In the recent judgment State of Escape Accessories Pty Limited v Schwartz  FCA 1606, Justice Davies of the Federal Court of Australia found a fashionable neoprene tote bag was not a “work of artistic craftsmanship” and therefore not an “artistic work” for the purposes of the Copyright Act 1968 (Cth) (the Act). Since the Court found that copyright did not subsist in the State of Escape bag (the Escape Bag), there was no finding of copyright infringement.Read More
Use of Ferrari’s trade mark in a fashion show or on social media requires consent. This is the lesson we assume Philipp Plein has recently learnt following a couple of legal defeats before the Italian Courts that ruled in favour of Ferrari.
In a ruling issued by the Court of Genova last June, the Court ruled in favour of Ferrari for the illegitimate use of Ferrari’s trade marks on Plein’s Instagram account. The designer on that occasion posted several pictures as well as Instagram stories showing some of his clothing line with Ferrari’s trade marks in the background. Ferrari successfully argued that in those shots Philipp Plein was unlawfully appropriating the positive image and reputation of the well-known car company by using its trade marks for promotional purposes.
In another recent case, the Court of Milan ordered Plein to remove from its website, social media, and other online platforms all the videos and images showing Ferrari cars and trade marks. The Court also ordered the payment, in favour of Ferrari, of €300,000 in damages plus legal fees as well as the publication of the decision in two national newspapers. Furthermore, in the event in which that Philipp Plein would not promptly remove the contested images and videos representing Ferrari cars and trade marks, it will have to pay a penalty of €10,000 for each day of delay in the removal of the infringing images and videos. To view the decision, click here.Read More
In April, we wrote about the judgement Boomerang Investments Pty Ltd v Padgett (Liability)  FCA 535 (Decision), in which Glass Candy and Air France were found to have infringed the copyright in the well-known 1970s hit song “Love is in the Air” (Love).
Now, in the recent judgement Boomerang Investments Pty Ltd v Padgett (Scope of Injunction)  FCA 1413, the Federal Court of Australia has finalised the injunctive orders necessary to give effect to the Court’s earlier conclusions on the issue of liability in the Decision, amongst other matters.
Principally, Justice Perram addressed the appropriate injunctive relief against Air France in relation to its use of the adaptation of the infringing song “Warm in Winter” (Warm) called “France is in the Air” (France).
Air France contented that the injunction should only go as far as preventing the act of infringement which it was found to have committed, being the use of France as hold music for callers to its Australian toll-free number. However, Justice Perram agreed with the applicants that a wider injunction to restrain Air France from communicating France to the public without the licence of the copyright owner was appropriate.
This would encompass:
- allowing France to be played on Air France’s YouTube channel (or other such channels) if the licensing arrangement with APRA was altered in the future such that ‘infringing uses’ of Love were no longer covered by the APRA licence
- further efforts by Air France to use France on services which do not hold an APRA licence, and
- the authorisation by Glass Candy of any such conduct.
Justice Perram ruled that a wide injunction was appropriate, as there was risk of Air France repeating the infringing behavior which, absent the licence of the copyright owner, ought to be restrained. This was especially so due to the fact that Air France had declined to undertake not to continue using France, leaving open the possibility for Air France entering into a fresh licence agreement for the use of France with Glass Candy and recommencing its ad campaign.
It was decided that the injunction would refer to the ‘copyright owner’ rather than a specific party, to account for any future ownership changes.
Declaration of flagrancy
Justice Perram held that it would be inappropriate to make a declaration regarding the flagrancy of Air France and Glass Candy’s conduct, since:
- the various factors for assessing additional damages set out in s 115(4)(b) of the Copyright Act 1968 (Cth), which includes the flagrancy of the infringement, were neither necessary nor sufficient conditions for the award of additional damages. Rather, these factors, like any finding of flagrancy, are intermediate steps along the way to another legal conclusion, and
- the claim for damages against Air France failed as the owner of the communication right comprised in the right to digitally stream Love was incorrectly identified by the applicants (as detailed in the Decision).
Assessment of additional damages
Glass Candy submitted that the Court should not proceed to any assessment of additional damages since the conduct found to be flagrant in the Decision related to the creation of Warm and not the infringements that the Court found Glass Candy committed (which mainly related to the exercise of the communication right in Love). Justice Perram acknowledged that there might be some force in these submissions, but that the additional damages case should proceed.
While the Court found a broad injunction to prevent the widespread communication of a musical work was appropriate in this case, a declaration of flagrancy was not.
Further developments will be reported once damages are assessed.
In its recent judgment (Boomerang Investments Pty Ltd v Padgett (Liability)  FCA 535), the Federal Court of Australia has found that an American electronic musical duo copied the celebrated Australian disco song ‘Love Is In The Air’. The decision confirms that the sound of lyrics as sung forms part of a musical work. Furthermore, a short sung lyric with attending music can be the ‘essential air’ of a song.
