Welcome to Australian Intellectual Property Law. In this topic, you will learn about:
- Intellectual property law and the philosophy behind the concept of protecting intellectual property
- How to distinguish between the products that are protected by copyright, patent, trade mark and design legislation
- The definition of the term ‘copyright’ and explain how the law relating to it protects the physical expression of ideas
- How the Designs Act 2003 (Cwlth) protects the visual form of articles
- The definition of the term ‘trade mark’ and the operation of the Register of Trade Marks
- The actions for passing off, infringement of trade marks and breaches of s.18 of the Australian Consumer Law.
Intellectual property law deals with the legal rights that relate to intangible property such as copyright, registered designs, trade marks and patents. It is important to remember that intellectual property is not capable of being possessed like other personal property and may have significant commercial value. Federal statutes (passed by federal parliament in Canberra) provide protection for the majority of IP in Australia.
The common law also protects IP. An action may be brought at common law for breach of confidential information. Such an action can be brought to protect trade secrets. In addition, the 'tort of passing off' prevents one person from seeking to pass their goods and services off as those of a more successful competitor.
The learning resources we study in this topic examine each type of IP in detail and gives examples of conduct that will amount to an infringement and the remedies available to compensate an infringement.
Please read the following information before continuing with the learning.
Visit the Australian Government’s IP Australia website. This is an outstanding resource. You should spend considerable time exploring this website. There is a large amount of information on copyright, designs, patents and trade marks. There are tabs for different types of IP with examples and the steps needed to protect this intellectual property. The site also includes case studies in the ‘Tools and Resources’ tab. Also take the time to explore the page on IP legislation.
The right to prevent the unauthorised reproduction by a third party of the tangible form in which a person has chosen to express his or her ideas.
Copyright protects not only ideas but also the expression of ideas. It covers literary, artistic, musical, dramatic, photographic works and computer programs. Copyright is automatic in Australia, there is no need for copyright registration in Australia, although some creators use the © to identify that they own copyright in a work. The Copyright Act 1968 (Cwlth) is the relevant Act in Australia.
The following tables summarises key information about copyright including the relevant legislation (statute).
| Aspect | Definition |
|---|---|
| Copyright | The right to prevent the unauthorised reproduction by a third party of the tangible form in which a person has chosen to express his or her ideas. |
| Statute | Copyright Act 1968 (Cwlth) |
| Substance of the statute | Protects the physical expression of ideas (not the idea itself). |
There are two categories (subject matter) covered by copyright: original works and other than original works.
Original works
- Literary
- Musical
- Dramatic
- Artistic.
Other than original works
- Sound recordings
- Films
- Published editions of works.
For examples of copyright in original works, select the headings to learn more.
- Books
- Tables of data
- Computer programmes.
- Ballet.
- Paintings
- Sculptures
- Drawings.
What does to be original mean?
Copyright subsists in ‘original’ works. To be original:
- it is not necessary for the work to be first of its kind
- the work must originate with the author
- the work must be more than a copy of some other material
- the author must have used some skill or experience in making the work/product original.
What does ownership of copyright mean?
The following list provides examples of ownership.
- An author generally owns copyright (this is because an author is person responsible for compiling the work).
- The employer owns copyright where the author is under a contract of service or under an apprenticeship.
- Person who commissions and pays for work
- Maker of sound recording or film.
There are certain rights given to an owner of copyright. Selects the category for more information about these rights.
Literary, dramatic and musical works give the author the exclusive right to:
- publish the work
- perform the work in public
- broadcast the work
- cause the work to be transmitted to subscribers of a diffusion service
- make an adaptation of the work.
Artistic works give the author the exclusive right to:
- reproduce the work in a material form
- publish the work
- include the work in a television broadcast
- cause a television programme that includes the work to be transmitted to the subscribers of a diffusion service.
Duration of copyright
How long does the copyright last? Duration depends on if the work is published or unpublished.
