Posts Tagged ‘Intellectual Property’
Thursday, September 9th, 2010
The High Court has dismissed a claim by Dyson Ltd against rival Vax Ltd for infringement of Dyson’s registered design for a cyclonic vacuum cleaner. The claim concerned Vax’s Mach Zen model which Dyson claimed infringed their registered design dating back to 1994.
Mr Justice Arnold dismissed the claim, deciding the two designs gave a different overall impression to the informed user of vacuum cleaners. He based this on the significant differences between the two machines; stating the Dyson machine gave a smooth, curving, elegant impression whereas Vax’s machine gave a rugged, angular, industrial and even rather brutal impression!
Despite the judge’s complementary take on its design Dyson are very unlikely to be satisfied with this decision. Dyson have historically gone to great lengths to protect their famous intellectual property. It therefore seems very likely that they will try to appeal it, in which case there is a likelihood of a referral to the ECJ.
Posted by Oliver Laing
0115 908 4806
olaing@brownejacobson.com.com
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Tags: Dyson Ltd, Intellectual Property, Patents, Vax Ltd
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Friday, September 3rd, 2010
In last week’s Legal Opinion, Stig facing the dump, Browne Jacobson reported the initiation of legal proceedings by the BBC who were seeking to restrain the publication of Ben Collins’ autobiography, The Man in the White Suit, which identified Mr Collins as Top Gear’s enigmatic celebrity driver The Stig.
By ruling of Mr Justice Morgan earlier this week, the High Court declined to grant the above relief, leaving publishers HarperCollins free to proceed with its proposed release. The Court’s reasoning is presently unknown and may remain so for some time as it is understood that judgment is to be given in private. One can only speculate, therefore, that the BBC may have been unable to show the necessary quality of confidence in Stig’s identity to persuade the Court that an injunction was appropriate (speculations about Mr Collins’ alter ego having been published as long ago as January 2009). Alternatively, HarperCollins may have successfully relied on Mr Collins’ right to freedom of expression, enshrined in Article 10 of the European Convention on Human Rights, to defeat the BBC’s application.
Of course, just because the BBC has lost the battle for an interim injunction, doesn’t mean that it will not ultimately be entitled to compensation for what may have been a breach of an equitable and/or contractual duty of confidence by Ben Collins. If this happens, Mr Collins may find a significant proportion of his royalty income wending its way towards dear old Auntie.
Some say… it’s not over yet!
Posted by Richard Roberts, who specialises in intellectual property law including patents, copyright, trade marks, passing off, designs and breach of confidence; regular speaker on IP issues.
Richard Roberts
0115 976 6199
rroberts@brownejacobson.com
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Tags: BBC, Ben Collins, Intellectual Property, The Stig, Top Gear
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Friday, August 27th, 2010
Oracle (formally Sun Microsystems) brought infringement proceedings against M-Tech for importing disk drives (bearing the SUN trade marks) without its consent into the European Economic Area (EEA) that had been first marketed outside the EEA. Under European trade mark law, putting goods on the market in the EEA without the trade mark owner’s consent amounts to trade mark infringement.
Oracle deliberately does not publish information about whether its goods have first been sold in the EEA, making it virtually impossible for re-sellers to know where the goods were first marketed. This acts as a deterrent to the importation of Oracle hardware generally, regardless of place of first marketing.
M-Tech said Oracle’s policy was contrary to European competition law but the High Court granted summary judgment in Oracle’s favour. The decision was overturned by the Court of Appeal who decided that M-Tech had a real prospect of success with its so called “Euro-defences”.
M-Tech still needs to establish those arguments in order to win its case and we could be waiting some time for an answer, given that a reference to the Court of Justice of the European Communities looks likely.
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
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Tags: competition law, grey goods, Intellectual Property, parallel imports, trade marks
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Friday, August 27th, 2010
The BBC has reportedly started legal proceedings against HarperCollins for seeking to publish an autobiography of Ben Collins, a former racing driver, in which Mr Collins alleges that he is The Stig, the helmeted driver of BBC’s Top Gear. The BBC alleges that the threatened disclosure “breaches agreed contractual and confidentiality obligations”.
Presumably, if Mr Collins is the current Stig (or perhaps one a number of Stigs) there will be restrictive covenants in place. If Mr Collins is merely a former Stig then the contractual position may be more complicated. Even so, one must fancy the BBC’s chances of showing that any such disclosure is/was a breach of confidence at common-law (although interim injunctive relief would appear impossible given that the Stig is out of the bag, so to speak).
