CIRCUIT LAYOUTS ACT 1989 No. 28, 1989
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - TABLE OF PROVISIONS
TABLE OF PROVISIONS
PART I-PRELIMINARY
Section
1. Short title
2. Commencement
3. Extension to external Territories
4. Act binds the Crown
5. Interpretation
6. Residence not affected by temporary absence
7. Application to circuit layouts made before commencement
8. Commercial exploitation
9. Exclusive right
10. Making an eligible layout
11. Originality
12. Licence of owner of EL rights
13. Substantial part of eligible layout
14. References to all joint makers
15. References to any one or more joint makers
PART II-EL RIGHTS IN ELIGIBLE LAYOUTS
Division 1-Ownership and nature of EL rights
16. Ownership of EL rights
17. Nature of EL rights
18. EL rights to subsist without regard to makers who are not eligible
persons
Division 2-Infringement of EL rights
19. Infringement
Division 3-Acts that are not infringements of EL rights
20. Innocent commercial exploitation
21. Copying for private use
22. Copying for research or teaching purposes
23. Evaluation or analysis
24. Commercial exploitation of eligible layouts previously exploited
under
licence
25. Use for purposes of defence or security
PART III-REMEDIES FOR INFRINGEMENTS OF EL RIGHTS
Division 1-Preliminary
26. Application of Part to counterclaims
Division 2-Actions by owner of EL rights
27. Actions for infringement
28. Limitation of actions
Division 3-Proceedings where EL rights subject to exclusive
licence
29. Application
30. Rights of exclusive licensee
31. Joinder of owner or exclusive licensee as a party
32. Defences available against exclusive licensee
33. Assessment of damages where exclusive licence granted
34. Apportionment of profits between owner and exclusive licensee
35. Separate actions in relation to the same infringement
36. Liability for costs
Division 4-Proof of facts in actions
37. Presumptions as to subsistence and ownership of EL rights
38. Affidavit evidence
39. Evidentiary labels
Division 5-Jurisdiction and appeals
40. Exercise of jurisdiction
41. Appeals
PART IV-MISCELLANEOUS
42. Eligible foreign countries
43. Limitation on power of courts to grant relief in proceedings under
this
Act
44. Prospective ownership of EL rights
45. Assignments and licences of EL rights
46. Groundless threats of legal proceedings
47. Jurisdiction of Federal Court of Australia
48. Regulations
49. Consequential amendments of other Acts
SCHEDULE
CONSEQUENTIAL AMENDMENTS
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - LONG TITLE
An Act to provide for the protection of certain layouts for integrated
circuits, and for related purposes
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - PART I
PART I-PRELIMINARY
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 1
Short title
(Assented to 22 May1989)
1. This Act may be cited as the Circuit Layouts Act 1989.
(Minister's second reading speech made in-
House of Representatives on 3 November 1988
Senate on 28 November 1988)
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 2
Commencement
2. (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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 3
Extension to external Territories
3. This Act extends to every external Territory.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 4
Act binds the Crown
4. Subject to section 25, this Act binds the Crown.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 5
Interpretation
5. In this Act:
"action" means a proceeding of a civil nature between parties, and includes
a counterclaim;
"Australian protected person" has the same meaning as in regulation 5 of the
Australian Citizenship Regulations;
"circuit layout" means a plan comprising a two-dimensional 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, an Australian protected person 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 6
Residence not affected by temporary absence
6. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 7
Application to circuit layouts made before commencement
7. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 8
Commercial exploitation
8. (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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 9
Exclusive right
9. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 10
Making an eligible layout
10. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 11
Originality
11. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 12
Licence of owner of EL rights
12. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 13
Substantial part of eligible layout
13. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 14
References to all joint makers
14. Subject to this Division, 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 15
References to any one or more joint makers
15. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - PART II
PART II-EL RIGHTS IN ELIGIBLE LAYOUTS
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - DIVISION 1
Division 1-Ownership and nature of EL rights
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 16
Ownership of EL rights
16. (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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 17
Nature of EL rights
17. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 18
EL rights to subsist without regard to makers who are not eligible persons
18. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - DIVISION 2
Division 2-Infringement of EL rights
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 19
Infringement
19. (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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - DIVISION 3
Division 3-Acts that are not infringements of EL rights
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 20
Innocent commercial exploitation
20. (1) The EL rights in an eligible layout are not infringed by a person
who commercially exploits, or authorises the commercial exploitation of, the
layout in Australia if, at the time when the person acquired the layout, the
copy of the layout or the integrated circuit made in accordance with the
layout, as the case may be, the person did not know, and could not reasonably
be expected to have known, that EL rights subsisted in the layout.
