Designs Law and Practice Workshop

Design within Australia and how Australia compares to its international peers
A seminar held at Melbourne Law School which presented the joint research project of IP Australia, and the Intellectual Property Research Institute of Australia (IPRIA), University of Melbourne.
Michael R. Falk University of Melbourne & Dr Haiyang Zhang IP Australia

  • Paul Drake IP Australia
  • Associate Professor Kwanghui Lim Melbourne Business School, University of Melbourne
  • Brett Massey IP Australia
  • Dr. Benjamin Mitra-Kahn IP Australia
  • Professor Megan Richardson Melbourne Law School, University of Melbourne
  • Razib Tuhin IP Australia

Website Blocking Injunctions and Safe Harbours: Recent Developments in Australia and the EU

Dr Jaani Riordan Barrister, 8 New Square, London
Chair: Professor Sam Ricketson Melbourne Law School, University of Melbourne Melbourne Law School | Thursday 7 March

Confronted with the challenges presented by internet copyright infringement and other forms of online wrongdoing, courts and legislatures in a number of jurisdictions have been tasked with developing legal responses which are effective yet strike a fair balance between competing fundamental rights.

Dr Riordan considered recent developments in website blocking injunctions and safe harbours in the European Union and Australia, including:

  • The recent decision of the Supreme Court of the United Kingdom in Cartier International AG v British
  • Telecommunications plc [2018] UKSC 28 and its possible application in Australia;
  • The emergence of ‘live’ blocking orders which target infringing transmissions of live sports broadcasts;
  • Amendments made by the Copyright Amendment (Online Infringement) Act 2018 (Cth);
  • Recent case law concerning jurisdiction, discretion, costs, and safeguards; and
  • The relationship between injunctions and safe harbours.

Dr Jaani Riordan is a barrister at specialist intellectual property chambers 8 New Square in London, and has appeared for both applicants and respondents in major blocking cases, including the ISPs in Cartier, the Premier League, and UEFA. He is the author of The Liability of Internet Intermediaries (OUP, 2016) and a co-author of the textbook Laddie, Prescott and Vitoria on the Modern Law of Copyright (5th ed, 2018). Before being called to the Bar, Jaani graduated from the University of Melbourne with degrees in law and computer science, and practised as a commercial solicitor. He also holds a PhD in law from the University of Oxford, where his research examined internet wrongdoing.

Professor Sam Ricketson has written widely and taught in all areas of IP law. He also practised part-time at the Victorian Bar until mid-2015, principally in intellectual property. Prior to his appointment to the University of Melbourne in November 2000, he was the Sir Keith Aickin Professor of Commercial Law at Monash University. He is currently a panel member of the World Intellectual Property Organisation’s dispute resolution body in relation to domain names.

Implied Licence for Copyright Balance

Dr Poorna Mysoor University of Oxford
Melbourne Law School | 15 March

A person infringes copyright if she exercises one of the exclusive rights without the licence of the copyright owner. An express licence granted by the copyright owner is the most common example of such a licence. Copyright law in most jurisdictions also provides for statutory limitations and exceptions, to balance the competing interests, including those of content users and the public. Such limitations and exceptions address specific instances of permitted uses of copyright works to achieve specific policy objectives. If a person’s actions are covered neither by an express licence, nor by the statutory limitations or exceptions, it does not automatically mean that the person has infringed copyright. It may be possible to imply a licence to cover her actions. In contrast to the rigidity of statutory limitations and exceptions, implied licences are characterised by their malleability in being able to address a more diverse set of circumstances as the need arises, providing an additional mechanism to achieve the copyright balance. However, implication as a process is contentious, and there are no established rules for implying a copyright licence. Given the uncertainty surrounding the doctrine of implied licence, courts have not embraced them as readily as they should. This presentation argued that to allay the fears of uncertainty, one must address the process of implication itself, and make it more methodical and transparent. It draws inspiration from contract law, and in particular the rules of implication of a term into a contract, to guide the process of implying a copyright licence.

Dr Poorna Mysoor is a Leverhulme Trust Early Career Fellow at the Law Faculty at Oxford. Her current research examines the interface between property law and copyright law. She completed her DPhil at the Law Faculty at Oxford in 2017. She has taught several core private law subjects such as Land Law, contract Law and Tort Law at various colleges in Oxford and Copyright Law at the Law Faculty at Oxford. Poorna obtained her undergraduate law degree from National Law School of India University, Bangalore and her LLM from SOAS, University of London. Before embarking on her DPhil, Poorna practised intellectual property law in Hong Kong and was a litigator in India.

