Tuesday, October 28, 2014

The Congress of Vienna 1814: 200 Years of Copyright Lobbying

The 100th anniversary of the commencement of World War 1 has, quite understandably, overshadowed another, older anniversary: 200 years since the outbreak of peace, manifested in the form of the Congress of Vienna.

The principle purpose of the Congress of Vienna was for the victors of the Napoleonic Wars to work out what to do with European’s re-drawn borders. Napoleon Bonaparte had deposed some kings and installed others, created new fiefdoms and abolished others. The Tsar of Russia, the King of Bavaria, the Duke of Wellington, Metternich, Talleyrand, and many other heads of state and diplomatic luminaries, were in Vienna to either grant justice to the deposed, or, more typically, expand their own spheres of influence and block the encroachment of rivals.

But some others saw opportunities to lobby the gathered powers. A collection of German publishers presented a petition entitled 'Crisis of the German Book Trade Caused by German Publishers', dealing with both copyright protection and freedom of the press.

In language which seems startlingly modern 200 years later, the petition asked that, “writers, printers, and publishers are accorded security in their intellectual property by means of a legally enforced “Ban on Literary Piracy”” (in the same form decreed by the United Netherlands).

The petition was opposed by copyright pirates based in Vienna, but was ultimately successful in giving publishers rights to re-printing particularly in the newly formed German Confederation.

This was, as far as I know, the first example of an intellectual property lobby group making representations at an international forum – something quite commonplace today and in fact, manifested by TRIPs, one of the fundamental underpinnings of the World Trade Organisation treaty.

Tuesday, September 23, 2014

The Price of New gTLDs

Last September 17th, the Internet Corporation for Assigned Names and Numbers (ICANN) held an auction for 3 new generic top level domains (gTLDs); namely .BUY, .TECH, and .VIP.

The results of the auction are as follows:
  • .buy was won by Amazon-EU S.a.r.l for $4,588,888, beating out 3 other applicants.
  • .tech was won by Dot Tech LLC for $6,760,000, beating out 5 other applicants and
  • .vip was won by Top Level Domain Holdings for $3,000,888, beating out 4 other applicants.
There are no details on what Amazon plans to do with the .buy gTLD yet, but they can enforce strict requirements for new registrants if they want, such as restricting it for use by online merchants or web stores.

Currently, there are many active sponsored TLDs that are strictly regulated. For instance, you won’t be able to get a “.gov” address unless you’re going to use it for a site that will represent a U.S. government entity at the federal, state, or local levels. You can’t get a “.aero” TLD either unless you’re going to use it on a site related to the air-transport industry.

Many gTLDs that are “restricted open” tend to belong to highly regulated industries such as .pharma (pharmaceutical industry) and .bank (banking industry, apparently launching in 2015).

The very fact that there was an auction explains why the bids reached the current numbers. ICANN auctions are usually considered as a last resort – even by ICANN itself – in case the group of applicants weren't able to resolve the matter through community priority evaluation, direct negotiation, or a private auction not affiliated with ICANN. The auction indicates the parties were not able to reach a private arrangement.

Other auctions are scheduled on a monthly basis until early 2015. ICANN, a non-profit organization, has not yet provided details on where the proceeds will go. President of ICANN’s global domains division Akram Atallah has so far stated that the proceeds will be separated and reserved until the board comes up with a plan for the appropriate use of the funds through consultation with the community.

Risks in 100% technology transfers in defence technology: Saab’s Jas-39 Gripens to Indonesia and submarines to Australia

Swedish aerospace company Saab has recently begun a marketing campaign designed to promote their Jas-39 Gripen to South East Asian countries, with an eye towards Indonesia. The aircraft is already operational in Thailand, butSaab is pushing hard to supply the TNI-AU (Tentara Nasional Indonesia Angkatan Udara) with 44 Gripens as a replacement for their now-obsolete Northrop F-5E Tiger IIs (which they are planning to replace before the end of the decade).

The Jas-39 Gripen (Griffin) is a light single-engine multirole fighter aircraft that served as an upgrade to the 35 Draken and 37 Viggen, both of which were used effectively by the Swedish Air Force. The Gripen's biggest selling point is that it’s a small aircraft yet the payload it carries is relatively large compared to its size. It is said that the aircraft matches the performance of an F-16, but has a considerably lower operating cost.

Gripen 3

Saab is even offering “100% technology transfer” as part of their bid. (The industrial cooperation offer is the same one that Saab offered to Brazil and India.)

That is a departure from how high technology manufacturers normally deal with their intellectual property. It opens the door to Indonesia learning Saab’s proprietary trade secrets and sets up Indonesia not to need Saab for maintenance with its ongoing revenue stream beyond the sale. The offer reminds me of concerns about Ford Motor Company’s sale of Volvo to Chinese car firm Geely in 2010. Why?

Tuesday, September 16, 2014

Does a “seat” limitation in a software license mean a specific machine or any number of machines?

This dispute is one to watch: it is ongoing and hopefully leads to a decision on a perennial issue that irritates software vendors.

In June 1999, the Commonwealth Department of Defence and software vendor Attachmate Australasia Pty Ltd signed an agreement by which the Department of Defence had the rights to use Attachmate’s Extra! IBM 3270 terminal emulation software on 8000 machines. The licence was under an automatic renewal under the same terms, but during an audit in October of 2009, Attachmate found that their software was used in more than 8000 machines.

As a result of this, Attachmate filed a copyright infringement complaint at the Copyright Tribunal. Defence argued that it could use the software without a seat limitation, provided that it did not do so on more than 8,000 machine at once. Defence also argued delay and acquiescence, citing that Attachmate already knew what was going on from a very early date yet did nothing.

The Commonwealth also sought additional information from Attachmate pertaining to licensing and copyright compliance revenue received by the company since 1999. The allegations is that Attachmate incentivises its license compliance team, which encourages those personnel to ignore breaches of the terms of the license. The Commonwealth was successful in their application for further discovery, having managed to obtain an order that requires Attachmate to file an affidavit explaining matters related to the allegations that their incentive structure encourages unfair practices by the company’s license compliance team.

