29 March 2006

Copyright: Updates to IP/it Update Website

I have updated and transposed two pages from the old Kingsgate website:
(1) a case note on the decision of the US Court of Appeals for the First Circuit in Lotus Development Corporation v Borland International Inc. [1997] FSR 61 which I first wrote in June 1998; and
(2) an article on moral rights which I first wrote just over 2 years ago.

The Lotus case exemplifies the US distinction between copyrightable and non-copyrightable matter which does not really exist in England. In this country, however, the idea of substantiality often reaches the same result albeit by a different route. It is instructive to compare a case like Lotus with such cases as Warwick Film Productions Ltd. v Eisinger [1969] 1 Ch 508 or Ladbroke (Football) Limited v William Hill (Football) Ltd [1964] 1 WLR 273.

The article on moral right has been updated to tale account of art 5 of the WIPO Performances and Phonograms Treaty which is implemented in the UK by The Performances (Moral Rights, etc.) Regulations 2006 as from 1 Feb 2006.

28 March 2006

Copyright: Lott v JBW & Friends Pty Ltd. and Another

The decision of Mr Justice Mulligan of the Supreme Court of South in Lott v JBW and Friends [2000] SASC 3 is a case that really ought to be better known. It covers three important issues:
(1) the subsistence of artistic copyright in computer generated graphics - whether it is an artistic work at all and if so whether it is original;
(2) the liability of directors of small closely held companies for the torts of those companies; and
(3) additional damages for copyright infringement.
On directors' liability, it is interesting to compare Lott with the decision of the Court of Appeal in MCA Records Inc and another v Charly Records Ltd and others [2001] EWCA Civ 1441 (5 Oct 2001). The Australian test could usefully be applied here. Perhaps not so the law of additional damages. S.115 (4) of the Australian Copyright Act 1968 appears to specify the conditions for the award of such damages. By contrast, s.97 (2) of our Act requires the court to have regard for "all the circumstances" of the case. Although the Australian test is in some ways more rigid and more rigorous I am not convinced that an English court would have awarded additional damages in the circumstances in which they were awarded in Lott.

I first wrote a case note on Lott in 2002 and have revised it several times. I have now transposed it to the IP/it Update website.

27 March 2006

Mobilizing Minds in Merseyside

"Mobilizing minds in Merseyside" was the title of Peter Raymond OBE's masterly presentation to launch the Liverpool Inventors Club. And a very successful launch it was too with an audience of 24 drawn from the professions, universities, financial institutions as well as inventors. One of the things that holds back innovation, according to Peter, is the cost of professional services. He complained of the astronomical legal fees charged to one of his university spin-off companies in its first year of trading.

That was the perfect cue for me to introduce one of the aims of this and the other inventors' clubs in the North. Every service provider that associates with a club will provide a free or discounted services. Members of all the clubs will be able to negotiate volume discounts for professional services, consultancy, insurance and the like. They will also provide opportunities for networking and brainstorming.

A steering committee consisting of representatives of the universities, local government and the professions as well as several local inventors was recruited. Meetings will take place regularly at the Central Library on the last Monday of every month.

26 March 2006

Forthcoming Events

The Liverpool Inventors Club will be launched with a presentation by Peter Raymond at 16:00 tomorrow. The venue will be Liverpool Central Library at William George Street,. There has been so much interest in the Club that we have decided to move the first meeting to a larger room. There is still room. Just phone Ruth Grodner on 0151 233 5835 to let her know you are on your way.

At 18:00 on Wednesday evening, the IP Centre of Excellence will hold its first meeting in Manchester at BPP Law School, St James's Building79 Oxford Street, Manchester, M1 6FQ. The topic is "Freedom of Information Act 15 Months on." The speakers include Gerrard Tracey and Ibrahim Hassan and the seminar will be chaired by Dai Davis. It should be a good evening.

I hold my end of month workshop and clinic for the Huddersfield Business Generator at the Huddersfield Media Centre on Friday, 31 March 2006 between 11:00 and 13:00. Call Jacquie Asquith on 01484 483080 email j.asquith@huddersfieldbg.co.uk to book your slot.

Finally, the Sheffield Inventors Group will launch at Central Library at Surrey Street, Sheffield, S1 1XZ at 18:00 on Monday 3 April 2006 with a presentation by Miles Rees of the Patent Office. Call Sue Sayles on 0114 273 4736 to book your place.

Copyright, Database Rights and Rights in Performances: Licensing Pages Updated

I have transposed and updated pages that I first wrote in May 2004, Sep 2002 and Jan 2001 respectively on Copyright Licensing, Licensing Schemes and the decision of the Copyright Tribunal in Universities UK v Copyright Licensing Agency and Another.

