31 July 2015

Copyright in Commissioned Works: Atelier Eighty Two Ltd v Kilnworx Climbing Centre CIC and Others

A question that I am often asked at pro bono IP clinics as well as in my practice is who owns the copyright in a commissioned work when the graphic or web designer or software house fall out with their customer. The basic principles were set out by Mr Justice Lightman in Robin Ray v. Classic FM Plc [1998] ECC 488, [1998] EWHC Patents 333, [1998] FSR 622, (1998) 21(5) IPD 21047, [1999] ITCLR 256 and amplified and clarified by the Court of Appeal in R Griggs Group Ltd and Others v Evans and Others [2005] EWCA Civ 11. The issue arose again in Atelier Eighty Two Ltd v Kilnworx Climbing Centre CIC and Others [2015] EWHC 2291 (IPEC).

In Atelier a graphic designer called Rik Kirk made the logos shown above in August 2011. At that time he was an executive director of the design company Purple Penguin Design Ltd. of Timperley near Altrincham. He was asked to create those logos by one Lionel Bunting who was then a director of both the claimant Atelier Eighty two Limited and the defendant Kilnworx Climbing Centre CIC. Kilnworx was never able to pay Purple Penguin's invoices. These were paid instead by Ateler which also claimed to have paid many other expenses. The parties fell out in 2012. By an assignment dated 23 Aug 2013 Purple Penguin purported to assign whatever copyrights it held in the logos to Atelier. Atelier asked Kilnworx not to use the logos. When it continued to do so Atelier sued Kilnworx and two of its directors for copyright infringement.

The defendants argued that Kilnworx was and always had been the beneficial owner of the copyright or at the very least the exclusive licensee.

In Ray Mr Justice Lightman said at page 640:
The general principles governing the respective rights of the contractor and client in the copyright in a work commissioned by the client appear to me to be as follows:
(1) the contractor is entitled to retain the copyright in default of some express or implied term to the contrary effect;
(2) the contract itself may expressly provide as to who shall be entitled to the copyright in work produced pursuant to the contract. Thus under a standard form Royal Institute of British Architects ('RIBA') contract between an architect and his client, there is an express provision that the copyright shall remain vested in the architect;
(3) the mere fact that the contractor has been commissioned is insufficient to entitle the client to the copyright. Where Parliament intended the act of commissioning alone to vest copyright in the client e.g. in case of unregistered design rights and registered designs, the legislation expressly so provides (see section 215 of the 1988 Act and section 2(1A) of the Registered Designs Act 1949 as amended by the 1988 Act). In all other cases the client has to establish the entitlement under some express or implied term of the contract;
(4) the law governing the implication of terms in a contract has been firmly established (if not earlier) by the decision of the House of Lords in Liverpool City Council v. Irwin [1977] AC 239 ('Liverpool'). In the words of Lord Bingham MR in Philips Electronique v British Sky Broadcasting [1995] EMLR 472 ('Philips') at 481, the essence of much learning on implied terms is distilled in the speech of Lord Simon of Glaisdale on behalf of the majority of the Judicial Committee of the Privy Council in BP Refinery (Westernport) Pty Ltd v. The President,Councillors and Ratepayers of the Shire of Hastings (1978) 52 ALJR 20 at 26:
'Their Lordships do not think it necessary to review exhaustively the authorities on the implication of a term in a contract which the parties have not thought fit to express. In their view, for a term to be implied, the following conditions (which may overlap) must be satisfied:
(1) it must be reasonable and equitable;
(2) it must be necessary to give business efficacy to the contract, so that no term will be implied if the contract is effective without it;
(3) it must be so obvious that "it goes without saying";
(4) it must be capable of clear expression;
(5) it must not contradict any express term of the contract.'
Lord Bingham added an explanation and warning:
'The courts' usual role in contractual interpretation is, by resolving ambiguities or reconciling apparent inconsistencies, to attribute the true meaning to the language in which the parties themselves have expressed their contract. The implication of contract terms involves a different and altogether more ambitious undertaking: the interpolation of terms to deal with matters for which, ex hypothesi, the parties themselves have made no provision. It is because the implication of terms is so potentially intrusive that the law imposes strict constraints on the exercise of this extraordinary power. … The question of whether a term should be implied, and if so what, almost inevitably arises after a crisis has been reached in the performance of the contract. So the court comes to the task of implication with the benefit of hindsight, and it is tempting for the court then to fashion a term which will reflect the merits of the situation as they then appear. Tempting, but wrong.'
(5) where (as in the present case) it is necessary to imply the grant of some right to fill a lacuna in the contract and the question arises how this lacuna is to be filled, guidance is again to be found in Liverpool. The principle is clearly stated that in deciding which of various alternatives should constitute the contents of the term to be implied, the choice must be that which does not exceed what is necessary in the circumstances (see Lord Wilberforce at 245 F–G). In short a minimalist approach is called for. An implication may only be made if this is necessary, and then only of what is necessary and no more;
(6) accordingly if it is necessary to imply some grant of rights in respect of a copyright work, and the need could be satisfied by the grant of a licence or an assignment of the copyright, the implication will be of the grant of a licence only;
(7) circumstances may exist when the necessity for an assignment of copyright may be established. As Mr Howe has submitted, these circumstances are, however, only likely to arise if the client needs in addition to the right to use the copyright works the right to exclude the contractor from using the work and the ability to enforce the copyright against third parties. Examples of when this situation may arise include:
(a) where the purpose in commissioning the work is for the client to multiply and sell copies on the market for which the work was created free from the sale of copies in competition with the client by the contractor or third parties;
(b) where the contractor creates a work which is derivative from a pre-existing work of the client, e.g. when a draughtsman is engaged to turn designs of an article in sketch form by the client into formal manufacturing drawings, and the draughtsman could not use the drawings himself without infringing the underlying rights of the client;
(c) where the contractor is engaged as part of a team with employees of the client to produce a composite or joint work and he is unable, or cannot have been intended to be able, to exploit for his own benefit the joint work or indeed any distinct contribution of his own created in the course of his engagement: see Nichols Advanced Vehicle Systems Inc v. Rees [1979] RPC 127 at 139 and consider Sofia Bogrich v. Shape Machines unreported, 4th November 1994, Pat Ct and in particular page 15 of the transcript of the judgment of Aldous J.
In each case it is necessary to consider the price paid, the impact on the Contractor of assignment of copyright and whether it can sensibly have been intended that the contractor should retain any copyright as a separate item of property;
(8) if necessity requires only the grant of a licence, the ambit of the licence must be the minimum which is required to secure to the client the entitlement which the parties to the contract must have intended to confer upon him. The amount of the purchase price which the client under the contract has obliged himself to pay may be relevant to the ambit of the licence. Thus in Stovin-Bradford v. Volpoint Properties Ltd [1971] 1 Ch 1007, where the client agreed to pay only a nominal fee to his architect for the preparation of plans, he was held to have a licence to use the plans for no purpose beyond the anticipated application for planning permission. By contrast in Blair v. Osborne & Tompkins [1971] 21 QB 78 , where the client was charged the full RIBA scale fee, his licence was held to extend to using the plans for the building itself. Guidance as to the approach to be adopted is provided in a passage in the judgment of Jacobs J. in Beck v. Montana Construction Pty [1964–5] NSWR 229 at 235 cited with approval by Widgery LJ in Blair v. Osborne & Tompkins supra at p.87:
'it seems to me that the principle involved is this; that the engagement for reward of a person to produce material of a nature which is capable of being the subject of copyright implies a permission, or consent, or licence in the person giving the engagement to use the material in the manner and for the purpose in which and for which it was contemplated between the parties that it would be used at the time of the engagement.'
(9) the licence accordingly is to be limited to what is in the joint contemplation of the parties at the date of the contract, and does not extend to enable the client to take advantage of a new unexpected profitable opportunity (consider Meikle v. Maufe [1941] 3 All ER 144 )."
Those principles were applied by the Court of Appeal in Griggs  which also concerned a customer's beneficial interest in a logo that had been designed for it, Lord Justice Jacob added at paragraph [16]:
"[16] So in the end, Mr Hobbs did not really challenge Lightman J.'s statement of the law which the deputy judge went on to apply. Mr Hobbs went on, however, to challenge that application. The deputy judge said this:
'36. It seems to me that when a free-lance designer is commissioned to create a logo for a client, the designer will have an uphill task if he wishes to contend that he is free to assign the copyright to a competitor. This is because, in order to give business efficacy to the contract, it will rarely be enough to imply a term that the client shall enjoy a mere licence to use the logo, and nothing more. In most cases it will be obvious, it will 'go without saying', that the client will need further rights. He will surely need some right to prevent others from reproducing the logo.
37. Indeed it seems to me that, in the ordinary way, a logo is a paradigm case falling within principle (7) in Lightman J's formulation.'
[17] Mr Hobbs initially characterised this as 'adopting a skewed approach' in favour of the commissioner. But as the argument developed, I think he in effect resiled from this. For he accepted that if Mr Evans' brief had simply been to combine two logos so as to produce a composite logo for the client, business efficacy would indeed require that all rights in the work should belong to the client.
[18] What, submitted Mr Hobbs, made all the difference in this case is that Mr Evans did not know that what he was being asked to produce was just a logo trade mark for the client – a mark which the client would be free to use all over the world actually on the boots as well as on point of sale material and elsewhere. All Mr Evans was told, and thought he was producing, was material for UK point of sale. That being so, runs the argument, all the client needed was a licence (possibly exclusive) for that purpose. A minimalist approach (see Lightman J.'s para.[6]) to the admittedly necessary implied term gives no more than that. It follows that there was no implied term as to title to copyright at all, and only a limited licence. Apart from that Mr Evans retained all the rights.
[19] I find that conclusion fantastic. If an officious bystander had asked at the time of contract whether Mr Evans was going to retain rights in the combined logo which could be used against the client by Mr Evans (or anyone to whom he sold the rights) anywhere in the world, other than in respect of point of sale material in the UK, the answer would surely have been 'of course not.' Mr Evans had no conceivable further interest in the work being created – indeed he surely would never have had the job at all if there had been a debate about this and he had asserted that that was to be the basis of his work.
[20] Moreover the deputy judge's conclusion of fact at para.[47] (quoted at [11] above) is conclusive. He found that the reference to 'UK point of sale' material was only for identification of the work to be done. In other words it was not there to describe or limit the rights in the work.
[21] I should add that the judge's conclusion that Mr Evans was paid the proper rate for the work (and his rejection of the contention that he would have charged more if he had known about intended wider use) disposes of any possible argument based on the notion that Mr Evans needed to retain the copyright so that he could call for payment for such further use. Further use does indeed often cause problems as between an author and his commissioner and it is always better if payment for this is spelt out in the contract. A right to further payment for unforeseen or undisclosed further use may in some cases be implied. In others the author may indeed retain copyright and actually be able to prevent further use. All depends on the circumstances. In the present case, however, there is simply no such problem."
Judge Hacon found for the defendants. He set out his reasoning at paragraph [29] of his judgment:
"[29] In my judgment, in August 2011 Kilnworx through Mr Bunting and Purple Penguin through Mr Kirk entered into an agreement for the creation of the Logos as described above. There was an implied term in the contract. It was a term of the usual nature to be implied into a contract for the creation of a logo, namely that Kilnworx would own the copyrights in the Logos. Purple Penguin, as Mr Kirk's employer, was the owner of the legal interest in the copyrights at the time the Logos were created. It held such copyrights on trust for Kilnworx. By the written agreement dated 23 August 2013 between Purple Penguin and Atelier the legal interest was assigned to Atelier.
[30] Atelier was not a purchaser of the copyrights for value without notice of Kilnworx's claim to the copyrights. In other words and in a further parallel with Griggs, Atelier is not a darling of equity (see Griggs at [7]). Therefore Atelier took the legal interest in the copyrights subject to Kilnworx's equitable interest.
[31] I think the reality is that Atelier's current claim to the unencumbered ownership of the copyrights in the Logos is borne of the unfortunate and bad tempered split between the individuals who thought up the Kilnworx project and a wish on the part of Mr Bunting to hold Kilnworx and its remaining directors over a copyright barrel in order to recover some of what he believes to be the £45,000 or so owed to him. There is nothing intrinsically wrong in that, but the barrel has to be there. In my view it is not."
It followed that Kilnworx was beneficially entitled to the copyrights and that the action for infringement failed.

