Part IIIRemedies for infringements of El rights

An Act to provide for the protection of certain layouts for integrated circuits, and for related purposes ## Part I—Preliminary #### 1 Short title \[see Note 1\] This Act may be cited as the Circuit Layouts Act 1989. #### 2 Commencement \[see Note 1\] (1) Sections 1 and 2 commence on the day on which this Act receives the Royal Assent. (2) The remaining provisions of this Act commence on a day or days to be fixed by Proclamation. #### 3 Extension to external Territories This Act extends to every external Territory. #### 4 Act binds the Crown Subject to section 25, this Act binds the Crown. #### 5 Interpretation In this Act: > action means a proceeding of a civil nature between parties, and includes a counterclaim. > circuit layout means a representation, fixed in any material form, of the three‑dimensional location of the active and passive elements and interconnections making up an integrated circuit. > commercially exploited has the meaning given in section 8. > eligible foreign country means a foreign country declared by the regulations to be an eligible foreign country for the purposes of this Act. > eligible layout means an original circuit layout: (a) the maker of which was, at the time the layout was made, an eligible person; or (b) that was first commercially exploited in Australia or in an eligible foreign country. > eligible person means: (a) an Australian citizen or a person resident in Australia; (b) a body corporate incorporated by or under a law in force in a State or Territory; (c) a citizen, national or resident of an eligible foreign country; or (d) a body corporate incorporated by or under a law of an eligible foreign country. > EL rights means the exclusive rights specified in section 17 in relation to an eligible layout. > exclusive licence means a licence in writing, signed by or on behalf of the owner or prospective owner of EL rights, authorising the licensee, to the exclusion of all other persons, to do an act that, under this Act, the owner would, but for the licence, have the exclusive right to do. > exclusive right has the meaning given in section 9. > future EL rights means EL rights that will come into existence at a future time or on the happening of a future event. > integrated circuit means a circuit, whether in a final form or an intermediate form, the purpose, or one of the purposes, of which is to perform an electronic function, being a circuit in which the active and passive elements, and any of the interconnections, are integrally formed in or on a piece of material. > material form, in relation to a circuit layout, includes any form of storage (whether visible or not) from which the layout, or a substantial part of it, can be reproduced. > other party, in relation to an owner of EL rights or the exclusive licensee of those rights, means the exclusive licensee or the owner, respectively. > prospective owner means: (a) in relation to future EL rights that are not the subject of an agreement of the kind referred to in subsection 44(1)—the person who will be the owner of those rights when they come into existence; or (b) in relation to future EL rights that are the subject of such an agreement‑the person in whom those rights will vest under that subsection when they come into existence. > protection period, in relation to an eligible layout, means the period beginning on the day on which the layout was made and ending: (a) if the layout is first commercially exploited within 10 calendar years after the calendar year in which the layout was made‑at the end of the tenth calendar year after the calendar year in which the layout was first commercially exploited; and (b) in any other case‑at the end of the period of 10 calendar years after the calendar year in which the layout was made. #### 6 Residence not affected by temporary absence For the purposes of this Act, a person who at a material time was ordinarily resident in Australia or a foreign country but was temporarily absent from that country shall be treated as if he or she had been resident in Australia or that country, as the case may be, at that time. #### 7 Application to circuit layouts made before commencement This Act applies in relation to a circuit layout, whether made before or after the commencement of Part II, but an action does not lie under Part III in respect of any act done before that commencement in relation to the layout, a copy of the layout, or an integrated circuit made in accordance with the layout. #### 8 Commercial exploitation (1) For the purposes of this Act, a circuit layout shall be taken to have been commercially exploited if the layout, a copy of the layout, or an integrated circuit made in accordance with the layout (whether or not the integrated circuit is incorporated in another thing) is: (a) sold, let for hire or otherwise distributed by way of trade; (b) offered or exposed for sale or hire, or other distribution by way of trade; or (c) imported for the purpose of sale, letting for hire, or other distribution by way of trade. (2) For the purposes of this Act, a copy of a circuit layout or an integrated circuit made in accordance with a circuit layout shall be taken to have been commercially exploited if it is: (a) sold, let for hire or otherwise distributed by way of trade; (b) offered or exposed for sale or hire, or other