copyright subsistence should be denied to such “illegal works”, determining the bases and threshold for exclusion of copyright will be difficult. This article interrogates these demanding issues, and ultimately argues that copyright will and should subsist in works created in contravention of law.

If Value Then Right? Copyright and Works of Non-human Authorship – Dilan Thampapillai

Copyright law must eventually decide how it will respond to the emergence of sophisticated artificial intelligence (AI) technologies that have the capability of mimicking human authors. Any move to accommodate AI within the framework of copyright law will create profound doctrinal and philosophical tensions. Nevertheless, there are sound reasons for pushing ahead with law reform in this area lest the law becomes superseded or an impediment to progress. The case for reform and the shape it will take is a matter of great controversy. This article addresses the difficulties and drivers in this area of the law.

Limiting Access, Limited Blocking: Evidence and Practice in s 115A Injunctions – Rob Nicholls

Section 115A of the Copyright Act 1968 (Cth) provides copyright owners with the ability to seek an injunction to disable access to online services that infringe or facilitate copyright infringement and have infringement as a primary purpose or effect. This article sets out the rationale for the access limitation approaches that are used by copyright holders and discusses their limitations.

For the PDF version of the table of contents, click here: AIPJ Vol 30 No 2 Contents.

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The latest issue of the Australian Intellectual Property Journal (Volume 30 Part 3) contains the following material:

EDITORIAL – General Editor: Dr David Lindsay

Articles

IP Law Reform in Australia: A Story of Mixed Successes and Failures – Sam Ricketson

Australia’s intellectual property (IP) laws have proliferated since Federation, when responsibility for these laws was given to the new Commonwealth Parliament. Many of these have been imported from abroad, in particular the United Kingdom, or have been adopted as a consequence of Australia’s international engagements. Increasingly, however, IP law and policy-making has assumed a distinctly Australian character, and IP laws have moved towards the centre of national innovation and development policy. The history of IP law reform has been a mixed one, with both highs and lows, but there is now much greater awareness of the need for well-functioning and effective IP laws. This expanded version of the 2019 Francis Gurry Lecture reviews Australia’s past successes and failures in IP law reform, and considers the lessons for the future.

The Productivity Commission and the Prevalence, Prohibition and Proposed Monitoring of Pay-for-Delay Agreements within Australia: A Comparative Analysis with the United States – Chantel Cotterell

Pay-for-delay agreements exist at the intersection of intellectual property and competition laws. By delaying market entry of generic pharmaceuticals once the patent term for the brand pharmaceutical has ended, such agreements extend the patent monopoly. Despite finding no evidence of pay-for-delay existing domestically, the Productivity Commission’s Intellectual Property Arrangements report recommended establishing a monitoring and reporting framework to be overseen by the Australian Competition and Consumer Commission. By comparing the regulatory and economic landscapes for the manufacture and pricing of pharmaceuticals in Australia and the United States, this article will develop the claim that the recommendation overreached.

For the PDF version of the table of contents, click here: AIPJ Vol 30 No 3 Contents.

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The latest issue of the Australian Intellectual Property Journal (Volume 30 Part 4) contains the following material:

EDITORIAL – General Editor: David Lindsay

Articles

Patenting Software Inventions, Abstract Ideas, and Judicial Characterisation: The Shift Away from Recognising Patentability of Computer Software in Australia after Encompass, Rokt and Aristocrat – Michael Williams and Vanessa Farago-Diener

Initially, courts around the world found computer software inventions to be valid subject matter for patentability. However, recent decisions of the US Courts have tended to find that software patents are invalid on the basis that they represent unpatentable abstract ideas. Similarly, recent decisions in Australia have found such patents ineligible to qualify as a “manner of manufacture”. Notably, over the last decade Australian Courts have struck down all but one software patents, for failure to meet the requirements for patentability, despite the well-established test in National Research Development Corp v Commissioner of Patents. Consequently, most software patents are likely to be unprotectable here, where the inventions cannot be characterised as relating to something else. This article explores recent developments, the critical role played by judicial characterisation of the inventions at issue and what the future might hold for software patents in Australia in the absence of legislative reform.