It is important to remember that each case revolves in its own facts and while it may not be easy to argue that the author of a commissioned work is free to do with the work whatever he wishes there may be circumstances where that was the manifest intention of the parties. Mr Justice Lightman referred to the RIBA contract and that is as it should be since it is the architect and not the client who has an interest in preventing unauthorized reproduction of his designs. That is because it is the architect and not the client who suffers loss - namelyt a second commission and chance to earn another fee - when his design is pirated. In the case of a logo the parties' interests are reversed, It is the client and not the author who will use the logo as a trade mark or seek damages for loss of sales if the mark is infringed.

Although a short case it is an interesting one. I have already referred to it in one skeleton argument and I expect my reference to be the last. As the case comes from the Potteries and as I know well both the counsel for the claimant and his instructing solicitors and the trade mark attorney for the defendants I read the judgment with considerable personal interest. I have no doubt that it would have been hard fought and well argued on both sides. Should anyone wish to discuss this case or copyright in general he or she should not hesitate to call me on 020 7404 5252 or fill in my contact form.

29 July 2015

The BASCA Aftermath

Jane Lambert

In Judicial Review of the Copyright Exceptions: British Academy of Songwriters, Composers and Authors and Others v Secretary of State for Business Innovation and Skills 20 July 2015 I discussed the order by Mr Justice Green to quash The Copyright and Rights in Performances (Personal Copies forPrivate Use) Regulations 2014 SI 2014 No 2361 in  British Academy of Songwriters, Composers and Authors Musicians' Union and others, R (on the application of) v Secretary of State for Business, Innovation and Skills and Another (No 2) [2015] EWHC 2041 (Admin) (17 July 2015). A statement by the Intellectual Property Office on 20 July 2015 announced that HMG was considering the implications of the judgments and the available options.

In the penultimate paragraph of my case note I wrote:
"As Hargreaves has recommended that intellectual property policy should be evidence based it may be that applications of this kind will become more common in future. Having said that, the legislation that gave rise to this application was unusual in that it allowed member states a discretion as to whether to introduce the exemption at all but gave no guidance as to the nature or amount of, or the triggering factor for, the award of compensation."
Three days later Lady Neville-Rolfe, the minister with responsibility for intellectual proof revoked The Enterprise and Regulatory Reform Act 2013 (Commencement No. 8 and Saving Provisions) Order 2015 SI 2015 No 641 which would have implemented primary legislation repealing s,52 of the Copyright, Designs and Patents Act 1988 to take account of the decision of the Court of Justice of the European Union in Case C168/09 Flos SpA v Semeraro Casa e Famiglia SpA [2011] ECDR 8, [2011] RPC 10, [2011] EUECJ C-168/09 (see Flos putting us all through the Mill 17 Oct 2014). The statutory instrument revoking that commencement order was The Enterprise and Regulatory Reform Act 2013 (Commencement No. 8 and Saving Provisions) (Revocation) Order 2015 SI 2015 No 1558.

