Kimberlee G. Weatherall

An Empirical Investigation into Patent Enforcement in Australian Courts

The effectiveness of patent protection depends not only on the existence of patent laws on the books, but also on the ability to enforce the rights granted by those laws. In recent years, there has been concern expressed in Australia that courts are providing inadequate protection for patent owners: that they are anti-patent. We argue that there are two fundamental problems with this line of argument. The first is that although it is essentially an empirical issue, the debate has largely been based on anecdotal evidence provided by vested interest groups. Second, many existing studies are critical of the observed low levels of success in patent litigation disputes without properly recognizing that a patent does not provide any guarantee of validity if challenged in a court of law. Given the selection bias, only those cases where validity is highly questionable may actually make it to court. To incorporate these issues into the debate, we have created and analysed a database of all patent enforcement decisions (on both validity and infringement) of Australian courts for the period 1997-2003. We report descriptive statistics on patent litigation including detailed information on the duration of such litigation. Our analysis indicates that, in line with theoretical predictions, patent owners are more likely to have at least some of their claims upheld in both validity and infringement determinations than they are to lose all of their claims.

Patent Enforcement: A Review of the Literature

Without the confidence that patent rights can be enforced quickly and efficiently, when needed, the patent system will not stimulate innovation. For this reason, governments, academics, international institutions and the private sector have poured significant resources into gathering and analysing statistics on patent enforcement over the last two decades. This paper reviews these studies and finds that while infringement is relatively common, much enforcement occurs informally and less than 1–2% of patents incur litigation. New strategic uses of the enforcement system, especially by nonpracticing entities, are the major emerging enforcement issue, especially in the United States. While the old problem of litigation costs attracts the lions share of empirical attention, it has produced remarkably few solutions to date.

The Australia-US Free Trade Agreement's Impact on Australia's Copyright Trade Policy

The Australia-US Free Trade Agreement (AUSFTA) required extensive changes to Australian copyright law. This paper assesses the impact of these changes one decade on. It considers, first, whether the costs and/or benefits predicted in 2004 have eventuated, finding clear evidence that AUSFTA has undesirably constrained domestic copyright policy, but no clear evidence either of the feared financial costs to society, or, importantly, the touted benefits to copyright owners. The most significant impact of AUSFTA’s copyright provisions, however, appears to have been on Australia’s copyright trade policy. Pre-AUSFTA, Australia promoted multilateral standards and mostly sought to comply with, but not exceed, international IP standards. Post-AUSFTA, Australia has pursued an approach akin to that of the US: endorsing international copyright rules that are significantly stronger, and more detailed. The paper queries whether this shift has been in Australia’s national interest, and raises interesting questions of path-dependence in policymaking and trade negotiations that warrant more, and broader attention in the literature.

Culture, Autonomy and Djulibinyamurr: Individual and Community in the Construction of Rights to Traditional Designs

The possibility of granting proprietary rights in indigenous intangible cultural property – including artwork, cultural items and, more recently, traditional knowledge – has been and continues to be an area of considerable controversy, and the subject of discussions in various international organisations. It is widely accepted that present intellectual property regimes are structurally inadequate. The author focuses on the particular problem of traditional designs, and seeks to analyse critically the justifications that are advanced for extending existing regimes or introducing a sui generis right: in particular, the protection of ‘cultural integrity». The aim is to elucidate some of the theoretical problems with this rationale, and to extrapolate, from arguments regarding the importance of culture and cultural integrity, to the form and scope of rights that such an argument might require. In particular, the author believes that such a rationale has implications in determining how conflicts between communal and individual interests are to be resolved.

The Use of Survey Evidence in Australian Trade Mark and Passing Off Cases

Consumer confusion lies at the heart of most actions for trade mark infringement. Statistically objective surveys are the most scientific way to get generalisable evidence about what consumers think and whether there is a case for confusion or potential confusion. However, only one in ten Australian court cases over the last twenty years have involved survey evidence and this rate has been declining over time. The reason for this decline can be traced to the way the courts treat such evidence. We find no statistical evidence that tendering survey evidence affects the court decision – either in favour or against the survey owner. Furthermore, courts have made it clear that they are prepared to make decisions on the likelihood of confusion, with no recourse to empirical evidence and on the basis of their own inferences and judicial ‘common sense’. Given these attitudes and the formal requirements of the courts, there is little reason for a litigant to conduct a survey or for opposing parties to offer critique prior to the survey being conducted. We suggest that a better approach would be for courts to give clearer requirements on how to offer market research evidence in a way that the court will admit and find persuasive.

