Managers and the Law
? Torts generally
? Negligence
? Trespass
? Defamation
? Nuisance
Tort provides remedies in the form of
damages as compensation for,
= direct financial consequences eg loss of
wages,earning,profits and expenses
incurred as a result of the loss or injury;
= non-pecuniary consequences of a tort
being inflicted eg pain and suffering,loss
of some amenity eg not being able to
engage in a pleasurable activity,
Jaensch v Coffey (1984) 155
CLR 549),
a) there must exist an identifiable duty
of care between the parties;
b) the standard of care expected must
be able to be identified; and
c) there must have been resulting and
measurable damage,
a) the plaintiff was owed a duty of care;
b) the required standard of care was
breached; and
c) the breach caused the damage
which was of a kind that was a
foreseeable consequence of the breach,
Contributory negligence on the part of
the plaintiff
Law Reform (Miscellaneous Provisions)
Act 1955 (ACT) s 15
Civil Wrongs Act 2002
The Insurance Commissioner
v Joyce (1948) 77 CLR 39
Volenti non fit injuria
Wyong Shire Council v Shirt
(1980) 146 CLR 40
Paul Maurice Nagle v Rottnest
Island Authority F.C,93/016 (1993)
Aust Torts Reporter 81-211 (1993)
112 ALR 393 (1993) 67 ALJR 426
Trade Practices Act section 53 (g)
Volenti non fit injuria
Intentional Injury,Assault
Canterbury Bankstown Rugby
League Football Club Ltd v
Rogers,Bugden v Rogers
(1993) ATR 81-246
The Elements
1,A Duty of care
Bolton v Stone [1951] AC
Miller v Jackson [1977] QB
Wyong Shire Council v Shirt
(1980) 146 CLR 40
b,Proximity (physical,
circumstantial or causal)
Donoughue v Stevenson
(1932) AC 562
Sutherland Shire Council v
Heyman (1985) 157 CLR 424
c,Reasonable reliance
Council of the Shire of
Sutherland v Heyman (1985)
157 CLR 424
?o Professional persons and their clients
assessed by reference to prevailing community
o Negligent misstatements where the person
making it possesses a special skill or
knowledge and the person to whom it was
made reasonably acted on it to their detriment;
o Employers and their employees with
respect to safe systems of work
o School authorities with regard to the
provision of a safe environment for students
o The driver of a motor vehicle to the person
and property of other users of the road (but see
Gala v Preston (1991) 172 CLR 243,where a
drunken driver was not held liable for injury to
equally drunken passengers who set out on a
joy ride in a stolen car with a view to committing
further offences)
o Manufacturers and consumers (see both
case law and Legislation)
o Suppliers of dangerous goods and the
o Bailees of goods while those goods are in
their possession eg Carriers owe a duty of car
with respect to their passengers and freight
Builders extending to later owners of the
property who were not the original owner
Bryan v Maloney (1995) 182
CLR 609
However,this does NOT exist in circumstances
(i) Charity and compassion which
exists where for instance a donation is given to
help someone
(ii) Drivers of exempt motor vehicles
(ambulances etc) where they exercise
reasonable care,notwithstanding their
contravention of the rules of the road,
Patterson v McGinlay (1991)
55 SASR 258,
2,A Standard of care must
be established
Paris v Stepney Borough
Council [1951] AC 367
Cook v Cook (1986) 162
CLR 376
Mercer v Commissioner for
Road Transport and
Tramways (1936) 56 CLR
Pacific Acceptance
Corporation Ltd v Forsyth
(1970) 92 WN (NSW) 29
The issue of Remoteness
apply the,but for” test
Yates v Jones (1990 Aust Torts
Damages recoverable
Overseas Tankship (UK) Ltd v
The Miller Steamship Co Pty
Ltd (The Wagon Mound No.2)
[1967] 1 AC 617
a) Personal injury – this comprises
pecuniary (money) and non-pecuniary (includes
pain and suffering etc) damages;
b) Economic loss is where the
economic interests of the plaintiff are injured,
Caltex Oil (Australia) Pty Ltd v
The Dredge Willemstadt
(1976) 136 CLR 529
Hawkins v Clayton (1988) 164
CLR 539
?Occupier?s Liability?
SHAW (1984) 155 CLR 614
Australian Safeway Stores v
Zalunza (1987) 162 CLR 479
Duties owed to spectators
Australian Racing Drivers
Club Ltd,v,Metcalf (1961)
106 CLR 177
Duties as between
Obligations of Schools and
The Commonwealth v
Introvigne (1982) 150 CLR
Assault or trespass to the
David Graeme Sibley v,
Slavoljub Milutinovic
qualified privilege
= The statement was made to a
restricted body;
= It was not malicious
= It was not published beyond the
restricted group,
Ettingshausen v Australian
Consolidated Press (1991
McDonald v The North Queensland
Newspaper Company Ltd [ 1997] Qd R
Lloyd v David Syme 1985 60 ALJR 10
Austin v Mirror Newspaper Ltd
(1985) 63 ALR 149
Victoria Park Racing and
Recreation Grounds Company
Limited v Taylor (1937) 58
CLR 479
Intellectual Property
& Knowledge Management
Types of property
Introduction to Intellectual
? Intangible property,a chose in action
? Definition/ characteristics of IP
Types of intellectual property
? Statutory protection
– copyright
– patents
– trademarks
– designs
– plant breeders rights
– circuit layouts
– Domain names?
? General law
– trademarks
– confidential
– Passing off
? A set of rights granted to an author (as a
general rule) of subject matter which falls
into one of the protected categories,
? Moral rights and performers rights
? Protection for the appearance of an article –
for example,a pattern applied to it,or the
shape of it,There is a threshold requirement
of novelty or originality
? Based on a system of registration,
? Grants a monopoly,
? A set of exclusive rights granted to an
? The invention has to be novel,inventive and
? Grants a monopoly for a limited period,
? Based on a system of registration,
Trade marks
? A distinctive mark applied to goods and
services to distinguish them,
? Based on a system of registration,
? Gives the owner the right to prevent others
using the same mark or one which is
deceptively similar in relation to similar
goods and services,
Types of IP - others
? Circuit layouts
? Plant Breeders rights
? Common Law – Passing Off
? Protection of Confidential Information
Theories for protecting IP
? Encouraging creativity
? Moral arguments
? Economic arguments
Criticisms of IP rights
? Stifle creativity
? Limit access to things which may be
beneficial to the public
? Creates monopolies/ potential for abuse
? These criticisms are addressed to some
extent by the exceptions and defences to
The international framework
? Need for uniformity
? Common themes in international treaties
– the principle of national treatment
– minimum standards for protection
? International administration,WIPO/ WTO
? Introduction,
– History (based on Australian law)
– the expression/ idea distinction (more shortly)
– does not create a monopoly
– arises automatically
? Issues,
1,is the material protected by copyright?
2,who owns it?
3,has there been an infringement?
4,is there any defence?
5,what remedy is appropriate?
Sound recording
Film Published edition LIVE
Copyright – Original works
? Need to establish that,
– It is original
– It is in material form
– It is within one of the categories
– It has the required jurisdictional connection—
Australian citizen/resident at time of creation
? The standard of originality,
University of London Press v University
Tutorial Press Ltd [1916] 2 Ch 601
? Result of own skill,labor,judgment & not
copied from another
? Not have to be novel/new
Originality and compilations
? Two theories,
– The ?sweat of the brow theory‘
– The need for intellectual effort
? Australian/ UK authorities favour the
former theory – Telstra Corporation
Limited v Desktop Marketing Pty Ltd (2002)
190 ALR 468
Literary works
What is a literary work?
– University of London Press Ltd v University
Tutorial Press Ltd)
Literary works
? Defined to include a table,or compilation
expressed in words,figures or symbols and
a computer program or compilation of
computer programs,
Literary works
? This category has been found to include,
– Telephone directories (Telstra v Desktop Marketing)
– Betting coupons
– Accounting forms (Kalamazoo (Aust))
– Written specifications for a poker machine (Aristocrat Leisure
Industries v Pacific Gaming)
– Published list of winning bingo numbers
? But not
– a single word (Exxon),title or name
Computer programs as literary
?Defined as ?a set of statements or
instructions to be used directly or indirectly
in a computer to bring about a certain
result‘,Autodesk Inc v Dyason (1992) 173
CLR 330; Autodesk Inc v Dyason (No 2)
(1993) 176 CLR 300
Computer Programs thus
? All forms of computer program,whether
? Object (machine-readable code,1‘s,0‘s) or
? Source Code,whether
? Operating system program or
? Application program
Dramatic works
? Defined to include
– a) dumb shows and choreographic shows if described in
writing in form show is to be presented,and
– b) a scenario or script for a cinematograph film
? Something capable of being performed,
– Green v Broadcasting Corp of New Zealand [1989]
RPC 469,Opportunity Knocks,Idea for show but no
certainty,Could not be performed
– Laser show? Fireworks show? Aeronautical?
Musical works
? No further definition in Act,But today,
music vs sound/noise distinction might be
? Will not cover all sounds – will have to be
?musical‘ as defined by courts,
Artistic works
? Means
– a) a painting,sculpture,drawing,engraving or
– b) a building or model of a building
– c) a work of artistic craftsmanship,
? a) and b) do not have to be of any artistic quality,
? Sculpture includes ?cast or model made for
purposes of sculpture,Industrial artefacts,such as
moulds? Cases go both ways
Artistic works
? Some things protected as artistic works,
– A tennis court (as a building) Half Court Tennis Pty Ltd
v Seymour
– A garden layout – Darwin Fibreglass Pty Ltd v Kruhse
Enterprises Pty Ltd
– A mould for making frisbees – Wham Manufacturing
Co v Lincoln Industries’\
– Corporate logo AUVI,re AUVI Trademark [1992] 1
SLR 639
Artistic works
? Some things not protected,
– Adam Ant‘s face paint
? Merchandising Corporation of America v Harpabond [1983]
FSR 32 Facial painting (prob not permanent enough);
? Tatoo?
