05 October 2015

Cross Border Litigation: Tech 21 UK Ltd v Logitech Europe SA

Logitech Europe SA is a Swiss company which makes a protective case for iPads called "Big Bang". This YouTube video shows how it works. Tech21 is a British company on Eel Pie Island which is not far from where I grew up which makes something very similar called an "Impact Folio". Here's their video. Spot the difference if you can.

Between Jan 2013 and Jan 2014 the two companies tried to work together to develop a range of cases to be sold by Logitech but they fell out. Shortly afterwards Logitech started to sell Big Bangs and Tech21 Impact Folios. On 10 Sept 2014 Tech21 received the following letter from Jonas Rechtsanwaltsgesellschaft mbH of Cologne in the Federal Republic of Germany:
"We are representing our client Logitech Europe S.A., Daniel Borel Innovation Center, CH-1015 Lausanne, Switzerland in matters of Intellectual Property.
We have been informed that you entered into a manufacturing and sales agreement with our client dated October 11, 2013 that covers inter alia the development, manufacturing and sale of tablet products for and to our client. You were asked to develop for manufacturing the products based on our client's designs that were presented to you by Logitech and by Design Partners, a partner company of our client. Furthermore it was agreed that our client will maintain exclusive ownership rights to the design and product intellectual property. Moreover, you have undertaken not to take our client's designs, IP and/or discussions and reproduce a Tech21 or other branded version of the product and that such rights will survive termination (see Schedule G, "IP Rights").
Therefore, our client is the exclusive owner of all IP rights including design rights that have been implemented in its protective Pad Air/ Ipad mini cases "Big Bang" which is based on the design of our client and has been put on the European market some months ago. Moreover, considering the innovative and unique design of the Big Bang products our client has become the owner of an unregistered Community Design accordingly.
Our client noticed recently that you are distributing a protective case for iPad Air/ Ipad Mini named "IMPACT FOLIO" in Germany through various Apple stores. Your products are nearly identical to the product of our client and give the same overall impression. Hence, your products are a clear infringement of our client's unregistered Community Design. Our client therefore asserts claims for injunction, rendering of accounts and damages. Moreover, you are obliged to compensate our client for any legal costs so far accrued from our services.
With its request to sign a cease and desist declaration, our client hereby gives you the opportunity to avoid a legal dispute. In the name and on behalf of our client we hereby ask you to sign the enclosed cease and desist declaration we have already prepared or sign a cease and desist declaration that covers the claims cited above. We look forward to receiving the enclosed cease and desist declaration — duly signed — at the latest until 15 September 2014.
The receipt of the signed declaration via fax by this time will be deemed in due time if the original document is then received without further notice.
If you do not comply with the before-signed claims not fully or not in due course our client will reserve its rights to take legal action against you which would cause further costs."
The letter was accompanied by a draft undertaking that had been settled by the German lawyers.

Tech21's solicitors asked the Germans for an extension of time which was granted until the 17 Sept. In the meantime the solicitors issued a claim form seeking declarations that
  • Tech21 had not infringed and would not infringe any unregistered Community unregistered design owned by Logitech by making, processing, offering, putting on the market, importing, exporting or using protective iPad Air and/or iPad mini cases sold under the name "Impact Folio" within the European Community, nor any UK unregistered design right or other rights subsisting in the same designs; and 
  • Logitech has made unjustifiable threats to bring proceedings for infringement of an unregistered Community design right in respect of Tech21's possessing, offering, putting on the market, and/or using such cases. 
Tech21 also claimed an injunction to restrain further such threats, dissemination of the judgment and costs.

The German lawyers responded by applying to the Düsseldorf district court  for an interim injunction to restrain further infringement of their client's designs. Tech21 lodged evidence that it had designed the Impact Folio which was accepted by the court. The presiding judge refused Logitech's application and advised that company to withdraw its claim which it did. Immediately after it discontinued the German proceedings Logitech applied to set aside Tech21's claim form and a declaration that the court had no jurisdiction to grant the relief that had Tech21 sought.

Logitech's application came on before Mr Stephen Jourdan QC sitting as a deputy judge of the High Court. At paragraph [124] of his judgment in Tech 21 UK Ltd v Logitech Europe SA [2015] WLR(D) 389, [2015] EWHC 2614 (Ch) Mr Jourdan concluded that:
"(a) This Court has no jurisdiction to hear the claim for a declaration of non-infringement of any Community unregistered design right vested in Logitech.
(b) This Court has jurisdiction to hear the claim under regulation 2 of the UK Regulations in respect of the threat made by the Letter to bring infringement proceedings in the UK courts.
(c) This Court has no jurisdiction to hear the claim for a declaration of non-infringement of any UK unregistered design right vested in Logitech."
The learned deputy judge decided that the court had no jurisdiction to hear a claim for a declaration of non-infringement because art 82 (1) of the Community design regulation (Council Regulation (EC) No 6/2002of 12 December 2001 on Community designs (OJ EC No L 3 of 5.1.2002, p. 1)) provides:
"Subject to the provisions of this Regulation and to any provisions of the Convention on Jurisdiction and Enforcement applicable by virtue of Article 79, proceedings in respect of the actions and claims referred to in Article 81 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in any Member State in which he has an establishment."
Actions for declarations of non-infringement are referred to in paragraph (b) of art 81.

Reg. 2 (1) of the Community Designs Regulations 2005 provides:
"Where any person (whether entitled to or interested in a Community design or not) by circulars, advertisements or otherwise threatens any other person with proceedings for infringement of a Community design, any person aggrieved thereby may bring an action against him for any such relief as is mentioned in paragraph (2)."
The remedies provided by paragraph (2) include declarations that the threats are unjustifiable, injunctions against the continuance of the threats and damages. Paragraph (5) provides:
"Proceedings may not be brought under this regulation in respect of a threat to bring proceedings for an infringement alleged to consist of the making or importing of anything."
Tech 21 argued that
  • Jonas's letter made a threat to sue in the UK which is a statutory tort under art under reg. 2 of the Community Design Regulations 2005; and
  • art 5 (3) of the Lugano Convention entitles Tech21 to sue Logitech in "the place where the harmful event occurred or may occur";  and 
  • that place was the UK as Logitech threatened to sue in the UK, the threat was received in the UK, and if the threat had been carried out, the litigation would have taken place in the UK. 
Logitech contended that:
"First, the Letter did not make a threat to sue in the UK courts. Second, in any event, the Lugano Convention does not apply at all, because it is implicitly excluded by the terms of the EC Designs Regulation. Third, even if the Lugano Convention applies, it is subject to the specific jurisdiction provisions in the EC Designs Regulation, and this claim is within article 81(b), as an action for a declaration of non-infringement of Community designs."
It also argued that it was within the exception provided by reg. 2 (5) since Tecg21 was a primary infringer.

Mr Jourdan considered and dismissed each of those contentions in turn. As to the first, he said at paragraph [81] of his judgment:
"Accordingly, in my view a reasonable reader of the Letter in Tech21's position would clearly have understood it to indicate that proceedings in the UK were likely or, at the very least, that there was a realistic possibility of UK proceedings in respect of alleged infringement of Logitech's claimed Community design right, either immediately or in the future."
As to the second, he said at paragraph [85]:
"The Lugano Convention is a treaty binding on the EU and on the UK and its jurisdiction rules will apply to proceedings relating to a Community design, save to the extent that those jurisdiction rules are inconsistent with specific provisions of the EC Designs Regulation."
 As to the argument that Tech21 was a primary infringer, Mr Jourdan relied on the Court of Appeal's decision in Cavity Trays v RMC Panel Products [1996] R.P.C. 361. Finally, the deputy judge decided that a threats action was altogether different from an application for a declaration of non-infringement and therefore fell outside the scope of art 82 (1) and art 81 (b) of the Community Design regulation.

