Database rights' subsistence: under starter's orders

Legal context. The criteria for database rights' subsistenceset out in the Directive on the Legal Protection of Databasesare largely undefined. Guidance on their interpretation hasbeen provided by the ECJ and its guidance on qualifying investmentactivities was applied by the Court of Appeal in the BHB case. Key points. The article comments upon the guidance on the subsistencecriteria for database rights provided by the Advocate Generaland the ECJ in the BHB and Fixtures Marketing cases and analysesthe Court of Appeal's application of the production-processingdichotomy in the BHB case. It offers thoughts on thorny issuessuch as the avoidance of a double benefit for database developersin copyright and database right, the role of investments intechnology, and the effect of the production-processing dichotomyon the risk of monopolies over facts. Practical significance. Database developers seeking databaserights' protection should keep the subsistence criteria in mindwhen devising their processing arrangements, designing theirdatabases, and recording their investment activities associatedwith database development.     

Trade mark use in transit: EU-phony or cacophony?

Legal context The present article discusses the opinion of Advocate-GeneralJacobs in Case C-405/05 Class International BV v Unilever NVand others, according to which trade mark owners cannot opposethe entry into the European Union of grey market non-Communitygoods placed in external transit, on the grounds of Article5(1) of the Trade Mark Directive, or any equivalent provision,as such entry does not constitute trade mark use. Key points We examine the consistency of this approach withprior case law of the European Court of Justice, namely in theCommission v France, Rioglass, The Polo/Lauren and Rolex casesand draw a parallelism with Council Regulation (EC) 1383/2003. Practical significance We conclude that trade mark owners shouldbe allowed to prohibit the placing in transit of goods whichwould infringe an intellectual property right under the lawof the transit country, unless the owner or consignor of thelitigious goods can undeniably prove that the goods are notdestined for the internal market. Stop press. At the end of the article the authors provide abrief analysis of the European Court of Justice's decision of18th October 2005 in this case.     

Patent construction after Amgen: are patent claims construed more widely or narrowly than previously?

Legal context. This article considers the UK Courts' approachto patent construction since the House of Lords' decision inKirin-Amgen Inc v Hoechst Marion Roussel Limited, which washanded down in October 2004, and seeks to examine whether theUK Courts' construction of patents is wider or narrower thanpreviously. Key points. The available data appear to suggest that thereis little difference in outcome, whether the old Improver testis applied or the new Kirin-Amgen test; of more significanceremains the nature of the wording of the patent claims themselvesand the correct identification by the trial judge of the inventionunderlying the patent. Practical significance. By eschewing a literal approach andrefining the test used in order to ensure both compliance withthe EPC and consistency with courts in other European countries,the UK Courts continue to provide an attractive forum for resolutionof patent disputes.     

The rise and fall of cross-border jurisdiction and remedies in IP disputes

Legal context. Companies which have seen their IP rights infringedacross Europe have, in recent years, been keen to obtain cross-borderrelief from infringement through bringing a single action inthe court of just one EU Member State. This approach has time,cost and tactical advantages for claimants, but raises complexjurisdictional questions. Key points. This article provides an in-depth explanation ofthe framework for litigating IP rights in the European Union.It describes the various interpretations to which the BrusselsRegulation on Jurisdiction has been subjected and how they affectthe availability of cross-border relief. This explanation providesa foundation for analysing the recent ECJ decisions in Gat vLuk and Roche v Primus. Practical significance. Cross-border jurisdiction and reliefis, in practice, no longer available in respect of registeredrights.     