A "licensing scheme" for anyone who is interested are essentially the terms and conditions upon which copyright licences (and for that matter licences to broadcast, tape or video a performance or extract or re-utilize the contents of a database) are made available. Since licensing schemes tend to be negotiated either by collecting societies, publishers and other big organizations they raise competition law as well as intellectual property issues.

In the UK and some other common law countries licensing schemes are regulated by references to special tribunals such as the British Copyright Tribunal. This method of regulation was devised a long time before the UK joined the EEC let alone before Parliament passed the Competition Act 1998. Although this is supposed to be an informal and cost effective way of disposing of disputes, the interim costs in Universities UK was not far short of £1 million. As I observed in my case note on that case, it may be sensible to repeal Chapters VII and VIII of the 1988 Act altogether and rely on the Competition Act 1998 to regulate licensing schemes. It is difficult to think of any licence term that would be varied or set aside by the Copyright Tribunal that would not also be a Chapter I or Chapter II prohibition. In addition, the Office of Fair Trading has considerable experience of dealing with unreasonable contract terms. Patent licensing was simplified by the repeal of ss.44 and 45 of the Patents Act 1977 by the Competition Act 1998. There seems no reason why copyright licensing should not similarly be rationalized.

There is at present a review of Copyright Tribunal practice and procedure. It has not exactly been overworked since 1989 (see Copyright Tribunal: decisions and orders issued, Applications and references currently before the Copyright Tribunal and Forthcoming Hearings). This may be a good time to consider whether we need the tribunal at all.

25 March 2006

Patents - US Appeal Court gets the Willies - Wilson Sporting Goods v Hillerich & Bradsby Co.

I am grateful to Messieurs Jeff Steck and Dennis Crouch of Patently-O for bringing the very recent decision of the US Court of Appeals for the Federal Circuit in Wilson Sporting Goods v. Hillerich & Bradsby (Fed. Cir. 2006, 05–1103) to my attention. As everyone in the United Kingdom knows, it has been settled since Nobel v Anderson (1894) 11 RPC 523, patent claims are to be construed as if the defendant had never been born.

It seems from Jeff Steck's post on Patently-O "Construing Claims “Without Reference to the Accused Device” Is Put to the Test" that there was a similar rule in the USA but in Wilson the Court of Appeals for the Federal Circuit sought to refine it. The refinement seems to be very much along the lines adopted by our Court of Appeal in Lux Traffic Controls v Pike Signals [1993] RPC 107, 127. In the words of Lord Justice Aldous:
"A claim of a patent should be construed as at the date of publication of the patent and without reference to the alleged infringement. However it is convenient to consider the questions of construction in the context in which they arose and therefore I pass to infringement."

When one thinks about it, that is only common sense. Folk must know what the alleged infringement is in order to focus on the issue in hand.

Circuit Judge Rader (roughly the equivalent of a Lord Justice) said at page 7 of his judgment:
"While a trial court should certainly not prejudge the ultimate infringement analysis by construing claims with an aim to include or exclude an accused product or process, knowledge of that product or process provides meaningful context for the first step of the infringement analysis, claim construction."

Towards the end of his judgment in Wilson, his lordship restated and reinforced the principle:
This court, of course, repeats its rule that "claims may not be construed with reference to the accused device." NeoMagic Corp. v. Trident Microsystems, Inc., 287 F.3d 1062, 1074 (Fed. Cir. 2002); SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985) (en banc). As noted earlier, that rule posits that a court may not use the accused product or process as a form of extrinsic evidence to supply limitations for patent claim language. Thus, the rule forbids a court from tailoring a claim construction to fit the dimensions of the accused product or process and to reach a preconceived judgment of infringement or noninfringement. In other words, it forbids biasing the claim construction process to exclude or include specific features of the accused product or process. The rule, however, does not forbid awareness of the accused product or process to supply the parameters and scope of the infringement analysis, including its claim construction component. In other words, the "reference" rule accepted in Pall Corp., Multiform Dessicants, and Scripps Clinic does not forbid any glimpse of the accused product or process during or before claim construction. ....... In light of these principles, if the litigants cannot themselves inform a trial court of the specific issues presented by the infringement inquiry—that is, issues of the breadth of the claim construction analysis and the most useful terms to facilitate that defining process—then a trial court may refer to the accused product or process for that context during the process."

Jeff Steck was not too impressed by that reasoning: "Hoping, perhaps, that contradiction would prove more enlightening than troublesome, the court restated the relevant law on claim construction in a form more characteristic of a koan than a rule of law." Having mastered from Improver the meaning of synecdoche and metonymy our skilled addressee now has to familiarize himself with a concept of a Buddhist dialectic. He added: "The district court had given hope to the promise of Markman: an infringement allegation was resolved with no need for a costly trial, or even summary judgment proceedings; the Federal Circuit’s remand showed that promise to be illusory." I beg to differ. I don't think the approach mandated by the Court of Appeals for the Federal Circuit will allow bad cases to be run. That does not appear to have happened here.