Mr Jourdan held that he had no jurisdiction to grant a declaration of non-infringement of national unregistered design right because Logitech had never complained of infringement of such right.

Should anyone wish to discuss this case or registered design law in general he or she should call me during office hours on 020 7404 5252 or send me a message through my contact form.

04 October 2015

When one charity sues another - NOCN v Open College Network Credit4Learning

An open college network is a regional organization that accredits adult education courses offered by educational institutions and employers. The claimant was established to coordinate some of those organizations. It trades under the following signs:

It has registered those signs as trade marks as well as the letters OCN and NOCN for accreditation and certification services in class 42 as well as other goods and services.

The defendant is an open college network which was affiliated with the claimant until 2006. Until judgment in these proceedings, it traded under the following sign:

The claimant sued the defendant for trade mark infringement and passing off. The defendant counterclaimed for invalidation of the claimant's registrations.  The action and counterclaim came on before His Honour Judge Hacon in NOCN (Formerly National Open College Network) v Open College Network Credit4Learning [2015] EWHC 2667 (IPEC) (25 Sept 2015)

It will come as little surprise even to those who have not read the judgment that the claim failed except in respect of the use of the dots device. The judge held that such use infringed the combined device and word marks under s.10 (2) of the Trade Marks Act 1994 and amounted passing off. It will be equally unsurprising that he found that the letters "OCN" were and remain entirely descriptive. Consequently, none of the claimant's marks was infringed by the use of those letters and such use did not constitute passing off.  His Honour also declared the OCN letter mark invalid under s.47 (1) of the Act,

In a postscript to his judgment Judge Hacon made this final observation:
"I now know that between them the parties, both charities, have incurred well over £400,000 on fees in this litigation. A very strong recommendation to settle at the case management conference was not taken up. The laudable cause of encouraging adult education will presumably have to endure an equivalent cut in funding solely because this dispute was not resolved at an early stage. Such an outcome is much to be regretted."
There is, however, some good stuff in this judgment.  At paragraph [22] he reaffirmed that goodwill is capable of subsisting in a business which consists of educational and charitable work of the sort carried on by the parties and other open college networks and referred to British Diabetic Association v The Diabetic Society [1996] FSR 1 as an example. Secondly his analysis of the origin and ownership of the goodwill where he rejected both parties' claims to goodwill associated with those letters in paragraphs [45] to [55].

Should anyone wish to discuss this case note or trade mark or passing off law in general, he or she should not hesitate to call me on 020 7404 5252 during office hours or send me a message through my contact form.

22 September 2015

Damages for infringing Copyright in Photographs - Absolute Lofts v Artisan Home Improvements

Author Bengt Nyman
Creative Commons Licence
Source Wikipedia

Judge Hacon's decision in Absolute Lofts South West London Ltd v Artisan Home Improvements Ltd and Another  [2015] EWHC 2608 (IPEC) (14 Sept 2015) is an interesting authority on how to assess damages for infringement of the copyrights subsisting in photographs. In this case His Honour considered the principles for assessing both compensatory and additional damages.

The Parties

Absolute Lofts South Wset London Ltd ("Absolute Lofts") claims to be  the largest loft conversion company in Greater London while Artisan Home Improvements Limited ("Artisan") offers fascias, block paving and loft conversions in Bradford. The owner of Absolute Lofts was  Craig Colton ("Mr Colton") and the owner of Artisan  Darren Ludbrook ("Mr Ludbrook").

The Facts

At various times Mr  Colton had taken photographs of loft conversions that his company has completed and posted them to its website as examples of its handiwork. Mr Ludbrook downloaded 21 of Mr Coltron's photos and arranged for them to be posted  to his own company's website implying that they were examples of its work. Absolute Lofts got to hear what Artisan had done and threatened it with proceedings for copyright infringement.  MrLudbrook removed the infringing items from the website and replaced them with images from a photo library called "Shutterstock" that he had bought for £300. The parties were unable to agree on damages so these proceedings were initiated.

The Action

Absolute Lofts sued Artisan and Mr Ludbrook for damages for copyright infringement including additional damages under s.97 (2) of the Copyright Designs and Patents Act 1988 and art 13 (1) of the Enforcement Directive (Directive 2004/48/EC on the enforcement of intellectual property rights). There was no dispute that copyright subsisted in the photographs or that Mr Ludbrook had copied them. The only matter that appears to have been in doubt was whether Absolute Lofts owned the copyrights. That was resolved when Judge Hacon allowed a written assignment of the copyrights in the photographs into evidence. The rest of the hearing was on the assessment of damages.

Compensatory Damages 

The judge referred to his earlier decision in Henderson v All Around the World Recordings Ltd [2014] EWHC 3087 where he attempted to set out the law on the calculation of compensatory damages in accordance with the decisions of Mr Justice Arnold in Force India Formula One Team Limited v 1 Malaysia Racing Team Sdn Bhd  [2012] RPC 29, [2012] EWHC 616 (Ch) and Mr Justice Newey in  32 Red Plc v WHG (International) Ltd and Others  [2013] EWHC 815 (Ch) (12 April 2013). I discussed those authorities at some length in my case note Inquiries as to Damages in the Intellectual Property Enterprise Court: Henderson v All Around the World Recordings Ltd. 5 Nov 2014. 

Judge Hacon directed himself that the starting point was what would have been agreed by the parties had they negotiated as willing licensor and willing licensee.  His Honour assumed paragraph [13] that
"Mr Colton and Mr Ludbrook entered the negotiations immediately before the acts of infringement, i.e. at the point when Artisan realised that images of loft conversions were needed in addition to those taken of its own loft conversions and a decision was taken to use those on Absolute Lofts' website."
Even though both sides presented evidence of what a professional photographer would have charged for photographs for Artisan's website His Honour disregarded it as "unhelpful" for two reasons:
"[21] First there is the obvious point that Mr Ludbrook was not concerned to have professional shots on his website. The hypothesis is that he would have been a willing licensee of Mr Colton's photographs and it was the common view of the experts that these, though no doubt perfectly adequate for the task they served (and looked fine to me), were not of a professional standard.
[22] More than that, I do not accept that in the hypothetical negotiations Mr Ludbrook would for a moment have contemplated paying for customised photographs of actual loft conversions. He was a man willing to represent other companies' loft conversions as having been done by Artisan. To that end, I have no doubt, he was prepared to use the cheapest images he could find that looked good enough and could pass for photos of loft conversions done by Artisan. When faced with Absolute Lofts' letter before action in May 2014, he commissioned a local website agency to replace Absolute Lofts' 21 photos with images that satisfied those criteria, sourced from a photographic library called 'Shutterstock'. This cost him £300. Mr Colton gave some evidence in cross-examination about whether one of the Shutterstock images could be of a loft in the UK. I am not convinced that it would occur to a typical observer of Artisan's website that this was a photograph of a loft located abroad. Anyway, this was just one image and collectively the 21 Shutterstock photographs were good enough for Mr Ludbrook.
[23] In the hypothetical negotiations Mr Ludbrook would have known that absent agreement he could obtain his images from a photographic library. As I have indicated, Mr Colton would have had it in mind that any agreed figure would be a bonus."
It seemed to the judge that what Mr Ludbrook actually paid to Shutterstock was as good a guide as any to what would hypothetically have been agreed between the parties. He therefore awarded Absolute Lofts the sum of £300.