– A sand sculpture – Komesaroff v Mickle
Works of artistic
? A level of skill and labour is required,
? Coogi Australia v Hysport International Pty
Ltd – skill or labour can be assisted by
computer controlled machinery,
Sound recordings
? ‘ The aggregate of sounds embodied in a record‘,
? A record is a ?disc,tape,paper or other device in
which sounds are embodied,
? Section 113(1) preserves the copyright in any
material incorporated in the sound recording,
Could include sounds of nature,waves,wind,
Cinematograph films
? ‘ The aggregate of visual images embodied in an
article or thing so as to be cable by the use of that
article or thing of,
– A) being shown as a moving picture
– B) of being embodied in another article or thing by the
use of which is can be shown
and includes the sound embodied in an associated
sound track‘
Cinematograph films
? Images on a computer game – Sega
Enterprises Ltd v Galaxy Electronics Pty
Ltd.=film even though different images
come up each time,
?Have to be ?moving pictures‘ – Aristocat
Leisure Industries v Pacific Gaming Pty Ltd
Sound and television
?Defined as broadcast by ?wireless
? Broadcast right is separate from copyright
in material being broadcast
? Protection also given to cable programme
? Only certain groups of people receive
protection – see section 91,
Published editions
? Literary,dramatic or musical work is made when
reduced to some material form,Eg an original
speech in oral form and before reduced to writing,
or recorded is not copyright
? Protects efforts of publisher in selecting,arranging,
typesetting and layout of published works
? Reprints of works
– Nationwide News Pty Ltd v Copyright Agency Ltd
(1996) 34 IPR 53, If an edition merely reproduces a
previous edition of same work copyright does not
Live Performances
? Protected as of 16 April 1998 amendment (s23)
? Includes performance (including improvisation) of
a dramatic work,including one given with puppets
? Performance of a musical work or part of
? Reading,recitation or delivery of literary work
? Performance of a dance
? Performance of circus act or variety act or similar
presentation or show
Moral rights
? ?When an artist creates,be he an author,a painter,
a sculptor,an architect or a musician,he does
more than bring into the world a unique object
having only exploitative possibilities,he projects
into the world part of his personality and subjects
it to the ravages of public use,There are
possibilities of injury to the creator other than
merely economic ones.’
Roeder (1940)
Moral Rights
?Meaning of ?moral rights‘,
? Moral rights are unassignable
? The history and development of moral
? UK,economic and commercial interests
Types of moral rights
? The right of publication
? The right of withdrawal
? The right of attribution
? The right of integrity
Moral rights in Australia
? Copyright Act,part IX,
? Ownership,
– The author of a literary,dramatic,musical or
artistic work
– The ?maker‘ of a film (director,producer,
– Only granted to individuals
The right of attribution
? No special provision under Singapore law
to compel right,Can stop another from false
attribution under Part IX of the Act,IS
included under Australian legislation
Infringement of moral rights
? There is no infringement if,
– It was not reasonable to identify the author
– The derogatory treatment or other action was
reasonable in the circumstances
Moral rights
? Some things do not constitute infringement,
– Destruction of moveable art
– Alteration,relocation,destruction of a building
Moral rights
? Consent to infringement,
– moral rights cannot be waived
– any consent must be,
? for specific existing works or works of a general description
? in relation to specified acts or omissions or classes of acts of
– exceptions,films and employees
Moral rights
? Remedies,
– injunction,damages,declaration,order for a
public apology
Ownership of copyright
? General rules,
– The author
– The employer,if created under a contract for services
– Journalists own the right to use articles in a book,or make a
hardcopy facsimile copy of story in a newspaper
– Commissioned portraits,photographs and paintings owned by the
– Subject to any agreement,owner can unbundle all elements and
various rights
– Entrepreneurial rights,author of sound recording=maker record co;
author of cinematograph film is ?maker‘,usually producer or
production co; broadcast author is holder of broadcasting license
– Computer,owner of a computer generated work is person who
generated it
Joint ownership
? Joint authorship – where the contribution of
the authors can‘t be separated
? Co-authorship – each have contributed
individual components,
The rights granted
Performance in public
Includes reproduction
in digital form (s 26)
S 27-performance
is any mode
of visual or aural
29,Supply to public,
First publication
The rights granted
Communicate to the public
make available online or
transmit electronically
s 26
Make an adaptation
Lending and rental rights
need to change the form,
eg – dramatic to non dramatic,
or produce a new version
of a computer program
For computer
programs or works reproduced
in sound recordings
Duration of rights
– Published works,life of the author plus 50 years
– Unpublished works,50 years from publication if author is dead,If
never published or revealed then copyright could last indefinitely,
– Anonymous or pseudonymous works and photographs – 50 years
from publication
– Joint authorship – 50 years from death of last author
Duration of rights
? Other subject matter,
– 50 years from publication (ss 93-96),
Copyright infringement
? s 36(1),s 101,a person,not the author,
doing or authorising the doing of any act
comprised in the copyright,Secondary
infringement=commercial acts in relation to
known infringing copies,
? Section 14,it is enough if the act is done in
relation to a substantial part of the work,
A substantial part
? University of London Press Ltd v University
Tutorial Press Ltd [1916] 2 Ch 601,
refers to the quality of what is taken rather than the
? Taking a very small part can amount to an
– Hawkes & Son (London) Ltd v Paramount Films
Services Ltd
A substantial part
? A taking of an essential or material part of
the work,
– Eagle Homes Pty Ltd v Austec Comes Pty Ltd
(1998) 39 IPR 565
Infringement by reproduction
? Need to show reproduction of a substantial
part and a causal connection,
? Cases of subconscious copying,
– Francis Day & Hunter v Bron [1963] Ch 587
– Bright Tunes Music v Harrisongs Music 420 F,
Supp 177
Reproduction of a plot
? Zeccola v Universal City Studios Inc [1982] 46
ALR 189,Jaws and subsequent film Great White,
,Degree of objective similarity was so
great=inescapable inference of copying,
? Rebikoff,S ?Restructuring the test for copyright
infringement in relation to literary and dramatic
plots‘,Melbourne University Law Review,[2001]
MULR 12,
Reproduction and computer
? What is a substantial part of a computer
– Autodesk v Dyason (1992) 173 CLR 330
– Data Access Corp v Powerflex Services Pty Ltd
(1999) 166 ALR 288
Reproduction and computer
? Reproduction in the RAM,
? Microsoft v Business Boost [2000] FCA
1651,Constitutes a reproduction in
material form
? Australian Video Retailers Association Ltd
v Warner Home Video Pty Ltd [2001] FCA
Reproduction in another
? Copyright Act Section 21(3)
Reproduction of a television
? What is a substantial part?
– TCN Channel Nine v Network Ten (?The Panel
Infringement by publication
? A right of first publication
– Avel Pty Ltd v Multi-Coin Amusements Pty Ltd
(1990) 171 CLR 88
?The meaning of ?publication‘ (s 29),supply
to the public
Infringement by public
?The meaning of ?public‘
– APRA v Tolbush [1986] AIPC 90-276
– APRA v Commonwealth Bank of Australia
(1992) 25 IPR 157
– APRA v Telstra (1997) 191 CLR 140
Infringement by adaptation
? Section 10 definition,
– producing a dramatic work from a literary work
– producing a literary work from a dramatic work
– a version of a computer program (not being a
– a translation of a literary work
– a version of a literary work in pictures
– an arrangement or transcription of a musical work
Sound recordings/ films
? Making a copy
– CBS Records Australia Ltd v Telmak
Teleproducts (Australia) Pty Ltd (1988) 9 IPR
– Zeccola v Universal City Studio’s Inc [1982]
AIPC 90-019
– Sega Enterprises Ltd v Galaxy Electronics
Infringement by authorisation
? Relevant factors and defences
? University of NSW v Moorhouse (1975) 133 CLR
1,Univ made photocopier available in
circumstances where it knew or had reason to
suspect that it was likely to be used to infringe
copyright and failed to take reasonable steps to
prevent infringement,eg notices,held to be
infringement by authorisation
? CBS Songs Ltd v Armstrad Consumer Electronics
(1988) 11 IPR 1,Not authorised by producing
high speed dubbing device on cassette recorders
? The balancing of interests
Fair dealing
? S 40,fair dealing for the purposes of
research and study,
– A fair dealing includes a copy of one article or
a ?reasonable portion‘ (10%)
– Other relevant factors,the nature of the work
and the dealing,effect on the market,amount
Fair dealing
?The meaning of ?research and study‘
– De Garis v Neville Jeffress Pidler Pty Ltd
Fair dealing
? Section 41,Criticism and review
– What is ?criticism and review‘
? De Garis,Extends to any form of criticism
– A requirement for acknowledgment
? Express Newspapers plc v News (UK) Ltd means an
acknowledgement identifying the work by its title or other
description and must identify the author unless anoynmous
– What is fair?
