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Leveraging intellectual capital to create a business edge is a key driver for business globally. The laws protecting intellectual property, including copyright, trade marks, patents, designs and trade secrets, are increasingly complex.
MinterEllison’s intellectual property team is at the forefront of intellectual property development globally. Our large and diverse team advises on the creation, acquisition, commercialisation, protection and enforcement of intellectual property rights and has forged an enduring reputation working with leading local and global organisations.
Branding is the key IP driver for industries such as food, wine, household products, luxury goods, apparel, cosmetics, financial services, aviation and telecommunications. We clear new brands, register and maintain trade mark portfolios and enforce registered trade marks and reputation rights. We work with our clients’ marketing and management teams on advertising strategies, clearing product performance claims, watching competitors’ conduct and defending challenges.
For content and technology in media, entertainment, education and services, our copyright lawyers negotiate and arbitrate licensing disputes, counsel and advise, strategically oversee policy reform discussions and enforce copyright against infringers, including counterfeiters.
In the patent-critical sectors of mainstream pharmaceutical, biotechnology, research and development and manufacturing, our technology-savvy lawyers counsel on patenting strategies, litigate, and transact licensing, partnering and other commercialisation deals. We counsel on compliance and represent companies under investigation or challenge in these highly regulated sectors. We litigate intellectual property validity and infringement issues, particularly in patents.
Developments in technology and its use by both business and consumers have continued to challenge copyright law this year. Most notably, we have seen Dallas Buyers Club LLC's attempts to obtain details of individual copyright infringers through their ISPs which, in turn, has led to the development of a 'three strikes' copyright infringement notice scheme by Communications Alliance and the introduction of website blocking legislation. There have also been a number of other interesting cases which test the boundaries of copyright law, and its ability to protect rights holders.
After a big year in trade marks in Australia in 2014, including a High Court decision (Cantarella Bros, regarding 'ORO' and 'CINQUE STELLE'), 2015 was a quieter year, with only a couple of decisions of the Full Federal Court raising the stakes above the usual trial judgments in the Federal Court. Nevertheless some significant trade mark issues were addressed by the Courts and the Trade Mark Office, which we discuss below.
The High Court of Australia rarely considers patent cases, handing down only two decisions in the past seven years. This year, however, we saw two patent decisions from the nation's top Court. So, in celebration of the High Court's renewed attention on patent law, we revisit eight of the key developments in patents this year.
In the latest issue of the Australian Intellectual Property Law Bulletin, partner Paul Kallenbach and graduate Anthony Middleton take a look at the ongoing tension between copyright laws and evolving technology and consumer behaviour, namely, fan fiction.
In this edition we look at:
Following a spate of decisions in 2014 on patent licences the Federal Court of Australia announced two further decisions which provide additional guidance to parties to a patent licence. Both of these decisions are a reminder that in addition to contract law, the parties to a licence of Australian patents should consider the relevant provisions of the Patents Act 1990.
It's been an unusually busy period for patent licensing, with the Federal Court of Australia issuing a number of important decisions in 2014. The decisions, which consider the issues of exclusivity, termination rights and obligations to fund litigation, provide useful guidance to licensors and licensees alike. They also underscore the importance of paying attention to the fine detail of patent licences during their negotiation and in court proceedings.
The risks associated with social media misuse by employees are well publicised. Less known, however, are the risks faced by employers in accessing, using and disclosing the personal information of employees obtained by the employer via social media sites. So, where does the line begin and end? And when can an employer rely on the information to make decisions?
This article, originally published in the Australian Intellectual Property Law Bulletin (May 2014), examines how intellectual property laws can and do restrict the creation and publication of artistic works, and effectively amount to a form of censorship.
Last week saw the removal of United States retail giant Target's chairman and CEO as the fall out continued from last year's hack of 40 million customer payment card records and 70 million other records. While Australian companies and government have not been immune from attacks by hackers, it raises some important questions.
The new privacy regime is in full swing, with the pressure on organisations to demonstrate substantial compliance with the new laws. The handling of 'employee records' and information is now receiving considerable attention. OUr privacy team takes a look at the key issues to consider when managing employee information and how organisations and their employees can work together to minimise the risks.