The judgment is not too long and well worth reading if only to marvel at the invention. As Jeff Steck put it the patent was for "a non-traditional softball bat that is best described as being “corked” with, essentially, a beer can." Softball for those who have never been to America is a game like rounders. Don't ask me to explain it or, indeed, the rules of any American sport. It is easier to discuss koans.

LES International: Annual Report 2005

The Licensing Executives Society Report for 2005 was published yesterday. I was pleased to see that GB and Ireland were still the largest branch in Europe with 633 members though we are only a notch ahead of Germany with 618 and their membership is increasing while ours is falling. Japan has overtaken us for second place in the world.

Financially, the LES worldwide is healthy enough with a substantial surplus of income. I noticed some interesting new committees in which I hope to get involved such as dispute resolution and industry university liaison.

An interesting new initiative is a task force on SME (small medium enterprises) which is considering new programmes aimed specifically at attracting new members.

The LES has changed a lot in the 20 years that I have been a member. When I joined it was a good mix of entrepreneurs, innovators and professionals. Nowadays, it is made up almost entirely of professionals. The most active branch when I joined was in Manchester. It was run by a remarkable man called Eddie Duff who used to work for VUMAN (the Victoria University of Manchester). We had some really good seminars. I remember debating with Henry Carr (now a silk) and Richard Sutton of Dibb Lupton on whether there was any need for specialist IP counsel outside London which provided excellent insight into Mancunian psychology.

The Manchester branch has never been the same since Eddie retired. It now appears to be reduced to running repeats like the BBC in summer. Liz Ward however is putting on some really good events in Leeds. There are also a lot of tempting events in Scotland.

Patents - If you are who I think you are well done Denise!

While looking up the specification for the "Baby Dream Machine" in Espacenet for my other blog, I came across a patent entitled "Enclosure for Babies". The inventor is one Denise McFarland-Cruickshanks of Clifford's Inn. Now I have a flat in Clifford's Inn when I have to go to the Smoke and one of my former neighbours in Clifford's Inn was one of the counsel I have found myself against from time to time. If it is the Denise McFarland I know, I take my hat off to her. We all advise clients on intellectual property. Not many of us actually create any.

Wonders of Technology

Apologies to those of you who have subscribed to my Bloglet email updating sevrice. It seems to have gone to sleep. The same thing seems to have happened to Dennis Crouch because I noticed that he changed from Bloglet to FeedBlitz for Patenly-O. I've done the same and I hope for both my blogs and I hope that it will assure my clients of a better service.

Another innovation is my subscription to Skype. Those of you who have the equipment (in effect a microphone which will cost no more than £10 or the equivalent in other currencies since most computers have sound cards and speakers nowadays) can call me on "nipclaw" to discuss anything on this blog or website. Those of you who don't may wish to call one of my Skype numbers in Hong Kong, Los Angeles or New York using a conventional phone. So far as you are concerned it is charged as a local call. I look forward to hearing from you people because I like a good argument. That's one of the reasons why I am a barrister.

Copyright and Rights in Performances: The Copyright and Performances (Application to Other Countries) Order 2005

The requirements for copyright protection are that the work must be in which copyright is capable of subsisting and that certain conditions as to qualification are met. S.153 (1) of the Copyright Designs and Patents Act 1988 provides that a work may qualify in relation to its author, the country in which the work was first published, or in the case of a broadcast, the country from which the broadcast was made. Parliament has conferred authority on the Queen in Council to designate the countries to which these provisions extend. There are similar provisions under s.181 of the Act for protection of rights in performances.

The latest Order in Council is The Copyright and Performances (Application to Other Countries) Order 2005 which came into force in May 2005. The Order repeals The Copyright (Application to Other Countries) Order 1999 and The Performances (Reciprocal Protection) (Convention Countries and Isle of Man) Order 2003. This legislation, which greatly simplified the law, is the subject of a new, short article entitled The Copyright and Performances (Application to Other Countries) Order 2005 which I wrote and uploaded this evening.

Other new articles on copyright that I have uploaded today include case notes on two Canadian cases, Glen Gould Estate v. Stoddart Publishing Co. Ltd. 1998-05-06 C25822;C25823 Ontario CA and Barbara Hager v ECW Press Ltd. and Others [1999] 2 FC. 287. Both cases are on Walter v Lane [1900] AC 539 points. Hager is additionally on the difference between the English and Canadian concept of fair dealing and the US concept of fair use which is something I discuss in my article on Fair Dealing,

24 March 2006

Copyright: Rental Rights and Fylde

I have updated and transposed three pages from the old Kingsgate site:

Rental and Lending Rights

my case note on Case C-61/97 FDV v Laserdisken which I first wrote in 1998; and

my case note on Fylde Microsystems v Key Radio Systems which I wrote in 1999.

