Intellectual property dispute lawyers

Intellectual property dispute lawyers Lawyers Sydney

Our IP lawyers advise clients operating across a broad range of industries in relation to the protection of their intellectual property rights. We also provide associated litigation & dispute resolution services as part of our commitment to protecting your intellectual property.

Copyright (protects the expression of ideas)

Copyright protects the expression of ideas (and not the ideas themselves). Ideas can broadly be expressed as literary, dramatic, musical or artistic works (e.g. written articles, song recordings, drawings, photos and even three dimensional works such as buildings). Films, sound recordings, broadcasts, and the typographical arrangement and layout of published editions are also specifically protected.

Copyright protection is provided for under the Copyright Act 1968 (Cth) which protects copyright owners against infringing acts occurring in Australia. In Australia, protection arises automatically upon creation to works which are first published in Australia or where the author was an Australian citizen or person resident in Australia. Australia is also obliged under international copyright conventions to protect foreign copyright material in the same way as a work first published in Australia for example. There is no requirement of registration. The duration of protection varies depending on the circumstances, but it generally subsists for 70 years. Moral rights also exist to protect the reputation of the author and ensure that works are presented in their intended form.

Exclusive rights

Reproduce the work in a material form
Publish the work
Perform the work in public (unless it is an artistic work)
Communicate the work to the public
Make an adaptation of the work (unless it is an artistic work)

Similar specific rights apply to films, sound recordings, broadcasts, and the typographical arrangement and layout of published editions.

Copyright infringement

Generally, copyright is infringed if a person does or authorises the doing of one or more of the rights of the copyright owner without the owner’s licence or consent. The importation of infringing items is also protected. The copying need not be identical; the copying of a substantial part of the protected work may also be sufficient for infringement.

The primary remedies for copyright infringement are (1) injunction (2) damages or account of profits and (3) additional damages. There are also various other available remedies which the court may grant.

The owner of copyright material can also lodge a notice of objection with the Comptroller-General of Customs (which lasts for 4 years unless the copyright has expired) to protect their copyright material so that customs may seize any copies being imported into Australia for the purposes of sale, hire, distribution or exhibition.

Artistic works which are protected under the copyright act should also be registered as designs before the design is industrially applied to a three dimensional product and sold in Australia so that the embodiment of the artistic work in a product is protected under the registered designs regime.

We can assist in relation to:

General copyright advice
Commercial agreements e.g. licences, assignments etc
Copyright litigation and dispute resolution
Customs notices of objection

Designs (protect the appearance of products)

Registered designs protect the overall appearance of a product (i.e something that is manufactured or hand made) resulting from one or more visual features (e.g. the shape, configuration, pattern or ornamentation of a product). The design needs to be new and distinctive in order to be registered and it is therefore important that the design is not disclosed before the application is filed.

Certain works (particularly, artistic works i.e. 2 dimensional “designs”) which are protected under the copyright act should also be registered as designs before the design is industrially applied to a three dimensional product and sold in Australia so that the embodiment of the artistic work in a product is protected. If the work is applied to a product and sold commercially, some copyright protection in the work may be lost and it may be necessary to rely on a registered design to protect those rights.

Protection of a registered design lasts for 10 years from the filing date. There is an initial term of 5 years, capable of being renewed for another 5 years.

We can assist in relation to:

General registered designs advice
Lodgement and prosecution of registered design applications
Litigation and dispute resolution
Commercialisation and management of portfolios including renewals

Patents (protect the function of products)

Patents protect the function of inventions which are unique and innovative / involve an inventive step. We are affiliated with specialised patent attorneys who can assist you to protect your inventions.

Trade marks (protect brands)

A trade mark is, in summary, a sign (e.g. a letter, word, name, number, brand, logo, aspect of packaging, shape, colour, sound or scent) that is used to distinguish the goods or services of a trader from those of others.

