1. E-commerce and the Law
Bond University
Semester 113

3. Today’s session
• Jamie White – About me
• Pod Legal – About us
• Context of today’s session
• Overview of Intellectual Property (IP)
• Securing IP Rights
• Doing Business Online
• Most Common Mistakes When Doing Business Online
• Online Risk Management
• Question Time

4. Jamie White: Who Am I?
• Former Tennis Professional (1989-2000)
• Bond Law Graduate (2005)
• Intellectual Property/Technology Lawyer
• Registered Trade Marks Attorney
• Solicitor of High Court of Australia
• Solicitor Director/Co-Owner, Pod Legal

5. Pod Legal: What We Do
• Intellectual Property Law
• Internet Law
• Technology Law
• Privacy Law
• Franchising Law
• Advertising and Marketing Law
• Commercial Law

6. Our Points of Difference
• Personal Service: delivered with enthusiasm and
passion.
• Leaders: We stay at the forefront of our industry.
• Transparency: we charge on a fixed-fee basis, deliver
value for money solutions and stick to our word, no
matter what.
We call this the ‘Pod Experience’

7. Context of today’s session
• Electronic commerce
• Social media
• Publication of material online
• Online communications
• Online advertising and marketing
• Doing any business online

8. Intellectual Property: Overview
What is Intellectual Property?
• Represents the property of your mind or intellect.
• In business, this means your proprietary
knowledge – a valuable component of success in
business today.
• This is often the “edge” which sets successful
companies apart from competitors.
• As the marketplace becomes increasingly
competitive, protecting your intellectual property
is essential.

9. Intellectual Property (continued)
Why is IP important to business?
Every business will have some form of intellectual property.
Examples:
• a unique product or design;
• manufacturing process;
• innovative idea;
• a distinctive name or logo; and
• original documents.

10. Intellectual Property (continued)
Why is IP important?
• Businesses are becoming increasingly aggressive in
gaining market share.
• Businesses with a competitive edge stand out from the
rest.
• Building effective strategies around your IP will give a
major, sustainable advantage.
• Successful businesses place their IP alongside other
assets on the balance sheet.

11. Intellectual Property (continued)
Protection of IP
• The most common types of IP are copyright,
trademarks, patents, designs and trade secrets.
• Today’s focus will be on copyright and trade marks.
• IP laws enable owners, inventors, and creators to
protect their intellectual property from unauthorised use.
• IP is an asset that can be bought, sold or licensed.
• What does an IP Lawyer typically do?

12. Copyright
 Protects the original expression of ideas, not the ideas
themselves.
 Copyright automatically protects your original works of
art and literature, music, films, sound recording,
broadcasts and computer programs from copying and
certain other uses.
 Not registrable in Australia (what about the U.S.?)
 Does not protect against the independent creation of
similar works.
 Legal position (re: employees and contractors).
 Use of copyright notices.

13. Copyright (cont)
Typical Business Copyright
Examples:
• Business manuals and policies;
• Images, photographs, artwork (E.g. PodToons);
• Advertising copy, promotional literature, jingles;
• Template agreements, precedents;
• Websites/website content;
• Computer code and documentation; and
• Plans.

14. Trade Marks
What is a trade mark?
 A trade mark may be a word, phrase, letter, number,
scent, shape of an object, logo, picture, symbol, colour,
aspect of packaging (get-up) or any combination of
these.
 A trade mark is used to distinguish the goods and
services of one trader from those of other traders.
 Trade Marks Act 1995 (Cth)

15. Trade Marks (cont)
A trade mark cannot be:
 A sign which other traders are likely to wish to use in
conjunction with their similar goods and services;
 A geographical name or common surname;
 Scandalous or its use contrary to law;
 Likely to deceive or cause confusion; or
 Substantially identical or deceptively similar to a prior
trade mark application or registration in relation to the
same, similar or closely related goods and services
(unless prior use of the trade mark can be shown).

16. Trade Marks (cont)
What is trade mark registration?
 Trade mark registration grants its owner the legal right to
exclusively use or control the use of the trade mark for
the goods or services for which it was registered.
 A registered trade mark can be protected against third
party misuse or infringement.
 Only a registered trade mark can benefit from protection
under the Trade Marks Act 1995 (Cth).

