LAWS1100 Nickolas James Business law 4_e_----_(chapter_13_protecting_ip)

LEARNING OBJECTIVES
13.1 How does the law protect the intangible results of creative effort? What types of intellectual property
are protected by IP law?
13.2 How does copyright law protect original texts, images and other forms of expression from
unauthorised copying? When is copyright infringed and what can be done about it?
13.3 How does trade mark law protect a trade mark from unauthorised use? When are trade mark rights
infringed and what can be done about it? If a trade mark is not registered, is it still protected?
13.4 How does patent law protect new technology from unauthorised exploitation? When is a patent
infringed and what can be done about it?
13.5 How does design law protect an original design from unauthorised use? When is a registered
design infringed and what can be done about it?
13.6 How can a business stop someone from breaching its confidentiality and disclosing its trade
secrets?
CHAPTER 13
Protecting IP
James, Nickolas. <i>BUSINESS LAW 4E</i>, Wiley, 2014. ProQuest Ebook Central, http://ebookcentral.proquest.com/lib/uql/detail.action?docID=4748089.
Created from uql on 2019-06-05 07:01:20.
Copyright©2014.Wiley.Allrightsreserved.

466 PART 2 Legal consequences
JOHNNY AND ASH
[Johnny and Ash are sitting on a couch in Johnny’s untidy apartment, watching television. There is a
laptop on the floor near the couch.]
Ash — I can’t believe Maria threw you out of your own restaurant.
Johnny — I know! Just because I told her again that I was thinking about selling up or shutting it
down. Well, at least I’ve got the night off.
Ash — Yeah. [She looks at her watch.] We’re not going out to dinner, are we?
Johnny — [He yawns and stretches.] Do you want to order some takeaway food instead?
Ash — [She rolls her eyes and sighs.] Okay. I’ll order it from that other vegan place you like, the one
with the new website. What’s it called? ‘Simulacra’? I haven’t tried their food yet. [She picks up the
laptop and starts clicking.] . . . Hey!
Johnny — ‘Hey’ what?
Ash — Hey, I’m looking at the menu on the Simulacra website and they’ve got a tofu burger that looks
just like your tofu burger. They’ve even called it the ‘lame duck’ burger . . .
Johnny — What? The chef in their kitchen used to work at The Lame Duck but I sacked him when I
bought the place. I knew he was copying some of my old recipes, but I can’t believe he has copied my
tofu burger.
Ash — Not just your burger Johnny. It looks like they’ve copied pretty much everything on your menu.
Even the descriptions of the dishes are the same as your descriptions . . . ‘Lentil and beetroot calzone:
boiled organic lentils blended with beetroot jam and raisins, folded into a light and flaky wholemeal
pizza base and smothered in creamy guacamole’ . . . I never thought I’d see that description anywhere
else . . .
Johnny — What! That’s our best seller. I’m famous for my lentil and beetroot calzone! This is so unfair!
It’s exactly what I was saying about our stupid legal system!
Ash — What on earth do you mean?
Johnny — I’ve been robbed, but there’s nothing I can do. If someone had broken into the restaurant
and stolen the tables and chairs I could complain to the police, but because they’ve stolen the results
of my hard work and creativity and not something physical, it doesn’t count and I just have to put up
with it.
Ash — Actually . . .
Johnny — [Ignoring her.] It’s just another example of the way the law completely fails to be of any
relevance to modern business. It’s a bunch of rules made when most business people were farmers
selling pumpkins.
Ash — Well, that’s just not true . . .
Johnny — What about those of us living in the 21st century? Where are the rules to protect the artists,
the creators, the digital pioneers who . . .
Ash — SHUT! UP!
Johnny — [Stunned silence.]
Ash — Right. Now, let me tell you something about intellectual property law . . .
CHAPTER PROBLEM
As you make your way through this chapter, consider whether Johnny has any right to prevent Simulacra
from using his ideas to sell their own products.

CHAPTER 13 Protecting IP 467
Introduction
In the past, most businesses made their profits from the manufacture and sale of tangible products,
such as food, clothes, furniture and machinery. Previous chapters have described the legal regulation of
the manufacture and sale of these types of products. In the 21st century, however, many businesses make
their profits from the creation and licensing of intangible products, such as software, games, movies,
music, manufacturing processes, and marketing and sales techniques. And even those businesses that
still manufacture and sell tangible products frequently place as much emphasis — if not more emphasis
— upon the intangible brand as they do upon the tangible product. When a customer pays $1000 for a
pair of jeans, for instance, how much is for the jeans and how much is for the brand?
Brands and other such intangible products are usually referred to as intellectual property or IP. IP
is a form of intangible creation such as the expression of an idea, a trade mark, a new technology or an
original design. It is a product of intellectual effort rather than a physical manufacturing process. IP is a
valuable commercial asset.
In this chapter we explore the intricacies of intellectual property law. Intellectual property law is the
set of legal rules that protect IP from unauthorised use and exploitation by others.
13.1 Intellectual property law
LEARNING OBJECTIVE 13.1 How does the law protect the intangible results of creative effort? What
types of intellectual property are protected by IP law?
Intellectual property law grants the owner of IP the right to prevent others from copying, using or
exploiting their IP without their permission. Many types of IP are protected by intellectual property law
(see figure 13.1).
These types of product are usually referred to collectively as ‘intellectual property’. Sometimes,
however, the term ‘intellectual property’ is used to refer only to those products protected by the
law of copyright, and the other types of product are referred to collectively as ‘industrial property’.
In this text, the terms ‘intellectual property’ and ‘IP’ are given their broader, more inclusive meaning.
Copyright law protects
text, images and other
forms of expression
Trade mark law protects
distinctive words,
phrases and symbols
Patent law protects
new technologies
Design law protects
the shape and
appearance of products
The tort of breach of
confidence protects
commercial secrets
Intellectual
property law
FIGURE 13.1 Types of IP protection

Intellectual property law can be a complicated and confusing area of law because the rules protecting
the various categories of IP developed at different times and in different contexts, and have different
organising principles. There are overlaps between the categories and there are gaps between them. Soft-
ware, for example, is protected under both copyright law and patent law, while ideas that have not been
reduced to material expression are often not protected at all. Copyright protection is automatic, while
other types of IP rights are not enforceable unless the creation has been formally registered with the
appropriate legislative authority. Trade mark protection can be renewed indefinitely, while copyright,
design and patent protection exist for a limited time after which the protection lapses. There are as many
differences between the categories as there are similarities.
CAUTION!
A particular creation may be protected by more than one form of intellectual property protection.
A single product may be protected by multiple categories of IP rights. Consider a can of soft drink,
for example.
•• The name of the product may be protected by trade mark law.
•• The manufacturing method may be protected by patent law.
•• The recipe for the soft drink may be protected as a commercial secret.
•• The packaging may be protected by design law.
•• The writing on the packaging may be protected by copyright law.
When intellectual property rights have expired, and the IP in question can be copied or exploited by
others without penalty, the IP is said to have entered the public domain.
ACTIVITY 13.1 — REFLECT
Why do most forms of IP eventually enter the public domain?
Rationale for protection
There are two types of justification for the protection of IP rights: economic justifications and moral
justifications.
In Australia and in other common law legal systems the emphasis has traditionally been upon the
economic justifications: innovators are given protection by IP law and granted financially valuable legal
rights because they have invested time and effort into creating something of commercial value. Further,
protecting IP motivates others to be innovative, and this is ultimately of economic benefit to the com-
munity. Widespread innovation would be less likely if innovators were not granted a monopoly over the
exploitation of the results of their efforts.
Moral justifications for IP protection form the basis of IP law in civil law legal systems. Innovators
are given protection by IP law because they are morally deserving in their own right as a consequence
of their efforts, regardless of the commercial value of their efforts. In recent years, Australia has begun
to recognise the moral basis of IP protection, and this is reflected in the moral rights recognised by the
Copyright Act, described later.
Commercialising IP
Intellectual property law grants the owner of the IP the exclusive right to exploit the IP for a profit. This
includes the right to license the IP. This means that in return for a fee (usually referred to as ‘royalties’ or
‘licence fees’) the owner permits others to exercise their exclusive rights in relation to the IP. They can

license all of their exclusive rights or only some of them; for example, they may permit another person
to copy their creation but not to publish it. The IP owner can also impose other restrictions, such as:
•• where the rights can be exercised (e.g. in some countries but not in others),
•• the time period within which the rights can be exercised, and
•• how many copies can be made or how often the rights can be exercised.
LAW IN CONTEXT: LAW IN PRACTICE
International commercialisation
IP Australia suggests that a business person considering international expansion ask themselves the
following questions.
• Would I generate the best returns by establishing my product in Australia first, or should I approach
the Australian and world markets at the same time?
• Should I manufacture my product in Australia and distribute it to other countries, or outsource
production in another country?
• Do I have the manufacturing and distribution capabilities to supply to countries outside Australia?
• Do I have the marketing and promotion networks to successfully commercialise in other countries?
• Do I have the resources to successfully commercialise outside Australia?
• Will I need financial support and do I have the track record and security to generate that finance?1
REVISION QUESTIONS
Before proceeding, ensure that you can answer the following questions.
13.1 What are five types of IP protected by IP law?
13.2 Why is IP law ‘complicated and confusing’?
13.3 What is the ‘public domain’?
13.4 What are the two types of justification for the protection of IP rights?
13.5 How can ownership of IP be exploited commercially?
13.2 Copyright
LEARNING OBJECTIVE 13.2 How does copyright law protect original texts, images and other forms of
expression from unauthorised copying? When is copyright infringed and what can be done about it?
Text, images and other forms of expression such as computer programs, films, television programs and
music are protected from unauthorised copying by the law of copyright.
What is copyright?
Copyright is the legal right to prevent unauthorised copying of the expression of an idea.
The law of copyright does not protect the idea itself, only the expression of that idea. If Johnny
tells Simon about an idea and Simon then exploits that idea himself, Simon has not infringed Johnny’s
copyright. However, if Johnny writes his idea down and Simon copies the expression of that idea
without Johnny’s permission, Simon has infringed Johnny’s copyright and Johnny will be entitled to
a remedy.
1 IP Australia, Commercialise Internationally (2015) <http://www.ipaustralia.gov.au/understanding-intellectual-property/
commercialise-your-ip/commercialise-internationally/>.