In a statement announcing the revocation order the government explained that it had received an application for judicial review following the making of that order. It added:
"Having considered the matter carefully, the Government has revoked the Commencement Order and will not continue with the current transitional arrangements."
The government will have to implement s.74 (2) of the Enterprise and Regulatory Reform Act 2013  now that it has been passed and it will have to make sure that the implementing provisions comply with the decision in FLOS. It has therefore indicted that it will launch a fresh consultation on revised transitional arrangements, including the date for implementing the repeal. I will let you know when that consultation is announced.

So the BACSA case has opened up a whole new area of IP law and it is one in which our chambers can claim specialist expertise. Should anyone wish to discuss this topic with me call me on 020 7404 5252 during office hours or use my message form.

20 July 2015

Judicial Review of the Copyright Exceptions: British Academy of Songwriters, Composers and Authors and Others v Secretary of State for Business Innovation and Skills

Jane Lambert

On 16 July 2015 my heads of chambers, Tim Straker QC and Robert Griffiths QC together with my colleagues, Richard Clayton QC, Charles Morgan, Christopher Forsyth and Lee Parkhill presented our chambers annual judicial review conference. By all accounts it was a great success.

Ending rhe Personal Copy for Private Use Exception
"But what has that to do with intellectual property?" I hear you say. More than you might suppose for on the day after the conference Mr Justice Green quashed The Copyright and Rights in Performances (Personal Copies for Private Use) Regulations 2014 SI 2014 No. 2361 which had inserted a new s.28B into The Copyright Designs and Patents Act 1988 (see British Academy of Songwriters, Composers and Authors and Others v Secretary of State for Business etc  (No. 2) [2015] EWHC 2041 (Admin) 17 July 2015). The section inserted by those regulations had created the following exception to copyright:
"28B Personal copies for private use
(1) The making of a copy of a work, other than a computer program, by an individual does not infringe copyright in the work provided that the copy—
(a) is a copy of—
(i) the individual’s own copy of the work, or
(ii) a personal copy of the work made by the individual, 
(b) is made for the individual’s private use, and
(c) is made for ends which are neither directly nor indirectly commercial. 
(2) In this section “the individual’s own copy” is a copy which—
(a) has been lawfully acquired by the individual on a permanent basis,
(b) is not an infringing copy, and
(c) has not been made under any provision of this Chapter which permits the making of a copy without infringing copyright. 
(3) In this section a “personal copy” means a copy made under this section.
(4) For the purposes of subsection (2)(a), a copy “lawfully acquired on a permanent basis”—
(a) includes a copy which has been purchased, obtained by way of a gift, or acquired by means of a download resulting from a purchase or a gift (other than a download of a kind mentioned in paragraph (b)); and
(b) does not include a copy which has been borrowed, rented, broadcast or streamed, or a copy which has been obtained by means of a download enabling no more than temporary access to the copy. 
(5) In subsection (1)(b) “private use” includes private use facilitated by the making of a copy—
(a) as a back up copy,
(b) for the purposes of format-shifting, or
(c) for the purposes of storage, including in an electronic storage area accessed by means of the internet or similar means which is accessible only by the individual (and the person responsible for the storage area). 
(6) Copyright in a work is infringed if an individual transfers a personal copy of the work to another person (otherwise than on a private and temporary basis), except where the transfer is authorised by the copyright owner.
(7) If copyright is infringed as set out in subsection (6), a personal copy which has been transferred is for all purposes subsequently treated as an infringing copy.
(8) Copyright in a work is also infringed if an individual, having made a personal copy of the work, transfers the individual’s own copy of the work to another person (otherwise than on a private and temporary basis) and, after that transfer and without the licence of the copyright owner, retains any personal copy.
(9) If copyright is infringed as set out in subsection (8), any retained personal copy is for all purposes subsequently treated as an infringing copy.
(10) To the extent that a term of a contract purports to prevent or restrict the making of a copy which, by virtue of this section, would not infringe copyright, that term is unenforceable.”
His lordship's order has the effect of repealing the section with prospective effect.

The Directive
The application arose out of the Secretary of State's decision to extend the exemptions to the reproduction right that had been allowed by art 5 (2) of the Directive on the harmonisation of certain aspects of copyright and related rights in the information society (Directive 2001/29/EC).

The purpose of the Directive had been to harmonization of the implementation of the WIPO Copyright Treaty and the WIPO Phonograms and Performances Treaty throughout the EU. The Directive required member states to confer reproduction, communication and distribution rights on authors and performers in so far as those rights did not already subsist in the laws of those member states. "Reproduction right" was defined by art 2 as "the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part." The Directive was implemented in the UK by The Copyright and Related Rights Regulations 2003 SI 2003 No 2498 which amended the Copyright, Designs and Patents Act 1988.

Art 5 of the Directive provided for a number of exceptions and limitations to those rights some of which has to be implemented in full and others of which were discretionary. Art 5 (2) permitted member states to provide exceptions to reproduction right in a number of cases one of which was allowed by sub-paragraph (b):
"in respect of reproductions on any medium made by a natural person for private use and for ends that are neither directly nor indirectly commercial, on condition that the right holders receive fair compensation which takes account of the application or non-application of technological measures referred to in Article 6 to the work or subject matter concerned."
The government of the day decided not to implement this exception because it required compensation to be paid to right holders. Instead, reg 8 inserted a much narrower exemption into the Act that allowed temporary copies.

In his report Digital Opportunity A Review of Intellectual Property and Growth Prof. Ian Hargreaves had recommended that "copying should be lawful where it is for private purposes, or does not damage the underlying aims of copyright"  He added:
"The UK has chosen not to exercise all of its rights under EU law to permit individuals to shift the format of a piece of music or video for personal use and to make use of copyright material in parody. Nor does the UK allow its great libraries to archive all digital copyright material, with the result that much of it is rotting away. Taking advantage of these EU sanctioned exceptions will bring important cultural as well as economic benefits to the UK. Together, they will help to make copyright law better understood and more acceptable to the public. In addition, there should be a change in rules to enable scientific and other researchers to use modern text and data mining techniques, which copyright prohibits."
The Secretary of State for Business accepted all Hargreaves's recommendations including implementing art 5 (2) (b) and began a consultation process on how best to do it.

The Challenge
Following the consultation the Business Secretary drew up the 2014 regulations that purposed to implement art 5 (2) (b) but provided no compensation for right holders. The Business Secretary justified the government's decision stance on the ground that
"it intended only to create an exception which either caused no (zero) harm to right holders or de minimis harm and this meant that the exception would be strictly limited to private own, non-commercial, use by legitimate bona fide purchasers of content."
The British Academy of Songwriters, Composers and Authors Limited, Musicians Union and UK Music Ltd  challenged that view and applied to set aside the regulations. There was also an intervention from the Incorporated Society of Musicians. The action came on before Mr Justice Green in British Academy of Songwriters, Composers and Authors and Others v Secretary of State for Business Innovation and Skills (No 1) [2015] EWHC 1723 (Admin), [2015] WLR(D) 268.