I was involved in a similar matter in Racing & Wagering Western Australia v Software AG (Australia) Pty Ltd [2008] FCA 1332, in which a software vendor argued (unsuccessfully) that a disaster recovery site which mirrored software was a second use of the software and therefore attracted a second license fee (in this case, totaling AUD 3 million). These two matters underscore the need to ensure software procurement documents have a high level of precision in order to avoid ambiguities around how the software is used in technical contexts.

Monday, September 15, 2014

ALRC Releases New Report on Serious Invasions of Privacy in the Digital Era

In June 2013, then-Australian Federal Attorney-General Mark Dreyfus tasked the Australian Law Reform Commission (ALRC) to draft recommendations on how legislation can be tailored for the digital era and the serious invasions of privacy that seem to now be a constant source for tabloid gossip.

This was no surprise. The increased use of Internet capable portable devices like smartphones and tablets, the widespread use of cloud services to store private data, companies’ use of geolocation to custom-tailor delivery of content based on an internet user’s location, and, significantly, the United Kingdom’s Leveson Inquiry into “the culture, practices and ethics of the [British] press” had drawn global public attention to the relative ease in which privacy could be invaded through technological means.

The ALRC’s final report has just been published. Entitled “Serious Invasions of Privacy in the Digital Era,” the report contains recommendations for a new tort for intentional and/or reckless invasions of an individual’s privacy. This is a departure from the established Australian position made clear in the 1993 decision of Cruise v Southdown Press. In that case, Tom Cruise and his then wife Nicole Kidman sought to stop publication of images of their newly adopted child taken on board a boat in Sydney Harbour from a distance using a telescopic camera. The Court found that this did not give rise to a cause of action under Australian law, although the Court expressed sympathy for the plaintiffs. Other Australian cases have also rejected a right of privacy. (A 2003 Queensland District Court case, Grosse v Purvis, which laid out rules for a tort of privacy, does not seem to have been followed by any other court since.)

Commissioner in Charge Barbara McDonald has stressed that even though effort has been made to make the tort impartial to technology (as it is the act that is considered wrongful and not the means), the technological medium is important because its use will decide whether an intrusion was made: invasion of privacy would not have been possible if only using a person’s “own sight and hearing.”

The report also recommends conducting a public interest test, as this will give the court means to weigh in on whether the collection of private data is covered by freedom of expression, media, open justice, or a matter of national security. The onus will be on the defendant to prove that the act was in the public interest.

Sunday, August 10, 2014

Sufi Student Protest Over Cavalli’s Use of Their Sacred Symbol for a Perfume Logo

A group of students of the Sufism branch of Islam have recently launched a protest aginst Italian designer Roberto Cavalli over a perfume logo that resembles a Sufi symbol with religious significance (or at least a substantive variation of that symbol).

The logo in question is the “Just Cavalli” logo, which looks similar to a sacred symbol of the Shahmaghsoudi School of Islamic Sufism, comprising two arcs linked by a horizontal line in the middle of the symbol. The only major difference between the Sufi symbol and the "Just Cavalli" logo is that the latter has been rotated by 90 degrees. “Just Cavalli” stylised text sits in substitute of the line that links the two arcs.

The Cavalli logo is designed to represent a snakebite. The connotation is meant to be of "original sin" (the temptation of the serpent in the Garden of Eden in the Book of Genesis). This is further underscored by the tagline “Just Lust” in the perfume’s ads. Students of Sufism are offended by this – the Sufi symbol giving rise to the dispute is considered sacred and a sign of purity and heart, the opposite of what the "Just Cavalli" logo represents.

From a trade mark perspective, the Sufi symbol is the subject of a US trade mark filed by an international Islamic sufi school called Maktab Tarighat Oveyssi. Whether the dispute evolves into a trade mark oppositions or removal actions based upon the "scandalous" provisions of various national trade mark laws remains to be seen.

Thursday, August 7, 2014

Australian Winemaker Battles Trade Mark Squatter Over Ben Fu Trademark

It’s common practice for businesses to register the foreign language equivalents of their brands in relevant countries, for a number of reasons; to build their brand using terms that are more familiar to the target market, to avoid conflicts when their original trade mark means something else in the country’s language, and to protect themselves from other entities that could register the local equivalent of their brand and either:

a. ) build a competing product out of it, or
b. ) hold the trade mark for ransom.

The latter seems to be the case when Australian winemaker Treasury Wine Estates (TWE), which owns several brands (including the famous ‘Penfolds' brand) tried to register a Chinese variation of the name – Ben Fu – only to find three versions of the name already registered by businessman Li Daozhi and another man named Li Shen.

The Australian Financial Review has reported that two versions of the Ben Fu name as it pertains to spirits and wine was registered to Li Shen until 2019 and 2014, respectively, while Li Daozhi owns the rights to the name in relation to hotels and restaurants until 2021.

A Chinese court has found for TWE, but both Li Daozhi and Li Shen have appealed against the ruling.

There’s very little doubt as to Li Daozhi’s motives for registering the marks. Mr Li has been accused of trade mark squatting in the past, and has a history of getting into legal disputes against wine companies. One of the more notable ones was against French wine producer Castel.

The Castel case was very recent, when the French company started using a Chinese transliteration of their name – Kasite – for a marketing campaign in China. Unfortunately, they failed to register the trade mark in the country. Mr Li registered the mark for himself. After a protracted trade mark battle, Castel was ordered to pay $5 million to Mr Li in 2013. Castel has since called for a retrial, and China’s Supreme People’s Court has scheduled another hearing at a later date.

Cases of trade mark squatting and the problems they bring are very common in China, and the painful learning experience of these companies serve as reminders to businesses to practice due diligence when building brands and securing trade mark.

Wednesday, August 6, 2014

Halal Certification Authority Pty Limited v Scadilone Pty Limited

Followers of Islam are forbidden from eating food that is not halal, which means the food and every ingredient used was prepared according to the commandments found in the Q’uran, Islam’s holy book, as well as in the Hadith and Sunnah (each being libraries cataloguing things that the Prophet Muhammad said and did), unless there is no alternative and the situation makes it necessary to consume things that are otherwise unlawful.

