Patent wars heating up

Nowhere is intellectual property taking on the characteristics of an end in itself rather than a means to an end than in the mobile phone world. Enforcing patents must be taking as much time and effort as making the phones in the first place. Last week The Guardian reported another development, with IPCom (frequently cast as perhaps the biggest villain of the piece) taking action against retailers selling HTC smartphones in Germany. The report is impressively coherent for a newspaper: the author (Charles Arthur, the paper's technology editor) clearly knows more than a little about patent law. Most journalists would have made this into a story about copyright and trade marks too.

HTC said it knew nothing about any complaints against retailers and that the patent it is alleged to be infringing is in fact invalid. One good reason for having infringement and validity dealt with in the same court? Not in this case, it seems (though the principal remains) because the challenge to the patent takes the form of an opposition in the EPO, the outcome of which is expected on 24 April 2012. By which time an awful lot of HTC handsets will have been sold, or not.

Tougher data protection laws on the way

The European Commission has long been concerned about how Internet businesses treat personal data. Its proposals for a new data protection regulation (to replace the present directive and overcome the problems that arise from the need to transpose the rules into national law) are due to be published on 25 January. The Commission aims to give consumers the power to control the way their personal data are processed by companies, and to impose a bit more discipline on data controllers by introducing fines of 5% of global turnover for businesses who are found to be in breach of data protection laws.

The draft also proposes to introduce obligatory data protection officers for all public sector bodies and private sector bodies with more than 250 employees. The directive made that something that Member States could choose to have: Germany already had it when the directive came into force, hence its inclusion, but the UK government always said it would not be taking up the option. Now it seems it will have no choice - but what organisation of that size doesn't already have a data protection officer, even if they have a load of other responsibilities too?

Fair dealing as a user's right

In this fascinating post on his blog, Ariel Katz of the University of Toronto explains a number of facts about the fair dealing "exception" which have been lost to sight in the century since the Copyright Act 1911 received Royal Assent - on 16 December, a milestone that I was too preoccupied with other stuff to notice. I'll have to be more alert for the centenary of the 1956 Act.

I have been musing on intellectual property rights and corresponding obligations since at least yesterday, after something the IPKat said, and Ariel Katz's piece fits very neatly with that. Fair dealing as a user's right, not a mere exception to the owner's rights. This is how US and UK copyright laws came to diverge, then: this is the difference, exiguous as it might be, between fair dealing and fair use.

And what an excellent title for the piece.

Limiting Blackberrying to working hours

I was struck by this item from Automotive News: VW is going to ensure that having a BlackBerry does not intrude into its executives' private lives - by craftily ensuring that they shut off email at the end of the working day and start it up at the beginning of the next one. Isn't technology fantastic? Oh, to be able to survive without email being pushed at you all the time. My BB shuts off at 11 pm and starts up again at 6 am: I set it to do that, and I guess a VW executive could do the same - however, setting mine to shut down completely does mean that the phone doesn't ring either - not a bad thing in the middle of the night ...

Nervousness about access to licences stymied SAAB deal

Anyone with an interest in the automotive industry will have been watching with horrified fascination as SAAB moved inexorably towards bankruptcy. It had that sense of seeing a massive accident unfold in slow-motion. Various saviours were lined up, including latterly several Chinese companies: and it seems that SAAB's parent, of which a colleague once memorably remarked that he'd worked in the motor industry since General Motors was a corporal, was reluctant to let any of them have it because they would acquire licences to use GM technology. Here is the story on the Motor Trade Insider website, though it acknowledges that it came first from the BBC. Other media will no doubt have the same story.

A novel(ish) reason for a deal to fall through, and one that makes it even more regrettable that an innovative and long-established carmaker with an attractive line of products (I still have very fond memories of attending a SAAB day at Silverstone years ago, with Erik Carlsson and Barrie Williams as my chauffeurs in then-new 9000s) should have ended up as part of the GM behemoth in the first place. It has now ended in tears. It probably would have done anyway - but on the other hand an MG-style rescue might have been possible.

Penalties for breach of Data Protection Act

The Information Commissioner's Office has had the power to impose financial penalties (not fines) since April last year. Already there have been several examples of this new power being used. Now comes news of the biggest so far: on a local authority, for £130,000, for sending sensitive information about a child protection case to the wrong recipient. Unfortunately, data breaches don't come much worse than that (though there are plenty of examples that are about as bad, but different). The same authority had already had a formal warning from the ICO after to a similar breach. The ICO has also ordered that the authority's staff should be trained in the proper implementation of the authority’s data protection policy.

