Introduction

There are a number of different criteria that a creation must meet in order for it to be protected by copyright law. These are the requirements of (1) subject matter, (2) material form, (3) connection to Australia and (4) originality. While copyright arises automatically on creation, a work will only be protected if it satisfies these different criteria (or at least those criteria that apply). The first threshold that must be met is that the creation must fall within one of the categories of subject matter recognised under the Copyright Act 1968 (Cth). Copyright law divides subject matter into two general categories: ‘works’ – literary, dramatic, musical and artistic works – and ‘subject matter other than works’ – sound recordings, cinematograph films, sound and television broadcasts, and published editions of works. Once it has been established that a creation falls within one of the categories of subject matter, it is then necessary to show that it meets the requisite criteria for protection. The particular criteria that need to be met differ depending on the type of subject matter in question. The first of these is that for a work to qualify for protection, it must be recorded in material form. This requirement only applies to literary, dramatic, musical and artistic works. The next requirement that must be satisfied, which applies to all categories of subject matter, is that the creation must be sufficiently connected to Australia to qualify for protection under Australian law.

The final requirement, and the requirement that often requires closest examination, is that the work must be original. This requirement only applies to literary, dramatic, musical and artistic works. Part IV works (that is, subject matter other than works) only need to satisfy the lower threshold that the subject matter has not been copied. Each of these criteria will be examined in turn.

What is a patent for invention?

A patent is granted by the Crown and confers private property rights in the form of a monopoly for the invention of products, methods and processes in all fields of technology. The invention could relate to all manner of things, including pharmaceutical products and processes, engineering products and processes, medical and therapeutic devices, micro-organisms and computer technology. These things all have in common some human intervention with nature to bring about some physical change. A patent grants exclusive rights to the patentee in relation to the invention in return for public disclosure of the invention.

Patents are available for two tiers of inventions: standard patents and innovation patents. Neither patent will be granted for something that is already known. The invention must be novel, in the sense that its details are not published or made publicly available through use anywhere in the world. The invention must also be useful. Different levels of an advance over what is known apply to standard and innovation patents. The standard patent must not be obvious – it must involve an inventive step – whereas an innovation patent requires a substantial contribution to the working of the invention.

Novelty and inventive or innovative step require a comparison with specified documents and acts throughout the world. This base for comparison is referred to as a prior art base. The monopoly is granted for a restricted period, with the public free to utilise and perform the invention at the end of that period. During the term of the patent2 the patentee can exclude others from exercising the rights granted.

Introduction

This chapter examines the ways in which a copyright work can be exploited. It also examines the different ways in which copyright can be infringed. This is followed by a discussion of the defences that a party may rely on to escape liability for an act that would otherwise be infringing.

Exploitation

When exploiting a copyright work the owner has a number of different options. One possibility is that the owner exploits the work themselves. Another option is for the owner to sell (or assign) copyright to a third party. In this situation, ownership of the copyright work passes to the third party; the initial owner no longer has any legal interest in the copyright work. Another option is for the copyright owner to retain ownership of the work, but to allow (or license) third parties to exploit the work for them. Copyright is divisible as to the exclusive rights comprising copyright, the time of exploitation and the place of exploitation. An assignment or licence of copyright may be limited to apply to one or more of the acts that the copyright owner has the exclusive right to do: for example, it may apply to broadcasting rights, film rights or paperback reprint rights. An assignment or licence may be also limited to apply to a place in or part of Australia or other countries. Finally, an assignment or licence may be limited to apply to part of the copyright term. Thus, a licence in a work may be granted for the broadcast rights for one year in Australia only.

Introduction

There are some aspects of the intellectual property regimes that are common to all the regimes. Some of the remedies available for alleged breaches of intellectual property rights fall into this category. In addition, there are some other laws that affect the intellectual property laws in a relatively uniform manner. For example, the restrictive trade practices provisions of Part IV of the Competition and Consumer Act 2010 (Cth) apply equally to all owners of intellectual property, subject to one or two variations.

The purpose of this chapter is to deal with most of those aspects. The chapter commences with a discussion of available remedies for infringement. After dealing with remedies, the chapter deals with a number of other miscellaneous issues, such as the relationship between intellectual property and restrictive trade practices.