Additional Damages

The judge found at paragraph [35] that Mr Ludbrook either knew that the copies of Absolute Lofts' photographs on Artisan's website were infringing copies or alternatively that he had reasonable grounds to know they were. That was sufficient to engage both s.97(2) of the 1988 Act and art.13 (1) of the Directive.

Although s.97 (2) of the CDPA has never been repealed or amended the judge thought it right to focus on the Enforcement Directive either because that sub-section is consistent with art 13 (3) in which case it would be pointless to apply it in parallel or it is not in which case it should not be applied at all.  However, he had to take account of art 2 (1) which preserves national law where it is more favourable to the rights holder. The upshot was that
"a successful claimant is entitled to rely on either s.97 (2) of the 1988 Act or on the defendant's unfair profits under art.13 (1) of the Directive, whichever would provide for the greater damages. Pursuant to s.97 (2) (a) the court is under an express statutory duty to have regard in particular to the flagrancy of the infringement whereas flagrancy is not a compulsory factor in the assessment under art.13 (1). In some circumstances the absence of flagrancy could therefore serve as a barrier to the minimum remedies available under art.13 (1). On the other hand, if flagrancy is such and/or the benefit accruing to the defendant by reason of the infringement is such that additional damages under s.97(2) would exceed those available under art.13 (1), an award under s.97 (2) is not precluded by the Enforcement Directive."
Art 13 (1) of the Enforcement Directive requires EU member states to
"ensure that the competent judicial authorities, on application of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in an infringing activity, to pay the rightholder damages appropriate to the actual prejudice suffered by him/her as a result of the infringement.
When the judicial authorities set the damages:
(a)    they shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the rightholder by the infringement;
(b)     as an alternative to (a), they may, in appropriate cases, set the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question."
Although paragraphs (a) and (b) are expressed as alternatives the judge thought it better to read the two as parts of a consistent whole. He held that Absolute Lofts was entitled to an award that took account of Artisan's unfair profits. Artisan's profits had increased from £226,000 in 2011, £478,000 in 2012 and £498,000 in 2013. His Honour concluded at paragraph [57] that he was
"entitled to infer that Absolute Lofts' photographs made a contribution to the company's profits in 2011 to 2013 by encouraging those who visited Artisan's website to pay Artisan to do a loft conversion and that the contribution was more than negligible."
Judge Hacon found that Artisan had profited from its acts of infringement. Those profits could be characterized as particularly unfair because they were generated by a misrepresentation to Artisan's customers that Artisan was capable of, and had completed, the loft conversions actually done by Absolute Lofts.

After taking all those factors into account Judge Hacon awarded Absolute Lofts additional damages of £6,000 making a combined total of £6,300.  At paragraph [60] the judge said he was satisfied that the infringement was "flagrant" and that the justice of the case justified an award of £6,000 by way of additional statutory damages under s,97 (2).

The Request for Reconsideration of the Compensatory Damages Award

Three days after the judgment Absolute Lofts asked Judge Hacon to reconsider his award of £300 by way of compensatory damages on the ground that it had failed to draw his attention to a provision of Shutterstock's licence that contained the following prohibitions:
"12. Use an Image in a manner that infringes upon any third party's trademark or other intellectual property, or would give rise to a claim of deceptive advertising or unfair competition. …
18. Use any Image (in whole or in part) as a trademark, service mark, logo or other indication of origin, or as part therefore, or to otherwise endorse or imply the endorsement of any goods and/or services.'
19. Falsely represent, expressly or by way of reasonable implication, that any Image was created by you or a person other than the copyright holder(s) of that image."
Absolute Lofts argued that Artisan had breached those terms and would not have been entitled to a £300 licence. In Absolute Lofts South West London Ltd v Artisan Home Improvements Ltd and another (No. 2) [2015] EWHC 2632 (IPEC) (17 Sept 2015) His Honour rejected that request partly because it did not follow that Artisan could not have obtained stock images from another library at a similar price and partly because it is always incumbent upon a claimant to present his best case at trial in accordance with his duty to further the overriding objective of the Civil Procedure Rules.


The most surprising aspect of this judgment is not the lavishness of the additional damages but the paucity of the compensatory damages resulting from the total disregard of the two expert witness. The judge took into account what Mr Ludbrook was prepared to pay rather than what was available for non-infringing use. As Mr Ludbrook's conduct was not far short of that of the defendant in Bristol Conservatories Ltd v Conservatories Custom Built Ltd. l1989] RPC 106 it could have been argued that the only photos that he was entitled to use were those of his company's handiwork and none other and that the taking of those photographs would have required the services of a professional photographer.

The additional damages award was 30 times the size of the compensatory damages award. Art 13 (1) requires member states to ensure that the competent judicial authorities order the infringing party to pay the rightholder damages "appropriate to the actual prejudice suffered by him/her as a result of the infringement". The starting point is to consider the actual prejudice suffered by the rightholder as a result of the infringement and save for the loss of the notional licence fee which was covered by the compensatory award there was none as the parties were not competitors. The defendant's profits would have been relevant if Absolute Lofts had sought an account of profts instead of damages but it did not. Moreover damages and profits have always been alternatives in our legal system. Successful claimants can enjoy one or the other but not both.

A £6,300 damages award is unlikely to be appealed but if ever there was a case for the Court of Appeal to lay down some hard and fast rules on the interpretation and application of the Enforcement Directive and indeed art 8 of Directive 2001/29/EC of the European Parliament and of the Council of the 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society to which His Honour also referred, this is it.

Further Information

If any reader wants to discuss this case or indeed copyright law or intellectual property in general, he or she should call me on 020 7404 5252 during office hours or use my contact form.

18 September 2015

The Pregabalin Trial: Generics (UK) Ltd v Warner-Lambert Company LLC

According to drugs.com, pregabalin is an anti-epileptic drug which works by slowing down impulses in the brain that cause seizures. A European patent for the drug was granted to Warner-Lambert Co, LLC ("Warner-Lambert")(now a subsidiary of Pfizer Inc.) under EP number 0 641 330. That patent expired on 17 May 2013 but was extended by a supplementary protection certificate ("SPC") until 17 May 2018. That SPC was allowed to lapse on 14 Oct 2013 and Warner-Lambert's data exclusivity in respect of the data used to obtain the marketing authorisation for prehabalin expired on 8 July 2014. Since then anybody has been free to make, import or sell pregabalin for treating epilepsy and generalized anxiety disorder in the United Kingdom and several companies including some of the parties to these proceedings have done just that.

Drugs.com notes that pregabalin also affects chemicals in the brain that send pain signals across the nervous system. It can therefore be used to control seizures and treat fibromyalgia as well as pain caused by nerve damage in patients with diabetes, herpes or neuropathic pain associated with spinal cord injury. A patent for those uses entitled "Isobuytlgaba and its derivatives for the treatment of pain" was granted to Warner Lambert LLC under EP number 0 934 061 on 28 May 2013. 

The Litigation

The generics drugs manufacturers Generics (UK) Ltd trading as Mylan ("Mylan") and Actavis Group PTC EHF ("Actavis") applied for revocation of Warner Lambert's pain relief patent on 24 June and 12 Sept 2014 respectively. The grounds upon which they seek revocation are obviousness and insufficiency. Mr Justice Birss ordered those two applications to be heard together.

