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2005 was one of those years where the IP developments just kept coming. Kazaa, Fair Dealing/Fair Use, a TPM law inquiry, Stevens v Sony, the occasional patent judgment, another government inquiry. And that’s just the Australian stuff. We also of course had stuff like the Grokster judgment, developments in the Blackberry litigation … more treaty-making. It was hard keeping up. Matt Rimmer has done a run down over here.

Instead of doing my own round up, I thought it might be fun to list up the things that are still to come in Australian IP. Just so I can feel exhausted before we even really start the year. So, over the fold, my round up of developments to expect, and issues to come, in Australian IP law.

Here’s what I’ve thought of so far. Feel free to email me (or comment below) if you can think of more. There are bound to be some things I’ve missed.

Copyright

What can we expect in Copyright law developments this year? Well, here’s what I can tote up off the top of my head.

First, we can expect some outcomes from the Fair Dealing/Fair Use Inquiry (fondly known as the iPod inquiry). The Attorney-General, at last year’s Copyright Symposium, promised us some outcomes, particularly on the legitimacy of personal copying. So we might see:

1. ‘new exceptions to recognise some everyday forms of private copying that do not harm copyright owners such as “time-shifting” (eg. taping a TV show to watch at a later time) and “format shifting” (eg. putting a CD you have bought onto your IPod)’. Back in November, it sounded like their might be some doubt about whether such defences would actually eventuate – the AG noted in his speech that ‘before taking these options to Government, I have asked my Department to undertake a further targeted round of consultations with key stakeholders’ – a fact pointed out by Warwick Rothnie at the time, when he noted that ‘[on] what, if anything, is actually going to happen on the fair use/private copying front, we shall have to wait and see’. However, the Australian media have clearly decided that we will get such a defence. In December, there was a little outbreak of stories (here, and here – noted in the blogosphere here (Geist) and here (Lessig)). And according to this weekend’s Age, one of the ‘areas of action’ to watch out for in 2006 (up there with Hugh Jackman, Greek food, and pigs with personality) is fair use. to quote the story:

‘A nation of criminals will return to the right side of the law this year when the Government finally includes a “fair use” exemption in Australia’s tough copyright laws.

It will finally be legal to tape a television show or copy a CD to your MP3 player.

Attorney-General Philip Ruddock confirmed last week that these “common sense” exemptions would soon be made law – although it’s not yet certain how many copies we could legally burn of our favourite playlists.

One? 500? It’s so easy for anyone to copy, quote and sample the work of other people, there are other, thornier issues to resolve.’

2. a new extended dealings exception that can apply to a wider range of permitted uses’ – perhaps something that will cover parody? Or a ‘catch all’ type additional exception?

It’s not clear whether we will see anything dealing with the other significant issue raised in many submissions to that inquiry – the orphan works issue. It wasn’t mentioned by the AG in his speech.

Second, we can expect the outcomes of the Digital Agenda Review: huh, I hear you ask? Isn’t that outdated? Well, we could still expect some outcomes on the matters not rendered entirely obsolete by the Australia-US FTA. In particular, there might be some changes to the Library/Educational provisions of the Digital Agenda Review, piggy-backing off both the original Digital Agenda Review, and the Fair Dealing Inquiry where these matters came up again. Possibly too, we might see some changes in relation to provision of access for the visually disabled – even CAL, in its recent submissions, has noted the inadequacy of these exceptions.

We can also expect some movement in relation to anti-circumvention laws: sometime this year, laws implementing Article 17.4.7 of the AUSFTA must be passed to take effect from 1 January 2007 (Article 17.12). So, presumably, the LACA will report on appropriate exceptions (their report is due by the end of February 2006), then we will (presumably) see some draft legislation. Expect action here soon. Personally, I’ll be watching for a few things:

1. whether the Sony debacle in October-November 2005 (where Sony DRM opened up major security holes in individual users’ computers – see Felten for backstory) makes any impact on what the Australian government says about DRM and anti-circumvention laws. As I’ve noted in a previous post, it’s not self-evident to me that our current laws regarding consumer protection and computer security would protect Australian users in a similar situation – you could make an argument, but it would be a difficult, expensive piece of litigation to run because the application of laws to the situation is neither clear, nor easy. Michael Geist, in Canada, has argued that the settlement of a class action against Sony offers a model for legislative action controlling how DRM is used. A good idea? Worth thinking about, at any rate.
2. What the government ends up saying about the process for getting exceptions to DRM-protection laws. One of the most notable features of the process so far has been the confusion evident regarding how exceptions are to be created, why the LACA was tasked with creating exceptions to a ban not yet framed, etc. Watch what happens next – open consultations on a draft? I hope so.

