Australian Regulatory Compliance Review

Nine wins Ice TV appeal

In Nine Network Australia Pty Limited v IceTV Pty Limited  [2008] FCAFC 71 the Federal Court of Australia Full Court allowed Nine's appeal against the original decision (discussed here) which permitted Ice to reproduce Nine's TV schedules in electronic form.

The Full Court decided that Ice TV had infringed Nine’s copyright in its television program schedules by indirectly copying  a substantial part of the television guides.

On the issue of substantiality of the copying the Court decided:

Ice’s use of time and title information, derived ultimately from the Weekly Schedules, involved the reproduction of more than a slight or immaterial portion of Nine’s copyright work...Ice appropriated many pieces of the time and title information, apparently on a weekly basis. It did so in order to create something commercially valuable out of templates that otherwise would have had no commercial value to it...When the quality of the material taken by Ice is considered, the substantiality of the part taken becomes even clearer.  Ice took, via the Aggregated Guides, precisely the pieces of information that reflected the exercise of skill and labour by Nine in determining the program for a particular day or other period.

On whether there was a link between the time and title information in IceGuide and Nine's Weekly Schedule the Court said:

Ice used Nine’s copyright work by indirectly copying time and title information from the Aggregated Guides.  Ice could not fulfil the requirements of its business model unless IceGuide incorporated accurate and up-to-date details of Nine’s programming schedule...Ice in fact updated and confirmed the accuracy of its database by accessing, on a regular and systematic basis, the Aggregated Guides.  Ice took time and title information from, and checked other details against, the Aggregated Guides.

For an analysis of the decision see Kim Weatherall's comments here.

.au domain name registration and transfers policy

A new policy on transfers of .au domain names will take effect on 1 June 2008.

auDA (the Australian Domain Name Administrator) has announced that key features of the new policy are as follows:

• it will not be allowable to register a domain name for the sole purpose of resale or transfer to a third party
• registrants will not be able to transfer their domain name for the first 6 months after the initial registration (this does not apply to domain names that have been renewed or previously transferred)
• after 6 months, registrants will be able to offer their domain name for sale/transfer by any means (eg. by listing the domain name for sale on a domain brokerage website, advertising the domain name for sale in a newspaper, or contacting a prospective buyer directly)
• the new registrant must comply with normal eligibility and allocation rules:
  registrant transfers will be processed by the registrar of record using a standard transfer form, and the registrar may charge a transfer fee
• parties to a transfer will be asked to disclose the sale method and price, on a voluntary and confidential basis, so that auDA may collect aggregated statistical data to improve access to market information for buyers and sellers.

The current Transfers (Change of Registrant) Policy (2004-03) remains in force until 1 June.

Cadbury fails to stop Darrell Lea from using the colour purple

In a partial rehearing of its passing off action against Darrell Lea, Cadbury has failed to stop Darrell Lea from using the colour purple.[ Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 8)  [2008] FCA 470]

Even though certain expert evidence had to be heard, the trial judge thought the evidence made no difference and rejected Cadbury's long-running claim.

I am not persuaded that Darrell Lea, in using the colour purple, has passed off its business or products as those of Cadbury or contravened the Trade Practices Act.  I am not satisfied that such usage has resulted, or would result, in a hypothetical ordinary and reasonable member of the class constituted by prospective purchasers of chocolate being misled or deceived, contrary to ss 52 or 53(c) and (d).

Copying other people's designs (update)

I previously noted some recent cases on design copyright infringement, including Barrett v Metricon.

In Barrett Property Group Pty Ltd v Carlisle Homes Pty Ltd [2008] FCA 375 the Federal Court has upheld Barrett's claim that Carlisle has infringed their copyright by reproducing in its Provence home a "substantial part" of the copyright works in a home design and building , namely the al fresco dining area, first marketed by Barrett under the name Seattle.

Copyright review

The Government has released an Issues Paper (pdf)calling for submissions on whether sections 47J and 110AA of the Copyright Act 1968 which permit photographs and cinematograph films to be reproduced in a different format for private use, subject to certain conditions, are operating satisfactorily or whether either provision should be modified in some way.

