Intellectual property litigation in Australia.

• Author: Fairbairn, John

AUSTRALIA'S strong economy makes it a significant user and creator of intellectual property ("IP") rights. It is also a significant jurisdiction in multinational IP disputes, which are becoming increasingly common in today's global economy. This article provides an overview and analysis of IP litigation in Australia.

1. Overview of Australian Legal System

   It is useful, as a preliminary matter, to briefly outline how Australia's legal system operates, (1) with particular reference to IP disputes.

   Federal System

   Australia is a federation comprising six states and two self governing territories. The Australian Constitution specifies a range of matters that are the responsibility of the Federal Government. The balance of legal matters remains the responsibility of the various State and Territory Governments. Relevantly, the Federal Government has the power to make and has made laws with respect to IP and in particular copyright, patents of inventions, designs, and trade marks. (2)

   Australia's laws and legal system have their foundation in the common law of England and its practices and procedures broadly reflect those of the Anglo-American common law world.

   While judgments of the House of Lords and the English Court of Appeal are of persuasive authority, they are not binding on Australian courts. More recently, in developing Australia's laws, its courts have looked to the jurisprudence of other countries, particularly the United States and Canada. This is particularly so in the case of IP laws.

   Australia has both a Federal Court system and a hierarchy of courts in each of the States and Territories. Each of Australia's Federal IP statutes vests primary jurisdiction for IP litigation in the Federal Court of Australia ("Federal Court"). Concurrent jurisdiction is also vested in the various State Supreme Courts, but generally, IP litigation is commenced and prosecuted in the Federal Court and consequently it is this system that is the focus of this paper.

   Federal Court

   The Federal Court operates from all capital cities in Australia, but the vast majority of IP litigation is conducted in Sydney and Melbourne, the capitals of Australia's most populous states, New South Wales and Victoria respectively.

   The Federal Court is a superior court of record and a court of law and equity; however, it is not a court of general jurisdiction. Rather its jurisdiction is conferred by Federal statutes such as the IP statutes discussed here. Once seized of jurisdiction, the Federal Court is able to deal with all aspects of a dispute, even those arising under common law, equity or State statute, by reason of its accrued jurisdiction. In this way, the Federal Court is able to deal with general law actions such as breach of confidence and passing off.

   The Federal Court also has jurisdiction to hear appeals from examiner's decisions of the Trade Marks and Patents Offices. These involve a de novo hearing of the matter, rather than an appeal in the usual sense and the parties may lead fresh evidence.

   Federal Magistrate's Court

   Some shorter and simpler IP claims can be litigated in the Federal Magistrates Court of Australia, a lower level federal court with a more limited jurisdiction that aims to provide a simpler and more accessible alternative to litigation in the superior courts. It is a relatively recent creation that conducted its first sittings in 2000. Its jurisdiction is also conferred by Federal statute and includes copyright and consumer protection. The Federal Court can also exercise its discretion to transfer other IP matters to the Federal Magistrates Court.

   Copyright Tribunal of Australia

   The Copyright Tribunal was established under the Copyright Act to deal with inquiries and disputes arising out of royalties payable in respect of the recording of musical works, certain compulsory licences, and existing and proposed licensing schemes, amongst other things. The President of the Copyright Tribunal is a Federal Court Judge; however, the procedures adopted by the Tribunal are less formal and more flexible than those discussed below.

   Appeals

   There are two-tiers of appeal within the Federal Court system, namely, the appellate jurisdiction of the Federal Court and the High Court of Australia ("High Court"). Decisions from single judges of the Federal Court or from a magistrate of the Federal Magistrates Court can, with leave, be taken on appeal to a Full Court of the Federal Court. The Full Court usually comprises three Federal Court judges drawn from different parts of the country. Consequently, Federal Court judges sit as both trial and appellate judges, albeit never in the same matter.

   The ultimate appellate court in both the Federal Court and State court systems is the High Court. The High Court is also responsible for the determination of constitutional disputes, in the same way as the United States Supreme Court. Again, there is no automatic right to have an appeal heard by the High Court. Parties who wish to appeal must persuade the Court in a preliminary hearing that there are special reasons to cause the appeal to be heard, generally because a point of principle is at stake or the interests of justice in the particular case require that leave be granted.

2. Source of IP Laws and Available Relief

   Australia has a comprehensive system of IP protection not only for Australian creators, but those of many other countries of which Australia has multilateral and bilateral treaty arrangements. Australia, like the U.S., is a signatory to the Agreement on Trade-Related Aspects of Intellectual Property Rights. On 1 January 2005 the Australia-United States Free Trade Agreement came into force. Amongst other things it sought to harmonise Australia's IP laws and practices more closely with those of the United States.

   Much of Australia's IP laws are contained within specific Federal statutes. These are the Patents Act 1990, Copyright Act 1968, Trade Marks Act 1995, Designs Act 2003, Plant Breeders Rights Act 1994 and Circuit Layouts Act 1989. In addition, the Trade Practices Act 1974 contains consumer protection provisions that, amongst other things, prohibit conduct in trade or commerce that is likely to mislead or deceive consumers, and create a statutory cause of action analogous to the tort of passing off. Invariably, actions for trade mark infringement and often actions for copyright infringement are coupled with allegations of misleading and deceptive conduct, thereby putting into play the broad range of remedies available under the Trade Practices Act.

   There are no relevant State IP statutes other than...