Intellectual property refers to the intangible assets which constitute proprietary knowledge in the form of patents, trade marks, designs, confidential information and more. Intellectual property is a valuable asset in this digital age, bearing numerous exclusive rights which are protected from infringement by the various federal laws such as the Trade Marks Act 1995 (Cth) and Copyright Act 1968 (Cth). This article focuses on examining the numerous defences to copyright infringement, in particular, when the use of a work is a fair dealing, or for the purpose of parody or satire.
Copyright describes the collection of exclusive rights that vest in the owner of certain creative works of intellectual property. The specific exclusive rights granted by copyright depend on the particular creative work, but generally include the rights to reproduce, publish, communicate or make other various uses of the material as well as non-transferable moral rights attributed to the author. The owner of the copyright, and therefore the bearer of these exclusive rights, is usually the person who created the work, but there are some exceptions to this.
Copyright infringement under the Copyright Act 1968 (Cth) occurs when a person, directly or indirectly, does something with the copyrighted work which constitutes an action that is usually protected exclusively for the copyright owner, without the owner’s permission or a relevant defence. The duration of protection granted to copyright depends on the creative work, but is generally 70 years from the date of publication or is the life of the creator plus 70 years. For infringement to occur, the person only needs to have used a “substantial part” of the work during the period where the work is protected by copyright, meaning a qualitatively important or essential part of it, but not necessarily the whole work itself.
Fair Dealing Defences – including Parody and Satire
A defence to copyright infringement arises when the use is a fair dealing, for the purposes of:
- Research and study,
- Providing access by a person with a disability,
- Criticism and review,
- Parody and satire,
- Reporting the news, and
- Judicial proceedings or legal advice.
Of particular relevance to this article is the defence of fair dealing of a literary, dramatic, musical or artistic work for the purpose of parody and satire, which can only be relied on if this is the legitimate purpose of the author. As such, this defence requires some express or implied commentary on the copyrighted material being used on some broader aspect of society. The fairness of the dealing is determined objectively in relation to the relevant purpose, as judged by a fair minded and honest person. Relevant factors for determining if a dealing for this purpose is fair include:
- How much of the copyrighted material was used,
- The context in which the parody or satire was used,
- The necessity of the copyright material’s use in the work, and
- Whether there was a significant adverse effect on the original work or artist.
Case Study: AGL Energy Ltd v Greenpeace Australia Pacific Ltd  FCA 625
This recent case brought attention to the fair dealing defence for copyright infringement for the purpose of parody and satire. Greenpeace launched an advertising campaign about AGL’s environmental practices, using their trademarked AGL logo, modifying the AGL acronym to stand for “Australia’s Greatest Liability” and unsuitable taglines including “Still Australia’s Biggest Climate Polluter” and “Generating Pollution for Generations”. AGL argued that its copyrighted company logo was infringed by the substantial reproduction of it in the Greenpeace advertisements. Greenpeace relied on the statutory defence of it being a fair dealing with the purpose of parody and satire.
The Federal Court held that Greenpeace had not infringed AGL’s intellectual property through the use of the AGL’s corporate logo. The satirical purpose of the logo in conjunction with the disadvantageous messages was held as likely to be immediately perceived as coming from Greenpeace, particularly with the inclusion of “Presented by Greenpeace” on the advertisements. Therefore, the court held that Greenpeace had not infringed AGL’s copyright as they did not use the logo “as a trade mark” in the course of trade with any Greenpeace goods or services.
How Etheringtons Solicitors can help
A solicitor at Etheringtons Solicitors can provide clarification of the relevant law in relation to your individual circumstances. If you need further advice or assistance with copyright infringement or intellectual property matters, please contact one of our experienced solicitors on (02) 9963 9800 or via our contact form.
Trade marks on the Grill
The famous Australian burger chain known as Grill’d released a contentious advertising campaign to promote its healthy fried chicken (“HFC”) burger range. This case highlights the way in which slogans derivative of a competitor can be legally used.
