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NEM 204: New Media

Business Compliance

Module Five:

Intellectual Property (IP)

Lecture 10:

Design, Trade Mark,Passing Off and Confidential Information

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Design Legal Definition:Design

A characteristic of a physicalsubstance, which by means of lines,

images, configuration makes animpression through the eye upon themind of the observer. (Blacks Law

Dictionary 6th Edition)Text: pp.834-878

Resource: www.ipaustralia.gov.au

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DesignIPA Definition: Design

A design relates to the features of shape,sound, configuration, pattern or

ornamentation which, when applied to a

product, gives the product a uniquely

distinct appearance.

e.g Super Mario name and image iscopyrightable (as an artistic work). The

overall appearance of the product can be

re istered as a desi n. The actual ame

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Design

Statutory Definition:

The Design Act 2003 (Cth)(DA): in relation to a product,

design means the overallappearance of the product

resulting from one or morephysical features of the

product.

http://www.austlii.edu.au/au/legis/cth/consol_act/da200391/s7.htmlhttp://www.austlii.edu.au/au/legis/cth/consol_act/da200391/s5.htmlhttp://www.ipaustralia.gov.au/http://www.ipaustralia.gov.au/designs/search_index.shtmlhttp://www.ipaustralia.gov.au/designs/search_index.shtmlhttp://www.ipaustralia.gov.au/http://www.ipaustralia.gov.au/http://www.austlii.edu.au/au/legis/cth/consol_act/da200391/s5.htmlhttp://www.austlii.edu.au/au/legis/cth/consol_act/da200391/s7.html

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Why register a design?

A registering a design is not

compulsory however it can protecta valuable commercial asset.

Once your registered design isexamined and certified, you have

the exclusive and legallyenforceable right to use, license or

sell your design.

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Design registration

For a design to be registerable it must be

a productwhich is new and distinctive. So what is meant bynew and

distinctive?

The threshold test for what is new and

distinctive is the aggregate ofnovelty

and distinctiveness.(s15DA) The term product means a thing that is

manufactured or hand made. (s6(1)DA)

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Sound Design Document (SDD) Sound FX

A sound effect qualifies as adesign product provided it is

new and distinctive - as suchit is capable of registration

pursuant to ss6,15 of theDesign Act.

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New and Distinctive New' means the identical design (or one very

similar) has not been publicly used in Australia

nor has it been published in a document

within or outside Australia.

For example, a design would not beconsidered new if it had been 'published' on

the Internet before the date it was filed (or its

priority date, whichever is earlier). A design is 'distinctive' unless it is

substantially similar in overall appearance to

other designs already in the public domain.

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Modelling

As a work of art this model would

be able to be copyrighted.

As a product ( a configuration oflines) with a commercial value it

would be able to be registered as

a design provided it is an original

work that is new and distinctive

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VoiceoverVin Diesel lent his voice and likeness to

the Chronicles of Riddick: Escape fromButcher Baygame; this is no surprise, as

he owns the company (Tigon) that

developed it!

A voice over is deemed as being a product

and therefore registerable as a design.Essentially Vin Diesel would have licensed

the character and voice over to Tigon

A i i

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Animation A drawing of a wireframe

model showing a simple walkcycle would be copyrightable

as a work of art or capable ofregistration as a product

design provided it was newand distinctive and that it had

commercial value i i i

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Design registration

Design registration is

intended to protect designs

which have an industrial or

commercial use.

Designs which are essentiallyARTISTIC WORKS are covered

by copyright legislation.

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Multiple registration

The Cambells soup can was

an artwork created by AndyWarhol in 1962 it was

originally painted with

synthetic polymer on acanvas and now hangs in

the NY Museum

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Multiple Registration The Campbells soup can has both

artistic and commercial applicationand thus capable of registration as

a design and under copyright as anartistic work.

The Campbells logo on the can would

also be registered for protection

under the Trademark Act

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Where do I go to register a design?

