Intellectual Property and Copyright Disputes
What is Intellectual Property?
Intellectual property (IP) refers to the ownership of ideas and concepts. In essence, IP law revolves around the ‘property of your mind’, or proprietary knowledge.
The main types of intellectual property include:
- Certification of Trademarks
- Trade Secrets
Intellectual property litigation involves disputes relating to the use and exploitation of intellectual property. As the legal area of intellectual property law continues to grow, so does the number of intellectual property related disputes. In recent years, an increased number of IP related matters have been brought by a wide array of different types of companies, from small, one-person start-ups to large-scale, global corporations.
Copyright infringement is one of the most common types of IP disputes in Australia. This is in part because most creative works are automatically protected in Australia, which means that registration is not required in order to protect them. Accordingly, the use of creative works without a licence may constitute copyright infringement, even where the creator has taken no actual steps towards protecting it.
The Copyright Act 1968 (Cth) provides owners of creative works with a number of exclusive rights that will vary slightly depending on the type of subject-matter they relate to. It is important to note that the use of creative works without a licence can result in legal action even where the infringement was done unknowingly (e.g. a YouTuber using a particular song on their YouTube channel without permission or a hobby singer making a cover of a famous song without authorisation and posting it on social media).
Direct Infringement– Direct infringement involves the unauthorised reproduction of copyrighted works. Direct infringement occurs when a person substantially reproduces, copies, or otherwise distributes, displays, or authorises the infringement of copyrighted works without permission or authorisation (i.e. copying a movie and making it available for illegal downloading by others as an online torrent).
Indirect Infringement– Indirect infringement involves unauthorised dealings with copyrighted materials. Indirect infringement occurs when a person other than the owner of copyrighted works sells or imports the works without authorisation (e.g. purchasing a number of articles of clothing from a particular brand name from overseas and bringing those articles back to Australia to sell it).
If you are seeking to defend a copyright infringement claim made against you, there may be certain defences available to you depending on the particular circumstances of your matter, including the type of creative works in question and the way in which the works were used/allegedly infringed. The Copyright Act 1968 (Cth) (the Copyright Act) provides certain exceptions to the infringement of copyrighted works that allow the use of copyright material without permission in limited circumstances, including:
- Fair dealings for research and study
- Fair dealings for reporting the news
- Fair dealings for criticism or review
Whether or not a defence under the Copyright Act might apply will depend on the circumstances and evidence of each individual matter.
Trademark and Branding Disputes
Trademarks are registered signs, designs, brands, or other expressions that effectively distinguishes or identifies one particular product or service from another. Trademarks can be extremely powerful marketing tools for businesses to help them promote their products and distinguish themselves from other competitors. Trademark disputes generally revolve around one party claiming that one of their competitors are marketing themselves using a trademark that is substantially similar or identical to their own trademark. This is referred to as trademark infringement.
For trademark infringement to occur, the alleged infringer must have used the trademark in relation to products or services that are similar or identical to the products or services the original trademark relates to (e.g. releasing a comic book where the main superhero shares the same name as another well-known comic book superhero).
Furthermore, for trademark infringement to occur, the trademark must be a registered trademark. Where a trademark is not registered, a competitor cannot legally have infringed that trademark.
If you have an unregistered trademark and wish to bring a legal claim in relation to a competitor using a similar or identical trademark to yours, you may still have an action in misleading and deceptive conduct if your competitor is somehow misleading their consumers into thinking that they are, in fact, purchasing your product. For more information about misleading and deceptive conduct, see our Misleading and Deceptive Conduct Page.
You may also have a cause of action in passing-off if you have a strong reputation or goodwill with the public in relation a particular product or service you are providing, and you are losing potential customers and profits because a competitor is stealing market share by passing off their product as yours, or alternatively, passing off their product as being somehow connected to your trademark. For more information about claims for passing-off, see our The Tort of Passing-Off Page.
A patent refers to a set of exclusive property rights attributed to a particular device, method, process or other substance that prohibits the use, sale, importation, manufacturing or copying of that particular substance, or specific aspects of that particular substance, by persons other than the registered patent owner. Patents are generally registered over new inventions to bar other competitors from copying, handling or otherwise misusing proprietary aspects of that invention.
Patent infringement refers to a party intervening or dealing with another party’s patented invention without the permission of the patent holder. Most patent disputes involve one party claiming that one of their competitors are copying, selling, manufacturing, promoting or otherwise dealing with a particular product or substance to which the first party has been granted a patent in a way that infringes one or more rights that fall within the scope of that patent. This can sometimes involve a competitor simply taking advantage of another party’s technology to develop their own product, even if the product itself is not a direct replica.
It is important to note that unauthorised dealings with patented inventions are generally only restricted to the country in which the patent is in force. For example, if a person holds a patent over a particular invention in Australia, that does not mean that a similar invention cannot be replicated and sold in America or Europe.
Some patent disputes may relate to disagreements regarding who the true owner of a patent is. Just because a particular person has listed their name on a patent application, this does not automatically mean that they are the rightful owner of that patent and the rights attached to it. It is not unheard of that a competitor or previous employee of a company use proprietary information to file a patent for an invention that is not their own in an attempt to prevent the original inventor from being able to develop and sell the invention. In other circumstances, disputes can arise where an inventor has sold various rights to an invention to another party, and a dispute later emerges regarding the extent of the rights linked to a particular patent for that invention, and to whom these rights should rightfully belong.
