Legal Profession

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/ Diploma in Law /

LEGAL PROFESSION

ADMISSION BOARD

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LAW EXTENSION COMMITTEE

LAW EXTENSION COMMITTEE SUBJECT GUIDE

22 INTELLECTUAL PROPERTY

WINTER SESSION 2017

This Guide includes the Law Extension Committee’s course information and teaching program and the Legal Profession Admission Board’s syllabus. The syllabus is contained under the heading “Prescribed Topics and Course Outline” and has been prepared in accordance with Rule 27H(a) of the NSW Admission Board Rules 2015.

Course Description and Objectives / 1
Lecturer / 1
Assessment / 1-2
September 2017 Examination / 2
Lecture Program / 3
Weekend Schools 1 and 2 / 3-4
Texts and Materials / 5-6
Prescribed Topics and Course Outline / 6-33
Compulsory Assignment / 33-34
Assignment Question
Sample Examination Questions / 35
35-37

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LAW EXTENSION COMMITTEE

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WINTER 2017

22 INTELLECTUAL PROPERTY

COURSE DESCRIPTION AND OBJECTIVES

The law of intellectual property includes the areas of copyright, design, patents, confidential information, business reputation and trade marks. The course provides a general introduction to intellectual property, outlining, for each principal category of protection, how the rights arise, the nature of the rights, ownership and exploitation as well as infringement and remedies.

Throughout the course, key policy issues are considered including the rationale and role of intellectual property law, the overlap between areas of protection, the growing importance of Australia’s obligations under international treaties and the interaction of intellectual property law with other areas such as trade practices law.

LECTURER

Ms Beth Oliak, BSEE (Northwestern University), JD (Washington University in St Louis School of Law)

Ms Oliak is a barrister specialising in intellectual property and general commercial litigation. Prior to relocating to Australia, she practiced exclusively in patent litigation for a number of years at a major New York law firm. She is also a registered patent attorney in the United States and has drafted and prosecuted numerous patent applications. She holds an undergraduate degree in electrical engineering and thus her focus has been primarily on computer hardware and software patents. She has lectured, given presentations and prepared articles regarding issues relating to patent law on a number of occasions.

Ms Therese Catanzariti, BEc, LLB (Hons 1)(Syd), LLM (Merit) (Lond)

Ms Catanzariti is a barrister at the NSW Bar and specialises in intellectual property, commercial litigation, wills/probate and taxation. She was previously a senior associate at Mallesons Stephen Jaques (now King Wood Mallesons), as well as senior legal counsel at Nokia Corporation and GE Healthcare in Finland and Sweden. She is a graduate of the University of Sydney, holding Bachelor of Economics (Accounting), Bachelor of Laws (Hons 1) degree, and a graduate of the University of London (QMW) holding a Master of Laws (Merit) degree. Ms Catanzariti has also lectured in intellectual property at UTS, copyright law at UTS and University of Sydney, designs law at UTS, and Entertainment Law at University of New South Wales.

ASSESSMENT

To be eligible to sit for the Board’s examinations, all students must complete the LEC teaching and learning program, the first step of which is to ensure that you have registered online with the LEC in each subject for which you have enrolled with the Board. This gives you access to the full range of learning resources offered by the LEC.

To register with the LEC, go to www.sydney.edu.au/lec and click on the WEBCAMPUS link and follow the instructions. Detailed guides to the Webcampus are contained in the material distributed by the LEC, in the Course Information Handbook, and on the Webcampus.

Eligibility to Sit for Examinations

In accordance with the Legal Profession Admission Rules, the LEC must be satisfied with a student’s performance in a subject in order for the student to be eligible to sit for the examination, conducted by the Legal Profession Admission Board (LPAB). Assignments are used to assess eligibility.

Students are expected to achieve at least a pass mark of 50% in assignments to be eligible to sit for examinations. However, a category of “deemed eligible” has been introduced to offer students whose assignment mark is between 40-49% an opportunity to sit for the examination. In these circumstances students are often advised not to sit. A mark below 40% means a student is not eligible to sit for the examination.

Assignments as part of the Board’s Examinations

Assignment results contribute 20% to the final mark in each subject.

The Law Extension Committee (LEC) administers the setting and marking of assignments. The LEC engages the LPAB’s Examiners to assess or supervise the assessment of assignments.

Submission

Assignments must be received by 11:59pm on the due date unless an extension has been granted. Extensions must be requested by email prior to the due date. Specific supporting evidence must be provided. Assignments that are more than ten days late will not be accepted. Late assignments attract a penalty of one mark out of 20, or 5% of the total marks available, per day.

Assessment

Assignments are assessed according to the “Assignment Grading and Assessment Criteria” outlined in the Guide to the Presentation and Submission of Assignments. Prior to the examination, assignments will be returned to students and results posted on students’ individual results pages of the LEC Webcampus. Students are responsible for checking their results screen and ascertaining their eligibility to sit for the examination.

