Downloading in the news

Downloading has been one of the main themes of the past few days - first with the Newzbin judgment, now with the government making new announcements about how the Digital Economy Act will work.

Twentieth Century Fox Film Corp. and Others v British Telecommunications Plc [2011] EWHC 1981 does not, you will observe, actually involve Newzbin. That's because after an earlier case Newzbin, an internet search facility dedicated to movies, did a spot of restructuring and reappeared outside the jurisdiction. For the copyright owners, it became a matter of going after the ISPs, the only people in the equation who they could bring to court.

As my good friend Jane Lambert, who at one stage represented Newzbin, has written the case up in some detail, I won't say it all again: her blog is here. Does this judgment solve the problem? Hardly. It seems to require the use of technology that is not yet available, which as another friend, Simon Halberstam of Kingsley Napley, notes is like declaring open season for a few months - everyone who feels moved to do so will be downloading illegal copies while they can. Simon asks why the movie industry can't work out how to use the technology, in the way that the record industry (what seems to be generally called the music industry, though I can't conceive of music, as opposed to recordings of it, as being an industrial product) has, and a good question that is too. The Internet is designed to be resilient, and it can be expected to evolve and circumvent restrictions.

Undaunted, the government has now told us that recipients of notices under the Digital Economy Act 2010 will have to stump up £20 if they want to appeal. They'll get it back if they succeed. Wow. Given how mass enforcement exercises like the one that got two Davenport Lyons partners (one no longer with the firm) fined and suspended from practice, and led to the demise of the absurdly trendily named ACS:Law, have shown just how inaccurate information about who is downloading what from the Internet, this looks like an most unwelcome imposition.

Construing patents: pretend the defendant had never been born

Convatec Ltd. & Ors v Smith & Nephew Healthcare Ltd & Ors [2011] EWHC 2039 (Pat) (27 July 2011) is a 185-paragraph blockbuster of a judgment of HHJ Birss QC, sitting in the Patents Court for a change. The case itself is a fairly straightforward infringement claim and invalidity counterclaim concerning wound dressings made from cellulose in various forms. There is a lot of consideration of wound dressing techniques and the construction of the claims of the claimants' patent - leading the judge to point out, as the IPKat notes, that it will not do to try to read the claims onto the defendant's product: "A patent is to be construed as if the infringer had never been born." (Nobel's Explosives Co. v Anderson (1894) 11 RPC 519.) Remarkably, Floyd J cited exactly the same principle (indirectly, given that he was quoting from Jacob LJ's judgment in Technip France's Patent [2004] RPC 46) in his judgment in Cephalon v Orchid & Mylan [2011] EWHC 1591 (Pat):

It is clear that one does not start with the alleged infringement, read the patent, and ask whether the patentee meant to cover it. But it is sometimes necessary to have regard to the infringement in order to identify the question which has to be asked on construction. In Technip France's Patent [2004] RPC 46 Jacob LJ put it in this way:

"Although it has often been said that the question of construction does not depend on the alleged infringement ("as if we had to construe it before the defendant was born") per Lord Esher M.R. in Nobel's Explosives Co. v Anderson (1894) 11 R.P.C. 519 at 523), questions of construction seldom arise in the abstract. That is why most sensible discussions of the meaning of language run on the general lines "does it mean this, or that, or the other?" Rather than the open-ended "what does it mean?"

I wonder whether I can encourage people to adopt the title "Man of the World Rule" for this principle - after the bleak but beautiful song by Peter Green?

Meltwater case upheld on appeal

The Newspaper Licensing Agency Ltd and Ors. v Meltwater Holding BV and Ors [2011] EWCA Civ 890 (27 July 2011) is an appeal from the judgment of Mrs Justice Proudman which I outlined here a while ago - November last year, indeed! Where does the time go? The Court of Appeal agreed almost entirely with her, the only difference being over the scope of the order to be made, which the Court considered should allow for the fact that some of the use made by the defendants of the claimants' material might not amount to an infringement of copyright.

The case asks whether a news aggregation service, and its clients, requires permission from the owners of copyright in the stories to which they are distributing links. The NLA had drawn up a new licence to cover this eventuality, but Meltwater's clients had shown little interest in taking one. The judge decided that members of the PRCA did require licences, despite arguments that the material reproduced was not of sufficient substance to amount to a literary work, that the use was fair dealing, that charging a second time for essentially the same act was unfair, and other things.

The first instance judgment explored the implications of Case 5/08, Infopaq in the Court of Justice, which had appeared to set some high standards for copyright protection under the information society directive - requiring that any literary work be the author's own intellectual creation. The Court of Appeal tells us that this refers to the origin of the material, not the level of originality required - which would be something like a novelty test. That, I think, is a shame, because a satisfyingly high originality test would be a great way to rein in excessive claims to copyright protection.

It's reported that Meltwater are contemplating an appeal to the Supreme Court.

Supreme Court holds Star Wars helmets not protected

Upholding, unsurprisingly, the conclusions of the lower courts, the Supreme Court (of the United Kingdom) held that there was no copyright in various artefacts made for the fourth Star Wars film, including in particular the Imperial stormtrooper helmet, in Lucaksfilms v Ainsworth [2011] UKSC 39 (summary here: judgment here) - the reinvented court's first foray into copyright law: indeed, its first foray into that area of law that we refer to as intellectual property law ...

However, they did differ from the Court of Appeal on the other question before them, namely whether claims under US copyright law were justiciable in the English courts. A careful analysis of the Rome Convention led the court to conclude that provided there is the necessary basis for in personam jurisdiction an English court could entertain a claim that acts committed outside the EU infringed US copyright law.

The crux of the copyright claim was that the helmet should be treated for copyright purposes as a sculpture, as in 4a in last weekend's Financial Times crossword perhaps. The Supreme Court explored the boundary between copyright and design protection, muddying the water a bit in the process, before coming to the conclusion that this was not a sculpture. The judge (Mann J) had found the helmets to be part costume, part prop, utilitarian articles that conveyed information about the characters. The necessary quality of artistic creation was lacking. The film was the work of art: the helmet was merely an element in the process of making the film.

Intrigued by ...

... the Beer (Amendment) Regulations 2011 (SI No 1795). How can legislation change a beverage? Or has it something to do with the memorable statement of a Commission official many years ago, in a lecture at the Law Society, that the Commission considered that bottled beer should be free? Sadly he was only talking abut tying restrictions ... But it turns out to be about excise duty, with a misleading title.

After the Hundred Years War - the War of the Roses

And it seems to have ended in a draw. A bit early to say, as I can't read 46 pages, 164 paragraphs, of a judgment that quickly, but cutting to the chase it looks like honours are pretty even. Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery) [2011] EWHC 1879 (Ch) (22 July 2011) is a trade mark infringement and passing off case. The protagonists are two Yorkshire breweries, Sam's being the oldest in the county (established in 1758, according to Wikipedia: now it might be more accurate to call the company Humphrey's for short, as Humphrey Smith is joint managing director, with his brother Oliver, and Humphrey seems to be the target of many critical comments) while Cropton (named after the village in which the brewery is located) is a relative newcomer having been established in 1984. Both make that once-rare thing, real ale, although I imagine that Sam (whose products I have found as far away as Seattle) makes considerably more of it.

Sam has a number of registered trade marks, one of which comprises a stylised white rose design, others of which include a white rose. Hardly a matter for surprise, in Yorkshire: for those unfamiliar with historic rivalries in the north of England (relatively speaking - we are talking about the area south of the Tees here) the white rose is the symbol of the House of York, and the red rose of the House of Lancaster. The Wars of the Roses speak volumes about the cordiality of relations between them.

These latter-day all-white Wars of the Roses erupted when Cropton began brewing two beers which clearly announced their Yorksire origins. There's Yorkshire Bitter, a bottled beer made for Marks & Spencer, and a draught and bottled beer which it called Yorkshire Warrior, profits from which go to the Yorkshire Regiment Benevolent Fund. All well and good - very commendable - but the white rose featured on both labels. The Warrior label incorporated the regimental colours of the Yorkshire Regiment, which - unsurprisingly - featured a white rose.

There was also a groundless threats claim or two.

Arnold J, who might justifiably be nicknamed Solomon after this effort, held that: 

i) Cropton Brewery has not infringed the Trade Mark by use of the Yorkshire Bitter label;
ii) Cropton Brewery has infringed the Trade Mark pursuant to Article 5(1)(b) by use of the Yorkshire Warrior label;
iii) Cropton Brewery has a defence in respect of its infringement of the Trade Mark by use of the Yorkshire Warrior label under Article 6(1)(b) in respect of the period to the end of October 2009, but not subsequently;
iv) Samuel Smith’s claim for passing off succeeds in relation to the Yorkshire Warrior label, but not the Yorkshire Bitter label;
v) The letter dated 10  December 2007 is an unjustifiable threat but Cropton Brewery is not “a person aggrieved” by it, while the letter dated 7 July 2010 is not a threat of infringement proceedings.