17. The Value of IP
• Identify and record your IP;
• Protect and defend;
• Commercialise and add value to your IP;
• Valuation of IP;
• Balance sheet benefits; and
• Mergers/acquisitions/IPOs.
• See Business ‘Briefing Series, 20 issues on intellectual
property’ (IP Aust/Institute of Chartered Accountants)

18. Securing Intellectual Property
Rights

19. Trade Mark Applications
Should prospective trade marks be searched before
filing an application?
A comprehensive search of a prospective trade mark
should be conducted prior to filing a trade mark
application. This may avoid substantial expenditure being
wasted on an unsuccessful application.

20. Trade Mark Applications (cont)
A Trade Mark Search should be conducted to:
• discover any prior registered trade marks that may be
infringed by your proposed trade mark application;
• discover whether any prior registrations or applications
may prevent the registration of your proposed trade
mark;
• discover whether the proposed trade mark is likely to be
successfully registered in Australia; and
• assess the likelihood of any third party common law
claims.

21. Trade Mark Applications
The registration procedure
Step 1:
A trade mark application is lodged with IP Australia, the
responsible entity for the administration of trade marks in
Australia.

22. Trade Mark Applications (cont)
The registration procedure (cont)
Step 2:
• Once lodged, a Priority Date & Application Number are
allocated to the trade mark application.
• The Priority Date is that date the trade mark is taken to
be registered from, once the registration process has
been completed.

23. Trade Mark Applications (cont)
The registration procedure (cont)
Step 3:
• The application is then examined by an IP Australia
Officer (the Examiner) who may raise objection if the
proposed trade mark is non-distinctive, substantially
identical or deceptively similar to a prior registered trade
mark, or is a prohibited trade mark.
• If the Examiner raises an objection, an adverse report
will be issued. Opportunity will be given to you to
respond to the report and alter the application as may be
necessary.

24. Trade Mark Applications (cont)
The registration procedure (cont)
Step 4:
• If there are no difficulties with the trade mark, or once
the difficulties have been resolved, the trade mark will
be accepted for registration.

25. Trade Mark Applications (cont)
The registration procedure (cont)
Step 5:
• Upon acceptance for registration, the trade mark is
advertised in the Official Journal of Trade Marks. From
the day of publication, a three month opposition period
commences whereby members of the public can
oppose the registration of the mark on various grounds.

26. Trade Mark Applications (cont)
The registration procedure (cont)
Step 6:
• Assuming no opposition is made during that period, the
trade mark will be entered on to the trade mark register
for a period of ten years upon payment of the
registration fee.
• Should opposition be made, opportunity is again given to
respond in defence of the trade mark, at a Hearing with
a Registrar.

27. Trade Mark Applications (cont)
Use of the TM and ® symbols
• You may use the ™ symbol prior to having your trade
mark registered in Australia. By doing so, it indicates that
you intend to use the trade mark in association with the
goods or services to which it appears.
• You may use the ® symbol prior to after your trade mark
is registered. When using the ® symbol, all
representations that you make in relation to the trade
mark must be true.

28. Trade Mark Applications (cont)
Completing a Trade Mark Application
• Applicant name;
• Applicant address;
• Address for service;
• Representation of trade mark;
• Specification of class/es; and
• Class description/s.

29. Trade Mark Applications (cont)
Let’s have a crack! In pairs:
• Create a brand.
• Create a product/service.
• Complete a trade mark application.
• Applicant name, applicant address, address for
service, representation of trade mark, specification of
class/es and class description/s.

30. Doing Business Online

31. Trends
• A clear shift toward Internet based systems of e-
commerce…failure to complying with changing legal
rules can be fatal to business.
• Tendency to overlook legal issues in an electronic
environment.
• Consequence: legal risk.

32. Website Content
Four sources of website content:
1. Original material;
2. Assigned material (legally acquired);
3. Licensed material (consent); and
4. Stolen material (no consent).

33. Website Content
Areas of law relevant to online business include:
• Consumer protection laws
• Privacy Act
• Spam Act
• Copyright Act
• Trade Marks Act
• Contract law
• Common law

34. Website Content
Competition and Consumer Act
• The object of the Competition and Consumer Act is to
promote competition and fair trading and provide for
consumer protection.
• The most common breaches of the Competition and
Consumer Act relate to conduct that is misleading or
deceptive, or capable of misleading or deceiving.

35. Website Content
Privacy Act
• Website users have the right to know:
• What information is being collected about them;
• How that information will be used;
• Who that information will be disclosed to;
• How to verify the accuracy of that information; and
• How to access that information.
• Website users must be able to request that their
personal information is no longer collected or distributed.