Laserdisken is an interesting case on the balancing of the right of free movement of goods and services with the right to protect industrial property. Fylde discusses the conditions for the subsistence of joint authorship. Two very important cases.

16 March 2006

IP Litigation: Isaacs joins Supervising Solicitor Panel

Michael Isaacs, a partner in the Manchester office of Addleshaw Goddard, is the latest member of chambers' panel of supervising solicitors for search and doorstop Piller orders. Other members include:
  • Neil Ackerman of Hewitsons in Cambridge who will also cover East Anglia and other parts of South-East England including London;
  • Iain Campbell of HillDickinson in Chester who covers Cheshire, Merseyside and North Wales;
  • Craig Hollingdrake of Jobling & Knape in Lancaster who covers NW England from Preston to the Scottish border;
  • Chris Tulley of DLA Piper in Leeds who covers West Yorkshire and also Newcastle-upon-Tyne and neighbouring parts of Co. Durham and Northumberland;
  • Liz Ward of Fox Hayes LLP in Leeds who covers West and North Yorkshire;
  • Joanne Shelley of Brabners Chaffe Street LLP in Liverpool who covers Merseyside and neighbouring parts of Lancashire and Cheshire; and
  • Susan Hall of Cobbetts LLP in Manchester who covers Greater Manchester and Lancashire.

Mr Isaacs is in Addleshaws' contentious group and he specializes in commercial and financial disputes. His cases include Jackson and another v Royal Bank of Scotland [2005] UKHL 3. His email is michael.isaacs@addleshawgoddard.com and telephone number is +44 (0)161 934 6000.

13 March 2006

Freedom of Expression: Plods Blogged Off

Two interesting items juxtaposed on the BBC website today. One (and in the long term probably the more important) is a report on new guidelines by the Metropolitan Police on police officers' private blogs ("New Met blogging rules spark anger") . At least one policeman has been driven to remove his journal from the internet. The other is the row over the Commissioner's taping a phone call with the Attorney-General ("Met chief in phone recording row").

Readers from outside these shores may be interested to know that a "plod" means a gendarme. I think the original PC Plod was a character in Enid Blyton.

These items are symptomatic of the erosion of freedom of expression since New Labour came to power. On a broad construction of clause 1 of the new Terrorism Bill I would advise against inviting Sir Ian Blair to a performance of Tosca in view of what happened to the chief constable of Rome.

Trade Marks: Disney targeted again

On 14 Oct 2005 I reported on Christodoulou v Disney Enterprises Inc [2005] FCA 1401 (4 October 2005), an Australian case in which one of the Walt Disney companies was sued unsuccessfully for infringement of the trade mark THE HUNCHBACK OF NOTRE DAME (see .The Hunchback of Notre-Dame). I am now grateful to IP360 for news of another claim against a Disney company ("Angels Ready To Raise Hell Over Disney Movie").

I have found further and better particulars in a news item in CNN Money ("Hell's Angels rumble with Disney, Motorcycle club sues film studio for infringing on its trademark in 'Wild Hogs' movie"). According to the report, the Hell's Angels Motorcycle Corporation complains that Buena Vista Motion Pictures has infringed the claimant's trade mark in a device consisting of a helmeted, horned and feathered skull by publicizing the film "Wild Hogs". The claim is apparently filed in the US District Court for the Central District of California. The District Court is roughly equivalent in standing and function to our High Court. It will be interesting to see the specific allegations and how far the claim proceeds.

Copyright: Fair Dealing Update

Following on from yesterday's update of copyright exceptions which I mentioned in my post here yesterday, I have updated and transposed an article I wrote a couple of years ago on one of those exceptions, namely "fair dealing".

"Fair dealing" is often confused by those who ought to know better with the American concept of "fair use" . I have seen references to "fair use" more than once in English licence agreements. The US concept is very different as is made clear by the Canadian case Hager v. ECW Press Ltd. (T.D.), [1999] 2 F.C. 287, 1998 CanLII 9115 (F.C.).

It seems from Mr Justice Souter's judgment in Campbell and others v Acuff Rose Music Ltd. (92-1292), 510 U.S. 569 (1994). that the American doctrine derived from the English case Carey v. Kearsley, (1803) 4 Esp168, but if that is the case it is just one example of the divergence of English and American copyright law like the American concept if divisibility of copyright and non-copyright material in the same work compared to the English and Commonwealth concept of substantiality.