On 8 Dec 2014 Warner-Lambert sued Actavis for infringement of its pain relief patent on the ground that it had supplied pregabalin for pain relief which it was entitled to make, import and sell only for epilepsy and general anxiety disorder treatment. Warner-Lambert applied for a complicated interim injunction to inhibit the prescription of Activis's generic pregabalin tablets in the NHS. The application came on before Mr Justice Arnold in January of this year. The judge refused the relief on the ground that there was no serious issue to be tried and that in any case the balance of convenience favoured Actavis but ordered the infringement action to be tried with the revocation proceedings (see Warner-Lambert Company, LLC v Actavis Group Ptc EHF [2015] EWHC 72 (Pat) and my case note Swiss Style Claims: Warner Lambert v Actavis 28 Jan 2015).

After that hearing there were a number of other interlocutory applications which Mr Justice Arnold summarized at paragraph 5 of his judgment in the trial of those various claims:
"I dismissed the application for an interim injunction for the reasons given in my judgment dated 21 January 2015 [2015] EWHC 72 (Pat) ("Warner-Lambert I"). Subsequently I dismissed an application by Actavis to strike out, alternatively for summary judgment dismissing, Warner-Lambert's claim for infringement under section 60(1)(c) of the Patents Act 1977 for the reasons given in my first judgment dated 6 February 2015 [2015] EWHC 223 (Pat) ("Warner-Lambert II"), but acceded to Actavis' application to strike out the claim for infringement under section 60 (2) for the reasons given in my second judgment dated 6 February 2015 [2015] EWHC 249 (Pat) ("Warner-Lambert III"). On 26 February 2015 I made an order, largely by consent, requiring the National Health Service Commissioning Board ("NHS England") to issue guidance to Clinical Commissioning Groups ("CCGs") in England and to the NHS Business Services Authority ("BSA") for transmission to NHS pharmacy contractors for the reasons given in my judgment dated 2 March 2015 [2015] EWHC 485 (Pat) ("Warner-Lambert IV"). On 28 May 2015 the Court of Appeal dismissed an appeal by Warner-Lambert against Warner-Lambert I and allowed an appeal by Warner-Lambert against Warner-Lambert III for the reasons given in the judgment of Floyd LJ delivered on that date [2015] EWCA Civ 556 ("Warner-Lambert CA")."
There have also been a number of case management hearings in which the Secretary of State for Health has been permitted to intervene in the infringement claim. Actavis has counterclaimed against Warner-Lambert for groundless threats.

The Trial

The revocation applications together with Warner-Lambert's infringement claim and Actavis's threats action came on for trial before Mr Justice Arnold on 29 June 2015. His Lordship delivered judgment on most of those issues on 10 Sept 2015. The case reference is Generics (UK) Ltd v Warner-Lambert Company LLC [2015] EWHC 2548 (Pat) (10 Sept 2015).

The Patent in Suit

European patent number 0 934 061 was granted "for the use of an analog of gamma-aminobutyric acid (GABA) in pain therapy, as the compound exhibits analgesic/antihyperalgesic action." It was summarized as
 "a method of using a compound identified below in the treatment of pain, especially for treatment of chronic pain disorders. Such disorders include, but are not limited to, inflammatory pain, postoperative pain, osteoarthritis, pain associated with metastatic cancer, trigeminal neuralgia, acute herpetic and postherpetic neuralgia, diabetic neuropathy, causalgia, brachial plexus avulsion, occipital neuralgia, reflex sympathetic dystrophy, fibromyalgia, gout, phantom limb pain, burn pain, and other forms of neuralgic, neuropathic, and idiopathic pain syndromes."
Claim 1 was for the
"Use of [pregabalin] or a pharmaceutically acceptable salt thereof for the preparation of a pharmaceutical composition for treating pain."
The subsequent claims were for such use in the treatment of different types of pain.

Swiss Style Claims

In my previous case note I wrote:
"The use of pregabalin for the treatment of pain is an example of a "Swiss style claim". In G 5/83 the Enlarged Board of Appeal of the European Patent Office held that a patent could be granted for a second or subsequent medical use if a specification claimed the use of a known substance that was already used for the treatment of one condition in the manufacture of a medicament for the treatment of another condition. Since the revision of the European Patent Convention by the Act revising the European Patent Convention of 29 Nov 2000 it has ceased to be necessary to draft claims for second and subsequent medical use in this way because art 54 (5) of the Convention now permits second and subsequent medical uses of known substances."
Between paragraphs [88] and [90] of his judgment Mr Justice Arnold explained the policy for formulating patent claims in this way:
"[88] It has increasingly been recognised over the past 30 years or so that it is important to find new uses for existing medicines. Existing medicines have the advantage that they are known compounds which have been shown to have acceptable safety profiles, and therefore need much less testing from that perspective. Experience shows that a compound which has therapeutic benefit in one application not infrequently turns out to have therapeutic benefit in another application (sometimes more than one other application) which may be quite different to the first application. Thus there is significant potential and value in finding such second (and third, etc.) medical uses. Discovering such second medical uses requires difficult and expensive research, however. How is such research to be funded? The answer which has been provided by the European patent system is to grant patents for second (and subsequent) medical uses of known compounds. The monopoly thus conferred on the inventor who finds the second medical use provides the return on the investment required to fund the research.
[89] There are two significant obstacles to the grant of patents for second medical uses under the European patent system: first, the compounds themselves are not new, which is a fundamental requirement for patentability of a product; and secondly, methods of treatment of the human (or animal) body by therapy are not patentable, in order to protect doctors from claims for patent infringement. The European patent system has attempted to overcome these obstacles in two ways.
[90] The first way was through a piece of judicial lawmaking which fudged some of the difficult issues. This involved the use of claims in Swiss form i.e. "use of substance X for the preparation of a medicament (or pharmaceutical composition) for treating indication Y" (a purpose-limited process claim): see G 05/83 Eisai/Second medical indication [1985] OJ EPO 64."
As I indicated in my previous note it is no longer necessary to draft patents in this form because the European Patent Convention has been revised. The judge made clear at paragraph [92] that it should not be assumed that anything he said in his judgment about Swiss form claims necessarily applies to claims in the new form.


Referring to Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 and Pozzoli v BDMO SA [2007] BusLR D117, [2007] EWCA Civ 588, [2007] FSR 37 Mr Justice Arnold directed himself as follows:
"(1)  (a) Identify the notional 'person skilled in the art';
(b) Identify the relevant common general knowledge of that person;
(2)  Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3)  Identify what, if any, differences exist between the matter cited as forming part of the 'state of the art' and the inventive concept of the claim or the claim as construed;
(4)  Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"
The Skilled Addressee

It was common ground that the "person skilled in the art" in this case would be  a team consisting of a neuroscientist and a clinician. The neuroscientist would be a pre-clinical researcher with an interest in developing new analgesics and knowledge of various animal models of pain. He or she would typically have a master's degree or doctorate in neuroscience, pharmacology or neurophysiology or a related biological field and would be familiar with the molecular physiology of pain and analgesia. The clinician would specialize in the treatment of pain. The judge decided he or she could be a rheumatologist, neurologist or anaesthetist. The members of the team would work together and be led by the neuroscientist.

