NEM 204: New Media Business Compliance

Module Five: Intellectual Property (IP)

Lecture 10:
Design, Trade Mark, Passing Off and Confidential Information

Design Legal Definition: Design A characteristic of a physical substance, which by means of lines, images, configuration makes an impression through the eye upon the mind of the observer. (Blacks Law Dictionary 6th Edition)

Text: pp.834-878 Resource: www.ipaustralia.gov.au

Design

IPA Definition: Design A design relates to the features of shape, sound, configuration, pattern or ornamentation which, when applied to a product, gives the product a uniquely distinct appearance. e.g Super Mario name and image is copyrightable (as an artistic work). The overall appearance of the product can be registered as a design. The actual game

Design Statutory Definition:

The Design Act 2003 (Cth) (DA): in relation to a product, design means the overall appearance of the product resulting from one or more physical features of the product.

Why register a design?

A registering a design is not compulsory however it can protect a valuable commercial asset. Once your registered design is examined and certified, you have the exclusive and legally enforceable right to use, license or sell your design.

Design registration
For a design to be registerable it must be a product which is new and distinctive. So what is meant by new and distinctive? The threshold test for what is new and distinctive is the aggregate of novelty and distinctiveness. (s15DA) The term product means a thing that is manufactured or hand made. (s6(1)DA)

Sound Design Document (SDD) Sound FX

A sound effect qualifies as a design product provided it is new and distinctive - as such it is capable of registration pursuant to ss6,15 of the Design Act.

 New' means the identical design (or one very similar) has not been publicly used in Australia nor has it been published in a document within or outside Australia. For example, a design would not be considered new if it had been 'published' on the Internet before the date it was filed (or its priority date, whichever is earlier). A design is 'distinctive' unless it is substantially similar in overall appearance to other designs already in the public domain.

New and Distinctive

Modelling

As a work of art this model would be able to be copyrighted.

As a product ( a configuration of lines) with a commercial value it would be able to be registered as a design provided it is an original work that is new and distinctive

Voiceover Vin Diesel lent his voice and likeness to the Chronicles of Riddick: Escape from Butcher Bay game; this is no surprise, as he owns the company (Tigon) that developed it! A voice over is deemed as being a product and therefore registerable as a design. Essentially Vin Diesel would have licensed the character and voice over to Tigon

 A drawing of a wireframe model showing a simple walk cycle would be copyrightable as a work of art or capable of registration as a product design provided it was new and distinctive and that it had commercial value.

Animation

Design registration

Design registration is intended to protect designs which have an industrial or commercial use. Designs which are essentially ARTISTIC WORKS are covered by copyright legislation.

 The Cambells soup can was an artwork created by Andy Warhol in 1962 it was originally painted with synthetic polymer on a canvas and now hangs in the NY Museum.

Multiple registration

Multiple Registration The Campbells soup can has both artistic and commercial application and thus capable of registration as a design and under copyright as an artistic work. The Campbells logo on the can would also be registered for protection under the Trademark Act

Where do I go to register a design?

The registration and operation of matters of design registration are administered by the federal government. The controlling body is the Design Office which is part of IPA Web site: www.ipaustralia.gov.au/

 Before filing an application, you should search existing design records. If your design is not new and distinctive, any registration you receive could be revoked as a result of examination and your registration could be worthless. N.B. Searching first will save you time and expenditure should your design not meet the criteria.

Before you apply

Who can apply?

An application for registration can only be made by the owner of the design. The owner of the design can be: i) the author of the design (i.e. the person who conceived the design); ii) the employer of the author, if the author made the design in the course of his employment;

Design registration: How much and how long?

The initial period of registration for your design lasts for 5 years from the date of filing. You may choose to renew your design registration for a further 5 years after that. (The maximum being 10 years in total). If you do not renew it will cease). o Initial design registration (2010) costs $200 for 5 yrs. Renewal for a further 5 yrs costs $275

International applications Australian design registration provides protection only within Australia. If you want to apply for registration in other countries, you also need to apply for design registration in those countries. Searching the international database may save you time and money.