The Issue
The issue that Mr Justice Green had to decide was:
"Would the introduction of a limited private use exception cause no more than minimal or zero harm?"
The government based its contention that there would be zero or minimal harm on  the following premises which are summarized in  paragraphs [12] and [13] of his lordship's judgment:
"[12] The first premise was that the only relevant "harm" that would, in principle, need to be compensated for was the risk to right holders of lost, duplicate sales i.e. the only harm for which compensation would be due were the sales that were lost as a consequence of legitimising what were hitherto unlawful acts. As to this the Secretary of State concluded that whilst consumers considered that they should be entitled to copy content they had acquired they were not, to any material degree, prepared to go out and purchase duplicate copies in order to be able to achieve multiple use. In other words there was no automatic correlation between the desire to copy and lost sales; if the former was constrained the latter would not necessarily occur. And as such if a limited exception to copyright was introduced this would not impact upon duplicate sales.
[13] The second premise was that either fully, or very substantially, sellers of content had already priced-in to the initial sale price the fact that consumers treated content that they purchased as fair game when it came to copying for personal use; in other words when a purchaser acquired content the seller had already factored into the price an assumption that the consumer would in fact copy that work even if it was, in law, unlawful so to do. This has become known as the 'pricing-in' principle."
In the consultation the Intellectual Property Office (which had carried out the process on behalf of the government) had asked for evidence to prove or disprove those premises and it also instructed consultants who carried out research into the music, film and book trades.

Was there evidence of harm beyond the de minimis level?
After referring to the Directive, the evidence before Hargreaves, the consultation and the evidence that was considered by the IPO and the Department for Business the judge concluded at paragraph [140] that "this case boils down to the narrow question: Whether on the facts there is evidence of harm beyond the de minimis level for which no compensation mechanism has been provided?" 

Review Process
In order to determine this issue, his lordship decided at paragraph [148] to review, carefully and thoroughly, the evidence relied upon by the Business Secretary to justify the decision to introduce section 28B. He made clear he was not conducting that exercise to see, for instance, whether he agreed with the conclusion arrived at by the experts who advised the government. Rather he was concerned with "the process of evidence collection; its fairness and thoroughness; any acknowledgements as to its inherent limitations; and the inferences drawn from the evidence by the [government] which ultimately led to the decision in issue."

Between paragraphs [237] and [244] the judge set out the principles that a court should apply in determining whether the decision making process was fair and thorough:
"[237] There are, in my view, 7 points to make about the evidence in this case which bear upon the outcome.
[238] First, the court must examine the inferences drawn in the light of the relevant legal issue. In the present case the legal issue is whether pricing-in will lead to "minimal or zero" harm since if it does not then, in law, a compensation scheme must in law be introduced. The legal issue guides the exercise: The evidence accepted by the Secretary of State must be sufficient to enable a reasonable inference to be drawn from it that this de minimis threshold has been met.
[239] Second, a court will examine the evidence to see if there are, logically, gaps in it. Such might well be the conclusion if experts selected by the Government to collect and analyse evidence themselves identify questions and queries and matters requiring further investigation which are not then followed up or which are ignored; or if consultees identify issues which the decision maker accepts are relevant but which for no identified reason are not followed up.
[240] Third, a court will, even in relation to a narrow question such as whether the evidence established a de minimis threshold, accord to the decision maker an appropriate margin of discretion. So, if the evidence had suggested that (say) 93% of harm was obviated by pricing-in then the court might well conclude that it had no remit to quibble as to whether 95% or 97% should be treated as the relevant de minimis threshold. But the conclusion might be very different if the evidence either fails to address what is to be understood by de minimis at all or suggests an answer that (say) between 40-50% of right holders would be deprived of compensation if the exception were introduced. In short the court will look to see if the inferences drawn are within the range of reasonable and rational inferences which are capable of being drawn from that evidence.
[241] Fourth, the court must recognise that relevant evidence may be qualitative and/or quantitative. Experience shows that, even in areas of technical or economic complexity, decisions may, of necessity, be properly taken upon the basis of a mix of quantitative and qualitative evidence. Indeed, a decision maker might well adopt a particular proposition because it is simply intuitive economic common sense: See Sinclair Collis (ibid) at paragraphs [237], [238] and [242], and, Gibraltar Betting & Gaming (ibid) at paragraphs [110], [119], [120], [163] – [168].
[242] Fifthly, when appraising the reasons in the decision based upon the evidence a court should not construe the decision as if it were a statute. The Court is concerned not to pick holes in infelicitous or badly chosen language but, rather, with seeking to understand and review the true substance of the reasoning. The courts have adopted this approach in relation to reports of the Competition Commission (Tesco Plc v Competition Commission [2009] CAT6 at paragraph [79] ("Tesco")); and officers' reports in the context of planning (e.g. South Somerset District Council v Secretary of State for Environment [1993] 1 PLR 80 per Lord Justice Hoffmann at page 83). In the present case, the critical and final reasoning is found in the Updated Impact Assessment of March 2014. Evidence before the Court demonstrates how that reasoning evolved over time. The task is to focus upon pith and substance and to avoid the temptation to pick holes in loose language.
[243] Sixthly, a court needs to exercise care in placing too much store by witness statement evidence from decision makers, prepared for the purposes of litigation. In many cases claimants submit that the challenged decision should stand or fall upon its own merits and after the event ("boot strapping") attempts in witness statements to add new or supplemental reasons, caveats or "spins" must be ignored: See, for example,Ermakov v Westminster City Council [1995] EWCA Civ 42; Lanner Parish Council v The Cornwall Council [2013] EWCA Civ 1290 at paragraphs [61] and [64]; and per Ouseley J in Ioannou v Secretary of State for Communities & Local Government [2013] EWHC 3945. In the present case, a different approach has been adopted by the Claimants who submitted that the Defendant's witness statement evidence should be taken to reflect the reasoning of the Defendant and that it disclosed errors of law and evidence of predetermination. In my view, the reasoning the Defendant accepted has been set out comprehensively in the Updated Impact Assessment of March 2014 and it is to that document that I must primarily turn to identify the Defendant's reasoning.
[244] Finally and seventhly, even if the court concludes that there is an error a remedy will not be ordered if that error is not material to the outcome: see in this regard R v MMC ex parte National House Building Council [1993] ECC 388 at [398] (upheld on appeal: [1995] ECC 89); Tesco (ibid) at paragraph [79]; Gibraltar Betting and Gaming (ibid) at paragraphs [100] – [102]."
Applying these principles, Mr Justice Green considered the evidence upon which the Business Secretary relied and, in particular, the Updated Impact Assessment which in turn relied heavily on an IPO research report. The judge concluded at paragraph [269] that the inferences drawn in that Impact Assessment about whether the harm that right holders would suffer would be de minimis were not remotely supported by the evidence. Consequently, the decision to introduce section 28B in the absence of a compensation mechanism was unlawful.

His lordship made clear at paragraph [21] that his conclusion did not necessarily result in that section being struck down.  It was in theory, possible for the Secretary of State to re-investigate the issue in order to address the evidential gap which now prevails. If he did that then one possible outcome would be that the gap that the court had identified could be plugged and the decision would become justified. Another outcome might be that following further investigation the gap in the evidence remained un-plugged in which case the Secretary of State could either repeal section 28B or introduce a compensation scheme. A third possibility was that the Secretary of State might simply decide to introduce a compensation scheme without more ado. He therefore invited further submissions from the parties.

