Archive for the ‘Intellectual Property’ Category
Thursday, October 20th, 2011
The Patents County Court was revamped this time last year with its principle objective being to promote access to justice at proportionate cost for SMEs and other parties involved in lower value IP disputes.
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
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Tags: coyright, Intellectual Property, lower value ip disputes, Patents, patents county court
Posted in Intellectual Property | No Comments »
Thursday, October 13th, 2011
A preliminary injunction has been granted in Australia as part of a global intellectual property rights battle between Apple and Samsung.
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
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Tags: Apple, galaxy tab, Intellectual Property, intellectual property rights, ip infringement, ipad, personal tablets, Samsung, smartphone, smartphone market, smartphone technology
Posted in Intellectual Property | No Comments »
Friday, October 7th, 2011
Bang & Olufsen has been refused registration of the shape of one its speakers as a community trade mark. The General Court of the European Union confirmed that whilst the shape of a product may be registrable as a trade mark, a mark which consists exclusively of the shape which gives substantial value to the goods cannot: this is an absolute ground for refusing to register a mark. The court found that the design of the Bang & Olufsen speaker was an essential part of Bang & Olufsen’s branding and increases the value of the product as well as being a key selling point of the product. The shape therefore gives ‘substantial value’ to the product making it unregistrable.
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
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Tags: Bang & Olufsen, community trade mark, General Court of the European Union
Posted in Brands, Intellectual Property, Retail | No Comments »
Friday, October 7th, 2011
On Wednesday the High Court handed down its decision in the Halliburton Energy Inc’s Patent. The decision was a further development on the law of inherently patentable subject matter. Halliburton’s four patent applications had previously been rejected on the grounds that they were excluded from patentability as methods for performing a mental act and as computer programs, under Art 52 of the European Patent Convention (EPC).
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
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Rating: 3.5/10 (2 votes cast)
Tags: European Patent Convention, European patent Office, Halliburton Energy Inc's Patent, High Court, Patents, software inventions, UK Interllectual Property Office
Posted in Intellectual Property | No Comments »
Wednesday, October 5th, 2011
Max Mosley’s continuing attempts to force newspapers to warn people before exposing their private lives have finally reached the end of the line – at least in the courts.
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
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Tags: browne jacobson, celebrity privacy, ECHR, European Convention of Human Rights, European Court of Human Rights, Max Mosley, media, Paula Dumbill, personal privacy, press freedom
Posted in Intellectual Property | No Comments »
Friday, September 30th, 2011
On 1st October the 57th update to the Civil Procedure Rules comes into force.
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
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Tags: amendments to part 36, appeals, browne jacobson, civil procedure rules, Claims, cost rules, Court of Appeal, Nichola Evans, Part 36
Posted in Commercial dispute resolution, Commercial Litigation, Litigation | No Comments »
Tuesday, September 27th, 2011
Understandably, the annual Facebook F8 developer conference is about the best place to go to find out about the key trends in online social networking. Last week, Mark Zuckerberg announced a new Facebook media sharing application which allows users to share music, TV and film from media sites such as Spotify.
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
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Tags: copyright, Facebook, Facebook F8 developer conference, Facebook media sharing application, Mark Zuckerberg, Social Media, social networking, Spotify
Posted in Intellectual Property | No Comments »
Friday, September 23rd, 2011
The European Court of Justice (ECJ) has given its preliminary ruling on the the questions referred to it by MR Justice Arnold concerning the use of a competitor’s trade mark as a keyword.
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
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Tags: advertising, Brands, browne jacobson, ECJ, European Court of Justice, Intellectual Property, keywords, Marks & Spencer verse Interflora, Sara Mcneill, Trade Mark, trade marks, Trademarked words
Posted in Brands, Intellectual Property | No Comments »
Monday, September 19th, 2011
With its recent acquisition of 1,023 patents from IBM, Google now owns approximately 20,000 patents.
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
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Rating: 7.5/10 (2 votes cast)
Tags: competitive edge, Google, IBM, infirngement claim, infringement threat, innovation, Motorola Mobility, patent infringement, patent portfolio, patentable technologies, Patents
Posted in Competition, Intellectual Property, IT Contracts, Licensing | No Comments »
Friday, September 16th, 2011
Under recently proposed rules, the police and other authorities may obtain the power to suspend ‘.uk’ domain names, without obtaining a court order, by making a request to Nominet, the UK domain name registry, to prevent ‘serious & immediate consumer harm’.