? Commonwealth v John Fairfax and Sons Ltd
Fair dealing
? Section 42,reporting of news or current
event,Where such reporting is via a
newspaper,magazine or periodical,a
sufficient acknowledgment must be made,
– Commonwealth of Australia v John Fairfax and
Sons Ltd
Other free use provisions
? judicial proceedings or giving of legal advice
? temporary reproductions in the course of
? reproduction of computer programs in some
circumstances,backup,network service providers
acting as mere conduits,etc
? incidental use of artistic works,eg works in a
public place by inclusion into a film or tv
? Copying by institutions assisting handicapped
Compulsory licences
? Educational institutions,s 53B
? Making a recording of a musical work – s
– Shott Musik
? Use by the Crown for the services of the
Crown – s 183
Other licences
? Exclusive license must be in writing and signed by
? Non-exclusive licence may be oral or implied by
conductor custom
? A future copyright is also transferable either
wholly or partially,Where an agreement is made
assigning copyright not yet in existence,copyright
vests in the assignee when it comes into existence,
eg contract for a book yet to be written
Collecting Societies
? Hard to enforce rights against musicians,
other authors,motels,karoke lounges,etc,
? Collecting societies represent interests of
copyright owners,
? Has reciprocal arrangements with
counterparts in other countries,Owners
assign rights and society collects
Copyright Tribunal
? Has power to investigate various matters such as
? Tribunal not bound by Evidence Act
? May refer law questions to High Court
? Can award costs,
? Licensing schemes can be referred to Tribunal for
approval,Looks at new license schemes,dispute
under existing ones
? Copyright Agency Ltd (CAL) administers
agreements between educational institutions and
– Anton Piller Order to enter premises and inspect
relevant documents and remove them into P‘s
solicitor‘s custody
– Norwich Pharmacal order compels third party to reveal
certain information or documents to P so that he may
ascertain the actual wrongdoers or source of copyright
Final Remedies
– Injunction and/ or
– Either damages OR an account or profits
Assessment of damages
? S 115(3) – no damages for innocent
? Additional damages,s 115(4)
– Milpurrurru v Indofurn
? Criminal offences,s 132
The Digital Agenda reforms
? Technology and copyright infringement
? Circumvention devices,
s 116A,creates an action against a person
who makes or otherwise deals with a
circumvention device to circumvent a
technological protection measure,
Circumvention devices
? ‘ Technological protection measure,a device or
product.,designed,,to prevent or inhibit the
infringement of copyright by,
– use of access codes of processes
– a copy control mechanism
? ?Circumvention device‘ has a limited
commercially significant purpose other than
? There is a requirement of knowledge on the part of
the defendant
Circumvention devices
? Kabushiki Kaisha Sony Computer
Entertainment v Stevens [2002] FCA 906
(the Sony PlayStation case)
The Digital Agenda
? Electronic rights management,s 116B
? s 39B,ISP liability for authorisation
? s 43A,temporary reproduction for receiving
or making a communication (caching)
Parallel Imports,books
? Benefits consumers by creating competition via
increased sources of supply from overseas,
? 1991 Copyright Act amended to allow parallel
import of books,If book is first published
overseas and not published in Australia wi 30
days; or if owner does not advise wi 7 days
whether it can fulfill order wi 90 days or does not
do so; or order placed for a single copy for non-
commercial purposes
Parallel imports Sound
? Until 1998 Australian copyright owners
could limit competition by preventing
import of ?genuine‘ recordings,Restrictions
now removed
Parallel import,computer
? includes computer games,books,periodical
publications and sheet music,Copyright
Amendment (Parallel Importation) Act 2003
Patents - outline
2,Theories of patent protection
3,Patent law,
1,What can be patented
2,The application process
3,Rights and infringement
4,Defences and remedies
5,New areas
? Emerged in Britain in the late 15th century
? Used as an instrument of economic policy
??Patens‘ means ?to be open‘
? Patents increasingly important,IBM--
10day and over $1 Bil licensing fees
? Thomas Edison,almost 2000 individual
Patent coverage (cont)
? In 2000,US Office had 315,015 applic;
granted 175,983
?During 90‘s patents grew at 12% year
? Took 210 years from 1790 for first 6
million; est 15 years for next 6 million
Patent coverage (cont)
? Business method,biotech,FutureColor,new
Xerox color rinting pres= 80 ft long,5000
pounds,3 mi wiring,85 microprocessors,
Cost $1 billion to develop,over 7 years and
400 patents
? 80% patents go to corporations
? Utility patents = largest; most are minor
2,Criticisms of the patent
? The creation of monopolies
? Potential for inefficiencies
2 Types of Patents,innovation
? Provides 8 year protection for inventions
not sufficiently inventive to qualify for
standard patent (s 68),Devised to give
incentive to small bus to invest in
innovation,they can be obtained at low cost
and easily from APO after initial check and
can be obtained online,Can‘t be enforced
until examination by APO,Can be opposed
by 3rd parties
Types of Patent,standard
? Lasts for 20 years from date of patent (s
67),Drug patent can be extended another 5
(ss 70-79A)
Inventor & ownership
1,Inventor= ?actual deviser of the
2,Right to the grant of patent
belongs primarily to inventor or
joint inventors though any person
may make an application,
Patent taken out by person
other than inventor
1,Another person may obtain right via
enactment,rule of law,treaty,
international convention or contract
Patent made by employee
? Will belong to employer if made in the course of
normal duties and circumstances such that an
invention might reasonably be expected to result
from the carrying out of his duties
? Invention was made in course of duties falling
outside normal duties,but specifically assigned to
him and circumstances were such that an
invention would reasonably expect to result
Employee patent (cont)
? Invention was made in course of duties and
at the time of making the invention,his
duties and responsibilities are such to result
in a special obligation to further the
interests of the employer
Patent as personal prop
? Patent and even applic for patent is personal
? Rights can be transferred
? Normally via assignment or licence
? Eg bio-tech,so crowded that many licences
required before further exploitation/develop
can occur
Carving up Patent Rights
? Granted to do one or more of exclusive
? Limited to a single licence or right of sub-
licencing can be given
? Fixed duration
? Fixed in location or area
? Combination of above
Limits on licencing
? Can‘t force to take good other than patented
? Can‘t prohibit licensee from using articles not
supplied by a nominated supplier or licensor
? Can restrict licensee to only sell goods covered by
the patent and to require that spare parts to keep it
in repair be purchased from supplier or licensor
Assign and Mortgage
? Assignment/Mortgage of patent must be in
writing and signed by or on behalf of parties
to the transaction
? Where body corporate,seal must be affixed
? Licences not req to be in writing
Co-owners of Patent
? Each entitled to an undivided share in patent
? Each can do any act which otherwise would
be an infringement without consent of the
other or need to account
? But,no one owner can grant a licence or
assign or mortage a share without consent
of the other
? Position can be varied by agreement
Exlusive licence
? Excludes even owner of patent
? Exlusive licence can bring infringement
actions in his own name
Rights you can register
? Can file with the Registry,
? Assignment of a patent or application for a patent
or a right in it
? Mortgage of a patent or application
? Assignment or sub-licence,or mortgage of a
licence or sub-licence
? Death of proprietor or one of owners and vestig by
an assent of personal reps of a patent
? Any court order or directions transferring patent or
ofer that application should proceed in name of
Right of Inventor to be
? Right to be mentioned in any patent granted
and right to be so mentioned,if possible,in
any published application for a patent for
the invention
? If applicant has not already given registry
name,must do so wi 16 mo from declared
priority date or deemed to be abandoned
The standard patent
? What is a patentable invention (s 18 (Aus)),
? a patentable invention is an invention which is,
– a manner of manufacture
– when compared with the prior art base at the priority date,is
? novel
? involves an inventive step
– is useful
– has not been secretly used
The standard patent
? Is new - Comparisons to prior art/ state of
the art
? Involves and inventive step
? Is capable of industrial application
?Shouldn‘t give patent for something already
? The invention must be new when compared
with the prior art base
? Means publicly vailable whether in or out of
patent area,ie anywhere in world
? prior art information publicly available in a single
document/ single act
? prior art information publicly available in two or
more related documents
? We need to consider both published
documents and acts,
? We also need to consider specifications of
other patents with an earlier priority date,
?Combining material as ?prior art‘,
– Minnesota Mining and Manufacturing Com v
Beiersdorf (Australia) Ltd (1980) 144 CLR 253,
?Must not have been secretly used,Don‘t
want people to keep it secret and extend
life,Secret use not include reasonable trial
and experiment; confidential disclosures,
use for purpose other than trade or
?The meaning of ?new‘
– the ?reverse infringement‘ test,would the
anticipation (i.e.,public documents or use) have
constituted an infringement if the patent were
(Griffin v Isaacs (1938) 12 AOJP 739)
An inventive step
? would it be obvious to a person skilled in
the relevant art in the light of common
general knowledge at the priority date,
? Does not mean that patent must fulfil some
worthwhile function,rather
? The invention must operate as claimed or
obtain the results claimed for it,
Business method patents
? Increasing trend towards patenting business
? Legal issues,
– State Street Bank & Trust Co
– Welcome Real-Time v Catuity
? Discovery,scientific theory or mathematical
? s 18(2) Human beings and the biological
processes for their generation are not
patentable inventions
Methods of human treatment
? Policy considerations,
– advancement of surgery (Joos v Commissioner
of Patents (1972) 126 CLR 611)
– medicine as a ?non economic pursuit‘ (Bristol
Myers Squibb v Faulding)
Three types
? Provisional
? Complete
? International
The application process This involves deciding whether to
apply,and then (must move fast
yet it is difficult process),
? the application
? examination
? Opposition
Deciding whether to apply
? Searching for patents
? Other options for commercialisation
? When filed Patent is kept confidential by
Registry until official publication,usually
18 mo after application
Documentation,4 parts
? Description
? Claims and drawings which together are
known as ?specification
Drawings must be explained and each part
numbered,Involves prof draftsman
? Abstract (short summary of what invention
Patent attorneys/agent
? Have a technical degree
? Taken prof exam to become qualified patent
? Not always lawyers (but are in US)
Search & examination
?Can‘t search everything,published int‘l
applications,patents in Australia,
? Will look at any prior art,Where negative
opinion,apliant will be invited to respond
wi 5 mo in writing,Can get a subsequent
written opinion and respond gain,51
Search & Examination
?Can do a combined search and exam
(28 mo)
?Notification of result
? After search,patent is published,Grounds of
opposition (s 59 Aus)
– that the person is not entitled to the grant
– the invention is not patentable (s 18)
– the specification does not comply with s 40
? Counterclaim for revocation,s 121
? Before end of 54 mo from filing Registrar has to
grant or reject patent
International Patent Applic (ch
8 Patents Act 1990)
?Applic can rely on corresponding intn‘l
aplication filed under Patent Cooperation
? Search report issued
? Enter national phase (deal with national
office designated) or request an
international examination report
Rights to exploit the invention
? Make,hire,sell or otherwise
dispose of the product or process,
offer to make,sell,hire or
otherwise dispose of it,use or
import it
? Can exploit it personally or
assign,grant licences etc
Duration of rights
? 20 years from the priority date (standard
– s 65,s 43
? Pharmaceutical patents,s 77 can be
extended for another 5 years
? Applic for revocation may be made by
person found to be entitled to patent or part
of it and can‘t be made after 2 years from
date of grant of patent
Revocation of patent
? Not a patentable invention
? Granted to person not entitled
? Specification did not disclose invention
clearly and completely
? Matter disclosed in specification goes
beyond application
? Obtained by misrep
? Infringement=exploiting without consent
? Must do something in relation to invention
that is wi the scope of the patentee‘s
exclusive rights
Defences and Remedies
? The exhaustion theory
? Implied licence,
– repair of products (Solar Thompson
Engineering Co Ltd v Barton [1977] RPC 537)
Declaration of non-infringement
– injunction
– damages
– account of profits (no damages or account if
shown person was not aware of patent nor had
reas grounds
Emergence of New Patent
? Genetically manipulated processes,Human
beings and biolog porcesses for their