distribution by way of trade; or (c) imported for the purpose of sale, letting for hire, or other distribution by way of trade. #### 9 Exclusive right For the purposes of this Act, the exclusive right to do an act in relation to an eligible layout, or an integrated circuit made in accordance with an eligible layout, includes the exclusive right to authorise a person to do that act in relation to that layout or integrated circuit. #### 10 Making an eligible layout For the purposes of this Act: (a) a person who used a computer to make an eligible layout shall be taken to have made the layout; and (b) an eligible layout shall be taken to have been made when it was first fixed in a material form. #### 11 Originality Without otherwise limiting the meaning of the word original in this Act, a circuit layout shall be taken not to be original if: (a) its making involved no creative contribution by the maker; or (b) it was commonplace at the time it was made. #### 12 Licence of owner of EL rights For the purposes of this Act, an act shall be taken to have been done with the licence of the owner of EL rights if doing that act was authorised by a licence binding the owner. #### 13 Substantial part of eligible layout In this Act: (a) a reference to doing an act (other than making) in relation to an eligible layout includes a reference to doing that act in relation to a substantial part of the layout; (b) a reference to a copy of an eligible layout includes a reference to a copy of a substantial part of the layout; and (c) a reference to an integrated circuit made in accordance with an eligible layout includes a reference to an integrated circuit made in accordance with a substantial part of the layout. #### 14 References to all joint makers Subject to this Part, a reference in this Act to the maker of an eligible layout is, in relation to a jointly made eligible layout, a reference to all the makers of the layout, unless the contrary intention appears. #### 15 References to any one or more joint makers A reference in the definition of eligible layout in section 5 to the maker of an original circuit layout is, in relation to a jointly made eligible layout, a reference to any one or more of the makers of the layout. ## Part II—EL rights in eligible layouts ### Division 1—Ownership and nature of EL rights #### 16 Ownership of EL rights (1) Subject to this section, the person who makes an eligible layout is the first owner of the EL rights in it. (2) Where a layout is made by a person under the terms of his or her employment by another person under a contract of service or apprenticeship, that other person shall be taken to be the maker of the layout. (3) The application of subsection (2) to the EL rights in a particular eligible layout may be excluded or modified by agreement. (4) Where, before the commencement of Part II, a design applicable to an integrated circuit, or to part of an integrated circuit, or a design applicable to a mask used to make an integrated circuit, was registered under the Designs Act 1906, the owner (within the meaning of that Act) of the design shall, for the purposes of this Act, be taken to be the maker of the circuit layout for the integrated circuit, or the part of the integrated circuit, as the case requires. #### 17 Nature of EL rights The owner of the EL rights in an eligible layout has, during the protection period of the layout, the following exclusive rights: (a) to copy the layout, directly or indirectly, in a material form; (b) to make an integrated circuit in accordance with the layout or a copy of the layout; (c) to exploit the layout commercially in Australia. #### 18 EL rights to subsist without regard to makers who are not eligible persons Section 16 has effect, in relation to a jointly made eligible layout of which one or more (but not all) of the makers are not eligible persons, as if the layout had been made solely by the other maker or makers. ### Division 2—Infringement of EL rights #### 19 Infringement (1) Subject to this Act, the EL right in an eligible layout, being the right referred to in paragraph 17(a), is infringed by a person who, during the protection period of the layout and without the licence of the owner of that right, copies, or authorises the copying, of the layout in a material form. (2) Subject to this Act, the EL right in an eligible layout, being the right referred to in paragraph 17(b), is infringed by a person who, during the protection period of the layout and without the licence of the owner of that right, makes, or authorises the making of, an integrated circuit made in accordance with the layout. (3) Subject to this Act, the EL right in an eligible layout, being the right referred to in paragraph 17(c), is infringed by a person who, during the protection period of the layout, without the licence of the owner, commercially exploits, or authorises the commercial exploitation of, the layout in Australia if the person knows or ought reasonably to know, that he or she is not licensed by the owner of that right to do so. ### Division 3—Acts that are not infringements of EL rights #### 20 Innocent commercial exploitation (1) The EL rights in an eligible layout are not infringed by a person who commercially exploits, or authorises the commercial exploitation of, an unauthorised integrated circuit in Australia, being a circuit made in accordance with