We look at what's in store for trade mark law in 2014, and provide a snapshot of the headline cases from the previous year. Going forward, we expect to see the High Court considering the test for 'distinctiveness' in the Cantarella and Modena dispute, the practical implications of the recent amendments to the Trade Marks Act in full swing, and potential changes in search engine strategies for companies as a result of the High Court's decision in Google v ACCC.
2014 is already shaping up to be a big year in the world of patents. In anticipation of what's to come, we've taken the opportunity to reflect on and examine the trends emerging from 2013, which was also a bumper year for patents in Australia.
The Ministry of Commerce issued the Guideline on Overseas Intellectual Property Rights for Enterprises for trial implementation on 8 February 2014. The Guideline aims to encourage Chinese enterprises to proactively protect their rights by providing greater protection for Intellectual Property Rights for overseas investments, and through mechanisms designed to promptly resolve IP disputes.
The Office of the Australian Information Commissioner has released the final APP Guidelines in time for the start of the new Australian Privacy Principles, which will apply to Commonwealth government agencies and many private organisations from 12 March 2014. We revisit the key issues previously raised in the draft Guidelines and provide an update on how the guidance has changed.
The Australian Law Reform Commission (ALRC) Final Report into Copyright and the Digital Economy (Final Report) is now publicly available, having been tabled in Parliament on 13 February 2014. The report was finalised after receiving more than 1,000 submissions and undertaking more than 100 consultations with stakeholders.
In one of the few decisions of its kind, the UK High Court recently assessed the damages to be paid to a generic pharmaceutical company under a cross-undertaking in damages. While some aspects of the decision are specific to the UK pharmaceutical reimbursement scheme, the judgment will be a useful reference point for parties involved in similar litigation in Australia. In particular, the case involved the generic claiming to have lost the 'first mover advantage' as a result of the interlocutory injunction obtained by the patentee.
The decision in Julstar Pty Ltd v Hart Trading Pty Ltd highlights the importance of documenting key representations made by the parties prior to entering into a franchise agreement or indeed any agreement. The Minister for Small Business, Mr Bruce Billson, has also indicated that the government welcomes the recommendations of Alan Wein on changes to the Franchising Code of Conduct.
The Office of the Australian Information Commissioner (OAIC) has issued for public consultation the final tranche of draft Guidelines for the new Australian Privacy Principles (APPs), which are set to commence on 12 March 2014. The second tranche discusses APPs 12-13, or Part 5 of the personal information lifecycle - Access to and correction of personal information. This white paper analyses the final tranche in detail including key concepts, applications and exemptions for each of the APPs and outlines the Privacy Commissioner's intended approach to compliance with the new regime.
This month, the Victorian Department of Treasury and Finance released the Intellectual Property Guidelines for the Victorian Public Sector.
The Office of the Australian Information Commissioner (OAIC) has issued for public consultation the second of three tranches of draft Guidelines for the new Australian Privacy Principles (APPs), which are set to commence on 12 March 2014. The second tranche discusses APPs 6 to 11, or Parts 3 and 4 of the personal information lifecycle. This white paper analyses the second tranche in detail including key concepts, applications and exemptions for each of the APPs.
The Office of the Australian Information Commissioner (OAIC) has issued for consultation the second of three tranches of draft Guidelines for the new Australian Privacy Principles. This tranche provides guidance on APPs 6 to 11.
The Office of the Australian Information Commissioner has issued for public consultation the first of three tranches of draft Guidelines for the new Australian Privacy Principles (APPs). This white paper explains why the draft guidelines are important and analyses the first tranche in detail including key concepts within the APPs, APPs 1 to 5, and the exceptions to the APPs for permitted health situations and permitted general situations.
The Office of the Australian Information Commissioner has issued for consultation the first of three tranches of draft Guidelines for the new Australian Privacy Principles (APPs). This tranche provides guidance on APPs 1 to 5, some key concepts in the APPs and permitted health situations and permitted general situations.
