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Laws444 Intellectual Property No Patents Notes

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Laws444 Intellectual Property No Patents Revision

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Copyright Purpose of ©
European: creators of valuable works deserve remuneration, right to control manner in which work is publicly displayed. Anglo-American: dominant rationale is utilitarian, economic. To provide economic incentives to maximise both the production and the availability of useful creative expression for the benefit of society in general. The Statute of Anne (1709) Preamble: "An Act for the encouragement of learning" No © : market price for author's book will tend to marginal cost of making just one copy: author and publisher cannot recover fixed costs, would not create. © encourages people to invest labour, skill and money into creating valuable new works. Too much © : rational monopolist restricts production, increases price. Limits educational/cultural benefits of wide access to creative expression and debate, limits ability to produce derivative, second generation works. Parliament's job: to create © protection somewhere between these two extremes. Prima facie case for breach of © - P must prove:

A. B. C. D.

There is an "original work" in which copyright can exist: i.e. the subject matter of the action is capable of attracting copyright protection (s 14(1)) Copyright does in fact exist in that work (ss 18-20)

The plaintiff is the owner of that copyright (ss 21, 5) The defendant has infringed the plaintiffs copyright by performing a restricted act in relation to the work (ss 16, 29-39)

A. Whether a work is capable of attracting copyright Involves three related concepts: (a) Copyright does not protect ideas or raw information but rather those ideas' expression; (b) The expression must be original; Section 14(2) A work is not original if—
(a) it is, or to the extent that it is, a copy of another work; or (b) it infringes the copyright in, or to the extent that it infringes the copyright in, another work. (c) To infringe, the defendant must copy a substantial part of the plaintiff's work. Green v BCNZ (CA) Somers J: (narrowest view) no copyright possible Did no more than express a general idea/concept for a talent quest, and © does not protect general ideas/concepts: idea/expression distinction. No separate © in format is available - must be literary/dramatic work in itself. Dramatic work must be capable of being performed (PC agrees), so not scripts. Gallen J: (widest view): capable of being protected by copyright Combination of unoriginal features formed a structure or framework or "dramatic format" that was sufficiently distinctive of Green's show to enable it to be recognisably be copied. That structure/format attracted © protection as an original dramatic work. Casey J: (intermediate view): the features were capable of © protection, but 'substantial copying' threshold high. Threshold question of ©: there could be enough skill/labour/effort in production to make this a literary work. But burden on P of proving a substantial copying will be high Rejected a © in 'dramatic format', too uncertain, for legislature (PC agrees) Economic justification lacking for protection of such trivial ideas - cost little/nothing to produce. Low threshold to show originality allows at least a minimal protection of © in even trivial works. Requiring more to show a substantial copying at the infringement stage recognises some level of ©
in works, while adjusting the practical level of protection to trivial ideas. Study Page 1

in works, while adjusting the practical level of protection to trivial ideas. Wilson v BCNZ Found © in summary of feasibility study of a proposed TV show featuring disabled children as action heroes. The summary was a 'dramatic work' (wouldn't accord w Somers and Casey JJ saying dramatic format DNE dramatic work) capable of protection by © - the ideas were expressed more substantially were produced to the Court, c.f. Green. Damages: Innocent infringement (121(2)): Protracted negotiations and possession of the defeasibility study meant no innocent infringement (so damages ill be more than just account of profits) Flagrancy of breach(s 121(2)): after negotiations w P, D 'put the P right out of the whole exercise', broadcast another series of the program after proceedings were issued, made no attempt to negotiate.

Originality of names Frances Day & Hunter v 20th Century Fox (1939) PC from Canada: name of song "The Man Who Broke the Bank of Monte Carlo" too insubstantial to be an original literary work. Fairfax Media v Reed International Books (2010) FCA: headlines from newspapers - too insubstantial. Meltwater case [2012] (EWCA): newspaper headlines could be original Sunlec International v Electropar (2007) HC: slogan's composition involved sufficient skill+judgement+labour to be original: "Field Friendly: the best choice for field work"

