29 January 2012

Trade Marks: "The Griller", Ghias v Ikram and Others

This was a decision by Mrs Recorder Michaels who sits as an appointed person in appeals from hearing officers in the Trade Marks Registry under s.77 of the Trade Marks Act 1977. She is therefore used to oppositions under s.5 and applications for invalidity under s.47 (2) of that Act where there will have been no oral evidence and in many cases no hearing.   You will find the transcript of her judgment at Ghias v Ikram and Others [2012] EWPCCC 3.

The Registered Marks
The claimant had registered the following British trade marks:


for a wide range of foods and beverages in classes 29, 30 and 32 and various services in class 43 including "Restaurant, bar and catering services." with effect from 15 March 2003.


for the same range of goods and services with effect from 26 Oct 2004.

In her judgment, the recorder referred to 2,326,754 as "the logo" and 2,376,629 as "the device". As both marks are obviously logos and devices I prefer to call the former "flames" and the latter "chicken".

The claimant had used the marks in a Halal fast food restaurant in Chadwell Heath and had franchised between 10 and 14 other outlets in various parts of London to trade under those signs. There was scant evidence as to how much business was done by the claimant and his franchisees. The turnover of the Chadwell Heath store was said to have grown from £35,000 in 2005 to £90,000 while that of the chain was estimated at between £770,000 in 2008 to just over a million in 2009. Not quite in Colonel Saunders or McDonald's league.

The Claim
There were three separate groups of defendants with no connection with each other but they all ran fast food restaurants in different parts of London under signs that included the word "Griller". Sensibly, they call instructed the same solicitors who in turn briefed the same counsel.

The first and fourth defendants ran restaurants known as "The Griller Original" in Gants Hill (not a million miles from Chadwell Heath) and "the Griller" in Canning Town (also in East London but somewhat further away).

The second defendant trades as "The Griller King" in Croydon, a hefty trek from Chadwell Heath whether by car or public transport, under the following sign.

Finally, the third and fifth traded as "The Griller Hut" in South Norwood, also in South London and hence a traipse from Chadwell Heath.  Their sign was:

The claimant, who had represented himself for most of the litigation, complained in the claim form:
"All 3 Defendants have violated our legitimate legal trade mark rights under Trade Mark Act 1994 and Any other law [sic] court see relevant."
There was no indication of the particular sub-section of s.10 of the Trade Marks Act upon which he relied so the poor old recorder had to consider them all.  There was an attempt at trial to run a claim for passing off but as it had not been specifically pleaded and as the case management directions had allowed just one witness statement from the claimant on reputation, the learned recorder (rightly in my view) refused to allow it.   Given the very modest sales of the claimant and the travelling time for journeys between South and East London I am not sure that it would have made much of a whole hep of difference at the end of the day.

The Judgment
In a long and very careful judgment, Ms. Michaels considered the claim against each of group of defendants under s.10 (1), (2) and (3) of the Trade Marks Act 1994. In each aspect of the claim she relied heavily on the recent judgment of Mr. Justice Arnold in Och-Ziff Management Europe Ltd and Another v Och Capital LLP and Another [2010] EWHC 2599 (Ch) (20 Oct 2010), [2011] FSR 11, [2011] ECC 5, [2011] ETMR 1. She threw out the claims under s.10 (1) against all the defendants on the grounds that none of them used a sign that was identical to the registered marks. Similarly, she kicked into touch all the claims under s.10 (3) on the ground that the claimant's marks had no reputation in the UK. Applying the analysis that Mr. Justice Arnold had propounded at paragraphs [73] to [76] of Och-Ziff she concluded that the first and fourth defendants had infringed the flames mark under s.10 (2) but not the chicken and that the first defendant was personally liable under the Charly Records test.   However, the claims against all the other defendants under s.10 (2) were dismissed.

