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You might recall some comments I made, a couple of weeks ago, on Justice Heerey’s evidentiary rulings in the passing off litigation between Cadburys and Darrell Lea. Justice Heerey limited the presentation of certain survey and expert evidence. The judge’s ruling was informed by a policy against allowing infinite expansion of evidence in a case dealing with straightforward consumer products. The judge considered that:

‘Such evidence shouldn’t be admitted because of the rules of law above, which are based on sound policy: avoiding overcomplicated, expensive trials with lots and lots of evidence and cross-examination and warring experts. The judge is clearly concerned that admitting the evidence in this case will lead to it being expected in all of these types of cases.’

My clever RA Aaron Newell has pointed me to a case that perhaps indicates that Justice Heerey had a good point here: a recent Canadian decision concerned with trade mark issues – amongst them, dilution style harm. (more…)

According to the Copyright Tribunal – 22.5c per subscriber per month is what it is worth. That is how much Pay TV channels will soon be ordered to pay copyright owners (through their collection vehicle, Screenrights) for the privilege of retransmitting free to air channels to their subscribers. The decision, handed down 3 May, has already been reported in the Sydney Morning Herald and in the Australian.

The flavour of the story in the media has been interesting – the Australian pitches it as ‘nothing comes free’ for Pay TV; the SMH is even more blunt. Under the headline ‘Pay TV hit with copyright fee’ it comments that:

”PAY TV operators, including Foxtel, Optus Vision and Austar, will now have to fork out $3.5 million a year for retransmitting the five free-to-air channels on their platforms’

But there’s a little more to it than that. As the SMH notes, Screenrights had initially asked for $10 per subscriber, per month. Screenrights in their final submissions argued that an amount of $2.50 per subscriber per month was ‘conservative’. And as the Australian also notes that ‘The pay-TV networks, including Foxtel, Optus and the regional network Austar, argued they should pay no more than 20c per subscriber per month.’

Hmmm: so Screenrights thought $2.50 was conservative; the upper bound of the Pay TV people was 20c. The result was 22.5c – a smidgeon above what the Pay TV people had argued (admittedly, the Pay TV people were arguing that the ‘lower bound was zero’, based on past arrangements). While Screenrights has ‘welcomed‘ the decision, my guess would be that they would view this as a pretty low fee. (more…)

Well, well, well – haven’t we all been painting the town purple this last couple of weeks! We’ve had the decisions of Justice Heerey on evidence in passing off/s 52 a little while ago, then last week his Honour’s final decision holding that Darrell Lea had not passed off its goods as Cadburys, nor confused nor misled consumers through use of the colour purple.

Now, IP Australia have put online their decision (watch it – 59 page pdf) in Darrell Lea’s opposition to Cadbury’s application to register a trade mark for the colour purple for chocolate. And while Darrell Lea have succeeded in opposing the registration, IP Australia have ruled that Cadbury can get a narrower registration for their colour purple for block chocolate and boxed chocolates. (more…)

Perhaps a glass less than half full? Perhaps empty?

The decision in the passing off/s 52 case brought by Cadbury against Darrell Lea, for DL’s use of the colour purple, has ended with (as a friend put it) Cadburys’ in something of a screaming heap. Cadbury was claiming that DL’s use of purple was misleading to consumers, or involved DL ‘passing off’ their goods as having some connection with Cadbury. It’s part of Cadbury’s general campaign to claim rights in the use of purple in selling chocolate: they also have trade mark applications on foot.

This battle in the general war has been lost. Nope, says Heerey J. No passing off. And some rather interesting comments about Cadbury’s use of the colour with potential salience in Cadbury’s trade mark application.