The registration and operation of

matters of design registration areadministered by the federal

government. The controlling body is the Design

Office which is part ofIPAWeb site: www.ipaustralia.gov.au/

http://www.ipaustralia.gov.au/pdfs/newdesigns/D00301(7).pdfhttp://www.ipaustralia.gov.au/pdfs/newdesigns/D00301(7).pdf

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Before you apply Before filing an application, you should

search existing design records. If yourdesign is not new and distinctive, any

registration you receive could be

revoked as a result of examination andyour registration could be worthless.

N.B. Searching first will save you timeand expenditure should your design

not meet the criteria.

Wh l ?

http://www.ipaustralia.gov.au/designs/fees_index.shtmlhttp://www.ipaustralia.gov.au/designs/fees_index.shtml

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Who can apply?

An application for registration can onl

be made by the owner of the design.The owner of the design can be:

i) the author of the design (i.e. theperson who conceived the design);

ii) the employer of the author, if the

author made the design in the course

of his employment;

D i i i

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Design registration:

How much and how long?

The initial period of registration for yourdesign lasts for 5 years from the date of filing.

You may choose to renew your design

registration for a further 5 years after that.(The maximum being 10 years in total). If you

do not renew it will cease).

o Initial design registration (2010) costs $200 for

5 yrs. Renewal for a further 5 yrs costs $275

l l

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International applications

Australian design registration

provides protection only withinAustralia.

If you want to apply for registration inother countries, you also need toapply for design registration in those

countries. Searching the international database

may save you time and money.

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An example of a registered product design

AUSTRALIAN REGISTERED DESIGN

(21) Application number:69065

(22) Date of lodging application:

27 April 1976

(45) Date of Registration:19 August 1976

(54) Article in respect of which the design is registered:

Briefs

(51) International Design Classification:02 - 02

(71) Name(s) of Applicant(s):

Speedo Knitting Mills Pty Ltd

(aka budgie smugglers)

I f i & R di

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Infringement & Remedies Infringement: Infringement is deemed to have

occurred if a person without a license or

authority makes or offers to make a productwhich embodies or is similar to the registereddesign. (s73(2)DA)

Remedies The available remedies are:i) Injunctionsare available to plaintiffs requiringthe defendant to cease and desist.

ii) Ordinary Damages and Exemplary Damagesiii) Account of Profits

iv) Criminal Prosecutionfor persistent

infringement

Wh t i t d k?

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What is a trade mark? General Definition: Trade Mark

A distinctive mark of authenticity throughwhich the products or services of a companyor individual may be distinguished from those

of others. (Blacks Law Dictionary 6th

Edition)

Statutory Definition: Trade Mark

Trade Mark is defined in the Trade Marks Act1995 (Cth), s17TMA as: a sign used orintended to be used to distinguish goods orservices from those of other traders.

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Trade Mark: Nintendo Co. Ltd

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The Nintendo Trademark The Nintendo logo is a trademark owned by

Nintendo Co. Ltd. for Nintendo. Portion used The entire logo is used to convey

the meaning intended and avoid tarnishing or

misrepresenting the intended image. Purpose of use The image is used to identify

the brand Nintendo. The significance of the

logo is to help the reader identify the brandand illustrate the nature of the brand in a way

that words alone could not convey.

http://en.wikipedia.org/wiki/Template:Non-free_use_rationalehttp://www.ipaustralia.gov.au/http://www.ipaustralia.gov.au/http://en.wikipedia.org/wiki/Template:Non-free_use_rationale

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Trade Mark In the adjacent picture we have the

Sony Playstation trade mark whichis owned by Sony(top left).

The PS3 Trademark is a SonyPlaystation brand name owned by

Sony (top left). The AVATAR trademark (centre

top) is owned by James Cameron

who licenses the trademark toUbisoft. See the Ubisoft trademark(centre bottom). Ubisoft are thepublisher and licence the rights to

the sell the game to Sony

Th bli h

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The publisher

Pictured left: EA has been

the publisherof the Maddenfranchise (Madden NFL 07shown) since 1989. Over the

years, many different externaland internal studios havemade Madden games for EA.