While determining only “modest” levels of copyright infringement occurred and dismissing most claims for damages, Justice Perram described the copying as “flagrant” and indicated there will be a further hearing to assess damages.Read More
In a Halloween decision, the Federal Circuit issued its opinion in Arthrex, Inc. v. Smith & Nephew, Inc. et al., an appeal from IPR2017-00275. Without wading into the technical merits of the decision, the three judge panel of Judges Moore, Reyna, and Chen, issued a decision that, at first glance, sent tremors through those who practice before the PTAB in AIA-based post-grant review proceedings: finding the appointment of PTAB judges unconstitutional.Read More
B.E. Technology LLC v. Facebook, Inc., Appeal No. 18-2356 (Fed. Cir. Oct. 9, 2019) identifies what it means to win in a case. More particularly, the Federal Circuit explained how to determine whether a party is “the prevailing party.” B.E. Technology (“B.E.”) brought a patent infringement suit in district court against Facebook and the case was stayed pending inter partes review. The Patent Trial and Appeal Board ultimately held the claims of the patent in question to be unpatentable, which was confirmed on appeal.Read More
On 22 January 2018, Justice Martino of the Supreme Court of Western Australia delivered his judgment in the case of Milankov Designs & Project Management Pty Ltd v Di Latte & Anor, a copyright infringement case in respect of house plans.
Mr and Mrs Di Latte engaged the plaintiff, Milankov Designs & Project Management Pty Ltd (Milankov), to design and prepare drawings for a home to be built at the Di Lattes’ property. The agreement provided that Milankov would prepare plans for stages of the design and build process – first, the development stage and, second, the construction drawing stage. The Di Lattes agreed to pay Milankov a percentage of the build cost, to be billed to the Di Lattes at various stages throughout the process.
After Milankov had prepared the stage one plans (including plans submitted to council for building licence approval) and the Di Lattes had paid several invoices issued by Milankov, the relationship between the parties broke down. The engagement contract was terminated by the Di Lattes, and Milankov promptly wrote to the Di Lattes putting them on notice that Milankov owned copyright in the plans it had created and that the Di Lattes were not entitled to reproduce the plans without its permission, including by building the house at their property.
Nonetheless, the Di Lattes proceeded to engage an architect to create plans including construction drawings by copying Milankov’s plans, and then to construct a house in accordance with the design.
On September 29, a jury in California awarded Columbia Sportswear more than US$3.4 million for infringement of its design patent on heat-reflective technology for clothing and outdoor gear. Columbia accused Seirus Innovative Accessories of infringing its utility and design patents for its wavy lining material, which reflects body heat, but allows for breathability and moisture-wicking. This appears to be the first jury verdict on a design patent after the Supreme Court’s decision in Samsung v. Apple.
The Full Court of the Federal Court’s decision in Coretell Pty Ltd v Australian Mud Company Pty Ltd  FCAFC 54 has clarified the date from which the owner of an innovation patent is entitled to compensation for infringement of the innovation patent. In the case of an innovation patent which has been filed as a divisional application, the Court’s decision significantly alters the time from which relief can be claimed, and has the potential to dramatically reduce the amount of compensation to which the patentee is entitled.
A previous decision of the Federal Court of Australia (Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 3)  FCA 1019) held that the owner of a divisional innovation patent was entitled to relief from the date that the “parent” application became open for public inspection (OPI). This allowed a patentee to strategically file a divisional innovation patent with claims tailored to read on to a competitor’s conduct, and then claim relief from the parent’s OPI date (which may have been some years earlier). As Justice Burley noted in Coretell, this produced the unattractive result of a person being liable to pay compensation for acts of infringement pre-dating the existence of the innovation patent said to have been infringed.
Justice Burley (with whom Justice Nicholas and Jagot agreed) corrected this anomaly and made clear that the relevant date for relief for infringement of an innovation patent is its date of grant. This diminishes the strategic benefit of patentees filing divisional innovation patents – although divisional innovation patents can still be tailored to target the conduct of a potential infringer, the patentee will only be entitled to relief from the date the divisional innovation patent was granted, and therefore publicly accessible, and not before.
It seems only fitting that with “Schoolies Week” around the corner, the Federal Circuit Court has delivered judgment in the matter of Weller & Anor v Smith  FCCA 2827 which relates to intellectual property rights and commercial reputations in the jelly wrestling products industry.
The matter relates to a dispute between the partnership of John Weller and Jake Weller trading as “Crazy Town Parties” and Ian Smith.
The Wellers trade in the party supply and party hire industry. One aspect of their business is the sale of a range of products, including a substance sold in crystalline form, that are used for jelly wrestling. The Wellers utilise a number of photos for marketing purpose in both digital and hardcopy formats including on the packaging of their jelly wrestling products.