The closing date for submissions is 29 February 2008.

Australian domain name disputes update

Australian cricket captain Ricky Ponting has lodged an application (set for hearing in the Federal Court on 8 February 2008) claiming misleading and deceptive conduct against the operator of a website which described itself as "the official Ricky Ponting site": Ricky Thomas Ponting v Kevin Leonard Consulting Pty Limited (ACN 087 382 858) & Anor (also see Computerworld story)

It is not clear why Ricky Ponting has chosen litigation rather than the domain name disputes resolution procedure administered by .auDA. [UPDATE 17 January: David Starkoff comments]

UPDATE 13 February 2008: Ricky Ponting discontinued his action on 8 February.

According to this data from the World Intellectual Property Organization 2007 was a record year for domain name disputes. Disputes are dealt with under ICANN's Uniform Domain Name Dispute Resolution Policy (“UDRP”)

The auDRP is an adaptation of the Uniform Dispute Resolution Policy (UDRP) administered by ICANN with respect to the generic top level domains such as .com.

auDA can compel dispute resolution where:

(i) a domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights; and
(ii) the domain name owner has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or subsequently used in bad faith.

The complainant has the burden of proof.

The Australian 2007 decisions made by WIPO include decisions to transfer the domain name to the complainant as well as cancellation of the name.

The WIPO Domain Name Dispute Resolution Service has resources and past decisions.

In the UK recently Maestro (a subsidiary of Mastercard) failed in its attempt to stop another organisation using maestro.co.uk.

The appeal panel ruled that it did not prove the case that the registration was abusive, and that because maestro is a normal word with a dictionary definition it could not monopolise its use in domain names just because it also happened to be one of its brands.

auDA's policy states that it accepts that a complainant has rights in the complainant's personal name.

International trade mark registration

The Madrid System provides the means to file a single application, in one office, in one language, with a single fee, and secure trade mark protection in multiple countries.

The advantages and disadvantages for Australian trade mark owners are discussed in this article by Nick Weston.

Proposal for Anti‑Counterfeiting Trade Agreement

The Department of Foreign Affairs and Trade has issued a discussion paper to provide information on a new treaty being proposed by Japan, the EC, the US and Switzerland, provisionally called the Anti‑Counterfeiting Trade Agreement (ACTA).

The ACTA is proposed to establish a new standard of intellectual property rights enforcement to combat global counterfeiting and piracy.

DFAT welcomes submissions from individuals and groups with views on Australia entering into negotiations on ACTA. Participation in such negotiations would be without prejudice to a final decision as to whether Australia would join any future treaty.

Copyright amendments under fire

The Copyright Amendment Bill is an example of legislation compiled to deal with a range of specific issues in rapidly-changing industries:  there are too many "unintended consequences".

The Bill has attracted criticism from lawyers, technology companies, the education sector and civil liberty groups. (see all submissions). No one is happy or understands its impact.

It is not clear yet how Mr Ruddock will respond.

Copyright amendments

The Attorney-General intends to introduce the Copyright Amendment Bill 2006 into the Parliament in October and to refer the Bill to the Senate Standing Committee on Legal and Constitutional Affairs for consideration following its introduction.

The Bill will contain amendments to implement the outcome of various reviews the Government has conducted including:

• the ‘Fair Use and Other Copyright Exceptions Review’,
• the review of the 2001 Digital Agenda reforms,
• the subscription broadcast review and
• the harmonisation of criminal law provisions with the Criminal Code Act 1995 and Australian Government criminal law policy.

It will contain amendments to implement Australia’s remaining obligations under the Australia-United States Free Trade Agreement in relation to technological protection measures (TPMs). Drafts of the TPM amendments have already been released.

The Bill will also contain other initiatives that the Government has been working on such as measures to improve Australia’s copyright enforcement regime and amendments to implement various reforms concerning the Copyright Tribunal.

