Tuesday, May 31, 2011

Guest Post: What do Mike Tyson, tattoos and copyright have in common?

Thanks to Lynell Tuffery Huria for this article.

Mike Tyson and tattoos are no strangers.  But the tattoo artist who designed Mike Tyson's well-known facial tattoo is claiming the use of his design in the movie The Hangover: Part II is copyright infringement, and he wants compensation.
Last Tuesday’s decision did not stop the release of the movie, but the judge strongly indicated a decision in a permanent injunction hearing is likely to hold in favour of the artist, and compensation for the artist is likely.  But can the tattoo artist claim rights in artwork that are known to be based on traditional Māori designs?  Māori don’t think so.
S Victor Whitmill, former tattoo artist, filed a lawsuit in St Louis to stop the release of The Hangover: Part IITM, because he claims he owns copyright in Mike Tyson’s facial tattoo that he designed.

The judge refused to stop the release of the movie for public interest reasons, citing that to stop the release of this movie would cause undue hardship on not only the movie producers, but also cinema operators and workers, who rely on the release of movies for income.

Instead, the judge indicated that Mr Whitmill had a “strong likelihood of prevailing on the merits for copyright infringement” and may have a good claim for damages in a subsequent hearing.

The judge did not consider the origins of the design, and whether Mr Whitmill can make a claim to a design that is based on traditional knowledge from a culture that is not his own.

Many Māori are enraged that an artist, who has no affiliation to Māori, could claim that a design based on traditional Māori design is his own.

With estimated box office sales in excess of US$118m since the movie’s release on Thursday, it is expected the parties are now likely to settle.  But if the case goes to a subsequent hearing, then the decision could review two important issues:
  1. Can an artist claim and enforce copyright in a tattoo or artwork that appears on another person’s body?
  2. Is this right affected in any way if the tattoo or artwork is based on traditional designs from a culture that is not the artist’s own culture?
If settled, the decision will help indigenous peoples in their plight to stop the misappropriation of their designs.  Will this hangover continue?

Put it on the plastic - Observations from Australia on subject matter eligibility

Last week the Australian Patent Office issued a decision on Visa Inc v CardinalCommerce Corporation [2011] APO 34 (25 May 2011). The decision itself is not startling. The Hearing Officer does however make some interesting observations on the reliability or otherwise of internet archives.
CardinalCommerce Corporation filed this patent application 2003243523 back in June 2003. The patent application relates to a universal merchant platform for payment authentication. It has particular application in facilitating the authentication of an individual to conduct a secure commercial transaction with credit or debit card over a communications network.
What the invention offers in one aspect is a universal authentication program plug-in layer and a distribution layer. In another aspect the invention offers a universal platform server. The combination of layers and the server are each removed from the merchant site. The layers and/or server determine(s) relevant authentication protocols and perform(s) subsequent routing.
Visa argued unsuccessfully that:
  • the claims lacked novelty (anticipated)
  • the claims lacked an inventive step (obvious)
  • the claims did not define a manner of manufacture (patentable subject matter).
One of the exhibits tabled by Visa consisted of pages from a website captured by the “WayBackMachine”.  CardinalCommerce referred to a European Patent Office (“EPO”) Boards of Appeal decision, T1134/06, to highlight a finding that the Internet generally, including the Internet Archive WayBackMachine, was not a reliable source for determining the state of the art.
The Hearing Officer accepted that the Internet Archive may not be entirely reliable in respect to dates of availability or content on a particular date. In this case though, the claimed date of the exhibit was some four months before the priority date of the contested application. Even allowing for some variance in accuracy of the publication date, four months was considered to be a sufficient buffer to cover that.
Visa also argued that the invention does not contain patent eligible subject matter. It argued that the method claims merely defined a scheme that makes use of known components for which their known properties make them suitable.
The Hearing Officer held that the method claims clearly relate to supporting authentication processing of on-line commercial transactions involving physical steps in a networked environment. The claims were held not to be directed merely to a scheme and did in fact relate to a manner of manufacture.
The observations on eligible subject matter represent a welcome departure from the left field post-Bilski Invention Pathways Pty Ltd [2010] APO 10.

Sunday, May 29, 2011

Farewell big guy

It’s goodbye to our ram.  They’re funny things rams.  They are only useful for a couple of months during the year.  The rest of the time they’re a pain in the ass.

We’ve come to a good arrangement with one of our neighbours.  It has worked well over the last few years.  Dave borrows an end-of-the-line ram from a real farmer around March.  We pick up his ewes and they run around on our place with our flock.  We let the ram loose for a couple of months them give him back.

Back in law school who knew I would find out so much about sheep mating habits?  Most real farmers aim to get their lambs slaughtered in time for the lucrative European Christmas market.  This means having them ready by the end of November.  They are normally around 4-5 months old when they get sent off.  So that means having them born around June.  The gestation period is around 5 months.  So that means putting the ram in around February.