It all brings to mind an earlier - much earlier - trade mark case from the same part of the country: YORK TM [1982]. FSR 111, the last word (until the 1938 Act was repealed) on the unsuitability of geographical names as trade marks. Of course, a white rose might not be seen as a geographical indication, but this stylised design says "York" (House, city or county of) pretty clearly to a large number of people. A white rose is, at least, highly descriptive of anything connected with that part of the world, almost as much as the word - although there was no challenge to the validity of the key trade mark. Does this smack of absolutism - a trade mark bully trying to monopolise a sign that should be available for others to use too? Perhaps: and the excuse that the directors of a company have a duty to their shareholders to take advantage of what trade mark law offers doesn't apply here in quite the same way - in fact, the claimant is a private unlimited company.

The Yorkshire Bitter dispute was settled when Marks & Spencer agreed to change the label to remove the rose - which, when first approached by the claimant, they had argued was a very different white rose anyway. It was the claimant's first approach to M&S that was the first threat complained of. The Warrior dispute was decided by the fact that the defendant thought it had the permission needed to use the regimental badge - but the regiment itself had no authority to grant permission, so once that came out and the permission that had wrongly been given was withdrawn any further use became an infringement.

Well, still much to get out of reading this judgment - and I'll reassess the outcome: not as equal as I thought. Samuel Smith seems to have got just about everything it wanted in the litigation. In the court of public opinion, though, the comments I linked to above show that it has lost big time, and I'll certainly be choosing alternatives to their products in the future - as if that'll bother them.

TV Catch Up case for Luxembourg

It probably had to happen. ITV Broadcasting Ltd & Ors v TV Catch Up Ltd [2010] EWHC 3063 (Ch) (25 November 2010) (on an application to strike out, which was refused) has now been referred to the Court of Justice for a ruling on the meaning of "communication to the public" and whether streaming is a variety of that restricted act. That excellent service Out-Law has the story - read it there, while I write it up for the next podcast. But I will just mention that Out-Law tells us that the judge (Floyd J), who thinks that streaming is a form of communication to the public, is asking the Court of Justice whether he is right. Nicely put, but I doubt it's exactly how the expedition to Luxembourg is actually characterised.

Music royalties claim lives on

Wadsworth v Granada International Media Ltd and Granada Ventures Ltd [2011] EWPCC 20 is a judgment handed down on 9 June by HHJ Birss QC in the Patents County Court, involving the music from Space 1999, a TV series from the seventies, produced by Gerry and Sylvia Anderson in which nuclear waste stored on the far side of the moon explodes (on 13 September 1999) and sends the satellite hurtling off into space. What a ridiculous storyline ... Its transmission dates coincide pretty closely with my days as a full-time student, which explain why I never saw it, never even was aware of it until now as far as I can recall. Derek Wadsworth was a jazz musician and composer who wrote the music for some of the second series of Space 1999. He died in 2008 and his children were the claimants in this action.

Copyright in the music for the series was assigned to ATV Music, now part of the Sony empire. Mr Wadsworth was entitled to half the royalties earned by the publisher, which (with DVD releases and so on) should have been a substantial amount, but he felt he was receiving less than he should have had - perhaps a common condition among composers, as it is among authors, but not necessarily one that is without a remedy. He asked the publisher about it and they said they were handing over half of what they received, which meant that perhaps they were not being paid what was due to them. So a claim was issued against the company responsible for exploiting the programmes. The defendants applied to strike it out on the grounds that there was no privity of contract between Mr Wadsworth and them - his contract was with the publisher, which would therefore have been the party to pursue the payments.

In October 2008 the matter came before HH Judge Fysh QC, who made an order for disclosure of the licences entered into by the defendants, and Mr Wadsworth's solicitors raised a number of questions on the basis of this information by letter of 1 December that year. Two days later Mr Wadsworth died, and it was a couple of years before the court substituted his children as claimants. A case that has barely got started after four years is of course anathema to the Patents County Court, and the judge agreed with counsel for the claimants that the court had to grasp the nettle.

Regarding the strike out application, the judge considered there were two possibilities: either Granada had obtained clearance from the publisher before licensing the exploitation of the programmes, in which case there would be a pile of contracts somewhere, or it had failed to do so. The claimants contended that the defendants owed them a duty - referring to their having a beneficial interest in the copyright, which was clearly not the case, although they could be said to have an interest under the copyright - the right to half the royalties. The case was therefore firstly pleaded as a breach of a duty of care - in other words, it was a claim in negligence.

The second claim alleged a fiduciary duty, and the third that under the Contracts (Rights of Third Parties) Act 1999 the claimants could enforce contractual rights against the defendants.


On the basis of the judgment of the House of Lords in White v. Jones [1995] 2 AC 207 the judge rejected the argument that there was a duty of care, absent a special relationship between the parties. As for the contract point, it was not inconceivable that one or more of the pile of contracts (ones entered into since the 1999 Act came into force) could give the claimants the opportunity to take action against Granada, and accordingly the judge made a disclosure order - a Norwich Pharmacal order, designed to require the defendants to assist the claimants (Norwich Pharmacal Company & Ors v Customs And Excise [1973] UKHL 6 (26 June 1973)) - requiring those contracts to be produced. The fiduciary claim he also regarded as pretty unlikely, but not hopeless. So he left in two of the three claims, ordered disclosure, set a date for a case management conference, and urged (gently) the claimants to get their pleadings sorted out with a view to applying at the CMC to add Sony as a party, which he identified as the key to the claim.

There are some interesting points here about how to deal with a failure to pay the right royalties. I wonder why Sony were not added to the proceedings in the first place? Well, it seems they will be - although a lot of costs have presumably been thrown away getting to the present position.

Reading the judgment, I realise how impressed I have been with all the judgments rendered by Judge Birss since his appointment. They are extremely clearly expressed, thoughtful, helpful to the parties (where the parties deserve help) and, well, humane. Not that other judges don't achieve this too, but these PCC judgments really see to me to be exemplary.

Willy The Wizard struck out

The long-running - if "running" doesn't imply a degree of urgency that seems to have been completely lacking - claim that Harry Potter and the Goblet of Fire plagiarised a book with the banal title "Willy the Wizard" has been struck out after the claimant failed to make a payment to the court for security for the defendants' costs, which are already considerable. Guardian Law has the story, which suggests that the claim was doomed to failure and may have been nothing more than a publicity stunt. It sounds as if Willy the Wizard is a remarkably ordinary piece of work, an accusation that could hardly be levelled against Harry Potter - which seems to have popularised reading, and reading almost on a Tolstoyan scale, for a whole generation of children. And many adults, though I found insufficient in the first book to draw me in, unlike Philip Pullman's great trilogy.

Repair/replacement and trade marks

I covered Schütz (UK) Ltd v Werit (UK) Ltd [2010] EWHC 660 (Pat) (31 March 2010) in a podcast a long time ago, an interesting patent case raising questions about whether "cross-bottling" (not an act of enraged violence involving a glass container) amounted to an infringement of the patent that covered the plastic container in a metal cage. Werit, the bottle maker, won at first instance but lost on appeal [2011] EWCA Civ 303 (29 March 2011) and is now off to the Supreme Court. Schutz (UK) Ltd and Another v Delta Containers Ltd and Another [2011] EWHC 1173 (Pat) (5 May 2011) was a preliminary skirmish in the trade mark infringement and passing off case brought against the cross-bottler, the company that replaced the original bottles, an application for an adjournment to avoid the waste of resources that would inevitably happen if the trade mark case were decided one way then the patent case went the other way in the Supreme Court. The timetable for the trade mark case had been drawn up on the assumption that the patent case would have been disposed of by this stage, not on its way to another appeal - which would take a considerable time to resolve. But the judge (Kitchin J), as I mentioned in the May podcast, decided it was better to get on with the trial while people might still remember what the case was all about.

That has now happened, in Schütz (UK) Ltd and Another v Delta Containers Ltd and Another [2011] EWHC 1712 (Ch) (5 July 2011). Briggs J found there was infringement and passing off. Sorry, did that spoil the suspense for you? Well, this isn't supposed to be a thriller. Let's consider how he did that.

Schütz complained that Delta infringed their trade mark by selling the cross-bottled assemblies with Schütz trade marks on them. There were disclaimers, but Schütz argued that they didn't change matters. Schütz had registered UK and Community trade marks covering bottle and complete assembly. The judge considered that he had to apply an "average consumer" test, by which he did not mean consumers who occupied a position somewhere between the people who filled the containers and end users, but consumers who were "neither deficient in the requisite characteristics of being well informed, observant and circumspect, nor top performers in the demonstration of those characteristics."

