The Australian Government Productivity Commission's final Report on Intellectual Property (IP) arrangements in Australia was released late last year. Earlier, we reported on the potential implications for the Australian patent system and now we report on the potential implications for copyright and trade marks.
The Commission’s report calls for changes to copyright law in Australia across two broad areas:
Narrow scope of copyright protection
The Commission is of the view that copyright protection in Australia is skewed too far in favour of copyright owners to the detriment of consumers and intermediate users.
To redress this imbalance, the Commission’s report recommends replacing the purpose driven fair dealing exemptions in the Copyright Act 1968 (Cth) (CPA) with a broad principle based fair use exemption, similar to that in the US. Under the proposed changes, a Court will be guided by the following factors on the question of fair use:
- the purpose and character of the use;
- the nature of the copyright material;
- the amount and substantiality of the part used; and
- the effect of the use upon the potential market for, or value of, the copyright material.
Make it easier for users to access legitimate content
The Commission’s report recommends that the CPA be amended to make clear that it is not an infringement of copyright for consumers to circumvent geoblocking technology.
Parallel importation of books
As Australian booksellers are presently required to purchase stock from an Australian publisher, they are prevented from purchasing stock from lower priced suppliers overseas. The Commission’s report calls for the repeal of the prohibitions on parallel imports of books by Australian booksellers.
The Commission’s report recommends that the Australian Government amend the CPA to make unenforceable any part of an agreement which restricts or prevents the use of copyright material that is otherwise permitted by an exception under the CPA.
Minimising liability for online service providers
Presently Australia’s safe harbour schemes indemnify internet service providers (ISP’s) from being liable for alleged copyright infringement occurring over their networks if they comply with certain requirements. The Commission’s report recommends that the Australian Government expand the safe harbour scheme to cover all providers of online services.
The Commission’s report calls for changes to trade mark law and practice in Australia, including across three broad areas:
Clearing the Register
Expediting the removal of unused trade marks by reducing the period following registration at which time a non-use removal action may be filed against a registered trade mark from five to three years.
Removing the presumption of registrability from the Trade Marks Act, despite the Raising the Bar amendments of 2011 expressly stating that the presumption of registrability should be enforced.
Introduction of active use requirements whereby a trade mark applicant would be required to state whether it is ‘using’ or ‘intends to use’ its trade mark at the time of filing, as well as confirming its use of the trade mark at the time of registration and renewal.
Linking the current Australian Securities and Investment Commission (the entity responsible for administering Australian business names) database with the Australian Trade Marks Office database with the result being that a ‘warning’ notification will issue if a third party attempts to register a business name that is too similar to a registered trade mark.
Amending the Trade Marks Act to ensure that parallel imports of marked goods do not infringe an Australian registered trade mark when the marked good has been brought to market elsewhere by the owner of the mark or its licensee.
Section 51(3) of the Competition and Consumer Act 2010 (CCA) exempts licensing or assignment of IP from certain competition provisions of the CCA. The Commission is of the view that the current exemption under the CCA is based on outdated views, and that transactions involving IP rights (including assignment and licensing) should be subject to the CCA in the same manner as transactions involving other property and assets. Accordingly, the Commission’s report recommends the repeal of section 51(3) of the CCA, and that the ACCC issue guidance on the application of competition law to IP.
The Commission recommends the introduction of a specialist IP list within the Federal Circuit Court to provide a timely and low cost option for resolving IP disputes. The Commission’s report calls for the Federal Circuit Court’s jurisdiction to be expanded to cover the full range of IP matters, mandatory caps to be applied to cost and damages awards, trials to be limited to two (2) days and strict case management to minimise court events.
The consultation process is still on-going and the Australian Government is considering its response to the final report.