Validity challenge does not give rise to estoppel in subsequent infringement proceedings

The Court of Appeal has held that opposition proceedings beforethe UK Trade Marks Registry do not give rise to an estoppelpreventing a validity challenge as a defence to later proceedingsfor infringement.     

The informed user: a step up from the Clapham Omnibus

In proceedings for infringement of a registered Community design,Lewison J considered who is an ‘informed user’ andwhat is the ‘overall impression’ of a design.     

US Appeals Court invalidates retroactive assignments of copyrights

A unanimous panel of the US Court of Appeals for the SecondCircuit held that a ‘retroactive’ assignment ofownership from a co-author of a copyright to an alleged infringercannot defeat the other co-author's accrued infringement claims.The court also held that a written agreement could not ‘ratify’an earlier oral agreement to transfer ownership.     

Copyright Infringement in a Borderless World - Does Territoriality Matter? Society of Composers, Authors and Music Publishers of Canada v Canadian Association of Internet Providers [2004] 2 SCR 427

The recent decision of the Supreme Court of Canada in Societyof Composers, Authors and Music Publishers of Canada v CanadianAssociation of Internet Providers [2004] 2 SCR 427 is significantfor two reasons: (a) the Canadian Supreme Court held that InternetService Providers should be exempted from copyright liabilityas long as they provide only a conduit service in transmittingcopyright materials between Internet users (a point which isconsistent with many national copyright laws); (b) the majorityof the Canadian Supreme Court arrived at the conclusion thatthe appropriate test to determine whether an infringement forthe unauthorized transmission of online copyright material hasoccurred within the Canadian jurisdiction is the ‘realand substantial connection’ test (LeBel J, however, dissentedand was of the view that the correct test to apply is the ‘hostserver’ test). This paper studies these two tests as propoundedby the Canadian Supreme Court and assesses their strengths andweaknesses, especially in light of the territoriality principlein copyright law.     

Trustees beware: submit with care

The Royal Court of Jersey has recently heard an interestingapplication reported in Jersey as In the Matter of CI Law TrusteesLimited and Folio Trust Company Limited as Trustees of the FountainTrust [2005 JRC099]. The case concerned an application for directions by CI Law TrusteesLimited (the ‘Trustee’) seeking directions as tohow to respond to a judgement of the Family Division of theHigh Court of Justice in England and Wales setting aside a Jerseylaw trust (the ‘Trust’) as a sham, and orderingthe Trustee to transfer the Trust assets to the petitioner inthe English matrimonial proceedings (the ‘Wife’).     

South African Supreme Court rules on copyright in software and computer-generated works

The South African Supreme Court of Appeal considers a numberof fundamental issues concerning copyright protection of computerprograms and computer-generated works; in doing so, the courtanalyses a number of basic copyright principles, notably themeaning of originality and the meaning of ‘substantialtaking’ in infringement cases.     

ICC Pre-Trial Chamber Allows Victims to Participate in the Investigation Phase of Proceedings

The decision rendered by the International Criminal Court (ICC)Pre-Trial Chamber I on 17 January 2006 allows victims to beinvolved in ICC proceedings at an early stage of the investigation.The Prosecutor, who has filed an appeal against this decision,has consistently argued that the right of victims to participatein the proceedings does not cover the investigation phase. Itis argued that the impact of this decision goes far beyond theissue of victims’ participation in the investigations;it has general implications for the balance of power betweenthe judiciary and the prosecution in proceedings before theICC.     

German Supreme Court stands firm on liability for unjustified warning letters

In one of its very rare decisions, the Grand Senate of the GermanSupreme Court has ruled that intellectual property right ownersface damages claims if they issue warning letters in cases wherethere is no infringement and the claim has been brought at leastnegligently, thus putting an end to the tendency in some Germancourts—including the First Senate of the German SupremeCourt itself—to lessen the liability of senders of unjustifiedwarning letters.     

