Walking the groundless threats minefield

Legal context. It is one of the peculiarities of UK law thatthreatening litigation of IP rights can, in some circumstances,give rise to an action for "groundless threats". This has thepotential to cause great disruption to the right-holder's case.There is even the potential for professional advisors to endup in the dock where they made the threat on their client'sbehalf, raising the possibility of a conflict of interest preventingthe advisers from continuing to act. Key points. To minimise the risk of these scenarios, intellectualproperty law advisors, be they patent or trade mark attorneysor solicitors, should be aware of the provisions that governgroundless threats actions for the various IP rights, particularlyin light of the recent changes brought in by the Patents Act2004 and the further changes expected to the groundless threatsprovisions relating to designs. These alterations increasinglycomplicate what has always been a nebulous area of the law.In addition, there is considerable tension between the "talkfirst, sue later" philosophy underlying the Civil ProcedureRules and the "sue first, talk later" approach traditionallyused to circumvent threats actions. Reckitt recently confirmedthat the groundless threats provisions, while running counterto the purpose of the CPR, cannot be ignored by the Courts.This article provides an overview of the current state of thegroundless threats provisions that apply to the various IP rights,and considers how IP owners and their advisors can best navigatethe groundless threats minefield. Practical significance. Groundless threats form a complex andchanging area of IP law in the UK, which advisers need to takeinto account in virtually every dispute. Amendments made toSection 70 of the Patents Act 1977 have not provided a threatspanacea to patent holders and it remains to be seen how thesection will be interpreted by the Courts. What is clear isthat the threats provisions contained in the IP legislationwill remain in force in one form or another for the foreseeablefuture and that they remain a trap for the unwary.     

Regulation and brand value

Legal context. IP rights are dependent on the public policyconsiderations which provide the justification for their granting.However, when regulation impacts on the exercise of IP rights,there is often a clash of public policy considerations. Key points. This article considers what happens when that clashoccurs, concluding that, in all cases, IP rights will be trumpedby the public policy considerations which underlie the regulation,often with no basis for claiming compensation notwithstandingthe obvious and very real economic impact on the rights owner.Unfortunately, the markets do not always take this risk intoaccount when valuing premium brand companies. Practical significance. This conclusion may have serious implicationsfor premium brand companies, especially in heavily regulatedfields like alcohol, food, pharmaceuticals, and tobacco.     

Human rights: in the real world

Legal context. The impact of human rights on intellectual property("IP"), particularly in the light of the Human Rights Act 1998and growing criticism of IP by civil society. Key points. There can be a greater legal, as well as political,role for human rights in the development of IP. The place ofhuman rights in IP litigation is established: see decisionsin Levi v Tesco, Ashdown v Telegraph and ITP v Coflexip. However,the impact of human rights has been limited to extreme peripheralcases, without challenging the central priority accorded tothe interests of IP owners. After considering practical applicationsin "non commercial", "hybrid" and "commercial" fields, thisarticle argues for a more pervasive and central role for humanrights, by greater reference to the Human Rights Act 1998, theEU Charter, international human rights instruments, TRIPS anddecisions of other jurisdictions. This should enable a morebalanced outcome to be reached in many, but not all, cases. Practical significance. IP owners, those challenging IP rights,and those advising them should all consider greater use of humanrights in IP litigation—not just in exceptional cases.Those resisting infringement may increase their prospect ofsuccess; those arguing for infringement will be better placedto counter arguments which may be raised. However, revisionof national, regional and international IP legislation wouldbe required to address all perceived social difficulties withIP.     

Implementing Community obligations in the realms of intellectual property

Legal context. The various Acts of Parliament governing UK intellectualproperty law have been significantly amended to give effectto Community law. This article discusses the powers used bythe Secretary of State to implement Community obligations andthe Court of Appeal's recent clarification of the scope of thosepowers. Key points. This article describes the concerns expressed bysome commentators on the scope of the powers under the EuropeanCommunities Act 1972 and the key cases on that scope, includingOakley v Animal. The article uses the implementation of performers'moral rights as an example of where going beyond strict Communityobligations is necessary. Practical significance. The article will be useful to anyoneconsidering the validity of the changes made to domestic law,including amendments to primary legislation, to implement Directivesor other Community obligations.     

Copyright ownership in university students' academic works

Legal context. The impact of human rights on intellectual property(‘IP’), particularly in the light of the Human RightsAct 1998 and growing criticism of IP by civil society. Key points. There can be a greater legal, as well as political,role for human rights in the development of IP. The place ofhuman rights in IP litigation is established: see decisionsin Levi v Tesco, Ashdown v Telegraph and ITP v Coflexip. However,the impact of human rights has been limited to extreme peripheralcases, without challenging the central priority accorded tothe interests of IP owners. After considering practical applicationsin ‘non commercial’, ‘hybrid’, and ‘commercial’fields, this article argues for a more pervasive and centralrole for human rights, by greater reference to the Human RightsAct 1998, the EU Charter, international human rights instruments,TRIPS and decisions of other jurisdictions. This should enablea more balanced outcome to be reached in many, but not all,cases. Practical significance. IP owners, those challenging IP rights,and those advising them should all consider greater use of humanrights in IP litigation—not just in exceptional cases.Those resisting infringement may increase their prospect ofsuccess; those arguing for infringement will be better placedto counter arguments which may be raised. However, revisionof national, regional and international IP legislation wouldbe required to address all perceived social difficulties withIP.     

