Summary Complete Intellectual Property Notes PDF

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Summary - complete - Intellectual property notes
Intellectual Property (Deakin University)
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MLL410 INTELLECTUAL PROPERTY

TOPIC 1
BACKGROUND TO THE LAW OF INTELLECTUAL
PROPERTY
THE STRUCTURE OF OUR INTELLECTUAL PROPERTY REGIME
International
- Many multilateral international treaties help to govern intellectual property around the
world, including Australia
- They operate by requiring member countries to provide certain minimum standards of
protection to both domestic and international creators
- These treaties include the:
o Paris Convention for the Protection of Industrial Property 1883
o International Convention for the Protection of New Varieties of Plants 1961
o Berene Convention for the Protection of Literary and Artistic Works 1886
o Roman Convention for the Protection of Producers of Phonograms, Broadcasting Organisations
and Performers 1961
o Washington Treaty on the Protection of Intellectual Property in Respect of Integrated Circuits
1989
o Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS)
o WIPO (World Intellectual Property Organisation) Copyright Treaty 1996
o WIPO Performances and Phonograms Treaty 1996
- There are also and large number of bilateral treaties which important in this area
o E.g. the Australia-United States Free Trade Agreement of 2004
- Universal Declaration of Human Rights article 27(2)
o Everyone has the right to the protection of the moral and material interests
resulting from any scientific, literary or artistic production of which he is the
author.
Domestic
- In Australia there are a number of pieces of legislation which together, aim to meet our
international obligations and confer a high degree of protection to our creative
communities:
o The Trade Marks Act 1995 (Cth)
o The Copyright Act 1968 (Cth)
o The Patents Act 1990 (Cth)
o The Designs Act 2003 (Cth)
o The Plant Breeders Rights Act 1994 (Cth)
o The Circuit Layouts Act 1989 (Cth)
o The Australian Wine And Brandy Corporation Act 1980 (Cth)
- These statutory regimes a supplemented by the common law and equity
o The equitable action for breach of confidence and the common law action for
passing off
- ‘Viewed in aggregate, these different laws embody a mass of detailed prescriptions and policies.
However, in a functional sense they are concerned with the processes of information creation and
distribution. In crude terms, such rights as patents, trade secrets, copyright and designs are directed at the
stages at which new ideas and information are created, refined and developed into products and processes,
while trademarks and passing off are concerned with the subsequent stages at which the ideas and
information generated at the earliest stages are marketed and distributed’
o Ricketson 2013
WHAT IS THE POINT OF INTELLECTUAL PROPERTY REGIMES?

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Economic Council of Canada’s Report on Intellectual Property and Industrial Property,

Ottawa, 1971
- ‘Patents, copyrights, trademarks and registered industrial designs are part of the class of policy tools used
to improve society is total information system in sectors in which the production and distribution of
knowledge might otherwise be in adequate’…
- ‘They are, in short, incentive devices, designed to elicit more of certain kinds of ‘learning’ or knowledge
creation and certain kinds of knowledge processing’…
- ‘All four of these devices [patents, copyrights, trade marks and registered industrial designs] work in
essentially the same way. The state creates an incentive for individuals and firms to do more of
certain things by granting them limited rights in intangibles…’
- Some argue that in doing so, the state is doing more than granting rights for incentive purposes; that it is
defining, validating and protecting fundamental rights which always existed.
o This view is not reconcilable with the origin and nature of these rights
o E.g. patent, copyright and design protection have always been specifically limited in time, which
would be inconsistent with the fundamental rights view
- Ideally, as soon as a new thought process or technological idea is produced, it should be immediately
available to the wider public at as little cost as is reasonable for the production of the idea/process
o This must be balanced by the need to ensure that there is a steady rate of knowledge production.
o The need to encourage production of knowledge must be balanced with the cost to society of
establishing and protecting these rights
D Vaver: ‘Some Agnostic Observations on Intellectual Property’
- Theorists have identified both moral and economic motivations for legal protection of intellectual property
- ‘Morally, a person is said to have natural rights to the product of her brain, alternatively, society is
obliged to reward persons to the extent that they have produced something useful for it: as one sows, so
should one reap.’
- BUT, these arguments fail:
o ‘We know that ideas are not protected once they leave the creators brain and, when society does
protect ideas after they have taken some concrete shape, the protection is always limited in time
and space.’
o ‘Nor, if social reward is the criterion, can we say exactly what services deserve what reward.’
o Should a pulp novelist read by millions merit as much as the inventor of insulin, even if readers
are shown to need the pulp for their sustenance as much as a diabetic needs insulin?
o Isaac Newton could receive no patent for the principle of gravity, yet his idea has proved more
socially useful over time than the most successful Stephen King thriller…
 For which society thinks fit to award King or his assignee a copyright for the author’s
life plus 50 years
- On the economic plane, patents and copyrights are supposed to encourage work to be disclosed to
the public and thus to increase society’s pool of ideas and knowledge
o Yet many inventions are kept secret and the law rigorously protects that decision, whether or not
disclosure would be more socially useful than secrecy
o Copyright law, too, allows the creator not to publish his work and shades off into a tool of
sensorship.
- On a more basic level, IP regimes are said to encourage the initial creative act
o For centuries before copyright and patent laws were established and rigorously enforced,
inventive and creative work flourished
o ‘…if the British atents law of 1624 really did encourage greater inventiveness, why did the
Industrial Revolution take some 150 years more to arrive? A law with this time lag suggests a
lack of, or at least a serious discrepancy between, cause and affect.
- The strongest economic argument is utilitarian: without copyright or patents, much research and
creativity would not be carried on or financed by firms
o If the allocation of these rights is simply a means to an end… to make the fruits of creative
research available to users, one must ask if the means is the most effective way to that end. If the
rights restrict availability and use more than they increase it, they are unjustifiable; if the
converse, one must ask if there are better means of increasing availability and use, either by
modifying the rights or by finding alternative means.
ADMINISTRATION OF INTELLECTUAL PROPERTY LAW IN AUSTRALIA

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- IP legislation is the responsibility of the federal government: s 51(xviii) Constitution

o Powers WRT ‘copyrights, patents of inventions and designs and trade marks’
o Supplemented by, inter alia, the external affairs power under s 51(xxix); the
posts and telegraphs power under s 51(v) and interstate commerce/trade s 51(i)
- The administration of copyright law is the responsibility of the Department of
Communications
- Patents, designs and trade marks are the responsibility of the Department of Industry and
Science
The Court system and remedies for breach
- The federal court has jurisdiction over infringement proceedings and other matters
arising under Part V of the Act
o Shares the jurisdiction with the state courts, as well as the FMC under s 131D
- Appeals from the FedC are to the Full court FedC, then to the HC by special leave.
o In copyright infringement matters, appeals from the state courts typically follow
the same fashion, or may go directly to the High Court under s 131B(2)
- Many copyright cases that are of interest to us have been heard before the Federal Court
and it is common to see appeals to the Full FC and then to the High Court
o Designs, patents and trade marks are likely to also follow this route
Remedies
- Main remedy for infringement of IP is an injunction aimed at putting a stop to the

infringing activity.
- Will often be sought at an interlocutory stage
o If interlocutory order is granted, Plaintiff must give an undertaking to pay the
defendant damages if at trial the issue is found against the plaintiff
- If the matter goes to trial and P wins, a final injunction may be awarded, or perhaps
damages (plaintiff’s loss) or an account of profits (defendant’s gain) (but not both)
Groundless threats
- A person may seek damages if another person threatens to take legal action against them
for infringement of intellectual property right and it turns out that the friend person was
not in forgiving in the first place

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TOPIC 2
TRADE MARKS A: REGISTRABILITY
- Trade marks law is the area of intellectual property that is concerned with marketing of
goods and services and also consumer protection
- A trade mark is considered to be part of the goodwill of a company therefore be of very
considerable value
- trademarks can be registered, though they may also exist in an unregistered form
o unregistered trademarks are a constant threat to their registered cousins
o registration provide statutory protection for the owner of the mark
REGISTERED AND UNREGISTERED MARKS
- unregistered marks are perfectly with the only pressure on manufacturers and the
suppliers of goods or services to bring their mark on the registration system is
commercial
- sufficient similarity with the previously existing mark (whether that Mark is registered
or not) will deny the new mark registrability, and once the new mark registered, the
owner of it will need to remain vigilant to fight off in infringing unregistered marks
- whether the manufacturer or service provider chooses to register remark will depend on
what is more important to that person:
o the protection of the mark; or
o the right freely to choose what the mark will be (within the constraints of passing
off)
HOW THE TRADE MARKS SYSTEM WORKS
Application
- An application for registration may be made by, inter alia, a person who claims to be the
owner of the mark and is using or intends to use the mark: s 27
- ‘Person’ includes both natural and legal persons and even a body of persons, whether
incorporated or not: s 6
o joint ownership is also possible: s 28
- A trademark must be registered within a number of classes
o These classes of goods and services are listed in Schedule 1 of the Trade Marks
Regulations 1995
 There are 45 classes; 35 covering goods and 11 covering services
 registration can be made in a number of classes, but this will increase
cost
- The mark will there be examined and if it is excepted for registration, registration fees
must be paid
- Initial period of registration is 10 years: s 72
o May renew at the end of 10 years
o Registration may be indefinite if it is renewed
SPECIAL TYPES OF MARKS: COLLECTIVE, CERTIFICATION AND DEFENSIVE
- Collective trade marks are under Pt 15 of the Act

- A sign used by members of an association to distinguish their goods and services from
those of non-members: s 162

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- Certification marks are indications that a person certifies the goods as being of a
particular quality, accuracy, origin, material, mode of manufacture etc.
o i.e. the Heart Foundation Tick
- Defensive trade marks are under Pt 17 of the Act
- Intended to provide partial protection for famous marks, allowing them to be registered
for goods or services in respect of which they are not actually used, without becoming
vulnerable to removal on the ground of non-use: see s 185 of the Act
o i.e. KELLOGGS, COCA COLA are registered as a defensive mark
Publication
- After an application is filed, the registrar must publish its particulars (s 30), examine the
mark and either accept or reject it
- It cannot be rejected unless the applicant has been given an opportunity to be heard: s
33(4)
- if the registrar accepts the application, the decision must be advertised in the Official
Journal: s 34
Opposition
- If the registrar has accepted an application, a person may oppose the registration by
filing notice of opposition: s 52
- Both the opponent and the applicant then have to be given the opportunity to be heard: s
54(1)
- After this, the registrar must decide whether to refuse the mark or whether to go ahead
and register it, with or without conditions and limitations: s 55
Amendment of application
- It is possible to amend an application under Pt 6 of the Act

- IP Australia warns that after an application is filed, the goods or services cannot be
extended and only very minor amendments are allowed
Registration
- the registrar may register a trademark subject to conditions or limitations: s 70

o such as limitations as to colour
- After registration, the registrar must advertise the registration in the official journal and
give the owner a certificate of registration: s 71
- The applicant can women their own monopoly by expressly disclaiming some aspect of
the mark: s 74
o this is likely to be done to fend off a potential opponent
- the ‘priority date’ for purposes of the Act is the date of registration: s 12
- registration is taken to have had effect from the filing date of the application: s 72
Amendment or cancellation
- It is possible for the registrar to correct the register either by amending or cancelling the
registration
o This may be done on the initiative of the registrar (s 81), on the written request
of the owner, or following a court order (s 85).
- Trade mark my also be removed for non-use, and any aggrieved person may make an
application for the removal: s 92
o And owner of a mark my oppose this application: s 96
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Assignment and transmission
- A registered trademark is personal property: s 21

- the registered owner can deal with the mark it’s absolute owner: s 22
- Trademarks can be assigned or transmitted either totally, or partially in the sense that the
mark may be assigned with regard to only some of the goods for which the mark is
registered
- Assignments or transmissions must be recorded by the registry: Pt 10
Groundless threats
- A person must not make groundless threats of legal proceedings for infringement of a
trademark: s 129
- if this rule is breached, action can be taken against the threatening party for damages
IS IT A ‘TRADE MARK’?
TRADE MARKS ACT 1995 - SECT 17

What is a trade mark?
A trade mark is a (i) sign (ii)used, or intended to be used, to distinguish (iii) goods or services dealt
with or provided in the (iv) course of trade by a person from goods or services so dealt with or provided by any
other person.
(i) a sign
- sign is defined in s 6 (definitions) as:

o include[ing] the following or any combination of the following, namely, any letter, word, name,
signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour,
sound or scent.
- An application for registration will be rejected trade mark cannot be represented
graphically: s 40
o Insufficient case law to indicate exactly what this means, but it seems that a
scent and some sounds can be represented by description of them in words
 i.e. “the strong smell of bitter beer” or “the sound of a dog barking”.
Music may be represented by notation
- Must distinguish a trade mark from goods themselves
Coca-Cola Company v All-Fect Distributors Ltd (1999) 47 IPR 481

BLACK CJ, SUNDBERG and FINKELSTEIN JJ:
Before we examine whether the respondent has used the confectionary as a trade mark, we should consider whether
goods themselves can be a trade mark, because it was submitted for the respondent that they could not be, and that
this was relevant to the "use as a trade mark" issue. We were taken to three cases dealing with whether goods
themselves, as opposed to something applied to them, can be a trade mark. The first is Smith Kline and French
Laboratories (Aust) Ltd v Registrar of Trade Marks [1967] HCA 42; (1967) 116 CLR 628, which arose under the
1955 Act. The mark sought to be registered in that case was a pharmaceutical capsule one half of which was
coloured and the other half of which was colourless, containing pellets of two or more colours. The Registrar's
refusal to register the mark was upheld by Windeyer J on the ground that a trade mark must be capable of being
described and depicted as something apart from the goods to which it is to be applied or in relation to which it is to
be used…
The confectionary has three features that are not descriptive of the goods. They are the silhouette, the fluting at the
top and bottom, and the label band. It is not necessary for the respondent to adopt any of those features in order to
inform consumers that its product is a cola flavoured sweet. It could do so by using the cola colour, the word
COLA and the shape of an ordinary straight-walled bottle. The silhouette, fluting and band are striking features of
the confectionary, and are apt to distinguish it from the goods of other traders. The primary function performed by
these features is to distinguish the goods from others. That is to use those features as a mark. It is true, as the
respondent said, that the fact that a feature is not descriptive of goods does not necessarily establish that it is used

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to distinguish or differentiate them. But in the present case we are compelled to the conclusion that the non-
descriptive features have been put there to make the goods more arresting of appearance and more attractive, and
thus to distinguish them from the goods of other traders.
Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 48IPR257
BURCHETT J: In my opinion, merely to produce and deal in goods having the shape, being a functional shape, of
something depicted by a trade mark (here the marks do depict, one more completely than the other, a working
part of a triple rotary shaver) is not to engage in a "use" of the mark "upon, or in physical or other relation to, the
goods" within s 7(4), or to "use" it "in relation to the goods" within s 20(1). "Use" and "use", in those contexts,
convey the idea of employing the mark, (first) as something that can be "upon" or serve in a "relation" to the goods,
(and secondly) so as to fulfil a purpose, being the purpose of conveying information about their commercial origin.
The mark is added, as something distinct from the goods. It may be closely bound up with the goods, as when it is
written upon them, or stamped into them, or moulded onto them (see The Coca-Cola Company v All-Fect
Distributors Limited trading as Millers Distributing Company [1999] FCA 1721; (2000) AIPC 91-534), or, in the
case of a liquid, it may be sold in a container so formed as to constitute at once both container and mark.
The alternative ways of using a trade mark in relation to goods do not include simply using the goods themselves
as the trade mark. The reason is plain: it is to be assumed that goods in the market are useful, and if they are useful,
other traders may legitimately wish to produce similar goods (unless, of course, there are, for the time being,
subsisting patent, design or other rights to prevent them from doing so), and it follows that a mark consisting of
nothing more than the goods themselves could not distinguish their commercial origin, which is the function of a
mark: Johnson & Johnson at 342, 348-349
It does not follow that a shape can never be registered as a trade mark if it is the shape of the whole or a part of the
relevant goods, so long as the goods remain distinct from the mark. Some special shape of a container for a liquid
may, subject to the matters already discussed, be used as a trade mark, just as the shape of a medallion attached to
goods might be so used.
(ii) Used or intended to be used
- The sign must be used or intended to be used: s 17

- Registration can be obtained before the mark has actually come into use as long as there
is a real intention to use it: Re Batt’s Trade Mark (1898)
- Case law in relation to use or intention to use should be read in combination with ss 7
and 8
o The court may decide the trademark has been used if it is being used with
additions or alterations that do not substantially affect the identity of the
trademark: s 7(1)
o Use of a letter, word, name or numeral mark may consist of an aural
representation of the mark: s 7(2)
o Use of the trademark in relation to goods means use of the mark upon or in
physical or other relation to the goods, and in relation to services it means
physical or other relation to them: ss 7(4) and 7(5)
o An authorised use of a trade mark (i.e. a use in relation to goods or services
under the control of the owner of the trademark) is taken to be used by the owner
of the mark: ss 7(3) and 8
 For what constitutes control see s 8
Ducker’s Trade Mark (1928) 45 RPC 397
HANWORTH MR: ‘I agree that the goods need not be in being at the moment [of registration], and that there is
futurity indicated in the definition; but the mark is to be a mark which is to be definitely used or in respect of which
there is a resolve to use it in the immediate future upon or in connection with goods. I think that the words
‘proposed to be used’ mean a real intention to use, not a mere problematical possibility, but it means a resolve
or settled purpose which has been reached at the time when the mark is to be registered.’
Lack of intention to use
- Lack of intention to use a mark is grounds on which the application for registration may
be opposed: s 59
- if a mark becomes registered in spite of their having, at the relevant time, been no
intention to use it, it will be vulnerable to cancellation

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- An aggrieved person may apply to the registrar for removal of the trademark on the
ground ‘that on the day on which the application for the registration of the trade mark
was filed, the applicant for registration had no intention in good faith to use the
trademark in Australia, to authorise its use or to assign it to a body corporate for use in
relation to specified goods and services and has not in fact’: s 92
Imperial Group Ltd v Philip Morris & Co Ltd [1980] FSR 146
FACTS: Imperial group had registered the mark NERIT in respect of cigarettes. It would have liked to register
MERIT, but this is mark was too descriptive to be registrable. By registering NERIT, Imperial would have
expected to be able to prevent any use of the MERIT mark by competitors (the two marks being deceptively
similar).
ISSUE: Was the registration valid?
LAWTON LJ: At the date of registration the plaintiffs were not using the mark ‘Nerit’. They propose to use it, and
did use it, in order to stop their rivals from using the mark ‘Merit’. They did not propose to use the mark ‘Nerit’ so
as to indicate a connection in the course of their trade between the cigarettes and themselves. They did not want
any trade in Nerit cigarettes, save as a means to an end. Their use of the mark did show such a connection between
them and the cigarettes but that was incidental to the purpose for which they did propose to use the mark. … It
follows, in my judgment, that ‘Nerit’ was not a trade mark for the purposes of the Act and should not have been
registered. … If the court is entitled to consider the purpose for which a trade mark is used, and I adjudge it is, then
the plaintiffs’ use of the mark ‘Nerit’ was not a use at all. It had the unreal qualities of the ghost mark which the
plaintiffs always intended it to be:
SHAW LJLIn the present case if the substance is to be regarded and the appearance does not provide the whole
answer, I am satisfied that when the application to register ‘Nerit’ was made, Imperial did not intend to use that
mark for the purpose of indicating a connection in the course of trade between them and cigarettes sold under that
name. … Pseudo registrations should not be allowed to clutter up the Register
(iii) Goods or services
- In order to be registrable, a sign must be used to distinguish goods or services dealt with
or provided in the course of trade: s 17
- A trademark may be registered in respect of goods or services or both goods and
services and the registration may be in respect of goods or services of more than one
class: s 19
(iv) Provided in the course of trade
Oakley Inc v Franchise China Pty Ltd [2003] FCA 105

DRUMMOND J: The term ‘trade’ … encompasses a wider range of commercial transactions than the actual sale
and purchase of marked goods. It has been held that ‘a use of a mark in an advertisement of goods is a use in the
course of trade …’: The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 422.
The use of a mark on goods in conducting investigations as to whether there might be a market for those goods is
unlikely to be a use of the mark in the course of trade: that will generally be the use of a mark in activities
preparatory to the commencement of a course of trade. See Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987)
10 IPR 402 at 417-418. But where the owner of a mark is able to show that it is committed to supplying marked
goods to persons prepared to purchase them, activities preliminary to the actual commencement of selling the
goods, such as the distribution of marked samples and marked brochures to agents, so that they could show them to
prospective customers in soliciting business will probably amount to the use of the mark in the course of the trade:
see Settef at 439 … That marked goods are supplied free of charge does not necessarily mean that the mark is not
being used in the course of trade. That is shown by the free sample cases, such as Settef …
CAN THE TRADE MARK BE REGISTERED? – DISTINCTIVENESS
- The applicant does not have to prove the registrability of the trademark
- the registrar must accept the application unless he was she is satisfied that: (a) the
application has not been made in accordance with this Act; or (b) there are grounds for
rejecting it: s 33
o There is a presumption of registrability under the Act
Capable of distinguishing

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- The ability to distinguish, or distinctiveness, is an essential pre-requisite of registrability

Trade mark not distinguishing applicant's goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of
distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the
designated goods or services ) from the goods or services of other persons.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the
goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
…
The decision-making process

(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or
services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to
such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the
applicant.
- subsection 3 names two types of distinctiveness: inherent adaptability to distinguish and

factual distinctiveness
- if the mark does not have either of these types of distinctiveness, it will probably not be
capable of distinguishing
o if it does, it will be capable of distinguishing and therefore registrable
- The registrar my find that the market is to something stand inherently adapted to
distinguish, but not fully so

4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the
designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of
the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services
from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that
consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of
goods or services; or
(b) the time of production of goods or of the rendering of services.
- If the mark is to some extent inherently adapted to distinguish but not capable of
distinguishing the goods or services, and the registrar must take two more factors into
account
o the extent to which the mark is inherently adapted to distinguish the goods or
services from the goods and services of another
o look at the use or intended use of the trademark by the applicant; and
o ‘any other circumstances’
 ascertain the combined effect of these three factors

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Inherently adapted to distinguish
- looking at the mark alone, must ask whether the mark is unique or unusual for the goods
in question
- the central test used to determine inherent adaptability to distinguish is whether other
traders are likely, in the ordinary course of their business and without any improper
motive, to want to use the same mark or some very similar mark in connection with their
own similar goods or services
Place names
Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511

KITTO J: It is undeniable that a mark which, considered by itself, would seem unadapted to that purpose, because
its natural signification is against a notion that goods to which it is applied are the goods of the applicant and of no
one else, may yet come by actual use or by virtue of special circumstances to be so closely associated with the
applicant's goods in the minds of the relevant public that its apparently disqualifying signification is effectually
obscured, and distinctiveness in fact is thus achieved. But although such a measure of practical success with the
mark may well provide a sufficient foundation for a passing-off action, the Trade Marks Act does not accept it as
necessarily sufficient for the special protection which it affords to registered trade marks.
[In Registrar of Trade Marks v W & G Du Cros Ltd (1913)…Lord Parker of Waddington] said: "The applicant's
chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of
registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their
businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it,
upon or in connexion with their own goods.
It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be
saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical
signification, and that for that reason it may be held to be adapted to distinguish the applicant's goods. Where that
is so it is because to an honest competitor the idea of using that name in relation to such goods or in such
circumstances would simply not occur: Yorkshire Copper Works Case (1953)…This is the case, for example,
where the word as applied to the relevant goods is in effect a fancy name, such as "North Pole" in connexion with
bananas: the Glastonbury Case (1938).
The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a
country, can hardly ever be adapted to distinguish one person's goods from the goods of others when used
simpliciter or with no addition save a description or designation of the goods, if goods of the kind are
produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be
produced there.
Mid Sydney Pty Ltd v Australian Tourism Co Ltd (1998)

BURCHETT, SACKVILLE and LEHANE JJ: We rather doubt that any indication is to be found in the judgment of Kitto J
in Clark Equipment that he would have regarded a large privately owned office building as analogous to a large and
important industrial town or district or to a smaller town or district which is a seat of manufacture of goods of a particular
kind. … The Chifley Tower is not part of the common heritage in the sense that a town, suburb or municipality is. … There
is no public policy against [the trade mark owner] restricting those who have come to occupy space within its building as to
the way in which they use its name in connection with goods they produce or services they provide. That being so, it is not
easy to see, in our view, why any separate public policy, of the kind identified by Kitto J, should apply so as to deprive the
name selected by [the trade mark owner] of a capacity to distinguish, in circumstances where there could be no legitimate
reason for persons other than those carrying on business within The Chifley Tower to use its name in connection with their
goods or services:
- If a place name is unlikely to be known to a person in the country where registration is sought,
then registration of the name can go ahead, all other things being equal
o Farah Trade Mark [1978] FSR 234
Descriptive names
- Descriptive words are also likely to be found to lack inherent distinctiveness

o e.g. WHOPPER in relation to hamburgers was held not to be inherently adapted
to distinguish the product
Mark Foy's Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190
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DIXON CJ: I cannot think that the words now in question go further than, if as far as, suggesting in a vague and
indefinable way a gladsome carelessness a propos of the tub. They may have an emotive tendency, but they do not
appear to me to convey any meaning or idea sufficiently tangible to amount to a direct reference to the character or
quality of the goods.
WILLIAM J: The first question is whether the words "tub happy" are registrable as a trade mark under s. 16 (1) (d)
of the Trade Marks Act. To qualify they must be words having no direct reference to the character or quality of
articles of clothing…To say that articles of clothing are tub happy is in the ordinary use of English meaningless.
The words contain at most a "covert and skilful allusion" to the quality of washability which is characteristic of
articles of clothing made of some kinds of material including cotton. At most they create an impression that this is
what they are intended to convey. They do not trespass upon the rights of other traders to use any ordinary English
words or phrases referring to the washable qualities of their goods. They do not attempt to "enclose and appropriate
as private property certain little strips of the great open common of the English language".
Devices
- The definition of sign includes a device, in other words a picture of some kind: s 6
o advice in this context would be a graphical representation either on it own or in
combination with the word or some kind of sign
- Device marks are the oldest known kind, and arguably the most effective type of mark
because they transcend language barriers
- Device marks follow very much the same rules as word marks; they can be objected to
because they like distinctiveness through being already in use or so common that
another trader would innocently want to use them to describe their own goods or
services
- See Eclipse Sleep Products Inc v Registrar of Trade Marks (1957) where the high court
held that a device being hexagonal form depicting a type of mattress spring being little
more than a mere pictorial naming of the goods manufactured, and a monopoly over
mattress spring devices could not be granted
Signatures
- Signatures in handwriting are likely to be distinctive, but it is likely to be graphics of the

signature that would be most distinctive feature of the mark
- ‘Some signatures are so illegible that they are mere devices, prima facie adapted to
distinguish their owner’s goods from the similar goods of another. Other signatures may
be so legible that they are merely names in script form, and require evidence of
distinctiveness before they can be accepted for registration’: Barry Artist Trade Mark
Invented words
- Invented words are not necessarily inherently adapted to distinguish

o i.e. ROHOE for rotary hoe too descriptive: Howard Auto-Cultivators Ltd
- When looking at an invented word, it is unimportant how ingenious it is, the question is
simply whether it deprives a member of the community of the right to use the existing
vocabulary as he or she might wish to do in relation to the same goods or services:
o Eastman Photographic Materials Co v Comptroller-General of Patents, Designs
and Trade-marks
Foreign words or phrases
- Treated in much the same way as made up words
Cantarella Bros Pty Ltd v Modena Trading Pty Ltd

FACTS: Concerned the use of the words “ORO” and “CINQUE STELLE” for coffee, meaning “GOLD” and
“FIVE STARS” respectively in Italian
HELD: These words were not inherently adapted to distinguish coffee snce they were words that other traders
would want to use.
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These authorities show that it is not the meaning of a foreign word as translation which is critical, though it might
be relevant. What is critical is the meaning conveyed by a foreign word to those who will be concerned with the
relevant goods.
The principles settled by this Court … require that a foreign word be examined from the point of view of the
possible impairment of the rights of honest traders and from the point of view of the public. It is the ‘ordinary
signification’ of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits
a conclusion to be drawn as to whether the word contains a ‘direct reference’ to the relevant goods (prima facie not
registrable) or makes a ‘covert and skilful allusion’ to the relevant goods (prima facie registrable). … [73] Like
‘Tub Happy’ in respect of cotton goods, ‘ORO’ and ‘CINQUE STELLE’ were not shown to convey a meaning or
idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct
reference to the character or quality of the goods. [75] [The evidence adduced] fell well short of proving that the
word ‘ORO’, standing alone, is understood in Australia by persons concerned with coffee products to be directly
descriptive of the character or quality of such goods.
Shapes
Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273
FACTS: Case about lollies in the shape of a friendly bug-like creature.
HELD: Shape inherently adapted to distinguish the lollies.
STONE J: … the question is whether, if the bug shape were to be registered as a trade mark, other persons trading
in confectionery and "being actuated only by proper motives" would think of this shape and want to use it in
connection with their goods in any manner that would infringe the appellant's trade mark. That question must be
answered bearing in mind that infringement would include using as a trade mark in relation to confectionery, not
only the bug shape but also any "sign that is substantially identical with, or deceptively similar to" the bug shape;
s 120 of the 1995 Act.
A shape (or word) that is entirely concocted does not have the associations that would lead to confusion. I do not
regard such a shape as being part of the "great common" any more than does a concocted word or a novel
combination of common words … The learned primary judge drew a distinction between concocted words, which,
he said, were possibly infinite in number and the possibilities for concoction of animal-like shapes, which, he said
were finite. With respect, I do not see the justification for this distinction. If there is any distinction I would have
thought the advantage of greater variety lay with the category of three dimensional shapes which may involve any
number of combinations of planes, arcs, angles and so forth.
Although the bug shape is suggestive of insect life it is not the shape of any specific insect or bug. Indeed, were it
not for the description given by the appellants, it might as easily be seen as some extra-terrestrial object or space
equipment such as a modified lunar landing module. Registration of the bug shape as a trade mark would not give
the appellant a monopoly over all bug or insect shapes - only this particular shape and any substantially identical or
deceptively similar shape. I see no reason in principle or policy why this should be so.
Colours
BP plc v Woolworths Ltd [2004] FCA 1362

FINKELSTEIN J: Whichever test is applied the colour green (in the particular shade shown on the applications) is not
inherently distinctive of BP’s goods and services. Applying the negative test, green is not inherently distinctive because, as
I will soon show, it is a colour used quite innocently by other owners and operators of service stations. The colour is not
inherently distinctive according to the positive test because the colour is simply descriptive.
The evidence must be scrutinised very carefully when it is said that a single colour has been used as a trade mark. Most
objects have to be some colour. So merely applying a colour to a product will not act as an identifier for that product. In
deciding whether colour functions as a trade mark it is necessary to determine whether the trader has used the colour in a
way that informs the public that the product emanates from a particular source. Put another way, colour must be used to
distinguish products and not as mere ornamentation or decoration. Moreover, I propose to begin from the premise that in
most cases the public will consider colour as ornamentation and not as indicating a particular origin… What is required is
the promotion of the colour itself in a way that attracts attention, just like the established institution of advertising, so as to
lead the public to associate the colour with the products and services in question.
To some extent inherently adapted
- If a mark is to some extent inherently adapted to distinguish but the Registrar is not able, on that
basis, that it is capable of distinguishing the goods or services, then the Registrar may take other
factors into account viz (such as) use or intended use or other circumstances
We have an illustration of a Senior Examiner making use of s 41(5) but still finding against the applicant. The mark
in question was LO-SOLIDS. It was found that it had no inherent adaptability to distinguish on the basis that it
made direct reference to the character and quality of the goods.
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The spelling of the word, however, lifted it out of the category of pure description and gave it some inherent
adaptability to distinguish. Have a look at the Senior Examiner’s reasoning:
By being comprised of the hyphenated single word ‘lo-solids’, with the ‘w’ from ‘low’ omitted, rather than the two
words ‘low solids’, I think this trade mark just escapes being a trade mark consisting wholly of a sign that is
ordinarily used to indicate a ‘characteristic’ of the applicant’s goods … Although ‘lo-solids’ is the phonetic and
otherwise obvious equivalent of the expression ‘low solids’, I concede that the ordinary expression most likely to
be used by other traders would be the two words ‘low solids’, not the composite word ‘lo-solids’.
Since the Senior Examiner had found that there was ‘only a hint of inherent distinctiveness’ he therefore went on to
look at the elements of ‘use or intended use’ or ‘other circumstances’ under s 41(5)(a). He stated that he had not
been provided with any documented evidence of use, or proposed use of the mark. He had, however, been provided
with a copy of a certificate of registration for the trade mark for the same goods in the US. This, he considered, was
relevant but did not give him enough information about the circumstances of the trade mark’s registration in the US
and he therefore declined to accept the registration: Re Application by Kamyr (1996) 34 IPR 432. It is therefore the
quality of the evidence produced in court that will determine the issue.
Acquired or factual distinctiveness

- If a mark does not possess any inherent distinctiveness it may still be registered as capable of
distinguishing the goods or services if the owner of the mark can prove factual or acquired
distinctiveness
- Comes into effect when an unregistered mark has existed for so long or has received such
publicity that the public associates it wit one product
o Factual distinctiveness would be established on the basis of evidence of use
Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498

BRANSON J: As s 41(6)(a) makes plain, a trade mark which is not to any extent inherently adapted to distinguish
may nonetheless be treated under the Act as capable of distinguishing if, by reason of past use, it does in fact
distinguish…
Nonetheless, common sense suggests that significant promotion and use of a trade mark amongst people concerned
with the relevant market will have a tendency to enhance, rather than diminish, the trade mark's capacity to
distinguish the goods in respect of which it is used from the goods of others. Certainly, the absence of evidence of
promotion and use is likely to assume significance where distinctiveness resulting from use is in issue.
In each case the evidence relied on by the applicant is to be evaluated in the light of any evidence tending to the
contrary effect and having regard to the evidence which the applicant might reasonably be expected to be able to
obtain in all the circumstances of the case.
Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579
WILCOX J:In the present case, the evidence does not establish that the words CRANBERRY CLASSIC had, by
January 1998, acquired a discernible connection with Ocean Spray . No witness gave evidence that the words
CRANBERRY CLASSIC signified to him or her an association between the product and Ocean Spray . In January
1998 the product had been on the Australian market for only two and a half years. Ocean Spray had spent a
considerable amount of money on the promotion of its range of drinks, including cranberry classic, but the range
had been promoted under the name " Ocean Spray ". Given that fact, and the invariable presence on the label of the
" Ocean Spray " trade mark, it seems to me likely that any association, in the public mind, between this product and
the applicant company would have been derived from the use of the words " Ocean Spray " in advertising and on
the labels of the products, not from the use of the words CRANBERRY CLASSIC. This impression is strengthened
by the circumstance that the words CRANBERRY CLASSIC are displayed on the labels of that product in a
manner similar to the words, admittedly purely descriptive, that identify the other drinks in the range.
CAN THE MARK BE REGISTERED? – OTHER RESTRICTIONS
Prohibited sign
- An application must be rejected if the trade mark contains or consists of a sign which is
prescribed by the regulations, for the purposes of s 18, as not to be used, or a sign so
nearly resembling the prescribed sign as to be likely to be taken for it: ss 39 and 18
- An application may be rejected under s 39(2) if the mark contains or consists of a
prescribed sign
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o Reg 4.15 prescribes signs such as the words PATENT, COPYRIGHT, a

representation of the flag or seal of the Commonwealth, a State or Territory and,
in Sch 2, words such as REPATRIATION and OLYMPIC CHAMPION
Graphic representation
- A TM cannot be accepted for registration if it is not able to be represented graphically:

o s 40
- Presents challenges for sounds and smells as TMs
Scandalous or contrary to law
- An application for registration of a TM must be rejected if the trade mark contains or

consists of scandalous matter or its use would be contrary to law: s 42
o Contrary to any Australian legislation including TM Act
DECEPTIVE OR CONFUSING MARKS: ss 43, 44
Section 43: confusion through connotation
- Marks may be deceptive or confusing either in isolation, or in relation to other marks

- In isolation, a mark may falsely indicate that the product has an association with
governmental or other bodies which simply does not exist

Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be
rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the
trade mark in relation to those goods or services would be likely to deceive or cause confusion.
Section 44: confusion through association with a registered mark

Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade
mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related
services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is
being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's
goods is not earlier than the priority date for the registration of the other trade mark in respect of
the similar goods or closely related services.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade
mark) in respect of services (applicant's services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely
related
goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is
(iii) being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's
services is not earlier than the priority date for the registration of the other trade mark in respect
of the similar services or closely related goods.
Similarity
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- ‘deceptively similar to’ defined in s 10 as occurring when the trade mark ‘so nearly
resembles [another] trade mark that it is likely to deceive or cause confusion’.
- TM must have been used for ‘similar’ or ‘closely related’ goods or services: s 44
o Similar if they are the same or of the same description: s 14
o Closely related is not defined… See below
Southern Cross – goods of the same description/similar goods
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592
FACTS: Application for SOUTHERN CROSS in relation to refrigerators and refrigerator parts. SOUTHERN
CROSS already registered by someone else in relation to well-drilling machinery, milking machines, engines and
windmills.
Same description/similar goods
DIXON CJ, MCTIERNAN, WEBB, FULLAGAR AND TAYLOR JJ: The fact that examination of the nature of
the applicant's goods may, by itself, induce an observer to conclude that they are different in character from those
of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the
applicant's goods are not specified by the regulations as being within the same class of goods: see In re The
Australian Wine Importers Ltd. (1889).
There may be many matters to be considered apart from the inherent character of the goods in respect of which the
application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In Re
Jellinek's Application (1946) … Romer J. thought it necessary to look beyond the nature of the goods in question
and to compare not only their respective uses but also to examine the trade channels through which the
commodities in question were bought and sold.
In the case of Jellinek's Application (1946) 63 RPC 59 , Romer J. classified these various factors under three heads,
viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and
sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications
contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of
goods are 'of the same description'": In Re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948)
Deception and confusion
KITTO J (TRIAL): [referred to principles taken from the judgment of Romer J., in In re Jellinek's Application
(1946)] (i) In all applications for registration of a trade mark, the onus is on the applicant to satisfy the Registrar (or
the court) that there is no reasonable probability of confusion. (ii) It is not necessary, in order to find that a trade
mark offends against the section, to prove that there is an actual probability of deception leading to a passing-off.
While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring
(Reckitt & Colman (Australia) Ltd. v. Boden [1945]) it is sufficient if the result of the user of the mark will be that
a number of persons will be caused to wonder whether it might not be the case that the two products come from the
same source. It is enough if the ordinary person entertains a reasonable doubt. (iii) In considering the probability of
deception, all the surrounding circumstances have to be taken into consideration. (iv) In applications for
registration, the rights of the parties are to be determined as at the date of the application. (v) The onus must be
discharged by the applicant in respect of all goods coming within the specification in the application (pursuant to s.
32(2)) of the goods or class of goods in respect of which the registration is desired, and not only in respect of those
goods on which he is proposing to use the mark immediately. And the onus is not discharged by proof only that a
particular method of user will not give rise to confusion. The test is, what can the applicant do if he obtains
registration?
DIXON CJ, MCTIERNAN, WEBB, FULLAGAR AND TAYLOR JJ: It may be of importance to see whether the
registered mark is general or special in character and to ascertain the extent of its reputation. Again, it may be
important to see whether the goods in respect of which it is registered constitute a narrow class or a wide variety of
goods as also will be the question whether the goods of both the applicant and the opponent will be likely to find
markets substantially in common areas and among the same classes of people.
It is, of course, for the person applying for registration to establish that there is no likelihood of confusion and we
agree with Kitto J. that registration should be refused if it appears that there is a real risk that "the result of the user
of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two
products came from the same source"; it is, of course, not necessary that it should appear that the user of the mark
will lead to passing-off: see per Morton J. (as he then was) in In re Hack's Application (1940) 58 RPC 91, at p 103
Further, it is not enough for the applicant "to negative the likelihood of confusion in relation to the actual trade
carried on by the opponent at the time of registration and to the manner in which the latter then uses his mark. The
applicant must also take into account all legitimate uses which the opponent may reasonably make of his mark
within the ambit of his registration": Reckitt & Colman (Australia) Ltd. v. Boden per Dixon J.
In part the confusion resulted from the use by the appellant of a mark which had long and widely been used by the
respondent, in part from the fact that it was a mark which had been used by the latter with respect to such diverse
objects as both manual and power well-drilling and boring machinery, milking machines and engines and
windmills, in part from the fact that in the course of business those articles frequently are and have, for a long time,
been sold in country stores where, side by side with them, domestic refrigerators are stocked and sold, and last, but
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not least, from the circumstance that the name "Southern Cross" is a mark of a general character and - as appears
from what we have already said - of a wide and varied significance. A careful scrutiny of the evidence convinces
us that the respondent made out a clear case, not only that a user of the mark by the appellant for the purposes
proposed by it would be likely to deceive, but that it has already done so in a not inconsiderable number of cases.
In those circumstances we do not propose, nor do we think it necessary to traverse the whole of the facts again.
Closely related
- Closely related ONLY used when comparing goods with services or services with
goods
- Not defined in the Act, but in Caterpillar Loader Hire v Caterpillar Tractor Co:
o Confusion is more likely to arise where services protected by service marks necessarily involve the use or
sale of goods or where services (for example, consultancy services) involve goods but can be provided
either with or without the sale or promotion of goods…
o the sale of goods such as data processing equipment and the sale of programs for their operation; the sale
of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior
decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and
tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale
of ready-made clothes, and the sale of educational material on the one hand and educational services
(language courses, home study programs) on the other.
- In Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 FRENCH CJ said:
o The relationships may, and perhaps in most cases will, be defined by the function of the service
with respect to the goods. Services which provide for the installation, operation, maintenance or
repair of goods are likely to be treated as closely related to them. Television repair services in this
sense are closely related to television sets as a class of goods. A trade mark used by a prominent
brand of television sets could be deceptively similar for suggesting an association between the
provider of the service and the manufacturer of the sets.
Imperfect recollection and the ‘idea of the mark’
- On the question of whether a mark is likely to deceive or cause confusion, courts take
into account the fact that consumers would rarely see the marks side by side
o What is being looked at is the memory of one mark which the consumer would
have when they looked at the other: the idea of the mark
 Made up of elements that are likely to stick in the memory
Jafferjee v Scarlett (1937) 57 CLR 115

FACTS: the applicant applied for registration of a mark consisting of a drawing have two runners in athletic
costume. They are just finishing a race. One is ahead of the other and is bending the finishing tape. The drawing it
was associated with the words ‘Best Australian Roller Flour’. There was a prior registered mark showing two men
in athletic costume with crossed javelins in their hands and in a state of activity. The drawing was associated with
the words ‘Double Javan’. A direct comparison of them showed clear differences but was it still possible that the
first mark could be unregistrable because of likely confusion with the second mark?
Latham CJ: It is important to consider what has been described as the ‘idea of the mark’, that is, the idea which the
mark will naturally suggest to the mind of one who sees it. Lord Herschell’s committee put the point very clearly in
the following passage: – ‘Two marks, when placed side by side, may exhibit many and various differences, yet the
main idea left on the mind by both may be the same; so that a person acquainted with the mark first registered, and
not having the two side by side for comparison, might well be deceived …It would be too much to expect that
persons dealing with trade-marked goods, and relying, as they frequently do, upon marks, should be able to
remember the exact details of the marks upon the goods with which they are in the habit of dealing.
HELD: a real and substantial similarity was found, and the ear as well as the eye must be considered. ‘Purchasers
very frequently endeavour to describe the mark in order to obtain the same goods as they have bought on a prior
occasion’. A customer might describe the mark as ‘two men’, ‘two runners’, ‘two athletes’, and thus confusion may
arise.
Berlei Hestia Industries v The Bali Co (1973) 129 CLR 353

MASON J: The strength of the appellant's case is in the finding made by his Honour that the two marks are
"phonetically alike" - the appellant's mark is commonly pronounced "Burley" and the respondent's mark is
commonly pronounced "Barley". The respondent's mark includes the expression "BRA" which is descriptive of the
goods to which it is applied. Its inclusion in the mark does not detract from the phonetic similarity between
"BERLEI" and "BALI". According to the appellant, so strong is the phonetic likeness that when the two marks are
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applied to the same class of goods there is every likelihood that confusion will arise in the minds of the public, if
not on the part of those engaged in the relevant trade, as to the origin of the goods which the respondent's mark
denotes. …Although the goods sold under the two marks are distinguishable, the appellant's brassieres being mass-
produced and inexpensive, the respondent's being a specialty line and expensive, the question whether there is a
likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark
in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would
give rise to a real danger of confusion.
The evidence indicates that, in general, brassieres are bought and sold after a fitting or over the counter when the
article is inspected by the customer, thereby reducing the likelihood of confusion arising from phonetic similarity.
But that risk is not eliminated. No doubt orders are sometimes placed by telephone.
Although, as I have said, the evidence adduced by the appellant did not establish actual confusion, to my mind it
confirmed the likelihood of confusion.
For these reasons I consider that the appellant has shown that there is a likelihood of confusion arising from the use
of the respondent's mark and that the Court's discretionary power to order rectification of the register by expunging
the mark as an entry wrongly made in or remaining in the register should be exercised adversely to the respondent.
Honest and concurrent use and continuous use
- It is possible to have conflicting marks accepted for registration in cases of honest

concurrent use or other circumstances (in which case the Registrar will exercise a
discretion) or cases of prior and continuous user (in which registration will not be
refused).