Crown Copyright 2.0 in Canada – Ysolde Gendreau

In 2019, the Supreme Court of Canada rendered the first decision in its history on Crown copyright in Keatley Surveying Ltd v Teranet Inc. The opinions written by the majority judges and by the concurring judges deal with issues that are fundamental to this concept and draw comparisons with the equivalent Australian High Court decision, Copyright Agency Ltd v New South Wales. At the same time, both groups of judges wanted to ensure that their decision is consonant with the approach that the Court has taken to copyright law since it started, at the beginning of the century, to be actively interested in its policy underpinnings. This article looks at the different reasonings that the judges adopted and includes comments on their pronouncements as well as on some points on which they remained silent.

Artificial Intelligence: Painting the Bigger Picture for Copyright Ownership – Courtney White and Rita Matulionyte

To receive copyright protection in Australia works must be original, among other requirements. The originality standard involves “independent intellectual effort” that originates from an actual person. The reality of today’s creativity domain is that works are not always originating from actual persons. Due to impressive advancements in technology, some works are being created by artificial intelligence (AI). These works cannot meet copyright requirements under current law and subsequently do not receive copyright protection. This article endeavours to answer a two-tiered question raised by the challenges AI works pose for traditional concepts of copyright. First, should copyright subsist in works created by AI? Second, who would possibly be the copyright owner for such works? Answering these questions involves a discussion of utilitarian and natural rights theories and references to United States and United Kingdom discussions on the conversation around copyright and AI.

For the PDF version of the table of contents, click here: AIPJ Vol 30 No 4 Contents.

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The latest issue of the Australian Intellectual Property Journal (Volume 31 Part 1) contains the following material:

EDITORIAL – General Editor: Professor Dianne Nicol

Articles

Who Is the Crown for the Purposes of the Copyright Act 1968 (Cth)? – Dilan Thampapillai

Part VII of the Copyright Act 1968 (Cth) confers special privileges upon the Crown in relation to copyright law. This allows the Crown access to a range of rights and protections that are denied to other actors under the law. The topic has been the subject of some academic analysis, though no clarity has emerged from the discourse as to whom exactly the Pt VII scheme applies. This is no small matter as the range of government departments, bodies, entities and agents that could potentially avail themselves of Pt VII is quite extensive and could conceivably push the scheme beyond its intended sphere of operation. In this article, I argue for a limited reading of the Pt VII scheme and an amendment to curtail any use of it within the fields of trade or commerce.

Conflicting Interests, Competing Perspectives and Policy Incoherence: COVID-19 Highlights the Significance of the United Nations High-Level Panel Report on Access to Medicines – Muhammad Zaheer Abbas

The issue of affordable and equitable access to innovative health technologies has been the subject of a longstanding global debate on intellectual property, trade, and public health. The current COVID-19 has put this problem in the limelight because governments, even in the economically advanced countries, are struggling to meet the health needs of their populations. Patent exclusivities add to the cost of health care by allowing supracompetitive prices of protected technologies. The United Nations (UN) High-Level Panel Report on Access to Medicines is a great help in identifying and articulating the nature of the public policy problems faced by countries in response to COVID-19. After analysing the Report and its key recommendations, this article evaluates the diverging responses to the Report which clearly highlight the conflicting interests of stakeholders. This article concludes that World Trade Organization (WTO) Member States need to revive the spirit of the Doha Declaration which was arguably the best multilateral effort to accommodate the conflicting interests.