Australian copyright reform

The Attorney-General has announced proposed changes to the current law. A draft exposure Bill will be released in the near future to enable consultation with stakeholders. More

Australian Spam Act review announced

The Minister for Communications, Information Technology and the Arts, Senator Helen Coonan, has called for public submissions as part of a review of the Spam Act 2003.

Feedback received will contribute to a report to be tabled in Parliament in 2006.

Industry and members of the public are invited to make submissions to the Spam Act 2003 review by Wednesday 1 February 2006.

An issues paper is available

Financial institutions, privacy, EFT Code and deceased estates

Digital Property and the Laws of Inheritance from TechNews World discussses whether executors have the right to obtain passwords to websites and email services used by a deceased.

Starting with a discussion of the Yahoo case when Yahoo refused to give the parents of a US Marine killed in Iraq access to their son's email account without court approval, the article then considers wider inheritance issues.

How does this apply to Australian internet service providers and financial institutions?

Assuming the provider or the institution can even access your personal confidential password, the general principle is that the provider will not release a person's personal information without proof that the third party enquirer is properly authorised either as an attorney (if the account holder is still alive) or an executor or administrator (if the account holder is deceased).

Section 69AA of the Banking Act only gives ADI's the power to deal with a deceased's depositor's  money in an account; it does not discuss the right to other information such as passwords. Usually a financial institution will only disclose information to a person who claims to be an executor after they produce a certificate of death and evidence of their appointment as executor or administrator.

In Australia, the EFT Code is silent about a person or their financial institution giving their estate details of their passwords to different accounts. The assumption must be that in giving your password to your executors you have authorised any electronic transaction they undertake.

The bottom line is that passwords and usernames which give access to online data such as financial records, journals, emails and photos can be just as valuable as cash and property and should be securely stored in a place accessible to beneficiaries. An online business customer should not assume that their estate will automatically be given their information by their service provider.

UPDATE 16 June: I have just received a notice from my telecommunications provider that it has amended my general terms to clarify that "personal information" may include numbers I have called, the time of a call and the location of a call. The amendment allows it to disclose personal information to emergency services organisations. No mention of disclosure to my estate.

eMarketing Code, m-commerce and Spam Act

The Australian Communications Authority has registered the Australian eMarketing Code of Practice.

The code sets industry-wide rules and guidelines for the sending of commercial electronic messages in accordance with the Spam Act 2003.

Registration means that the ACA can enforce compliance with the code rules on all members of the e-marketing industry, as defined by the Telecommunications Act 1997, and not just signatories to the code.

“The code provides a framework of practical advice and guidance for the e-marketing industry to use e-marketing responsibly, to handle any complaints about practices that might be spamming and to monitor industry compliance,” ACA Acting Chairman Dr Bob Horton said.

“The code also provides consumers with a clear understanding of e-marketing industry processes and benchmarks for sending commercial electronic messag

Under the Telecommunications Act 1997 e-marketers are defined as those who use e-mail or mobile telephones as their main marketing tool, or who market in this way by contract or arrangement on behalf of a third party.  However, businesses other than e-marketers are likely to follow the code to ensure best practice and compliance with the Spam Act.

Under the Telecommunications Act, the ACA has the power to direct any e-marketer who has contravened the code to comply with it.  If an e-marketer fails to comply with a direction, the ACA can then take the matter to the Federal Court which can impose penalties of up to $250,000 for each contravention.

The ACA also recently released an m-commerce guide.

New Communications Regulator

The Australian Communications Authority and the Australian Braodcasting Authority will merge on 1 July to form the Australian Communications and Media Authority.

Copyright Update

The Copyright Legislation Amendment Act 2004 received assent on 15 December 2004.

In addition to amendments relating to the extension of the term of copyright protection in the USFTAI Act, the Amendment Act makes a number of amendments to provisions of the Act relating to criminal offences, presumptions, the exception to the reproduction right, and the scheme for limitation of remedies available against carriage service providers. The amendments made to the Act by the USFTAI Act and the Copyright Legislation Amendment Act 2004 detail the nature of the limitations on remedies and set out the conditions that must be satisfied by a carriage service provider, in relation to certain online activities, before the limitations apply.