An example of a registered product design

AUSTRALIAN REGISTERED DESIGN (21) Application number: 69065 (22) Date of lodging application: 27 April 1976 (45) Date of Registration: 19 August 1976 (54) Article in respect of which the design is registered: Briefs (51) International Design Classification: 02 - 02 (71) Name(s) of Applicant(s): Speedo Knitting Mills Pty Ltd (aka budgie smugglers)

 Infringement: Infringement is deemed to have occurred if a person without a license or authority makes or offers to make a product which embodies or is similar to the registered design. (s73(2)DA) Remedies The available remedies are: i) Injunctions are available to plaintiffs requiring the defendant to cease and desist. ii) Ordinary Damages and Exemplary Damages iii) Account of Profits iv) Criminal Prosecution for persistent infringement

Infringement & Remedies

What is a trade mark? General Definition: Trade Mark

A distinctive mark of authenticity through which the products or services of a company or individual may be distinguished from those of others. (Blacks Law Dictionary 6th Edition)

Statutory Definition: Trade Mark

Trade Mark is defined in the Trade Marks Act 1995 (Cth), s17TMA as: a sign used or intended to be used to distinguish goods or services from those of other traders.

Trade Mark: Nintendo Co. Ltd

 The Nintendo logo is a trademark owned by Nintendo Co. Ltd. for Nintendo. Portion used The entire logo is used to convey the meaning intended and avoid tarnishing or misrepresenting the intended image. Purpose of use The image is used to identify the brand Nintendo. The significance of the logo is to help the reader identify the brand and illustrate the nature of the brand in a way that words alone could not convey.

The Nintendo Trademark

Trade Mark
In the adjacent picture we have the Sony Playstation trade mark which is owned by Sony(top left). The PS3 Trademark is a Sony Playstation brand name owned by Sony (top left). The AVATAR trademark (centre top) is owned by James Cameron who licenses the trademark to Ubisoft. See the Ubisoft trademark (centre bottom). Ubisoft are the publisher and licence the rights to the sell the game to Sony

The publisher
Pictured left: EA has been the publisher of the Madden franchise (Madden NFL 07 shown) since 1989. Over the years, many different external and internal studios have made Madden games for EA. The Madden series are released each year to coincide with the NFL season in America

The licensor
Peter Jacksons movie King Kong was licensed by the publisher to hardware manufacturer(s) as a game. It was released at around the same time as the movie to maximise exposure and profit opportunities built around the publicity of the movie.

Trade Mark
Trade Marks are signs (including devices, labels, names etc which indicate that goods or services originate from a particular trader. When registered under the Trade Marks Act 1995 (Cth),(TMA) the proprietor is entitled to restrain the use of unregistered marks which are substantially identical or deceptively similar. (E.g. Flowing hair and intense particle effects are trademarks of Heavenly Sword.

Registered Trade Marks

A trade mark can be a word, phrase, letter, number, sound, smell, shape, logo, picture, aspect of packaging or a combination of these. A registered trade mark gives you the legal right to use, license or sell it within Australia for the goods and services for which it is registered.

Trade Mark Protection

Once registered a trade mark becomes the personal property of the registered owner for a period of 10 years. Trade mark registration is not compulsory but it is advisable. Protection from infringement is provided under s20(2)TMA and under false or misleading representations 29CCA Competition and Consumer Act 2010 (Cth.) .
It is also possible to take action under common law but this can be a timeconsuming and expensive exercise.

Trade Marks v Business Names

The difference between trade marks, business, company and domain names sometimes causes confusion.

Registration of a business, company or domain name does not in itself give you any proprietary rights - only a trade mark can gives that kind of protection.