the layout, if, at the time when the person acquired the circuit, the person did not know, and could not reasonably be expected to have known, that the circuit was unauthorised. (2) Where a person referred to in subsection (1) becomes aware, or could reasonably be expected to have become aware, that the integrated circuit is unauthorised, that subsection ceases to apply to any subsequent commercial exploitation of the circuit, unless the person pays to the owner or exclusive licensee of the EL rights in the layout such equitable remuneration as is agreed, or as is determined by a method agreed, between the person and the owner or exclusive licensee or, in default of agreement, as is determined by the Federal Court of Australia on application made by either of them. (3) In this section: > unauthorised, in relation to an integrated circuit made in accordance with an eligible layout, means made without the licence of the owner of the EL rights in the layout. #### 21 Copying for private use (1) The EL rights in an eligible layout are not infringed by making: (a) a copy or copies of the layout; or (b) an integrated circuit in accordance with the layout or with a copy of the layout; for the private use of the person who does the making. (2) A copy of an eligible layout, or an integrated circuit made in accordance with an eligible layout or with a copy of such a layout, shall not be taken to have been made for the private use of a person if the copy or integrated circuit, as the case may be, is commercially exploited or distributed otherwise than by way of trade to an extent that will prejudice the interests of the owner of the EL rights in the layout. #### 22 Copying for research or teaching purposes The EL rights in an eligible layout are not infringed by making a copy or copies of the layout, or by making an integrated circuit in accordance with the layout or with a copy of the layout, for research or teaching purposes. #### 23 Evaluation or analysis (1) The EL rights in an eligible layout are not infringed: (a) by making a copy or copies of the layout for the purpose of evaluating or analysing the layout; (b) by making an original circuit layout based on an evaluation or analysis carried out with the use of a copy or copies referred to in paragraph (a); (c) by making an integrated circuit in accordance with an original circuit layout referred to in paragraph (b); or (d) by copying or commercially exploiting in Australia an original circuit layout referred to in paragraph (b). (2) The EL rights in an eligible layout are not infringed: (a) by making an integrated circuit in accordance with the layout, or with a copy of the layout, for the purpose of evaluating or analysing the layout; or (b) by making an original circuit layout based on an evaluation or analysis carried out with the use of an integrated circuit referred to in paragraph (a); or (c) by making an integrated circuit in accordance with an original circuit layout referred to in paragraph (b); or (d) by copying or commercially exploiting in Australia an original circuit layout referred to in paragraph (b). #### 24 Commercial exploitation of eligible layouts previously exploited under licence (1) Where: (a) an eligible layout is commercially exploited, whether in Australia or elsewhere, by, or with the licence of, the owner of the EL rights in the layout; and (b) a person acquires a copy of the layout, or an integrated circuit made in accordance with the layout, as a result of that commercial exploitation; it is not an infringement of the EL rights in the layout if the person commercially exploits the copy or the integrated circuit in Australia. (2) In spite of section 37 of the Copyright Act 1968 and section 38 of that Act to the extent that section 38 applies to imported articles, where the commercial exploitation of an integrated circuit containing a copy or adaptation of a work (being an integrated circuit made in accordance with an eligible layout) is not, under this section, an infringement of the EL rights in the layout, that commercial exploitation is not an infringement of the copyright in that work unless the making of that copy or adaptation was an infringement of that copyright. (3) Expressions used in subsection (2) that are used and defined in the Copyright Act 1968 have the same respective meanings in that subsection as they have in that Act. #### 25 Use for purposes of defence or security (1) An act done by the Commonwealth, or by a person authorised in writing by the Commonwealth, in relation to an eligible layout is not an infringement of the EL rights in the layout if: (a) the act is for the defence or security of Australia; and (b) the Commonwealth, or the authorised person, as the case may be, has unsuccessfully taken all reasonable steps to obtain the licence of the owner of the EL rights, on reasonable terms, to do the act. (2) An authorisation may be given before or after the acts in respect of which it is given have been done. (3) Where an act has been done under subsection (1) in relation to an eligible layout, the Commonwealth shall as soon as practicable inform the owner of the EL rights in the layout that the act has been done and give the owner such information about the doing of the act as the owner from time to time requires, unless informing the owner or disclosing the information would, or might reasonably be