Delta argued that end users are not consumers - to them, of course, the containers are merely a means to an end, and they want to consume the stuff inside. That was all very well, but the judge pointed out that if the container should fail it would be to the manufacturer of the device that the end user would direct his or her ire, and possible a complaint or claim. It would be Schütz that took the flak, even though the bottle might have been made by another and Delta might have put it in the cage. This "what if" question is the most interesting part of the judgment: it is not a simple matter. No-one would imagine that the contents of the container were anything to do with Schütz just because their trade mark appeared on the container, and the judge also distinguished the situation where a Pirelli tyre is fitted to a Ford vehicle. That does not suggest that the car was made by Pirelli, although the relative responsibilities of the manufacturers involved is no doubt better understood by the public in that situation.

The way the law deals with repairing and replacing others' products has been contentious for many years. This it seems to me is a sensible way to identify where the lines should be drawn in a dispute based on trade marks.

A slippery patent

Select Healthcare (UK) Ltd v Cromptons Healthcare Ltd & Anor [2011] EWHC 1830 (Pat) (15 July 2011) involved UK patent no 2 433 244 for a clever type of "slide sheet", which enables nurses easily to reposition patients. Proto-Magic owned the patent (which is brief to the point of being terse, as Mr Charrington comments (thanks!) and has a home-made look to it), Select claimed to be the exclusive UK licensee, and Cromptons were alleged to have infringed (and counterclaimed for revocation, naturally, on grounds of obviousness, insufficiency and added matter. The judge, Kitchin J, held the patent was invalid for obviousness, and not infringed anyway. The evidence of the experts showed that it was obvious to use pimples on the surface of the sheet to reduce friction, and the claimed invention was therefore obvious over the prior art. The insufficiency claim (which was by now redundant) was rejected by the judge and so was the added matter claim, but that did not matter.

The one claim that was in issue required a non-woven material with a pimpled finish on one side, coated with a low-friction material. The judge found that the material did not have anything that might be described as a pimpled finish, so although the coating was present the defendant's product did not fall within the claim.

The judge also found it unnecessary to decide whether there was an exclusive licence. However, he did express the view that the evidence supported Select's version of events, that it had the right to work the patent to the exclusion of all others - including the patentee. So had other parts of the judgment gone differently Proto Magic might have been in breach of the licence: but the patent was invalid and not infringed, so it didn't matter.

Second medical use patent not infringed by generic manufacturer

"Swiss Style Claims", as my Dictionary will tell you, were designed to overcome the exclusion in Article 52(4) the European Patent Convention of "methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body." The Swiss Federal Intellectual Property Office published Legal Advice (way back on 30 May 1984, reproduced by the EPO in OJ EPO 581) on the patentability of compounds used in the manufacture of a medicine for the treatment of a disease. Such claims have historically been encountered in "second medical use" situations (also defined in my Dictionary), where a compound used to treat condition A is found to work for condition B too. Sindinafel citrate is a good example: it is a vasodilator, a drug that has the effect of dilating the blood vessels which works by improving blood circulation, and was originally used to treat angina. A second medical use was spotted and it has been very successful under the brand name Viagra.

Swiss style claims became unnecessary after the revisions to the EPC in 2000, but because the patent in suit remained pending for so long the recent case of Ranbaxy (UK) Ltd. v AstraZeneca AB [2011] EWHC 1831 (Pat) (15 July 2011) required Kitchin J to interpret one. Ranbaxy wanted a declaration of non-infringement to clear the way to import a generic drug for treating gastric acid related conditions from India. The claim in question read:

The use of a magnesium salt of (-)-5-methoxy-2[[(4-methoxy-3,5-dimethyl-2-pyridinyl)methyl]sulfinyl]-1H-benzimidazole ((-)-omeprazole) with an optical purity of = 99.8% enantiomeric excess (e.e.) for the manufacture of a medicament for the inhibition of gastric acid secretion.

In Ranbaxy's product the compound was diluted by the addition of omeprazole racemate, so the optical purity in the drugs was not as high as the claim stipulated. The judge interpreted the claim, purposively, to be to the use of that compound with that level of purity. The specification did not mention any variation of the compound or adding other active ingredients, and as the claim was to a new therapeutic use of a medicament containing a known active compound, the medicament must contain that compound. A non-Swiss style claim might have been capable of a wider interpretation, but the form of the claim meant that it was strictly limited to the compound it stipulated. Ranbaxy got their declaration.

Bucks Fizz: dispute over group's name

It happens in the best of circles: members of a popular music combination have fallen out over the use of the name. The latest is Bucks Fizz, Eurovision winners in 1981 (a matter about which I will be respectful, in light of the result in 1997 and in particular the antecedents of the writer of the winning song that year) as a foursome, three of whom are still performing under the name "The Original Bucks Fizz" to the displeasure of the fourth, who has his own group which uses the name - and describes itself as "the official Bucks Fizz" - and importantly has the trade mark, or at least the owner of the trade mark (one of its members). (Between the two modern incarnations and the original there is not an apostrophe to be seen.) Oh, and neither will I be scathing about Bucks Fizz insofar as the lyrics to many of their songs were written by Pete Sinfield - unlikely as that might seem.

The Guardian reports that a Hearing Officer at the Intellectual Property Office (or The Original Patent Office, as it might be called) is seised of the matter (well, even Guardian Law didn't put it quite like that), a hearing has taken place and he will give his decision in a few weeks. It says that the trio's solicitor had told the hearing officer that there is a verbal agreement about the use of the name, but not whether it's a written verbal agreement or an oral one.

On the basis of the Saxon decision [2003] FSR 39 the name and goodwill would be assets of the partnership (a partnership at will, if not a formally constituted one) and would therefore be dealt with along with other partnership assets - though I don't know whether they were likely to be considered a partnership. There doesn't seem to be a sufficiently old Bucks Fizz company on the register, even a dissolved one - there's a Bucks Fizz Limited incorporated on 25 July 1997, a month after the trade mark application was filed, in the entertainment business, but that's 16 years too late really. Given that they were a manufactured band, a sort of musical SPV, it's reasonable to expect that the business structure received more attention than in most bands, so perhaps the ownership of the trade marks is clearer than usual. In any case, it's worth noting that a very similar dispute resulted in an injunction against an earlier spinoff back in the late 90s.

Summary judgment for trade mark infringement

Lewis v Client Connection Ltd. [2011] EWHC 1627 (Ch) (06 July 2011) is a case in which the the claimant, who runs a much-used website called "Money Saving Expert" sought summary judgment against the defendants who were trading as "Money Claiming Expert". The application for summary judgment was granted, though not under all heads.

Mr Lewis claimed three types of trade mark infringement, under section 10(1) (double identity), (2) (likelihood of confusion) and (3) (dilution) of the Act. The first was a little on the fanciful side, because it turned on the defendant's trading name being misheard when they cold-called (which was how they gathered business). There was a suggestion that their telephone agents were actually using the claimant's trade name, but either way this was not a suitable claim for summary judgment.

The second claim was another matter, though. Although there were witnesses who had clearly not been confused (the terms of their emails to Mr Lewis's business revealed that) actual confusion is not what is needed: only a likelihood of it happening has to be shown. The judge (Norris J) gave them summary judgment under that head.

He went on to say that he was satisfied, based on the number of people who visited the site, that money Saving Expert had a reputation sufficient for section 10(3) to apply, so he would also have been minded to give judgment in the claimant's favour under that heading too. But having given judgment on the basis of likelihood of confusion, there was no need to go on.

The judgment contains a brief and therefore handy review of the case law on identity between trade marks and on similarity and likelihood of confusion, and also the law on summary judgment, so it's worth a look - and not very long, either.

Recent High Court cases

Like painting the Forth Bridge was supposed to be, regular podcasting never ends. I'm not aiming to produce a podcast on the 1st of the month - it's better to allow a period for reflection - and anyway I have another regular, every-other-month, commitment now, which I have been working at this week. Two big chunks of work out of the way.

A glance at my feeds reader this evening reveals that the High Court is already piling the work on for the next edition of the podcast. Here are brief summaries of a few cases with links to the reports.

Ranbaxy (UK) Ltd v Astrazeneca AB [2011] EWHC 1831 (Pat) (15 July 2011) Patent - declaration of non-infringement (granted) and revocation - counterclaim for infringement (failed).

Select Healthcare (UK) Ltd v Cromptons Healthcare Ltd & Anor [2011] EWHC 1830 (Pat) (15 July 2011) Patent - infringement - exclusive licence - countercalim for revocation (obviousness, insufficiency and added matter) - held obvious, not infringed.

