MLL440 INTELLECTUAL PROPERTY
EXAM NOTES
Index
Trademarks 6
Acquired reputation 25
Amendment/cancellation of registration 33
Cause to wonder 19
Certification mark 10
Closely related goods & services 18
Collective marks 10
Colours 16
Concurrent/continuous use 21
Defences & counterclaim 31
Defensive mark 10
Disclaimers 26
Distinguish 9
Goods & services 7
Identical, deceptively similar 17
Infringement of TM 31
International context 6
Non-use 35
Opposition of mark 11
Ownership 23
Priority date 18
Registration 6
Rejection of mark 11
Remedies for infringement of TM 30
Renewal 26
Rights of TM 27
Scandalous 22
Second hand goods 30
Sign 7
Similarity 19
Use 8
Copyright 38
Artistic works 41
Author 393
Authorisation of infringement 52
Commercial dealing 52
Computer program 61
Criticism / review 58,60
Defences to Infringement 55
Disability 59
Dramatic works 40
Duration 54
Fair dealing 55,60
Films 42
Infringement of CR 46
Literary works 40
Making of work 39
Material form 39
Musical works 40
Originality 40
Ownership 71
Parody / satire 59,60
Performance 50
Performers protection 55
Private use 65
Public editions 43
Publishing work 39
Qualified person 39
Re-production (different object) 49
Remedies for CR infringement 70
Reporting news 58,60
Research / study 56,60
Rights of CR 44
Selling CR / leaving in Will 73
Sound recordings 42
Subject Matter Other Than Works 42
Substantial part 47
TV/sound broadcast 43
Works 38
Patents 74
Common general knowledge 86
Computer software 80
Disclosures 83
Discoveries 80
Examination of patent 77
Exclusive rights 75
Exploit 90
Genes 81
Human treatment 80
Infringement 89
Innovative patent 74
Inventive step 85
Living organisms 81
Novelty 83
Obvious? 86
Patentable inventions 77
Person skilled in the art 86
Prior art base 83
Publicly available 84
Remedies for patent infringement 92
Secret use 88
Specification 76,77
Standard patent 74
Useful? 98
COPYRIGHT
Recent amendments –
- 1 Jan 2019 Sch 2 of the Copyright Amendment (Disability Access & Other Measures) Act 2017
- Not included in the consolidated of the Copyright Act 1968 (Cth) Copyright protects the expression, not the idea.
Pacific Film Laboratories case: Tax case – court looked at copyright in photograph.
The owner is the first owner. Copy right in the photograph v copyright in the actual print (negative). Owner ship of copyright v ownership of object/product.
Copyright protects ‘Works’ and ‘Subject Matter other than Works’.
Works:
o Literary works o Dramatic works
o Musical works = Part III CR Act o Artistic works
Subject Matter other than Works o Sound recordings
o Cinematograph films
o TV & sound broadcasts = Part IV CR Act o Published editions of works
Works
Section 32 of CR Act sets out the works in which CR subsists.
CR subsists in original:
- Unpublished works
If the author was a qualified person when the work was made - Published works
If the first publication was in Australia or
The author was a qualified person at the time of the first publication.
A work does not have to be published to be protected.
1. The work has to be:
(a) Made (s32(1)(a)) or (b) Published (s32(2)).
2. Connecting factors (with jurisdiction) of:
(a) First publication in Aus; and/or
Section 32(1)(a): Making the work
Section 22(1): a work is made when it if first reduced to writing or some other material form.
Section 10(1): Writing means a mode of representing or reproducing words, figures or symbols in a viable form.
Section 10(1): material form includes and form of storage of the work.
Section 32(2): Publishing the work
Section 29(1)(a) re works: supply to the public.
Section 29(4a) merely colourable publication to be disregarded.
Has there been a general attempt to commercialise? Genuine publication to satisfy requirements of public.
Section 29(3) re things that are not publication.
For the purposes of this Act, the performance of a literary, dramatic or musical work, the supplying (whether by sale or otherwise) to the public of records of a literary, dramatic or musical work, the exhibition of an artistic work, the construction of
a building or of a model of a building, or the supplying (whether by sale or otherwise) to the public of photographs or engravings of a building, of a model of a building or of a sculpture, does not constitute publication of the work.
Section 32(2)(a): first publication
Section 32(2)(c): first publication in Australia
Section 29(5): simultaneous publication. Can still be considered first publication in Aus even if another publication is made elsewhere prior but not more than 30 days.
Section 32(2)(b): qualified person
Section 32(4): qualified person means o Residency in Aus or
o Aus citizen Author
- Person who reduced it to material form - Not merely scribe (dictation)
Donoghue v Allied Newspaper Case: Jockey & journalist. Article was published in newspaper. The journalist owned, and was the author, of the work. Particular form of expression.
Originality
- Cannot be copied
- Product of independent intellectual effort, skill, labour, judgement
Original literary works:
Section 10: literary work includes: a table, or compilation expressed in words, figures or symbols; and a computer program or compilation of computer programs.
Uni of London Press case:
Exam papers considered original literary work because they are not copies and a result of selection, judgement & experience.
Ice TV case:
Independent intellectual effort required to create original literary work.
EXAMPLES:
Names titles & headlines: Exxon Corp case – Exxon not original literary work as it does not afford information and instruction or pleasure. Was too trivial.