Copyright in Australia is regulated by the Copyright Act 1968 (Cth).
How can technology be used to (a) infringe copyright, and (b) protect copyright?
Requirements for copyright protection
To be protected under the law of copyright, a creation must be (1) a ‘work’ or ‘subject matter other than
works’ as defined in the Copyright Act 1968 (Cth), (2) original, and (3) expressed in a material form.
CHECKLIST
A creation will only be protected by copyright law if all of the following requirements are satisfied.
◼◼ The creation is a ‘work’ or ‘subject matter other than works’.
◼◼ The creation is original.
◼◼ The creation is expressed in a material form.
Requirement 1: The creation is a ‘work’ or ‘subject matter other
than works’
The Copyright Act extends protection to four types of ‘work’:
•• literary works,
•• musical works,
•• dramatic works, and
•• artistic works.2
The Act also extends protection to four types of ‘subject-matter other than works’:
•• sound recordings,3
•• films,4
•• television and sound broadcasts,5
and
•• published editions.6
A creation will not necessarily fall within a single category. It may be a combination of different types
of protected works and subject matter. For example, a website will be a combination of literary and
artistic works, and possibly films and sound recordings. A pop song will be a combination of literary
works (lyrics), musical works and sound recordings, all of which are separately protected by the law of
copyright.
Literary works
A ‘literary work’ is not necessarily literature. It is any expression of an idea in the form of text, such as
a novel, a journal article, a screenplay, a poem, a letter, an email, a print advertisement, a set of instruc-
tions, a timetable, a contract, or the lyrics of a song. ‘Literary work’ is defined in the Copyright Act 1968
(Cth) as including ‘a table, or compilation, expressed in words, figures or symbols; and a computer pro-
gram or compilation of computer programs’.7
You will note that this is an ‘inclusive’ definition rather
than a ‘comprehensive’ definition: see an earlier chapter.
2 Copyright Act 1968 (Cth) s 32.

Mirror Newspapers Ltd v Queensland Newspapers Pty Ltd [1982] Qd R 305
The court decided that a list of winning bingo numbers was a ‘literary work’ within the meaning of the
Copyright Act, and therefore could not be reproduced without the copyright owner’s permission.
‘Compilations’ include anthologies, directories and databases. They are protected as literary works
in their own right, separate from the protection accorded to the individual elements of which they are
comprised.
Single words, names, titles, slogans and headlines are too short and/or unoriginal to be protected as
literary works. They may, however, be protected as trade marks (see below).
Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd (2010)
189 FCR 109
Fairfax was the publisher of the national newspaper The Australian Financial Review (AFR). Reed pro-
vided an online service known as ‘ABIX’, which provided to subscribers abstracts of articles published
in various newspapers and magazines, including articles in the AFR. Each abstract included the head-
line of the article, usually without alteration, the by-line of the journalist who wrote the article, and a
short summary of the article written by an employee of Reed. Fairfax sued Reed, alleging that Reed
had infringed its copyright in the individual headlines, and in the articles themselves since the headlines
comprised a substantial part of the articles. The court decided that the headlines were not discrete
literary works, and that by copying the headlines Reed had not copied a substantial part of the original
articles. The court also decided that Reed’s conduct in reproducing and communicating the AFR head-
lines was ‘fair dealing’ for the purpose of reporting news (see below).
Musical works
The term ‘musical work’ is not defined in the Copyright Act, but it is usually understood to refer to
a particular combination of notes and sounds. It does not include lyrics or an actual recording of the
music, since these are protected separately as ‘literary works’ and ‘sound recordings’ respectively.
A & M Records Inc v Napster Inc 239 F 3d 1004 (9th Cir, 2001)
The US court confirmed that ‘peer to peer’ sharing of copyrighted digital music files over the internet
is an infringement of the copyright in ‘musical works’. Napster hosted a website that facilitated peer to
peer file sharing, and Napster’s facilitation of copyright infringement was decided by the court to itself
be an infringement of the rights of the copyright owner (see below).
Dramatic works
A ‘dramatic work’ is defined in the Copyright Act 1968 (Cth) as including ‘a choreographic show or other
dumb show’ such as a dance routine, and ‘a scenario or script for a . . . film; but does not include a . . . film
as distinct from the scenario or script’.8
Films are protected separately as a ‘subject-matter’ (see below).
Artistic works
An ‘artistic work’ is defined in the Copyright Act as:
•• a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not,
•• a building or a model of a building, whether the building or model is of artistic quality or not, or
•• a work of artistic craftsmanship.9
Artistic works include distinctive business logos, graphic designs,
and the plans for a house.
8 Copyright Act 1968 (Cth) s 10 (definition of ‘dramatic work’).
9 Copyright Act 1968 (Cth) s 10 (definition of ‘artistic work’).

Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR 309
A couple visited a show home designed by Henley Arch, and then instructed Clarendon to build a house
according to the same plan. The court decided that an architect’s plan for a house was an ‘artistic work’
within the meaning of the Copyright Act 1968 (Cth), and was therefore protected by copyright law from
unauthorised copying.
Most artistic works are protected regardless of their quality. However, if the work is not a ‘painting,
sculpture, drawing, engraving or photograph’ or ‘building or a model of a building’, it will only qualify
for protection as an artistic work if it is a work of ‘artistic craftsmanship’. According to the court in
the following case, a work will only be a work of artistic craftsmanship if the creator of the work ‘was
applying his [sic] skill and taste to its production with the main object of creating an article, which
even if it be utilitarian, nevertheless will have substantial appeal to the aesthetic tastes of those who
observe it’.
Cuisenaire v Reed [1963] VR 719
‘Cuisenaire rods’ are small coloured wooden rods of various lengths used to teach maths to children.
The court decided that the rods were not ‘artistic works’ within the meaning of the Copyright Act
because no skill was involved in their creation and they were not intended to appeal to the aesthetic
tastes of others.
Subject matter other than works
The Copyright Act 1968 (Cth) extends copyright protection to sound recordings, films, television and
sound (radio) broadcasts, and published editions of original works. Copyright in this subject matter is
owned not by the original creator but by the producer of the subject matter, and this kind of protection is
therefore sometimes referred to as ‘manufacturer’s copyright’.
‘Sound recordings’ — including, of course, digital songs and other musical recordings — are protected
in their own right separately from the protection accorded to the lyrics and the musical arrangement.
Similarly, films are protected separately from the script (literary work) upon which they are based, and
television and radio broadcasts are protected separately from the content being broadcast.
Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (2004) 218 CLR 273
The Channel Ten program ‘The Panel’ showed 20 segments of Channel Nine programs, which were
commented upon by the panel. Channel Nine sued Channel Ten for infringing its copyright in the seg-
ments as ‘television broadcasts’. Channel Ten argued that a television broadcast is an entire program or
movie, and that many of the items broadcast by Channel Ten were not television broadcasts. The court
decided that although a single image appearing on a television screen with audio is not a television
broadcast, an individual segment within a television program may qualify as a television broadcast in
which copyright subsists.
A ‘published edition’ of original works is a compilation of literary or artistic works, such as a com-
pilation of journal articles or short stories. It also includes the particular published version of a novel
or monograph. The published edition is protected by copyright in its own right, separately from the
copyright in the literary and artistic work or works of which it is comprised. Thus a person who photo-
copies a paperback version of Moby Dick will not infringe Herman Melville’s copyright in the novel as a