Lewis v Client Connection Ltd. [2011] EWHC 1627 (Ch) (06 July 2011) Trade marks - "Money Saving Expert" v "Money Claiming Expert" - application for summary judgment granted.

June Podcast

The June podcast is now online, covering (inter alia):

• The Court of Justice explains how to deal with levies on recording media in distance selling transactions 
• The High Court considers unregistered design right 
• The Court of Appeal upholds the Omega co-existence agreement, and 
• Champagne producers can’t get champagne.co.

If you'd like to subscribe, and get one hour a month CPD (for solicitors: different rules apply to IPReg and barristers) drop me an email!

L'Oréal v eBay: trade mark owners relieved

EBay, and other Internet businesses, have a much greater duty to trade mark owners than previously thought. Negligent failure to act, not just a positive act, can make them liable, according to the Court of Justice in Case C‑324/09, L'Oréal v eBay. The Court went on to say that national courts must be able not only to stop infringements but also to prevent future ones of the same kind.

The case was brought by L'Oréal, which distributes its products through a closed distribution network as is common in the fine fragrances sector. Sellers using eBay's electronic marketplace committed what L'Oréal said were trade mark infringements, and it sued eBay as well as some sellers. Another claim was that eBay had committed further infringements by purchasing keywords from paid Internet referral services (Google's AdWords being the main one) which corresponded to L'Oréal trade marks and which directed traffic to the infringers. L'Oréal argued that eBay's efforts to stop infringements were inadequate.

L'Oréal's claim was brought in the High Court of England and Wales. Arnold J referred a multiplicity of questions to Luxembourg. Advocate General Jääskinen gave his opinion last December, and now the Court has now given answers.

It starts by saying that there has to be a commercial activity - distinguished from a private activity by reference to the volume and frequency of sales - before there can be a trade mark infringement. Well, it has to be use in the course of trade, the directive is clear about that.

If the goods are offered for sale from outside the EU, infringements will be committed once it is clear that offers for sale and advertisements are directed at consumers in the EU. national courts have to assess on a case-by-case basis whether there are any relevant factors from which suggest that offers and advertisements on an online marketplace are directed to consumers in the EU. Where the seller is prepared to send the goods to will be one indication.

The operator of the marketplace does not itself use the marks: this reflects the logic of the AdWords judgment. Of course, it might do more than just enable its customers to display signs on the website in the course of their commercial activities, and leave itself open to action that way, but just providing the marketplace is not enough.

The operator of the marketplace might find itself in the liability zone if it plays an active role so that it has knowledge of or control over the date relating to the offers for sale. This might happen if it provides assistance which entails, for example, optimising the presentation of the online offers or promoting them. Then it will lose the exemption from liability given by EU law (specifically, the e-commerce directive) to online service providers.
Even where the operator has not played such an active role, it cannot rely on the exemption if it was aware of facts or circumstances on the basis of which a diligent economic operator should have realised that the online offers for sale were unlawful, and it fails to act promptly to remove the offending material from its website or disable access to it.

If the operator does not bring infringements committed by users of its service to an end, what orders can the courts make? The Court of Justice says that the operator can be ordered to take measures making it easier to identify the sellers, its customers, Personal data must be protected, but where the perpetrator is operating in the course of trade and not as a private individual (as they must be to commit an infringement) they have to be identifiable. That is a strange reading of the data protection directive, though the point that traders have to identify themselves on the Internet is an important safeguard in the e-commerce directive. So national courts must have the power to order the operator to take measures which contribute to preventing further infringements as well as dealing with infringements that have already been committed.

In the Google AdWords case, the Court did not hold Google responsible for what users of the service did - drawing an important line between the keyword and where it leads. The keyword might correspond to a trade mark, but the important question is whether the resulting sponsored link uses the trade mark or not. That's why Google is not liable, but why marketplace operators who help sellers or who know what the sellers are up to might be liable if the sellers are handling infringing goods.

Ford Sync patent action

From the company that broke the Selden patent: an interesting addition to the motor industry IP casebook in the making. Ford is being sued by Eagle Harbor Holdings, a small Washington State-based technology company, that claims the Ford Sync system infringes (infringes on, as they say in the States) its patents. The system enables users to control functions of the car using voice commands - how scary is that? - and has been fitted in millions of Ford cars in the US since 2007. The parties were in discussion as long ago as 2002, but seem now to have hit a brick wall.

Here is the story from Automotive News. Despite the "Holdings" part of the name, the company is a genuine practising entity, which is confirmed by the fact that it has issued proceedings in Federal Court in Tacoma, Wa, not the eastern district of Texas. You can read their press release about the matter here.

I hope they fare better than Selden did. He was eventually found to have obtained a patent over an improved version of the Otto engine, and his patent was declared invalid, Ford being the lead claimant in the action to get rid of the patent. I make no comment on the novelty of the Eagle Harbor patents, of course - and I will also forbear to comment on the social utility of inventions that might dilute the already limited connection between the driver and the vehicle. Not, of course, that this invention necessarily does so: but Federal regulators are already concerned about "driver distraction" and Ford Sync, and the complexity of the new improved "My Ford Touch" (a trade mark disaster in the making, perhaps) has caused Ford to drop down the J.D. Power Initial Quality Study, according to the AM story.

Trade mark invoice scams

Hat tip to the IPKat for drawing attention to a recent High Court case, London Borough of Croydon v Austin Hogarth [2011] EWHC 1126 (QB), 5 April 2011 (unreported and not available on BAILII), in which Judge Mackie held that Regulation 2(1) of the Business Protection from Misleading Marketing Regulations 2008 applied to a computer maintenance contract masquerading as a renewal notice. This could be the solution people have been looking for to all those dodgy trade mark notices demanding fees that look as if they have come from a registry somewhere. Go read the IPKat's posting - no point in me repeating the facts here.

Evidence in claims for breach of competition rules

It's long been open to anyone damaged by someone's breach of competition rules to claim damages, but there have been few cases of it happening. You'd think that if the competition authorities had found there was an illegal cartel, and had fined participants, it would be dead easy to get damages, but National Grid are currently demonstrating just how tricky it can be to adduce the necessary evidence. It's applied to the High Court to be given access to documents used in support of leniency applications. And the leniency deal (without which the authorities would have no chance of finding out about the existence of cartels) is a first past the post one: in contract terms, the second whistleblower is unable to give valuable consideration in return for immunity - the authorities already have the information. The result could be an unseemly rush to the Office of Fair Trading as soon as the cartel meeting is over ...

So, although it's not an IP case, this one will be worth watching. This report in The Guardian also makes the important point that prospective claimants are also likely to be concerned about the damage that pursuing a claim would do to commercial relationships. How much simpler life was when if someone ripped you off you didn't still need to be nice to them in future.

Postscript: Pfleiderer AG v Bundeskartellamt (Case C-360/09); [2011] WLR (D) 196 - ICLR summary says “A person adversely affected by an infringement of European Union competition law was not precluded by the provisions of that law from being granted access to documents relating to the leniency procedure for the purposes of bringing a civil action for damages.”

Can trade mark law be used to control criminal gangs?

It sounds like a silly question: trade mark law exists, almost, in a different universe from criminal laws against organised crime. Of course, there's a huge overlap especially in the area of counterfeiting, but the bright idea of the US law enforcement authorities to forfeit a trade mark used by a motorcycle gang called The Mongols and then sue members for infringement if they had the temerity to display it in public (reported on the Intellectual Property Brief blog) seems doomed to failure. Indeed, it might even be said that it deserves to fail. Trade marks (as IPB points out) are all about preventing confusion in the marketplace, so how can preventing someone using a distinctive sign help that? And anyone who is prepared to announce his membership of a gang (which is not as far as I can see an illegal organisation anyway) by wearing the insignia is unlikely to be worried about infringing a trade mark.

Another instance, perhaps, of someone ascribing magical powers to intellectual property - and an example of state-sponsored absolutism.

Website is copyright work

How websites are protected is a matter of speculation, or so I tell people. Obviously there might be several copyright works involved, and perhaps also database right (if that counts for anything). Now we have high-level confirmation that copyright will protect a website in France, with a decision of the Cour de Cassation reported by the Legalis.net blog. Vente-privee.com accused private-club of infringing copyright in the site architecture: the defendant argued that there was insufficient originality to sustain the claim, with which lower courts agreed but the Cour de Cassation did not. The matter has been remanded to the cour d'appel, Versailles.

Pursuing downloaders: sharing the proceeds

It's now several  months old but this piece from The Guardian reveals that ACS:Law took 40 per cent of the money received from recipients of threatening letters relating to downloads of music. For the adult movies it also handles claims for, the lawyers would retain even more. Interesting to know these figures.