This case together with Hoffman v Drug Abuse Resistance Education (UK) Ltd [2012] EWPCC 2 (19 Jan 2012) and Mitchell v BBC   [2011] EWPCC 42 (21 Dec 2011) are examples of cases that probably would not have come before Judge Fysh QC or Judge Ford under the old Part 63 of the Civil Procedure Rules and the Part 63 Practice Direction.  As I said in my post on the New Patents County Court Rules on 31 Oct 2010 that was because it used to cost an average of between £150,000 and £250,000 to bring an action in the Patents County Court.   There are likely to be more such cases when the new small claims track is introduced for copyright, trade mark and unregistered designs cases in October 2012 (see the IPO's consultation document "Introducing a small claims track into the Patents County Court", Jan 2012). This shows that the reforms to the Patents County Court proposed by Jackson, Arnold, Gowers and Haregreaves are beginning to work. If it encourages innovation in the UK it will be no bad thing.

As ever, anyone wanting to discuss this case with me can give me a bell on 0800 862 0055 or contact me through Facebook, Linkedin, Xingtwitter or my contact form.

28 January 2012

MMI Research Ltd v CellXion Ltd and Others

This is the second appeal in litigation that has come before Mr. Justice Floyd and the Court of Appeal on two occasions (see MMI Research Ltd v CellXion Ltd and Others [2009] Info TLR 35, [2009] EWHC 418 (Pat) (11 March 2009) and MMI Research Ltd v CellXion Ltd and Others [2011] EWHC 426 (Pat) (7 March 2011). At the first trial the judge held that the patent in suit was valid and that it had been infringed. The defendants appealed to the Court of Appeal on the basis of new evidence. Lords Justices Jacob and Kitchin allowed the appeal and ordered a new trial. At the second trial the judge considered the new evidence but held that it made no difference to his decision.

The Invention
The invention was a device that facilitates the detection of mobile phone numbers. It is used by police forces and security services to monitor the movements of suspected wrongdoers. It works by fooling the suspect's mobile into releasing a unique identifier known as an "IMSI". The phone releases its IMSI because it receives a powerful signal from a fake base station of the kind it would receive had its owner moved from the territory of one base station into another.  Virtual base stations were already known at the date the patent application.  The invention was the manipulation of the base station to emit a signal of such strength that any mobile phone in the area would be tricked into releasing its IMSI.

The New Evidence
The new evidence consisted of English and Italian materials together with a floppy disc that were alleged to have been supplied to the Italian Carabinieri and the German federal police before the filing date. The defendants alleged that those documents disclosed the invention before the application for the patent or at the very least that they rendered the invention obvious.   Mr. Justice Floyd was unimpressed.   He concluded that these disclosures did not reveal the invention. Nor did they make the invention obvious.   Even if they had, the materials were supplied to the Italian and German authorities in confidence.

The Second Appeal
In MMI Research Ltd v Cellxion Ltd and Others [2012] EWCA Civ 7 (24 Jan 2012) the defendants tried to rely in evidence given in the second trial to undermine the judge's finding in the first.  The Court of Appeal would have none of that.   However, a point that did succeed was a submission based on a concession  by the claimant's expert at the first trial that an article on phone location technology would have enabled a team that included a systems engineer to use a virtual base station to emit a signal sufficiently powerful to induce any mobile phone in the area to try to register its IMSI with that base station.   The trial judge appeared to have overlooked that point.   The Court of Appeal suggested at paragraph [78] of their judgment that that was probably because he had so many other points to consider.   Had the defendants concentrated on their best point Mr Justice Floyd might not have fallen into error.

So that was that. Having won on this last point the defendants succeeded at the end of the day.  In a press release published on the 25 Jan 2012 the Leeds company Datong Plc said that it had set aside £300,000 for its share of damages and costs. Had the case gone the other way I would have expected the financial consequences to have been even greater.  Its case like these that bring to mind Lord Esher MR's remark in Ungar v Sugg (1892) 9 RPC 113, 117 that "a man had better have his patent infringed, or have anything happen to him in this world, short of losing all his family by influenza, than have a dispute about a patent".

