It is not often that a case relating to intellectual property rights makes it way to the High Court of Australia, however in recent months, there has been a trifecta of cases. The three cases cover a range of key issues including:

  • Implied licence terms when a copyright work is produced for use on a third party website;
  • When a trade mark is used as a trade mark, and the availability of the comparative advertising defence; and
  • When computer-implemented inventions are patentable.
Case No. 1 – RP Data Pty Limited v Hardingham

The appeal focuses on the arrangement between Mr. Hardingham, a creator of photographs and floor plans, and real estate agents who commissioned those works and put them on third party real estate websites, including the owner of realestate.com.au (REA) who in turn shared the works with RP Data, an operator of a subscription website that provides historical data on the sale and leasing of properties. 

Under section 115 of the Copyright Act 1968 (Cth), Mr. Hardingham commenced proceedings against RP Data for infringing the copyright in the photographs and floor plans without a licence. However, RP Data claimed that the materials were used under the licence of REA, as REA permitted materials published on its platform under licence from the real estate agencies who engaged Mr Hardingham.

Since there was no formal written agreement between Mr. Hardingham and the real estate agencies, the earlier Courts needed to establish what the terms of the licence were to determine whether RP Data’s use of the photographs and floorplans was allowed.

The High Court now has an opportunity to clarify the test for implying a term in a contract, especially an informal (eg oral) contract. This is a case of significance to the property industry and the outcome of the appeal will be particularly significant for creators of commissioned content.

Case No. 2 – Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd

This case concerns the well-known anti-ageing product “Botox.” The manufacturer of Botox, Allergan, is also the owner of various trade marks for BOTOX, including the defensive word trade mark BOTOX for class 3 “…anti-ageing creams; anti-wrinkle cream.”

Self Care IP Holdings also sold cosmetic products, including an anti-ageing product sold under the trade mark PROTOX, which is sold under the umbrella trade mark of FREEZEFRAME. The PROTOX packaging stated that the product was “clinically proven to prolong the effect of Botox®” and an “instant Botox® alternative”.

The appeal focuses on whether the use of the phrase ‘instant Botox® alternative‘ by Self-Care on the packaging of its products infringes the trade mark BOTOX, and whether the defence of comparative advertising is available for this use.

This is a case of significance to businesses and brand owners that are considering using a competitor’s products and associated trade marks as part of their own marketing strategy.

Case No. 3 – Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents

In the most recent of the three cases, the High Court heard an appeal concerning the patentability of computer-implemented inventions. The question before the court focused on the correct test for assessing whether an invention implemented on a computer is properly characterised as a patentable invention, or merely an abstract idea.

This month, the High Court handed down a decision that was evenly split between the six Judges, dismissing Aristocrat’s appeal and confirming that Aristocrat’s poker machine with a feature game was

If you need any further information or need advice on any of the above issues, please contact Rouse Lawyers at (07) 3648 9900 to speak to our Intellectual Property Law team.

Disclaimer

The information contained on this website is for general guidance on matters of interest only. The application and impact of laws can vary widely based on the specific facts involved.

Accordingly, the information on this site is provided with the understanding that the authors and publishers are not providing legal advice. As such, it should not be used as a substitute for consultation with professional legal advisers. Before making any decision or taking any action, you should consult with a professional lawyer from Rouse Lawyers.

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