As with most religions, there is tendency for the written word to be interpreted differently by different groups or people. This is especially true with halal food. In addition, religious leaders sometimes issue edicts that extend these halal requirements. Also, modern food products can be complex, made up of various ingredients that may or may not contain haram (unlawful, forbidden) ingredients like blood or swine.

To help this problem, there are various certification bodies that have been created specifically to identify and label food products as halal, making it easier for Muslims to ensure that the food products they consume are safe to eat. One of these certification bodies in Australia is the Halal Certification Authority ("HCA"), which provides a seal (a registered trade mark) to companies that have proven that their products comply with halal requirements, and have paid licensing fees.

The HCA recently commenced a trade mark infringement case in Australia against several kebab shops – Scadilone and two others that it supplied with products, White Heaven, and Quality Kebabs. The HCA sought compensatory damages based on lost license fees – around $5000 for a year’s worth of license from each of the shops, with Quality Kebabs being asked for $60,000 because its conduct has occurred over parts of two different annual licensing periods.

According to HCA, Quality Kebabs’ sales representative allegedly provided Scadilone and White Heaven with certificates bearing HCA’s trade mark, allowing them to promote their goods as halal, even though Quality Kebabs itself was not certified by HCA nor paid any of the license fees. The issue in this case was not whether Quality Kebab’s products are compliant with halal standards, but that it used HCA’s certificates – incorporating a registered trade mark – without getting express permission or paying for the license fees.

The court found that it was unlikely that any of the infringers would have acquired a license given the quantum of HCA's fees, so there were no likely “lost” license fees. The court also noted that had Quality Kebabs been aware that HCA’s trade mark was registered and license fees were payable, it would not have used the trade mark in the first place and would have found an alternative certificate. The court deemed that HCA had not been deprived of its license fee.

Tuesday, August 5, 2014

New gTLDs Nearing 1 Million Registrations, But Some Numbers May Be Inflated

As new generic top level domains are launched daily and businesses recognise the potential of these new gTLDs for building brands and identities online (as opposed to haggling or shelling out ridiculous amounts of money for .com and .net domains owned by domain flippers and squatters), it’s not surprising that the total number of domain registrations for gTLDs are near the millionth mark. It’s also not surprising that the top two ranking gTLDs are .club (64,579 registrations) and .guru (60,201 registrations), given the inherent popularity of each word.

The fourth ranked is .berlin (47,921) and the fifth, .photography (37,173) – again, not surprising particularly in the case of .photography, given the number of amateur and professional photographers online. But the fifth top ranked domain, .xyz (36,335) is a little bit suspicious, especially since more than 27 thousand new registrations for said gTLD belong to Network Solutions (NetSol) and its parent company Web.com, which only had 16,790 domain name registrations among the new gTLDs before the .xyz launch. Upon the launch of the .xyz domain, NetSol’s numbers skyrocketed to 44,476 registrations for the .xyz domain alone, accounting for 62.25% of the company’s total registrations.

Suspicions of artificially inflated numbers started surfacing after thedomains.com posted a news story revealing that Network Solutions is giving out a complementary .xyz domain free for 1 year to people who buy a .com domain on their service. Additionally, in order to decline the offer, the user has to visit a link and specifically click a "decline" button. Otherwise, the domain is awarded automatically.

It’s very likely that some of those .xyz registrations are actual legitimate registrations from people who want the domain, but given the huge spike in these registrations compared to other domain registrars (particularly compared to GoDaddy.com, which is currently more popular and offers relatively cheaper rates,) it’s very easy to deduce that the numbers are significantly boosted by this promotion.

The rankings are important in that the apparent popularity of each gTLD is likely to influence purchasing patterns - people will be caused to think that .xyz is popular (to some unknown demographic? To non-English speakers?) and will be encouraged by the high ranking to purchase .xyz domains. It will be interesting to see if new gTLDs will use the same tactic or will come up with other strategies.

Monday, August 4, 2014

Hells Angels, Banditos and Mongols: Trade Marks and Motorcycle Clubs

The Hells Angels Motorcycle Club (HAMC) is one of the largest motorcycle clubs in the world, with more than two thousand members belonging to 230 chapters in 27 countries. The club is incorporated in the U.S. and Canada as the Hells Angels Motorcycle Corporation.

The HAMC is very protective of its image and brand, particularly the club logo. In October 2013, the club filed a lawsuit in the US District Court for the Eastern District of California against 8732 Apparel, which is a clothing line owned by rapper Young Jeezy and retailer Dillard’s. The lawsuit alleged that elements of the clothing line infringed the intellectual property rights of the club patch, which is a skull with wings (known as the "Death Head"), and otherwise featuring the name of the club on top and the chapter details underneath.

Young Jeezy’s 8732 apparel, on the other hand, featured a mask with wings that bears a similar shape to the Death Head, and the words “Street Bandit” and “Eight Seven” in places where the HAMC name and chapter would have been. (photo comparison)

The Death Head logo, the HAMC name and the chapter all make up the standard Hells Angels patch, which serve as a sign of full club membership. The club owns two registered US trade marks for the patch design and two for the Death Head symbol.

The Hells Angels’ lawsuit cites willful infringement, and demands triple damages and attorney’s fees. Unsurprisingly – given the club’s reputation – the lawsuit was settled in the motorcycle club’s favor for an undisclosed amount. The clothing line has since been removed from the shelves of Dillard's.

In Queensland, Australia, laws around the wearing of motorcycle patches have apparently triggered the filing of many trade mark registrations. In October 2013 the Queensland Government introduced legislation which, amongst other things, prohibited the wearing of patches and the service of alcohol to people wearing prohibited motorcycle patches. These laws are, collectively, the Vicious Lawless Associations Disestablishment Act, the Tattoo Parlours Act and the Criminal Gang Destruction Act, together with amendments to the Liquor Act 1992.

The "1%er" symbol
Setting aside immediate and loud complaints from civil libertarian groups regarding the draconian tenor of the laws, the response of the motorcycle clubs has been to file many trade mark applications. This includes three recently filed trade marks for the Mongol Motorcycle Club (which recently reportedly entered Australia through a merger with the Finks Motorcycle Club), and multiple new applications filed by the Banditos Motorcycle Club. Some of the existing registrations incorporate the "1%" logo, an indicator that the wearer is one of the alleged one per cent of motor cyclists who "live outside the law", and which is banned under the Queensland laws.