Translations: is a type of adaptation (s10). Can be literal originality in its own right.
Compilations:
Included in section 10.
Kalamazoo case: compilation of accounting forms were original – expression, shape
& content.
Original dramatic works:
Covers work intended to be performed or represented.
Section 10: dramatic work includes:
o A choreographic show (ballet) or other dumb show (Marcel Marceau) and o A scenario or script for a film but does not include the film.
Green v Broadcasting Corporation:
No scripts were produced to court to sustain claim in copyright.
There were no fixed boundaries – structural features are not present. Each episode is a different script and there is not enough certainty in the subject matter to provide a monopoly.
Original music works:
Not defined in the Act.
Refers to method of production:
o Section 22: musical work made when reduced to material form
o Sounds/noises capable of protection so long as fixed (recorded on disc) CBS Records v Gross
Creational composition required.
CR subsisted in the later version of the song because the product was sufficient skill
& creative effort. The exercise of independent judgement re new version.
Original artistic works:
Section 10: Artistic works include:
o A painting o Sculpture o Drawing o Engraving o Photograph
o Building or model of a building o A work of artistic craftmanship Circuit layouts are excluded.
Definitions:
Paintings
Not defined in that Act.
Sculpture
S10: a cast or model made for the purposes of a sculpture
Greenfield Products v Rover-Scott Bonnar: ride on lawn mower. Mould used to cast the pulley & clutch plate (sculpture).
Lucasfilm v Ainsworth: Star Wars Stormtrooper helmets NOT sculptures – not a requisite artistic purpose. Purpose of visual appeal or another purpose of functionality? Purpose of the creator?
Drawing
S10: includes a diagram, map, chart or plan.
The essence of a drawing is of the concept of a representation of some object by a pictorial line: Woodtree v Zheng.
Engraving
S10: includes an etching, lithograph, product of photogravure, wood-cut, print or similar work.
Greenfield Products v Rover: to cut a piece of steel into lengths is not to engrave it – cutting, marking or otherwise working a surface.
Photograph
S10: product of photography or xerography excluding cinematograph film.
Building or model of a building S10: a structure or any kind.
Darwin Fibreglass v Kruhse: usually erected or constructed upon the ground with an element of permanence
A work of artistic craftmanship Not defined in the ac
Must have some aesthetic merit/real artistic quality with some display of craftsman like skill. This can overlap with other categories of artistic works.
Burge v Swarbrick: Plug mould and yacht hill is not WOAC. The boat plug was not created as a work of art and the plug was not a work of craftmanship.
Must have a real and substantial artistic element.
Craftmanship is not limited to handicraft and compatible with machine production.
The intension of the designer/artist is not determinative, but admissible.
The more the expression of a functional object is dictated by utilitarian considerations the less likely to be considered WOAC.
Subject Matter other than Works Sections 89-92
Sound recordings
S10: means the aggregate of the sounds embodied in a record.
Section 89: subsists if
o Maker was a qualified person; or
o The sound recording or film was made in Aus; or o The sound recording or film was first published in Aus.
Section 23(3)(a): a sound recording is made at the time when the first record embodying the recording was produced.
**Record: means a disc, tape, paper, electronic file or other device in which sounds are embodied (s10).
**Embodiment: of sounds or visual images in an article means the article has been treated so that the sounds or visual images are capable of being reproduced from the article.
Section 23(3)(b): the maker of a sound recording is the person who owned the record at that time.
Section 22(3A)>(3C): who is the ‘maker’ when sound recording made of live performance.
Films (cinematograph)
S10: cinematograph film is aggregate of visual images embodied in an article or thing so as to be capable of being shown as a moving picture. Sound track to the film is included as part of what is a ‘film’.
**Sound track: a) the part of any article or thing in which those visual images are embodied, in which sounds are embodied; or b) a disc, tape or other device in which sounds are embodied and which is made available by the maker of the film for use in conjunction with the article or thing in which those visual images are embodied.
**Embodiment.
Section 90: subsists if
o Maker was a qualified person; or
o The sound recording or film was made in Aus; or o The sound recording or film was first published in Aus.
Section 22(4)(a): a film is made by arranging the production of the first copy of the film
**Copy in relation to film: s10 any article or thing in which the visual images or sounds comprising the film are embodied.
Section 22(4)(b): who is the maker of the film.
Galaxay Electronics v Sega
Computer video game – protected.
The game embodied (via the program built into the video game machine) the visual images drawn (fixed) by the graphic designers. The game embodied these images in such a way that they were capable of being shown as a moving picture.
TV or Sound Broadcast
Section 91: subsists if it was made in Aus or under a broadcasting services act licence or by the ABC or SBS.
**Television broadcast: visual images broadcast by way of television, together with any sound broadcast for reception along with those images.
**Sound broadcast: sound broadcasts otherwise than as part of TV broadcast.
**Broadcast: a communication to the public delivered by a broadcasting service within the meaning of the Broadcasting Services Act 1992.
**Communicate: make available online or electronically transmit (whether over a path or a combination of paths, provided by a material substance or otherwise) a work or other subject matter, including a performance or live performance within the meaning of the act.
**To the public: within or outside Australia (s10).
Public editions Section 92: subsists if
o Was first published in Aus; or
o If the publisher was a qualified person at the date of first publication Section 92(2) exception:
Protects the visual appearance of a published works: compilation of other works.