Either way, The Stig’s secret identity is a key theme of the show. If Mr Collins is the current Stig, the BBC will surely move quickly to replace him.
Posted by Nick McDonald, who specialises in intellectual property law including copyright, patents, trade marks, passing off, design disputes, breach of confidence, database rights and IT.
Nick McDonald
0115 976 6198
nmcdonald@brownejacobson.com
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Tags: BBC, Ben Collins, Intellectual Property, The Stig
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Friday, August 20th, 2010
When establishing the meaning of words that are claimed to be defamatory, one must look at the context in which they appear.
In 2008, The Spectator published an article on its website which said:
“As Harry’s Place points out:-Demos sponsored and participated in a debate at IslamExpo and a seminar on ‘Political Islam’. That’s right: a left of centre think tank worked with a clerical fascist party to organise a conference about its racist, genocidal, theocratic political programme.”
Islam Expo Ltd, the organisers of the event, sued for libel. The Spectator argued that the court should look at the source of the quotation which was linked to the article. From this, it argued, it was clear that ‘party’ must be a reference to the British Muslim Initiative or the Muslim Brotherhood.
However, as the words ‘IslamExpo’ appeared in the short quotation in the Spectator’s article, and the original article also said that the British Muslim Initiative, Muslim Brotherhood and Islam Expo “are one and the same”, Tugendhat J held that the words were capable of referring to the organisers.
The judge emphasised that he did not intend to rule whether looking at hyperlinked documents was right in law – but in cases like this, where one internet posting comments on another, it must be sensible to look at the original posting to ascertain the meaning of the second post.
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: Intellectual Property, IslamExpo, media
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Tuesday, August 10th, 2010
The scope of copyright protection for computer programs has come under scrutiny once again. The view of the English Courts has been that copying the functionality of a program which does not involve the copying of source code or graphics does not amount to infringement of the copyright in the program. In SAS Institute v World Programming Limited, the Judge’s preliminary ruling followed the previous court decisions but he acknowledged that guidance on a number of aspects of this area of law was required from the ECJ. It will be interesting to see if the ECJ upholds the approach taken by the English courts: if it does, then claims will have to be based on the copying of other elements of computer programs such as screen displays. Whilst this approach may be difficult for software owners to accept from an ownership perspective, it does provide the freedom to develop competing software so long as the source code and graphics are not copied.
Posted by Sara McNeill
0121 237 3930
smcneill@brownejacobson.com
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Tags: copyright, Intellectual Property, Software
Posted in Intellectual Property | 1 Comment »
Wednesday, August 4th, 2010
Nintendo has scored a major victory against computer games pirates in a recent High Court case which found that “modchips” are illegal. The modchips in question fit into the cartridge slot of the Nintendo DS console and, by bypassing the console’s security systems, enabled gamers to play pirated games downloaded from the internet.
The defendants’ argument that the chips allowed users to play home-made games was rejected by the judge – the existence of a non-infringing use did not provide a defence.
The decision, which sets an industry precedent, will provide comfort to game and console manufacturers who have seen their sales suffer as a result of online piracy. More importantly, it will have some impact because Nintendo has tackled the technology that makes piracy possible, rather than fruitlessly pursuing individual downloaders.
Posted by Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com
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Tags: Computer Games, Intellectual Property, Nintendo, Piracy
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Thursday, July 29th, 2010
Wayne Rooney has won a case against his former management company, Proactive Sports Management Ltd. The case concerned an agreement which gave Proactive an eight-year monopoly over the exploitation of Wayne Rooney’s image rights.
The agreement, which imposed a restriction that was much longer than the industry standard, was a restraint of trade and therefore unenforceable. The judge also considered Rooney’s age at the time the agreement was executed (he was only 17) and concluded that the agreement was not the result of a negotiation between equals.
The case illustrates the dangers of imposing lengthy restraints, particularly where these exceed industry standards (FIFA regulations stipulate a cap of 2 years for on-field agreements). Rooney was “delighted to have won this case” and the £4.3m he saved no doubt came in handy during Wayne and Coleen’s recent holiday in Barbados.
Posted by Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com
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Tags: Image Rights, Intellectual Property, Sport, Wayne Rooney
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Thursday, July 22nd, 2010
The Department for Business, Innovation and Skills has announced the dissolution of the Strategic Advisory Board for Intellectual Property Policy (SABIP). Its functions will apparently now pass to the UK Intellectual Property Office.
SABIP’s vision was to ensure “the UK’s IP framework rewards innovation and creativity and provides incentives for these to flourish. It seeks to embrace the changing global context and balance the needs of industry, artists and consumers alike.”