The assumption is that the clubs have received advice similar to that followed by the tobacco industry in resisting efforts to introduce plain packaging for cigarettes: that the Queensland legislation unfairly strips the clubs of their valuable intellectual property rights. Alternatively, the clubs might be seeking to argue that federal trade mark legislation constitutionally over-rides state legislation banning the use of the specific motor cycle patches. It will be interesting to see how this strategy unfolds as the year progresses.

Sunday, August 3, 2014

Japan Starts Campaign Against Online Copyright Infringement

Japanese comics (which is called “manga”) and animated cartoons (called "anime") are subject to very robust protection in Japan. It is common to read about individuals facing jailtime and fines for illegal distribution of copyright-protected content or selling of unlicensed merchandise.

For the most part people residing outside of Japan managed to get away with hosting scans of popular manga titles on their own website. However, the Japanese government is now taking steps to strengthen the protection for Japan's manga industry. Japan is rolling out new copyright laws improving protection for manga and anime, and will be sending takedown notices to over 500 alleged infringers who have uploaded manga scans online without permission from the copyright holders.

According to the Japan Book Publishers Association’s data, the sales of manga in North America in 2011 have dropped to 150 billion yen (roughly US$1.5 billion) from 2007’s 300 billion yen (US$2.9 billion). Piracy is cited as the main cause of decline.

Sunday, July 20, 2014

The “Redskins” Trade Mark Cancellation

In June 2014, the US Trademark Trial and Appeal Board (TTAB) cancelled the registrations for the American Football club Washington Redskins’ “REDSKIN” trade mark, based on section 2 (a) of the Trademark Act (15 U.S.C. Section 1052(a)). The Washington Redskins’ name has been the subject of recent controversy due to the team’s name originating from an offensive term used for Native Americans. There had been a swell of voices pushing for the team to change their name.

The controversy dates back to 1992, when various groups first voiced their outrage about the name, prompting a call for the cancellation of the “Redskins” and “Redskinettes” (the football club’s name for their cheerleading team) marks.

The proceedings themselves were convoluted. The TTAB first issued a trade mark cancellation order in 1999, which was then overturned by the US District Court for the District of Columbia, a decision that was in turn upheld by the US Court of Appeals based on an ancillary laches argument. What followed was a refilling of the cancellation proceedings, which lead to the June 2014 cancellation order from the TTAB.

To know the practical implications of the football club’s loss of trade mark protection for the “Redskins” term, it is important to understand that the TTAB only has the authority to cancel a trade mark if there is valid cause at the time of registration. They cannot prevent the Washington Redskins from using both the Redskins and Redskinettes brands.

Additionally, the cancellation of the registration for the trade marks seems to be a minor setback for the football club. The club no longer has the advantage of federal registration for the marks, but in the U.S. marks that are consistently used and regularly enforced – like the Washington Redskins – are protectable as unregistered trade marks.

What does this mean for the average business? Be careful of cultural sensitivities when choosing a brand. Words and logos that have derogatory or culturally unpopular meanings can cause havoc with a brand launch or brand extension into a new jurisdiction.

Friday, July 18, 2014

Quixotic Tilts: Enforcing Descriptive Trade Marks

Trade mark owners who acquire highly descriptive marks through evidence of use should take care not to think that this entitles them to enforce their rights against third parties which use marks which are substantially identical. The following note is the substance of a presentation I gave to the Asian Patent Attorneys Association (Australia branch) on Friday three weeks ago, in Perth.

What are descriptive marks?

The essence of what is a descriptive mark was well-defined in an American case: Abercrombie & Fitch Company v Hunting World, Incorporated [1976] USCA2 141; 537 F 2d 4, 9-11 (2nd Cir 1976). The categories are:

(1) generic;
(2) descriptive;
(3) suggestive; and
(4) arbitrary or fanciful.

The court went on to say that generic terms can never be trade marks. Descriptive terms can, but only if they have acquired a secondary meaning. On the other hand, suggestive arbitrary or fanciful terms are inherently distinctive: Two Pesos, Inc. v Taco Cabana, Inc [1992] USSC 108; 505 US 763, 768-769. See also Gruner + Jahr USA Publishing v Meredith Corporation 991 F 2d 1072 (2nd Cir 1993).

Another US case, Big O Tire Dealers Inc v The Goodyear Tire & Rubber Company, an Ohio Corporation 408 F Supp 1219, 1243 (DC Cir 1976); affirmed [1977] USCA10 180; 561 F 2d 1365 (10th Cir 1977), elaborated upon this:

In trademark usage, words can be classified according to the degree of their distinctiveness. A ‘coined’ word is an artificial word which has no language meaning except as a trade mark. EXXON is a coined word used by an oil company.

A ‘fanciful’ word is like a coined word in that it is invented for the sole purpose of functioning as a trade mark and it differs from the coined word only in that it may bear a relationship to another word or it may be an obsolete word. FAB is a shortened version for fabulous and is a fanciful word used for detergent.

An ‘arbitrary’ word is one which is in common linguistic use but when used with the goods in issue it neither suggests nor describes any ingredient, quality or characteristic of those goods. OLD CROW for whiskey is an example of an arbitrary word.

A ‘suggestive’ word is one which suggests what the product is without actually being descriptive of it. STRONG-HOLD for threaded nails is suggestive of this superior holding power.

A merely ‘descriptive’ word is one which draws attention to the ingredients, quality or nature of the product. TENDER VITTLES as applied to cat food is descriptive.

A ‘generic’ word is one which is the language name for the product. BUTTER is the language word for butter. There can be no trademark rights in a generic term. They remain in the public domain as part of our language. The right to protection of a trademark comes from its use to identify the product."

The Court went on to say:

Wednesday, May 21, 2014

B & L Whittaker Pty Ltd and Australian Securities and Investments Commission and Anor: What Makes Business Names “Identical”?