- Published work (that is, supplied to public): 70 years after death of copyright owner
- Unpublished work: 70 years after publication for the first time
Everyone thinks they know a certain amount about copyright law. Watch the following video which busts some very common copyright myths. How much of a work can you as a student use without infringing copyright?
According to the Australian Copyright Council (2017):
Copyright is infringed when copyright material is used without permission in one of the ways exclusively reserved to the copyright owner.
Consider what constitutes an infringement of original works and what actions do not amount to infringement of copyright.
Original works
Original works by person performing any of the various acts in respect of the work without authorisation or consent of owner of copyright. Examples include:
- reproducing (that is, copying) in material form the whole or a substantial part of a literary, dramatic, musical or artistic work.
- importing copies of an original work for sale, hire, exhibition or distribution.
- performing a work in public or broadcasting of a work without consent of the owner.
Actions not amounting to infringement of copyright
Just as it is important that you understand what is covered under copyright, it is also important to know what is not covered by copyright. Actions that do not amount to an infringement of copyright are numerous and include the following list.
- Use of insubstantial parts
- ‘Fair dealing’ which includes:
- research or study
- criticism or review
- reporting of news
- giving of professional advice by a legal practitioner or a patent attorney.
- Educational copying if adequate records are maintained that enable compensation to the owner of copyright
- Public readings
- Performances at home
- Copyright work available in libraries
- Incidental appearances of artistic work in films or television broadcasts.
What are the remedies for infringing copyright?
There are several remedies for infringement of copyright:
- Injunction: An injunction is a court order that compels a party to do or refrain from a specific action
- Action: Action for delivery of infringing material
- Damages: Damages for example, loss sustained, additional damages (if flagrant breach) and account of profits
- Anton Piller order: In New South Wales an Anton Piller is known as a ‘search order’ from a court order that provides the right to search premises and seize evidence without prior warning. Its purpose is to prevent evidence being destroyed, particularly in cases of alleged trademark, copyright or patent infringements.
Who is the copyright tribunal?
The Copyright Council is authorised to hold inquiries into matters relating to copyright. Watch their short video which summarises copyright and remedies in Australia.
There are three Acts that pertain specifically to copyright:
- Copyright Amendment (Moral Rights) Act 2000 (Cwlth)
- Copyright Amendment (Digital) Agenda Act 2000 (Cwlth)
- Copyright Amendment Act 2006 (Cwlth).
Let us look at these in more detail.
Copyright Amendment (Moral Rights) Act 2000 (Cwlth)
Select the following headings for information on the Copyright Amendment (Moral Rights) Act 2000 (Cwlth) including rights, defence and remedies.
- Authors of literary, dramatic, musical or artistic works
- Directors and producers of cinematographic film.
- Right of attribution (right of creator to be identified)
- Right not to have works falsely attributed (right to prevent others claiming authorship of their work)
- Right of integrity (right to protect work from derogatory treatment).
- Reasonableness.
- Damages
- Injunction
- Public apology order
- Remove infringement
- Reverse the infringement.
Copyright Amendment (Digital) Agenda Act 2000
The purpose of the Copyright Amendment (Digital) Agenda Act 2000 (Cwlth) is to extend copyright law protection into the electronic environment.
Copyright Amendment Act 2006 (Cwlth)
The Copyright Amendment Act 2006 (Cwlth) detailed amendments passed in direct response to Australia-US Free Trade Agreement. The amendments address:
- personal use, (space shifting and recording)
- fair dealing for parody or satire
- technological prevention methods
- copies for educational use
- copies for libraries.
According to the Australian Designs Act 2003 (Cwth) a design is:
…the overall appearance of a product resulting from one of more visual features of the product.
Designs are another type of intellectual property. The Designs Act 2003 (Cwlth) defines a product as ‘a thing that is manufactured or hand-made.’ Design law protects the way an item looks and not what it does. Visual features include shape, configuration, pattern and ornamentation, for example the shape of a bottle, furniture and the pattern on fabrics such as carpets and curtains. Other examples of design include building materials, jewellery, and cutlery.