Grill’d used their ad to attack the quality of KCF’s burgers. In doing so, Grill’d subverted KFC’s slogan by highlighting the additives and preservatives secretly used in their burgers. Grill’d publicly revealed their recipe to demonstrate that the HFC range uses gluten-free, ‘healthy’ fried chicken made without any artificial colours, flavours or preservatives. The advertisement campaign aimed to encourage other food brands to be held accountable for the ingredients used within their food by shaming KFC as an example for their ‘secret recipes’.
Where Grill’d came under fire was by making a parody of the well-known “Did…someone say KFC?” ads, with the almost identical “Did…someone say MSG?” slogan.
This is not the first time fast food competitors have litigated for similar trade marks. McDonald’s initiated proceedings against Hungry Jacks in August last year over the purported deceptive similarities between their ‘Big Mac’ and Hungry Jacks’ ‘Big Jack’. In response, Hungry Jacks also released a series of television advertisements with slogans such as “They reckon Aussie’s are confusing the Big Jack with some American burger… but the Big Jack is clearly bigger”. The recent emergence of these disputes is a timely reminder of the importance of registering trade marks when operating a business.
Phrases as trade marks
A trade mark can be any word, phrase, logo or other feature which distinguishes your goods and services from that of other traders. Registering that trade mark gives the owner exclusive rights to use, sell and licence their trade mark, protecting them in the event that someone else infringes on their intellectual property. There are also other benefits of registering a trade mark including increasing brand awareness and exclusivity.
The trade mark must be something that is distinguishable from other goods or services, as exclusive rights to everyday language, names or descriptions are difficult to register. For a trade mark to be registered, it must be sufficiently distinctive from existing trade marks so that it does not exhibit deceptive similarity. It also must more than merely descriptive so that it is ahead of prevailing trends, as held in a recent craft beer trade mark dispute. A trade mark must be considered in its entirety, and found to not be deceptively similar to the recalled impression of any previously registered trade mark.
In Grill’d’s case, the verdict is still out on whether it will fall short of the deceptive similarity limb should KFC choose to sue. Grill’d will likely be unable to find any refuge in the slogan being merely descriptive, as it does not just describe their product – instead, it highlights KFC’s ingredients through the slogan.
How Etheringtons Solicitors can help you with your trade marks
A solicitor at Etheringtons Solicitors can provide clarification of the relevant law and its relation to your individual circumstances. Furthermore, Etheringtons Solicitors can assist in applying trade mark law for a slogan for your business, or in the event that someone copies it with an intent to deceive a consumer.
If you need further advice or assistance with intellectual property law matters, please contact one of our experienced solicitors on (02) 9963 9800 or via our contact form here.
The advantage of registering a trade mark is that it confers far more benefits than registering a business name, company name or domain name. Marketing is an important business tool, and a registered trade mark is crucial in allowing you to protect any value or credibility which you have built on your brand.
What is a trade mark?
A trade mark identifies a product or service, distinguishing it from the goods or services of other entities in the same sphere. A registered trade mark protects any branding element within a business including letters, numbers, words, phrases, sounds, smells, shapes, logos, pictures and aspects of packaging. Registration alone of a business name, company name or domain name does not give you that kind of protection.
Registering a trade mark allows the owner of the trade mark to commence legal action to stop others using it. Trade marks can be used to help build market position and stop others from imitating your brand. The registration of a trade mark is effective for 10 years and can be renewed for further 10 year periods thereafter.
Registration of a trade mark covers the entire Commonwealth of Australia. For worldwide protection, an application can be filed with each country in which the trade mark will be used, or a single international application can be filed through IP Australia nominating the countries in which protection is required.
Applying for a trade mark
Trade marks are registered in specific classes relevant to the description of the goods or services for which the mark will protect. The application for registration must nominate one or more classes of goods or services for which the mark is intended to be used and associated. If the mark applies to more than one class, the wider the protection that mark has once the trade mark is registered.
Before making an application to register your trade mark, the following should be considered:
- Identify the relevant class of goods or services for which the mark will apply. Schedule 1 of the Trade Marks Regulations 1995 prescribes the available classes and describes the types of goods of services specific to each class. A search should be carried out before applying to register a trade mark to check that a similar trade mark is not already registered in that class. An application to register your trade mark could be rejected if there is an identical or similar trade mark already registered which covers similar goods or services.