expected to, cause damage to the defence or security of Australia. (4) Where an act has been done under subsection (1) in relation to an eligible layout, the terms for the doing of the act are such terms as are, whether before or after the act is done, agreed, or determined by a method agreed, between the Commonwealth and the owner of the EL rights or, in default of agreement, as are determined by the Federal Court of Australia on the application of either of them. (5) Where an article is sold and the sale is, under subsection (1), not an infringement of EL rights, the purchaser of the article, and a person claiming through the purchaser, is entitled to deal with the article as if the Commonwealth were the owner of the EL rights. (6) An act done under subsection (1) in relation to an eligible layout shall not be taken into account in calculating the protection period of the layout. (7) Where an exclusive licence is in force in relation to any EL right, this section has effect as if references to the owner of the EL right were references to the exclusive licensee. ## Part III—Remedies for infringements of El rights ### Division 1—Preliminary #### 26 Application of Part to counterclaims In the application of this Part in relation to a counterclaim, references to the plaintiff and to the defendant shall be read as references to the defendant and to the plaintiff, respectively. ### Division 2—Actions by owner of EL rights #### 27 Actions for infringement (1) Subject to this Act, the owner of EL rights may bring an action for an infringement of those rights. (2) Subject to this Act, the relief that a court may grant in an action for infringement of EL rights includes an injunction (subject to such terms, if any, as the court thinks fit) and either damages or an account of profits. (3) Where, in an action for an infringement of EL rights, it is established that an infringement was committed but that, at the time of the infringement, the defendant was not aware, and had no reasonable grounds for suspecting, that the act constituting the infringement was an infringement, the plaintiff is not entitled to any damages against the defendant in respect of the infringement but is entitled to an account of profits in respect of the infringement, whether any other relief is granted or not. (4) Where, in an action for infringement of EL rights: (a) an infringement is established; and (b) the court is satisfied that it is proper to do so, having regard to: (i) the flagrancy of the infringement; (ii) any benefit shown to have accrued to the defendant because of the infringement; and (iii) all other relevant matters; the court may, in assessing damages for the infringement, award such additional damages as it considers appropriate in the circumstances. #### 28 Limitation of actions An action shall not be brought for an infringement of EL rights after the end of 6 years after the day when the infringement took place. ### Division 3—Proceedings where EL rights subject to exclusive licence #### 29 Application This Division applies to proceedings in relation to any EL right in respect of which an exclusive licence has been granted and is in force at the time of the events to which the proceedings relate. #### 30 Rights of exclusive licensee Subject to this Division, the exclusive licensee has the same rights of action as he or she would have, and is entitled to the same remedies as he or she would be entitled to, under section 27 if he or she were the owner of the EL rights but: (a) is not entitled to exercise those rights against the owner of the EL rights; and (b) those rights and remedies are concurrent with the rights and remedies of the owner of the EL rights under that section. #### 31 Joinder of owner or exclusive licensee as a party (1) Where: (a) an action is brought by the owner of the EL rights, or by the exclusive licensee, under section 27; and (b) the action relates, wholly or partly, to an infringement in respect of which the owner and the licensee have concurrent rights of action under that section; the owner or licensee, as the case may be, is not entitled, except with the leave of the court, to proceed with the action, in so far as it relates to that infringement, unless the licensee or owner, respectively, is joined as a plaintiff in the action or added as a defendant. (2) This section does not affect the granting of an interlocutory injunction on the application of the owner of the EL rights or the exclusive licensee. #### 32 Defences available against exclusive licensee In an action under section 27 by the exclusive licensee, a defence under this Act that would have been available to a defendant in the action if the action had been brought by the owner of the EL rights is available to that defendant against the exclusive licensee. #### 33 Assessment of damages where exclusive licence granted Where an action to which section 31 applies is brought and the owner of the EL rights and the exclusive licensee are not both plaintiffs in the action, the court, in assessing damages in respect of an infringement of a kind referred to in that section, shall: (a) if the plaintiff is the exclusive licensee‑take into account any liabilities to which the licence is subject; and (b) whether the plaintiff is the owner of the EL rights or the exclusive licensee‑take into account any pecuniary remedy already awarded to