The Madden series arereleased each year tocoincide with the NFL season

in America

The licensor

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The licensor Peter Jacksons movie

King Kongwas licensedby the publisher to

hardware manufacturer(s)

as a game. It was releasedat around the same time

as the movie to maximise

exposure and profit

opportunities built around

the publicity of the movie.

T d M k

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Trade Mark

Trade Marks are signs (including devices,

labels, names etc which indicate that goods or

services originate from a particular trader.When registered under the Trade Marks Act

1995 (Cth),(TMA) the proprietor is entitled to

restrain the use of unregistered marks whichare substantially identical or deceptively

similar. (E.g. Flowing hair and intense particle

effects are trademarks ofHeavenly Sword.

Registered Trade Marks

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Registered Trade Marks A trade mark can be a word,

phrase, letter, number,sound, smell, shape, logo,picture, aspect of packaging

or a combination of these. A registered trade mark givesyou the legal right to use,

license or sell it withinAustralia for the goods andservices for which it is

registered.

Trade Mark Protection

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Trade Mark Protection Once registered a trade mark becomes

the personal property of the registered

owner for a period of10 years.

Trade mark registration is notcompulsory but it is advisable.

Protection from infringement isprovided under s20(2)TMA and underfalse or misleading representations29CCACompetition and Consumer Act

2010(Cth.) .

It is also possible to take action undercommon law but this can be a time-

consuming and expensive exercise.

T d M k B i N

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Trade Marks v Business Names

The difference between trade marks,

business, company and domainnames sometimes causes confusion.

Registration of a business, companyor domain name does not in itself give

you any proprietary rights - only atrade mark can gives that kind of

protection.

TrdMrks v Business Names and Domain Names

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TrdMrks v Business Names and Domain Names The same word(s) may be registered by

different people as business names andtrade marks.

However, the registered trade mark

owner can sue the business owner forinfringing the trade mark if the businessname owner uses it on goods or services

similar to those covered by the trademark registration.

A domain name may be registered as a

trade mark if it complies with the TMA.

How do I register a trade mark?

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How do I register a trade mark?

The registration and operation of

trade mark is administered by theCommonwealth government.

The controlling body is the TradeMarks Office which is part of the IP

Web site: www.ipaustralia.gov.au/

How do I apply for a trade mark and

http://www.ipaustralia.gov.au/trademarks/tmhswhy.shtmlhttp://www.ipaustralia.gov.au/trademarks/tmhswhy.shtml

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How do I apply for a trade mark and

what does it cost?An on-line application to IP Australia costs $120 and

must include the following:

i) A representation of the trade mark;

ii) Nomination of the relevant classes;

iii) Description of the goods and/or services to

which it will apply; and

iv) A translation of any part of your mark that is

another language.

Once the application is accepted there is a $250 fee

and a further $300 for renewal after 10yrs

On ne e p

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On ne e p

As part of the IPA web site TMHeadstart provides an A-Z of the

rationale for and the process ofregistration. Web site:

http://www.ipaustralia.gov.au/trademark

s/tmhswhy.shtml

IPA web site also has a trade mark kit

available for potential users.

Trade marks that are not available

http://www.austlii.edu.au/au/legis/cth/consol_act/tpa1974149/s4.htmlhttp://www.austlii.edu.au/au/legis/cth/consol_act/tpa1974149/s4.htmlhttp://www.austlii.edu.au/au/legis/cth/consol_act/tpa1974149/s4.htmlhttp://www.austlii.edu.au/au/legis/cth/consol_act/tpa1974149/s4.html

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Trade marks that are not available

Your trade mark must distinguish your goods

or services from others in the marketplace.

For this reason, you will find it very difficult to

register trade marks that:

i) denote the kind, quality, intended purposeor value of the goods or services;

ii) are common surnames or geographical

names; oriii) conflict with an earlier trade mark, or

would mislead the public about the nature of

the goods or services.