- Only minor changes can be made to a trade mark once an application has been filed and published.
- A trade mark registration is for the goods and services you actually trade in or intend to trade in in the near future. Once an application is filed and registered, goods and services cannot be added. Therefore, you should clearly define the marketplace you trade in to ensure the best possible protection.
- Your trade mark must be something that is capable of distinguishing your goods and services. Exclusive rights are difficult to register over everyday language, names and descriptions of products and services
Once you are happy with your trade mark, you can apply to register it through the IP Australia website. You can also request an assessment of the likelihood of your trade mark achieving registration through TM Headstart.
The cost of applying for a trade mark will vary depending on the scope of the application. Generally, the minimum cost to apply is $120 for each class of goods and services. In Australia there are 45 different classes of goods and services and each additional class costs an extra $300.
The application process
Once your trade mark is accepted, it will be advertised in the Australian Official Journal of Trade Marks and the application is open to opposition for a period of 3 months (which can be extended by an opponent for a further 3 month period where there has been an error or omission).
If your application is not challenged, your trade mark will be registered once the registration fee is paid (payment must be made within 6 months from the date acceptance is advertised or your application will lapse).The registration of a trade mark in Australia takes at least 7 months after an application is filed.
Seek legal advice
When applying for an Australian trade mark it is important to ensure your trade mark description and classes accurately reflects of the goods or services you intend to use your trade mark on. By investing in protecting your brand today, you can avoid the costly and uncertain exercise of preventing unauthorised use of your unregistered trade mark in the future. We are experienced in intellectual property matters and can work with you to ensure your trade mark is registered in the appropriate class or classes, and to respond to any opposition to the proposed registration. We are also able to assist with trade mark and copyright disputes.
If you or someone you know wants more information or needs help or advice regarding trade marks, please contact us on (02) 9963 9800 or via our contact form.
A trade mark (or “mark”) is a way of identifying a unique product or service. It can include a letter, number, word, phrase, sound, smell, shape, logo, picture, aspect of packaging or a combination of these that distinguishes your goods and/or services from competitors. Your trade mark is an important asset to building and maintaining your business. There are many benefits associated with registering a trade mark and in this blog we will take you through the 10 main reasons why registering a trade mark is a good idea for your business.
Before registering, a preliminary identity and similarity search in the trade mark data bases of IP Australia and the World Intellectual Property Organisation (WIPO) will increase (or almost exclude) any likelihood of confusion, thus being an obstacle to registration or use of your business’ name or logo.
Registering your trade mark gives you the exclusive right to use it within the relevant geographic area. A registered trade mark also provides you with exclusive rights to license and sell the mark. This is a valuable marketing tool because the value and worth of the trade mark will increase with the success of the business it is associated with.
3. Presumption of Ownership
Anyone else who uses your registered trade mark will be presumed to have wilfully infringed upon your mark, and you could be entitled to damages as a result of the infringement. This means it is easier for you to take legal action to stop the infringing party and receive compensation for the wrongful use.
Trade Mark registration serves as constructive notice to the rest of the country that you are the owner of the mark, even if you do not do business nationally. That means you are protected against any attempts to stop you trading under a protected name or logo, unless you are not using the trade mark. If you do not register the trade mark and there happens to be a registered owner of an identical or a substantially similar mark, that owner will have an indefinite period of time to find you and sue you for infringement.
5. Avoid Costly Expenses
If you do not search and register your trademark and you find out later that another company already has the same or a very similar name or logo, you will have to redo all your business cards, stationery, advertising and signs. Additionally, this may also leave you open to liability for using a mark already registered. Litigation expenses can be costly in defending your use of the mark.
6. Retain Your Customers
If you have to change your business name because you later find out that someone else has already registered an identical or similar trade mark, you could avoid confusion and thus retain your customers. The stronger your mark is protected, the more likely it is for customers to return to you for certain products and services if they can identify you easily.
7. Let Your Trademark Make Money for You
Having a registered trade mark in place provides you with the option to grant licenses to other businesses or companies that would like to use your mark. They will have to pay you license fees for this privilege which opens the possibility for another income stream for you.