Justifying the Distinction Between Justifications and Power (Justifications vs. Power)

The paper suggests that there are two different ways in which a legal system restricts an individual’s rights. It can either grant a power that revokes the legal protection of the right or it can acknowledge the infringement of a legal right and yet justify such an infringement by means of a criminal law justification. The distinction proposed by the paper has both expressive and practical implications and is useful in solving dilemmas arising in emergencies when constitutional constraints make it impossible to grant the power to revoke legal protection of a basic right. In some of these situations a criminal law justification might support infringement of such a right. This claim is demonstrated by analyzing the ruling of the German Constitutional Court concerning the shooting down of a hijacked airplane in circumstances similar to those of September 11.     

Spanish court rules in 'Accessorize' trade marks case

The Barcelona Court of First Instance No. 1 found in favourof the claimants, owners of the famous registered trade mark‘Accessorize’ in their action for trade mark infringement,trade mark cancellation, unfair competition, and damages inrespect of the use by the defendants of the Accessori, Mr Accessoriand Accessori trade marks.     

'Alternative' music obtained from free download music websites does not entitle SGAE to claim royalties

Proof that the music played in a public establishment is obtainedfrom free download music websites, considered together withother factors such as the fact that the establishment is a non-profitmaking cultural entity and that the music played is exotic andunknown— which the Court describes as ‘alternative’music—is sufficient to avoid the infringement of the publiccommunication copyright, even if it has not been proved thatall the songs played have been downloaded from the websitesin question.     

Mixing it up: food mixers, design marks, and when similarity becomes confusion

While the High Court accepted that there was some similaritybetween Kenwood's new kMix mixer and the KitchenAid Artisanfood mixer (the ‘Artisan mixer’) manufactured anddistributed by Whirlpool, it rejected Whirlpool's claims fortrade mark infringement and passing off because such similaritywas insufficient to cause confusion in the mind of the averagedesign conscious consumer, or to cause detriment to the distinctivecharacter or repute of Whirlpool's mark.     

Parody exception again denied in Belgium

The Antwerp Court of Appeal confirms the tendency in Belgianjurisprudence to be very cautious in its application of theparody exception to copyright infringement. The alleged ‘Miffy’parody on the cover of the magazine Deng is, according to thecourt, too slavish a copy of the original, and thus in itselfinsufficiently original. Moreover the moral rights of artistDick Bruna were infringed. A freedom of expression appeal wasalso rejected, this fundamental right being already encapsulatedin the existing exceptions to copyright.     

Participation of Victims in Pre-Trial Proceedings of the ICC

Victims’ participation is usually celebrated as one ofthe major innovations of the International Criminal Court (ICC)system. It has been regulated in great detail by the draftersof the Rome Statute and the Rules of Procedure and Evidenceof the ICC in relation to trial proceedings. However, few thoughtshave been devoted to the question of how victims’ issuesare dealt with before the commencement of the trial. This contributionseeks to close this gap. It argues that victims have a roleto play in the ICC process from the very beginning of proceedings.Moreover, it seeks to clarify how some of the participatoryrights of victims may be addressed in practice.     

Article 81 is a defence to a plea of trade mark infringement

The Court of Appeal in Sportswear considered the interactionbetween the EU principle of free movement of goods and respectfor trade marks rights. In overturning the decision of Mr JusticeWarren to strike out an Article 81 defence to trade mark infringement,the court found that there was a sufficient nexus between theArticle 81 defence and the trade mark infringement claim.     

Interactions between National and International Criminal Law in the Preliminary Phase of Trial at the ICC

The author discusses the interaction between international andnational law in determining whether a case is admissible fromthe viewpoint of complementarity (Article 17 of the Statuteof the International Criminal Court) and with regard to theconcept of ‘interests of justice’ (Article 53 ofthe same Statute). Complementarity does not separate nationalfrom international criminal jurisdiction; nor does it put themin conflict with each other — rather, it favours the aforementionedinteraction. In addition, the concepts of ‘ability’and ‘willingness’ tend to ensure an indirect harmonizationof national criminal systems around common international criteria.As for reliance on the notion of ‘interests of justice’when determining whether to initiate proceedings, accordingto the author, Article 53 envisages a compromise between prosecutorialdiscretion and strict legality, thereby enshrining a hybridizationbetween various national traditions. The author notes that thedecision to open investigations should be objective and foreseeable;to this end, she suggests some general criteria, which are intendedto serve as guidelines for establishing whether, in a specificcase, the interests of justice warrant the initiation of proceedings.     