At the hearing on 17 July 2015 the Secretary of State accepted that the 2014 regulations should be quashed:
"[4]. The Secretary of State welcomes the guidance which the Court has provided as to the correct approach to be adopted as a matter of law when considering the introduction of a private copying exception, and as to the scope and nature of the factual enquiries which are necessary. He will now take the opportunity to reflect further and in due course take a view as to whether, and in what form, any further factual enquiries should be carried out and whether a new private copying exception should be introduced. The Secretary of State has not decided on any specific course at this stage and wishes to take time to reflect before making any further decisions. He would not wish to create any uncertainty in the law by submitting that the Regulations remain in force while further policy decisions are made.
[5]. Given that the Secretary of State submits that a quashing order is appropriate at this stage, there is no necessity for a reference to the CJEU. As is made clear in the body of the Judgment, the Judge's conclusion leading to the ruling that the decision was unlawful did not depend on his conclusions on issues of EU law, in particular as to the meaning of "harm" (the issue identified by the Judge is a matter for a potential reference)".
The rights holders' representatives had argued that the regulations should be quashed with retrospective effect. The judge refused to make such an order:

 "It seems to me that the declaration sought raises potentially complex and far reaching issues which it is appropriate to address in the circumstances of private law litigation between a specific right holder and an alleged infringer. It will be for a defendant in future proceedings to explore and raise this issue, including whether the effect of the fact that they relied at the time upon Section 28B creates some species of estoppel, legitimate expectation or fair use defence in private law and whether, if such exists, this goes to the cause of action or the remedy or both."
He thus quashed the regulations with prospective effect. In view of the Secretary of State's concession and as he had made the decision in accordance with English as opposed to Community legal principles the judge declined to make a reference to the Court of Justice of the European Union. The judge acknowledged there may be a need for clarification of the harm for which compensation would be awarded under art 5 (2) (b) but that was not a sufficient reason for a reference on that issue at this time.

It is important to stress that the rights holders did not win on everything. In particular, the judge rejected their contention that art 5 (2) (b) was directly applicable giving rise to an action for damages against Her Majesty's government under the principles set out in Cases C-6/90 and C-9/90 Francovich v Italian Republic [1991] ECR I-5403. He accepted the government's argument that it would be pointless to set up a compensation scheme if it really was clear that nobody would ever have a case for compensation. He also rejected the submission that the denial of compensation was tantamount to state aid. Instead of awarding the claimants their costs outright he allocated costs on an issue by issue basis.

As Hargreaves has recommended that intellectual property policy should be evidence based it may be that applications of this kind will become more common in future. Having said that, the legislation that gave rise to this application was unusual in that it allowed member states a discretion as to whether to introduce the exemption at all but gave no guidance as to the nature or amount of, or the triggering factor for, the award of compensation. Moreover, the judge declined to rule on the validity of s.28B up to now. All these questions will require expertise in both intellectual property and public law and there not many places other than my chambers where such expertise is to be found.

Should anyone wish to discuss this case, the copyright exceptions and directive, judicial review or copyright law and related rights generally, he or she should not hesitate to call me during office hours on 020 7404 5252 or use my contact form.

16 June 2015

Copyright: Minder Records and Another v Sharples

Jane Lambert

S.10 (1) of the Copyright, Designs and Patents Act 1988 defines a work of joint authorship as "a work produced by the collaboration of two or more authors in which the contribution of each author is not distinct from that of the other author or authors." However, it was held by Hazel Williamson QC sitting as a judge of the High Court in Bamgboye v Reed [2002] EWHC 2922 (QB), [2002] EWHC 2922, [2004] EMLR 5 and implied by the Court of Appeal in Brooker and Another v Fischer [2008] Bus LR 1123, [2008] FSR 26, [2008] EWCA Civ 287, [2008] EMLR 13 that joint ownership is not necessarily the same as equal ownership. Where two or more collaborators claim to have contributed to a copyright work the task of the judge is to discern the nature and extent of each party's contribution in order to determine his or her share of the copyright.

This issue came before Miss Recorder Michaels in Minder Music Ltd and Another v Sharples [2015] EWHC 1454 (IPEC). The claimants, Minder Music and the song writer Julia Adamson, owned the copyrights in a song called Touch Sensitive that had been played on the radio in 1998. After the broadcast the song writer and composer enlisted the services of Steve Sharples, the defendant, to include it in an album. He claimed to have contributed substantially to both the words and music which resulted in a long running dispute over royalties. The issue came to a head when the claimants applied for:
    "a. a declaration that Minder Music owns a 33.34% of the copyright in the Album Version and that Ms Adamson owns 66.66% (or such share as the Court shall determine);
    b. a declaration that no part of the copyright is or was owned by Mr Sharples; and
    c. an inquiry as to damages."
Mr Sharples did not counterclaim for any relief but denied that the claimants were entitled to their declarations and damages on the grounds that he had contributed to the album and that the claimants had agreed that he should have a share of the copyright.

The agreement on which Mr Sharples relied was one that the parties had entered in 2013 for the resolution of a dispute as to the division of royalties held by the PRS whereby each of the parties was to receive a third share. Ms Adamson argued that it was unconscionable on a number of grounds none of which was accepted by the recorder. Even though the agreement was unduly favourable to Mr Sharples her ladyship saw no grounds for setting it aside.

The judge then considered the defendant's alternative grounds. In assessing his contribution she compared the words and music as they had been when the sing was played on the radio and as they had been after Mr Sharples's involvement. In her view there was very little difference in the words and the evidence suggested that they had been contributed by the original song writer. However, he had added a string section to the music that would have contributed perhaps 20% to the value of the album.

Because Miss Recorder Michaels found that there had been a valid agreement between the parties as to entitlement to royalties and that Mr Sharples had contributed to the composition of the music for the album she declined to make the declarations sought by the claimants. She invited counsels' submissions on the relief (if any) that she could make in the light of her findings.

Two important lessons arise from this decision. The first is the crucial importance in getting agreement at the earliest possible stage on who should own the copyright in any new copyright works that might result from a collaboration such as the one between the original song writer and composer and Mr Sharples. The second is that not every contribution to the creation of a copyright work justifies a share in the copyright in the work. It has to be the right kind of contribution. In other words the contribution has to add value to the work.

Should anyone wish to discuss this case or copyright in general, he or she should contact me on 020 7404 5252 during office hours or use my contact form.

27 May 2015

Whisky Galore - Whyte and MacKay Ltd v Origin Wine UK Ltd

Beinn Shiantaidh on the Isle of Jura
Photo Smith 609
Source Wikipedia

Jura is an island off the west coast of Scotland that is well known for its whisky. It is not to be confused with the Jura region of France which as it happens also produces whisky. According to the website Doubs Direct Whisky Jurassic consists of Scotch whisky that is matured in barrels that have contained the region's well known "Yelllow wine".  It is worth noting that France is not just a great consumer of whisky. It has in recent years launched into whisky production (see Wikipedia Whisky en France). There is actually a website called France Whisky which keeps tabs on the French whisky industry.

However, none of that has anything to do with the case in hand which was an appeal to Mr Justice Arnold by Whyte and Mackay Ltd ("WM") against the decision of Mr George Salthouse in Jura Origin, Origin Wine UK Ltd and Another v Whyte and Mackay Ltd  O-325-14 (23 July 2014) to block the registration of the sign JURA ORIGIN as a trade mark in respect of Scotch whisky and Scotch whisky based liqueurs produced in Scotland in class 33. WM had applied to register that mark on 6 Feb 2013. The application was opposed by Origin Wine UK Ltd ("Origin") and its associated company Dolce Co Invest Ltd ("Dolce") under s.5 (2) (b) of the Trade Marks Act 1994.