The government's formal response to the recommendations contained in the review of the Franchising Code of Conduct (Wein Report) confirmed that it, unconditionally, in part or in principle, accepts the vast majority of the recommended changes to the Code.
The Commonwealth Attorney General, Mark Dreyfus QC, yesterday issued Terms of Reference requiring the Australian Law Reform Commission to conduct an inquiry into the prevention of, and remedies for, serious invasions of privacy in the digital era. This latest development is part of the government's second stage response to the recommendations in the ALRC's 2008 Report into reforming the Privacy Act 1988 (Cth), together with the recent proposed compulsory data breach notification scheme and the removal of certain exceptions to the Privacy Act.
The High Court of Australia held that Google was not liable for representations made by advertisers in sponsored links on Google's search results pages. The case concludes a five year court battle between the Australian Competition and Consumer Commission (ACCC) and Google Inc. (Google) over misleading representations displayed in sponsored links on Google's search results pages.
The Privacy Amendment (Privacy Alerts) Bill 2013 was introduced into parliament yesterday, making amendments to the Commonwealth Privacy Act 1988. The Bill follows the ALRC's recommendations in its 2008 report into the Privacy Act and a discussion paper released in October 2012 which sought comment on whether to make notification of data breaches mandatory and lessen the potential adverse impacts arising from a data breach. If passed, the laws will come into effect in March 2014 to coincide with the extensive amendments to the Privacy Act that the government has already passed in response to the ALRC report.
As the policy debate rages on the future direction of tertiary education and its institutions, Australian universities are grappling with a raft of regulatory changes that will materially affect their day to day operations.
Under the Privacy Amendment (Enhancing Privacy Protection) Act 2012 (Cth) (the Privacy Amendment Act), Australian Privacy Principle 8 (APP 8) will replace National Privacy Principle (NPP) 9 and cover the cross-borders disclosures of personal information by APP entities and agencies. The new APP 8 is much broader in its application, contains some significant differences to NPP 9, and as such Australian disclosing entities will need to carefully consider how they wish to meet the requirements of APP 8 in trans border transactions.
Cybercrime poses a significant challenge for law enforcement agencies and criminal justice systems across the globe. The borderless nature of the internet makes it easier for cyber attacks to be externally instigated. In response, Australia, together with a number of other nations, has taken steps to harmonise laws intended to combat cyber threats and facilitate greater international cooperation between law enforcement agencies.
In this edition of the Privacy Update we look at:
In advance of Privacy Awareness Week, the OAIC released a Guide summarising and analysing the key differences between the National Privacy Principles (NPPs) and the new Australian Privacy Principles (APPs) which will replace the NPPs for private sector (APP) entities from 12 March 2014. While it does not provide detailed guidelines on each of the new obligations in the APPs, it reinforces where the real differences exist between old and new privacy obligations for APP entities when they consider the impact of the new APPs and prepare for compliance.
When the Privacy Amendment (Enhancing Privacy Protection) Act 2012 (Cth) commences in March 2014 there will be a new definition of 'personal information' in the Privacy Act 1988 (Cth) that includes information about an individual which, when combined with other information (which may not be controlled by the same entity), identifies an individual or renders the individual reasonably identifiable. This is a significant development as the current definition of 'personal information' requires that the identity of the individual concerned be apparent, or reasonably ascertainable, from the subject information or opinion. If multiple documents potentially controlled by different entities may be considered in determining whether an individual is reasonable identifiable under the Amending Act, a key issue that will face entities is how to determine whether the threshold of 'reasonably identifiable' has been reached.
Australia's new cybercrime law, which came into force on 1 March 2013, establishes the legislative framework for Australia's accession to the Council of Europe Convention on Cybercrime (Convention). The essence of the new cybercrime law is to empower Australia's law enforcement and intelligence agencies to compel carriers to preserve the communication records of persons suspected of cyber-based crimes. The new law also expands the Commonwealth cybercrime offences and facilitates international cooperation between State parties to the Convention through the cross-border sharing of communication records.