New appointments to Court of Appeal

Mr Justice Kitchin will now be Lord Justice Kitchin (at least from October) and will presumably be taking over the role played so brilliantly by Lord Justice Jacob (as he was), looking after IP cases in the court. Full details are in this announcement which also reveals that Dame Anne Rafferty has been appointed too, from 5 July. Many years ago, when she was a practising barrister, if my memory serves, she gave a talk to a group of German criminal defence lawyers for whom, for reasons too complicated to go into, I organised a study visit to London. In addition, Lewison J become Lewison LJ.

How to cite a podcast

Obviously a matter of interest to me - and other legal podcasters. Rex Gradeless (Social Media Law Student) reports that the Blue Book would be addressing this in its 19th edition - which was due out in a week after he wrote the post, so by the time I have caught up with it has probably been out for a month.

19th? I am still going by the second-hand copy of the 14th that I picked up at that legendary institution, Shorey's bookstore in Seattle (once renowned as both the oldest bookstore west of the Mississippi River and "the world's largest antiquarian bookstore", probably my favourite shop in the world, which sadly closed in about 2000: see here for more from the superbly-named Post-Intelligencer - but seems to have reopened a few miles to the north) for $6 - copyright date 1986, formerly the property of Christensen O'Connor Johnson & Kindness. Out of date it might be, but it has served me well and will continue to do so - a pity more English lawyers don't use it - or more to the point the Oxford Standard for Citation Of Legal Authorities which surely ought to be more widely known about and which I am going to add to the links on this site immediately.

Particle size: it's obvious

I already mentioned Cephalon v Orchid & Mylan [2011] EWHC 1591 (Pat) in passing, but now I've looked at it you might like to know more. The interesting part is the bit that deals with validity: the infringement point seems to have turned on a pretty narrow construction point, and indeed the outcome was determined by some rather unfortunate claim drafting - so the judge said. But I'm not sure even the invalidity bit is so very interesting ...

It all came down to the size of particles (this being a pharmaceutical case), and whether it was obvious to use smaller particles of the active ingredient (modafinil) when making up the formulation. Conveniently, the matter was addressed in a publication called Drugs of the Future, and the judge was able to find that between that publication and the common general knowledge it was obvious to use smaller particles. It takes quite a few paragraphs of the judgment to get there, but it does seem fairly cut and dried. The judge didn't need to go on to consider obviousness over one particular piece of prior art, nor did he have to consider the insufficiency squeeze that the defendant tried to put on the patent. So perhaps not a judgment many people are going to find worth spending time studying.

Recent cases ...

A few new cases have popped up on that phenomenally useful service Bailii recently and deserve a brief mention pending mature consideration and commentary:

Cephalon Inc & Ors v Orchid Europe Ltd & Ors [2011] EWHC 1591 (Pat) (24 June 2011) is a judgment of Floyd J on patent infringement and (inevitably) validity. The challenges to the patents were based on lack of inventive step and insufficiency, and the judge held the claimant's three patents invalid. To make it worse for them (or perhaps it makes it a bit better?) the patents, had they been valid, would not have been infringed anyway.

Atrium Medical Corp & Anor v DSB Invest Holding SA [2011] EWHC 74 (Pat) (21 January 2011) has just appeared - an interesting case on the construction of a technology transfer agreement which I covered in my monthly podcast when it was news.

Then there are three Patents County Court cases:

• Temple Island Collection Ltd v New English Teas Ltd & Anor [2011] EWPCC 19 (22/06/2011) which is a copyright case. At the case management conference HHJ Birss was asked to allow amendments to the claim. He refused, saying that the amendment "does not satisfy a cost-benefit analysis." 
• Lenric C21 Ltd v Tesco Stores Ltd [2011] EWPCC 16 is a UKUDR case involving secondary infringement. The case was settled before trial, though not long before - so costs were important. The judge gave the defendant 70 per cent of its costs.
• Wuxi Suntech Power Company Ltd v Tittmann Solar GmbH [2011] EWPCC 17 is a trade mark infringement case. Judgment had been given in default and this was an application to set it aside. The defence amounted to saying that the bill of lading which showed that the infringing goods were being consigned to the defendant had been forged, which the judge was not prepared readily to believe - while noting that this was not what he had to do at this stage anyway. He set the judgment aside and gave the defendants leave to defend, while also making an order for security for costs against them. There's a more detailed note on Jane Lambert's NIPC blog here.

Bailii is in danger from lack of funding, so if you find it useful do support it!

Python

"You learn from a conglomeration of the incredible past - whatever experience gotten in any way whatsoever", according to Bob Dylan, quotes by whom I found myself searching out this morning in the hope of finding something inspirational - something as inspirational and uplifting as the rendition of My Back Pages from his 40th anniversary concert. Well, that seemed like a useful quote to remember, and when I found myself doing some more research this evening, into the Python programming language, I got some experience which I thought might be worth sharing. After all, the second most popular posting on my personal blog shares my experience of how to replace a Nissan Micra K11 water pump drive belt (the most-read one is about an Achilles heel injury, although it might be the Dylan song title I used for it that draws in the visitors).

If you want to know about the Python language itself, Wikipedia has what looks like a good article on it - though with Wikipedia, who knows? No warranties. What interested me was the licence: the original Python was incompatible with the GPL, apparently for the sole reason that it was governed by the laws of the State of Virginia. I assume that doesn't reflect at all on the laws of that particular state: merely that the GPL doesn't permit stipulations about governing law. In any event, the licence was modified to overcome this and the replacement, the Python Software Foundation License is compatible with it. The PSFL as it is familiarly known is a BSD-style, permissive free software license. What I found interesting is that it is not a copyleft licence: it permits modifications to the source code, as well as the construction of derivative works, without making the code open-source. So a program written in Python (of which Wikipedia lists many) isn't necessarily going to be open source just because it was created with open source tools.

Dutch court holds Bulgarian decision contrary to public policy

It sounds like it should be none of their business, but, as that Dutch IP oracle Nauta Dutilh (and in particular Prof Charles Gielen, who coincidentally acted for the successful party in this case) explain in an article on their website, it's very much the business of the Dutch court when considering whether the Brussels I Regulation applies. Because the Bulgarian court's judgment was contrary to public policy, it did not have to be recognised by the Dutch court.

For a court to hold a foreign court's judgment to be contrary to public policy is powerful stuff. The case concerned Johnny Walker whisky, placed on the market outside the EEA but confiscated in Bulgaria at the instance of Diageo, the trade mark owner. The Sofia district court, on the basis of an interpretation of the relevant law by the country's Supreme Court, held that the importation into the EEA of goods placed on the market outside the EEA with the trade mark owner's consent did not amount to an infringement. That's a view of the rules about exhaustion which is perhaps more archaic than novel. It's certainly surprising. Equally surprising is that five judges dissented. How many judges does the Bulgarian Supreme Court have, for goodness' sake? A lot, apparently, but I can't find its judgments on the web, although I have learned some useful Bulgarian words (and letters in its version of the Cyrillic alphabet: съд is transliterated as "sud", the vowel being my new letter: the word means "court". The Russian sounds the same but with the phonetically equivalent letter у in the middle).

Because the trade mark registrations were held by Diageo's Dutch subsidiary (not an uncommon situation, for tax reasons) the confiscatee brought proceedings in Amsterdam to recover damages. Diageo contended that the Sofia district court's judgment was contrary to public policy within the meaning of Article 34(1) of the Brussels I Regulation. The Supreme Court had gone against the Silhouette judgment (which also involved parallel imports and Bulgaria, though at that time it was not an EU Member State) and should have made a reference to the Court of Justice under Article 267 of the Treaty. The Supreme Court had violated a fundamental principle of EU constitutional law, so not only the district court's judgment but also the Supreme Court's interpretation on which it was based was contrary to public policy.

Rights in town design

A Chinese developer is creating a replica of Hallstadt, an Austrian town that is a popular tourist destination and a UNESCO World Heritage Site, and for which the word "picturesque" seems to be a colossal understatement, according to Chris MacDonough on the Washington College of Law blog (following a story in the Washington Post). Chris speculates about the position under intellectual property laws, and concludes that there's not much to be done about it. Maybe it's a case of imitation being the sincerest form of flattery.

