White SW Computer Law Intellectual Property, Information Technology & Telecommunications Newsletter - July 1999

An Anton Piller order allows a party to enter another party's premises and inspect, take copies and remove specified materials. It is a remedy allowed by the Court to preserve evidence pending the hearing of a claim such as copyright infringement. The Court views Anton Piller Orders as a powerful tool and will only make such an order if there grounds to believe that evidence may be destroyed, hidden or removed from the Court's jurisdiction. In the matter of Microsoft Corporation and Anor v Goodview Electronics Pty Limited and Anor, the Federal Court decided that Microsoft were not entitled to be granted an Anton Piller order as, amongst other things, (a) Federal Court proceedings for copyright infringement had been commenced more than two months prior to Microsoft making their application and (b) the fact that Goodview had legal representation who should have informed its officers about their legal obligations, which include making all relevant documentation etc available for inspection by Microsoft, as required. Microsoft had also chosen not to appoint an independent solicitor, should their application have succeeded. The Court felt that the availability of an independent solicitor during the Anton Piller raid was important despite the fact that Goodview had legal representation.

An independent solicitor is usually used to ensure, amongst other things, that the defendant has immediate and independent advice as to the significance of the order. If you suspect that a party has relevant materials that have not been disclosed to you and may be destroyed, you should take action to protect such materials as soon as possible to support your argument to the Court that an Anton Piller order is appropriate.

In the matter of Paramedical Services Pty Ltd v The Ambulance Service of New South Wales, Paramedical commenced proceedings against The Ambulance Service for alleged actions including misleading and deceptive conduct. In the course of assessing Paramedical's claim, the Court heard representations from both parties regarding a number of statements alleged to have been made by The Ambulance Service in relation to Paramedical's services and personnel. One such allegation was in relation to a training manual prepared and supplied by Paramedical to the New South Wales Fire Brigade. The Ambulance Service wrote to the New South Wales Fire Brigade to inform them that Paramedical had infringed the Ambulance Service's copyright by reproducing parts of the Ambulance Service training materials in the training manual prepared and supplied by Paramedical. Two of Paramedical's representatives had previously been employees of the Ambulance Service. Although the Court was not asked to rule on the question of copyright infringement, the Judge commented that the use of such materials constituted clear copying and accordingly a letter stating an infringement had occurred was not misleading and deceptive.

Although there are some exemptions granted to certain educational institution regarding the use of copyright materials for educational purposes, no such exemption exists for training conducted by other parties. It is important to obtain permission from all copyright owners before inclusion of all or parts of copyright works in a new work such as a training manual. To avoid allegations of copyright infringement at a later date, such permission should be obtained in writing, wherever possible.

There have been many copyright disputes involving building plans which have been copied or modified and there has been some legal debate as to whether the construction of a building using copyright infringing plans is, in itself, a copyright infringement in that a 3D copy of the original plan is made. In a judgment handed down in June 1999 in the matter of Eagle Homes Pty Ltd v Austec Homes Pty Ltd, the Federal Court considered the copying of floor plans in an advertisement as a copyright infringement. Despite the fact that there were allegedly some differences between the initial copied plan and the final plan as drawn by consultant engineers and functional limitations applied, the Full Court considered there to be sufficient similarities for copyright infringement to have occurred. The judgment also discussed the fact that for copyright infringement to occur from the construction of a building using infringing plans, there needed to be evidence of visual similarity. In this matter, Austec was ordered to cease publishing advertisements for two house designs that appeared to have been copied from Eagle Homes plans.

Copyright infringement does not require a copy to be made of the entire work, the Court will decide whether a “significant” portion has been copied. If a building has an unusual floor plan which results in a characteristic visual effect, there is a greater possibility that the construction of a building using infringing plans will also be a copyright infringement. Home builders and owners should consider whether they should seek an intellectual property indemnity to avoid being involved in a potential copyright dispute.

When you apply for the registration of a trade mark in Australia, a trade mark examiner will review your application to ensure that, amongst other things, your trade mark is not substantially identical or deceptively similar to a previously registered trade mark and that is not descriptive of the goods and services for which you use the trade mark. If the examiner objects to your application, you have the opportunity to offer argument in support of your application and to modify your application so that the examiner's objections are overcome. Having satisfied the examiner, your trade mark is then advertised so that any interested parties may lodge an objection to your application on the basis that your trade mark will infringe their rights. If there is a successful objection to your application, your trade mark will not proceed to registration and your application will lapse. In the matter of Yellownet Corporation v Telstra Corporation Limilted, Telstra raised objections to the registration of the trade mark “Yellownet” stating that, amongst other things, it was deceptively similar to its trade mark “Yellow Pages”. The Hearing Officer examined the proposed use of the trade mark by Yellownet, which essentially offered an Internet based business directory and advertising service. Although the Hearing Officer considered that the marks were not substantially identical, it was accepted that the marks were deceptively similar and that the services offered by Yellownet were similar to those included for two of Telstra's trade mark registrations for the trade mark “Yellow Pages”. Yellownet was not represented at the hearing of Telstra's objections to the Yellownet trade mark application and so offered no evidence to refute Telstra's claims. The hearing officer found in favour of Telstra and Yellownet's trade mark was refused registration.

It is best to use an invented logo or words as your trade mark, which are unlikely to have been used by other parties in order to improve the chances of your application proceeding to registration and to ensure that you have exclusive rights to the use of that trade mark for the classes of goods and services that you are interested in.