Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.






Friday, May 29, 2015

House Rules Rule One: Don't copy someone else's plans

By Tracy Lu, Senior Associate

In the recent appeal decision of Tamawood Limited v Habitare Developments Pty Ltd (Administrators Appointed) (Receivers and Managers Appointed) [2015] FCAFC 65, the Full Federal Court found that a firm of architects had infringed the copyright in construction plans created by another company and also that the directors of the developer which had engaged the architects had authorised the infringement.

Under commercial circumstances which the primary judge described to be 'relatively casual', the applicant Tamawood and the developer Habitare entered discussions relating to the potential development of some 'low-cost, intensive housing projects' in Brisbane. Tamawood created plans for the projects for which it was not paid, but there was common expectation that Tamawood would be appointed as the builders of the projects.

Tuesday, May 26, 2015

Scintilla TV: The countdown is on for the Trans-Pacific Partnership

The Trans-Pacific Partnership is a proposed multi-lateral trade agreement between 12 Pacific Rim nations, including Australia.

Reports last week indicated that the deal is close to being finalised after more than five years of negotiations. Speaking after those reports, Allens Partner Sarah Matheson discusses the progress of the deal, and how it may affect Australia's IP laws.

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Friday, May 22, 2015

Scintilla TV: Uncovering 'Dallas Buyers Club' pirates

Dallas Buyers Club LLC was recently successful in its application for preliminary discovery requiring that a number of Australian ISPs disclose the details of customers it alleges have illegally shared copies of its film Dallas Buyers Club.

Rights holders may soon also have recourse under a draft industry code submitted to ACMA by Communications Alliance on behalf of Australian ISPs.
Allens Senior Associate Jesse Gleeson discusses these important milestones in the fight against piracy in Australia.

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Thursday, May 21, 2015

Scintilla TV: Australia's registered designs may see grace period, longer term

There is potential good news for designers who intentionally or inadvertently disclose their design before seeking a monopoly right: ACIP has recommended to the Australian Government that the Designs Act 2003 be amended to include a six-month grace period before filing a registered design.

There may also be other changes such as a 15 year maximum term if Australia seeks to join the Hague Agreement.

Allens Partner Tim Golder discusses design strategy and further potential changes.

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Tuesday, May 12, 2015

Google: sell us your US patents

By Lester Miller, Patent Attorney and Senior Associate

A fortnight-long window just opened to allow patent owners to sell their US patents directly to Google. The window is part of a program called the Patent Purchase Promotion, which is an experiment by Google that invites patentees to nominate a dollar value for a patent at which it will be offered for sale. There will be no negotiation.

Google says in its announcement that it would like to cut out intermediaries and make the patent marketplace more efficient. The conditions include a non-transferable licence back to the owner at no cost, so this experiment may appeal to clients who seek additional traction for their patented concept without losing the ability to commercially exploit the invention themselves in the US marketplace. Only one patent is allowed per offer, but a person or company may offer as many patents as they like under separate offers.

Google has about US$63 billion in cash on hand, and its more than 51,000 patents and patent applications extend across a wide array of technology areas, so it may be time to dig your Rembrandts out of the attic:

• renewable energy: data centres powered and cooled by sea-water;
• implantable devices;
• transport: tunable vibration dampers; and
• apps: ordering ahead with a smartphone

There are some further conditions on this experimental marketplace, including that the company or individual will need to eventually supply relevant US tax ID numbers; a waiver that the offer is not notification of a patented technology for some alternative purpose such as infringement litigation; notification that they are legally able to deal with the patent unencumbered; and that the seller agrees to join any terminally-disclaimed patents with the offered patent.

Google notes that it has no idea how much interest this experiment will generate, and it stresses that any interested potential seller should consult an attorney before proceeding.

Having said all that, if this is all too experimental for you, or there is some other reason for your patent not suiting the promotion conditions, Google has another option to receive patent submissions for sale or otherwise.

The Patent Purchase Promotion window closes at 11:59pm, US Pacific Daylight Time on 22 May 2015.

Let us know if we can help.

Tuesday, May 5, 2015

EA takes one on the chin while Valve's Steam still under fire

By Adrian Chang, Lawyer

Big time game publisher Electronic Arts has bowed to ACCC pressure by pledging to refund customers burned by faulty games purchased through EA's Origin online digital delivery platform.

This latest scalp demonstrates the ACCC's commitment to ensuring that overseas companies marketing their products in Australia do not attempt to dissuade Australian consumers from exercising their legal rights under the Australian Consumer Law by having policies that are inconsistent with those rights.

The Australian competition watchdog accused EA of misleading customers by suggesting that Origin users who purchased games that were faulty or failed to work were not entitled to a refund.

EA has now made court-enforceable undertakings that, for the next three years, it will not make any representations to Australian Origin customers that:
 
  • EA has no refund policy for games purchased via Origin;
  • EA's policies exclude any rights an Australian customer might have under the Australian Consumer Law; and
  • Australian customers are not entitled under any circumstances to a refund from EA for games purchased via Origin.
 
You can see a copy of those undertakings (which also sets out a bit more background) here.

Generally speaking, the Australian Consumer Law requires a retailer (like EA) to give a refund for a product if it is faulty. Like most digital retailers, EA didn't offer refunds for faulty games. However, it does offer a 'Great Game Guarantee'.

On its face, EA's Great Game Guarantee appears to suggest that customers only have very limited timeframes and circumstances in which they may request or receive a refund.

EA appears to have answered its obligations with this addition to its guarantee for Australian customers. In summary, the addition makes it clear that the EA's Great Game Guarantee is in addition to any statutory rights an Australian customer would have under the Australian Consumer Law.

EA is also obliged to amend its other policies and agreements to make it clear that Australian consumers have their statutory rights despite anything else in those policies and agreements.

The action against EA adds to the growing pile of scalps collected by the ACCC based on this issue.

Apple has previously been pinged in relation to its product warranties and the EA undertakings extend the ACCC's reach into the realm of purely digital products.

The ACCC is clearly keen to add Valve Corporation to the pile. Valve, which runs Steam, the grand-daddy of all digital delivery platforms, is duking it out with the ACCC in the Federal Court of Australia over similar allegations. The case is still at a preliminary stage but is set for a trial in July.

Valve's subscription agreement currently includes a special mention to New Zealand customers expressly stating that Valve's no-returns policy does not exclude any statutory remedies under New Zealand's Consumer Guarantees Act.

No doubt the ACCC would like to see a special mention of its own.