Mr Mulcaire attempted to rely on his right to privilege against self-incrimination (PSI), arguing that by revealing other names he would be liable to prosecution for conspiracy. However, the court held that PSI could be suspended in proceedings for breach of confidence under section 72 of the Supreme Court Act 1981. This would not compromise Mr Mulcaire’s right to a fair trial, because section 72 prevents incriminating statements or admissions being used in later proceedings, should they take place.

By accepting a definition of “confidential” including “private” and “commercial information”, the Court of Appeal effectively rendered PSI obsolete where any form of confidential information has been illegally obtained.

Dave Drew
0115 976 6226
ddrew@brownejacobson.com

Although the two final images are clearly the product of different photographs, the PCC held that on a qualitative assessment Image 2 reproduced a substantial part of Image 1 and therefore infringed.

Given that the two images are taken from a very different perspective this decision seems to grant very wide copyright protection to the claimant. Here the defendant has infringed by reproducing an image of a classic London icon from a location which the judgment acknowledges is popular with photographers, and has applied a well-known editing technique to isolate the red colour of the bus.

Although there are similarities, this decision pushes the very limits of what is protectable in a photographic image.

Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.

Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com

While a lot of local authorities will already have started thinking about drafting a statement it will require a lot of input from both officers and members and will need to be approved by the full authority. This approval is aimed at making the authority more accountable to the local tax payers with the hope that the gap between the highest and lowest earners will reduce.

The policy must be applied from 1 April 2012 and it will be interesting to see if the government’s wish to effectively “cap” the pay of the most senior officers will come true.

Posted by Anja Beriro, who specialises in : local authority law, public sector procurements, commercial agreements, projects and shared services; clients: local authority and private sector bodies

Anja Beriro
0115 976 6589
aberiro@brownejacobson.com

The changes have led to widespread concern, with companies fearing reputational damage if their key brands and trade marks fall into the wrong hands. However, with a non-refundable “evaluation fee” of $185,000 and careful policing promised by the registries, there should be a significant barrier in the way of most Internet fraudsters.

The industry is estimating we will see around 1,500 initial applications for gTLDs. In our opinion, gTLDs represent a new frontier on the Internet and, in turn, a great opportunity for companies to stake their claim with key trade marks or creative new branding.

Posted by Oliver Laing, who specialises in intellectual property agreements, anti counterfeiting and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Oliver Laing
0115 908 4854
olaing@brownejacobson.com

The DCE is proposed as a solution to the problem of the collapsing value of creative content – which can be electronically replicated and shared – by creating a cheap and efficient online copyright licensing system. The Government hopes that this will harness the growth potential of creative industries and make the UK a leader in digital copyright services.

However, there was a note of uncertainty from Baroness Wilcox, the intellectual property minister, who indicated that it was still to be determined if the DCE was a “workable proposition.” Updating copyright law for the digital age will be complicated and, whatever the government’s decision, Hargreaves’ proposed completion date of the end of 2012 looks increasingly ambitious.

Dave Drew
0115 976 6226
ddrew@brownejacobson.com

Furniture Village brought a Nominet complaint about furnitureland.co.uk. The respondent claimed that, although he knew about Furnitureland, he thought they had stopped trading, and so his registration of the domain name was in good faith.

Both the first instance Expert and Appeal Panel agreed, so the respondent gets to keep the domain furnitureland.co.uk, which it is using as a click through website.

The case shows that the Nominet DRS is not suitable unless the complainant can clearly show the registrant knew of the complainant’s rights.

Faced with similar facts, brand owners should consider a passing off or trade mark action, which may have a better chance of succeeding.

It is also worth noting that the panel maintained the DRS’s reputation for speed by refusing to stay the appeal because of a pending trade mark revocation.

Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Giles Parsons
0121 237 4557
gparsons@brownejacobson.com

HTC will by 19 April 2012 remove from all their devices the infringing feature, which enables the user to convert embedded data (such as a phone number) into a hyperlink.

The ITC embarked on their initial investigation in April 2010 after Apple complained that HTC infringed ten patents, which could have led to a ban of all HTC devices in the US market. Apple later dropped six patents and an ITC judge ruled that HTC had infringed two of the remaining four patents. This overdue final ITC decision, which follows a request for a review of their previous ruling from both companies, has been welcomed by the Taiwanese mobile phone-maker.