generation not patentable but moves to
patent genetically manipulated organisms
(GMOs) including genetically modified
animals or crops,Similar to pharmaceutical
and would provide incentives
Plant Bredeer’s Rights Act
1994 (Cth)
? Provides similar protection to patents,20-25 years
to innovators of plant varieties and rights to
royalties are available,Involves exclusive rights to
sell or produce for sale plants or reproductive
material,A plant variety name is given to a
particular ?cultivar‘ or new type of variety of plant
derived from a natural species and maintained by
cultivation,Eg ?chameleon‘ and ?sultan‘ =
varieties of rose family
Trade marks
? A form of words,symbols or some devise
which forms a recognisable representation
and is placed on a product to facilitate its
identification by the public,Trade Marks
Act 1995 (cth)
Reasons for trade mark
? Consumer protection
? The protection of good will
? Indicator of quality
? Brand association
Registration,Trade Marks
? Select a mark that is visually perceptable sign
capable of accurate reproduction in the application
? Decide on types of goods/services International
(Nice) classification of Goods and Services for
Purposes of Registration of Marks comprising 45
classes,eg 15=musical instruments; 25,clothing,
footwear,headgear; 41,education,training,
entertainment,sporting and cultural activities,
? There are 11 classes of services
Examination by Registrar
? Once applic form completed and fees paid,
Registry conducts formal and substantive
examination,Won‘t be registered if devoid
of distinctive character,Surnames,image-
promoting words are most objected to,
Easiest to register are invented words,
Definition of trade mark
? A sign
? Used or intended to be used
? To distinguish goods or services
? In the course of trade
(s 17 Aus)
A sign
? Sign includes any combination of the following,a
brand,heading,label,ticket,aspect of packaging,
shape,colour,sound or scent
? Eg coke bottle not protected under earlier more
restrictive wording
? Eg scented yarn; ?ping‘ sound between words ―Ah
McCain…You‘ve done it again‘
Used or intended to be used
? If not used,the trade mark can be expunged
(ss 92-105)
?See Clarke B and Kapnoullas,S ?the new
forms of registrable marks,market update
in the first five years (2001) 6 Deakin LR
Used to distinguish goods and
? Must be separate from the goods and
service themselves
– Philips Electronics NV v Remington Products
Australia Pty Ltd
? An application will be rejected where the
trade mark is incapable of distinguishing the
goods or services (s 41 (Aus)),
? Types of distinctiveness,
– Inherent distinctiveness
– Some distinctiveness,in combination with other
– Acquired distinctiveness
Inherent distinctiveness
? Not if a sign used to indicate the kind,quality,
quantity,intended purpose,value,geographic
origin or other characteristic of goods or services,
Eg can‘t use ?camera‘ for camera products,
?Perfection‘ for soap,Tastee-Freez for icecream
was denied but Brownie for camera and Bullseye
for film was permitted,Times or dates not
acceptable,eg Vintage 1888 for wine
? Invented words
– Howard Auto- Cultivators Ltd v Webb Industries Pty
Inherent distinctiveness
? Geographical indications
– Section 61 prevents marks with false
suggestions of geographical origin
? Descriptive terms
Inherent distinctiveness
?Some words can‘t be used at all,eg Royal
Arms,flag or seal of state,? ?national‘
? Names
? Devices
– Eg,a font (if unique)
Deceptive marks
? Rejected under s 43 (Aus) if,
– Inherently misleading
– Similar to registered or unregistered marks
– Misleading because of some suggestion or
imputation flowing from the mark,
Deceptive similarity
? Section 44 (Aus)– where,
– Identical
– Substantially identical,or
– Deceptively similar
? AND application is in relation to the same
goods or services or similar goods/ closely
related services,
Substantial identity/ deceptive
? Shell Co (Aust) v Esso Standard Oil (Aust)
– Substantial identity involves a side by side
– Deceptive similarity,if it so nearly resembles
another mark that it is liable to deceive or cause
confusion (s 10),
Deceptive similarity
? Looking at the effect or impression on the
consumer,not credited with any high
perception or habitual caution but
disregarding carelessness or stupidity
(Australian Woolen Mills Ltd v F S Walton &
Co Ltd )
Similar goods/ closely related
? Look at the inherent character of the goods
and their uses and the trade channels
through which they are sold,
(Southern Cross Refrigeration Company v
Toowoomba Foundry Pty Ltd)
Honest concurrent user
? One situation in which registration of a
deceptive mark is allowed,
? Section 44(3) – where substantialy identical
or deceptively similar it can be registered if
there has been honest concurrent use,
? The Registrar can impose conditions of use
Other requirements
? Capable of being graphically represented (s
– Regulation 4.3(7)
? Scandalous marks,eg profanity
? Excluded terms and Olympic insignia
Other types of trade marks
? Defensive marks – s 185(1) (Aus)
? Collective marks – ss 161 – 167 (Aus)
? Certification marks – ss 168-183 (Aus)
Similarity to pre-existing mark
?Won‘t register if it is conflict with one
already registered for same type of goods,
? However if the pre-registered mark has
wide applicability across a wide range of
goods,may not allow new one
Opposition Proceedings
? Published in Gov Gazette
? Any party who opposes registration can ask
for a proceeding
? Might also include someone who has used a
similar mark extensively in market but not
registered—common law trade mark
Opposition 2
? Once period passes then a Certificate of
Registration will be issued to applicant
? Can give notice to public using trade mark
symbol ? next to the registered mark,
Crime to say it is registered when it isn‘t
Rights of the trade mark
? Section 27 – the person who claims to be
the owner,and uses or intends to use it can
? Section 20 – grants the exclusive right to
use the mark and authorise others to use it,
in relation to the goods and/ or services in
respect of which it is registered,
? S 120,use as a trade mark of a sign that is
substantially identical with or deceptively
similar to the trade mark in relation to
goods or services in respect of which the
trade mark is registered
Unrelated goods or services
? Where the mark is well known,
infringement may occur if used in relation
to unrelated goods or services,(s 120(3) and
? Need to establish that the sign would be
taken as indicating a connection between
the unrelated goods or services and the
registered owner of the trade mark,
Exceptions to infringement
? Use in good faith where the mark is a name
or place and use is to indicate the kind,
quality,quantity,purpose,value,origin or
other characteristic of the goods
? Honest practices in industrial/commercial
matters,eg own name
? consent
? Prior use
Removal for non use
? Section 84,
– If no intent to use it and it has not been used
– Has not been used in good faith for three years,
? Section 88
– if the entry in the register was wrongly made
– If the mark is deceptive of confusing for some
reason other than similarity to registered mark
Passing Off
? Three broad elements,
– Reputation
– Misrepresentation
– Damage
? Paris Convention,minimum standards for
protection of Industrial property,incl TM
? European Community Trade Mark
International 2
? Madrid Agreement Concerning the
International Registration of Marks allows
nationals of contracting states who have an
existing TM registration in their home
country to obtain protection in other
contracting states who are party to the
Madrid Agreement,
International 3,Madrid
?,Must first file an intl TM application with
the IP Ofice in Australia
? designating other member states of choice,
Form prescribed by WIPO,No limit to
number of states designated as long as they
are members of the protocol,
Madrid Protocol (cont)
?The Int‘l Bureau at WIPO examines the
mark and gives it an int‘l registration date,
usually date filed with IPOS,Bureau also
issues a Certificate of Registration,Enjoys
same protection as if filed separately in each
country,Disadv is that if reg is cancelled wi
five years,will lose protection everywhere,
Valid for 10 years renewable,
? Select a sign or symbol
? Select word to go with it
? Invented words=greater chance of registration
? Avoid misspelt words
? Avoid laudatory words
? Avoid descriptive words
? Neither sign nor symbol or word should be
commonly assoc with the product in q,
Passing Off
? Purpose,
– Protecting P‘s commercial advantage
– Consumer protection
– Protecting reputation
Passing off
? Person falsely represents their goods or
services as those of the plaintiff or that there
is an association with P so as to cause
damage to P‘s goodwill or reputation
? a misrepresentation
Made by a trader in course of trade
? To prospective consumers supplied by him
? Which is calculated to inure goodwill of
? Which causes actual damage to a business
or goodwill
Example 1
? Pacific Dunlop v Hogan (1989) 23 FCR
553,D produced a tv ad for shoes,The ad
was easily id as the famous ?knife scene‘ in
Crocodile Dundee,Held that a significant
number of those seeing the ad would have
been misled into believing that Hogan
would have given his approval for the use
of the film‘s caracter,images via some
commercial arrangement,
Example 2
? Twentieth Century Fox Film Corp v South
Australian Brewing Co Ltd (1996) 66 FCR
451,P was producer of Simpsons,Homer,
the leading character drank an imaginary
beer,Duff Beer,D produced a new beer and
called it ?Duff Beer‘,Held this amounted to
passing off as a product associated with the
Establishing reputation
? The reputation must be,
– In relation to the goods and services
– In the jurisdiction
? It is not necessary that the P trade in the
Establishing reputation
? The reputation must be sufficient,a
sufficient reputation within a market
? The mark must be distinctive
– acquired and inherent distinctiveness
? The relevance of intention to mislead or
– ConAgra v McCains
? A substantial number of consumers must
come to the wrong conclusion or be
confused about a connection between the
goods and services and another trader,
? Steps,
– Establish the class of consumers
– Determine their relevant abilities and alertness,
– Look at the effect on a sufficiently large cross
– Look at the overall conduct of the defendant
? Need actual deception
? Simply copying appearance will not be
– Dr Martens Australia Pty Ltd v Figgins
Holdings Pty Ltd
– Interlego AG v Croner Trading Pty Ltd
? Need for a causal link
? Loss in sales
? Dilution of reputation
? Loss of licence fee
Trade Practices Act
? Section 52,misleading and deceptive
? Looking at the effect on the consumer,
whereas passing off looks at the effect on
the Plaintiff,
Design Law,Designs Act
? Industrial Designs,Watches,kitchenware,
office equip,furniture,eg New IMAC and
PDA‘a and cell phones
? June 17,04,Designs Act 2003 into effect
Major Changes
? Old act not often used,5000 applic in 87;
only 4000 in 2000,
? Easy to register,but hard to enforce and few
cases upheld designs,New Act= harder to
register,Test=req to be sufficiently
innovative,Must be new and distinctive
? Obligations under TRIPS to protect
industrial designs
? Design protection extends to the visual appearance
of a manufactured product,
? A system of registration
? Monopoly protection
? There is a threshold level of originality required
? It does not protect function,though can still be a
design with some functionality
New and Distinctive/Original
? New unless identical to a design that forms
part of the prior art base for the design (s
16(1),It is distinctive if not substantially
similar in overall impression to a design that
forms part of the prior art base (16(2))
? Standard of informed user familiar with the
product to which the design relates
Design owner‘s rights
? Monopoly in that design,ie to the ?particular,
specific and individual appearance of articles that
carry the design
? Owner has exclusive right to,make a product in
relation to which design is registered which
embodies the design
? Import such a product
? Sell,hire or otherwise dispose of such a product
? Or authorise another person to do any of these
Design rights=Personal
? May be assigned
? Can assign all or part
? May be for a particular place
Definition of design
? Section 4(1),
– Features of shape,configuration,pattern or
– Applicable to an article
– Being features in the finished article that can be
judged by the eye of informed user
– Does not include a method or principle of
Section 4(1)
? Features of shape,configuration,pattern or
– Covers two and three dimensional aspects
Section 4(1)
? Applicable to an article,
– An article is ?any article of manufacture and
includes a part of such an article if made
separately (but not a circuit layout)
? Must be manufactured
? The article itself is not protected
Definition of design
? Visual feature,includes shape,
configuration,pattern and ornamentation,It
may serve a functional purpose,
? Does not include,
– The feel of the product
– Materials used in the product
– Indefinite patterns
The standard of innovation
the design must be either new or original,
Must not have been previously published in
Australia or elsewhere,
? A design will not be new where it,
– Differs only in immaterial detail from the prior
– Differs only in features commonly used in the
relevant trade
– Is an obvious adaptation of existing designs
Exclusions from design
? Things excluded by regulation that are
primarily literary or artistic in nature,
? The regulations refer to things such as book
jackets and stamps,cards,labels medallions
Registration of designs
? Who can apply?