UPDATE: according to one of my commentators on Weatherall’s Law, the decision in the Trade Mark Office, where Cadbury’s application for a colour mark has been opposed, was handed down last Friday (hmmm, the day after the Judge’s decision was handed down…). I don’t, however, know the result and the decision isn’t yet online… If anyone does know, you can comment anonymously….
(more…)

Rothnie and Starkoff have both already noted that the Full Court has finally – 11 months after hearing the issue – granted leave to appeal in the Woolworths v BP case. Don’t get too excited – the appeal on the merits hasn’t been heard yet. Rothnie says it will likely be heard in August. As a decision on whether leave should have been granted, this case is an examplar of why you should get your procedure right and not just assume courts will fix any errors you make. But as a judgment which foreshadows what some of the issues in the appeal might be, this decision shows that some of the more fundamental issues currently in debate in trade mark law – in particular, just what rights you get as the owner of a ‘colour’ trade mark – could end up being canvassed. (more…)

Further evidence of the music industry adage “where there’s a hit, there’s a writ”: the 2nd Circuit Court of Appeals in the United States has rejected an appeal by author Lewis Perdue in respect of his claims that Brown copied from two of Perdue’s works in writing The Da Vinci Code.

The case was not a simple copyright suit brought by Perdue; it was actually brought by Brown and his publisher, Random House, seeking a declaration of non-infringement. Perdue then counter-claimed for infringement. Brown succeeded at first instance, and the court of appeals just upheld that decision. The appeal decision is not available online, but most of the trial documents are, at a website maintained by the plaintiff Perdue. (more…)

Subtitled: Law and, or, versus the Marketers: Evidence in the Cadburys v Darrell Lea case

I’ve been hearing rumours for some time now about evidence issues/problems/disasters in the recently concluded hearing in the case of Cadburys versus Darrell Lea, before Justice Heerey down here in the Vic Federal Court. So imagine my excitement when I realised there were no less than three decisions up on AustLII. They’re really interesting decisions because they say a lot about how law interacts with marketing people, marketing experts in these cases that are all about how consumers behave. Yes, I am a sad IP law geek. Never mind, I’ve come to terms with that. The decisions are:

• Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2006] FCA 363 (which I’ll call the Cadburys Expert Decision). In this decision, Justice Heerey ruled that a whole bunch of expert evidence from a marketing expert was inadmissible;
• Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2006] FCA 364 (I’ll call this one the Cadburys Survey Decision). In this decision, Justice Heerey ruled some survey-style evidence was admissible; and
• Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2006] FCA 386 (the Cadburys Hearsay decision). In this case, Heerey J ruled that some reports that included statements from consumers about how they reacted to purple weren’t admissible to prove the truth of those statements.

I was fascinated, partly because the Judge has chosen to exclude a whole lot of stuff (which must annoy the Cadburys lawyers), and partly because I’m currently teaching Trade Mark Law to undergraduate students. Of course, one thing you spend time talking about in such a course is matters of proof. Since I’ve had to dissect the reasoning for my students, I want to spend a little time in this post putting my thoughts out there. Comments welcome of course! (more…)

Yes, all the copyright experts I know were predicting this result: London’s High Court has ruled that Da Vinci Code author Dan Brown did not infringe the copyright of an earlier book, The Holy Blood and the Holy Grail. The decision seems to affirm a basic fact: copyright does not protect ideas or facts, and an author can draw on ideas, facts, and even fictitious histories in writing new work. A good, if obvious result, it seems to me. And now the pliaintiffs end up with a very nasty costs bill: 85 per cent of Random House’s legal costs, which could top 1 million pounds ($A2.4 million).

The judge clearly did not believe the plaintiffs. According to The Age,

In the end,

• BBC story here
• The Age story here
• The decision has now been published, here

Coverage today of a judgment, handed down yesterday, in the Kazaa proceedings. For those who joined us late (are there any of you?), Kazaa (P2P Software provider) has been sued for authorising infringement of copyright by users of the P2P file-sharing software. Justice Wilcox handed down judgment last year, holding they were liable for authorisation, and an appeal from that judgment was heard in early February. Judgment in the appeal is reserved. In the meantime, however, there’s proceedings going on for contempt, because the trial judge did not stay his injunction pending the appeal. That is, Kazaa was ordered, in the meantime, to take steps to stop authorising infringement. And there’s a live question as to whether they’ve done enough. The judgment raises some really interesting questions about contempt. More, much more, over the fold. (more…)

From GrokLaw, the District Court of Amsterdam has upheld the validity of the Creative Commons Attribution-Noncommercial-Sharealike license. Adam Curry, a well-known media figure now living in Holland, posted some pictures of his family on photo-sharing site Flickr (his profile appears to be here). The photos carried a notice saying “This photo is public”, and were published under a non-commercial Creative Commons licence. A Dutch magazine reprinted four of the photos in a story on Curry and his children. (more…)

The Court of Appeals for the Seventh Circuit handed down an interesting judgment on when deleting files might amount to a crime. The plaintiff, IAC, had employed the defendant, Citrin, to identify properties that IAC might want to acquire. It issued him a laptop computer he was to use to record data collected in the course of his employment.