Maybe there's a case for extending protection for geographical indications - not just to cover the situation where a producer pretends that his goods have come from somewhere else, but also where somewhere pretends to be somewhere else. But that wouldn't help - who's going to think they are in Austria when they are clearly in the ersatz Chinese version? There'll be no pretence involved. Trade mark infringement? Only if the Chinese were very unwise in what they call it. Copyright? Well, of course it subsists in works of architecture and in maps and plans - but a work of architecture is defined in terms of single structures, not entire settlements, and maps and plans can be created from measurements (which is what the developer seems to have done here, from the reports). Of course reproducing Hallstadt will necessarily involve copying the designs of individual buildings, but it sounds as if the architects have probably been dead for so long that even a bit of Disney-style lobbynomics isn't likely to help them. They probably did their work before town planning was thought up. So an interesting case study, but one that clearly points up the limitations of intellectual property laws. And it's a good thing too.

Forces muster against Lodsys

I wondered last month whether this NPE might have picked a fight it would come to regret, and this report from CNET suggests things are worse for Lodsys than they already were. It's not only Apple who are taking them on: crowdsourcer Article One Partners has offered a bounty of $5,000 for prior art fatal to any of three Lodsys patents - so some lucky bounty-hunter could land $15,000. Peer to patent at its best? It can't stop trolling (without prejudice to the question whether that's an accurate epithet for Lodsys) but it can certainly place some constraints on it. And that might be just as well, if the UK government's "Patent Box" tax-break scheme turns out to work as well for trolls as for innovators, which seems possible.

No escape from software patents

An impassioned plea for software to be made patentable, included in this report from ZDnet of a conference organised by the Westminster Legal Forum (never heard of it before). It's John Mitchell, the chairman of the SME Innovation Alliance, who's been heard on this subject before and whose position I find it hard to understand. Patents, a fortiori software patents, are playthings for big business: they enable them (should they wish to do so - and I don't mean to imply that they always do) to bully small businesses. Worse still, they lead to the worst excesses of trollery and it's small businesses that suffer from that rather than the large ones - though they are certainly not immune.

Mr Mitchell compares software to materials, like wood and paper, from which inventions may be made. That in itself does not justify allowing patents for it: no more than it justifies patents for wood or paper. What patents can rightly be granted for are the inventions that are made using the software. And that's exactly what the UK and European patent systems strive to do, without crossing the line and granting patents for pure software (which as one comment on the ZDnet story points out is nothing but mathematics). The trouble is that it's a difficult boundary to map, and the UK Patent Office and the EPO have drawn it in slightly different places. A problem, but not the problem that people seem to be arguing about. Both systems seem to me to look for a technical effect that lies outside the fields excluded from patentability by the relevant legislation, although they express this search in different ways. And, excluding a few die-hard anti-patent lobbyists (but a growing number: software and business methods patents bring the whole patent system into disrepute), that seems to be the attitude of most people, outside the USA at least. Including Marty Goetz, another commenter on the ZDnet story, and probably Mr Mitchell too. And certainly Prof Hargreaves, whose recommendations on this point seem spot on.

Co-existence agreements and trade mark classification

Omega SA v Omega Engineering Incorporated [2011] EWCA Civ 645, 27 May 2011 concerns the interpretation of a co-existence agreement - the sort of thing we encounter all the time in trade marks practice, especially in these days of more-or-less spurious oppositions. Nothing spurious about this case, though: it's a dispute that has been rumbling on for a long, long time. Almost another Hundred Years War - well, not really, because it only kicked off in 1984.

At first instance ([2010] EWHC 1211 (Ch)) Arnold J upheld the agreement, siding with the US company and rejecting the opposition from the Swiss watchmaker. The Court of Appeal (Mummery LJ giving the leading judgment, with which Black LJ and Sir John Chadwick agreed) concurred with him. The agreement did not (as the Swiss argued) restrict the Americans to class 9, so that they (Omega SA) were entitled to oppose an application in class 14. The agreement, not surprisingly, was concerned with demarcating the goods on which each party could use the trade marks, not with matters of classification. The agreement did not mention class 9 or class 14, or indeed say anything about classes: the appellants were trying to persuade the court that the officious bystander would imply such a reference, but the court saw no need for reasons of commercial efficacy to imply anything into the agreement.

One important point made by both Arnold J and Mummery LJ was that it is not unknown for the Nice Agreement, which sets out the international classification of goods and services, to be changed. Goods could move from one class to another. If the appellants' approach were adopted, a change of classification would wreck the agreement. Of course, a form of words could be devised that would include mentions of the classes while avoiding this outcome, but that was not what the appellants were arguing for anyway. The case does make it abundantly clear that when drafting a co-existence agreement one must take great care to ensure that it draws the line in exactly the right place - just as with any commercial agreement, in fact ... Between the lines, the case also says quite a lot about class headings and the role of the classification system, both highly topical subjects at present. I never quite understood the purpose of the classification system: it doesn't even play a useful role in making searches easier, though I suppose it can narrow the field. Apart from that, it only gives trade mark registries an excuse to charge additional fees. It certainly doesn't provide a rigorous basis for a co-existence agreement (although it might well provide a starting point).

Trade marks: get them while you can!

Every business uses trade marks - distinctive signs to identify themselves to their customers or clients. The trade mark my just be the proprietor's name, but if the business found that either it couldn't use it, or someone else could use it as well, that would be unfortunate. At best. Disastrous, perhaps.

Stevens Hewlett & Perkins, the patent and trade mark attorneys, have a report on their website that brings home just how crucial this could be. Sussex County Cricket Club wanted to call a new walkway on their premises "The Walk Of Fame", but discovered that the name had already been registered by record producer David Courtney, who established his own Walk of Fame at nearby Brighton Marina nearly ten years ago. He offered to grant the club a licence to use the name, at a fee of £20,000 a year. They decided to go for a different name, expressing surprise that an everyday phrase should have been protected as a trade mark.

One should not be surprised at anything the trade mark system does these days. In a sensible trade mark system, the phrase without some addition ("Brighton" might suffice) should be unregistrable: it seems to me that it should fail any rational test for distinctiveness, but so diluted is the concept now that it hardly stops anything. The result is that localised usage can become a powerful exclusive right, for which substantial royalties can be demanded - coming close to trollery, IMHO. It is the law, not the trade mark owner, that's wrong: it simply should not allow this sort of situation to arise.

Unfortunately, this is a self-perpetuating inflationary process. Because this sort of thing can happen, someone else with a "trade mark" that should not be allowed anywhere near the register will apply successfully to have it registered - perhaps even being able to point to the precedent established by an earlier registration. And so another little bit of the great common of the English language will be enclosed, and trade mark law will have failed us again.

Designs: similarities do not always mean copying

The UK's law on designs is a mess, with five different regimes (including a small residue of copyright) all having a go at much the same subject matter. Albert Packaging Ltd & Ors v Nampak Cartons & Healthcare Ltd [2011] EWPCC 15 (02 June 2011) is a case on unregistered design right, or UDR, or more correctly UK UDR to distinguish it from the rather different Community right of the same name. Section 213 of the Copyright, Designs and Patents Act 1988 provides that UDR may subsist in “the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article”. The design has to be original, but that's another part of the story.

In 2005 the claimants designed a new sort of package for wraps - the foodstuff, that is, which can be found alongside sandwiches and things in supermarket chiller cabinets and the like, stuffed with the sort of fillings that people commonly want in their lunches. Roasted vegetables and hummus. They supplied them to Sainsbury's, who later switched to buying their wrap wrappings from the defendants. The claimants said that the defendants were infringing, while the defendants not only denied that but also challenged the subsistence of UDR. Matters were complicated by the fact that  the formalities needed to create an exclusive licence so as to give the licensee standing to sue had not been complied with, and HH Judge Birss considered that compliance with these formalities (a written licence) was essential, unlike the trade mark situation mentioned in my posting a few minutes ago - so the "Ors" (Adrian and Jeremy Weintroub) could sue but apparently not Albert, which doesn't alter the finding about infringement.

The claimants characterised their design in three ways, all of which had to be assessed for subsistence of UDR:

1. The shape of the carton in assembled form;
2. A generally rectangular box save in that the top face slopes downwardly from the rear face to the front face, there being a window extending from the sloped top face onto the front face;
3. The distance from the shoulder of the pack to the top of the back panel, along the back panel, is 35mm regardless of the length or width or depth of the pack.

The first problem for the claimants was to overcome objections that what they had was a method or principle of construction - in which there can be no UDR. The judge followed the reasoning of Mann J in Rolawn Ltd v Turfmech Machinery [2008] EWHC 989 (Pat) and the Court of Appeal in Landor & Hawa International Ltd v Azure Designs Ltd [2007] FSR 9:  “[t]his exclusion operates to limit the level of generality at which a definition of the design to be relied on can be stated: the more abstract the definition relied on, the more likely it is to fall foul of the exclusion”. The second and third characterisations of the design fell foul of this exclusion.

