Research Projects

Current

Bookcase

ARC Linkage The Legal and Social Dynamics of Library eLending

Professor Rebecca Giblin, University of Melbourne
Professor Kimberlee Weatherall, University of Sydney
Professor Julian Thomas, RMIT
Dr François Petitjean, Monash University

Team: Dr Jenny Kennedy (RMIT), Dr Charlotte Pelletier (Monash University), Mr Daniel Gilbert (PhD student)

Ebooks have tremendous beneficial potential, particularly for Australians in remote areas and those with impaired mobility or vision, and have become more crucial than ever in the COVID era. Compared to physical books however, the rights of libraries to acquire and lend them are severely restricted. This project brings together 8 library partners with legal, social and data science researchers to investigate ebook lending practices and understand their social impacts. Building upon that evidence base, the project is identifying ways of reforming policy, law, and practice to help libraries fulfill their public interest missions.

See research papers, results, open datasets and interactive dashboards at ELending Project.

ARC Future Fellowship The Author’s Interest Project

Professor Rebecca Giblin, University of Melbourne

Team: Dr Ula Furgal (University of Glasgow), Mr Joshua Yuvaraj (PhD student), Mr Daniel Gilbert (PhD student)

This project is developing new empirical understanding of the cultural value lost through existing approaches to copyright. Copyright is non-zero-sum, so it is possible to make the pie larger by changing the scope and division of rights. The project intends to explore that potential by using fuller protection of authorship as a mechanism for securing a fairer go for creators, unlocking new opportunities for publishers, generating new sources of arts funding and improving access for the public. Expected outcomes include new understanding of how this can be achieved within the confines of an unamendable treaty framework. The project should provide significant benefit by informing law reform debates at domestic and international levels.

Key sub-projects include:

a)The case for reversion rights, as presented at WIPO and the WTO – download pamphlet here
b)‘Are contracts enough? An empirical study of author rights in Australian publishing Agreements’ (by Yuvaraj and Giblin)
c)An evaluation of the use of the United States copyright termination system in collaboration with the Melbourne Data Analytics Platform
d)International collaboration exploring treaty-compatible ways of supporting creator rights – see special edition of the Columbia Journal of Law & the Arts

See further details and keep up to date with project activities at authorsinterest.org. Typewriter_letters

Untapped: the Australian Literary Heritage Project

Professor Rebecca Giblin, University of Melbourne

Team: Dr Airlie Lawson (University of Melbourne)

This is a new collaborative initiative between IPRIA, libraries and author groups to digitise important out-of-print books and license them into public libraries. It currently has seed funding from library organisations and we’re seeking to raise additional funds from the ARC and private donors. This important collaboration promises to create a new revenue stream for Australian writers while shining new light on the value of reverted copyrights, library promotional activities and the relationship between library elending and book sales.

For more information, visit untapped.org.au

PhD Research

Joshua Yuvaraj Melbourne Law School Visiting Scholar, Monash University

Joshua is undertaking his PhD research on how reversion of rights to authors can help create more income opportunities for authors and make books more available to the public. Rights can revert either when a particular time has passed, or when a criterion is met (for example, the book being out of print). In the digital age, authors have many more avenues for revitalising their books than they might have previously. They can directly license the use of their books in libraries, enter new publishing agreements with specialist publishers, or even attempt to self-publish. Joshua is investigating whether publishing contracts adequately provide such mechanisms for authors, and what policymakers can learn from the different ways copyright statutes around the world structure these rights. His research will vitally inform current debates about how to ensure the trade book industry continues to benefit authors, publishers, and the public.

Joshua’s research has been supported by funding from the Australian Research Council via project FT170100011, an Australian Government Research Training Program Scholarship, and Monash University.

The Patent Grip: The Market’s Transformation of ‘Traditional Knowledge’ into ‘Invention’

Ben Hopper, Melbourne Law School

Ben Hopper is completing his PhD under the supervision of Megan Richardson, Sarah Biddulph and Graeme Austin.  His thesis asks: what gives patent law grip, i.e., its power to affect social relations in a given society?  Why do people use patent laws and why do people obey them?

Hopper's thesis draws on Evgeny Pashukanis’s commodity theory of law.  Its basic tenet is that patent laws take hold or have “grip” (i.e., are used and obeyed) in response to the development of formal, capitalist markets for intellectual goods.  This is fundamental to understanding the social and economic roles played by patent laws in a given place.  Whether or not patent laws induce innovation, help disseminate inventions, protect inventors’ personhood rights, facilitate misappropriation of workers’ knowledge or play some other role scholars have attributed to them, depends first and foremost on whether or not patent laws have grip.