literary work since that expired long ago (see below), but they will infringe the publisher’s copyright in
that particular published version of the novel.
People’s faces are not protected by copyright, although the unauthorised use of an image of someone’s
face may amount to the tort of defamation or the tort of passing off (see an earlier chapter).
Requirement 2: The creation is original
The second requirement for copyright protection is that the creation is original.10
This does not mean
that the creation must be different to other creations. It means that it must be the result of the creator’s
own skill and effort rather than the result of copying from another source. If two creators express the
same idea and their respective creations are created independently and without copying, both creations
will be protected by copyright. Copyright protection does not give the owner of the copyright the right
to stop others creating the same or similar creations where there is no copying.
A minimal degree of creativity is required.
Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491
Desktop Marketing Systems Pty Ltd (DMS) used the data from Telstra’s telephone directories to create
searchable directories on CD-ROMs. The CD-ROMs replicated the layout of Telstra’s directories. The
court decided that the telephone directories were protected by copyright as original literary works, even
though the level of creativity was minimal; the originality requirement was satisfied by Telstra’s effort and
expense in compiling the data. DMS had therefore infringed Telstra’s copyright.
This requirement of originality applies only to literary, dramatic, musical and artistic works. Sub-
ject matter other than works — that is, sound recordings, films, television and radio broadcasts, and
published editions — do not have to satisfy this requirement of originality, since they are usually adap-
tations, recordings or republications of literary, dramatic, musical and artistic works.
Requirement 3: The creation is expressed in a material form
The third requirement for copyright protection is that the creation is expressed in a material form. As
explained earlier, copyright law will not protect an idea, it will only protect the expression of the idea.
Facts, information, methods and systems are not protected by copyright unless they are expressed in
material form.
John Fairfax & Sons Pty Ltd v Australian Consolidated Press Ltd [1960] SR (NSW) 413
The Daily Telegraph copied and published birth and death notices from the Sydney Morning Herald. The
Herald obtained an injunction prohibiting the Telegraph from doing so. The Telegraph instead published
notices that used the information from the Herald’s notices, but using a different wording and different
format. The court decided that the injunction had not been infringed: the Herald only owned copyright
in the way the information was expressed — its wording and layout — and not in the information itself.
CAUTION!
Ideas are not protected by copyright. Copyright law protects the expression of ideas, not the ideas
themselves.
It is not the originator of an idea who owns the copyright but the person who first expresses the idea
in material form.

Donoghue v Allied Newspapers Ltd [1938] Ch 106
Donoghue was a jockey who was interviewed by a journalist. The interviews were written up by the
journalist and published in a series of newspaper stories. Five years later the journalist wanted to use mat-
erial from the newspaper stories in a book to be published by Allied Newspapers. Donoghue opposed the
use of the material, and claimed ownership of copyright in the interviews. The court decided that copyright
in the interviews was owned not by Donoghue but by the original newspaper (as the journalist’s employer
at the time). The ideas in the interviews may have been Donoghue’s, but it was the journalist who first
expressed them in material form. According to Farwell J: ‘A person may have a brilliant idea for a story,
or for a picture, or for a play, and one that appears to him to be original. However, if that idea is told to an
author or an artist who produces a work based on that idea the copyright belongs to the author or artist
who converted the idea into a finished work. The owner of the idea has no rights in the finished work.’
Under the Copyright Act 1968 (Cth), material form means ‘any form (whether visible or not) of
storage’.11
It includes expression in writing, painting, drawing, photography, sound recording or film. It
also includes storage as electrical impulses in a computer.
Is an idea expressed in material form if it is expressed verbally?
Automatic protection
If all three of the above requirements are satisfied, the creation is automatically protected by the Copyright
Act 1968 (Cth) upon being expressed in material form. It is not necessary for the creator to register the cre-
ation with any authority. They do not have to do anything to obtain copyright protection for their creation.
Even though copyright protection is automatic, it is nevertheless a good idea to attach a copyright
notice to the work or subject matter. A copyright notice usually consists of the copyright symbol ©,
the copyright owner’s name and the date of first publication; for example, ‘© Johnny Bristol 2008’. A
copyright notice is not a compulsory requirement for protection, but it does clearly warn others that the
creation is protected by copyright. If someone then infringes that copyright, they cannot claim that they
did so innocently or unknowingly.
International protection
Like most Western countries, Australia is a signatory to the international copyright convention known as
the Berne Convention. Under the Berne Convention, a creation protected by copyright in one member
country will have the same protection in other member countries. This means that if a creation is pro-
tected in Australia under the Copyright Act 1968 (Cth) then under the Berne Convention it will be given
the same protection in other countries that are members of the Convention.
ACTIVITY 13.4 — RESEARCH
Read about the Berne Convention at www.wipo.int. How many countries are contracting parties to the
convention?
Extent of copyright protection
In this section we describe the exclusive rights of the copyright owner, the duration of protection, and
the identity of the owner.
11 Copyright Act 1968 (Cth) s 10 (definition of ‘material form’).

Exclusive rights of the copyright owner
The owner of copyright in a protected work has the exclusive right:12
•• in the case of a literary, dramatic or musical work:
–– to reproduce the work in a material form,
–– to publish the work,
–– to perform the work in public,
–– to communicate the work to the public, and
–– to make an adaptation of the work,
•• in the case of an artistic work:
–– to reproduce the work in a material form,
–– to publish the work, and
–– to communicate the work to the public,
•• in the case of a literary work (other than a computer program) or a musical or dramatic work:
–– to enter into a commercial rental arrangement in respect of the work reproduced in a sound
recording, and
•• in the case of a computer program:
–– to enter into a commercial rental arrangement in respect of the program.
The right to ‘communicate the work to the public’ was inserted into the Act in 2001 as part of a set of
reforms intended to update the Act to take into account recent technological innovations. ‘Communicate’
is defined as:
. . . make available online or electronically transmit (whether over a path, or a combination of paths, pro-
vided by a material substance or otherwise) a work or other subject-matter, including a performance or
live performance within the meaning of this Act.13
In other words, the communication right expressly permits the copyright owner to exclusively publish
the material online, and to authorise or prevent others from doing so.
The Act gives the owners of copyright in sound recordings, films, broadcasts and published editions
the exclusive right to make copies of the subject matter. They also have exclusive rights:
•• to cause the film or sound recording to be seen or heard in public,
•• to communicate the film or sound recording to the public, and
•• to rebroadcast the television or radio broadcast.14
If another person exercises any of these exclusive rights without the owner’s permission, they infringe
the owner’s copyright.
Rank Film Production Ltd v Dodds [1983] 2 NSWLR 553
Dodds was the owner of a motel. He played movies on a video recorder that could be watched by
guests on the television sets in their rooms. The court decided that ‘public’ includes a portion of the
public, no matter how small. Dodds had caused the films to be ‘seen or heard in public’ and had there-
fore infringed the copyright owned by Rank Film.
A copyright owner also has the right to prevent the importation of infringing products (see below).
Moral rights
The Copyright Act 1968 (Cth) grants the creators of original works, as well as the directors and pro-
ducers of films, certain inalienable rights known as moral rights.15
Unlike the other rights described
above, these rights cannot be transferred or licensed by the creator to another, although they can be
13 Copyright Act 1968 (Cth) s 10 (definition of ‘communicate’).
14 Copyright Act 1968 (Cth) ss 89–92.
15 Copyright Act 1968 (Cth) pt IX.

surrendered (known as a waiver). These rights can be exercised by the creator even when — especially
when — the creation and the other rights associated with it have been transferred to another.
Moral rights include the following.
•• The right of attribution of authorship: The creator can insist that they be identified as the creator of
the work.16
For example, when a painter sells a painting they retain the right to insist that they be
identified as the painter.
•• The right not to have authorship falsely attributed: The creator can prevent others from being falsely
identified as the creator.17
•• The right of integrity: The creator can object to, and in some instances prevent, derogatory treat-
ment of the work in a way that will prejudicially affect their honour and reputation.18
For example, a
sculptor can object to their sculpture being unreasonably modified by the new owner.
Snow v Eaton Shopping Centre Ltd (1982) 70 CPR (2d) 105
Snow was a sculptor who created a display of 60 geese for the Eatons Shopping Centre in Vancouver,
Canada. The store subsequently decided to put red bows on the geese. Snow successfully obtained an
injunction preventing the store from doing so on the grounds that it was an infringement of his right of
integrity: he had the right to prevent an unreasonable modification of the work.
The remedies available for an infringement of moral rights include damages, injunction, public
apology, and an order to remove or reverse the infringement.19
An act or omission will not be an infringe-
ment of moral rights if it is ‘reasonable’, having regard to the relevant circumstances.20
Why can’t moral rights be transferred or sold?
Duration of protection
The owner of copyright in a creation is accorded protection for a fixed period. After expiry of that fixed
period the creation enters the public domain, and others can copy the creation without penalty.
The length of the fixed period depends upon the type of creation (see table 13.1).
TABLE 13.1 Duration of copyright
Type of work or subject matter Duration of protection
Literary, dramatic, musical or
artistic work
70 years after the end of the calendar year of the creator’s death OR if the
work is not published during the creator’s lifetime, 70 years after the end of the
calendar year in which the work is first published21
Film or sound recording 70 years after the end of the calendar year in which the film or recording is first
published22
Television or sound broadcast 50 years after the end of the calendar year in which the broadcast is first made23
Published edition of works 25 years after the end of the calendar year in which the edition is first
published24
17 Copyright Act 1968 (Cth) s 195AC.
18 Copyright Act 1968 (Cth) s 195AI.
19 Copyright Act 1968 (Cth) s 195AZA.
20 Copyright Act 1968 (Cth) ss 195AR-195AS.