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.     

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.     

The implementation in England and Wales of the European Enforcement Directive

Legal context. The background to the EU Enforcement Directive(2004) and its implementation in England and Wales by legislativeand procedural changes taking effect in April 2006. Key points. Although much of the Directive required no implementation,there are doubts as to whether the implementing provisions gofar enough, particularly in respect of the rights of actionof representative bodies. Many of the provisions which havebeen made are cosmetic, but there are some significant changes.New evidential presumptions have been introduced in actionsin respect of publication right and rights in performances (althoughthe latter may not go far enough). Defendants may now be requiredto supply interim guarantees instead of submitting to interiminjunctions. Remedies in the design field have been clarified.By contrast, the rules as to damages in the IP field have beenmade more obscure by the implementation of Article 13 of theDirective. Finally, the courts may now make orders for the disseminationof decisions although quite what form these will take remainsto be seen. Practical significance. The changes are procedural not substantive,but they create important new opportunities for claimants andnew threats for defendants. Any parties and potential partiesto IP litigation in England and Wales therefore need to be awareof them.     

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.     

Is there still a hole in this bucket? Confusion and misrepresentation in passing off

Legal context. Passing off is an evolving tort. There may beopportunities to expand the scope of the tort to capture activitiesthat have not previously amounted to passing off. Key points. In Arsenal v Reed, Aldous LJ suggested that thetime has come to abandon the label "passing off" and recognisea tort of "unfair competition". The implication is that certainactivities that would not previously have been censured by thecourts might now constitute passing off. This raises the questionof what circumstances might justify giving claimants greaterrights of action. This article explores the possibility of justifyinga claim in passing off where the misrepresentation does notcause confusion, and dilution of the claimant's trade mark isthe only damage caused. Practical significance. There is no doubt that passing off willevolve still further. The English judiciary is perhaps now moreconscious of the flexibility of passing off than at any timein the recent past. Ambitious – even adventurous –claims may have a chance of success.     

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.     

Art and copyright: some current issues

Legal context IP lawyers are increasingly having to advise onart-related copyright matters. Current issues include the strongcopyright protection given to images, uncertainty in the protectiongiven to innovative contemporary art works, problems in applyingthe fair dealing exceptions to art works, and the increasingrelevance of other IP rights. Key points Image rights receive strong protection - photographsof public domain art works are protected in the basis of long-standingauthority (although there are arguments against such a view).Whether an artistic work is protected by copyright depends onwhether the work falls into the closed list of categories insection 4 of the Copyright, Designs and Patents Act 1988 (painting,drawing, engraving, sculpture, etc). Much contemporary art doesnot fall neatly within these categories. Categorisation willalso be in issue as far as Artist's Resale Right is concerned.There is lack of understanding amongst internet artists aboutthe copyright restrictions that apply to digital works and concernsare raised more generally about the lawfulness of appropriationart. Practical significance Lawyers advising artists and those exploitingartistic works need to be aware of the potentially broad scopegiven in UK law to protecting works of art (including photographsof public domain works such as Old Master paintings) and tothe conflict between copyright and the practice of appropriationart. Where infringement claims are being considered fair dealingarguments and the possible impact of human rights law in guaranteeingfreedom of expression will need to be carefully considered.There has been little reported litigation on moral rights butthis aspect cannot be ignored. Trade mark rights, design lawand passing off may also need to be considered.     

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.     

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.     

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.     

Is it a fair deal to tell tales on the tabloids?

Legal context. A recent High Court judgment, Fraser-WoodwardLimited v BBC and Brighter Pictures Limited, is of key interestto those that use or advise upon the use of copyright materialfor the purposes of criticism or review. Key points. This case involved the use of newspaper photographsof David and Victoria Beckham in a television documentary aboutthe relationship between celebrities and the press. The programmeillustrated its theme using screenshots of tabloid newspaperpages, which inevitably included a number of photographs. Theclaimant was the copyright holder in respect of a number ofthe photographs, and alleged that their reproduction in theTV programme was an infringement of copyright. The defendantssuccessfully relied upon the fair dealing and incidental inclusiondefences to copyright infringement. Practical significance. Although each fair dealing case willultimately turn on its own facts, Mann J gave a very usefulreview of the state of copyright law in this difficult area.     

Indirect holdings of securities and exercise of shareholder rights (a Spanish perspective)

The first 150 words of the full text of this article appear below. Key points

• Shareholder rights have been the centre of the debatein Corporate Governance since recently. At the same time, modernsecurities markets have evolved and changed profoundly in recentdecades, both in the way in which the securities are representedand transferred—through electronic book entries held byintermediaries—and in the geographical reach of such transfers:every corner of the world.
• Recent research has thoroughly analysedthe effects of the indirect holding system in those countriesthat have chosen to give legal status to indirect holding systems(where the paradigm is the USA), leading to the conclusion thatin these countries the issuer–investor relationship encountersfar more difficulties than in those that facilitate direct holding.Some scholars have even proposed that countries such as theUSA should move into a direct holding similar to the Spanishone.
• This article analyses whether direct holdings facilitatethe said issuer–investor relationship by reviewing . . . [Full Text of this Article]