Common General Knowledge

Mr Justice Arnold referred to his review of the law on "common general knowledge" between paragraphs [105] and [115] of his judgment in  KCI Licensing Inc and Others v Smith & Nephew Plc and Others [2011] Bus LR D27, [2010] EWHC 1487 (Pat), [2010] FSR 31 which had been approved by the Court of Appeal on appeal (see KCI Licensing Inc and Others v Smith & Nephew Plc and Others  (2011) 117 BMLR 81, [2011] FSR 8, [2010] EWCA Civ 1260. The learned judge added the following points between paragraphs [121] and [125]:
[121] First, in some cases the party attacking the patent seeks to build up the common general knowledge in order to bolster its case on its obviousness. In other cases the patentee seeks to build up the common general knowledge in order to bolster its case on sufficiency. In the present case both sides sought to build up different aspects of the common general knowledge for their respective purposes. As is common ground, whichever party seeks to establish that something is common general knowledge and whatever that party's purpose in doing so, the burden lies on the party seeking to establish the common general knowledge and the test to be applied is the same.
[122] Secondly, in some cases the breadth of the claims is such that they cover two (or more) different fields and hence are addressed to persons skilled in both those fields. The fields may be different aspects of the same art or, in an extreme case, different arts altogether. In such circumstances it is legitimate to consider the question of obviousness from the perspective of each addressee, and hence in the light of that addressee's common general knowledge, although this does not mean that there cannot be invention in marrying two different arts: see Inhale Therapeutic Systems Inc v Quadrant Healthcare plc [2002] RPC 21 at [35]-[42] (Laddie J). Counsel for Mylan and Actavis accepted that, at least on the facts of the present case, the same approach should be applied to sufficiency i.e. it is enough if the invention can be performed by one of the addressees using that addressee's common general knowledge.
[123] Thirdly, an issue arises in this case as to whether common general knowledge has a territorial dimension. What if a matter was known to persons skilled in the art in the USA, but not to persons skilled in the art in the UK? In Teva UK Ltd v Merck & Co Inc [2009] EWHC 2952 (Pat), [2010] FSR 17 Floyd J (as he then was) said:
'101. A question arises as to whether it is sufficient to establish that a particular fact was known in the United Kingdom, or whether it is necessary to establish, where the art is an international one, that it was known more widely.
102. Mr Thorley maintained that the relevant common general knowledge was that in this country. Mr Birss was content to accept that proposition, whilst pointing out that where the art was an international one, it is relevant on the facts to take account of evidence that individuals abroad had not heard of it. Neither side showed any enthusiasm for arguing that common general knowledge had to be more extensive than the United Kingdom.
103. I am content to proceed on this legal basis, as I did not hear detailed argument on the point. It would seem to me to be an odd result if a patent for the United Kingdom could survive if it was obvious in the light of the common general knowledge in this country. A more difficult question may arise if a fact is only common general knowledge abroad. But that does not arise here.'
[124] The question does arise here. Counsel for Warner-Lambert submitted that matter relied on as being common general knowledge must be shown to be common general knowledge in the UK, but counsel for Mylan and Actavis disputed that this was necessary. Although I only received limited argument on the point, it seems to me that, at minimum, it must be shown that the matter in question was common general knowledge in the UK. The reason for this is that, whether one is concerned with the validity of a European Patent (UK), or a UK patent, one is concerned with a right in respect of the UK. It is true that the prior art may have been published anywhere in the world, but I do not think that alters the need for the skilled team to consider that art as if they were located in the UK. I do not think it matters that a fact was common general knowledge in (say) China, if it was not common general knowledge here. The position may be different if all the persons skilled in a particular art in the UK are acquainted with the position in China, but no point of that kind arises here. I do not consider that this approach is contrary to Article 27(1) of TRIPS, which provides that "patents shall be available and patent rights enjoyable with discrimination as to the place of invention", as counsel for Mylan and Actavis submitted.
[125] Fourthly, as is established by the authorities discussed in KCI, in order to acquire the status of common general knowledge, a matter must be generally known and generally regarded as a good basis for further action by the bulk of those engaged in the art in question. What amounts to being "generally regarded as a good basis for further action" is a context-dependent question. Thus a scientific theory does not have to have been generally accepted as correct if it is regarded as a reasonable working hypothesis by the bulk of those skilled in art. Furthermore, a theory may be regarded as a good basis for some forms of action (such as experiments in vitro or in animal models) even if not for others (such as administration to humans). See Intervet UK Ltd v Merial [2010] EWHC 294 (Pat) at [145] and Novartis AG v Focus Pharmaceuticals Ltd [2015] EWHC 1068 (Pat) at [91]-[92]"
Between paragraphs [126]  and [239] the judge reviewed the evidence and concluded at paragraph [205] that it was common general knowledge that:
  1. Neuropathic pain was characterized by secondary hyperalgesia and allodynia, in the sense that these symptoms were present in the large majority of patients, but a significant minority did not display these symptoms.
  2. Secondary hyperalgesia and allodynia involved central augmentation. In some cases this would be central sensitisation, but not in all cases.
The Inventive Concept

The judge identified the inventive concept by construing the claims in accordance with the principles set out in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9, [2004] UKHL 46, [2005] 1 All ER 667, (2005) 28(7) IPD 28049, [2005] RPC 169 and summarized by Lord Justice Jacob at paragraph [5] of his judgment in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062, [2010] RPC 8:
"(i) The first overarching principle is that contained in Article 69 of the European Patent Convention.
(ii) Article 69 says that the extent of protection is determined by the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to be construed in context.
(iii) It follows that the claims are to be construed purposively - the inventor's purpose being ascertained from the description and drawings.
(iv) It further follows that the claims must not be construed as if they stood alone - the drawings and description only being used to resolve any ambiguity. Purpose is vital to the construction of claims.
(v) When ascertaining the inventor's purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different.
(vi) Thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol - a mere guideline - is also ruled out by Article 69 itself. It is the terms of the claims which delineate the patentee's territory.
(vii) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements.
(viii) It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context.
(ix) It further follows that there is no general 'doctrine of equivalents.'
(x) On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context.
(xi) Finally purposive construction leads one to eschew the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge."
The judge reminded himself that Swiss style claims are process claims rather than product claims and that they are directed to manufacturers of medicaments or pharmaceutical compositions.

Conclusion on obviousness

Having construed the claims Mr Justice Arnold compared the inventive concept as contained in  those claims with the prior art relied upon  by and Mylan and Actavus and considered whether they constituted steps that would have been obvious to the neuroscientist and clinician mentioned above having regard to common general knowledge. His Lordship concluded at paragraph [338] that they did not.


S.14 (3) of the Patents Act 1977 requires a specification to
"disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art."
If it does not to do so, any patent that may have been grated for the invention may revoked under s.72 (1) (d). Revocation on that ground is known as "insufficiency."  In Eli Lilly & Company v Human Genome Sciences Inc(2008) 31(10) IPD 31066, (2009) 105 BMLR 27, [2008] EWHC 1903 (Pat), [2008] RPC 29 Mr Justice Kitchin (as he then was) had said at paragraph [239] of his judgment:
"The specification must disclose the invention clearly and completely enough for it to be performed by a person skilled in the art. The key elements of this requirement which bear on the present case are these:
(i) the first step is to identify the invention and that is to be done by reading and construing the claims;
(ii) in the case of a product claim that means making or otherwise obtaining the product;
(iii) in the case of a process claim, it means working the process;
(iv) sufficiency of the disclosure must be assessed on the basis of the specification as a whole including the description and the claims;
(v) the disclosure is aimed at the skilled person who may use his common general knowledge to supplement the information contained in the specification;
(vi) the specification must be sufficient to allow the invention to be performed over the whole scope of the claim;
(vii) the specification must be sufficient to allow the invention to be so performed without undue burden."
Having already construed the claims and identified the skilled addressee and the common general knowledge Mr Justice Arnold considered whether the specification was sufficient to allow the invention to be performed over the whole scope of the claim without undue influence. He concluded at paragraph 358 that some but not all the claims were invalid for insufficiency. The invalid claims were 1, 3, 4, 6, 13 and 14.


Having decided that claims 1 and 3 were invalid for insufficiency it was not strictly necessary for the judge to decide whether those claims had been infringed. Warner-Lambert's case was that pregabalin that had lawfully been manufactured by Actavis for the treatment of epilepsy and generalized anxiety disorder had been supplied for pain relief.