The Business of Crown Copyright

Professor Ysolde Gendreau Université de Montréal, Canada Melbourne Law School | 22 March
University of Technology | 25 March

At the end of March this year, the Supreme Court of Canada will hear the appeal in Keatley Survey- ing Ltd. v. Teranet Inc., a case where the issue of Crown copyright is at the core of the relationship between land surveyors and a privately owned corporation that manages plans of survey registered by land surveyors according to the electronic land registry system of the province of Ontario. The corporation provides on-line access to the plans for a fee, but does not share any of its income with the surveyors because it claims that the publication of the plans triggers the application of the rule that gives copyright ownership in the plans of survey to the Crown. This talk discussed the arguments that were made in this case and questioned the issue of the exercise of Crown copyright in Canada. It served as the starting point for an examination of the contemporary evolution of Crown copyright in both Canada and Australia, both of which inherited this concept from British law.

Professor Ysolde Gendreau is currently Associate Dean for External Affairs and Communications at the Faculty of Law of the Université de Montréal in Canada. Her main field of specialization is copy- right law and she has published extensively on Canadian, comparative, and international aspects of this branch of intellectual property law in Canada and abroad. She remains actively involved in inter- national intellectual property associations such as ATRIP, of which she has been president, and ALAI, where she is one of the vice-presidents.

Design Innovation and Intellectual Property: Launch of IPRIA-IP Australia Report on Designs Law and Practice

Melbourne Business School | Monday 6 May
This seminar was part of a series generously supported by IP Australia

The Report on Designs Law and Practice: Design within Australia and how Australia compares to its international peers was a collaborative production of IPRIA and IP Australia, authored by Michael Falk and Haiyang Zhang. It represents the culmination of a six-month study comparing design labour data and registered design data across multiple countries including Australia. It finds that increases in design labour are positively associated with increases in the use of registered design rights, and raises a number of questions about the relationship between designs protection and design innovation.

The report was introduced by Paul Drake, Dr Michael Falk and Dr Haiyang Zhang, Office of the Chief Economist, IP Australia, Brett Massey, Assistant Director Domestic Policy & Legislation, IP Australia, Associate Professor Kwanghui Lim, Melbourne Business School, and Professor Megan Richardson, Melbourne Law School.

Dr Charlie Day, CEO, Innovation and Science Australia, acted as discussant and formally launched the Report

Intellectual Property Law and International Trade Law Workshops for Thai Judiciary

Melbourne Law School | 22 July - 2 August

This event was instigated by Associate Professor Andrew Godwin, Associate Dean (Engagement). During the workshop, IPRIA staff and associates delivered workshops and presentations on IP Conventions, IP Law in Australia and in the Region, Trademark Law, Designs Law and Practice Domain Names Disputes, Patent Law, IP and Human Rights and Copyright Law. These presentations were delivered over a 2-week period to members of the Thai Judiciary.

Is the Trade Mark Register Too Cluttered?

Melbourne Law School | Wednesday 25 September

Professor Robert Burrell Oxford University and Melbourne Law School
Anna Gibson Intellectual Property Director, Treasury Wine Estates Limited
Professor Beth Webster Director, Centre for Transformative Innovation, Swinburne University of Technology
Dr Haiyang Zhang Office of the Chief Economist, IP Australia Chair: Professor Kimberlee Weatherall Sydney Law School

This seminar was part of a series generously supported by IP Australia

Companies and trade mark attorneys are probably familiar with the struggle to find a good, attractive trade mark in what seems to always be a crowded field. Some of the problem might just be competition, but there has been concern that part of the problem is that the trade marks register is full of unused, or overly broad marks. In its Inquiry into IP Arrangements, the Australian Productivity Commission suggested this was a problem and suggested some reforms. But is there a problem – and if there is, what would a sensible solution look like? In this seminar we heard perspectives on these questions from a range of experts, including Dr Haiyang Zhang from IP Australia, who discussed new research out of the Office of the Chief Economist at IP Australia.

Professor Robert Burrell, Oxford University and Melbourne Law School, is a leading scholar in international and Australian trade mark law and a registered trade mark attorney. He is the author, with Michael Handler, of Australian Trade Mark Law (2nd ed 2016), and an active participant in trade mark law reform processes, engaging with IP Australia and the Productivity Commission in the course of various inquiries. He was an investigator in a recent ARC Linkage Project investigating trade mark law’s conceptions of the consumer.

Anna Gibson is the Global Director of Intellectual Property at Treasury Wine Estates, headquartered in Melbourne. Previously the wine division of Foster’s Group, Treasury is one of the world’s largest wine companies, with over 4000 trademarks in over 150 countries worldwide. Brands she manages include famous names like Penfolds, Wolf Blass, Lindemans, 19 Crimes, Squealing Pig and Beringer.
Professor Beth Webster is Director of the Centre for Transformative Innovation at Swinburne University of Technology. She is also Pro Vice-Chancellor for Research Impact and Policy. Her expertise centres on the economics of the way knowledge is created and diffused through the economy. She has a PhD in economics from the University of Cambridge and an M.Ec and B.Ec (hons) from Monash University. She is a fellow of the Academy of Social Sciences Australia.