Pretrial remedies

The nature of the various forms of intellectual property is such that it is relatively easy and inexpensive to engage in infringing behaviour that can have devastating effects on the value of the intellectual property in question. Consequently, it is important to have an understanding of the types of action that can be taken to protect intellectual property and, in particular, action that can be taken before trial to preserve the intellectual property owner’s position.

The principal theme that emerges in all intellectual property regimes is to vest ownership in the creator, but to vary this where creation is in the course of employment or pursuant to some other express contractual arrangement. The application process for obtaining the grant of a standard or innovation patent was described in chapter 12. In this chapter we discuss a variety of matters that relate to the entitlement to apply and be granted a patent, ownership and the allocation of rights, including the grant of interests in the Crown and compulsory licences, and the role of the Register.

Entitlement to grant

The Patents Act 1990 (Cth) focuses on a person’s entitlement to be granted the patent. Any ‘deception of the Crown as to entitlement to the invention or the identity of the true inventor destroys the foundation on which the patent is granted’. A number of independent people or teams of people may be working on the same area of technology and arrive at the same invention. All may satisfy the technical requirements that qualify them as ‘inventors’ who would be entitled to a grant of patent under s 15. However, priority for grant of a patent is given to the first of the inventors to complete the work and file for protection.

Introduction

This chapter looks at one of the key notions within copyright law – namely, the idea of the ‘author’. As we will see, while authorship carries with it certain consequences, including the right to first ownership of copyright, there are a number of exceptions to this general rule. This chapter will also look at the nature and duration of the rights that are given to the copyright owner.

‘Authorship’ and first ownership

One of the notable differences between common law copyright systems, such as those in Australia, New Zealand, the United Kingdom and Canada, and the droit d’auteur systems of many European countries concerns the prominence given to the ‘author’ as creator of copyright works. Despite this, the author has long played a pivotal role in common law copyright systems. It has also been suggested that the modern idea of the author was effectively invented by British publishing houses in the eighteenth century in their attempt to have the courts recognise perpetual copyright protection. The key role given to the author in Australian copyright law is reflected in the fact that copyright law uses the author as the focus or fulcrum point for many rules. For example, the period of protection given to a copyright work is based on the life of the author. In turn, the fact that an author is connected to Australia helps determine whether the copyright work qualifies for protection, and the moral rights associated with a copyright work attach to the author. Perhaps most importantly, the author is treated as the first owner of copyright in a work.

Introduction

Copyright law regulates the creation, dissemination and use of a range of different types of ‘works’, from books, plays, musical works, computer programs and films through to sound recordings and television broadcasts. In developing the legal framework to regulate copyright, the law has attempted to balance the interests and concerns of copyright owners with those of authors, users and the public more generally. For example, in setting the duration of copyright protection, the law has balanced the interests of copyright owners, who have always argued for longer protection, with those of the public more generally, who have an interest in the duration of protection being more limited.

Unlike the case with other intellectual property rights, such as patents, trade marks and designs, copyright protection arises automatically on the creation of the copyright work. In order to qualify for protection, a work needs to fall within one of the categories of subject matter that are recognised under the Copyright Act 1968 (Cth). One of the features of Australian copyright law is that a general distinction is drawn between Part III authorial works (literary, dramatic, artistic and musical works) and Part IV entrepreneurial works or, as the Copyright Act prefers, ‘subject matter other than works’ (films, sound recordings, television and sound broadcasts, and published editions). This distinction is important because it influences the criteria that need to be satisfied for a creation to qualify for protection, the nature and duration of the rights that are granted, as well as the defences that are available.

Introduction

The creation and open transmission of ideas and information have long been regarded as important features of a democratic society. However, there are many occasions where a person will want to communicate information to another in confidence on the understanding that the information is not further disseminated or used without consent. This may arise in the context of business, government or personal relationships. The value of information in each type of context will differ. Businesses and corporations are usually concerned to protect information that has some commercial value. It may be an invention for which a patent is to be sought, details of a business strategy or secret processes or recipes. Governments need to protect their ability to make decisions on sensitive issues. Individuals are usually concerned about protection of reputation and privacy. In the case of indigenous groups, their concern is to protect the secrets of their tribal group.