Warner-Lambert  relied on s.60 (1) (c) and (2) of the Patents Act 1977.

As to the claim under 60 (1) (c) Mr Justice Arnold held that in a Swiss style claim it is necessary to prove intention on the part of the manufacturer that the medicament or pharmaceutical composition should be used for the new therapeutic use. As there was no evidence that Actavis intended its products to be used to treat pain unless and until claims 1 and 3 of the Patent were held invalid the claim failed on that head.  In Warner-Lambert Company, LLC v Actavis Group Ptc EHF and others [2015] EWCA Civ 556 Lord Justice Floyd had said at paragraph [127] of his judgment that s.60 (1) (c) would be infringed if a generics manufacturer knew or could foresee that his products would be used for the new use. Even applying that test Actavis would not have infringed claims 1 and 3.

As for the claim under s.60 (2)  there was no act of manufacture by any party downstream from Actavis, nor even the prospect of such an act. The claim under that head failed too.

The judge agreed to declare that neither Actavis nor any of its wholesalers, nor any doctors. patients or intermediaries had infringed Warner-Lambert's patent.


Shortly before Actavis was due to launch its generic pregabalin Warner-Lambert wrote to the Department of Health, NICE, superintendent pharmacists and others indicating that the prescription of  that product for pain relief would infringe its patent. The judge held that some of those letters were unjustifiable threats within the meaning of s.70 (1) of the Patents Act 1977.


At paragraph [727] of his judgment, Mr Justice Arnold concluded that:
"i) none of the claims of the Patent is obvious over any of the prior art relied upon by Mylan and Actavis;
ii) claims 1, 3, 4, 6, 13 and 14 of the Patent are invalid on the ground of insufficiency;
iii) even if claims 1 and 3 are valid, Actavis have not infringed those claims pursuant to section 60(1)(c) or section 60(2); and
iv) Pfizer is liable for making groundless threats of patent infringement proceedings, albeit not in all the cases alleged by Actavis."

At paragraph [722] the judge said:
 "I have now lived with this case for nine months. During that time, I have heard and determined the applications which led to the Warner-Lambert I, II, III and IV judgments, I have heard and determined a number of other case management applications, I have heard the trial and I have written this judgment. During that time, I have reflected repeatedly and at length on the issues raised by this litigation. At the end of that period of reflection, I remain more convinced than ever that the best solution to the problem of protecting the monopoly conferred by a second medical use patent while allowing lawful generic competition for non-patented indications of the substance in question is to separate the patented market for the substance from the non-patented market by ensuring that prescribers write prescriptions for the patented indication by reference to the patentee's brand name and write prescriptions for non-patented indications by reference to the generic name of the substance (the INN)."
He urged patentees who want their second medical use patents to be enforced to provide NHS England with all the information and assistance it requires to enable it to issue appropriate guidance as and when required. He urged generic companies who want their interests in obtaining untroubled access to lawful markets protected to cooperate with NHS England as well.  "In short," he added "what is needed is a system for dealing with these situations."

Further Information

Should anyone wish to discuss this case or patent law in general, he or she should call me on 020 7404 5252 during office hours or send me a message through my contact form.

13 August 2015

Wilmslow versus the Bahamas: Dawson-Damer and Others v Taylor Wessing and Others

Source Wikipedia
Reproduced under a Creative Commons Licence

Probably because it implements an EU directive and costs small business owners money to support a bureaucracy in Wilmslow and is cited by petty officials as an excuse for all sorts of irritations the Data Protection Act 1998 is one of the least understood and most maligned and least appreciated Acts of Parliament on the statute book. It does have its used of course and I for one would keep but I suspect that I am in a minority. If Parliament were ever to repeal this legislation the population would breath a mighty and very audible sigh of relief.

In Dawson-Damer and Others v Taylor Wessing LLP and Others [2015] EWHC 2366 (Ch) (6 Aug 2015) the claimants in an action in the Bahamas over the administration of a trust sued solicitors who had advised the trustees of that trust in England for an order under s.7 (9) of the Data Protection Act 1998. The order that they sought would have required Taylor Wessing to deliver all data of which those claimants were the data subject (including data in which they were identified expressly or by inference) in the solicitors' possession custody or power.  Taylor Wessing resisted the claim on the ground that the data were exempt from the subject access provisions of the Act by reason of paragraph 10 of Schedule 7.  The action came on before His Honour Judge Behrens sitting as a judge of the Hight Court.

The relevant statutory provisions are as follows.  S. 7 (1) of the Data Protection Act 1998 provides inter alia:
"Subject to the following provisions of this section and to sections 8, 9 and 9A, an individual is entitled—
(a)  to be informed by any data controller whether personal data of which that individual is the data subject are being processed by or on behalf of that data controller,
(b)  if that is the case, to be given by the data controller a description of—
(i) the personal data of which that individual is the data subject,
(ii) the purposes for which they are being or are to be processed, and
(iii) the recipients or classes of recipients to whom they are or may be disclosed,
(c) to have communicated to him in an intelligible form—
(i) the information constituting any personal data of which that individual is the data subject, and
(ii) any information available to the data controller as to the source of those data ........"
Paragraph 10 of Schedule 7 provides:
"Personal data are exempt from the subject information provisions if the data consist of information in respect of which a claim to legal professional privilege or, in Scotland, to confidentiality of communications could be maintained in legal proceedings."
The court has a discretion under s.7 (9) to compel compliance with subject access requests under s.7 (1):
"If a court is satisfied on the application of any person who has made a request under the foregoing provisions of this section that the data controller in question has failed to comply with the request in contravention of those provisions, the court may order him to comply with the request."
The issues that the judge was asked to decide were the extent of the discretion and whether the paragraph 10 exemption extends to overseas proceedings or even to proceedings between trustee and beneficiary in the courts of England and Wales.

His Honour summarized the claimants' case at paragraph [6] of his judgment:
"Mr Swift QC on behalf of the Claimants accepts that the 1998 Act contains an exemption in respect of data in respect of which a claim for legal professional privilege could be made in legal proceedings. He contends that the exemption should be construed narrowly. It does not extend to the rules of equity in England and Wales under which trustees are not required to disclose trust documents to beneficiaries. Equally it does not extend to local Bahamian rules which apply to disclosure in respect of trust litigation in the Bahamian courts. He submits that as Ashley [the first named claimant] is a beneficiary under the Glenfinnan Settlement [the trust which was the subject of the litigation in the Bahamas] any privilege attaching to Grampian resulting from advice taken is a joint privilege with the result that Grampian cannot rely on the privilege against Ashley. Mr Swift QC invited me to take a narrow view of the discretion afforded to the Court in s 7(9) of the 1998 Act. In particular he drew my attention to the large number of exceptions in Part IV and Schedule 7 and of the power of the Secretary of State in s 38 to make further exceptions. He submitted that the Court should not, as a matter of principle, use its discretionary powers under s7(9) to make further exceptions. In general terms he submitted that if the data was not within one of the exemptions the Court should normally order its disclosure. He accepted that one of the motives for making the subject access requests may have been to obtain documents which might be of use in the Bahamian proceedings but he contended that the Claimants could also verify if the data was correct and, if necessary, take steps to have it corrected."
Judge Behrens  rejected all those contentions.