Citrin decided to go into business for himself, and he returned his laptop to IAC — with, apparently, all information on it securely deleted, such that it was irrecoverable. This, IAC suspected, included data that implicated Citrin in breach of his employment contract. IAC brought suit under the Computer Fraud and Abuse Act, but its suit was dismissed for failure to state a case. (more…)

Breaking news is that Research in Motion (RIM), maker of the BlackBerry, has settled its dispute with NTP for $612.5m. This is higher than the $450m settlement reached a year ago, which was later invalidated by a judge. (more…)

Let me say that again, counterfeiting is a serious problem. The OECD think so, the Australian government think so – plenty of people think so. I think so. Counterfeiting, at least as it occurs within Australia, has no social value that I’m aware of, and has costs including (a) losses to the trade mark owner (lost sales), (b) the costs entailed by the deception of consumers, (c) indirect losses to the trade mark owner (for example, loss of reputation for quality, loss of ‘prestige’ value), (d) the costs of enforcement incurred by trade mark owners and governments alike, and (e) the ‘social losses’ – lost jobs, lost tax revenue, and lost investment in research and development that may arise as a result of the lost revenue.

I have a great deal of sympathy for trade mark owners who reach levels of desperation, and use hardball tactics, against counterfeiters, particularly ‘repeat offenders’. It must be incredibly frustrating dealing with parties that have little or no respect for the law or the orders of the court. It is clear, from various judgments by the Federal Court judges, that they too have little sympathy, in general, with counterfeiters and importers/sellers of counterfeit goods.

In this context, however, this judgment is a timely reminder to lawyers that they cannot play too hardball in dealing with counterfeiters, particularly counterfeiters who are unrepresented by lawyers themselves – even where the counterfeiter has displayed contempt for the orders of the court. (more…)

So on Friday, I’m at the ACIPA Annual Copyright Extravaganza in BrizVegas, and Matt Rimmer is talking about Google and all the court cases against it. And one of the cases is that brought by Perfect 10, suing over the existence of its (nudie wimmin) images in Google’s thumbnail images as displayed in Google’s Image Search function. And I have a bit of a laugh to myself, muttering phrases to myself like ‘total try-on’, and ‘haven’t you read Kelly v Arriba-Soft?‘ Then this morning, I get an email from a reader, with the title ‘Girlie Photos Land Google in Legal Trouble’, with a link to this SMH story. So I’m figuring, try on. Indeed, I shoot back a response – without reading said story – saying ‘looks like a try-on to me’. Finally, this arvo I read the story. And, it transpires, there is an injunction. My reaction: what? Or, as Marty Schwimmer – says, ‘wow’.

Now I’ve read the case. In essence, a preliminary injunction will be ordered against Google (terms yet to be determined) against its copying, and displaying , of thumbnail images of Perfect 10’s nudie wimmin pictures.

The judgment has some amusing footnotes: footnote 4 in particular, where the court notes that Perfect 10 complained ‘thumbnail’ is a misnomer when the image may be 8 x the size of an actual human thumbnail. Oh, puh-lease. Amusement aside, however, the case is interesting – even for us Australians. I reckon most of the discussion in the blogosphere is likely to go to the ‘fair use’ issue: ie, is Google’s creation, and display, of thumbnail pictures ‘fair use’. The court said no – something I thought was pretty interesting. But actually, from an Australian perspective, perhaps even more interesting are some of the parallels with Cooper, on liability for linking to stuff. (more…)

Following on my post the other day about courts ordering the release of “private” data about net usage, an interesting case in point is a decision of the Dutch Supreme Court in late November, which ordered Lycos to reveal the identity of a user of one of its websites who had anonymously posted slanderous (or potentially slanderous) allegations against a postage stamp dealer. (more…)