The duration of protection for most creations was formerly 50 years, but in 2005 protection under the
Copyright Act 1968 (Cth) was extended to 70 years to ensure that Australia complied with its obligations
under the Australia–United States Free Trade Agreement.
LAW IN CONTEXT: : LAW AND POPULAR CULTURE
Famous creations in the public domain
Famous works in which the copyright has already expired
include:
• the Bible;
• the works of Homer;
• the works of Mozart;
• the works of Hans Christian Andersen, such as Thumbelina,
The Little Mermaid and The Ugly Duckling;
• Tarzan of the Apes by Edgar Rice Burroughs;
• the works of Charles Dickens, such as A Christmas Carol,
Oliver Twist and Great Expectations;
• the Sherlock Holmes novels of Sir Arthur Conan Doyle;
• Moby Dick by Herman Melville;
• the works of the Brothers Grimm, including Snow White;
• the works of William Shakespeare;
• Frankenstein by Mary Shelley;
• Dracula by Bram Stoker; and
• The War of the Worlds by HG Wells.
While the original work may have entered the public
domain, a particular edition may still be protected as a ‘published edition’, preventing someone from, for
instance, photocopying a novel without permission.
If the original work has been adapted into a film, copyright in the film may still exist, such as copyright
in the Disney film of Snow White. If someone were to adapt a version of Snow White and use elements
of the story present in Disney’s version but not present in the original story, such as the Prince waking
Snow White with a kiss, they would infringe Disney’s copyright.
Speaking of Disney, the earliest Disney films were due to enter the public domain in 1976. At this
time, following extensive lobbying by powerful corporate copyright holders in the entertainment industry,
legislation was passed in the United States extending copyright protection by a further 20 years for
works created by individuals and by a further 45 years for works created by corporations. This legis-
lation is sometimes referred to sarcastically as the ‘Mickey Mouse Protection Act’. The earliest Disney
films will now enter the public domain in 2019 . . . unless copyright protection is again extended.
Ironically, many of Disney’s most famous works, such as Snow White and The Little Mermaid, were
only possible because the original works upon which they were based had themselves entered the
public domain.
Copyright protection is automatically lost if a three-dimensional artistic work is applied commer-
cially.25
Such a work should be registered as a design in order to be protected from unauthorised copying
(see below).
Ownership of copyright
Ownership of copyright is a separate issue from ownership of the physical item. For example, someone
may own a DVD but they do not necessarily own the copyright in the material on the DVD.
Literary, artistic, musical and dramatic works
The person who creates the work will usually be the owner of the copyright in the work.26
This general
rule is subject to several important exceptions.
25 Copyright Act 1968 (Cth) s 77A.
26 Copyright Act 1968 (Cth) s 35(2).

Where an original work is created by someone ‘in pursuance of the terms of his or her employment by
another person’, then that other person (i.e. the employer) is the copyright owner.27
For this exception to
apply, two elements must be satisfied:
•• the creator must be an employee rather than an independent contractor, and
•• the original work must have been created as part of the duties that the person is employed to carry out.
Where an employee of a newspaper, magazine or other periodical creates an original work as part
of their job, copyright is divided between the employee and the employer, subject to agreement to the
contrary. The employee owns copyright for the purposes of book publication and photocopying, and the
employer owns copyright for all other purposes, including publishing in newspapers and magazines,
broadcasting and electronic publication.28
Independent contractors usually own copyright in what they create. The person who pays for the
work to be created will generally not own copyright, although they do have a licence to use the work
for the purposes for which it was commissioned. There are, however, circumstances where a person
who commissions another to create a work for them will own copyright, including where the work is
a commissioned portrait or engraving. Where a photograph is commissioned, the photographer is the
owner of the copyright unless the photograph was commissioned for a private or domestic purpose
(such as a portrait of family members), in which case the client owns the copyright, subject to agree-
ment to the contrary.29
As a general rule, academics and teachers own the copyright in their research, but copyright in the
teaching materials developed as part of their teaching role is owned by the educational institution.
Students own the copyright in their assignments and theses.
If Sam, one of Johnny’s chefs, writes poetry while he is cooking in the kitchen of the restaurant, does
Johnny own the copyright in Sam’s poetry?
Films, sound recordings, broadcasts and published editions
Copyright in a sound recording or film is owned by the producer, unless the subject matter was made
under contract for some other person in which case that other person is the copyright owner.30
Copyright
in a broadcast is owned by the maker of the broadcast.31
Copyright in a published edition is owned by
the publisher.32
Written agreements
The above rules can be modified by written agreement. If there is any doubt about who will be the owner
of copyright in a creation (e.g. where a person is engaged to write software for a business), the parties
should enter into a written agreement and specify how the copyright is to be owned and used.
Assignments and licences
A copyright owner may choose to assign copyright to another.33
For example, an author may assign
copyright in their novel to their publisher in return for a fee. In fact, it is common practice for creators to
assign copyright to publishers and employers.

Alternatively a copyright owner may choose to license their copyright in the creation.34
Copyright and licensing
The granting of licences and the collection of licence fees for the use of copyrighted materials can be a
complex process, particularly where there are large numbers of people who want to use the copyrighted
creation. For example, every time a radio station wants to play a song it must pay licence fees to the
owners of the copyright in (1) the music and lyrics, and (2) the sound recording.
Fortunately the process of licensing is facilitated by the assistance of certain organisations that col-
lect licence fees (usually referred to as royalty fees) on behalf of the copyright owners:
• Copyright Agency represents authors, journalists, visual artists, surveyors, photographers and news-
paper, magazine and book publishers as their non-exclusive agent to license the copying of their
works to the general community: www.copyright.com.au.
• The Australasian Performing Rights Association (APRA) represents the interests of songwriters
and publishers. It collects and distributes licence fees for the public performance and communi-
cation of its members’ musical works. The Australasian Mechanical Copyright Owners Society
(AMCOS) collects and distributes mechanical royalties for the reproduction of its members’ musical
works: www.apraamcos.com.au.
• The Phonographic Performance Company of Australia (PPCA) represents the interests of record
labels and recording artists. It grants licences for the broadcast, communication or public playing of
recorded music or music videos, and distributes the licence fees to its members: www.ppca.com.au.
Infringement
Copyright is infringed when a person exercises the exclusive rights of the copyright owner in relation to
the creation without the owner’s permission to do so.
To establish an infringement of copyright it must be shown that (1) a substantial part of the creation
has been copied, (2) there is objective similarity between the creation and the copy, and (3) there is a
causal connection between the creation and the copy.
CHECKLIST
Copyright in a creation will be infringed if all of the following requirements are satisfied.
◼◼ A substantial part of the creation has been copied.
◼◼ There is objective similarity between the creation and the copy.
◼◼ There is a causal connection between the creation and the copy.
Requirement 1: A substantial part has been copied
Whether a ‘substantial’ part of the original creation has been copied will depend upon the circumstances.
There is no fixed rule about the precise proportion that must be copied, and the quality of the part that
has been copied will be taken into consideration. A large proportion of insignificant material may not be
an infringement, whereas a relatively small proportion of important, essential or distinctive material may
be an infringement.
Hawke & Son (London) Ltd v Paramount Film Service Ltd [1934] Ch 593
The copying of only a few bars of a popular song was decided to be copying of a ‘substantial part’
because the few bars were an important part of the song and easily recognisable.

TCN Channel Nine Pty Ltd v Network Ten Pty Ltd (No 2) (2005) 145 FCR 35
(See the facts described earlier in the chapter.) The court decided that 11 of the segments did infringe
Channel Nine’s copyright because the segments were a substantial part of the original broadcast, in that
they were highlights of the original broadcast. In relation to the other nine segments, Channel Ten was
entitled to rely upon the defence of ‘fair comment’.
LAW IN CONTEXT: LAW IN THE MEDIA
‘Men at Work plundered Kookaburra riff: court’
In February 2010, the Federal Court decided that Australian band Men at Work had plagiarised part of
their famous 1980s hit song ‘Down Under’. Larrikin Music had accused Men at Work of stealing the
song’s flute riff from the old children’s song ‘Kookaburra Sits In The Old Gum Tree’, in which Larrikin
Music owned the copyright. ‘Kookaburra Sits In The Old Gum Tree’ was written by Melbourne teacher
Marion Sinclair for a Girl Guides jamboree in 1934. Larrikin subsequently acquired copyright in the song.
Larrikin demanded compensation from ‘Down Under’ songwriters Colin Hay and Ron Strykert in the
form of a share of the considerable royalties from ‘Down Under’, and the court decided that copyright
had been infringed.35
What is the difference between copyright infringement and plagiarism?
Requirement 2: Objective similarity between the original and the copy
The requisite degree of similarity will depend upon the type of creation in question. An exact copy of
the original creation is clearly ‘objectively similar’. If the copy is not an exact copy, the question to be
decided is whether a reasonable person would view the copy as similar to the original.
Zeccola v Universal City Studios Inc (1982) 67 FLR 225
Universal Studios owned the copyright for the novel, the screenplay and the film of Jaws. They success-
fully sued Zeccola, the producers of an Italian film called Great White, for infringement of their copyright:
the Italian film was objectively similar to the Jaws story.
The requirement of objective similarity may be satisfied even if the original creation and the copy are
in completely different media. For example, a film may be objectively similar to a book.
Requirement 3: Causal connection between the original and the copy
It must be shown that the alleged copy of the original creation was in fact copied and not created
independently. To do this it must be shown that the maker of the copy had access to the original creation.
It does not matter whether the copying was direct or indirect, deliberate or accidental, conscious or
unconscious.
35 Sarah Dingle, ‘Men at Work Plundered Kookaburra Riff: Court’ (4 February 2010) Australian Broadcasting Corporation
http://www.abc.net.au/news/2010-02-04/men-at-work-plundered-kookaburra-riff-court/321624.