Protection of Australian Regional Names as Food Geographical Indications – South Australian Case Study: Part 1 – Dr Paula Caroline Zito

This article is the first of a two-part article series that reports and explains findings from a case study conducted in the South Australian regions of Barossa Valley and Adelaide Hills. The case study explored whether regional food producers based in those regions consider that Australia should implement a dedicated food Geographical Indications (GI) framework. This article reflects on the cases that exist at both a national and international level for the implementation of an Australian food GI framework, before identifying the key findings made as a result of the case study. This article reveals that the regional food producers, who participated in the case study, consider that Australia should implement a food GI framework. They would welcome the implementation of a similar framework in the food industry to that which exists in the Australian wine industry pursuant to the Australian wine GI framework. They believe that a food GI framework would provide better regulation in protecting the connection between food and origin, and the value that exists in the names “Barossa Valley” and “Adelaide Hills”, than currently provided pursuant to existing consumer protection, passing off and trade mark laws. Furthermore, this article explains that the implementation of an Australian food GI framework would significantly improve Australian intellectual property laws and place Australia in a strong international trading position. The issues addressed in this article have become pressing, as the Australian government is engaged in consultations on a possible new GI right as part of negotiations for a Free Trade Agreement with the European Union.

Quantitative Assessment of Applications for Plant Breeder’s Rights under the Plant Breeder’s Rights Act 1994 (Cth) from 1994 to 2019 – Charles Lawson and Andrew Cecil

This article reports on applications lodged under the Plant Breeder’s Rights Act 1994 (Cth) from 10 November 1994, when the legislation entered into force, until 24 September 2019. The analyses address applications, grants, terminations and expirations of Plant Breeder’s Rights (PBRs) according to the country of origin, plant form (trees, vines and others), plant groupings (amenity grasses and turfs, cereals, field crops, forage crops, fruit crops, fungi, ornamentals and vegetable crops), native plants and PBR duration. The main findings are that 5,141 PBRs have been granted, with approximately 210 new PBRs each year, Australian individuals, companies and other entities hold most granted PBRs and very few PBRs reach their full term. A closer analysis of cereals to demonstrate the methodology, and particularly Triticum aestivum (bread wheat), shows the transition from the public to private sector breeding, many PBR owners and each owner holding on average 4.5 PBRs suggesting a vibrant and competitive breeding sector for bread wheats.

For the PDF version of the table of contents, click here: AIPJ Vol 31 No 1 Contents.

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This Special Issue of the Australian Intellectual Property Journal (Volume 31 Part 2) entitled: Unlocking the Interface between IP and the Right to Repair contains the following material:

EDITORIAL – Guest Editors: Leanne Wiseman and Kanchana Kariyawasam

Articles

The Right to Repair: Perspectives from the United States – Leah Chan Grinvald and Ofer Tur-Sinai

Repair has entered the national conversation in the United States. Fuelled mainly by a strong consumer rights ideology of repair, the social movement has to-date mainly focused its efforts on State-level, consumer protection legislation in an attempt to codify a right to repair. The thought is that this will then bring to the bargaining table all of the various manufacturers that currently oppose such a right – and attempts to build upon the successful automobile right to repair campaign from 2011 to 2012. However, the focus on consumer rights can be somewhat myopic and overlooks in some sense how federal intellectual property laws can continue to interfere with a right to repair (even if mandated by some States). This article will provide an overview of the repair social movement in the United States and a look at how the focus in enacting a right to repair should encompass more than consumer rights, but also possible reforms to United States intellectual property laws.

European Steps to the Right to Repair: Towards a Comprehensive Approach to a Sustainable Lifespan of Products and Materials? – Taina Pihlajarinne

This article discusses the steps that the European Union legislator has taken to address barriers to repairs. It addresses the questions of what kinds of problems have been solved and what major problems remain to be tackled to promote the right to repair and the circular economy (CE) in Europe. The article argues that direct incorporation of CE concepts in intellectual property right (IPR) doctrines is necessary for genuine integration of CE goals within European Union law. The concept of a “sustainable lifespan” has the potential to act as a key concept promoting the fundamental aim of balancing IPRs and the CE: creating an incentive for innovative and creative work in society where products and materials are utilised within their sustainable lifespans. The notion of a sustainable lifespan should therefore play an independent role in IPR doctrines.