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
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Rating: 9.5/10 (2 votes cast)
Tags: .uk, counterfeiting and copyright infringement, domain names, Nominet, UK domain name registry
Posted in Intellectual Property | No Comments »
Thursday, August 11th, 2011
Its apparent that social media has been used extensively by those involved in the riots to organise and incite unrest. BlackBerry Messenger (BBM) has been the most popular method of communication with messages then being posted on social network sites like Twitter and Facebook to increase circulation.
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
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Rating: 10.0/10 (1 vote cast)
Tags: BBM, BlackBerry Messenger, Facebook, Reasearch in Motion, riots, Social Media, Twitter
Posted in Brands, Data Protection, Intellectual Property | No Comments »
Friday, August 5th, 2011
On 3 August, the Government announced its full support for the recommendations made in the Hargreaves Report on intellectual property and growth.
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
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Tags: copyright, design frameworks, hargreaves report, Intellectual Property, Patents, Vince Cable
Posted in Intellectual Property | No Comments »
Wednesday, August 3rd, 2011
The European Court of Justice has previously held that trade mark proprietors cannot object to pharmaceuticals being repackaged if repackaging is necessary to market the product, it does not affect the products’ condition, the packaging clearly identifies the repackager, is not defective, and the importer gives notice to the trade mark proprietor.
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
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Tags: European Court, ip, Merck, pharmaceuticals, trade marks
Posted in Intellectual Property | No Comments »
Thursday, July 28th, 2011
A prop designer engaged by Lucasfilm to manufacture Stormtrooper helmets for the first Star Wars film has recently won his copyright battle to continue selling replicas in the UK.
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
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Tags: copyright, Court of Appeal, designs, international piracy, jurisdiction, Lucasfilm, Star Wars, stormtrooper helmets, Supreme Court
Posted in Intellectual Property | No Comments »
Monday, July 25th, 2011
In its eleventh programme of reform, the Law Commission has announced it will consider reforming the laws relating to groundless threats.
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
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Tags: designs, groundless threats, Intellectual Property, Law Commission, Patents, trade marks
Posted in Intellectual Property | No Comments »
Monday, July 25th, 2011
The dispute between broadcasters ITV, Channel 4 and Five and online streaming company TV Catchup has been referred to the European Court of Justice (ECJ).
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
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Tags: copyright, copyright infringement, incidental copying, Intellectual Property, online streaming, TV Catchup
Posted in Intellectual Property | No Comments »
Monday, July 4th, 2011
The heat looks set to intensify in the telecoms industry as it was announced last week that a consortium of six telecoms companies including Apple, Microsoft, Sony, Research In Motion, Ericsson, and EMC successfully bid against Google and Intel to acquire a portfolio of more than 6,000 patents and patent applications relating to wireless and networking technology, including 4G, from bankrupt Canadian telecoms giant Nortel Networks. The final sale price was at least twice that anticipated.
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
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Tags: Apple, EMC, Ericsson, Google, Microsoft, networking technology, patent applications, Patents, Research in Motion, Sony
Posted in Intellectual Property | No Comments »
Friday, June 24th, 2011
The Government has issued its second consultation on its ‘Patent Box’ scheme which aims to cut the tax rate on profits generated from patents held by UK businesses to 10%.
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
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Tags: European patent Office, Patent box, Patents, UK businesses, UK Intellectual Property Office
Posted in Intellectual Property | No Comments »
Friday, June 24th, 2011
Science has long grappled with the problem of three buses coming at once. Amazingly, the new PCC rules provide a solution.
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
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Rating: 8.0/10 (1 vote cast)
Tags: civil procedure rules, copyright, New English Teas, patents county court, Temple Island
Posted in Intellectual Property | No Comments »
Friday, June 24th, 2011
Richard O’Dwyer, a 23 year old computer science student, faces extradition proceedings at the hands of US Immigration and Customs Enforcement (ICE) in relation to allegations of copyright infringement. Mr O’Dwyer is accused of creating and running a website which allowed users to view and download copyrighted material.
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
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Rating: 9.0/10 (1 vote cast)
Tags: copyright, copyright infringement, extradition proceedings, Gary McKinnon, HHJ Ticehurst, Richard O'Dwyer
Posted in Intellectual Property | No Comments »
