Monday, 31 August 2009
Saturday, 29 August 2009
CPR 44.3 is the governing rule, and in SmithKline Beecham v Apotex  EWCA Civ 1703;  FSR 24 Jacob LJ explained how to apply it in a patent case. Costs should be estimated on an issue by issue basis so far as this was reasonable, but although this was fairer it was not an exact science. In paras 7 and 8 of his judgment in Monsanto v Cargill  EWHC 3113 (Pat) Pumfrey J explained further how the CPRs applied, including the important phrase: "the overall winner is likely (save in the most exceptional circumstances) to be entitled to payment of all his costs which are not or cannot be allocated to a particular issue".
The costs involved here were not insignicant. In fact, they show the wisdom of doing all one can to avoid being involved in patent litigation. The claimants had run up fees of £2.32 million. The defendants' professional fees were £3.65, with disbursements of £820,000.
The judge thought that the defendants had clearly come out overall winners. They had successfully seen off a challenge that would have closed down their business in the offending products in the UK, and disrupted it throughout Europe. They were entitled to their general costs. Both parties had conducted themselves in ways that caused the costs to escalate, but the judge thought they had not done so unreasonably and noted that this was a hard-fought case with a great deal at stake.
The claimants argued, odd though it may seem, that they won on the vast majority of issues. They lost on one infringement point and on insufficiency: but the insufficiency of their patent specification meant that they were dead in the water. The defendants said that the novelty and insufficiency arguments went hand in hand, in a classic "squeeze" - arguing that either the patent does not disclose the invention in sufficient detail to enable it to be worked, or if it does it lacks novelty or is obvious. In this case, it was reasonable to run the novelty and obviousness claims. The issues were sufficiently circumscribed to justify an issue-based approach, and the judge proceeded to apportion the costs on this basis.
It doesn't look like a startling judgment. The first defendant left the claimants' employment, taking with him a copy of a database of all their contacts, and set up a competing business. The case brought together claims for breach of confidence, infringement of database right and passing-off, so illustrating nicely how the same set of facts can support a range of claims. The first defendant, who represented himself (and also therefore the second defendant, his company) argued that in Vestergaard Frandsen A S v Bestnet Europe Ltd  EWHC 1456 Arnold J had suggested that a defendant cannot be prevented from using formerly confidential information once it has lost its character of confidence: the judge took the view that, whatever Arnold J had said, it didn't apply in a case like this. The use of the confidential information, and the passing-off, continued right up to the moment that the defendants were ordered to stop, and it was therefore more like Crowson Fabrics Ltd v Rider & Ors  EWHC 3942 (Ch) - another Peter Smith J judgment, sadly not on BAILII.
A glance through the judgment will show you that the defendant didn't really have a leg to stand on, although the claim that he had (while still working for the claimants) sabotaged one of their events by not devoting the right effort to it was rejected. The claimants won hands down on everything else, and it leaves me wondering why the defendant even bothered to go to court. He didn't throw away money on legal representation in court (perhaps hoping that he'd be treated leniently), but he will presumably be facing a substantial costs order shortly.
Tuesday, 25 August 2009
I am also working on an IP podcast - "Lawcast", I prefer, but people might not understand so readily what it's about. It covers June, leaving a five-month gap that I might or might not fill since the initial one for December. The aim with this latest one is to get accreditation so listeners can get CPD points, which will make it a marketable commodity. I hope.
Thursday, 20 August 2009
Rather ironic, isn't it, that this should be the latest example of absolutism by a trade mark owner. Also ironic that the paper should confuse copyright and trade marks when the trade mark owner seems to be trying to make the trade mark do a copyright job. But the drinks company does have a meritorious argument, that confusion with a brand aimed at youngsters is not desirable.
And although the history of the radio station shows it's not very closely connected to the Virgin Group and hasn't been for some time (limited, I suppose, to a trade mark licence until last year), it also seems pertinent to ask what Virgin would do if someone launched Virgin Vodka.
Thursday, 13 August 2009
Is it really better that a court order is necessary? It's not something to go after lightly. If the matter is copyright infringement or defamation - and it will nearly always be one or the other - proceedings will have to be issued in the High Court, which is an expensive undertaking. Anyway, the whole drift of the Civil Procedure reforms ten or so years ago was to stop people bothering the courts so much, so requiring proceedings to be issued and a court order obtained is a giant step backwards, or perhaps forwards, depending on your point of view.
The plaintiff is Candian company, i4i Inc., so the choice of Texas as a forum for the litigation is odd, at first glance. But the Eastern District court is notorious as the court of preference for patent trolls - which some commentators say is what i4i is. (Others suggest it is a vehicle for a disgruntled Microsoft employee to seek revenge: I don't know, and I don't care enough to try to find out.) No-one seems to believe the patent can really be valid, and it seems pretty certain that the case will go the other way on appeal: a rare instance of the IT community rooting for Microsoft, although one might have more sympathy if Microsoft wasn't as addicted to software patents as it is. So, really, the story seems to be about the well-known deficiencies of teh US patent system especially as far as granting worthless software patents goes.