The Australasian Retail Credit Association has released for public consultation a draft of the new Credit Reporting Code of Conduct that it is developing at the Privacy Commissioner's request. The release of the draft Code follows the passing of the Privacy Amendment (Enhancing Privacy Protection) Act 2012 last November, which made substantial changes to the Commonwealth Privacy Act 1988 including the replacement of the current credit reporting system by Part IIIA of the amended Act and the requirement for a new Code to be developed.
Minter Ellison partners Anthony Lloyd, Paul Kallenbach and Paul Schoff have authored the Australian chapter of the new edition of Technology, Media and Telecommunications Review (John P Janka ed), published by Law Business Research in October 2012.
In this edition of Privacy Update, we look at:
In August, the Senate passed the Cybercrime Legislation Amendment Bill, which will enable Australia's accession to the Council of Europe Convention on – the first international treaty dealing with crimes either against or via computer networks. The Convention targets online fraud, child pornography and unauthorised access, use or modification of data, either through or on computers. It also facilitates access to evidence of cybercrime by enforcement and interception agencies, including by mutual assistance.
Two cases brought by the US Federal Trade Commission against Google dramatically demonstrate the importance of companies' adhering to their privacy policies and other representations made to customers about the treatment of their personal information. In settling the latest case Google has agreed to pay a record US$22.5million to settle a complaint in relation to its Safari internet browser.
The Privacy Amendment (Enhancing Privacy Protection) Bill 2012 proposes 19 regulation-making powers in addition to those already in the Privacy Act 1988. Most of the new powers enable the prescription of matters that would further define the meanings of new terms in the proposed credit reporting system.
A recent case highlighted the challenges of establishing the identity of anonymous users of social networking sites media who impersonate others. Social networking sites can be an easy means for engaging in impersonation because it is easy to set up a false account but while Facebook and Twitter have mechanisms to deal with the consequences of hacking and impersonation it may not be enough for the victim whose personal reputation or their employer's has been damaged.
On Tuesday 25 September, the Senate Legal and Constitutional Affairs Legislation Committee released its Report on the Privacy Amendment (Enhancing Privacy Protection) Bill 2012. The Senate report follows the release of the Advisory Report from the concurrent inquiry undertaken by the House of Representatives Standing Committee on Social Policy and Legal Affairs. The decisions of both committees to recommend the adoption of the Bill without major changes may cause alarm, particularly amongst credit providers. We summarise the key recommendations from each report.
Now that it has finished 'raising the bar', the Federal government proposes to amend the Patents Act 1990 (Cth) to 'raise the step' required to meet the patentability standard for innovation patents.
At a hearing in April this year, several tobacco companies challenged the Constitutional validity of the Tobacco Plain Packaging Act 2011 (Cth) (Act) in the High Court of Australia.
The Australian Government has launched another inquiry into the compulsory licensing provisions in the Patents Act 1990 (Cth). This alert outlines the scope of the inquiry by the Productivity Commission, and how you can make a submission.
On 27 June 2012, the Legislative Council of Hong Kong passed the most extensive set of amendments to the Personal Data (Privacy) Ordinance since the legislation was introduced in 1996.
Earlier this month, GlaxoSmithKline entered an agreement to settle healthcare fraud claims brought against it in the U.S. for US$3 billion dollars. The settlement was approved by a U.S. District Court on 5 July 2012 and is reported to be the largest health care fraud settlement in U.S. history. One aspect of the complex case involved off-label advertising. Recent developments, in both the U.S. and Australia, demonstrate a move to requiring greater transparency in dealings between pharmaceutical companies and healthcare providers.
A new Division 815 – Cross-border transfer pricing is to be inserted into the Income Tax Assessment Act 1997 (ITAA 1997). The new Division :
The Privacy Amendment (Enhancing Privacy Protection) Bill 2012 (Cth) (the Bill) amends the Privacy Act 1988 (Cth) (the Act) to implement the first tranche of responses to the Australian Law Reform Commission's (ALRC) report called 'For Your Information: Australian Privacy Law and Practice' (the ALRC report).
On 30 April, the Convergence Review Committee issued its hotly anticipated Final Report which sets out proposed changes to Australia's media regulatory framework. The Review emphasises a shift from 'black letter law' regulation towards flexible principles-based regulation. This alert discusses the proposed changes.