Origin relied on its UK trade marks ORIGINS for "alcoholic beverages (except beers); wine in class 33" and ORIGIN for "wines; alcoholic beverages" in class 33. Dolce relied on its CTM application for the registration of

in respect of "Alcoholic beverages (except beers), including wines" in class 33.

The hearing officer held at paragraph [26] that the goods for which the mark in suit was to be registered were identical to Dolce's CTM application but had only a low degree of similarity to wine in respect of which Origin's trade marks had been registered. At paras [35] and [36] he decided that the applicant's mark was at least moderately similar to the mark in suit. Finally, he decided that there was a likelihood of confusion including a likelihood of association of the WM's sign with the opponents' trade marks.

WM appealed to the court under s.76 (2) of the Trade Marks Act 1994 on the following grounds:
"i) the hearing officer did not apply Medion v Thomson correctly;
ii) the hearing officer did not fully analyse the level of visual, aural and conceptual similarity between the respective pairs of marks;
iii) the hearing officer failed to consider whether the conceptual meaning of the word JURA in the Jura Mark outweighed the similarities between the respective marks due to the presence of the word ORIGIN;
iv) the hearing officer misapplied LA Sugar v By Back Beat; and
v) the hearing officer failed to take into account the principle that, where the only similarity between the respective marks consists of a common element which has low distinctiveness, that will not normally give rise to a likelihood of confusion."
The appeal came on before Mr Justice Arnold in Whyte and MacKay Ltd v Origin Wine UK Ltd and Another [2015] EWHC 1271 (Ch) (6 May 2015).

On the first point, the judge referred to his judgment in Aveda Corp v Dabur India Ltd [2013] EWHC 589 (Ch) and the Court of Justice of the European Union's decision in Case C-591/12 P Bimbo SA v OHIM ECLI:EU:T:2013:146, [2013] EUECJ T-277/12, EU:T:2013:146. At paragraph [18] of his judgment, Mr Justice Arnold said:
"The judgment in Bimbo confirms that the principle established in Medion v Thomson is not confined to the situation where the composite trade mark for which registration is sought contains an element which is identical to an earlier trade mark, but extends to the situation where the composite mark contains an element which is similar to the earlier mark. More importantly for present purposes, it also confirms three other points."
He set those out in the following paragraphs:
"[19] The first is that the assessment of likelihood of confusion must be made by considering and comparing the respective marks - visually, aurally and conceptually - as a whole. In Medion v Thomson and subsequent case law, the Court of Justice has recognised that there are situations in which the average consumer, while perceiving a composite mark as a whole, will also perceive that it consists of two (or more) signs one (or more) of which has a distinctive significance which is independent of the significance of the whole, and thus may be confused as a result of the identity or similarity of that sign to the earlier mark.
[20] The second point is that this principle can only apply in circumstances where the average consumer would perceive the relevant part of the composite mark to have distinctive significance independently of the whole. It does not apply where the average consumer would perceive the composite mark as a unit having a different meaning to the meanings of the separate components. That includes the situation where the meaning of one of the components is qualified by another component, as with a surname and a first name (e.g. BECKER and BARBARA BECKER).
[21] The third point is that, even where an element of the composite mark which is identical or similar to the earlier trade mark has an independent distinctive role, it does not automatically follow that there is a likelihood of confusion. It remains necessary for the competent authority to carry out a global assessment taking into account all relevant factors."
Applying that analysis to Mr Salthouse's decision the judge concluded at para [28] that there had been an error of principle in the hearing officer's approach:
"The root problem with his analysis is that he failed at the outset to consider how the average consumer would understand the word ORIGIN in the context of the relevant goods. For this purpose, it makes no difference whether one is considering the Respondents' goods (wine in the case of the Word Mark) or the Appellant's goods (Scotch whisky and whisky-based liqueurs). Either way, in my judgment the average consumer would understand the word ORIGIN as referring to the origin of the goods, whether their geographical origin or their trade origin. This would be true in relation to most goods and services, but it is particularly true of both wine and Scotch whisky, where geographical origin is both an important factor in quality and frequently intimately associated with trade origin. It is follows that the word ORIGIN is inherently descriptive, or at least non-distinctive, for the goods in issue."
It followed that WM succeeded on its first ground of appeal.

In support of its second, WM argued that the hearing officer's judgment was flawed and contradictory for the following reasons:
"First, he accepted that the vine-leaf device was "eye catching", yet contradicted himself by going on to say it would "go unnoticed". Secondly, he said that "leaf devices upon alcoholic beverages are commonplace" when there was no evidence of that (any more than there was evidence as to consumers' understanding of the meaning of the word JURA). Thirdly, it was not correct to say that the vine-leaf device had no conceptual relevance. It was conceptually relevant both because the use of vine leaves reinforced the message that this was the trade mark of a wine producer and because the globe shape formed by the leaves in the device lent colour to the notion of origin. Fourthly, while it was true that the vine-leaf device could not be verbalised, that did not justify ignoring it when making the visual and conceptual comparisons. Fifthly, his analysis of the impact of the word WINE was flawed because he had failed to give effect to the fact that it was descriptive for wine."
The judge agreed with WM on the first four points but not the fifth.   He concluded at para [37] that the hearing officer failed properly to take account of the significance of the absence from the Jura Mark of anything resembling the vine-leaf device.

His lordship rejected the third and fourth grounds of appeal but accepted the fifth that where there is a low degree of similarity between the earlier marks and the mark in suit there is unlikely to be confusion.

Having found for WM on its first, second and fifth grounds, the judge allowed the appeal and ordered the application to proceed to grant.

Should anyone wish to discuss this case or trade mark law in general, he or she should call me on 020 7404 5252 during office hours or get in touch with me through my contact form,

24 May 2015

Another cautionary tale, - Stretchline v H & M

Jane Lambert

Yesterday I told the tale of the claimant who sought an interim injunction and ended uo with a court order to pay £27 million damages to the defendant (see "Be careful for what you wish for when seeking an interim injunction - it may cost you plenty!" 23 May 2015). Today I have another cautionary tale. This time it is about the defendant which barred itself from contesting the validity of the claimant's patent by the terms of a settlement agreement.

The issue arose in Stretchline v H&M (UK) [2014] EWHC 3605 (Ch) (14 Oct 2014). In order to settle patent infringement proceedings in England and the USA the parties had entered a settlement agreement which provided
"...... the Parties each agree, on behalf of themselves, their successors or assigns, not to commence or pursue, or voluntarily assist the pursuit of, any further proceedings relating to or arising from the claims against the other Parties, or their parents, subsidiaries, assigns, transferees, principles, agents, officers or directors, in this jurisdiction or elsewhere (otherwise than for the purpose of carrying into effect the terms of this Settlement Agreement)."
The agreement was scheduled to an order staying the proceedings in England in Tomlin form  "except for the purpose of carrying such terms into effect" for which purpose each party was given liberty to apply. The claimant suspected that the defendant was not complying with this agreement and brought proceedings against it for patent infringement and breach of contract. The defendant pleaded that the patent was invalid. The claimant asked the court to determine whether the settlement agreement prevented the defendant from pleading invalidity. The application came on before Mr Justice Sales (as he then was) who decided at paragraph [43] that it was.