Things to consider

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Things to consider ..

Registration of a trade mark in

Australia does not give protectionfrom possible infringement of a

similar mark overseas.

If you offer goods for sale via the

internet into a country wheresomeone owns the trade mark, you

may be sued for infringement.

Thi t id

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Things to consider

If your trade mark has not been used

by you, or on behalf of you, for aperiod of 3 years, an application for

removal from the Trade MarksRegister can be made.

If you wish to trade internationally or

via the internet it would be advisable

to take out an international trade

mark. Infringement of Trade Mark

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Infringement of Trade Mark s120TMA sets out that TM can be

infringed in any one of three ways:

i) by use of a sign that is identical ordeceptively similar

ii) by use of a sign that is identical ordeceptively similar to sell goods orservices closely related

iii) by use of a sign that is identical ordeceptively similar where a good orservice is so well known that it would be

likel to be taken as a connection.

Remedies for Breach of TM

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Remedies for Breach of TM

Injunctionsare available to plaintiffs

requiring the defendant to cease anddesist. (s126(b) TMA)

Seizure- the owner of the TM can

request that the CEO of Customs seizeimported goods. (Pt. 13 TMA)

Damages or Account of Profits (s126(b)TMA)

Criminal Liability/Prosecution

(s145-152 TMA)

Business Reputation: Passing Off

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Business Reputation: Passing OffDefinition:Passing offis said to be:

- A misrepresentation by a trader in thecourse of trade.

- to prospective customers of his or ultimateconsumers of goods or services suppliedby him

- which is calculated to injure the businessor goodwill of another trader, and

- which causes actual damage to thebusiness or goodwill of the trader bringingthe action (Lord Diplock [1979] The

Advocaat Case

The Tort of Passing Off - Elements

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The Tort of Passing Off Elements

For an action of passing off a plaintiff

must have established a distinctive

reputation in relation to its business

or products. For liability to arise in passing off

there must be a misrepresentationthat was calculated to deceive the

relevant public.

Passing Off

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Passing OffExample of passing off: Counterfeit / Fake Nintendo

games (2010)

Counterfeit games are alleged to be coming into

Australia enmass from China, Hong Kong and

Malaysia.

Fake Gameboy Advance and now Nintendo DS

games are alleged to be widely available.

Other than being illegal the batteries are cheap and

can go flat at any moment, erasing your saved files.

Copies of fake games can be bought overseas for 1

Dollar, yet they are flooding eBay and of course

being passed off as authentic licenced games.

Australian Consumer Law

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Australian Consumer Law

In relation to the tort of

passing off a plaintiff wouldalso be able to consider an

action for breach under theCompetition and Consumer

Act(Cth.) 2010 (CCA)(The CCA essentially replaced the Trade

Practices Act (Cth) 1974)

The CCA(Cth ) 2010 i i &

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The CCA(Cth.) 2010Competition & Consumers Act

Misleading and deceptive

conduct: ss18A corporation shall not, in

trade or commerce, engage inconduct that is misleading or

deceptive or is likely to misleador deceive.

Misleading and deceptive conduct: s18

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Misleading and deceptive conduct: s18

Trade Pract ices Comm ission v

Cue

Facts: Cue, a national fashioncompany, breached (s53(e)TPA) nows18CCA by displaying price tags onChristmas specials that showedthe original price and then thereduced price, like this: $50 $39.The garments however, had neverbeen offered for sale at the higherprice. Cue was fined $37,500.

False or Misleading Representations

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False or Misleading Representations

Goods and Services (s 29)

A person must not, in trade or commerce, inconnection with the supply or possible supply

of goods or services or in connection with the

promotion by any means of the supply or useof goods or services, make a false or

misleading representation:

(a) that goods are of a particular standard,quality, value, grade, composition, style or

model or have had a particular history or

particular previous use (cont)47

Passing Off: The Beer case

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Passing Off: The Beer case

In 1996 the plaintiffs, 20th Century Fox

successfully sued the South AustralianBrewing Co to prevent the marketing of beerunder the Duff name.