Before you decide upon your brand (which may consist of a letter, word, name, number, logo, aspect of packaging, shape, colour, sound or scent) and launch it (including before you register your domain name) a trade mark availability search should be conducted by a professional to determine whether there are any existing registered or unregistered rights which may exist in similar brands.

The mere registration of your company name or business name with the Australian Securities and Investments Commission (ASIC) does not protect your brand identity, or provide registered trade mark rights in your brand. Registration with ASIC is a legal obligation. However, registration as a trade mark with the Australian Trade Marks Office can provide your business with:

an exclusive statutory monopoly to use your registered brand identity in respect of the goods and/or services for which it is registered in Australia;
an easy way to prevent cybersquatting (the registration of a domain name which incorporates your brand by others);
much easier and cheaper enforcement of your rights in your brand if someone else infringes your rights, for example, by using a brand which is either substantially identical or deceptively similar to your brand in respect of the same or similar goods and/or services; and
a registered “asset” which can be licensed, assigned, and monetised.

Only registered trade marks can apply the ® symbol. This puts others on notice that your brand is registered, and that you are likely to prosecute infringement.

Our Sydney trade mark lawyers provide trademark law advice at competitive fixed fee rates:

Trade mark searches to determine availability of your proposed mark
Trade mark / brand positioning advice
Trade mark registration services, including international registrations
Trade mark licensing, assignments and other tailored commercial agreements
Infringement advice, litigation, enforcement and dispute resolution
Trade mark portfolio management
Trade mark renewals

Confidential information

Confidential information may be protected from disclosure by legislation, equitable jurisdiction or via contractual jurisdiction.

Generally it is necessary to prove that:

an obligation of confidence existed in relation to the specific information
the information had the necessary quality of confidence
the use or disclosure of the information was unauthorised
the breach resulted in damage

If the claim is a contractual claim then damages will usually be the primary remedy.

If the claim is equitable (e.g. if there is no contract) then the remedies of injunction, an account of profits, equitable damages, and delivery up are available

Other registrations

In addition to the above we can also assist you with the following registrations:

Domain names
Business names
Corporations and other business structures

Litigation & dispute resolution

In addition to the above, our litigation and dispute resolution experience includes claims involving:

Passing off
Misleading and deceptive conduct
Domain name disputes & issues concerning cybersquatting

Useful links

IP Australia – The official government agency responsible for administering patents, trademarks, designs and plant breeder’s rights in Australia. https://www.ipaustralia.gov.au/

Australian Government’s Department of Industry, Science, Energy and Resources – Provides information and resources on intellectual property laws, including patents, trademarks, copyright, and designs. https://www.industry.gov.au/policies-and-initiatives/intellectual-property

Australian Copyright Council – An independent non-profit organization that provides legal advice and education on copyright law in Australia. https://www.copyright.org.au/

Australian Competition and Consumer Commission – The competition regulator and consumer protection agency in Australia that also handles intellectual property-related disputes. https://www.accc.gov.au/business/competition-briefs-competition-law-and-ip

World Intellectual Property Organization (WIPO) – Provides information on international intellectual property laws and regulations, including treaties and agreements. https://www.wipo.int/portal/en/index.html

The Intellectual Property Society of Australia and New Zealand (IPSANZ) – A professional association for intellectual property practitioners that provides resources and information on IP law and practice. https://www.ipsanz.com.au/

Australian Digital Alliance – A coalition of organizations advocating for balanced copyright laws that support access to information, education, and culture. https://digital.org.au/

Australian Copyright Agency – A collective management organization that licenses the use of copyrighted materials on behalf of creators and publishers. https://www.copyright.com.au/

Creative Commons Australia – Provides information and resources on the use of Creative Commons licenses in Australia. https://creativecommons.org.au/

Australian Law Reform Commission – Conducts reviews and provides recommendations on Australian intellectual property laws and policies. https://www.alrc.gov.au/inquiries/intellectual-property/

Related insights

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Have you accidentally transferred money to the wrong account?

