22 August 2006

BPP Law School's IP Students

BPP's students at Leeds and Manchester did very well last year. Both schools published excellent newsletters and the Manchester students ran an IP legal advice clinic for the Manchester Inventors Group.

I have now somewhat belatedly uploaded the June edition of the Leeds students newsletter. It is very good indeed. It contains articles on Apple Corps v Apple Computer [2006] EWHC 996 (Ch), a review of the IPCEX talk on Freedom of Information last March, some basic info on trade marks, a lighthearted look at some improbable inventions and articles on counterfeiting and supplementary protection certificates.

Well worth downloading as are indeed all of them.

ADR of Intellectual Property Disputes

On 10 May 2006 I chaired a seminar on alternative dispute resolution of intellectual property disputes. We had three star speakers:

As is clear from my slides, IPCEX (the IP Centre of Excellence for the North) chose that topic to coincide with the launch of the Patent Office mediation service a few weeks earlier. As I have said repeatedly in this blog over the past year, UK or at least English patent litigation is among the most expensive in Europe and goes a long way to explaining why we fall behind not only countries like the USA and Japan but also the rest of Europe including even the Netherlands in the European patent application stakes. It is high time something was done about it and the mediation initiative and Patent Office opinions are steps in the right direction.

Ignacio, who has practised in London as an English solicitor as well as a Spanish lawyer, spoke on WIPO's domain name dispute resolution services as well as the international arbitration and mediation services that are available through the WIPO. His presentation "Alternatives to Litigation for the Settlement of IP and Technology Disputes" was excellent. It was jam packed with statistics, case histories, procedural schematics and much, much more. It is well worth downloading.

Peter's presentation on the Patent Office mediation service was pretty good too. He traced the history of the proposal from consultations with Judge Fysh and Micael Leathes (actually it went back to an initiative of Judge Ford in 1996 to my knowledge) and the launch of the project.

Last and certainly by no means least was Sara. Sara came to Keeble Lawson after working as an in-house legal advisor and was pretty well placed to give the industry view of ADR which appeared to be pretty mixed. She took a straw poll of other senior legal advisors whose views ranged from cautious interest to scepticism.

Altogether it was a pretty good meeting. We plan to have another good one on 14 September 2006 with our "Protecting your IP in China" seminar in Liverpool and we hope to see you there.

Software Distribution: "How much is Windows worth?"

A very interesting article by Ed Bott has appeared on ZDNet entitled "How much is Windows worth?" It starts with the observation:
"Years ago, Microsoft created a multi-tier pricing structure for Windows that emphasized pre-installing its software on new PCs. The result was, by one measure, an outrageous success. ............ Ultimately, Microsoft's confusing business strategy has led to a problem that threatens the success of its next version, Windows Vista. My instinct says consumers can't value an operating system at more than 10% of the value of the physical hardware. Historically, 9 out of 10 copies of Windows are sold preinstalled on new computers. The business model that Microsoft created has been so successful that the average consumer has no idea what Windows is worth. The notion that different purchasing channels have different Windows license restrictions is
completely inscrutable. (How many questions can you get right in
this quiz?) In fact, based on prevailing PC prices in the retail channel, I wouldn't be surprised if most consumers think Windows is essentially free. "
This is equally true here. On the PC World websites Packard Bell Pentiums with 15" TFT monitors are offered for sale at £329.99 including VAT and Windows XP at £244.97 (£259.99 in the shop) including VAT.

Ed sees 3 fundamental implications for this disconnect between what people think Windows is worth and the much higher price tags Microsoft puts on the retail product:

  • Artificially high retail prices encourage consumers to unwittingly buy counterfeit software.
  • High retail prices discourage upgrades.
  • There's no family value. Apple has an excellent idea, with a fixed $129 upgrade price and $199 family packs that can be used to legally upgrade up to five Macs.

Ed suggests that Microsoft should bone up on elasticity of demand.

Interest reipublicae finis sit litigio - Final Whistle in Ultraframe

One of the longest running cases in English intellectual property litigation appears finally to have come to an end. In Ultraframe (UK) Ltd v Fielding and others [2006] EWCA Civ 1133 (08 Aug 2006) the Court of Appeal set out its reasons for refusing permission to appeal Mr Justice Lewison's decision in Ultraframe (UK) Ltd v Fielding and others [2005] EWHC 1638 (Ch) (27 July 2005).

This case, which Lord Justice Jacob described as "a dispute conducted by both sides as if it were a State trial" took over 90 days to hear with a judgment running to 1929 paragraphs covering 487 pages. All this over conservatories.

There were five applications for permission to appeal and save for one over costs upon which there may be further submissions it was refused in each case. Although Lord Justice Jacob warned that the Court's decision had no precedential value it is nevertheless illuminating on the courts approach to the issue of rel prospecvt of success which is also the criterion for summary judgment under CPR Part 24.

This Blog is now One Year Old - Some Warmed Up Porridge to Celebrate

It hardly seems like a year since I launched this blog - but it is.