Identical etc. trade marks
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject
to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade
mark has been used only in a particular area, the limitations may include that the use of the trade
mark is to be restricted to that particular area.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the
applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Honest concurrent use was discussed in Pirie & Sons Ltd’s Application (1933) 50 RPC 147. Here the court
indicated the grounds on which a court might exercise a discretion to register a conflicting mark. Here
HAMMERMILL had, for 13 years, been registered for writing paper. The applicants sought to register their mark
ABERMILL for writing paper, having used the mark for 6 years. Should they be allowed to, given the prior
existence of HAMMERMILL? It was decided that they should, the factors taken into account being the following:
• the possibility of confusion was minimal;

• the choice of the word ABERMILL was honestly made (no attempt to deceive was
being made);
• 5 years honest concurrent use had been proved;
• this use had produced no proof of confusion;
• the HAMMERMILL people did not have a large trade and it had not increased for
some years;
• the ABERMILL people had built a large and increasing business with their trade
mark.
All in all, if registration were not granted, the ABERMILL people would suffer significant hardship. If registration
were granted the HAMMERMILL people would not suffer a great deal. The applicant’s interests outweighed the
interests of the opponent.
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TOPIC 3
TRADE MARKS B: OWNERSHIP, OPPOSITION, RIGHTS,
INFRINGEMENT
WHO CAN APPLY? – OWNERSHIP OF TRADE MARKS

Application--how made
(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:
(a) the person claims to be the owner of the trade mark; and
(b) one of the following applies:
(i) the person is using or intends to use the trade mark in relation to the goods and/or services;
(ii) the person has authorised or intends to authorise another person to use the trade mark in
relation to the goods and/or services;
(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted
with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of
the trade mark.
Use on what kind of goods?
- When considering whether a person has used the mark in relation to the ‘goods and or
services’, must consider whether the goods or services for which the mark has been used
are sufficiently close to the goods or services for which the application is made
- It has been said that goods/services must be ‘of the same kind’:
o In re Hick’s Trade Mark (1897)
- There must be great to similarity between them
o i.e. hatchets and axes are goods of the same kind
o Handbags and backpacks are not the same kind:
 Colorado Group Ltd v Strandbags Group Pty Ltd [2007]
Conscious or unconscious use?
- A trademark may have been used in Australia even where the trademark owner in this
country does not know about the use, as long as the trademark owner was originally the
person who authorise the use of the trademark as a trademark on the goods
o E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010]
What constitutes use for ownership purposes?

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- What about where there is a foreign mark that is used for particular goods/services and
somebody other than its foreign owner seeks to have it registered in Australia in relation
to the same kinds of things?
Aston v Harlee Manufacturing Co (1960) 103 CLR 391

FACTS: Mark registered in US for confectionary. Person other than US owner applied for registration of the mark
in Australia for confectionary. US company opposed the application on the grounds that they are not the owner of
the mark.
FULLAGAR J:
In the present case there has been, even up to the present time, no relevant user of the mark in question by either
party in Australia, but it does not follow that neither party is entitled to register the mark. Section 32 of the Act
provides that any person claiming to be the proprietor of a trade mark may apply to the Registrar for the
registration of his trade mark. The right to registration depends, therefore, on proprietorship of a mark.
His Honour quotes Cotton L.J. as saying in In re Hudson's Trade Marks (1886) 32 ChD, at p 319, 320: "The
difficulty is this: Is a man to be considered as entitled to the use of any trade mark when he has never used it at all?
That is a difficulty, but I think the meaning is this. If a man has designed and first printed or formed any of those
particular and distinctive devices which are referred to in the first part of s. 10, he is then looked upon as the
proprietor of that which is under that Act a trade mark, which will give him the right so soon as he registers it."
(1949) 78 CLR, at p 626 Dixon J then sums up the position by saying: "It is clear enough from the course of
legislation and of decision that an application to register a trade mark so far unused must, equally with a trade mark
the title to which depends on prior user, be founded on proprietorship. The basis of a claim to proprietorship in a
trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it
upon or in connection with the goods and the applying for registration" (1949) 78 CLR, at p 627 "Authorship",
says his Honour a little later, "involves the origination or first adoption of the word or design as and for a trade
mark." (1949) 78 CLR, at p 628.
The passages quoted above require careful consideration in relation to the present case. In the first place, I do not
think that the requirement of "authorship" means that the applicant must be the true and first inventor: he has not to
establish anything analogous to what an applicant for letters patent for an invention must establish. I do not think
that an opponent of an application for registration of a trade mark could succeed by saying merely "I thought of it
first", or even "I thought of it first, and communicated it to the applicant." In the second place, it would appear that
an applicant may be the "author" of a trade mark, although he has deliberately copied or adopted a mark registered
in a foreign country in respect of the same description of goods. In Re The Registered Trade Mark "Yanx"; Ex
parte Amalgamated Tobacco Corporation Ltd. [1951] HCA 28; (1951) 82 CLR 199, Williams J. said: "To try and
register in Australia a word which the applicant to the knowledge of the respondent is using elsewhere on its
cigarettes is sharp business practice. But it is not in itself fraudulent or a breach of the law."
A claim to proprietorship of a trade mark will be defeated if it is proved that to give effect to it would be to involve
a fraud upon another person. A recent example is the case of Farley (Aust.) Pty. Ltd. v. J. R. Alexander & Sons (Q.)
Pty. Ltd. [1946] HCA 29; (1946) 75 CLR 487, where Williams J held that a registration had been fraudulently
obtained, on the ground that a promise not to use the mark after existing stocks had been disposed of had "lulled
the applicant" (sc. for expungement) "into a state of false security".
…it is impossible, in my opinion, to say, and I did not understand it to be said, that the conduct of Aston in
applying for registration of himself as proprietor of the mark could be characterized as fraudulent, and, on the
whole, I do not think that his application involved any breach of any confidential relationship with Harlee.
Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 59 ALJR 77

The requisite use of the mark need not be sufficient to establish a local reputation and there is authority to support
the proposition that evidence of but slight use in Australia will suffice to protect a person who is the owner and
user overseas of a mark which another is seeking to appropriate by registration under the Trade Marks Act. In such
a case, the court ‘seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become
identified with and distinctive of the goods of the foreign trader in Australia’ (see The Seven Up Co. v. O.T. Ltd.
(1947) 75 CLR 203, at p 211; Aston v. Harlee Manufacturing Co. (1960)
The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before
there can be a local use of the mark as a trade mark. It may suffice that imported goods which have not actually
reached Australia have been offered for sale in Australia under the mark (Re The Registered TradeMark ‘Yanx’; Ex
parte Amalgamated Tobacco Corporation Ltd.,at pp 204-205) or that the mark has been used in an advertisement
of the goods in the course of trade (The Shell Co. of Australia v. Esso Standard Oil (Australia) Ltd.
In the present case, there was not, at any relevant time, any actual trade or offer to trade in goods bearing the mark
in Australia or any existing intention to offer or supply such goods in trade. There was no local use of the mark as a
trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so
used. The cigarette packets and associated advertising material were delivered to Philip Morris to demonstrate what
Loew's was marketing in other countries and what Philip Morris might market, under licence from Loew's, if it
decided to manufacture and trade in the goods in Australia and to use the mark locally at some future time. There
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was no relevant trade in the goods in Australia and the delivery of the cigarette packets and associated material to
Philip Morris did not, in the circumstances, constitute a relevant user or use in Australia of the mark ‘KENT
Golden Lights’ for the purpose of indicating or so as to indicate a connection in the course of trade between the
new cigarettes and Loew's. It follows that Moorgate has failed to establish proprietorship of the mark ‘KENT
Golden Lights’ either at the time Philip Morris applied to register the mark ‘Golden Lights’ or at the time when the
licence agreement expired.
- In relation to the use of TM on the internet, Ward Group Pty Ltd v Brodie & Stone Plc
o the use of a trade mark on the Internet, uploaded on a website outside of Australia, without more,
is not a use by the website proprietor of the mark in each jurisdiction where the mark is
downloaded. However … if there is evidence that the use was specifically intended to be made
in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that
jurisdiction when the mark is downloaded. Of course, once the website intends to make and
makes a specific use of the mark in relation to a particular person or persons in a jurisdiction
there will be little difficulty in concluding that the website proprietor used the mark in that
jurisdiction when the mark is downloaded [43].
OPPOSITION TO REGISTRATION
Procedure
- When an application for registration of a trade mark has been made the Registrar must
publish the particulars of the application: s 30
- This gives any person who objects to the registration of the mark the opportunity to
oppose it.
o This is done pursuant to s 52 which provides that any person may oppose the
registration by filing a notice of opposition.
- The Registrar must give the opponent and the applicant an opportunity of being heard on
the opposition: s 54.
On what grounds can a mark be opposed?
- Ss 57-62A outline the grounds for opposing registration

- These sections extend the reasons for rejecting an application for registration (in ss 39-
44)
- Opposition can be made on any of the grounds in ss 39-44 (except for lack of graphical
representation under s 40)
- May also be opposed on the ground that:
o The applicant is not the owner of the trade mark: s 58;
o (if the registered mark has been accepted on the basis of prior and continuous use – s 44(4)) the
owner of the other similar or identical trade mark first used it in respect of similar/closely related
goods/services before the first use by the registered owner and has done so continuously since
then: s 58A;
o the applicant does not intend to use or authorise the use of the mark in Australia or assign the
mark to a body corporate for use by it in Australia in relation to the relevant goods: s 59;
o another trade mark had, before the priority date, acquired a reputation in Australia, and, because
of the reputation of that other trade mark, the use of the registered mark would be likely to
deceive or cause confusion: s 60;
o the trade mark contains or consists of a sign which indicates a false geographical origin for the
goods, and this is likely to cause confusion: s 61;
o the application for registration was defective: s 62; or
o the application for registration was made in bad faith: s 62A.
Section 60: confusion with a well-known mark

Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the
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ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade
mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would
be likely to deceive or cause confusion.
- A mark which has acquired a reputation sufficient to raise s 60 would be the type of
mark which would qualify for a defensive mark
Partial objections
- Objection will often be taken as to the use of the mark in relation to the types of goods
for which the opponent uses a similar mark
o This may lead to an outcome with the registration of the mark can go ahead, but
not for particular classes of goods or services
Disclaimers
- An applicant for registration for the registered owner of a registered trade mark may
disclaimer any exclusive right to use authorise the use of a specified part of the trade
mark: s 74
- ‘Disclaimer… is not a device to be used to permit registration of a word that should be
regarded as unregistrable’: Bausch & Lomb Inc v Registrar for Trade Marks (1980)
- A disclaimer could be a way of fending off an application for registration
o An opponent could require the voluntary disclaimer as a condition of
withdrawing the opposition
RENEWAL
- Registration of a mark will normally expire 10 years after the filing date in the
application for registration: s 72(3)
- Prior to expiry a person may ask the registrar to renew the registration: s 75
- renewal is for a period of 10 years from the original expiry date: s 77
- if there is no renewal, the mark will be removed from the register six months after
expiry (s 78) but during that time it will still be open to a person to renew the
registration: s 79
- Trademark is registrable indefinitely
RIGHTS AND INFRINGEMENTS
Section 20 rights

Rights given by registration of trade mark
(1) If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the
exclusive rights:
(a) to use the trade mark; and
(b) to authorise other persons to use the trade mark;
in relation to the goods and/or services in respect of which the trade mark is registered.
(2) The registered owner of a trade mark has also the right to obtain relief under this Act if the trade mark
has been infringed.
(3) The rights are taken to have accrued to the registered owner as from the date of registration of the trade
mark.
(4) If the trade mark is registered subject to conditions or limitations, the rights of the registered owner are
restricted by those conditions or limitations.
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(5) If the trade mark is registered in the name of 2 or more persons as joint owners of the trade mark, the
rights granted to those persons under this section are to be exercised by them as if they were the rights of a single
person.
Section 120 infringement

When is a registered trade mark infringed?
(1) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially
identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade
mark is registered.
(2) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially
identical with, or deceptively similar to, the trade mark in relation to:
(a) goods of the same description as that of goods ( registered goods ) in respect of which the trade
mark is registered; or
(b) services that are closely related to registered goods; or
(c) services of the same description as that of services ( registered services ) in respect of which the
trade mark is registered; or
(d) goods that are closely related to registered services.
However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the
person did is not likely to deceive or cause confusion.
- Section 20 implies that if another person does any act which is among the exclusive
rights of the owner of the registered trademark, infringement will occur
- in section 120, there is the definition for infringement, covering where one mark is
identical or deceptively similar to another
o The mark may be different to the registered mark, but will infringe if it is
substantially the same or the element of deception is present
o Thus, s 120 can be seen to supplement s 20: Angoves Pty Ltd v Johnston (1982)
Substantial identity and deceptive similarity
- ‘deceptively similar’ is defined to mean that the mark ‘so nearly resembles the other
trade mark that it is likely to deceive or cause confusion’: s 10
- the question of substantial identity and deceptive similarity can be approached in the
same way as it was in relation to registrability
Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407
WINDIER J: In considering whether marks are substantially identical they should, I think, be compared side by
side, their similarities and differences noted and the importance of these assessed having regard to the essential
features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the
comparison.
On the question of deceptive similarity a different comparison must be made from that which is necessary when
substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract
similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between,
on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence
and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's
television exhibitions.
When the Act speaks of marks being "deceptively similar" to the registered mark, it propounds, I think, the same
test as in the former Act was expressed by the phrase "so nearly resembling it as to be likely to deceive". The
deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not
by the degree of similarity alone, but by the effect of that similarity in all the circumstances.
Starr Partners Pty Limited v Dev Prem Pty Ltd [2007] FCAFC 42
FACTS: The appellant carries on a real estate franchise business in New South Wales under the name ‘Starr
Partners’ and has done so since 1992. It has 36 franchisees carrying on business in the State under that name. Since
18 January 1999, Starr has been the registered owner of trade mark No 783181 which is as follows:
The respondent carries on business as a real estate agent in certain northern suburbs of Brisbane under the name
‘Star Realty’. In the course of its business it has been using the following unregistered device and word mark:
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TRIAL: the primary Judge found that the respondent’s mark was neither ‘substantially identical with’ nor
‘deceptively similar to’ the appellant’s registered mark.
Lindgren, Emmett and Finkelstein JJ:
The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety.
Similarity is not based on only part of the registered mark…It may also be appropriate when comparing the
registered mark with the allegedly infringing mark to have regard to the pronunciation of words in the mark or any
verbal translation of devices. But a comparison based on sounds is likely to be important only if the goods or
services to which the mark relates are acquired by reference to words based on the mark. For example, one might
commonly hear a person say ‘Can I have a Coke?’ but not ‘We need to find a new tenant, let’s call Star Realty’…
While the word ‘Partners’ differs from ‘Realty’, the question is whether the two words would make such a lasting
impression on the hypothetical reader’s mind that he or she would not be likely to be deceived or confused. We do
not think they would do so.
Use as a trade mark
- Many uses of a mark may not be uses of it as a trademark

Use of trade mark
(4) In this Act:
"use of a trade mark in relation to goods " means use of the trade mark upon, or in physical or other relation to,
the goods (including second-hand goods).
(5) In this Act:
"use of a trade mark in relation to services " means use of the trade mark in physical or other relation to the
services.
- S 17 further indicates that use as a trademark would have to be used which performs the
function of distinguishing goods or services dealt with or provided in the course of trade
- Sometimes a registered trademark maybe used as the name of a certain type of
packaging
o This was the case when Johnson & Johnson use the word caplets, the registered
mark of another company, on its own packaging
o this could only be an infringement if it was use of the trademark as a trademark
o if Mark is used only for one of the secondary purposes it should not infringe the
registered mark
Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407
KITTO J: At every point of the exhibition, whether the resemblance to the respondent's trade marks be at the
moment close or remote, the purpose and the only purpose that can be seen in the appearance of the little man on
the screen is that which unites the quickly moving series of pictures as a whole, namely the purpose of conveying
by a combination of pictures and words a particular message about the qualities of Shell petrol. This fact makes it, I
think, quite certain that no viewer would ever pick out any of the individual scenes in which the man resembles the
respondent's trade marks, whether those scenes be few or many, and say to himself: "There I see something that the
Shell people are showing me as being a mark by which I may know that any petrol in relation to which I see it used
is theirs." And one may fairly affirm with even greater confidence that the viewer would never infer from the films
that every one of the forms which the oil drop figure takes appears there as being a mark which has been chosen to
serve the specific purpose of branding petrol in reference to its origin. No doubt if, later, the viewer were to come
across the respondent's trade mark used in relation to petrol his recollection of the films might lead him to think
that the appellant, taking advantage of a reputation created for the oil drop figure by means of the films, had
adopted the figure, in one of its forms, as a mark for its petrol. But that would be quite a different matter from
inferring, while sitting in front of his television set, that the figure in one or more, some or all, of its exhibited
forms was being placed before him there as a trade mark for Shell petrol.
Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190
WILLIAMS J: The phrase ‘the exclusive right to the use of such trade mark’ carries in my opinion the implication
of use of the mark for the purpose of indicating in relation to the goods upon or in connection with which the use
takes place, the origin of such goods in the user of the mark …’. [T]he reasoning of his Lordship appears to be
equally applicable to the Commonwealth Act …. If the defendants in the present case had advertised that their
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Exacto cotton frocks washed as well as the plaintiff’s Tub Happy frocks it would not be said that the words ‘Tub
Happy were used by the defendants in relation to goods to indicate a connection in the course of trade between the
goods and themselves. They would only be used in support of a claim that their cotton goods washed as well as the
plaintiff’s Tub Happy goods. In such a case the words ‘Tub Happy’ would not be used as a trade mark within the
meaning of the present definition. … [But in this case the defendants] are advertising the words ‘Tub Happy’ and
emphasizing them in relation to their own cotton garments for the purpose of indicating a connection in the course
of trade between the goods and themselves. The public are not being invited to compare the ‘Exacto’ goods of the
defendants with the ‘Tub Happy’ goods of the plaintiff. They are being invited to purchase goods of the defendants
which are to be distinguished from the goods of other traders partly because they are described as ‘Tub Happy’
goods. In Aristoc Ltd v Rysta Ltd [1945] AC 68 at 94 Viscount Maugham cites the following appropriate passage
from the judgment of Lord Greene MR in Saville Perfumery Ltd v June Perfect Ltd 58 RPC 147 at 161: ‘In an
infringement action, once it is found that the defendant’s mark is used as a trade mark, the fact that he makes it
clear that the commercial origin of the goods indicated by the trade mark is some business other than that of the
plaintiff avails him nothing, since infringement consists in using the mark as a trade mark, that is, as indicating
origin’.
Top Heavy Pty Ltd v Killin (1996) 34 IPR 282

In the end, the question here is whether the applicant’s use of the designs incorporating the phrase ‘Chill Out’ is use
as a badge of the trade origin of its T-shirts or, in the statutory language, use to distinguish goods dealt with or
provided in the course of trade by a person from goods so dealt with or provided by another person. In my view it
is not. … In my view the designs are not indications of the provenance of the T-shirts. The message which they
convey may, not surprisingly, be one of less than complete clarity; but in general terms the message is, I think, an
exhortation to the reader, reinforced by the slightly tilted picture of the drink in each case and, in the case of the
more elaborate design, by the image of enjoyable winter sport, to relax; and this is combined with an advertising
message that Coca Cola is a suitable medium or accompaniment of relaxation.
‘Registered’ goods and services
- Infringing use of trade mark must be used in relation to goods in respect of which the
trade mark is registered
- A person may infringe by using the offending sign in relation to goods of the same
description as the registered goods or in relation to services which are closely related to
the registered goods
o Alternatively infringement may arise from the use of the sign in relation to
services of the same description as the registered services or goods that are
closely related to the registered services
S 120(2) defence – that using the sign as the person did is not likely to deceive or cause
confusion
E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27
The words “as the person did” direct attention to the way in which, as a matter of fact, the alleged infringer has
used the allegedly infringing trade mark. These concluding words pose a different question to that raised by the
opening words of s 120(2) which, in the context of deceptive similarity, direct attention only to a comparison of the
marks’.
Well known marks
- A mark can also be infringed, even if the goods and services to which the infringing
mark is implied are classified as unrelated goods and services

When is a registered trade mark infringed?
(3) A person infringes a registered trade mark if:
(a) the trade mark is well known in Australia; and
(b) the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to,
the trade mark in relation to:
(i) goods ( unrelated goods ) that are not of the same description as that of the goods in respect
of which the trade mark is registered ( registered goods ) or are not closely related to services in respect of which
the trade mark is registered ( registered services ); or
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(ii) services ( unrelated services ) that are not of the same description as that of the registered
services or are not closely related to registered goods; and
(c) because the trade mark is well known, the sign would be likely to be taken as indicating a
connection between the unrelated goods or services and the registered owner of the trade mark; and
(d) for that reason, the interests of the registered owner are likely to be adversely affected.
(4) In deciding, for the purposes of paragraph (3)(a), whether a trade mark is well known in Australia , one must
take account of the extent to which the trade mark is known within the relevant sector of the public, whether as a
result of the promotion of the trade mark or for any other reason.
- Mere use within Australia of the mark would be insufficient to make a mark well known
- It is likely that it would need to be sufficiently well known to qualify for use as a
defensive mark
Second-hand goods
- Sale of second-hand goods which still bear their original trade mark is not likely to be
held to be in infringing use of the original registered mark
o That is not considered to be used as a trade mark
Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 21 IPR 1
Counsel for the respondent also submitted that the mere use of a word constituting a trade mark in relation to goods
sold was sufficient to establish infringement. Not only is this contrary to the Shell case [see above Kitto judgment];
it would make innumerable sellers at second-hand liable for using brand names, as for example, by selling Holden
Commodore cars. The reason why such sales do not actually infringe is that the use of the brand name at the time
of the sale of a used product is not a trade mark use: Fender Australia Pty Ltd v Bevk trading as Guitar Crazy
(1989) 89 ALR 89 at 96-97. It is a descriptive use, identifying the goods by reference to their origin when new,
which is no longer, at any rate generally, a relevant commercial origin for the purposes of trade mark law.
- It has also been said in case law that the association of a trademark with goods must be
in the course of their production and preparation for market
- After goods have reached the consumer they are no longer in the course of trade
o When they re-enter the market as second-hand goods, although their source in
the sense of their ultimate origin remains the same, a new origin has been
interposed and the goods have entered upon a new commercial existence
 Wingate Marketing Pty Ltd v Levi Strauss & Co (1994)
- Further:

When is a trade mark not infringed?
(1) In spite of section 120, a person does not infringe a registered trade mark when:
(a) the person uses in good faith:
(i) the person's name or the name of the person's place of business; or
(ii) the name of a predecessor in business of the person or the name of the predecessor's place of
business; or
(b) the person uses a sign in good faith to indicate:
(i) the kind, quality, quantity, intended purpose, value, geographical origin, or some other
characteristic, of goods or services; or
(ii) the time of production of goods or of the rendering of services; or
(c) the person uses the trade mark in good faith to indicate the intended purpose of goods (in
particular as accessories or spare parts) or services; or
(d) the person uses the trade mark for the purposes of comparative advertising; or
(e) the person exercises a right to use a trade mark given to the person under this Act; or
(f) the court is of the opinion that the person would obtain registration of the trade mark in his or her
name if the person were to apply for it; or
(fa) both:
(i) the person uses a trade mark that is substantially identical with, or deceptively similar to, the
first-mentioned trade mark; and
(ii) the court is of the opinion that the person would obtain registration of the substantially
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identical or deceptively similar trade mark in his or her name if the person were to apply for it; or
(g) the person, in using a sign referred to in subsection 120(1), (2) or (3) in a manner referred to in
that subsection, does not (because of a condition or limitation subject to which the trade mark is registered)
infringe the exclusive right of the registered owner to use the trade mark.
(2) In spite of section 120, if a disclaimer has been registered in respect of a part of a registered trade
mark, a person does not infringe the trade mark by using that part of the trade mark.
Parallel importation
- Parallel importation occurs when authentic good is the bearing their proper trade mark
are imported into Australia (by person B) to compete with equally authentic goods
bearing the same mark which are sold over here (by person A), having been
manufactured here or imported under a valid licence by A.
- both groups of goods will be from basically the same source:
o either from the same manufacturer or perhaps from different members of the
corporate group
- The question to be asked is whether the marketing of these imported goods in
competition with the Australian goods bearing the same trademark is an infringement of
that mark in Australia
o S 123 apears to answer this question in the negative, but see below:
Transport Tyre Sales Pty Ltd v Montana Rims and Tubes Pty Ltd [1999] FCA
FACTS: TT had been importing tyres from Ohstu in Japan for many years, and was considered the authorised
importer and reseller in Australia. When other retailers (including Montana) began importing tyres direct from
Ohstu, rather than purchasing through the intermediary TT, TT sought the assignment of Ohstu TMs such that TT
was able to cease unauthorised imports. TT became the assign of the Ohstu TMs, and attempted to have Montana
cease importing these products, and to purchase through TT instead. Montana agreed to undertake to cease
importing the products, but it would sell through its current SOH. TT did not accept this, insisting on a buy-back of
the current SOH. Montana ceased importing, sold through its SOH and eventually ran out of stock. Montana sought
cancellation of the registration of TM pursuant to s 88, or in the alternative, the entry assigning TT as owner of the
TM be removed, and associated orders to that effect.
BEAUMONT, HEEREY AND EMMETT JJ: However, if promotion entailed, for example, advertisements in
which the names "OHTSU" or "FALKEN" appeared, there would be a further "use" of the Trade Marks. That use
would be comprised in the advertisements, whether printed or oral or visual. That would be a different use of the
Trade Marks from the use entailed by the offering for sale or sale of the tyres in question with the moulding on
them. Nevertheless, it is clearly a use of the Trade Marks in relation to the tyres in question. Since, for the reasons
indicated above, the Trade Marks have been applied to or in relation to the tyres in question by Ohtsu, it follows
that there would not be any infringement by that use of the Trade Marks.
ACTION FOR INFRINGEMENT
Proper plaintiff/relief
- An action for infringement can be brought by the registered owner (s 20) of the
trademark or an authorised user of the mark if the registered owner refuses or neglects to
do so
o An authorised user of the mark is a person who uses the mark in relation to
goods or services under the control of the owner of the mark
- Relief can be obtained in the form of an injunction, which may be granted with or
without conditions and in some cases in the form of damages or an account of profits:
see s 127
- If the registration of the Mark has expired and has been removed within 12 months after
expiry, action cannot be taken for infringement which occurred between the expiry date
and the date of renewal
Threat of legal action
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- A person who thinks that his trademark has been infringed should be very careful not to
make groundless threats of legal action against the alleged infringer
o if a person against whom the threat is made happens to be innocent, the threat
alone could have a devastating and unjustifiable impact on their business
- Any person aggrieved by threat can take legal action against the person making the
threat: s 129
o A declaration, injunction and possible damages may be awarded
- However, if the owner of the trade mark is diligent in bringing the action for
infringement, this may preclude legal action as a result of a threat: s 127(5)
- If an action is commenced in relation to a threat, and the owner is able to establish an
infringement, the threat action will fail
o Infringement can be raised as a counterclaim to a threat action

TOPIC 4
TRADE MARKS C: DEFENCES AND COUNTERCLAIMS
- Assuming infringement has been taken, the defendant will need to establish by evidence,
that what is alleged has not taken place, or alternatively, that for reasons given by the
statute, there has ben no infringement or that the owner does not have exclusive
right over the mark in the existing circumstances
o Defendant may also wish to take an aggressive stance; and make a counterclaim
by for cancellation of the mark on the Register (rectification of Register)
NON-INFRINGING USES: s 122

When is a trade mark not infringed?
(1) In spite of section 120, a person does not infringe a registered trade mark when:
(a) the person uses in good faith:
(i) the person's name or the name of the person's place of business; or
(ii) the name of a predecessor in business of the person or the name of the predecessor's place
of business; or
(b) the person uses a sign in good faith to indicate:
(i) the kind, quality, quantity, intended purpose, value, geographical origin, or some other
characteristic, of goods or services; or
(ii) the time of production of goods or of the rendering of services; or
(c) the person uses the trade mark in good faith to indicate the intended purpose of goods (in
particular as accessories or spare parts) or services; or
(d) the person uses the trade mark for the purposes of comparative advertising; or
(e) the person exercises a right to use a trade mark given to the person under this Act; or
(f) the court is of the opinion that the person would obtain registration of the trade mark in his or
her name if the person were to apply for it; or
(fa) both:
(i) the person uses a trade mark that is substantially identical with, or deceptively similar to, the
first-mentioned trade mark; and
(ii) the court is of the opinion that the person would obtain registration of the substantially
identical or deceptively similar trade mark in his or her name if the person were to apply for it; or
(g) the person, in using a sign referred to in subsection 120(1), (2) or (3) in a manner referred to in
that subsection, does not (because of a condition or limitation subject to which the trade mark is registered)
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infringe the exclusive right of the registered owner to use the trade mark.
(2) In spite of section 120, if a disclaimer has been registered in respect of a part of a registered trade
mark, a person does not infringe the trade mark by using that part of the trade mark.
USES IN GOOD FAITH OF OWN NAME/PLACE OF BUSINESS
Company Names
Smith & Nephew Plastics (Australia) Pty Ltd v Sweetheart Holding Corporation (1987) 8 IPR 285
A company – Sweetheart Plastics Inc – used the word Sweetheart on its goods and claimed in its defence that it
was just using its own name. But the company was held to be using only part of its name and therefore could not
take advantage of the defence. It would have had to use the words Sweetheart Plastics at least to be using its name.
But the fact that it had omitted the Inc (technically also part of its company name) was not a problem: Smith &
Nephew Plastics (Australia) Pty Ltd V Sweetheart Holding Corporation (1987) 8 IPR 285.
Personal Name
Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2013] FCA 1255
In 2013 Bob Jane, the Melbourne tyre dealer who had left the very well-known family business and set up a new
tyre business under his own name, was held to have infringed the trade marks of the family business (which also
contained the name Bob Jane). Why did the s 122 defence not apply? Because he was considered not to have acted
in good faith. The good faith principle was described as follows:
BESANKO J, citing a UK judgment:
[T]he exception or defence require[s] an honest use by a person of his or her own name and that mean[s] without
any intention to deceive anybody and without any intention to make use of the goodwill which has been acquired
by another trader. … [T]he mere fact that the alleged infringer [knows] of the registered trade marks [does] not
mean that the use [is] not in good faith provided that he or she honestly thought that no confusion would arise and
had no intention to wrongfully divert business to himself or herself by using the name. … [In this Bob Jane case
the] marks were used with the intention that consumers would associate the respondents’ business with the
applicant … the respondents intended to leverage off the reputation of the ‘Bob Jane T-Marts’ business and Bob
Jane Marks’.
Place of Business?
- In the Mid Sydney Pty Ltd (Chifley Tower) case:

o As to traders operating from The Chifley Tower itself, they would not infringe
[the registered trade mark] if they used the name ‘Chifley Tower’ in good faith
as the name of their place of business.
- Thus, the name of a building (‘The Rialto’) would apparently satisfy this concept of
‘place of business’
Angoves Pty Ltd v Johnson (1982) 43 ALR 349

There is a registered trade mark, ST AGNES registered for alcoholic drinks. The respondent, whose liquor store
was in the St Agnes (a suburb) shopping centre, called its store the St Agnes Liquor Store. Was it protected by s
122? First of all the applicant argued that this was the name of the defendant’s business, not its place of business.
This argument was rejected. So could ‘St Agnes’ be the name of a place of business? It had been held in a previous
case that the name of a wine growing district was too general to be a place of business. On the other hand the
address of a business had been considered to come within the definition.
FITZGERALD J: In descending order, a place of business may be named by reference to the city or town, suburb,
street, street number, or even a particular location such as a shopping centre. The name of each of these may be for
one purpose or another the name of a place of business. The context must determine which is appropriate. … It
seems to me that the protection which it gives to the use of the name of the user’s place of business is an aspect of
the same policy which generally prohibits registration of a geographical name as a trade mark.
Use in good faith of mark as a description
- Mark describing goods will not be registrable unless it is factually distinctive or unless it
is to some extent inherently adapted to distinguish and there are other factors which
render it registrable
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Britt Allcroft (Thomas) LLC v Miller (t/as The Thomas Shop) (2000) 49 IPR 7
FACTS: Miller had opened a shop which she called ‘The Thomas Shop’. It sold articles relating to the fictional
figure of Thomas the Tank Engine and its logo showed the round face of an engine with a puff of steam etc. Those
who owned the Thomas trade mark took action, partially for infringement of their mark. Miller relied on a defence
under s 122.
HELD: that the logo was deceptively similar to the Thomas logos and was ‘used in relation to services that [were]
closely related to the exploitation of the Thomas logos through the Thomas merchandise’.
MANSFIELD J: I do not consider that the words "kind, quality, quantity, intended purpose, value, geographical
origin, or some other characteristic, of goods or services" in s 122(1)(b)(i) of the Trade Marks Act were intended to
encompass the identification of the source of goods or services from the registered owner of a mark. The words in s
122(1)(b)(i) appear to have as their underlying element or genus some objective description of the goods or
services or of a feature of the goods or services, by reference to commonly used and understood qualities (the
common usage may of course have a technical or specialist connotation in certain circumstances). Indicating that
particular goods originate from the registered owner of a mark, or that they are of a particular brand the goodwill in
which is enjoyed by another person or entity, in my judgment, goes beyond the type of characteristic which s
122(1)(b)(i) contemplates. If it had been intended that that provision would enable a sign to be used which has the
effect of enabling a trader effectively to adopt another's registered mark because only that other person's product is
being sold or supplied from that premise, the section could readily have been expressed to say so. It would in
addition be a dramatic reduction in the protection which the Trade Marks Act provides to the registered owner of a
mark, and one which might have been expected to have been clearly indicated if it had been intended. It would
otherwise diminish the intention of the Trade Marks Act to enable a registered mark to indicate the connection to
the course of trade between goods and services and the person who has the right to use the mark, or to provide "a
badge of origin": per Lockhart J in Levi Strauss & Co v Wingate Marketing Pty Ltd (1993) 43 FCR 344.
In addition, in my judgment, the use of Mrs Miller's logo in the present circumstances does more than indicate that
the Thomas Shop sells the Thomas Merchandise. I have found that it also conveys that the shop is owned by the
applicants or licensed by them or is somehow authorised by or associated with them. It is a consequence of the fact
that the expression Thomas presented in connection with certain goods, and as here presented in connection with
premises of a certain name and get up, has the secondary meaning to which I have referred. Thus, the protection
which s 122(1)(b) might offer is not available because Mrs Miller's logo indicates more than that which the
subsection contemplates even if (contrary to my conclusion) it encompasses signage which identifies the origin of
goods or services by use of another's mark.
Re: good faith requirement
Kettle Chip Co Pty Ltd v Pepsico Australia Pty Ltd (t/a Frito-Lay Australia) (1995) 32 IPR 302
FACTS: Kettle sought relief for infringement of its registered mark KETTLE used in relation to potato chips. The
respondents, Frito-Lay, had been using the words ‘Kettle Cooked’ in relation to their own chips, but claimed that
this was a descriptive use and therefore exempt.
HELD: ‘Frito-Lay’s purposes were mixed: they included the use of the trade mark for its own sake ie as a trade
mark. Frito-Lay has sought to render the word constituting the trade mark generic by invoking a sense of the word
unfamiliar to the public today … Counsel for Kettle graphically referred to the steps taken by Frito-Lay as
‘genericide’, which I take to mean on the facts of this case, the emptying of the word ‘Kettle’ of its secondary
meaning in favour of a generalisation of its reference when used in relation to potato chips. In my view Frito-Lay’s
use of ‘Kettle’ and ‘Kettle Cooked’ on its packages was not purely descriptive of the character or quality of its
chips and was … not ‘in good faith’.’

Goods etc. to which registered trade mark has been applied by or with consent of registered owner
(1) In spite of section 120, a person who uses a registered trade mark in relation to goods that are similar
to goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been
applied to, or in relation to, the goods by, or with the consent of, the registered owner of the trade mark.
(2) In spite of section 120, a person who uses a registered trade mark in relation to services that are similar
to services in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has
been applied in relation to the services by, or with the consent of, the registered owner of the trade mark.

Prior use of identical trade mark etc.
(1) A person does not infringe a registered trade mark by using an unregistered trade mark that is
substantially identical with, or deceptively similar to, the registered trade mark in relation to:
(a) goods similar to goods ( registered goods ) in respect of which the trade mark is registered; or
(b) services closely related to registered goods; or
(c) services similar to services ( registered services ) in respect of which the trade mark is registered;
or
(d) goods closely related to registered services;
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if the person, or the person and the person's predecessor in title, have continuously used in the course of trade the
unregistered trade mark in relation to those goods or services from a time before:
(e) the date of registration of the registered trade mark; or
(f) the registered owner of the registered trade mark, or a predecessor in title, or a person who was a
registered user of the trade mark under the repealed Act, first used the trade mark;
whichever is earlier.
(2) If the unregistered trade mark has continuously been used only in a particular area of Australia,
subsection (1) applies only to the use of the trade mark by the person in that area.
Sign comes to describe article
- If, after registration, a sign becomes accepted in a trade as descriptive of or as the name
of goods or services, the registered owner of a mark containing the sign will lose his or
her exclusive rights to use of the sign: s 24
- This is likely to occur through misuse of the sign, especially if the product to which it is
attached is well established and very popular.
o Advertising or packaging should not encourage the product to be referred to by
its trade mark alone, but rather the mark should precede the name of the product.
AMENDMENT AND CANCELLATION OF A MARK
Grounds for amendment or cancellation
- Amdendment/cancellation is a good defensive strategy against infrignment proceedings

o is not, however, limited to those who are facing infringement proceedings
- Much will depend on whether the party doing so can establish its standing as an
aggrieved person
- Even in the absence of such an application, the Registrar may remove a trade mark on
his or her own initiative: s 81
SECTIONS 85-89 – AMENDMENT/CANCELLATION BY ORDER OF A COURT
- aggrieved person may apply to a court for an order that the Register be rectified by
correcting an error in it or by entering particulars which were wrongly omitted from
it: s 85
- If a condition or limitation affecting a registered trade mark (for example a limitation
as to the part of Australia in which the trade mark may be used in relation to the relevant
goods or services, or a limitation as to which goods and services the mark may be used
for) has been contravened, this will also provide grounds for such an application either
by an aggrieved person or by the Registrar: s 86.
- Sections 24 and 25 also provide grounds for cancellation: s 87
o s 24 deals with trade marks which consist of or contain a sign that, subsequent to
registration, ‘becomes generally accepted within the relevant trade as a sign that
describes or is the name of an article, substance or service’.
o Section 25 deals with a trade mark relating to an article which has formerly
been manufactured under patent.
- Court has a discretion not to grant an application for rectification if the registered owner
can establish that the grounds for rectification did not arise through his or her own act or
fault: s 89
Aggrieved person
- has been held that the term ‘person aggrieved’ has no special or technical meaning and is
to be liberally construed.
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o would embrace any person having a real interest in having the register rectified,
or the trade mark removed.
o would include any person of whom there is a reasonable possibility of his or her
being appreciably disadvantaged in a legal or practical sense by the register
remaining unrectified.
Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13

(while emphasising that no single test can be considered exhaustive…)
HELD: In my opinion, the words [‘person aggrieved’] were intended by the Act to cover all trade rivals over whom
an advantage was gained by a trader who was getting the benefit of a registered trade mark to which he was not
entitled. … It is, and was intended to be, a great advantage to a trader to have his mark registered under the Acts.
That advantage to him is to some extent a corresponding disadvantage to his rivals. … If it subsequently appears
that [the trade mark] is wrongly on the register, it is to be removed. For to permit it to remain would give him, at
the expense of his rivals, an advantage to which he is not entitled. Thus, the general intention and policy of the Act
show, I think, that Parliament intended the words to have a wide meaning. If an erroneous entry gives to his rival a
statutory trade advantage which he was not intended to have, any trader whose business is, or will probably be,
affected thereby is ‘aggrieved’ and entitled to ask that the error should be corrected.
- The time at which the person must be aggrieved is the date of the application for relief.
o This is the date of commencement of legal proceedings in which the claim for
relief is made: Ritz Hotel v Charles of the Ritz (1988) 12 IPR 417
Section 88: Entry wrongly made
- rectification of the register (on the application either of an aggrieved person or the
Registrar) by ‘removing or amending an entry wrongly made or remaining on the
Register’, cancellation of the mark or the entering of a condition or limitation: s 88
- Can be done on the following grounds:
o any grounds on which the registration of the trade mark could have been opposed. These include
grounds on which the initial registration could have been rejected even in the absence of
opposition, including the likelihood that the use of the mark would deceive or cause confusion
(see opposition sections and ss 39-44)
o an amendment of the application for the registration was obtained as a result of fraud, false
suggestion or misrepresentation
o the use of the trade mark is likely to deceive or cause confusion as at the time the application for
rectification was filed
o the entry in the Register was made, or has been since amended, as a result of fraud, false
suggestion or misrepresentation
- reference to an entry ‘wrongly made or remaining’ allows rectification on the grounds of
a defect that existed at the application and registration stage.
- In some cases the court is not bound to order the rectification of the Register: s 89.
o This is when ‘the registered owner of the trade mark satisfies the court that the ground relied on
by the applicant has not arisen through any act or fault of the registered owner’ and the
application for rectification has been made on the basis of:
o s 87 - ie loss of exclusive rights to use the trade mark under ss 24 or 25
o liability to deceive or confuse (a ground on which the registration could have been opposed and
finding its way into the present discussion through s 88(2)(a));
o s 88(2)(c) - the mark is likely to deceive or cause confusion as at the time that the application for
rectification is filed.
- Registrar must not make an application under ss 86, 87 or 88 unless he or she considers
that the application is desirable in the public interest: s 88A.
Non-use
- person may apply to the Registrar to have a trade mark that is, or may be, registered
removed from the register: s 92
Application for removal of trade mark from Register etc.
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(4) An application under subsection (1) or (3) ( non-use application ) may be made on either or both of the
following grounds, and on no other grounds:
(a) that, on the day on which the application for the registration of the trade mark was filed, the
applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services to which the non-use application relates and that the
registered owner:
(iv) has not used the trade mark in Australia; or
(v) has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of one month ending on
the day on which the non-use application is filed;
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month
before the day on which the non-use application is filed, and, at no time during that period, the person who was
then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
- Such an application may be made at any time after the filing date of the application for
registration of the trade mark (s 93(1)) unless the application is made under s 92(4)(b) in
which case 5 years must have elapsed since the filing date (s 93(2))
- The application may be opposed by any person interested in the trade mark remaining
on the Register: s 96.
- In the absence of opposition the mark must be removed if the case for cancellation is
made out: s 97
- The onus is on the person opposing removal to rebut the allegations made by the
applicant for removal: s 100
- Use of the trade mark in Australia has to be use of it as a trade mark
- It should also be use that is ‘ordinary and genuine’: Electrolux Ltd v Electrix Ltd (1953)
o Whilst a single act of sale may not be sufficient to prevent removal, in the case of genuine use, a
relatively small amount of use may be sufficient to constitute ‘ordinary and genuine’ use judged
by commercial standards: E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010]
- The manufacturer who sells goods, marked with his mark, to a warehouseman, wholesaler or retailer does
not, in my view, thereupon cease to use the mark in respect of those goods. The mark is his property
although the goods are not; and the mark is being used by him so long as the goods are in the course of
trade and it is indicative of their origin, that is as his products. Goods remain in the course of trade so long
as they are upon a market for sale. Only when they are bought for consumption do they cease to be in the
course of trade: Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd (1967) 116 CLR 254,
266-7.
- Under s 101(3), if the Registrar or the court considers it reasonable to do so, and the
cancellation has been opposed, they may decide not to remove the mark from the
Register even if the grounds of the application have been made out
- Factors that may be taken into account in making this decision are whether the trade
mark has perhaps been used on very similar goods/services to those for which it is
Registered: s 101(4)
- To avoid losing a mark through non-use certain precautions can be taken:
o to use the mark as it is registered and not to tamper with the mark post-
registration. If a modified mark is used, but not registered, and the original mark
is allowed to languish, the owner of the marks may find him or herself without
statutory protection for either of them.
make sure that the mark is used on the goods for which it is registered. To use the mark on
‘unregistered’ classes of goods allows the accusation to be made that the mark is not in use in
wa
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TOPIC 5
COPYRIGHT A: WHAT COPYRIGHT PROTECTS
NB: In an exam, this is the first consideration. Is the material capable of supporting copyright protection?
- Copyright law is governed by the Copyrights Act
o Different to patents and TM Act, as does not provide a system of registration
- If copyright exists in work, it will exist instantaneously as the work is created
- Copyright is important not only in relation to arts, but also with innovation of
technology; in particular, the vast opportunity for reproduction available through the
Internet
RATIONALES FOR COPYRIGHT PROTECTION
- Why should various types of intellectual creation be protected by copyright?