Internet Governance: The UN sets up Secretariat

The UN Secretary General has announced the setting up of a secretariat to assist the convening of the IGF (Internet Governance Forum). The IGF is called in accordance with paragraph 72 of the WSIS Tunis Agenda for Internet Governance.

Its mandate includes discussing public policy issues related to key elements of Internet governance "in order to foster the sustainability, robustness, security, stability and development of the Internet."

The intervention of the Secretary General may not be well received in all quarters (see Internet Governance: One American View to the Contrary of 23 Oct 2005) but it will be something of a feather in the cap for Viviane Reding who brokered a generally satisfactory outcome to the Tunis summit.

12 March 2006

Copyright: Exceptions

I have updated and transposed an article on the exceptions (acts permitted in relation to copyright works) contained in Chapter III of the Copyright, Designs and Patents Act 1988. These exceptions have been revised by The Copyright and Related Rights Regulations 2003 (SI 2003 No 2498). Those regulations implemented Directive 2001/29/EC (Copyright and Related Rights Directive) which essentially gave effect to many of the provisions of the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty as The Digital Millennium Copyright Act of 1998 did in the USA. This is very significant legislation.

I have also uploaded a presentation and handout that Alex and I did in 2004 in Kingsgate Chambers. The handout is a complete "before" and "after" analysis of Chapter III.

11 March 2006

Trade Marks: easy.com

A few years ago, easyGroup IP Licensing Ltd was responsible for a not inconsiderable portion of the Registry's hearings. There have been rather fewer of those cases lately possibly because the easyGroup did not win that many cases.

One case that it has won is easy.com. This was an opposition by the Easynet Group Plc under s3 (1) (b) and (c) of the Trade Marks Act 1994. There had also been objections on the relative grounds of refusal but these were abandoned before the hearing

Trade Marks: Scope of Art 5 (1) of Trade Mark Directive

Having just advised on the very point earlier this week, I see that the Cour d'Appel of Nancy has just referred the following question to the European Court of Justice under art 5 (1) of the Trade Mark Directive in S.A.R.L. Celine v S. A. Celine:
"Must Article 5(1) of Directive (EC) No. 89/104 be interpreted as meaning that the adoption, by a third party without authorisation, of a registered word mark, as a company name, business name or style in connection with the marketing of identical goods, amounts to use of that mark in the course of trade, which the proprietor is entitled to stop by reason of his exclusive rights?"
The article, for those who don't know the directive off by heart, provides:
"The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark."
Under the old law adoption of a corporate name would not have infringed although there might was sometimes an action for passing off. I can see all sorts of problems if the ECJ finds that such adoption does amount to infringement I can see all sorts of supplemental issues. Must the defendant company make only the specified goods and if not what happens if the specified goods account for a small proportion of the company's turnover. It is too late in the evening for me to go into all those issues now but I shall certainly come back to this topic. Ciao! as they say in Buenos Aires (and Italy).

10 March 2006

IP/it Update: Electro-Wide Ltd. and Peter Hayward's Presentation

Two new additions to our IP/it Update website:

The case note is on one of the few authorities on the statutory presumptions set out in s.104 and s.106 of the Copyright Designs and Patents Act 1988. That was a summary judgment application under Order 14 which is generally regarded as more favourable to defendants than CPR Part 24 which replaced it.

Peter Hayward's slides cover advisory opinions under s.74A and s.74B of the Patents Act 1977 as amended. There have been 6 applications under those sections since the provisions came into force in October 2005. Two of them have been made by my mate Chris Hemingway of Bailey Walsh. There don't seem to be any pending applications. Does that mean that advisory opinions will go the way of the employees' compensation and the comptroller's juridiction in infringement disputes? It would be a pity but entirely possible. What did Lord Esher say in Ungar v Sugg (1892) 9 RPC 113: "It is really not the fault of the law; it is the fault of the mode of conducting the law in a patent case. That is what causes all this mischief."

09 March 2006

IP Centre of Excellence for the North

A post from my public access blog which should interest readers here is that the IP Centre of Excellence for the North (which I have mentioned many times before) now has a website at www.ipcex.org.uk. Not only that, but it has announced 3 super events:

- 30 March 2006 "Freedom of Information 15 Months on" in Manchester arranged by Dai Davis with Gerrard Tracey and Ibrahim Hassan as speakers;
- 10 May 2006 "ADR and Arbitration if IP Disputes" in Leeds (speakers Ignacio de Castro of the WIPO Arbitration and Mediation Centre, Felicity Brandwood of NCC and Sara Ludlam of Keeble Hawson; and
- 15 June 2006 Jeremy Phillips "Five Live Issues in IP" , Leeds .