Do anything you want to do

The Internet is a highly democratic medium. Anyone can publish whatever they like, subject to the laws of libel, trade mark and copyright infringement, and trade descriptions (no longer under that evocative name), and other laws, none of which anyone can afford to enforce. Nor is there any quality control. Which is why you encounter rubbish like this:

For a trade mark to be successfully registered it must be a unique word or stylised word which is used to represent specific categories of goods or services.

The firm of solicitors who uttered that piece of nonsense should stick to doing whatever they do best, and not try to take trade mark work away from people who actually understand it. I am constantly appalled at the inaccurate material put out by lawyers trying to market themselves. In a rational world, prospective clients would reject that firm and seek out a lawyer with a more harmonious relationship with the English language, but that might assume critical faculties which our education system has not bothered to cultivate in its charges for many years.

It reminds me of an occasion, ten or twelve years ago now, when I took an unexpected call from my firm's professional indemnity insurers. They had received a claim from a high street firm which had applied to register a trade mark for a client: no search had been carried out, and when the application hit the rocks the client claimed against the solicitors. The insurers didn't know whether there was a hint of negligence in this, so enterprisingly they phoned someone they insured who might know. I was rather flattered. It all depended, I suggested, on the terms of the retainer: had they advised the client about searching? Certainly just because no search was carried out the solicitors could not automatically be said to be negligent - but it was a lesson to me in the importance of sticking to what you know. Given that I am doing an inordinate amount of employment law at present, it might be a lesson I ought to revisit, but it seems there's a firm of solicitors somewhere that needs to learn it too.

What does that sentence say? What's wrong with it? First, a trade mark cannot be unsuccessfully registered. Second, there are many signs that can be registered - successfully registered, indeed - other than words, stylised or otherwise, and certainly not necessarily unique. Are some little bits of patent law creeping in here? And third, even though a trade mark might be coming (as Mr Justice Floyd said in introducing a lecture I attended a few weeks ago) to resemble one of those multifunction tools one sees advertised in the Sunday supplements, I have never seen it suggested that a trade mark might be used to "represent specific categories of goods or services". Used to distinguish the sources of specific goods or services, yes, but if that is what the writer meant that is what the writer should have written. After all, using words to convey precisely one's meaning is the essential skill of the lawyer - isn't it? That, and knowing a bit of law.

Mitchell v British Broadcasting Corporation (BBC) [2011] EWPCC 42

Mitchell v British Broadcasting Corporation [2011] EWPCC 42 (21 December 2011) shows a couple of things that we knew already, though until someone like HHJ Birss QC tells us that they apply to the facts of a particular case there is enough uncertainty to justify playing the forensic lottery. Independent creation is always a defence to a copyright infringement action, and subconscious copying is extremely difficult to prove. In fact, I'd say impossible, except with the assistance of presumptions, which didn't help here. Mr Mitchell thought that the BBC had ripped off an idea he had for an animated TV series for children, and, more importantly because copyright could protect them, a group of characters he devised for it. 147 paragraphs later the judge held that they hadn't.

Word and/or phrase

Talking the other day to a former colleague and professional pedant (in the best sense of the word: indeed, there should be no bad sense of it) I bemoaned the use of the expression "and/or". Of course, he had a relevant quote, but he rattled it off so quickly that I missed it. I spent a few minutes in the Law Society Library subsequently trying to find what he had been talking about, and came up with some great material - but not what I was after ...

"... that befuddling, nameless thing, that Janus-faced verbal monstrosity, neither word nor phrase, the child of a brain of someone too lazy or too dull to express his precise meaning, or too dull to know what he did mean, now commonly used by lawyers in drafting legal documents, through carelessness or ignorance or as a cunning device to conceal rather than express meaning ..." Employers Mut. Liab. In.s Co. v Tollefsen, 263 N.W. 376, 377 (Wis. 1935), per Fowler J.

And (or or, or both):

"To our way of thinking the abominable invention and/or is as devoid of meaning as it is incapable of classification by the rules of grammar and syntax." American Gen. Ins. Co. v Webster, 118 SW 2d 1082, 1084 (Tex. Civ. App. Beaumont, 1936) per Combs J.

Excellent stuff. The American courts always get there first, and usually say it very well. There are instances over there of statutes being struck down for uncertainty because of their use of the monstrosity. All I found from the English courts - all that merited repeating, anyway - was Lord Reid in John G Stein & Co v O'Hanlon [1965] AC 890, saying that the expression was "not yet part of the English language". In fact, it could be argued - couldn't it? - that he was wrong, by the mere act of uttering it himself. But 21 years earlier Viscount Simon had formulated the most powerful denunciation of the usage - too strong, perhaps, for judicial repetition:

"... the bastard conjunction ... which has, I fear, become the commercial court's contribution to basic English."