Macro and micro-level evidence is used in the thesis.  The former concerns the development of a national market for traditional medicines and patenting trends in China.  The latter concerns a case study on the patenting of traditional medical knowledge (TMK) (i.e., the patenting of what many would see as the antithesis of “invention”) in the historically isolated, biodiverse Guizhou province in China’s southwest.  To build the case study, I conducted fieldwork in Guizhou in 2019, including a survey of mostly ethnic minority TMK practitioners.  The survey sought measures of marketisation and patent grip at the individual level.  The case study employs both quantitative and qualitative techniques.

Rethinking lending rights

Daniel Gilbert, Melbourne Law School Visiting Scholar, Monash University

When a library lends out a physical book, it undertakes an act largely beyond the control of the market. Copyright does not generally prevent this usage, and for good reason: libraries fulfil an essential role in the dissemination of knowledge and culture enabling access to books for those who could not otherwise afford them, cultivating literary passion across multiple generations, promoting and purchasing these works, and functioning as pillars of the communities they serve. But while libraries are not generally prevented from lending under copyright, as the number and importance of these institutions has increased, a growing number of nations have established lending rights which remunerate authors for this use.

Such rights provide an important, and often stable, source of income to authors in a time of drastic change to the publishing industry – often justified on the basis of a presumed diminution of sales from library lending, as well as on cultural grounds. Yet only a handful of lending rights apply to electronic books, despite their increasing importance to libraries, readers, and authors. This is because digital copyright fundamentally changes the relationship between lending and lending rights, transforming an extra-market activity into one that falls squarely within the author’s exclusive rights. If copyright allows copyright holders to exert control – not just over the initial sale, but over potentially any subsequent use – what should a lending right look like? This project will consider the diverse structures of lending rights across the globe, and draw on them to propose new directions for Australia’s still-analogue public and educational lending rights.

Recent Research Projects

ARC Linkage The Efficiency of the Global Patent System

Professor Beth Webster, Swinburne University of Technology,
Professor Paul Jensen, University of Melbourne
Associate Professor Alfone Palangkaraya, Swinburne University of Technology
Professor Brian Wright, University of California, Berkeley
Professor Sadao Nagaoka, Hitotsubashi University
Professor Bruno van Pottelsberghe, ULB, Sussex University, Université Libre de Bruxelles
Professor Show-Ling Jang, National Taiwan University

Partners
IP Australia
IPTA Institute of Patent and Trademark Attorneys of Australia

An efficient global patent system is a critical economic policy for small, isolated countries such as Australia. To be efficient, the patent system should be globally consistent; simple and cost effective to use; parsimonious in the grant of monopoly rights; and provide a level playing field for all inventors. Existing empirical evidence indicates that the patent system is currently inefficient and this has negative effects on our R&D sector. This project is the first study in the world to combine a new international patent database with more in-depth local information from Australia, Japan, US, Europe and Chinese Asia (China, Taiwan). Our analysis will provide robust evidence to underpin international patent negotiations.

ARC Discovery The relationship between firm innovation and performance and the role of the government

Productivity growth in Australia has plateaued. Although Federal and State Governments employ a range of different innovation policies designed to stimulate productivity growth, little is known about the effects these programs - and of innovation more generally - on firm performance. One reason why this relationship is unknown relates to the availability of firm-level data. In this project, we take advantage of unique access to a dataset provided by the Australian Bureau of Statistics which enables us to observe the activities of every firm in Australia. Using these data and appropriate econometric techniques, we will examine the effect of a range of government policies designed to stimulate innovation and productivity growth.

The market for design: insights from interviews with Australian firms

Associate Professor Kwanghui Lim, Melbourne Business School, University of Melbourne
Associate Professor Don O’Sullivan Melbourne Business School, University of Melbourne
Mr Michael R. Falk Melbourne Business School, University of Melbourne

The goal of this study was to provide insights into how the market for design operates.