A new decision from the Australian Administrative Appeals Tribunal has further confused businesses on issues of similarities around business names. I have written twice previously in this blog about the importance of business names in Australia – a compulsory form of consumer protection quite separate from trade mark registration, which can lead to substantial fines for non-compliance.

B & L Whittaker Pty Ltd (Whittaker) had been conducting business related to concrete pumping under the registered business name ‘Cairns Concrete Pumping’ since May 1999. Recently a competitor, M & M Concrete Pumping Pty Lt (M & M) has set up a similar business. M & M made an online application to the Australian Securities and Investments Commission last February 2013 in an effort to register the business name ‘Cairnscrete Pumping.’

The Commission registered the name Cairnscrete Pumping last April 18, 2013, but the registration was allowed without any human intervention – the decision to register the name was made by the application of a computer programme. Whittaker eventually learned of the Cairnscrete Pumping name being registered, and sought a review of the Commission’s decision on September 18, 2013.

Tuesday, May 13, 2014

Former Football Player Takes Nike to Court Over Nickname Trade mark

Former professional American football player Shawne Merriman has recently commenced litigation in the US against global sporting goods giant Nike, alleging that the sports apparel and footwear company has infringed a trade mark that he owns for the term “Lights Out.”

Merriman is being represented by his own company, Lights Out Holdings LLC, and the case has been filed at the US District Court for the Southern District of California on 14 April 2014.

Merriman got the “Lights Out” nickname during his time in the National Football League, with the term itself originating from his brute strength, which he used to knock opposing players out during a game.

Merriman alleges that he and Nike tried to launch a clothing line that uses the Lights Out brand sometime between 2006 and 2007, but they weren’t able to come to terms. Merriman alleges Nike went ahead and used the brand anyway (the Nike STK Lights Out II Men's Baseball Pants is currently available on Nike's online store.)

Monday, May 12, 2014

Bacardi and Irish Whiskey Maker in a Trade Mark Dispute Over “Untamed/Untameable” Campaign

Avalon, the maker of the Wild Geese Irish whiskey brand, has recently launched a campaign against Bacardi, alleging that the drink maker has infringed its trade mark over its “Untamed” trade mark, as a consequence of a new ad campaign from Bacardi under the banner, “Untameable”.

Avalon’s Untamed brand has been protected as a trade mark in various jurisdictions around the world since 2009, covering whiskey and rum products. The etymology of “Untamed” allegedly refers to the story of the wild geese, the term for the Irish people that were forced to leave Ireland after the Treaty of Limerick in 1691.

Friday, May 9, 2014

Creative Nail Design Blocks Bluesky Chemical’s iShellac Trade Mark Registration

In 2012, Bluesky Chemical Technology filed an Australian trade mark application to register the trade marks ‘Blusky Shellac,’ and ‘iShellac by Bluesky,’ under class 3 goods pertaining to nail polish. The registration was then opposed by Creative Nail Design Inc, which owns the trade mark ‘Shellac’ for class 3 goods pertaining to “nail care preparations; nail enamel; nail hardeners; nail polish; nail varnish and for class 11: ultra violet ray lamps, not for medical purposes.” This was an enormous surprise to me personally as I had understood that “shellacking” described a generic process for varnishing. The etymology of the term is explained below.

Wednesday, May 7, 2014

Tylor v Sevin (2014) AIPC 92-468: Online Copyright Infringement on Stock Photos

By Uberprutser (Own work) [CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons
It can be surprising to see how little people care (or know) about copyright in images and photos, especially on the internet, with many having no problem reusing images that they saw from another page without first obtaining the permission of the owner. Many users also wrongly believe that simply citing the source and crediting the owner is enough. Google’s Image Search function, which scrapes images from all over the net and presents it to users certainly doesn’t help in this.

A recent case involving American photographer and a travel website owner based in Melbourne underscores the rampant unlicensed use of stock photos online, and how the court might respond to cases in the future.

The complainant in the case, Vincent Khoury Tylor, makes a living out of taking, selling, and licensing of stock photographs. The respondent, Serpin Aydogan Sevin, owns a website that promotes her travel business. The complainant alleged that the respondent used one of his stock photos for her website without obtaining a license or even making an attempt to contact and enquire about copyright ownership.

Instead of asking for an account of profits, the defendant claimed damages and sought an injunction. He also presented evidence of the charges for using his copyright-protected work, based on charges made by Stock Photo broker Getty Images. Mr Tylor emphasised the fact that the images were gallery-quality and were exclusive.

Tuesday, May 6, 2014

FC Refuses to Allow Telstra to Register YELLOW as a Trade Mark

Phone bookIn July 2003, Telstra Corporation applied to register the word ‘YELLOW' as a trade mark after owning various trade marks for the term ‘YELLOW PAGES’ and several variations, including the phrase ‘HELLO YELLOW.’ The Australian Trade Marks Registrar initially approved the registration as it pertains to goods and services related to telephone directory services, but Murphy J of the Federal Court has recently overturned this.

The delegates of the Registrar of Trade Marks initially held that Telstra has extensively traded under various trade marks that are related to the word YELLOW even before filing the application, and as such has demonstrated that the word mark has the inherent ability to distinguish Telstra’s services and goods from other traders, making it valid for registration even though the word itself was not descriptive of Telstra’s telephone directory services.

Sunday, May 4, 2014

Seafolly Pty Limited v Fewstone Pty Ltd – Copyright Infringement in Artistic Works

The Federal Court’s recent ruling in the Seafolly Pty Limited v Fewstone Pty Ltd is interesting because it addresses issues related to imitation, modification, and even deliberate use of a competitor’s designs in the fashion industry, where the practice of using samples and images of existing artwork is commonplace. Some years ago I appeared in an television interview on the habit of Australian companies and their plagiarism of foreign designers - see http://frockwriter.com/2009/11/fashion-copies-back-on-the-australian-current-affairs-agenda . And so this decision is an interesting and welcome development.


Both Seafolly and City Beach are designers, manufacturers, and sellers of swimwear and beachwear, with the latter’s products being on the low end of the price spectrum. It also occupies a niche category – that of girls and young women, instead of Seafolly's target market of women of all ages. The two companies’ products are never sold at the same retail outlets.

