Blake Dawson - Ownership and licensing of copyright by States and the Commonwealth: High Court grants leave to appeal

Matthew Baldwin and Georgina Adams of Blake Dawson reports that the Copyright Agency Limited has been granted special leave by the High Court of Australia to appeal the decision of the Federal Court in Copyright Agency Limited v State of New South Wales (2007) 73 IPR 1, which dealt with ownership and licensing of survey plans by the NSW Registrar-General. Accordingn to Matthew Baldwin and Georgina Adams, the appeal will consider whether the Federal Court was correct in holding that the NSW government has an implied licence to do everything that, under the statutory and regulatory framework that govern registered plans, the State is obliged to do with, or in relation to, registered plans.

Blake Dawson - Ownership and licensing of copyright by States and the Commonwealth: High Court grants leave to appeal

Richard Baddeley - Evidence of Commercial Success – Making an Inventive Step Easier to Find

Richard Baddeley, Principal at Watermark, reviews the secondary indications of inventive step – facts that demonstrate the quality of an invention without reference to the skill level in the particular field of technology, which may be established more readily and less expensively than the state of technical knowledge in the relevant field. Richard Baddeley notes that courts, including Australian courts, recognize this and weigh such secondary considerations carefully, such as in the recently decided High Court case in Lockwood v Doric.

Richard Baddeley notes that it can often be worthwhile considering whether commercial success may be evidenced assisting findings of inventive step in both prosecution and enforcement contexts. A qualification on this technique for establishing inventive step is that evidence of commercial success may often require revealing commercially sensitive information. According to Richard Baddeley, this must be weighed against the commercial value of the patent and difficulty in accessing other sources of proof of inventive step.

Evidence of Commercial Success

Marie Wong - When must the Crown pay to use copyright material for the services of the State?

Marie Wong, Senior Associate at Deacons, reports that leave to appeal was granted to the applicant in Copyright Agency Limited v State of New South Wales [2007] HCATrans 700 (16 November 2007) over the decision of Copyright Agency Ltd v New South Wales (2007) 240 ALR 249. Marie Wong discusses the Copyright Agency Limited (CAL), which is a declared “collecting society” for the purposes of the Copyright Act and represents copyright owners (such as authors, photographers, publishers and, relevantly, surveyors) and to administer the licensing of copyright works to the general community.

CAL originally approached the Copyright Tribunal for a determination of the terms on which the State of New South Wales could deal with survey plans prepared by members of the Surveyors’ Association. The matter was subsequently referred to the Full Federal Court in order to determine questions of law relevant to the Copyright Tribunal’s determination. Specifically, the Full Federal Court was required to determine who owned copyright in the survey plans and whether surveyors were entitled to receive royalties arising from the State Government’s use of the plans.

According to Marie Wong, the outcome of the High Court appeal may affect how government can continue to deal with third party works submitted to them for specific purposes.

When must the Crown pay to use copyright material for the services of the State?

AFR - Inventors get backing for patent battle

AFR reports that the High Court in Lockwood v Doric has strengthened the ability of inventors to defend their patents by pointing to evidence of high sales volumes, or that their product has been copied.

The courts have previously been reluctant to consider secondary evidence, such as commercial success, in deciding whether a patent satisfies the threshold test of an “inventive step”.

Matthew Swinn, Corrs Chambers Westgarth, said that “trying to persuade the courts to unpick what’s due to marketing and what’s due to the patent will always be tricky. But we can expect courts to pay more attention to this point in the future”.
AFR - Inventors get backing for patent battle (20 July 2007)

Watermark - High Court clarifies overlap

Barry Newman of Watermark reports on the High Court decision of Burge v Swarbrick, which has clarified the �overlap� between copyright protection and design protection. Barry Newman reports that the High Court unanimously rejected the assertion that despite the yacht having gone into production it retained copyright protection as �a work of artistic
craftsmanship�, but rather, required that for an object to be �a work of artistic craftsmanship�, there must be
�real and substantial artistic effort� which is not constrained by �utilitarian considerations�.