Recognition in context: Implications for trade mark law

Context effects in recognition have played a major role in evaluating theories of recognition. Understanding how context impacts recognition is also important for making sound trade mark law. Consumers attempting to discriminate between the brand they are looking for and a look-alike product often have to differentiate products which share a great deal of common context: positioning on the supermarket shelf, the type of store, aspects of the packaging, or brand claims. Trade mark and related laws aim to protect brands and reduce consumer confusion, but courts assessing allegations of trade mark infringement often lack careful empirical evidence concerning the impact of brand and context similarity, and, in the absence of such evidence, make assumptions about how consumers respond to brands that downplay the importance of context and focus on the similarity of registered marks. The experiments reported in this paper aimed to test certain common assumptions in trade mark law, providing evidence that shared context can cause mistakes even where brand similarity is low.

The Consumer as the Empirical Measure of Trade Mark Law

Although consumer responses to signs and symbols lie at the heart of trade mark law, courts blow hot and cold on the relevance of empirical evidence – such as surveys and experiments – to establish how consumers respond to alleged infringing marks. This ambivalence is related to deeper rifts between trade mark doctrine and the science around consumer decision‐making. This article engages with an approach in ‘Law and Science’ literature: looking at how cognitive psychology and related disciplines conceptualise consumer decision‐making, and how counterintuitive lawyers’ approaches appear from this perspective. It demonstrates how, especially when proving confusion, decision‐makers in trade mark demand the impossible of empiricists and are simultaneously blind to the weaknesses of other sources of proof. A principled divergence, without seeking to collapse the gaps between legal and scientific approaches, but taking certain small steps, could reduce current problems of proof and contribute to better‐informed, more empirically grounded decisions.

How important is the name in predicting false recognition for lookalike brands

An underexploited role for psychology in trademark law is the testing of explicit or implicit judicial assumptions about consumer behavior. In this article we examine an assumption that is common across Commonwealth countries, namely, that similar packaging is unlikely to cause consumer confusion provided the brand names are dissimilar. We began by selecting branded products commonly found in supermarkets. For each existing brand we created 2 novel (fictitious) brands with highly similar packaging to the existing brand. One of these “lookalike” products had a similar name, the other a dissimilar name. Across 2 yes/no and 1 forced-choice experiments using photographs of the real and fictitious products we looked at false recognition rates. Contrary to the judicial assumption participants largely ignored the brand names when making their decisions based on memory. It was only when the pictures of the products were placed side-by-side (in the forced-choice task) that they paid the brand name any significant attention.

Brandname confusion: Subjective and objective measures of orthographic similarity

Determining brand name similarity is vital in areas of trademark registration and brand confusion. Students rated the orthographic (spelling) similarity of word pairs (Experiments 1, 2, and 4) and brand name pairs (Experiment 5). Similarity ratings were consistently higher when words shared beginnings rather than endings, whereas shared pronunciation of the stressed vowel had small and less consistent effects on ratings. In Experiment 3 a behavioral task confirmed the similarity of shared beginnings in lexical processing. Specifically, in a task requiring participants to decide whether 2 words presented in the clear (a probe and a later target) were the same or different, a masked prime word preceding the target shortened response latencies if it shared its initial 3 letters with the target. The ratings of students for word and brand name pairs were strongly predicted by metrics of orthographic similarity from the visual word identification literature based on the number of shared letters and their relative positions. The results indicate a potential use for orthographic metrics in brand name registration and trademark law.

The new (old) war on copyright infringement, and how context is opening new regulatory possibilities

The internet blackout in January 2012 saw thousands of websites ‘go dark’ to protest proposed US laws designed to implement a ‘multi-system denial of service attack’ against alleged IP-infringing websites by making them both unfindable, and by cutting off any financial support. Within days, the laws – known as the Stop Online Piracy Act (SOPA) and the Protect IP Act (PIPA) – effectively were dead. But when and how did such laws even reach the stage of serious discussion? This examines what has changed, and looks at how and why regulating internet intermediaries and making them the internet ‘police’ has gradually become more acceptable to governments.