the other party under section 27 in respect of that infringement, or any right of action exercisable by the other party under that section in respect of that infringement. #### 34 Apportionment of profits between owner and exclusive licensee Where: (a) an action under section 27 relates, wholly or partly, to an infringement in respect of which the owner of the EL rights and the exclusive licensee have concurrent rights of action under that section (whether or not they are both parties); and (b) an account of profits is directed to be taken in respect of that infringement in that action; the court shall, subject to any agreement of which it is aware by which the application of those profits is determined as between the owner of the EL rights and the exclusive licensee, apportion the profits between them in such manner as it considers just and shall give such directions as it considers appropriate for giving effect to that apportionment. #### 35 Separate actions in relation to the same infringement In an action under section 27 brought by the owner of the EL rights or by the exclusive licensee: (a) a judgment or order for the payment of damages in respect of an infringement of those rights shall not be given or made if a final judgment or order has been given or made in favour of the other party directing an account of profits under that section in respect of the same infringement; and (b) a judgment or order for an account of profits in respect of an infringement of those rights shall not be given or made if a final judgment or order has been given or made in favour of the other party awarding damages or directing an account of profits under that section in respect of the same infringement. #### 36 Liability for costs Where, in an action to which section 31 applies, whether brought by the owner of the EL rights or by the exclusive licensee, the other party is not joined as a plaintiff (either at the commencement of the action or at a later time), but is added as a defendant, the other party is not liable for any costs in the action unless he or she enters an appearance and takes part in the proceedings. ### Division 4—Proof of facts in actions #### 37 Presumptions as to subsistence and ownership of EL rights In an action under section 27: (a) EL rights shall be presumed to subsist in the circuit layout to which the action relates if the defendant does not put in issue the question whether those rights subsist in the layout; and (b) where EL rights subsist in the layout‑the plaintiff shall be presumed to be the owner of the rights if he or she claims to be the owner of the rights and the defendant does not put in issue the question of ownership. #### 38 Affidavit evidence (1) In an action under section 27, proof of either or both of the following matters may be given by affidavit: (a) the subsistence, at a particular time, of EL rights in the circuit layout to which the action relates; (b) the ownership, at a particular time, of the EL rights in that layout. (2) If a party to an action requires in good faith that a person who made an affidavit referred to in subsection (1) that is proposed to be used in the action be cross‑examined with respect to the matters in the affidavit, the affidavit may not be used in the action unless the person appears as a witness for such cross‑examination or the court, in its discretion, permits the affidavit to be used without the person’s so appearing. #### 39 Evidentiary labels (1) If, at the time when an eligible layout, a copy of an eligible layout, an integrated circuit made in accordance with an eligible layout or an article in which such an integrated circuit is incorporated was first imported or distributed by way of trade, the layout, the copy, the integrated circuit or a package containing it, or the article bore a prescribed label or mark, the fact that it bore the label or mark at that time is prima facie evidence, in an action under section 27 relating to the layout, that any person dealing at or after that time with the layout, the copy or the integrated circuit, as the case may be, has been notified of the subsistence of EL rights in the layout. (2) In subsection (1): > distributed by way of trade includes sold, let for hire, or offered or exposed for sale or hire or other distribution by way of trade. > imported means imported into Australia for the purpose of distribution by way of trade. > prescribed label or mark means a label or mark: (a) that was affixed to the eligible layout, the copy of the eligible layout, the integrated circuit made in accordance with an eligible layout or the package containing it, or the article in which such an integrated circuit is incorporated so as to be reasonably apparent to a person dealing with the layout, the copy or the integrated circuit, as the case may be; and (b) bearing a statement: (i) to the effect that EL rights subsist in the layout; (ii) specifying the country and the year in which the layout was first commercially exploited; and (iii) specifying the maker of the layout. ### Division 5—Jurisdiction and appeals #### 40 Exercise of jurisdiction The jurisdiction of the Supreme Court of a State or Territory in an action under this Part shall be exercised by a single judge of the Court. #### 41 Appeals (1) Subject to subsection (2), a decision of a court of a State or Territory (however constituted) under this