The there was the question whether the designs were commonplace (in which case they would not be original and therefore there would be no UDR). The judge thought not: the evidence showed that there was no such thing as a wrap box designer - the design field was cartons. But approaches 2 and 3 were at too high a level of generality, and if UDR existed at such a high level other designers would be unable to design cartons. The first approach aw another matter altogether - the design expressed that way was by no means commonplace.

So there was at least some UDR to argue about. That looks to me like an excellent expression of the carton-designer's skill - making packaging that can magically assume the required shape strikes me as very clever. Although I can't help feeling that the world was a better place before packaging became ubiquitous ...

Infringement, of course, requires copying, and the judge explained how he thought he had to go about working out whether this was present:

[39] … the approach I will take to infringement is as follows. First I will consider whether the similarities between the Nampak product complained of and the Albert Packaging design (as well as the possibility of access) call for an explanation. In other words - do they raise an inference of copying? In considering that matter I will bear in mind that functional features may be similar because they are performing a function not because of copying. If an inference is raised then I will consider what explanation Nampak put forward. In the end I will compare the Nampak product and the design objectively, reminding myself that for infringement, the relevant article must be produced exactly or substantially to the design.

It was clear to him why there was a complaint. there had been an opportunity to copy (all you had to do was go to the chiller cabinet in your local Sainsbury's) and the cartons were clearly very similar, although not identical. But the defendants' design's origins lay in a document that predated the claimants', so notwithstanding that the claimants' design had influenced the defendants' product such that it was not independently designed - but (a nice nuance) that did not mean it infringed. By section 226 infringement comprises (inter alia) “copying the design so as to produce articles exactly or substantially to that design”. None of the defendants' products were made exactly or substantially to the claimants' design, so there was no infringement. What similarities there were derived from the earlier design, not from the claimants'.

Which all goes to show how difficult it can be to work out when an infringement of UK UDR

Informal licences and oral use of trade marks

Prudent trade mark owners don't let others use their trade marks without taking precautions, but in Jean Christian Perfumes Ltd & Anor v Thakrar (t/a Brand Distributor or Brand Distributors Ltd) [2011] EWHC 1383 (Ch) the High Court (Mr John Baldwin QC, sitting as a deputy judge of the Chancery Division) held that even where the licence had been granted orally the licensee could bring an action for infringement if he had the consent of the proprietor.

The case concerned a Community trade mark: there is no reason to suggest that a UK trade mark would be treated any differently. This ruling could be very useful where the proprietor of the trade mark is overseas and might therefore be required to give security for costs before being able to sue for infringement. A licensee using the trade mark here, even without a formal written licence, could bring the action instead.

There was also a point in the case about whether non-graphic use of a trade mark could be infringement. The deputy judge observed that as the Community trade mark regulation provides for the registration of such exotic, non-graphic, marks as sounds, it would be absurd if oral use were not capable of being an infringement. I have always understood that the 1994 Act widened the scope of what amounts to infringement to include oral use, although I believe it's not expressly stated on the face of the statute - it's just that the Act doesn't say infringing uses have to be graphic. And quite right too: mention of a trade mark in a TV or radio programme should, if the relevant conditions are met, amount to an infringement.

The logical extension of these principles is that oral use of a trade mark will be enough to overcome a claim of non-use. Just hard to prove.

Italy introduces trade mark oppositions

A bit late, I thought, because Directive 89/104/EEC should have been implemented in national law in 1992, which means that the Trade Marks Act 1994 was late too. But reading the Directive again - something I haven't done for a long, long time - I see that there's nothing in it to require Member States to permit oppositions: and I also notice that Article 4 - the one about relative grounds - says that a trade mark shall not be registered where there is a conflict with an earlier right as set out in that Article.

That looks to me very much like a direction to Member States to keep the register clear of conflicts. Was the UK actually allowed to change from the old approach of refusing applications ex officio where there was a conflict to the opposition-based system that we have now? I've always considered that a breach of contract with earlier trade mark owners, who'd registered on the understanding that the Registry would stop others impinging on their exclusive rights. It increased the costs of trade mark ownership enormously, left a lot of trade mark owners exposed, and opened the way to a lot of very dodgy practices by trade mark bullies. It would be interesting to look into the legality of the change, and what debate took place at the time, but I'd like to see a challenge this detrimental change to our system.

Hat tip to Natalie Dreyfus, author of Dreyfus.Blog, for bringing this to my attention.

Scammers and the IPO

Trade mark owners continue to fall prey to scams masquerading as official agencies, writing to tell them their trade marks need renewing (not difficult information to come by) and obtaining a signature on a piece of paper that constitutes an instruction to renew at a fee practitioners would not charge in their widest dreams. Not illegal in itself, this technique relies on the fact that trade mark owners won't recognise an official letter: a practitioner would spot this at a glance.

When the source of the letter is a company called Intellectual Property Agency Ltd (although not a company incorporated in England and Wales) it's easy to see how someone might confuse it with the Intellectual Property Office. That institution directs complainants to Consumer Direct, though it seems to me that anything set up to help consumers (I include the Unfair Terms in Consumer Contracts Regulations, the Unsolicited Goods and Services Act, and the distance selling regulations) will be of no avail for the simple reason that anyone registering or renewing a trade mark is by definition not a consumer: only traders need trade marks - OK, let's say "undertakings" ... the connection between trade marks and trade was jettisoned in 1994.

Had the Office not been renamed, scammers might have found it difficult to pull the wool over anyone's eyes without using the words Patent Office and therefore committing an offence under section 112 of the Patents Act. But hang on - that section talks about using not only those words but "other words suggesting that his place of business is, or is officially connected with, the Patent Office". "Intellectual Property Office" is a "trading name" or something of the Patent Office, so surely using the name "Intellectual Property Office" is an offence - it suggests an official connection with the Patent Office. Changing "Office" to another word is unlikely to be enough to avoid the offence. So maybe some of these scams are more illegal than they look - but is anyone going to do anything about it?

Spain and Italy challenge unitary patent

Spain and Italy have filed a complaint at the Court of Justice in Luxembourg against the proposals to bring in the unitary patent (for the European Union, minus Spain and Italy) using the ironically-named "enhanced co-operation" procedure, which seems to have nothing to do with co-operation and much to do with taking a pragmatic approach to opposition from a minority of Member States.

The Commission's hope - and the hope of many others too, including my Spanish friends whom I quoted on this blog a week or so ago - was that Spain and Italy would see a way to waive their objections, which are based on the omission of their languages from the list of official languages of the proposed system (a traditional reason for opposing supranational legislation in the intellectual property field). No doubt there is a great deal of horse-trading still to be done, but evidently they are not yet ready to back down.

Consent to being photographed

What can a photographer do with an image of a well-known person? Or even someone who's not well known - who may still be what in modern parlance is called a "celebrity". A recent case from the United States sheds some light on the question - though the judgment is remarkable more for the care with which the court circumscribed its reach than the actual finding.

This is the district court for the Central District of California's decision Shirley Jones v Corbis Corporation (Case No 10-8668 SVW (CW)) (hat tip to Bob Tarantino of Heenan Blaikie in Toronto who tipped his hat in turn to THR, Esq). Shirley Jones, who was in the 1970s TV show The Partridge Family (which I had the great good fortune to escape ever seeing) not to mention films like Oklahoma!, Carousel, and Elmer Gantry , took exception to the use of photos of her in "red carpet" situations. She claimed her right of publicity was being infringed by Corbis (a stock photography agency, in case you haven't had a run-in with them or otherwise heard of them: it was founded, and is owned, by one Bill Gates) when they showed samples of images of her on their websites.

The court rejected her claims. If you show a celebrity a red carpet and a few photographers, he or she is likely to start striking poses: they know what is expected of them, and what will happen to the results. That's not exactly what the court said, but I think it's a fair paraphrase. Thereafter, the images are sold by the photographers - why else would they bother taking them? - and showing them in the manner about which she complained, even through the medium of Corbis, was entirely consistent with the implied consent given by Ms Jones. There was no evidence to support her claim that the consent was personal to the individual photographers.

At some "red carpet" events, notices are posted stating that the celebrities being exposed on the carpet consent to photos and moving images being recorded and reused, which not only kicks any argument like Ms Jones's into touch for those events but also shows pretty clearly what custom and practice is. Indeed it was not disputed that she consented to the photos being taken, and to their being sold. Her actions, and the context in which she performed them, added up to consent to everything that subsequently happened to the photos. What I don't see in the judgment, and which would be interesting to know, is when the photos were taken - I assume they date from the period of recent history in which this way of dealing with the images would have been commonplace. Had they been images from an earlier era, pre-digital, pre-Corbis, the extent of her implied consent might have been very different.