We found that the formal protection of intellectual property through design rights plays a minor role in the decision making of firms operating in the market for design. This creates difficulties for buyers and sellers in transacting with each other and capturing value. We found that both buyers and sellers have adaptedto imperfections in the market for design by developing reputational signals. Signals of a seller’s reputation assume a heightened importance and we see strong evidence that sellers engage in strategies to manage these signals. We refer to these signals as the 5 R’s: rigour, rhetoric, roster, rating and referral. Conversely, we find that signals of a buyer’s reputation also assume great importance and again we see strong evidence of buyers engaging in strategies to manage these signals. We refer to these signals of buyer reputation as the 4 C’s: contests, co-creation, curation and casting. Beyond influencing reputation, signals play a role in enabling buyers and sellers to influence each other’s level of investment and effort in the transaction.

Our project is the first stage in mapping the dynamics and mechanisms of how the market for design operates. Our ultimate aim is to generate insights that inform how Australia might encourage the growth of design as a capability within firms.

Although formal intellectual property rights are perceived as having a limited role, our study suggests that there is a need to ensure the optimal functioning of design rights. There are clear policy implications in four other areas—in nurturing design talent, coordinating an Australian design narrative, providing recognition for the quality of Australian design and influencing demand for design within the local market.

These findings were presented at several conferences:

UNSW Asia-Pacific Strategy, Innovation, & Entrepreneurship (SIE) Symposium. 20 Sep 2015.
Wharton Technology & Innovation Conference. April 2015
Design for Business Research Conference. Melbourne, May 2015
Asia Pacific Innovation Conference, Sydney. November 2014.
The report was cited in the Productivity Commission Issues Paper on Intellectual Property Arrangements (Oct 2015). And,

It also received a mention by the President of Design Institute Australia in the DIA Winter 2015 newsletter (http://www.dia.org.au/media/SPARK%2034_Winter%202015_web.pdf

This report was commissioned by IP Australia

The Careers of Scientists

Associate Professor Catherine de Fontenay, Melbourne Business School, University of Melbourne
Associate Professor Kwanghui Lim, Melbourne Business School, University of Melbourne
Kwanghui Lim and Catherine de Fontenay (MBS) are currently working on a project on the careers of scientists.

IPRIA funded the initial stages of this project, and it is now an ARC Discovery project. The purpose of this project is to explore how team size and signals of quality affect the promotion prospects (and exit choices) of scientists. At this stage Kwang and Catherine are exploring a model based on economic theory and computer simulation.

A Global trade mark database

Professor Beth Webster, Swinburne University of Technology,
Professor Paul Jensen, University of Melbourne
Professor Alfone Palangkaraya, Swinburne University of Technology
Assistant Professor Gaétan de Rassenfosse, EPFL, École polytechnique fédérale de Lausanne
T’Mir D. Julius, Swinburne University of Technology
Dr Steve Petrie, Swinburne University of Technology
Associate Professor Kwanghui Lim, Melbourne Business School, University of Melbourne
Associate Professor Russell Thomson, Swinburne University of Technology
Dr Ben Mitra-Kahn, IP Australia

The aim of this project is to create an international linked trade mark database. Currently, trade mark databases are country specific which makes it expensive, if not unviable, to analyse global aspects of branding and trade mark policy issues. With a team of researchers from computer science, physics and economics we aim to link national trade mark data registers on the basis of company names, text and images to form a comprehensive global database.

ARC Linkage Project: Testing Trade Mark Law’s Image of the Consumer

Associate Professor Kimberlee Weatherall, University of Sydney
Professor Michael Humphreys, University of Queensland
Dr Sarah Kelly, University of Queensland
Associate Professor Jennifer Burt, University of Queensland
Professor Megan Richardson, Melbourne Law School, University of Melbourne

As part of this project Megan Richardson and Jill Klein from Melbourne Business School carried out a study to test the assumption made in the recent High Court decision in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 that (in the absence of compelling evidence to the contrary) ‘Oro’ when used in relation to coffee does ‘not … convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be a word having direct reference to the character or quality of the goods’, with the result that the word could function as a registrable trade mark. The project includes an online consumer survey designed in conjunction with the survey firm Pureprofile and conducted across Australia in September 2015, designed to elicit consumer understanding of and attitudes to the work ‘Oro” when used on coffee packets. Results of the survey are currently being analysed.

‘The Internet of Things’

The Internet of Things (IoT) impacts human lives in many positive ways as a result of data collected through wearables and sensors associated with health, homes, environments, activity and cars (to name a few). The availability of individuals’ personal information to anybody from anywhere, and integration of this data with other online and offline data, increases the risk that newly created data sources have the potential to generate alarmingly personal user/customer profiles. Subject to further processing and inference, these profiles may
disclose highly sensitive aspects of individuals, which may significantly impact on individual privacy. This project sponsored by MNSI investigates consumer and business attitudes to the privacy challenges associated with the internet of things and also considers techniques to improve privacy without undermining product innovation.

