Archive for the IP Protection Category

Intangible assets – the new economic indicator

Posted in 1P, Australian IP Case Law, Design, Future, IP Protection, Patent with tags , , , , , , , , , , , , , , , , , , , , , , , , , on September 25, 2011 by 1place

Intellectual property has evolved from a collection of legal rights to now being a major asset that performs independently, when compared to other assets.  Has this evolution changed the way in which IP performs relative to economic change?

Last week the World Intellectual Property Organisation (WIPO) released statistics for each country’s registered IP trends against GDP and other indicators.  Registered IP includes patent, trade mark and design registrations.

These statistics show that the rate of growth of registered IP in the major economies have had a marked decrease: that is, the growth in the number of patents, trade marks and design rights filed has fallen from 2008 onwards.  WIPO’s mapping of registered IP filings against GDP, shows registered IP filings to be much more volatile and extreme when compared to change in GDP. Continue reading

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IP conundrums

Posted in 1P, Article, Commercialisation, Copyright, Design, IP Protection, Out of your mind, Patent with tags , , , , , , , , , , , on September 15, 2011 by 1place

I confess to being inspired by Harry Pearce and his book Conundrums – a beautiful collection of typographic puzzles.

Being a typophile, I thought I’d try my hand at a few of my own.

So, here begins a series of  typographical conundrums with an IP (intellectual property) bent, fashioned after Harry Pearce and constrained to the same rules as his: one box, two colours, one typeface.

One a week, so watch this space.

IP Conundrum #1

Answer

Continue reading

The shape of things to come

Posted in 1P, Article, Australian IP Case Law, Design, IP Protection, Out of your mind with tags , , , , , , , , , , , on August 31, 2011 by 1place

Most of us are now familiar with the idea that a shape can gain protection as a registered trade mark. The Coca-Cola bottle is a famous example.

An Australian Federal Court decision this month (Bodum v DKSH Australia [2011] FCAFC 98) held that unregistered rights in features of a product’s shape can also be protected, if the shape itself has acquired a sufficient reputation.  FULL POST

Patent Attorneys – Let’s save the nation!

Posted in IP Protection, Patent on April 26, 2011 by 1place


Technology’s rapid globalisation has focused on the large market players such as China, Europe and the USA, followed by the smaller industrialised nations such as Israel and Sweden, who have been punching above their weight in the World IP sector for some time.

Australia is of particular interest since it:

  1. was relatively unaffected by the Global Financial Crisis compared with many other nations;
  2. has a relatively high Gross Domestic Product; and
  3. has a relatively small population with a low number of practicing patent attorneys (around 500) who have not been targeted by policy drives over the last decade.

We thought it would be interesting to see how these differences in Australia’s circumstances affects IP outcome compared with our neighbours.  FULL POST

Patent Bubble – Stay Out of Trouble

Posted in Article, IP Protection, Patent, Sign on January 6, 2011 by 1place


Year 2016: A global Intellectual Property bubble with a massive ‘pump and dump’ operation was one scenario forecast by European Patent Office published in “Scenario for the Future” (2007).1

Problem:

Is the European Patent Office prophetic and could we be heading for another crisis?

Maybe – at a stretch: The value of companies in the high tech sector has been increasing for many years now mainly due to their intangible asset valuation increases.

Intangible assets – especially patents – are open to manipulation in value, which in turn leads to excessive trolling.  -FULL POST>

Copyright in the kitchen

Posted in 1P, Article, Branding, Copyright, Design, IP Protection, Tech, Trade Mark on October 27, 2010 by 1place

Signature dishes and the cult of the chef

By Josephine Inge, Principal, 1Place Patent Attorneys + Solicitors

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You are almost ready to be entrusted with the secret ingredient of my secret ingredient soup. And then you will fulfill your destiny and take over the restaurant just as I took it over from my father who took it over from his father who won it from a friend in a game of mahjong.

Mr Ping to his son, Po
Kung Fu Panda (2008), Dreamworks

We are today all familiar with the concept of the signature dish, or “secret ingredient soup”, by which an individual chef or restaurant may be defined. Sydney chef Tetsuya Wakuda’s confit of ocean trout with konbu and fennel is considered one of the most iconic dishes in the world. Thus a signature dish is much more than a plated product: it is imbued with the personality of the individual chef – as definitive as an author’s voice or an artist’s style. Over time, it may come to identify a particular establishment such as Waldorf salad originally created at the Waldorf-Astoria Hotel in New York in the 1890s.

So what is the design process behind creating a signature dish?

In reality, it is created over time or develops through circumstance and the creativity of the chef.  For example, Tetsuya’s famous dish is said to have started life as a salmon dish but developed into a dish of ocean trout (with several re-writes of the recipe) as a result of salmon not being available year-round back in the 1990s. Brisbane chef Philip Johnson of e’cco Bistro describes signature dishes as happy accidents. His signature dish of mushrooms on toast evolved from something in London, with his own creative twist: using olive toast and adding truffle oil and parmesan. It has remained on the menu at his restaurant for 15 years.

