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.     

Terrell on Patents--a patent attorney's perspective

‘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.

Terrell on the Law of Patents By Simon Thorley, QC, RichardMiller,     

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/  

The Vessel Hull Design Protection Act of 1998: is it still afloat?

Legal context. The Vessel Hull Design Protection Act (‘VHDPA’or ‘Act’) is a unique form of industrial designprotection under US law, part of the Digital Millennium CopyrightAct 1998. Congress provided this sui generis form of protectionin response to the Supreme Court's decision in Bonito Boatsv Thunder Craft Boats, Inc. This statute has been underutilizeddue to the difficulty in proving infringement, as unintendedconsequences were caused by the way ‘hull’ was originallydefined under the Act. A bill is pending in Congress that addresseshow a ‘hull’ is defined, eliminating any inclusionof ‘deck’ features, when passed, registrants shouldbe able to pursue infringers with greater success. Key points. The recreational boat manufacturing industry hasbeen plagued by low-cost boat makers who think nothing of takinga competitor's boat hull design, and using it as a ‘plug’to make a casting for their own unauthorized manufacturing use,a counterfeiting technique known in the trade as ‘splashing’a hull. In the eight years since enactment, the boating industryhas generally overlooked this form of intellectual propertyprotection due to the difficulty in proving infringement—thatis likely to change soon. Practical significance. The Act includes the right to excludeothers from making, having made, importing, offering for sale,or using in any trade, any boat hull embodying the protectedhull design. The Act provides compensatory recovery for damagesas well as injunctive relief. The newly revised Act has thepotential to provide a low-cost and effective form of intellectualproperty protection for recreational boat manufacturers whobuild hulls from moulded fibreglass or similar materials.     

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.     

Dilution in the US, Europe, and beyond: international obligations and basic definitions

Legal context. The efficacy of trade mark dilution as a causeof action has been cast into doubt by the Supreme Court's actualdilution standard. However, Congress is currently consideringthe Trademark Dilution Revision Act 2005, removing the actualdilution standard and resolving other difficulties under thepresent Lanham Act 43(c). This should breathe new life intoblurring and tarnishment. It should also be recalled that theEU already has strong laws against dilution and unfair advantage. Key points. This article identifies international dilution obligationsin order to determine (in Part II) whether the US and EU arecompliant. It identifies problems under the present US dilutionlaw and the solutions offered by the Revision Act. It comparesthe US proposals with EU dilution protection to determiningwhat the two jurisdictions have to learn from each other. Thistheme will be continued in the next part of this article, whichfocuses specifically on blurring/detriment to distinctive character. Practical significance. The introduction of new US legislationwill make successful dilution claims easier and will increasethe frequency of actions under 43(c). It is vital that trademark lawyers are familiar with the changes. At the same time,it should be remembered that many of the same outcomes can beachieved under the current European legislative provisions.To the extent that the jurisdictions do not live up to theirinternational dilution obligations, there is scope for proprietorsto lobby for even stronger protection.     

The emerging international framework of business marks in the digital economy

‘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.

Domain Name Law and     

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.     

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.     

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.     

Ricketson and Ginsburg: Berne baby, Berne...

‘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.

International Copyright and Neighbouring Rights: The Berne Conventionand Beyond 2nd Edition By Sam Ricketson and Jane Ginsburg, 2006,Oxford University Press Price: £225, Hardback, ISBN: 0-19-825946-8pp lxxxvii + 1540, 2 Volumes   The praise     

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.     

Multimedia Works and Categorization in UK Copyright Law

‘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 Law in the Digital Society—The Challenges ofMultimedia By Tanya Aplin, 2005, Hart Publishing Price: £60,Hardback, ISBN: 1-84113-356-6, pp. 320   The protection of multimedia     

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     

Moving beyond the law: foreign pressure and the politics of piracy in China

‘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.

The Politics of Piracy – Intellectual Property in ContemporaryChina By Andrew C. Mertha, 2005, Cornell University Press Price:US$32.50, Hardback, ISBN: 0801443644. pp. 258   Criticism and proposed solutions surrounding China's ‘intellectualproperty problem’ in many cases have been     

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.     

Future Developments

July 2006 UK FSA Consultation Paper ‘Implementing MiFID for firmsand markets’ to be published. Consultation period to closein October 2006. 6 July: Deadline for responses to Committee of European BankingSupervisors’ (CEBS) consultation CP02 on its standardsfor outsourcing of     

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