Anti-circumvention Prohibitions and the Function of the Work – Graeme W Austin

Many products contain embedded computer programs that are protected by technological protection measures (TPMs). Some right to repair advocates claim that legal prohibitions against circumventing TPMs that control access to copyright-protected works impose barriers to repairing these goods. Recognition of this problem has led to exceptions to anticircumvention prohibition regimes. Focusing on Australian and United States law, this article argues that these initiatives overlook a key question: whether, in the context of copyright-protected computer programs, the concept of a “work” includes the function performed by those programs. Disaggregating “function” from the “work” requires a closer look at basic copyright principles. The analysis suggests that, far from being the enemy of the right to repair, basic copyright principles can be enlisted in its cause.

Revisiting the Repair Defence in the Designs Act (2003) in Light of the Right to Repair Movement and the Circular Economy – Leanne Wiseman and Kanchana Kariyawasam

Australia first introduced a form of a “right of repair” into its designs law in 2003 when the “spare parts” defence to designs infringement was introduced. This defence, which introduced the new concept of repairability into Australian designs law lay dormant and untested until 2019 Federal Court decision of GM Global Technology Operations LLC v SSS Auto Parts Pty Ltd. This article examines history and context behind the introduction of Australia’s “spare parts” defence and contributes some thoughts as to the positive role that that the repair defence in designs law could play in facilitating a broader consumer right to repair in Australia. Through analysing GM Global Technology Operations LLC v SSS Auto Parts Pty Ltd, we highlight the detailed and complex nature of the spare parts defence, as well as its inadequacies. We argue it is timely to not only revisit the “repair defence” within designs law as it currently stands, but also to reflect more broadly, on how embedding a broader notion of repairability in Australian designs law would encourage a more “green” and sustainable designs scheme for Australia. This, in turn, would facilitate Australia’s ongoing commitment to the United Nation’s Sustainable Development Goals by allowing Australian consumers and designers to embrace and engage in a more environmentally sustainable, circular economy.

Rewriting Judicial History or Just Refilling Ink? Patents and the Right to Repair in Australia Post-Calidad: “Logic, Simplicity and Coherence with Legal Principle” Prevail over “Rights Which They Have Held for More Than a Century” – Michael Williams and Vanessa Farago-Diener

Where to draw the line between repair and remaking, and around the scope and character of both patentees’ and consumer rights has been entertained recently by the Australian High Court in their consideration of Calidad. Until the Calidad litigation, there was little jurisprudence (and, with the exception of the conference on which this issue of this journal is based, few legal scholarly accounts), in Australia, as to what constitutes a repair of a patented product. Given the significance of the issues involved for the stakeholders mentioned, as well as in terms of competition law policy and principles, the decision is long overdue. At issue were a patentee’s exclusive rights and the tensions therein with the capacity of consumers to repair a product they purchase (likely holding the assumption that such a use would not encroach upon a patent owner’s legitimate interests), as well as the various secondary (or re-manufacturing/refurbishing) markets that have arisen both to supply a need (often in keeping with laudatory goals around recycling and repurposing for environmental reasons), and to profit from an opportunity in accordance with principles of demand, and, it follows, to keep costs of a product down. In establishing that Australia will follow the approach of the United States in particular with regard to what the majority refer to as the “comprehensible and consistent” doctrine of exhaustion of patents, over the previously dominant principle of implied licence (a shift that the minority decision-makers determine is “a question for the legislature, not the courts” and which they characterise as “stripping patentees of rights” long held), the High Court has provided much-needed certainty and clarity about a persistent conundrum within Australian patent law and its relationship to rights of repair.