On 27 April 2012, the Full Court of the Federal Court allowed an appeal concerning the legality of the Optus TV Now service, which enables users to remotely record television broadcasts and watch them on their computer or handheld device. The Full Court held that Optus made the copies of the programs and consequently infringed copyright in the broadcasts. The decision has implications for providers of cloud storage services.
We consider recent decisions issued by the Office of the Australian Information Commissioner involving organisations in the telecommunications, legal, insurance and financial sectors.
The Australian Communications and Media Authority has concluded that Vodafone Hutchison Australia's dealers who made unsolicited calls to numbers on the Do Not Call Register to promote its products contravened the Do Not Call Register Act 2006 (the Act). As a result, ACMA has accepted an enforceable undertaking from under the Telecommunications Act 1997 (Cth).
On 1 March 2012, Google launched a new privacy policy by consolidating over 60 of its global privacy policies into one document. Although most organisations will lack the vast user base and reach that Google has, the approach employed by Google may be indicative of a new approach to privacy notification which could come to be expected by both consumers and regulators alike.
On 25 January 2012, the European Commission published drafts of the two key documents implementing reform proposals for the EU data protection regime. If implemented, the reforms will have a significant impact on any organisation located in the EU or doing business with EU companies or citizens. We examine the proposed reforms and their practical implications.
In a 5-0 decision of the High Court, iiNet has finally won its long running legal battle with copyright holders. The Court held that iiNet was not liable for its users' downloading of copyright material. Our Alert explores the background to the case, the reasons for the decision and importantly, what this means for copyright owners and content providers as a result.
Terms of Reference for the Australian Law Reform Commission's (ALRC) Inquiry into Copyright.
Australian intellectual property law is set to undergo significant changes with the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth) (Bill) having been passed by the House of Representatives on 20 March 2012. The Bill makes amendments across the whole set of Commonwealth intellectual property laws, but its greatest impacts are on patent and trade mark laws. This alert focuses on some of the amendments that deal with obtaining patent protection and use of patented inventions, as well as noting some changes to the enforcement mechanisms for copyright and trade mark infringement.
On 22 February 2012, there was a further key development in the proposed amendments to the Personal Data (Privacy) Ordinance when the Bills Committee for the Personal Data (Privacy) (Amendment) Bill 2011 published a paper revising proposed amendments to provisions on the use of personal data in direct marketing and the sale of personal data.
The Full Federal Court of Australia recently found that the majority of Wyeth's patent claims covering a method of administering an antidepressant compound were invalid, based on a finding that the patent was not entitled to its earliest priority date. The decision highlights the care required when amending patent claims to ensure they are not broadened to the extent that they cease to be fairly based on the specification and any priority documents.
On 12 October 2011 the Hon. Robert McClelland MP, Commonwealth Attorney General, launched a public consultation paper proposing amendments to Part V Division 2AA of the Copyright Act 1968 (Cth)to extend the application of the safe harbour scheme to entities providing network access and online services.
On Thursday 6 October the Senate Finance and Public Administration Legislation Committee released its highly anticipated report on the credit reporting provisions of the Exposure Draft of the Australian Privacy Amendment Legislation. The report makes 30 recommendations, many of which are quite significant, in response to numerous submissions and particularly on five key matters: simplification and clarification of language and definitions, the treatments of serious credit infringements, identity theft, the use of hardship flags and complaints handling.
Once their compound patents have expired many blockbuster drugs remain protected by secondary 'method of treatment' patents. The validity and enforceability of these secondary patents can be less certain in many jurisdictions. In Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No.3) [2011] FCA 346, the Federal Court found that the secondary patent protecting Sanofi-Aventis' blockbuster leflunomide drug was valid and infringed – a surprising outcome, at least initially, based on the facts of the case.
A recent decision in the Full Federal Court has shown that while manufacturers are generally free to make goods according to a design that is not registered, care must be taken to ensure that those products are branded in a way that distinguishes them from the market leader.
The Federal Court handed down two significant copyright decisions yesterday: Roadshow Films Pty Ltd v iiNet Limited and Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited.