10 Good Reasons to Obtain a Trade Mark Registration

  1. Safety – 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.
  2. Avoid costly expenses – If you do not search and register you ID 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 of your business cards, stationery, advertising and signs.
  3. Keep 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 not lose your customers.
  4. Exclusive use – Registering your trade mark gives you the exclusive right to use it within the relevant geographic area.
  5. Option to expand protection and exclusivity – With a registered trade mark in your home country you obtain the option to expand its protection in several countries around the globe.
  6. Presumption of ownership – Anyone else who uses your registered trade mark will be presumed to be a willful infringer, and you could be entitled to damages as a result of the infringement.
  7. Let your trade mark earn 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.
  8. Protection – 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 yet do business nationally. That means you are protected against any attempts to stop you trading under a protected name or logo. If you do no register and there happens to be a registered owner of the identical or a substantially similar mark, that owner will have an indefinite period of time to find you and sue you for infringement.
  9. Get recognised – A distinctive trade mark stands out and enables the public to identify your business or company as the origin of the goods and services.
  10. Impress and increase value – A registered trade mark strengthens the reputation of your business of company and increases its value.

An Update on the Dallas Buyers Club Dispute

If you read our article on the DBC dispute, you would have the full background to this case by now. If you downloaded Dallas Buyers Club illegally, you have probably read a variety of different news articles which all say different things. Here is an update of the legal dispute and how it will affect you.

Recap of the dispute

For those that are not across the issues, a short summary of the DBC dispute is as follows:

  • DBC asked iiNet to provide a list of names and addresses of all of the users (identified by their IP addresses) who downloaded Dallas Buyers Club (what is known as preliminary discovery).
  • iiNet initially refused to do so for reasons of customer privacy and the risk of speculative invoicing and bullying of customers by DBC.
  • The matter went to court and the Federal Court ruled in favour of DBC, i.e. that iiNet was required to hand over the list of names and addresses requested.
  • The Federal Court also ruled that prior to sending out infringement letters to customers, DBC needed to submit a draft letter to the judge for approval.

 iiNet’s appeal (or, lack thereof)

It was originally thought that iiNet would appeal the Federal Court decision to grant preliminary discover to DBC. They had 28 days from the date of the Federal Court ruling to lodge an appeal and they have decided not to do so. iiNet has explained its reasons for not appealing, being that there was a clear legal argument in favour of DBC. The reason iiNet opposed DBC was for the protection of Australian customers – protection which the Federal Court has now addressed.

What will I have to pay if I receive a letter?

It is still unclear what consumers will have to pay if they are found guilty of copyright infringement. Rest assured, it is not a criminal offence so the penalty will likely be a fine. In the US, penalties of up to $675,000 were issued for downloading 30 songs. It is highly unlikely that the Australian courts would allow such an exorbitant fine, so disproportionate to the offence. In Singapore, DBC took the approach of sending letters to alleged pirates asking them to ‘name their price’ for illegally downloading the movie. It differs from speculative invoicing as it does not demand high sums of money, but still may be considered a pressure tactic in asking people to agree to higher sums than they would be legally required to pay. This approach could also be seen as misleading and deceptive conduct under Australian law.

Generally under Australian law, the fine for copyright infringement is the amount of damage you have caused – so in this case, that could be the amount which you would have paid had you downloaded the movie legally. This would only amount to a fine of approximately AUD $10-20. The only issue with such a small fine is that it may not have the effect of deterring Australians from continuing to download illegally. Often courts will impose fines with the aim of deterrence, so it is possible the eventual fine will reflect this.

How do I respond to a letter?

The most important thing to remember about the letter that it is not proof that you did anything wrong. It is simply an allegation. If you do receive a letter, come to us immediately for legal advice. You may also like to consider the following:

  • Did you have an open access point or internet connection that was unsecured?
  • Were you free in giving your password out to people (friends, family, visitors, customers, etc)? If so, maybe you have a defence that it wasn’t you.

We will have additional updates to the DBC dispute as the case develops. However, in the mean time if you have any queries, questions or concerns do not hesitate to contact one of our lawyers.

A Short Overview of the Dallas Buyers Club Dispute

It’s well known that Australians are some of the greatest copyright infringers in the world. The reasons behind this include Australians always being the last to have access to shows, prices for pay TV being too expensive and the inability to ‘binge watch’ as series are played on a week by week basis.

Dallas Buyers Club LLC (which we will call DBC for the purposes of this article) have decided to take action against anyone who downloaded the movie illegally. DBC has already filed over 66 lawsuits in the United States of America and has in some cases sought settlement sums of up to US$5,000.

DBC recently appeared in the Federal Court of Australia against internet service provider iiNet, requesting that they hand over all the names and contact details of customers who they believe have illegally downloaded the film. DBC argued that iiNet was able to provide this information by identifying the IP addresses which were used to download the film. This was not an action against iiNet, but an action for what is known as ‘preliminary discovery’. Preliminary discovery is used where a company, in this case iiNet, is believed to have the identity of the person (or in this case, identity of the people) who you may want to take legal action against.

iiNet opposed the discovery application on the basis that they wanted to protect their customers privacy and their legal obligations. iiNet also raised arguments that identifying IP addresses does not necessarily mean that the owners of those IP addresses were in fact the end users. It is possible that someone else, who is not the owner of the IP address (such as friends, neighbours, visitors or, if the internet connection was not secure, anyone) downloaded the film using the owners IP address. iiNet further argued that they were concerned that DBC would engage in speculative invoicing. This means sending Australian consumers intimidating letters of demand which are accusatory and seeking significant sums for the alleged infringement. Many Australians could be harassed into paying much higher sums that would normally be necessary.