This result will be of interest to those following the patent disputes that Apple are embroiled in relating to Android technology, most notably with South Korean rival Samsung.

Laura Mackenzie
0121 237 3959
lmackenzie@brownejacobson.com

Winters, a Dutch company, filled cans branded with names like “Bullfighter” and “Pitbull” with soft drink mix. The cans were produced by Smart Drinks, who then sold the finished products. As Smart Drinks were registered in the British Virgin Islands, Red Bull sued Winter for infringement of its Benelux trade mark.

The ECJ ruled that service providers would not infringe trade marks when executing a technical part of the production process of the final product where they had no interest in their external presentation. Winter created the technical conditions for Smart Drinks to use the products, but did not use the products themselves.

This position is likely to be controversial. The European Commission noted that this may allow producers to avoid enforcement by dividing the production process amongst such service providers.

Dave Drew
0115 976 6226
ddrew@brownejacobson.com

The Opinion relates to the scope of copyright protection for databases. The Opinion states that a database, including the likes of football fixture lists and TV listings, can only be protected by copyright if it is an original intellectual creation of its author. Any creative effort in determining the elements of the database is a data creation activity and so does not count.

AG Mengozzi’s Opinion, if followed by the CJEU, will be a blow to the creators of sporting fixture lists and similar databases. No matter how much creative effort goes into the difficult task of creating a set of sporting fixtures, copyright in the database will only subsist if the presentation of the database is also in some way creative.

Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

For the companies whose products are being counterfeited it poses a concern not only for their customers’ safety, but also for the damage these inferior quality and potentially dangerous products could do to their reputation.

While stopping all counterfeit goods entering the UK is impossible, a strong and structured approach can be taken. In particular, customs watches can be set up with the UK Border Agency who will seize infringing goods of which it becomes aware, preventing their access into the UK. Once confirmed as counterfeit, goods are then destroyed.

In our view failure to control the influx of counterfeit products can cause irreparable damage to a company’s reputation and, as we have all seen, can be the death of a premier brand.”

Posted by Oliver Laing, who specialises in intellectual property agreements, anti counterfeiting and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Oliver Laing
0115 908 4854
olaing@brownejacobson.com

The strategy picks up a number of proposals for the future (such as the creation of a register of IP advisors, online training tool, and provision of audits) and some that are already in place such as online patent service “Ipsum” which allows businesses to find patents and related documentation online.

All steps are welcomed if they result in SME’s developing and protecting IP. So often SMEs only become aware of IP rights and their protection as a result of an internal dispute or on the departure of a key developer. Lets hope these measures will allow SMEs to be sufficiently informed at an early stage to prevent unnecessary disputes from arising.

Posted by Richard Nicholas, who specialises in commercial, IT and outsourcing agreements, complex projects for private and public sector clients, collaboration, distribution & agency contracts, e-commerce and consumer law.

Richard Nicholas
0121 237 3992
rnicholas@brownejacobson.com

Tom Duke will be based at the British Embassy in Beijing and will be responsible for providing UK companies trading in China with support and advice about the enforcement of IP rights.

In making the announcement, Baroness Wilcox (UK Minister for IP) commented on the opportunity that the Chinese market represents for UK businesses, stating that trade between the two nations was last year worth an estimated £42 million; she noted ‘we need an efficient global intellectual property system where businesses have the confidence to trade in growing markets’.

This appointment will be welcome news to UK companies such as Dyson who, we reported this week, are put off from dealing in China despite its rapid growth, due to the apparent lack of monitoring of domestic infringers of UK IP rights.

Laura Mackenzie
0121 237 3959
lmackenzie@brownejacobson.com

In advance of this week’s Intellectual Property Office (IPO) symposium, which will be attended by trade representatives from China and the UK (including the UK Minister for IP- Baroness Wilcox), Dyson warned that China faces expulsion from the World Trade Organisation (WTO), the body that enforces global trade rules.

Dyson, a member of the prime minister’s business advisory group, suggests that China is creating an unlevel international playing field which prevents foreign companies enforcing their rights against Chinese infringers by maintaining a patent application process in which Chinese applications are passed in less than a year, compared to five years for foreign businesses.

China’s approach to IP right enforcement is likely to be of increasing interest to UK companies eager to protect their products, should the emerging market continue to pursue rapid economic growth without attempting to monitor domestic infringers.