LAW IN CONTEXT: LAW IN POPULAR CULTURE
Subconscious plagiarism
In 1962, US band The Chiffons recorded the song ‘He’s So Fine’. The song was a big hit in the US
(hitting the top of the Billboard charts for five weeks) and a moderate hit in the UK. In 1969, George
Harrison, a member of the famous UK band The Beatles, wrote the song ‘My Sweet Lord’. In 1970, a
version of ‘My Sweet Lord’ was released on Harrison’s solo album ‘All Things Must Pass’. ‘My Sweet
Lord’ was released as a single and it went to number one in the US.
Bright Tunes Music Corp, the owner of copyright in ‘He’s So Fine’, sued Harrison for breach of copy-
right. Bright Tunes alleged that the songs were so similar that Harrison must have copied ‘He’s So Fine’
when he wrote ‘My Sweet Lord’. (You can compare the songs yourself by listening to them on YouTube.)
No one suggested that Harrison had deliberately stolen the song. Rather, it was alleged that Harrison
had unconsciously copied parts of the ‘He’s So Fine’ when he wrote his own song.
The matter finally went to trial in 1976. After hearing from expert witnesses from both sides, the trial
judge decided that Harrison had breached copyright in the song by engaging in what he called ‘subcon-
scious plagiarism’. A substantial part of ‘He’s So Fine’ had been accidentally copied, there was objective
similarity between the two songs, and there was a causal connection: Harrison admitted that he would
have heard the original song when it was released in 1962. The court explained that in establishing an
infringement of copyright it was not necessary to show that there had been any intent to infringe.
Direct and indirect infringement
Direct infringement is where a person other than the copyright owner does any act that is considered an
exclusive right of the copyright owner.36
It is also a direct infringement for someone to authorise another
to exercise any of the exclusive rights of the copyright owner without permission, including encouraging
them to do so and providing them with the means to do so.
Roadshow Films Pty Ltd v iiNet Ltd (No 3) (2010) 263 ALR 215
iiNet is an Australian internet service provider. In what was seen as an important test case, Roadshow and
33 other television and movie studios including Universal Pictures, Paramount Pictures, Twentieth Century
Fox, Disney and the Seven Network brought legal proceedings against iiNet claiming that it had infringed
their copyright by knowingly allowing its customers to illegally download approximately 100 000 movies,
television programs and songs using BitTorrent during a particular 59-week period. The plaintiffs argued
that by failing to enforce its own user agreements that state that customers are not to illegally download
files, iiNet had itself infringed the plaintiffs’ copyright. The court decided in favour of iiNet, explaining that
‘iiNet is not responsible if an iiNet user uses that system to bring about copyright infringement . . . the law
recognises no positive obligation on any person to protect the copyright of another’. (In 2012 the studios
appealed this decision to the High Court of Australia. The High Court dismissed the appeal.)
LAW IN CONTEXT: LAW AND TECHNOLOGY
Copyright and the internet
• Downloading movies or music from the internet without the permission of the copyright holder will be
a direct infringement of copyright, as will printing or even simply saving to a hard drive material from
a website or discussion board without permission.
• When a person visits a website a copy of the webpage is downloaded to their computer and copied
onto their hard drive. However, under the Copyright Act 1968 (Cth), temporary and incidental copying
of a creation by the technical process of transmitting and browsing material on the internet is not a
direct infringement of copyright.37
36 Copyright Act 1968 (Cth) ss 36, 101.
37 Copyright Act 1968 (Cth) ss 111A–111B.

• Linking from one website to another is unlikely to be an infringement of the copyright of the owner of
the linked website because their permission to do so will be implied from the circumstances, provided
the link is to the front page of the website.
• If a website knowingly facilitates copyright infringement in the form of peer to peer file sharing, the
owner of the website will themselves infringe copyright, but if they have no control over the process
they will not be liable.
• An ISP will not be liable for authorising infringements by their customers simply because the infringe-
ment occurred using their facilities.38
Indirect infringement includes:
•• importing products knowing that if they had been manufactured in Australia they would be a direct
infringement of copyright in an original work or subject matter,39
•• selling or renting products known to be unauthorised copies of the work or subject matter,40
and
•• permitting a place of public entertainment to be used for public performance of a work or subject
matter which is known to be unauthorised.41
Milpurrurru v Indofurn Pty Ltd (1994) 54 FCR 240
Indofurn Pty Ltd imported carpets from Vietnam. The carpets reproduced Australian Aboriginal artwork
without the permission of the copyright owners. The court decided that because Indofurn knew that if
the carpets had been manufactured in Australia they would have been a direct infringement of copy-
right, Indofurn had committed an indirect infringement of copyright.
Parallel importing of books, music and software is no longer an infringement of copyright in
Australia.42
Parallel importing is the importing of products into Australia that were legally made over-
seas, but without the consent of the local owner or licensee of the copyright. For example, Claire may
have an exclusive licence to produce and distribute in Australia the novels of Stephen Donaldson. Vicki
has an exclusive licence to produce and distribute Stephen Donaldson’s novels in the United Kingdom.
Mike buys copies of the novel from Vicki online, imports them into Australia and sells them in com-
petition with Claire. This is parallel importing. Prior to 1991 this would have been an infringement
of Claire’s exclusive rights, but that is no longer the case under the present law. The exception was
extended to sound recordings in 1998, and to software in 2002.
Why is parallel importing of books, music and software permitted but not of other products?
Remedies and penalties
In the event of infringement, the owner of copyright is accorded a wide range of possible remedies under
the Copyright Act 1968 (Cth), including:
•• damages to compensate them for any loss suffered as a result of the infringement,43
•• additional damages if it is established that the infringement was deliberate and the court wishes to
deter others from engaging in such conduct,44
38 Copyright Act 1968 (Cth) s 116AG.
42 Copyright Act 1968 (Cth) ss 44A–44F.
43 Copyright Act 1968 (Cth) ss 115(2)-(3).

•• an injunction to restrain infringement and prevent future infringements,45
•• an account of profits – that is, an order that the defendant pay to the owner any profits made as a
result of their infringement,46
and
•• an order that the defendant transfer to the owner any infringing products.47
An infringement action under the Act must be commenced within 6 years of the infringement.
In addition to these statutory remedies, the common law offers the following additional remedies:
•• an Anton Piller order according to which the copyright owner is granted access to the defendant’s
premises in order to locate or take possession of any infringing products,48
and
•• a Mareva injunction according to which the defendant is ordered not to remove infringing products
from the jurisdiction of the court.49
FNH Investments Pty Ltd v Sullivan [2003] 59 IPR 121
FNH Investments Pty Ltd (FNH) engaged Sullivan to provide photographs for use in a marketing
campaign. FNH refused to pay for the photos, claiming that they were not of merchantable quality, but
nevertheless used the photos as part of the campaign. The court decided that Sullivan retained the
copyright in the photos, which FNH had infringed. FNH was ordered to pay the price for the photos
under the contract as well as $15 000 in additional damages.
The Copyright Act contains a range of indictable offence and summary offence provisions.50
A person found guilty of breaching one of these provisions will be subjected to potentially harsh
penalties, including fines and up to 5 years’ imprisonment. The offences include:
•• commercial scale infringement of copyright,51
•• making an infringing copy with the intention of selling it or hiring it or obtaining a commercial advan-
tage or profit,52
•• selling or hiring out an infringing copy,53
•• offering an infringing copy for sale or hire,54
•• exhibiting an infringing copy in public commercially,55
•• importing infringing copies commercially,56
•• distributing an infringing copy with intention of trading or obtaining a commercial advantage or
profit,57
•• possessing an infringing copy for commerce,58
•• the aggravated offence of converting a work to digital form,59
•• making or possessing a device for making an infringing copy,60
and
•• advertising the supply of an infringing copy.61
46 Copyright Act 1968 (Cth).
48 Anton Piller KG v Manufacturing Processes Ltd [1976] Ch 55.
49 Mareva Compania Naviera SA v International Bulk Carriers SA; The Mareva [1980] 1 All ER 213.
50 Copyright Act 1968 (Cth) pt V div 5.
51 Copyright Act 1968 (Cth) s 132AC.
52 Copyright Act 1968 (Cth) s 132AD.
53 Copyright Act 1968 (Cth) s 132AE.
54 Copyright Act 1968 (Cth) s 132AF.
55 Copyright Act 1968 (Cth) s 132AG.
56 Copyright Act 1968 (Cth) s 132AH.
57 Copyright Act 1968 (Cth) s 132AI.
58 Copyright Act 1968 (Cth) s 132AJ.
59 Copyright Act 1968 (Cth) s 132AK.
60 Copyright Act 1968 (Cth) s 132AL.
61 Copyright Act 1968 (Cth) s 132AM.

