Legal news
What do you say when a client asks you to own the intellectual property in the design work you create for them? Do you take a step back aghast at their audacity? Are you confused or suspicious as to what they are after and why? Do you flat out refuse? Or do you agree but don’t really understand what you have agreed to?
The Productivity Commission will shortly commence a 12 month wholesale review of Australia’s intellectual property regime. The Government has recognised that with a rapidly changing global economy and new technologies, there is a need to ensure that there is an appropriate balance between intellectual property protection and competition. The review was recommended in the extensive Harper Report on Competition Policy, which noted that excessive intellectual property protection can ‘not only discourage adoption of new technologies but also stifle innovation’.
If you are purchasing a business and want to use the existing brand, it’s important to ensure the brand is available for use and sale. It may not automatically come with the acquisition of
business assets.
This happened to poor Mr Carroll who purchased a pallet racking, shelving and storage solutions business from the Griffiths in Queensland in 2009, called Rack’N Stack*. Unbeknown to Mr Carroll, the Griffiths had already sold the Rack’N Stack business to someone else in 2008. Under the original sale, the Griffiths retained a limited licence to trade in an agreed geographical location. Mr Carroll was unaware of this until he tried to register the trade mark Rack’N Stack and found out that the purchaser of the business in 2008 had already registered it as a trade mark in Australia. This registration was cited against Mr Carroll’s application, and the owners also opposed the registration of Mr Carroll’s Rack’N Stack trade mark.
Is the name of your business protected? Many businesses say yes because they have a business name registration or are a registered company. But those kinds of registrations don’t protect the business. Don’t just take my word for it, Shark’s Janine and Naomi from Shark Tank were at pains to explain this to one of the hopeful start up contestants during a pitch on the Channel 10 TV show.
There is so much confusion about protecting business names and it doesn’t just come from start-up businesses. I have seen well established businesses operating internationally that haven’t understood how to protect the name of their business.
In what has been hailed as a landmark decision, the Federal Court has ruled that a number of Australian internet service providers (ISPs) must hand over details of over 4,000 customers alleged to have illegally shared the film, Dallas Buyers Club. It is expected that they will now receive letters from Dallas Buyers Club requesting a settlement payment for copyright infringement.
While this is certainly a win for the rights holders, it is just one step in a process. It may also be a case of the bark being worse than the bite for Australian infringers. Chief Executive of iinet, David Buckingham has described the decision as a ‘positive outcome’ which ensures that ‘customers will be treated fairly’.
What is one of the first questions the Shark Investors ask the hopeful start up business owner contestants on the Channel 10 television show “Shark Tank”?
Do you have a patent and trade mark?
There have already been some amazing inventions pitched before the Sharks. Full of creativity and innovation, many of the business owners have developed a prototype for their invention and some have started trading prior to seeking investment from the Sharks. The contestants are not coming to the Sharks with just an idea. And lucky for the contestants that they don’t because it appears as though the Sharks are looking for more than just a significant percentage of their businesses. The Sharks are seeking what all investors seek – security for their investment.
One of our clients recently rebranded her business, changing its name in the process. Her accountant had diligently registered a new business name for her. Unknowingly, she’d chosen a name that is similar to a competitor’s name – but different enough for ASIC to allow both registrations. Inevitably, the competitor threatened legal action.
It’s happening. The internet is changing, growing, expanding. The .com domain will soon be competing with specific business-owned domains for greater visibility and control on the internet. What does this all mean?
It means there will be many more domain names available for registration. Business will have the ability to carve their own personal internet space by obtaining their own top level domain. And us internet users will see, over time, many more top level domains emerging so web addresses will change too.
There is no doubt about it, kids are addicted to mobile phones. To add to their fascination, games are becoming more and more addictive by requiring in-app purchases to maximise the experience of the game. Even though an app or game might be free to download, the app may offer the purchase of extra content such as additional lives, virtual supplies like diamonds, food, ammunition, clothing or virtual currency to buy more virtual supplies. And this can be addictive. For $2 I can buy 500 diamonds which will let me buy lots of things from the virtual corner store or for $2 I can buy an extra life and continue to play the game.
The parties to a recent Federal Court case could have avoided a lot of time and expense if they had simply put their intellectual property ownership arrangements in writing.
Max Scott came up with a new and less costly way of making “clean wine spirits” for Bacchus Distillery. Bacchus applied for a patent in its own name, and also named one of its employees as co-inventor. Scott believed Bacchus needed to be the sole named owner so it could receive government grants, but the arrangement was never put in writing.
“There’s no need for a distribution agreement – with payment up front, what could go wrong?”
“Distribution agreements are straight forward. Cover off on transfer of title and the ordering process and you’re set – right?”
If you’ve ever thought this, think again. As IP lawyers operating in the business world, we see many things go missing from these type of agreements. It can be costly.
Has your Twitter account been sending unapproved tweets? On Sunday 6 April, that’s exactly what happened to us at Sladen Legal. But fear not - such spam is usually harmless and the issue is easily rectifiable.
There are several reasons why your Twitter account may send unauthorised, unexpected tweets. Usually the culprit is a third party application which you have inadvertently authorised to access your account. For functionality, it’s important for Twitter to interact with other platforms. In doing so, each program will have access to your account. Many of these are legitimate, but sometimes a third party will surreptitiously request this authorisation – and you will grant it. But don’t worry, it happens to the best of us and is easy to manage.
Ever copy a photograph from the internet without permission?
An American photographer has pursued a travel agent operating in Melbourne for the unauthorised use of a picture of Hawaii. Mr Tylor takes photographs and sells or licenses them through photo stock libraries (e.g. Getty Images). Ms Sevin published one of Mr Tylor’s photographs on her website to advertise flights to Hawaii. She is now liable to pay Mr Tylor $24,000 for copyright infringement and costs.
‘Entrepreneur’ is no longer a dirty word. Once considered a term self-claimed by unemployed middle aged men, entrepreneurism has hit the limelight. With increased accessibility to cost effective business models, passionate individuals can now pursue their start-up ventures. It seems there are bigger things to come, with Richard Branson dubbing 2014 as the Year of the Entrepreneur.
But one thing hasn’t (and won’t) change. Start-ups are cash-strapped and often look to cut corners. Some legal corners, however, can be costly or devastating to the development of a start-up. Here are our top 5 lessons you don’t want to learn the hard way.
Consider the branding that your business or organisation uses and the photographs and images it employs on packaging and products, on its website and in brochures and advertising materials.
Do you own these images or have a licence to use them? A recent Federal Court case highlights how easily the copyright subsisting in such photographs can be overlooked.
