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Federal Judicial Scholarship |
MAKING YOUR OWN FUN IN INTELLECTUAL PROPERTY LAW
Intellectual Property Society of Australia and New Zealand
(WA Chapter) Annual Dinner
Tuesday, 26 September 2006
Justice RS French
Intellectual property law uses a lot of words. Mostly they are boring. It is difficult to understand why some people get so excited about them. It must be something to do with the money. ‘Inventive step’ sounds like a dance created by a nerd. ‘Novel, useful, clear, succinct, fairly-based’ – these are not words to stand your hairs on end.
Intellectual property lawyers who have to apply these words are lonely people. They have to invent imaginary, but boring friends. Their favourite friend is a skilled worker who lacks imagination and is comfortable only with the obvious. To make matters worse, intellectual property lawyers who get into fights about complicated things like bio-technology, electronic circuits and the like have to surround themselves with boring, unimaginative imaginary friends with PhDs.
The people who write patents try to offset the tedium of their daily encounters with boring words and boring imaginary friends by murdering the English language. Their weapon of choice is the neologism or invented word. Its preferred embodiment is dressed up in adverbial drag by use of the letters ‘LY’. Examples, which I can barely bring myself to say, are: ‘rotatably connected’ and ‘pharmaceutically acceptable’.
Intellectual property law can sometimes take the fun out of anything. Last year I presided on a Full Court appeal about the Viagra patent. I was looking forward to an exploration of the ecstasy and mystery of human love. Instead we found ourselves with Pfizer and Eli Lilly on a quest for a ‘workable erection’. We were accompanied by a host of imaginary but unimaginative PhD graduates. They were keen to show us that, having read about strips of penile tissue relaxing in an organ bath of sildenafil, they knew how to make Viagra without even thinking about it. Not surprisingly their arguments didn’t get up. I was later told by Lord Justice Jacob at the Court of Appeal in England that we were wrong on obviousness because the boring unimaginative people had got up in England and even in China. That says a lot about England. And in China of course, they are still working off powdered Rhino Horn so Viagra must seem pretty pedestrian. To complete the record of that saga I should remind you that we held the principal Viagra claim invalid for want of fair basing, the patent law equivalent of an unsustainable boast.
Those of us who practice law know that we do it because we can’t do other things. I cite my own case. I studied physics before I studied law and was told in my final year, after delivering a seminar on elementary particles and mathematical group theory:
‘You express yourself magnificently but I’m not sure you know what you are talking about.’
This encouraged and qualified me to enter the Law School. After graduating I became a lawyer, the kind of person who is the boring imaginary friend of some really interesting people. Some of the most interesting people in intellectual property law are the clients. They are scientists, artists, writers, musicians and dramatists – people of creative spirit and drive which we may assume vicariously and temporarily as our own.
It is through such people and their works that we address fundamental questions about life, the universe and everything. Take the Millennium Bug for example. I am not speaking here of the fin de siecle numerical glitch that was going to spell the end of civilisation as we knew it. No, I am talking about a lolly and its shape which I described in the relevant judgment as:
‘... a confectionary of fruit flavoured gelatinous composition. It comprises a central body which resembles a section of a sphere with a curved upper surface and a flat lower surface. There are two oval eyes on the body and three short stylised ‘legs’ on either side of the body symmetrically disposed about the eyes.’[1]
Its shape as a trade mark was the issue. Was this humble geometrical section ‘inherently distinctive’? And the really big question, Was its shape part of the ‘common heritage of mankind’? What a question. In the Full Court of the Federal Court we chewed on it metaphorically speaking. In the end the bug won the day, emerging triumphant out of a forest of careful logic and fine distinctions and notions of inherent qualities which would have taxed Plato. The culmination of the reasoning process in my judgment was thus:
‘The shape of the millennium bug involves a symmetrical disposition of projections (legs) and recesses (eyes). Theoretically it may be the case that the number of possible symmetrical arrangements of projections and recesses is not infinite. Assuming that to be so, it is speculative, absent evidence, to draw conclusions about that number and whether the particular arrangement has any significant impact upon the access of other traders to the use of insect like shapes as trade marks.’
The preceding is very deep - I think.
Fundamental shapes sometimes
pose exquisite questions about originality in copyright. Take a house plan
which is a rectangle with
the corner cut
off.[2] What can one
make of that primal simplicity. Well, a day in the Full Court, entrancing three
judges with your ingenuity if you
are adept enough. My congratulations to Alan
Archibald and Richard McCormack. I shall long remember that day.
Much of intellectual property law does not take the practitioner into these
lofty heights of geometrical abstraction. Much of it
simply opens a window into
fields, great and small, of human endeavour and creation. In my time as a
practitioner when I used to
act for the only patent attorneys in town – RC
Wray and Associates, I learnt about:
. the technology of hospital
beds[3]
. the
designs of irrigation boom sprayers and grate drain covers
. the
design and copyright of waterslide
sections[4]
. copyright
in solar hot water
systems[5]
. the design and weaving of wicker birds nests unhappily unregistrable
because the applicant for registration had been selling them
at country
fairs
. very cheap Italian red wine labels
and many other quaint byways of technology and design.
