Marketing Law

  • Category:
    Marketing
  • Document type:
    Assignment
  • Level:
    Undergraduate
  • Page:
    3
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    1733

Intellectual Property

Lecturer’s Name

Introduction

Intellectual Property law is a critical tool in the protection of ideas, works and designs that are generated by designers in any particular field or industry.1 It is also one of the most fundamental building blocks, which buttress the Australian economy because of its reward for innovation and its ability to cultivate creativity. Intellectual property is in essence the ability to apply one’s own mind to create a new and original thing. It exists in various forms, for example, copyrights, trademarks, patents, inventions, artistic creations or designs. How intellectual property particularly exists is largely dependent upon the laws of a particular jurisdiction. The fact pattern revealed by StaCeYY’s case is one that falls under the ambit of intellectual property law. The issue to be determined is the exact realm of under, which the problem falls and the legal rights appurtenant thereto. The following is a brief presentation of the law, rights, protections, redresses and the general regime that govern StaCeYY’s problem.

According to the fact pattern, StaCeYY has a designer table that she has recently developed and further, a film produced by Samantha over which she may have certain legal rights. It is important to note that Australia’s legal regime provides a robust framework for the protection of innovative designs and creative ideas and as such there is legal recourse to StaCeYY’s predicament. When most people consider the important assets of a business, they tend to imagine only the tangible, otherwise known as corporeal property. However, intellectual property law is a regime that governs the intangible ideas that indeed form the difference between various designers. StaCeYY’s case is no exception. There may be many different table makers and designers in the market but what marks the difference between them is really the uniqueness of a particular design. In this case, StaCeYY made a dramatic and unique design of a dining table and labeled is using a unique “S” symbol, which design was later copied by Michael, who is now profiting from StaCeYY’s design. The issue that we seek to underscore firstly is what led to the “stealing” of StaCeYY’s designs then later the legal redresses that she may have and lastly, hoe different her rights would have been had she taken steps to protect her designs.

The agency of the Australian government that is responsible for enforcement and administration of designs, trademarks, copyrights and patents is called IP Australia.2 StaCeYY’s dining table falls under the category of “designs”. A design is the visual appearance of an item. The design is registered depending on the uniqueness, newness and distinctiveness of the product. StaCeYY’s dining table falls squarely within the ambit of designs since it is new and distinct. It is worthy to note the difference between patents and designs. While patents protect how the product woks, designs protect how the product looks like. The problem question reveals that StaCeYY has been losing business since someone else has been using her design. This means that the visual appearance of the product is in essence what is drawing customers towards the table. Accordingly, it is safe to conclude that the nature of intellectual property rights arising from the facts of StaCeYY’s case fall exclusively within the jurisdiction of designs.

The current position that StaCeYY’s product is found falls under the rules of disclosure. Disclosure means that once a party has already disclosed a design (sold, exhibited, catalogued or posted on a website), then registration of the said design may not be a possibility.3 This is because the design will not be considered as new and distinctive. However, there is a panacea, which can cure such a problem. StaCeYY could opt for the process of formal publication. This process prevents other designers from getting certification for the design. Publication is deemed as an alternative option to registration. While this process does not furnish any legal rights to StaCeYY over the dining table, it certainly will prevent Michael and other designers from obtaining formal certification over the same. Therefore, since StaCeYY is rendered unable to register her dining table, a formal request for publication would suffice in order to prevent Michael from getting certification for the table. Publication in this regard is viewed as a defensive strategy.

This next part seeks to determine how different the rights would be for StaCeYY had she protected her designs earlier. Before answering the foregoing question, it is important to understand briefly the regime and process of protecting a particular design. Assuming a hypothetical scenario where StaCeYY had just come up with the design, the following should have been the steps that she should have made in order to protect her designs. The Intellectual Property law that governs StaCeYY’s case is the Designs Act of 2003, a federal statute under which designs are to be registered. The registration system is administered by the Federal Government Agency IP Australia as mentioned earlier. The first rule of designs that StaCeYY should have adhered to is not to go public with her design before registration. The process of registration is basic and involves filling an application form from the IP Australia website. Payment of a fee follows and once the design is allowed, it is subject to a renewal fee.

How different therefore would StaCeYY’s rights be had she registered her design? The rights in a registered design can only be enforced in the existence of a Certificate of Examination, which certificate is only issued once all the statutory requirements have been fulfilled. Taking legal action in civil litigation against an infringement of design may prove to be a very costly undertaking and as such, it is important to put other designers on notice that your design is registered. However, StaCeYY’s case is slightly different since someone else has already stolen her design.

