Intellectual Property - Tee Eff Pty Ltd - Essay Example

Intellectual Property Assignment Student Name: Institution: City: Date Due: In the hypothetical, Siri a molecular gastronomist developed an edible protein that she nicknamed “Truffleflesh”. She developed her product at her day job as a training chef on a reality TV cooking show “The Hungry Games”, using equipment and stationary from the show. To test her product, Siri used Truffleflesh on mushroom, truffle and sage amuse-bouches which she served at the Hungry Games season finale cocktail party. Siri keeps her product a secret from her colleagues and later on decides to quit her job to work on marketing her product commercially. Siri does not know that for fifteen years a small company, Tee Eff Pty Ltd registered under the business name of “Trufflefresh” has been operating in Tasmania sourcing and selling fresh wild truffles to expensive restaurants in Australia. However, Tee Eff has not registered Trufflefresh as a trademark. As part of her marketing campaign, Siri wants to use a 17second segment from the Hungry Games season finale episode where her former colleagues were talking excitedly regarding her secret recipe on her website. From this scenario, a number of intellectual property issues emerge that Siri must consider in order to protect her product while avoiding infringing on the intellectual property rights of others. Issue 1: Copyrights The first area under intellectual property law where Siri may encounter challenges is copyright law. Siri has indicted that as part of her marketing campaign for Truffleflesh, she intends to use a 17second segment of the Hungry Games season finale where the celebrity chefs had made comments regarding her secret ingredient. This action may make Siri liable for copyright infringement. The Australian Copyright Act of 1968, under the commonwealth legislation, provides exclusive legal right to authors or creators of works (which may include literary, dramatic, musical or artistic works) that allows them to reproduce, publish, perform, make an adaptation and/or communicate the work. According to the Act, individuals, who are not owners or are unlicensed by the copyright owner, may infringe copyrights in a literary, dramatic, musical or artists work if they perform any of the acts entitled in the copyright. According to the hypothetical, the TV show “Hungry Games” is a property of Hungry Productions Pty Ltd, which produces the program. Therefore, using a segment of the show’s season finale to market her product, Siri will infringe on the shows copyrights as attributed to Hungry Productions Pty. Moreover, in addition to the exclusive right to control the reproduction or use of the show, the Copyright Act 1968 grants Hungry Productions moral rights and performers’ rights in their work (Bowrey, et al., 2010). With regard to moral rights, Hungry Productions have the right of attribution, the right of integrity and the right against false attribution. By using the segment from the show, Siri intends to use the popularity and reputation of the show to validate Truffleflesh among her target consumers. This will infringe on the moral right against false attribution as accorded to Hungry Productions in the copyright. Additionally, with reference to Henderson v. Radio Corporation Pty Ltd Siri will be liable for wrongful appropriation of professional reputation. With regard to performer rights, the Copyright Act grants performers in a literary, dramatic or artistic work three main rights, including the right to control the recording and communication of their performances; ownership of copyright in any sound/video recordings of their performances and moral rights for their live performances. An infringement of performer’s rights constitutes acts such as unsanctioned recording of their performance, copying of an unlicensed recording of their performance or electronically distributing/communicating an unlicensed recording of their performance (Davison, et al., 2011). Consequently, using a segment of the Hungry Games show as part of the Truffleflesh marketing campaign will infringe on the performer’s rights of the celebrity chefs who were part of the show through wrongful appropriation of professional reputation. However, since she was part of the show, Siri may argue that the moral and performers rights granted to the show’s copyright also apply to her. Therefore she may argue that she has legal authority to use the segment. Moreover, according to the exclusive licensee merits outlined in Fisher & Paykel Financial Services Limited v Karum Group LLC (no. 3) Siri may have a legal claim to the copyright (Fisher & Paykel Financial Services Limited v Karum Group LLC (no. 3), 2012). While this may be the case, Siri is no longer part of the show or an employee of Hungry Productions. Moreover, the exclusive rights may be voided if Siri had entered into a dissolution agreement with Hungry productions. As such, to avoid on infringing on the Hungry Games copyright, Siri should obtain a license and authorization from the copyright owner, before using the segment on her website. Issue 2: Passing off/misleading and deceptive conduct The second area of intellectual property law where Siri may encounter issues is passing off and misleading and deceptive conduct. In the first instance, Siri intends to use a segment of Hungry Games show depicting her colleagues animatedly giving their opinion of Truffleflesh for commercial gain, without the consent or license of the copyright holder. Secondly, Siri intends to market her product under the name “Truffleflesh” to high end restaurants in Australia, which may be considered as misleading since Tee Eff Pty Ltd markets an almost similar product to a similar target market using the name “Trufflefresh”. Misleading and deceptive conduct is prohibited under the Australian Consumer law contained in the Competition and Consumer Act 2010 (cth). According to the Act conduct may be considered as misleading or deceptive if it results in error, capable of triggering error, in an ordinary or reasonable person. The main elements of misleading and deceptive conduct include the overall impression created and the dominant