- Why should the public be denied the unfettered use of cultural artefacts created by others but circulating
widely in the society?
- Why should we not be able to use freely those images which are so familiar to us as to have become part
of our own identity?
- Important consideration: the common law in Australia and UK gives no copyright
protection to published or unpublished works
o Does not recognise property or other rights arising from creation
o Where these rights are granted, they are so, solely by statute
The Berne Convention for the Protection of Literary and Artistic Works 1886
- Copyright statutes in countries which are parties to the Berne Convention are profoundly
influenced by the terms of the treaty.
- Australia became a party to the Convention in 1928
- The Convention had the aim of achieving a workable consensus between as many
nations as possible on minimum standards of copyright protection in the member
countries
o It also had the purpose of sorting out, in the international arena, what laws were to apply when,
and to whom they were to apply.
o It has been quite successful in achieving these purposes and steadily increased its influence
during the course of the 20th century.
o Has been a steady increase in number of signatory countries
- One of the other major effects of the Berne Convention is that overseas copyright
owners who are members of a member state can bring copyright infringement actions in
Australia under Australian law
- Other international conventions governing copyright, and currently in force, are:
o the Universal Copyright Convention 1952,
o the Rome Convention for the Protection of Producers of Phonograms, Broadcasting
Organisations and Performers 1961,
o the Geneva Phonograms Convention 1971, the ‘Satellites’ Convention 1974,
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o the WIPO (World Intellectual Property Organisation) Performances and Phonograms Treaty
(WPPT) and
o the WIPO Copyright Treaty (WCT)
IS THE MATERIAL IN QUESTION CAPABLE OF COPYRIGHT PROTECTION?
Copyright protects the expression, not the object
- Copyright is a form of personal property: s 196

- It is unlike patents, design and TM in that it does not require registration
o No formalities are required
- When a person gives expression to a thought, then copyright will immediately attach to
that form of expression
o not orally or through some other form of sound, but in a more tangible form such
as writing on paper or code on a computer disk or in the form of a sculpture or a
film
- Copyright does not have anything to do with the object in which the expression is
embodied, whether it be a piece of paper, an audio tape or a computer disk
o That object is subject to the normal rules governing chattels.
o For example, you may own a book but not have copyright in its contents and vice versa; similarly
you may have copyright in a work of art which you have created even though you have sold it to
another person and have not seen it for years.
Pacific Film Laboratories v Federal Commissioner of Taxation (1970) 121 CLR 154
ISSUE: Did Pacific Film Laboratories have to pay sales tax on the prints that the company supplied or sold to
customers? Did Pacific own the prints at the point when they were passed over to the customers?
BARWICK CJ: In the first place, there is authority for the proposition that the property in a chattel may be in one
person and the copyright in another: In re Dickens; Dickens v. Hawksley (1935) 1 Ch 267. In the second place, an
authority to reproduce a copyright work given by the owner of the copyright allows the authorized person to
produce the copy as his own property and indeed unless the authority to reproduce it provides otherwise, he is free
to dispose of the reproduction, cf. Copinger and Skone James' Law of Copyright, 10th ed. (1965), p. 378, s. 1027.
In the third place, whilst of course the Copyright Act enables the copyright owner to recover possession of
infringing copies of the copyright work or damages for the conversion of such infringing copies there
were in this case no infringing copies, the owner of the copyright on the supposition made, authorized the making
of the copy and its delivery to himself. It seems to me that even if the agreement between the owner of the
copyright and the appellant had been no more than an agreement for the rendering of services the print produced by
the appellant could not have been claimed by the owner of the copyright as his own nor could he have recovered it
in detinue before it had been delivered to him but if as I think the agreement was an agreement for the sale of the
print or duplicate by the appellant to the owner of the copyright it seems to me necessarily to follow that not only
was there no property in the owner of the copyright in the print viewed as a chattel at any time before the delivery
of the print to the owner of the copyright but that it was intended that property in the print or duplicate should pass
on delivery of the print or duplicate.
In my opinion, the appellant had general property in the print or duplicate when produced with the authority of the
copyright owner: it was not an infringing copy of the negative or transparency as the case may be though possibly
it might have become so if sold to some person other than the owner of the copyright: this was so because of the
limited nature of the authority to reproduce given by the owner of the copyright.
In my opinion, the delivery of the prints or duplicates by the appellant for an agreed sum was a sale of those prints
or transparencies within the meaning of s. 17 of the Act. Accordingly, in my opinion, the sale value of those sales
was rightly included in an assessment by the respondent Commissioner of the appellant.
Copyright protects the expression, not the idea
- copyright protection is given to the form of expression of an idea or information, not to

the idea or information itself
o Just as somebody could take your physical drawing from you without infringing
your copyright in it, so somebody could also copy an idea to which you have
given expression without breaching your copyright in the expression.
- Individuality of expression is what, in doubtful cases, serves to connect the work or
cultural artefact in question with a particular person, or author
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- If the material has no identifiable individuality of expression, then there will be nothing
in it which is capable of copyright protection
What is an idea, and why isn’t it protected? – The monopoly vs the Public Domain
- Issues arise in the balance between the interests of the copyright owner and those of the
general public
- It is often stated in the cases that copyright is a statutory monopoly, which is regarded as
a (necessary) evil because it is taking from the community at large the freedom to use
the intellectual product.
o In the idea/expression dichotomy, the monopoly ends and the public interest
achieves precedence
- Ideas are public property and cannot be monopolised through copyright
o Baker v Selden (1880) 101 US 99
 where the truths of a science or the methods of an art are the common property of the
whole world, any author has the right to express the one, or explain and use the other, in
his own way.
- Idea may consist of scientific truths, or the methods of an art (description of how a task
can be performed)
- the Baker case concerned a book on double bookkeeping
o Had the sentences of the book been copied, there would be infringement
o BUT an independent description of the same system would not infringe
- Two different types of ideas have been differentiated in Plix Products v Frank Winstone
o the general idea or basic concept of a work
o the more specific idea which gives the work individuality
o For example an artist might have a basic concept of a painting of a gum tree by a river bank and
may execute this idea. This does not mean that another person will infringe if he or she too paints
a gum tree by a river bank. But the first artist will also perhaps have painted rocks on the bank,
reflections in the water and will have given the tree a particular position and configuration. These
were also ideas in a sense but they formed the expression of the basic idea and, if copied, could
lead to an action for infringement.
o Plix case pointed out that if a person wants to be able to take advantage of the copyright law to
protect his or her work, the expression of the basic idea should be as complex and distinctive as
possible.
- Per LINDGREN J in Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999)
o ‘It would be possible to conceive of ‘ideas’ or ‘concepts’ in such a way as to increase or reduce
the scope of copyright protection of project home drawings. If the idea of a project home
permitted to be taken were no more detailed than ‘a four bedroom project home to fit on a 15
metre wide block and to sell in a low price range comprising a double-garage, kitchen, rumpus
room, dining room, family room, bathroom and laundry, with an en suite shower and ‘vanity
unit’ and a walk-in wardrobe associated with the main bedroom’, such matters as the shape, size,
location and interrelationship of rooms, and, of course, more detailed ones such as the provision
of a line of vision from the kitchen into other rooms, would all be matters of form protected by
copyright. On the other hand, the more of those matters that are included in the notion of ‘idea’
or ‘concept’, the less the copyright protection given’
- In Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937), was held that
there is no copyright in facts, that a written announcement that a man fell off a bus
cannot prevent other people from making the same announcement in writing, and that a
set of numbers and names posted up at a racecourse cannot justify copyright protection
for [now 70 years] after the death of the author
Copyright protects what has been reduced to material form (with one exception)
- copyright does not protect anything which has not been fixed in some material way
o exception to this rule is broadcasts, which are immaterial communications of
underlying subject matter
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- For everything else, while the copyright and the object in which the material has been
embodied are two different things, it is nevertheless necessary for that object to have
existed.
- e.g. Expression by means of sound alone, will not be enough to afford copyright
protection to what has been spoken or sung or played.
- literary, dramatic or musical works will not be considered to have been ‘made’ for the
purposes of copyright protection unless they have been reduced to writing or to some
other material form: s 22
o Material form includes, in relation to a work or an adaptation of a work, any form (whether
visible or not) of storage of the work or adaptation, or a substantial part of the work or
adaptation: s 10(1)
o To put material on a video tape, audio tape, piece of paper, computer disk etc. will be sufficient
to satisfy this requirement.
-Relatively easy to satisfy with technology, but has raised issues in Aboriginal
communities where cultural production is likely to take the form of unrecorded
storytelling or songs
Copyright protects material produced by an author/maker
- ‘Works’ must have an author

- ‘Subject matter other than works’ must have a maker (or publisher, depending on what
the subject matter is)
- Author, and how a person becomes author is not defined in the Ac, except in relation to
photographs, in which case it is the person who takes a photograph: s 10(1)
o Generally, the author is the person who has exercised some skill or labour or
intellectual effort in giving expression to the copyright subject matter
o See TOPIC 7 for maker
- It can sometimes be unclear who the author of a work is.
o A contest between the teller of a story in oral form and the person who writes the
story down tends to arise in situations where a journalist acts as a ghost writer for
another person.
Donoghue v Allied Newspapers [1938] CH 106

FACTS: a famous jockey – Steve Donoghue – told of his experiences to a journalist employed by a newspaper.
Donoghue wanted to claim copyright over the stories in order to control their publication. But could he?
This at any rate is clear beyond all question, that there is no copyright in an idea, or in ideas. A person may have a
brilliant idea for a story, or for a picture, or for a play, and one which appears to him to be original; but if he
communicates that idea to an author or an artist or a playwright, the production which is the result of the
communication of the idea to the author or the artist or the playwright is the copyright of the person who has
clothed the idea in form, whether by means of a picture, a play, or a book, and the owner of the idea has no rights
in that product.
On the other hand, and this I think is equally plain, if an author employs a shorthand writer to take down a story
which the author is composing, word for word, in shorthand, and the shorthand writer then transcribes it, and the
author has it published, the author is the owner of the copyright and not the shorthand writer. A mere amanuensis
does not, by taking down word for word the language of the author, become in any sense the owner of the
copyright. That is the property of the author.
If the idea, however original, is nothing more than an idea, and is not put into any form of words, or any form of
expression such as a picture, then there is no such thing as copyright at all. It is not until it is (if I may put it in that
way) reduced into writing or into some tangible form that there is any copyright, and the copyright exists in the
particular form of language in which, or in the case of a picture the particular form of the picture why which, the
information or the idea is conveyed to those who are intended to read it or to look at it.
In the present case, the ideas of all these stories, apart altogether from what one may call merely the
embellishments which were undoubtedly supplied wholly by Mr Felstead [the journalist] – the ideas of all these
stories, and in fact the stories themselves, were supplied by the plaintiff; but in my judgment, upon the evidence it
is plain that the particular form of language by which those stories were conveyed was the language of Mr Felstead
and not of the plaintiff. Although many of the stories were told in the form of dialogue, and to some extent Mr
Felstead no doubt tried to reproduce the story as it was told to him by the plaintiff, nevertheless the particular form
of language in which those adventures or stories was conveyed to the public was the language of Mr Felstead and
not the language of the plaintiff. …
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Copyright protects subject matter which is linked with the jurisdiction
The Qualified person
- Copyright protection will only be granted if the work for which it is claimed came into
being in a particular way
o For example copyright will subsist in published works if the author was a ‘qualified person’ at
the time the work was first published or, if the author has died before publication, where he or
she was a qualified person immediately before his or her death: s 32(2)(d) and (e).
o On the other hand copyright will subsist in published editions of works if the publisher of the
edition was a qualified person at the date of first publication of the edition: s 92(1)(b).
o Copyright will subsist in unpublished works if the author was a qualified person at the time the
work was made: s 32(1). Different rules apply for published and unpublished films etc.
- Under s 32(4) a qualified person is an Australian citizen or a person resident in
Australia, but it may include a body corporate in the case of certain types of product: s
84(b).
o See ss 32, 89, 90 and 92 for further
Publication
- whether a work is published or unpublished at a given time may be very significant in

terms of subsistence of copyright in it
- Section 29 defines publication
COPYRIGHT ACT 1968 - SECT 29

Publication
(1) Subject to this section, for the purposes of this Act:
(a) a literary, dramatic, musical or artistic work, or an edition of such a work,
shall be deemed to have been published if, but only if, reproductions of the
work or edition have been supplied (whether by sale or otherwise) to the
public;
(b) a cinematograph film shall be deemed to have been published if, but only if,
copies of the film have been sold, let on hire, or offered or exposed for sale or
hire, to the public; and
(c) a sound recording shall be deemed to have been published if, but only if,
records embodying the recording or a part of the recording have been
supplied (whether by sale or otherwise) to the public.
(2) In determining, for the purposes of paragraph (1)(a), whether reproductions of a
work or edition have been supplied to the public, section 14 does not apply.
(3) 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. *** SEE BELOW
(4) A publication that is merely colourable and is not intended to satisfy the
reasonable requirements of the public shall be disregarded for the purposes of
this Act except in so far as it may constitute an infringement of copyright or a
breach of a duty under Part IX.
(5) For the purposes of this Act, a publication in Australia or in any other country
shall not be treated as being other than the first publication by reason only of an
earlier publication elsewhere, if the two publications took place within a period of
not more than thirty days.
(6) In determining, for the purposes of any provision of this Act:
(a) whether a work or other subject-matter has been published;
(b) whether a publication of a work or other subject-matter was the first
publication of the work or other subject-matter; or
(c) whether a work or other subject-matter was published or otherwise dealt with
in the life-time of a person;
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any unauthorized publication or the doing of any other unauthorized act shall
be disregarded. (Emphasis added)
NB:
***- this will be determined by the court as a question of fact. Court will look at what the demand in a given place
was likely to be, and ask whether the intention of the person claiming copyright was to satisfy that demand. If so, it
does not matter if the number of copies supplied was insignificant, as long as the demand was also insignificant:
Francis Day, Hunter v Fieldman [1914]
WHAT KIND OF SUBJECT MATTER IS PROTECTED? – ORIGINAL WORKS
- The Act divides up protectable subject matter: ‘work’; ‘subject matter other than works’
o Only certain types of cultural production can be described as ‘works’ and other
types as ‘subject matter other than works’, and the type of protection granted will
depend on how the subject matter is classified.
- If subject matter fits into neither category, there will be no protection
Works
- ‘works’ includes literary, dramatic, artistic or musical works. Protection is available

whether the works are published or unpublished. (Categories derived from s 31)
Original

Original works in which copyright subsists
(1) Subject to this Act, copyright subsists in an original literary, dramatic, musical or artistic work that is
unpublished and of which the author:
(a) was a qualified person at the time when the work was made; or
(b) if the making of the work extended over a period--was a qualified person for a substantial part of
that period.
- The originality requirement is important from a policy prospective

o according to most thinking about copyright, the benefits of copyright protection should not be
given to those who have not earned them or those who are not benefiting society by their
production. If copyright is to be seen, for example, as an incentive for production, then
meaningful production has to be seen to have taken place. To encourage simple copying may be
seen as of no social value because nothing new is thereby produced.
- Originality is a quality which is very hard to establish in any absolute way
o Everybody recognises that just about all cultural products are influenced by
products which have preceded them.
o No book or painting could come into existence in its current form without the
thousands of books or paintings which have preceded it.
- In the case of a written work the author makes use not only of a language but also a set
of literary conventions which have been forged through the writing of many previous
works.
- For this reason the test for originality has been set very low by the courts
- Essentially the only requirement is that the immediate origin of the expression should
be the person claiming to be the author and that that expression should not be directly
copied from elsewhere
- To create an original work does not necessarily involve the use of new ideas
o Originality in the copyright context means the individuality of the way in which
the idea is expressed.
Original literary work
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- Covers any type of ‘document’ or material representation in which ideas are expressed
in the form of ‘words, figures, symbols or some other form of notation, and which is
capable of being comprehended by the human reader’
- a literary work can exist in the form of sounds embodied in an article: s 22(2)
o hence a speech recorded with audio equipment will be a literary work.
- literary works include tables and compilations expressed in words, figures and symbols
and a computer program or compilation of computer programs: s 10 (which gives the
only statutory non-exhaustive definition of the term)
- Two issues may arise here:
o Where the work is clearly literary; but its originality is unclear
o Where it is unclear if the work is worthy of being called ‘literary work’
University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601
Deals with whether or not copyright subsists in exam papers. Are they sufficiently original to sustain the protection
and are they literary works?
Work could be a literary work even if it has no pretentions to literary style – for example a list of registered bills of
sale, a list of foxhounds and hunting days, and trade catalogues…
‘In my view the words ‘literary work’ cover work which is expressed in print or writing, irrespective of the
question whether the quality or style is high. The word ‘literary’ seems to be used in a sense somewhat similar to
the use of the word ‘literature’ in political or electioneering literature and refers to written and printed matter’
For the work to be original literary work, not much was required:
‘Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and, in the case
of ‘literary work’, with the expression of thought in print or writing. The originality which is required relates to the
expression of the thought. But the Act does not require that the expression must be in an original or novel form, but
that the work must not be copied from another work – that it should originate from the author’.
IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 80 IPR 451
FRENCH CJ, CRENNAN and KEIFEL: endorsed the type of reasoning used in University Tutorial Press…
‘… Originality for [the purpose of copyright subsistence] requires that the literary work in question originated with
the author and that it was not merely copied from another work. It is the author or joint authors who bring into
existence the work protected by the Act. In that context, originality means that the creation (ie the production) of
the work required some independent intellectual effort, but neither literary merit nor novelty or inventiveness as
required in patent law.
There has been a long held assumption in copyright law that ‘authorship’ and ‘original work’ are correlatives; the
legislation does not impose double conditions.’
Names, titles and headlines
- Titles (i.e. to books) are not protected in their own right

o BUT they are protected to some extent as part of the larger book
- In some cases, they will not be protected:
o they may not be original
o they may not be literary works on the basis of not imparting information, instruction or pleasure,
or
o on the basis of not being sufficiently substantial pieces of cultural production
Exxon Corporation v Exxon Insurance Ltd [1982] 1 Ch 119

FACTS: Concerned a name which had been made up for use by a corporate group. The Exxon corporation wanted
to assert copyright in the word against an insurance company which was using it.
HELD: Considered not to be literary works on the basis of not imparting information, instruction or pleasure.
STEPHENSON LJ: said that, unless there was something in the Act to forbid it, he would see a literary work as
something intended to afford either information and instruction or pleasure in the form of literary enjoyment. He
was not convinced that the work Exxon did either of these.
- But, doubt has been cast on this reasoning in:
o Apple Computer v Computer Edge (1986) 65 ALR 33; and
o Kalamazoo (Australia) Pty Ltd v Compact Business Systems Pty Ltd (1985) 5
IPR 213
 Kalamazoo court favoured the idea that a name of the Exxon kind was
not sufficiently substantial to be classified as a literary work. It was said
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that this was ‘the true basis of the rejection of copyright for some works
that obviously fail to provide information, instruction or pleasure’
- Has been decided that headlines do not sustain copyright:
o Fairfax Media Publications v Reed International Books Australia [2010] FCA
 Headlines generally are, like titles, simply too insubstantial and too short to qualify for
copyright protection as literary works. The function of the headline is as a title to the
article as well as a brief statement of its subject, in a compressed form comparable in
length to a book title or the like. It is, generally, too trivial to be a literary work … even
if skill and labour has [sic] been expended on creation
 The headline and by-line is, as Reed says, meta-information about the work, not part of
the work, the work being the article. The need to identify a work by its name is a reason
for the exclusion of titles from copyright protection in the public interest. … If titles
were subject to copyright protection, conventional bibliographic references to an article
would infringe.
 This provides sound reasoning why names and titles should not…
Translations
- May seem unoriginal

- BUT, translation will be an original literary work on the basis of the skill, judgment, and
labour that has gone into the choice of words and sentence structures
- The Act classifies translations as an adaptation of a work: s 10(1)
o The owner of copyright in the original work retains exclusive rights in it and the translator will
therefore need to get permission to carry out the adaptation.
o However, whether or not the translator makes the translation in breach of the owner’s copyright,
he or she will be considered the author of the translation: Byrne v Statist Co [1914] 1 KB 622
Compilations
- compilation might take the form of

- a digital database; phone book; street directory; artwork created out of earlier artworks
o Compilations raise particular difficulties with regard to originality because many
of them derive, by definition, from other works
o Alternatively, they may be compilations of facts, as in the case of the telephone
book or street directory.
- As long as it can be demonstrated that the process leading to their creation has involved
a sufficient degree of original input by the compiler, they will not be denied protection.
o The type and nature of the input required is of some uncertainty
- In many cases it is stated that skill, judgment, concentration and analysis (i.e.
intellectual effort) are qualities which give rise to originality: Kalamazoo
o (In relation to business record-keeping systems) it was said: ‘...whilst I refuse to find that the
authors showed great skill, I do find that their preparation required a degree of concentration,
care, analysis, comparison, and a certain facility in using and adapting the altered forms to a
composite ‘one-write’ system… Looking at each system as expressed, there is sufficient
originality of expression, shape and content to comprise an original literary work.’
- In other cases, the element of labour is added to the intellectual elements of skill and
judgment: Ladbrokes (Football) Ltd v William Hill (Football) Ltd [1964]
o In fact, labour (‘industrious collection’) and investment alone have sometimes been thought
sufficient to give rise to copyright: Telstra Corporation Limited v Desktop Marketing Systems
Pty Ltd [2002] 55 IPR 1, but since the Ice TV case this is no longer true in Australia.
- The originality of such a compilation, while meaning that the compilation can enjoy the
normal copyright protection against infringement, does not protect the compilation from
an action brought on behalf of the owner of copyright in the works from which the
compilation is derived.
o As with translations, the fact that copyright subsists in the work will not prevent it from being an
infringing work under the relevant circumstances. Therefore, a person making a compilation
needs to seek authorisation from the owner of copyright in the original pieces before he or she
includes them.
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Original dramatic and musical works
Dramatic works
- a dramatic work includes a choreographic show or other dumb show and a scenario or
script for a cinematograph film, but does not include a cinematograph film as distinct
from the scenario or script for it: s 10(1)
Green v Broadcasting Corporation of New Zealand (1888) 16 IPR 1

‘The alternative formulation of the appellant’s claim relies upon the ‘dramatic format’ of ‘Opportunity Knocks’, by
which their Lordships understand is meant those characteristic features of the show which were repeated in each
performance. These features were, in addition to the title, the use of the catch phrases ‘For [name of the
competitor] Opportunity Knocks’, ‘This is your show, folks, and I do mean you’, and ‘Make up your mind time’,
the use of a device called a clapometer to measure audience reaction to competitors’ performances and the use of
sponsors to introduce competitors. It was this formulation which found favour with GALLEN J.
It is stretching the original use of the word ‘format’ a long way to use it metaphorically to describe the features of a
television series such as a talent, quiz or game show which is presented in a particular way, with repeated but
unconnected use of set phrases and with the aid of particular accessories. Alternative terms suggested in the course
of argument were ‘structure’ or ‘package’. This difficulty in finding an appropriate term to describe the nature of
the ‘work’ in which the copyright subsists reflects the difficulty of the concept that a number of allegedly
distinctive features of a television series can be isolated from the changing material presented in each separate
performance (the acts of the performers in the talent show, the questions and answers in the quiz show etc.) and
identified as an ‘original dramatic work’.
The protection which copyright gives creates a monopoly and ‘there must be certainty in the subject matter of such
monopoly in order to avoid injustice to the rest of the world’: Tate v Fullbrook [1908]…
The subject matter of the copyright claimed for the ‘dramatic format’ of ‘Opportunity Knocks’ is conspicuously
lacking in certainty. Moreover, it seems to their Lordships that a dramatic work must have sufficient unity to be
capable of performance and that the features claimed as constituting the ‘format’ of a television show, being
unrelated to each other except as accessories to be used in the presentation of some other dramatic or musical
performance, lack that essential characteristic.’
- Nine Films & Television Pty Ltd v Ninox Television Limited [2005] FCA 1404
o Action had been taken by a NZ company, Ninox, alleging that it co-owned copyright in the
format of a reality TV show concerned with house renovations. It alleged that the format
constituted a dramatic work and had been infringed by the makers of ‘The Block’. Although
Tamberlin J of the Australian Federal Court held that no infringement had taken place, he
appeared to accept without question that Ninox did co-own the ‘dramatic work’ copyright that it
was claiming. Even the defendants to this action (for perhaps obvious reasons) did not argue the
lack of a copyright in a series format.
- Seven Network (Operations) Ltd v Endemol Australia Pty Ltd [2015] FCA 800
o Seven claimed that it had copyright in dramatic works, including the format of ‘My Kitchen
Rules’. It claimed that Channel 9 had infringed its copyright in this format through the series
‘Hotplate’. Justice Nicholas did not accept that Seven had a ‘strong prima facie case’ but did not
dismiss the possibility that Seven might win at trial, if the case went to trial.
Musical works
- Not defined in the Act

- In order to be protected, must be reduced to material form, usually by way of musical
notation or recording
o Mere ‘improvisations’ of traditional music cannot be protected in this way
- Following case deals with musical arrangement
o An arrangement is a derivative work, an adaptation of an original piece.
- The relevant question at this point is not whether the adaptation is or is not an
infringement (it may or may not be) but whether it is sufficiently different from the
original to achieve its own originality and hence copyright protection…
CBS Records Australia Ltd v Gross (1989) 15 IPR 385

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FACTS: CBS Records Australia Ltd (CBS) sought declarations that certain threats made by the Guy that CBS had
infringed the copyright in an arrangement of a musical work of which he was the author were unjustified and
sought injunctions to prevent their repetition. In a cross-application brought against CBS and a vocalist, Collette
Roberts (Collette), Guy sought relief against the infringement of copyright which he alleged and in which he
claimed Collette participated. Guy also sought recompense for work which he claimed to have done for Collette
and of which he claimed Collette took advantage.
DAVIES JA:The case put on behalf of Guy is that the Trackdown version was an original work, though an
arrangement of the Ward version, that copyright subsisted therein, that Guy was the author of the work and the
owner of the copyright therein and that CBS had infringed the copyright by taking, copying and performing a
substantial part of that work. CBS denies that the Trackdown version is an original musical work in which
copyright subsists, denies that Guy is the author of any copyright therein and denies that it infringed any copyright
that might subsist in the Trackdown version.
I accept the view of Mr Williams that "the three pieces of composition are uniquely identifiable on account of their
different instrumental arrangements". The principal focus of the case is thus the fact that in the Trackdown version
and the CBS version Collette is the singer. She is a singer whose voice in its basic characteristics, its range and its
capacities, is different from that of Anita Ward. The vocal elements of the Trackdown version and the CBS version
are thus similar and markedly different from the vocal part of the Ward version.
For copyright in an arrangement to subsist, the differences from the work arranged must be such that a new original
work can be identified. Differences resulting from mere interpretation, particularly differences brought about by an
arrangement of a work to suit the qualities of a particular singer's voice, do not result in the creation of an original
work.
(Citing Interlego AG v Tyco Industries Inc [1989] )…To secure copyright for this product it is necessary that
labour, skill and capital should be expended sufficiently to impart to the product some quality or character which
the raw material did not possess, and which differentiates the product from the raw material.'
What is the precise amount of the knowledge, labour, judgment or literary skill or taste…cannot be defined in
precise terms. In every case it must depend largely on the special facts of that case, and must in each case be very
much a question of degree.
My impression is that the Trackdown version, if considered in its entirety, is the product of sufficient original skill
and creative labour to sustain copyright. It is not just a copy of the Ward version. Independent judgment was
applied to its creation. Original composition was required for the development of the instrumental backing so as to
reflect principal elements of the Ward version yet to match the backing with Collette's style of singing. Were the
Trackdown version to be faithfully copied or imitated by other performers, I would find it difficult to say that an
original work was not infringed.
…counsel for CBS, submitted that, if there were copyright in the Trackdown version, copyright in the instrumental
backing resided in Guy and copyright in the vocal part resided in Collette. But the work ought not to be divided in
this way. The work was a song having vocal lines and an instrumental backing. There were not two pieces of
music. The vocal and instrumental parts were elements which combined together to form a single work.
Original artistic works
- Artistic works are exhaustively defined in s 10(1) of the Act

‘artistic work’ means:
(a) a painting, sculpture, drawing, engraving or photograph, whether the work is
of artistic quality or not;
(b) a building or a model of a building, whether the building or model is of
artistic quality or not; or
(c) a work of artistic craftsmanship to which neither of the last two preceding
paragraphs applies;
but does not include a circuit layout within the meaning of the Circuit Layouts
Act 1989. (Emphasis added)
- the artistic quality of the work is irrelevant to the rights given under copyright law
unless it is a work of artistic craftsmanship
- A sculpture includes a cast or model made for purposes of sculpture; a drawing
includes a diagram, map, chart or plan; an engraving includes an etching, lithograph,
product of photogravure, wood-cut, print or similar work, not being a photograph; a
photograph means a product of photography or of a process similar to photography,
other than an article or thing in which visual images forming part of a cinematograph
film have been embodied, and includes a product of xerography; and a building
includes a structure of any kind: s 10
- Issues to be answered are again:
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o whether the work has sufficient originality to qualify for protection

o whether it is of a type which will fit within one of the categories given by the Act
Original paintings
- Australian Chinese Newspapers Pty Ltd v Melbourne Chinese Press Pty Ltd [2003] FCA
878] the use of a Chinese brush pen on traditional Chinese rice paper was considered to
bring into being a `painting'
Original structure
Lucasfilm v Ainsworth [2008] EWHC 1878 (Ch)

ISSUE: Are the helmets and other reproductions sculptures ...?
Wright J (in Britain v Hanks (1902)) held that the first question was whether the toy representation was "an artistic
thing – an artistic production within the meaning of the [1814 Act]".
"It is tolerably certain that some toys would not fall within the protection of the Act; and the question
whether this soldier's or mounted yeoman's figure comes within it must be decided upon evidence as to its
artistic character.”
…The other is an artistic character. This is probably a slightly different quality. It is something which elevated it
above being a mere toy. The distinguishing feature is probably that it had a purpose in that (if you liked that sort of
thing, which is an artistic merit point) then one could be content just looking at it.
Davison CJ (in Wham-O Manufacturing Co v Lincoln Industries Ltd [1985])
sets out various dictionary definitions [of ‘sculpture’] and stated as follows:
"The Shorter Oxford English Dictionary defines 'sculpture' as:
'Originally the process or art of carving or engraving a hard material so as to produce designs or figures in relief, or
in intaglio, or in the round. In modern use, that branch of fine art which is concerned with producing figures in the
round or in relief, either by carving, by fashioning some plastic substance, or by making a mould for casting in
metal.'
Although that definition refers to sculpture as a branch of fine art, for the purposes of copyright, sculpture is
classed as an artistic work, 'irrespective of artistic quality.'
From those (discussed in the judgment) authorities, and those approaches, a number of guidance factors can be
extracted…
(i) Some regard has to be had to the normal use of the word.
(ii) Nevertheless, the concept can be applicable to things going beyond what one would normally expect to be art in
the sense of the sort of things that one would expect to find in art galleries.
(iii) It is inappropriate to stray too far from what would normally be regarded as sculpture. (iv) No judgment is to
be made about artistic worth.
(v) Not every three dimensional representation of a concept can be regarded as a sculpture. Otherwise every three
dimensional construction or fabrication would be a sculpture, and that cannot be right.
(vi) It is of the essence of a sculpture that it should have, as part of its purpose, a visual appeal in the sense that it
might be enjoyed for that purpose alone, whether or not it might have another purpose as well. The purpose is that
of the creator. This reflects the reference to "artist's hand" in the judgment of Laddie J in Metix, with which I
respectfully agree. An artist (in the realm of the visual arts) creates something because it has visual appeal which
he wishes to be enjoyed as such. He may fail, but that does not matter (no judgments are to be made about artistic
merit). It is the underlying purpose that is important. I think that this encapsulates the ideas set out in the reference
works referred to in Wham-O and set out above (and in particular the Encyclopaedia Britannica).
(vii) The fact that the object has some other use does not necessarily disqualify it from being a sculpture, but it still
has to have the intrinsic quality of being intended to be enjoyed as a visual thing. Thus the model soldier in Britain
might be played with, but it still, apparently, had strong purely visual appeal which might be enjoyed as such… It
explains why the Frisbee itself should be excluded from the category, along with the moulds in Metix and Davis. It
would also exclude the wooden model in Wham-O and the plaster casts in Breville, and I would respectfully
disagree with the conclusions reached by the judges in those cases that those things were sculptures. …
(viii) I support this analysis with an example. A pile of bricks, temporarily on display at the Tate Modern for 2
weeks, is plainly capable of being a sculpture. The identical pile of bricks dumped at the end of my driveway for 2
weeks preparatory to a building project is equally plainly not. One asks why there is that difference, and the answer
lies, in my view, in having regard to its purpose. One is created by the hand of an artist, for artistic purposes, and
the other is created by a builder, for building purposes. …
(ix) The process of fabrication is relevant but not determinative. I do not see why a purely functional item, not
intended to be at all decorative, should be treated as a sculpture simply because it is (for example) carved out of
wood or stone.
Those factors are guidelines, not rigid requirements.
HELD: The purpose of construction of each of the items was largely utilitarian, rather than visually motivated.
Although appearance was important, ‘it was not conceived, or created, with the intention that it should do so other
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than as part of character portrayal in the film’
Original engravings
- Normally engraving would be done for decorative purposes.

- In the Wham-O case mentioned in the above decision there was a rotating piece of metal
on a lathe. A tool was used to cut into it and shape it to produce a mould out of which
frisbees could be made.
o The New Zealand court found that this process was capable of being defined as engraving and
the frisbees were then engravings or prints. It is not at all certain that the same outcome would be
achieved in Australia since a frisbee is a long way removed from conventional concepts of
engraving
Original drawings
- Drawings include diagrams, maps, charts and plans: s 10(1).

- A ‘drawing’ has been described in Australia as ‘a two-dimensional work in which
shapes and images are depicted by lines, often without colouring’:
o Per HEEREY J in Woodtree Pty Ltd v Zheng (2007)
- In Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd [2008]:
o a drawing does not necessarily represent something that exists or is to exist in the real world.
There can be a drawing in the form of a pattern, using shapes, colours and other elements in
order to give pleasure, or simply … to attract attention and to convey a visual impression – a
certain ‘look and feel’ … [T]he object represented by the pictorial line may be a shape, form or
pattern that is not a recognisable image, and may be in an abstract style.
- Words can form part of a drawing and thus artistic work: Elwood Clothing
Photographs
- the author of the photograph is the person who took the photograph: s 10
o copyright will, under most circumstances, initially belong to that person
- ‘Photograph’ is defined as ‘a product of photography or of a process similar to
photography’: s 10
o the definition of photograph does not include an article in which visual images
forming part of a cinematograph film have been filmed (i.e. a frame of a video)
Original buildings and models of buildings
- Defined to include a ‘structure of any kind’ and it is of no importance whether the

building or model of a building is of artistic quality or not: s 10(1).
- A half-sized tennis court made of a concrete slab with special marking on it and with net
posts set into it was considered to be an artistic work.
o Half-Court Tennis Pty Ltd v Seymour (1980)
- It has also been held that a garden, consisting of a layout including steps, walls, ponds
and other structures in stone, was capable of protection as a building or structure.
o Whether it is original or not will depend on the usual tests of skill and labour
exercised by the author.
Darwin Fibreglass Pty Ltd v Kruhse Enterprises Pty Ltd 41 IPR 649
FACTS: case concerned moulded fibreglass swimming pools. First of all a negative cast or mould was made from
a positive shape of a swimming pool (the ‘plug’). Then a new swimming pool was made from the mould.
MILDREN J: Regarding the words ‘structure of any kind’, the correct approach to interpreting its meaning is to
have regard to the object and purposes of the Act as a whole, the context within the Act in which it is used, and the
history of the legislation.
Rejected the notion that a caravan, for example, could be a building within the meaning in the Act.
‘I think that the word ‘structure’ implies something which is of some substance, and is usually erected upon or
constructed upon or in the ground with an element of permanence, although it need not be a fixture, so that prima
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facie, a prefabricated building which is designed to be removed may be a structure, and may still remain a structure
even though it is in the process of being removed or is left temporarily unattached to the soil.’
‘I think the word ‘model’ has two relevant primary meanings. First, it obviously includes a representation of some
structure already built or to be built showing its proportions, shape, design and the arrangement of its parts. In this
sense, the model is demonstrative only of what is made or intended to be made. Secondly, it may include a three-
dimensional image which is a copy of an object or which is to be copied to male the actual object itself, and so
would include a mould.’
HELD: both the plug and the mould could indeed be considered ‘models of a building’ on the basis of the second
definition above.
Works of artistic craftsmanship
- Products of the combination of artistry and craftsmanship, such as carefully crafted

pieces of furniture
- It would be expected that the object in question to be a utilitarian or functional object
- Unlike other artistic works they do require a component of artistic taste and craftsman-
like skill to go into their production.
Burge v Swarbrick (2007) 234 ALR 204

FACTS: the question arose of whether the hull of a yacht could be considered a work of artistic craftsmanship. The case
came to the High Court, where two components in the boat’s production were looked at. The Court discussed the plug, ie the
negative shape of the moulded hull, and it also discussed the hull itself.
Gleeson CJ, Gummow, Kirby, Heydon and Crennan JJ.
“’craftsmanship' in the statutory phrase cannot be limited to handicraft; nor is the word 'artistic' incompatible with
machine production: see Britain v Hanks Brothers and Co."
‘…coming to terms with machine production involves acceptance that a prototype such as the Plug may qualify as
"a work of artistic craftsmanship" even though it was to serve the purpose of reproduction and then be discarded.’
‘…whilst not denying an enduring distinction between fine arts and useful or applied arts, in dealing with artistic
craftsmanship there is no antithesis between utility and beauty, between function and art.’
(Citing SIMON L in Hensher): “A work of craftsmanship, even though it cannot be confined to handicraft, at least
presupposes special training, skill and knowledge for its production ... 'Craftsmanship', particularly when
considered in its historical context, implies a manifestation of pride in sound workmanship - a rejection of the
shoddy, the meretricious, the facile.”
“The primary judge considered "craftsmanship" and "aesthetic appeal" as distinct and consecutive questions, before
going on and "considering both aspects together". This was an error in the construction and application of the
Copyright Act and requires re-examination of what transpired at the trial”
WHAT KINDS OF SUBJECT MATTER ARE PROTECTED? – SUBJECT MATTER

OTHER THAN WORKS
- The Act does not expressly require that subject matter other than works be original
- This subject matter is covered by ss 89-92 of the Act.
- It consists of sound recordings, cinematograph films, television and sound broadcasts
and published editions of works.
- In all of these cases the subject matter must be connected with the jurisdiction in the
requisite way.
- Nature of the copyright is described in ss 85 – 88
Sound recordings
- A sound recording is defined as the aggregate of sounds embodied in a record: s 10(1)

- A record is defined as including a disc, tape, paper, electronic file or other device in
which sounds are embodied
Cinematograph films
- Per s 10 definitions:
"cinematograph film " means the aggregate of the visual images embodied in an article or thing so as to be
capable by the use of that article or thing:
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(a) of being shown as a moving picture; or

(b) of being embodied in another article or thing by the use of which it can be so shown;
and includes the aggregate of the sounds embodied in a sound - track associated with such visual images.
- Like a sound recording the film will sustain its own copyright even while other
copyrights subsist in its component parts, for example the screenplay or the theme
music, which may be owned by other people
- Note that the soundtrack is part of the film so that reproduction of a soundtrack may
potentially infringe copyright in the ‘cinematograph film’ itself.
o Soundtrack is not classified as a sound recording
Galaxy Electronics Pty Ltd v Sega Enterprises Ltd (1997) 37 IPR 462
FACTS: In computer games, The images are, of course, generated by a computer program and do not exist in a
visual form until they are shown on the screen.
ISSUE: Does such a contrivance, then, come within the definition of a cinematograph film in s 10(1)? Is there an
‘aggregate of visual images embodied in an article or thing’ given that there is no celluloid image involved? The
case turned on the concept of ‘embodied’.
HELD: The appeal court considered that the word ‘embodied’ referred to ‘the giving of a material or discernible
form to an abstract principle or concept’. Furthermore, the abstraction had to exist prior to the material
manifestation.
Case was decided on the grounds that:
‘the visual images depicted in these video games did exist before the game was played. They existed in the minds
of their creators and the drawings and models they made. The images were embodied in the computer program
built into the video game machine so as to be capable, by the use of that program, of being shown as a moving
picture. It does not matter that they were embodied in a different form; that is, three-dimension vertices of the
polygon model, rather than a two-dimensional image. The statutory definition says nothing about the form of
embodiment. Nor does it matter that the images seen by players are created by computer calculations only
immediately before their appearance on the screen of the video game machine. Although that means, in a sense,
that they are new, they are exact recreations of images previously devised by the graphic designers’
Sound and television broadcasts
- a television broadcast is defined as

o ‘visual images broadcast by way of television, together with any sounds broadcast for reception
along with those images’ and it defines a sound broadcast as ‘sound broadcast otherwise than as
part of a television broadcast’: s 10
- A broadcast is defined as ‘a communication to the public delivered by a broadcasting
service within the meaning of the Broadcasting Services Act 1992.’
- Under s 10:
o communicate means 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
- The term ‘broadcasting service’ covers services delivering radio and television
programmes to the public using ‘the radiofrequency spectrum, cable, optical fibre or
satellite or any other means or a combination of those means’.
o s 6(1) Broadcasting Act 1992
o Thus cable and satellite television are covered
- Broadcasting service does not include:
(a) a service (including a teletext service) that provides only data or only text (with or without
associated images); or
(b) a service that makes programs available on demand on a point-to-point basis, including a dial-up
service.
- To the public’ is defined in the Copyright Act 1968 as the public within or outside
Australia. This means that the Australian owner of copyright in the broadcast will be
able to take action if the material is communicated to overseas viewers
- In Telstra Corporation Ltd v Australasian Performing Right Assoc. Ltd (1997):
o ‘… the use of the words ‘to the public’ … makes clear that the place where the relevant
communication occurs is irrelevant. That is to say, there can be a communication to individual
members of the public in a private or domestic setting which is nevertheless a communication to
the public. A broadcast by a radio station is just such a communication. … the fact that at any
one time the number of persons to whom the transmission is made may be small does not mean
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that the transmission is not to the public. Nor does it matter that those persons in a position to
receive the transmission form only a part of the public, though it is no doubt necessary that the
facility be available to those members of the public who choose to avail themselves of it. …What
is important is the nature of the audience … where a work is performed in a commercial setting,
the occasion is unlikely to be private or domestic and the audience is more appropriately to be
seen as a section of the public’
- In TCN Channel Nine v Network Ten, the nature of a broadcast was discussed:
o There can be no absolute precision as to what in any of an infinite possibility of circumstances
will constitute ‘a television broadcast’. However, the programmes which Nine identified in pars
5.1-5.11 of its pleading as the Nine Programs, … answer that description. These broadcasts were
put out to the public, the object of the activity of broadcasting, as discrete periods of broadcasting
identified and promoted by a title, such as The Today Show, Nightline, Wide World of Sports, and
the like, which would attract the attention of the public.
Published editions of works
- Protection given to published editions of works does not extend to the words or images
which make them up.
- Copyright in the text and illustrations, these being literary or artistic works, will belong
first of all to their authors
- Copyright in the published edition will normally belong to the publisher and will cover
such things as layout and design of the edition.
o This small but important category of subject matter other than works has given
rise to some recent quite significant litigation.
- In Nationwide News Pty Ltd v Copyright Agency Ltd (1996):
o copyright in published editions of works was described as protection of ‘presentation embodied
in the edition’ and was said, with regard to newspapers, to include ‘juxtaposition of text and
photographs and use of headlines’.
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TOPIC 6
COPYRIGHT B: RIGHTS AND INFRINGEMENT
WHAT EXCLUSIVE RIGHTS ARE GIVEN BY COPYRIGHT? – HOW CAN THEY BE
INFRINGED
Works

Nature of copyright in original works
(1) For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a
work, is the exclusive right:
(a) in the case of a literary, dramatic or musical work, to do all or any of the following
acts:
(i) to reproduce the work in a material form;
(ii) to publish the work;
(iii) to perform the work in public;
(iv) to communicate the work to the public;
(vi) to make an adaptation of the work;
(vii) to do, in relation to a work that is an adaptation of the first-mentioned work, any
of the acts specified in relation to the first-mentioned work in subparagraphs (i) to (iv), inclusive; and
(b) in the case of an artistic work, to do all or any of the following acts:
(i) to reproduce the work in a material form;
(ii) to publish the work;
(iii) to communicate the work to the public; and
(c) in the case of a literary work (other than a computer program) or a musical or dramatic
work, to enter into a commercial rental arrangement in respect of the work reproduced in a sound
recording; and
(d) in the case of a computer program, to enter into a commercial rental arrangement in
respect of the program.
- See for performance (s 27), publication (s 29)

Interpretation
(1) In this Act, unless the contrary intention appears:
…
“ adaptation " means:
(a) in relation to a literary work in a non - dramatic form a version of the work (whether in its original
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language or in a different language) in a dramatic form;

(b) in relation to a literary work in a dramatic form a version of the work (whether in its original
language or in a different language) in a non - dramatic form;
(ba) in relation to a literary work being a computer program--a version of the work (whether or not in
the language, code or notation in which the work was originally expressed) not being a reproduction of the work;
(c) in relation to a literary work (whether in a non - dramatic form or in a dramatic form):
(i) a translation of the work; or
(ii) a version of the work in which a story or action is conveyed solely or principally by means
of pictures; and
(d) in relation to a musical work--an arrangement or transcription of the work.
- Section 21 importantly deems certain acts to be reproductions in addition to other types

of common reproductions
Subject matter other than works
- Ownership of © in subject other than works gives rise to a different set of exclusive
rights
o See ss 85 – 88 of the Act
- Copyright in a sound recording gives the exclusive right to make a copy of it, to cause the recording to be
heard in public, to communicate the recording to the public and to enter into a commercial rental
arrangement in respect of the recording: s 85.
- Copyright in a film gives the exclusive right to make a copy of the film, to cause the film, in so far as it
consists of visual images, to be seen in public, or, in so far as it consists of sounds, to be heard in public,
to broadcast the film and to communicate the film to the public: s 86
- Copyright in television broadcasts gives the exclusive right, so far as the broadcast consists of visual
images, to make a film of the broadcast or a copy of such a film, and, so far as it consists of sounds, to
make a sound recording of the broadcast or a copy of such a recording and also to rebroadcast the
broadcast or communicate it to the public otherwise than by broadcasting. Copyright in sound broadcasts
gives the exclusive right to make a sound recording of the broadcast or a copy of such a recording and to
rebroadcast the broadcast or communicate it to the public otherwise than by broadcasting: s 87
- Copyright in published editions of literary, dramatic, musical or artistic or works (or combinations of
these) gives the exclusive right to make a facsimile copy of the edition: s 88
How infringement happens
- The above are exclusive rights given to copyright owner

o These actions are those which another person may not take without the
permission of the copyright owner (and usually payment of a fee)
- Thus, the above rights are a description of how copyright may be infringed.
- With respect to works (only), s 36(1) states:
o Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a
person who, not being the owner of the copyright, and without the licence of the owner of the
copyright, does in Australia, or authorises the doing in Australia of, any act comprised in the
copyright.
- S 101 establishes infringement in cases of subject matter other than works
DIRECT INFRINGEMENT – THE SUBSTANTIAL PART REQUIREMENT
- Infringing actions need not be to the entire copyrighted material

- AS long as a substantial part of the material is used by the unauthorised person,
infringement will have occurred: s 14
- ‘Substantial part’ is not further defined in the legislation, thus see below case law
o Not a term of quantitative measurement, but rather qualitative
o How much material is taken is of secondary importance to the nature of what is
taken and its importance to the copyright interest
- Following case has to do with 20 seconds of music in a newsreel:
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Hawkes & Son (London) Ltd v Paramount Films Service Ltd [1934] 1 Ch 593
‘It is quite plain from what Lindley LJ said in Hanfstaengl v Empire Palace [1894] 3 Ch 109 at 128 that we have to consider
the statute upon broad lines; to bear in mind the necessity for the protection of authors whether of musical or of literary
compositions. The Acts have to be construed with reference to that purpose, and they are not to be made the
instruments of oppression and extortion. On the other hand, as the learned Lord Justice says, ‘the intention of an infringer
is immaterial’, and as Slesser LJ has pointed out, Parker J said in Weatherby & Sons v International Horse Agency and
Exchange Ltd [1910] 2 Ch 297 at 305 that the right of the owner of a copyright is not determined or measured by the
amount of actual damage to him by reason of the infringement; copyright is a right of property, and he is entitled to come to
the Court for the protection of that property, even though he does not show or prove actual damage.’
‘…it is said, first, that there is no substantial part of this musical work taken, and that the cases show that we must look into
the question of the degree and what was the nature of the reproduction. In one case to which Lindley LJ refers, he points out
that in that case a worsted work copy of an engraving was held not to be an infringement of the copyright therein. On the
other hand, photographs of pictures have been held to infringe the copyright, although there is a vast difference between a
photographic reproduction and the picture itself. Therefore, when one deals with the word ‘substantial’, it is quite right to
consider whether or not the amount of the musical march that is taken is so slender that it would be impossible to recognise
it.’
‘In order that we might give the defendants every chance, we decided to go and see this film reproduced, and we have done
so this morning, and it appeared plain to us that there is an amount taken which would be recognized by any person…’
‘Having considered and heard this film, I am quite satisfied that the quantum that is taken is substantial, and although it
might be difficult, and although it may be uncertain whether it will be ever used again, we must not neglect the evidence
that a substantial part of the musical copyright could be reproduced apart from the actual picture film…’
SLESSER LJ: ‘I agree with my Lord that this reproduction is clearly a substantial part of ‘Colonel Bogey’, looked at from
any point of view, whether it be quantity, quality, or occasion.’
‘As is pointed out by Sir W Page Wood V-C in Scott v Stanford LR 3 EQ 718 at 723: ‘If , in effect, the great bulk
of the plaintiff’s publication – a large and vital portion of his work and labour – has been appropriated and
published in a form which will materially injure his copyright, mere honest intention on the part of the
appropriator will not suffice, as the Court can only look at the result, and not at the intention in the man’s
mind at the time of doing the act complained of, and he must be presumed to intend all that the publication of his
work effects.’
The role of originality in determining substantial part
- Australian Courts have given great attention to the nature of what has been copied with
considering whether a qualitatively substantial part has been taken
o Specifically, is it original?
 If yes, it is clearly a substantial part of what the author has published
- Originality is particularly relevant in cases of a compilation or similar…
IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 80 IPR 451
FACTS: Two weeks before broadcast, Nine selects programmes from its database for broadcast at the later time.
These shows are then communicated to Aggregators, who produce TV guides with various stations displayed.
IceTV is an online, subscription-based TV Guide service. It is not a broadcaster. When preparing information to be
displayed on their IceGuide for the next day, IceTV employees included in the previous day’s schedule, and
compared to the published Aggregate Guides, and corrected any mistakes in time or title. Could Nine obtain relief
for copyright infringement arising from the reproduction of individual items of information, part of the time and
title information, in respect of various programmes contained in the Weekly Schedules. If this question is answered
affirmatively, this would effectively restrain IceTV from selling its products in the derivative or secondary market
of weekly television guides without authorisation or license from Nine.
ISSUE: (Inter alia) Had Ice TV reproduced substantial part of the weekly Schedules?
FRENCH CJ, CRENNAN and KIEFEL JJ. ‘A Weekly Schedule (and the Nine Database) contains both
‘information’ and ‘creative’ material. ... In terms of the distinction between information and creative material, the
time and title information is information about Nine's intended future conduct. It is, however, contained within a
whole, a collocation (ie the Weekly Schedule or the Nine Database), which also contains creative material such as
the synopses of programmes to be broadcast.
In Ladbroke (Football) Ltd v William Hill (Football) Ltd (‘Ladbroke’), Lord Pearce spoke of the situation where
reproduction of an unoriginal part of an original whole will not be an infringement when he said:
’ The reproduction of a part which by itself has no originality will not normally be a substantial part of the
copyright and therefore will not be protected. For that which would not attract copyright except by reason of its
collocation will, when robbed of that collocation, not be a substantial part of the copyright and therefore the courts
will not hold its reproduction to be an infringement.
This means that where the part reproduced did not originate with the author, so that the author would not have
copyright in the part standing alone, the part reproduced will not be a substantial part. Here, however, the
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predetermination of future broadcasts was done by employees of Nine, at least some of whom may be the authors
of the works in suit. For that reason, it cannot be said that the part reproduced did not originate with the author or
authors of the works in suit.
However, the fact that a part reproduced originates from the author (as here) does not, of itself, mean that it is
necessarily a substantial part of the whole work. Originality in the context of infringement has a broader aspect.
The Weekly Schedule (and the Nine Database) as a whole involves orderly arrangement of its various elements and
the evidence showed choices were made about what programmes were included or excluded. As a whole, it is an
original (ie not copied) collocation of both information and creative material.
However, the expression of the time and title information, in respect of each programme, is not a form of
expression which requires particular mental effort or exertion. The way in which the information can be conveyed
is very limited. Expressing a title of a programme to be broadcast merely requires knowledge of the title, generally
bestowed by the producer of the programme rather than by a broadcaster of it. Expressing the time at which a
programme is broadcast, for public consumption, can only practically be done in words or figures relating to a 12
or 24- hour time cycle for a day. The authors of the Weekly Schedule (or the Nine Database) had little, if any,
choice in the particular form of expression adopted, as that expression was essentially dictated by the nature of the
information.
Rewarding skill and labour in respect of compilations without any real consideration of the productive effort
directed to coming up with a particular form of expression of information can lead to error. The error is of a kind
which might enable copyright law to be employed to achieve anti-competitive behaviour of a sort not contemplated
by the balance struck in the Act between the rights of authors and the entitlements of the reading public.
A critical question is the degree of originality of the particular form of expression of the part. Consideration of the
skill and labour expended by the author of a work may assist in addressing that question: that the creation of a
work required skill and labour may indicate that the particular form of expression adopted was highly original.
However, focussing on the ‘appropriation’ of the author's skill and labour must not be allowed to distract from the
inquiry mandated by the Act.
The level of skill and labour required to express the time and title information was minimal. That is not surprising,
given that, as explained above, the particular form of expression of the time and title information is essentially
dictated by the nature of that information.
HELD: Any reproduction of the time and title information in the IceGuide was not a reproduction of a substantial
part of any of the Weekly Schedules (or the Nine Database).
Dissection
- Courts have held against the excuse of defendant’s claiming they “only took five
unoriginal parts, so I don’t infringe”.
- It must be asked copyright subsists in the work considered as a whole
o If yes, then ask was a substantial part reproduced by the defendant?
- See Ladbroke v William Hill [1964] 1 WLR 273, 277.
- It is quite possible that a defendant might infringe by taking a selection of pieces which
are all unoriginal in themselves.
o This would occur where the protected originality resides in the arrangement of
those pieces within the text as a whole
SUBSTANTIALITY IN SUBJECT MATTER OTHER THAN WORKS
- Substantiality principles are the same for works or something other than works.
o Factors for consideration may change though!
- Thus, must not use SMOTW judgements to discuss substantiality re. works.
Published editions
- Published edition copyright must not be confused with copyright in the text which has
been published
o possible that these two copyrights will belong to different parties
o infringement of one may simultaneously be an infringement of the other, but for
different reasons.
Nationwide News Pty Ltd v Copyright Agency Ltd (1996) 34 IPR 53
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FACTS: photocopies take from a newspaper and magazine which came with the newspaper. Issue was whether the
published edition was the magazine, or the newspaper plus the magazine together.
It was considered important here to assess the quality of what had been taken by reference to the interest protected
by the copyright. This interest was in protecting the presentation and the layout of the material. To assess the
quality of what had been taken the following factors were taken into account: the nature and objects of the
selection made, the quantity and value of the materials used and the degree to which the use could prejudice the
sale, or diminish the profits or supersede the objects of the original work. Thus the concept of quality is extended
here to cover the financial importance of the material copied in the context of the relevant fact situation.
SACKVILLE J: The distinction between copyright in a "work" and in the "published edition" of a work is
important to an understanding of the issues in this case. The Act defines "work" to mean "a literary, dramatic,
musical or artistic work": s 10(1)…
One of the questions in the present case is how the test of substantiality should be applied to a claimed
infringement of published edition copyright, as opposed to an infringement of copyright in a work.
Section 35 of the Act deals with ownership of copyright in original works. Subject to this section and to presently
irrelevant exceptions, the author of a literary, dramatic, musical or artistic work is the owner of any copyright
subsisting in the work: s 35(2). Section 35(4) provides as follows:
(4) Where a literary, dramatic or artistic work is made by the author in pursuance of the terms of his or her
employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or
apprenticeship and is so made for the purpose of publication in a newspaper, magazine or similar periodical, the
proprietor is the owner of any copyright subsisting in the work by virtue of this Part in so far as the copyright
relates to:
(a) publication of the work in any newspaper, magazine or similar periodical; (b) broadcasting the work; or
(c) reproduction of the work for the purpose of its being so published or broadcast, but not otherwise.
Thus a journalist who writes an article is entitled to any remuneration flowing from the reproduction of the article,
whether under the statutory scheme created by Pt VB of the Act (to which I shall refer shortly), or under voluntary
licensing arrangements. This conclusion accords with the view expressed by Beaumont J in De Garis v Neville
Jeffress Pidler Pty Ltd (1990) 37 FCR 99 at 114;18 IPR 292.
Part IV of the Act deals with "Copyright in Subject-Matter other than Works". Section 88 provides for the nature of
copyright in published editions of works.
88. For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a published edition
of a literary, dramatic, musical or artistic work or of two or more literary, dramatic, musical or artistic works, is the
exclusive right to make, by a means that includes a photographic process, a reproduction of the edition.
As the trial judge pointed out, the allegation that CAL infringed published edition copyright required an
examination of the circumstances in which each article was copied and a determination of whether the
particular reproduction was sufficiently substantial to constitute an infringement.
Three general points should be made in relation to the question of substantiality. The first is that care should be
taken in relying on passages in judgments without close reference to the facts of the particular case...
Secondly, the "rough practical test" formulated in University of London v University Tutorial Press was put
forward in a context where the court was considering whether examination questions could be regarded as an
"original literary work" and therefore the subject of copyright. The test was cited with approval in ; Ladbroke v
William Hill, in the course of deciding that a substantial part of the plaintiff's football coupon had been copied. But
the test has a certain "bootstraps" quality about it. The issue of substantiality, in relation to a literary work, arises
only where the work has been reproduced or published, at least in part. If applied literally, the test would mean that
all cases of copying would be characterised as reproducing a substantial part of the work. It is therefore unlikely to
be of great assistance in determining whether a particular reproduction involves a substantial part of a work or
subject matter of copyright.
Thirdly, virtually all the authorities that have considered the question of substantiality have done so in relation to
copyright in works. The only case in which substantiality has been raised in relation to published edition copyright
appears to be Machinery Market Ltd v Sheen, an ex tempore judgment, in which the question was not considered in
depth. The cases concerned with substantiality in relation to works cannot necessarily be applied uncritically to
allegations of infringement of published edition copyright.
It has been said that the phrase "substantial part" as used in s 14(1) of the Act refers to the quality of what is taken,
rather than the quantity: Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 at 305; 25 IPR 33 at 37, per Mason
CJ. It has also been said that the reproduction of a part of a work which has no originality will not normally be a
substantial part of the copyright and therefore will not be protected: ; Ladbroke (Football) Ltd v William Hill
(Football) Ltd, at 481, per Lord Pearce.
The general principle of copyright law is that copyright does not extend to ideas, but only to the expression of
those ideas. But in the case of a published edition copyright, what is protected is not a particular collocation of
words or musical notes, or a photographic representation. Published edition copyright protects the presentation
embodied in the edition. This form of copyright, as the legislative history shows, protects such matters as
typographical layout. However, it also protects other aspects of presentation, such as juxtaposition of text and
photographs and use of headlines. In the present case, a considerable volume of evidence was adduced on the
importance of layout and presentation to magazines and newspapers.
The evidence in this case does not suggest that the object of copying either article was to take advantage of the
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layout or presentation of The Australian (in the one case) or The Australian Magazine (in the other). On the
contrary, the fact that the individual articles were photocopied by educational institutions, in the absence of further
evidence, warrants an inference that the copying was for the purpose of distributing the content of the articles,
presumably to students. The object was not specifically to utilise the typography, layout or presentation of the
published edition as a whole. This is not to suggest that the reproduction of published material by an educational
institution could not be for the purpose of utilising the attributes protected by published edition copyright. For
example, if a journalism class were given copies of published material illustrating techniques of layout or
presentation in a magazine, the inference would be available that the content of the copied material was less
significant to the alleged infringer than the mode of presentation.
Nor is this a case in which there has been a significant interference with the interest protected by published edition
copyright. This is not a situation, for example, where a competing publisher has utilised a distinctive feature of the
copyright holder's layout or presentation for the purposes of a rival magazine or newspaper. Again, I do not suggest
that published edition copyright can be infringed only by reproduction in a commercial setting. For example, a
tertiary institution, as a service to its students, might distribute, on a daily basis, photocopies of a particular
segment of a newspaper. Such conduct may well infringe published edition copyright, independently of any
infringement of works copyright in the particular articles reproduced. The copying of the segment takes advantage
of the publisher's layout and presentation and does so in circumstances in which it can be inferred that harm will be
caused to the publisher's commercial interest in the whole of the published edition.
In the result, I do not think that the appellants have made out their claim that the acts of educational institutions in
copying the material referred to in items 1 and 9 of Sch B to the statement of claim had been carried out in relation
to a substantial part of the published edition in respect of which copyright subsisted. In reaching this conclusion, I
have taken account of factors in addition to those relied on by the trial judge. However, in my opinion, his Honour
reached the correct result on this aspect of the case.
Broadcasts
TCN Channel Nine v Network 10 (2004) 218 CLR 273.

FACTS:Tthe Channel 10 programme, ‘The Panel’, was alleged to have infringed Channel 9’s copyright in many of
its broadcasts, for example ‘The Today Show’, ‘Wide World of Sports’, ‘Australia’s Most Wanted’ and ‘Who
Wants to be a Millionaire’. Channel 9 needed to establish that a substantial part of its broadcasts had been used by
Channel 10.
HELD: the ‘potency’ of the image or sound which is broadcast might render that sound or image a substantial part
of the broadcast.
[T]he requirement that an infringer who takes less than the whole of the protected subject-matter must take at least
a substantial part thereof plays a well-established and central part in copyright law. Questions of quality (which
could include the potency of particular images or sounds, or both, in a broadcast) as well as quantity arise both in
respect of Pt IV copyrights and those copyrights in original works to which Part III applies.
***When remitted back to FCA…
HELY J: T]he High Court’s observation that the element of ‘quality’ bears on the substantiality question, and may
involve consideration of the ‘potency of particular images or sounds, or both’ invites an assessment of the
relative significance in terms of story, impact and theme conveyed by the taken sounds and images relative to the
source broadcast as a whole. Whether the part taken represents one of the highlights of the source broadcast has a
bearing on that assessment as does whether the Panel Segments were ‘distinctive of’ or were ‘recognisable’ as
having come from Nine’s broadcast…
‘the term “substantial” is imprecise and ambiguous’ and that ‘it takes its meaning from the context’; and that ‘the
fact that the Panel Segments were used by Ten for the purpose of satire or light entertainment strikes me, with
respect, as throwing little, if any, light on whether the parts taken were a substantial part of the source broadcasts’.
INFRINGEMENT OF THE RIGHT OF REPRODUCTION – WHERE IT OCCURS
No causal connection and no objective similarity
- In order for infringement through reproduction to be found, there must be:

o a causal connection between the original material and the alleged reproduction
o sufficient objective similarity between the infringed and infringing material
 Computer Edge Pty Ltd v Apple Computer Inc (1986) 161 CLR 171
 The notion of reproduction involves two elements – that the infringing work sufficiently
resembles the copyright work and that it was produced by the use of the copyright work.
… The former element requires that there should be ‘a sufficient degree of similarity
between the two works’. per GIBBS J
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Causal connection
- Rights given by s 31 are only rights over the actual work or other material which has
been produced by the author
o EXAMPLE: If somebody else, working independently, produces an identical or substantially
identical product, and that person can prove that he or she was really working independently and
had never been influenced by the copyright material then there can be no successful case for
infringement
- Without a causal connection there is no infringement
o even when there is objective similarity between the material
No awareness of causal connection
- no requirement that the infringer should be consciously aware of this causal connection
o EXAMPLE: a person heard a piece of music twenty years before, the music has since
disappeared from the person’s conscious mind, but then the person writes a score which shows
marked similarities with the earlier piece. Though there has been no conscious appropriation, the
person producing the later work will be in breach of copyright
- In order to determine, the courts must draw inferences from what available evidence
o Decide on the balance of probabilities: Corelli v Gray (1913) 29 TLR 570
Francis Day & Hunter Ltd v Bron [1963] Ch 587

FACTS: scores of two songs, one of which was alleged to have been copied from the other. The defendant denied
any consciousness of having copied. In such a case the first thing to look at is the similarity between the two
scores. Sufficient similarity will raise an inference of copying. Once the inference has been raised, but copying is
denied by the defendant, the court will consider a number of factors in deciding the probabilities of the case. It will
consider the degree of familiarity which the defendant has had with the plaintiff’s work, the character of the work
and its capacity to impress itself on the memory, the probability that any similarity could be due to coincidence
(this probability can be very strong when the similarities between the works consist of stock phrases), other
influences on the defendant apart from the allegedly plagiarised work (stock phrases in particular can come into a
composer’s mind from many different sources) and, finally, the quality or persuasiveness of the defendant’s
evidence.
ISSUE 1: was there sufficient similarity?
WILLMER LJ: [The song ‘In a Little Spanish Town’] was composed in 1926, and … was extensively exploited in
the United States of America and elsewhere by the publication of sheet music, by the distribution of gramophone
records and by broadcasting. Unlike many popular songs, ‘Spanish Town’ appears to have retained its popularity
over the years. … The defendants are the publishers of another song called ‘Why’, which was composed in 1959
… . ‘Spanish Town’ is written in 3/4 time, and ‘Why’ in 4/4 time. There are a number of other differences between
the two works which were the subject of a good deal of evidence by musical experts on both sides. But when the
two songs were played to us, it was immediately apparent, to me at any rate, that the effect on the ear was
one of noticeable similarity…
‘Infringement of copyright in music is not a question of note for note comparison’ (at 415) but falls to be
determined ‘by the ear as well as by the eye’ (citing Austin v Columbia Gramophone Co Ltd (1923)).
[The trial judge, Lord Wilberforce] expressed his conclusion [on the degree of similarity required] as follows: ‘On
the whole, I think Mr Palmer’s word ‘definite’ or ‘considerable’ is the right weight to put upon the degree of
similarity; it is such that an ordinary reasonably experienced listener might think that perhaps one had come from
the other.’ With that conclusion I entirely agree. … If the matter stopped there, I do not think it could be doubted
that there was material on which to base the inference that the composer of ‘Why’ deliberately copied from
‘Spanish Town’. Were that the right inference, I am satisfied that the degree of similarity would be sufficient to
constitute infringement…
ISSUE 2: was the lack of conscious causal connection of the defendant relevant?
WILLMER LJ: It appears to me that the question must be considered in two stages, namely, (1) whether
subconscious copying is a psychological possibility, and (2) if so, whether in a given case it is capable of
amounting to an infringement of the plaintiffs’ copyright.
The conclusion at which I arrive on this part of the case is that subconscious copying is a possibility which, if it
occurs, may amount to an infringement of copyright. But in order to establish liability on this ground, it must be
shown that the composer of the offending work was in fact familiar with the work alleged to have been copied….
I have not sufficient factual material from which to draw an inference that he had sufficient knowledge or memory
of ‘Spanish Town’ at the date of composition, to justify me in finding, against his express denial, that in composing
‘Why’ he copied, without knowing that he did so, ‘Spanish Town’ or a part of ‘Spanish Town’. Putting it in
another way, it does not seem to me that the degree of similarity shown, coupled with the fact, which I think
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is as far as it is possible to go by inference, that at some time and in some circumstances [the defendant]
must have heard ‘Spanish Town’, is enough to make good the Plaintiff’s case.
- More recent cases in which subconscious copying was found to have occurred was the
case of Bright Tunes Music Corp v Harrisongs Music Ltd 420 F Supp 177 (SD, NY,
1976), affirmed in ABKCO Music Inc v Harrisongs Music Ltd 722 F 2d 988 (2d Cir
1983)
o Here the former Beatle, George Harrison, was found liable for infringement. His score for the
song ‘My Sweet Lord’ was found to be substantially the same as the music for a previous song
‘He’s So Fine’ and Harrison’s unawareness of having been influenced by the earlier music was
insufficient to avert a finding that he had copied.
- Subconscious copying can, of course, occur in visual as well as aural contexts.
o Andritz Sprout-Bauer Australia Pty Ltd v Rowland Engineering Sales Pty Ltd (1994)
Objective similarity
- The question of objective similarity is relevant in cases dealing with reproduction where
the work has not been reproduced in its entirety
o The question is always whether the second work is sufficiently objectively
similar to the first to be a reproduction of it.
- In some cases copying will be admitted, but deny that there is any objective similarity:
o Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd [2002] 55 IPR 1
Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 43 IPR 1
LINDGREN J: A casual comparison of the plans of several project homes (including the plans of the Lorikeet II,
the Kookaburra and the Paterson) indicates obvious similarities between them. Nevertheless, one also sees
distinctive features, usually in the combination of elements involving the organisation of the space within the
building. To some extent the layout of space will be determined by functional considerations (eg site size and
construction cost) that are common to all of the plans. But while there may be some limit to the scope for
originality, originality can nonetheless be present in the various plans.
The requirement of a causal link excludes from infringement an "accidental and independent reproduction". But
such a reproduction of a copyright work cannot be avoided (at least, in the absence of a system of registration of
such works), whereas subjective [deliberate] copying can be. It is reasonable, therefore, to think that copyright law
is concerned to protect against subjective copying and that where subjective copying occurs there can be expected
to be found an infringement, unless it transpires that the product is so dissimilar to the copyright work that the
copyright work can no longer be seen in the work produced.
A drawing of a proposed home, that is, a diagramatic representation of something that has no existence except as
an idea or concept, is different from a drawing that purports to represent an object that already exists, such as the
Sydney Harbour Bridge, a particular mountain or the human hand mentioned.
In my opinion, her Honour's finding that actual copying occurred, that is, that the form of the Paterson drawing was
derived in certain, albeit unidentified respects, from the form of the Kookaburra drawing, rendered inappropriate
her emphasis on the difficulty of proving infringement in the absence of "marked originality" and on the
pervasiveness of the commonplace in the plans of project homes. In no case concerning project homes of which I
am aware where there has been such a finding of actual copying, has it been held that nonetheless the copier will
not have infringed copyright unless there is in addition an extraordinarily close resemblance between his or her
drawing and the copyright work. Rather, I think that the issue of sufficient objective similarity simply poses in
the case of project homes, as in other cases, the usual question whether the copyright drawing can still be
seen embedded in the allegedly infringing drawing, that is, whether the allegedly infringing drawing has
adopted the "essential features and substance" of the copyright work: Hanfstaengl v Baines & Co [1895] AC 20
at 31 (Lord Shand) ...
To insist that a copyright owner can satisfy the "sufficient objective similarity" limb of reproduction only by
establishing such a close similarity, is a hurdle too high to be placed before a copyright owner who is found to have
proved subjective copying. The way of the copier, including the copier of a plan of a project home, should not be
made easy.
A similar observation was made by Starke J in Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd (1921)
29 CLR 396. His Honour, sitting at first instance, found actual copying and said (at 404):
It is not for the court to make the way of the taker of copyright matter easy. It is a sound principle of
copyright law that the court should not allow one man to take away the result "of another man's labour, or,
in other words, his property", unless it is satisfied that the part taken is "so slight, and the effect upon the total
composition was so small", "as to render the taking perfectly immaterial", or, what is much the same thing, that the
part taken is an unsubstantial part ...
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The two elements of "causal link" and "sufficient objective similarity" are not referred to in the Act and are but
aspects of "reproduction". The two are interrelated and it can be artificial to consider them separately, at least in a
case like the present one where actual copying is found to have occurred. A finding of copying can add
significance to objective similarity ...
HELD: It appears to me that the Paterson drawing is sufficiently similar to the Kookaburra in terms of its length
and breadth, its room sizes, shapes, locations and interrelationships and its traffic flow, to lead to the conclusion
that the Kookaburra is reproduced in it in an objective as well as a causal sense.
In coming to this conclusion, I have borne in mind that the question of sufficient similarity is one of impression
and that "particular respect and weight should be given to the decision of the trial judge unless some error in [her]
judgment has been demonstrated"...
TO BORROW THE IDEA, NOT THE EXPRESSION OF IT
- copyright will not protect an idea because ideas belong properly to the public domain
o to take an idea will not be an infringement.
- It is therefore important to distinguish between the ideas, and expressions of them
- In Kenrick v Lawrence (1890), a partner in a publishing firm had the idea that illiterate voters could be
instructed how to fill in their ballot paper by way of a sketch. To this end he got an employee to do a
drawing of a hand holding a pencil putting a cross in a box. When the defendant published a ballot card
with a similar drawing, the plaintiff sued unsuccessfully for infringement of copyright. The mere notion of
a hand holding a pencil was not susceptible to copyright protection and there was nothing visually special
about this hand to transform it from a mere idea to a protectable form of expression. Possibly if it had
been exactly reproduced there would have been an infringement, but this was not the case
Plots and characters
- The contrast of idea/expression becomes difficult to make in a literary or film context

where the issue is whether themes, choices of characters and aspects of plot constitute
on the one hand a concept or on the other hand an expression of that concept
Universal City Studios Inc v Zeccola (1982) 67 FLR 225

FACTS: It was alleged that copyright in the novel and screenplay of Jaws had been infringed by the making of a
film ultimately called Great White. As there was no admission of copying the court had to reason by inference. It
was known that the makers of Great White had seen Jaws, so one of the tests mentioned in Francis Day & Hunter
was satisfied. The two films were considered side by side, since it was considered that the films accurately
represented the screenplays/novel. At first instance the judge approached the two films on the basis of his own
impressions in watching them. His conclusion was that there had been an infringement, despite certain similarities
between two genre films being inevitable. ‘The combination of events and characters reaches a degree of
complexity where it can be fairly inferred that the film could not have been made independently of Jaws.’ He drew
this conclusion on the basis that both films were about a killer shark menacing land communities, that practically
all the principal situations and characters in Jaws were faithfully reproduced in Great White, that the same stretch
of coastline in the same country was featured, that the shark itself was almost identical, that in both films it
threatened a politician who had a blond wife, that in each film the professional fisherman, a main character, had a
Scottish accent and that each of these fishermen was ultimately eaten by the shark.
GRAY J: In general, there is no copyright in the central idea or theme of a story or play however original it may
be; copyright subsists in the combination of situations, events and scenes which constitute the particular working
out or expression of the idea or theme. If these are totally different the taking of the idea or theme does not
constitute an infringement of copyright.
The primary Judge closely analysed the two films 'Jaws' and 'Great White". Notwithstanding that the subject matter
of the film 'Jaws' was not particularly striking his Honour held the view, in essence, that the combination of the
principal situations, singular events and basic characters was sufficient to constitute an original work that was
susceptible of protection under the law of copyright in this country. In our opinion his Honour's finding has not
been shown to be in error. It must be remembered that all his Honour did was make his findings on the basis that a
prima facie case was established.
The primary Judge correctly realised that two questions were involved in the resolution of what is the major
issue; namely, the degree of objective similarity between the appellants' film and the respondent's novel and
screen-play and, given sufficient objective similarity, whether copying was established.
The comparative exercise which his Honour undertook was central to his decision. He considered that there was
such a marked degree of similarity between the two films that there was an inescapable inference of copying and
that the respondent had an excellent chance of success at the trial. The strength of his views in relation to the
similarity between the two films influenced the attitude which he took to much of the evidence, including expert
evidence, and to the appellant's denial of copying, most of which was held to be inadmissible.
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Much criticism was levelled by the appellants at the approach which his Honour took to such evidence and at the
inference of copying which he drew. Whilst our own viewing of the films did not instill in us the same degree of
conviction that his Honour felt, we are not persuaded that his Honour was wrong.
PRODUCTION OF A DIFFERENT TYPE OF OBJECT – IS IT REPRODUCTION?
- Can infringement still occur where what is produced is visually completely different
from the source of your information about it?
o Can the objective similarity necessary for reproduction be said to exist here?
- Depends on if artistic or literary work:
o If artistic: a two dimensional or three dimensional artistic work will be deemed
to be reproduced by a version of it in either three dimensional or two
dimensional form respectively: s 21(3)
o This section does not apply to literary work
 See the below case in this example:
Cuisenaire v Reed [1962] VR 719

Coloured rods were produced following information from a table of lengths and colours. The table was in written
form and hence a literary work. It was a description of dimensions and colours but it did not show any picture of
the rods. The rods themselves were arguably artistic works and certainly not literary works. The case was decided
on the basis that there had been no reproduction of the table. Nothing which looked like the table had been
produced. Put differently, it might be said that an idea had been reproduced but not that expression of it which had
been embodied in the original literary work.
PAPE J: In my view, a set of written directions is not ‘reproduced’ by the construction of an article made in
accordance with those directions. A reproduction must reproduce the original, and there the original is in one case a
set of words in the form of a table and in the other case a series of plain and coloured circles which are numbered
and which are set out in the form of a chart. In my view, the defendants’ rods reproduce neither…
Where, as here, you have a literary copyright in certain tables or compilations, there is in my view no infringement
of the copyright in those tables or compilations unless that which is produced is itself something in the nature of a
table or compilation which, whether it be in two dimensions or three dimensions, and whatever its material form,
reproduces those tables…
Were the law otherwise, every person who carried out the instructions in the handbook in which copyright was held
to subsist in Meccano Ltd v Anthony Hordern and Sons Ltd (1918) 18 SR (NSW) 606, and constructed a model in
accordance with those instructions, would infringe the plaintiff’s literary copyright.
INDIRECT REPRODUCTION – IS THERE A CAUSAL CONNECTION?
- Does infringement apply where the infringer copies something he has never actually
seen?
o Even if you have never seen the sculpture, you have still made a reproduction of
the original - an indirect reproduction – and prima facie this is an infringement
- But what if the intermediate stage is not even remotely similar to the original or to the
resulting product (i.e. working from a spoken description of the original work)?
o NZ Court in Plix Products Ltd v Frank M Winstone (Merchants) Ltd (1984) 3
IPR 390 has considered this issue and decided that, as long as the intermediate
literary description describes the original work in sufficient detail – in other
words as long as it covers the expression as well as the idea of the work – a
further work produced from the description is capable of infringing…
INFRINGEMENT OF THE RIGHT OF PUBLICATION
- publication of a work is the exclusive right of the copyright owner and will therefore be
an infringing activity if carried out by an unauthorised person
- A literary, dramatic or musical work, or any edition of such a work, shall be deemed to
have been published if, but only if, reproductions of it have been supplied (whether by
sale or otherwise) to the public: s 29
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o A film is deemed to have been published if copies of the film have been sold, hired out or offered
or exposed for sale or hire to the public. A sound recording is deemed to have been published if
records embodying the recording or part of it have been supplied to the public: s 29(1)
- Certain actions do not constitute publication (s 29(3)):
o performance of a literary, dramatic or musical work,
o the supplying to the public of records of a literary, dramatic or musical work,
o the exhibition of an artistic work,
o the construction of a building or a model of a building
o the supplying to the public of photographs or engravings of a building, model of a building or
sculpture
Supplied to the public
- The public may be only one person but the point is that it must not be limited in any way
to any restricted group of persons
- Even if distribution is to many people, that will not constitute publication if that group
excludes the world at large: Oscar Trade Mark [1980]
Only first publication; or any publication?
- The words ‘to publish’ in s 31 should be read as meaning ‘to make public that which has
not previously been made public in the copyright territory.’
- In other words the fact that the copyright owner has the exclusive right to publish under
s 31 does not mean that every act of publication as described in s 29 is in the hands of
the copyright owner
o Avel P/L v Multicoin P/L (1991)
- e.g. the sale of second hand works is a supply to the public but cannot be controlled by
the copyright owner.
INFRINGEMENT OF THE RIGHT OF PUBLIC PERFORMANCE
- Reference to performance is to be read as including a reference to any mode of visual or

aural presentation whether by operation of wireless telegraphy apparatus, by the
exhibition of a cinematograph film, by the use of a record or by any other means: s 27
- The Act does not define what public means…
- In the case of APRA v Tolbush [1986] it was found that a car radio store playing
copyright music as a means to demonstrate the quality of their radios, was infringing the
copyright in that music.
- Most cases, it is clear whether the work is performed in public
o Other cases, not so clear..
Rank Film Production Ltd v Dodds

FACTS: Was the playing of copyright movies in hotel room considered public performance? A number of tests
were considered and applied: Did what took place interfere with the copyright owner’s proprietary rights
(particularly with regard to profit)? Had there been an admission of any portion of the public? Where did the
performance take place? Could the audience be described as the copyright owner’s public, so as to be covered by
the exclusive rights?
HELD: … in the present case the court is to consider the character of the audience, and ask whether that audience
may fairly be regarded as part of the monopoly of the owner of the copyright. The relevant character of the
audience is not its character of an individual or individuals in a private or domestic situation, but in its character as
a guest or guests of the motel. In that latter character the guest pays for his accommodation, and the benefits (in-
house movies) that go with it…
…there would appear to be an interference with the plaintiffs’ proprietary rights, because the statement of agreed
facts shows that there is a market for the display of films in motel rooms. Next, although only one or two persons
saw the films, they did so as guests of the motel, that is to say, as members of a section of the public. And though
the performance was in private, it was arranged as part of a commercial transaction. … there is in this case an
invitation to the public to watch in-house movies, and the provision of such movies should be regarded as part of
the consideration for the guests’ payment.
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Australasian Performing Right Association Ltd v Commonwealth Bank of Australia [1992] FCA 930
FACTS: APRA owned the performing right copyright in a musical work. The work was played as part of an
instructional video at one of the branches of the Commonwealth Bank. Eleven employees of the bank saw and
heard the video at a time when the bank was closed to customers. No invitation was given to anyone else to watch
the video, the viewing was voluntary and no money changed hands. The musical work was heard on the video for
20 seconds on one occasion and 5 seconds on another.
GUMMOW J: Running through the authorities I have discussed is the notion that for the purposes of this
performing right a performance will be ‘in public’ if it is not ‘in private’, and the perception of an antithesis
between performances which are in public and those which are ‘domestic’ or ‘private’ in character. In determining
whether a performance answers the latter description, the nature of the audience is important. In coming together to
form the audience for the performance were the persons concerned bound together by a domestic or private tie or
by an aspect of their public life? Their ‘public life’ would include their presence at their place of employment for
the supply of a performance to assist the commercial purposes of their employer.
Looked at in that way, the reasoning in the authorities supports the proposition … that if a performance occurs as
an adjunct to a commercial activity the performance is likely to be regarded as public … . The audience was
brought together by the commercial purposes of the respondent and their public lives as employees….
INFRINGMENT OF RIGHT TO COMMUNICATE THE WORK TO THE PUBLIC
- To ‘communicate’ is defined exhaustively in s 10 as meaning to:

o 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
Context of online transmission
- e.g. website owner who provides a hyperlink to another website, when the clicking on
that hyperlink causes material such as a song to be automatically downloaded onto the
user’s computer.
o it is not the facilitator’s website but rather the computer/website on which the
material is stored that makes available or transmits the material. In the words of
Tamberlin J in Cooper v Universal Music Australia Pty Ltd (2006):
o The Cooper website facilitates the easier location and selection of digital music files and
specification to the remote website. However, the downloaded subject matter is not transmitted or
made available from the Cooper website and nor does the downloading take place through the
Cooper website. While the request that triggers the downloading is made from the Cooper
website, it is the remote website which makes the music file available and not the Cooper
website.
- ‘to the public’ is defined as the public within or outside Australia
- High Court has defined ‘to the public’ as being significantly broader than ‘in public’ in
as far as the place where the communication occurs is irrelevant
- the ‘public’ in question must be the copyright owner’s public: Telstra Corporation Ltd v
Australasian Performing Right Association Ltd (1997)
INFRINGEMENT OF THE EXCLUSIVE RIGHTS IN SUBJECT MATTER OTHER

THAN WORKS
- These rights are outlined in ss 85-88

- In relation to sound recordings the right includes the right to make a copy of the
recording.
o a reference to a copy of a sound recording shall be read as a reference to a record embodying a
sound recording or a substantial part of a sound recording being a record derived directly or
indirectly from a record produced upon the making of a sound recording: s 10(3)(c)
Substantial part of a sound recording in qualitative terms?
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- sound-alike recordings (i.e. artists attempting to reproduce a similar sound) not

infringement
o CBS Records Australia v Telmak Teleproducts
- a sound recording or cinematograph film is taken to have been copied if it is converted
into or from a digital or other machine-readable form: s 21(6)
INFRINGEMENT THROUGH AUTHORISATION OF INFRINGING ACTIVITY
Australasian Performing Right Association Ltd v Jain (1990) 18 IPR 663

SHEPPARD, FOSTER and HILL JJ:
efore us counsel for the appellant put the case in two alternate ways. He submitted, first, that Mr Jain was in breach
of s 36 of the Act because Mr Jain had, without the licence of the owner of the copyright, authorised the doing in
Australia of an act comprised in the copyright. Counsel secondly submitted that Mr Jain was jointly or concurrently
liable along with Valamo as a tortfeasor.
We deal first with the case based on authorisation
The material provisions of the Act begin with s 13(2) which relevantly provides that, for the purposes of the Act,
the exclusive right to do an act in relation to a work includes the exclusive right to authorise a person to do that act
in relation to that work. Section 31 provides, inter alia, that copyright, in relation to a musical work, is the
exclusive right to perform the work in public: see s 31(1)(a)(iii).
So the question is whether the appellant has established that Mr Jain authorised the public performance of the
musical works in question without the appellant's licence.
The history of the development of the law in relation to authorisation is recounted by Gummow J in; WEA
International Inc v Hanimex Corp Ltd (1987) 10 IPR 349 at 358-63. His Honour, after referring to Ciryl's case,
said (at 359) that it was clear after Ash v Hutchinson and Co (Publishers) Ltd [1936] Ch 489 that the Copyright Act
1911 (UK) (in force in Australia by virtue of the Copyright Act 1912) gave, for example, the owner of copyright in
a literary work both the sole right of reproducing it and the sole right of authorising such reproduction and that
those rights were separate and distinct so that infringement of each was a distinct tort. His Honour said (at 359) that
the same was true of authorisation in respect of the current Act. So much was accepted by the High Court in;
University of New South Wales v Moorhouse (1975) 133 CLR 1;6 ALR 193.
[Citing GIBBS J in Poorhouse:] ‘The word 'authorize', in legislation of similar intendment to s 36 of the Act, has
been held judicially to have its dictionary meaning of 'sanction, approve, countenance': Falcon v Famous Players
Film Co Ltd [1926] 2 KB 474 at 491 ; Adelaide Corp v Australasian Performing Right Association Ltd (1928) 40
CLR 481 at 489, 497. It can also mean 'permit', and in; Adelaide Corp v Australasian Performing Right
Association Ltd 'authorize' and 'permit' appear to have been treated as synonymous. A person cannot be said to
authorise an infringement of copyright unless he has some power to prevent it: ; Adelaide Corp v Australasian
Performing Right Association Ltd at 497-8, 503. Express or formal permission or sanction, or active conduct
indicating approval, is not essential to constitute an authorisation; 'Inactivity or "indifference, exhibited by acts of
commission or omission, may reach a degree from which an authorisation or permission may be inferred" ': ;
Adelaide Corp v Australasian Performing Right Association Ltd at 504…
In the present case the university made available to a section of the public the books in its library -- at least those in
the open shelves -- and provided in the library the machines by which copies of those books could be made. It
seems to me that the university must have known that it was likely that a person entitled to use the library might
make a copy of a substantial part of any of those books.’
In application to the case at hand:
Mr Jain was effectively the chief executive officer of the company. But, as so often happens, he entrusted the
running and day to day management of the tavern to Mr Morgan. He knew, however, that music would be played
by live bands albeit he did not concern himself with the actual items of music which would be played by them. In
this respect he was in a position similar to that of the university in the Moorhouse case… The judgment of the
members of the High Court in the Moorhouse case establishes that one of the meanings of the word "authorise" in
the context in which it is here used is "countenance". It may be that not every act which amounts to the
countenancing of something is an authorisation. Every case will depend upon its own facts. Matters of degree are
involved. But the evidence in the present case reveals, in our opinion, a studied and deliberate course of action in
which Mr Jain decided to ignore the appellant's rights and to allow a situation to develop and to continue in which
he must have known that it was likely that the appellant's music would be played without any licence from it. It
was within his power to control what was occurring but he did nothing at all.
- Since Moorhouse, s 36(1A) has adopted some of the principles of the ‘authorisation’
definition:
Infringement by doing acts comprised in the copyright
…
(1A) In determining, for the purposes of subsection (1), whether or not a person has authorised the doing in
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Australia of any act comprised in the copyright in a work, without the licence of the owner of the copyright, the
matters that must be taken into account include the following:
(a) the extent (if any) of the person's power to prevent the doing of the act concerned;
(b) the nature of any relationship existing between the person and the person who did the act
concerned;
(c) whether the person took any reasonable steps to prevent or avoid the doing of the act, including
whether the person complied with any relevant industry codes of practice.
(2) The next three succeeding sections do not affect the generality of this section.
INDIRECT INFRINGEMENT OF COPYRIGHT
- In re indirect infringement of works: ss 37, 38 and 39

- In re indirect infringement of subject matter other than works: ss 102 and 103
o Ss 37 and 102 are vitually identical
o Ss 38 and 103 are also vitually identical

Infringement by importation for sale or hire
(1) Subject to Division 3, the copyright in a literary, dramatic, musical or artistic work is infringed by a
person who, without the licence of the owner of the copyright, imports an article into Australia for the purpose of:
(a) selling, letting for hire, or by way of trade offering or exposing for sale or hire, the article;
(b) distributing the article:
(i) for the purpose of trade; or
(ii) for any other purpose to an extent that will affect prejudicially the owner of the copyright; or
(c) by way of trade exhibiting the article in public;
if the importer knew, or ought reasonably to have known, that the making of the article would, if the article had
been made in Australia by the importer, have constituted an infringement of the copyright.
(2) In relation to an accessory to an article that is or includes a copy of a work, being a copy that was made
without the licence of the owner of the copyright in the work in the country in which the copy was made,
subsection (1) has effect as if the words "the importer knew, or ought reasonably to have known, that" were
omitted.

Infringement by sale and other dealings
(1) Subject to Division 3, the copyright in a literary, dramatic, musical or artistic work is infringed by a
person who, in Australia, and without the licence of the owner of the copyright:
(a) sells, lets for hire, or by way of trade offers or exposes for sale or hire, an article; or
(b) by way of trade exhibits an article in public;
if the person knew, or ought reasonably to have known, that the making of the article constituted an infringement
of the copyright or, in the case of an imported article, would, if the article had been made in Australia by the
importer, have constituted such an infringement.
(2) For the purposes of the last preceding subsection, the distribution of any articles:
(a) for the purpose of trade; or
(b) for any other purpose to an extent that affects prejudicially the owner of the copyright concerned;
shall be taken to be the sale of those articles.
(3) In this section:
"article " includes a reproduction or copy of a work or other subject-matter, being a reproduction or copy in
electronic form.
- The licence of the copyright owner in this type of case needs to be a positive licence to
import.
The fact that there was no express prohibition is not sufficient: Interstate Parcel Express
Co Pty Ltd v Time-Life International (Nederland) BV (1977)
DURATION
- For works: the life of the author plus 70 years after the year of the author’s death (s 33)
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- For other than works: is 70 years from the year of publication for films and sound
recordings and 50 years from the year of making for broadcasts (ss 93-96).
- For anonymous and pseudonymous works: 70 years after the year of first publication:
s 34
- For published editions: 25 years from the year of publication: s 96
- For Works of joint authorship: 70 years after the year of death of the author who died
last.
- Where a literary, dramatic or musical work is unpublished at the time of the author’s
death, the copyright does not start to run out until:
o the publication, performance in public or broadcasting of the work takes place
o or until records of the work are first offered for sale to the public.
o It runs out 70 years after the year of that event: s 33(3)
MORAL RIGHTS
- Traditionally the rights given by the legislation have been economic rights given to the
copyright owner.
- Moral rights are different in that they are not given to copyright owners as such but
remain with the author, or the author’s estate, generally during the copyright period
- There are three moral rights under Australian law:
o the right of attribution of authorship,
o the right not to have a work falsely attributed and
o the right of integrity of authorship
Basic facts
- Moral rights are not property and cannot be either assigned or inherited: s 195AN(3)
- After the death of the author, moral rights can be exercised and enforced only by the
author’s legal personal representative: s 195AN(1).
- Where the affairs of the author are lawfully administered by another person (e.g. in the
case of incapacity – but not in the case of bankruptcy) the moral rights may be exercised
and enforced by the person administering the author’s affairs: s 195AN(2)
- There is a defence that what has been done was reasonable under the circumstances.
o This applies only to the rights of attribution and integrity: ss 195AR and 195AS
- Moral rights apply in relation to all types of works (not SMOTW)
o For the purposes of the moral rights provisions, films are classified as works: s
189.
o Sound recordings, however, are not
- Moral rights exist only in relation to copyright works: s189
- Moral rights exist for the period of copyright protection in most cases:
o s 195AM(2) and (3)
- The exception is the case of films, where one of the rights, the right of integrity of
authorship, terminates on the death of the author: s 195AM(1)
- Moral rights subsist only in relation to the final version of the film: s189
- An ‘author’, in relation to a film, is the principal director, principal producer and
principal screenwriter: s 189
- Only individuals (natural persons) can have moral rights: s 190
o If, for example, the producer of a film is a company, only the director and the
screenwriter will have the moral rights: s 191
- Moral rights can apply to a whole or a substantial part of a work: s 195AZH
The right of attribution of authorship
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- The author’s right of attribution is described as the author’s right to be identified as

author when an ‘attributable act’ is carried out: s 193(2)
- In relation to a literary, dramatic or musical work, the attributable acts are, under s
194(1), In other words, these are acts that the copyright owner can perform as of right:
o (a) to reproduce the work in a material form
o (b) to publish the work
o (c) to perform the work in public
o (d) to communicate the work to the public;
o (e) to make an adaptation of the work
- In relation to artistic works, the attributable acts are, under s 194(2):
o reproduction, publication, communication to the public and exhibition of the
work in public
- In relation to a cinematograph film, the attributable acts are:
o exhibition in public, communication to the public and the making of a copy of
the film: s 194 (3)
- If the author has wishes to be identified in a particular way and this type of identification
is reasonable in the circumstances, then the author’s wishes are to be complied with: s
195.
- Otherwise the author is to be identified by any reasonable form of identification.
o The identification must be ‘clear and reasonably prominent’: s 195AA
- Infringement occurs if a person does, or authorises the doing of, an attributable act
without the identification of the author: s 195AO
Right not to have authorship falsely attributed
- This is the right not to have a person do an act of false attribution in respect of the work:
s 195AC
- This type of right ensures that authors will be able to take credit for their own works but
will not have to take responsibility for their works if they have been altered by other
people
- Two components:
o the right to object to somebody else’s name being wrongly used on the author’s
work; and
o the right to object when the author’s name is applied to work that has originated
from the author, but that has subsequently been altered by another person
Wrong name on the work
- The primary act of false attribution, in respect of literary dramatic or musical works,
is to insert or affix, or to authorise the inserting or affixing of, a person’s name in or on a
work, or reproduction, in such a way as to imply falsely that the person authored the
work; or to imply falsely that the work is an adaptation of a work of the person:
s 195AD(a)
- The secondary acts of false attribution under s 195AD are:
o to deal with the work or a reproduction of it, or
o to perform the work in public, or communicate it to the public, if the attributor
knows that the person is not an author of the work or that the work is not an
adaptation of a work of the person.
- In the case of artistic works, the primary act of false attribution under s 195AE(2)(a) is
the insertion or affixation of the name in or on the work or the authorisation of these
acts.
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o It is also the use, or authorisation of the use, of a person’s name in connection

with the work (or reproduction) ‘in such a way as to imply falsely that the
person is an author of the work.’
- The secondary acts under s 195AE(2) are: dealing with such a work or with a
reproduction of it or communicating the work to the public if the person doing so knows
that the person whose name is on the work is not an author of the work. Authorisation is
not included
- In the case of films, the primary act is to insert or affix, or to authorise the inserting or
affixing of, a person’s name on the film or on a copy of the film in such a way as to
imply falsely that the person is the director, producer or screenwriter, as the case may
be, of the film: s 195AF(2)(a)
- The secondary acts under s 195AF are: dealing with a film or a copy of it or
communicating the film to the public as being a film made or authored by a particular
person if the dealer or communicator knows that the named person is not the director,
producer or screenwriter.
The author’s name on an altered work
- If a literary, dramatic, musical or artistic work has been altered by a person other
than the author, it is an act of false attribution under s 195AG:
o to deal with the work as so altered, as being the unaltered work of the author; or
o to deal with a reproduction of the work as so altered, as being a reproduction of
the unaltered work of the author
- In relation to an altered film it is an act of false attribution under s195AH to deal with a
copy of the film as altered, as if it were a copy of the unaltered film
- The attributor must know that this is not the unaltered work of the author: ss
195AG(1) and 195AH(1).
- In neither of these cases will the author have a cause of action if the effect of the
alteration is insubstantial or the alteration was required by law, or was necessary to
avoid a breach of any law: ss 195AG(2) and 195AH(2)
- Infringement will occur when any of the acts described above take place: s195AP
Meskensas v ACP Publishing
The facts were that, when Princess Mary of Denmark was in Australia, she was photographed in
front of a portrait of the famous heart surgeon, the late Dr Victor Chang. The portrait had been
painted by the artist, Vladas Meskenas. The photograph of the princess with portrait was
subsequently published in the Woman’s Day but the caption associated with the published
portrait named another artist as the author of the painting. Meskenas alleged breach both of the
right of attribution and the right against false attribution. The magistrate agreed that both rights
had been breached. The failure to make attribution, albeit inadvertent, could not be considered
reasonable under the circumstances (a possible defence to the allegation of infringement of the
attribution right: s 195AR, but not of the right against false attribution).
The right of integrity of authorship
- designed to protect the interests of the author through preventing certain treatments of
the work
- to protect the author’s reputation and is described in the legislation as the right not to
have the work subjected to derogatory treatment: s 195AI
- In relation to literary, dramatic or musical works derogatory treatment means
(exhaustive definition), under s 195AJ:
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o (a) the doing, in relation to the work, of anything that results in a material
distortion of, the mutilation of, or a material alteration to, the work that is
prejudicial to the author’s honour or reputation; or
o (b) the doing of anything else in relation to the work that is prejudicial to the
author’s honour or reputation
- For artistic works the (exhaustive) definition of derogatory treatment is broader,
including (a) and (b) above but also the prejudicial destruction of the work or the
exhibition in public of the work that is prejudicial to the author’s honour or reputation
because of the manner or place in which the exhibition occurs: s 195AK
- For film derogatory treatment is essentially the same as it is for literary, dramatic or
musical works, except that the author in this case is referred to as the maker: s195AL
- The reference in (b) above to ‘anything else’ that is prejudicial to honour or reputation
seems extraordinarily broad.
o This would mean, for example, the use of a religious text in a pornographic
context.
Infringement
- Infringement may take place simply through a person subjecting the work, or
authorising the work to be subjected, to derogatory treatment: s 195AQ(2)
- In addition:
- if a literary, dramatic or musical work has been subjected to types of derogatory
treatment involving physical interference with the work (and therefore not including
derogatory treatment through the placement of the work in an inappropriate context) the
right will be infringed if, in respect of the work as derogatorily treated, a person
o reproduces it in a material form
o publishes it;
o performs it in public
o communicates it to the public;
o makes an adaptation of it
- artistic works, and again if they have been derogatorily treated through physical
interference, there will be infringement if, in respect of the work as derogatorily treated,
a person reproduces the work, publishes it or communicates it to the public: s 195AQ(4)
- film the same regime applies. Here there will be infringement if a person makes a copy
of the film, exhibits it or communicates it to the public: s 195AQ(5)
Infringement through importation or sale
- As with the copyright, moral rights can be infringed through importation into Australia
of an article if the importer knew, or ought reasonably to have known, that, if the article
had been made in Australia, it would have been an infringing article: s 195AU
- An infringing article is an article embodying a work or film (or a reproduction,
adaptation or copy of the work or film, as the case may be), being a work or film
regarding which the right of integrity has been infringed through some sort of physical
interference with it: s 189
- The importation into Australia must be for the purpose of dealing
o ‘Dealing with’ is specially limited for the purposes of these sections so as not to
include distribution of the article if it is not for the purposes of sale: s
195AU(2).
- Moral rights can also be infringed through dealing with an infringing article. Again
‘dealing’ is defined narrowly to exclude distributions otherwise than for sale and certain
other types of activity mentioned in the Act. See s 195AV(2)
PERFORMER’S PROTECTION
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- Part XIA of the Act contains provisions that seek to provide protection to performers
from the unauthorised use of their performances
- Performers have also recently achieved moral rights protection in Australia. The moral
rights of performers closely track the moral rights of authors in their wording and basic
concepts. Performers therefore have, under the new provisions, a right of attribution of
performership, a right not to have performership falsely attributed and a right of
integrity of performership

TOPIC 7
COPYRIGHT C: DEFENCES, REMEDIES, OWNERSHIP AND
TRANSMISSION
- Where the criteria for infringement has undoubtedly been established, there may still be
a defence applicable where the legislature is prepared to sanction the activity, and
reduce the range of ‘copyright monopoly’
FAIR DEALING PROVISIONS UNDER THE ACT
- In the USA this type of provision is extremely broad in its effect

o In Australia, it is limited by its application only to certain contexts
 research or study; criticism or review; parody or satire; reporting the
news
- In order for the defence to apply, the dealing must a) be fair and b) be carried out
for the relevant purpose
Research or study
- Outlined in s 40(1)
o A fair dealing with a literary, dramatic, musical or artistic work, or with an adaptation of a
literary, dramatic or musical work, for the purpose of research or study does not constitute an
infringement of the copyright in the work.
- Does not apply to subject matter other than works
- Section 40(1A) gives an additional defence to those who reproduce educational material.
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o A fair dealing with a literary work (other than lecture notes) does not constitute an
infringement of the copyright in the work if it is for the purpose of, or associated with, an
approved course of study or research by an enrolled external student of an educational institution.
o (1B) In subsection (1A) the expression lecture notes means any literary work produced for the
purpose of the course of study or research by a person lecturing or teaching in or in connection
with the course of study or research.
Fair Dealing
- Unless a dealing can be considered fair according to the guidelines, none of the
provisions concerning the fair dealing immunity in relation
Fair dealing for purpose of research or study
…
(2) For the purposes of this Act, the matters to which regard shall be had, in determining whether a dealing
with a literary, dramatic, musical or artistic work or with an adaptation of a literary, dramatic or musical work,
being a dealing by way of reproducing the whole or a part of the work or adaptation, constitutes a fair dealing with
the work or adaptation for the purpose of research or study include:
(a) the purpose and character of the dealing;
(b) the nature of the work or adaptation;
(c) the possibility of obtaining the work or adaptation within a reasonable time at an ordinary
commercial price;
(d) the effect of the dealing upon the potential market for, or value of, the work or adaptation; and
(e) in a case where part only of the work or adaptation is reproduced--the amount and substantiality
of the part copied taken in relation to the whole work or adaptation.
(3) Despite subsection (2), a reproduction, for the purpose of research or study, of all or part of a literary,
dramatic or musical work, or of an adaptation of such a work, contained in an article in a periodical publication is
taken to be a fair dealing with the work or adaptation for the purpose of research or study.
(4) Subsection (3) does not apply if another article in the publication is also reproduced for the purpose of
different research or a different course of study.
- subs 3 and 4 only apply to literary, dramatic and musical works and only in respect of
periodical publications
- s 40(3) is a deeming provision only – you can see this in the words ‘is taken to be a fair
dealing’
- Subsections 3 and 4 have the effect that, if you were writing an essay for IP, and you copied two articles
from one journal for your research, you should not be infringing. But if you copied one article for your
essay and another article for some research you were carrying out for your employer, the copying of both
articles would infringe. Would need to rely on subsection 2 instead.
- Subsection (5) deals with reproduction of material not published in a periodical
publication.
o Provides a quantitative test for when a dealing will be deemed fair
o It will be fair if not more than a reasonable portion is taken

Fair dealing for purpose of research or study
…
5) Despite subsection (2), a reproduction, for the purpose of research or study, of not more than a reasonable
portion of a work or adaptation that is described in an item of the table and is not contained in an article in a
periodical publication is taken to be a fair dealing with the work or adaptation for the purpose of research or study.
For this purpose, reasonable portion means the amount described in the item.
Works, adaptations and reasonable portions
Item Work or adaptation Amount that is reasonable portion
1 A literary, dramatic or musical work (except a (a) 10% of the number of pages in the edition; or
computer program), or an adaptation of such a (b) if the work or adaptation is divided into chapters--a
work, that is contained in a published edition of at single chapter
least 10 pages
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2 A published literary work in electronic form (a) 10% of the number of words in the work or
(except a computer program or an electronic adaptation; or
compilation, such as a database), a published (b) if the work or adaptation is divided into chapters--a
dramatic work in electronic form or an adaptation single chapter
published in electronic form of such a literary or
dramatic work
- A fair dealing with a reasonable portion, once carried out, forecloses the possibility of
another fair dealing with a different portion of the work by the same person: s 40(7).
Parody or satire
- s 41A allows a defence to the person who uses a work (literary, dramatic, musical or
artistic) for satirical or parodic purposes
- the dealing still has to be fair.
- What are parody and satire?
o No special definition of the purposes of the Act
- Shorter Oxford Dictionary:
- Parody – A composition in which the characteristic turns of thought and phrase of an
author are mimicked and made to appear ridiculous.
- Satire – The employment in speaking or writing of sarcasm, irony, ridicule etc. in
denouncing, exposing or deriding vices, follies, abuses, or evils of any kind.
Criticism, review and reporting of news
- In both of these areas an acknowledgement of the use made of the work is required
- Sufficient acknowledgement will be acknowledgement ‘identifying the work by its title
or other description and, unless the work is anonymous or pseudonymous, or the author
has previously agreed or directed that an acknowledgement of his or her name is not to
be made, also identifying the author’: s 10(1).
Fair dealing for purpose of criticism or review
A fair dealing with a literary, dramatic, musical or artistic work, or with an adaptation of a literary, dramatic or
musical work, does not constitute an infringement of the copyright in the work if it is for the purpose of criticism
or review, whether of that work or of another work, and a sufficient acknowledgement of the work is made.
Fair dealing for purpose of reporting news
(1) A fair dealing with a literary, dramatic, musical or artistic work, or with an adaptation of a literary,
dramatic or musical work, does not constitute an infringement of the copyright in the work if:
(a) it is for the purpose of, or is associated with, the reporting of news in a newspaper, magazine or
similar periodical and a sufficient acknowledgement of the work is made; or
(b) it is for the purpose of, or is associated with, the reporting of news by means of a communication
or in a cinematograph film.
(2) The playing of a musical work in the course of reporting news by means of a communication or in a
cinematograph film is not a fair dealing with the work for the purposes of this section if the playing of the work
does not form part of the news being reported.
Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd [2010] FCA 984
HELD: an online database which provided subscribers with abstracts of news articles (not copied) and the
headlines of the articles (copied) was not infringing copyright.
BENNETT J: the online service was ‘for the purpose of or associated with the reporting of news’, that it came
within the term ‘similar periodical’ in s 42(1)(a) and that ‘sufficient acknowledgement’ of the authors and the
articles had been made. It also came within s 42(1)(b) in that the service was a communication to the public. As for
fair dealing, her Honour found that the service was not in competition with the plaintiff’s newspaper and not a
substitute for the reading of the newspaper since it enabled users to go to the original publication, often through the
hyperlinks that it provided.
De Garis v Neville Jeffress Pidler Pty Ltd (1990) 18 IPR 292

FACTS: Mr de Garis alleges that he is the author and owner of the copyright in a literary work "Looking Past the
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Winners" published in the West Australian on 10 September 1988. He claims that Jeffress infringed his copyright
by reproducing the work in a material form in Australia. The infringement is said to be constituted by the
reproduction in a material form, without his licence, of the work for the purpose of publishing it to subscribers to
the press-clipping service. Jeffress argued: (1) its conduct constituted a fair dealing for the purpose of research or
study within the meaning of s 40 of the Copyright Act 1968 (Cth) (the Act); (2) there was a fair dealing for the
purpose of criticism or review, and a sufficient acknowledgment of the work within the meaning of s 41 of the Act;
(3) there was a fair dealing for the purpose of, or associated with, the reporting of news in a newspaper, and a
sufficient acknowledgment of the work within the meaning of s 42(1) of the Act; and (4) a licence to reproduce the
de Garis work should be implied from the provision of the work to the proprietor of the newspaper in which it
appeared and from the fact that the work appeared in the newspaper, copies of which were sold or supplied to the
public.
BEAUMONT J:
Section 40 -- fair dealing for the purpose of research or study
There is no direct evidence of the actual method of operation of the "press-clipping and media research bureau" (as
it is stated in the order form), but it is, I think, reasonable to infer that Jeffress has established an effective method
of retrieval of material published in newspapers by reference to subject matter. Is this "research" within the
meaning of s 40? According to the Macquarie Dictionary, "research" may be defined as: "1. diligent and systematic
enquiry or investigation into a subject in order to discover facts or principles: research in nuclear physics. . ." In my
view, "research" in s 40 is intended to have this dictionary meaning.
In my opinion, Jeffress' dealing with the work is not something done for the purpose of research. Although the
retrieval of the material may be a complicated exercise, it does not follow that the purpose of Jeffress is research.
Its purpose, which is purely commercial, is to supply a photocopy of material already published in return for a fee.
This is an activity engaged in by Jeffress in the ordinary course of trade, which, in my view, is in the nature of an
information audit and should be distinguished from research activity of the kind contemplated by s 40: see Re
Attorney-General of British Columbia and Messier (1984) 8 DLR (4th) 306.
Section 41 -- fair dealing for the purpose of criticism or review
The origins of this defence were explained by Lord Hatherley in Chatterton v Cave (1878) 3 App Cas 483 at 492:
"Books are published with an expectation, if not a desire, that they will be criticised in reviews, and if deemed
valuable that parts of them will be used as affording illustrations by way of quotation, or the like -- and if the
quantity taken be neither substantial nor material, if, as it has been expressed by some judges, 'a fair use' only be
made on the publication, no wrong is done and no action can be brought." On the other hand, a work cannot be
published under the pretence of quotation: see Mawman v Tegg (1826) 2 Russ 385; Commonwealth v John Fairfax
& Sons Ltd (1980) 147 CLR 39 at 54-7;32 ALR 485; Commonwealth v Walsh (1980) 147 CLR 61 at 63;32 ALR
500; Lahore, Copyright Law, p 7562.
The Macquarie Dictionary definition of "criticism" includes the following: "1. the act or art of analysing and
judging the quality of a literary or artistic work, etc: literary criticism. 2. the act of passing judgment as to the
merits of something. . . 4. a critical comment, article or essay; a critique." In my opinion, "criticism" in the context
of s 41 is used in these senses.
The Macquarie definition of "review" includes the following: "1. a critical article or report, as in a periodical, on
some literary work, commonly some work of recent appearance; a critique. . ." In my opinion, "review" is used in s
41 in this sense.
In my view, the activities of, and service provided, by Jeffress cannot be characterised as either "criticism" or
"review" for the purposes of s 41.
Fair dealing for the purpose of reporting news -- s 42
It may be accepted that the "reporting of news" in this context can go beyond a report of events which are current.
In John Fairfax, above, Mason J said of s 42(1) (CLR at 56; ALR at 496): "I am inclined to allow that 'news',
despite its context of 'the reporting of news' 'in a newspaper, magazine or similar periodical' is not restricted to
'current events'."
In Pacific & Southern Co Inc v Duncan (1984) 744 F 2d 1490;cert denied,(1985) 471 US 1004, the United States
Court of Appeals for the Eleventh Circuit held that a television news clipping service's unauthorised videotaping of
a television station's copyrighted news feature story did not constitute fair use.
As has been said, in order to justify its conduct under s 42(1), Jeffress must first establish that its activity was
carried out for the purpose of, or is associated with, "the reporting of news".
The Macquarie definition of "news" includes: "1. a report of any recent event, situation etc. 2. the report of events
published in a newspaper, journal, radio, television, or any other medium. 3. information, events, etc, considered as
suitable for reporting: it's very interesting, but it's not news. 4. information not previously known: that's news to
me. . ."
In my opinion, the reference to the "reporting of news" in s 42(1) is intended to comprehend these matters, subject
to the possible extension mentioned by Mason J in John Fairfax…
In any event, Jeffress has not, in my view, established that its dealing was "fair" for the purposes of s 42(1). The
notion of "fairness" in this context has been considered in a number of cases.
In Hubbard v Vosper [1972] 2 QB 84, Lord Denning MR said at 94: "It is impossible to define what is 'fair
dealing'. It must be a question of degree. You must consider first the number and extent of the quotations and
extracts. Are they altogether too many and too long to be fair? Then you must consider the use made of them. If
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they are used as a basis for comment, criticism or review, that may be fair dealing. If they are used to convey the
same information as the author, for a rival purpose, that may be unfair. Next, you must consider the proportions. To
take long extracts and attach short comments may be unfair. But, short extracts and long comments may be fair.
Other considerations may come to mind also. But, after all is said and done, it must be a matter of impression.
In the present case, Jeffress took the whole of Mr de Garis' work and supplied it to its customers for its own reward
in the course of a trading activity. Jeffress did not comment on the material or attempt any analysis of its content:
see Duncan's case, supra. In the circumstances, the dealing cannot be said to be "fair".
Subject matter other than works
- See ss 103A to 103C

- new section, s 103AA, applies to parody or satire.
o a fair dealing with an audio-visual item is not an infringement of the item or any
work (or other audio-visual item) included in the item if it is for the purpose of
parody or satire
o See s 100A for meaning of audio-visual item
TCN Channel Nine Pty Ltd v Network Ten Pty Ltd (2002) 55 IPR 112
HELY J:Ten engaged Working Dog Pty Ltd (Working Dog), referred to by the primary judge as "its contracted
production team", to produce for it a television programme which would, amongst other things, involve criticism
and review and the reporting of news events. The purpose of Working Dog in the production of these programmes
was the purpose of Ten. Consistently with the decisions of the UK Court of Appeal earlier referred to, the
"purpose" referred to in ss 103A and 103B is to be ascertained objectively, and it was neither necessary nor
appropriate for officers of Ten or of Working Dog to give evidence that they had a sincere belief that he or she was
criticising a work or an audio-visual item or reporting news.
Ten's purpose in broadcasting its programme The Panel may have been, as Nine asserts, to entertain and to achieve
ratings. If it does so by means of a programme involving or including criticism, review or reporting of news in
which there is fair dealing with material in which copyright would otherwise subsist, then Ten is not disentitled
from relying on the ss 103A and 103B defences by reason only of the commercial nature of its activities. Criticism
may involve an element of humour, or "poking fun at" the object of the criticism. he fact that news coverage is
interesting or even to some people entertaining, does not negate the fact that it could be news: Nine Network
Australia Pty Ltd v Australian Broadcasting Corp (1999) 48 IPR 333 at 340 [34]-[37]
The primary judge would have upheld the fair dealing defence in relation to the following Panel segments:
-- "The 72nd Academy Awards"-- "The Sale of the Century" (lighting switched off)-- "The Today Show" (Opera
House)-- "Who Wants to be a Millionaire" (ingredients of Xmas pudding)
Nine has not appealed from any of those findings. That tends to confirm that the availability of the fair
dealing defence needs to be considered in relation to individual Panel segments on a case by case basis, rather
than by reference to some a priori thesis that Ten is not entitled to rely upon the defence because its purpose was to
entertain and to achieve ratings.
At 72(i), the primary judge said:
. . . news may involve the use of humour, but . . . there can nevertheless be considerable difficulty in distinguishing
news from entertainment (see [58] above). As a matter of judgment and impression, I prefer the conclusion that the
purpose of this re-broadcast, evident from The Panel discussion, was that of entertainment rather than the reporting
of news . . .
Ten submits that the primary judge reached this conclusion upon the erroneous basis that there could be no overlap
between news and entertainment. His Honour specifically acknowledged that there could be such an overlap, but
came to the conclusion, as a matter of judgment and impression, that this Panel segment fell upon one side of the
line rather than upon the other. This is a matter on which different persons might legitimately hold different
conclusions. I am not persuaded that his Honour erred in coming to the conclusion which he did.
In assessing whether a defence of fair dealing exists, it is necessary to have regard to the true purpose of the critical
work. As Henry LJ said in Time Warner Entertainment Co Ltd v Channel 4 Television Corp PLC (1993) 28 IPR
459 at 468, the question to be answered is as follows:
. . . is the program incorporating the infringing material a genuine piece of criticism or review, or is it something
else, such as an attempt to dress up the infringement of another's copyright in the guise of criticism, and so profit
unfairly from another's work? As Lord Denning said in Hubbard v Vosper [1972] 2 QB 84 at 93, "it is not fair
dealing for a rival in the trade to take copyright material and use it for its own benefit".
What is required in order to enliven the defence is that the copying take place as part of and for the purpose of
criticising or reviewing the broadcast in question: Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142 [2001]
4 All ER 666 at [61].
Unpublished work
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- Commonwealth of Australia v John Fairfax and Sons (1980) 32 ALR 485 per Mason J
o To my mind the absence of consent, express or implied, or such circulation by the author of an
unpublished literary work as to justify criticism or review is ordinarily at least an important
factor in deciding whether there has been a ‘fair dealing’ under s 41
Implied licences
- Defence may be raised, where there is an implied licence granted by the copyright
owner to the user
De Garis v Neville Jeffress Pidler Pty Ltd (1990)
Jeffress argued that he had an implied licence to use the material published in newspapers for his own commercial
ends
HELD: If copyright material is produced for a particular purpose, then there is an implied permission or consent or
licence to use that material to carry out that purpose: see R & A Bailey & Co Ltd v Boccaccio Pty Ltd (1986) 4
NSWLR 701 at 711;77 ALR 177. Thus, generally speaking, a freelance writer submitting material for publication
impliedly licences the relevant media organisation to publish it. But if a freelance journalist submits an article to a
media organisation for publication in a particular newspaper or magazine or submits a film or recording for
broadcast by a particular station, a licence to publish it in another publication or to broadcast it on another station is
not, ordinarily implied.
It is one thing to imply from the circumstances surrounding the relationship between Mr de Garis and the
proprietor of the West Australian a licence to reproduce the work in that newspaper. But it is a different thing to ask
the court to imply a licence from Mr de Garis so as to permit the reproduction of his work by any commercial
press-clipping service which desires to deal with it in the course of its trade.
In the former case, the implication is necessary to give business efficacy to the contractual relationship between Mr
de Garis and a particular newspaper proprietor. Without such an implied licence, the contractual arrangement
between those parties would have been ineffective. In the latter case, different considerations apply. The activities
of Jeffress are separate, in ownership and commercially, and distinct in character, from the activities of the
newspaper proprietor. Jeffress is not publishing a newspaper. It is retrieving, for a fee, information previously
published in a newspaper. Whilst Mr de Garis has a direct, contractual relationship with the newspaper proprietor,
he has no relationship of any kind with Jeffress. Although a licence to publish the work in a particular way may be
necessary to make the relationship of writer and newspaper proprietor efficacious, in the case of a third party
having no relationship with Mr de Garis, such as Jeffress, the implication by the court of a licence to do what
would otherwise be unlawful is not called for.
OTHER STATUTORY DEFENCES
- any reproduction can be made for the purposes of judicial proceedings or for the purpose of giving
professional advice by a legal professional, patent or trade marks attorney: s 43.
- allowed to make a back-up copy of a computer program as long as this does not involve circumventing a
‘lock’ on the program etc.: s 47C
- allowed to make a temporary reproduction of a work or adaptation as part of the technical process of
(legally) making or receiving a communication: s 43A
o Temporary reproductions of audio-visual items are also allowed in the same way: s 111A.
- allowed to make a reproduction of a work if the reproduction is incidentally made as part of the technical
process of (legally) using a copy of the work: s 43B.
o Temporary reproductions of subject matter other than works, for example films, are allowed in
the same way: s 111B
- allowed to use short extracts of copyright material in collections of material described on their face as
being for use in educational institutions as long as the excerpt is acknowledged and most of the collection
is of non-copyright material: s 44.
- allowed to read or recite in public an extract of reasonable length from a published work as long as you
make reasonable acknowledgement. Your recitation can also be used in a broadcast: s 45.
- A work may be performed in public at premises where people reside or sleep by operation of reception
equipment or by the use of a record, if it is part of the amenities provided exclusively for residents or
inmates of the premises or for those residents and inmates and their guests: s 46.
- Copyright in a sculpture or work of artistic craftsmanship situated, otherwise than temporarily, in a public
place is not infringed by the making of a painting, drawing, engraving or photograph of it or by the
inclusion of it in a film or TV broadcast: s 65.
o same for a building or a model of a building, except that there is no requirement that the premises
on which the building is constructed be open to the public: s 66.
- As far as creative artists are concerned, the copyright in an artistic work is not infringed by the making of
a later artistic work by the same author if, in making the later work, the author does not repeat or imitate
the main design of the earlier work: s 72.
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- There is also no infringement of a TV or sound broadcast if a person time-shifts, ie copies a broadcast for
his or her own private and domestic use so as to view it at a more convenient time: s 111
o s 111 exception to infringement is deemed never to have applied if any article embodying the
recorded broadcast is used for commercial purposes or for public viewing/listening or for
broadcasting purposes: s 111(3).
- under s 109A, if you own a non-infringing copy of a sound recording you are allowed to make a further
copy of it for solely private or domestic use.
o limits are placed on this entitlement.
 1) The private or domestic use must be by means of a device that the person owns;
 2) the earlier copy must not have been made by downloading over the internet;
 3) the defence will not apply if either copy is sold, let for hire, offered for sale,
distributed for any purpose (except to a family/household member for their own private
use) or used for broadcasting the sound recording.
COMPULSORY OR STATUTORY LICENCES
- A compulsory licence is one which the legislation obliges the copyright owner to grant
and a statutory licence is granted directly by the legislation
o Copyright owner is recompensed by payment of royalties.
Section 55
- when the composer or copyright owner of the work has licensed one record
manufacturer to make copies of it, other record manufacturers will also be able to use
the work and make their own arrangements of it as long as the required royalty is paid.
Part VB
- under Part VB of the Act, multiple copies may be made of literary or dramatic works by
educational institutions, institutions assisting handicapped readers and institutions
assisting intellectually handicapped persons
- Part VB allows educational institutions among others to do some very limited copying,
free of licence fees and also free of copyright consequences
- Also allows the institutions to do more substantial copying on condition that a
remuneration notice is given to the relevant collecting society
ACTIONS FOR INFRINGEMENT OF COPYRIGHT

Actions for infringement
(1) Subject to this Act, the owner of a copyright may bring an action for an infringement of the copyright.
(2) Subject to this Act, the relief that a court may grant in an action for an infringement of copyright
includes an injunction (subject to such terms, if any, as the court thinks fit) and either damages or an account of
profits.
(3) Where, in an action for infringement of copyright, it is established that an infringement was committed
but it is also established that, at the time of the infringement, the defendant was not aware, and had no reasonable
grounds for suspecting, that the act constituting the infringement was an infringement of the copyright, the plaintiff
is not entitled under this section to any damages against the defendant in respect of the infringement, but is entitled
to an account of profits in respect of the infringement whether any other relief is granted under this section or not.
(4) Where, in an action under this section:
(a) an infringement of copyright is established; and
(b) the court is satisfied that it is proper to do so, having regard to:
(i) the flagrancy of the infringement; and
(ia) the need to deter similar infringements of copyright; and
(ib) the conduct of the defendant after the act constituting the infringement or, if relevant, after
the defendant was informed that the defendant had allegedly infringed the plaintiff's copyright; and
(ii) whether the infringement involved the conversion of a work or other subject-matter from
hardcopy or analog form into a digital or other electronic machine-readable form; and
(iii) any benefit shown to have accrued to the defendant by reason of the infringement; and
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(iv) all other relevant matters;

the court may, in assessing damages for the infringement, award such additional damages as it considers
appropriate in the circumstances.
Consideration for relief for electronic commercial infringement
… (see legislation for full section).
- Further, subsection (5) focuses on electronic communication and the likelihood that
there have been more infringements than the plaintiff has actually proved in court.
o If these, together with the proved infringements, were on a commercial scale
then subsection (6) applies, commanding the court to take the likelihood of the
additional infringements into account when deciding on a penalty.
o See subs (7) for definition of commercial scale

Rights of owner of copyright in respect of infringing copies
(1) The owner of the copyright in a work or other subject-matter may bring an action for conversion or
detention in relation to:
(a) an infringing copy; or
(b) a device (including a circumvention device) used or intended to be used for making infringing
copies.
Autodesk Australia Pty Ltd v Cheung (1990) 17 IPR 69

FACTS: Autodesk sued for breach of copyright in its computer programs. Cheung had imported pirated programs
and either sold them or gave them away free to customers of hardware. He admitted infringing copyright.
ISSUE: Was it appropriate for the Court to exercise its discretion to award additional damages?
WILCOX J: Flagrancy
In terms, para (b) does not require that particular facts be demonstrated. The paragraph is satisfied if the Court is
satisfied that it is proper to award additional damages. But, in determining that question, the Court must have
regard to certain matters. Amongst those matters is "the flagrancy of the infringement". Paragraphs structured in
this way have been interpreted in comparable overseas statutes as requiring that flagrant conduct be shown: see
Ravenscroft v. Herbert (1980) RPC 193 at p 208 and Wellington Newspapers Ltd v. Dealers Guide Ltd (1984) 4
IPR 417 at pp 420-421. Without deciding the point, I am content to assume, for the purposes of the present case,
that this approach is equally applicable to s.115(4).
In Ravenscroft at p 208, Brightman J described "flagrancy" as implying "the existence of scandalous conduct,
deceit and such like; it includes deliberate and calculated copyright infringement". Upon the uncontested evidence
of Mr Quigley, Mr Cheung admitted on two occasions on 12 October 1987 that he knew the software offered by
him was pirated and its supply illegal. His reference to the people who make the programs spending a lot of time
and money in producing them demonstrates, first, that his reference to illegality was a reference to infringement of
copyright and, second, that he knew that the illegality was not merely a technical matter but an invasion of
legitimate commercial rights. He was prepared to infringe those rights for his own financial gain. Mr Cheung 's
conduct amply meets the definition adopted by Brightman J.
n Wellington Newspapers at p 422 Mullin J said of the comparable New Zealand sub-section:
"It is difficult to see what is contemplated by the additional damage unless it is something in the nature of
punishment to the defendant for the hurt done to the plaintiff which the conventional remedies would not provide.
How otherwise would the flagrancy of the infringement be relevant?"
Benefit to the defendant
The infringements by the respondent of the applicants' copyright included his importation of the programs - see
s.37 of the Copyright Act - and his offering those programs for distribution in the course of trade - see s.38. These
actions conferred upon him a commercial advantage, vis-a-vis his competitors. He was able to offer to his
customers, free of charge, valuable computer programs. The evidence does not reveal the extent of that advantage
in money terms…
The evidence does suggest that the respondent's operation, in October 1987, was of modest proportions, but there is
no reason to believe that it was unprofitable or that the "AutoCAD" programs were unimportant to its success. Had
either of these positions applied, it would have been easy for the respondent to prove them. In the circumstances, I
must assume that evidence from the respondent would not have advanced this aspect of his case; see Jones v.
Dunkel [1959] HCA 8; (1959) 101 CLR 298.
Other considerations
Computer software is easy to duplicate, distribute and conceal. Particularly in a case where a person is supplying
computer programs as an adjunct to other equipment, and is therefore not advertising the supply, infringements
may be difficult to detect. And, when they are detected, proof of the facts may be a substantial task. It is
noteworthy, in the present case, that Mr Cheung denied to the persons carrying out the search authorized by
Burchett J any knowledge of AutoCAD programs. They were found only after an extensive search of his premises.
They then had to be taken away and inserted into a computer for precise identification.
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A further element to be considered… is the improbability that the only breaches of the applicants' copyright by the
respondent were breaches related to the one AutoCAD program supplied to Mr Quigley and the 14 programs
discovered at the time of the search. This fact is relevant both to the extent of the benefit obtained by the
respondent from his infringements of copyright and the loss sustained by the applicants.
During the course of his submissions counsel for the applicants pointed out that where a natural person is convicted
of an infringement of copyright involving more than one article, Parliament has now provided for a penalty ranging
as high as $50,000: see s.133(2) of the Act. Counsel did not suggest that this figure was directly relevant to this
case. Indeed, he pointed out that damages under s.115 might exceed that sum. But he made the point that the size
of the penalty provided by s.133(2) indicates the serious view which Parliament takes of copyright infringements. I
think that the point is well made, although I do not use s.133(2) for any other purpose. It is purely coincidental that
I have reached the conclusion that the total amount of damages which the respondent should pay in this case is
$50,000.
Once again, any assessment must be arbitrary, in the sense that it is impossible to demonstrate its correctness by
reference to provable fact. But I think that a total sum of $35,000 -- $20,000 for Autodesk Australia and $15,000
for Autodesk Inc -- is a figure which fairly reflects the matters I have discussed. The addition of these amounts to
those allowed under s.115(2) results in judgment in favour of Autodesk Australia in the sum of $30,000, and in
favour of Autodesk Inc for $20,000. The respondent must pay the applicants' costs.
Deckers Outdoor Corporation Inc v Farley (No 5) [2009] FCA 1298.

FACTS: Deckers produced UGG™ boots. Farley produced and sold counterfeir UGG boots both online and at
QVM in Melbourne. Court examined the flagrancy of the conduct when determining the issue of additional
damages.
[104] Towards the end of 2003 Deckers [the plaintiffs] discovered, for the first time, that there was reason to
believe that counterfeit footwear was being manufactured on premises controlled by Hepbourne [the defendant
company]. It applied to the Court for urgent injunctive relief. On 23 December 2003 Hepbourne consented to
orders (which were made) that it be restrained from manufacturing or distributing footwear bearing Deckers’
trademarks and copyright works. Despite agreeing to these orders, Hepbourne continued with its infringing
conduct. Deckers obtained a search order. It was executed on 11 February 2004 at Hepbourne’s Moorabbin factory.
The searchers found partially completed footwear which bore Deckers’ get-up. This proceeding was settled on the
terms outlined above at [65]-[66]. Pursuant to those terms Hepbourne consented to the making of a permanent
injunction … Such orders were duly made by the Court.
[105] Later in 2004 Deckers alleged that Hepbourne (and others) had engaged in further infringing conduct and
commenced a proceeding in the Court to require Hepbourne to pay to it the sum which it had been agreed would be
paid in the event of a further contravention. The proceeding was compromised on [certain] terms ….
[106] During 2005, 2006 and 2007 the manufacture at and the distribution from Hepbourne’s Moorabbin factory
continued apace. Additional people were recruited to sell the boots on eBay. ….
[107] Late in 2007, Deckers had cause to believe that infringing conduct was again occurring. The present
proceeding was commenced. On 12 November 2007 Deckers was granted a further search order in respect of the
Moorabbin factory. The order was executed the following day and the search yielded evidence of the manufacture
and distribution of infringing products on a substantial scale. …
[111] On 27 November 2007 Hepbourne and Vladimir Vaysman gave undertakings to the Court that they would
refrain until trial from manufacturing or distributing footwear bearing Deckers’ get-up. In breach of this
undertaking, counterfeit footwear continued to be produced at and distributed from the Moorabbin factory. This
continued at least until 12 December 2007 when a further search order was executed.
[112] It is clear, and I find, that Hepbourne, … was intent on manufacturing and marketing counterfeit footwear,
totally disregarding Deckers’ rights and Court orders. The commencement of legal proceedings, the execution of
search orders and the making of restraining orders were simply treated as inconvenient interruptions to what was
intended to be, and was, for over four years, a calculated and successful attempt to make money through selling
footwear which purported to have been manufactured by Deckers.
[113] This case must be adjudged as one of the worst of its kind to come before the Court. It is probably too
generous to describe it as “flagrant”. General deterrence must be a significant consideration. Most of the damage
complained of occurred after Hepbourne was well aware that it was engaged in infringing conduct. Although the
monetary benefits which flowed to Hepbourne … cannot be determined with precision, it amounted to many
millions of dollars.
HELD: $3.5 million awarded against the company and $50,000 against its sole director – just for flagrancy and in
addition to the compensatory damages (of $3 million). At a further hearing the individuals responsible for the
flagrant disregard of court orders were sentenced to periods of imprisonment for contempt of court, the longest
sentence being a 3 year term: Deckers Outdoor Corporation Inc v Farley (No.8) [2010] FCA 657. On appeal to the
Full Federal Court, this term was reduced to 2 years.
GROUNDLESS THREATS OF LEGAL PROCEEDINGS
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- where a person threatens another with an action or proceedings for infringement, the
aggrieved person may bring an action against the threatener for a declaration that the
threats are unjustifiable, an injunction and damages: s 202
- By way of defence, the defendant would have to establish that the threats were not
unjustified.
o Alternatively, could counterclaim for relief.
- This kind of provision has been justified in Avel Pty Ltd v Intercontinental Grain
Importers Pty Ltd (1996) 65 FCR 154:
o …given the high cost of defending an action for infringement of an intellectual property right,
the owner of such a right will frequently be able to deter an actual or potential infringer by a
simple threat of infringement proceedings. Such a threat, however, may also have the same effect
on a person whose activities do not infringe, but who is unprepared to face the costs and time
involved in establishing this. As a result, a threat of an infringement action may enable the owner
of an intellectual property right to frighten away competitors or to damage such persons less
directly by threatening to sue their customers or suppliers. This potential for abuse has been
recognised for a long time in patents, trade marks and copyright legislation.
ACTIONS FOR INFRINGEMENT OF MORAL RIGHTS
Who enforces the rights?
-Normally enforced by the author

-s 195AN
o BUT, if author is alive but incapable of exercising the rights, they will be
exercised by another person who is administering the author’s affairs.
o In bankruptcy, the rights remain with the author
o Rights which extend beyond the death of author: exercised by author’s executor:
- Duration of moral rights is that of the period of copyright protection, therefore there may
be a series of executors.
- BUT the right of integrity in relation to films ceases on the death of the author: s
195AM
Defences
- moral rights of the author limited primarily through provision that there will be no
infringement by a person who has acted reasonably in the circumstances
o the fair dealing defence does NOT apply to moral rights
- The onus is on the defendant to establish the reasonableness of his or her actions, in all
the circumstances of the case
- This defendant may be a person who has directly infringed or who has authorised an
infringement.
- No defence of reasonableness is available for false attribution, since an act of false
attribution is inherently unreasonable.
- The legislation outlines a non-exhaustive list of factors that the Court must take into
account
- For the right of attribution in relation to literary, dramatic, musical or artistic works
o S 195AR(2)
(a) the nature of the work;
(b) the purpose for which the work is used;
(c) the manner in which the work is used;
(d) the context in which the work is used;
(e) any practice, in the industry in which the work is used, that is relevant to the work or
the use of the work;
(f) any practice contained in a voluntary code of practice, in the industry in which the
work is used, that is relevant to the work or the use of the work;
(g) any difficulty or expense that would have been incurred as a result of identifying the
author;
(h) whether the work was made:
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i) in the course of the author’s employment; or

ii) under a contract for the performance by the author of services for another
person;
iii) if the work has 2 or more authors — their views about the failure to identify
them.
o The tests in relation to films are the same, except that the purpose for which the
film was made is to be considered – whether for exhibition at cinemas or for
television broadcast, for example – together with the employment status of its
maker.
- For the right of integrity in relation to literary, dramatic, musical or artistic works, and
films, the list includes, beyond those considerations listed above:
o whether the treatment was required by law or was otherwise necessary to avoid a
breach of any law: ss 195AS
Remedies
- action for infringement of the author’s moral rights will be a civil action and the court
o if it finds an infringement, has a discretion as to which remedy to award
- award an injunction or damages or may make a declaration that the right has been
infringed or an order that the defendant make an apology: s 195AZA(1)
- In deciding the most appropriate remedy the court will consider: s 195AZA(2)
o whether the defendant was aware, or ought reasonably to have been aware, of the
author’s moral rights;
o the effect on the author’s honour or reputation resulting from any damage to the
work;
o which persons have seen or heard the work (presumably in its distorted form);
o anything done by the defendant to mitigate the effects of the infringement; and
o the cost or difficulty of either removing the false attribution or derogatory
treatment, or that would have been associated with identifying the author
CRIMINAL SANCTIONS
- Criminal provisions are found in Div 5 s 132AA onwards

- Concerned with electronic reproduction or copying
- Apply to both works and subject matter other than works
- Enforced by the State
Tiers of offences
- Indictable, summary and strict liability offences are created

o the indictable offence carrying the greatest penalty, followed by the summary
offences and the strict liability offences
- Apart from the penalty, each tier has different mens rea requirements
o indictable offences: the default mental element is recklessness (which can be
established through intention or knowledge as well as recklessness itself)
o summary offences: the fault element is negligence.
o strict liability offences: there is no fault element.
 However, the defence of mistake is available for strict liability offences
IF you have thought about whether your actions are infringing or not.
- The tiers of offences are designed to represent the moral culpability of the offender
- In the case of strict liability offences, the offender may not be taken to court.
o offender to be served with a notice and receive an on-the-spot fine
- Section 132AK provides for an aggravated offence
- Only an indictable offence can become an aggravated offence.
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o Such an offence is committed when the infringing copy was made by converting
the copyright subject matter from a hard copy or analog form into a digital or
other machine-readable form.
o This kind of offence is punishable by a maximum fine of 850 penalty units
($144,500) or 5 years imprisonment.
o An aggravated offence can only be proved if the prosecution can establish that
the defendant was reckless with respect to the circumstance that the infringing
copy was made through conversion to digital form
The criminal behaviour
- Commercial scale infringement prejudicing the copyright owner: s 132AC;

- The making of an infringing copy commercially: s 132AD;
- Selling or hiring out an infringing copy: s 132AE;
- Offering an infringing copy for sale or hire: s 132AF;
- Exhibiting an infringing copy in public commercially: s 132AG;
- Importing an infringing copy commercially: s 132AH;
- Distributing an infringing copy: s132AI;
- Possessing an infringing copy for commerce: s 132AJ;
- Making or possessing a device for making an infringing copy: s 132AL;
- Advertising the supply of an infringing copy: s 132AM;
- Causing a work to be performed publicly: s 132AN
- Causing a recording or film to be heard or seen in public: s 132AO
WHO OWNS COPYRIGHT IN WORKS?
- Ownership of copyright is not the same as authorship of the work or other material
- Copyright is valuable and may be traded
- Copyright gives whomever owns it the economic rights described in s 31 and related
provisions
- However, does not give any moral rights
The first owner is generally the author
- subject to the rest of the section ‘the author of a literary, dramatic, musical or artistic
work is the owner of any copyright subsisting in the work by virtue of this Part.’: s 35(2)
o importantly it is not that the author is likely to remain the owner of the
copyright, but that the author is decreed to be the first owner of the copyright.
Hence anybody receiving a legally valid assignment of the copyright from the
author will be its owner and enjoy full commercial advantage
Ownership by the employer – s 35(6)
- Unless special circumstances apply or unless there is an agreement to the contrary,

where a literary, dramatic, artistic or musical work is made by an employee under a
contract of service or apprenticeship, the employer is the owner of the copyright: s 35(6)
Newspaper proprietors – s 35(4)
- Where the work is made by the author (journalist)

o in pursuance of the terms of his or her employment, and
o the employment is by the proprietor of a newspaper, magazine or similar
periodical, and
o the employment is under a contract of service or apprenticeship, and
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o the work is made for the purpose of inclusion in one of the above media.
the author owns the copyright only in so far as it relates to reproduction of the work
for inclusion in a book or reproduction in the form of a hard copy facsimile made
from a paper edition of the newspaper etc. (or an earlier hard copy facsimile of it).
- The author is not owner of the copyright in relation to a reproduction by the proprietor
for a purpose connected with the publication of the newspaper, magazine or similar
periodical.
Photographs, portraits, engravings – s 35(5)
- Where the image is made pursuant to the terms of the agreement and this is done for
valuable consideration, the copyright attaching to the work will be the property of the
party commissioning it.
- This ownership is not absolute:
o If, at the time the commission was given, the purpose of the commission was
made known to the author by the commissioner, the author may then insist that
the work only be used for that purpose.
- the sculpting of a portrait bust would not appear to be covered by this subsection, since
sub-s 5(a) contemplates only the painting or drawing of a portrait.
- these provisions (ss 35(4-6)) are subject to any contrary agreement between the parties.
They embody the law as it exists in the absence of relevant contractual terms: s 35(3).
COPYRIGHT OWNERSHIP WHERE MORE THAN ONE AUTHOR
- any reference to an author in the provisions is a reference to the joint authors: s 78

- For the purposes of s 32, inter alia, the word ‘author’ may be taken as a reference to any
one of the joint authors: s 79
- only one of the joint authors needs to be a qualified person (i.e. have the requisite
association with the jurisdiction) over the time the work was made.
- Regarding duration of copyright, time will start to run after the death of the last of the
joint authors to die: s 80.
- If certain, but not all, of the joint authors are unqualified persons, then only the qualified
authors will be considered to own copyright in the work: s 82
- Joint authors actually hold their rights as tenants in common
o When one author dies, the interest will pass to estate
o Individual joint authors may not authorise the publication of the work unless
there has been some agreement between the authors to this effect.
o An individual author may take independent action for infringement of copyright,
though he or she will only be awarded a portion of the potential damages
proportional to that person’s share of the copyright.
o If there is no evidence of agreement to the contrary it will be assumed that the
copyright is held in equal shares: Prior v Lansdowne Press
OWNERSHIP OF COPYRIGHT IN SUBJECT MATTER OTHER THAN WORKS
- In most cases an intellectual or artistic production would give rise to a number of

different copyrights with different owners.
o EXAMPLE: copyright in the text of a book might be owned by the writer (or may have now
lapsed), copyright in the illustrations by the artist and copyright in the layout by the publisher.
The first two of these are copyright in works. The third is copyright in subject matter other than
works
Sound recordings
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- the maker of a sound recording is the owner of copyright in it: s 97

- the maker of the sound recording is the person who owned the first record embodying
the recording at the time it was made: s 22(3)
- The maker of a live performance is defined by s 22(3A)-(3C)
Provisions relating to the making of a work or other subject-matter
…
(3A) For the purposes of this Act, the makers of a sound recording of a live performance are:
(a) the person or persons who, at the time of the recording, own the record on which the recording is
made; and
(b) the performer or performers who performed in the performance (other than a performer who is
already covered by paragraph (a)).
Note: A performer might be liable to pay compensation under section 116AAA to a person who owns the
record on which the recording is made.
(3B) If:
(a) a sound recording of a live performance is made; and
(b) a performer performs in that performance under the terms of his or her employment by another
person (the employer ) under a contract of service or apprenticeship;
then, for the purposes of paragraph (3A)(b), the employer is taken to be a maker instead of that performer.
(3C) Subsection (3B) may be excluded or modified by agreement between the performer and the employer.
Cinematograph films
(4) For the purposes of this Act:
(a) a reference to the making of a cinematograph film shall be read as a reference to the doing of the
things necessary for the production of the first copy of the film; and
(b) the maker of the cinematograph film is the person by whom the arrangements necessary for the
making of the film were undertaken.
Cinematograph films
- the owner of copyright in a cinematograph film is generally its maker unless the film
was made pursuant to an agreement or commission and for valuable consideration.
o In that case the person commissioning the film is the copyright owner unless
there is some agreement to the contrary: s 98.
- The word ‘maker’ is defined to some degree in s 22(4)(b) as ‘the person by whom the
arrangements necessary for the making of the film were undertaken’.
- The making of the film is defined in the same subsection as ‘the doing of the things
necessary for the production of the first copy of the film’.
- Since the coming into force of the Copyright Amendment (Film Directors’ Rights) Act
2005, certain directors have also been considered the makers of the film for copyright
purposes: s 98(4)-(7).
o This is as long as the film is not commissioned and has not been directed under
the terms of an employment contract and there is no other agreement to the
contrary.
Broadcasts and editions
- Copyright in television and sound broadcasts is owned by the maker: s 99 and 22(5)
- The publisher of an edition of a work is the copyright owner of any copyright subsisting
in the edition: s 100
DIVISIBILITY, TRANSMISSION AND LICENSING OF COPYRIGHT
- Copyright is personal property

- Transmissible by assignment, will and devolution by operation of law
o Moral rights are NOT assignable
- Copyright ownership is divisible and many different people may own as tenants in
common
- FOR EXAMPLE: For example, a popular novel will have volume rights (to the book as a book) which
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may be split up as to paperback and hardcover rights, possibly handled by different publishers. There will
be serial rights, to have extracts serialised in newspapers and magazines; translation rights; film rights;
and dramatisation rights, to have the novel reproduced as a play, opera, musical or ballet. Splitting up
copyright in this way is contemplated in s 196(2), which allows for an assignment of copyright to be
‘limited in any way’, including as to the class of acts that the owner of the copyright has the exclusive
right to do. This may encompass a class of acts that is not separately specified in the Act as being
comprised in the copyright, but which falls within a class of acts which is so specified.
- Musical works may be divided up into performing rights and other rights. Performing
rights are rights of public performance and communication which are frequently
assigned to a collecting society for enforcement
By assignment
- Copyright may be traded by way of assignment of either the whole or part of the
copyright.
- Assignment effects a total alienation of the rights assigned to the extent that they have
been assigned.
- This means that the assignor becomes just as capable of infringing the copyright that has
been assigned as anyone else.
- The assignor also loses the right to prevent the assignee from assigning or licensing
whatever copyright is involved to a third person.
o Thus if the original assignee is under a contractual obligation to the assignor to
pay royalties, and then assigns the copyright to a third party, the third party will
not necessarily be obliged to maintain the payment of royalties.
o The original assignor would have to take action in damages against the first
assignee: Barker v Stickney [1919] 1 KB 121.
- Assignment must be in writing and bear the signature of the copyright owner or
representative: s 196(3).
o There can be no implied assignment of copyright
- Future copyright (copyright in a work which has not yet been created) can also be
assigned pursuant to s 197 if this is done in writing and the document bears the signature
of the person who will be the copyright owner when the work comes into existence
By will
- Copyright in published works simply becomes part of the estate of a deceased author.
- If the work is unpublished at the time of the copyright owner’s death and there is a will
leaving the manuscript or other material manifestation of the work to an heir, then the
copyright will normally pass along with the physical object which bears the work: s 198
Licences
- A licence, even if it is exclusive while it lasts, can be revoked.

- As with assignments, different portions of the copyright can be licensed to different
people for different periods of time
- several people may be licensed to deal with the copyright in the same way as long as the
licence is not an exclusive one.
- The copyright owner may impose any sort of limitation on the use of the subject matter
- A licence agreement does not need to be in writing unless it is an exclusive licence (see
s10(1) for the definition of an exclusive licence).
- While an assignment cannot be inferred from the behaviour of the parties, a non-
exclusive licence may be.
- Exclusive licensees have certain rights to take action for infringement of copyright,
except against the copyright owner, under ss 115, 116 and 119 of the Act.
- Where material is produced for a certain purpose there is an implied permission, or
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consent, or licence to use that material for that purpose but only for that purpose: De
Garis v Neville Jeffress Pidler Pty Ltd (1990) 18 IPR 292.
COLLECTIVE ADMINISTRATION
- Collecting societies in Australia are:

o Copyright Agency Limited
o APRA
o Phonographic Performance Company of Australia
o Australian Mechanical Copyright Owners’ Society
o Audio Visual Copyright Society
o Vi$copy (for visual arts)
- These societies have been formed to strengthen the position of the copyright owners in
the collection of licence fees
- They have far more funds available than any individual copyright owner, they can
therefore take action in overseas courts which would be impossible for the average
individual owner, they are extremely proactive as you can see from the case law, and the
result is that they promote compliance with the copyright legislation.
- APRA works on the basis that partial copyright is actually assigned to it by the owner in
return for funds from licences. It becomes the partial owner of the copyright.
- CAL, on the other hand, does not receive assignments of copyright by authors. It acts as
an agent for the authors in the exercise of certain of the rights. CAL liaises constantly
with the tertiary institutions and is responsible for collecting fees for the photocopying
that takes place around the campuses
-

TOPIC 8
PATENTS A: RATIONALES & CONCEPT OF INVENTION
- The patents system is designed to protect the owners of inventions.
- is a registration system, offering owners an opportunity to register their inventions for a
limited period of time and thus to obtain a temporary but total monopoly over it
THE CURRENT SITUATION
- worldwide demand for patents is increasing very rapidly.

o Businesses and governments are investing more money in research and
development and this is resulting in more patentable subject matter.
- a greater proportion of inventions is being patented than ever before as a result of
growing awareness for the need for intellectual property protection
- Protection is also being sought in more countries
o More independent countries now in the world than before
o export is a much more common commercial activity now than it used to be.
o more and more countries are becoming intellectual property consumers, as
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prosperity increases and countries open up to western influences.

o countries are increasingly putting in place regulatory systems which include
patent registration under influence of international trade agreements, i.e. TRIPS
HOW THE SYSTEM WORKS
- application for a patent begins with the filing of a patent request in accordance with the
regulations: s 29 Patents Act 1990 (Cth)
o application is made at the patents office, or, generally, IP Australia
- The applicant is usually the inventor or an assignee of the inventor.
- The application may be provisional or complete, that is it will contain either a
provisional or a complete specification (description of the invention).
- The provisional application allows time to think about the invention, and to assess its
viability before commitment is made to the expense of continuing with the full or
complete application
o Establishes the priority date which will carry over to the full application
Specifications and claims
- Provisional specifications will not of itself lead to a patent being granted

o Will lapse in 12 months, and must be replaced by a full application
- Application must:
o fully describe the invention so that someone with knowledge of the technology
could reproduce your invention from the information given. It does not have to
detail exact dimensions in the nature of a manufacturing specification so long as
those dimensions are not critical to the working of the invention.
o Give the best method known of putting the invention into effect
 because a patent is seen to involve a contract between the State and the patentee. In
return for the disclosure of a new and useful invention the State is prepared to grant a
monopoly right for a limited period. So the description is part of your fulfilment of the
contract, and it must take the form of practical instruction.
o end with one or more claims which define the invention the patent is to cover. A
standard patent may have any number of claims
- These claims must relate to one invention only: s 40(4).
o Claims establish the extent of the monopoly
- Normally there will be several claims of varying scope so that if one claim is too broad
to support registration, another narrower claim might satisfy the examiner and stand up
against opposition.
- Claims may be either independent or dependent.
o An independent claim stands on its own and makes no reference to other claims.
o A dependent claim refers back to previous claims in the same specification.
- labelled drawings should be used to help describe the invention and should include an
abstract.
o The abstract is not part of the specification; it is included for searching purposes
Solicitors and patent attorneys
- a legal practitioner must not prepare a specification unless he or she is acting under the
instructions of a registered patent attorney: s 202
- Drafting specifications is a job for a specialist patent attorney who will likely have an
engineering or other scientific background.
o Requires the most detailed understanding of the technology in question
Examination
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- After complete specification is lodged, inventor can ask for an examination of the patent
request (s 44) whereupon the Commissioner must examine the request: s 45
- If the Commissioner is satisfied the Commissioner will accept the request (s 49) and the
documents associated with the application will become open to public inspection
Opposition and other challenges
- A challenge, in the form of opposition to the granting of a patent, may be made as soon
as the Patents Office has given notice publicly of its acceptance of an invention.
o Made under Chapter 5 of the Act (ss 59 and 60) on the basis that the applicant is
not entitled to the grant of the patent or that the invention is not a ‘manner of
manufacture’ which is novel and inventive or that the content of the specification
does not comply with the Act.
- The patent application will only be refused if it is clearly invalid:
o F. Hoffmann-La Roche AG v New England Biolabs, Inc. (2000) 99 FCR 56.
- The opponent bears the onus of proving the invalidity: The University of Newcastle
Research Associates Limited v Roberto De Toffol [2007] APO 71
- If there is no opposition to the grant or if the Commissioner decides, in spite of the
opposition, that the patent should be granted then the patent will be sealed (and thus
granted): ss 61, 62
- This does not, however, ensure the continuing validity of the patent due to the
possibility of a future successful challenge to the patent
o Such a challenge might take place either in the context of an action for
infringement or at another time (see ss 121 and 138).
o Or a defendant whose own use of a product or procedure was impugned will
allege that the patent giving rise to the action was invalid.
Maintenance
- Maintenance fees must be paid beginning in the 5th year of protection

- These increase each anniversary year after that
Duration
- The maximum period of protection for a standard patent is generally 20 years: s 67

o As from 1998 an exception was made for pharmaceutical patents
o Patentees may apply for an extension of term of up to 5 years for a standard
patent claiming a pharmaceutical substance to assist them to earn a reasonable
return on their investments
 The statutory framework for this scheme is provided under ss 70 to 79A
Innovation patents
- As well as standard patents, there are also innovation patents which offer a simpler
registration procedure and a shorter period of protection (not focus of work).
- They are designed for inventions that do not show the level of inventiveness necessary
for the grant of a standard patent, and they can be gained without any detailed
examination.
- On the other hand, infringement action cannot be taken by the patentee until the patent
has been examined and certified: s 120(1A).
- Innovation patents would normally be granted within 3 months and protection lasts for a
maximum of 8 years (s 68).
- Innovation patents are suitable for industries with fast moving trends and for small or
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medium-size companies.
- They are not available for plants or animals or in the process of their generation: s 18
PCT applications
- PCT stands for Patent Cooperation Treaty

- application can be made in another country, designating Australia as a state in which
protection is required
- This application is then treated as an application under our Act
- an international application can be filed seeking protection in a number of countries.
o This has the same effect as filing applications separately in each of the desired
countries.
- Ultimately the application is processed in each of the nominated countries which will
decide individually whether to grant or refuse it.
o Processing will not commence until 20 months after priority date
WHAT IS A PATENTABLE INVENTION?
Manner of new manufacture
- one of the criteria for the existence of a patentable invention is that it be an invention,
that is a manner of manufacture within the meaning of section 6 of the Statute of
Monopolies: s 18
PATENTS ACT 1990 - SECT 18
Patentable inventions
Patentable inventions for the purposes of a standard patent
(1) Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if
the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; and
(ii) involves an inventive step; and
(c) is useful; and
(d) was not secretly used in the patent area before the priority date of that claim by, or on behalf of,
or with the authority of, the patentee or nominated person or the patentee's or nominated person's predecessor in
title to the invention.
…
(2) Human beings, and the biological processes for their generation, are not patentable inventions.
- Invention?
o "invention" means any manner of new manufacture the subject of letters patent
and grant of privilege within section 6 of the Statute of Monopolies, and includes
an alleged invention: schedule
- Section 6 of the Statute of Monopolies provides that the declarations of invalidity
contained in the preceeding provisions of the Statute:
o shall not extend to any letters patents and grants of privelege … hereafter to be
made of the sole working or making of any manner of new manufactures within
this realme, to the true and first inventor and inventors of such manufactures,
which others at the tyme of makinge such letters patents and grants shall not use,
soe as alsoe they be not contrary to the lawe or mischievous to the state by
raisinge prices of commodities at home, or hurt of trade, or generallie
inconvenient’.
- A patentable invention must be an invention and a manner of manufacture according to s
18.
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o For it to be an invention, it must be a manner of new manufacture, according to

the Schedule which derives from the Statute of Monopolies, and may include an
alleged invention.
Newness?
Rogers v Commissioner of Patents (1910) 12 CLR 701

GRIFFITH CJ: The alleged invention in question in this case may be described as a device or contrivance for
burning down standing timber, and consists in a mode of keeping the wood used as fuel in constant contact with
the tree to be felled. The mode described is to set up two forked sticks, resting loosely on the ground, near the tree
and inclined towards it, and to use them as two legs of a tripod, the third being formed by a long piece of dry
timber, which serves as fuel, and which is supported near the middle of its length by the forks, with one end (which
is on fire) resting against the foot of the tree, the point of support being such that the part near the tree is heavier
than the other part, so that as it burns away the burning end will fall forward towards the tree and still remain in
contact with it. The question is whether such a device or contrivance is "any manner of new manufacture"
within the meaning of the Statute of Monopolies.
As a matter of plain sense unaided by judicial interpretation, I do not suppose that any person conversant with the
English language could be found to say that it is. But it is suggested that these words have in some cases received
an extended signification, and that the language used by learned Judges is capable of being read as covering such a
case.
The word "manufacture" may be read as denoting both the thing produced and the process of producing it: Boulton
v. Bull. It is settled law that a new idea alone is not subject matter for a patent. Again: "You cannot have a patent
for a well-known mechanical contrivance merely when it is applied in a manner or to a purpose, which is not quite
the same, but is analogous to the manner or to the purpose in or to which it has been hitherto notoriously used":
Harwood v. Great Northern Railway Co.
In Lane Fox v. Kensington and Knightsbridge Electric Lighting Co. Lindley L.J. said: ‘A patentee must do
something more; he must make some addition, not only to knowledge, but to previously known inventions, and
must so use his knowledge and ingenuity as to produce either a new and useful thing or result, or a new and useful
method of producing an old thing or result. On the one hand, the discovery that a known thing—such, for example,
as a Planté battery—can be employed for a useful purpose for which it has never been used before is not alone a
patentable invention; but, on the other hand, the discovery how to use such a thing for such a purpose will be a
patentable invention if there is novelty in the mode of using it, as distinguished from novelty of purpose, or if any
new modification of the thing, or any new appliance is necessary for using it for its new purpose, and if such mode
of user, or modification, or appliance involves any appreciable merit.’
Chamberlain and Hookham Ltd. v. Mayor of Bradford:—"The law on this subject is free from doubt, and I do not
know that it has been better stated than it was by Mr. Baron Alderson in the well known case of Jupe v. Pratt31
Web. Pat Cas., 144.. The learned Judge says:—You cannot take out a patent for a principle. You may take out a
patent for a principle coupled with the mode of carrying the principle into effect, provided you have not only
discovered the principle but invented some mode of carrying it into effect. But then you must start with having
invented some mode of carrying the principle into effect."
The idea of keeping two inflammable substances in contact in order to promote combustion is, I suppose, as old as
the discovery of the means of producing fire; the idea of a tripod is not new; the fact that a consumable limb of a
tripod will fall as the end of it is consumed is not new, the use of forked sticks is not new. At best, the invention is
a direction how to apply the law of gravitation in order to keep in contact two bodies, one of which is being
consumed. I am unable to distinguish the case from that of an alleged invention of a new method of laying a
kitchen fire in a grate…I think that the case of Hickton's Syndicate, on which my brother Isaacs relies, and which
was not cited in argument, is obviously distinguishable.
ISAACS J: ‘…the vital difference is that in the familiar methods the gap between the burning components of the
fire widens, and the falling pieces have no regularity of direction or movement, and have no constancy of action,
and no possible practical use can be made for the purpose in question of any of the hitherto used methods. Millions
of acres of land have been cleared, tens of thousands of human hands have been employed in doing it, and until
now, simple as the method is now it is disclosed, no one has struck upon the expedient.
It is objected that to grant Rogers a patent for this would prevent a land owner from adopting the expedient. If this
is an objection a great proportion of the patents in existence should never have been granted.
If in the present case it could have been shown that Rogers' method was known and practised in any other domain
of industry, and was merely the application of a well known thing to an analogous use, without any novelty in
applying it, it would have been lacking in invention: Harwood v. Great Northern Railway Co…But as always
indicated even in such a case the application to the new purpose may not be a mere application of the old method,
it may be that in the mode of application there is a sufficient degree of inventive ingenuity to save it from the rule:
per Lord Watson in Morgan v. Windover…Lord Herschell in Vickers, Sons & Co. Ltd. v. Siddell observed:
"Experience has shown that not a few inventions, some of which have revolutionized the industries of this country,
have been of so simple a character that when once they were made known it was difficult to understand how the
idea had been so long in presenting itself, or not to believe that they must have been obvious to everyone." The test
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of invention is clearly stated by the House of Lords in Dredge v. Parnell to be whether it would have occurred to
an ordinary skilled workman desirous of effecting the purpose; of course experience demonstrates it would not.
Here the applicant is claiming a device that no one had used before. It matters not in the least that the separate
factors of the applicant's device are old. He utilizes the natural force of gravity, but he regulates it. Uncontrolled it
would pull the log to earth, and render it useless for his purpose: he harnesses it, controls its energy, restrains its
operation from exertion in undesired directions and at inappropriate times, and permits it to assist and not to hinder
the immediate purpose and through that the ultimate purpose he has in view. The appliances with which he effects
all this are primitive, but the chain of events which constitute their action is novel. The force of gravity which they
control is utilised also in turn to compel the forward action of the supporting forks, and it is the combination of the
idea or principle, of machine or apparatus, and of system or modus operandi, which constitutes the total process the
subject of the application.
National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 (the NRDC case)
DIXON CJ, KITTO and WINDEYER JJ:
The examiner, in his report under ss. 47 and 48, stated objections to these three claims in the following terms: "It
appears that the active substances of the invention are known. Claims 1 to 3 are not therefore directed to any
manner of manufacture in that they are claims to the mere use of known substances - which use also does not result
in any vendible product".
Lord Buckmaster [stated in the Microcell Case [1958] HCA 58; (1959) 102 CLR 232] ". . . when once a substance
is known," he said, "its methods of production ascertained, its characteristics and its constituents well defined, you
cannot patent the use of that for a purpose which was hitherto unknown”…Because in the postulated state of
knowledge the new purpose is no more than analogous to the purposes for which the utility of the substance is
already known, and therefore your suggestion of the new purpose lacks the quality of inventiveness: see per Bowen
L.J. in Elias v. Grovesend Tinplate Co. (1890). Unless invention is found in some new method of using the
material or some new adaptation of it so as to serve the new purpose, no valid patent can be granted: see Moser v.
Marsden (1893)
Lindley L.J. expressed in the passage in his judgment in the case of Lane Fox v. Kensington and Knightsbridge
Electric Lighting Co. (1892) 3 Ch 424, at pp 428, 429 ...that a man who discovers that a known machine (his
Lordship might equally have said a known substance) can produce effects which no one before him knew could be
produced by it has made a discovery, but has not made a patentable invention unless he so uses his knowledge and
ingenuity as to produce either a new and useful thing or result, or a new and useful method of producing an old
thing or result. His Lordship went on to say that the discovery how to use a known thing for a new purpose will be
a patentable invention if there is novelty in the mode of using it as distinguished from novelty of purpose, or if any
new modification of the thing or any new appliance is necessary for using it for its new purpose, and if such mode
of user, or modification, or appliance involves any appreciable merit.
his is not a claim which can be put aside as a claim for a new use of an old substance, true though it be that the
chemicals themselves were known to science before the applicant's investigations began. It is a claim which denies
that the chemicals are old substances in the sense in which the expression has been used in such cases as Re A.F.'s
Application (1913) 31 RPC 58 Re BA's Application (1915) 32 RPC 348 and Re C.G.R.'s Application (1924) 42
RPC 320 It treats them as substances which in the relevant sense are new, that is to say as substances which
formerly were known only partially and, so far as weed-killing potentialities are concerned, were unknown; and its
tenor is that by an application of scientific ingenuity, combining knowledge, thought and experimentation, not only
in relation to the chemicals but in relation also to the enzyme systems of certain weeds and plants, the applicant has
evolved a new and useful method of destroying weeds without harming useful vegetation amongst which they are
growing.
If credit be given to the case which is made, the process differs from the previously- known processes of its kind in
this, that it employs substances the suggestion of which for the purpose in hand was new, was not obvious, and was
to be arrived at only by an exercise of scientific ingenuity, based upon knowledge and applied in experimental
research. The fact that the substances themselves were already known to man affords no valid reason for denying
that the suggestion was inventive.
The central question in the case remains. It is whether the process that is claimed falls within the category of
inventions to which, by definition, the application of the Patents Act is confined. The definition, it will be
remembered, is exclusive: invention means any manner of new manufacture the subject of letters patent and grant
of privilege within s. 6 of the Statute of Monopolies.
...the view which we think is correct in the present case is that the method the subject of the relevant claims has as
its end result an artificial effect falling squarely within the true concept of what must be produced by a process if it
is to be held patentable. This view is, we think, required by a sound understanding of the lines along which patent
law has developed and necessarily must develop in a modern society. The effect produced by the appellant's
method exhibits the two essential qualities upon which "product" and "vendible" seem designed to insist. It is a
"product" because it consists in an artificially created state of affairs, discernible by observing over a period the
growth of weeds and crops respectively on sown land on which the method has been put into practice. And the
significance of the product is economic; for it provides a remarkable advantage, indeed to the lay mind a
sensational advantage, for one of the most elemental activities by which man has served his material needs, the
cultivation of the soil for the production of its fruits. ...
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- Mere discovery of something naturally occurring is not a patentable invention.
Lack of newness which is clearly evident from the specification itself
- Sometimes it will be quite clear from the specification that an invention is not new
o It has long been considered that such inventions cannot be registered, if their
lack of newness is clear from a perusal of the specification itself
- The Commissioner is not bound to accept the allegation of the applicant that [the
invention as claimed in any claim] is new, if it is apparent on the face of the
specification, when properly construed, that the allegation is unfounded … It is therefore
open to the Commissioner in a proper case to direct the deletion of a claim for a process
which may be seen from the specification, considered as a whole, to be "outside the
whole scope of what is known as invention" because, in the words of Lord Buckmaster,
when Solicitor-General, in Re B.A.'s Application (1915) 32 RPC 348 it is ‘nothing but a
claim for a new use of an old substance’: NRDC Case
- BUT it is very rare for a patent to be thrown out because, just by reading the
specification, there is no apparent newness
o In almost all cases, you would discuss the other elements of s 18: the
requirements of novelty and inventive step, which are judged using specific tests
Lockwood v Doric [2004] HCA 58

In Chapman and Cook and Lectro Linx Ltd v Deltavis Ltd, Clauson J remarked:
[I]f a Patentee, though entirely erroneously, does state by way of what I may call recital in his Specification that a
particular form of thing is common and then by some oversight or some mistake claims a monopoly in that
particular form of thing he will have, so to speak, recited himself out of Court and I venture to doubt whether he
could possibly maintain any claim to a monopoly in a thing which he has recognised to be something which
existed.
Chapman may be understood as a case which exemplifies a specification showing ‘on its face’ that an invention
did not involve an inventive step. The expression derives from Commissioner of Patents v Microcell Ltd, which
stands for a narrow proposition that a Commissioner of Patents, or his or her delegate, may refuse an application
for patent protection where a specification ‘on its face’ shows the invention claimed is not a manner of new
manufacture. This may arise, for example, from admissions concerning novelty.
It is also possible to imagine, as Lord Hoffmann did in Biogen Inc v Medeva plc that there may be cases where the
alleged subject matter is ‘so obviously not an invention that it is tempting to take an axe to the problem by
dismissing the claim’. Such cases are likely to be rare.
Human treatment exception
- It has often been considered undesirable to patent processes for treating human disease.
o British and European legislation excludes such inventions from the class of
patentable subject matter
- Exception supported:
o By permitting a monopoly over potentially live-saving treatment, patentees will
usually demand high fees for the treatment to recover cost and profit
o Will not enter the public domain for 20 years, by which time many who may
have been saved, will have died as they cannot afford treatment
- On the other hand:
o there is no legal logic in denying protection to this kind of invention since it is a
manner of manufacture in the normal sense.
o the protection offered by patents law is intended to encourage new developments
of this kind so that there will ultimately be more of them in the public domain
- Australia has never had any codified ban on the patentability of human treatment
o Until 2013 it had not finally been determined what the state of the law in
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Australia was
- HCA ruled that a method of using a pharmaceutical product could be protected by a
patent
Apotex Pty Ltd v Sanofi-Aventis Austalia Pty Ltd [2013] HCA 50

CRENNAN and KIEFEL JJ:
[C]ritically, the subject matter of a claim for a new product suitable for therapeutic use, claimed alone (a product
claim) or coupled with method claims (combined product/method claims), and the subject matter of a claim for a
hitherto unknown method of treatment using a (known) product having prior therapeutic uses (a method claim),
cannot be distinguished in terms of economics or ethics. In each case the subject matter in respect of which a
monopoly is sought effects an artificially created improvement in human health, having economic utility. It could
not be said that a product claim which includes a therapeutic use has an economic utility which a method or
process claim for a therapeutic use does not have. It could not be contended that a patient free of psoriasis is of
less value as a subject matter of inventive endeavour than a crop free of weeds. Patent monopolies are as much an
appropriate reward for research into hitherto unknown therapeutic uses of (known) compounds, which uses benefit
mankind, as they are for research directed to novel substances or compounds for therapeutic use in humans. It is
not possible to erect a distinction between such research based on public policy considerations.
…There is, however, a distinction which can be acknowledged between a method of medical treatment which
involves a hitherto unknown therapeutic use of a pharmaceutical (having prior therapeutic uses) and the activities
or procedures of doctors (and other medical staff) when physically treating patients. Although it is unnecessary to
decide the point, or to seek to characterise such activities or procedures exhaustively, speaking generally they are,
in the language of the NRDC Case, "essentially non economic" and, in the language of the EPC [European Patent
Convention] and the Patents Act 1977 (UK), they are not "susceptible" or "capable" of industrial application. To
the extent that such activities or procedures involve "a method or a process", they are unlikely to be able to satisfy
the NRDC Case test for the patentability of processes because they are not capable of being practically applied in
commerce or industry, a necessary prerequisite of a “manner of manufacture”.
Agriculture and horticulture processes
- The reason why it has been an issue is that it used to be thought that such processes were
not patentable in that they were not methods of manufacture in the conventional sense.
o This does not reflect the current position
- We are here concerned with a process producing its effect by means of a chemical reaction, and the
ultimate weed-free, or comparatively weed-free condition of the crop-bearing land is properly described
as produced by the process. The fact that the relevance of the process is to agricultural or horticultural
enterprises does not in itself supply or suggest any consideration not already covered which should weigh
against the conclusion that the process is a patentable invention (NRDC Case)
Schemes, methods and systems
- schemes, methods and systems are still considered to be outside the concept of an
invention.
Rolls-Royce Ltd’s Application [1963] RPC 251

FACTS: The claim reads: ‘A method of operating and reducing the noise from an aircraft powered by one or more
compound gas turbine by-pass engines including a variable area final jet nozzle comprising taking-off the aircraft
initially with normal nozzle effective area increasing the effective area of the final jet nozzle of said engine or
engines during a subsequent shallow climb of the aircraft whereby the mass airflow through the by-pass duct of the
said engine or engines is increased and the cooler and lower velocity jet gas resulting produces less noise than is
produced by the normal jet nozzle are to the normal effective area’.
HELD: What all this comes to is the expression of an operating instruction for known aircraft with existing
controls, whereby the manipulation of such controls provides a full power initial take-off, a change to a shallow
climb for a period and then a resumption of full power engine operation. It is stated in the specification that the
engine setting appropriate for the shallow climb results in greatly reduced engine noise…
I read the specification in suit as a disclosure of a general flight plan directing the initial operational movements of
an aircraft between take-off and the commencement of free flying conditions, and this in my judgment is as much
outside the operation of any of the useful arts as would be a trainer’s direction to a jockey in control of a racehorse.
It was pressed upon me that, in the present state of the authorities, rejection at the application stage can hardly ever
be justified. As I understood my function it is, so far as concerns the present case, to determine whether the hearing
Officer has misapprehended the law in concluding that the application disclosed nothing that can reasonably be
termed a manner of manufacture. In my judgment he has not and I confirm his decision.
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It must additionally be borne in mind that, even where a manner of new manufacture is disclosed in the patent
application, s 6 of the Statute of Monopolies excluded grants which are mischievous to the State by being generally
inconvenient. The responsibility of a pilot of an aircraft in flight carrying scores of passengers is already
sufficiently onerous without adding to his burden the task of avoiding infringement of a statutory monopoly in the
operation of his standard engine controls unless the justification for grant is reasonably manifest…
Business systems and financial plans

Grant v Commissioner of Patents [2006] FCAFC 120
HEEREY J: Innovation Patent No. 2003100074 entitled "Asset Protection Method" revoked on the basis that the
invention claimed did not involve a manner of manufacture within the meaning of s 6 of the Statute of Monopolies
1623 (Imp) (‘a manner of manufacture’).
The financial transaction to protect an individual’s assets therefore utilises a trust, a gift, a loan and a security.
There is no suggestion of any novelty in those integers.
Their Honours turned to the ‘central question’ of the case, namely whether the process claimed was a manner of
new manufacture within s 6 of the Statute of Monopolies. Their Honours’ reasoning for an affirmative conclusion
can be summarised as follows:
- The concept was not limited to the idea of making tangible goods by hand or machine (the everyday meaning of
‘manufacture’); rather the question was ‘[i]s this a proper subject of letters patent according to the principles
which have been developed for the application of s 6 of the Statute of Monopolies?’ (269).
- The unresolved question was whether it is enough that a process produces a ‘useful result’ or whether it is
necessary that ‘some physical thing is either brought into existence or so affected as the better to serve man’s
purposes’ (270).
- The ambit of s 6 cannot be stated by precisely defining ‘manufacture’ (271).
- A process, to fall within s 6, must belong to a ‘useful art as distinct from a fine art’ (275), it must have an
‘industrial or commercial or trading character’ (275 citing Re Lenard’s Application (1954) 71 RPC 190, at 192).
- A product, in relation to a process, is ‘only something in which the new and useful effect may be observed’; that
‘"something" need not be a "thing" in the sense of an article; it may be any physical phenomenon in which the
effect, be it creation or merely alteration, may be observed’ (276).
- Morton J’s ‘rule’ (the High Court’s inverted commas) may be accepted as long as ‘product’ is taken to cover
‘every end produced’ and ‘vendible’ as ‘pointing only to the requirement of utility in practical affairs’ (276).
- In the instant case, the method had as its end result an ‘artificial effect’ and thus was within the true concept of
what must be produced by a process if it is to be held patentable (277).
- The effect of the method is a ‘product’ because it consists in ‘an artificially created state of affairs’ (explained in
the context of the growth of weeds and crops on sown land on which a method had been put into practice) (277). •
If there is nothing that can properly be called a ‘product’ of the process ‘even an ingenious new departure would
be outside the limits of patentability’ (278).
Business, commercial and financial schemes as such have never been considered patentable:CCOM Pty Ltd v
Jiejing Pty Ltd
‘[y]ou cannot have a Patent for a mere scheme or plan – a plan for becoming rich; a plan for the better government
of a State; a plan for the efficient conduct of business’: Re Cooper’s Application for a Patent (1901) 19 RPC 53
As summarised by Heerey J in Catuity at [106], directions for the operation of a known article or machine or
carrying out a known process so as to produce an old result were not patentable, even if they provided a different
and more efficient method.
Patents have also been refused for methods of calculation, theoretical schemes, including business schemes and
abstract plans, such as:
- systems for arrangement of known things, such as a plan relating to the layout of houses in a row or terrace so as to
prevent overlooking (Re ESP’s Application (1944) 62 RPC 87);
- an arrangement of buoys for navigational purposes (Re W’s Application (1914) 31 RPC 141);
- a system of business even though its implementation involved the use of a printed envelope with a particular
arrangement of words (Re Johnson’s Application for a Patent (1901) 19 RPC 56 at 56); and
- a method of preventing the fraudulent re-use of sales book dockets and books used in that connection (Re Brown
(1899) 5 ALR 81).
We conclude that, for reasons related to its operation and effect, Mr Grant’s alleged invention does not involve a
manner of manufacture. There is a separate issue as to whether, quite apart from what might be called its lack of
physicality, the alleged invention lies in a realm of human endeavour outside those in which patents may be
granted. The fine arts are one such area.
Computer software
- If they are seen as merely operating through the recitation of mathematical formulae or
algorithms (procedures for solving specific mathematical problems) then it may be
argued that they are not patentable.
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o The Australian Patent Office does not consider a mathematical algorithm in itself
a manner of new manufacture because it is neither an artificially created state of
affairs nor something having utility in the field of economic endeavour
- an algorithm may legitimately be one of the steps in an otherwise patentable method.
o A ‘manner of manufacture’ may arise if the algorithm is being used for some
defined purpose
- … the use of algorithm is not different conceptually from the use of the compounds involved in National
Research and Development Council. Just as those compounds were previously known, so here, it is not
suggested there is anything new about the mathematics of the invention. What is new is the application of
the selected mathematical methods to computers, and in particular, to the production of the desired curve
by computer. This is said to involve steps which are foreign to the normal use of computers and, for that
reason, to be inventive. The production of an improved curve image is a commercially useful effect in
computer graphics: IBM Corporation v Commissioner of Patents (1991) 22 IPR
Living organisms
- Given that living organisms can be patented under US law, there is no reason why such
an animal should not be patented in Australia
- No Australian case law on the topic, but the issue has been settled in UK and US courts
- In American Cyanamid v Berk Pharmaceuticals [1976] RPC 231 a patent for a
biochemical process using strains of a micro-organism for the production of the
antibiotic tetracycline was at issue. was it a manner of manufacture?
o These [micro-organisms] do not, so far as is known, produce antibiotics in nature at all. They
have to be transferred to some appropriate medium, selected, mutated, re-selected and so on,
before they produce any, still less any appreciable, quantity of antibiotic. Production of the
required antibiotic may, indeed will, require a whole series of selection and mutation steps, and
the whole process is one which at the end, before the antibiotic which goes on the market is
produced, will involve a great variety of manufacturing techniques. Such a process is, to my
mind, in no way analogous to the production by selective breeding of, for example a better
tomato
- In Diamond v Chakrabarty 447 US 303 (1980) the bacterium in question was apparently
a result of genetic engineering and was able to break down crude oil, so it was likely to
be useful in cases of oil spills. Could the organism, for example, be considered a
‘manufacture’ or ‘composition of matter’?
o The laws of nature, physical phenomena, and abstract ideas have been held not patentable. …
Thus, a new mineral discovered in the earth or a new plant found in the wild is not patentable
subject matter. Likewise, Einstein could not patent his celebrated law that E=mc 2; nor could
Newton have patented the law of gravity. Such discoveries are ‘manifestations of … nature, free
to all men and reserved exclusively to none.
o BUT this bacterium was patentable, since the patentee ‘had produced a new bacterium with
markedly different characteristics from any found in nature and one having the potential for
significant utility’
- In Australia the Patents Office takes the view that no distinction regarding patentability
is to be made solely on the basis that a claimed product or process is, or contains or uses,
a living organism.
o And that higher life forms will not be treated any differently from lower forms
such as microorganisms
o ‘[T]he committee does not consider that there is a major ethical difference between allowing the
ownership of animals, including recognition of monopolies on breeding rights, and allowing
patent rights in relation to animals. There is no logical contradiction between allowing the
patenting of genetically modified animals and simultaneously recognising that they have a right
to be treated with care for their health and welfare.’
 House of Representatives Standing Committee on Industry, Science and Technology
report on ‘Genetic Manipulation: The Threat or the Glory?’
Genes
- Australia and the United States have recently seen decisions concerning the patentability
of human (breast cancer causing) genes once they are removed from the human body
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- The gene sequence in question was out of its natural context in that it had been
artificially removed from the cell in which it normally existed; there was an artificially
created state of affairs
- The Patent Office had granted a patent for it, and this patent was upheld by Nicholas J in
the Federal Court on the basis of the human intervention that had destroyed the cell and
purified the extracted nucleic acid.
o It was held to be a manner of manufacture in the sense discussed in NRDC:
Cancer Voices Australia v Myriad Genetics Inc [2013] FCA 65
- 5 member bench of the Full Federal Court of Australia ruled unanimously in September
2014 that such genetic material is patentable under the current law: D’Arcy v Myriad
Genetics Inc [2014] FCAFC 115
o APPEAL TO HCA and held that the gene was not patentable
o the satisfaction of the NRDC tests of ‘artificially created state of affairs’ and
‘economic significance’ is not necessarily sufficient to establish that a product or
method is a patentable invention.
o It is possible for something to be artificially created (in the sense of existing in a
form that would be impossible without human intervention) but still not be a
product in the relevant sense.
[6] Despite the formulation of the claimed invention as class of product, its substance is information embodied in
arrangements of nucleotides. The information is not ‘made’ by human action. It is discerned. That feature of the
claims raises a question about how they fit within the concept of a ‘manner of manufacture’. As appears from s 6 of
the Statute of Monopolies, an invention is something which involves ‘making’. … Whatever it is, it must be
something brought about by human action.
[89] …the information stored in the sequence of nucleotides coding for the mutated or polymorphic BRCA1
polypeptide is the same information as that contained in the DNA of the person from which the nucleic acid was
isolated. It is the existence of that information which is an essential element of the invention as claimed. The
product is the medium in which that information resides.
[90] … the fact of the existence of the requisite mutations or polymorphisms is a matter of chance. It is not
something ‘made’. It is not ‘artificially created’.
[94] Although it may be said in a formal sense that the invention as claimed, referring to isolated nucleic acids,
embodies a product created by human action, that is not sufficient to support its characterisation as a manner of
manufacture. [D’Arcy v Myriad Genetics Inc [2015] HCA 35 (7 October 2015) per French CJ, Kiefel, Bell and
Keane JJ]
Human being exeption: s 18(2) neither human beings nor the biological processes for their generation may be patented

TOPIC 9
PATENTS B: VALIDITY
- Registration of a patent is not proof of validity: s 20
Patentable inventions
Patentable inventions for the purposes of a standard patent
(1) Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if
the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; and
(ii) involves an inventive step; and
(c) is useful; and
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(d) was not secretly used in the patent area before the priority date of that claim by, or on behalf of,
or with the authority of, the patentee or nominated person or the patentee's or nominated person's predecessor in
title to the invention.
IS IT NOVEL?
- Section 18(1)(b) must be read in combination with s 7 and with certain definitions in
Schedule 1:
Novelty, inventive step and innovative step
Novelty
(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art
base unless it is not novel in the light of any one of the following kinds of information, each of which must be
considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a
single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or
more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts
is such that a person skilled in the relevant art would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)
(ii) of the definition of prior art base in Schedule 1.
Inventive step
…
- ‘prior art base’ and ‘prior art information’ are defined in Schedule 1
"prior art base " means:
(a) in relation to deciding whether an invention does or does not involve an inventive step or an
innovative step:
(i) information in a document that is publicly available, whether in or out of the patent area; and
(ii) information made publicly available through doing an act, whether in or out of the patent
area.
(b) in relation to deciding whether an invention is or is not novel:
(i) information of a kind mentioned in paragraph (a); and
(ii) information contained in a published specification filed in respect of a complete application
where:
(A) if the information is, or were to be, the subject of a claim of the specification, the
claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published on or after the priority date of the claim under
consideration; and
(C) the information was contained in the specification on its filing date.
"prior art information " means:
(a) for the purposes of subsection 7(1)--information that is part of the prior art base in relation to
deciding whether an invention is or is not novel; and
(b) for the purposes of subsection 7(3)--information that is part of the prior art base in relation to
deciding whether an invention does or does not involve an inventive step; and
(c) for the purposes of subsection 7(5)--information that is part of the prior art base in relation to
deciding whether an invention does or does not involve an innovative step.
Terminology
- Anticipation is a reference to lack of novelty.