8. Option to Expand Protection
With a registered trade mark in your home country you obtain the option to expand its protection in several countries around the globe. This will give you greater protection should your business decide it wishes to expand to an overseas market.
9. Brand Awareness
A distinctive trade mark stands out and enables the public to identify your business or company as the origin of the goods and services. The more you market and promote your business brand in association with your registered mark, the more the public will be aware of your services or products upon seeing your trade mark.
10. Impress and Increase Value
A registered trade mark strengthens the reputation of your business and can increase its value. This means that in the long term, the more your business increases in value and expands so will the public’s awareness of your brand and trade mark.
If you would like to discuss your intellectual property matter with one of our lawyers, please contact us on 9963 9800 or via our contact form.
Are you a mobile app developer or someone contracting with a developer to make mobile apps? Are you having issues as to who owns what when the work is done, or even before it is done? You are not alone. This article aims to set out briefly some of the common copyright disputes that arise, what the law says, and what the process is for resolving these sorts of disputes.
Common disputes about mobile apps
Increasingly these days, we are seeing more and more mobile applications (apps) being developed for many different purposes. From tax lodgment to payroll, to apps for finding a lawyer or the best restaurant, the possibilities are endless. Businesses in all sectors are attempting to provide goods and services differently, and mobile app developers are helping them do it.
Sometimes, issues may arise between developers and their clients as to who owns the underlying data while the app is being developed. A dispute might arise when the project is complete, and the client may withhold payment. Developing an app can take months and even years and often agents are involved between the client and the app developer. Clients might change their mind and decide to take a half finished app to another developer to finish the project. Clients may assert that the app, and the intellectual property therein, is theirs, and may even withhold payment to their developer until the app, typically the source code underlying it, is given to them so that the app can be taken to another (less expensive) developer to finish. But really, who ‘owns’ it?
What the law says
The first place to look for answers to this question is the Copyright Act 1968. Under section 10, a “computer program” is included in the definition of a “literary work”. Under section 32, copyright of a literary work is effective if it was made in Australia by a suitably qualified author, even if it has not been published yet. Under section 35, the author owns the work. Lastly, section 196 tells us that ownership of copyright can be assigned (‘passed on’) to someone else, but an agreement to do so must be in writing.
Case law gives us some guidance as to what happens if you don’t have a written agreement or if the agreement is silent or vague as to the ownership. They tell us that if a business client asks for the app (usually in the form of its source code) to be given to them, a term will be implied to allow this to happen. This is particularly the case where the business client is paying for the design and manufacture of the app, and where, objectively, there is no real expectation that the developer should retain the app/its source code for itself or for the benefit of a competitor of the business client.
Arguments may also be made that the app developer only has a license to the app, which essentially means that the proper owner is the business client, not the developer.
What about after the project has finished and the invoice has been paid in full? Can ideas, formulas and know-how which the app developer gained while working on its client’s app be used elsewhere? For example, the intangible ideas, formulas and know-how gained from a tax lodgment app – can you use these when working for another client looking to develop another finance or accounting app? Can the client come back and sue the app developer for IP infringement?
Resolving your dispute
Both the Supreme Court of NSW and the Federal Court of Australia can hear disputes concerning intellectual property. The starting point is your agreement. Without a written agreement, the dispute resolution process can be both complex and expensive.
The best advice before starting work on a mobile app is to agree in writing who will own what when the work is done, and at various stages of the work’s development.
Seek Legal Advice
Whether you’re a business or an app developer, if you have having issues around your app and its creation, we can provide additional information and advice to you regarding your situation. If you would like to discuss your concerns with a legal professional please contact us on (02) 9963 9800 or at [email protected]
Intellectual property (IP) is the property of your mind or proprietary knowledge and can be an invention, a trade mark, a design or the practical application of your idea.
It is important that you understand how to protect IP as it is a valuable business asset and it is easier and cheaper to take enforcement action following a breach of your rights if they have been protected “up front”.
In this article we provide an overview of the different types of IP and look at the basics for protecting your IP rights.
A trade mark can be a letter, number, word, phrase, sound, smell, shape, logo, picture, aspect of packaging or a combination of these that distinguishes your goods and/or services from those of other traders.