 The same word(s) may be registered by different people as business names and trade marks. However, the registered trade mark owner can sue the business owner for infringing the trade mark if the business name owner uses it on goods or services similar to those covered by the trade mark registration. A domain name may be registered as a trade mark if it complies with the TMA.

TrdMrks v Business Names and Domain Names

How do I register a trade mark?

The registration and operation of trade mark is administered by the Commonwealth government.

The controlling body is the Trade Marks Office which is part of the IPA Web site: www.ipaustralia.gov.au/

How do I apply for a trade mark and what does it cost?

An on-line application to IP Australia costs $120 and must include the following: i) A representation of the trade mark; ii) Nomination of the relevant classes; iii) Description of the goods and/or services to which it will apply; and iv) A translation of any part of your mark that is another language. Once the application is accepted there is a $250 fee and a further $300 for renewal after 10yrs

On line help
As part of the IPA web site TM Headstart provides an A-Z of the rationale for and the process of registration. Web site: http://www.ipaustralia.gov.au/trademark s/tmhswhy.shtml
IPA web site also has a trade mark kit available for potential users.

Trade marks that are not available Your trade mark must distinguish your goods or services from others in the marketplace. For this reason, you will find it very difficult to register trade marks that: i) denote the kind, quality, intended purpose or value of the goods or services; ii) are common surnames or geographical names; or iii) conflict with an earlier trade mark, or would mislead the public about the nature of the goods or services.

Things to consider .. Registration of a trade mark in Australia does not give protection from possible infringement of a similar mark overseas.
If you offer goods for sale via the internet into a country where someone owns the trade mark, you may be sued for infringement.

Things to consider If your trade mark has not been used by you, or on behalf of you, for a period of 3 years, an application for removal from the Trade Marks Register can be made. If you wish to trade internationally or via the internet it would be advisable to take out an international trade mark.

 s120TMA sets out that TM can be infringed in any one of three ways: i) by use of a sign that is identical or deceptively similar ii) by use of a sign that is identical or deceptively similar to sell goods or services closely related iii) by use of a sign that is identical or deceptively similar where a good or service is so well known that it would be likely to be taken as a connection.

Infringement of Trade Mark

Remedies for Breach of TM

Injunctions are available to plaintiffs requiring the defendant to cease and desist. (s126(b) TMA) Seizure - the owner of the TM can request that the CEO of Customs seize imported goods. (Pt. 13 TMA) Damages or Account of Profits (s126(b) TMA) Criminal Liability/Prosecution (s145-152 TMA)

Business Reputation: Passing Off Definition: Passing off is said to be: - A misrepresentation by a trader in the course of trade. - to prospective customers of his or ultimate consumers of goods or services supplied by him - which is calculated to injure the business or goodwill of another trader, and - which causes actual damage to the business or goodwill of the trader bringing the action (Lord Diplock [1979] The Advocaat Case)

The Tort of Passing Off - Elements

For an action of passing off a plaintiff must have established a distinctive reputation in relation to its business or products. For liability to arise in passing off there must be a misrepresentation that was calculated to deceive the relevant public.

Passing Off

Example of passing off: Counterfeit / Fake Nintendo games (2010) Counterfeit games are alleged to be coming into Australia enmass from China, Hong Kong and Malaysia. Fake Gameboy Advance and now Nintendo DS games are alleged to be widely available. Other than being illegal the batteries are cheap and can go flat at any moment, erasing your saved files. Copies of fake games can be bought overseas for 1 Dollar, yet they are flooding eBay and of course being passed off as authentic licenced games.

Australian Consumer Law

In relation to the tort of passing off a plaintiff would also be able to consider an action for breach under the Competition and Consumer Act (Cth.) 2010 (CCA)
(The CCA essentially replaced the Trade Practices Act (Cth) 1974)

The CCA(Cth.) 2010 Competition & Consumers Act

Misleading and deceptive conduct: ss18 A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

Misleading and deceptive conduct: s18

Trade Practices Commission v Cue Facts: Cue, a national fashion

company, breached (s53(e)TPA) now s18CCA by displaying price tags on

Christmas specials that showed the original price and then the reduced price, like this: $50 $39. The garments however, had never been offered for sale at the higher price. Cue was fined $37,500.

False or Misleading Representations

Goods and Services (s 29)

A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services, make a false or misleading representation: (a) that goods are of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use (cont)
47

Passing Off: The

Beer case

In 1996 the plaintiffs, 20th Century Fox successfully sued the South Australian Brewing Co to prevent the marketing of beer under the Duff name. It was held that the relevant public would be deceived into thinking the beer was the legendary beer drunk by Homer Simpson.
Under the CCA the 20th Century Fox v SABC matter would be likely to be a breach of s18 and or s29 CCA

Remedies for Passing Off Injunctive relief to stop the continuation of the passing off. Damages based on: - Loss of existing trade - Loss of potential to exploit goodwill Account of Profits That the plaintiff may recover from the defendant any profits derived from the act of passing off.

Confidential Information Definition: Confidential Information (CI) - Private or secret facts or knowledge not in the public domain. - Possessors of confidential information are often subject to fiduciary duties and or a duty of good faith which prevents them from misusing the information for their own advantage.

What is confidential information ? Various types of information which do not fall within the scope of other forms of IP may nevertheless be invaluable. E.g. commercial information, trade secrets and personal information Examples include: - Ideas that are not yet put into a material form - inventions which are not suitable for patent - Relationships between employers and employees * In many situations it may be advantageous for parties to
execute a confidentiality agt.

Why do we need a Confidentiality Agreement?

Confidentiality agreements (aka NonDisclosure agreements) provide protection when there is a need to disclose secret information for meetings with potential investors or business partners. It is vital that you make sure you back up your confidential information with a signed confidentiality agreement with every person who has knowledge of the sensitive material.

The Action of Breach of Confidence

Where a form of confidential information has been disclosed the appropriate cause of action is the tort of breach of confidence Breach of confidence occurs when a confidant fails to preserve the confidential information which has been communicated in circumstances giving rise to an obligation of confidence. It does not matter whether the disclosure was intentional or unintentional

The elements of an action of breach of confidence are: 1. The information itself must have the necessary quality of confidence about it 2. The information must have been imparted in circumstances importing an obligation of confidence 3. There must be an unauthorised use of that information to the detriment of the party communicating it

Elements of an Action of Breach of Confidence

Case: Faccenda Chicken Ltd v Fowler

Facts: Fowler was employed as a sales a manager by FCL. Fowler devised and implemented a system of refrigerated vans to deliver fresh chickens to butchers and supermarkets. Fowler (aka Chook) left the employ of FCL and started a company. which delivered fresh chickens. (FCL alleged foul play aka - a breach of confidence by Fowler).

Breach of Confidence: Employees

Breach of Confidence: Employees

Goulding J found that the information, necessarily gained by the employees in their employment, was confidential, but that confidential information short of a trade secret was, only protected from unauthorised disclosure for the duration of the employment. Subsequently the Court dismissed the company's claim and counterclaim.

Breach of Confidence: Employees Although breach of confidence is primarily an equitable cause of action (i.e. based on common law principles it is important to remember that officers and directors of companies are also bound by the Corporations Act 2001 (Cth.) s180 Care and diligence s181 Good faith s182 Use of position s183 Use of information

Remedies for Breach of Confidence

1. The primary remedy for a breach of confidence is that of injunctive relief to stop the use of the confidential information. 2. If the breach of confidence involves something written the the Ct. may issue ancillary orders for the return/recovery of such documents 3. Account of Profits are available to a plaintiff seeking pecuniary relief .. Where an account of profits is inappropriate a plaintiff may seek damages for any loss suffered by reason of the defendants breach of