message conveyed by the action (Davison, et al., 2011). According to the hypothetical, Siri wants to use the Hungry Games show segment to market her Truffleflesh product. The main reason for this is to use the popularity and reputation of the show as well as its celebrity cast of chefs to endorse her product in the market. This is in mind that she developed and tested the product at the show’s premises without informing her colleagues or her employer and obtaining authorization to use theme as test subjects for her product. As seen in the Henderson v. Radio Corporation Pty Ltd case, where Radio Corporation Pty ltd knowingly and without authorization used an image of the Hendersons, a professional dancing couple, on a record cover with an aim to market the record. The Full Supreme Court of New South Wales held that the defendant had wrongfully appropriated the professional reputation of the Hendersons for commercial endorsement of their product which constituted as an injury to the plaintiff (Henderson v. Radio Corporation Pty Ltd, 1960). Further, the court ruled that the use of the image wrongfully deprived of the Hendersons, their right to offer/provide or withhold their “professional recommendation”. Similarly, by using the show segment in her marketing campaign, Siri will be liable for wrongfully depriving the celebrity chefs on the show their chance to offer or withhold their professional recommendation about Truffleflesh. Moreover, she intends to deceive the consumer that the product has been endorsed by the show’s celebrity cast. Additionally, Siri does not intend to use the entire episode rather she will adapt a 17 second segment to her campaign, which is in itself misleading and a breach of the Fair Trading Act 1986, since the consumer will not have all of the facts as regarding the original clip. In the second instance, Siri intends to market her product under the name “Truffleflesh” while already Tee Eff has been operating under the name “Trufflefresh” for fifteen years. While Siri initially had no idea of the existence of “Trufflefresh”, she is likely to face litigation on the grounds of passing off and misleading conduct. Passing off is a common law principle that protects the reputation and good will of a particular trade mark, business name of a product (Clarke, et al., 2011). Elements of passing off include acts or situations where a representation may deceive or induce confusion among consumers of the product whether online or in the real market (Erven Warnink BV v J Townend & Sons (Hull) Ltd, 1979). In the hypothetical, Siri intends to market her product to high end restaurants across Australia, which is the same market segment where Tee Eff has been operating. As demonstrated in Donaghys Industries Ltd v. ITW NZ Ltd, using the product name Truffleflesh will induce confusion among the consumers considering that the products for both companies are almost similar (Donaghys Industries Ltd v ITW NZ Ltd , 2005). Consequently, to avoid litigation in both instances, Siri should consider using a different marketing approach such as seeking endorsement for her product form the celebrity chefs physically and adopting a new name for her product. Issue 3: Trademarks Siri may face issues in the area of trademark, where she might encounter problems when using the name “Truffleflesh” due to the fact that Tee Eff Pty Ltd have registered the business name “Trufflefresh”. The similarity in the names may cause litigation problems particularly since Australian Consumer law under the Trade Marks Act 1995 (cth) recognizes reputation-based trade marks (Bowrey, et al., 2010). While Tee Eff has not registered ‘Trufflefresh” as a trademark, it has been operating under the name for fifteen years and consequently built a reputation on it as a leading supplier of truffles. Accordingly, due to this extensive use of the trade name “Trufflefresh”, Tee Eff has enforceable rights under consumer protection legislation, as well as common law passing off (The Zone Corporation Limited v American Express Marketing & Development Corporation, 2011). In NV Sumatra Tobacco Trading Company v New Zealand Milk Brands Limited, the New Zealand Court of Appeal, using the test applying under s25 (1) (b) where a trademark is similar to an existing trademark, held that the trademarks ANGKOR and ANCHOR were similar owing to the aural similarity and that the lengths of the words were identical with only two middle letters different (NV Sumatra Tobacco Trading Company v New Zealand Milk Brands Limited, 2011). The court ruled that the difference could not readily be noticed by consumers especially in view of imperfect recollection and subsequently the trademark was revoked in favor of the plaintiff. A similar application of the test on the names “Trufflefresh” and “Truffleflesh” shows that they are similar on the basis that they are of the same length, phonetically similar and have only one different letter in the middle. As such consumers cannot readily distinguish the two and in view of imperfect recollection, may result in confusion. Accordingly, Siri may be liable for trademark infringement as demonstrated in. Therefore, to protect herself from litigation, Siri may be forced to develop a new brand name as well as trademark. Bibliography Bowrey, K., Handler, M. & Nicol, D., 2010. Australian Intellectual Property: Commentary, Law and Practice. New South Wales: Oxford University Press Australia & New Zealand. Clarke, B., Bender, M. & Sweeney, B. J., 2011. Marketing and the Law. 4th ed. London: LexisNexis Butterworths. Davison, M. J., Monotti, A. L. & Wiseman, L., 2011. Australian Intellectual Property Law. 2nd ed. Melbourne: Cambridge University Press. Donaghys Industries Ltd v ITW NZ Ltd (2005) High Court. Erven Warnink BV v J Townend & Sons (Hull) Ltd (1979). Fisher & Paykel Financial Services Limited v Karum Group LLC (no. 3) (2012) Rodney Hansen J. Henderson v. Radio Corporation Pty Ltd (1960) Full Supreme Court of New South Wales . NV Sumatra Tobacco Trading Company v New Zealand Milk Brands Limited (2011) Glazebrook, Gendall and Allan JJ. The Zone Corporation Limited v American Express Marketing & Development Corporation (2011) Dobson J. Read More