Monitor Publications Ltd v The Buyer International Co Ltd (1980) HC - 3 perforated lines on a page. Originality: P must show it has expended a more than negligible degree of labour and skill in production. Original = not copied from another work, but originated from author (but need not be in an original or novel form) Merger doctrine: if an idea is capable of only one form of expression, then the idea and its expression 'merge' and protection of the particular expression would protect the idea itself, giving the originator a monopoly in the use of the idea. Not a judicially recognised doctrine in NZ, but may be susceptible in NZ. In this case, despite paper size and regulated dimensions of NZ postcards not enough to render the idea of 'detachable postcard advertising' monopolised.: could simply change layout and forma/
Infringement: Substantial copying - the more obvious, trivial, simple the © work, the more exact the copying will need to be more exact to be considered substantial. P must establish actual copying by direct or circumstantial evidence - this will be harder when an idea is obvious, trivial. Established in this case because P's publication available for 2 years, companies shared employees, and D's postcards had copied P's down to mistakes made in the copy. Damages: decide where balance of convenience lies: interim injunction would not entail too great hardship to D and employees here (no other business) because could change design to avoid substantial copying, and substantial damages could arise if P eventually succeeded in its action. GA Cramp & Sons v Frank Smythson Ltd [1944] AC 329 - HL Merely collecting together existing conversion tables relating to weights and measures, including them at front of diary, did not involve sufficient skill, judgement or labour to satisfy the originality requirement.

Ladbroke Football Ltd v William Hill Ltd [1964] 1 WLR 273 (HL) P: betting coupons, match selection arranged under 16 headings indicating types of bets, odds. D copied the types of bets and headings, but made own odds, and couldn't copy match listings (new each week)

1. Threshold Q: whether © exists, must consider work as a whole. Incorrect to query whether © exists in dissected parts Court considers skill, labour and judgement of D in producing whole work, not just what was copied (no shortcuts!) Study Page 2

(no shortcuts!)

2. Skill, judgement and labour cannot be split into preparatory stage and expressive stage Distinguished Cramp on this ground, whole of the coupon was protected by copyright.

3. Infringement: - whether features copied were a substantial part of P's work. Substantiality is a question of quality, not quantity. Level of originality of the copied part - (s 14(1): © 's purpose: to protect original expression. If copied parts lack originality (copied)/(negligible skill/labour Lord Pearce: If © only exists by collocation, minus collocation, no protection (not substantial) Novel or striking part? Or merely a common place arrangement of common words/data. Significance to distinctiveness of whole work: deciding factor?
"What is worth copying is prima facie worth protecting." - Petersen J in University of London Press Gallen J, Green: what is recognisably copied will tend to be a substantial part of a © work. University of Waikato case: whether the 'essence' of the work has been copied. Court's sense of fairness - critical in borderline cases Steelbro NZ Ltd v Tidd Ross Todd Ltd [2007] NZCA 486. Expressly said that substantial copying is a "major tool to giving expression to the Court's sense of fair play." D took Ps product, emulated its function trying alter/improve enough to avoid substantial copying - "logical evolution" from P's model. CA: 'once convinced that D unfairly cut a competitive corner, by setting to revamp P's creative work, the Court will not easily be convinced that there were enough changes made to avoid infringement" - even though in that case Steelbro had done a lot of work itself and made significant improvements. CA did not overturn HC's finding of infringement. A lot of discretion is in the hands of the judges in applying standards of originality. Originality for literary compilations: Land Transport Safety Authority of NZ v Glogau [1999] 1 NZLR 261 (CA) Stature mandated taxi logbooks in MOT-prescribed form. Glogau approached MoT, MOT was helpful. Glogau produced logbook which the MOT approved; but the MOT and the Taxi Federation both produced their own books, accepted that they copied Glogau's logbook. Defence: Glogau's work lacked originality, not an original literary work, so did not attract © at all. MoT supplied material, Glogau's changes so small that didn't reserve © reward.

1. D's dissecting Glogau's book by page was inappropriate - at threshold stage, Court makes holistic assessment.

2. A low skill and labour requirement for © in compilations -more than minimal/negligible. Q is not originality of the source utilised.

