iPhone trade mark snapped up by Apple

After a squabble with Cisco Systems for the coveted 'iPhone' trade mark, it appears that Apple now owns the trade mark in the US. Of course, no such luck yet with the iPad trade mark.

No problems for Apple in Australia, with the iPhone (with the Apple 'apple') trade mark accepted by IP Australia on the 26 May 2008.



The iPad trade mark looks like it is going to be a little more contentious. A US company, IP Application Development LLC have applied for the trade mark IPAD for amongst other things tablet computers, electronic handheld devices (although there is some suspicion that this company is somehow related to Apple). Apple own the IPAD trade mark, but only for class 9 and in relation to 'electronic information display terminals including electronic information kiosks and public access display apparatuses'.

UWA v Gray: High Court refuses to grant leave to hear appeal

The High Court have refused to grant special leave to hear an appeal from the full bench of the Federal Court, ruling out the University of WA's hopes of getting their hands on a cancer treatment patent worth millions of dollars.

For those not familiar with the case, I have a brief summary in an older blog post.

iiNet 'copyright infringement' case dismissed: Judge says it's impossible to conclude authorisation of infringement

I have been following the iiNet case for quite a while now, so I was quite excited to hear that a decision had finally been made. In what many would call a landmark case, the film industry (represented by The Australian Federation Against Copyright Theft (AFACT)) brought an action against iiNet for allegedly authorising their customers to infringe the copyright of various movie studios.

On the 4 February 2010, Judge Cowdroy of the Federal Court of Australia dismissed the case against iiNet, awarding costs to iiNet (estimated to be in the vicinity of $4 million).

Judge Crowdroy based his decision on the fact that iiNet has no practical control over it's customers copyright infringement. He differentiated between the Internet, and Bit Torrent (which while a legitimate way of downloading large files, is often used for the purpose of copyright infringement), noting that iiNet had no control over the use of Bit Torrent.

He concluded that iiNet was entitled to the 'safe harbour' provisions because it had a policy on infringement, even if AFACT did not agree with this policy.

Remember the Borings? Their Google trepass claim may be back on foot

If not, have a look at an older blog post about the Pennsylvanian couple who sued Google for alleged trespass when photos of their house appeared on Google's Street View. A 3rd U.S. Circuit Court of Appeals has upheld most of the District court judge's ruling, but reversed her decision on the trespass claim.

The Borings have claimed damage for trespass, however Senior U.S. District Judge John R. Padova has said, "When it comes to proving damages from the alleged trespass, the Borings are left to collect one dollar and whatever sense of vindication that may bring, but that is for another day. For now, it is enough to note that they 'bear the burden of proving that the trespass was the legal cause, i.e., a substantial factor in bringing about actual harm or damage' ... if they want more than a dollar."

Trademark issues for Apple: Fujitsu fight for iPad

It appears that it is not all smooth sailing with the 27 January 2010 introduction of the iPad to the world. In the US, Fujitsu is claiming that they deserve the trademark for the iPad. Fujitsu manufacture a multifunctional device called the iPad. Fujitsu's application for the contentious name was stalled, then abandoned in 2009, however was revived in June 2009. Apple has until the 28 February 2010 to announce whether it will oppose the Fujitsu's application.

Apple faced a similar situation with the iPhone trademark, with Cisco Systems owning the iPhone trademark, which was eventually settled.

Employers don't automatically own employee inventions: Lessons from UWA v Gray

It might come as a surprise to laypersons that employers don't own employee intellectual property (such as inventions), even if the invention was created in the course of employment. The Patents Act 1990 (Cth) sets out ownership of an invention in s 13, and details who is entitled to a patent in s 15. Neither section expressly states that employees inventions are owned by employers, or entitle employers to patent these inventions. It appears from the Act that the owner of the invention is the person or team of people who performed the intellectual and practical work involved in the development of the invention (see this article for more on patent ownership).