Bonito v Fuerst Bros [1944] AC 75, which Robert directed me to after I asked him to repeat it. It's good to know that even with a world war in progress the then Lord Chancellor could find time to try to keep the language on the straight and narrow. A pity that his judgment isn't required reading in law schools.

Oh, and you'll find the sources explored at some, entertaining, length in Miscellany-At-Law by the great Sir Robert Megarry. A book that should be on the shelves of every lawyer - why have I never had a copy?

For anyone looking for a steer: the abomination can usually be replaced just with "or", and if necessary the formulation "A or B, or both" (or, I suppose, "any one or more of A, B and C") can be deployed without damaging the language, or offending a pedantic reader. And it will be clearer what is meant.

Court closes Norwich Pharmacal loophole

A Norwich Pharmacal application can be made to the court against innocent third parties to obtain information to enable proceedings to be brought against a wrongdoer. The original case, Norwich Pharmacal Company & Ors v Customs And Excise [1973] UKHL 6,  [1973] 3 WLR 164, [1973] FSR 365, [1973] 2 All ER 943, [1974] RPC 101, [1973] UKHL 6, [1974] AC 133 (26 June 1973) was about patent infringement. The principles laid down there were refined in the later case of Bankers Trust v Shapira [1980] 1 WLR 1275. The power of the court to make such orders was preserved in CPR 31.18.

The applicant for a Bankers Trust/Norwich Pharmacal order must provide a collateral undertaking that they will only use the documents disclosed in the case for the purposes of that litigation. This is covered by CPR 31.22.

Until now there has been no reported case on the interaction between the collateral undertaking and the use in subsequent proceedings of documents which were obtained from a third party following a Norwich Pharmacal application. The leading textbooks disagree on whether the collateral undertaking applied in Norwich Pharmacal cases.

Now, in Shlaimoun & Infina Fund v Mining Technologies (Queen's Bench Division, 13 December 2011, not yet on BAILII) Mr Justice Coulson has found that the collateral undertaking does apply but, when it makes a Norwich Pharmacal order, the court is implicitly giving permission to the applicant to make use of the documents in subsequent proceedings.

CJ Jones Solicitors LLP acted for Mining Technologies and instructed Charles Douthwaite of 4 New Square. Thanks to Chris Jones for a copy of the judgment and this note.

What to do with a redundant definition in your document?

Although it's a case involving banking documents, Rayford Homes Ltd v Bank of Scotland Plc and Anor [2011] EWHC 1948 (Ch) (23 July 2011) raises points of more general application. It concerned a strange situation: there was an unused definition (of the expression "BoS Priority") in a document that had been based on the bank's standard form, and it should have had a number inserted to give it any meaning anyway. What was the court to make of it?

The correct thing to do is to adopt the "Chartbrook approach", after Chartbrook Ltd v Persimmon Homes Ltd [2009] AC 1101: "there is not, so to speak, a limit to the amount of red ink or verbal rearrangement or correction which the court is allowed. All that is required is that it should be clear that something has gone wrong with the language and that it should be clear what a reasonable person would have understood the parties to have meant" (per Lord Hoffmann). The purpose of the definition, even without a connection to an operative provision in the agreement, was clear enough, and the later insertion (by the bank) of a figure in the space provided. It looked as if it limited the bank's priority to the amount stated, although the bank argued that it didn't because the definition wasn't actually used in a provision of the loan agreement. Not a very attractive argument when it was the bank that had, first of all, deleted the provision which the definition should have been connected to, and second, inserted a figure that placed a limit on its own priority. And adopting a Chartbrook approach the court took the view that the bank was indeed bound by what it had written into the definition. The fact that all that was needed to give the definition effect was to add a few words to an operative provision was not determinative, but it seems to me that it indicates that little ink would be needed to make the agreement work as it looked as if it should work.

Hodgson v Isaac: how to show copyright infringement

In Hodgson & Anor v Isaac & Anor [2010] EWPCC 37 (5 December 2011) HHJ Birss QC had to compare the claimant's book against the defendants' film script. If the book had been fictional, the matter would have been quite easy to decide: there would either have been copying, or there wouldn't, and we could then go on to consider exciting issues of whether taking facts only amounted to an infringement. But here the book was Mr Hodgson's biography, which Mr Isaac had not read: however, he had heard that history from Mr Hodgson's own mouth.

