The High Court of New Zealand in Energy Beverages LLC v Frucor Suntory NZ Limited  NZHC 3296 ruled that energy drink company Frucor Suntory NZ Ltd’s (Frucor) non-traditional green colour trade mark was valid. This decision is a rare example of a New Zealand based Court analysing non-traditional marks and highlighting the difference to Australia’s position. A full copy of the decision can be found here.Read More
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
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 the case Kraft Foods Group Brands LLC v Bega Cheese Limited  FCAFC 65, the Full Court of the Federal Court of Australia has dismissed Kraft’s appeal of a decision entitling Bega to exclusive use of the iconic yellow lid and yellow label with a blue or red peanut device on its peanut butter jars.Read More
The Federal Court of Australia recently handed down its decision in the copyright case of Hardingham v RP Data. This decision serves as a warning about the risks of informal licensing arrangements. The case centres around copyright infringement regarding the use of photographs and floorplans without authority.
The applicants in the case were Real Estate Marketing (REMA) and its sole director, Mr Hardingham. REMA had been operating its business since 2009 and entered into informal agreements with real estate agencies to create and provide photos and floorplans of properties for marketing campaigns. It was understood by REMA that, as part of marketing campaigns, the agents would upload the commissioned photos to platforms such as realestate.com.au. However, the scope of the permitted uses by the agents was not clearly agreed or recorded in writing.Read More
The Federal Court of Australia has found that the use of “SENSES DIRECT” was deceptively similar to an applicant’s earlier registered “SENSIS” trade marks. Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd  FCA 719 concerned the Australian marketing and advertising business, Sensis (Applicant), who brought a claim for trade mark infringement against Senses Direct Mail and Fulfillment (Respondent), a direct mail services business. The Respondent cross-claimed on the grounds of non-use, arguing for the removal of SENSIS from the Trade Mark Register in relation to certain class 35 services.Read More
What you need to know
- Under Australian law, an entity can’t transfer an unregistered trade mark to another entity without also transferring its entire business.
- To transfer a trade mark without transferring a business, the transferor first needs to register its trade mark.
- Failing to register a valuable trade mark used in a business can have major unforeseen consequences in the context of M&A transactions, especially where the business is operated by a subsidiary in a corporate group.
Small businesses and individual rights holders are set to benefit from the Intellectual Property National Pilot Scheme in the Federal Circuit Court
A specialist IP list in the Federal Circuit Court of Australia (FCC) is open for business, with the goal of achieving quick, cheap and effective dispute resolution of intellectual property matters.
The Intellectual Property National Pilot Scheme commenced on 1 July 2018 and appeals to small and medium-sized enterprises, individual rights holders and young innovators who may have previously avoided the court system even though they had a legitimate right or a good defence, but found that it simply wasn’t worth the fight.
Proceedings recently commenced in the Federal Court of Australia by the Scotch Whisky Association (SWA) serve as a reminder of the ability to use the trade mark system to protect Geographical Indications (GIs) in Australia. The use and protection of GIs in Australia will be of particular interest to followers of the Australian-European Union free trade negotiations, where GIs have been flagged by the European Union as a critical issue.