Although this is a decision of a US Federal court on US law (common law and statutory rights of privacy were pleased, though I am not sure after quickly scanning the judgment which statute is invoked), there are lessons for photographers - and for celebrities, and event organisers - elsewhere, even if (as in the UK) privacy rights are much less well-developed. Put up one of those notices, to start with, so there is the least possible doubt about what's going on. Photographers should be able to rely on the subject's implied consent just because they are there, and if the celebrity is striking poses for the photographers so much the better. Beware, however, if they are hiding their faces, or instructing photographers not to take pictures: that would probably override any implied consent, though you're more unlikely to encounter that sort of reaction on a red carpet. It's a rather special environment, and special rules apply which would not apply if you encounter the celebrity on the street.

Peer to Patent, EFF style

An interesting twist on the "peer to patent" review idea: I've just seen the Electronic Frontier Foundation's patent-busting campaign, listing their top ten undesirable patents and inviting people to tell them about prior art so the patents can be busted. From the information on the website, it seems that they have had some success. A useful antidote to unjustified software and business methods patents? No doubt, though I always worry about the danger of mob rule - the difference between good patents and bad ones, which is subjective at the best of times, could easily be lost.

May 2011 IP podcast

Earlier this morning I recorded and uploaded the May podcast for subscribers. It includes:

• A look at the Hargreaves Review and Euro-Hargreaves
• The Advocate General's opinion that pog designs are invalid
• The Court of Appeal on groundless threats, in Best Buy
• Peter Smith J on Formula One motor racing, in Lotus v Lotus

Of course there's lots more too - well over an hour ... If you'd like to get your CPD economically and conveniently, drop me a line or leave a comment. If you'd like to hear a sample, go to the podcasts page (follow the link in the heading).

Thanks to Olcott International & Co LLC for sponsoring the IPso Jure podcasts.

Internet access a human right

A report prepared for the Human Rights Council of the UN General Assembly proposes that Internet access should be treated as a human right, and even illegal acts such as copyright infringements should not result in Internet access being cut off. Clearly, access to the Internet is an important component of free speech these days - although I am reminded that, as Stanley Fish told us, "There's no such thing as free speech: and it's a good thing, too". We see that every day, it seems, in the English courts as the judges try to balance the right of privacy with the freedom of the press, as Parliament told them to do when it passed the Human Rights Act. There's another balance to be struck between the right of a scofflaw to free speech and the rights of the copyright owner with whose material they make free.

Isle of Man to update IP law

The Isle of Man, which constitutionally is a self-governing Crown dependency and a semi-detached part of the European Union, is going to have updated intellectual property laws soon: at least, the government is consulting on changes. Most of them reflect changes that have been made in the UK to meet the requirements of directives from the European Community - they predate the Lisbon Treaty. Copyright could be extended to 70 years pma, there might be new rules for damages for infringement, and the government is considering reforming design laws and introducing a publication right, a "making available right" protecting the performer of a work which is made available to the public on the internet, and moral rights for performers.

The consultation paper identifies 81 possible changes, of which the government is minded to recommend adopting the majority, is undecided about several, including increasing the basic copyright term (what an unusual degree of honesty and openness in a government!) and has already decided to reject a couple - the introduction of rental and lending right, and artist's resale right.

The consultation is not limited to copyright, perfomers' rights and designs. There are proposals on trade marks (how to protect International Trade Marks (EU)), patents, SPCs, and database right too. The document is 106 pages long, and about 90 of those pages contain a description of what might be done, the pros and cons, how the UK has done it and how the Isle of Man could do it - so it doesn't make for easy reading, but it isn't hard to find what you're looking for, if you see what I mean.

Pogs: the Advocate General speaks

What design law enthusiasts have been waiting for: Advocate-General Mengozzi gave his Opinion in the  "pogs" appeal (Case C-281/10 P PepsiCo v Grupo Promer Mon Graphic) on 12 May. This is the first case on Registered Community Designs to come before the European Union’s highest court.

PepsiCo had registered the design; the cancellation division at OHIM had declared the registration invalid; and the Board of Appeal had allowed PepsiCo’s appeal. The General Court largely upheld the Board of Appeal’s legal analysis, but held that the design was not sufficiently different from Promer’s earlier one. PepsiCo appealed.

The case raises both procedural and substantive points. The ground for the appeal was that the General Court violated Council Regulation (EC) No. 6/2002 in five respects:

• It had failed to take into account the constraints on the designer in developing the contested design; 
• It had wrongly interpreted the notion of the "informed user" 
• It had erred in considering the attention level of the informed user; 
• It carried out a comparison between the designs based on actual products in the file rather than on the designs as registered; and 
• It based the comparison on distorted facts. 

The Advocate General considered that many of the grounds of appeal are really matters of fact, which cannot be appealed to the Court of Justice: he said of some of the points that it was "undeniable that the arguments adduced by PepsiCo are designed solely to call into question the findings of fact made by the General Court." (para 35).

He also said that in his view there is no reason to treat appeals on design cases any differently from those on trade mark cases (paras 71-75). The General Court has a wide freedom to examine the appeal and substitute its own views for those of OHIM. 

The constraints on the designer’s degree of freedom

It was not for the Court to call into question the findings of the General Court on this point, which were matters of fact not law. 

The concept of ‘informed user’

The Advocate General considered that:

"… generally speaking, the informed user is not a ‘technician’ with special knowledge, but just a user who is a little more attentive and interested than the average consumer: in other words, a user of whose perceptions the General Court is able to form an adequate picture." (para 74).

Design cases will therefore, to widespread relief, be saved from getting overburdened with expert or survey evidence.

As for the application of the concept of "imperfect recollection" in comparisons of designs, the AG thought that the General Court had not in fact uses that analysis, although the language of its judgment was "a little infelicitous". Anyway, the law does not exclude either direct or indirect comparisons and sometimes an indirect comparison may be useful or necessary as a practical matter (paras 49-50, 55). 

The attention level of the informed user and the scope of review by the European Union judicature

The next point concerned the attitude of the informed user. The Advocate General agreed with the General Court:

...the General Court envisaged an informed user who was anything but superficial and inattentive, even if lacking the analytical acumen which, if anything, is the hallmark of an observer of patents. (para 67).

The review focused on the goods rather than on the designs at issue

Regarding using samples instead of the registration in the comparison exercise, the AG took a pragmatic view. He thought it was allowable in the circumstances of this case, and probably every other case too:
83. In any event, it seems to me that it is entirely proper – if, as in this case, it is physically possible – to take account of the actual goods characterised by a specific design. As we have in fact seen, the relevant public for assessing designs is made up of informed users, who are not experts, but simply individuals who are particularly interested in and attentive to such goods. In the present case, the informed users include children aged between 5 and 10 years. In those circumstances, it is quite right that the General Court should also have considered the goods in the form of the ‘real thing’, as seen and perceived by the informed users, who, it should be pointed out, do not usually ever see the registrations of the designs, but only their ‘practical application’, that is to say, the goods characterised by those designs. At the hearing, PepsiCo itself considered it appropriate to show the Court of Justice a number of ‘pogs’ to clarify some of the points contained in its observations.

This is pretty much the same approach as that of the UK courts, which take the view that otherwise it is difficult to compare like with like. 

Distortion of the facts

This argument was to no-one’s surprise rejected as inadmissible.

Book review: Sudden Genius? by Andrew Robinson

The Journal of Intellectual Property Law and Practice has my review of this excellent and informative book in its latest edition: you can read it here. I seem to have carved out a niche, reviewing books for JIPLIP that aren't simply IP textbooks - probably a lot more interesting.

A Spanish view of the EU Patent

My friends at J Isern Patentes y Marcas point out in an interesting article that the Spanish position on the EU patent, understandable as it may be as a means of preserving the importance of a major European language, will put Spanish businesses at a disadvantage, relegating them to a second division within the EU. Pepe Isern concludes:

El sacrificio en aras de una patente única debería haber sido para todas los países por igual y en todo caso establecer como lengua franca el inglés.

Or, per Google:

The sacrifice for the sake of a single patent should have been to all countries equally and in any case to establish English as a lingua franca.

Which has come to mean a language adopted as a common language between speakers whose native languages are different, but originally meant the blend of Italian with French, Greek, Arabic, and ironically Spanish, used in the Levant. I guess the fate of English is inevitably to be a lingua franca in the modern sense: good  for the rest of the world, good for English-speakers (who don't have to bother learning others' languages - I was being ironic there, because what are they missing out on?), bad for the English language. But the point is made that 85 per cent of scientific and technical literature is in the form of patent specifications: of course those specifications are available to researchers in Spain whether or not Spain joins the unified patent system, and the problem is that Spanish innovation will not be as fully protected as innovation in other EU countries. However, isn't the larger part of that 85 per cent going to be in English anyway? Should the European Union just go with the flow?