The judge in this matter, Perram J, held in favour of DBC and granted preliminary discovery. However, to avoid speculative invoicing, Perram J imposed a condition on DBC – a condition that DBC must submit a draft of any letter they propose to send to account holders before the letter is issued. Perram J also said that despite the fact that the owners of the IP addresses may not be the end users, it is likely that they will be able to assist in identifying who the end user was. It was for this reason Perram J allowed the preliminary discovery to go ahead.

Some of the primary concerns in the DBC dispute are whether or not this will open the floodgates to other copyright infringement cases, and whether they will result in deterring Australians from illegally downloading. An industry code to combat Internet piracy is currently in draft form in Australia, and authorities are hoping to implement this in the near future. It is evident that the law is behind technological advancement, but will soon catch up. The first point to take away from the DBC dispute is to stop illegally downloading (if you haven’t already done so). The second point to take away is not to panic. If you receive a letter from DBC, seek legal advice before responding or paying any sums of money. Our lawyers are well equipped to assist you, and could save you thousands in settlement fees.

Understanding Copyright Law

What is Copyright?

Copyright is the exclusive right of owners to protect certain creative works from being copied by others without the owners’ permission.

What types of work does copyright apply to?

Copyright applies to artistic and creative works such as music, sound recording, text (for example, in books, reports and webpages), films, television commercials, radio programs, podcasts and computer programs.

When does copyright apply?

In Australia, copyright protection exists automatically from the moment content is created in a tangible form. This means the content has to be either written down, recorded, saved to disk or filmed. However, the work does not necessarily have to be published. Copyright will still apply to unpublished work.

In Australia, there is no formal registration process for copyright to apply to any work. Unlike a trademark registration, copyright protection automatically applies if:

  • The work was original;
  • The work was created by an Australian resident or citizen; and
  • The work was either created or first published in Australia.

What are the limits on copyright protection?

Copyright protection protects the expression of a concept. It does not protect underlying ideas, styles, techniques or concepts themselves. The limits of copyright protection can be best understood through the following examples.

Example 1: Take for example the circumstance where you have an idea to build a particular online business. Before you even begin building the business, you attempt to validate the idea by sharing it with a friend. Your friend then goes and builds that exact online business in the exact way that you described it to them. You cannot pursue them for copyright infringement because there is no protection in underlying ideas.

Example 2: In this second example, you show your friend a particular website that you have built for your online business. Your friend then goes and builds a website which has the same functionality but looks completely different. Again, you cannot pursue them for breach of copyright because they have only copied the underlying idea, but have not copied your designs, text or other artistic works.

Example 3: In the third example, your friend builds a website with the same wording, designs and pictures as your website. In this example, you can pursue them for copyright infringement because they have reproduced your work without your permission.

The copyright symbol ©

Having a copyright symbol “©” or notice on your published work is useful to remind people that your work has copyright protection. However, because the protection automatically applies in Australia, not having a copyright mark does not mean that your work is free for anyone to reproduce, or that you have granted a license for anyone to use your work. Despite the automatic protection, our recommended best practice is to always have the copyright symbol on your webpages and other works.

If you wish to display a copyright notice on your website, you should have the following:

  1. The © symbol or the word “Copyright”.
  2. The year the work was first produced or created.
  3. The name and owner of the copyright (this can be your business name, company name or your own name).

Copyright vs plagiarism

Copyright and plagiarism are not the same thing. Plagiarism is when one person copies another persons work, and claims that work as their own work. Copyright on the other hand is the requirement to request permission from the owner of a work to use their work, communicate their work or display their work. For example, if you wish to play a film in public, you need to request permission from the owner of that film for a license to do so. If you play the film without requesting their permission, you are infringing on that owners’ copyright protection. If on the other hand you play that film and claim that you made the film yourself, you have plagiarized the owners work.

The importance of copyright

Copyright is important because the creators of work should have the right to decide how, when and where their work is displayed. It is particularly important for artists and businesses because they have the ability to charge fees (usually license fees) to people who wish to use their work. Without copyright protection, people would be unable to earn money from the work they produced.

10 Good Reasons to Obtain a Trade Mark Registration

1. Safety – 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.

2. Avoid costly expenses – If you do not search and register you ID 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 of your business cards, stationery, advertising and signs.

3. Keep 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 not lose your customers.

4. Exclusive use – Registering your trade mark gives you the exclusive right to use it within the relevant geographic area.

5. Option to expand protection and exclusivity – With a registered trade mark in your home country you obtain the option to expand its protection in several countries around the globe.

6. Presumption of ownership – Anyone else who uses your registered trade mark will be presumed to be a willful infringer, and you could be entitled to damages as a result of the infringement.

7. Let your trade mark earn 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.

8. Protection – 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 yet do business nationally. That means you are protected against any attempts to stop you trading under a protected name or logo. If you do no register and there happens to be a registered owner of the identical or a substantially similar mark, that owner will have an indefinite period of time to find you and sue you for infringement.

9. Get recognised – A distinctive trade mark stands out and enables the public to identify your business or company as the origin of the goods and services.

10. Impress and increase value – A registered trade mark strengthens the reputation of your business of company and increases its value.