o where an invention has been anticipated (i.e. in some way foreshadowed or revealed) it will no
longer be considered to be novel and hence patentable.
o In deciding whether there has been an anticipation must follow through the tests for novelty
under the Act
- Obviousness is a reference to the inventiveness requirement
o obviousness is the converse of inventiveness.
o Where a person has only done what was obvious, that person has not been inventive, in other
words has not taken an ‘inventive step’ and hence the ‘invention’ will not be patentable.
o Must follow tests as outlined in the Act
- Integers are features of the invention
o EXAMPLE: the fact that a spring is coiled clockwise rather than anticlockwise.
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o Sometimes integers are considered essential for the invention; but if they are of minor
importance they will be dubbed ‘inessential integers’.
o Making the distinction between essential and inessential integers is central to making decisions
about patentability and infringement
- ‘workshop variations’, ‘workshop adjustments’, ‘workshop improvements’ or just ‘variants’ are normally
associated with questions of inventiveness
o The words are used to indicate changes to the ‘invention’ which have not involved an inventive
step.
o Workshop improvements’ are said to come about through ‘ordinary methods of trial and error’.
- subject matter
o no proper ‘subject matter’ for the grant of a patent means that there is no patentable invention on
the basis that nothing has been invented
 i.e. no inventive step
- combination patents are patents for inventions which are comprised of integers, some or all of which are
known but which in combination produce a new and better result through the interaction of the integers
o If the integers do not interact in this way but simply continue to perform their known functions
the result will be called a mere collocation of known integers and denied registration
o EXAMPLE: a sausage making machine comprising a known mincing machine and a known
sausage casing filling machine was held to be a mere collocation of known integers and therefore
patentable: Williams v Nye (1890)
Anticipation in general
- Basic proposition is that something which is claimed as an invention should not have
existed previously
- It should not have been anticipated (foreshadowed) by information from any of 3
possible sources, considered separately (cannot be combined so as to defeat novelty)
o Under s 7(1), these are:
 1) a single document or act;
 2) another patent specification; and
 3) a combination of documents or acts that can be treated for the purposes
of the section as a single source of information.
- The relevant time, prior to which there must have been no anticipation of the claim, is its
priority date
How precisely must it be anticipated?
Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1993) 26 IPR 171
FACTS: The invention the subject of the patent related to a clutch designed to be attached via anchors (referred to
as "inserts") to a precast concrete slab at the bottom and to a cable from a crane at the top and used to lift the slab at
building sites.
HILL J: in General Tire and Rubber Company v Firestone Tyre and Rubber Company Ltd (1972) RPC 457 at 485:
"To determine whether a patentee's claim has been anticipated by an earlier publication it is necessary to compare
the earlier publication with the patentee's claim. The earlier publication must, for this purpose, be interpreted as at
the date of its publication, having regard to the relevant surrounding circumstances which then existed, and without
regard to subsequent events. The patentee's claim must similarly be construed as at its own date of publication
having regard to the relevant surrounding circumstances then existing. If the earlier publication, so construed,
discloses the same device as the device which the patentee by his claim, so construed, asserts that he has invented,
the patentee's claim has been anticipated, but not otherwise. In such circumstances the patentee is not the true and
first inventor of the device and his claimed invention is not new within the terms of s.32(1)(e)."
As the judgment thereafter points out, the question of construction is to be determined having regard to what a
reader skilled in the art to which the invention relates would understand and having regard to the relevant state
of knowledge at the relevant date. The Court is put in the position of a person of the kind to whom the document is
addressed by relevant expert testimony.
Anticipation will be shown where carrying out the directions contained in the prior publication inevitably
results in something which would infringe the subsequent patent.
(Citing General Tyre and Rubber again:) "If, on the other hand, the prior publication contains a direction which is
capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely
to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it
may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear
and unmistakable directions to do what the patentee claims to have invented…A signpost, however clear upon the
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road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag
at the precise destination before the patentee."
- only if all the essential integers of a claimed new invention are anticipated will it be bad
for want of novelty
o This will send the court into an examination of what are the essential and what
are the inessential integers of the invention and of the anticipation.
o If the invention and the anticipation differ only in ways which do not involve
essential integers of either of them, there will have been an anticipation.
- ‘If it can be shown that the claimed invention introduces a new integer, or omits an
essential aspect of the product or process described in the earlier document, that may be
sufficient to achieve the requisite level of novelty’
- if the prior document discloses so much that ‘everybody who thought for a moment
would come to the same conclusion’, then there will have been an anticipation:
o Edison-Bell Phonograph Corp Ltd v Smith (1894)
- A prior publication will only anticipate a subsequent invention if it discloses all of the
essential integers of that invention and normally a document will be required to
disclose a result rather than simply indicate a method which may or may not lead to a
particular result: Flour Oxidizing Co Ltd v Carr & Co Ltd (1908)
- If a document contains information which is erroneous, so that the invention which is
described is unworkable in practice, a subsequent invention which avoids the error and
provides a workable solution will not be anticipated by the disclosure:
o Betts v Menzies (1862)
Hill v Evans (1862) 31 LJ Ch 457

WESTBURY LJ: ‘The antecedent statement [alleged anticipation] must be such that a person of ordinary
knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery
without the necessity of making further experiments, and gaining further information before the invention can be
made useful. If something remains to be ascertained which is necessary for the useful application of the discovery,
that affords sufficient room for another valid patent. … Apparent generality or a proposition not true to its full
extent [i.e. an alleged anticipation] will not prejudice a subsequent statement [in the patent specification] which is
limited, accurate and a specific rule of practical application. The reason is manifest, because much further
information, and therefore much further discovery, are required before the real truth can be extricated and
embodied in a form to serve the uses of mankind. It is the difference between the ore and the refined and pure
metal which is extracted from it. … To carry me to the place at which I wish to arrive is very different from merely
putting me on the road that leads to it. …I conclude that the prior knowledge of an invention to avoid a patent must
be knowledge equal to that required to be given by a patent, namely, such knowledge as will enable the public to
perceive the very discovery, and to carry the invention into practical use’
- BENNET J in Lundbeck v Alphapharm [2009] FCAFC 70 summarised some points:

- An invention is a piece of information (Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd (1995) 33
IPR 1 at 8). It follows that a disclosure is the communication of information
- The disclosure is assessed by reference to the skilled addressee, a person of ordinary skill in the art
- The question is whether the prior publication is sufficient to make the claimed invention apparent to the skilled
addressee (Nicaro Holdings Pty Ltd v Martin Engineering Co (1990)
- A prior publication does not invalidate a patent unless it supplies sufficient information to enable a person of
ordinary skill to produce the product subsequently claimed (Acme Bedstead Company Limited v Newlands
Brothers Limited [1937] HCA 63; (1937) 58 CLR 689 at 707). A specification is not to be read as in a vacuum
but by the reader having at least the common knowledge of the art (Acme Bedstead at 701; Nicaro at 530)
- The requirement is that a person of ordinary knowledge of the relevant subject would be able practically to
apply the prior published discovery without the necessity of making further experiments (Hill v Evans at 6-7)
- The further experiments do not include those that formed part of standard procedure or common general
knowledge. They are experiments with a view to discovering something not disclosed
- The further experiments do not mean ordinary methods of trial and error
- If the alleged anticipation is to a process that produces the claimed product, it is not an anticipation if the
process would not necessarily achieve the result claimed for it (Olin Corporation v Super Cartridge Co Pty
Ltd [1977]
- Something less than a full description of the invention allegedly anticipated may be sufficient to ivalidate it for
want of novelty: Nicaro at 529
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- Something less than a full description of an effective means by which the combination claimed in a patent may
be produced may be sufficient to a reader having common general knowledge in the art: Nicaro at 531
- A direction, recommendation or suggestion may be implicit in what is described: Bristol-Meyers
- A disclosure that describes an effective means by which a claimed invention may be produced falls short of
anticipation if it requires the exercise of inventive ingenuity or the taking of any inventive step: Nicaro at 531
Mosaics
- Mosaics are collections of documents which, looked at together, might look as if they
anticipate all the essential integers of the claimed invention but which the courts will
not permit to be considered as a group
o There are, however, occasions when documents may be looked at together
- The basic point is that if the prior art information is made available in two or more
related documents or two or more related acts there may be an anticipation ‘if the
relationship between the documents or acts is such that a person skilled in the relevant
art in the patent area would treat them as a single source of that information’
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545

FACTS: the allegation of invalidity was based on the specifications of three US patents (as well as disclosures
through alleged prior use), none of which alone disclosed the invention.
ISSUE: was there sufficient cross-referencing between the patents to allow them to be looked at together?
GUMMOW J: "It cannot be too carefully kept in mind in patent law that, in order to render a document a prior
publication of an invention, it must be shown that it publishes to the world the whole invention - i.e., all that is
material to instruct the public how to put the invention in practice. It is not enough that there should be suggestions
which, taken with suggestions derived from other and independent documents, may be shown to foreshadow the
invention or important steps in it.”
(British Ore Concentration Syndicate Ltd. v Minerals Separation Ltd. (1909) 26 RPC 124 at 147)
In his article "Having Regard to What was Known and Used" (1972) 88 LQR 341 at 343, Mr. Gratwick QC, after
referring to the case law as it had developed up to the end of the last century, said: “…Thus, ever since Von
Heyden v Neustadt (1880) 50 LJCh 126 it has been accepted without hesitation that, if a given prior document does
not disclose the whole of the invention, the deficiency cannot be made good from another document unless there is
a cross-reference between them. . . ."
“The rule against making a mosaic of documents does not apply when the documents are connected together and
form a consistent whole as, for example, when they are chapters in a series of disclosures where anybody reading
one is referred by cross- reference to the others."
HELD: no sufficient connection between the patents in the case, and the Martin patent was not anticipated.
Documents and acts made publicly available
- so long as a document is available without restriction, it will be considered to be

publicly available
- In Dennison Manufacturing Co v Monarch Marking Systems Inc (1983) 1 IPR 431, a
French specification in the French language which was available for inspection in the
Patent Office in Canberra was held to rob the appellant’s claim of novelty.
- It is not relevant whether or not an anticipatory document has been catalogued and
identified in a way that would enable it to be easily found, in a library for example:
Merck & Co Inc v Arrow Pharmaceuticals Limited
Public availability through use
- a use of an invention before the priority date can amount to making it publicly available
o the circumstances of any disclosure of information will be relevant to whether it
is being ‘made publicly available’
- Information may not be considered public if there is an agreement or other legal
requirement that it should not go beyond the person to whom it is disclosed
- Examples of prior use amounting to anticipations are
o the use of a new type of hospital bed in a hospital before the priority date
 Acme Bedstead Co Ltd v Newlands Bros Ltd (1937) 58 CLR 689
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o the sale of the invention or its demonstration for commercial purposes before the
priority date
 Re Wheatley’s Patent Application (1984) 2 IPR 450
- The use must be informative in the sense that it reveals all necessary information about
the invention: Hope v Heggies Bulkhaul Ltd (1996) 34 IPR 584)
o This is consistent with recent British law which states that ‘use of a product
makes the invention part of the state of the art only so far as that use makes
available the necessary information’: Merrell Dow Pharmaceuticals Inc v HN
Norton & Co Ltd
Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139
FACTS: a very simple shade canopy was used at a public sporting event prior to the priority date of a patent.
ISSUE: Was this use sufficient to be an anticipation through use.
LINDGREN and BENNETT JJ: The information must have been made available to at least one member of the
public who, in that capacity, was free, in law and equity, to make use of it.
It is immaterial whether or not the invention has become known to many people or a few people. As long as it was
made available to persons as members of the public, the number of those persons is not relevant. Availability to one
or two people as members of the public is sufficient in the absence of any associated obligations of confidentiality.
The question is not whether access to an invented product was actually availed of but whether the product was
made available to the public without restraint at law or in equity.
In order to be ‘available’, information said to destroy novelty must be of a kind that would disclose to a person
skilled in the relevant art all of the essential features or integers of the invention.
In order to be ‘available’, information said to destroy novelty must ‘enable’ the notional person skilled in the art at
once to perceive, to understand, and to be able practically to apply the discovery, without the need to carry out
further experiments in order to arrive at that point.
HELD: it would be sufficient to be an anticipation through use, given that a skilled person seeing the canopy could
readily have understood how it worked.
Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31

FACTS: case was concerned with roller blinds, the claimed invention being the roller mechanism inside the blind
(and invisible from the outside). The use of the blinds had been demonstrated, but the blinds had not been sold or
left with customers in such a way that they could pull them apart to find out how they worked.
The evidence is that Mr Horner showed some customers the RolaShades product assembled into a blind and the
RolaShades product itself. Relevantly, the evidence was that:
- The internal workings of the RolaShade product could not be ascertained on inspection without
disassembling the product.
- JAI did not sell any RolaShades product.
- JAI did not give the RolaShades product to any potential customer.
- There was no evidence that any potential customer was free to handle and disassemble the RolaShades
product or otherwise ascertain the essential elements of the claimed invention.
- There was no evidence that anyone did disassemble the RolaShades product.
HELD: this use of the blind was not sufficiently informative to constitute an anticipation through use of the
invention
BENNETT J: The act of giving the encased mechanism to another person did not constitute an enabling disclosure.
It constituted what was described as ‘uninformative use’ (Merrell Dow) and is not sufficient to constitute an
anticipation.
Anticipation application
MJA Scientifics International Pty Ltd v SC Johnson & Son (1998) 43 IPR 287
Prior use that does not effect novelty

Validity not affected by making information available in certain circumstances
(1) For the purpose of deciding whether an invention is novel or involves an inventive step or an
innovative step, the person making the decision must disregard:
(a) any information made publicly available in the prescribed circumstances, by or with the consent
of the nominated person or patentee, or the predecessor in title of the nominated person or patentee; and
(b) any information made publicly available without the consent of the nominated person or patentee,
through any publication or use of the invention by another person who derived the information from the nominated
person or patentee or from the predecessor in title of the nominated person or patentee;
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but only if a complete application for the invention is made within the prescribed period.
(2) For the purpose of deciding whether an invention is novel or involves an inventive step or an
innovative step, the person making the decision must disregard:
(a) any information given by, or with the consent of, the nominated person or the patentee, or his or
her predecessor in title, to any of the following, but to no other person or organisation:
(i) the Commonwealth or a State or Territory, or an authority of the Commonwealth or a State
or Territory;
(ii) a person authorised by the Commonwealth or a State or Territory to investigate the
invention; and
(b) anything done for the purpose of an investigation mentioned in subparagraph (a)(ii).
- The references to ‘prescribed’ circumstances, persons or periods in s 24 require

reference to the Patents Regulations 1991
- Relevantly regs. 2.2A to 2.2D
o publications or uses of the invention will potentially not defeat novelty and
inventive step if they are made eg during a recognised exhibition, in a paper read
before a learned society or where the invention is used for the purposes of
reasonable and necessary trial.
o In these cases the Regulations set the time within which the complete application
would have to be lodged in order for s 24 to be effective.
 Regulations are complex, but generally 12 months from the date of
publication
- Section 24 together with the Regulations allows inventors to publicise the inventions in
advance of lodging the patent application, as long as the complete application is lodged
within 12 months.
INVENTITIVE STEP AND OBVIOUSNESS
- Conceptually inventiveness and anticipation are quite different but the same factual
subject matter gives rise to both considerations.
o inventiveness does in fact tend to break the nexus between the alleged
anticipation and the invention for which protection is sought
Novelty, inventive step and innovative step
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the
prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of
the common general knowledge as it existed (whether in or out of the patent area) before the priority date of
the relevant claim, whether that knowledge is considered separately or together with the information mentioned in
subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned
in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
Elconnex Pty Ltd v Gerard Industries Pty Ltd (1993) 25 IPR 173
‘Whilst the hypothetical worker in the field must be taken to be non-inventive, he should be assumed to be skilled
in the relevant art a…He also noted that the hypothetical skilled worker against whose efforts the claimed
invention is to be tested may be taken to have extensive knowledge, but he must be uninventive.’
‘His Honour found that the only significant features of the petty patent which were not already to be found in the
Dietzel connector were the thin walled section of less thickness than the thickness of the wall of the body, being
formed by a recess in the bore extending from the finger to the open end of the bore, and the sealing means for
liquid tightness. But he found that anyone working in this area could hardly have been unaware of the sealing
means adopted by the largest supplier of electrical fittings in Australia (Gerard) in its existing connector (the
Dietzel connector), nor could anyone familiar with the use of snap fittings made of plastic have been unaware that,
depending on the thickness and stiffness of the particular plastic employed, it may be desirable to provide a thin
walled section such as is described in the petty patent.
‘His Honour found: "It is indeed the idea of a snap fitting, instead of the previous method of gluing which the
provisional specification claimed as the innovation achieved by the invention. But the perception that a connector,
such as the Dietzel connector, could be combined with the sealing means already provided by existing connectors
for corrugated electrical conduit cannot be regarded as something that would not 'at once occur to anyone
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acquainted with the subject, and desirous of accomplishing the end' to borrow the words of Lord Herschell quoted
in Allsop v Bintang."
‘He said he should adopt the course followed by Cohen J. in Allsop v Bintang which was approved by the Full
Court: "and decide the question of obviousness upon the evidence before me, rather than upon the basis of an
inferred unsolved difficulty of which there is no direct evidence. On all the evidence, and after taking into account
the argument I have been discussing, I can only conclude that the alleged invention was obvious. It was "simply the
application of well-known and well-understood things to an analogous use", to borrow the words of Lord Halsbury
in Morgan and Co v Windover and Co (1890) 7 RPC 131 at 134 ..."
‘…a period of examination, testing and evaluation of the Aussie Duct product by Gerard which shows a
recognition by Gerard of at least the commercial acceptability of Aussie Duct. It indeed goes further than this
because Gerard recognized the desirability of copying the Aussie Duct product, indeed even to attempt to patent its
copy and to claim "Pat Pend".
‘"It is as well to bear in mind that the question of obviousness involves asking the question whether the invention
would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in
that particular field as at the priority date, without regard to documents in existence but not part of such common
general knowledge: As was said by Aickin J. in The Wellcome Foundation Case. The question is not whether it
was or would have been obvious to the inventor or to some other particular worker in the field: Minnesota Mining
and Manufacturing Co v Beiersdorf (Aust) Limited (1980)
HELD: The course taken by his Honour of deciding the question of obviousness upon the evidence before him
rather than upon the basis of an inferred unsolved difficulty of which there was no direct evidence was entirely
open to his Honour and no error has been shown in his taking that course. Where questions of inventiveness arise
in respect of a combination patent it is the inventiveness of the combination as a whole that must be examined; it is
impermissible to determine inventiveness by a piecemeal examination integer by integer: Minnesota Mining and
Manufacturing Company v Beiersdorf (Australia) Limited (1980) But, as the trial Judge observed, this is not a case
of a new combination of old integers but of an old combination which has been subjected to slight variation.
The hypothetical person skilled in the art
- the hypothetical person skilled in the art, but uninventive, may not necessarily be
imagined as an individual.
o imaginary person may also be a team.
o This ‘person’ is purely a legal construct, created for the purpose of the test
- Genentech v The Wellcome Foundation Ltd (1989) 15 IPR 423
o The obviousness of any particular contribution to the ultimate success must be adjudged by
reference individually to the hypothetical members of the team, attributing to each the
appropriate degree of skill…[W]e should credit the hypothetical team with the best available
equipment to see whether, so equipped, they could have found their way to a solution without
exceeding the permitted maximum of inventive thinking
- The skilled person is a relevant consideration to be made in various functions of patents
law: Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225
o He is the person to whom the patent is addressed and who must construe it. He is the person
whose knowledge will determine whether a patent is novel. He is the person who will judge
whether a patent is obvious.
o The skilled addressee has been given various descriptions. Sometimes he is the ‘notional skilled
addressee’, sometimes the ‘uninventive skilled worker in the particular field’, sometimes the
‘non-inventive worker in the field’, sometimes the ‘person skilled in the art’ and sometimes the
‘non-inventive hypothetical skilled addressee’. Generally speaking, the skilled addressee is the
person who works in the art or science with which the invention is connected.
- ‘The notional person is not an avatar for expert witnesses whose testimony is accepted
by the court. It is a pale shadow of a real person – a tool of analysis…’
o AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30
The relevant prior art knowledge base
Common general knowledge
- Common general knowledge must be as it is described – common and general among

the relevant skilled persons
- cannot be proved simply by pointing to the existence of documents or usages, even if in
the public domain
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- Per Minnesota Mining:

o The notion of common general knowledge itself involves the use of that which is known or used
by those in the relevant trade. It forms the background knowledge and experience which is
available to all in the trade in considering the making of new products, or the making of
improvements in old, and it must be treated as being used by an individual as a general body of
knowledge
Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253
AICKIN J: The notion of common general knowledge itself involves the use of that which is known or used by
those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade
in considering the making of new products, or the making of improvements in old, and it must be treated as being
used by an individual as a general body of knowledge…The process of applying such common general knowledge
to the solution of a problem is not a process of picking out individual pieces of information and combining them,
including inferences from known facts and known principles, as well as the application of such principles. The
making of a mosaic prohibited in the case of an allegation of want of novelty is the picking out of individual items
of information from prior publications or prior objects and assembling them together so as to give them an
appearance of unity and then alleging that such mosaic reveals the very thing claimed. That is an understandable,
though not a permissible, process.
An allegation of want of inventive step is not made out by saying you may take one or two, or twenty-one or
twenty-two, prior publications and then select from them appropriate extracts or pieces of information, which will
add up to the invention claimed and so demonstrate that it was obvious…The question is, is the invention itself
obvious, not whether a diligent searcher might find pieces from which there might have been selected the elements
which make up the patent. If this were not so, there could never be a valid patent for a new combination of old
integers.
It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a
possibly very large range of publications the particular combination subsequently chosen by the opponent in the
glare of hindsight and also whether it would have been obvious to that worker to select the particular combination
of integers from those selected publications.
In the case of a combination patent the invention will lie in the selection of integers, a process which will
necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers,
as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the
selection of the integers out of, perhaps many possibilities, which must be shown to be obvious.
There may be some fields of endeavour in which those who work therein study and make themselves familiar with
all patent specifications as they become available for inspection in one or in many countries so that what was
contained therein becomes common general knowledge in that particular trade or field of manufacture in the
country in question…Indeed in the present case it appears that the first appellant in its establishment in the United
States at one time had employees who did just this in the field of adhesives. But this is not so in all fields or in all
countries. There was no evidence in the present case that those working in Australia in the field of adhesives or of
surgical tapes followed such a practice or that any of the specifications relied upon was part of the common general
knowledge of those working in these fields in Australia.
Extra information added to common general knowledge
- Common general knowledge may:

o be considered separately under the Act, or
o in combination with either of the types of information mentioned in sub-s 7(3),
considered separately.
- These are a) a single piece of information or b) a combination of pieces of information.
- Either the single piece of prior art information will be considered on its own,
o or 2 or more pieces of prior art information may be considered together, but only
under certain circumstances.
 The combination can only be made if a skilled person could, before the
priority date, be reasonably expected to have combined these pieces of
information
- In AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30
o ‘…under s 7(2) … the skilled person notionally knows nothing beyond the
common general knowledge. But it is then assumed [by s 7(3)] that he or she will
undertake the task of finding some additional information which is not part of the
common general knowledge. The question is whether he or she could be
reasonably expected to have ascertained (etc) the information. … Ultimately …
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there must be one document (or act) only which imparts the information which is
to be added to the common general knowledge
The ultimate question to ask
- Would the [person skilled in the art] at the relevant date, in all the circumstances [ie in
the light of common general knowledge etc.], directly be led, as a matter of course, to
try the [step that the patentee claims is inventive] in the expectation that it might well
produce a useful [outcome or improvement]: Aktiebolaget Hassle v Alphapharm Pty Ltd
o If the answer is yes, then there is no inventive step.
Prior publication which will not effect inventiveness
- s 24 applies to the question of inventiveness as well as that of novelty
IS IT USEFUL?
- an invention must be useful in order to be patentable: s 18(1)(c)

o If not it will be said to be bad for inutility
- To be useful, the invention must attain the result that the inventor had promised.
- What is not important to the question of utility is whether the apparatus would be
commercially viable: Rescare v Anaesthetic Supplies
Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 11 IPR 289
GUMMOW J:
The basic principle has been formulated as follows in Fawcett v Homan (1896) 13 RPC 398 at 405 per Lindley LJ:
If an invention does what it is intended by the Patentee to do, and the end attained is itself useful, the invention is a
useful invention…What the invention is intended to do is a matter to be gathered from the title and the whole of the
specification
The title of the patent is "improvements in security means". The body of the specification commences with a
statement of the problem, viz. that none of the existing types of access control systems have been particularly
satisfactory and in particular a previous proposal to provide an access control system incorporating a manually
actuable keyboard the keys of which were selectively actuable to generate a code which, if correct, would provide
the necessary access, suffered a disadvantage in that it would still be possible for an observer to note the
combination of keys actuated by the authorised person.
The promise of the invention is concerned with a particular aspect of security, the breaking of the code by the
noting of the order in which the keys are pressed. It is in the light of this that one has to consider the question of
utility, and the question is whether in the sense of patent law the device is useless for that purpose. The
circumstances that an even greater improvement in security might be obtained by the addition of a restricted
viewing means, such as that which is present in the Hirsch products, does not mean that the invention as claimed in
claim 1 is not useful, or that it does not attain the object of the invention.
For a 4-digit code number, the probability that one or more the digits in that code will be missing from any given
display is such that on average a user would have to bring up more than 5 displays before the user would find a
display in which there were present all 4 digits of the code. In the case of a 5-digit code, the probability is that on
average, the user would have to bring up 12 or more displays before the user found a display with all the digits of
the code present; the corresponding number of displays for 6, 7 and 8-digit codes, is 30 or more displays, 88 or
more displays and 326 or more displays, respectively. (I should add that the evidence also showed that if no steps
were taken to avoid duplication, the device claimed in claim 1 would permit entry of a 3-digit code after an average
of 2 displays.)
If any device falling within the terms of claim 1 is not useful for the purpose of the invention, the whole claim is
invalid and because 7 and 8-digit codes fall within claim 1 so as to give obviously useless embodiments, the device
is not useful for that purpose. Hence, claim 1 is invalid for inutility.
…in my view, there is the evidentiary foundation for the conclusion that a qualified reader would not place a
construction on claim 1 as including embodiments that were obviously useless; the claim does not positively point
to some useless construction. The present is a case where the qualifications and expedients necessary to avoid
duplication of digits are left to the qualified reader to supply. Accordingly, I accept the submission for the applicant
that claim 1 is not lacking in utility for failure to specify a means of avoiding duplication of digits.
PATENTS ACT 1990 - SECT 7A

Meaning of useful
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(1) For the purposes of this Act, an invention is taken not to be useful unless a specific, substantial and
credible use for the invention (so far as claimed) is disclosed in the complete specification.
(2) The disclosure in the complete specification must be sufficient for that specific, substantial and
credible use to be appreciated by a person skilled in the relevant art.
(3) Subsection (1) does not otherwise affect the meaning of the word useful in this Act
SECRET USE BY THE PATENTEE
- If an invention has been secretly used by the patentee before the priority date it may
forfeit its right to protection: s 18(1)(d).
o prevents a patentee from gaining a longer monopoly than the statutory period by enjoying a de
facto monopoly through secret use without meeting the corresponding obligation of public
disclosure: Azuko Pty Ltd v Old Digger Pty Ltd [2001] FCA 1079
- ‘secret use’ is not defined in the Act
o it is likely that secret use and public use are mutually exclusive
- Since the purpose of the prohibition is to prevent a de facto monopoly extending the
patent period, it will be relevant to ask whether the patentee reaped commercial benefit
from what was done before the priority date
EXCEPTIONS TO SECRET USE
- the Act contains a list of acts which are not to be taken to be instances of secret use
Secret use
For the purposes of this Act, the following acts are not to be taken to be secret use of an invention in
the patent area:
(a) any use of the invention by or on behalf of, or with the authority of, the patentee or nominated
person, or his or her predecessor in title to the invention, for the purpose of reasonable trial or experiment only;
(b) any use of the invention by or on behalf of, or with the authority of, the patentee or nominated
person, or his or her predecessor in title to the invention, being use occurring solely in the course of a confidential
disclosure of the invention by or on behalf of, or with the authority of, the patentee, nominated person, or
predecessor in title;
(c) any other use of the invention by or on behalf of, or with the authority of, the patentee or
nominated person, or his or her predecessor in title to the invention, for any purpose other than the purpose of
trade or commerce;
(d) any use of the invention by or on behalf of the Commonwealth, a State, or a Territory where
the patentee or nominated person, or his or her predecessor in title to the invention, has disclosed the invention, so
far as claimed, to the Commonwealth, State or Territory;
(e) any use of the invention by or on behalf of, or with the authority of, the patentee or nominated
person, or his or her predecessor in title to the invention, for any purpose, if a complete application is made for
the invention within the prescribed period.
- Use for reasonable trial or experiment was discussed in Longworth v Emerton (1951)
o [The inventor used the machine] without any view to definite improvements or experiments of a
specific character and not for the purpose of developing the actual invention applied for. The use
was not experimental except in the possible but vague sense that the appellant might not have
been quite satisfied that the qualities of the machine had been fully tested and might have
remained uncertain whether some further improvements might not be effected to make it more
efficient. This, in our opinion, was not enough …
- It is for the Court, not the inventor, to determine the reasonableness of trial and
experimentation, and whether either are required or justified in the secret use:
Longworth
OTHER REQUIREMENTS
Problems with claims and specifications
Insufficiency of disclosure/description

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Specifications
Requirements relating to provisional specifications
(1) A provisional specification must disclose the invention in a manner which is clear enough and
complete enough for the invention to be performed by a person skilled in the relevant art.
Requirements relating to complete specifications
(2) A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention
to be performed by a person skilled in the relevant art; and
(aa) disclose the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent--end with a claim or claims defining the
invention; and
(c) where it relates to an application for an innovation patent--end with at least one and no more than
5 claims defining the invention.
(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
(3A) The claim or claims must not rely on references to descriptions or drawings unless absolutely
necessary to define the invention.
(4) The claim or claims must relate to one invention only.
- The specification should:

o identify the technical field of the invention
o state the technical features which the applicant considers to be essential to the
invention
- It should then list preferred or optional features, and then outline the best method of
putting the invention into effect
- A claim or claims will accompany the rest of the specification in a standard patent
application.
- A claim should be written as a single sentence and define clearly what the patent
protection is being sought for.
- It must be clear from the words of the claim how the invention is distinguishable from
prior knowledge.
- All the technical features of the invention should be set out consistently with the
description given in the body of the specification.
- An independent claim, of which there may be several, does not refer to any other claim.
- A dependent claim makes explicit reference to previous claims, but is nevertheless a
claim in its own right and to be judged like any other claim.
o Dependent claims can be used as back-up claims if the broadly drafted
independent claim turns out to be invalid on the basis of anticipation
- Both complete and provisional specifications must describe the invention clearly and
completely.
o to enable the public, after the expiration of the patent, to use the specification
successfully for their own purposes
No-Fume Ltd v Pitchford (1935) 52 RPC 231

…the Patentee fulfils his duty if in his complete specification he describes and ascertains the nature of the
invention, and the manner in which the invention is to be performed, sufficiently and fairly. It is not
necessary that he should describe in his specification the manner in which the invention is to be performed, with
that wealth of detail with which the specification of the manufacturer of something is usually put before the
workman who is engaged to manufacture it. Specifications very frequently contain mistakes; they also have
omissions. But if a man skilled in the art can easily rectify the mistakes and can readily supply the omissions,
the patent will not be held to be invalid. The test to be applied for the purpose of ascertaining whether a man
skilled in the art can readily correct the mistakes or readily supply the omissions has been stated to be this: Can he
rectify the mistakes and supply the omissions without the exercise of any inventive faculty? If he can, then the
description of the specification is sufficient. If he cannot, the patent will be void for insufficiency. ... [T]he Patentee
does not tell the world within what limits the relative proportions of the integers he has mentioned must be kept to
produce the desired result. If, however, a workman skilled in the art can by trial and error readily discover for
himself what the proportions should be in order to give the desired result, then, inasmuch as I have already pointed
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out, that to discover those proportions requires the exercise of no inventive faculty at all, the Patentee has complied
with his obligation.
- In Samuel Taylor P/L v SA Brush Co Ltd where the invention was for a type of broom:
o The inventive step was that the bristles were secured by cement, rubber or some other type of
retaining agent which was to be poured into the head. Nothing was said about how the bristles
were to be arranged with one end in the fixing mixture. At the time there was no known practical
method of fixing bristles in the required way. It was held that the manner of manufacturing had
deliberately been kept secret. The requirement had not been fulfilled that the patentee had to
make the mode of performance of the invention clear and intelligible to persons having a
reasonably competent knowledge and skill in the relevant subject area.
- When this requirement is not fulfilled it can be said that consideration has not been
given by the patentee for the grant of the patent
- This must be contrasted with the element of inutility: Tetra Molectric Ltd’s Application
o if you can’t do it because you don’t have enough information, there is insufficiency; if you do it
and it doesn’t work for the purpose, it is inutility
Ambiguity
- Claims must be clear and succinct; they must not be ambiguous, otherwise the claims
will not be able clearly to establish the parameters of the invention
o This will make defending the invention against possible infringement difficult
- Patent will be void if the terms of the specification are so ambiguous that its proper
construction must always be doubtful
- This will also be the case if the specification contains statements calculated to mislead
those who in the future might want to make use of it so that they would be unable,
without trial and experiment, to see how the patented object was intended to work
- In Natural Colour Kinematograph v Bioschemes Ltd, per PARKER LJ:
o It is open to the court to conclude that the terms of the specification are so ambiguous that its
proper construction must always remain a matter of doubt, and in such a case, even if the
specification had been prepared in perfect good faith, the duty of the court would be to declare
the patent void. Once again, though the court may consider that the meaning of the specification
is reasonably clear, yet if the specification contain statements calculated to mislead the persons to
whom it is addressed, and render it difficult for them without trial and experiment to comprehend
in what manner the patentee intends his invention to be performed, these statements may avoid
the patent. … The court, however, will always make due allowance for the difficulties of the
case, and will not impute mala fides without strong reason, or be astute to deprive a patentee of
the benefit of a valuable invention, either because of his imperfect acquaintance with the art, or
because of the carelessness or want of skill of his agent.
- EXAMPLE: in Gerard Industries; argument was made that the term ‘liquid tight’ was ambiguous. It
might have meant absolutely impervious to water the way the hatch of a submarine might be, or it might
have meant only that a sprinkling of water would not penetrate the seal. Was held that ‘the degree of
liquid tightness is not of the essence of the invention.’ ‘Liquid tight’ was not ambiguous – it simply meant
as liquid-tight as would be appropriate to a connector of this type.
- If it is impossible to ascertain what the invention is from a fair reading of the
specification as a whole, the invention will be invalid.
- It must be construed in the light of the common knowledge in the art before the priority
date: Decor Corporation Pty Ltd v Dart Industries
Supported by matter disclosed in the specification
- claims ‘must be … supported by matter disclosed in the specification.’: s 40
o there must be a unity between the claims and the specification.
- Such support is necessary to ensure that the claims are not seeking to establisha wider
monopoly than the specification (the public information component of the application)
would justify
Misrepresentation
patent obtained by fraud, false suggestion or misrepresentation may be revoked: s 138(3)(d)
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TOPIC 10
PATENTS C: INFRINGEMENT
PATENETEE’S EXCLUSIVE RIGHTS AND THEIR INFRINGEMENT
- The grant of a patent is not a guarantee of financial reward; it only gives a period of
protection which affords the patentee an opportunity to recoup expenditure and, if
possible, make a profit.
- It gives the patentee a range of exclusive rights: s 13
Exclusive rights given by patent
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(1) Subject to this Act, a patent gives the patentee the exclusive rights, during the term of the patent, to
exploit the invention and to authorise another person to exploit the invention.
(2) The exclusive rights are personal property and are capable of assignment and of devolution by law.
(3) A patent has effect throughout the patent area.
- Schedule 1 defines ‘exploit’ as follows:
exploit", in relation to an invention, includes:
(a) where the invention is a product – make, hire, sell or otherwise dispose of the product, offer to
make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of
those things; or
(b) where the invention is a method or process – use the method or process or do any act mentioned
in paragraph (a) in respect of a product resulting from such use...
IS THE PRODUCT/PROCESS THE SAME AS THE PATENTED ONE?
Literal or purposive construction?
- Literal construction of a claim tends to work against the patentee.

o The idea is that the precise words of the claim cannot be extended in any way to
protect the patentee against what he or she is alleging as an infringement.
- Thus the way is open to those who wish to copy the invention to make very small
changes and then claim that it is a different invention
- Purposive construction is more benign to the patentee since his or her intention in
drawing up the claims can be looked at to some extent. Purposive construction is
associated with the so-called ‘pith and marrow’ doctrine whereby a patent will be
infringed if its essence, its pith and marrow, is taken. It is used to avoid the undesirable
outcomes which may be promoted by an overly literal approach
Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225
Finkelstein J:
At the outset I said that the infringement claim depends upon the construction to be placed upon the patent in suit.
The first claim is for a container "comprised of a flexible strip of material" having certain features, one of which is
that the inner surface is formed in part by a lattice of root guiding recesses, each recess being of substantially
truncated conical form having a wall which converges towards a hole through the strip. The twelfth claim is for "a
strip of material for forming an open topped container within which a plant can be grown", the strip having the
same features as in the first claim. Three questions of construction arise.
The principles to be applied in construing the claims were not in dispute. The following are the rules to which I
will conform. Each claim must be read as part of the entire specification: Electric & Musical Industries Ltd v
Lissen Ltd…Thus, the meaning of the words used in a claim may be affected by what is said in the body of the
specification: Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd… Once the true meaning of
the claim is arrived at, it is not permissible to vary the scope of the claim by reason of what appears in the body of
the specification: The Raleigh Cycle Co Ltd v H Miller & Co Ltd (1946) …; Beecham Canada Ltd v Procter &
Gamble Co (1982)…
It is the duty of the patentee to state clearly the nature of his claim so that others may know the boundaries of the
monopoly. What is not claimed is disclaimed: Electric & Musical Industries Ltd v Lissen Ltd (1939)…Protection
will not extend to that which might have been, but by inadvertence or otherwise was not, claimed: Rodi and
Wienenberger AG v Henry Showell Ltd.
The literal infringement of a patent is rare. Of course if an alleged infringing article falls squarely within the
meaning of the claim, that is an end to the matter. But to limit protection to a literal copy would greatly reduce the
utility of a patent. What of the person who takes the patent but has made unimportant changes or minor variations?
Is he able to avoid infringement? Or does the patentee still have a remedy?
In Clark v Adie (1875) 10 ChApp 667 at 675 James LJ said: "The patent is for the entire combination, but there is,
or may be, an essence or substance of the invention underlying the mere accident of form; and that invention, like
every other invention, may be pirated by a theft in a disguised or mutilated form, and it will be in every case a
question of fact whether the alleged piracy is the same in substance and effect, or is a substantially new or
different combination."
In the High Court, in Radiation Ltd v Galliers & Klaerr Pty Ltd [1938] HCA 17; [1938] 60 CLR 36 at 51, Dixon J
said: "But, on a question of infringement, the issue is not whether the words of the claim can be applied with verbal
accuracy or felicity to the article or device alleged to infringe. It is whether the substantial idea disclosed by the
specification and made the subject of a definite claim has been taken and embodied in the infringing thing."
In Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1977) 180 CLR 236 at 246 Gibbs J said that
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these principles, that is infringement by taking the "pith and marrow" or the substance of an invention, were still
good law.
[In relation to the words of DIPLOCK LJ in Catnic Components Ltd v Hill & Smith Ltd] In other words, what is
required is a construction of the specification which is reasonable and fair to both the patentee and the
public. If, upon a reasonable view, the specification can be read to protect the inventor then the court should give
effect to that construction. This is what is sought to be achieved by a purposive construction, as is apparent from
the passages cited from Catnic. Further, Lord Diplock was not only dealing with principles of construction, but was
also setting out the proper approach to questions of infringement.
[In] Improver Corporation v Remington Consumer Products Ltd [1990]… Hoffmann J [asked] ”Lord Diplock's
three questions": (1) Does the variant have a material effect upon the way the invention works? If yes, the variant is
outside the claim. If no: - (2) Would this (that is, that the variant had no material effect) have been obvious at the
date of publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If yes: - (3)
Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee
intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the
variant is outside the claim.
In Australia the so-called `purposive approach' to construction has been adopted (see Populin v HB Nominees Pty
Ltd and Binder (1982) …[If], expressly or by necessary implication, something is indicated in the descriptive part
of the specification to be an essential feature of the invention, the patentee is bound by that assertion: J K Smit &
Sons Inc v McClintock [1940]
The proper construction of the specification is a matter of law: see generally Décor Corporation Pty Ltd v Dart
Industries Inc (1988) 13 IPR 385 at 400. It is, however, a task that must be undertaken through the eyes of the
person to whom the specification is directed, that is the person skilled in the art or science to which the
specification relates: Vidal Dyes Syndicate Ltd v Levinstein Ltd and Read Holliday & Sons Ltd (1912)
Whether each recess must end in a hole is the subject of express comment in the specification. An embodiment of
the invention is described by reference to a number of drawings. According to those drawings, especially figures 1,
2 and 3, each root guiding recess leads to a hole. However, the specification states: "It is not essential that each
recess leads towards a respective hole, but this is the preferred arrangement”…There can be no doubt that, in their
unamended form, it was not an essential aspect of the claims that each protuberance end in a hole.
[His Honour then went on to apply the Improver questions to the case at hand at [69]-[73]]
- In a patent there are independent claims and dependent claims drafted separately
o All claims must be considered individually, i.e. all must reveal the requisite
novelty, inventive step etc.
o If they do not do so, they will fail and will not be able to be infringed.
o The claims that do not fail in this way may still be infringed.
o Infringement only ever occurs in relation to individual claims.
- It is a general principle of construction that, where there is a choice between two
meanings, one should if possible reject that meaning which leads to an absurd result:
o Henrikson v Tallon
‘Making’ and ‘using’ the patented product as a stage in making something else
- Issue may arise if all the essential integers of the invention are taken by the defendant
but the resulting product is then altered so that the product which the public ultimately
buys does not infringe
Pinefair Pty Ltd v Bedford Industries Rehabilitation Association Inc [1998] 42 IPR 330
FACTS: Case concerned a garden-edging material made of small pine logs cut in half lengthwise and attached, on
their flat sides, to a long unbroken piece of flexible material. The defendant did not want to infringe the patent so it
made an alteration. First of all, it attached the logs to a long strip of flexible material, as in the patented invention.
But then it cut the material at the back of each log so that it was not unbroken. Nevertheless, the logs were still
attached to each other, with the flexible material now serving as a kind of hinge between log and log.
HELD: the finished product was not an infringement of the patented invention since there was now no continuous
flexible strip. Nevertheless, the patented product had been ‘made’ in the course of manufacturing the defendant’s
final product. It had also been ‘used’ in making the final product. This making and use of the patented product,
even though it never ended up on the market, was enough to infringe the patent
‘Where the invention is a product, what must be made is the whole product, not constituent parts, and the ‘making’
is not complete until the final step is carried out which results in the complete infringing article… In the present
case, the final step to complete the infringing article has occurred before the cutter severs the plastic strip at each
post element’
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‘In the present case the creation of edging material that has all the integers of claim 1 of the Patent as a step in the
manufacture of the Pinefair product constitutes a ‘use’ of the invention as the respondents are taking commercial
advantage of the invention to advance them in the market place, even though at the point of sale the Pinefair
product has been altered so that it no longer possesses all the integers of the claim’
THE INVENTION IN THE MARKETPLACE
- Infringement also extends to various commercial activities involving an infringing

product or process, as indicated in the definition of ‘exploit’.
- This is the secondary exploitation of the product or process
- If the patentee has the exclusive right to exploit the invention, including hiring, selling,
disposing of it etc., where does that leave the person who has bought the product which
embodies the invention or who is supplying goods which can be utilised in an
exploitation of the invention?
o For example re-selling on the second-hand market?
Patentee vs. Purchaser
National Phonograph Co of Australia v Menck [1911] AC 336

ISSUE: what is the effect of conditions and restrictions which the patentee may have imposed on the use of the
goods? What types of conditions and restrictions may the patentee legitimately impose?
HELD: Generally, the owner of the patented goods may use and dispose of those goods as he sees fit, subject to
any contractual obligations imposed by the patentee.
SHAW LJ: ‘He may have made a certain contract with the person from whom he bought, and to such a contract he
must answer. Simply, however, in his capacity as owner, he is not bound by any restrictions in regard to the use or
sale of the goods, and it is out of the question to suggest that restrictive conditions run with the goods. The sale of a
patented article carries with it the right to use it in any way that the purchaser chooses to use it, unless he knows of
restrictions.
He is bound by them on this principle: the patentee has the sole right of using and selling the articles, and he may
prevent anybody from dealing with them at all. Inasmuch as he has the right to prevent people from using them
or dealing in them at all, he has the right to do the lesser thing, that is to say, to impose his own conditions. It
does not matter how unreasonable or how absurd the conditions are. It does not matter what they are, if he
says at the time when the purchaser proposes to buy or the person to take a licence: ‘Mind, I only give you this
licence on this condition,’ and the purchaser is free to take it or leave it as he likes.’
Repairs of patented products – a ‘making’ of the product?
- A patentee may very well not welcome a person setting up a repair service for a product
or seeking to have it repaired, as they would prefer to sell a new item instead
- BUT the general rule is that the unconditional purchase of a product carries with it an
implied licence to repair the product so that the purchaser is able to obtain a maximum
life for the product.
- the purchaser may prolong the life of a licensed article, but must not make a new one
under the cover of repair
Solar Thompson Engineering Co Ltd v Barton [1977] RPC 537