Home Table of Contents What to do if you have mistakenly transferred money 1. Contact your bank immediately ePayments Code[1] administered by ASIC The ePayments Code is a voluntary code of practice that banks and other electronic payments providers subscribe to. Typically, in the terms and conditions between you and your bank, there will be a clause in which the bank is obliged to comply with the ePayments Code and therefore a contractual right that you can enforce against the bank[2]. Relevantly, amongst other things, the ePayments Code prescribes the rules which determine who pays for unauthorised transactions and the how mistaken internet payments can be recovered. The ePayments Code applies to a wide range of electronic payments provided by banks[3]: (a) electronic card transactions, including ATM, EFTPOS, credit card and debit card transactions that are not intended to be authenticated by comparing a manual signature with a specimen signature, (b) telephone banking and bill payment transactions, (c) pay anyone banking facility transactions, (d) online transactions performed using a card number and expiry date, (e) online bill payments (including BPAY), (f) transactions using facilities with contactless features and prepaid cards, not intended to be authenticated by comparing a manual signature with a specimen signature, (g) direct debits, (h) transactions using electronic toll devices, (i) transactions using mobile devices, (j) transactions using electronic public transport ticketing facilities, (k) mail order transactions not intended to be authenticated by comparing a manual signature with a specimen signature, and (l) any other transaction specified by ASIC under clause 44 as a transaction to which the ePayments Code applies. There are exceptions and modifications which apply to low value facilities, small businesses, and BPAY payments. Three categories of payments Banks can deposit money into the wrong account for various different reasons and it is important to distinguish between the different categories of mistaken bank transfers. In all cases it is important that you contact your bank immediately. Mistaken internet payments This page is primarily concerned with mistaken internet payments i.e. funds transmitted using a pay anyone banking facility that are sent to an unintended recipient. There are various important obligations upon banks which relate to disclosure of terms and conditions (clause 26), on screen warnings (clause 27), reporting (clause 28), and investigation (clause 29). The applicable process depends on whether or not there are sufficient funds in the recipient’s bank account to repay you, and how quickly you make your report to the bank: Process where sufficient funds are available and report is made within 10 business days[4] In short, if a report is made within 10 business days of making the mistaken internet payment, and there are sufficient funds available in the recipient’s account to repay the mistaken payment, then the recipient’s bank must return the funds to your bank within 5 – 10 business days of receiving a request from your bank. If your bank is not satisfied that a mistaken internet payment has occurred, then it can still seek the consent of the unintended recipient to return the funds. Process where sufficient funds are available and report is made between 10 business days and 7 months[5] The process is less easy if more time has passed. In short, if a report is made between 10 business days and 7 months after making the mistaken internet payment, and there are sufficient funds available in the recipient’s account to repay the mistaken payment, the receiving bank must: – complete its investigation into the reported mistaken payment within 10 business days of receiving a request. – Prevent the unintended recipient from withdrawing the funds for 10 further business days – Notify the unintended recipient that it will withdraw the funds from their account, if the unintended recipient does not establish that they are entitled to the funds within 10 business days commencing on the day the unintended recipient was prevented from withdrawing the funds If the unintended recipient does not establish that they are entitled to the funds within 10 business days then the recipient’s bank must return the funds to your bank within 2 business days thereafter. Process where sufficient funds are available and report is made after 7 months[6] The process if a report is made after 7 months basically relies upon the consent of the unintended recipient. Process where sufficient funds are not available[7] If both your bank and the recipient’s bank are satisfied that there has been a mistaken internet payment, the recipient’s bank must exercise discretion[8], based on an appropriate weighing of interests of both the sending consumer and unintended recipient and information reasonably available to it about the circumstances of the mistake and the unintended recipient, in deciding whether it should: (a) pursue the return of funds to the total value of the mistaken internet payment, (b) pursue the return of funds representing only a partial amount of the total value of the mistaken internet payment, or (c) not pursue any return of funds (whether partial or total). The recipient’s bank has a discretion to for example seek the repayment of funds by instalments under clause 34.4 and clause 34.6 guides on the exercise of that discretion. Internal complaints There are requirements on banks at clauses 35 and 36 to inform bank account holders of the outcome of their reported mistaken internet payment and their right to complain to the bank internally. If the bank account holder is not satisfied about the outcome of a complaint, they can complaint to AFCA about the bank (covered below). between the different categories of mistaken bank transfers. In all cases it is important that you contact your bank immediately. Unauthorised transactions Unauthorised transactions are treated differently. An unauthorised transaction means a transaction that is not authorised by a user. It does not include any transaction that is performed by a user themselves or by anyone who performs a transaction with the knowledge and consent of a user.[9] Clause 10 of the ePayments Code stipulates various circumstances when a