Review

Where a student’s overall mark after the examination is between 40-49%, the student’s assignment in that subject will be included in the Revising Examiner’s review. The final examination mark is determined in accordance with this review. Assignment marks will not otherwise be reviewed.

SEPTEMBER 2017 EXAMINATION

Candidates will be expected to have a detailed knowledge of the six (6) principal types of intellectual property studied in the course, namely: copyright, industrial designs, patents, confidential information, business reputation (passing off and related statutory actions) and trade marks.

Candidates will be assessed on the requirements for obtaining each of these intellectual property rights, how infringement of such rights is determined, and the remedies available in the event infringement is established. Candidates will also be expected to have an appreciation for the interaction between the six (6) principal types of intellectual property studied in the course.

All enquiries in relation to the examination should be directed to the Legal Profession Admission Board.

LECTURE PROGRAM

This elective subject will be offered by way of four evening lectures (which will be webcast for students who live outside Sydney) on Tuesdays 6 June, 13 June, 18 July and 25 July and at Weekend School classes.

Time / Venue / Topic
Saturday 27 May 4pm - 8pm / New Law School Seminar Room 102 / Introduction to Intellectual Property
Trade Marks
Sunday 28 May 2017 4pm – 8pm / New Law School Seminar Room 102 / Patents
Tuesday 6 June 2017 6pm – 9pm / TBA* / Passing Off
Tuesday 13 June 2017 6pm – 9pm / TBA* / Confidential Information
Tuesday 18 July 2017 6pm – 9pm / TBA*
Saturday 22 July 4pm - 8pm / New Law School Seminar Room 102 / Copyright
Sunday 23 July 2017 4pm – 8pm / New Law School Seminar Room 102 / Copyright/ Industrial Designs/
Copyright/Design Overlap
Tuesday 25 July 2017 6pm – 9pm / TBA*

*An email will be sent out before the evening classes with details of the venue. It will either be held on Main Campus or at the LEC office in Macquarie Street, depending on numbers.

Weekend SchoolS 1 AND 2

These programs are a general guide, and may be varied according to need. Readings are suggested to introduce you to the material to be covered in the lecture, to enhance your understanding of the topic, and to encourage further reading. You should not rely on them alone.

Weekend School 1

TIME / MAJOR TOPICS / KEY READING
Saturday 27 May 2017: 4.00pm – 8.00pm in New Law School Seminar Room 102 (New LS SR 102)
4.10pm-5.20pm / Introduction to Intellectual Property
Trade Marks / See readings under "Prescribed Topics and Course Outline"
5.30pm-6.35pm / Trade Marks
6.45pm-8.00pm / Trade Marks
Sunday 28 May 2017 4.00pm – 8.00pm in New Law School Seminar Room 102 (New LS SR 102)
4.10pm-5.20pm / Patents / See readings under "Prescribed Topics and Course Outline"
5.30pm-6.35pm / Patents
6.45pm-8.00pm / Patents

Weekend School 2

TIME / MAJOR TOPICS / KEY READING
Saturday 22 July 2017: 4.00pm – 8.00pm in New Law School Seminar Room 102 (New LSSR 102)
4.10pm-5.20pm / Copyright / See readings under "Prescribed Topics and Course Outline"
5.30pm-6.35pm / Copyright
6.45pm-8.00pm / Copyright
Sunday 23 July 2017: 4.00pm – 8.00pm in New Law School Seminar Room 102 (New LSSR 102)
4.10pm-5.20pm / Copyright / See readings under "Prescribed Topics and Course Outline"
5.30pm-6.35pm / Industrial Designs
6.45pm-8.00pm / Copyright/Design Overlap

texts and materials

COURSE MATERIALS

·  Supplementary Materials in Intellectual Property (available via the link to the Law Library in the Course Materials section of the LEC Webcampus)

·  Guide to the Presentation and Submission of Assignments (available on the LEC Webcampus)

PRESCRIBED MATERIALS

·  LexisNexis Intellectual Property Collection 2017, LexisNexis.

·  Stewart, Griffith & Bannister, Intellectual Property in Australia, 5th ed. LexisNexis, 2014 (SGB)

·  Ricketson and Richardson, Intellectual Property: Cases, Materials and Commentary, 5th ed. Lexis Nexis, 2013 (RR)

REFERENCE MATERIALS

Australian current texts

·  Davison, Monotti, Wiseman Australian Intellectual Property Law, 3rd edition, Cambridge Press, 2015 (DMW 2015) Commentary only, no case extracts.