(2) Where a person referred to in subsection (1) becomes aware, or could
reasonably be expected to have become aware, that EL rights subsist in the
layout, that subsection ceases to apply to any subsequent commercial
exploitation of the layout, unless the person pays to the owner or exclusive
licensee of those rights 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 21
Copying for private use
21. (1) The EL rights in an eligible layout are not infringed by making a
copy or copies of the layout for the private use of the person who makes the
copy or copies.
(2) A copy of an eligible layout shall not be taken to have been made for
the private use of a person if it is commercially exploited or if it is
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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 22
Copying for research or teaching purposes
22. The EL rights in an eligible layout are not infringed by making a copy
or copies of the layout for research or teaching purposes.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 23
Evaluation or analysis
23. 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).
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 24
Commercial exploitation of eligible layouts previously exploited under
licence
24. (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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 25
Use for purposes of defence or security
25. (1) An act done by the Commonwealth, or by a person authorised in
writing by the Commonwealth, in relation to an eligible layout for the defence
or security of Australia is not an infringement of the EL rights in the
layout.
(2) An authorisation may be given before or after the acts in respect of
which it is given have been done, and may be given to a person in spite of the
fact that the person has a licence granted by, or binding on, the owner of the
EL rights to do the acts.
(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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - PART III
PART III-REMEDIES FOR INFRINGEMENTS OF EL RIGHTS
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - DIVISION 1
Division 1-Preliminary
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 26
Application of Part to counterclaims
26. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - DIVISION 2
Division 2-Actions by owner of EL rights
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 27
Actions for infringement
27. (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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 28
Limitation of actions
28. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - DIVISION 3
Division 3-Proceedings where EL rights subject to exclusive licence
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 29
Application
29. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 30
Rights of exclusive licensee
30. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 31
Joinder of owner or exclusive licensee as a party
31. (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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 32
Defences available against exclusive licensee
32. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 33
Assessment of damages where exclusive licence granted
33. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 34
Apportionment of profits between owner and exclusive licensee
34. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 35
Separate actions in relation to the same infringement
35. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 36
Liability for costs
36. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - DIVISION 4
Division 4-Proof of facts in actions
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 37
Presumptions as to subsistence and ownership of EL rights
37. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 38
Affidavit evidence
38. (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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 39
Evidentiary labels
39. (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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - DIVISION 5
Division 5-Jurisdiction and appeals
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 40
Exercise of jurisdiction
40. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 41
Appeals
41. (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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - PART IV
PART IV-MISCELLANEOUS
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 42
Eligible foreign countries
42. 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 to which Australia is also 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 43
Limitation on power of courts to grant relief in proceedings under this Act
43. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 44
Prospective ownership of EL rights
44. (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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 45
Assignments and licences of EL rights
45. (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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 46
Groundless threats of legal proceedings
46. (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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 47
Jurisdiction of Federal Court of Australia
47. Jurisdiction is conferred on the Federal Court of Australia with respect
to actions under Part III and applications under sections 20 and 25.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 48
Regulations
48. 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.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SECT 49
Consequential amendments of other Acts
49. The Acts specified in the Schedule are amended as set out in the
Schedule.
CIRCUIT LAYOUTS ACT 1989 No. 28 of 1989 - SCHEDULE
SCHEDULE
Section 49
CONSEQUENTIAL AMENDMENTS
Copyright Act 1968
Subsection 10 (1) (definition of "artistic work"):
Add at the end of the definition after paragraph (c) "but does not include
a circuit layout within the meaning of the Circuit Layouts Act 1989".
Designs Act 1906
Subsection 4 (1) (definition of "article"):
Add at the end of the definition ", but does not include an integrated
circuit, or part of an integrated circuit, within the meaning of the Circuit
Layouts Act 1989, or a mask used to make such a circuit".
After section 6:
Insert the following section in Part I:
Certain registrations not to be renewed
"7. In spite of any other provision of this Act, where before the
commencement of Part II of the Circuit Layouts Act 1989 a design applicable
to an integrated circuit, or part of an integrated circuit, within the meaning
of
that Act, or a design applicable to a mask used to make such a circuit, was
registered under this Act, that registration shall not be renewed at any time
on or after that commencement.".
Trade Practices Act 1974
Subparagraph 51 (3) (a) (i):
Omit "or of a copyright", substitute ", of a copyright or of EL rights
within the meaning of the Circuit Layouts Act 1989,".
Subparagraph 51 (3) (a) (ii):
Omit "or of a copyright", substitute ", of a copyright or of such EL
rights,".
Subparagraph 51 (3) (a) (iv):
Omit "or" (last occurring).
Paragraph 51 (3) (a):
Add at the end of the paragraph the following word and subparagraph:
"; or (vi) the eligible layout in which the EL rights subsist.".