I learnt about cheap Italian reds in an attempt to obtain an injunction in respect of a wine bottle label said to be misleading similar to my client’s label. Toohey J declined the injunction from a bench that looked like a bottle shop. Numerous bottles of down market red wine were exhibited to affidavits by my opponent to demonstrate that labelling at the bottom end of the market was a continuum of unaesthetic similarity. The memories I take from that case are:
. the description of my client’s wine, a Lambrusco red, in Hugh Johnson’s Pocket Book Wine Guide as a ‘bizarre fizzy Italian red’, and the ultimate put down, ‘smash hit in the USA’
. my instructing solicitor’s dire warning – ‘whatever you do don’t drink this stuff – its alcoholic Ribena’
The wine in question sold for $2.99 in Western Australia in the mid 1980’s and even outsold Kaiser Stuhl Summer Wine. Its preferred consumption was with ice blocks off the back of Rottnest Island. Ten years after that litigation, while taking a break from native title work on a white water rafting weekend in far North Queensland, I consumed some of the wine from a silver foil carton pack which our rafting guide had thoughtfully brought along. My instructing solicitor’s warning was correct, but after the first plastic glass it didn’t matter.
As a judge I have learnt about low fat fast foods[6], plough bits, concrete formwork shapers, architectural plans, biotechnology, the domain name registration system[7], as well as play station technology. Each of these has had its own interest. The mod chip case, Sony v Stevens[8], was a fascinating conjunction of technology, intellectual property and circumventing ingenuity. I still find some difficulty, even after the decision of the High Court overturning that of the Full Federal Court, to see what is so hard to understand about the word ‘prevent’ that you have to read numerous committee reports to understand it. Anyway, as with much intellectual property law, it is a moving feast as the new exposure draft for technological protection measures suggests.[9] It may be that all the constructional debate in the Sony case will be moot. As to that I express no view.
Part V of the Trade Practices Act, in its prohibition on misleading or deceptive conduct, overlaps with much intellectual property territory in terms of the remedies that may be available. Its application in the general area of trade marks and passing off led to a trial, in which I presided, between the former State Government Insurance Office of Western Australia and the Government Insurance Office of New South Wales. They had both been privatised and become known as SGIO and GIO respectively. When all the government or former government insurance offices were content to operate within the bounds of their own States or Territories, they found it desirable to adopt similar colour schemes for their logos. Red and blue were the colours of choice. However when the GIO, with its red and blue lettering, moved into Western Australia competing with the SGIO with its blue and red lettering, a problem arose. One of the most interesting things I learnt about in that case was the phenomenon known as ‘non-cognitive error’. This is the kind of error that you can make without having to think about it. The phenomenon of the non-cognitive error was explained to me by a marketing psychologist in the case. The marketing and promotion of the SGIO logo, it was suggested, led to positive associations between consumers and that logo. So one would look at the SGIO logo and get warm fuzzy feelings. The consumer would know that GIO was a different organisation but, because of the similar colouring of its letters, would experience illegitimate warm and fuzzy feelings for GIO based on the associations developed by SGIO’s marketing.[10] This concept of ‘stolen feelings’ was of great interest but did not fit within the scope of s 52 of the Trade Practices Act.
Despite its many boring words and unimaginative imaginary friends, the work of intellectual property law is engaging, for its subject matter, the interesting people we meet and increasingly the international dimensions of the work. It is challenging, but not beyond the capacity of practitioners and judges in this State to provide advisory and dispute resolution services at a high level of excellence. There is, of course, ongoing pressure from the profession in the Eastern States which tend to market Sydney and Melbourne as centres of specialist excellence. Excellence is a matter of doing the work. Specialisation may aid efficiency but taken to extremes is a questionable virtue in such a shifting and dynamic field. We should, however, collaborate to ensure that in Western Australia both the practitioners and the Court can offer a service of national and international excellence. Your Society has a large role to play in that regard. We can achieve more with such arrangements as regular user group meetings to ensure that the Court and the profession are aware of each others needs and to identify areas in which we could each improve.
Quite apart from that, I would like to see an extension of the successful education seminars in intellectual property law that we had last year. We have a useful facility at the Court for conducting such seminars and I hope that we can increase its use.
Thank you very much for the opportunity of speaking to you tonight.
[1] Kenman Kandy
Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; (2002) 122 FCR
494
[2] Collier
Construction Pty Ltd v Fosket Pty Ltd (1991)[1991] FCA 115; 20 IPR 666 (Lockhart,
Hill and French
JJ)
[3] The only
patent case I can recall occurring in the Supreme Court of Western Australia
during my time in practice between Joyce
Bros and a company called
Avion.
[4] Water
Recreations Pty Ltd v Fairmile Pty Ltd (1982) 42 ALR
273
[5] SW Hart
& Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59; (1985) 159 CLR
466
[6] Conagara
Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 (Lockhart, Gummow and
French JJ)
[7]
Nominet (UK) v Diverse Internet Pty Ltd [2004] FCAFC 1244; (2004) 63 IPR
543
[8] [2003] FCAFC 157; (2003) 132
FCR 31
[9] This is
the exposure draft for the Copyright Amendment (Technological Protection
Measures) Bill 2006. It introduces into the Copyright Act a new concept
that is the ‘access control technological protection measure’ and
redefines ‘circumvention device’
and ‘technological protection
measure’.
[10]
State Government Insurance Office v Government Insurance Office of New South
Wales (1991) 101 ACLR 259
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