Seafolly alleges that three of its artworks, or at least substantial parts of them, were reproduced in material form by a corresponding print or embroidery used in manufacturing City Beach beachware garments without permission, licence, or intent to inform, citing the following:

· City Beach’s Rosette print reproduced a substantial part of Seafolly’s English Rose artwork
· City Beach’s Sienna print reproduced a substantial part of Seafolly’s Covent Garden artwork
· City Beach’s Richelle embroidery reproduced a substantial part of Seafolly’s Senorita artwork.

It was also argued that City Beach specifically purchased Seafolly garments bearing the artwork, and gave specific instructions to their designer, 2Chillies, alternatively to their manufacturer, Welon (China) Ltd, suggesting an intent to copy or imitate the artwork.

An email from City Beach to 2Chillies contained various photographs that include Seafolly’s English Rose bikini, along with a request to create a “rose print similar to Seafolly print” and to create the art work in sizes similar to Seafolly’s product. Additionally, 2Chillies repeatedly warned City Beach that the Rosette print was too similar to the English Rose artwork and tried to modify the designs in order to reduce the similarities, but City Beach repeatedly rejected those attempts.

Similarly, in relation to Seafolly's Sienna print, City Beach sending 2Chillies photos of a Seafolly Covent Garden garment and a City Beach dress, along with instructions to provide “direction with flowers and colour,” to which 2Chillies replied with “We have developed this print referring to the picture you sent us and using similar flowers and colours.”

For the Richelle embroidery, City Beach sent a one piece Seafolly Senorita swimsuit to Welon (China) Ltd., and asked for a bandeau with shirred pattern “as per the original” with a note to make it “as close as possible.” A City Beach employee admitted that to providing instructions “to copy the shirring in the [Seafolly] garment.”

Thursday, May 1, 2014

Telstra Penalised for Privacy Breach

A joint investigation conducted by the Office of the Australian Information Commissioner (OAIC) and the Australian Communications and Media Authority (ACMA) found that the country’s largest telco, Telstra, breached the Privacy Act when it exposed the data of around 15775 Telstra customers, including 1257 silent line customers, after failing to provide adequate safety measures in order to protect its customers’ information.

The breach was discovered in 2013, where it was revealed that the private customer data of Telstra’s subscribers, which includes names, telephone numbers and physical addresses from the period 2006 to 2009, can be found simply by searching through Google. The joint investigation found that Telstra failed to take reasonable steps to ensure the security of the personal data they held; failed to take reasonable steps to destroy or permanently de-identify the personal information in their possession, and disclosed personal information for purposes other than those permitted.

Wednesday, April 30, 2014


Last October, Tracey J presided over a dispute between Bugatti GmbH and Shine Forever Men Pty Ltd, in which the complainant alleged that the respondent has infringed their trade marks in Australia for the word ‘Bugatti,’ (which is a class 25 registered mark for clothing, dating back to 1989) by marketing and selling clothes and accessories under the marks Bugatchi or Bugatchi Uomo, breaching s 120(1) of the Trade Marks Act 1995. Tracey J ruled in favor of the complainant, and ordered Shine Forever to pay $551,159.39 to Bugatti plus costs on an indemnity basis.

Shine Forever was also ordered to provide an affidavit that discloses the amount of infringing goods that it had sold, the prices they were sold for, the costs incurred while acquiring and selling the goods, and the estimated profit they have made. The affidavit was meant to help make it easier for Bugatti the assess the damages or, should it choose to, an account of profits.

Tracey J’s decision over the Bugatti case not only underscores the scrutiny the court will place on an infringer, but also the leeway that is given to a trade mark owner if the infringer is obstinate. Shine Forever’s big mistake in this case (besides infringing another party’s trade mark in the first place) is that it gave the court the impression that it was particularly uncooperative – it was tardy when complying with the court’s orders and allegedly manipulated the figures in their “election” affidavit, stating that the total sales for the goods sold “through the BUGATCHI UOMO branded store” were $198,407.39 while its total outgoings were stated to be $157,680, which meant that there was no profit after adjustments.

However, Shine Forever had filed a profit and loss statement for the first 8 months of the infringing period that reveals total sales of $370,440.10, a statement that was audited and certified by Shine Forever’s external accountants. Shine Forever made no attempts to explain the disparities between the figures in its affidavit material. In fact, Shine Forever didn’t even show up to the hearing for the account.

Bugatti pointed out the disparity between the two figures, with the audited figures showing sales of $46,000 per month. Bugatti then put forward that Shine Forever would have made a total of $1,129,440.10 and after applying a number of assumptions and discounts that take into account estimated costs in the “election” affidavit, concluded that the actual figure was $551,159.39.

The impression of disregard for the process of the court never plays out well with judges. The court in this case recognised that the respondent was engaging in questionable conduct and was willing to assist the applicant to get to the heart of the actual profit made by the respondent.

Friday, April 4, 2014

Revisiting the Drake decision: when business names registrations go wrong

As I discussed in a recent blog post, registration of business names is mandatory in Australia and there are significant fines for not doing so.

The Australian Securities and Investments Commission  is now responsible for the regulation of business names and has been fairly restrictive in relation to registration of new business names which are similar to existing business names. So, to use a random example, “XYZ Finance” will not be permitted registration because it is too similar to “XYZ Financial Group”. Which might be fair enough, but what about where the business name applicant already has the business name “XYZ Finances”(the plural) registered as a business name? Is confusion likely then?

The Western Australian Supreme Court considered this in Barrie Drake v Commissioner for Corporate Affairs & Ors [1999] WASC 1049: Justice Owen stated:
“I think it is clear from the way the material was presented to the Court that the real issue in relation to the registration was whether the names are so similar that they were likely to cause confusion in the public mind.  The effect of the Minister’s direction under s9(1) is to prohibit registration of a name having that character.”
Unless the business names are likely to cause confusion, kin this case, having regard to the existing state of the registry, then the business name should be permitted to be registered.