Link to Watermark publication

Copyright Protected Material - Are you leaving yourself exposed? - Deacons

Copyright Protected Material � Are you leaving yourself exposed? - Marie Wong and Annabelle Nilsson of Deacons reports on the High Court case of Concrete Pty Ltd v Parramatta Design & Developments Pty Ltd [2006] HCA 55:

• In the absence of an agreement to the contrary, the purchaser of land had an implied licence to utilise development drawings for construction on the land where architectural plans had already been prepared for that purpose. This was regardless of the fact that no actual payment for the plans had previously been made to the architect of the plans.

Marie Wong and Annabelle Nilsson note that the case highlights the importance for commercial organisations to ensure that their rights to use and retain copyright material are expressed at the outset of entering into commercial arrangements.

Link to Deacons article

Business method patents in Australia and the US: the difficulties continue

Business method patents in Australia and the US: the difficulties continue - Nicholas Tyacke and Timothy Webb of Clayton Utz review recent Australian and US decisions that show the difficulties that pure business methods are causing patent offices and courts in those jurisdiction.

In Australia, the article refers to Decision of Deputy Commisioner of Patents: Stephen John Grant [2004] APO 11, Grant v Cmr of Patents [2005] FCA 1100 and Grant v Cmr of Patents [2006] FCAFC 120 and the application for special leave to the appeal to the High Court. These cases relate to Stephen John grant’s asset protection method, which involved

• establishing a trust with a trustee;
• the owner making a gift of a sum of money to the trust;
• the trustee making a loan of said sum of money from the trust to the owner; and
• the trustee securing the loan by taking a charge for said sum of money of the asset.

In USA, the article refers to the seminal decision of State Street Bank 149 F 3d 1368 (Fed Cir 1998) and the dissenting decisions in Laboratory Corp of America Holdings v Metabolite Laboratories, Inc 126 S Ct. 2921 (2006).

Link to Australian Intellectual Property Law Bulletin (Vol 19 No 8, January 2007)

Anthony Franklin SC - Pick a principle - a provocative look at patent claim construction in Australia

Pick a principle - a provocative look at patent claim construction in Australia - Anthony Franklin SC proposes that old “well settled” rules should be cast aside in favour of a single principle of purposive construction.

“It is my hope that if the question again comes before the High Court the choice will be made and that the Court will throw out the old intellectual baggage and define a uniform approach to the construction of patents that is consistent with the purposive approach adopted in other areas of the law. After all, why should patent law be the only area where arcane and sometimes confusing rules are retained?”

December 2006 edition of Intellectual Property Forum

Concrete v Parramatta Design & Developments

The High Court has today delivered its judgment in Concrete Pty Limited v Parramatta Design & Developments Pty Ltd [2006] HCA 55 - http://www.austlii.edu.au/au/cases/cth/high_ct/2006/55.html

First Glance

Concrete Pty Ltd (Concrete) (Costa & Associates acting) has succeeded in appealing to the High Court to overturn a decision by the Full Federal Court, which

Background

Parramatta Design & Developments Pty Ltd (Parramatta Design) (Hal Lawyers acting) provided architectural design services and was found to have prepared plans and drawings for a development on Nelson Bay (NSW) of 14 units. After a falling out with joint venture partners, a trustee was appointed for the sale of the site. However, Parramatta Design put the trustees on notice that “we are the designers and owners of the copyright of an approved [development approval] for the 14 unit development and that it would not grant a licence to the use of “our copyright or our plans”.

Concrete had purchased the land and later offered to pay Parramatta Design a licence to reproduce the plans and drawings for the 14 unit development. This offer was refused. At trial, Concrete asserted that it had an implied licence. This claim of defence was based on a claim that the licence between Parramatta Design and the joint venture partners extended in principle to any successor in the title to the land which had the benefit of the relevant development consent.

The High Court appeal dealt with whether Concrete had an implied licence to use architectural plans and drawings prepared by Parramatta Design for the purpose of undertaking the development in Nelson Bay. The High Court appeal also dealt with whether an apprehended bias could properly be established in regard to the conduct of the primary judge.

Decision

The High Court unanimously allowed the appeal but delivered separate judgments (Kirby and Crennan J delivering joint judgments) with the effect that Concrete possesses an implied licence to use the architectural plans and drawings and that the orders set by Branson, Kiefel and Finkelstein JJ are set aside