The Copyright Amendment Regulations 2004 amend the Copyright Regulations to provide procedures that form part of the conditions that must be satisfied by carriage service providers who intend to take advantage of the scheme.  The Copyright Amendment Regulations 2004 were gazetted on 23 December 2004 and will come into effect on 1 January 2005.

Australia US Free Trade Agreement

The Copyright Legislation Amendment Bill 2004 has been introduced into the Senate.

The Bill contains additional amendments agreed to by Australia in order to implement the Free Trade Agreement. See the correspondence between Vaile and Zoellick.

The Bill broadens criminal liability for breaches. It also makes temporary copies of illegal copies unlawful.

Free Trade Agreement ready to start

Australia’s Trade Minister Mark Vaile and the US Trade Representative Bob Zoellick have announced that the final arrangements are complete to allow the Australia-United States Free Trade Agreement to enter into force, on schedule, on 1 January 2005.

It is expected that legislation to implement the agreement will be introduced into parliament soon.

Mortgage brokers' advertising

ASIC has issued a warning to the mortgage broking industry regarding misleading advertising.

'Don't claim that you are independent or impartial if that's not true', Mr Greg Tanzer, ASIC's Executive Director of Consumer Protection and International said.

'In every case that we have examined to date, we found such claims were misleading. For example, you cannot be totally impartial if you only deal with a limited panel of lenders who are paying you commission', Mr Tanzer said.

Mr Tanzer issued the warning after ASIC accepted an enforceable undertaking from Structured Financial Solutions Pty Ltd not to use the words 'impartial' or 'independent' in any future advertising or promotional material.

ASIC considered the claims misleading and deceptive because Structured Financial Solutions advises consumers only about the lenders appointed to its panel. All of the lenders on the panel pay commission to Structured Financial Solutions.

ASIC has previously taken action against Fintrack and Mortgage Choice.

Labor's FTA Bill amendments

Labor has released details of its amendments to the FTA Bill in the Senate.

The amendments focus on the certificate patent holding companies must issue when they seek to use the courts to block cheaper generic drugs coming to market.

FTA Update

The Government and the Opposition are in an arm wrestle over whether or not the Opposition's amendments to prevent "evergreening" by big pharmaceuticals are necessary or not: the Prime Minister says they're not necessary so Labor says in that case why not agree?

The academics who've researched the issue are being careful not to take political sides. They say that Labor's amendments may not prevent evergreening.

They have released their submission to the Senate Select Committee which says, amongst other things:

"The text of the Agreement is unbalanced and most of the measures increase the pricing power of US drug companies operating in Australia. It is inconceivable, based on past practice, that they will not make use of that new pricing power."

"Other measures will also have the effect of delaying the development and approval of generic versions of drugs. The major companies will, therefore, have a longer period free of competition, during which they can enjoy much higher prices than they could achieve in a competitive environment.

A recent study by the Australia Institute found these measures were likely to delay the development of generic drugs in Australia by around three years. It estimated the cost of this to the PBS for the five drugs examined by the study was more than $1.1 billion for the period 2006-2009. "

US Free Trade Agreement Update

ALP Leader Mark Latham has announced that the Federal ALP has decided that as the Agreement has net economic benefits for Australia it will be supported by Labor.

Mark Latham proposes to tie Labor's support to amendments to safeguard the pharmaceutical benefits scheme (PBS) and local content in the Australian media.

Last night the ABC's Four Corners examined the effect of the FTA on Australia's pharmaceutical benefits scheme and the relevance of the IP Chapter of the FTA in assisting US pharmaceutical manufacturers to impede the sale of generic products in Australia.

The FTA legislation is expected to be debated in the Senate this week.

Free Trade Agreement

The US Free Trade Agreement has been signed.

The next step is the approval of the Australian Parliament.

The US Free Trade Agreement Implementation Bill was passed by the House of Representatives on 24 June and is awaiting Senate consideration.

Amongst the most controversial provisions are those in Schedule 9 of the Bill relating to copyright.

If passed, the current Australian copyright period of 50 years after the author's death will be extended to 70 years to match the US laws.