Laura Mackenzie
0121 237 3959
lmackenzie@brownejacobson.com

The initial complaint to the FTC mainly related to changes Facebook made in 2009 that allowed public access to content on pages that users believed were private or inaccessible. The new imposed measures require the company to inform users as to how their data is shared, to obtain express consent to override their privacy settings, and to conduct an independent privacy audit every two years

Mark Zuckerburg, the founder of Facebook, yesterday acknowledged that the company had made a ‘bunch of mistakes’ that had ‘overshadowed much of the good work we’ve done’, whilst pointing to various privacy improvements they had since made.

This is the latest development in the ongoing battle over internet privacy between the FTC and internet companies.

It will be interesting to see how Facebook balance the new privacy requirements with their aim to provide automatic ‘frictionless’ sharing by users.

Laura Mackenzie
0121 237 3959
lmackenzie@brownejacobson.com

It follows an order by a Belgian court that an ISP (Scarlet) must implement a filtering system to block their user’s ability to send and receive files containing musical works using file-sharing software without the copyright-holders permission.

The ruling does not prevent the blocking of specific illegal file-sharing sites by ISPs as in BT and Newzbin’s case; however the ECJ ruled the filter system ordered in this case, in which the ISP was expected to install the system at its own expense and use it for an unlimited period to indiscriminately monitor all customer’s electronic communications, was contrary to EU law and fundamental rights, including the E-Commerce Directive.

This ruling will be welcomed by both ISPs and campaigners for internet freedom, particularly those following the relationship between the E-Commerce Directive and the Digital Economy Act.

Laura Mackenzie
0121 237 3959
lmackenzie@brownejacobson.com

Many companies will be closely following the development of colours as trade marks; the often strong association of a colour with a brand or type of product by consumers is something many will want to closely protect, whilst others will be concerned about being increasingly restricted in their use of colours on packaging.

Laura Mackenzie
0121 237 3959
lmackenzie@brownejacobson.com

Cadbury are likely to claim as a victory the ruling that they have built up enough distinctive character in their purple shade through their use of it on chocolate in bar and tablet form and eating and drinking chocolate products.

However, it is worth noting that the registry agreed with Nestle that this distinctive association did not extend to their chocolate cakes, chocolate assortments, and some confectionery chocolate, and therefore Cadbury’s attempt to register trade marks in these areas was refused. Nevertheless, many will regard this as a victory for Cadbury in its long-running battle with Nestle.

Laura Mackenzie
0121 237 3959
lmackenzie@brownejacobson.com

Overturning the unanimous decisions of the Court of First Instance and the Court of Appeal, the Supreme Court has set an important precedent.

Based on knowledge of similar gene sequences, HGS claimed that Neutrokine-α could be used to treat conditions involving the immune system. The Court of Appeal held the patent held invalid for lack of industrial applicability as its use was too speculative.

The Supreme Court, having clearly been influenced by the wider consideration of public policy, held that the use of the gene need not be demonstrated, but must only be plausible. The decision has lowered the hurdle for patentability and has relaxed the standard of industrial application – an ‘educated guess’ for the use of an invention can now suffice.

Eli Lilly & Co still consider the patent is invalid, and the case is now likely to return to Court to determine the issues of obviousness and insufficiency.

Posted by Peter Ellis, who specialises in commercial litigation or dispute resolution; intellectual property disputes e.g. trade marks, copyright, designs issues; breach of contract and claims through interruptions to trade.

Peter Ellis
0115 976 6269
pellis@brownejacobson.com

The High Court had dismissed Dyson’s infringement claim on the basis that the Mach Zen produced a different overall impression on the informed user. Dyson appealed the decision but the Court of Appeal dismissed the appeal emphasising that the key legal issues was whether the Mach Zen did or did not produce on the informed user a different overall impression and, in this case, the Mach Zen did indeed produce a different overall impression with the court noting that there were in fact ‘substantial differences’.

This case is a reminder that even if you have broad registered design protection, the use by a third party of a similar design will not amount to infringement if that design produces a different overall impression on the informed user (a knowledgeable user of the product).

Posted by Sara McNeill, who specialises in non-contentious intellectual property matters, including licensing, franchise, collaboration and development arrangements and IP audits and strategy; experienced in drafting and advising on commercial agreements.

Sara McNeill
0121 237 3930
smcneill@brownejacobson.com

The design was previously ruled invalid because it did not create a different overall impression on the informed user than an earlier Promer design. A key facet of Pepsi’s appeal was that the General Court had incorrectly defined the “informed user” and his level of attentiveness.