I’m trying to be a patent attorney as well as a farmer, so I’m on a different schedule.  We like to have our lambs born around September.  It’s spring by then here in New Zealand.  Not too cold.  Still light when I get home so I can check on them.  Early enough so lambing is over by the time I head over to Washington DC for the AIPLA annual meeting.  And it means we have fresh lamb chops for the barbeque in our summer through February and March.

Our guy was a bit stringy when he arrived.  He had run himself ragged in the foothills of Mount Holdsworth.  He had a flock of 4,000 ewes that he had to keep happy.  He loved it our place.  Lots of grass.  A small manageable harem of 11 ewes.  Our little Silvio Berlusconi was pretty corpulent when we sent him back.

Thursday, May 26, 2011

Greytown Heritage Trust

I live in New Zealand’s first planned inland town.  In New Zealand being first is just a matter of using enough adjectives.  The town was first surveyed by the Small Farms Association in 1853.  It consisted of 120 one acre sections, 60 on each side of Main Street.  The original concept was for each purchaser to have a town section of 1 acre and a 40 acre farm block nearby.

In March 1854 the first six settlers arrived on foot from Wellington over the Rimutaka mountain range.  They had with them 4 bullocks carrying all their possessions.  They got cracking building shelters and small cottages.  Within five years there were more substantial buildings, shops, hotels and larger houses.

The railway arrived in the 1870’s.  Frequent river flooding meant that the railway line didn’t pass through Greytown.  The railway line passed instead through Woodside where the river was more manageable and less prone to flooding.  Woodside is about 5 km from Greytown.  There was a separate railway line from Woodside station into Greytown.

The lack of direct railway access meant that Greytown was no longer the pre-eminent town in the region.  Very little new construction went on from 1920 to 1970, while the other towns nearby developed and modernised. This meant that Greytown’s original colonial buildings and established trees were left largely untouched.

The 1990s saw a rebirth of Greytown and appreciation of its charms.  Old buildings have been, with some exceptions, sensitively upgraded and put to new purposes.  Main Street now houses trendy cafes, boutiques, art galleries and antique shops.

The 2006 census records the population of the town as 2,001.  This represents an increase of 3 people since the 2001 census.  My wife and I have three children born in 2003, 2004 and 2006.  So that makes us directly responsible for the population increase.  We’ve done our bit.  It’s now up to others to increase the town population.

I am currently chair of the Greytown Heritage Trust.  We are a charitable trust established with the simple aim of working with developers and local authorities to maintain Greytown’s colonial charm.  It’s a bit of a balancing act.  We don’t want to see a collection of relics.  Sympathetic development needs to be encouraged.

Tonight we had our first meeting with our board members elected at our recent AGM.  We allocated roles and responsibilities for our organisation and mapped out some goals for the coming year.  As well as chairperson, secretary and treasurer, we now have formal roles/subcommittees for:

  • Property management
  • Historical research
  • Membership
  • Heritage advisor
  • History lecture organisation
  • Website management
  • Public relations
  • Special projects

We have an active and enthusiastic committee.  It’s going to be a good year!

Monday, May 23, 2011

Trans-Tasman Regulatory Framework

First day back in the office for the weary traveller.  I find myself working with my colleague Corinne Blumsky preparing a submission on a proposal by the Ministry of Economic Development (MED) for a Single Trans-Tasman Regulatory Framework for Patent Attorneys.

Currently the Trans-Tasman Mutual Recognition Act 1997 permits patent attorneys qualified in either Australia or New Zealand to “waive in” to the other country.

The proposal will implement a single register rather than two.

The discussion paper addresses in considerable detail the practical issues that are presented in implementing a single framework.  What seems to be lacking is an explanation as to why a single framework is needed at all.

A J Park’s submission can be summarised as follows:

  • We already operate seamlessly between New Zealand and Australia.
  • We agree in principle with a single Governance Body responsible for education, registration and discipline of patent attorneys.
  • The proposal to require a tertiary qualification in a field of patentable subject matter is unlikely to affect our firm.
  • We agree with the implementation of continuing professional education (CPE).
  • We agree with the concept of a single code of conduct. Many of our patent attorneys are lawyers as well as patent attorneys.  The single code of conduct would need to be in alignment with and not inconsistent with the conduct of conduct required of us by the New Zealand Law Society.  This may have the effect of imposing a higher standard of conduct on Australian resident patent attorneys, many of whom are not lawyers.
  • We propose a separate qualification of Trade Mark Attorney in both countries.

MED intends to finalise its position on the proposal later this year.

I’m talking to a reporter from Managing Intellectual Property about this issue next week.  Should be interesting.

Saturday, May 21, 2011

Weary traveller

It feels slightly unreal to be back home.  I’ve just spent the last 10 days in San Francisco attending the AIPLA and INTA conferences.  They happened to be back-to-back this year in the same city.