Rachelle Bosua, Sean Maynard, Atif Ahmad, and Philip Dart, Computing and Information Systems, University of Melbourne
Professor Megan Richardson and Karin Clark, Melbourne Law School, University of Melbourne
Associate Professor Kwanghui Lim, Melbourne Business School, University of Melbourne

Free Speech, Confusion and the Marketplace of Ideas

Professor Andrew Kenyon, Melbourne Law School, University of Melbourne
Professor Megan Richardson, Melbourne Law School, University of Melbourne
Professor Graeme Dinwoodie, University of Oxford, Faculty of Law
Professor Jacob Rowbottom, University of Oxford, Faculty of Law

This is a project run under the Oxford Law Faculty - Melbourne Law School Research Partnerships scheme, funded by Allan Myers QC.

A standard rationale for free speech is that truth will emerge through the ‘marketplace of ideas’, a rationale that some have associated with the 19th century liberal-utilitarian philosopher JS Mill but is also explicitly stated by Holmes J in Abrams v US (1919). Given this rationale, it is puzzling to observe how much truth-endangering confusion is tolerated in areas of media and communications law.

Consider, for instance, defamation law, trade mark law and the law of passing off. These areas of law are supposedly concerned with confusion (at least as indicators of legally cognizable harms). But in fact they delineate their scope for controlling confusion far from comprehensively, using tests such as the ‘ordinary reasonable’ person or average consumer to determine just whose confusion the law should seek to address (so persons whose conclusions are deemed ‘farfetched and fanciful’ appear to be left out of account under these standard tests). Further they erect a range of thresholds and defences that apply notwithstanding the likelihood that the communication will lead to confusion and even in the face of evidence of actual confusion (for instance the ‘actual malice’ standard for public figures in US defamation law and the ‘public interest’ defence under the 2013 UK defamation statute; the ‘use as a trade mark’ threshold in Australian trade mark law and the ‘fair use’ defence to trade mark infringement in the US and the UK).

This project funding, enables us to interrogate closely the multiple ways in which Anglo-Australian as well as American media and communications law allows for confusion, the marketplace of ideas rationale notwithstanding – and also to consider the possible reasons for this divergence as well as some possible reforms.

An empirical analysis of auDRP decisions

Professor Andrew Christie, Melbourne Law School, University of Melbourne
Alyssa Dixon, University of Melbourne
James Gloster, University of Melbourne

The most common way in which a trade mark owner’s rights are transgressed in the digital environment is when the trade mark is incorporated into a domain name registered by a person other than the trade mark owner – a practice commonly referred to as “cybersquatting”. Since 1 August 2002, trade mark owners have been able to seek relief against cybersquatting in the .au domain name space under the .au Dispute Resolution Policy (“auDRP”). The auDRP provides a much cheaper and speedier alternative to litigation. Instead of filing a court action, the trade mark owner files a complaint with a private dispute resolution body, which appoints a panelist to decide the matter on written evidence. The trade mark owner will be entitled to the remedy of transfer or cancellation of the domain name where: (i) the domain name is identical or confusingly similar to the trade mark; (ii) the domain name registrant has no rights or legitimate interests in the domain name; and (iii) the domain name was registered or used in bad faith. Typically, an action under the .auDRP takes two months and costs between $1,500-$6,000. This compares very favourably to litigation, which typically takes some years and costs some hundreds of thousands of dollars.

In the nearly 13 years since commencement of the auDRP, approx. 450 complaints have been filed, and approx. 380 cases have proceeded to determination. While there has been a substantive qualitative analysis of these cases,1 there has been no substantive2 quantitative analysis of the cases.
Thus, we do not know the answers to important questions such whether complaints based on registered trade marks are more successful than those based on unregistered trade marks, whether complaints fail on some grounds more often than on others, and whether there are repeat players (as trade mark owners or as cyberquatters).

This project will provide answers to these, and many other, important questions. It will do so by building a database of every auDRP decision, coded across approx. 50 fields (see attached draft field listing). Each auDRP decision will be read by a legally-trained RA, the response for each field will be entered into a database, the database will be interrogated to produce descriptive statistics and to identify associations, the results of the interrogation will be analysed, and the analysis will be reported in an article suitable for publication in a refereed journal.