Who controls the Naomi Campbell information flow? A practical analysis of the law of privacy

Legal context. The House of Lords held that the medical privacyof the glamorous supermodel Naomi Campbell was violated by publicationof details of her drug addiction treatment and a paparazzi picture.English law is developing under the influence of Article 8 (theright of privacy) and Article 10 (the right of freedom of expression)of the European Convention of Human Rights. The court explainedhow the action for breach of confidence protects privacy. So,who controls the Naomi Campbell information flow? Key points. Primarily, the courts control the flow of privateinformation. They do so through the cause of action of breachof confidence and remedies. In deciding liability, the courtsshould ask whether the benefit of publication is proportionateto the harm done by the invasion of privacy. To answer the question,they must balance the public interest in the right of privacyagainst the public interest in the right of freedom of expression.They may settle on a Reynolds type test by considering a numberof non-exhaustive factors. The article examines seven suggestedfactors and the remedies which can be deployed by the courts.Judgments from the English courts and the European Court ofHuman Rights are considered, including Campbell v MGN (HL),Douglas v Hello! (CA), McKennitt v Ash (HC), Peck v UK (ECtHR),Édition Plon v France (ECtHR), and Von Hannover v Germany(ECtHR). Practical significance. There are an increasing number of privacyclaims against the media. The article includes a checklist ofseven factors to help determine where the balance lies betweenprivacy and freedom of expression.     

Copyright, continuums and freedom of speech

‘A book may be good for nothing; or there may be onlyone thing in it worth knowing; are we to read it all through?’(Samuel Johnson) This section is dedicated to the review ofideas, articles, books, films and other media. It will includereplies (and rejoinders) to articles, the evaluation of newideas or proposals, and reviews of books and articles both directlyand indirectly related to intellectual property law.

Copyright and Free Speech Comparative and International Analyses ByJonathan Griffiths and Uma Suthersanen, Eds, 2005, Oxford: OxfordUniversity Press Price: £80.00, Hardback, ISBN: 0199276048.pp. 426   If one were to summarize this     

Inter Partes Proceedings and the Reform of the Community Trade Mark Implementing Regulation

Legal and practical context. Commission Regulation 1041/2005of 29 June 2005, which amends the Community Trade Mark ImplementingRegulation, entered into force on 25 July 2005. Substantialamendments are brought to inter partes proceedings, that isoppositions and applications in revocation or in invalidity,and appeal procedures. Key points. The rules governing the substantiation of the earlierrights and time limits are now stricter. Also, the new regimeaims at circumscribing the consequences of the rather broadinterpretation which the Court of First Instance gave over thelast two years to the notion of functional continuity betweenthe opposition division and the Boards of Appeal. Practical significance. The authors analyse the new provisionscontained in the Community Trade Mark Implementing Regulationin the light of the latest case law of the Court of First Instance,in order to provide practitioners with a simplified guide.     

Claim construction and the extent of patent protection: A comparative analysis of the Phillips en banc Federal Circuit decision

Legal context. The United Kingdom's House of Loads in Kirin-Amgenand the United States Court of Appeals for the Federal Circuitin Phillips addressed similar issues with respect to the methodologyof claim interpretation and the fundamental rules and policiesfor determining the extent of patent protection. This articlewill review Phillips and Kirin-Amgen from the comparative lawperspective. It will compare the UK and US rules and patentpolicies with their German and Japanese counterparts, discussingthe bases for these differences and examining them from theperspective of patent policies, specifically with respect tofair protection and legal certainty. Key points. Despite the use of the same rule and methodology,legal commentators and patent professionals emphasize the differencesin the extent of patent protection in different jurisdictions.Such differences result from the availability of the doctrineof equivalents. For jurisdictions such as the UK, the US andJapan, where courts seldom apply the doctrine of equivalents,the differences result from the way in which the courts conductclaim construction. These courts use the perspective of a hypotheticalperson to support a broad or narrow claim construction, reflectingthe weight given to the competing patent policies. Practical significance. This article cites key cases for claimconstruction and the doctrine of equivalents in four major patentjurisdictions: the UK, the US, Germany and Japan. Knowledgeof the case law trends in these jurisdictions is essential fordrafting patents documents and enforcing patents.     