If there has been an unreasonable exercise of administrative decision-making authority  to allow an ASIC registration for an unrelated business to prevent registration of the business name, then it is possible to seek an administrative review of the decision.
The test of what is reasonable is set out in Associated Provincial Picture Houses Ltd v Wednesbury Corporation [1948] 1 KB 223 at 229. The relevant section of this decision, which is accepted as fundamental law in Australia in the exercise of judicial discretion, is set out as follows:

Monday, March 31, 2014

First Generic Top Level Domain Decision - Canyon Bicycles Wins Dispute Over Canyon.Bike Domain

Canyon Ultimate CF MTBOn 5 February 2014 Rob van Eck, a Dutch cyclist and web designer in the cycling industry, registered a new generic top level domain ("gTLD"), canyon.bike, via domain registrar GoDaddy and parked it using the registrar’s own parking service where it featured sponsored listings related to the domain’s keyword (including one for “Mountainbikes.”)

Unfortunately for Van Eck, Canyon Bicycles GmBH of Koblenz, Germany, filed a complaint regarding his registration of the new gTLD via the WIPO Arbitration and Mediation Center, which is then forwarded to the registrar for verification in connection with the disputed domain name. This case is notable because it is the first UDRP concerning a gTLD.


Canyon Bicycles is an international manufacturer of racing, mountain, and triathlon bicycles and has been operating under the name since 2001 (the company itself was founded in 1985 under a different name). Canyon Bicycles operates in 16 countries, including the Netherlands. Canyon currently has ownership of numerous trade marks for the term “Canyon” in relation to bicycles (including International Trademark (word) No. 687879, CANYON, registered on January 2, 1998, for goods and services in classes 11 and 12.)

Canyon asserted that the canyon.bike domain name is similar to their trade mark, and so would lead to confusion, that Van Eck had no rights or legitimate interests in the domain name, and that the disputed domain name is being used in bad faith.

Canyon argued that Van Eck is knowledgeable with regard to the Internet and has exhibited interest and special knowledge in cycling, citing the respondent’s professional and social media websites showing involvement in both Internet and cycling-related projects, such as the design of bicycle wheel decals and the creation of an online portal for bicycle shops.

Canyon further noted that the canyon.bike domain name incorporates the CANYON trademark in its entirety, and added that the suffix of a domain name is irrelevant when assessing similarity or identity, but also submits that the “.bike” extension further reinforces the similarity to their trade mark and core products.

Canyon said that the timing of the gTLD registration makes it inconceivable that Van Eck was unaware of Canyon and its trade mark, and that there was no legitimate explanation for the registration other than to mislead users searching for Canyon’s products and services.

Van Eck also made a UDRP rookie error. He wrote to the WIPO Arbitration and Mediation Center on 12 February 2014, in which he inquired as to whether there is a possibility to settle the matter in which “the company pays me for my domain”. This supported the allegation that he had no actual interest in the disputed domain name except to profit from Canyon's goodwill.

Respondent’s Defence

Van Eck’s defence was that he merely registered the domain in order to expand his network and “get in (friendly) contact with Canyon,” curiously adding that many people in the cycling industry are unaware of the new batch of gTLDs that include the “bike” extension, and had registered some domain names in order to “protect companies” from domain squatting. He further noted that the complaint was filed against him before he was able to contact Canyon, and that it is his belief if Canyon went to him directly, they would have “talked about” the disputed domain and he would have relinquished ownership without recourse to the policy. Van Eck notes that he registered the domain with good intentions.

Canyon was successful in its complaint, and the disputed domain name was transferred to them under paragraphs 4(i) of the Policy and 15 of the Rules. This decision emphasises the need to monitor online brand hijacking especially now that new gTLDs have launched.

Thursday, March 20, 2014

Swatch Sues Target Over Watch Designs -and Problems with Designs in Australia

Swatch Light Painting (57940452)Swiss company Swatch Group SA filed a lawsuit against Target, alleging that the US-based discount retailer is illegally selling watches that copy the design of some of Swatch’s offerings, specifically, the “zebra” and “multi-color” watches. Swatch argues that the quality of the products being sold by Target is “inferior” to their version, and that continued sale of which could lead to consumer confusion and negatively impact upon Swatch’s sales.

Swatch alleges that they have advised Target of the alleged infringement, but the retailer continued selling the infringing products. According to the complaint, "by adopting the Zebra Watch trade dress and the Multi-Color Watch trade dress, defendants are unfairly competing [with Swatch].”

Swatch seeks an injunction on Target’s sale of the allegedly infringing products, along with an account of profits, and damages. Target has declined to discuss the case, although company spokesman Evan Lapiska is reported to have stated that Target's policy is "to respect the intellectual property rights of others and we expect the same from our vendors and partners."

Wednesday, March 19, 2014

IAB’s Future of the Cookie Working Group Addresses Privacy and Tracking in a Post-Cookie Environment

For a long time now, majority of what we do online has been governed by the use of HTTP cookies – from tracking user preferences, to remembering browsing histories, and even storing of usernames and passwords. I recall reading an article in PC Mag in 2000, despairing over the ubiquitous use of cookies. Fourteen years later, the use of cookies is endemic. Cookies are useful in compiling long term records of individuals’ activities and identities online, which is a privacy concern regardless of how useful it was for marketing and advertising agencies. It is this concern that has prompted the International Advertising Bureau (IAB)’s Future of the Cookie Working Group to publish a white paper titled ‘Privacy and Tracking in a Post-Cookie World’ (http://www.iab.net/media/file/IABPostCookieWhitepaper.pdf).

‘Privacy and Tracking in a Post-Cookie World’ addresses the problems and concerns that have arisen from the use of cookies throughout the years, but focuses more on explaining why their use is no longer needed in the digital environment, followed by a proposal consisting of several alternatives to the traditional http cookie. It is immediately relevant to Australia with the changes to the Privacy Act about to take effect (what happens to cookie-acquired information, especially if it is conveyed offshore?), and relevant to the EU because of proposed EU data protection regulation will impose strict rules on consumer profiling.

Concerns Over Cookies

The IAB has two major reasons as to why the cookie is fast becoming obsolete and is ultimately more problem than they are worth. First is the sheer amount of cookies that are being used by different companies – either they accumulate over time and slow down people’s computers, or people block them entirely, negating their purpose as tracking and database-building tools.