3. Monitor Publications approach: protection afforded depends on degree of originality Low originality: anything but exact copying not infringement. High originality: inference of copying more easily drawn, even if lesser apparent copying. Low threshold for protection therefore presents no real harm. Summarising statutory requirements and MOT's organising materials satisfied originality requirement. MOT's substantial contribution to work/format did not render Glogau's input minimal/negligible. CA distinguished P's work from compilations of mere facts, (directories and databases):

Directories/databases, compilations of bare facts Investment of effort (expense in collecting, verifying and recording factual data) without any judgement in arrangement --> attract © protection as a literary compilation work.

US: Feist Publications Inc v Rural Telephone Service Co (1991) 499 US 340, 20 IPR 129 White pages NOT original literary compilation: no 'pure sweat of the brow' - minimal creativity/intellectual effort. i.e. selection/arrangement of data - not possible for white pages (universal) Otherwise, granting long-term monopoly in ideas themselves, but public interest in maintaining ideas' availability. Merger doctrine.

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Oz: Desktop Marketing Systems v Telstra Corporation (2002) 55 IPR 1 (FCA) D's software products incorporated P's white + yellow page directories' telephone listings and headings. NO intellectual skill/judgement/creativity is necessary to satisfy originality requirement: sweat of brow ok. Using listings = copying a substantial part of D's © original literary work. Legal principle dictated result - even though against policy - D had monopoly on provision of phone services, so not practically feasible to compile data independently - true 'merger' case. Left this for legislature. Oz: Ice TV Pty Ltd v Nine Network Australia Pty Ltd (2009) 80 IPR 451 (HCA) TV program schedule (brief synopses + facts (dates, times and titles) of programs). D copied just facts. Infringed?
HCA: fact data not a substantial part of compilation: lacked originality. Originality requires some independent intellectual effort, creative spark or exercise of skill or judgement. Intellectual effort at prelim stage of compiling info (what to screen) does not count in assessing originality. c.f. Ladbroke!

Oz: Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2010] FCAFC 149 (FCA) FCA followed Ice TV to deny © to Telstra's white/yellow page directories. Intellectual effort in compiling, checking data by humans = preliminary. Ordering and arrangement: automatic. Relevant (not prelim) activity = automatic, no intellectual effort, so no originality, no © . YPG IP Ltd v Yellow Pty Ltd (2008) 8 NZBLC 102, 063 (NZHC) Cooper J cited Desktop: arguably sufficient creativity in making directory to satisfy originality requirement. Justified interim injunction, no trial, prior to Ice TV so little to no weight. Oraka Technologies Ltd v Geostel Vision Ltd (2010) 88 IPR 227 (NZCA) Hammond J asserted (no authority) "original: a work must not be copied. Labour alone is enough." But traditionally courts require investment of labour, skill, and judgement - conjunctive test, not disjunctive. e.g. Glogau, Monitor, Henkel v Holdfast (NZSC - in CM), University of Waikato Even if some skill, judgement or intellectual effort + labour required, very little suffices - e.g. Monitor, Glogau 'more than negligible' is the test. NZ Courts: follow Ladbroke principle, all work in preparing compilation is taken into account for originality. (Glogau) The University of Waikato v Benchmarking Services Ltd (2004) 8 NZBLC 101, 561 (CA) CM68 Whether D infringed © in compiled reports by copying a substantial part. Raw data of P's report not protected: lacked originality, not substantial part of whole. Not necessarily rejection of Desktop position that simply compiling data satisfies the requirement - P did expend labour/expense/effort in collecting/verifying basic data - supplied by clients, so distinguishable from Desktop. CA: Looks at more than skill, judgement in determining final expressed form; differs from Ice TV. Sufficient labour, skill and judgement may arise:

1. Through the manner in which the information is selected for inclusion

2. The format or presentation of the data

3. Or selection and calculation of particular ratios, percentile, etc. derived from the raw data - i.e. creation of new data. CA expressly approved Ladbroke, skill at preparatory stage sufficient. Ice TV: only skill in deciding presentation. Likely: sufficient skill in preliminary decisions about collecting/verifying telephone details for originality. Study Page 4

Likely: sufficient skill in preliminary decisions about collecting/verifying telephone details for originality. If competitor copied whole work, infringe. Low originality in whole, so copying less/almost all whole may not infringe Glogau. Implicit in Monitor. See Henkel v Holdfast (NZSC) - artistic collocation (equivalent of a compilation).