Only set up in 2008, SABIP has hardly had an opportunity to make its mark. Its evidence-based approach to change appeared logical and sensible. Its lasting legacy will be its report into the relationship between copyright and contract law. This report was met with mixed reaction particularly from those wary that SABIP’s willingness to consider alternative rewards to copyright might lead to an erosion of that right.
Many are simply asking ‘What did it do anyway?’ which presumably formed part of Vince Cable’s thinking when dissolving the quango.
Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
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Friday, July 9th, 2010
Ireland’s Department of Enterprise, Trade and Innovation has published the conclusions from its enquiry into whether the Irish Patent Office should continue to examine trade mark applications to see whether there are relative grounds for refusing the registration. A trade mark may be refused on relative grounds if it is identical or similar to an earlier trade mark. All applications are also examined to see whether the mark should be rejected on absolute grounds – i.e. because there is something inherently wrong with the mark, for example if it is not distinctive.
Applications for a European Community Trade Mark, and (since October 2007) for a UK trade mark, are not subject to examination on relative grounds. Instead, existing trade mark owners are notified of applications that may conflict with their registered, and given the opportunity to object – meaning that UK and Community trade mark owners must police applications.
The UKIPO changed the system of registration to make it more similar to the CTM system – but it is clear that the system in Ireland is easier both for smaller businesses that cannot afford to invest heavily in policing their portfolio, and for consumers, who have a better guarantee of the origin of their goods.
Posted by Giles Parsons
0121 237 4557
gparsons@brownejacobson.com
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Tags: Intellectual Property, Patents, Trade Mark
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Thursday, July 1st, 2010
Like England fans waiting for a World Cup tournament success, technology providers have been eagerly expecting Supreme Court guidance on the patentability of business methods and software inventions in the US. Unfortunately, they may be equally disappointed. Finally the decision of the appeal of Re Bilski has been delivered.
The Supreme Court has upheld the Federal Court’s view that an invention is patentable if it is “tied to a particular machine or apparatus” or if it “transforms a particular article into a different state or thing”, but has refused to confirm that this is the exclusive test.
It has however refused to endorse the earlier, far wider test requiring the invention merely to produce a “useful, concrete and tangible result”, which was set down in the State Street case, and which caused the patent applications to come flooding in. So at least the hi-tech world knows that there are some boundaries, but I suspect that is scant consolation.
Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
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Tags: Intellectual Property, Patents, Software
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Friday, June 18th, 2010
Ambush marketing is a ubiquitous feature of any major sporting event, and it’s certainly got FIFA cross at the 2010 World Cup, after orange mini-dress-sporting football fans were ejected from a World Cup match.
The women are accused of contravening the Merchandise Marks Act by abusing a trade mark. However, the difficulty in this case is that no mark of the company is visible on the dresses and it is therefore hard to see exactly what trade mark has been used.
The case demonstrates that organisations such as FIFA take ambush marketing extremely seriously and will crack down hard where they see examples of it. However it also illustrates that, no matter how draconian the legislation or the enforcement of it, ambush marketers will always be one step ahead.
One thing is certain: during the 2012 London Olympics, ambush marketers will find new ways to advertise their brand without paying hefty sponsorship fees. So, let the games begin!
Posted by Nick McDonald
0115 976 6198
nmcdonald@brownejacobson.com
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Tags: ambush marketing, Brands, Intellectual Property, world cup
Posted in Advertising & Marketing, Brands, Intellectual Property | 1 Comment »
Thursday, June 10th, 2010
The High Court has upheld a decision that consent given under a co-existence agreement to the registration of a trade mark for certain goods was a bar to opposition on relative grounds, citing section 5(5) of the Trade Marks Act.
Omega Engineering argued that Omega SA had no right to oppose its application to register OMEGA in respect of certain goods since it had expressly agreed not to do so under a co-existence agreement between the two parties. Omega SA argued, amongst other things, that the co-existence agreement was irrelevant to an objection made on relative grounds. Mr Justice Arnold disagreed stating that it would be unjust if a party who had consented to the registration of a trade mark could successfully oppose the application to register it.
This has to be the right decision otherwise the usefulness of co-existence agreements would be severely threatened.
Posted by Sara McNeill
0121 237 3930
smcneill@brownejacobson.com
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Tags: Intellectual Property, ip, Trade Mark, trade marks
Posted in Commercial Litigation, Commercial contracts, Intellectual Property | No Comments »
Monday, April 19th, 2010
The Information Commissioner has new powers to fine organisations up to £500,000 for breaches of the Data Protection Act that take place after 6 April.