There is no discrete body of law that protects confidential information. Duties of confidence may arise in many different legal contexts, including that of protection of government secrets, business secrets and personal privacy, and requests for information under the relevant freedom of information legislation. The doctrine of legal professional privilege imposes confidential obligations, but this type of confidence must be distinguished from confidential information that is the source of the plaintiff’s rights. People who have statutory powers to obtain information may owe specific duties, and issues of confidentiality can arise in connection with arbitration proceedings. There are also statutory provisions that impose specific obligations of confidence and others that deal with protecting those who disclose confidential information. In certain types of relationships of trust and confidence, such as client and solicitor, patient and doctor, customer and banker, and employee and employer, the law will imply a term to respect confidences into the relationship.

As with the previous two editions of this book, this edition attempts to provide a detailed and scholarly insight into Australian intellectual property law. Its primary emphasis is on the principles of and complexities in that law. The authors have made a deliberate decision to focus on these issues to the exclusion of the wider policy issues surrounding intellectual property law. They have done so for a number of reasons. The first of these is that space constraints make it impractical to adequately deal with those policy considerations in a meaningful way. Consequently, they are flagged throughout the book and detailed references made to the many excellent works that already discuss those matters and to the numerous reviews of intellectual property that have been undertaken. The second and related reason is that an adequate investigation into and analytic examination of the legal principles and complexities of Australian intellectual property law require the sort of detailed treatment that has been undertaken and, again, space constraints demanded a choice about which issues to focus on. The intention is, therefore, to provide an in-depth and scholarly analysis of intellectual property law. By so doing, we aim to increase the stock of knowledge in this important area of the law.

History of passing off

A typical passing off situation is one in which the defendant represents that its product originates from or is in some way associated with the plaintiff or the plaintiff’s business when that is not the case. It may do this by adopting some business indicia of the plaintiff, such as an identical or similar business name or sign associated with the plaintiff’s product; but, as we will see, there are many different scenarios that fit that general description of passing off and the tort has also developed well beyond that basic proposition. We will also see that the understanding of the tort is complicated by its historical evolution. Its complicated history relates to the fact that the tort was recognised by both common law courts and courts of equity but they exhibited considerable differences in both their approach to the theoretical underpinnings of the tort and their approach to remedies for passing off. These historical differences continue to inform and complicate the development and application of the tort. An understanding of that history is essential to understanding the present-day formulation of passing off. It is also essential to understanding the various functions of registered trade marks, a statutory system of intellectual property that evolved from the tort of passing off.

Common law and passing off

Common law courts perceived passing off as a form of fraud and placed greater emphasis on the ‘fraud’ aspect of passing off. They were therefore concerned with representations by traders that deceived consumers about the trade origin of goods. However, unlike the tort of fraud, it was not the recipient of the fraudulent misrepresentation, the consumer, who brought the action. Instead, it was the injured trader who brought the passing off action because the trader was injured when consumers were deceived into believing that the goods being sold originated from the trader, when in fact they did not. This common law tort became far more powerful when the requirement of intention to deceive, a necessary element of the tort of fraud, was dropped well over a century ago and the nature of the misrepresentations recognised as founding the action expanded dramatically during the twentieth century.

Introduction

This chapter examines some of the rights that are closely associated with but not usually seen as part of copyright law. The first section examines the moral rights that are given to creators. This is followed by an examination of the protection given to performers under the Copyright Act 1968 (Cth). The law in this area has undergone a number of recent changes, principally as a result of the Australia–US Free Trade Agreement 2004 (AUSFTA) – it extended the protection to include control over authorised sound recordings of performances, as well as providing moral rights for certain types of performances. Later sections of this chapter consider resale royalty rights, circuit layout rights, and the public and educational lending rights schemes.

Moral rights

One of the recurring themes of twentieth-century Australian copyright law was the question of whether Australia complied with its requirements under the Berne Convention for the Protection of Literary and Artistic Works 1886 (Berne Convention) to protect the moral rights of authors. While the Commonwealth government and many others argued that the existing laws of defamation and passing off provided adequate protection, creators and commentators continually expressed their dissatisfaction with the level of protection afforded by Australian law. After nearly seventy years of debate, the government capitulated in 2000 and admitted that the existing laws were ‘fragmentary and incomplete’. To remedy this deficiency, in December 2000 the government introduced a moral rights legislative scheme into Australian copyright law. A limited regime of moral rights for performers, which is discussed below, was also introduced in 2007.