Additional damages for copyright infringement

Home Table of Contents Under Australian law, victims of copyright infringement may be entitled to an account of profits or compensatory damages under s.115 (2) of the Copyright Act 1951 (Cth) (Copyright Act). Additional damages may also be available under section 115(4) of the Copyright Act. That section provides: (4)Where, in an action under this section: (a)an infringement of copyright is established; and (b)the court is satisfied that it is proper to do so, having regard to: (i)the flagrancy of the infringement; and (ia)the need to deter similar infringements of copyright; and (ib)the conduct of the defendant after the act constituting the infringement or, if relevant, after the defendant was informed that the defendant had allegedly infringed the plaintiff’s copyright; and (ii)whether the infringement involved the conversion of a work or other subject‐matter from hardcopy or analog form into a digital or other electronic machine‐readable form; and (iii)any benefit shown to have accrued to the defendant by reason of the infringement; and (iv)all other relevant matters; the court may, in assessing damages for the infringement, award such additional damages as it considers appropriate in the circumstances. The purpose of additional damages is to deter copyright infringement. The amount of additional damages awarded will depend on the facts of the case, such as the nature and extent of the infringement, the level of harm suffered by the copyright owner, and any aggravating or mitigating factors. It is worth noting that the award of additional damages is discretionary and not automatic, and that the copyright owner must prove their entitlement to such damages. Additionally, courts may consider other factors such as the infringer’s conduct, their level of knowledge of the infringement, and any steps taken to remedy the infringement when determining whether to award additional damages. Top Plus Pty Ltd v Mix Entertainment Pty Ltd [2022] FEDCFAMC2G 981 This case concerned Top Plus Pty Ltd who were applying for summary judgment against the first respondent, Mix Entertainment Pty Ltd, and the second respondent, Mr Yiren Wang, for infringement under ss 115 and 116 of the Copyright Act1968 (Cth) of copyright in certain cinematograph films owned by the second applicant, Universal Music Limited, and exclusively licensed to the first applicant, Top Plus Pty Ltd. The cinematograph films were karaoke music videos (KMVs). They comprised approximately 6,214 Chinese (both Mandarin and Cantonese) and English KMVs, and new releases of KMVs added from time to time, owned and controlled by Universal Music, released in Hong Kong and Australia, and/or supplied commercially in Australia in VCD/DVD format or electronic form (collectively, the KMV Films). Mix Entertainment had previously been accused of alleged unlicensed use of copyright in the KMV Films in infringement of applicants’ rights. That earlier dispute was resolved in 2012 prior to the commencement of suit by entry into a written non‐exclusive licence agreement between Top Plus and Mix Entertainment, signed by Mr Wang in his capacity as sole director of Mix Entertainment on 30 April 2012 (2012 Agreement). Pursuant to the 2012 Agreement, Top Plus permitted Mix Entertainment to offer the licensed content — the KMV Films — for viewing and singing by customers in up to 13 rooms at Mix Entertainment’s karaoke