What to do before commencing proceedings
If you are considering making a legal claim in relation to an intellectual property law dispute, it is important that you have a strong legal and factual basis for your claim. Grandiose claims relating to IP infringements are increasingly thrown around more often than they should. Although it may instinctively seem like the strongest approach to file a legal claim in order to force another party to cease its activities in relation to an apparent infringement, it is important to note that making groundless infringement claims with no proper legal basis is expressly prohibited in Australia.
Various acts of Commonwealth legislation, including the Copyright Act, Trade Marks Act 1995 (Cth), Patents Act 1990 (Cth) and Designs Act 2003 (Cth) explicitly prohibit unsubstantiated claims relating to IP infringement. Furthermore, the recipient of an unfounded infringement claim can legally bring a claim against the original complainant on the basis of the original party making groundless threats. As such, it is of vital importance that you ensure you have a sufficiently strong legal and factual basis for your claim to limit your own liability before commencing legal proceedings.
Assuming you have a strong factual and legal basis for your claim, you should carefully consider whether your claim is worth pursuing. Even if you believe you may have reasonable prospects of success, it may not be worth the risks and costs associated with bringing a legal claim.
Before pursuing a claim, you should ask yourself the following questions:
- What is the legal status of your intellectual property (e.g. do you own the legal rights to the intellectual property, is it registered, etc.)?
- What is the financial and reputational worth of the intellectual property?
- Who is the party allegedly infringing your intellectual property?
- What is the extent of the apparent infringement?
- Is the infringement causing harm to your business?
- Is the infringement likely to cause your business further harm?
- What evidence do you hold that can prove your intellectual property has been infringed?
- Are the costs of pursuing a claim likely to outweigh any potential lost profits resulting from the infringement?
If you have asked yourself the above questions and still consider that pursuing the infringing party is the best way to move forward, there are a number of ways in which you may approach your claim. The best strategy to adopt will depend on the particular circumstances of your situation.
Where you have sufficient grounds to make a complaint against another party, your first step should generally be to contact the infringing party. At Gibbs Wright Litigation Lawyers, our experienced solicitors can assist you in preparing and issuing a letter of demand to the infringer demanding that they immediately cease the infringement of your intellectual property rights.
Alternatively, if there is a limited risk of the infringement leading to excessive loss of profits or market share, you may consider granting a licence to the infringing party in return for a royalty fee. This could create an additional income stream while simultaneously ensuring you remain in control of the rights to your intellectual property.
If the infringement relates to a particular mobile application, social media page or other website that has its own intellectual property policies, you may be able to report the infringement directly to the service provider or that application or page and request that the infringement ceases.
If a continuing dispute appears inevitable, it may be a less expensive and time-consuming alternative to attempt to resolve the dispute through alternative dispute resolution (ADR). A number of organisations, such as the Australian Small Business and Family Enterprise Ombudsman (ASBFE Ombudsman), the Mediator Standards Board (MSB) and the World Intellectual Property Organization (WIPO) provide a number of ADR services specifically tailored to intellectual property matters, including mediation, arbitration, and expert determination services.
For more information regarding alternative dispute resolution, see our Arbitration and Mediation Page.
If you require the infringer to immediately cease the infringement, it may be required to seek a court order for an injunction in order to force the infringer to stop further infringement of your IP rights. If the infringement has caused financial or reputational damage, it may be in your interest to commence legal proceedings against the infringer to compensate you for the loss incurred.
Remedies for Intellectual Property Infringement
If you bring a successful claim against another party for intellectual property infringement, you may be able to claim for a number of different remedies depending on the particulars of your matter, including the type of material that has been infringed and the way in which the material was infringed.
Examples of relief that might apply to a claim for IP infringement include:
- Anton Pillar Order
- Account of Profits
- Damages for Conversion
- Delivery up of the infringing articles
One of the most common types of interlocutory relief sought in matters involving copyright, trademark or patent infringement are injunctions. By seeking an injunction, you can restrain the defendant from further infringing your IP rights by preventing them from using, displaying, or otherwise dealing with the material further. Generally, most infringement claims, as well as other intellectual property claims, will end after an injunction has been obtained.
It is important to note that a defendant accused of intellectual property infringement may potentially be exposed to criminal liability, particularly where that person had actual knowledge, or ought to have known, of the infringement occurring.
What should I do if someone brings an intellectual claim against me?
If someone has brought a claim against you in relation to an intellectual property matter, you should seek immediate legal advice. Intellectual property claims are often highly technical and legally complex, and if you do not respond to the claim in an appropriate manner, the consequences can be severe, including financial loss and reputational damage, as well as disruption or even cease of trade, which could have significant future repercussions.
Intellectual property law is an intricate area of law. To limit your liability, it is important that you get a proper understanding of all the factual and legal aspects of the claim against you to thoroughly assess your rights and obligations in order to build a strong defence. If the claim lacks a proper factual or legal basis, or there is little evidence to substantiate the claim, you may even be able to bring a claim against the complainant for making unjustified legal threats.
Obtaining solid legal advice is critical in any intellectual property matter. Contact Gibbs Wright Litigation Lawyers today for an initial, no cost, obligation-free consultation about your intellectual property dispute.
We can help
At Gibbs Wright Litigation Lawyers, we act for both plaintiffs and defendant in all different types of intellectual property disputes. Whether you are seeking to bring an intellectual property claim against someone who has breached your intellectual property rights, or you have been accused of infringing someone else’s intellectual property and are seeking to defend a claim against you, we can help.
If you have any questions about intellectual property or copyright law, contact with Gibbs Wright Litigation Lawyers today for an obligation-free, no cost, initial consultation to discuss your matter and explore your legal rights and options.
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