Certified Repairable: Using Trade Marks to Distinguish, Signal and Encourage Repair – Jay Sanderson and Teddy Henriksen

In today’s throwaway world, a right to repair is increasingly important for environmental sustainability. As important as a legal right to repair – be that via patent, copyright or design – is the provision of information about the repairability of goods and a willingness and desire to repair the goods that we purchase. In this article we examine the way in which trade marks (and the sections on “authorised use” and “control” in the Trade Marks Act 1995 (Cth)) can be used to distinguish goods that are repairable and, in doing so, inform consumers that goods are repairable. Like the Health and Energy Star Ratings, Fairtrade and Forest Stewardship Council, a repairable trade mark can be distinctive and used to provide information, set standards and act as a simplifying heuristic to help consumers make a judgment and decision about which companies are repair friendly and which goods are repairable. In this way, the use of a repairable trade mark can play a crucial role in encouraging repair – creating a relational discourse in which intellectual property law, qua trade marks, help replace uncertainty and lack of knowledge with distinctiveness and an ability and desire to repair.

For the PDF version of the table of contents, click here: AIPJ Vol 31 No 2 Contents.

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This Special Issue of the Australian Intellectual Property Journal (Volume 31 Part 3) entitled: Unlocking the Interface between IP and the Right to Repair contains the following material:

EDITORIAL – General Editor: Dr David Brennan

Articles

Creative Machines: AI and IP Rights in Digital Authorship and Patentable Inventions – Francina Cantatore

The evolution of the concepts of “author” and “inventor” in the technology age has caused ownership in artificial intelligence (AI) generated works to become an area of contention. Conflicting, often indeterminable interests have surfaced between stakeholders involved in the creation of AI capable of creating content. The law has taken a reactive approach, as it has done in past with novel copyright law challenges emerging in the digital landscape where content is being disseminated on different platforms subject to a variety of statutes and contractual terms. This article deals with computational creativity in the context of intellectual property (IP) rights in AI-generated content generally; and more specifically, the issue of rights ownership in AI authored works and patentable inventions. It investigates the implications of machine learning on IP rights in the context of Australian, United Kingdom and United States law; and considers whether current IP frameworks effectively accommodate AI creativity.

Protecting the Golden Egg: Can Australian Copyright Law Respond to the Growing Problem of Live Sports Broadcast Piracy? – Lachlan Gepp

The jewel in the crown. The golden egg. Call them what you will, live sports broadcast rights are the most vital asset for professional sports organisations and broadcasters and are under attack by an ever-growing online piracy problem which erodes their value. Illegal live streaming is the primary concern and continues to slip through the cracks of the Australian copyright law framework for myriad reasons. This article explores the dominant methods of illegal live streaming and considers whether the Copyright Act 1968 (Cth) adequately protects rights holders’ copyright in live sports broadcasts. Further, it questions whether legislative reform would overcome the inherent prosecutorial challenges presented by a copyright infringement claim in the digital age and concludes that combative efforts are better spent improving counter-technologies or identifying new ways to distribute live content to consumers in a more affordable and varied fashion.

Time to Face the Music: Lifting the Australian Commercial Radio Royalty Cap – Mary Whitehead

The music industry’s global neighbouring rights market has experienced significant growth over the past decade, yet under Australia’s copyright laws, record labels and performers remain trapped under a 1% ceiling with respect to royalties earned when their sound recordings are broadcast on commercial radio. This article will examine the initial justification for the 1% statutory pricing cap and reveal why, 52 years since its inception, it is time for the Australian Government to repeal the cap under s 152(8) of the Copyright Act 1968 (Cth) and allow rights holders the freedom to negotiate fair licence fees.

For the PDF version of the table of contents, click here: AIPJ Vol 31 No 3 Contents.

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This Special Issue of the Australian Intellectual Property Journal (Volume 31 Part 4) entitled: Unlocking the Interface between IP and the Right to Repair contains the following material:

EDITORIAL – General Editor: Dianne Nicol

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Articles

Protection of Australian Regional Names as Food Geographical Indications – South Australian Case Study: Part 2 – Dr Paula Caroline Zito

This is the second of a two-part article series that reports and explains findings from a case study conducted in the South Australian regions of Barossa Valley and Adelaide Hills. The case study explored whether regional food producers based in those regions consider that Australia should implement a dedicated food Geographical Indications (GI) framework. The first article in the series reported the key findings made from the South Australian case study. This article expands on some of those key findings, providing valuable explanation about how a food GI framework can be tailored to accommodate Australian food industry needs. This information is especially significant at this time given the Australian government’s public consultation on a possible new GI right that could provide GI protection to goods other than wines and spirits. This article reports on the views and opinions of South Australian food producers relevant to the Australian government’s current consideration of a possible new GI right and the implementation of an Australian food GI framework. It provides relevant information for the current policy regarding the connection between product and place, including practical criteria that should be incorporated into an Australian food GI framework to ensure that Australian food GIs are only used on food labels where the food product is clearly connected to the GI place claimed.

