IP Unzipped is quintessentially IP

By Yasmin Churcher 

The first of a bi-annual series of IP training seminars for junior lawyers. The seminar was hosted by Rosie Burbidge and Arty Rajendra of Rouse Legal with input from Chris Aikens, a barrister from 11 South Square. The panel of three provided a gentle walk through the workings of the Patent County Court, what sort of cases predominantly are heard there, the costs ceiling, length of hearing (usually 1 day hearings) and the who presiding judges are.

From Rouse legal’s research over the period January 2012 to January 2013 of all PCC cases reported, 26% of all rights litigated were patent cases which incidentally are never combined with other IP rights. The type of business these cases came from included life sciences and consumer goods, with the majority from the field of technology. Infringement was found in 44% of cases; 36% of patents were revoked.

Copyright represented 22% of all rights litigated, with the majority of cases being represented by consumer goods; infringement was found in 90% of cases

Trade marks represented 18% of all rights litigated again the majority of cases were derived from the consumer goods business although one technology and one life science case was represented; infringement was held in 60% of cases.

Designs represented 13% of all cases litigated with the predominant number of cases being derived from the consumer goods sector. Infringement was found in all the cases.

Examples were also provided of representative patents (Unilever v SC Johnson: self-cleaning shower and Liversidge v Abbott: automatic medical injector), trade marks (Ghias (t/a Griller) v Ikram (t/a the Griller original), passing off (Lumos v Sweet Squared; W.S Foster & Son Ltd v Brooks Brothers UK Ltd; Allen v Redshaw), design (Gimex v The Chill Bag Company; Kohler Mira Ltd v Bristan Group Ltd) and copyrights (Abraham Moon v Thornber; Temple Island v New English Teas) in dispute to give an idea of the subject matter under scrutiny.

Much was packed into a short space of time but provided a flavour of good things to come. The company was well informed and congenial making for IP exchange of the best kind. We await with anticipation the next IP unzipped seminar.

Button Moon creator wins in PCC

Button Moon (Photo credit: Wikipedia)

The BBC reports that Ian Allen, the creator of the children's TV series Button Moon which entertained at least some of my daughters all those years ago, has won a copyright infringement case in the Patents County Court. In fact it was a passing off case too (as you might well guess after reading the BBC piece), decided by Miss Recorder Amanda Michaels last week. I wonder whether this is Amanda's first published judgment? The case is Allen v Redshaw [2013] EWPCC B1 (15 May 2013) and I don't think it contains anything groundbreaking. The mere fact that the BBC reported it on their website is reason enough to mention it here, though.

It turns out that it isn't her first published judgment: I find there are a couple in the same piece of litigation, Ghias (t/a Griller) v Ikram (t/a the Griller Original) & Ors [2012] EWPCC 4 (26 January 2012) and [2012] EWPCC 3 (24 January 2012).

Damages for unauthorised use of photographs

The Patents County Court nowadays has to have a clear idea about the amount of damages at stake in actions before it, so in Sheldon v Daybrook House Promotions Ltd [2013] EWPCC 26 (8 May 2013) it had to take an initial view about the value of a claim for a photograph of a couple of popular musicians together.  This would determine whether the case should remain on the small claims track or whether it should be allocated to the multi track.  The amount that the Court thought might be at stake would also have a significant bearing on the prospect of settlement.

The Claimant was a professional photographer, and in that capacity he had exclusive access to the tour bus on which the musicians were travelling.  The Defendant ran a nightclub and without permission it used the photograph on printed material, online advertisements and its Facebook page.  It said it would have expected to pay no more than a few hundred pounds for that but the Judge was unimpressed.  He took the view that it was irrelevant what the claimant would have paid, and what mattered was the Claimant’s evidence about the rates that he would normally charge for such a photograph.  On that basis he decided that if the Claimant succeeded the damages that would be awarded would amount to £5,682 – plus VAT, of course.

Collaboration agreements: who owns the IP?

Wilkinson v London Strategic Health Authority [2012] EWPCC 48 (14 November 2012) is a slightly tragic story of lost copyright, one that is repeated with (I guess) great frequency. It's all down to that modern disease, grabbing (or at least making a grab at) all the intellectual property that can be seen, whether it's needed or not.

The case turned on the construction of an agreement. The Health Authority contended that it gave them copyright in pre-existing works created by Dr Wilkinson, and not surprisingly she contended otherwise. HHJ Birss QC did not imply an assignment of copyright, but did imply a licence for the NHS to use the pre-existing materials, even in competition with Dr Wilkinson, which makes her (partial) victory in this case distinctly pyrric - and emphasises the crucial importance of getting the agreement right in the first place.

However, it is good to see that cases like this can get an airing these days, in the Patents County Court, the jurisdiction that should show the way forward for the European Union - which is resolutely going in a different direction. Read, and enjoy, this trenchant speech by Rt Hon Lord Justice Kitchin.