Beth Oliak
Beth Oliak
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Ms Beth Oliak, Barrister
Chambers
Tel
Email
Frederick Jordan Chambers
G/53 Martin Place
Sydney NSW 2000
(02) 9229 7343
beth.oliak@fjc.net.au
Beth Oliak
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Stewart, Griffith & Bannister, Intellectual Property in
Australia, 4th ed. LexisNexis, 2014 (“SGB 2014”).
Commentary only, no case extracts.
Ricketson and Richardson, Intellectual Property:
Cases, Materials and Commentary, 5th ed. Lexis
Nexis, 2012
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Copyright law protects creative works by granting exclusive rights to
produce and sell those works
Examples of copyright works include:
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Books
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Painting and sculptures
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Songs and recordings
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Plays, tv shows and movies
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Architectural works
Copyright does not protect ideas. For example, copyright will protect a
movie script but not an idea for a movie
Copyright is a separate right to a property right. For example, you do
not obtain any rights in copyright to a book once you buy it
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Patent law protects inventions by granting exclusive
rights to exploit (e.g., make, use and sell) the inventions
for the life ofpatent (i.e., 20 years from the date of filing
of a patent application)
Examples of patentable subject matter include:
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Electronic devices (such as smartphones, tvs, etc)
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Pharmaceuticals
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Processes (e.g., method of manufacturing steel)
Do not include scientific principles, discoveries (things
that occur in nature), mathematical formulas, abstract
ideas and other intangible concepts
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Trade Marks are used to distinguish the source of
goods and services of one party from those of others
Trade Marks are right that are granted for letters,
numbers, words, phrases, sounds, smells, shapes,
logos, pictures and/or aspects of packaging
Trade Marks provide exclusive rights to commercially
use, licence or sell them for the goods and services
that they are registered under
Examples include: brands, product names, company
names, slogans, catchphrases and logos
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Copyright
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Introduction of printing press (rapid dissemination of
ideas)
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Tudor Dynasty introduce printing monopolies control
publishing – publishers must be members of Stationers
Company (control sedition, heresy and treason)
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1641 - dismantling Stationers Company monopoly
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1709 - Statute of Anne
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Grant rights to authors
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Authors could license to publishers / printers
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Patents
Venetian Statue 1474
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Modern patent statutes derive from Venetian Statute
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Principles are still applicable today (innovation is
promoted by providing incentive for invention)
Statute of Monopolies 1623
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First English patent law statute
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Repealed all past and future patents and
monopolies, except future novel inventions
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Basis for Australian patent law
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Trade Marks
1266 - Bakers Marking Law
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allowed bakers to identify their bread by
stamping or pricking it
1363 - Maker’s Mark Law
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law requiring use of assay and makers
marks by English silversmiths
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Using your IP as a product?
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Copyright
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Patent
Using your IP in connection with their products?
Trade mark / Passing Off / s18 ACL
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Using your IP in creating their products?
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Confidential information
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Patents
Personality-Based
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Protect name/reputation
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Ideas are an extension of our personalities:
individuals have moral claims to their own talents,
feelings, character traits and experiences
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There are many examples of intellectual property
where there is no evidence of the creator’s
personality (process for making steel, customer list,
pharmaceuticals, etc)
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Incentives-Based (Utilitarian)
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Intellectual property rights provide incentives to
innovate and create
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Absent incentives, authors and inventors might not
endeavour to produce intellectual property
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How do we know what the actual costs and benefits
are of intellectual property?
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Is there a better way to stimulate innovation?
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Lockean-Based
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Labouring, producing, thinking, and persevering are
voluntary - individuals who engage in these activities
are entitled to control the fruits of their labour
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Intellectual property rights reward hard work (Locke’s
theory)
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Millar v Taylor (case granting perpetual rights to the
publication of books) per Mansfield LJ:
“It is just, that an author should reap the pecuniary
profits of his own ingenuity and labour.”
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Intangible rights that can be dealt with like
chattels or real property – can be sold,
mortgaged, licenced, bequethed, etc
Difference between IP and real property –
restrictions on ownership (e.g., can deface
the Mona Lisa but cannot copy it)
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The “Public Domain” consists of creative materials that
are not protected by IP laws because:
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they were never entitled to IP rights
they were once protected by IP rights but
entered the public domain when their terms of
protection ended
failure by their owners to take steps to protect
their IP rights
The public owns works in the public domain, i.e.,
anyone can use them without obtaining permission
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Berne Union – copyright works
Rome – broadcasts, sound recordings
Paris – patents, trade marks
WTO TRIPS – Uruguay Round 1995
WIPO – World Intellectual Property Organization
(administers the treaties)
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Power for Parliament to legislate in relation to IP
is provided in section 51 of the Constitution:
The Parliament shall, subject to this Constitution,
have power to make laws for the peace, order,
and good government of the Commonwealth
with respect to: …
(xviii) copyrights, patents of inventions
and designs, and trade marks; …
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Patents Act 1990
Trade Marks Act 1995
Designs Act 2003
Copyright Act 1968
Australian Consumer Law (misleading and
deceptive conduct)
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Tort - Passing off
Misleading and deceptive conduct
Equity - Confidential information
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Technology (Optus Cloud PVR litigation)
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Government inquiries – “Raising the Bar”
amendments (15 April 2013)
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Australia-US Free Trade Agreement (2004)
(includes references to stronger protection
of IP rights)
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Copyleft – Lawrence Lessing, Stanford
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Creative Commons
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Open Source
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Generic drugs
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JT International SA v Commonwealth of Australia
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Roadshow Films v iiNet [2012] HCA 16 (ISPs are
[2012] HCA 43 (tobacco plain packaging laws
did not usurp intellectual property rights of
tobacco companies)
not responsible for what their users do with the
services provided to them)
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Overly strong IP protection
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excessive monopoly
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proprietary solutions
Weak IP protection
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free-riding
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under-investment innovation / distribution
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Jefferys obtains copyright to Giovanni Bellini’s
unpublished opera “La Sonnambula” (Sleepwalker)
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Copyright created in Milan but assigned to
Jefferys in England
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Boosey publishes an unauthorised copy
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Copyright is created by statute but Statute of
Anne only gave English authors copyright (i.e., not
Bellini) – no infringement by Boosey
Case was catalyst for international treaties – Berne
Union
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Countries have different objectives when making and enforcing
laws regarding IP rights:
England
• Protect investment/publishers
• Low threshold
• What worth copying is worth protecting
Continental Europe
• Protect authors
• Higher threshold
• Literary / artistic merit
USA
• Advocates strong IP rights – foreign trade agreements
Japan
• Advocates dissemination of information
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