Details are available on the other blog or the "Forthcoming Events" website at http://www.ipcex.org.uk/upcome.htm. Call me on 0870 990 5081 or email me on johnlambert@ipcex.org.uk ASAP as space is very limited.

08 March 2006

Invention Promoton Companies: OFT issues warning

I have just received a very welcome email from the OFT (Office of Fair Trading). A news item has just appeared on the OFT website to the effect that it has warned the former directors of a now defunct Dublin based invention promotion company that it will take immediate steps against them should they not launch a new venture that contravenes our advertising and consumer protection laws.

Apparently, the OFT contacted the former company after receiving numerous complaints from consumers who had paid thousands of pounds for assistance in marketing their ideas and asked for undertakings as to future advertising and contract terms. These were not provided and the company ceased trading at the end of last year.

The OFT's advice to inventors is that free advice and assistance for inventors is available from the Patent Office, the Institute of Patentees and Inventors, and from inventors' organisations and inventors' clubs. It was to reduce such risk that the Huddersfield, Liverpool and Sheffield Inventors keep a list of reputable businesses and practices that provide useful and cost-effective services to inventors in m any cases free of charge or at substantial discounts.

06 March 2006

US Design Protection: Amini Innovation Corp. v Anthony California Inc. and another

Rare and interesting insight into US design protection is provided by the judgment of the Court of Appeals for the Federal Circuit in Amini Innovation Corp. v Anthony California Inc. and another. My thanks to Dennis Crouch for drawing this case to my attention.

There is no registered design protection as such in the USA. Designs are protected by design patents which appear to my uninformed eyes to have at least as much in common with utility models (or Irish short term or Australian innovation patents) as they do with design registration. Particularly interesting in my view was the passage of the judgment on claim construction and the "ordinary observer" test.

The claim was for infringement of a design patent in the design of a bed and for infringement of copyright. Again, there is much to interest the English and Commonwealth reader. Copyright is registered in the USA - though not with the Patent Office which is part of the executive branch of government there but with the Copyright Office which is within the Library of Congress which is their part of federal legislature. More exotic delights. Comfortingly you still have to prove copying there as we do here and the probanda seem to be much the same - objective similarity and an opportunity for access. In Amini the argument appears to have been over access.

Altogether an interesting way to start a Monday morning.

Copyright: Société Studio canal SA and another v M. Stéphane X and another

The Cour de Cassation (the highest court of France) has held that technical measures that prevent a user from making a copy of a DVD for his personal use is not unlawful. The Court allowed an appeal from the Paris court of appeal that had held that any inhibition of the right to enjoy the personal use exception as permitted by art 5 (2) of the Copyright and Related Rights Directive and indeed art 9 of the Berne Convention was unlawful.

Since French judgments contain none of the detailed reasoning of Anglo-Saxon or for that matter ECJ decisions I surmise that the court held that an exception does not give rise to a right. I shall be interested in Sulliman's insight on this point if he reads this post.

The Court remanded the case to the court below for further consideration.

05 March 2006

US Freedom of Information Act

It is not often that I welcome news from the Pentagon but the release of documents concerning the combatant status review tribunal procedures for prisoners held at Guantanamo Bay shows a robustness of the US Freedom of Information Act which I am not sure would be equalled by our own. The handbook that the US defence department uses are also published on the department's website.

For those interested in the operation of our Act, incidentally, Issue 2 of Decaffs's "Information Rights Journal" is out now. There are some interesting decisions of the Commissioner and the tribunal.

Copyright: Case Note on Desktop Marketing Systems Pty Ltd v Telstra Corporation Limited uploaded

I have just revised and uploaded a case note on Desktop Marketing Systems Pty Ltd v Telstra Corporation Limited [2002] FCAFC 112 (15 May 2002) which I first wrote in Nov 2002. It is an important case on originality generally though not directly applicable to the UK since s.3A (2) of the Copyright, Designs and Patents Act 1988 inserted by reg. 6 of The Copyright and Rights in Databases Regulations 1997 provides as follows:
"For the purposes of this Part a literary work consisting of a database is original if, and only if, by reason of the selection or arrangement of the contents of the database the database constitutes the author's own intellectual creation."

The case addresses what constitutes a "substantial part" in copyright law though I did not discuss that in the case note.

04 March 2006

Copyright: IP/IT-Update

I have revised and uploaded three pages from the old Kingsgate Chambers website today: criminal liability, first ownership and Crown and Parliamentary copyright.

The criminal liability page complements a presentation that Lois gave to Langleys last year. I also spoke to them and our combined handout is also accessible from that page.