– the owner of the design can apply
– Exceptions,contracts of commission and designs made
in the course of employment
– Lasts for one year but can be extended for up to 16
years from date of application,After that anyone can
use,Under new Act 5 years with one renewal for total
of 10 years,
The application
? File with Registrar of Designs
– Pay fee
– If not comply,Registrar gives notice and oppor
to ammend
– Date of registration =date of application
? s 23,examined by the registrar as to,
– Whether it is a registrable design
– Whether the applicant is entitled to make the
? The register is open to the public and applic
published in Gazette and able to be
? An interested person can apply for
cancellation of the design on the grounds of
anticipation by publication
? Counterclaim for rectification of the register
(s 32)
Rights of the design owner
? Monopoly,
– The exclusive right to apply the design to an article in
respect of which the design is registered,
Types of infringement
– Direct – manufacturing articles with the
registered design features
– Indirect – commercial dealing with infringing
– New Act,Primary and Secondary)
Primary infringement
? Person,wo licence or authority,makes or
offers to makes a product in relation to
which the design is registered,which
embodies a design that is identical to or
substantially similar in overall impression to
the registered design,Substantially
similar=same test of ?distinctiveness‘,Ct to
focus on similarities
Secondary infringement
? Without license or authority,
? Import product into Australia for sale or use in
trade or business
? Sell,hire or otherwise disposes of such a product
? Uses a product for purposes of any trade or
? Keeps a product for sale,hire,disposal or any
trade or business,
? Private non-commercial use
? Evaluation,analysis,research,teaching
? Good faith prior use
? Copy of feature that falls within the
?Functionality‘ ?must-match‘ or ?must-fit‘
exclusions,ie right of repair,eg auto part or
component of complex product and have to
copy the design
The designs/ copyright
In simple terms,
? There is no infringement of copyright where an
article (in three dimensions) is made from a
corresponding design,
? Desire to make sure protection of industrial
articles is not overly extensive,
? So,publication of complete patent specs or design
is deemed to be an industrial application of that
corresponding design
Confidential Information
– Fraser v Thames TV [1984] 1 QB 44 Member
of pop group had idea for tv series based on
experiences of the group,One of P
communicated idea in confidence to D,
Negotiations broke down,co put idea into
effect,Held d breached obligation not to use
idea communicated in confidence
? Info must have quality of confidence,ie be
secret and not public knowledge,Must have
some quality of novelty that makes it
valuable,Must be precise and not
? Must be parted in circum where d knows or
reasonably should know it is confidential
? Unauthorised used of information imparted
Equitable action
? In addition to equitable action of breach of
confidence,may also be imposed by
contractual duty,
? Defence,exposure in public interest
Remedies for breach
? Damages
? Injunction against disclosure or use
? Account of profits
Often arises in employment
? Secret formulas
? Customer lists
? Research developments
IP Issues in Digital Age
? Patentability of Computer programs,espec when
they involve function
? E-business method payments
? Look and feel,individual screens as a bundle of
copyrights,Literary work in the words or symbols,
artistic copyright in the overall design and
pictorial icons,and even cinematographic work
where moving pictures involved
Digital Age issues 1
? Reverse engineering,is that fair use,Could
be ?research‘ even though for a commercial
? Q,Where use is transformative more likely
to be fair use,eg re-creation of a song to
create a parody,reverse engineer to create
an inter-operable product
? Ram,transient copies not violation
Digital 3
? What about storage copies in a computer,
Digital Copyright Amendments provide
storage of work in a computer or on any
medium by electronic means is a reduction
to material form or a reproduction,
? Multi-media work is a compilation and
therefore protected as a literary work
? Databases,EU protects as a sui generis right
In Australia databases protected as
Rights Management information,1999
Copyright Act amendments provide for new
right to prevent any removal or alteration of
rights management information
? Hyperlinking and Framing (web pages of another
are framed within your web site)
? Backup copies
? User caching,Digital Copyright Amendments
provide not an infringement to make transient or
incidental electronic copies made available over a
? Network service providers and ISP,treated like
postal service and not liable generally for
copyright infringement in regard to message,
Takedown provisions
? Technological protection measures-Trade
mark in metatags
? Trade mark vs domain names
? Privacy protection,not as advanced in
Australia but nec for EU trade
Self Help,After the Pirates
? Business Software Alliance,search engines to
survey the web looking for suspicious sites,
Order it to shut down or face litigation,In 2001
this has led to the shutdown of almost 3000 sites,
? BSA represents the copyright interests of the
leading software developers in the world,Approx
37% of the software used worldwide consists of
pirated copies,
Self Help,After the Pirates
? Envisional ( is a UK
Internet monitoring company using an Asset
Tracker program designed to help business
monitor digital assets as they are distributed
across the Internet,
? They recently conducted a study that found that
internet pirates were targeting top authors such as
Stephen King,JK Rowling (Harry Potter),Tom
Clancy,JRR Tolkien,
Circuit Layouts Act 1989
? Regulations on Protection of the Layout-
Designs of integrated Circuits went into
force in 1990.Rules on submission,joint
registration,submission of confidential
integrated circuit samples,etc
TQM-Re-engineering to
Knowledge Management
? Nonaka,Ikujiro and Takeuchi,Hirotaka,the
Knowledge-creating Company,How Japanese
companies create the dynamics of innovation
(Oxford University Press
? used to be called corporate memory,how
company ran,how systems operated,
? With rapid turnover in staff,this was
? no longer workable
? 1990's began an emphasis on KM,
Knowledge Imperative
? Knowledge is your most important raw
? Knowledge is your most important source
of added value
? Knowledge is your most important ouput
? If you are not managing knowledge,you
are not paying attention to business
Knowledge Management,
? Knowledge management is a multi-
disciplinary approach to achieving
organisational objectives by making the
because use of knowledge,KM focuses on
processes such as acquiring,creating and
sharing knowledge and the cultural and
technical foundations that support such
processes,It is a system integrating
people,IT,processes and documentation,
Where Knowledge Resides
? Fuji Xerox study found
? 26% of the knowledge about customers
was in paper documents,
? 12% was on an electronic database that
contained basic information,
? 20% was in electronic documents,mostly
somebody's PC,
? 42% was in employees’ brains,
KN,Knowledge includes
? Identify best practice
? Company capabilities
? Identify knowledge pool
? Strategic planning and
? Client knowledge
Knowledge management
includes (cont)
? Supplier knowledge
? Stakeholder and staff knowledge
? Practices and Practices knowledge
? Explicit and Implicit
KM,Resources and Tasks
? Stakeholder and staff training
? Need commitment from top and culture
committed to KM
? Staff need to be abnle to understand the KM
system.,the classification methodology used for
storage and retrieval and unstructured
information,All users must know how to use the
features of the KM system,
Knowledge management
resources (cont)
? Monitoring and review
? Trends and planning for improvement
? Need powerful search engines
? Effective security
? Word scanning and indexation
? Customisation
Knowledge management
resources (cont)
? Archive
? Internet/intranet integration
? Remote access via internet
? Replication of documents
? Expiry times for documents
? Search history by user
Electronic Documents
? Develop the vision and long-term strategic
plan to justify the funds and resources
? Gain the support of senior management
? Undertake cost/benefit analysis
? Communicate with all business units to
identify their needs and integrate systems
Electronic Documents
management (cont)
? Determine what needs to be outsourced and what
can be done internally
? Benchmark within industry to define realistic
? Manage the contracting and tendering process
? Assure compliance with recent legislative
changes in relation to electronic documents and
digital signatured
Electronic Documents
management (cont)
? Control reporting requirements to manage
the risks
? Be careful with privacy issues
? Examples of successful KM Australia
Post,Health Super Victoria,The National
Library of Australia
Further Reading on KM
? Choo,Chun Wei and Bontis,Nick (ed) (2002)
The Strategic Management of Intellectual
Capital and Organizational Knowledge Oxford,
Oxford University Press
? Thomas A,Stewart (2001) The Wealth of
Knowledge,Intellectual Capital and the 21st
Century Organization,NY,Currency Press
? IP and KM are an important issues and critical to
? Japan,South Korea and Taiwan all imported,
imitated and then improved upon US patents and
became leaders in the field
? China = inventive country,paper,paper money,
books,printing press,suspension bridge,cross
bow,steam engine,gun powder etc
Q for Discussion in groups
? Does firm understand its customers,market,
competitors,external environment?
? Is innovation part of strategic planning
documents? How many people to work on new
products or services?
? Does company follow through on strategic
? Where does responsibility for innovation rest?
Q for Discussion in groups
? Any areas where innovation is taboo or not
? How well does company tolerate
disagreement,conflict,divergent thinking?
? What are new employees told or shown
about innovation
? Incentives to innovate
Q for Discussion in groups
? What IP? Inventory of IP?