The ECJ disagreed with Pepsi and stated that informed user lies “somewhere between … the average consumer… who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise”.

Although this is a welcome clarification, this case concerned a very simple design, and it seems likely that the courts will continue to grapple with this concept in less straightforward design fields.

Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.

Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com

The damages cap which is to be applied to claims in the Patents County Court has now been formally extended to all claims brought in that court (previously it applied only to patents and designs). A sensible move, ensuring that claims relating to all intellectual property rights are brought into line with the court’s objective. With the PCC having dealt with over 100 new cases in the last year, it is apparent that parties have the confidence to resolve their disputes using the reformed process in the court.

Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

The two technology giants, both global leaders within the smartphone market, are now battling it out within the rapidly expanding market for personal tablets.

As of April 2011, Apple initiated lawsuits alleging patent infringement for the use of touch screen technology. The claims specifically concern the iPad and Galaxy Tab 10.1, with legal action spanning 10 different countries.

The most recent development concerns a decision taken today (13 October 2011) by Judge Bennett. The judge granted a temporary injunction on the sale of Samsung’s Galaxy Tab 10.1 within Australia, prohibiting participation in the upcoming Christmas sales.

This is yet another victory for Apple, with similar rulings given in Germany and the Netherlands. Despite this, the conflict seems unlikely to die down, as Samsung has threatened injunctions to ban sales of the new iPhone 4S in France and Germany.

Posted by Oliver Laing, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Oliver Laing
0115 908 4854
olaing@brownejacobson.com

This has to be the right decision: whilst the design of the product gives value to the goods it does not act as a badge of origin.

Posted by Sara McNeill, who specialises in non-contentious intellectual property matters, including licensing, franchise, collaboration and development arrangements and IP audits and strategy; experienced in drafting and advising on commercial agreements.

Sara McNeill
0121 237 3930
smcneill@brownejacobson.com

The patents were for a method of designing a drill bit using computer simulation. The patents did not include the step of manufacturing the drill bit to the resulting design, as Halliburton did not want to include such a limitation.
The judge found that the patent applications did not fall within the exclusions for mental acts or computer programs contained in the EPC.
The decision is a welcome one, and should go some way to bridging the gap that exists between the UK Intellectual Property Office and the European Patent Office on the matter of patentability of software-related inventions.

Oliver Laing
0115 908 4854
olaing@brownejacobson.com

In May 2011 he applied to the European Court of Human Rights to make it obligatory for the press to notify individuals concerned about stories that would affect their privacy. The court ruled that the guarantee of freedom of expression under Article 10 of the European Convention of Human Rights could not be restricted in this way.

He then appealed to the Grand Chamber of the European Court. Last week (27 September 2011) a five panel court refused to reconsider the earlier ruling, holding that the ECHR’s decision was final.

Max Mosley says that his fight is not over. Whilst he may have reached the end of the road in the courts, he is now pinning his hopes on government committees and inquiries for a safeguard to privacy. Having taken his battle so far in the courts without success it is difficult to imagine that any other route could successfully side step the ruling of the ECHR.

Posted by Paula Dumbill, who specialises in non-contentious intellectual property, particularly trade marks and copyright, advising in particular on IP exploitation and collaboration agreements and trade mark portfolio management.

Paula Dumbill
0115 976 6059
pdumbill@brownejacobson.com

The 57th version seeks to bring uniformity and clarity to the meaning of “more advantageous” and “at least as advantageous” in Part 36. In recent cases judges have been seen to use their discretion leading to inconsistency in their decision making when it comes to awarding costs following an unaccepted Part 36 offer.

From 1st October, “more advantageous” means “better in money terms by any amount, however small”. And “at least as advantageous” shall be “construed accordingly.”

The amendment will provide a clearer cut approach to the costs rules, and it is hoped that the change will reduce the number of appeals bought forward regarding costs.

CPR.14(2)(a) provides that the normal cost consequences of Part 36 do not have to apply following judgment if it is unjust for them to do so. It remains to be seen as to whether parties will seek to rely on this aspect of the Part despite the clarity provided, if for example, the award is better in monetary terms by a nominal amount.

Posted by Nichola Evans, who specialises in professional indemnity work, directors and officers, legal expenses insurance, conditional fee agreements and after the event insurance and commercial litigation.