Are either of the extreme positions evidence in Oz cases satisfactory/desirable?
No: large factual databases are useful, valuable. Appropriate financial incentive desirable for investment of money time and labour they require. Need to protect against free-riders appropriating benefits without paying. But long term protection of literary © is excessive; neither Ice TV nor Desktop ideal. We cannot allow large blocks of factual data to be locked up for long periods - could be 100+ years. Such protection for scarcely original works seems excessive, and periodic updating = protection in perpetuity. Solution?
Desktop: legislative solution: fully protect data but require compulsory licencing. Not ideal: requires intervention of Court/tribunal to enforce mandate. European solution: EU countries operate a 'two tiered' system

1. Literary copyright i. Orthodox long term protection for intellectual, creative investment in arrangement and selection.

2. Database right i. Short term protection (15 years) for substantial investment of money and labour in the mechanical tasks of collecting, verifying, presenting, updating the contents of the database. There are practical problems with this… but idea seems sensible to Smillie. NZ Govt decided against: no special regime for databases. Common law position remains.

Industrial Designs Scope of protection fluctuates - tension between conflicting interests:

1. Designers need protection against copying for incentives to create new and improved product designs

2. Limited range of possible designs for many functional products: protection stifles competition, innovation. Designs Act 1953 incorporates features of patents and ©

1. Design must be registered with IPO (s 5)

2. Design be 'new or original' - composite, no identical or similar design registered/published in NZ at date Closer to patent requirement of novelty than © requirement of originality. (s 5(2))

3. Maximum protection like patent (5 years - s 12(1)) then extendable for two more 5 year periods (s 12(2).

4. During 15 year period of © , registered design gives holder complete monopoly of expression - no need to show 'copying': Even independently produced design infringes if substantially similar to registered design. (s 11(1)) Copyright: Protection limited to designs: features of shape, configuration, pattern, or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye; but does not include a method or principle of construction or features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform (merger principle) s 2.

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But Designs Act is not a code, regular protection of designs as artistic works under CA94 possible. e.g. Monitor: v low level of originality required. Courts held that indirect copying amounts to infringement - can copy a 2D design drawing for a 3D article by copying the article; without ever having access to the 2D drawing. S 29(2)(b) infringement. Frank M Winstone (Merchants) Ltd v Plix Products Ltd [1985] 1 NZLR 376 (CA) Kiwifruit Authority specified acceptable 'pocket pack' designs based on P's design - D followed KA's specifications. CA: no principled distinction between copying a tangible depiction and a description of a work. CA: no scope for a defence against infringement based on fact that Kiwifruit Authority had adopted Plix's designs. CA could have found a slight variation meant no substantial copying, no infringement (didn't - bad adv) High water mark, essentially a monopoly in an idea, expansive view of © protection. Following Winstone, Parliament amended © Act to limit © in industrial applied aristic works to 16 years, and courts applied higher infringement threshold in works of low originality.

UPL Group v Dux Engineers [1989] 3 NZLR 135 (CA) Toilet seat designs. "Caroma Delux" subject of registered design. P claimed D's "Dux Twinline" toilet seat infringed © in two designs. Front of DT copied from Hybiscus, back of DT copied from the Uniset.
© existed in P's design drawings for seats as original artistic works. D:design achieved independently Exact reproduction not essential for infringement: substantial appropriation of P's skill, labour. "Substantial" = whether part copied represents substantial amount of skill in whole work. Matter of fact/degree, quality > quantity (Ladbroke): balance private right to protect developer's labour, and public interest in preserving benefit of creative work and thought. Where composite work claimed to infringe © s in two different objects, each must be separately considered; if copying proved in one case, easier to find inference of copying in another. Back: connector piece gave continuous line between seat and cistern, but no monopoly in underlying idea. Front: Range of curves allowing fashionable square appearance not large, so small differences will be enough to rebut the inference of substantial copying.- contrast Winstone. If no direct evidence of copying, visual comparison allows inference: made in light of art, fashion. Beckmann v Macey Confectionary (1995) 33 IPR 543 (CA) confectionary crocodiles.
© in artistic work of a plastic model/sculpture (graphic work) for moulds for "Killer Croc" sweets. Degree of similarity to justify inference of copying varies according to distinctiveness, originality of ©
work. Two artists sketching same object, two designers facing same manufacturing constraints -->
© work: low originality - basic features of design largely dictated by external constraints
 the need for the P designer to achieve a recognisable representation of a crocodile
 Manufacturing constraints - e.g. tapering so that product removable from mould. D's design reflected external constraints, many small detailed differences. CA (548): no striking similarity suggesting against independent devising. Dux, Beckmann c.f. Winstone: CA sympathetic to imitators of concept underlying functional industrial product. Requiring higher degree of similarity to support inference that one functional work is substantially a copy of the other.