? How is IP protected
? How is IP valued and commercialized?
national and international
? Has been around for centuries
? Widely used commercially
? Advantages,private,expertise of arbitrator,
no formal rules of evide
? Disadv,becoming like trials,increasingly
? Major form of international dispute
? The arbitrator,a neutral third party,is empowered
by the parties to resolve a dispute by making a
binding ?award‘ on the parties,The arbitrator
hears submissions and takes evidence on behalf of
the parties in order to determine an appropriate
outcome,In this sense it takes the form of court in
that presentation may be admitted and parties
cross- examined,
Arbitration clause
? Contracts often include a specific
arbitration clause which requires disputes
to be heard before an arbitrator and not
before a court,
Party choice of who,when,
? arbitrators are chosen by the parties and derive
their authority,usually from the agreement of the
parties,The person chosen is often a person who
has specialised knowledge of the dispute subject
area,for example,construction contracts,An
arbitration agreement also gives the parties control
over where the proceedings will be held,in what
language and what law will apply
Sample Arbitration Clause
? ‘ In the event a dispute shall arise between the parties to
this [contract,lease,etc.],it is hereby agreed that the
dispute shall be referred to [one of the following choices,
(1) designate a specific USA&M office,including address
and phone number; (2) provide a method of identifying the
correct USA&M office such as,?where manufacturing
plant is located‘; or (3) insert ?a local USA&M office
designated by USA&M National Headquarters‘] for
arbitration in accordance with United States Arbitration
and Mediation,Inc.'s Rules of Arbitration,The arbitrator's
decision shall be final and binding and judgment may be
entered thereon,
Sample clause (cont)
? In the event a party fails to proceed with
arbitration,unsuccessfully challenges the
arbitrator's award,or fails to comply with
arbitrator's award,the other party is entitled of
costs of suit including a reasonable attorney's fee
for having to compel arbitration or defend or
enforce the award.‘
Steps in Arbitration,1
? First,the parties choose an arbitrator,
usually as set out in an arbitration clause in
the contract between the parties,However,
it is possible that a statutory provision or
court (where arbitration is annexed) may
determine the arbitrator as per court order or
statutory rules,
Steps in Arbitration,2
? Second is the process explanation stage in
which the arbitrator will convene a pre-
hearing conference to identify the nature of
the dispute,explain the role of the arbitrator
and to work out an agenda for hearing the
Steps in Arbitration,3
? During the third stage of arbitration the
parties set forth their claims and defences
and exchange information,This stage
parallels the pleading and discovery aspects
of litigation,
Steps in Arbitration,4
? The fourth stage of arbitration is the actual
hearing itself in which the parties hear
witnesses and during which evidence and
arguments are presented by both sides,A
simple arbitration might be decided in a day
or in complicated matters may take multiple
settings over a course of months,
Steps in Arbitration,5
? Finally,the arbitrator,having heard all the
evidence,will make an award which,
subject to a limited right of appeal to a court,
will be binding on the parties and
enforceable in a court of law,
Uniform Commercial
Each Australian jurisdiction has substantially
similar legislation governing commercial
arbitration (see,eg,Commercial Arbitration
Act 1984 (NSW)) agreements,Essentially
the legislation provides a menu of options,
The parties can agree to have dispute
decided on principles of general justice and
fairness,rather than according to law,with
bonus that no appeal is possible,
Uniform Commercial Arbit 2
They can exclude legal representation,agree
not to be bound by rules of evidence and
dispense with reasons for the award,They
can agree that the award is to be final unless
otherwise agreed,However,if the parties
do not spell out these menu items or options
and/or their agreement is silent on these
matters then the legislation sets forth the
rules governing the arbitration agreement,
Uniform Act,Part II
appointment of arbitrators and umpires,Provides
that unless the parties agree otherwise in writing,
the arbitration agreement will involve the
appointment of a single arbitrator (s6) and that the
appointment will be made jointly by the parties
(s7),Section 8 deals with the situation where a
person with power to appoint an arbitrator fails to
do so,Section 10 gives the court the power to fill
a vacuum when the agreement does not provide
for such or the method provided in the agreement
Part II,Uniform Act (cont)
Other sections gives the court the power to
appoint an arbitrator where the umpire is
removed (s11) or the agreement provides
for the appointment of an even number of
arbitrators and they fail to determine a
matter (s12),
Uniform Act,Part III
? Act deals with the conduct of arbitration
proceedings,It provides that the arbitrator
is not bound by the formal rules of evidence
(s19),Unless the agreement provides
otherwise,where the award provides for a
panel of three arbitrators,a majority of two
will suffice,If there is no majority,the
decision of the arbitrator appointed as
chairperson shall be binding (s15),
Part III,Uniform Act (cont)
? A party may apply to the court for a subpoena or
summons to compel evidence or witnesses to
appear before the arbitrators (s18),Unless the
agreement says otherwise,the parties shall appear
personally,but may be represented by their
lawyers if the arbitrator gives leave,The
arbitrator should give leave for lawyers to be
present if convinced that the presence of lawyers
will shorten the length of the proceedings or the
applicant would otherwise be disadvantaged (s20),
Part III (cont)
? Unless otherwise agreed to in writing the
arbitrator should make their decision
according to law,However,the parties may
agree that instead,the arbitrator should
determine any question of law or fact
according to principles of general justice
and fairness (s22),
Part III (cont)
? Subject to the agreement of the parties,the
arbitrator is empowered to make interim awards
(s23) and to grant an order of specific performance
ordering a party to perform a contract (s24),If
two or more arbitration proceedings relate to the
same matter,the court may order a consolidation
of the proceedings (s26),Unless otherwise agreed,
the arbitrator also has the power to order the
parties to mediation (s27),
Part IV,Awards and Costs
? Section 28 provides that the arbitrator's award
shall be final and binding upon the parties,Unless
the agreement provides otherwise the award shall
be in writing,signed by the arbitrator and include
a statement of reasons for making the award (s28),
The arbitrator is also given power (subject to the
agreement of the parties) to award costs including
the payment of interest (s31),The award may be
enforced in the same manner as a judgment or
order of the court (s33),
Part V,Powers of the Court
? has general supervisory power over arbitrations
and can always set aside an award on the grounds
of arbitrator misconduct,or where the award has
been improperly procured (s42),The Court is also
given broad powers to deal with delays by any of
the parties (s46),The Court can also remove an
arbitrator/umpire on the grounds of misconduct,
undue influence,or incompetency (s44),Upon
application of a party and with the agreement of
the parties or the arbitrator,the court may
determine any question of law arising out of the
arbitration (s39),
Part V (cont)
? To promote the finality of arbitration
awards,s38 abolishes the right of a party to
appeal to the court to have an award set
aside on the ground of 'error of fact or law
on the face of the award',Judicial review is
possible only with the consent of the parties
or with leave of the court and only on the
ground of 'error of fact or law on the face of
the award',
Part V (cont)
? However,even this avenue of appeal can be
eliminated if the parties agree to exclude
such leave to appeal (s40),The only
exceptions to the use of such an exclusion
are disputes falling within the Court's
admiralty jurisdiction,commodity contract
disputes or disputes arising out of a contract
of insurance (s41),
Part VI,General Provisions
? Among the most important provisions is
that the arbitrator will not be liable for
negligence but will be liable for fraud in
respect of anything done or omitted to be
done in their capacity as arbitrator (s51),
The Act further provides that if a party dies
the agreement will not be discharged but
may be enforced against the personal
representative of the deceased (s52),
International Arbitration
? is a consensual process founded upon the
agreement of the parties,the enforceability of
these agreements depends on a complex
framework of national and international law,
Most important of these treaties is the United
Nations Convention on Recognition and
Enforcement of Foreign Arbitral Awards (The
New York Convention) which has been ratified by
almost all countries,including Australia in the
Arbitration (Foreign Awards and Agreements) Act
1974 (Cth)
NY Convention requires
? To recognise arbitration agreements in
writing and to refuse to allow a dispute to
be litigated before them when it is subject to
an arbitration agreement;
? To recognise and enforce foreign arbitral
NY Convention (cont)
? The Convention is incorporated into Schedule 2 of
the uniform Commercial Arbitration Act in each
jurisdiction to ensure uniformity between the
Commonwealth and States,This legislation
enables Australian businesses to enforce
arbitration awards in other countries (which have
likewise adopted similar legislation) and enables
foreign awards (those made by arbitrators outside
of Australia) to be enforced within Australia,
Advantages of Int’l Arbit
? arbitration is by far the most commonly
used internationally,The three main reasons
for this are,(1) the final and binding
character of arbitral awards; (2) the wide
international acceptance they enjoy; and (3)
the neutrality of the forum,
? Many countries do not have the resources,
competence or tradition of even-handedness
to satisfactorily resolve international
disputes,Through arbitration,no party
need enjoy advantages or be disadvantaged
relative to other parties in five key respects,
Via Int’l Arbit Parties can
? Place of proceedings;
? Language used;
? Procedures or law applied;
? Nationality of the arbitrators; and
? Legal representation
? Arbitrator and their expertise
Disadv of Int’l Arbitration
? First,defective or incomplete arbitration
clauses may result in multiple judicial
proceedings in different countries where
one must litigate both the enforceability of
the arbitration clause as well as the
substantive provisions involved,Moreover,
a carefully drafted forum selection clause
choosing a national court may work just as
well as an arbitration clause,
Disadv 2
? Second,while arbitration tends to be more
procedurally flexible,the vagueness of
many arbitration rules allow ample room for
party misconduct or create opportunities for
an even greater range of procedural disputes
between parties,
Dsadv 3
? Third,while arbitration tends to permit less
discovery than in litigation,a party may
desire broad discovery provisions in
particular cases,
Disadv 4
? Fourth,arbitration is arguably quicker and
less expensive,Yet,international
arbitration is often a time consuming and
very expensive process,
Disadv 5
? Fifth,although arbitration is designed to eliminate
the uncertainty that arises when international
disputes are litigated in national courts,it can give
rise to its own jurisdictional uncertainties,Choice
of law issues may arise in relation the substantive
law governing the merits of the parties‘ contract,
the substantive law governing the parties‘
arbitration agreement,the law applicable to the
arbitral proceedings (curial law) and the conflict
of law rules applicable to select each of the
foregoing laws,
Disadv 6
? Finally,developing countries often
complain that the major arbitration rules
tend to be drafted by and favour the rich
developed countries,Thus,arbitration
agreements are more harshly treated in such
areas as South America,
Institutional or ad hoc
? Parties using arbitration have a choice
between designating an institution,such as
the International Chamber of Commerce
(ICC),the American Arbitration
Association (AAA) and the London Court
Of International Arbitration (LCIA),to
administer it,or proceeding ad hoc outside
an institutional framework,
Institutional services
? require payment of a fee to the administering
institution,the functions performed by the
institution can be critical in ensuring that the
arbitration proceeds to a final award with a