·  Price, Bodkin, Arnold, Adjei, Intellectual Property Commentary and Materials Casebook, 6th edition, Thomson Reuters, March 2017

· 

Other useful Australian texts

·  Ricketson, The Law of Intellectual Property, Thomson Reuters, 2d ed., 2001

·  Shanahan, Australian Law of Trade Marks and Passing Off, 6th ed. Thomson Reuters, 2016

·  Bodkin, Patent Law in Australia, 2d ed. Thomson Reuters, 2014

·  Phillips, Protecting Designs Law and Litigation, Thomson Reuters, 1994

·  Elkington, Hall & Kell, Annotated Trade Marks Act 1995, LexisNexis, 2010

United Kingdom texts

·  Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 8th ed. Sweet and Maxwell, 2013

·  Skone James, Copinger and Skone James on Copyright, 17th ed. Sweet and Maxwell, 2016

Loose leaf and online services

·  CCH, Australian Industrial and Intellectual Property: Copyright, Designs, Patents, Trade Marks, Legislation and Cases

·  Lahore, Copyright and Designs, LexisNexis

·  Lahore, Patents, Trade Marks and Related Rights LexisNexis

·  Garnsey, Dwyer, Duffy and Covell, Intellectual Property in Australia: Patents, Designs and Trade Marks, LexisNexis

Periodicals

·  Australian Copyright Council Bulletin

·  Australian Intellectual Property Law Bulletin

·  Australian Intellectual Property Law Journal

·  Copyright Reporter

·  Intellectual Property Forum

Blogs

http://ipwars.com/ - Warwick Rothnie (Melbourne IP barrister)

http://ipkitten.blogspot.com.au/ - IPKat – English/EU IP blog

http://www.patentlyo.com/ - Patently O – US IP blog

PRESCRIBED TOPICS AND COURSE OUTLINE

Many cases listed are relevant for more than one topic area. Most cases are reported in both the Intellectual Property Reports (“IPR”) and the Australian Intellectual Property Cases (“AIPC”).

An asterisk (“*”) in front of a case denotes that the case is recommended reading for this course. Where possible, the location of case extracts in the text books is identified next to the case reference.

1. INTRODUCTION TO INTELLECTUAL PROPERTY

Relevant chapter for Topic 1 in Prescribed Materials

§  RR: Ch1

§  SGB: Ch 1 and 2

(1) History of intellectual property

·  Bakers Marking Law 1266

·  Venetian Patent Statute 1474

·  Statute of Monopolies 1623

·  Stationers Company

·  Statute of Anne 1709

(2) Knowledge as property

·  Intellectual Property philosophy – personal, economic, market

·  Millar v Taylor (1769) 4 Burr. 2303; 98 ER 201

(3) Intellectual property as property

(4) Public domain

(5) International aspects of intellectual property protection

·  Berne Convention for Protection of Literary and Artistic Works 1886

·  Rome Convention for Protection of Performers, Producers of Phonograms and Broadcasting Organisations 1961

·  Paris Convention on Patents and Trade Marks

·  WTO Agreement on Trade Related Aspects of Intellectual Property 1995

·  Copyright (International Protection) Regulations 1969

(6) Australian statutes

·  Constitution section 51(xxix)

·  Copyright Act 1968

·  Patents Act 1990

·  Trade Marks Act 1995

·  Designs Act 2003

·  Australian Consumer Law (part of Competition and Consumer Act 2010)

Copyleft

Creative Commons

Open Source

Parliament’s right to create and curtail

JT International SA v Commonwealth of Australia [2012] HCA 43 (Tobacco Plain Packaging)

“Rethinking the role of intellectual property”, Dr Francis Gurry, Director-General WIPO, WIPO Seminar, 22 August 2013

2. COPYRIGHT

Relevant chapters for Topic 2 in Prescribed Materials

§  SGB: Ch 5, 6, 7, 8.and 9

§  DMW 2012: Ch. 5, 6, 7, 8, and 9

§  PBA: 2012 Part 2

§  RR: Part 2

(1) What is copyright?

(a)  Definitions of copyright

(b)  Copyright as property: s196 Copyright Act (“CA”)

·  Dickens, Dickens v Hawksley [1935] 1 Ch 267

·  Pacific Film Laboratories v Commissioner of Taxation (1970) 121 CLR 154

·  JR Consulting v Cummings [2014] NSWSC 1252

(c)  Fundamental distinction – ‘form of expression’ vs ‘ideas and information’

·  Donoghue v Allied Newspapers Ltd [1938] Ch 106

·  Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479

·  Autodesk v Dyason (No 1) (1992) 66 ALJR 233

·  L B (Plastics) Ltd v Swish Products Ltd [1979] R.P.C. 551

·  Zeccola v Universal City Studios [1982] 46 ALR 189

·  Elwood v Cotton On (2008) 80 IPR 566

(2) Origin and rationale of copyright

·  Statute of Anne 1709

·  Millar v Taylor (1769) 4 Burr. 2303; 98 ER 201

(3) Subsistence of copyright

The four requirements for copyright protection:

(a)  Authorship and connecting factors

·  created by a ‘qualified person’: ss 32(4), 84, 184 CA

(b)  Subject matter

·  ‘works’ and ‘subject matter other than works’: ss10, 32, 89-92 CA