Henkel KGaA v Holdfast NZ Ltd [2007] 1 NZLR 577 (SC) Packing for adhesive product P's packaging involved arrangement of standard, non-original colours and shapes. Claimed D's packaging infringed. Study Page 6

infringed. Graphic work maybe original because of arrangement/collocation of intrinsically unoriginal features.
[41] skill and labour gives the work originality. If not great, no great departure necessary to avoid infringement. Here, small differences are enough to avoid the inference of copying. SC focuses on differences between arrangements - strict focus on similarities would give undeserved level of protection for low originality works not far removed from the underlying concept/idea, as in Winstone. If low originality: more appropriate to focus on differences than similarities, even small differences dispel inference of copying.
[52] level of originality low, so Holdfast's work is sufficiently distinct so that it is not a substantial copy. If D copies P's work ,but invests sufficient skill and labour to make copy original © work, D still infringes: there can be overlapping © : FN41 "originality added to piracy can be substantial piracy nonetheless" If overlapping © s, D cannot lawfully exploit © without securing licence from P; P can enjoin D to prevent D exploiting its original © work. D can successfully sue third party copying work - if D recovers damages from 3P, D must give P appropriate proportion - $$ representing P's original contribution from P's design. Inverness (2011) 93 IPR 14. Woodhouse J - a work which itself is an infringement of an earlier work, but displays originality of its own, will be entitled to protection subject to owner of earlier © work to receive a share of any sum recovered Parliament's response to © in industrial designs Section 74: stops © protecting patents/registered designs after statutory period runs out. Making an object in 3D or 2D copy for 3D purpose, doesn't infringe if part of patent/registered design which has ceased to have effect - doesn't authorise 2D copies generally or literary work copies. If patent/design registration comes back into force, parallel © protection resumes.






Section 75: Special exception from protection of artistic work that has been applied industrially The making of—
(a) any object in 3 dimensions; or (b) subject to subsection (3), a copy in 2 dimensions reasonably required for the making of the object—
does not infringe copyright in an artistic work if, when the object or copy is made, the artistic work has been applied industrially, in New Zealand or in any other country, by or with the licence of the copyright owner,—
(a) in the case of a work of artistic craftsmanship, more than 25 years before the object or copy is made: (b) in the case of a sculpture that is a cast or pattern for an object that has a primarily utilitarian function, more than 16 years before the object or copy is made: (c) subject to subsection (2), in the case of any other artistic work, more than 16 years before the object or copy is made. Subsection (1) does not apply to—
(a) a sculpture that is not a cast or pattern for an object that has a primarily utilitarian function; or
*gets full © term of life + 50 years+
Sculptures intended to be appreciated as a work of art in their own right, rather than serving merely as preparatory work for some functional object. (b) a work of architecture, being a building or a model for a building. Subsection (1) does not authorise the making of a copy in 2 dimensions of an artistic work that is in 2 dimensions, where the copy is made directly from that artistic work. For the purposes of subsection (1), an artistic work is applied industrially if—
(a) more than 50 copies in 3 dimensions are made of the work, for the purposes of sale or hire; or (b) the work is copied in 3 dimensions in 1 or more objects manufactured in lengths, for the purposes of sale or hire; or (c) the work is copied as a plate that has been used to produce—
(i) more than 50 copies of an object in 3 dimensions for the purpose of sale or hire; or (ii) 1 or more objects in 3 dimensions manufactured in lengths for the purposes of sale or hire. For the purposes of subsection (4), 2 or more copies in 3 dimensions that are of the same general Study Page 7

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