The defendant appealed to the Court of Appeal  on the following grounds:
  1. The judge was wrong to conclude that the settlement agreement precluded the defendant from raising the issue of the patent's validity either by way of counterclaim or defence; 
  2. Alternatively, if the agreement did preclude the defendant from raising the issue by way of counterclaim, it must nevertheless be entitled to raise it by way of defence, and to do so by way of defence both to the claim for breach of the agreement and to the claim for infringement;
  3. The claimant  had materially altered its position as to the scope of the patent, and in these proceedings was now contending that the monopoly it confers is much broader than was or could have been foreseen at the date of the settlement agreement; and
  4. The parties cannot be taken to have intended by the settlement agreement that the claimant could thereafter advance whatever fancy interpretation of the patent it chose without imperilling the patent's validity, and it would be manifestly unjust were the agreement to be interpreted in such a way as to allow that to happen.
The appeal was heard by Lords Justices Aikens, Kitchin and Briggs in Stretchline Intellectual Properties Ltd v H&M Hennes & Mauritz UK Ltd [2015] EWCA Civ 516 (22 May 2015).

Delivering the judgment of the Court Lord Justice Kitchin broke the first issue down into two. First, he considered whether the defendant was precluded by the settlement agreement from raising invalidity as a defence to enforcement of the settlement terms.  His starting point was that
"a settlement agreement such as this must be construed in just the same way as any other contract. The aim is to ascertain what a reasonable person would have understood the parties to mean by using the language of the agreement against the background which would reasonably have been available to them at the time."
He considered the following factors to be relevant:
"27, First, the recitals say in terms that the parties intended by the settlement agreement to bring to an end the whole dispute between them, and to do so on a worldwide basis. Further, in referring to the denial by H&M of liability and the claims the parties had or could have asserted, the recitals are plainly cast in terms broad enough to encompass the challenge by H&M to the validity of the Patent and its foreign equivalents.
28. Second, clause 3.1 provides a contractual framework for the regulation of H&M's activities going forward. H&M agreed that from the date of the agreement (and subject to the H&M Low Volume Fabric and the Sell-Through Period) it would not deal in any way in any products falling within the scope of the Patent or its foreign equivalents in any territory for which such a patent had been granted and for so long as the relevant patent remained in force in that territory. It also agreed to pay to Stretchline the Settlement Sum of £235,000 in full and final settlement of all claims (present and future) "in relation to" the subject matter of the earlier proceedings.
29. Third, clause 4.1 contains a general release and it is cast in the broadest of terms. The parties agreed to the terms of the settlement agreement in full and final settlement of all possible claims relating to the subject matter of the proceedings anywhere in the world. In my view this is plainly wide enough to encompass the allegation of invalidity of the Patent made by H&M both in its defence and in its counterclaim.
30. Fourth, the agreement not to sue contained in clause 5.1 is also drawn in very general language. So far as material, H&M agreed that it would not begin or pursue any proceedings "relating to or arising from" the Claims, as defined. Mr Burkill contends that the wording of this clause together with that of the release in clause 4.1 is apt to describe the former infringement proceedings but that it does not extend to revocation proceedings, and still less the deployment of invalidity as a defence. I disagree. I have no doubt that this phrase is broad enough to encompass a defence that the Patent is invalid and a counterclaim for its revocation.
31. Fifth, the view to which I have come as to the proper interpretation of clauses 4 and 5 is reinforced by clause 6, by which the parties agreed to a stay of the proceedings save for the purpose of carrying the terms of the settlement agreement into effect. Here again the parties have made clear their intention to dispose of the proceedings (including the defence and counterclaim and all of the issues they raise) on the terms of the agreement.
32. In my judgment the inescapable conclusion from the foregoing is that the reasonable person would have understood that the parties intended by the settlement agreement to compromise all issues in dispute between them, including the issue of the validity of the Patent, and to substitute for their claims of, respectively, infringement of patent and invalidity or revocation, a contractual arrangement which would from that time regulate the dealings of H&M in products falling within the scope of the Patent and its equivalents in other jurisdictions.
33. I believe the parties recognised and agreed that, as from the date of the settlement agreement and for so long as the Patent remained in force, any dealings by H&M in products falling within the scope of the Patent would amount to an actionable breach of the agreement. Of course the Patent might expire through effluxion of time or because of a decision by Stretchline not to renew it. But I am entirely satisfied that an essential component of the agreement was the compromise by H&M of its right to challenge the validity of the Patent either by way of counterclaim or defence. It agreed not to exercise that right either by way of answer to a claim for breach of the agreement or in any other way."
By the same token Lord Justice Kitchin decided at paragraph [39] was precluded by the agreement from raising a fresh action of patent infringement.  That effectively removed the need to consider the defendant's second and third argument.  As for the fourth, attractively though it had been presented, the Court was unable to accept it because the agreement barred all arguments by both parties that had or could have been raised in the previous proceedings.

There was an argument that I would have liked to have run which does not seem to have occurred to any of the parties, the Court of Appeal or the judge below. A patent confers a monopoly which affects the public as well as the parties to the action. Is it in the public interest to enforce a contract term that precludes a party from challenging a monopoly to which the patentee may well not be entitled? It is very much the argument that was used in answer to the assertion that a licensee is estopped from challenging the validity of his licensor's patent by the rule in Crossley v Dixon (1863) 10 HLC 283.

The other point to note is that this settlement agreement was entered after a mediation. This case underlines the importance of referring a patent case to a mediator who is also a specialist in patent litigation. For more on this topic see my article IP  Mediation 22 May 2015, 4-5 IP Tech.

Should anyone want to discuss this article, compromise negotiations, settlement agreements or patents in general he or she should call me on 020 7404 5252 during normal office hours or send me a message through my contact form.

    23 May 2015

    Be careful for what you wish for when seeking an interim injunction - it may cost you plenty!

    Jane Lambert

    Whenever a court grants an interim injunction, or a respondent offers an undertaking, to do or refrain from doing something that might infringe a right claimed by the applicant, the applicant has to offer the respondent and in the most cases the court "a cross undertaking as to damages." Wording that is recommended for freezing injunctions but which could be adapted for other orders mutatis mutandis runs as follows:
    "If the court later finds that this order has caused loss to the Respondent, and decides that the Respondent should be compensated for that loss, the Applicant will comply with any order the court may make."
    The need for such a cross-undertaking was considered by the House of Lords in the landmark case of American Cyanamid Co (No 1) v Ethicon Ltd [1977] FSR 593, [1975] AC 396, [1975] 1 All ER 504, [1975] 2 WLR 316, [1975] UKHL 1. An interim injunction is intended to be a temporary remedy to prevent a fait accompli where an award of damages would probably not put right any wrongdoing. The court does not need to know which side will win in order to grant such an injunction. It is enough for it to know that the applicant can win and if he doesn't the respondent can be compensated adequately by an award of damages.

    Such a cross undertaking was offered by AstraZeneca when it sought an interim injunction against KRKA dd Novo Mesto and Consilent Health Ltd to prevent them from importing from Slovenia and distributing to the NHS a generic version of a medicine called esomeprazole which is used to treat ulcers and other illnesses caused by gastric acid secretion. AstraZeneca had a patent for esomeprazole which they said would be infringed by the importation and sale of the generic product. They issued proceedings in the Patents Court and sought an interim injunction. Though they did not believe that their product did infringe the patent KRKA and Consilio submitted to an order by Mr Justice Vos on 8 Oct 2008 not to import or distribute the drug until judgment or further order.