Part is final and conclusive. (2) An appeal lies from a decision of a court of a State or Territory under this Part: (a) to the Federal Court of Australia; or (b) by special leave of the High Court, to the High Court. ## Part IV—Miscellaneous #### 42 Eligible foreign countries A foreign country shall not be declared to be an eligible foreign country for the purposes of this Act unless: (a) it is a party to a convention relating to the protection of circuit layouts and: (i) Australia is also a party to the convention; or (ii) Australia, although not a party to the convention, has taken all necessary steps to become such a party; or (b) the Governor‑General is satisfied that, although the foreign country is not a party to such a convention, provision is or will be made under the law of that country under which adequate protection is or will be given to circuit layouts made by persons referred to in paragraph (a) or (b) of the definition of eligible person in section 5 and to circuit layouts first commercially exploited in Australia. #### 43 Limitation on power of courts to grant relief in proceedings under this Act Nothing in this Act authorises a court of a State or Territory to grant relief by way of injunction or account of profits if that court does not, apart from this Act, have power to grant such relief. #### 44 Prospective ownership of EL rights (1) Where, by an agreement made in relation to future EL rights and signed by or on behalf of the person who would, apart from this section, be the owner of the rights on their coming into existence, that person purports to assign the future EL rights (wholly or partly) to another person (in this subsection called the assignee), then the rights, on coming into existence, vest in the assignee or his or her successor in title by force of this subsection. (2) Where, at the time when an EL right comes into existence, the person who would be entitled to the right is dead, the right devolves as if, immediately before the person’s death, the person had been the owner of the right. (3) A licence granted in respect of future EL rights by the prospective owner of the rights binds each of his or her successors in title to the prospective interest in the right to the same extent as the licence was binding on the grantor. #### 45 Assignments and licences of EL rights (1) EL rights are personal property and, subject to this section, are transmissible by assignment, by will and by devolution by operation of law. (2) An assignment of EL rights may be limited in any way, including any one or more of the following ways: (a) so as to apply to one or more of the classes of acts that, by virtue of this Act, the owner of the EL rights has the exclusive right to do (including a class of acts that is not separately specified in this Act as being comprised in EL rights but falls within a class of acts that is so specified); (b) so as to apply to a place in, or a part of, Australia; (c) so as to apply to part of the protection period of the layout in which the EL rights subsist. (3) An assignment of EL rights (whether total or partial) does not have effect unless it is in writing signed by or on behalf of the assignor. (4) A licence granted in respect of an EL right by the owner of the right binds every successor in title to the interest in the right of the grantor of the licence to the same extent as the licence was binding on the grantor. #### 46 Groundless threats of legal proceedings (1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding in respect of an infringement of EL rights, then, whether or not the person making the threat is the owner of the EL rights, or an exclusive licensee, a person aggrieved may bring an action against the first‑mentioned person and may obtain a declaration to the effect that the threat is unjustifiable, and an injunction against the continuance of the threat, and may recover such damages (if any) as the person aggrieved has sustained, unless the first‑mentioned person satisfies the court that the acts in respect of which the action or proceeding was threatened constituted, or would constitute, an infringement of EL rights. (2) The mere notification of the existence of any EL right does not constitute a threat of an action or proceeding within the meaning of this section. (3) Nothing in this section renders a barrister or solicitor of the High Court, or of the Supreme Court of a State or Territory, liable to an action under this section in respect of an act done in his or her professional capacity on behalf of a client. (4) The defendant in an action under this section may apply, by way of counterclaim, for relief to which the defendant would be entitled in a separate action in respect of an infringement by the plaintiff of the EL rights to which the threat relates and, in any such case, the provisions of this Act with respect to an action for infringement of EL rights apply, with the necessary changes made, in relation to the action. #### 47 Jurisdiction of Federal Court of Australia Jurisdiction is conferred on the Federal Court of Australia with respect to actions under Part III and applications under sections 20 and 25. #### 48 Regulations The Governor‑General may make regulations, not inconsistent with this Act, prescribing all matters required or permitted by this Act to be prescribed for carrying out or giving effect to this Act.