And, of course, there’s the Kazaa case (you know, the Australian equivalent of Grokster, where the liability of P2P software providers for copyright infringement is being considered). At the moment, in that case (and as far as I know):

1. The appeal from the judgment of Justice Wilcox, who held Kazaa liable for authorising infringement by providing P2P software, is listed for hearing from 20 February 2006 – 24 February 2006, in Sydney (before Branson, Lindgren and Finkelstein JJ – they’ve pulled out the big (IP) guns!). That means we can expect (assuming the case goes ahead) a judgment sometime in 2006 in that appeal.
2. a motion to hold Sharman liable for contempt is listed for hearing on 30 January 2006. This motion results from Sharman’s alleged failure to comply with the order of Justice Wilcox to make changes to its technology to limits/prevent further authorisation of copyright infringement. Sharman argue they have complied by preventing downloads of the Kazaa software to Australian computers. It’s interesting too that the notice of motion for contempt is not the only notice of motion listed that day. Back in December the Music Companies were given leave to file ‘any other Notice of Motion dealing with issues of relief in this case’ by December 19, and a motion certainly was filed that day. Since the notice is not online, it’s not clear to the outsider what’s involved there.

Another issue we may see some movement on is more general issues of enforcement. In November 2005, the Attorney-General foreshadowed amendments introducing ‘new enforcement measures’. According to the AG, his guiding philosophy is that while we should ‘ease the law for Australian consumers’, we should also take:

‘tougher measures to deal with copyright pirates who make a profit or cause significant damage by ripping off other people’s material’

It’s not clear what this would mean. Does this mean higher penalties? More use of criminal enforcement against the pirates? Or is the government planning to comply with a long-held US desire – to introduce into Australia statutory damages for infringement? Maybe a combination of all these. One thing that does look like being considered in 2006 is the use of criminal penalties. A general review of criminal penalties in Commonwealth legislation by the Attorney-General’s Department was due to commence in late 2005 – this is supposed to include the use of criminal penalties in IP (as Warren Entsch noted in his response to the ACIP Report on Trade Mark Enforcement).

What else in copyright? Well, in case all that wasn’t enough, here’s a few more, just for good measure:

1. we might expect an outcome from the AG Department’s inquiry into whether to extend the ISP safe harbours to people other than carriage service providers – Universities, for example, may get some more protection, although it wouldn’t change much in practice, I would think – Universities already respond to notices to remove copyright-infringing material; and we may lose the utterly ridiculous use of the Telecommunications Act to define the scope of the safe harbour – ridiculous-ness well set out in David Lindsay’s excellent presentation at the Biennial Copyright Symposium last year (powerpoints available here);
2. There’s a dispute between CAL and the Australian Schools listed for hearing in the Copyright Tribunal in February, about how much schools should pay for school-based digital copying of authors’ and artists’ work, and what kind of copying should be paid for. CAL press release here.
3. Speaking of the Copyright Tribunal, we might get a decision from it on how much Pay TV operators should pay for the re-transmission of free-to-air television. This decision will have an impact on whether the newly-created Director’s Copyright is worth anything at all (their only new right, under the legislation, is to a share of this remuneration). The hearing on this issue happened last year, meaning a decision must be pending.
4. An appeal from a judgment about copyright in ‘television formats’ (eg, ‘The Block’, ‘Big Brother’) – Nine Films & Television Pty Ltd v Ninox Television Limited [2005] FCA 1404 – is listed for hearing in the Full Federal Court appeals in February. Rothnie has discussed the judgment at first instance here.
5. finally, we might see some action on the long-standing issue of communal moral rights for indigenous people. Of course, this is one of the slowest-moving issues known to the copyright world – the Attorney-General mentioned it as an area of government concern in February 2004, and February 2005. In fact, in Feb 2005 the Attorney-General named this as an ‘area where the Government is determined to push ahead with copyright reforms’ – noting an aim of finalising the legislation by the end of 2005. In November 2005, the AG indicated legislation would be introduced in 2006.