Nichola Evans
020 7337 1019
nevans@brownejacobson.com

Facebook has clearly recognised that the way technologically literate consumers access media content has changed forever. Illegal file-sharing has increased exponentially since the days of Napster and is now a global phenomenon which is virtually impossible to police. Facebook’s collaboration with innovative media streaming sites will surely be a huge step in the right direction for the online entertainment industry.

The rapid decline in sale of CDs has left the music producers with a profound problem. How do they protect the copyright of their creative endeavours and make a profit? Spotify seems to think the answer is to align their service with the habits of consumers and with more than 750 million active users, there is no online habit more engrained than Facebook.

Dave Drew
0115 976 6226
ddrew@brownejacobson.com

The ECJ ruled (amongst other points):

• a trade mark proprietor can prevent a competitor from using a keyword identical to their own trade mark to advertise goods or services identical to those covered by their trade mark where such use is liable to have an adverse effect on the functions of the trade mark: the ‘indicating origin’ function of a trade mark will be adversely affected if the advertising displayed as a result of the keyword does not enable an internet user to ascertain whether the goods or services advertised originate from the trade mark proprietor or a third party.
• the proprietor of a trade mark with a reputation is entitled to prevent a competitor from advertising on the basis of a keyword corresponding to that trade mark where the competitor takes unfair advantage of the distinctive character or reputation of the trade mark or where the advertising is detrimental to that distinctive character.

The first point is unsurprising – its what we’ve been seeing in the national court rulings. However, it will be interesting to see how broadly the second point is interpreted by the English courts.

Posted by Sara McNeill, who specialises in non-contentious intellectual property matters, including licensing, franchise, collaboration and development arrangements and IP audits and strategy; experienced in drafting and advising on commercial agreements.

Sara McNeill
0121 237 3930
smcneill@brownejacobson.com

Previously, Google has lagged behind its competitors in developing a substantial patent portfolio and, as a result, has been seen in some quarters as vulnerable to patent infringement litigation. However, following its acquisition of Motorola Mobility in August, and the recent acquisition of patents from IBM, Google has put itself in a position where it could respond to infringement threats with its own ‘cold war’-like threat of mutually assured destruction. Alternatively, Google may be plotting its own infringement claim offensive.

Patents are increasingly the weapon of choice for technology companies looking to maintain a competitive edge. A potentially beneficial result of this is that the need to avoid a competitor’s patents may sometimes promote innovation and create new patentable technologies.

In the meantime, no comfort is given to smaller companies, which may struggle to afford the costs of ensuring that their innovative ideas do not infringe the patent portfolios of the technology “super-powers”.

Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.

Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com

Whilst Nominet has always held a power of suspension, previously used in cases of incorrect registration, their current regulations do not provide a formal procedure for blocking domain names as a result of criminality.

Some commentators have expressed concern about which agencies will be able to request suspensions, and an appeal process together with a periodic policy review are likely to be required.

It seems likely that new procedures will be introduced, and if so these should provide victims of counterfeiting and copyright infringement with another valuable tool for taking action against online infringers.

Laura MacKenzie
0121 237 3959
lamckenzie@brownejacobson.com

Research in Motion, the maker of BlackBerry and a global leader in wireless technology, has committed to assist the authorities ‘in any way it can’ and the police have said they will track down and arrest those who have posted ‘really inflammatory’ messages on BBM and social network sites.

However, its going to be a difficult task due to the number of messages involved, potential resistance from media companies to handover user details and, because BBM messages are usually encrypted when they leave the sender’s phone making tracing calls difficult.
The police will have to adapt their own policing methods to tackle this use of technology as a means of organising unlawful activities.

Posted by Sara McNeill, who specialises in non-contentious intellectual property matters, including licensing, franchise, collaboration and development arrangements and IP audits and strategy; experienced in drafting and advising on commercial agreements.

Sara McNeill
0121 237 3930
smcneill@brownejacobson.com

The Government revealed its goal to “have measures in place by the end of this Parliament” and will prepare more detailed proposals for consultation. The report’s recommendations include:

• the creation of a digital copyright exchange which would assist the buying and selling of digital copyright licences and add up to £2.2 billion to the UK economy by 2020
• allowing copying of data for private purposes or where it does not damage the underlying aims of copyright, which would enable private users to copy media from one format to another (e.g. copying iTunes tracks onto a CD)
• adapting the patent and design frameworks to enable IP law to keep up to date with technology and business practices.