outlet ‘Mix Karaoke’ for the period of the licence. The 2012 Agreement expired on 31 December 2012. Compensatory damages which applied the licence fee test were awarded in the sum of $179,616.70. Principles governing an award of additional damages under s.115(4) of the Copyright Act 1951 (Cth) Reference was made to a summary of the principles relating to an award of additional damages at [717] – [721] of Microsoft Corporation v CPL Notting Hill Pty Ltd (No 7) [2022] FedFamC2G 590. In short, the principles are: First, it is not necessary that any amount of additional damages be proportionate to any award of compensatory damages. Secondly, an award of additional damages involves an element of penalty. Thirdly, part of the [function] of an award of additional damages is to mark the Court’s disapproval or opprobrium of the infringing conduct. Fourthly, the matters set out in sub‐s 115(4)(b) of the Copyright Act are not preconditions to an award of such damages. Fifthly, conduct that may properly be seen as flagrant (per s 115(4)(b), Copyright Act) includes conduct which involves a deliberate and calculated infringement, a calculated disregard of an applicant’s rights, or a cynical pursuit of benefit In addition: If additional damages are appropriate, the amount of damages to be awarded must operate as a sufficient deterrent to ensure that the conduct will not occur again. It should also be noted that, whilst additional damages encompass, they are not the same as aggravated or exemplary damages at common law. Specific deterrence has a role to play, including general deterrence. It is not always the case, however, that additional damages must be given, nor that they be such as to be given in an award and an amount as claimed by an applicant. Additional damages may be seen as encompassing broad concepts not always readily amenable to precise measurement or quantification. This includes having regard to capturing aspects of loss that have not been able to be ascertained because of the imperfect nature of litigation and evidence gathering in reflecting all aspects of wrongdoing and the total damaging effect of infringing or contravening conduct. It also entails giving a dollar figure to otherwise intangible considerations of punishment, giving effect to judicial disapproval and sanction and future‐looking considerations of specific and general deterrence. A key consideration when deciding to exercise the discretion afforded to the Court under s 115(4) of the Copyright Act is whether the infringement was flagrant. As noted by Beach J in Henley Arch Pty Ltd v Lucky Homes Pty Ltd [2016] FCA 1217; 120 IPR 137 at [244] (citations omitted): [244]…in this context flagrancy means more than copying. It also means more than mere mistakes or carelessness. It connotes reprehensible conduct or scandalous conduct which may be demonstrated by deliberate and calculated acts of infringement. But it is not necessary to demonstrate a consciousness of copyright infringement. A consciousness of wrongdoing may be sufficient. In Truong Giang Corporation v Quach [2015] FCA 1097; (2015) 114 IPR 498 , discussing the relevant principles in the trade mark context, applicable also to the copyright context, per s 115(4)(b)(ib), Copyright Act) Wigney J said at [138]–[139]: [138]Sixth, post‐infringement conduct within s 126(2)(c) of the [Trade Mark Act 1995 (Cth) (TM Act)] is unlikely to include the respondent’s conduct

