Mallesons IP Whiteboard - Latest news in copyright, trade mark and patents law from Australia and around the world

In the wake of the Stern Hu/Rio Tinto case, the Chinese State Owned Assets Supervision and Administration Commission has released guidance on what constitutes a "commercial secret".  Mallesons' Nicholas Groffman examines the implications of this guidance for Australians investing in China here.

Sorbent branded toilet paper, tissues and related products have been extensively advertised in Australia through TV commercials and magazines over a number of years. The strength of its brand, its products and advertisements are well recognised. For example, most consumers would be familiar with the “Australians love Sorbent” TV commercials.  However, the Australian Trade Marks Office recently heard an application for the removal of the SORBENT mark on the grounds of non-use under s 92(4)(b) of the Trade Marks Act by its owner, SCA Australasia.  Given the strength of the brand and its apparent use in Australia, the removal application is surprising.  read more »

Steve Jobs has recently asserted Apple's claims to the word 'pad' over application developers in the iTunes Apps Store.  What are the main challenges Apple would face if it sought to register the word 'pad' as a trademark in Australia?  We consider the details here.  read more »

For our readers keen to plan ahead, it will soon be time to stay close to Twitter and refresh those RSS feeds.  This is because the August 2010 sittings of the Full Court of the Federal Court have fixed for hearing at least two significant IP cases.  At a recent call over, the Federal Court fixed Roadshow Films and Others v iiNet for the 2 August sittings.  Likewise, Telstra & Sensis v Phone Directories Company and Ors has also been listed for the same hearing period.  Specific dates have not yet been allocated, but as soon as IP Whiteboard knows, you will too.

In a decision which provides a whole new meaning to the phrase “going to the ‘john’”, the John W. Carson Foundation (Foundation) has successfully opposed registration of Johnny Carson’s famous phrase “HERE’S JOHNNY” as a trade mark of portable toilets (proposed mark).  This decision has come about more than 30 years after the same toilet manufacturer first attempted to register the proposed mark.  read more »

The ACCC has allowed the Australasian Performing Right Association (APRA)  to continue to license music for public performances throughout Australia on the condition that it allows consumers the option of dealing directly with music publishers.  read more »

Privacy issues raised by the settlement of the Irish peer-to-peer copyright litigation were dismissed by the Irish High Court in a decision made on 16 April.  This cleared the way to the implementation of the settlement between the music industry and Eircom, one of Ireland’s largest ISPs.  read more »

At Rod Laver Arena this week, a few of us sang our lungs out to Tears for Fears and Spandau Ballet.  It was great to see ‘Tony’, ‘Gary’, ‘Martin’, ‘John’ and ‘Steve’ once again, after a hiatus of only 25 years.  What does this have to do with intellectual property?  Well, the hugs between Tony and Gary on stage can be starkly contrasted to the heated court battle between them a decade ago, over copyright royalties to the songs.  read more »

Last week it was reported that DreamWorks LLC, the studio behind the popular animated franchise, "Shrek", is regretting its decision to allow men's magazine VMan to use characters from the film in a fashion photo shoot.  The photos features characters such as Shrek, Princess Fiona and Donkey in a variety of scenes, "posing" with scantily-clad models.  

The magazine spread has drawn a lot of publicity -- some good, some bad -- and the photos have variously been described as "racy", "sultry" and even "bizarre" [ed: a quick survey of the IP Whiteboard went with "bizarre"].  Some commentators have questioned the appropriateness of the spread as a marketing strategy, given the target audience of the Shrek films (children). But for IP lawyers, the tale serves as an animated reminder of the importance of control in copyright licensing, and the potential risks involved when brand owners attempt to push the boundaries in marketing a family-friendly brand.  read more »

The Supreme Court of New South Wales has confirmed that the supply of software through a digital download fulfilment mechanism is not a supply of "goods" for purposes of the sale of goods legislation.  The result, which had been anticipated by commentators and practitioners for many years, may lead to legislative reform.  read more »