The popularity of a signature dish promotes bookings and hence forms a valuable asset for a restaurant.

So how is a signature dish protected?

Assuming most signature dishes are committed to material form (e.g. a recipe), copyright protects the specific expression of the recipe created by the chef (i.e. the words as expressed by the author). This means no one can reproduce, publish, translate, distribute or communicate (make available online) your specific expression of the recipe (or a substantial part of it) without your permission.

However, no one needs permission to use the information contained in a recipe (i.e. to follow the recipe). This is because copyright does not protect the information (e.g. ideas, lists of ingredients, methods or techniques for making a dish), only the specific way in which the information is expressed.  “Were the law otherwise, everybody who made a rabbit pie in accordance with the recipe of Mrs Beeton’s cookery book would infringe the literary copyright in that book”: Cuisenaire v. South West Imports Limited [1969] S.C.R. 208 (Supreme Court of Canada).

Likewise, if someone watches you preparing a dish and writes down the ingredients and instructions (method) in their own words, this does not infringe copyright in the recipe. For the same reason, there is nothing to prevent “reverse engineering” of a completed dish to identify flavours and ingredients, or to stop other chefs or cooks from drawing inspiration from an idea underlying a recipe. However, giving credit to the source of inspiration is common among many chefs – and good practice.

With popular interest in celebrity chefs and the resurgence of interest in home cooking, cookbook sales have surged 9% according to Nielson figures published in August 2010, despite declining book sales plaguing the rest of the book publishing industry. It seems that many celebrity chefs are not afraid to share the recipes for their signature dishes with the public. A quick search on Google can locate a number of recipes for Tetsuya’s ocean trout. His recipe is also published in various books and the source of inspiration for other chefs, cooks and writers. Yet the waiting list for a booking at his famous restaurant remains strong and the signature dish remains a popular first choice among diners. Similarly, diners are willing to pay for a mushroom on toast dish that its own creator has stated could easily be made at home.

Clearly a signature dish is more than the underlying recipe or the sum of its ingredient parts, and restaurants are not relying purely on copyright to protect the commercial success of their signature dishes. A signature dish articulates the skill, experience and creativity of the chef (restaurant). As such, it represents the brand of the chef and his or her restaurant and forms a key brand asset for a restaurant. Signature dishes can be as important a part of a restaurant’s (and chef’s) brand as the decor, the menu and the quality of the service. An iconic signature dish can serve to distinguish a chef/restaurant as much as the restaurant’s name.

The strength of the restaurant’s brand (built around a signature dish or dishes) attracts patrons and has led to the cult of the celebrity chef. This has also led to extension of the chef/restaurant brand to merchandise such as branded food products (e.g. sauces, butters, branded wines, olive oils), cookware and clothing. Thus brand protection is important to continuing commercial success and to driving interest in a chef/ restaurant…it attracts diners who want to try the chef’s version of a signature dish – even if they could make the dish themselves. The commercial value is captured and protected through protection and exploitation of the brand, not just the copyright.

To quote again from Kung Fu Panda, once Po has earned the privilege of learning the secret ingredient, his father Mr Ping reveals that “The secret ingredient is…nothing!” Similarly, there is no “secret ingredient” to many signature dishes: it is the chef who transforms the dish into something special. The brand of the chef is part of the magic.

Po:   Wait, wait… it’s just plain old noodle soup? You don’t add some kind of special sauce or something?

Mr Ping:   Don’t have to. To make something special you just have to believe it’s special.
Kung Fu Panda (2008), Dreamworks

This article was originally published in Issue 33, October 2010, of the industrial design magazine Curve

Designership and the death of the author

Posted in 1P, Article, Australian IP Case Law, Copyright, Design, IP Protection on July 29, 2010 by 1place

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Authorship as identity

We all understand what it is to be an author. We identify series of books through characters. Think: Harry Potter. The author’s individual style also identifies the author as the common source of texts. Think: Dr Seuss.

In primary school we create our own stories and other works, and so engage the world as an author from a young age.

In his 1967 essay The death of the author, French literary theorist and philosopher Roland Barthes challenges the idea that a text can be attributed to a single author. Barthes argues that a text is never original because it is a reflection of references from a multitude of traditions and quotations from innumerable cultural centres.  Thus every piece of writing reflects a fabric of inputs rather than a single voice.

Authorship as currency

In 1985 the International Committee of Medical Journal Editors sought to establish uniform standards for what contributions merit authorship in biomedical journals. This proposal was an attempt to stamp out the practice of “gifting” authorship in exchange for materials, research subjects, career advancement and so on.

Legal significance

The use of authorship as a bartering tool reflects its inherent value. Authorship is valuable because the right to own IP devolves from authorship.