The Copyright Act 1968 (Cth) also contains a set of remedies and penalties to help copyright owners
protect and monitor their exclusive rights. For example, a business may seek to protect digital material
from unauthorised access or use by encrypting material or encoding a broadcast. Under the Act, the busi-
ness can take action against:
•• any person who circumvents such technological measures designed to control access to copyright
material,62
•• any person who makes, sells, imports or rents out devices that are used to circumvent technological
measures,63
•• any person who provides circumvention services,64
•• any person who removes or alters electronic rights management information,65
and
•• any person who distributes to the public works with electronic rights management information removed.66
It is also a criminal offence for a person to:
•• use a circumvention or decoding device,67
•• deal commercially with circumvention or decoding devices,68
•• offer decoding or circumvention services,69
•• alter or remove electronic rights management information,70
or
•• deal with copyright material knowing that rights management information has been removed from it.71
Defences
A person accused of infringing copyright may seek to rely upon a range of possible defences.
Fair dealing
A ‘fair dealing’ with a creation does not constitute an infringement of the copyright in the creation if it
is for the purpose of:
•• criticism or review,72
•• parody or satire,73
•• reporting news,74
•• judicial proceedings or professional advice,75
or
•• research or study.76
Copying of the following proportions of an original work for research or study will be taken to be fair dealing:
•• the whole of a journal article,
•• 10 per cent of the pages or one chapter of a publication of more than 10 pages, or
•• 10 per cent of the words or one chapter of an electronic publication.
‘Fair dealing’ is not defined in the Copyright Act 1968 (Cth), but it is usually interpreted to mean
that the use of the protected creation is primarily for the legitimate purpose and not for the purpose of
competing with the owner of the copyright or depriving them of their rightful entitlements. If the review,
parody or news report reproduces the whole of the original work being reviewed, parodied or reported
upon, it is unlikely to qualify as fair dealing and will be an infringement of copyright.
62 Copyright Act 1968 (Cth) s 116AN.
63 Copyright Act 1968 (Cth) s 116AO.
64 Copyright Act 1968 (Cth) s 116AP.
65 Copyright Act 1968 (Cth) s 116B.
66 Copyright Act 1968 (Cth) s 116C.
67 Copyright Act 1968 (Cth) s 132APC.
68 Copyright Act 1968 (Cth) s 132APD.
69 Copyright Act 1968 (Cth) s 132APE.
70 Copyright Act 1968 (Cth) s 132AQ.
71 Copyright Act 1968 (Cth) s 132AR.
72 Copyright Act 1968 (Cth) ss 41, 103A.
73 Copyright Act 1968 (Cth) ss 41A, 103AA.
74 Copyright Act 1968 (Cth) ss 42, 103B.
76 Copyright Act 1968 (Cth) ss 40, 103C.

Other defences
The Copyright Act 1968 (Cth) contains a large number of other exceptions to infringement, including:
•• reproducing text for private use (e.g. copying an extract from a novel into a diary),77
•• reproducing text for a collection in a place of education,78
•• public readings and recitations,79
•• performances at home,80
and
•• incidental filming or televising of public works.81
The making of a back-up copy of a computer program by, or on behalf of, a licensed owner of the pro-
gram is not an infringement so long as the copy is to be used if and when the original fails.82
Recording television programs
On 11 December 2006, the Copyright Act 1968 (Cth) was amended to allow people to record television
and radio programs so that they can watch them or listen to them at a more convenient time.83
This
new exception to infringement only applies if the recording is made for the sole purpose of private or
domestic use. A person will still infringe copyright if they sell, rent or distribute the recording, or play or
show the recording in public.
Part VA of the Act grants educational institutions a licence to copy television and radio broadcasts
for teaching purposes: the institution pays an annual fee based on student numbers to the Audio Visual
Copyright Society.
REVISION QUESTIONS
Before proceeding, ensure that you can answer the following questions.
13.6 What is copyright?
13.7 What are the requirements for copyright protection?
13.8 What types of ‘work’ and ‘subject matter’ are protected by copyright?
13.9 When is a creation ‘original’?
13.10 When is a creation expressed in material form?
13.11 Does an author have to register their creation to gain copyright protection?
13.12 What is the purpose of the copyright symbol?
13.13 What is the effect of the Berne Convention?
13.14 What are the exclusive rights of the copyright owner?
13.15 What are moral rights?
13.16 How long does copyright last?
13.17 Who owns the copyright?
13.18 When is copyright infringed?
13.19 What is the difference between direct and indirect infringement?
13.20 What is ‘parallel importing’?
13.21 What are some of the defences to a copyright infringement action?
13.22 What are the available remedies in the event of copyright infringement?
13.23 What are the possible penalties in the event of copyright infringement?
83 Copyright Act 1968 (Cth) s 111

13.3 Trade marks
LEARNING OBJECTIVE 13.3 How does trade mark law protect a trade mark from unauthorised use?
When are trade mark rights infringed and what can be done about it? If a trade mark is not registered, is it
still protected?
A distinctive trade mark is an important marketing tool, and a potentially valuable asset. The Coca-Cola
trade mark, for example, is estimated to be worth more than $70 billion. But what are trade marks, and
how are they protected?
What is a trade mark?
A trade mark is a distinctive word, phrase, or symbol used in commercial dealings to show a connec-
tion between a particular business and its product. Trade marks include brand names and logos. The
trade mark enables customers to choose between the products of different businesses according to the
reputation associated with the trade mark.
In Australia, trade marks are regulated by the Trade Marks Act 1995 (Cth) and administered by the Trade
Marks Office of IPAustralia.A trade mark must be registered to gain protection under the Trade MarksAct.
The Trade Marks Act defines a trade mark as ‘a sign used, or intended to be used, to distinguish goods
or services dealt with or provided in the course of trade by a person from goods or services so dealt with
or provided by any other person’.84
A ‘sign’ is defined as including the following or any combination of
the following: ‘any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of
packaging, shape, colour, sound or scent’.85
Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107
Coca-Cola registered as a trade mark the shape of the contoured glass bottle in which Coke was tra-
ditionally sold. Although most Coke today is sold in cans and plastic bottles, Coca-Cola successfully
restrained All-Fect, a confectionary company, from importing and selling lollies in a plastic bottle the
same shape as the contoured glass Coke bottle.
84 Trade Marks Act 1995 (Cth) s 17.
85 Trade Marks Act 1995 (Cth) s 6 (definition of ‘sign’).

BP plc v Woolworths Ltd (2004) 212 ALR 79
BP plc attempted to register as a trade mark a particular shade of the colour green in relation to the sale
of petrol. Woolworths opposed the application because it intended to use the colour green in relation to
its own sale of petrol. The court decided that because that particular shade of green used in connection
with the sale of petrol was already, in the minds of members of the public, associated with BP, BP was
entitled to register that colour as a trade mark.
What is the relationship between a trade mark and the goodwill of a business?
Australian Company Numbers (ACNs) and business names are not the same as trade marks. The
purpose of registering an ACN or a business name is to enable consumers to identify the owners oper-
ating under that name (see the next chapter). Registration of a particular business name or a company
name does not automatically entitle the registrant to prevent others from using that name to market their
product. Nor is it, in itself, a defence to an action for infringement of a registered trade mark brought by
another business. For example, if Johnny is the registered holder of the business name ‘The Lame Duck’
but Simulacra has registered that term as a trade mark, and Johnny uses that name to market his prod-
ucts, Simulacra will be entitled to take legal action to prevent Johnny from doing so. A business should
therefore endeavour to register its name as both a business name and a trade mark.
Requirements for trade mark protection
Registration of a trade mark gives the trade mark owner the statutory right to prevent competitors from
using the trade mark to market their own products. It also:
•• protects the goodwill associated with the product,
•• is an important and valuable business asset, and
•• facilitates the processes of franchising and licensing.
Registration of a trade mark is not compulsory. As explained below, an unregistered trade mark is still
protected by both the law of passing off and the Australian Consumer Law (ACL). However, enforce-
ment of a registered trade mark is simpler and cheaper than enforcement of an unregistered trade mark.
Registration criteria
A trade mark will only be registered if it:
•• does not contain a proscribed sign,
•• is able to be represented graphically,
•• is distinctive,
•• is not scandalous or contrary to law,
•• is not likely to deceive or cause confusion, and
•• is not identical with or deceptively similar to another pending or registered trade mark.
Proscribed signs
An application for registration of a trade mark will be rejected if the trade mark contains or consists of a
sign that is proscribed (forbidden) by regulation.86
Certain signs and marks have been declared by regu-
lation to be incapable of registration as a trade mark. These include Australian national emblems and the
emblems of Australian towns and cities.