It was held that the relevant public would bedeceived into thinking the beer was thelegendary beer drunk by Homer Simpson.

Under the CCA the 20th Century Fox v SABC matterwould be likely to be a breach of s18 and or s29 CCA

Remedies for Passing Off

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Remedies for Passing Off Injunctive reliefto stop the

continuation of the passing off. Damages based on:

- Loss of existing trade- Loss of potential to exploit goodwill

Account of Profits

That the plaintiff may recover fromthe defendant any profits derived

from the act of passing off Confidential Information

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Confidential Information

Definition:Confidential

Information (CI)- Private or secret facts orknowledge not in the public domain.

- Possessors of confidentialinformation are often subject tofiduciary duties and or a duty ofgood faith which prevents themfrom misusing the information for

their own advantage What is confidential information ?

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What is confidential information ?

Various types of information which do not fall

within the scope of other forms of IP maynevertheless be invaluable. E.g. commercial

information, trade secrets and personal

informationExamples include:

- Ideas that are not yet put into a material form

- inventions which are not suitable for patent

- Relationships between employers andemployees * In many situations it may be advantageous for parties toexecute a confidentiality agt.

Why do we need a Confidentiality Agreement?

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Why do we need a Confidentiality Agreement?

Confidentiality agreements (aka Non-

Disclosure agreements) provide protectionwhen there is a need to disclose secret

information for meetings with potential

investors or business partners. It is vital that you make sure you back up

your confidential information with asignedconfidentiality agreement with

every person who has knowledge of the

sensitive material. The Action of Breach of Confidence

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The Action of reach of ConfidenceWhere a form of confidential information

has been disclosed the appropriate cause of

action is the tort of breach of confidence

Breach of confidence occurs when a

confidant fails to preserve the confidentialinformation which has been communicated

in circumstances giving rise to an obligation

of confidence.

It does not matter whether the disclosure

was intentional or unintentional Elements of an Action of Breach of Confidence

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Elements of an Action of Breach of ConfidenceThe elements of an action of breach of

confidence are:

1. The information itself must have the

necessary quality of confidence about it

2. The information must have beenimparted in circumstances importing an

obligation of confidence

3. There must be an unauthorised use of

that information to the detriment of the

party communicating it Breach of Confidence: Employees

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p yCase:Faccenda Chicken Ltd v Fowler

Facts:Fowler was employed as a sales a

manager by FCL. Fowler devised and

implemented a system of refrigerated vans to

deliver fresh chickens to butchers and

supermarkets.

Fowler (aka Chook) left the employ of FCL

and started a company. which delivered freshchickens.

(FCL allegedfoul playaka - a breach of

confidence by Fowler).

Breach of Confidence: Employees

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p y

Goulding J found that the information,

necessarily gained by the employees intheir employment, was confidential, but

that confidential information short of a

trade secret was, only protected fromunauthorised disclosure for the duration

of the employment. Subsequently theCourt dismissed the company's claim and

counterclaim.

Breach of Confidence: Employees

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p y Although breach of confidence is primarily an

equitable cause of action (i.e. based on

common law principles it is important to

remember that officers and directors of

companies are also bound by the

Corporations Act 2001 (Cth.)

s180Care and diligence

s181Good faiths182Use of position

s183Use of information

Remedies for Breach of Confidence

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1. The primary remedy for a breach of confidence is

that ofinjunctive reliefto stop the use of the

confidential information.2. If the breach of confidence involves something

written the the Ct. may issue ancillary ordersfor

the return/recovery of such documents

3.Account of Profits are available to a plaintiff

seeking pecuniary relief

.. Where an account of profits is inappropriate a

plaintiff may seekdamages for any loss suffered

by reason of the defendants breach of