Dr. Haiyang Zhang is an Economist at the Office of the Chief Economist in IP Australia. He has worked in the field of intellectual property for more than 20 years. Haiyang received his Masters and PhD degrees in Development Economics from the Graduate Institute for Policy Studies in Japan in 2006 and 2009. He moved to Australia in 2012 and worked as a research associate at the Australian National University before joining IP Australia in 2016.

Professor Kimberlee Weatherall, University of Sydney Law School, teaches and research’s across intellectual property law and the IP-trade nexus. She has published extensively in leading Australian and international journals on issues ranging from digital copyright, and bilateral and multilateral trade agreements and IP, to the conception of the consumer in trade mark law.

Where to From Here? Fashion Design Law, Technology and Practice in Australia

Melbourne Business School | Wednesday 13 November

Colin Golvan AM QC Victorian Bar
Alana Kushnir Lawyer and Curator, Director and Founder of Guest Work Agency
Brett Massey Assistant Director Domestic Policy & Legislation, IP Australia
Chair: Kwanghui Lim Associate Professor, Melbourne Business School

This seminar is part of a series generously supported by IP Australia

Design rights have been described as ‘An Expensive, Confusing, and Ineffective Suit of Armor’ when it comes to the IP protection of emerging fashion designers in the digital age (Janssens & Lavanga, Fashion Theory, online 26 October 2018). Indeed, notwithstanding the plethora of IP rights marginally available to fashion design, according to OECD data for 2016 footwear and clothing top the trade in counterfeit and pirated goods worldwide (OECD, Trends in Trade in Counterfeit and Pirated Good, 18 March, 2019). And the prospects of civil and criminal liability seem quite ineffective in the face of an entire fashion industry which is ‘built around the idea that trendy clothes should be available to consumers at accessible price points’ rather than rewarding and encouraging innovative design (Brucculieri, Huffington Post, 4 September 2018).

So where are the gaps in the Australian IP laws that may be called on to protect fashion design, what do these laws protect, how is technology changing current practices, and how might design rights perform better for a new generation of fashion designers in Australia specifically? A panel of experts from law, industry and IP Australia considered these questions.

Colin Golvan AM QC has had extensive experience in the area of infringement of copyright, registered designs, patents and trade marks and was also senior counsel in the seminal fashion design cases of Seafolly Pty Ltd v Madden [2013] FCA 314; [2014] FCAFC 30 and Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd [2008] FCAFC 197. He will speak about his experience in the protection of fashion design from unauthorised reproduction and measures available to designers to prevent the sale of fake designs. He will also discuss the design/copyright overlap provisions, having regard to argument raised about that issue in the recent Federal Court proceeding of Globe International Limited v Kmart Australia Limited.

Alana Kushnir is the founder and director of Guest Work Agency, an art advisory and law firm for artists, designers, collectors, galleries, arts organisations and museums. Alana is also a sessional lecturer at The University of Melbourne, teaching subjects on contemporary art and art law, and the Principal Investigator of the Serpentine Galleries’ R&D Platform Legal Lab. She holds a BA/LLB(Hons) from the University of Melbourne and an MFA (Curating) from Goldsmiths, University of London. She will speak about the legal challenges facing emerging designers.

Brett Massey is a senior policy officer with over a decade of experience at IP Australia providing policy advice and changing intellectual property legislation, and is a leading figure in IP Australia’s current work on designs law reform. He is an advocate for evidence-based policy, deeper stakeholder engagement, and continuous innovation in the policy and legislative process. He will speak about IP Australia’s consultations in its designs review and options for law reform.

.au Dispute Resolution Policy

2 December 2019 | Davies Collison Cave, Melbourne

Professor Andrew Christie Melbourne Law School, University of Melbourne
Jürgen Bebber Corrs Chambers Westgarth
Sally Foreman Davies Collison Cave
Chair: Professor Sam Ricketson Melbourne Law School, University of Melbourne

This seminar was part of a series generously supported by IP Australia

Media Law & IP Conference

5 & 6 December 2019 | Melbourne Law School

Centre for Media and Communications Law & the Intellectual Property Research Institute of Australia
Plenary speakers for the 2019 conference:
Associate Professor Sara Bannerman McMaster University, Canada
Professor David Rolph Sydney Law School, University of Sydney
Associate Professor Paul Wragg School of Law, University of Leeds, United Kingdom

Panel presentations include:
Amateur media and user-generated content - - - Broadband futures - - - Competition - - - Content creation, use and re-use - - - Convergence - - - Copyright and speech - - - Data and surveillance
- - - Defamation and public debate - - - Design cultures and practices - - - Digital publics - - - Free speech - - - Intermediaries, responsibility, control, neutrality - - - Journalism and popular media - - - Measuring and valuing IP - - - Media representations of law - - - Networks and networking - - - Privacy and publicity - - - Privacy by design - - - Public knowledge - - - Public media - - - Reporting courts - - - Surveillance and security - - - Technology and IPRs - - - Trademarks - - - and more…