The Designs Act 2003 (Cwlth) protects designs but protection is not automatic. The owner of the design must register their design with a government office. Such registration provides protection against a person infringing the design and provides remedies if this occurs. As mentioned previously, the purpose of the legislation is to protect the visual appearance of a product and not its function, uses or the way it constructed.
How can designs be protected?
Protection is provided through a process of registration at the Designs Office which is incorporated within Intellectual Property Australia. Designs must be ‘new’ and ‘distinctive’ when compared to the ‘prior art base’ to fulfil the requirements of registration. A design may initially be registered for five years and can be renewed for a further fives years; maximum registration is therefore 10 years.
Infringement proceedings
Proceedings for infringement can only be commenced after the design has been examined and a certificate of examination granted. A person will infringe a registered design if, without consent of the owner they make, import, sell, hire or offer for sale or hire a product that embodies a design that is identical to, or substantially similar in overall impression, to the registered design.
According to the Trade Marks Act 1995 (Cwlth), a trade mark:
…enables providers of goods and services to distinguish their goods and services from those of other providers.
A trade mark is a mark by which goods and services are identified. A trade mark can be registered under the Trade Marks Act 1995 (Cwlth) to protect a name, letter, sign, sound, smell and a colour. The Nike and Adidas logos are trade marks as is the colour purple, used in Cadbury chocolate bar wrappers in Australia.The subject matter can include any combination of characteristics listed in the following table:
| Letter | Label | Shape |
| Brand | Signature | Colour |
| Word | Ticket | Sound |
| Heading | Numeral | Scent |
| Name | Device | Aspect of packaging |
Examples include deodorants, air freshener sprays, brand names, logos.
Fun fact! In 2014, IP Australia marked its centenary. A panel of Australian personalities from the worlds of sport, art, business, advertising and fashion were asked to rank the top national trade marks. From their list, the Australian public were asked to vote to choose Australia's favourite trade mark. The top ten trade marks were Woolmark, the ABC, Arnotts, David Jones and Qantas, R.M.Williams, Vegemite, Weetbix and the Australian Wallabies!
Registration of trade marks
The Trade Marks Act 1995 provides for registration of trade marks in a register maintained at the Trade Marks Office. A trademark must be 'capable of distinguishing' the applicant’s goods and services. The applicant must indicate the class/classes of goods and services for which the registration is sought.
Select the following headings to learn key points about trade marks.
The sign cannot be registered if it:
- contains or consists of a sign prohibited by regulation
- cannot be represented graphically
- does not distinguish the applicant’s goods or services
- consists of scandalous matter or matter the use of which would be contrary to law
- consists of matter the use of which would be likely to deceive or cause confusion
- is substantially identical with, or deceptively similar to, a trade mark registered by another person.
- Certification trade marks
- Defensive trade marks
- Collective trade marks.
Initially for 10 years, then renewed indefinitely for successive periods of 10 years.
- Protect goodwill associated with trade mark
- Exclusive rights to use trade mark
- Asset included in business valuation
- May assist with franchising and licensing.
Infringement of trade marks
Infringement of trade marks occurs when:
- an individual or organisation uses a mark similar to the registered trade mark, in order to deceive
- the tort of passing off occurs (when a person believes they are purchasing a product or service of a particular quality that the product is from the same or a related company).
Remedies for infringement of trade marks include:
- Injunction: An injunction is a court order that compels a party to do or refrain from a specific action
- Damages: Damages may include for loss sustained and account for profits.
Matters addressed in the Trade Marks Amendment Act 2006 (Cwlth) included:
- introducing the absolute first use rule'
- new ground to opposition to registration is that the application to register was made in 'bad faith'
- greater recognition of the international trend to protect famous trademarks
- changes to non-use provisions
- provision for undertakings regarding customs notices.
Trade secrets
This reading is an article with a video embedded on trade secrets. Read the article and watch the video. If a trade secret has been breached legal action may be brought for a breach of confidential information. This resource explains what is and what is not a trade secret. Note, the examples given of trade secrets and the summary of cases where the courts have considered this issue.