Wednesday, 5 August 2009
Tuesday, 4 August 2009
I’ll start by considering what happens in the EC system. The Office examines applications and sends a search report to the applicant and, after the application is published, letters to the owners of earlier Community trade marks identified in the search. However, the applicant does not get to hear about earlier national trade marks that might be an obstacle to his application. National search reports can be requested (at a fee of €144) but only 12 member States will oblige with one, and they do not include the UK, Ireland, Germany, France, Italy or the Benelux.
A two-month cooling-off period follows the service of the notice of opposition (once the Office has determined that the opposition is admissible), during which the parties may try to reach a settlement. If they can agree, perhaps on the basis of a reduced specification of goods or services in the application, the opposition is concluded and there is no award of costs (though it is possible that payment of costs will form part of the settlement). If the settlement is based on a restriction of the specification or withdrawal of the application, the opponent has the opposition fee refunded.
The applicant can demand that the opponent prove that they have used the trade mark in the past five years. Both national and Community trade marks would be liable to revocation if they have not been so used, so they are not a sound basis on which to found an opposition. A Community trade mark (according to the latest case law) has to be used in a substantial part of the Community, so use in only one Member State is probably not enough to support the registration.
If the opponent is able to show use only on some of the goods or services for which the trade mark is registered, the opposition will only be able to proceed in respect of those goods or services.
If the matter is not settled during the cooling-off period, it is determined by the Office on the basis of written submissions, although in rare cases oral proceedings are held. There is a formal process for exchange of observations, and the Opposition Division of the Office will consider these observations in making its determination. If the opposition is upheld, the application is rejected (wholly or in part). If the application is not rejected, it then proceeds to registration.
The CTM Regulation provides that all the costs of opposition proceedings will be borne by the losing party. If the opposition is partly successful, a proportion of the costs will be awarded. Compared with other forms of trade mark disputes, opposition proceedings before the Office are relatively cheap, and the costs of representation that may be awarded in opposition proceedings are €300, which is fairly modest. If the opposition succeeds, the opposition fee (€350) will also form part of the award.
You will find more information on the Office's website, here.
Monday, 3 August 2009
Sunday, 2 August 2009
I worry when I see the word "piracy" in this sort of context: there's a lot of it about, of course, but there's also a lot of exaggeration - in the same vein as "copyright theft". Sui generis protection for bullies? Doesn't sound like a positive step.
Saturday, 1 August 2009
In fact, Mr Fisher did not have it all his own way in the House of Lords. Their Lordships did not reinstate the third declaration entirely: they asked the parties for further submissions on the matter of whether Essex Music's rights had been validly assigned to Onward Music, which is however a bit of a sideshow.
The Court of Appeal's judgment had, their Lordships thought, been inconsistent. Lord Neuberger said that, granted that Mr Fisher originally owned 40 per cent of the musical copyright and had not been estopped from asserting it, there was no reason to deny him the right to seek an injunction or compensation for infringement of his copyright. The Court of Appeal had taken the view that, on equitable grounds, it should refuse to declare that the right existed because he should not be entitled to seek an injunction. Lord Neuberger said that if Mr Fisher applied for an injunction, it would be for the court to which the application was made to decide whether it would be oppressive, and he also made the point that the Court of Appeal would have denied him the opportunity to protect his 40 per cent copyright by obtaining an injunction against other infringers. Just because there was no threat that Procol Harum or Gary Brooker personally would use the copyright in a way that Mr Fisher might want to stop did not mean that he should not be able to stop others.
Lord Neuberger's opinion also made clear that there is no statutory time limit for bringing an action for infringement of copyright, which it is good to have confirmed - this is something that delegates on courses have asked me about in the past. Their Lordships also held that the respondents' reliance on the equitable doctrine of laches was irrelevant where what the claimant sought was a declaration relating to a property right - which is not equitable relief. Even if laches were relevant, Lord Neuberger said that the respondents would have to show acts during the period of delay that would mean the balance of justice justified refusing the relief. Here there were omissions, not acts.
Lady Hale's comment about delay had a little more to it: "As one of those people who do remember the sixties, I am glad that the author of that memorable organ part has at last achieved the recognition he deserves", she said. Am I wrong to think that lacks the impartiality that we expect from judges? Or are they entitled to stop being impartial when they have heard all the evidence? I suppose they have to, otherwise nothing would ever be decided. But I too am glad - though on the other hand, I think it right that Robert Godfrey should not be able to claim copyright in Mockingbird ... but that's another story.