I haven't always been able to update it as regularly as I should - but I have tried.

The incident that launched me into blogging was the Commission's proposal of 12 July 2005 for a directive on criminal measures aimed at ensuring the enforcement of intellectual property rights and a framework decision to strengthen the criminal law framework to combat intellectual property offences. It just did not seem to me to be a good idea to bring the construction of claims, which is expensive and difficult enough even in the specialist tribunal within the purview of the average jury. And I was even more of that view after I undertook jury service at Bradford Crown Court a few weeks later.

Following the ECJ's decision in C-176/03 Commission v Council on the powers under the EU treaties to require member states to impose criminal sanctions, the Commission considered the effect of that decision in a communication to the Council and European Parliament of 24 Nov 2005. It subsequently withdrew the framework decision but replaced it with an amended proposal for a directive on criminal measures aimed at ensuring the enforcement of intellectual property rights on 2 May 2006.

Art 3 of the amended proposal is still pretty wide:

"Member States shall ensure that all intentional infringements of an intellectual property right on a commercial scale, and attempting, aiding or abetting and inciting such infringements, are treated as criminal offences."

To my mind this proposal is still objectionable despite the requirements that the infringement be "intentional" and that it be on a commercial scale. The recitals refer to the need to contain counterfeiting and piracy which is all well and good and there is no reason to go beyond those infringements.

No justification for extension is set out in the explanatory notes on art 3. It refers to art 63 of TRIPs that provides that

"Members may provide for criminal procedures and penalties to be applied in other cases of infringement of intellectual property rights, in particular where they are committed wilfully and on a commercial scale.”

The fact that the WTO permits states to make that legislation does not mean that they must - does it.

21 August 2006

Seminar ""Protecting your Intellectual Property in China" Liverpool, 14 Sep 2006

I appreciate that this is still a minority view but I believe that China stands very much where the USA stood before 1917 and the USA stands where the British empire stood at the time of the Boer war. That reality was brought home forcefully to me at the WIPO Arbitration & Mediation Centre meeting in Geneva last October when Francis Gurry, who also has responsibilities for the administration of the PCT, said that on present trends the bulk of the world's new technical literature will be in Mandarin or some other North Asian language within a very short time. If that is right everyone needs to take an interest in what's happening in China.

In this regard IPCEX (the IP Centre of Excellence) is organizing a free seminar entitled "Protecting your Intellectual Property in China" courtesy of its newest member, Kirwans of Liverpool, at 4pm on 14 September 2006 in The Boardroom, Martins Building, Water Street, Liverpool L2 3SX. I shall be chairing the seminar and my speakers include

Lastly, and definitely least, I shall be talking about IPR enforcement which will cover not just remedies available in this country against copies of outsourced products turning up in Bury market (of which I like many IP counsel have had probably far too much experience) but also arbitration and mediation and possibly even (as a very last resort) the feasibility of remedies under bilateral investment treaties through ICSID.

This seminar is free, ladies and gents, so there is no need to count the pennies. In fact you will probably get a cup of tea, a buttie and possibly even a glass of vino from our host, Kirwans commercial partner, Mr Michael Sandys, if he is feeling generous. If you want to come, please call Marianne Tuck on 0151 229 5600. The Martins Building is very central close to Moorfields and James Street tube stations (yes, Southerners, Liverpool does have an underground) and not far from the new NCP car park near the new civil and family courts at Moorfields.

13 August 2006

Legality of Trading in Certificates of Authenticity

Several of you have asked what has happened to this blog recently, particularly over the last few weeks when it has been silent. The answer is that I have been exceedingly busy. I am after all a barrister first and blogger second. Although I have had a lot of other work my biggest case was Microsoft Corporation v Ling and others [2006] EWHC 1619 (Ch) (3 July 2006)

In that case I faced on very meagre resources two very able counsel - one an acknowledged expert in civil fraud and the other an intellectual property specialist - instructed by a very large law firm. The issue was whether dealing in certificates of authenticity - stickers that are affixed to the casing of microcomputers upon which Windows or other software is installed - is always necessarily unlawful. That issue had already arisen in the USA, Israel and the Netherlands but this appears to be the first time that it has arisen in this country.

As I was counsel in the case it would not be right for me to say anything more about it other than that the judgment is in the public domain and that the litigation has now settled. In the USA the legality of such dealing has been outlawed by section 3 of the Anticounterfeiting Act of 2004. Coincidentally, the first prosecution under the Act was announced a week after the judgment in Microsoft v Ling (see "Man Indicted For Trafficking 'Certificates of Authenticity' " (LinuxElectrons 11 July 2006). The fact that this statute was required suggested that that trade was not unlawful before it was passed.

In Israel the Court of First Instance had held that dealing in certificates of authenticity was unlawful in Microsoft Corporation v NAD Electronics. An appeal was lodged against that decision and the very forceful skeleton argument of the appellant was before the court in my case. Sadly, that case has also been settled.