Crown and Parliamentary copyright is a singularity of English copyright law. It also exists in one or two other commonwealth countries but there is no equivalent so far as I am aware in the US Act. Since the Crown is a big purchaser of software for defence and health care, Crown copyright can still impact on computer supply contract. However, it is less important than it was under the 1956 Act when copyright in work commissioned by the government passed automatically to the Crown with often unforeseen consequences.

PS. Since posting this note, I have added "Copyright and Rights in Performances: The New Law", a presentation that Alex and I did a couple of years ago to the site.

New Sheffield Inventors' Club

Yesterday I mentioned Liverpool Inventors. Today I am delighted to mention another inventors' club in the North, this time in Sheffield. Both clubs are supported by my chambers. We see it as part of our community outreach to stimulate a bit of competition for Korea. The motto of the their invention promotion association is "One Person with one Invention". We need a similar can-do attitude here.

The Sheffield Club will be launched at 6pm on 3 April 2006 with a talk by Miles Rees of the Patent Office. It will take place at the Central Library in Surrey Street and as we are sponsoring the event and providing the refreshments it will be absolutely free. To book your place call Sue Sayles on 0114 273 4736.

More on Intellectual Property Mediation

At the end of his judgment in IDA Ltd and others v The University of Southampton and others [2006] EWCA Civ 145 (2 March 2006) yesterday, Lord Justice Jacob said that the entitlement case before the Court of Appeal was "particularly apt for early mediation". He added that such mediation could well go beyond conventional mediation (where the mediator facilitates a consensual agreement). He had in mind the process called "medarb" where a "mediator" trusted by both sides is given the authority to decide the terms of a binding settlement agreement."

As I noted yesterday, the Patent Office has gone into the mediation business. As I also opined the service is by no means cheap. After learning of the Patent Office's service I circulated the notice to colleagues in the Chartered Institute of Arbitrators for their views. One comment that is perhaps worth repeating is that parties to a dispute before the Comptroller do not have to choose a Patent Office mediator and that hearing officers are required to provide with a list of bodies from which to choose. One of the bodies on that list is the Chartered Institute's IP & Electronic Media panel which has done a lot of work in this area.

Copyright: "Author" page updated

I have transposed and updated an article on "authors" in English copyright law that I first wrote in 2002. In itself, it is pretty straightforward stuff but it links to three cases on the degree of skill and labour necessary to merit copyright protection that are not often discussed.

The first of these is Pierce v. Promco S.A., and others [1998] EWHC Patents 275 (18 Dec 1998) a case on joint authorship that explores what Mr Justice Laddie called the "the right kind of skill and labour" in Fylde Microsystems Limited v. Key Radio Systems Limited [1998] EWHC Patents 340 (11 Feb, 1998). Pierce is an interesting (and I think quite important) case and I surmise that the only reason why it is not discussed more is that neither side was legally represented. Inciodentally, Fylde always reminds me of a standing joke of Andrew Blackett-Ord, the last of the old style Vice-Chancellors of the County Palatine of Lancaster. The Fylde (the area around Blackpool) contains the famous fishing port of Fleetwood but it is also Manchester's Essex in more senses than one. Hence the judge's funny, "if it comes from the Fylde, gentlemen, it must be fishy."

Two Canadian cases which look at the question of the "right kind of skill and labour" from another angle are Glen Gould Estate v. Stoddart Publishing Co. Ltd., 1998 CanLII 5513 (ON C.A.) and Hager v. ECW Press Ltd. (T.D.), [1999] 2 F.C. 287, 1998 CanLII 9115 (F.C). These are essentially on Walter v. Lane, [1900] A.C. 539 points. That is to say whether copyright belongs to the person making the speech or the person reporting it.

03 March 2006

Blackberry Litigation Settled?

I am beginning to get reports of a settlement between NTP Inc. ("NTP") and Research in Motion Ltd ("RIM"). The first report was an email from IP360 with a tantalizing invitation to subscribe to the service to read the full report. As I have about 5 million more pressing UK and European publications I need to buy first, that was a temptation readily resisted. However, I thought it was worth checking out the US techie websites and, sure enough, there was a report by Tom Krazit (who tends to be reliable) on Cnet news.com that "Blackberry was saved". The article has a link to a press release on CCN Matthews's site which looks pretty authoritative.

The settlement appears to be a payment to NTP by RIM of approximately £348.9 million (US$612.5 million) in full and final settlement of all claims against RIM and a perpetual licence for future use. Apparently that amount includes money that had already been deposited into an escrow account. The grant of a licence removes once and for all the risk of disruption of Blackberry services in the USA. The trial judge had hinted strongly on more than one occasion that the parties should settle. Clearly, they have taken the hint.