What this means is that the advertisers fail to target potential customers with relevant content, while publishers lose revenue from the potential sales that could have occurred when a relevant ad is served to a visitor.

Additionally, informed consumers are paranoid about cookies. There is an undeniable growing distrust of what data aggregators are doing with personal information. This increased awareness of the data trail that people create online is tempered by an inversely limited understanding of how their private information is used. This leads to many users opting out of tracking altogether (either by means provided by the website, or by blocking cookies at their end).

Monday, March 17, 2014

UK Courts Order Ex-Employees to Hand Over Social Media Accounts to Employer

Linkedin ChocolatesLast year, in the UK, the case of Whitmar Publications v Gamage brought to light the issue of how companies jumped on the social media bandwagon without being prepared for the contingency of what happens when the employees controlling the social media leave. In Whitmar’s case, three former employees started a rival publishing company, allegedly a violation of the no-compete clause in their employment agreements. The former employees then used their access to and control of Whitmar’s membership in various LinkedIn groups as a means of inviting a large number of individuals to a covert launch event for their new company.

According to Whitmar, the three employees have been taking active steps to compete with Whitmar even before the termination of their employment, using Whitmar’s database of customers, taking business cards that belong to the company, and the use of the company’s LinkedIn groups. Whitmar sought an injunction to stop the former employees from using confidential information that belonged to the company, asking for the employees to turn over access to the LinkedIn accounts.

Sunday, March 16, 2014

Intellectual Property Protection for Perfumes

In December 2013, the famous French cosmetics company Lancome sued a man who was in possession of several counterfeit bottles of perfume at an open-air market in France, including a counterfeit of one of Lancome’s high-end bestselling perfumes, Tresor (Treasure). Lancome apparently cited article L. 112-1 of the French Intellectual Property Code (FIPC), which protects “all works of the mind, whatever their kind, form of expression, merit or purpose,” arguing that the resulting fragrance from the perfume expresses the creative input of the author, which thereby entitles it to protection under the law.

Unfortunately for Lancome, the Court of Appeals of Nancy ruled that a perfume is not copyrightable and so is not under the protection of the FIPC. The court explained that a fragrance is a work of technical know-how, and not a work of intellect. Perfume does not come in a tangible form that is identifiable, precise, nor communicable: the smell of perfume cannot be copyrighted because it is simply too subjective to be clearly defined.

Friday, February 14, 2014

The Snowden Effect: a new international right to privacy and new privacy clauses

Edward Snowden, a former National Security Agency (NSA) contractor, leaked documents to The Guardian and The Washington Post newspapers leading to exposes from 5 June 2013 concerning the NSA’s collection of data using Internet surveillance programs.

The controversy surrounding this leak of information has been notoriously far-reaching, and had many interesting outcomes. Two of them are dealt with here:

a. A Right to Privacy

The UN General Assembly has recently adopted a resolution titled “Right to Privacy in the Digital Era,” which was drafted by Germany and Brazil and unanimously supported via a recorded vote of 148 in favour to 4 against (the countries voting against being Canada, Israel, The United Kingdom, and the United States) and with 27 abstentions.

Thursday, February 13, 2014

@JamesDean:Twitter Tags and the Personality Rights of Dead Celebrities

James Dean isn’t exactly a celebrity that you’d expect to find actively tweeting. CMG Worldwide, which handles the commercial estates of a number of dead celebrities that include Dean's estate, has filed a lawsuit against the social networking giant over the @JamesDean Twitter account to prevent this from occurring.

The issue started over an anonymous individual who registered the @JamesDean username. CMG Worldwide requested Twitter to remove it. Twitter refused to do so.

Wednesday, February 12, 2014

Why Business Name Registrations Matter in Australia

Under section 18 of the Business Names Registration Act 2011 (BNRA), it is an offence to carry on a business under an unregistered business name in Australia.

The business name registration system is quite different to the trade mark registration system. It is a form of consumer protection, enabling consumers to look behind a trading name and see the name of the actual entity or entities using the business name. This is very commonplace in partnerships, but it is also a frequent occurrence for companies which, for whatever reason, choose to use a trading name which is different from the company name. In recent times, management of the business name regime has shifted from the various State governments to the Australian Securities and Investments Commission (ASIC).

ASIC have been fairly strict recently in rejecting some business name applications. Some businesses have as a result not taken the business name regime very seriously.

The penalty for failing to register a business name is 30 penalty units. The Crimes Act 1914 states that a penalty unit equals $170. As such, the penalty for contravening section 18 of the BNRA is $5,100.

Tuesday, February 11, 2014

Queensbury Rules – Boxing and the Queensbury Brand

In 1867 the Queensbury Rules, attributed to the Marquess of Queensbury, were published introducing both rules to boxing, but also the idiom of “Queensbury Rules” in relation to any sort of fair play. On 28 January 2014 in London, Mr. Justice Birss effectively put an end to Sports Direct and Lillywhites’ defence of their use of the ‘Queensbury’ brand, by stopping both retailers from using the brand to sell 16 types of boxing equipment. Mr. Justice Birss ruled that the boxing gloves and training towels concerned were infringing on five UK and Community trade marks (CTMs) for ‘QUEENSBURY’ or “QUEENSBURY RULES”, owned by Boxing Brands Limited (BBL).

the infringing mark
the infringing mark

The dispute started in 2012 when BBL learned that both Sports Direct and Lillywhites were planning to launch a new line of clothing under the Queensbury brand. An interim injunction was sought that same year, followed by a ruling in 2013 upholding that BBL’s Queensbury trade mark would be infringed if the two retailers commenced sales under the Queensbury clothing brand.

The injunction affected all sales. But not all of the products in dispute fell under the scope of protection of the trade marks. Birss J asked both defendants to furnish a list of all the boxing-related equipment that they had or were intending to sell that fall under the Queensbury name. The list included a range of goods that included shield protectors, first aid kits, and head guards. Most of the goods infringed at least one of BBL’s trademarks, but seven products such as corner pads and punch bags were only infringing trademarks that were already invalidated, and so the seven goods were cleared.