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Trade Secrets: Promoting Innovation in Biosimilars – Teddy Henriksen

Trade secrets are generally considered as stifling innovation, including the innovation of biosimilars. This article considers the alternative and suggests that trade secrets over biologics not only promote, but actually force biosimilar innovation. Specifically, trade secrets encourage biosimilars to innovate in two areas: process design and analytical science. Both areas of innovation are related to the unique nature of biologics and biosimilars and their molecular size, complexity and heterogeneity. However, it is not enough to say that the secret nature of originator manufacturing processes promotes innovation. This article will show that biosimilars may not only innovate in the sense of allowing cumulative innovation in analytical techniques for biopharmaceutical characterisation, but originator trade secrets also promote a different kind of innovation in biosimilar development processes: simultaneous innovation.

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The Inevitable Actors: An Analysis of Australia’s Recent Anti-piracy Website Blocking Laws, Their Balancing of Rights and Overall Effectiveness – Peter Carstairs

Following the High Court’s decision in Roadshow Films Pty Ltd v iiNet Ltd and walking in the footsteps of countries such as the United Kingdom, in 2015 Australia introduced a website blocking injunction regime into the Copyright Act. The regime, which was expanded in 2018, allows an injunction to be brought against a carriage service provider or a search engine provider to block access to an overseas website whose “primary purpose” or “primary effect” is the infringement or facilitation of infringement of copyright. The regime has received criticism that it may amount to a form of censorship and a restriction on the freedom to access information, particularly where the website comprises both infringing and non-infringing content. This article argues, however, that these risks are low, that the regime successfully balances rights when dealing with the very real issue of online piracy, and could potentially be expanded to include other intermediaries.

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For the PDF version of the table of contents, click here: Westlaw AU – AIPJ Vol 31 No 4 Contents or here:  New Westlaw AU – AIPJ Vol 31 No 4 Contents.

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This issue of the Australian Intellectual Property Journal (Volume 32 Part 1) contains the following material:

EDITORIAL – General Editor: David Lindsay

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Articles

Related Rights of Press Publishers and Their Limitations under the EU Directive on Copyright in the Digital Single Market – Elżbieta Czarny-Drożdżejko

This article analyses the new European Union (EU) Directive on related rights of press publishers. These are the rights granted to publishers to reproduce press publications for public consumption. It covers five basic issues: press publisher as rights holder, permissions for a person or an entity to use press publications, scope of exclusive rights granted to press publishers, “fair use”, and protection of authors of works in a press publication. Due to the unclear wording of Art 15 of EU Directive 2019/790, the burden of its interpretation, mainly concerning the exceptions to a press publisher’s exclusive rights, has already been transferred to the Court of Justice of the European Union. As a result, this article argues that there is the distinct possibility of EU Member States, who have already adopted this Directive, in future, being subject to different and less acceptable interpretations of the Directive to the ones they originally agreed to.

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Onus, Presumptions and Registrability under New Zealand Trade Mark Law – Rob Batty

Where the onus lies when establishing whether a trade mark is eligible for registration is not expressly addressed in New Zealand’s Trade Marks Act 2002 (2002 Act). The legislative background suggests the 2002 Act was intended to establish a presumption of registrability in favour of a trade mark applicant. Decisions before the Intellectual Property Office and the courts have not been consistent or clear about where the onus lies and how, if at all, a presumption of registrability affects this question. This article analyses the evidence literature, the historical background to the 2002 Act, existing New Zealand case law, as well as the approach taken under United Kingdom and Australian trade mark law. Drawing on such analysis, the article puts forward a reasoned explanation of where the onus lies during the examination of a trade mark application, in opposition proceedings and on appeal. The article concludes that the onus lies on the trade mark applicant to establish its trade mark is eligible for registration.