Under the Patents Act 1990 (Cwlth) and the Patents Cooperation Treaty 1970:
An inventor has sole and exclusive right to exploit and to authorise another to exploit his/her invention.
Patents protect inventions. For an item to be patented, it must be both new and useful. It must do something! A person must apply for a patent and must show nobody else has patented the same invention. The Patents Act 1990 (Cwlth) is the relevant Act.
The following table provides examples of subject subject matter and inventions.
| Subject matter | Examples of inventions |
|---|---|
| Manner of manufacturing | Machines |
| Novelty | Drugs |
| Practical use | Processes |
| Treatments |
Applying for a patent
The application for a patent can be done through the Patent Office at IP Australia at ipaustralia.gov.au. There are certain prerequisities:
- Disclosure
- Proof that the application meets the requirement of being ‘novel’
- Tested against publications (written, oral or in use) anywhere in the world.
The duration of protection for a patent depends on whether the patent is classified innovation or standard patent:
- Innovation patent: The innovation patent replaces the petty patent and the duration of protection is a maximum of eight years.
- Standard patent: For a standard patent, the duration of protection is 20 years.
Infringement of patents
An infringement occurs if invention is copied by manufacturing or supplying goods whose use would infringe the patent. Defences to infringement of patents occurs if at date of infringement, defendant was not aware of existence of patent.
Remedies for infringement of patents include:
- Injunction: An injunction is a court order that compels a party to do or refrain from a specific action
- Damages: Damages may include for loss sustained and account for profits.
In simple terms the 'tort of passing off' occurs when a person seeks to pass his/her own goods or services off as the product of a more successful competitor. Misrepresentation is made:
- by a trader in the course of trade
- to prospective customers of the trader, or ultimate customers of goods or services supplied by the trader
- calculated as injuring the business or goodwill of another trader.
To be considered a tort of passing off, it must cause actual damage to the business or goodwill of the trader who is suing.
What is the action for a breach of confidential information?
Select each title to learn more on the action for a breach of confidential information (common law).
Restrains a person from using confidential information obtained from another when they do not have the consent of the other party.
- Information has nature of being confidential
- Information received in circumstances where obligation of confidence is expressed or implied
- Information communicated to a third person without permission.
- Trade secrets
- Government information.
Remedies for infringement of patents
Remedies for infringement of patents include:
- Injunction: An injuction is a court order that compels a party to do or refrain from a specific action
- Anton Piller order: An Anton Piller order is a court order that provides the right to search premises and seize evidence without prior warning.
- Damages: Damages may include for loss sustained and account for profits.
The following video explains more about the Tort of passing off where a person seeks to pass his/her own goods or services off as the product of a more successful competitor.
Read ‘The safety net that catches unregistered trademarks - the old ‘tort of passing off’ and misleading and deceptive conduct’. This article explains the common law tort of passing off and how it can provide protection for businesses who have not registered a trademark. Note, the elements that must be established to succeed in this tort. Also, note the discussion regarding s. 18 of the Australian Consumer Law and how this is relevant if a business seeks to pass their good and services off as those of a more successful competitor.
End of topic forum
The forum activity for Topic 7 asks you to to complete a blog entry. Consider the business you have chosen for your assessments. This business will have IP that needs protection. Complete a blog entry where you list all the intellectual property that your business possesses and what Australian legislation or common law actions would protect this IP. This activity will directly assist you with the preparation of Assessment 3.
Your forum entry should be approximately 200 – 300 words. You may like to use images and diagrams. You are also welcome to include factors that may not be explicitly stated but which you believe fit within the context of the subject and are worthy of inclusion.
IP Your Business Edge – IP Australia
This publication from IP Australia introduces the different types of IP protection in Australia. We do not cover plant breeder rights and circuit layouts in this topic. Just focus on copyright, trade marks, designs and patents. Read why it is important to value your IP and consider the example provided regarding the Australian wheat industry. You can also read about how a business can take advantage of grants and tax incentives.