I should note, too, that all the above developments are the specific legal ones. More generally, it’s going to be particularly interesting, this year, I think to see where open access and the so-called ‘open content licensing’ movement goes (Creative Commons and the like). Creative Commons is moving along in some pretty significant ways – they’ve just raised some pretyt major funds in the US (see the Lessig Blog for details), and more and more people are using the licenses. In Australia, it will be worth keeping an eye on the an ARC-funded Linkage project being run out the Baker & McKenzie Cyberspace Law and Policy Centre looking at the issue of ‘Unlocking IP’. Open access to research and research publications is moving ahead in leaps and bounds, with governments around the world interested in ensuring access to the results of publicly funded research (to keep up with these developments, I recommend Peter Suber’s very important site).

Patent

What about developments in patent? Here I’m less certain what we’re going to see happening in 2006. But there are a couple of issues to watch for, I think.

The first is the issue of the research exemption in patent law. Here in Australia we have now two different law reform bodies – the ALRC, and ACIP, both recommending a research exception to allow people to experiment on patented materials for the purposes of research. I’ve consisdered these two proposals (and their differences) in more detail here. Chances are we will get a change in the legislation, but when is an open question – legislative drafting resources are presently scarce, and this may not be seen, by the government, to be high on the list of priorities.

The second is the continuing debate over business method patents. The scope of what is patentable in this context is a matter of live debate here in Australia at the moment; a debate only likely to be enlivened when the issue hits the Full Federal Court this February. The case of Grant v Commissioner of Patents is listed for hearing before Heerey, Kiefel and Bennett JJ on 28 February 2006. Readers might recall I’ve discussed this case before in some detail – see here and here. Warwick Rothnie also has a discussion here. Some practitioners have criticised IP Australia’s, and the Court’s approach as being ‘short-sighted’ – see for example the passage from Clark quoted in this post.

It’s worth noting, too, that the issue of patentability here is rather live over in the United States. As Patently-O notes, the USPTO currently has proposed Interim Guidelines for Patent Subject Matter Eligibility open for comment, and issues of patentable subject matter are also before the US Supreme Court in the case of Labcorp. While the case is about a method of medical treatment, a key argument in the case is that the claim being challenged ‘violates this Court’s longstanding rule barring patents on “laws of nature, natural phenomena, and abstract ideas.’ One of the arguments against business method patents is that they are concerned with ‘abstract ideas’ rather than inventions. See Patently-O’s summary of the case and briefs here.

Another patent case listed for hearing in the Full Court sittings in February is Emperor Sports Pty Ltd v Commissioner of Patents [2005] FCA 996. This case, discussed at length by Warwick Rothnie here, concerns the Australian procedure for re-examination of patents. As Lindgren J noted in his judgment, the result of the case is potentially that re-examination became less useful as a process. For another perspective on the case, see this note (pdf) by lawyers at Davies Collison Cave.

Finally, of course, there is that matter I mentioned the other day – the patent ever-greening. It’s possible that we’ll see some action – at least review action, if not reform – regarding the Labor Amendments put in when the FTA was approved. See my discussion from last week.

Trade mark

And what about trade mark?