    In Ranbaxy (UK) Ltd v AstraZeneca AB [2011] EWHC 1831 (Pat), [2011] FSR 45 which I discussed in Swiss Style Claims: Ranbaxy v AstraZeneca 16 July 2011 Mr Justice Kitchin (as he then was) decided that Ranbaxy's version of esomeprazole did not infringe AstraZeneca's patent. The same judge, who has now been elevated to the Court of Appeal, said at paragraph [6] of his judgment in AstraZeneca AB and Another v KRKA dd Novo Mesto and Another [2015] EWCA Civ 484 (21 May 2015):
    "The judgment in the Ranbaxy proceedings had a significant impact upon the market for it opened the door to the marketing of generic esomeprazole products by a series of other companies. Arrow, together with AZ, began to sell a generic tablet in July 2011; the defendants launched Emozul in September; Mylan launched a generic capsule in November; and TEVA launched a generic tablet in December. The introduction of all of these generic esomeprazole products into the market had the predictable consequence of driving the price down and had a significant impact upon the success of the launch of Emozul. Moreover, the defendants lost the opportunity to enjoy almost a year as the only generic available to the market. This loss, described as the loss of the "first mover" advantage, was, so the defendants maintained, of vital importance to the case and it formed the basis for their claim for damages in excess of £32 million in respect of their losses, not just during the period of the injunction but also following the launch of Emozul in 2011."
     Mr Justice Floyd (as he then was) lifted the interim injunction on 29 July 2011 and KRKA and Consilient sought an inquiry as to the damages to which those companies were entitled under AstraZeneca's cross undertaking between 8 Oct 2008 and 29 July 2011. Their application came on before Mr Justice Sales (as he then was) in AstraZeneca AB and Another v KRKA, DD Novo Mesto and Another [2014] EWHC 84 (Pat) and the learned judge awarded them more than £27 million. Lord Justice Kitichin observed at paragraph [1] of his judgment in the above appeal that it is said to be the largest award ever made by the Patents Court upon an inquiry of this kind.

    AstraZeneca appealed and the appeal came on before Lords Justices Kitchin, Floyd and Longmore. It was common ground that the general principles to be applied in assessing the damages payable under a cross-undertaking given in respect of the grant of an interim injunction are those explained by Mr Justice Norris at paragraph [5] of his judgment in Les Laboratoires Servier v Apotex Inc[2008] EWHC 2347 (Ch), [2009] FSR 3:
    "The principles of law sufficient to enable me to quantify compensation in this case may be shortly stated:-
    (a) The undertaking is to be enforced according to its terms. In the instant case (as in many others) it is that Servier will comply with any order the court may make "if the court…finds that this Order has caused loss to the defendants." The question for me is therefore: what loss did the making of the Order and its continuation until discharge cause to Apotex?
    (b) The approach is therefore essentially compensatory and not punitive;
    (c) The approach to assessment is generally regarded as that set out in the obiter observation of Lord Diplock in Hoffmann-La Roche v Secretary of State for Trade [1975] AC 295 at 361E namely:-
    "The assessment is made upon the same basis as that upon which damages for breach of contract would be assessed if the undertaking had been a contract between the plaintiff and the defendant that the plaintiff would not prevent the defendant from doing that which he was restrained from doing by the terms of the injunction: see Smith v Day (1882) 21 Ch D 421 per Brett LJ at p 427."
    (d) What Apotex was trying to do (and what the Order restrained it from doing) was to enter a new market for the sale of generic perindopril. It was denied exploitation of this opportunity. The outcome of such exploitation is attended by many contingencies but Chaplin v Hicks [1911] 2 KB 786 establishes (per Vaughan Williams LJ at p.791) that whilst "the presence of all the contingencies on which the gaining of the prize might depend makes the calculation not only difficult but incapable of being carried out with certainty or precision" damages for the lost opportunity are assessable.
    (e) The fact that certainty or precision is not possible does not mean that a principled approach cannot be attempted. The profits that Apotex would have made from its exploitation of the opportunity to sell generic perindopril depend in part upon the hypothetical actions of third parties (other potential market participants) and in part upon Servier's response to them. A principled approach in such circumstances requires Apotex first to establish on the balance of probabilities that the chance of making a profit was real and not fanciful: if that threshold is crossed then the second stage of the inquiry is to evaluate that substantial chance (see Allied Maples v Simmons & Simmons [1995] 1 WLR 1602). As Lord Diplock explained in Mallett v McMonagle [1970] AC 166 at 176E-G
    "…. in assessing damages which depend on its view as to what…. would have happened in the future if something had not happened in the past, the Court must make an estimate as to what are the chances that a particular thing….. would have happened and reflect those chances, whether they are more or less than even, in the amount of damages it awards…"
    (f) The conventional method of undertaking this exercise is to assess damages on a particular hypothesis and then to adjust the award by reference to the percentage chance of the hypothesis occurring. In many cases it is sufficient to postulate one hypothesis and make one discount: but there is no reason in principle why one should not say that either Scenario 1 or Scenario 2 would have occurred and to discount them by different percentages. That is the course which Mr Watson QC urged in the present case: and I note that it has some support in Earl of Malmesbury v Strutt & Parker [2007] PNLR 570."
    AstraZeneca contended that the judge had fallen into error in over 50 different respects though at the hearing they focused on the following submissions. First, the judge had no proper basis for drawing the conclusions he did from the evidence Secondly, the discount that he allowed for uncertainty was wholly inadequate and in arriving at it the judge had failed to take into account a series of obviously relevant matters. Thirdly, the judge has assumed that the NHS would have begun to implement switching immediately after the launch of the respondents' product  but that was contrary to their own pleaded case and had no basis in the evidence. Overall,  the judge awarded a sum that far exceeded Consilient's own contemporary projections and had been arrived at on a basis which was flawed.

    The Court of Appeal rejected those contentions. On the first, Lord Justice Kitchin said at paragraph [78]:
    "The judge had careful regard to all of the evidence before him but came to the conclusion that there was no expectation that any other generic esomeprazole PPI product would be introduced into the market by any other provider any earlier than in fact occurred. He was fully conscious that the Medicine Managers engage in horizon scanning but in this case there was nothing on the horizon to see. The impediment for other providers was the fear of AZ's patent for Nexium, and it was a fear that was properly founded in AZ's vigorous efforts to reinforce their patent rights until judgment was given against them in the Ranbaxy action."
    As for the second he said at paragraph [84]
    "the uncertainty discount, if any, which it is appropriate to apply in any particular case must be determined upon the facts of that case and little if any assistance can be derived from looking at the discounts arrived at by other judges in different circumstances. There is not and cannot be any benchmark or yardstick. It follows that the judge cannot be criticised for arriving at a discount which is smaller than that which has been applied in other cases."
    As for the final argument Lord Justice Kitchin said at paragraph [86] that "the judge has made findings which are properly founded upon the evidence before him." For all of those reasons he dismissed the appeal and the other two Lords Justices agreed with him.

    There was a time when interim injunctions were applied for in intellectual property cases almost as a matter of course. There was every incentive to bring such applications because an injuncted defendant would be forced to negotiate and there was much less risk because the usual order as to costs was that the successful party's costs would be costs in the cause. As most actions were settled after the interlocutory injunction proceedings such costs orders were very often compromised. The Civil Procedure Rules required the courts to assess costs of interlocutory applications summarily. The possibility that they might have to cough up many thousands of pounds within 14 days if their  applications failed made claimants think twice before bringing them. The risk that a claimant may have to pay as much as £27 million if his application fails is likely to have a similarly chilling effect. Interim injunctive relief will now be sought only in very strong cases and in such cases undertakings in terms of the application notice are much more likely to be forthcoming,

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