The Government’s response demonstrates a commitment to assist UK businesses in using intellectual property but it remains to be seen how, and whether, such assistance will be given.

Alex Kynoch
0115 976 6528
akynoch@brownejacobson.com

Merck brought two cases complaining that various companies had infringed its trade marks by selling repackaged products which stated the repackaging had been carried out by one company when it had actually been carried out by another company in the same group.

Last week the court held that Merck’s rights were sufficiently protected by the companies marketing the pharmaceuticals putting their name on the packaging and therefore there was no trade mark infringement.

It is also worth noting the court’s previous comments that derogations from free movement of goods will only be permitted to the extent necessary to protect the specific subject matter and the essential function of a trade mark.

Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Giles Parsons
0121 237 4557
gparsons@brownejacobson.com

The first issue addressed by the Supreme Court was to confirm that the Stormtrooper helmet was not a “sculpture” and therefore not an “artistic work”. Under English law, the helmets were therefore protected by design right (which has a shorter term of protection) and not by copyright.

The second issue was whether US copyright could be enforced in the English courts. Overturning the Court of Appeal’s finding on this issue, the Supreme Court held that it could. In a world of prolific cross-border trade and e-commerce this has to be the right decision, giving rights holders increased protection against international piracy.

Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.

Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com

Currently, groundless threats of trade mark, design or patent litigation can be causes of action themselves.

Sabre rattling should obviously be discouraged, particularly as just the threat of infringement can be enough to make customers defect to rightsholders to avoid the threat of litigation.

But businesses harmed by allegations of infringement are often reluctant to bring a claim for groundless threats, particularly as they could be ordered to provide security for the rightsholder’s costs. When claims for groundless threats are brought, the costs can be disproportionate to the damage done by a threat. And in practice, the threats provisions can cause costs to increase, because rather than encouraging a litigant to set out its case clearly (which could result in an early settlement), litigants may seek to artificially narrow their claim to avoid threats actions.

So whilst the rationale behind the threats provisions is admirable, in practice they do not function effectively. Part of the solution may be amendment to the Civil Procedure Rules to allow declarations that threats are unjustified to be brought cheaply and quickly.

Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Giles Parsons
0121 237 4557
gparsons@brownejacobson.com

TVCatchup provides a quasi-live service, relaying free-to-air TV channels to UK members. ITV (etc) claimed that this infringed their copyright by “communicating to the public”, by electronic transmission, their films and broadcasts. TVCatchup argued that the relevant legislation had been amended improperly and was therefore invalid.

The judge provisionally found that the transmissions were “communicating to the public”, although he thought that they only reproduced a substantial part of ITV’s films, not of their broadcasts; also, for some reproductions TVCatchup may have a defence of “incidental” copying. However, he felt these issues needed clarification from the ECJ.

A final judgment may be years away allowing TVCatchup in the meantime to continue profiting from its services and must surely be a bitter pill to swallow for the broadcasters.

Laura Phillips
0115 976 6182
lphillips@brownejacobson.com

Google began the bidding, expressing an interest in the portfolio as valuable protection for disputes, particularly relating to Smartphone technology and also Google’s android technology, already the subject of a $6.1bn damages claim from Oracle.

The deal still requires approval from the US and Canadian courts but with the consortium members having a reputation for an aggressive approach to patent litigation no doubt this portfolio will quickly find its way to court with hefty damages claims being asserted.

Posted by Paula Dumbill, who specialises in non-contentious intellectual property, particularly trade marks and copyright, advising in particular on IP exploitation and collaboration agreements and trade mark portfolio management.

Paula Dumbill
0115 976 6059
pdumbill@brownejacobson.com

Qualifying patents are patents granted by the UK Intellectual Property Office and the European Patent Office only. However the scheme will apply to worldwide income earned by UK businesses as well as income from the sale of qualifying patents.

The Government has acknowledged that its initial proposal that the Patent Box would only apply to all qualifying patents first commercialised after 29 November 2010 is not a workable option and has proposed as an alternative phased in transition which extends the benefits of the scheme to all qualifying patents.

These proposals are encouraging but there are still some issues around how the profits attributable to qualifying patents will be calculated. UK organisations must review the proposals carefully within the context of their own business and feedback any issues before the deadline of 2 September 2011.