There are statutory reliefs available to StaCeYY in this case and they fall under the Designs Act 2003 and the Trade Practices Act 1974. In the case of Roland Corp. v. Lorenzo & Sons Pty Ltd, the Court held that each intellectual property right must be confined and adjudicated within its own statutory limits.4The latter contains reliefs for the tort of passing off. In addition to the above, there are common law and equitable remedies that are available to StaCeYY including, but not limited to injurious falsehood and passing off. There are extensive remedial procedures in the Australian Law Courts to deal with infringement of designs, assuming she had registered her design. The Courts may give the following orders: Firstly, preliminary orders may be sought and granted, which orders are limited to discovery of documents. Secondly, StaCeYY may make an application for interim injunction, which would have the effect of restraining the infringement. Examples of the Mareva injunction woud have the effect of preventing the defendant from removing assets from the Australian jurisdiction. Thirdly, Anton Pillar orders may be sought, which order would search and seize property. Other reliefs include orders to pay damages and special damages for flagrant infringement.

Summarily, StaCeYY’s rights would have been very different if she had protected her design by registration. The difference arises from various facts. One, she would have the right to enforce her design after its examination and certification. Two, StaCeYY would have the exclusive ownership and possession of her design and as such the right to sue any person who uses the same without her permission. As a registered owner, StaCeYY would also have the right to sell the design one it grows in value and further, she would have the right to authorize the use of the design as set out in the registration.

The final issue to deal with in StaCeYY’s case scenario is the intellectual property right, if any, arising from Samantha’s films and how best to protect them at law. A brief understanding of copyrights is that it is the incorporeal property found in the ideas or creativity of a person. The ways the original ideas and information are expressed are what constitutes copyrights and not the ideas themselves.5 They originate automatically and give individual rights to exploit and control the copying of original literature works, films, etc.6 This was the holding in the case of Grain Pool of WA v The Commonwealth.7 StaCeYY’s rights over Samantha’s films fall within the ambit of copyrights law. Artistic works are also protected by copyrights law and as such the table design in the film is what attracts the rights discourse.8

Unlike the position in patents, trademarks, plant breeders and designs, copyrights do not require any formalities in order for them to be obtained (registration, publication and fee payment). Copyrights protection is automatically granted from the time of the original work. StaCeYY therefore has an automatic copyright in Samantha’s film.

References

Cornish, W., Llewelyn, G.I.D. and Aplin, T., 2013. Intellectual property: patents, copyright, trade marks & allied rights.

Correa, C., 2007. Trade related aspects of intellectual property rights: a commentary on the TRIPS agreement. OUP Catalogue.

Fairbairn, John, and Stuart Clark S. . «Intellectual Property Litigation in Australia.» Clayton UTZ. May 2, 2008. https://www.claytonutz.com/docs/IPLitigationinAustralia_May%2008.pdf (accessed April 26, 2016).

Grain Pool of WA v The Commonwealth [2000] 170 ALR 111 (HCA).

Harms, L.T., 2005. The enforcement of intellectual property rights: a case book. World Intellectual Property.

Microsoft Corporation V Pc Club Australia Pty Ltd [2005] FCA 1522 [Australia]

Roland Corp. v. Lorenzo & Sons Pty Ltd (1991) 105 ALR 623

Telephonic Communicators International Pty Ltd v Motor Solutions Australia Pty Ltd [2004] FCA 942 [Australia].

1
Harms, Louis TC. The enforcement of intellectual property rights: a case book. World Intellectual Property, 2005.

2

Fairbairn, John, and Stuart Clark S. . «Intellectual Property Litigation in Australia.» Clayton UTZ. May 2, 2008. https://www.claytonutz.com/docs/IPLitigationinAustralia_May%2008.pdf (accessed April 26, 2016).

3
Cornish, William, Gordon Ionwy David Llewelyn, and Tanya Aplin. «Intellectual property: patents, copyright, trade marks & allied rights.» (2013).

4
Roland Corp. v. Lorenzo & Sons Pty Ltd (1991) 105 ALR 623

5
Correa, Carlos. «Trade related aspects of intellectual property rights: a commentary on the TRIPS agreement.» OUP Catalogue (2007).

6
Telephonic Communicators International Pty Ltd v Motor Solutions Australia Pty Ltd [2004] FCA 942 [Australia]. In that case, it was held that an author of a literary work retains copyright.

7
Grain Pool of WA v The Commonwealth [2000] 170 ALR 111 (HCA). The Court held

8
Microsoft Corporation V Pc Club Australia Pty Ltd [2005] FCA 1522 [Australia]