Therese Catanzariti
Therese Catanzariti
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Ms Therese Catanzariti, Barrister
Chambers
Tel
Fax
Email
13 Wentworth Chambers
174 – 180 Phillip Street
Sydney NSW 2000
(02) 9232 7750
(02) 8023 9546
tcatanzariti
@wentworthchambers.com.au
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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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◦ Introduction of printing press
= > rapid dissemination of ideas
◦ Tudor Dynasty introduce printing monopolies
control publishing – publishers must be members of
Stationers Company
= > control sedition, heresy and treason
◦ 1641
◦ 1709
dismantling Stationers Company monopoly
the Statute of Anne
 grant rights to authors
 authors could license to publishers / printers
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Patents – Venetian statue 1474
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Trade marks - 1266 Bakers Marking Law
Pat-a-cake, pat-a-cake baker's man
Bake me a cake as fast as you can
Prick it and pat it and mark it with a "b"
And put it in the oven for Billy and me
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right to exclude
NOT exclusive right to possess
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don’t “lose” IP if use without permission
User can still use the IP
lose potential profit
Is that theft?
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IP legislation protects exploitation
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Personal
◦ protect name / reputation
◦ Protect “spirit of personality”
◦ Reward – fruit of labour / Locke
◦ ”because it is just than an author should reap the pecuniary profits of his
own ingenuity and labour” - Millar v Taylor per Mansfield LJ
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Economic:
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Market – based:
◦ Incentives to invent and create
- protect creator / commercial investors investment
◦ Incentives to disclose
◦ Prevention of unfair competition
What is worth copying is worth protecting
◦ Consumer protection – assurance of quality
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Sell, mortgage, licence, bequeth
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Not absolute right
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created and shaped by law
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law gives … and law takes away
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balances rights of creator v rights of public
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Using your IP as a product?
Copyright
Patent
Using your IP in connection with their products?
Trade mark / Passing Off / s18 ACL
Using your IP in creating their products?
Confidential information
Patents
therese catanzariti 13 wentworth chambers
tcatanzariti@wentworthchambers.com.au
 51
Legislative powers of the
Parliament
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
Moral rights?
Anti-circumvention rights?
Circuit layouts?
Plant Variety Rights?
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Tort - Passing off
Misleading and deceptive conduct
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Equity - Confidential information
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Information that was never protectable
Information that was protected but entered
public domain when term of protection ends
Information that may be protected but not
protected because fail take steps to protect
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◦ technology – eg PVR
◦ lobbying
◦ government inquiries – “Raising the Bar”
◦ international obligations – US FTA
◦ case law – iinet v Roadshow
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Copyleft – Lawrence Lessing, Stanford
Creative Commons
Open Source
Generic drugs
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JT International SA v Commonwealth of
Australia [2012] HCA 43
(Tobacco Plain Packaging)
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• Overly strong IP protection
= > excessive monopoly
= > proprietary solutions
• Weak protection
= > free-riding
= > under-investment innovation / distribution
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Giovanni Bellini’s unpublished opera
“La Sonnambula” (Sleepwalker)
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Copyright therefore created in Milan
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Assigned to Jefferys in England
What was assigned?
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catalyst for international treaties – Berne Union
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◦ Copyright created by statute
BUT Statute of Anne only gave English authors copyright
◦ Italian property?
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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
organisation
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England
◦ Protect investment / publishers
◦ Low threshold
◦ What worth copying is worth protecting
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Continental Europe
◦ Protect authors
◦ Higher threshold
◦ Literary / artistic merit
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Objectives
Art. 7
 The protection and enforcement of intellectual
property rights should contribute to the promotion of
technological innovation and to the transfer and
dissemination of technology, to the mutual advantage
of producers and users of technological knowledge
and in a manner conducive to social and economic
welfare, and to a balance of rights and obligations.
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Good for IP exporting countries
Protects the exploitation of their creation
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Good for IP importing countries
Access to IP that producer would otherwise not
allow access to because of risk of copying
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Public Good??
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Piratpartiet (Swedish Pirate Party)
http://www.piratpartiet.se/international/english
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