minimum of disruption and without the need for
recourse to the local courts,The services an
institution may offer are exemplified by the role of
the ICC Court,which provides the most highly-
supervised form of administered arbitration in the
ICC Services (cont)
? (1) determine whether there is a prima facie
agreement to arbitrate; (2) appoint arbitrators; (3)
decide challenges against arbitrators; (4) ensure
that arbitrators are conducting the arbitration in
accordance with the ICC Rules and replace them
in the event of misconduct; (5) determine the place
of arbitration; (6) fix and extend time limits; (7)
determine the fees and expenses of the arbitrators;
and (8) scrutinise arbitral awards,
Australian Arbitration services
? In Australia,various organisations offer
arbitration facilities and training,Among
the most prominent of these are the Institute
of Arbitrators Australia (IAA) and the
Australian Centre for International
Commercial Arbitration (ACICA),
American Arbitration
Association 1926
? claims to be the world‘s largest arbitral association
handling over 60,000 disputes a year,including
about 300 international disputes,Outside the US,
the AAA is seen as mostly American,To combat
this ?parochial‘ image,it has taken steps to
promulgate a new set of rules specifically for
international arbitrations,These new rules are
based substantially on the UNCITRAL rules,
AAA (cont)
? Like the ICC,the AAA appoints a case
administrator for each arbitration,Every attempt
is made to appoint an arbitrator who has
international experience,Compared to the ICC,
however,it has fewer administrative staff and
plays a less intrusive role than does the
administrative team of the ICC,unlike the ICC
which extracts a percentage of the amount in
dispute,the AAA charges a small initial fee with
subsequent payments based on the number of days
of hearing plus processing fees,
London Court of International
? The LCIA is the second most popular
arbitration institution in Europe,It was
founded in 1892 and had a distinctly
English focus,though in recent years it has
made efforts to broaden its appeal
internationally,by for example,limiting the
number of British members of its
Arbitration Court and selecting a non-
English president,
London (cont)
? The LCIA,though independent,is
sponsored by the London Chartered
Institute of Arbitrators,the Chamber of
Commerce and Industry,and the
Corporation of the City of London,The
Chartered Institute provides training,
maintains panels of arbitrators with various
specialisations,More than 6000 arbitrators
are listed on its books,
London (cont)
? Like the AAA and ICC,the LCIA does not
itself function as an arbitrator,but
administers a set of arbitration rules and
appoints arbitrators,Like the AAA,the
LCIA does not retain a large administrative
staff compared to the ICC,The caseload of
the LCIA is considerably smaller than either
the AAA or ICC,
? Although different sets of rules exist,many
Australian businesses involved in international
trade would avail themselves of the UNCITRAL
Model rules governing private international
disputes,Australia became the fifth country to
adopt the UNCITRAL Model Law on
International Commercial Arbitrations as adopted
by the United Nations Committee on International
Trade Law on 21 June 1985,
? Arbitration awards made under the
UNCITRAL rules are governed by the
International Arbitration Act 1974 (Cth) as
amended by the International Arbitration
Amendment Act 1989 (Cth)
Australia,UNCITRAL (cont)
? Like Australia's domestic arbitration law,the
UNCITRAL rules contain provisions dealing with
the make-up of the arbitration panel,the conduct
of the proceedings,the making of the award,etc,
However,in contrast to Australia's domestic
arbitration rules,the UNCITRAL rules are far
more precise in relation to proceedings and there
is no general supervisory role given to the Court,
article 5 of the Model Law providing that 'In
matters governed by this Law,no Court shall
intervene except where so provided in this Law',
Nation vs Nation,WTO
Dispute Resolution
? The establishment of the World Trade
Organisation (WTO) in 1995 with agreement by
120 countries is the most significant development
in international trade for the last 50 years,The
WTO provides the legal and institutional
framework for international trade in a global
economy,An important component of the world
trading system is a designated method for dispute
resolution,And,in its short history,the WTO has
resolved a significant number of disputes,
Involves consultation,conciliation/mediation,
Employment Law
Managers and the Law
? Importance of employment law
? Workplace context or setting
? Pre-employment
? Ongoing employment issues
? Post-employment issues
Sources of Employment Law
? Industrial awards and tribunal decisions
? Employment contracts
? Common law decisions about employment
? Legislation,employment opportunity,
? Custom and usage in particular contexts
Employment Relationship
? Services can be provided in different
? Each of those capacities may be governed
by different legal rules,
– the key is to be clear
? Employee/servant
? Independent contractor
? Agent
Independent Contractor
?Contract ?for‘ service as opposed to ?of‘
– The control test,
Performing Rights Society v Mitchell and
Booker (Palais de Danse) Ltd [1924] 1 KB 762
? The Courts have been unable to formulate a
single test and so have applied different
tests,eg the right to control the individual
‘Testing the Issue’
Zuijs v Wirth Brothers Pty Ltd (1955) 93 CLR 561
? Major factor is that of degree of ?control‘ looking
at multiple factors,control of what work,when,
supervision,ability to delegate work to others
? Multi-factor,ownership of tools and degree of
supervision,pay per hr or job,PAYE deduction,
workcomp,use by worker of business name
Independent Contractor tests?
? Personal Contracts
Australian Mutual providence Society v Allan and Chaplin
(1978) 52 ALJR 407
? Multi Factor Test
Queensland Stations Pty Ltd v Federal
Commissioner of Taxation (1945) 70 CLR 539
The Business Test
? is worker carrying on a business?
– Four factors
? Control
? The Ownership of plant and equipment
? The Risk of loss
? The Chance of profit
Montreal v Montreal Locomotive Works
(1947) 1 DLR 161
The Integration Test
?is work an integral part of the employer‘s
Stephenson,Jordon & Harris v McDonald
and Evans [1952] 1 Times LR 101
The Ready Mixed Concrete
? An agreement to provide services as an
? A threefold test
Ready Mixed Concrete (South East) Ltd v Minister of Pensions and
national Insurance [1968] 1 All ER 433 at 439-440
Formation of Employment
? Normal contract rules apply,agreement
demonstrated by offer/acceptance
? Can specify law,but usually place where to be
performed,but can‘t contract out of statutory req
? Intention
? Consideration
? Capacity
? No illegal purpose
Terms of the Contract
? Express
? Changed by conduct
? Implied terms,law makes it hard
– Must be reasonable and equitable
– Necessary to give business efficacy
– So obvious that ?it goes without saying‘
– Capable of clear expression
– Not contradict written terms
BP Refinery (Westernport) Pty Ltd v Shire of Hastings (1978) 52
ALJR 459; see also Codelfa Constructions
Awards and Industrial
? Federal and State awards
? Usually a contract inconsistent with
industrial legislation will not be enforceable
? Federal awards override any conflicting
State Award,but all this seems set to
change with Australian Workplace
Agreements likely to become the norm
Duties of Employer to
? Duty to provide work (generally there is no
such obligation at law),but possible in
cases where getting a commission is
necessary to make a reasonable wage,
Appointment to office,oblig to allow
employee to perform functions of office,
? Duty to pay remuneration,depends on
contract/award/defence,What about
insolvency of employer?
Duties of Employer (cont)
? No work as directed,no pay,
Gapes v Commercial Bank of Australia Ltd (1981) 37 ALR
? Non-performance due to illness,depends on
terms of the contract,but could be implied
Duties of Employer
Duty to ensure safety
? This is personal and individual (i.e,non
– Must provide a safe system of work
– Must provide safe premises
Duties owed by Employee
? To Perform work in a skillful and competent manner
Lister v Romford Ice & Cold Storage Co Ltd [1957] AC 555
? Obey lawful (and reasonable) commands
? Provide faithful service
? Not to act contrary to employer‘s interest
such as,
soliciting employer‘s customers for the employees own business
Wessex Dairies Ltd v Smith [1935] 2 KB 80
simultaneously working for a competitor
Hivak Ltd v Park Royal Scientific Instruments Ltd [1946] 1 Ch 169
Duties of employee (cont)
? Obligation to maintain confidentiality after
termination of employment (covered also by
Trade Secrecy law)
? The court will look at many factors,
Ansell Rubber Co Pty Ltd v Allied Rubber
Industries Pty Ltd [1967] VR 37
Other duties
? To Account for money/prop
? To Hand over inventions made during the
course of employment
? Duty to disclose information to the
? The doctrine of restraint of trade when
leaving employment
Drake Personnel Ltd v Beddison [1979] VR
Termination and Breach
? Death of either party
? Variation of dissolution of the partnership
? Sale or disposition of a business
? Insolvency of employer
? Termination on reasonable notice
? Contract frustration
Codelfa Constructions (but not an employment
Termination (continued)
? Breach of contract (3 types)
– fundamental breach of a condition includes,
commission of a crime,etc,and will enable
termination of the contract
– Non-fundamental breach is where a non-
essential term is breached and will not enable
– anticipatory
Termination (Continued)
? Summary dismissal
? Employer‘s right to damages
? Specific performance or injunction
? Suspension – generally not available
? Employee‘s right to leave without notice
? Employee‘s right to damages
? Right to claim on quantum meruit
? reinstatement
Unlawful dismissal
? must not be harsh,unjust or unreasonable
? Remedies,
– reinstatement,
– compensation
? When it is no longer necessary to have
anyone perform a particular job,such as
through technological change or
restructuring of core business
Post Employment Restrictions
? Restraint of trade
again Drake Personel
? Key test is reasonableness of extent,duration,
geographic area
? Non-disclosure of IP (eg customer lists,secret
Hospital Products Ltd v United States Surgical
Corporation (1984) 55 ALR 417,
Vicarious Liability of Employer
? Responsibility to indemnify a third party for
injury suffered as a result of a wrongful act
committed by an employee in the course of
their employment
? This wrongful act may be
– tort,
– breach of statutory duty or
– of contract
Crimin Liab of Employer for
acts of Employee
? Criminal liability of employer for acts of
– Such as corporate manslaughter
? Liability imposed by legislation
– Such as under the TPA,
? director,servant,agent and within the scope of
person‘s actual or apparent authority or any other
person at the direction,consent or agreement of a
direct,servant or agent of the corporation
Liability of Employee
? In tort
? In contract
? For criminal acts
? Imposed by legislation
Right of Employer against
third parties
? Loss of employee by tortious act of 3rd party
? Interference with contract
? Inducing disclosure of confidential
? Inducing breach of employment contract
Equal Employment
? Human Rights and Equal Opportunity Act
1986 (Cth)
? Racial Discrimination Act 1975
? Disability Discrimination Act 1992
? Equal Opportunity for Women in the
Workplace Act 1999
? State legislation
Current HR Legal Issues
? Stock options
? Testing
? Workplace privacy
? Computer use
? IP protection
? Working from home
? Ageing of workforce
? Both employers and employee have rights and
responsibilities imposed both under Legislation
and the common law
? Policies are needed to deal with these through
? The courts look not only for the existence of these,
but for their implementation as a matter of
E-Business in Australia - Part
and Innovation
? E-commerce vs E-business
? B2C; B2B; B2G; G2C; C2G
? Globalization vs Internationalization
? Innovation
? Globalisation is not a new phenomenon
and is catered for is our Australian
legislative arrangements
? The issue is really is it Globalisation or
Regionalisation? - each requires different
Globalisation (cont)
? in the age of globalisation multinational
corporations lack national loyalties and
cannot be relied upon to serve governments
or national populations by delivering on
either taxes or jobs,
? We therefore need domestic legislation to
remedy this deficiency
Globalisation (cont)
? The 100 largest companies control 20% of
the world's wealth,Of the top 100 economic
entities in the world 51 are companies; 49
are countries,
? An issue is whether corporations achieve
legitimacy,social recognition and
acceptance of their power?