Interestingly, Mr Isaac offered to submit to arbitration by the Writers' Guild to determine the question of copyright infringement. An appropriate order was made by the court initially seised of the matter (Newcastle County Court) but the Guild said it was not equipped to carry out the task. (I wonder what the Society of Authors would say? I doubt they are any better equipped to carry it out - the expertise is there, as it probably is at the Guild, but not the time.)

So the judge compared them, and came to the conclusion that the screenplay reproduced a substantial part of the book. He considered plot, characters and incidents. Mr Isaac had had a copy of the book but claimed not to have read it. The judge took the view that there had been copying, and then that the defendant had taken a substantial part - a part in which the elements reproduced are the expression of the intellectual creation of their author, in line with the Court of Justice's judgment in Case C‑5/08, Infopaq.

Copying functions of computer program is not copyright infringement

That's supposed to be how the law always worked, and Pumphrey J said as much in his judgment in Navitaire v easyJet [2004] EWHC 1725 (Ch) (30 July 2004).  Advocate General Bot has now largely endorsed this approach in his opinion in Case C-406/10, SAS Institute v World Programming, a reference from the High Court (Arnold J, who posed eight very detailed questions) which has provided an invaluable and rather overdue opportunity for an explanation of how the earliest European Community effort in the field of copyright, the software directive, works."The functionalities of a computer program and the programming language are not eligible, as such, for copyright protection," he said. But the functionality of the program might be a substantial part of the copyright work, and it's a matter for the High Court to decide whether that's the case.

The program in suit emulates the software environment created by SAS, allowing programs written to operate in that environment to operate without it, using a much cheaper alternative. The software directive distinguishes copyright purposes between "ideas and principles which underlie any element of a computer program, including those which underlie its interfaces" and the expression of those ideas. Given the nature of the software in this case it would be hard to imagine a case which involved more "idea".

Advocate General Bot said that the possible workings of a computer program and the language used to create it is not in itself copyrightable because they constitute ideas without "concrete expression". Ideas on their own are not copyrightable.

The AG defined the functionality of a computer program as "the set of possibilities offered by a computer system, the actions specific to that program," going on:

In other words, the functionality of a computer program is the service which the user expects from it. In my view, the functionalities of a computer program cannot, as such, form the object of copyright protection under Article 1(1) of Directive 91/250. 

... Where a programmer decides to develop a computer program for airline ticket reservations, that software will contain a multitude of functionalities needed to make a booking. The computer program will have to be able, in turn, to find the flight requested by the user, check availability, book the seat, register the user’s details, take online payment details and, finally, edit the user’s electronic ticket. All of those functionalities, those actions, are dictated by a specific and limited purpose. In this, therefore, they are similar to an idea. It is therefore legitimate for computer programs to exist which offer the same functionalities.

There are, however, many means of achieving the concrete expression of those functionalities and it is those means which will be eligible for copyright protection. ... [C]reativity, skill and inventiveness manifest themselves in the way in which the program is drawn up, in its writing. The programmer uses formulae, algorithms which, as such, are excluded from copyright protection because they are the equivalent of the words by which the poet or the novelist creates his work of literature. However, the way in which all of these elements are arranged, like the style in which the computer program is written, will be likely to reflect the author’s own intellectual creation and therefore be eligible for protection.

Remarking that this was consistent with  the express purpose of the Directive, he went on:

To accept that a functionality of a computer program can be protected as such would amount to making it possible to monopolise ideas, to the detriment of technological progress and industrial development.

But then, in almost the next paragraph, he said:

In my view, as is the case with other works that may be protected by copyright, the fact of reproducing a substantial part of the expression of the functionalities of a computer program may constitute an infringement of copyright.

The distinction between ideas and expression is necessarily very nuanced, and reproducing the source code that expresses the functions of a computer program could infringe copyright. The Infopaq judgment (Case C‑5/08 [2009] ECR I-6569) tells us that parts of a work enjoy copyright protection, provided that they contain some of the elements which are the expression of the intellectual creation of the author of the work.  A computer program must be regarded as a literary work in its own right, so "the same analysis must be adopted in relation to the elements that constitute the expression of its author’s own intellectual creation".

The question of infringement concerns whether the reproduction is of "a substantial part of the expression of the functionalities of a computer program". This analysis takes no account of the "nature and extent of the skill, judgment and labour expended in devising the functionality of a computer program". The way that computer programs are written will determine whether they are protected by copyright: that's a matter of the degree of originality in the writing of the program. So copying the functions of a program is not infringement, but copying the expression of those functions might well be, according to the Advocate General (and, in due course, probably according to the Court): and the task of drawing the line, as it had to be, is left to the referring court. I wonder whether Arnold J feels he's got value for the effort he put in to posing the questions in the first place?