Well, in Australia, the issue of the day may well be the colour mark. An appeal judgment is pending in one of the more significant colour mark cases – BP plc v Woolworths [2004] FCA 1362. Given that the case was heard (by Black CJ, Sundberg and Bennett JJ) in May 2005, judgment would be expected pretty soon. Trade mark groupies will recall that this is the case where Justice Finkelstein held that BP had established that “the colour green” had become distinctive of BP’s goods and services – and hence, that BP was entitled to registration of the colour as a trade mark. The relevant trade mark number is 676547, and the mark is described as follows:

The trade mark consists of the colour GREEN applied as the predominant colour to the fascias of buildings, petrol pumps, signage boards – including poster boards, pole signs and price boards – and spreaders, all used in service station complexes for the supply of the services covered by the registration, as exemplified in the representation attached to the application form’

There’s a couple of interesting issues in the case – the registration of colour generally, and the issue of the ‘limping trade mark’ – as Finkelstein put it:

‘BP’s get-up consists of more than one feature. It comprises the shield, the letters BP, the use that is made of the colour yellow, as well as the colour green. It is true that as a result of its green program, green was regarded as BP’s dominant corporate colour. Yet green is only one aspect of its total image. The question that arises in these circumstances is whether it is possible to dissect that total image and obtain trade mark registration of only one component of the whole image’

Finkelstein held that in this case the colour alone had become distinctive, but it’s a tricky issue in some cases.

Judgment in BP won’t answer all the currently outstanding issues about trade marks in colour in Australia. In particular, it won’t necessarily tell us when, if ever, colours can be ‘inherently distinctive’ (and so registrable without the long period of use that BP were able to prove). This is a live question at the moment, Mansfield suggesting it is in Philmac, but with Finkelstein doubting it’s possible (paras 17-18). Going by what happens elsewhere in the world, it would seem Finkelstein has the better end of the stick (see eg David Llewellyn’s paper on Europe, on the IPRIA website here).

It will also be interesting to see whether the Full Court approve IP Australia practice in allowing trade mark registrations that do not rely on any established colour system (like the Pantone system) – another area where IP Australia practice differs from overseas practice (again, see Llewellyn).

In another, colour-related issue, it might be worth noting that the long-standing dispute between Cadbury and Darrell Lea over the use of the colour purple by the latter is currently set down for hearing (on liability, not damages) in March 2006. Cadbury are alleging:

“contravention of ss 52, 53(c) and 53(d) of the Trade Practices Act 1974 (Cth) and passing off based on the use by Darrell Lea of the colour purple in relation to chocolate confectionary products. The statement of claim contains in par 44 et seq allegations that “Darrell Lea has obtained and continued to enjoy the economic benefit of Cadbury’s reputation and goodwill in the colour Cadbury purple” and that Darrell Lea has “no just basis for appropriating and converting Cadbury’s reputation and goodwill in the colour Cadbury purple”.”

The case is not, as far as I can tell, about trade mark infringement, but judgment on the TPA issues might well have some interesting applications to any future case about trade mark infringement in relation to colour. Of course, the case could settle…

The other live issues in trade mark will be the outcomes of IP Australia’s review of the trade marks legislation. IP Australia has done extensive consultation on the bits and pieces that are not working in the Trade Marks Act 1995 (see IP Australia’s 3 papers, available here), and we might see some results of that inquiry in 2006. Amongst the areas where reform can be expected is how oppositions are run (according to Entsch’s response to the ACIP report on TM Enforcement).

IP and Trade

Can there still be more, even above and beyond all this? Well, yes, of course. The final point to note is that FTA negotiations are still going on with a number of countries. The issue of what, if any, IP provisions will be included in such agreements continues to be a live one: do we do what we did with Singapore? Or what we did with the US? Do we try to include obligations on IP enforcement in such agreements? Is there any point to including IP enforcement provisions in an FTA with China? Watch this space. According to the last update, the next negotiating meeting on the China FTA is due in Feb-March 2006.

Trade Minister Vaile has also foreshadowed some kind of review of the US-Australia FTA, set for Feb-March 2006. My guess? Nothing useful – 12 months is simply not enough time to generate any sensible conclusions about the agreement’s effects.

Concluding comments

2006 is not shaping up as a boring year in IP. No doubt there will be enough to keep us all busy – depending, in particular, on whether all the reviews I’ve mentioned above do generate some legislative action this year. Watch this space! And since I’ve no doubt missed some things, do email me if you can think of anything. I’m happy to update! Or comment, of course.