Globalisation (cont)
? At the behest of corporations,governments
are sometimes accused of having acted
against the interests of their own people,for
example,by imposing onerous penalties on
those who do not actively seek non-existent
? This has met with much violent protest eg
in Seattle,Milan,Melbourne etc
The need for innovation drives e-
? ‘Companies fail when they become
complacent and imagine they will always be
successful.' - statement by Bill Gates,CEO of
Some observations by
? Excellence is temporary
? When it is all clear sailing; that is when
corporations should be making changes
? Stability not possible in a dynamic
? Companies tend to degeneration and the law
must be ready for this and protect the
interests of citizens
Why innovation is a such an
important National imperative
? Arguably the only things that occur naturally are
disorder,friction and mal performance
? External reality does not change to suit corporations;
it must be other way around
? Management of change should be the thing leaders
spend most of their time on
? Tomorrow is being made today and the national
legislative framework reflects this
Some concerns for Australia
? In the most recent report,the value-added
section of our ICT industry is 4.1%,the last
of 18 OECD countries and this is having an
effect on our uptake of e-business;
? Our export/Import ratio for electronic goods
places us 4th last of 28 OECD countries
? Spending on research and development
places us 4th last out of 17
More alarming statistics
? Employment in the ICT sector is only 2.6% of
national total or fifth last of OECD countries
with manufacturing output declining a massive
one third between 1995/6 and 1998/9,
And of most concern for the
? In 2000,Australia ranked 20th out of 28 in
the educational attainment levels of people
aged 25 to 34,
? Contrast this with China and its immense
investment in the education sector (noting
of course that it is starting from a lower
Sport as an analogy
? Australians are proud of their National
achievements in sport,
? We need to put some of that behind
education and training; we expose our
athletes to the best in the world,we
celebrate it and recognise it,and need to do
the same with education,
International Organisations,
United Nations Agencies
– Really started with the Berne Copyright Convention of
1886,which Australia quickly became a signatory after
– This organisation has been instrumental in the field of
instituting and facilitating IP protection in our domestic
– WIPO Engages in three types of activity,
? Registration
? Promotion of intergovernmental co-operation and the
administration of IP
? Programme activities
What WIPO Administers,and the
effect that it has on our domestic
? Treaties establishing international protection;
? Treaties facilitating international protection through
international registration and searching
? Treaties establishing classification systems and
procedures for improving them and keeping them up
to date
? United Nations Educational,Scientific and
Cultural Organisation
? In IP this involves administration of the
Universal Copyright Convention (but this
being phased out under the implementation
of TRIPS),and our IP legislation
traditionally reflects this
? GATT was a 100 country multi-lateral treaty,and
it became the WTO in 1995
? In joining GATT/WTO Australia made a
commitment to arresting and eventually reducing
tariff levels and generally opening up trade
? China is now doing the same thing
? It developed a code for IP violations,called
TRIPS and this is a major tool against
TRIPS Enforcement
? The US imposes trade sanctions against any state
that won‘t sign up to WTO/TRIPS
? This has encouraged countries such as Japan and
China to upgrade the content and enforcement of
their laws (this was not necessary in Australia‘s
case due to our Berne commitments)
? If they don‘t,or don‘t enforce the laws,they go on
a US ―watch list‖
TRIPS Content
? General principle is that all member States treat
each other equally with mutual IP protection a
? Each member State has its own domestic enabling
compliant legislation
? Requires criminal sanctions where appropriate
? Requires disputes between the States to be dealt
with by the General Council of the WTO
? The World Intellectual Property
Organisation has no actual power other than
diplomatic persuasion
? WIPO operates through an agreement with
the WTO which provides
– Information
– Access to and availability of laws and treaties
– Legal technical assistance to developing
Some Underlying Issues
? The legal concerns which must be part of the legal
risk management associated with E-Commerce are
not all covered by legislation,some are common
law requirements
? Legal aspects of the strategic thinking behind an e-
? Legal literacy is a requirement which is required at
all levels of an organisation
legal concerns
? Problems of Definition or categorisation
? Internationalisation
? Tax Law
? Insurance
? Banking
The legal profession as an
example of business issues in e-
? Its Changing Nature
? Where We Are,Lawyers and the Internet
? Convergence
? Electronic Information,Relationships and
? Legislative control
Legal Practice on the web
? Indemnity Insurance
? the Lawyer-Client Relationship
? Confidentiality
? the shapes of things to come in relation to legal
practice via the Internet
? New Challenges
? Implications for Lawyers operating in an E-
Business Context
Risk Management
The Pervasiveness of Law
Ten Lessons,
7,coping strategies
8,supporting networks
9,Good Design and Effective Implementation
10,Lifelong Organisational Learning
Nature of Legal Risk
? Emergence of Legal Risk Management
? Law and Business Practice
? Involvement of Senior Management
? Compliance From Top to Bottom
? Formulation of a Plan
? Compliance Manual
? Communication
Nature of Legal Risk
Management (cont’d)
? Business Records
? Accounting for Behavioural and Procedural
Areas which should be covered
in a Legal Compliance Program
? Competition Law
? Areas Needing Special attention
? Legal Awareness of Key Personnel
? Dispute Strategy and Resolution
? Compliance Manual for Quality Control
? An Ethos or Culture of Excellence and
? Monitoring Competitors
A Legal Compliance Program
? Identify What Needs to be Done and
Resources Required
? Develop a Quality Loop
? Conduct a Legal Audit
? Keep Up to Date and Re-Educate
? Use Technology
? Insure Against the Risk
Thank You Arthur Hoyle ASM BA,LLB (Hons),Grad Dip Legal St
Senior Lecturer in Law and Technology
School of Law
University of Canberra
? Arthur Hoyle 2005
E-Business in Australia - Part
Transport Logistics
? Carriers
– Specific legislation in Australia
? International considerations
Contract – the same basic rules
apply in E-Business
Issues for us to consider when engaged in
? Formation – what are the requirements?
? Registration – a useful tool
? Using the click – mandatory in B2C
? Consumer protection issues are
international but the law is nationally
What is required to contract has not
changed in the transition to E-Business,
1,Intention to create legal relations
2,agreement (offer and acceptance)
3,Consideration (something for
4,Legal capacity
5,Genuine consent
6,Legality of objects
Contract Terms
? The nature of terms and how they can be
L’Estrange v Graucob (F) Ltd [1934] 2 KB
? Remember the difference between
Invitations to treat,Conditions and
Types of e-licences
? Shrinkwrap
Hills ats Gateway
? Clickwrap
Pro CD v Zeidenberg
Terms can be implied into contracts
depending on the circumstances
BP Refinery (Westernport) Pty Ltd v Shire of
Hastings (1977) 16 ALR 363 at 365
Balmain New Ferry Co Ltd v Robertson (1906) 4
CLR 379
Ansett Transport Industries v The Commonwealth
(1977) CLR 54
What about economic duress?
North Ocean Shipping Co Ltd v Hyundai
Construction Co Ltd [1979] 1 QB 705
Unconscionability also applies
here,but it is going to be difficult to
apply Australian ideas of
Unconscionability offshore
Commercial Bank of Australia v Amadio
(1983) 151 CLR 447
Tort or the Law of Obligations
? Torts
– Negligence also applies
? Misrepresentation
– A significant risk in e-business
Consumer Protection
Trade Practices Act 1974 and similar legislation
Dispute resolution
? Negotiation
? Mediation
? Expert appraisal
? Arbitration
? International Arbitration
? ADR and E-Commerce
Australian IP Laws
? Although in all cases IP law is covered by
International agreements to which Australia is a
signatory,the principle of National treatment
? We therefore have domestic legislation which
differs in various aspects from that of other
countries which are themselves signatories to the
same agreements
? A set of rights granted to an author (as a
general rule) of subject matter which falls
into one of the protected categories,
? Regularly abused by the Americans and
used as an economic weapon
? For example the US/Australia FTA
? Protection for the appearance of an article –
for example,a pattern applied to it,or the
shape of it,There is a threshold requirement
of novelty or originality
? Based on a system of registration,
? Grants a monopoly,
International Protection
? Australia is party to the Paris Convention
which can be used when applying for design
registration overseas
? A set of exclusive rights granted to an
? The invention has to be novel,inventive and
? Grants a monopoly for a limited period,
? Based on a system of registration,
International Protection
There are two options,?File separate applications in each country that you
do business in; or
?File a single international application,Your
application will automatically take effect in all
countries that are party to the PCT (over 120,
including Australia) and China,
Trade marks
? A distinctive mark applied to goods and
services to distinguish them,
? Based on a system of registration,
? Gives the owner the right to prevent others
using the same mark or one which is
deceptively similar in relation to similar
goods and services,
The Madrid Trademark Protocol
The advantages include,
? Only a single international application is required;
? It is in one language,English or French;
? It is filed through the Trade Marks Office of the
home country; and
? Protection can be sought in up to 56 countries and
more countries are planning to come on board,
International trade
agreements affecting IP
A wide range of regional trade initiatives have recently been
The Singapore - Australia Free Trade Agreement
The Thailand - Australia Free Trade Agreement
The Australia - United States Free Trade Agreement
The Australia - China Trade and Economic Framework
The Australia - Japan Trade and Economic Framework
The Government is currently pursuing a number of regional
trade initiatives with Japan,China,India,Malaysia,United
Arab Emirates and ASEAN,
Types of IP - others
? Circuit layouts
? Plant Breeders rights
? Common Law – Passing Off
? Protection of Confidential Information
(a.k.a,Trade Secrecy)
Intellectual Property Law and E-
? Identification and protection are vital aspects
of e-commerce,as the trans border nature of
this area of business law makes it very
susceptible to fraud and misappropriation of IP
Theories for protecting IP
? Encouraging creativity
? Moral arguments
? Economic arguments
Criticisms of IP rights
? It stifles creativity
? Limits access to things which may be
beneficial to the public
? Creates monopolies/ potential for abuse
? These criticisms are addressed to some
extent by the exceptions and defences to
infringement under the legislation
Jurisdiction and conflict of
? Restrictions
? Service in other jurisdictions is a problem
? Subject matter as it must be from a
protected area
? Limitations in jurisdiction
? E-mails are both good and bad
Freedom of Information (FOI)
? Non legal remedies
? Privacy in E-Business
? Email
? Encryption
Privacy law
? The growth of databases
? Offshore processing and call centres
? Computer fraud knows no boundaries
Future Developments
? Rights based legislation
– Leaving behind the technology focus
? New technologies and their impact
? Who knows?
Thank You Arthur Hoyle ASM BA,LLB (Hons),Grad Dip Legal St,LLM
Senior Lecturer in Law and Technology
School of Law
University of Canberra
? Arthur Hoyle 2005