Infringements of IP Rights

What must be proven?

To establish legal action against an alleged infringer, the IP owner must prove that:

• Rights actually exist under the relevant legislation;
• That he/she owns those rights or are otherwise entitled to act on behalf of the owner, for example as the exclusive licensee of the rights;
• The precise property in respect of those rights actually exist;
• The infringer's product is a copy of the whole or a substantial part of the owner's product; and
• The infringer made its product without the licence or authority of the owner of the IP rights.

Do the rights exist?

Unlike some rights to physical property, IP rights do not continue indefinitely.

The various statutes under which IP rights are created specify the periods during which the rights exist. At expiry, people are generally free to use the IP rights without infringement.

For example, the Copyright Act 1968 provides that a book's copyright continues for the life of the author plus 70 years. In relation to a film, copyright continues for 70 years after being first made available to the public. Protection granted under the Designs Act 2003 lasts 16 years from the application date.

A first step in any proposed litigation is to be satisfied that IP rights actually exist for the relevant product or good. This is straightforward, particularly where the rights are subject to registration, as is the case with patents, designs, plant breeder's rights and trade marks. For each of these forms of intellectual property, copies of certificates of registration show whether rights exist or have expired.

Proving the existence of copyright is not as simple because there is no registration procedure and no certificates to prove its existence (See What IP means to you ).

To prove that copyright exists it is usually necessary to prove each of the following:

• The identity of the author or maker of the copyright material,
• The nationality or residence of that author or maker,
• The location in which it was made; and
• The date or calendar year in which it was made.

Who owns the rights?

Only the owner of the IP rights (or someone entitled to act on the owner's behalf) can bring infringement proceedings. It is usually necessary to prove that the person bringing the proceedings is the owner of the rights. Again, in circumstances where the rights are subject to registration, establishing ownership is straightforward.

In general terms, the author or maker of copyright material is regarded under the Copyright Act 1968 as the owner of that material, unless the material was produced by an employee, and then the employing company would hold the copyright.

If the author/maker is not the person bringing the proceedings, then it is necessary to prove that there were written assignment(s) of that IP interest from the author/maker to the person claiming ownership. Each link in the 'chain' of transfer of title must be established by documents.

What is protected?

In any infringement proceedings, the material or product covered by the particular IP rights must be precisely identified.

It is easy to establish the precise nature of property subject to registration. In the case of a patent, the exact scope of the invention will be exhaustively described. In the case of rights not subject to registration, such as copyright, the property being protected must be objectively identified. For example, in the case of a recording this is often done by providing the court with a copy of the relevant master tape. In the case of a novel, the author's original manuscript would suffice.

In some cases, only a part of a product may be protected. Patent specifications, for instance, often cover only a small part of a product - the patentable invention may be an enhancement to an existing product and the patent granted only for that enhancement. This means that if someone copies the product, except for that enhancement, that copying will not constitute an infringement. However, depending on the circumstances, you may have other causes of action, such as an action for misleading and deceptive conduct under the Trade Practices Act 1974 (if consumers, for example, are misled into thinking that the copy product contains the enhancement and is therefore equivalent to the owner's product). For more information on Trade Marks and the Trade Practices Act 1974 see IP Australia's website.

Is it a copy?

To establish infringement, it is necessary to show that the infringer has copied the whole or a substantial part of the owner's product or material. In some cases, this is self-evident.

A clear example is a person who copies a film. A quick visual comparison between the owner's film and the infringer's film will establish whether or not one is a copy of the other.

In other cases, the answer may not be so clear. This is particularly so with complex and technical patent specifications where it is necessary to obtain expert assistance to analyse the various elements of the infringer's product and compare those with the specific scope of protection afforded by the patent. Another example would be where only elements of a film or script are copied and the infringing film does not bear any visual similarity to the original.

Was the infringement authorised?

An owner of IP rights is required to prove that an infringer did not have permission or consent to exercise those rights, unless the infringer does not contest this issue.

This is not always easy to prove for an owner of rights. The task is easier if you have a documented system for granting licences and approvals to third parties and personnel responsible for implementing the system. This allows you to say that such a system is in place and that the nominated person has searched his or her files and found no record of any requests for a licence or grant of a licence. This process should satisfy the court that no such licence was granted.