Fines can only be imposed if a breach is serious and likely to cause substantial damage or distress. Also, only deliberate breaches or breaches where reasonable steps to prevent a foreseeable breach were not taken are covered.
The example of a ‘serious’ breach given in the Information Commissioner’s guidance is the loss of medical records during a move.
The Information Commissioner has said that he will “not hesitate to use these tough new sanctions for the most serious cases where organisations disregard the law”, and the next company or government department who hit the headlines for losing information should expect to be hit with a punitive fine as well as bad publicity.
Posted by Giles Parsons
0121 237 4557
gparsons@brownejacobson.com
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Friday, April 9th, 2010
Do you own trade marks or brands comprising two letters or a single character? Frustrated that you’ve not been able to register your brand as a domain name in the UK? Well, read on.
Nominet, which runs the register for .uk domain names, which total around eight million, has announced plans to make available those domain names which comprise two letters or a single character (think AA, BA) as well as other reserved names within the second level domains it controls (including .co.uk and .org.uk). Previously these domains were not available due to technical reasons, unless they had been adopted prior to Nominet’s establishment in 1996.
Nominet estimates that around 2,000 such domains would become available and these would first be offered to relevant trade mark owners during an initial “sunrise” period. Prior to the release, Nominet has invited interested parties to offer their views on the release. A summary of responses received to date are published on Nominet’s website. The responses to date seem to be overwhelmingly in support of the release of two-letter domains, but there has been a more cautious response to the release of single character domains – largely because it is perceived that there is less scope for legitimate use of such domains.
The consultation is open until 8 June 2010, and so if you are a stakeholder – maybe your organisation is well known by a two-letter acronym – you can respond to Nominet here.
The release of these domains is certainly a positive step. However, there have to be the correct safeguards in place to protect the interests of legitimate rights owners, and to avoid abusive registrations. This means that Nominet’s dispute resolution service is likely to see an increase in use once these domains become available.
Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
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Tags: Brands, Intellectual Property, Nominet
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Friday, March 26th, 2010
ICANN (Internet Corporation for Assigned Names and Numbers) have decided to delay yet again the decision on whether or not to establish the controversial .XXX domain name suffix for adult sites. This issue has now been debated for nearly a decade and it is time that ICANN makes the right decision and establishes the right to sell XXX domain names.
ICANN had previously accepted a request from a domain name registry to be permitted to sell .XXX domain names but subsequently changed its mind after very considerable pressure from a number of conservative groups. Given the very nature of the internet and the fact that it is the most prolific “provider” of adult material surely it is some what bizarre that ICANN should continue to get embroiled in any moral argument or judgement.
In fact to establish the .XXX domain name may well help those so inclined easily navigate their way to these sites, and equally help parents easily identify adult sites so that they can keep their children away. However, others argue that it will be seen as legitimising porn sites. The debate will continue but we can expect a decision in June.
Posted by Declan Cushley
0121 237 3991
dcushley@brownejacobson.com
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Tags: Brands, Domain, ICANN, Intellectual Property
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Friday, March 5th, 2010
The Sugababes show us how ownership could go round round
Heated rows between pop artists are often as frequent and as transient as their hits. The ownership of the groups’ names and the right to perform under a particular trade mark often provide the backdrop to disharmony. Just ask Liberty X, The Nolan Sisters or The Rubettes among others.
And so the ever changing face of the pop group Sugababes has perhaps unsurprisingly led to potential disputes about the right to use the brand SUGABABES. The word on the street is that former band member Keisha Buchanan, who was a founder member of the group, appears to be on the verge of suing the current line up of the ‘babes to prevent their use of the brand going forwards. Meanwhile another founder (and former) member Mutya Buena has filed a Community Trade Mark application for the SUGABABES trade mark.
Does this mean we are about to see a reunion of the founder members of one of the UK’s most successful girl bands?
The potential disputes which may follow between the current line up and the original group members demonstrate the clear advantages of having a single consistent entity owning the registered and unregistered rights to a brand, particularly where, as in the case of a pop group, the nature and personnel of the external face of the entity changes frequently. Question is though, which girl will be first to push the button?
Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
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Tags: Intellectual Property, Trade Mark
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Friday, February 26th, 2010
Here’s an idea for a game: Move a marble-like ball around a computer screen by continually placing train tracks in front of it
Here’s another one: Having developed the above programme, move the rights in it from you to your company and then seek to move it back again using the courts and the law of copyright infringement.