A trade mark identifies the particular goods or services of a trader as distinct from those of other traders.
There is no legal requirement to register a trade mark, although registration establishes your legal rights to use, sell or license the trade mark or to take action against another party and prevent them from using your trade mark without permission.
If you do not register your trade mark, you will need to rely on protection through legal action, such as passing off under common law or misleading and deceptive conduct. Such an action can be difficult, expensive and time consuming.
Copyright is a collection of exclusive rights that vest in certain types of creative work, such as written material, art, literature, music, film, broadcasts and computer programs.
A single item can contain more than one element that is protected by copyright. A website may have as copyright the text, any images and the computer coding, among other things. Each of these is protected by copyright, and it is important to identify the owner of each of these rights.
The exclusive rights granted by copyright vary depending on the nature of the material. In general they include the exclusive right to copy the material, to publish the material and to make various other uses of it.
In Australia, copyright protection is automatic. You don’t have to apply to register your copyright.
The owner of copyright is usually the person who created the material, although there are some exceptions to this such as where the person is an employee and the material is created as part of their employment, in which case the employer will own the copyright.
It is particularly important when selling a business to ensure that any asset in which copyright subsists is yours to sell.
Inventions that are new, inventive and useful can often be protected through patent registration.
It is important to be aware that patents protect only a specific invention and once an invention has been made public it is no longer able to be protected through patent registration.
A patent owner has the exclusive right to use, sell or license the invention. Patents also allow the owner to stop others from manufacturing, using, copying and/or selling the device or process.
There are two types of patent registration available in Australia, innovation patent and standard patent. The process for registering a patent can often be long and complicated and professional advice is recommended.
Trade Secrets & Confidential Information
Any information that is not known publicly is confidential information.
For a business this can include customer lists, business and marketing plans, internal business processes or formulas for products. Business ideas that have not been openly discussed can also be considered confidential information.
There is no registration process for trade secrets or confidential information, and they are normally protected via contracts, agreement and management procedures. In general, the owner has the exclusive right to use, sell or license the IP.
Moral rights are granted to the creator of material in which copyright subsists.
Moral rights are the right of attribution of authorship, the right against false attribution of authorship and the right not to have a work subjected to derogatory treatment.
Unlike copyright, moral rights are non-transferrable. They will always vest in the creator. As a result, a person may have moral rights in material but not own the copyright.
Designs, which are the way a product looks or a design on a manufactured product, can be registered if they are new, distinctive and have not been publicly disclosed.
Some designs can be protected by copyright, however where a three dimensional design is in industrial or commercial use copyright protection no longer applies. In order to be protected, such designs need to be registered.
Other types of IP
Plant breeders rights are used to protect new varieties of plants by giving exclusive commercial rights to market a new variety or its reproductive material.
Circuit layout rights automatically protect original layout designs for integrated circuits and computer chips.
Exclusive Rights & Duration
Registered IP rights usually provide you with exclusive rights. Each IP right has its own restriction in terms of duration.
Copyright protection generally lasts for 70 years. Where duration of protection depends on publication, protection is for 70 years from the date of publication, otherwise it is the life of the author plus 70 years.
Standard patents last for 20 years. Trade marks can remain in force indefinitely provided renewal fees are paid every 10 years.
Design registration protects the design for an initial period of 5 years and is renewable for up to 10 years.
Most IP rights are territorial, meaning they have to be dealt with in each new territory where you intend to trade. For example, a patent, trade mark or design granted in Australia is not automatically granted in other countries.
Copyright is the only IP right that is automatically recognised in the global market. All other forms of IP need to be specifically assessed and approved in each country in which you intend to do business.
Australia is party to a number of international agreements, making it easier to apply for rights such as trademarks, patents and designs in other countries.
IP rights are negotiable and can be used for commercial advantage. They can generally be bought, sold, licensed, given away or made freely and widely accessible.
IP is a valuable business asset. Protecting it should be standard business practice forming part of the overall business plan. Understanding the rights that exist and the methods available for protecting IP is the first step to creating greater value in a business. For more information on protecting your IP rights contact us on (02) 9963 9800.