Comparative advertising and celebrity photographs--fair dealing under the CDPA 1988

Legal context. Legal context. This article reviews the conceptof ‘fair dealing’ under Copyright Designs and PatentsAct 1988, section 30. It does so in the context of to recentcases concerning the fair dealing defence, IPC Media Ltd v NewsGroup Newspapers Ltd and Fraser Woodward Ltd v BBC are considered. Key points. The traditional approach of courts to ‘fairdealing’ is based upon a number of ‘factors’considered relevant in determining whether a use of a copyrightwork is fair. The article argues that there are a number ofproblems with this approach. In particular, it claims that theapproach is unsystematic and rests upon a number of questionableassumptions. It suggests that the decision of Hart J in IPCMedia Ltd demonstrates these problems to a very significantdegree. In contrast, that of Mann J in Fraser Woodward Ltd provideswelcome guidance on the application of the concept of fairnessin certain cases. Practical significance. The criticisms made in this articlehighlight a number of discrepancies in the existing case lawand suggest a need for closer consideration and greater disciplinein decision-making in this area.     

Gaining confidence in the law of confidence

Legal context. The recent case of EPI v Symphony has left theUK law of confidentiality in an uncertain state: the extentto which recipients of confidential information may be permittedto ‘use’ mixtures of such information with publiclyavailable material remains unclear. The Court of Appeal in EPIfelt that it was hard to reconcile the principle that any claimin confidence must fail if the material in question is in thepublic domain with the ‘springboard’ doctrine; butis the distinction illusory? Key points. Issues raised in this case include considerationof what precisely is ‘use’ of confidential information,when mixed with public information, and whether a confider shoulddo more than rely on confidentiality obligations to protectthe fruits of his/her disclosures. This article asks how confidentialityobligations may be aligned with the control of statutory intellectualproperty rights. It considers whether the Court of Appeal inMarkem v Zipher has confused the issue and speculates as tohow far the general law of contract can assist the confider. Practical significance. Finally, this article discusses whichlegal tools will best assist the confider seeking to protectits intellectual property.     

Markem v Zipher--the Court of Appeal provides guidance on entitlement proceedings

Legal and practical context. The Markem v Zipher Court of Appealjudgment provides useful guidance on patent entitlement proceedingsand, more generally, on the conduct of litigation. Key points. (i) Patent entitlement. To bring an entitlementaction under sections 8, 12, and 37 a party must invoke a breachof some rule of law. Validity is only relevant in entitlementproceedings where a patent or part of it is clearly and unarguablyinvalid. A claim-by-claim approach is not appropriate in proceedingsunder sections 8, 12, and 37 and ‘invention’ inthese sections refers to information in the specification. Theproper approach to entitlement should be to identify who contributedto the invention and determine whether he has any rights tothe invention. (ii) Litigation generally. A witness should be cross-examinedas to the truthfulness of his evidence whenever a party wishesto challenge that evidence. Where a party has more than onecause of action relating to the same factual background, considerationshould be given to bringing all causes of action in the sameproceedings to avoid a future claim being struck out for abuseof process. Practical significance. This case highlights the importanceof a properly pleaded case and of the ongoing need to reviewthe case strategy throughout proceedings.     

Questions on the law of evidence in plant variety infringement proceedings

Legal context. Section 940 of the German Civil Procedure Actproviding interim injunctions is applicable, inter alia, inthe enforcement of Plant Variety Rights. Key points. The nature of plants, as living organisms, meansthat the enforcement of intellectual property rights againstalleged infringers raises issues of proof and evidence thatare unique to their subject matter. Practical significance. Interim injunctions have great practicalimportance in Plant Variety infringement cases. Significantevidence problems exist due to the natural variations in plants.This article discusses the practical requirements for establishingevidence of infringement of plant variety rights in actionson the merits as well as in interim injunction proceedings.     

Injunctive relief in US patent practice

Legal context. Injunctive relief is available in civil actionsin the United States. Patent litigation is no exception andthe US patent statute explicitly permits it. Because it is aneffective remedy, injunctive relief is commonly sought togetherwith the monetary (legal) remedies which are available to patentowners when enforcing patent rights. Key points. On 15 May 2006 the US Supreme Court in eBay, Incet al v MercExchange, LLC altered the prevailing practice sayingthat ‘the decision whether to grant or deny injunctiverelief rests within the equitable discretion of the districtcourts, and that such discretion must be exercised consistentwith traditional principles of equity, in patent disputes noless than in other cases governed by such standards’. Practical significance. This article will focus on the availabilityof permanent injunctions in patent infringement actions in lightof the Supreme Court's recent ruling in eBay, Inc et al v MercExchange,LLC.     