Our business involves a lot of relationships with lawyers in different countries.  Our New Zealand based clients operate in global markets.  Global markets require an international approach.  We are licensed to represent clients before the patent offices of New Zealand and Australia (IPONZ and IP Australia respectively).  We also deal direct with many of our nearby Pacific Islands.

Where our clients want some advice or IP registration in other countries we look to our international networks.  These international conferences are a good opportunity to form relationships with intellectual property lawyers and patent attorneys in countries in which our clients need advice.  It works both ways.  Another part of our business is representing international clients before the IPONZ and IP Australia.

We find ourselves promoting New Zealand and Australia in other ways too.  There are two kinds of attorneys I meet when I’m travelling.  Those that have visited New Zealand.  And those that intend to visit New Zealand.  I’m often asked what to see and do.  Most of the people that do visit come here for a few weeks and bring their families.  So I’ve put together a map of New Zealand highlights.

Thursday, May 19, 2011

Guest Post: Blocking brands as adult-only domain names tipped for September

Thanks to Emma McBride for this article.

ICM, the registry responsible for the adult-only ".xxx" top level domain name, has just announced that trade mark owners will have a small window of opportunity to proactively block their trade marks from becoming .xxx domain names.

While there is no formal system in place yet, ICM has indicated that it will set up a 30 day 'sunrise' period in September 2011 for brand owners to block their trade marks.

In order to block your trade mark from the space, you will need to own a trade mark registration for the exact trade mark you want to block.  The registration will need to be in force at the time of application, in a national jurisdiction where you carry on business in connection with the trade mark.

Because you will need a trade mark registration, owners of unregistered trade marks will not be able to block their trade marks from being registered in the adult space.

Many companies and organisations, especially those that don’t want to be associated with this internet space, such as children’s entertainment companies, are expected to take advantage of this opportunity.

A fee will apply - which will comprise a baseline fee charged by the responsible registry, ICM - plus a service fee charged by frontline domain name registries that will handle the individual brand owner’s request.  While nobody has set any prices yet, fees are likely to be at least US$300-600 for each trade mark you want to block.  However, given the premium nature of this internet space, fees could be more than this.

For those that miss out on the sunrise period, there will still be post-enforcement options available, for example, the UDRP procedure.

There are some uncertainties around the registration procedure as this space is still new and the rules around it are still being finalised.  Indeed, it appears that the block may only last as long as ICM remains responsible for the .xxx domain name space, which at this stage is only 10 years.  After that, it is not known what will happen with any blocks that may be in place.

Wednesday, May 18, 2011

Guest Post: Clean zones, routes and periods for RWC2011 announced

Thanks to Corinne Blumsky and Dan Winfield for this article.

Clean zones, transport routes and periods for the Rugby World Cup 2011 have been announced.  View them here.

The zones and routes announced vary in size. The Eden Park clean zone and route in Auckland is extensive and the clean periods for these areas is longer than elsewhere. In contrast, the clean zone and route for Auckland’s North Shore is small and the clean periods are short.

In some cases, the clean zone is largely limited to the stadium and surrounding park land but the clean route is significant. For example, the Wellington clean route runs from the stadium, through the centre of town, all the way to the airport.

As a general rule, the clean periods are limited to the day before match day and match day. The major exception is the fifth clean period for the Eden Park clean zone and route, which is in place from 8am 5 October until 11.59pm 24 October (the quarter finals until the final).

All advertising in the zones and routes is not prohibited. If you are advertising in accordance with your ordinary honest activities the restrictions are unlikely to apply to you. But if you are thinking of doing something different you may want to seek legal advice.


  • The clean zone restrictions apply to advertising in the clean zone and advertising that can be seen from within the clean zone (if it’s not part of a business’s usual signage).
  • The clean route restrictions apply to advertising in the route only (not advertising outside the route that can be seen from within the route).
  • Honest ordinary advertising in the zones and route is unlikely to be restricted.

Check out the link above for the clean zones, transport route maps and periods for your operating region, so you know the rules and can work within them.

Monday, May 2, 2011

Dawn of a new day

Staff room

Well, first day in the new premises.  The move has gone really smoothly.  Leanne Cogswell and crew have done a wonderful job getting us moved.  I think the only thing that went wrong is that we didn’t have rubbish bins for a couple of days.  And the desk at reception was late arriving.  That’s all.

It makes me realise how dark and dingy our last building actually was.  I guess when you’ve been in the same environment for a while you stop noticing the bad bits.

I’ve ripped some photos off Facebook that one of our team posted.  Mental note to ask her if that is okay!

Work areas
We’ve gone for semi-open plan.  Offices for lawyers are around the perimeter of the building.  Walls on three sides. Solid walls on two sides up to eye level when seated, then glass to the ceiling above that.  No door.  It’s quite a major change to what we’re used to.  But it’s a good move.

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