The first idea might seem a decent one. The second idea is a truly terrible and expensive one and one that developers should avoid at all costs as this case shows.
A freelance developer developed his game concept (called either Tracktrix, or later Train Trax) before he joined Circle Studios as a games developer. Without telling others in the company that he had developed this concept himself he passed on this concept and encouraged Circle Studios to exploit it.
Sadly this did not lead to commercial success and Circle Studios went into administration. Afterwards the developer sought to take back the concept and to do this he claimed, amongst other things – copyright infringement, alleging that Circle Studios had copied the game from him as a freelance developer. After all he should know…he (as an employee of Circle) had copied it!
Unsurprisingly perhaps the games developer was unsuccessful. As the developer had not disclosed where the idea came from, there was no reason for the employer to believe that the concept was not created in the course of his employment. Any infringement was caused by the developer. The copyright claim failed, as did a related breach of confidence claim, with the judge lamenting that the action reached the court in the first place.
The lesson – be clear where ideas come from as an employee and if you developed something yourself that you later want to use in your employment, discuss assignment or a licence with your employer. If it’s too late to do this, avoid litigation if you can, as taking that track without advice is likely to mean losing your claim, as well as your marbles.
Posted by Richard Nicholas
0121 237 3992
rnicholas@brownejacobson.com
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Tags: copyright, Intellectual Property, IT
Posted in IT Contracts, Intellectual Property | No Comments »
Friday, January 15th, 2010
Apple is already embroiled in an International Trade Commission (ITC) dispute with its competitor and mobile phone giant Nokia over alleged infringement of both parties’ patents . Now Apple, along with RIM (of Blackberry fame) are the subject of a new complaint before the ITC brought by Kodak.
Kodak has already successfully enforced its “picture previewing” patent against Samsung and Sun Microsystems in the recent past. In this new complaint to the ITC, Kodak is seeking to enforce the same patent against Apple and RIM, presumably with a view to securing favourable licensing revenue from the handset manufacturers.
This new action reinforces the view that the big players in the technology market regard the ITC as a forum with considerable bite. The ITC’s ability to force a ban on the supply of infringing products together with the ability to award damages within a process which can be far quicker than the equivalent process through the US courts marks it out as a forum of choice.
However, in a world in which open source and standardised technology is prevalent, one might question whether a readily available ban on supply really encourages innovation, or whether it rather leaves technology providers at the mercy of patentees. An environment in which patentees are encouraged to declare their patents as essential to a particular standard and then make them available to be used under licence on fair, reasonable and non-discriminatory terms also exists, but whilst patentees have the threat of an ITC action at their disposal, they will of course continue to use that to maximum effect.
Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
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Tags: Apple, Intellectual Property, ITC, Kodak, Nokia, Patents, RIM
Posted in Brands, Intellectual Property | 1 Comment »
Tuesday, January 5th, 2010
Back in October last year we reported on litigation commenced by Nokia in Delaware against Apple alleging infringement of 10 Nokia patents, considered by Nokia to be “essential” to the relevant wireless telecommunications technical standards. In early December Apple filed its response, denying infringement, together with a counterclaim, alleging that Nokia itself infringed 13 of Apple’s own patents.
Enough of the lawsuits, I hear you cry! Not a bit of it.
On 29 December, Nokia cranked the dispute up another notch, by filing a complaint with the US International Trade Commission alleging that Apple infringes 7 Nokia patents. This is a significant step, particularly as it appears to take Nokia’s claim far wider than a dispute relating solely to the iPhone. Here’s what Paul Melin, general manager of Nokia’s patent licensing at Nokia, had to say about this latest step: “while our litigation in Delaware is about Apple’s attempt to free-ride on the back of Nokia investment in wireless standards, the ITC case filed today is about Apple’s practice of building its business on Nokia’s proprietary innovation”.
Perhaps so, but though the patents before the ITC relate to technology which differs from those patents being litigated in Delaware, one can’t help wondering whether the battles aren’t in fact inextricably linked – after all, the original claim by Nokia was brought following a breakdown of licence negotiations, the timing of Nokia’s ITC complaint strongly suggests that it is the next step within the current dispute, and we all know that lawsuits can be settled and an adjustment to licence fees negotiated accordingly. We await Apple’s next move – we can be confident that the dispute will widen before the two sides bury the hatchet. Of course, the English High Court has jurisdiction to hear claims built on the “essentiality” of patents to standards……..
Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
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Tags: Intellectual Property, iPhone, Patents
Posted in Intellectual Property | 2 Comments »