The Silicon Valley Media Law Blog

http://www.svmedialaw.com/ By Cathy Kirkman, 24 October 2004,California Archive (Thematic)   As the name suggests, the Silicon Valley Media Law Blog providesa commentary on media law developments in the US. In particular,it follows new legal decisions and legislation that might affectthose in the arena of music     

Coexistence in Community trade mark disputes: conditions and implications

Legal context. A defence based on coexistence has no legal basisin the Trade Mark Directive or in the Community Trade Mark Regulation.Still, a practical approach to Community trade mark conflictsrequires attention to the situation in the marketplace whereconflicting marks may be shown to coexist without any currentconfusion or dilution being reported. Key points. Trade mark coexistence may sometimes be persuasive,the strict requirements being laid down by the Community courts.Through a detailed review of the case-law of the Community courtsand OHIM's Boards of Appeal, this article explains the conditionsfor and the consequences of proving the coexistence of the conflictingmarks in cases based on likelihood of confusion or dilution. Practical significance. Consideration must also be given tothe effects of third parties' neighbouring marks which may diminishan earlier mark's distinctive character. Accordingly, this articlefurther addresses the issue of whether the scope of protectionof a mark may be damaged by the use of later marks in the lightof the ECJ Judgment in the preliminary ruling Case C-145/05Levi Strauss v Casucci Spa.     

Legal reflections on the Google Print Library Project

Legal context. IP lawyers need a better understanding of theimplications of new technology when advising their clients onlegal strategies for appropriating rents from the exploitationof intellectual property rights in the digital environment.Conversely, clients seeking to ascertain the permissible limitsfor accessing material on the Internet must be made aware ofthe critical distinction between contractual and copyright issues. Key points. Licensing of copyright will continue to be an efficientinstrument for resolving issues relating to compensation andboundaries for permissible use. A sound understanding of thedigital environment will ensure that potential problems associatedwith the scope of the restricted acts under the Copyright, Designsand Patents Act 1988 can be avoided. Lawyers should also beaware of the possible policy developments relating to the exploitationof digital content following the deliberations in the GowersReview. Lawyers should also re-examine the submissions in boththe Grokster and Perfect 10 cases, recognizing the circumstanceswhen copyright arguments raised in other jurisdictions may beimported into the United Kingdom. Practical significance. The absence of any UK legal precedentwith regard to the copyright issues arising from the disputebetween search engine providers and copyright owners providesno excuse for failing to consider how contractual instrumentsmay efficiently resolve issues relating to the appropriationof rents from intellectual property rights. The absence of a‘fair dealing’ exception does not inevitably meanthat, should a similar dispute as that in Google v The Author'sGuild arise in the United Kingdom, a copyright infringementwill have taken place.     

Navigating the rocky waters of trade mark law

Kerly's Law of Trade Marks and Trade Names, 14th Edition ByDavid Kitchin QC, David Llewelyn, James Mellor, Richard Meade,Tom Moody-Stuart, David Keeling; with Consultant Editor: TheRt. Hon Sir Robin Jacob; Sweet & Maxwell, 2005 Price: £255,Hardback, ISBN: 0421860804, pp. 1,350   Until recently, trade mark practitioners in the United Kingdomhad to make do with the 13th edition of Kerly, the 1st editionof The Modern Law of Trade Marks, or the CIPA/ITMA Handbookwhen navigating the rocky waters of trade mark law and practice.The first two of these texts     

Three IP blogs

Lessig Blog By Lawrence Lessig United States of America Archivedback to August 2002 http://www.lessig.org/blog/ Techno Llama ByAndres Guadamuz Scotland Archived back to October 2004 http://technollama.blogspot.com/ Patently-O:Patent Law Blog By Dennis Crouch United States of America Archivedback to April 2005 http://patentlaw.typepad.com/