Saint Gobain patron of pharmaceutical patentees?

In recent years there has been much complaint from originatingpharmaceutical companies that the test of obviousness appliedin the UK, as evidenced by decisions of the Patent Court onpharmaceutical related patents, is set unfairly low. This isof particular impact where ‘formulation’ type patentsare concerned. That is, typically, those patents that claiman existing active ingredient mixed, formulated, or combinedwith other known components or in a different way. Pharmaceuticalcompanies complain that the vulnerability of such patents againstinvalidity proceedings in the UK fails to protect the considerableinvestment made in the development of these formulations againstgeneric competition. This article looks at whether the reasons for this concern canbe traced to particular sub-tests that have been used by thecourts to try to answer the statutory test for obviousness.In particular, the sub-tests of ‘lying in the road’and ‘obvious to try’ are examined and the questionof whether there has been an imbalance between these two sub-testsis explored. Further, it is argued that the decisions in therecent cases of Saint-Gobain and Angiotech suggest that therehas been a shift in how the Court of Appeal assesses obviousness.This is away from the ‘obvious to try with a reasonableexpectation of success’ standard to one of ‘obviousto try if success is self-evident’. If the Court of Appeal follows the line taken in these two casesthen pharmaceutical patents of the formulations kind shoulda face better prospect of surviving invalidity challenges basedon obviousness in future.     

Oh, Court of Equity!

Oh! Court of Equity, misnamed, where doubt Leads many in; whencefew or none, get out;

These woeful opening lines of a poem‘Court of Chancery’ by a Reginald James Blewittin 1827, was the way he took up the tomahawk, as he termed itin his preface, against a dire national enemy. In practice,in Lincoln's Inn, he found the great delay and ruinous expensesof a Chancery suit had become proverbial. After giving up practicehe found the tranquillity of the park at Fontainebleau moreconducive to overcoming his previous anguished existence withhis verse satirizing the tedium of proceedings, its expenseand the follies and conceits of former colleagues. Former colleaguesare named in     

Could Wild Horses Drag Access Away From Courtrooms? Expanding First Amendment Rights to New Pastures

More than thirty years ago, the Supreme Court of the United States created a First Amendment right of access to criminal trials in Richmond Newspapers, Inc. v. Virginia. At the time—and in the Supreme Court cases that immediately followed Richmond Newspapers—the assumption was that such a right of access would apply only to judicial proceedings. This article examines a small but significant body of case law that extends the First Amendment right of access to criminal proceedings to new venues far removed from courtrooms. Using the 2012 opinion of the United States Court of Appeals for the Ninth Circuit in Leigh v. Salazar as an analytical springboard, this article analyzes how the so-called experience-and-logic test fashioned by the high Court in Press-Enterprise Co. v. Superior Court in 1986 is being applied in such cases. Cases like Leigh also provide an excellent opportunity for courts to clarify precisely the nature and extent of the history required to find qualified rights of access given the relatively recent government program to which the plaintiff in that case now seeks access.     

India and the ICC

The Statute of the International Criminal Court (ICC Statute)would have been more acceptable to India if it had containedan opt-in provision whereby a state could accept the jurisdictionof the ICC by declaration (possibly for a specified period),and this might be limited to particular conduct or to conductcommitted during a particular period of time. The lack of sucha provision, and the inherent jurisdiction which replaced it,are perceived as representing a violation of the consent ofstates, and thus a threat to sovereignty. India's resistanceto accepting the inherent jurisdiction of the ICC is explained,in part, by anxieties about how investigation, prosecution andcriminal proceedings in the Indian system may be judged by aninternational court. The inclusion of ‘armed conflictnot of an international character’ in defining ‘warcrimes’ in Article 8 ICCSt. constitutes another reasonfor India's concern (that the conflicts that persist in Kashmir,the North-East and as was experienced in Punjab, as well asthe violence of more recent vintage in Gujarat, could be referredto the ICC). Further elements giving rise to India's misgivingsare the fear that the Court might be used with political motives,the power conferred on the Prosecutor to initiate investigationsproprio motu and the role allotted to the Security Council.