Graphic representation
An application for registration will be rejected if the trade mark cannot be represented graphically.87
The trade mark must be capable of representation as a word, as a logo, or as a description, such as the
description of a shape. A sound or tune must be able to be represented by notes indicated on a music
stave.
The definition of ‘trade mark’ in the Act includes scents. How can a scent be represented graphically?
Distinctive
The trade mark must be capable of distinguishing the product from the products of other persons.88
Beecham Group plc v Colgate-Palmolive Co (2001) 58 IPR 161
The Colgate-Palmolive Co applied to register the stripes in their toothpaste as a trade mark. The appli-
cation was opposed by Beecham Group plc, the owners of Macleans toothpaste. The court decided
that the stripes were not capable of distinguishing Colgate’s goods from the goods of their competitors,
and Colgate’s application failed.
It is difficult to register everyday words as a trade mark. A trade mark that consists solely of a descrip-
tion of the product (e.g. ‘bread’) or of a characteristic or quality of the product (e.g. ‘fresh’) will not be
distinctive and will unfairly exclude others who may wish to operate a similar sort of business or pro-
duce similar kinds of goods.
Samuel Taylor Pty Ltd v Registrar of Trade Marks (1959) 102 CLR 650
Samuel Taylor (ST) applied for registration of the name ‘Pressure Pak’ as a trade mark. The Registrar of
Trade Marks refused to register the name on the ground that the name referred directly to a character-
istic or quality of the product, and ST appealed the decision. The court upheld the Registrar’s decision:
the name ‘Pressure Pak’ indicated that the contents of the container were held under pressure, and was
therefore a direct reference to some character or quality of the product.
A similar rationale applies to geographic names and common surnames. Other traders in that particular
location or with that particular name will need to make use of the name, which shouldn’t be the exclu-
sive right of any one person. On the other hand, if there is strong evidence of association of a particular
name with a particular product or products (e.g. ‘McDonald’s’ or ‘David Jones’), the name may be
successfully registered as a trade mark.
Distinctive or unique words are more likely to be registered. Examples include:
•• made up words, such as ‘iPad’,
•• suggestive or emotive words such as ‘lucky dog’, and
•• descriptive words that do not match the product, such as ‘Apple’ for computers.
Words that are not distinctive on their own may still be able to be registered if they are accompanied
by other words or by a distinctive image or symbol, because another business is unlikely to need to use
that particular combination of words and image.

Scandalous or contrary to law
An application for the registration of a trade mark will be rejected if the trade mark contains or consists
of scandalous matter, or its use would be contrary to law.89
Scandalous trade marks include those that use swear words or are deemed offensive in some way,
such as a trade mark that is racist. In the United States, an application to register the term ‘dykes on
bikes’ as a trade mark was refused on these grounds,90
as were the terms ‘LMFAO’ and ‘FUKU’. On the
other hand, ‘Knuckingfackered’ has been registered as a trade mark in the UK, and ‘Far Kew’ has been
registered in Australia.
‘ ‘‘Nuckin Futs” gets the green light from Australians’
In 2012 a Gold Coast company’s plans to trade mark the name ‘Nuckin Futs’ in relation to a snack
food product attracted widespread publicity following the announcement that the trade mark examiner
had accepted the name for registration pending the three month opposition period. Despite the public
outcry, by the end of the opposition period no one had actually lodged an objection. According to the
applicant’s solicitor: ‘Nobody took five minutes out of their day to actually oppose it after all the [abu-
sive] emails we received, . . . So really do people think it’s that scandalous and really does it impact them
at all? People may have been shocked by the trademark but not offended enough to put a stop to it.’
The applicant successfully argued that the name was not offensive because the term was commonplace
in everyday Australian language, and the registration proceeded.
Reproduced from Sarah O’Carroll, ‘Nuckin Futs’ Gets the Green Light from Australians (28 June 2012) News Limited
http://www.news.com.au/business/your-business/nuckin-futs-gets-the-green-light-from-australians/story-fn9evb64-
1226410384183.
A trade mark will be ‘contrary to law’ if it is one that is prohibited unless the person is an appointed
user under specific legislation. For example, the Olympic symbol can be used only by designated
organisations.
Likely to deceive or cause confusion
An application will be rejected if, because of some connotation that the trade mark or a sign contained
in the trade mark has, the use of the trade mark would be likely to deceive or cause confusion.91
Ques-
tions of deception or confusion arise when a trade mark is similar to that of another business, whether
registered or not. In Australia, the first person to use the mark is the owner of that mark for trade mark
purposes, regardless of whether or not the mark is registered.
A trade mark that consists of a term commonly used to describe that type of product (e.g. ‘Cheapest
Cars’) is unlikely to be registered. A descriptive term may imply a feature that is not present in the
product, and the trade mark would therefore be misleading.
Identical to pending or registered trade mark
Since a trade mark is supposed to distinguish one business’s product from that of another, a trade
mark needs to be different from those trade marks already registered in Australia. A trade mark
cannot be registered if it is substantially identical with or deceptively similar to another trade mark
that is already registered or that has already been lodged for registration.92
‘Deceptively similar’ is
defined to mean that the trade mark ‘so nearly resembles that other trade mark that it is likely to mis-
lead or cause confusion’.93
90 Patricia Loughlan, ‘“Dykes on Bikes”: Trade Mark Registration (Rightly) Refused’ (2005) 18 Australian Intellectual Property
Law Bulletin 74.

Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 132 FCR 326
Swimming champion Ian Thorpe applied to register the name ‘Thorpedo’ as a trade mark. The appli
cation was opposed by Torpedoes Sportswear, and one of the reasons for their opposition was that
it was substantially identical with or deceptively similar to their own trade mark. The opposition was
unsuccessful: the court decided that the ‘Thorpedo’ trade mark was unlikely to mislead or cause con-
fusion because the name ‘Thorpedo’ was already widely recognised by members of the public.
Registration process
The following steps are required to register a trade mark.
1. An applicant should first search the trade marks database at the IP Australia website (www.ipaustralia.
gov.au) to see if the same or a similar trade mark has already been registered.
2. Before lodging the application the applicant can request an assessment of the likelihood of the appli-
cation being successful by using the ‘TM Headstart’ service accessible online at the IP Australia
website.
3. The application must be in relation to a particular class or classes of products. There is no limit on the
number of classes in which a trade mark can be registered, as long as the trade mark is actually used
or intended to be used in relation to products in that class.
4. The application is examined by IP Australia. If the application meets the requirements for registration
it will be accepted for registration.
5. If accepted for registration, the application is advertised in the Official Journal of Trade Marks.
Anyone who opposes the registration of the trade mark will have 3 months within which to register
their opposition. In the event that the application is opposed the applicant will have to defend their
application. Oppositions are administered by the Trade Marks Hearings section of IP Australia.
6. If no opposition is filed, or if the opposition is unsuccessful, the trade mark will be registered. IP
Australia will issue a Certificate of Registration and record the details of the trade mark in the Reg-
ister of Trade Marks. The trade mark will be registered from the date the application was filed.
Go to the trade marks section of the IP Australia website at www.ipaustralia.gov.au. What is the present
number of (1) classes of goods, and (2) classes of services?
A trade mark may be removed from the register if:
•• the registrant has not used and had no intention of using the trade mark at the time the application
was filed,
•• the registrant has not used the trade mark for a period of at least 3 years, or
•• the registrant’s use of the trade mark has not been in good faith.
Other types of trade mark
In addition to trade marks generally, the Act permits the registration of particular types of trade mark,
namely:
•• collective trade marks,
•• certification trade marks, and
•• defensive trade marks.
A collective trade mark distinguishes the products of members of a particular association from the
products of persons who are not members of the association.94

The purpose of a certification trade mark is not to establish a connection between the product and a
particular business, but to inform customers that the product has a special quality, for example, that it has
been approved by the Australian Heart Foundation. The registrar will only register a certification trade
mark if it is satisfied that the applicant has the authority to certify products as having that special quality,
and that the registration of the trade mark is in the public interest.95
If a trade mark is particularly well known and the owner wishes to prevent others from registering
and using the trade mark to market their products even though the products are in a different class to
the owner’s own products, they may be able to register a defensive trade mark in that different class.96
Trade mark symbols
If a particular trade mark becomes widely used by the public as the generic name for a particular type
of product, the trade mark will no longer satisfy the requirement that it be distinctive, and trade mark
protection will be lost. Examples of trade marks that have entered the public domain in this way include
‘linoleum’, ‘trampoline’, ‘kerosene’, ‘nylon’, ‘aspirin’ and ‘escalator’.
A trade mark owner can prevent this from happening by ensuring that their trade mark is always
accompanied by a trade mark symbol. A pending or unregistered trade mark can be identified by use
of ™ next to the mark. If the trade mark is registered then the ® symbol may be used. Some busi-
nesses choose to use an asterisk after the first reference to the trade mark and then refer to the asterisk
elsewhere on the packaging or material, for example, ‘* Registered trade mark of X Limited’.
CAUTION!
If a particular trade mark becomes so well known that it is often used as the generic name for a type
of product, it will no longer be distinctive and the trade mark owner will no longer be entitled to retain
registration of the trade mark.
Extent of trade mark protection
In this section we consider the identity and exclusive rights of the trade mark owner, and the duration of
protection.
Ownership of the trade mark
The successful applicant becomes the owner of the trade mark.
The applicant must have a ‘legal personality’ – that is, they must be a person, a company or an
incorporated association.
Exclusive rights of the trade mark owner
The system for registering trade marks allows the registrant to, in a sense, ‘own’ the trade mark. It
allows them to exclude others from using that trade mark, or a deceptively similar trade mark, in relation
to the sale of the same or similar products. It is, thus, a limited form of ownership. The registrant only
has the right to restrain others from using the registered trade mark in relation to the class of products for
which the trade mark has been specifically registered.
A registered owner can also give a notice to the Australian Customs Service objecting to the impor-
tation of goods that infringe the registered trade mark.
As with other forms of IP rights, the owner of a registered trade mark can license their trade mark for
others to use with respect to the products specified in the class or classes, or they can assign the trade
mark rights entirely.