FACTS: the plaintiff had a patent for a pulley which consisted of a ‘cheek’ and polyurethane rings which became
worn when the pulley was used. The defendant was in the business of replacing these rings when they wore out. He
considered that he was not infringing the patent, since he was merely carrying out repairs, not making new pulleys.
HELD: It has long been recognised that a purchaser of a patented article may carry out repairs to it without being
held liable for infringement. On the other hand he cannot manufacture a new article which infringes the patent and
claim that he has not infringed merely because in the manufacture he has used parts derived from a patented article
sold by the patentee. … Lord Halsbury stated this principle succinctly … [when] he said: ‘The principle is quite
clear although its application is sometimes difficult; you may prolong the life of a licensed article but you must not
make a new one under the cover of repair’.
[T]here was apparently a written contract made between Cable Belt Ltd [the pulley manufacturer] and [other companies]
which included a clause in the following terms: ‘The Polyrim treads shall embody replaceable polyurethane on steel rims
bolted to the hub assembly’. …
The language of the passage at page 2, line 20 of the [patent] specification seems to me to indicate that the process there
referred to is a process of repair which can be carried out by the owner of a Polyrim pulley. …
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It is evident from the facts of this case that the process of moulding a new rubber ring upon one of the steel rings is not one
which can be carried out only by the plaintiffs. … it is absolutely standard practice in the steel industry to repair articles
which have wearing parts of this kind …
The operations which the defendant has carried out are, in my judgment, operations which he is entitled to carry
out under contract for a purchaser of Polyrim pulleys from Cable Belt Ltd as sub-licensee under an implied licence
by Cable Belt Ltd to such purchaser.
Contributory infringement
- parties other than the person who, without a licence, initially exploits the patent may
also be infringing it.
- This is for example where a primary infringement of a process patent (for example the
method of using a drug or herbicide) which has been contributed to by the supply of
goods (for example the drug or herbicide together with instructions on how to use it), or
we may be looking at the primary infringement of a product patent which has also been
contributed to by the supply of goods.
- This will be advantageous for the patentee because others involved in infringing the
plaintiff contributorily may have more resources
- See s 117 of the Act which covers this area
Staple commercial product – s 117(2)(b)
- If the product supplied is not a ‘staple commercial product’, the supplier does not
infringe unless the supplier has reason to believe that the buyer will put it to the
infringing use: s 117(2)(b)
- In Northern Territory v Collins:
o GUMMOW ACJ and KIRBY J adopted the statement of FRENCH J (AHTW) in the Court of
Appeal that:
 Millable timber in the form of standing trees is not a product manufactured to a
particular use. The evidence is clear that in the case of Callitris Intratropica its timber is
suitable for use in a variety of applications for which timber generally is used. … The
relevant product class to which it belonged, for the purposes of s 117(2)(b) was
‘millable timber’
o HAYNE J said that the term ‘staple’ ‘should be read as inviting attention to the variety of uses to
which the product both can be, and is in fact, put. It is that variety of uses which, when the
product is supplied commercially, makes the product a staple commercial product’
Supply with instructions
- In Bristol-Myers Co v FH Faulding & Co (2000)

o The case was about the supply of a pharmaceutical substance, taxol. The taxol, an anti-cancer
drug, had been supplied together with instructions as to its use. It was alleged that use of taxol in
accordance with the instructions would infringe the patents (which covered methods of
administering taxol). Therefore the supplier would also infringe the patents. The Court agreed.
Sale in parts
- Does infringement (through sale) occur if a product is sold in pieces that are to be
reassembled when the purchaser gets home?
- In Dunlop Pneumatic Tyre Co v David Moseley & Sons Ltd
o If you are in substance selling the whole of a patented machine, I do not think
that you can save yourself from liability for infringement, because you sell it in
parts
- Further, in Windsurfing International Inc v Petit [1984]:
o Here the evidence is that sailboards are ordinarily sold in an unassembled form as a matter of
convenience and that the user assembles the board in order to use it and takes it apart after use for
the purpose of transport or storage. … In the present case it seems to me, having regard to the
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evidence, that the sale of such a kit is an infringement of the right given [in the relevant section]
because of the ordinary course which vending the invention takes.
- In Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225, at [74]
o ‘In Walker v Alemite Corporation (1933) 49 CLR 643] Dixon J said (at 658) that the exclusive
property in a combination invention is not infringed by the sale of the components. That
particular rule does not apply when all of the components of a combination invention are sold by
a person who knows and intends that the ultimate purchaser would assemble the invention.’
Importation for sale
- One of the exclusive rights of the patentee under the definition of ‘exploit’ is the right to
import the patented product or a product resulting from the use of a patented method or
process.
- Thus, another type of infringement is the importation of a product the same as the
patented product but made legitimately outside of the protected area. This extends to the
importation of a product which is not itself patented, but the result of a process which is
a patented process
INFRINGEMENT PROCEEDINGS
- Under s 120, infringement proceedings may be brought either by the patentee or by an

exclusive licensee (joining the patentee as co-plaintiff or defendant)
- Usually very expensive, timely, and involves an enormous amount of resources
o BUT, sometimes the subject matter of the proceedings is worth billions
- Since 2006, a court has been able to grant an additional amount of damages, having
regard to the flagrancy of the infringement, the need to deter similar infringements, the
subsequent behaviour of the infringer, any benefit the infringer has received from the
infringement, and any other relevant matter: s 122(1A)
- One of the reasons why actions are so expensive is that infringement proceedings will
often give rise to a counterclaim by the defendant for revocation of the patent under
s121
o Plaintiff must therefore be prepared to give evidence in support of the
invention’s patentability if such a challenge arises.
- Under s 138 the patentee is entitled to begin and give evidence in support of the patent
and, if the other party gives evidence disputing the validity of the patent, the patentee is
entitled to reply.
Certain uses which do not infringe
- When patents get towards the end of their monopoly period, other people will want to
prepare to exploit the invention
- The Act gives permission in s 119A for a person to make pharmaceuticals for such
regulatory purposes.
o Since April 2013 the same process can occur in relation to non-pharmaceuticals
(s119B)
- a person may also exploit a patented invention for experimental and certain other
purposes: s 119C
- Under some circumstances a court may, on application by a person who wants to exploit
the invention but does not have the permission of the patentee, grant the person a non-
exclusive compulsory licence to exploit it (s 133)
REMEDIES
- Relief which may be granted for infringement of a patent includes an injunction and
either damages or an account of profits: s 122.
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- A court may refuse to award damages or to make an order for an account of profits if the
defendant can show that, at the date of the infringement, he or she was not aware and
had no reason to believe that a patent for the invention existed: s 123(1).
THREAT OF LEGAL ACTION
- Groundless threats can cause severe damage to business and goodwill, especially if
customers are threatened.
- This type of harm would justify a damages claim.
- The logic behind the section is also that a person should be prevented from obtaining or
extending a monopoly by intimidation
- Any person aggrieved by such a threat can take action against the person making the
threat under s 128.
o threat does not have to be against the person allegedly carrying out the primary
infringement of the patent: Mizzi Family Holdings Pty Ltd v Morellini
o It can also be against a party such as a distributor or retailer who is dealing in the
goods.
- Whether or not a communication can be considered a threat is to be tested by what
would reasonably be believed or understood by the person receiving the communication.
o The question is whether the language would convey to any reasonable person
that the author of the letter intended to bring proceedings for infringement
against the persons said to be threatened: U & I Global Trading (Australia) Pty
Ltd v Tasman-Warajay Pty Ltd (1995) 32 IPR 494.
- It was held in one case that a threat can emerge from a serious interview between
businessmen in which no reference was made to solicitors or court proceedings but
where the discussion had no real meaning except to convey to the person threatened that
the threatener had legal rights and intended to enforce them unless the person threatened
ceased the allegedly infringing acts: Luna Advertising Co v Burnam & Co (1928) 45
RPC 258
o Thus the threat may be made by implication
- The following statements have been held to be threats:
o You must understand that our clients are prepared to protect their interest with the utmost
vigour’;
o You do this at your peril’;
o ‘There are a number of firms infringing these patents, against some of whom proceedings are
being commenced’.
- A declaration, injunction and possibly damages may be awarded
- The defendant may take action by way of counterclaim for infringement of the patent by
the applicant: s130
- Rather than making threats of litigation, it would be better, pursuant to s 131, merely to
notify the other party of the existence of the patent at first instance and then, if the
matter is not resolved, to commence proceedings for infringement
OWNERSHIP AND INFRINGEMENT OF PATENTS

Who may be granted a patent?
(1) Subject to this Act, a patent for an invention may only be granted to a person who:
(a) is the inventor; or
(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the
person; or
(c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).
(2) A patent may be granted to a person whether or not he or she is an Australian citizen.
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- Co-patentees are prima facie each entitled to an equal undivided share in the patent and
to exercise the exclusive rights given by the patent for their own benefit without
accounting to the others: s 16
- Patent rights are personal property and are capable of assignment and devolution by law.
- A patent has effect throughout the patent area: s 13.
- Assignment must be in writing and signed by or on behalf of the assignor and assignee.
- Assignment may be for only part of the patent area: s 14
- It is possible to license a patent exclusively to another person.
o An exclusive licence gives to the licensee the right to exploit the patented
invention throughout the patent area to the exclusion of the patentee and all other
persons: Schedule 1.

TOPIC 11
REGISTERED DESIGNS
- Object of the registration of designs is to protect the appearance of objects such as
household appliances, furniture, automobiles and spare parts.
- The designs system, like the patents system, is a true monopoly.
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o Registration will ensure that the design is protected against the emergence of a
similar design, whether the second design is created independently or not.
o In return for this exclusivity, the duration of the protection is short.
- A design is only protected as such once it becomes part of the registration system, upon
the date the application for registration is lodged: s 46.
o Thus there are many designs which have no protection at all as designs.
o They may, however, be protected by copyright.
- While the copyright that subsists in artistic works may protect a design which is not
registered and thus perform a positive function, it may potentially also duplicate the
protection offered to a registered design.
o This dual protection is not considered desirable and it is one of the aims of the
respective pieces of legislation to obviate it.
- Designs play a major role in commercial life.
o The designs of a soft drink bottle, a car, a microwave oven or a window frame are crucial in the
presentation of the article to the public.
o They are the aspect of the article to which the public most immediately relates, so they play a
major role in a manufacturer’s marketing strategy
o They play a particularly important part when, perhaps because of the complexity of the
manufactured article, the consumer cannot form a preference based on its functional
characteristics.
HOW THE DESIGNS SYSTEM WORKS
- In order to make an application you one must have an interest in an unregistered design
Who can get a design registered?

DESIGNS ACT 2003 - SECT 13
Who is entitled to be registered as the registered owner of a design
(1) A person mentioned in any of the following paragraphs is entitled to be entered on the Register as the
registered owner of a design that has not yet been registered:
(a) the person who created the design (the designer );
(b) if the designer created the design in the course of employment, or under a contract, with another
person--the other person, unless the designer and the other person have agreed to the contrary;
(c) a person who derives title to the design from a person mentioned in paragraph (a) or (b), or by
devolution by will or by operation of law;
(d) a person who would, on registration of the design, be entitled to have the exclusive rights in the
design assigned to the person;
(e) the legal personal representative of a deceased person mentioned in paragraph (a), (b), (c) or (d).
(2) Despite subsection (1), a person is not entitled to be entered on the Register as the registered owner of
a design that has not yet been registered if:
(a) the person has assigned all of the person's rights in the design to another person; or
(b) the person's rights in the design have devolved on another person by operation of law.
(3) To avoid doubt:
(a) more than one person may be entitled to be entered on the Register as the registered owner of a
design; and
(b) unless the contrary intention appears, a reference to the registered owner of a registered design in
this Act is a reference to each of the registered owners of the design.
(4) No person other than a person mentioned in paragraph (1)(a), (b), (c), (d) or (e) is entitled to be entered
on the Register as the registered owner of a design that has not yet been registered.
- authorship of a design is in the “person whose mind conceives the relevant shape,
configuration, pattern or ornamentation applicable to the article in question and reduces
it to visible form”’: LED Technologies Pty Ltd v Elecspess Pty Ltd
- Once the design is registered, it is owned by the person whose name is entered on the
Register: s 14
- . If a registered design has two or more registered owners, each of them has an equal,
undivided share in the design (assuming there has been no agreement between them to
the contrary): s 14 (2)
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Property rights
- the exclusive rights of the design owner are personal property and are capable of
assignment and of devolution by will or by operation of law (for example under
insolvency law): s 10(2)
o They extend only to the borders of Australia: LED Technologies Pty Ltd v
Elecspess Pty Ltd
- Assignment of all or part of the registered owner’s interest in the design is treated
separately in s 11.
o This kind of assignment inter vivos must be in writing, signed by, or on behalf
of, the assignor and the assignee, and it can be specific to a particular place: s
11.
The application
- Designs applications are dealt with in Chapter 3

- The design application is to comply with the Regulations: s 21.
- It is possible to make a statement of newness and distinctiveness when applying for
registration, identifying particular visual features of the design as new and distinctive: s
19(2)
- The applicant may request registration or publication at this stage or, alternatively,
within a period prescribed by the regulations: s 25
- A design application may be in respect of:
o one design in relation to one product;
o one design that is a common design in relation to more than one product;
o more than one design in relation to one product;
o more than one design in relation to more than one product, if each product
belongs to the same Locarno Agreement class: s 22.
The priority date
- The date of filing the application is the priority date: s 27.

o This is the date from which the term of registration will run: s 46.
- It is also the date at which it must be able to be established that the design is new or
distinctive if a challenge is made
Some designs that cannot be registered
- Registrar must refuse to register certain designs under Regulation 4.06 (in accordance
with s 43(1)(a) of the Act)
DESIGNS REGULATIONS 2004 - REG 4.06
Registrar must refuse to register certain designs
For paragraph 43(1)(a) of the Act, the following classes of designs are prescribed:
(a) medals;
(b) designs of a kind that the Registrar must, under subregulation 2(4) of the Protection of Word
'Anzac' Regulations, refuse to register;
(c) designs of a kind mentioned in subsection 19(1) of the Crimes (Currency) Act 1981 ;
(d) designs that are scandalous, or might reasonably be taken to be scandalous;
(e) the Arms, or a flag or seal, of the Commonwealth or of a State or Territory;
(f) the Arms or emblems of:
(i) a State or Territory; or
(ii) a city or town in the Commonwealth; or
(iii) a public authority or public institution in Australia;
(g) the armorial bearings, flags, State emblems or other signs of another country.
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Initial registration and public inspection
- The Registrar will, upon receipt of a valid application:

o notify the applicant that the application is valid (ie has complied with the
necessary formalities),
o notify the applicant of the filing date and that a request for registration or
publication may be made (if this has not already been done): s 24
- The Registrar will also publish certain prescribed details of the application: s 25
- When the request for registration is received from the applicant, the Registrar must
register the design as long as the application complies with the necessary formalities and
is not a prohibited design: s 39
o If a request for publication is received from the applicant, the Registrar will
publish the design as long as the regulations have been complied with.
- Upon registration or publication of the design, the entire design application will be
available for public inspection: s 60.
- This is when competitors will get full access to the design
o Up until this point there is no need to demonstrate newness or distinctiveness, or
even an examination of the design
- An examination of the registered design will only take place when a specific request
has been made by ‘any person’ or the court has ordered this: s 63
o Alternatively, the Registrar may examine the design on his or her own initiative
- Both applicants and opponents may seek examination, and at this point opponents may
proffer material indicating that the design is not new or distinctive: s 69.
- Upon examination, the Registrar will consider whether the design registration should be
revoked: s 65.
o If the registration is found to be valid and not subject to revocation, a certificate
of examination will be issued to the registered design owner: s 67
Extensions
- The term of registration is 5 years from the filing date of the design application: s 46(1)
(a).
o There is opportunity for renewal of the registration.
o If renewal is granted, the design protection will run until 10 years from the filing
date: s 46(1)(b).
- ‘[I]t would not be in Australia’s interest to provide a period of registration in excess of its international
obligations as Australia is a net importer of intellectual property’: Designs Bill 2003 Explanatory
Memorandum
Actions for infringement
- Design owner must be careful when considering initiating proceedings as it will be faced
with a counterclaim for the design to be cancelled
- Section 73 of the Act describes infringement proceedings.
- Proceedings may not be brought until the design has been examined and a certificate of
examination has been issued: s 73(3).
- If the defendant is accused of primary infringement the court may refuse to award
damages or an account of profits pursuant to s 75 if:
o the defendant can prove to the court that it was not aware of the registration; or
o that it had, prior to the allegedly infringing action, taken all reasonable steps to
ascertain whether the design was registered.
 (infringement through use of the design on a product – see s 71(1)(a))
- If the defendant is accused of secondary infringement the court may refuse to award
damages or an account of profits pursuant to s 75 if:
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o The defendant can prove to the court that it was not aware; and
o could not reasonably have been expected to be aware, that the design was
registered
 (sale or importation of infringing articles – see s 71(1)(b), (c), (d) or (e))
- Additional damages may be awarded taking into account the flagrancy of the
infringement and other relevant matters: s 75(3)
o the use in s 75 of the word ‘registered’ means that a Certificate of Registration
must have been issued: Review Australia Pty Ltd v Innovative Lifestyle
Investments Pty Ltd [2008]
Revocation of the registration
- A defendant in infringement proceedings may apply by way of counter-claim for the

revocation of the registration under s 93: s 74
- This can only be done after the design has been examined and a certificate of
registration has been issued.
- Also, upon any examination of the design, as described above, the Registrar will
consider whether the registration should be revoked
Threat of legal action
- If a certificate of examination has not been issued in respect of a design, a threat to bring
infringement proceedings, or some similar threat, in respect of the design is classified as
an unjustified threat
- Any person aggrieved by such a threat (i.e. the alleged infringer) can take action under s
77 against the person making the threat.
- A declaration, injunction and possibly damages may be awarded against the registered
design owner.
- In order to escape liability, the owner would have to satisfy the court that:
o the design is registered, has been examined, and a certificate of examination has
been issued and that that the acts about which the threat was made (would)
infringe the registered design: s 78.
- The owner can also counterclaim for infringement by the complainant against whom it
has made the threats: s 79.
- It would be safer for the design owner, pursuant to s 80, merely to notify the other party
of the existence of the registered design at first instance and then, if the matter is not
resolved, to commence proceedings for infringement
REGISTRABILITY
Is it a design?
- "design”, in relation to a product, means the overall appearance of the product resulting
from one or more visual features of the product: s 5
- "visual feature", in relation to a product, includes the shape, configuration, pattern and
ornamentation of the product: s 7
- Design may be two dimensional or three dimensional.
o ‘shape’ and ‘configuration’: three dimensional design
o ‘pattern’ and ‘ornamentation’ two dimensional design
 BUT not a hard and fast distinction
In relation to a product

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Definition of product
(1) For the purposes of this Act, a thing that is manufactured or hand made is a product (but see
subsections (2), (3) and (4)).
(2) A component part of a complex product may be a product for the purposes of this Act, if it is made
separately from the product.
(3) A thing that has one or more indefinite dimensions is only a product for the purposes of this Act if any
one or more of the following applies to the thing:
(a) a cross-section taken across any indefinite dimension is fixed or varies according to a regular
pattern;
(b) all the dimensions remain in proportion;
(c) the cross-sectional shape remains the same throughout, whether or not the dimensions of that
shape vary according to a ratio or series of ratios;
(d) it has a pattern or ornamentation that repeats itself.
(4) A kit which, when assembled, is a particular product is taken to be that product.
Complex products
- "complex product " means a product comprising at least 2 replaceable component parts
permitting disassembly and re-assembly of the product: s 5
o e.g. a car or a photocopying machine or a lawnmower would be clear examples
of complex products
Characteristics of a product
- A design may:
o Be a component part of a complex product (i.e. engine in a car or piston in an
engine)
o Be a product in kit form (i.e. a bookcase from IKEA)
o Have indefinite dimensions as long as certain requirements are fulfilled.
 product made by an extrusion or similar process to be cut up after the
point of sale will be of this kind (i.e. a roll of wallpaper, guttering for
houses etc.)
- In Tefex Pty Ltd v Bowler (1982) 40 ALR 326; the issue was whether a swimming pool
was a product
o The pool was made and sold in a transportable form but when it was installed it became a fixture.
The pools were sold either as units or in kit form. When another manufacturer started selling
similar pools, also as units or in kit form, action was brought for infringement of the registered
pool design. It was held that the original pool was an article under the Act. It was manufactured
away from the site of installation. Only its size distinguished it from other products such as baths,
wash tubs and kitchen sinks.
- In Taypar v Santic (1989) it was held that the building of a house in accordance with an
architectural plan was not an application of a design to an article (under the old Act)
- For the purpose of getting a design registered it is not important to be able to state the
proportions or dimensions of the article to which it is to be applied.
o It is sufficient ‘if it shows a shape with enough individuality of appearance to distinguish it and
to enable it to be determined by visual comparison whether the shape of an article is either the
same as, or nothing more than an imitation of, that disclosed by the registered design’: Malleys v
Tomlin
Fundamental form
- The fundamental form of a product cannot be taken to be an aspect of design

o For example the fundamental or simplest form of a chair is a raised horizontal or
semi-horizontal support for the human buttocks, probably with some vertical or
semi-vertical support for the back (to distinguish it from a stool) and is not a
registrable design.
- BUT anything which turns that form into something visually distinctive or different will
be an aspect of design.
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A visual feature
- A design must be visual

- In questions of registrability (newness and distinctiveness) a person ‘must apply the
standard of a person who is familiar with the product to which the design relates, or
products similar to the product to which the design relates (the so-called ‘standard of the
informed user’): s 19(4).
Multisteps Pty Ltd v Source and Sell Pty Ltd [2013] FCA 743
YATES J: the words ‘informed user’ are secondary to the familiarity test.
The primary question to be asked is about the familiarity of a person with a product.
The expression ‘the standard of the informed user’ is defined by the preceding words of the provision [‘a person
who is familiar with the product to which the design relates or products similar to the product to which the design
relates’
[T]he standard prescribed in s 19(4) appears to be indifferent as to how and in what circumstances familiarity is
acquired. … [T]he standard does not proceed on the requirement that the notional person be a user of the products
in question.
Importantly … s 19(4) does not impose a standard higher than familiarity…
The standard of the informed user in the present case might well be represented by a person who acquires produce
containers for the purpose of using them, or having them used, in packing operations to produce packaged
products. The standard of the informed user might be represented by the person who is the producer of the
packaged products … The standard of the informed user might also be represented by a sophisticated purchaser at
wholesale of the packaged product who has particular requirements in relation to, for example, the storage,
transport, and display of the packaged product in such containers. … [I]n all cases, the necessary and only
qualification is that the person be familiar with the produce or similar containers. No matter how such a person
might come to be appropriately qualified, he or she will have an awareness and appreciation of the visual features
of a produce container that serve its functional as well as its aesthetic purposes.
- In J Rapee & Co Pty Ltd v Kas Cushions Pty Ltd (1990) 15 IPR 577 GUMMOW J
described the visual features of a design for a chair pad:
o To the eye, the striking features of the shape and configuration of both designs, in addition to the
overall impression they give, include the use of piping around the perimeter with rounded rather
than straight side walls, the four rounded rather than angled corners, the ties and the positioning
of the ties for attachment of the chair pad to the back of chairs, the placement of the circular
stitching at ‘tufting’ points, and the effect of the stitching to keep together the two surfaces … .
This effect, in conjunction with the piping on the perimeter gives stress lines across portions or
segments of the two main surfaces and the sides of the chair pad (described in some of the
evidence as the ‘dimpling’ or quilting effect’)
Colour
- In Review 2 Pty Ltd v Redberry Enterprise Pty Ltd, KENNY J indicated that colour,
when it appeared in the design application, was significant but would be given varying
weight according to the facts of the case.
o The pattern (including colour) that is shown on the registered Review Design is thus part of what
is protected, and is, as the above reasoning indicates, to be accorded some weight. How much
weight is to be given to pattern and colour will depend on the nature of the product and the
relative importance of the different visual features of the registered design, as viewed by the
informed user, having regard to the prior art, and the freedom of the designer to innovate
Functionality
- The fact that a design consists of, or includes, features of shape or configuration that
serve, or serve only, a functional purpose will not disentitle the design to registration
- There is no need for there to be an intention on the part of the designer to create a
feature with visual appeal: s 7(2)
- It does not mean that the function itself is capable of protection under the Act.
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o Only the visual feature which is associated with the practical function can be
protected.
- EXAMPLE: For example, one of my biros has grooves around the shaft (like the grooves around the edge
of a coin). The function is practical – to make the biro easier to grip. These grooves can be registered as
aspects of the biro’s design. This registration will not protect the design owner against another person who
takes the idea of improving grip through using grooves. It only protects against this particular visual
appearance being reproduced on biros.
Principles of construction
- It has always been the case that a purported ‘design’ is not registrable if it is really only
a method or principle of construction: Malley Ltd v JW Tomlin Pty Ltd (1961)
o ‘It is not the function of design to indicate a process of manufacture; indeed, anything amounting
to a method of construction that would permit differences in shape spells invalidity’
- The problem is to distinguish principles of construction of an article from its visual
configuration which could, of course, be registered as a design
- In Pugh v Riley Bicycle Company Ltd (1912) 29 RPC 196 an example of a corset was
given.
o The corset was argued to be distinctive because the gores and gussets were all cut horizontally
from front to back.
o All corsets made this way would have had similar visual characteristics, but that was not enough
to achieve registration.
o The cut of the corset was a conception as to method of construction only (and would have
permitted differences in shape)
- There is no problem when the method of construction leads to a distinctive appearance.
o That appearance (which arises from the construction) can be registered.
o For example, in the Review 2 case, Kenny J noted:
 due to their construction, the skirt sections of the dresses appear completely different.
The panels on the Review dress create a different type of cut, with the effect that the
fabrics fall differently and create a totally different overall impression to what the
Redberry dress does with its one panel skirt
NEWNESS AND DISTINCTIVENESS
- Under s 15(1) a design is a registrable design if it is ‘new and distinctive’ when

compared with the prior art base as it existed before the priority date of the design.
- It is stated in the Explanatory Memorandum that ‘the requirement for a design to be new
will be a filter to eliminate identical designs. The term ‘distinctive’ is intended to require
greater differentiation than at present from previously published or used designs
- Also the fact that newness AND distinctiveness must be established raises the
registrability threshold
- A design will be new ‘unless it is identical to a design forming part of the prior art base’:
s 16(1).
- A design will be distinctive ‘unless it is substantially similar in overall impression to a
design that forms part of the prior art base’: s 16(2).
- In LED Technologies Pty Ltd v Elecspess Pty Ltd [2008]:
o Distinctiveness is a term used by the courts to express the quality that a design must have to
differentiate it sufficiently from previously published or used designs. For example the courts
have said [that] for a design to be protected there must be a special or distinctive appearance,
something in the design which captures and appeals to the eye. To have that effect, the design
must be noticeable and have some perceptible appearance of an individual character: Dart
Industries Inc v Décor Corporation Pty Ltd (1989) AIPC 90-569, 38, 975. In another case,
relating to furniture design, it was said that design in such a field is a subtle thing and, provided it
is distinctive to the trained eye, … registration should not be denied …’ Other cases have spoken
of ‘the overall distinctive appearance of the registered design’ …, a shape or configuration that is
‘distinctly different’ from that in respect of which a design is [already] registered … and a design
that must be ‘distinct and must present an appearance that strikes the eye as being different’ …
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- Prior art base is basically all the designs for this product that existed before the
application date.
o Prior art base’ is defined more precisely in s 15(2) of the Act
- ‘A design that combines various features, each of which can be found in the prior art
base when considered as a whole but not in any one particular piece of prior art, is
capable of being new or distinctive’:
o LED Technologies Pty Ltd v Elecspess Pty Ltd [2008]
o if a designer puts together various elements out of the prior art it cannot be
claimed that the design is not new or distinctive because its various elements
existed previously
- Must take into account uses in Australia or publications anywhere in the world,
including Australia, or previous designs as disclosed in other design applications
(apparently only in Australia – see s 5 definition of ‘design application’)
o In order to be part of the prior art base, the disclosed design must have a priority
date earlier than the design for which registration is being sought.
Substantially similar
- Section 16(2) refers to ‘substantially similar’

Factors to be considered in assessing substantial similarity in overall impression
(1) If a person is required by this Act to decide whether a design is substantially similar in overall
impression to another design, the person making the decision is to give more weight to similarities between the
designs than to differences between them.
(2) The person must also:
(a) have regard to the state of development of the prior art base for the design; and
(b) if the design application in which the design was disclosed included a statement (a statement of
newness and distinctiveness ) identifying particular visual features of the design as new and distinctive:
(i) have particular regard to those features; and
(ii) if those features relate to only part of the design--have particular regard to that part of the
design, but in the context of the design as a whole; and
(c) if only part of the design is substantially similar to another design, have regard to the amount,
quality and importance of that part in the context of the design as a whole; and
(d) have regard to the freedom of the creator of the design to innovate.
(3) If the design application in which the design was disclosed did not include a statement of newness and
distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance
of the design as a whole.
(4) In applying subsections (1), (2) and (3), the person must apply the standard of a person who is familiar
with the product to which the design relates, or products similar to the product to which the design relates (the
standard of the informed user ).
Factors to be disregarded
- Certain uses of the design with the consent of the registered owner may be disregarded:
s 17(1).
- use or publication of the design without the author’s consent can be disregarded, if the
act has been carried out by a person who acquired the design from the registered owner
- in order for these uses to be disregarded, the design application has to be made within
the required time (prescribed in the Regulations – 6 months from publication etc. under
Reg 2.01(3)): s 17(2)
PRIOR PUBLICATION OR USE
- a design which has been published or used prior to registration being sought will have
lost its claim to newness and distinctiveness
- ‘Use’ refers to the application of the design to articles in a way which would allow the
public to become aware of the design.
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- Publication involves making a design known or available to the public.
J Rapee & Co P/L v Kas Cushions P/L (1990) 15 IPR 577

Prior publication may result from advertisement in a trade catalogue: Stratford Auto Components Ltd. v Britax
(London) Ltd. (1961) RPC 197. But if such material is to constitute prior publication, then the reader must from a
fair perusal of the material be able at least to see the design in his mind's eye and the design or something
substantially the same as the design should be disclosed with reasonable clarity: Rosedale Associated
Manufacturers Ltd v Airfix Products Ltd. (1957)…
The documentary material should have been publicly available in this country, even if there has been no actual
disclosure to any individual member of the public.
The concept of availability is taken quite far in A. Pressler & Co. Ltd. v Gartside & Co. (of Manchester) Ltd.
(1933) 50 RPC 240. That case concerned a design for a textile. One alleged anticipation had been held for many
years in the library of the Calico Printers Association. Of that library, Luxmoore J. said: ‘It has always been kept
open for inspection, and open for inspection, at any rate since 1911 by members of (the Association), by their
customers, and indeed, by such members of the public as (the Association) were ready to allow to inspect it,
without any condition of any kind’
World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd [2007] FCA 114
JESSUP J:
[The] respondent ... cross-claims for a revocation of the registration of the design, upon the ground that the design
was not new or original and distinctive at the priority date as registered by s 15(1) of the Designs Act. In this
respect, the respondent relies upon the display of the MC-801 vacuum cleaner at the Canton Fair in April 2005,
upon the subsequent publication of certain brochures in which the vacuum cleaner was displayed, and upon the
publication of a representation of the vacuum cleaner on the respondent’s internet web site in May 2005
Under s 15(1) of the Designs Act, a design is a ‘registrable design’ if it is ‘new and distinctive’ when compared
with the ‘prior art base for the design’ as it existed before the priority date. By subs (2) the ‘prior art base’ consists
of three items, including ‘designs publicly used in Australia’ and ‘designs published in a document within or
outside Australia’. By s 16(1) a design is new ‘unless it is identical to a design that forms part of the prior art
base’. A design is distinctive ‘unless it is substantially similar in overall impression to a design that forms
part of the prior art base’…. I am required, by s 19 (1) of the Act, to give more weight to similarities between the
subject design and the prior art base than to differences between them.
In the present case, the application for design registration did not include a statement of newness and
distinctiveness, in which circumstances I am required, by s 19(3) of the Designs Act, to have regard to the
appearance of the design as a whole. If I am satisfied that the subject design was not a registrable design within the
meaning of s 15(1) of the Designs Act at the priority date, I am empowered to revoke the registration of the design
pursuant to s 93(3)(a) of the Act. ...
The respondent relies first upon the publication, at the Canton Fair in April 2005, of a brochure depicting the
appearance of the MC-801 vacuum cleaner, for the purposes of s 15(2)(b) of the Designs Act. The original of that
brochure is before the court. I have compared the brochure with the design as registered. It is common ground that
the vacuum cleaner shown in each document is one and the same product. The copy of the registered design which
is before the court is a photocopy. The representations of the vacuum cleaner in it are less distinct than the
corresponding printed colour photographs appearing on the Suzhou Fak brochure of April 2005. Further, in the
design as registered the product is shown in side view (both sides), in bottom view, in top view, in back view, in
front view, in back perspective view and in front perspective view. As represented on the brochure, the product is
shown only in front perspective view. For that reason, I am unable to conclude that the design is identical to that
shown in the brochure. Accordingly, I do not hold that the design is not new for the purposes of s 16(1) of the
Designs Act.
However, I consider that the design as applied for and subsequently registered is substantially similar in overall
impression to the design disclosed in the Suzhou Fak brochure of April 2005…notwithstanding these omissions, I
consider that the vacuum cleaner is sufficiently represented on the Suzhou Fak brochure to give a good impression
of the appearance of the design of the product as a whole, as required by s 19(3) of the Designs Act. ...
The respondent relies also on a ‘jpeg’ file sent by the applicant to an advertising company on 31 May 2005. ... The
file, as represented in an exhibit tendered in court, shows the vacuum cleaner very clearly in front perspective
view. Save for the colour and the attachment of a hose, it justifies the same conclusion as that which I reached
above with respect to the Suzhou Fak brochure distributed at the Canton Fair in April 2005. I consider that, by the
sending of this file to the advertising company, the applicant published the design in a document within Australia
for the purposes of s 15(2)(b) of the Designs Act. ...
I was not addressed on what constituted ‘public use’ in this context, and I am not disposed to hold that the sending
of samples for these purposes to Godfreys constituted such use. Furthermore, no example of the samples was put in
evidence. ...
The respondent relied also upon the fact that a sample of the MC-801 vacuum cleaner had been sent to the
Queensland Department of Industrial Relations, for the purposes of obtaining a certificate of approval for an
electrical article under the Electrical Safety Act. ... I am not persuaded that the provision of a single sample to a
government department for the purposes of electrical safety certification constituted public use in the relevant
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sense. ...
However, there are several respects in which I have held that the registered design was not distinctive when
compared with the prior art base as it existed before the priority date. For that reason, I find that the design was not
a registrable design within the meaning of Division 1 of Part 4 of the Designs Act.
Newness and distinctiveness and copyright law
- Section 18 of the Designs Act deals with situations where a design is based on an artistic
work, such as a drawing or a photograph which is protected by copyright law, and the
artistic work has previously been published or used
- Imagine an artistic work, say a drawing of a bookcase produced by A, a freelance draftsperson. Copyright
subsists in it. A, the owner of the copyright, consents to B Pty Ltd applying to register a design for a
bookcase – the same bookcase that is in the drawing. The design registration can still be successful as long
as the drawing of the bookcase has not been applied industrially to bookcases with the consent of A, with
those bookcases then being commercialized

Certain designs not to be treated as other than new and distinctive
(1) This section applies if:
(a) copyright under the Copyright Act 1968 subsists in an artistic work; and
(b) an application is made by, or with the consent of, the owner of that copyright for registration of a
corresponding design.
(2) The design is not to be treated, for the purposes of this Act, as being other than new and distinctive, or
as having been published, by reason only of any use previously made of the artistic work, unless:
(a) the previous use consisted of, or included, the sale, letting for hire or exposing for sale or hire of
products to which the design had been applied industrially, other than products specified in regulations for the
purposes of paragraph 43(1)(a); and
(b) the previous use was by, or with the consent of, the owner of the copyright in the artistic work.
(3) In this section:
"applied industrially " has the meaning given by regulations under section 77 of the Copyright Act 1968 .
- ‘corresponding design’ means: (74)(1) Copyright Act

o visual features of shape or configuration which, when embodied in a product, result in a
reproduction of that work, whether or not the visual features constitute a design that is capable of
being registered under the Designs Act 2003
- of ‘reproduction’ here is the same as in relation to the Copyright Act s 21(3)
o reproduction in 3 dimensions of a 2 dimensional work
- ‘Embodied in’ in s 74(1) includes ‘woven into, impressed on or worked into the
product’: Copyright Act 1968 (Cth) s 74(2)
- Has been held that a polo player logo embroidered onto garments (using 784) stitches) could be
considered ‘visual features of shape or configuration’: The Polo/Lauren Company LP v Ziliani Holdings
Pty Ltd
o BUT, on appeal, the full Court considered that a polo player logo of this kind could, however, not
be considered to be ‘embodied’ in the garments in the relevant sense.
o Whilst it is possible that the word ‘embody’ can mean, effectively, ‘include as a constituent
element’ [such as a logo on a garment], we do not think, given the background to the provisions,
that that is what it means in ss 74-77. Rather … it means ‘give a material or discernible form to
an abstract principle or concept’ – the relevant abstract principle or concept is the design itself.
… The Logo is not embodied in the garments in the requisite sense
Applied industrially?
COPYRIGHT REGULATIONS 1969 - REG 17

Circumstances in which design is taken to be applied industrially
(1) For the purposes of section 77 of the Act, a design is taken to be applied industrially if it is applied:
(a) to more than 50 articles; or
(b) to one or more articles (other than hand-made articles) manufactured in lengths or pieces.
(2) For the purposes of paragraph (1)(a), any 2 or more articles:
(a) that are of the same general character; and
(b) that are intended for use together; and
(c) to which the same design, or substantially the same design, is applied;
are taken to constitute a single article.
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(3) For the purposes of this regulation, a design is taken to be applied to an article if:
(a) the design is applied to the article by a process (whether a process of printing, embossing or
otherwise); or
(b) the design is reproduced on or in the article in the course of the production of the article.
- In Gold Peg International Pty Ltd v Kovan Engineering (Aust), CRENNAN J stated that
‘the statutory concept of “industrial application” has always involved the notion that
products, which incorporate the “corresponding design” have been made pursuant to a
manufacturing process for the systematic production of articles’
- Clear that application to more than 50 articles constitutes industrial application
o In cases of less than 50, will depend on the circumstances of the case –
particularly the type of article involved
- EXAMPLE: In Safe Sport Australia P/L v Puma Australia P/L the making of 3 prototypes of the
plaintiff’s helmets was not considered to be an industrial application. However, in Press-Form P/L v
Henderson’s Ltd the installation in a prototype bus of 41 seats was considered to be an industrial
application of the design for the seats
INFRINGEMENT OF MONOPOLY IN DESIGNS
The exclusive rights

Exclusive rights of registered owners
(1) The registered owner of a registered design has the exclusive right, during the term of registration of
the design:
(a) to make or offer to make a product, in relation to which the design is registered, which embodies
the design; and
(b) to import such a product into Australia for sale, or for use for the purposes of any trade or
business; and
(c) to sell, hire or otherwise dispose of, or offer to sell, hire or otherwise dispose of, such a product;
and
(d) to use such a product in any way for the purposes of any trade or business; and
(e) to keep such a product for the purpose of doing any of the things mentioned in paragraph (c) or
(d); and
(f) to authorise another person to do any of the things mentioned in paragraph (a), (b), (c), (d) or (e).
The infringement

Infringement of design
(1) A person infringes a registered design if, during the term of registration of the design, and without the
licence or authority of the registered owner of the design, the person:
(a) makes or offers to make a product, in relation to which the design is registered, which embodies a
design that is identical to, or substantially similar in overall impression to, the registered design; or
(b) imports such a product into Australia for sale, or for use for the purposes of any trade or business;
or
(c) sells, hires or otherwise disposes of, or offers to sell, hire or otherwise dispose of, such a product;
or
(d) uses such a product in any way for the purposes of any trade or business; or
(e) keeps such a product for the purpose of doing any of the things mentioned in paragraph (c) or (d).
- the allegedly infringing product is to be compared with the design as registered (not with
another product that embodies the design): LED Technologies Pty Ltd v Elecspess Pty
Ltd
- Substantial similarity will be determined using the criteria outlined in s 19.
- More weight is to be given to similarities than to differences between the designs: s
19(1).
- The decision maker will consider:
o whatever statement of newness and distinctiveness has accompanied the
application; and
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o in the absence of such a statement, the appearance of the design as a whole

- design owner has 6 years in which to begin legal action: s 71(4).
- infringement action can be taken only if the design has been examined and a certificate
of examination has been issued
EXCEPTIONS TO INFRINGEMENT
Parallel importation

Infringement of design
…
(2) Despite subsection (1), a person does not infringe a registered design if:
(a) the person imports a product, in relation to which the design is registered, which embodies a
design that is identical to, or substantially similar in overall impression to, the registered design; and
(b) the product embodies the design with the licence or authority of the registered owner of the
design.
- If the design has been applied overseas with the licence or authority of the Australian
registered owner (for example where the products have been manufactured by an
overseas subsidiary of the owner’s company, using the Australian registered design)
then importation of the overseas products will not infringe.
Spare parts
- if a person carries out an act that would otherwise infringe, but the product which
carries design protection is a component part of a complex product and the use of the
product (or the authorisation of that use) is for the purpose of the repair of the complex
product so as to restore its overall appearance in whole or in part, then that person will
not infringe: s 72(1)
- Repair includes restoring a decayed or damaged component part of the product to a good
or sound condition, the replacement of parts, replacing items within parts, or carrying
out maintenance on the product: s 72(5).
- restoration of overall appearance ‘in whole’ is where the overall appearance of the
complex product immediately after the repair is not materially different from its original
overall appearance: s 72(3)
- restoration of overall appearance ‘in part’ is where the overall appearance of the
complex product immediately after the repair is solely attributable to the fact that only
part of the complex product has been repaired: s 72(3)
- The standard of the informed user is used to make these judgments: ss 72(4) and 72(5)
THE COPYRIGHT AND DESIGNS OVERLAP – WHEN IS COPYRIGHT INFRINGED

BY USE OF A DESIGN?
- Whenever a copyright work is used in the design application/ registration/

industrialisation process the question arises of whether the use of that design (which
reproduces the copyright work) is going to be an infringement of the copyright
reproduction right.
- under certain circumstances, a person who manufactures articles and by doing so
reproduces in three dimensions the copyright work may be able to do so without
infringing copyright in the work: Copyright Act
- s 75 Copyright Act states:
o Subject to section 76, where copyright subsists in an artistic work (whether made before the
commencement of this section or otherwise) and a corresponding design is or has been registered
under the Designs Act 1906 or the Designs Act 2003 on or after that commencement, it is not an
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infringement of that copyright to reproduce the work by embodying that, or any other,
corresponding design in a product
o In other words, the design registration and not the copyright must be relied on
for protection if 3-D reproduction of the artistic work takes place
o However copyright protection still exists for other purposes and will cover uses
outside of the design monopoly, for example where a person makes an
unauthorised 2-D photocopy of the original copyright work
o If the corresponding design has not been registered for some reason, s 77 is the
relevant section
 With most types of artistic works (anything other than buildings, models of buildings
and works of artistic craftsmanship) protection against reproduction will still be lost if
the design is ‘applied industrially’ with the licence of the copyright owner and the goods
are marketed. See above for the meaning of ‘applied industrially’. Alternatively, it will
be lost if an image of a product made to the corresponding design is disclosed in a
patent or design application and subsequently published in Australia. If the design has
not been registered because it is excluded from registration by the Designs regulations,
full copyright protection will be retained
o What does it mean for protection to be lost?
 The protection is lost in the sense that there will be no infringement of
the reproduction right in the copyright work when the corresponding
design, or any other corresponding design, is embodied in 3-dimensional
form in a product
- Section 77A(1) provides that it is not an infringement of copyright in an artistic work to reproduce the
artistic work, or communicate the reproduction, if the reproduction is derived from a three-dimensional
product that embodies a corresponding design in relation to the artistic work, and the reproduction is in
the course of, or incidental to, making a product that does not infringe copyright because of the operation
of Division 8 of Part III of the Copyright Act.
- Section 77A(2) provides that it is not an infringement of copyright to make a cast or mould embodying a
corresponding design if the cast or mould is for the purpose of making products that would not infringe
copyright because of the operation of this division
- Section 77A establishes a defence to copyright infringement for certain acts that occur in
the course of, or incidental to, making non-infringing products
- Sections 75 and 77 permit three-dimensional products to be reproduced without
infringing copyright in an artistic work that relates to the design.
REMEDIES
- remedies are covered by s 75

- include injunctions and, at the option of the plaintiff, damages or an account of profits
- The remedy awarded may be influenced by the fact that the defendant was not aware at
the time of the infringement that the design was registered – as long as the defendant
had also taken reasonable steps to find out.
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Summary - complete - Intellectual property notes

Intellectual Property (Deakin University)

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MLL410 INTELLECTUAL PROPERTY

WHAT IS THE POINT OF INTELLECTUAL PROPERTY REGIMES?

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Economic Council of Canada’s Report on Intellectual Property and Industrial Property,

D Vaver: ‘Some Agnostic Observations on Intellectual Property’

ADMINISTRATION OF INTELLECTUAL PROPERTY LAW IN AUSTRALIA

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- IP legislation is the responsibility of the federal government: s 51(xviii) Constitution

The Court system and remedies for breach

- Main remedy for infringement of IP is an injunction aimed at putting a stop to the

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MLL410 INTELLECTUAL PROPERTY

REGISTERED AND UNREGISTERED MARKS

HOW THE TRADE MARKS SYSTEM WORKS

SPECIAL TYPES OF MARKS: COLLECTIVE, CERTIFICATION AND DEFENSIVE

- Collective trade marks are under Pt 15 of the Act

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- It is possible to amend an application under Pt 6 of the Act

- the registrar may register a trademark subject to conditions or limitations: s 70

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Assignment and transmission

- A registered trademark is personal property: s 21

TRADE MARKS ACT 1995 - SECT 17

- sign is defined in s 6 (definitions) as:

Coca-Cola Company v All-Fect Distributors Ltd (1999) 47 IPR 481

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(ii) Used or intended to be used

- The sign must be used or intended to be used: s 17

Lack of intention to use

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(iii) Goods or services

(iv) Provided in the course of trade

Oakley Inc v Franchise China Pty Ltd [2003] FCA 105

CAN THE TRADE MARK BE REGISTERED? – DISTINCTIVENESS

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- The ability to distinguish, or distinctiveness, is an essential pre-requisite of registrability

TRADE MARKS ACT 1995 - SECT 41

The decision-making process

- subsection 3 names two types of distinctiveness: inherent adaptability to distinguish and

TRADE MARKS ACT 1995 - SECT 41

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Inherently adapted to distinguish

Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511

Mid Sydney Pty Ltd v Australian Tourism Co Ltd (1998)

- Descriptive words are also likely to be found to lack inherent distinctiveness

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- Signatures in handwriting are likely to be distinctive, but it is likely to be graphics of the

- Invented words are not necessarily inherently adapted to distinguish

Foreign words or phrases

- Treated in much the same way as made up words

Cantarella Bros Pty Ltd v Modena Trading Pty Ltd

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BP plc v Woolworths Ltd [2004] FCA 1362

To some extent inherently adapted

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Acquired or factual distinctiveness

Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498

CAN THE MARK BE REGISTERED? – OTHER RESTRICTIONS

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