Beth Oliak 1. Ms Beth Oliak, Barrister Beth Oliak2 ChambersFrederick Jordan Chambers G/53 Martin Place Sydney NSW 2000 Tel(02) 9229 7343 [email protected].

Beth Oliak 1

Intellectual PropertyWinter Session 2015

Introduction to Intellectual Property

Beth Oliak

Ms Beth Oliak, Barrister

Beth Oliak 2

Subject Co-ordinator

Chambers Frederick Jordan ChambersG/53 Martin PlaceSydney NSW 2000

Tel (02) 9229 7343Email [email protected]

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Stewart, Griffith & Bannister, Intellectual Property in Australia, 4th ed. LexisNexis, 2014 (“SGB 2014”). Commentary only, no case extracts.

Ricketson and Richardson, Intellectual Property: Cases, Materials and Commentary, 5th ed. Lexis Nexis, 2012

Prescribed Texts

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• Copyright law protects creative works by granting exclusive rights to produce and sell those works

• Examples of copyright works include:

• Books

• Painting and sculptures

• Songs and recordings

• Plays, tv shows and movies

• Architectural works

• Copyright does not protect ideas. For example, copyright will protect a movie script but not an idea for a movie

• Copyright is a separate right to a property right. For example, you do not obtain any rights in copyright to a book once you buy it

Types of IP - Copyrights

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• Patent law protects inventions by granting exclusive rights to exploit (e.g., make, use and sell) the inventions for the life ofpatent (i.e., 20 years from the date of filing of a patent application)

• Examples of patentable subject matter include:

• Electronic devices (such as smartphones, tvs, etc)

• Pharmaceuticals

• Processes (e.g., method of manufacturing steel)

• Do not include scientific principles, discoveries (things that occur in nature), mathematical formulas, abstract ideas and other intangible concepts

Types of IP - Patents

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• Trade Marks are used to distinguish the source of goods and services of one party from those of others

• Trade Marks are right that are granted for letters, numbers, words, phrases, sounds, smells, shapes, logos, pictures and/or aspects of packaging 

• Trade Marks provide exclusive rights to commercially use, licence or sell them for the goods and services that they are registered under

• Examples include: brands, product names, company names, slogans, catchphrases and logos

Types of IP – Trade Marks

Copyright

• Introduction of printing press (rapid dissemination of ideas)

• Tudor Dynasty introduce printing monopolies control publishing – publishers must be members of Stationers Company (control sedition, heresy and treason)

• 1641 - dismantling Stationers Company monopoly

• 1709 - Statute of Anne

Grant rights to authors

Authors could license to publishers / printers

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History of IP

Patents

Venetian Statue 1474

• Modern patent statutes derive from Venetian Statute

• Principles are still applicable today (innovation is promoted by providing incentive for invention)

Statute of Monopolies 1623

• First English patent law statute

• Repealed all past and future patents and monopolies, except future novel inventions 

• Basis for Australian patent law

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History of IP

Trade Marks

1266 - Bakers Marking Law

• allowed bakers to identify their bread by stamping or pricking it

1363 - Maker’s Mark Law

• law requiring use of assay and makers marks by English silversmiths

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History of IP

Using your IP as a product?

• Copyright

• Patent

Using your IP in connection with their products?

• Trade mark / Passing Off / s18 ACL

Using your IP in creating their products?

• Confidential information

• Patents

What IP rights are infringed?

Personality-Based

• Protect name/reputation

• Ideas are an extension of our personalities: individuals have moral claims to their own talents, feelings, character traits and experiences

• There are many examples of intellectual property where there is no evidence of the creator’s personality (process for making steel, customer list, pharmaceuticals, etc)

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IP philosophy

Incentives-Based (Utilitarian)

• Intellectual property rights provide incentives to innovate and create

• Absent incentives, authors and inventors might not endeavour to produce intellectual property

• How do we know what the actual costs and benefits are of intellectual property?

• Is there a better way to stimulate innovation?

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IP philosophy

Lockean-Based

• Labouring, producing, thinking, and persevering are voluntary - individuals who engage in these activities are entitled to control the fruits of their labour

• Intellectual property rights reward hard work (Locke’s theory)

• Millar v Taylor (case granting perpetual rights to the publication of books) per Mansfield LJ:

“It is just, that an author should reap the pecuniary profits of his own ingenuity and labour.”

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IP philosophy

• Intangible rights that can be dealt with like chattels or real property – can be sold, mortgaged, licenced, bequethed, etc

• Difference between IP and real property – restrictions on ownership (e.g., can deface the Mona Lisa but cannot copy it)

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Intellectual “property”

The “Public Domain” consists of creative materials that are not protected by IP laws because:

• they were never entitled to IP rights

• they were once protected by IP rights but entered the public domain when their terms of protection ended

• failure by their owners to take steps to protect their IP rights

The public owns works in the public domain, i.e., anyone can use them without obtaining permission

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Public Domain

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Berne Union – copyright works Rome – broadcasts, sound recordings Paris – patents, trade marks WTO TRIPS – Uruguay Round 1995

WIPO – World Intellectual Property Organization (administers the treaties)

International treaties

Power for Parliament to legislate in relation to IP is provided in section 51 of the Constitution:

The Parliament shall, subject to this Constitution, have power to make laws for the peace, order, and good government of the Commonwealth with respect to: …

(xviii) copyrights, patents of inventions and designs, and trade marks; …

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Australian Constitution

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• Patents Act 1990• Trade Marks Act 1995• Designs Act 2003• Copyright Act 1968• Australian Consumer Law (misleading and

deceptive conduct)

Statutory Rights

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• Tort - Passing off• Misleading and deceptive conduct • Equity - Confidential information

Common Law

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• Technology (Optus Cloud PVR litigation)

• Government inquiries – “Raising the Bar” amendments (15 April 2013)

• Australia-US Free Trade Agreement (2004) (includes references to stronger protection of IP rights)

Evolving Protection

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• Copyleft – Lawrence Lessing, Stanford

• Creative Commons

• Open Source

• Generic drugs

• JT International SA v Commonwealth of Australia [2012] HCA 43 (tobacco plain packaging laws did not usurp intellectual property rights of tobacco companies)

• Roadshow Films v iiNet [2012] HCA 16 (ISPs are not responsible for what their users do with the services provided to them)

Declining protection

Overly strong IP protection

•excessive monopoly

•proprietary solutions

Weak IP protection

• free-riding

• under-investment innovation / distribution

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Striking a Balance

• Jefferys obtains copyright to Giovanni Bellini’s unpublished opera “La Sonnambula” (Sleepwalker)

• Copyright created in Milan but assigned to Jefferys in England

• Boosey publishes an unauthorised copy

• Copyright is created by statute but Statute of Anne only gave English authors copyright (i.e., not Bellini) – no infringement by Boosey

• Case was catalyst for international treaties – Berne Union

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Jefferys v Boosey 1854

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Countries have different objectives when making and enforcing laws regarding IP rights:

England • Protect investment/publishers• Low threshold

• What worth copying is worth protecting

Continental Europe• Protect authors• Higher threshold• Literary / artistic merit

USA • Advocates strong IP rights – foreign trade agreements

Japan• Advocates dissemination of information

Clash of Cultures