36. Website Content
Spam
• Governed by the Spam Act 2003.
• A person must not send, or cause to be sent, a
commercial electronic message that;
• has an Australian link; and
• is not a designated commercial message.
• Spam may comprise a single commercial electronic
message.

37. Website Content
Spam (cont)
• Significant penalties apply:
• 2006: 5.5 million dollars (email)
• 2009: 15.75 million dollars (SMS)
• The risk is real!

38. Website Content
Copyright
• Copyright is often infringed via the unauthorised use of
text and images.
• However, third parties may be liable too:
• Cooper’s Case (MP3’s)
• AFACT v iiNet (movie and music piracy)

39. Website Content
Copyright (con’t)
• Ownership of copyright
• The author of a work will be the first owner of
copyright in that work.
• Any exceptions?

40. Website Content
Copyright (cont)
• Copyright in works can only be transferred via written
assignment.
• Verbal agreement to assign is not enough.
• Consider ownership of photographs, logo design and
website.

41. Website Content
Trade Marks Act
Trade mark infringement takes place when one trader
uses the trade mark of another trader creating the
likelihood of confusion in the market place.

42. Website Content
Trade Marks Act (cont)
Examples of possible trade mark infringement:
• The display of a trade mark on a website linking to
another website, falsely leading the website user to
believe that an affiliation or association exists will be
trade mark infringement
• Domain names
• Google AdWords
• Meta-tags
• Unauthorised display of logos

43. Website Content
Contract Law
Example:
• The offer of software for sale on a website
• The specific terms of use in relation to the software
must be displayed and agreed to prior to the sale, or
prior to opening the software package (shrink-wrap
or click-wrap agreements).

44. Website Content
Passing Off
• Passing off is where one trader falsely passes off as
having an association with another trader.
• Usually used in relation to unregistered trade marks.
• Usually asserted in conjunction with provisions of the
Competition and Consumer Act.

45. Case Study
Patchett v SPATA (UK)
• Facts:
• SPATA (a trade org) made representations on its
website about the financial stability of its members.
• SPATA suggested on its website that an additional
information pack should be considered.
• Mr Patchett relied on the displayed information and
contracted with a member pool builder.
• Pool builder became insolvent.
• Mr Patchett brought an action in negligence against
SPATA.
• Outcome?

46. Case Study (cont)
Patchett v SPATA (UK)
• Fortunately for SPATA, the Web site also included a
suggestion that users of the Web site should consider
the contents of an additional information pack.
• The Court held that this operated as a disclaimer against
the liability that would otherwise have arisen.
• Warning!!

47. The Most Commonly Made
Mistakes When Doing
Business Online

48. The Facts
• 39 per cent of businesses now have an online
presence.
• Tendency to overlook legal issues in the online
environment.
• Failure to comply with changing legal rules could
be fatal to your business.

49. Mistake 1:
Copyright Infringement

50. Mistake 1: Copyright infringement
• What is copyright?
– Copyright protects original expressions of ideas and
not the ideas themselves.
• What is copyright infringement?
– Copyright infringement takes place where another
party does an act which infringes the exclusive
rights of a copyright owner.

51. Mistake 1: Copyright infringement
• Examples of copyright infringement:
– Unauthorised reproduction of text and
images.
– Unauthorised reproduction of website legal
documents!
• Solution: Use your own material or obtain
a licence to use another person’s material.

52. Mistake 2:
Trade Mark Infringement

53. Mistake 2: Trade Marks
• What is a trade mark?
– Sign, shape, symbol, label, letter, word, slogan, scent,
sound, colour, aspect of packaging or a combination
of any of these.
• What is trade mark infringement?
– Where a person uses a trade mark that is
substantially identical with, or deceptively similar to, a
trade mark owned by another person.

54. Mistake 2: Trade Marks
• Examples of trade mark infringement:
– Unauthorised display of third party logos.
– Unauthorised use of a trade mark in a domain
name or Google Adwords campaign.
• Solution: Obtain consent to use a third
party trade mark.
• eBook:
http://www.podlegal.com.au/downloads/eb
ook-trademarks.pdf

55. Mistake 3:
Deceptive Trade Practices

56. Mistake 3: Deceptive Trade Practices
• Consumer protection laws such as the
Competition and Consumer Act.
• Examples of deceptive trade practices:
– False testimonials.
– Leading consumers to believe that an
association or affiliation with another trader
exists when it doesn’t.
• Solution: Don’t mislead or deceive!