As to the whether the first (namely whether paragraph 10 of Sched 7 should be construed narrowly so as to exclude overseas proceedings) the judge referred to the Court of Appeal's decision n Durrant v Financial Services Authority [2003] EWCA 1746.  Lord Justice Auld said at paragraph [27] of his judgment in that appeal:
"In conformity with the 1981 Convention and the Directive, the purpose of section 7, in entitling an individual to have access to information in the form of his “personal data” is to enable him to check whether the data controller’s processing of it unlawfully infringes his privacy and, if so, to take such steps as the Act provides, for example in sections 10 to 14, to protect it. It is not an automatic key to any information, readily accessible or not, of matters in which he may be named or involved. Nor is to assist him, for example, to obtain discovery of documents that may assist him in litigation or complaints against third parties."
Relying on that passage His Honour concluded at at sub-paragraph (2) of paragraph [62] that the purpose of the legislation is "to protect the Claimants' right to privacy and accuracy of the information held" on him and that  it "is no part of its purpose to provide the Claimants with information or disclosure of documents which may assist them in litigation against Grampian whether in England or the Bahamas." He therefore held at paragraph [62] that "paragraph 10 of Schedule 7 should be interpreted purposively so as to include all the documents in respect of which Grampian would be entitled to resist compulsory disclosure in Bahamian proceedings."

As he had decided that the subject access request was exempted by paragraph 10 of Sched. 7 the exercise of his discretion did not arise but the judge added at paragraph [73] that he would have declined as a matter of discretion to order Taylor Wessing to comply with the subject access requests for the following reasons:
"1. In my view the real purpose of the subject access requests was to obtain information to be used in connection with the Bahamian proceedings. As Mr Taube QC said at the beginning of his oral submissions – "context is everything". These requests were made after MWE had written the letter of 18 February 2014 challenging the validity of the 2006 and 2009 appointments and TW had sent a detailed reply on 9 July 2014. It is, to my mind, of considerable significance that MWE stated in their letter of 4 August 2014 that they would reply to the letter of 9 July 2014 when they have received the documents. Furthermore there is no suggestion in any of the evidence filed on behalf of the Claimant that they wish to check the accuracy of the information held by TW and to have it corrected if it is inaccurate. In my view the Claimants would not have brought the application at all if it had not been for the purpose of assisting in the Bahamian proceedings which were being contemplated. As Auld LJ makes clear in paragraph 27 of Durant this is not a proper purpose.
2. In my view Mr Taube QC's arguments on the question of whether it is reasonable and proportionate to expect TW to carry out a search are just as valid on the question of the exercise of the discretion under s 7(9) of the 1998 Act. This is a case where the question of which documents are discoverable will have to be determined in the Bahamian proceedings according to Bahamian law. The extent to which disclosure will be ordered may depend (if Sir Michael is correct) on the allegations that Ashley makes in those proceedings. The parties in the Bahamian proceedings are the trustee and the beneficiary. It is plainly more desirable that the issue be determined between those parties rather than between TW and the beneficiary. It seems quite unnecessary that the matter should be determined by the English Court in addition to the Bahamian Court.
3. If and in so far as the exception in paragraph 10 of Schedule 7 is restricted to the English law of disclosure and if and in so far as the documents discoverable under English law are more extensive than those under Bahamian law it does not seem to me a proper use of the 1998 Act to enable the Claimants to obtain documents that they could not obtain in the Bahamian proceedings."
Although the judge gave the defendants permission to appeal I should be very surprised if the Court of Appeal overrules him. The purpose of the Act is to regulate "the processing of information relating to individuals, including the obtaining, holding, use or disclosure of such information" and it is not to introduce novel and far-reaching procedures which would undermine  our own and foreign judicial systems. The data protection legislation has received a very bad press lately particularly over the right to be forgotten (see Right to be forgotten: a Transatlantic Dialogue 1 Aug 2015). Had the case been decided differently the legislation would have been even further discredited. 

05 August 2015

Ukulele Wars: The Ukulele Orchestra of Great Britain v Clausen

Although Judge Hacon's decision in The Ukulele Orchestra of Great Britain v Clausen and Another [2015] EWHC 1772 (IPEC)  was reported as a "victory" in the Independent (The Ukulele Orchestra of Great Britain wins duel with German 'copycat' 3 July 2015) it was somewhat of the pyrrhic kind.  The Ukulele Orchestra of Great Britain sued The United Kingdom Ukulele Orchestra for trade mark infringement, copyright infringement and passing off and applied to strike out the defence on the grounds of abuse of process less than two weeks before the trial. The claim succeeded on passing off but failed on all other counts. The claimants lost their Community trade mark and the judge saw no merit in the strike out application whatever.

The case is an interesting one because it considers what can be protected by intellectual property. The parties were very similar acts.  The claimants' was described as follows by Judge Hacon at paragraph [1] pf his judgmenrt:
"The Claimant ("UOGB") is a partnership of two individuals, George Hinchliffe and Marian Lux. In 1985 they founded and have since operated a group of musicians who play ukuleles and who collectively perform under the name 'The Ukulele Orchestra of Great Britain'. Over the years their gigs have developed a certain style, with the members wearing evening dress – black tie or gowns as the case may be – telling jokes and delivering mostly well known rock songs and film themes on their ukuleles. UOGB has enjoyed considerable success, particularly in this country and in Germany."
Here they are playing Wagner at the Proms:

And here are the defendants playing Bach:

They are a limited partnership under German law based in Germany but consisting of British players.

The claimants had registered THE UKULELE ORCHESTRA OF GREAT BRITAIN as a Community trade mark for
"Organisation, management, staging and provision of live events, concerts, musical performances, and theatre and stage productions; concert services, orchestra services, production of radio and television programmes; publication of electronic publications relating to music and musical instruments; entertainments services"
in class 41 as well as for various goods in classes 9, 15, 16, 18, 25 and 28.

The judge held that had that CTM registration been valid the defendants would have infringed it under art 9 (1) (b) and (c) of the Community trade mark regulation (Council Regulation (EC) No 207/2009of 26 February 2009on the Community trade mark OJ 24.3.2009 L78/1).  After considering paragraphs [33] to [39] of Lord Justice Floyd's judgment in JW Spear & Sons Ltd & Ors v Zynga Inc [2015] FSR 19, [2015] EWCA Civ 290 Judge Hacon concluded at paragraph [57]:
"The CTM and the accused sign are visually and aurally similar to the extent that they both contain the words 'ukulele orchestra'. I think this is an instance in which conceptual similarity is likely to register strongly with the average consumer. In that regard mark and sign are extremely close. As was pointed out at trial, it is certainly true that 'Great Britain' and 'the United Kingdom' do not mean the same thing. But even in this country some pedants might hesitate before getting the difference right. I doubt that the distinction either means anything or matters at all to the vast majority of people elsewhere in the EU. The average consumer, in short, would regard mark and sign as having the same meaning."
Basing himself just on that and the other matters to be taken into account as directed by the above passage from Spear v Zynga he reached the view that there was a likelihood of confusion.

There was also some actual evidence of confusion. The judge observed at paragraph [68]:
"It is possible that if all these instances had been fully explored and tested in cross-examination, some would have fallen away as not being proof of relevant confusion. I was left with the impression that many would support UOGB's case on confusion. In my view, if the CTM had been valid, it would have been infringed by UKUO pursuant to art.9(1)(b)."
That same evidence was relied on in the action for passing off. Judge Hacon said at [92]:
"I am satisfied that the evidence adduced in support of the likelihood of confusion pursuant to art.9(1)(b) establishes that Yellow Promotion's use of the trade name 'The United Kingdom Ukulele Orchestra' misrepresents to a substantial proportion of the public in this country who recognise 'The Ukulele Orchestra of Great Britain' as the trade name of a particular musical group, that UOGB and UKUO are the same group or are otherwise commercially connected. I am also satisfied that this has caused damage to UOGB's goodwill, particularly by way of loss of control over UOGB's reputation as performers."
That was the one bit of the case upon which the claimants succeeded.