02 March 2006

Politics: The Campbell is coming

It is not often that this blog condescends to party politics but we make an exception this time to congratulate Sir Menzies Campbell on his election as leader of the Liberal Democrats.

The reason we do so is that there are some very, very tenuous connections between Sir Menzies and these chambers. The first is that he was Richard Aird's devil or pupil master. I actually joined the Faculty of Advocates as an intern and served a mini-pupillage under Richard some 10 years ago and it is not altogether impossible that some of Sir Menzies's wisdom may have trickled down to me. The second is that my university is in his constituency. The third is that he and I were graduate students in California though not at the same time nor at the same university. He went to Stanford while I went to UCLA.

IMHO he was by far the best of the three candidates that the Liberals had to consider. With all respect to Dave and Gordon I think they had a better choice than had the Tories or, indeed, the Labour Party had, or is likely to have if, indeed, its members ever have a choice at all.

Patent Office Mediation Service

I have just received an email from the Patent Office containing details of a new mediation service that is to be launched on 3 April 2006. The service will apparently use the Registry's own staff and will therefore compete against people like Christopher Floyd QC, Mary Vitoria QC, Denise McFarland, Jonathan Turner and indeed me.

Although this represents state funded competition I welcome the development. It should raise public awareness of ADR and hence bring down the cost of litigation. I have been offering mediation for trade mark oppositions, computer supply disputes, licence disputes for years and I was one of the original members of Judge Ford's panel for the Patents County Court which was set up over 10 years ago.

My only criticism is that the service does seem a bit pricey. According to the attachments, the Office plans to charge a total cost of £1000 (+ VAT) for a full day mediation service in London and £750 (+ VAT) in Newport Office. For a half day mediation service the planned charges are £750 (+ VAT) and £500 (+ VAT) respectively. An accommodation only package at either venue is also available at a cost of £100 (plus VAT) per half day. I have always taken the view that there is no point in charging more than £500 + VAT for a mediation in opposition or invalidity proceedings when the most a hearing officer is likely to order is £2,000 but this may prove me wrong.

There will apparently be a dedicated website and booklet. The scheme will apparently be run by the our Search and Advisory Service.

Liverpool Inventors' Club: Monday 27 March 2006 16:00 - 18:00

We are delighted to announce the launch of Liverpool Inventors' Club. This is a joint venture between Michael Sandys (commercial partner of Kirwans who is qualified both as a barrister and solicitor and who previously practised with Cobbetts LLP and Halliwells) and me. We have had a lot of support and encouragement would like to thank in particular Ruth Grodner of the Liverpool Patent Library, David Gilmour of Potts Kerr and Jo Pritchard of John Moores University.

Our first meeting will take place at Liverpool Central Library at William Brown Street, Liverpool, L3 8EW, Tel 0151 233 5835 Email nipclaw@yahoo.co.uk on Monday 27 March 2006 from 16:00 - 18:00. Admission and refreshments will be served courtesy of Kirwans and nipc.
To kick off our programme, we have an excellent guest speaker in Peter Raymond MBE who gave a first class talk to the Manchester branch of Ideas 21 on 21 Feb 2006. He has an impressive track record of success in innovation working with industry, universities and the public sector. He knows Liverpool well and will have a lot to tell us.

Space in the library is likely to be limited so call Ruth Grodner on 0151 233 5835 well in advance to avoid disappointment.

Copyright for Artists: Presentation to Loca

This morning I had the pleasure of leading a workshop on basic copyright, design and trade mark law at Loca. Loca is a cultural development agency based in Redbrick Mill in Batley. The mill has been converted into a 25 unit shopping centre which has attracted Habitat and Heals as well as interesting little boutiques like Bacchanalia for glass and cookware, Feature Radiators for well imaginatively designed radiators and Tansu for Japanese and Chinese furniture.
Like the other tenants of the mill, Loca focuses on regeneration. It sets out to promote creative activities in local communities throughout the metropolitan borough of Kirklees, a massive local authority in West Yorkshire between Leeds and the Greater Manchester border incorporating many old textile towns like Huddersfield, Dewsbury, Batley and Cleckheaton as well as a big slice of rural Yorkshire including my home town of Holmfirth. Loca supports artists and small businesses in the creative industries such as craftspeople, designers, painters, performers and sculptors.

The folk in my workshop today included two ladies who make individual greetings cards by hand, a gentleman who makes hand crafted carpets and floor coverings, a painter, a children's illustrator, a sculptor and a photographer. I structured the workshop around these slides and handout which concentrated on copyright and design but touched on trade marks and branding.

We had a really good discussion with some very perceptive questions. After the meeting we resolved to set up a Huddersfield Media along the lines of Bradford's Bmedi@. Indeed, Bmedi@ have offered to help launch and run it.