Posted by Sara McNeill, who specialises in non-contentious intellectual property matters, including licensing, franchise, collaboration and development arrangements and IP audits and strategy; experienced in drafting and advising on commercial agreements.

Sara McNeill
0121 237 3930
smcneill@brownejacobson.com

Temple Island (TI) owns the copyright in a photograph of a bus near Westminster and is suing New English Teas (NET) for using a similar photograph.

In court, TI applied to amend their claim to refer to another photograph which they said was even more similar to NET’s photograph, claiming it could have been ‘clandestinely’ or ‘subconsciously’ copied .

The court applied the cost-benefit test from the Civil Procedure Rules governing the Patents County Court. This says that material will only be admitted if the court is satisfied that the value of material in resolving issues justifies the cost of dealing with it.

The judge said that allowing the amendment would introduce a jungle of issues into an otherwise straightforward matter and would not help the Claimant’s case – so the amendment was refused.

Litigants will be pleased to see active case management which narrows issues and save costs.

Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Giles Parsons
0121 237 4557
gparsons@brownejacobson.com

Given that the website was created and hosted in the UK it seems strange that ICE is so keen for Mr Dwyer to be charged in the US. The findings of HHJ Ticehurst in the TV-Links case back in February 2010 may have provided Mr O’Dwyer with a defence in the UK, whereas charges in the US legal system may be much more difficult to defend, particularly given the lack of state legal aid.

Given the furore over the UK’s extradition rules resulting from the US’ attempts to extradite hacker Gary McKinnon it will be interesting to see the approach taken by the UK courts in this case, which appears to relate to considerably less serious allegations.

Alex Kynoch
0115 976 6528
akynoch@brownejacobson.com

Though there have been concerns that peer review could be negative with competitors attacking rival applications, earlier trials in the US and Australia appear to have been largely successful and so there is little reason to suspect that results in the UK will be significantly different. The real test may, however, come later when we see whether the project can be extended to other fields of technology.

Posted by Emma Tuck, who specialises in Intellectual property disputes relating to patents, trade marks, designs and copyright; non-contentious intellectual property matters including advising on licensing, assignment, confidentiality and collaboration agreements

Emma Tuck
0121 237 3908
etuck@brownejacobson.com

Miffy, a small white female rabbit, was created in 1955 by Dick Bruna. Cathy, also a small white female rabbit, was created by Sanrio in 1976.

In 2010 Mercis Media BV (Mr Bruna’s copyright management firm) brought trademark and copyright infringement proceedings against Sanrio. Why it took Mr Bruna 34 years to bring proceedings is unclear…

Sanrio was ordered to stop production, sale and marketing of Cathy character goods in the Netherlands, Belgium and Luxembourg and to pay €25,000 per day if it did not comply, up to a maximum of €2m.

Sanrio appealed and filed a counter claim seeking the Miffy trade mark be removed from the register.

The matter has now been resolved, with Sanrio agreeing to no longer use the Cathy character. Both parties have also agreed to donate €150,000 jointly to the victims of the Japan earthquake. A very commendable settlement indeed.

Oliver Laing
0115 908 4854
olaing@brownejacobson.com

The court decided that Team Lotus owns the goodwill in the Team Lotus name, but that the trade mark has been revoked because it did not use it for a five year period. This means that Team Lotus can still enforce its unregistered rights in the name. The court also found that Team Lotus is entitled to register new trade marks for Team Lotus. Team Lotus was also found not to have infringed the Group Lotus trade marks.

However, Team Lotus could not prevent Group Lotus from racing in Formula 1 using the JPS black and gold livery, and it was found to have breached an earlier licensing agreement entered into with Group Lotus.

Perhaps the proof of the pudding is in the eating – both teams can continue to line up at this season’s Grand Prix with the names and liveries they were using before the judgment!

Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

But yesterday, Tugendhat refused to remove the anonymity granted to the claimant in CTB v News Group Newspapers even though his identity had been disclosed in parliament.

The judge said that the question that had been asked in parliament about it and the “tens of thousands of people” that named the claimant strengthened the claimant’s claim to need protection, and the order remains in place to protect him from “taunting and other intrusion and harassment in the print media”.

The courts held in the Spycatcher case that confidentiality is destroyed by public dissemination – but the purpose of a privacy injunction is not just to keep a matter secret – it is also there to prevent intrusion and harassment. The decision is courageous and well reasoned – but it must rather grate with businesses that are told that they cannot prevent continued misuse of their confidential information once it has become public.

Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Giles Parsons
0121 237 4557
gparsons@brownejacobson.com

Some key suggestions include:

• establishing a digital copyright exchange, enabling automated licensing

• allowing licensing of ‘orphan’ works (with no identifiable author)

• incorporating into UK law a number of copyright ‘exceptions’ including for, private copying/‘formatshifting’ (e.g. from CD to mp3 player), parody and non-commercial research for all copyright works

• protecting exceptions from being overridden in contracts

• introducing a small claims track in the Patents County Court

In reality, many of the ‘exceptions’ proposed simply reflect what the public expects in the internet age, by removing the confusion caused by rights which it is impossible or impractical to enforce. However, rights holders will be pleased to note that calls for a broader ‘fair use’ defence were rejected.

Laura Phillips
0115 976 6182
lphillips@brownejacobson.com

Pepsico’s design was challenged on the basis that it did not have individual character having regard to an earlier CRD. A design has individual character if it creates a different overall impression on the informed user than designs which were available to the public before the filing date of the design. When assessing individual character, the degree of freedom of the designer in developing the design is considered.

The AG recommended dismissing the appeal on the grounds that assessing individual character and design freedom are questions of fact, which can only be re-considered by the ECJ in the case of distortion.

Because “overall impression” can only be subjectively assessed, and cases will almost always turn on their facts, litigants are likely to find it extremely difficult to appeal cases to the ECJ.

Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.

Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com

The confidentiality agreement states that any significant breach of its terms will result in a loss to Wikileaks of £12,000,000, which it would then attempt to recover from whichever employee dared to leak information to the outside world. Luckily for the employees, it seems unlikely that this monumental figure is a genuine and reasonable pre-estimate of loss, meaning that the courts would be very unlikely to allow Wikileaks to claim such a sum.

The agreement also gives examples of how such loss may be caused to Wikileaks, the first listed being “loss of opportunity to sell the information to other news broadcasters and publishers”. It seems unlikely that the sources who risk their livelihoods to provide information to the public would be happy for it to be commercialised in this way.

Alex Kynoch
0115 976 6528
akynoch@brownejacobson.com

The Court of Appeal, overturning the High Court decision, found that it had erred when carrying out the “ultimate balancing test” between the right to privacy and freedom of expression. The lower court had not sufficiently taken into account the rights of X or ETK’s wife and importantly ETK’s teenage children.

This decision will anger the press, but it is clear that where children’s rights are at stake, courts will be quicker to gag the publisher. Of course, celebrities will now drag their children into the equation at every opportunity – it does seem harsh that they will now use their children’s distress at what they have done, as a means to obtaining their injunctions.

Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

Judge Birss QC ordered that MediaCAT (who did not attend the hearing) pay the Defendant’s costs in the matter and made a ‘stage one wasted costs’ order against ACS: Law. This is a punitive order made against a party’s legal representative where the representative has acted ‘improperly, unreasonably or negligently’. Judge Birss was highly critical of Mr Crossley’s actions through ACS: Law, criticising his “improper and champterous” documents and “plainly negligent” drafting.  ACS: Law now has an opportunity to answer these findings.

Clearly the Judge was not happy with ACS: Law and MediaCAT’s blanket approach of demanding cash settlements from suspected file sharers, demonstrating that a more responsible approach should be taken when dealing with such suspected infringements.

Alex Kynoch
0115 976 6528
akynoch@brownejacobson.com

When that person leaves – how do you stop them from disclosing information about your product or company to other suppliers?

We looked at practical legal steps (restrictive covenants, contractual provisions) and technical/IT steps that you can use to prevent the loss of IP, data and know-how in a recent workshop and picked up some useful industry perspectives from those who attended.

If all else fails then the court will intervene, occasionally with a fairly stringent perpetual injunction, prohibiting that person from (ever!) disclosing that information, as in a recent case involving a golf trolley device .

To get such a prescriptive remedy however you’ll need to act fast, demonstrate a real threat and that other remedies will not suffice. Getting the right IP and contractual protection in place before you reach a dispute can significantly improve your chances.

Posted by Richard Nicholas, who specialises in commercial, IT and outsourcing agreements, complex projects for private and public sector clients, collaboration, distribution & agency contracts, e-commerce and consumer law.

Richard Nicholas
0121 237 3992
rnicholas@brownejacobson.com