As for the remainder of the case the judge threw out the trade mark infringement claim and invalidated the CTM registration on the ground that it was descriptive within the meaning of art 7 (1) (c). The copyright claim failed on the basis that no copyright could subsists in the claimants' act though it might subsist in recordings of one or more of their performances. The strike out application was based on an inference that the defendants had doctored evidence and that a fair trial was not possible. The judge disagreed.

The judge was right to decide this case as did. This was an attempt to suppress a lookalike or to put it another way to monopolize an entertainment style. That would have had very profound and deleterious effects on the performing arts had it succeeded. It would have outlawed not just tribute bands but many legitimate artists who may be influenced by an earlier work and create something new in the same style without copying it.

Should anyone wish to discuss this case with me he or she should call me on 020 7404 5252 during office houses or send a message through my contact form.

01 August 2015

Right to be forgotten: a Transatlantic Dialogue

Cathy Gellis
Jane Lambert

On 12 June 2014 La Commission Nationale de l'Informatique et des Libertés (CNIL). the French data protection authority, issued a notice requiring Google to apply de-listing from all platforms of its search engine such as Google Sierra Leone and Google Mongolia and not just those like Google UK, Google France and Google Deutschland that are marketed to residents of EU member states. In his post Implementing a European, not global, right to be forgotten 30 July 2915 Google's privacy counsel Peter Flecischer stated that Google had refused to implement that notice and had asked the CNIL to withdraw it.

It is possible that the CNIL will change its mind and do so but it is more likely that it won't.  In that case the President of the Commission could nominate a Rapporteur and ask him or her to draft a report recommending sanctions to be imposed on Google for such non-compliance. Google could of course challenge the CNIL's decision in the Conseil d'État. As the obligation that the CNIL purports to enforce arises under EU law  the Conseil d'État will be urged to seek a preliminary ruling under art 267 of the Treaty on the Functioning of the European Union ("TFEU") from the Court of Justice of the European Union ("CJEU") on the nature and extent of the so-called right to be forgotten.

I say "so-called" because you will struggle if you look for the right to be forgotten in the Data Protection Directive (Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data OJ L 281 , 23/11/1995 pages 31 - 50) or member states' implementing legislation. The phrase "right to be forgotten" may not have been coined by the CJEU in C‑131/12 Google Spain SL and Another v Agencia Española de Protección de Datos (AEPD) ex parte Costeja 36 BHRC 589, [2014] 3 CMLR 50, [2014] EMLR 27, EU:C:2014:317, ECLI:EU:C:2014:317, [2014] All ER (EC) 717, [2014] 3 WLR 659, [2014] ECDR 16, [2014] 2 All ER (Comm) 301, [2014] EUECJ C-131/12, [2014] 1 QB 1022, [2014] QB 1022 bur it entered everyday speech after that judgment.

The Costeja case was a reference for a preliminary ruling under art 267 TFEU from the Audencia Nacional in Spain. It was made in an application by Google Spain and its US parent company to quash an order of the AEPD, the Spanish data protection authority. The AEPD required Google to withhold from its search results URLs to advertisements that had appeared in a Spanish newspaper many years ago of an auction of Mr Costeja's property that had been seized and sold to pay his social security arrears. Mr Costeja had complained to the AEPD that the advertisements came up on every search of his name. He had rebuilt his life since then and those advertisements were a constant embarrassment.  He asked the AEPD to order the newspaper to remove the advertisements and Google to stop including them in its search results.  The AEPD rejected his request in respect of the newspaper since the advertisements had been ordered by the Spanish Ministry of Labour but upheld it against Google.

In the Audencia Nacional the Google companies had argued that Spanish data protection law did not apply to search engines. They argued that search engines were not "data controllers", that they did not process personal data and that in any case they were not within the Spanish courts' jurisdiction. As the Spanish legislation purported to implement the Data Protection Directive the Audencia Nacional referred those questions to the CJEU. The actual questions and reply are lengthy but paragraph [1] of the CJEU's judgment summarizes them conveniently:
"This request for a preliminary ruling concerns the interpretation of Article 2(b) and (d), Article 4(1)(a) and (c), Article 12(b) and sub-paragraph (a) of the first paragraph of Article 14 of Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data (OJ 1995 L 281, p. 31) and of Article 8 of the Charter of Fundamental Rights of the European Union (‘the Charter’)."
The CJEU recognized at paragraph [19] that it had to apply a 1995 directive to technologies that had emerged after the adoption of that legislation.

Essentially, the CJEU held that Google (and no doubt all other search engines including Yahoo and Bing) were data controllers and that they processed personal data. It followed that Spanish data protection law applied to their activities and that they had to comply with its data quality and subject access provisions just like everybody else. One consequence of the CJEU's decision was that Google and other search engine operators were subject to enforcement notices from national data protection authorities. Also, they could be sued by data subjects in national courts for any loss or damage that might arise from breaches of their obligations under those laws.

Google responded to that judgment by establishing procedures for handling requests for search result removals. It prepared a simple form and FAQ for such requests. As of 31 July 2015 Google had received 291,243 removal requests and considered nearly 1,6 million URLs since Costeja. It had removed 41.3% of those URLs and had rejected removal requests in respect of 58.7%. Its Transparency Report gives examples of requests that it has accepted and others that have been rejected. Those whose requests are rejected are, of course, free to complain to their national data protection authority or bring proceedings in their national courts. It is not known how many have done so. Bing and Yahoo have established similar procedures. Bing's request form is here and Yahoo's is here.

Although Mr Fleischer characterized the right to be forgotten as a European right and not a global one, similar rights seem to exist elsewhere. In Melvin v Reid and Others 112 Cal.App. 285 (Cal. Ct. App. 1931), for example, the California Court of Appeal allowed a claim against a film maker who had exposed the claimant's early life as a prostitute on the ground that the film had invaded her privacy. It seems to me that the issues in that case as well as the outcome were very similar to those in Costeja.

Should anyone wish to discuss this article with me, the right to be forgotten or data protection generally, he or she should call me on 020 7404 5252 during office hours and send a message through my contact form.

Post Script

As I wrote this post at the suggestion of Cathy Gellis who practises IP and internet law in California I drew it to her attention by twitter to which she kindly replied:
Helpfully, she also made the following observations:
@nipclaw or let me rephrase: the right to privacy may remain, but not such that deletion would be a recognized remedy.
Adding in her next tweet
@nipclaw especially not by a party not connected to the act that invaded the privacy. Section 230 would also preclude.
I am sure Cathy is right but nobody even in Europe argues that excluding URLs from a search report is the only or even in many cases the appropriate remedy.

I replied:
@CathyGellis I think Melvin was an action for damages rather than an injunction. The point is that the cause of action appears to subsist.
I added:
CathyGellis The cause of action in Melvin seems to be invasion of privacy which is essentially what data protection is all about.
And concluded
@CathyGellis my point is that the right to be forgotten (subject access and data quality) exists well beyond the shores of the EU states.
We shall have to see how this area of the law develops on both sides of the Atlantic but one thing of which I am very sure is that Americans don't take injustice and invasion of privacy lying down. Had Mr Costeja lived in San Francisco rather than Spain I suspect he would have consulted Cathy or some other US lawyer and asked whether there was anything to be done about the embarrassing search records. Knowing Cathy as I do, it is more than likely that she would have found a way to help him.

Further Reading

Farhad Manjoo  ‘Right to Be Forgotten’ Online Could Spread 5 Aug 2015 NYT