CAUTION!
The owner of a trade mark is not entitled to prevent everyone else from copying or using the trade mark.
They are only entitled to prevent a competitor from using the trade mark to market products in the same
class of products in which the trade mark has been registered.
Duration of protection
As long as the trade mark owner keeps using the trade mark and continues paying the periodic renewal
fees every 10 years, they can renew registration of their trade mark indefinitely.97
International protection
Trade mark registration is territorial: each country has its own system of registration.
If a business wants to sell its product overseas, it will need to register the trade mark in the countries
it proposes trading in. It can either register the trade mark in each country separately, or it can submit a
list of countries to IP Australia in the form of a single application. The Madrid Protocol facilitates this
latter process; there are at present 65 member countries party to the Protocol.
What is the Madrid Protocol?
JT International SA v Commonwealth [2012] HCA 43
The Tobacco Plain Packaging Act 2011 (Cth) forces cigarette companies to use ‘plain packaging’ by
imposing restrictions on the colour, shape and finish of retail packaging for tobacco products and
restricting the use of trade marks on the packaging. A group of cigarette companies including British
American Tobacco, Imperial Tobacco, Japan Tobacco and Philip Morris commenced legal proceedings
against the Commonwealth. The cigarette companies challenged the constitutional validity of the Act,
arguing that the Commonwealth was in effect acquiring the companies’ intellectual property in breach of
the requirement in s 51(xxxi) of the Australian Constitution that the government only acquire property on
‘just terms’. A majority of the High Court of Australia decided that to engage s 51(xxxi), an acquisition
must involve the accrual to the Commonwealth (or to any other person for the purposes of the Com-
monwealth) of a proprietary benefit or interest. The Tobacco Plain Packaging Act 2011 (Cth) regulated
the plaintiffs’ intellectual property rights and imposed controls on the packaging and presentation of
tobacco products, but it did not confer a proprietary benefit or interest on the Commonwealth or any
other person. As a result, neither the Commonwealth nor any other person acquired any property and
s 51(xxxi) was not relevant.
Infringement
If another business uses a trade mark that is substantially identical or deceptively similar to a registered
trade mark in relation to products in respect of which the trade mark is registered, it has infringed that
trade mark.98
The infringer may also commit the tort of passing off, discussed earlier in the chapter.
97 Trade Marks Act 1995 (Cth) ss 73, 77–79, 84.

CHECKLIST
X infringes the registered trade mark of Y if all of the following requirements are satisfied.
◼◼ Y’s trade mark is registered under the Act.
◼◼ X uses a trade mark that is substantially identical with or deceptively similar to Y’s trade mark.
◼◼ X uses the trade mark in relation to goods or services that are the same as or closely related to
goods or services in respect of which Y’s trade mark is registered.
‘Dough-Vo bows to Vo-Vo: Krispy Kreme backs down’
Arnott’s Biscuits manufactured a biscuit called the Iced Vo-Vo, a biscuit with pink icing and coconut
sprinkles. Arnott’s had owned the trade mark in the name of the biscuit since 1906. In 2009, Krispy
Kreme released a donut called the ‘Iced Dough-Vo’, which also had pink icing and coconut sprinkles.
Arnott’s threatened Krispy Kreme with legal action, claiming that Krispy Kreme was engaging in mis-
leading and deceptive conduct and breaching Arnott’s trade mark in the name ‘Iced Vo-Vo’. Krispy
Kreme agreed to rename the product.99
LAW IN CONTEXT: LAW AND TECHNOLOGY
Trade marks and the internet
The following may amount to online infringement of a trade mark.
• If the website of a competitor without the trade mark owner’s permission links to part of their website
that contains the trade mark.
• If the website of a competitor contains ‘meta-tagging’ that includes the trade mark. Meta-tagging
is the use of HTML tags that provide information about a webpage and which are used by search
engines to identify appropriate websites in response to search queries.
• If the website of a competitor ‘frames’ a page from the trade mark owner’s website that includes the
trade mark so that to the viewer it appears that they are still on the competitor’s website.100
As explained previously, a trade mark owner only has the right to prevent others from using the
trade mark in relation to the sale of products in the category or categories in which the trade mark is
registered. If, for example, Ash has developed an electronic book and registered the name ‘Intelli-book’
as a trade mark in category 9 (electronic instruments) and category 16 (printed materials), she cannot
prevent another person from using the same name in relation to, say, the provision of hotel booking ser-
vices, which would fall within category 43 (temporary accommodation).
The exception to this is if the trade mark is ‘well known in Australia’ in which case the trade mark
owner would be able to prevent someone from using the trade mark in relation to unrelated goods or
services.101
Eastman Photographic Materials Co Ltd v John Griffiths Cycle Corp Ltd (1898) 15 RPC 105
Eastman Photographic Materials Co Ltd owned the trade mark ‘Kodak’. The court decided that because
the trade mark was so generally well known, the company was able to prevent Griffiths from using the
trade mark in relation to the sale of bicycles.
99 Australian Broadcasting Corporation, ‘Dough-Vo Bows to Vo-Vo: Krispy Kreme Backs Down’ (30 April 2009) <http://www
.abc.net.au/news/ 2009-04-30/dough-vo-bows-to-vo-vo-krispy-kreme-backs-down/1667648>.
100 Shetland Times Ltd v Willis (1997) SLT 669.
101 Trade Marks Act 1995 (Cth) s 120(3).

Virgin Enterprises Ltd v Klapsas [2002] AIPC 91–760
Klapsas sought to register the name ‘Virgin Car Rentals’ as a trade mark in relation to the leasing of
cars. The application was successfully opposed by Richard Branson’s Virgin Enterprises.
Remedies
Under the Trade Marks Act the remedies available for infringement of a registered trade mark include:
•• an injunction to prevent further infringement, and
•• either damages or an account of profits.
Defences
The Trade Marks Act contains the following possible defences to infringement proceedings.
•• The trade mark is the defendant’s own name, or the name of their place of business, or the name of a
predecessor in the business, or the name of the predecessor’s place of business, and the name is being
used by the defendant in good faith.102
•• The trade mark describes the kind, quality, quantity, intended purpose, value, geographical origin,
or some other characteristic of the defendant’s products and is being used by the defendant in good
faith.103
•• The trade mark was used by the defendant in comparative advertising.104
•• The trade mark was used by the defendant with the implied consent of the trade mark owner.105
•• The defendant can demonstrate that they have been using the trade mark in question since a time
before the owner registered or started using the trade mark.106
Unregistered trade marks
If a business’s trade mark is unregistered it may still be able to prevent another person from misusing it
by bringing a legal action either in the tort of passing off or under the ACL.
The tort of passing off
Both registered and unregistered trade marks are protected under common law by the tort of passing
off. As you will recall from an earlier chapter, passing off is a tort committed when one person makes
a misrepresentation that implies a commercial association with another person, such as when a busi-
ness markets their own products as if they are a competitor’s products. For example, if Simulacra uses
Johnny’s trade mark, brand, distinctive packaging, name or likeness without Johnny’s permission to sell
their own product, they commit the tort of passing off. To successfully bring an action in passing off
against Simulacra, Johnny must establish that:
•• Simulacra has deliberately made a misrepresentation (a false statement of fact) that their goods or ser-
vices are connected with Johnny or his business,
•• the misrepresentation by Simulacra was made in the course of trade, and
•• the misrepresentation was intended to deceive potential purchasers.
The remedies available under common law include damages and an injunction to restrain further use
of the trade mark.
Although it is possible to protect an unregistered trade mark by bringing legal proceedings in the tort
of passing off, there are clear advantages to having a registered trade mark. To bring an action under
102 Trade Marks Act 1995 (Cth) s 122(1)(a).
103 Trade Marks Act 1995 (Cth) s 122(1)(b).
104 Trade Marks Act 1995 (Cth) s 122(1)(d).

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