Copyright

For copyright purposes, the author is the person who expresses an idea in tangible form (e.g. writing, a drawing). This is even if the idea was supplied by another person. Consider the following examples (based on legal cases):

  1. a ghost writer who writes the life of a person who supplies the facts is the author;
  2. an artist who executes a drawing based on instructions of another person as to the subject and treatment is the author;
  3. a subeditor of a newspaper who substantially re-writes a news story submitted by a journalist is the author.

The author is the person who produces an “original” work through the exercise of labour, skill and judgement. Merely transcribing material supplied by another person does not constitute authorship.

The default position for copyright is that the author is the owner. This is subject to:

  1. an employment relationship – employers own IP created by employees in the course of employment; and
  2. a contractual arrangement – the author of a work owns the copyright unless agreed otherwise and assigned in writing.

Registered designs

Authorship of a registered design is attributable to the person who conceives the design (the relevant shape, configuration, pattern or ornamentation) and reduces it to visible form (e.g. by drawing it up or making a model).

Disputes may arise where one person conceives a concept for a design, puts it into a rough material form then contracts a second person to draw up the final design, If the first person leaves only minor details to the choice of the second person then the first person is the author. Conversely, if the instructions of the first person leave practically all to the second person,  the author is the second person.  Ownership of a registered design devolves from designership of the design.

The default position for registered designs is that the actual designer is the author and owner of the design and is entitled to apply for registration as the owner of the registered design. This is subject to:

  • an employment relationship – where the designer makes a design in the course of employment, the employer owns the design; and
  • a contractual arrangement – where a designer creates a design under a contract with another person, that other person is the owner of the design (unless agreed otherwise).

What if a final design comes about through functional or practical production considerations rather than aesthetic considerations? Is a person who contributes technical expertise an author?

In the design of a security glass brick designed to be used in situations where greater structural strength is required (e.g. jails), a manufacturer of glass bricks relied heavily on technical expertise of a manufacturer of strengthened glass to arrive at the final design. The Australian Designs Office  found that the contribution of the toughened glass manufacturer was sufficient to establish joint authorship in the final design – the result being that it was entitled to be recorded as a joint owner of the application to register the design: Glass Block Constructions (Aus) Pty ltd v Armourglass Australia Pty Ltd [2005] ADO 1. The relative contributions of two parties engaged in developing a product for manufacture were sufficient to establish designership rights for both parties.

Another common situation is when one party develops IP rights incidental to development of a product owned by another party. In Dennis Gravolin and Trailer Vision Pty ltd v Lomac Holdings Pty Ltd as trustee for Lomac Trust [2007] ADO 7, the owner of a patent for a trailer plug obtained assistance from a manufacturer to manufacture a trailer plug product. The manufacturer filed applications to register designs for a number of trailer plugs. None of the design applications related to the actual product that was the subject of the arrangement between the parties or a confidentiality agreement signed by the manufacturer – there were clear differences in the shape and configuration of the housing of the patented plug and that of the relevant design applications.  The dealings between the parties were silent on IP created by the manufacturer incidental to the arrangement with the patent owner. Therefore, the manufacturer was free to develop incidental IP rights with no obligation to disclose them to the patent owner. There was no evidence to establish any right to authorship (through contributions to the development of the designs) by the patent owner.

This decision illustrates that the owner of certain IP rights (e.g. the patent owner) does not necessarily own all rights incidental to arrangements with other parties relating to their IP. The manufacturer’s design rights were created independently from the patent owner’s rights and, absent any circumstances to establish the contrary, the manufacturer owns them.

Patents

When is a person who contributes to an invention entitled to claim inventorship? When one person has a general idea of what is required but does not necessarily know how to put those ideas into effect and a second person does, then both are the inventors: Row Weeder v Nielsen (1997) 39 IPR 400. The question might be whether the invention would have occurred without the second person’s involvement: Costa v GR & IE Daking (1994) 29 IPR 241. The contribution of the second person needs to have a material effect on the final concept of the invention: Row Weeder.  There is no joint inventorship with a person who bases the claim on knowledge derived from the true inventor: Stack.

Practical significance

The unifying element for joint authorship, designership and inventorship is the involvement of  multiple people in an activity of original creativity. Title devolves from the creator of the work to the person obtaining the legal monopoly right.

For designers (other than employees), the default position for:

  • copyright is that the designer is the owner of those contributions;
  • registered design rights is that the party contracting the designer to create the design is the owner of those contributions; and
  • patent rights is that the designer is the owner of those contributions.

This assumes the designer is making a sufficient, original contribution to establish authorship, designership or inventorship. As the default position for ownership can be altered by agreement, designers need to be able to identify when steps are required to secure ownership or when you are the owner. Agreements about IP ownership must be written. By understanding your rights, you may have leverage to insist on ownership or be adequately compensated in dealings with clients.

This post originally appeared as an article in Issue 32, July 2010, of the industrial design magazine Curve