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Contracting Out, Fair Dealing, and Public Policy: The Australian Perspective – Alexander Sloan and Lucy Cradduck

Copyright’s fair dealing exceptions enable easier access by users to copyright works. However, as in any market-oriented environment, they are susceptible in practice to contractual erosion. Whether contractual provisions that purport to oust a user’s fair dealing privileges are effective at law is unsettled, not the least due to legislative silence. The issue is a complex one that meets at the intersection of the law, economics, and social policy. While not a black and white issue, it is submitted that the historical development of the fair dealing exceptions supports the position that fair dealing exceptions cannot be excluded by contract.

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For the PDF version of the table of contents, click here: Westlaw AU – AIPJ Vol 32 No 1 Contents or here:  New Westlaw AU – AIPJ Vol 32 No 1 Contents.

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This issue of the Australian Intellectual Property Journal (Volume 32 Part 2) contains the following material:

EDITORIAL – General Editor: David Lindsay

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OBITUARY

• Vale Peter Heerey

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Articles

Saving Your Games: A Case for the Copyright Protection of Gameplay – Joseph Lau Chin Yang

Video games are popular and profitable, tempting competitors to “free ride” on the success of popular titles by duplicating them wholesale or in part and marketing the result as their own game. Especially worrying is the practice of “cloning”, where competitors copy gameplay, which is not one of the categories of material protected under the Copyright Act 1968 (Cth). Developers face an uphill battle trying to remedy this deficiency by establishing that copyright, in the form of one of the existing categories of material protected under the Copyright Act, subsists in gameplay or other constituent elements of games related to it and that cloning infringes said copyright. To resolve this difficulty, the Copyright Act should be amended to protect gameplay directly, as a new type of “original work” under that Act.

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Does s 122A of the Trade Marks Act Achieve the Australian Government’s Policy Goal of Allowing for the Parallel Importation of Genuine Goods? – Omid Komeili

The Australian Government’s policy goal is to allow for the parallel importation of genuine goods. Section 122A of the Trade Marks Act 1995 (Cth) purported to rectify the unsatisfactory operation of the now-repealed s 123(1) defence, which was intended to operate as a defence to trade mark infringement when the goods being imported were genuine. The s 123 defence remains in force in relation to services. This article begins by exploring the arguments on both sides of the parallel importation debate, the history of s 123(1) and the likely effectiveness of s 122A. It argues the new defence reduces the risk of parallel importers infringing the relevant trade mark. It then demonstrates how trade mark owners and licensees could nonetheless implement and enforce contractual devices that restrict parallel import activity. This in turn leads to a call for further law reform. This article proposes explicitly prohibiting restrictions on parallel import activity and introducing proactive safety laws to address some concerns trade mark owners and licensees have regarding the safety of parallel imports. Finally, this article suggests measures to limit the detrimental effect parallel imports may have on brand reputation.

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Joint Authorship and the Contribution of Ideas: English Lessons in Kogan – Claire Roberts

Whether someone who contributes ideas – but not ink – to a creative work deserves recognition as a joint author is a difficult question. The challenge is made even greater by new and emerging technologies that enhance collaborative possibilities. This article argues that a recent English decision – Kogan v Martin (Kogan) – contains valuable reflection on the general concept of joint authorship and the specific question of what amounts to sufficient contribution. In that decision England and Wales moved towards a more “fluid” approach to what joint authorship is – a course Australian courts might consider. This article then argues that both the post-Kogan English approach, and the arguably more “rigid” Australian approach, are both preferable to the intentionality approach adopted in the United States.

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For the PDF version of the table of contents, click here: Westlaw AU – AIPJ Vol 32 No 2 Contents or here:  New Westlaw Australia – AIPJ Vol 32 No 2 Contents.

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