Employers can expressly stipulate in their employee contracts that inventions are owned by the employer. However, employers must be careful not to limit employee activities and freedoms in a way which is considered illegal restraints on trade. Employers can sometimes rely on an implied term giving employers ownership of employee inventions. In Patchett v Sterling Engineering (1955) RPC 21 the House of Lords did imply such a term when the employee was employed to invent, and creating inventions was part of the employees role. This can be interpreted quite narrowly, as it must be an invention for which the employee was paid to invent.

Some employers have argued that a fiduciary duty arises in the course of employment. In VUT v Wilson (2004) 60 IPR 392 the court held that a fiduciary relationship can arise between an employer and an employee. The court found that professional employees, such as professors, do owe a fiduciary duty to the university. Therefore although the university were only partially successful in arguing that the invention was within the scope of the professors' employment, breach of a fiduciary duty meant that the professors held the intellectual property on trust for the university.

In UWA v Gray (No 20) [2008] FCA 49, Gray patented a method for treating liver cancer in his own name, and later transferred these rights to a patent company, and later to a medical company which he later publicly floated. The University of WA where Gray was employed argued that they owned these patents, and therefore were entitled to shares in the Medical company. There was no provision in the employment contract between Gray and UWA regarding intellectual property. University policy was that inventions were to be reported to a 'patents committee', however even if this policy was binding on Gray, the patents committee had long been abandoned.

The UWA then tried to argue that a term was implied into the employment contract that inventions of employees belong to the employer, however they failed to get up on this argument. The court did not accept this argument on the basis that Gray was hired to research, not invent. The court also found that a duty to invent was not congruent with the duty of an academic to publish their work (as this would destroy the patentability of any invention). Furthermore, Gray funded most of his work on the invention in question himself.

The court also did not accept the fiduciary relationship argument. The fiduciary argument was put that Gray had a duty to deal with the property in a way consistent with UWA’s interests. This supposes that UWA is owner of the property. As the court found that UWA does not own the intellectual property, this argument failed.

The university have applied for special leave to appeal to the High Court. It will be interesting to see if leave is granted or not, considering the appointment of French CJ to the High Court (who gave the judgement in the Federal Court before his Honours appointment to the High Court).

I think Gray is a good illustration that employers need to expressly state in employee contracts that IP of employees in the course of their employment belongs to the employer. Employers should also revisit employee contracts regularly to ensure that their IP rights in employee inventions are adequately protected.

Are judges wary of new trade marks? Guylian, Nestle shape marks not distinctive enough

Following Guylian's loss in the Federal court regarding a 'seahorse' trade mark, Nestle have now lodged an appeal against the decision that the 'four finger' shape of a Kit Kat is not distinctive. The judge thought that the shape was the functional shape of the goods (see Phillips v Remington - here the Australian court found that the shape had to be conceptually different to the goods. Burchett J referred to the judgement of Lord Templeman in Re the Coca-Cola Company (1986) 6 IPR 275, in which he stated 'The word `mark' both in its normal meaning and in its statutory definition is apt only to describe something which distinguishes goods rather than the goods themselves.')

Despite surveys which show that consumers associate the four bars shape to a Kit Kat bar, with Guylian taking similar efforts to show consumer association between the shape and their brand, the court has nevertheless found that these marks are not distinctive enough for consumers to see the link between these shapes and the respective brands.

But these decisions are hard to reconcile with the decision in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273, where it was held that it was allowable to register the shape of the good. In essence, the trade mark did not have to be separate from the good.


Kenman Kandy shape

Is it that judges are wary about conferring monopolies to well known companies like Nestle and Guylian (effectively stopping competitors from using attractive and desirable shapes and colours in their marketing), while less concerned about doing the same for less well known companies, like Kenman Kandy.

Colour is also a new comer to the trade mark world, and is just as controversial as shape trade marks. Cadbury and Darrell Lea have only recently ended a long time battle over a shade of purple, settling out of court (Cadbury has allowed Darrell Lea to use purple in their stores). BP had similar troubles trade marking the colour 'green' as the 'predominant' colour for their petrol stations, with opposition from Woolworths supermarkets.