57. Mistake 4:
Breach of Privacy

58. Mistake 4: Breach of Privacy
• When collecting information about a person, that
person has a right to know:
– that the information is being collected;
– how the information will be stored;
– how the information will be used; and
– under what circumstances the information may be
disclosed.

59. Mistake 4: Breach of Privacy
• Solution: Prepare and implement a Privacy
Policy that is specific to your business practices.
• Article: http://www.podlegal.com.au/article-
importance-of-privacy-strategy.php

60. Mistake 5:
Use of a Competitor’s Trade
Mark in your Google AdWords
Campaign.

61. Mistake 5: Google AdWords
• What are Google AdWords?
– It’s a form of pay per click (PPC) advertising.
• Using a competitor’s trade mark in your
Google AdWords campaign may amount
to:
– misleading or deceptive conduct;
– trade mark infringement; and/or
– passing off.

62. Mistake 5: Google AdWords
• Solution: Do not use a competitor’s trade
mark in your pay per click advertising
campaigns.
• Article: http://www.podlegal.com.au/article-
tm-google-adwords.php

63. Mistake 6:
Violation of Spam Laws

64. Mistake 6: Violation of Spam Laws
• What is spam?
– An electronic message that contains an invitation to
do business and that has been sent without the
consent of a recipient.
• Big penalties apply:
– $5.5m in 2006 (213m emails)
• Use of address harvesting software and no
recipient consent.
– $15m in 2009 (re SMS)
• No recipient consent.

65. Mistake 6: Violation of Spam Laws
• How to comply with the Spam Act:
1. Obtain recipient consent prior to sending;
2. Identify your business as the sender; and
3. Provide a functional unsubscribe facility.
• Solution: Comply with the Spam Act.
• Article: http://www.podlegal.com.au/article-
spam.php

66. Mistake 7:
Overlooking Legal Aspects
of Social Media

67. Mistake 7: Social Media
• Social media is just another medium for
publishing information and communications.
• Legal rules also apply to conduct relating to
social media.
• Examples of the hidden costs of social media:
– Online defamation via Facebook (comments about
a Policeman resulted in fines).
– Journalist’s employment terminated for offensive
tweets during Logies (re Bindy Irwin).

68. Mistake 7: Social Media
• Solution: Don’t overlook legal issues
associated with social media.
• Articles:
– http://www.podlegal.com.au/article-social-media-
twits.php
– http://www.podlegal.com.au/article-defamation-
online.php
– http://www.podlegal.com.au/article-facebook-
promotions.php

69. Overall Solutions
• Assess and modify your conduct (if
required).
• Display legal documentation:
– Terms of Use (website and Facebook page)
– Privacy Policy
– Spam Statement
– Purchase / Shipping Terms
– Refund / Cancellation Policy
– Upload Terms

70. Overall Solutions
• The benefits of legal documentation:
– Those engaging with you to do business online are
made aware of laws and policy regarding your
website and/or Facebook page.
– Disputes resolved efficiently and favourably.
– Liability associated with your website and/or
Facebook page will be limited.

71. Take Action Now
• To reduce legal risk associated with your online
business practices, you should:
– consult an Internet / IT Lawyer (not a Property or Family
Lawyer) to review your online business practices;
– ensure that you display legal documentation, specific to
your online business practices; and
– not assume that all will be ok because you are doing
business in the online environment.

72. Take Action Now
• Article: http://www.podlegal.com.au/article-online-
business-risk.php
• eBook: http://www.podlegal.com.au/downloads/ebook-
your-website.pdf

73. Online Risk Management

74. Online Risk Management
Legal documents for use when doing business online:
• Terms of Use
• Privacy Policy
• Purchase Terms
• Upload Terms
• Membership Terms
• Refund Policy
• Facebook Terms of Use
• Spam Statement (best practice)
• See http://www.podlegal.com.au/store.php

75. Case Studies
Let’s pick on some random website owners.
• What legal documents do they display?
• Have they applied to register their trade marks?
• Are they exposed to legal risk?
• What now?

76. Question Time
Some past questions:
• What’s it like to be a trainee lawyer?
• To specialise or not specialise?
• Expectations of a young lawyer?
• Big firm or small firm?
• What are the working hours like?
• Traits of a good lawyer?
• Remuneration?
• The road to partnership?

77. Contact Details
• Email: jamie@podlegal.com.au
• Phone: 1800 POD LEGAL (1800 763 534)
• Mobile: 0404 019 400
• Web: podlegal.com.au
• Slides: slideshare.net/podlegal
• Facebook: facebook.com/podlegal
• Twitter: twitter.com/podlegal