Valuation of Minority Interests in Shareholder Oppression Claims

Home In Australia, shareholders who feel oppressed or unfairly treated by the company or its directors can seek remedies under various statutory provisions. Here are some of the remedies available to shareholders: Oppression proceedings under the Corporations Act 2001 (Cth): Under section 232 of the Corporations Act, shareholders can apply to the court for relief if they believe that the company’s affairs are being conducted in a manner that is oppressive, unfairly prejudicial, or discriminatory to them. The court has broad powers to make orders to remedy the situation, including ordering the company to buy back the shareholder’s shares, ordering the company to pay compensation, or ordering the company to amend its constitution or replace its directors. Derivative actions under the Corporations Act: Shareholders can bring derivative actions under section 236 of the Corporations Act if they believe that the directors have breached their duties to the company. In such actions, the shareholder sues on behalf of the company to recover damages from the directors for any losses suffered by the company as a result of their breaches. Personal actions against directors under the Corporations Act: Shareholders can also bring personal actions against directors under section 180 of the Corporations Act if the director has breached their duty of care and diligence. This may occur if a director has made a decision that causes harm to the company, such as approving a risky investment without proper research or due diligence. Compulsory acquisition of shares under the Corporations Act: In some cases, shareholders may be able to force the company to buy their shares under section 461 of the Corporations Act. This may occur if the shareholder can show that they have been unfairly treated, and that it would be just and equitable for the company to buy their shares. The amount that is awarded will depend on the particular facts of the case. In BAM Property Group Pty Ltd as trustee for BAM Property Trust v Imoda Group Holdings Pty Ltd [2019] FCA 1192, the Federal Court of Australia provided guidance on the principles that should be applied in valuing company shares in shareholder oppression claims. The following are some of the key principles: Compensation for oppression: The purpose of granting a remedy between parties in an oppression case is to “to compensate the oppressed shareholder for the oppression which has taken place”. Wide discretion: In cases where the relief to be granted is the compulsory purchase of shares, that object is achieved by the Court having a wide discretion to fix a price that “represents a fair value in all the circumstances”. That does not necessitate fixing a price only by reference to ordinary valuation principles. The question is to identify the price which should be paid in the circumstances. No benefit to oppressor for oppression: Where shares are to be valued as a starting point for determining the price which should be paid, the usual date for valuation is the date of the filing of the proceedings, but that is by no means a universal approach. The valuation does not value the shares at that date as if nothing but the ordinary course of business had preceded it. That would effectively allow the oppressing party the benefit of the wrongful conduct as, inevitably, that conduct has diminished the value of the oppressed party’s interest in the company before the proceedings are commenced. In Scottish Co-operative Wholesale Society v Meyer [1959] AC 324 , Lord Keith identified (at 364) that the valuation process must negate the effects of the oppressive conduct. His Lordship said the amount to be determined was: … what would have been the value of the shares at the commencement of the proceedings had it not been for the effect of the oppressive conduct of which complaint was made. This is clearly not a matter on which a calculation can be made with mathematical accuracy or by the application of strict accounting principles … Fair price to put applicant into position as if no oppression: A fair price would be the value which the shares would have had at the date of the petition, if there had been no oppression. In relation to the claim for oppression, when the court is valuing the oppressed shareholder’s interest in the determination of the relief to be awarded for oppression, the aim is to put the applicant in the position as if there had been no oppression. There are different methods of valuation that might be deployed, and there is no one size fits all answer. Quite often, the outgoing shareholder will have been excluded from management, leaving the remaining shareholders / directors “in control”. It is clear however from the authorities that the oppressors will not be entitled to benefit from the relevant oppression. Our corporate lawyers in Sydney specialise in dispute resolution relating to shareholder disputes and directors duties. Be prepared to have to issue proceedings before the other parties properly come to the negotiating table.

heathfield-grosvenor-recognised-under-best-law-firms-in-sydney-2021-by-firmchecker

FirmChecker 2021 ‘Best Law Firms in Sydney 2021’ Award Winners

Heathfield Grosvenor Lawyers has been recognised as ‘a highly rated firm’ by FirmChecker (don’t know what that is? It is equivalent to Tripadvisor in the tourism industry), Australia’s leading site for professional service reviews. Do we work for the accolades and the recognition? Absolutely not. Thankfully, these recognitions come with the ardent work that we pride ourselves in. But, as a law firm, we are always thankful for the recognition given, and most importantly, knowing that our clients receive the best and just outcome. Survey results, as published by Lawyers Weekly show that ‘NZ lawyers are more trustworthy than Australian Lawyers’ – now that is another point to add onto Australia’s long-standing scoreboard with New Zealand! But, the point being is that we aim to restore the integrity and trust between clients and lawyers through our firm. For us, it is not about competition because we distinguish ourselves with our inherent ability to achieve just outcomes, and a pleasant and professional experience for our clients. Serving justice is a privilege and a duty for us, and nothing else. Just leave it with us. See the full FirmChecker article below: https://www.firmchecker.com.au/news/best-rated-law-firms-in-sydney-cbd Lawyers Weekly Article: https://www.lawyersweekly.com.au/biglaw/25220-nz-lawyers-more-trustworthy-than-australian-research-shows