Further Information
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27 January 2012

Trade Marks: 34Red v WHG Appeal

In 32Red Plc v WHG (International) Ltd and Others [2012] EWCA Civ 19 (24 Jan 2012) the Court of Appeal allowed a cross appeal by the claimant, 32Red Ltd. ("Red") against Mr. Justice Henderson's finding at first instance [2011] EWHC 62 (Ch) (21 Jan 2011) [2011] ETMR 21that Red's number mark had not been infringed but dismissed the appeal by the defendants, the William Hill group of companies ("WHG"), against his finding that all of Red's marks were valid and all but one of them had been infringed. The facts of this case are complex but I set out the background and summarized the legal issues in my post Trade Marks: 32Red v WHG of 23 Jan 2011.

The Grounds of Appeal
Lord Justice Etherton described WHG's attack on the trial judge's judgment as "a full-scale, wide-ranging attack on the Judge's analysis and conclusions on virtually every aspect of his judgment" alleging not just errors of principle but also failure by the judge to apply correctly principles that Red believed that he did get right to the facts and perversity of his findings of fact.

Their counsel argued that the trial judge had
  1. wrongly concluded that the number mark does not fall within s.3 (1) (b) and (c) of the Trade Marks Act 1994, and, in reaching that conclusion, he had both made errors of principle, particularly in relation to s.3 (1) (c), and had failed properly to take into account the factual evidence, particularly the oral evidence of one of the witnesses for the respondent;
  2. wrongly  rejected WHG's attack on the registration of the number mark as having been made in bad faith and that his decision on the point was so inconsistent with the evidence as to be perverse;
  3. approached  issue of infringement in the wrong way in that he had de-constructed the Red32 mark into different elements (32 and the colour red) and failed to take sufficient account of the evidence (or rather lack of it) about actual confusion; and that he had
  4. erred in finding that Red's Community trade marks were properly registered as they were devoid of distinctive character.
The Judgment
The judgment of the Court was delivered by Lord Justice Etherton but Lord Justice Kitchin and Lord Justice  Toulson agreed.

Starting with the validity of the national and Community registrations the Court considered the decisions of the Court of Justice of the European Union in C-363/99 Koninklijke KPN Nederland v  Benelux-Merkenbureau (Postkantoor)  [2004] ECR I-1619, [2006] Ch 1, [2005] 2 CMLR 10, [2005] CEC 216, [2005] All ER (EC) 19, [2005] 3 WLR 649, [2004] ETMR 57 and C-51/10P Ajencja Wydawnicza Technopol sp. z.o.o. v OHIM ("Technopol")  [2011] ETMIR 21. Lord Justice Etherton concluded  at paragraph [64] that Mr. Justice Henderson's approach to determining validity was entirely consistent with those cases. The trial judge had been right to find that the number 32 was not descriptive of gambling simply because it was widely regarded as a lucky number.

As to the attack on the trial judge's finding on infringement, the Court affirmed the judge's approach which had been based on Mr. Justice Arnold's analysis at para [73] of his judgment in Och-Ziff Management Europe Ltd and another v Och Capital LLP and another [2010] EWHC 2599 (Ch) (20 Oct 2010) [2011] FSR 11, [2010] EWHC 2599 (Ch), [2011] ECC 5, [2011] ETMR 1. The Lord Justices rejected WHG's attack on the judge's application of those principles to the facts that he found.

The only point upon which the Lord Justices disagreed with the trial judge was his finding that there had been no infringement of the number mark.   He seems to have reached that conclusion on the ground that the mark had not yet acquired a separate reputation.   Unsurprisingly, their lordships found that it was unnecessary to prove reputation to bring an action  for infringement under s.10 (2). Accordingly, Red's cross appeal succeeded.

I have to say that I was surprised to learn that there was an appeal because the case had been decided largely on its facts.   WHG lodged a 44 page "skeleton" consisting of 174 paragraphs which revisited the oral and documentary evidence in amazing detail.   Appellate courts are slow to interfere with a lower court's finding of fact because they do not see the witnesses and are for that reason in no position to assess the credibility of their testimony. 

Further Information
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25 January 2012

Damages for Infringement of Copyright in Photographs: Hoffmann v Drug Abuse Resistance

A few years ago it became possible for photo libraries to sniff the Internet for unlicensed copies of their photographs. When they found one they demanded pretty steep damages for copyright infringement. Often the owners of the websites were decent people who had acted in the sincere belief that they were entitled to use the snaps. Frequent questions at my IP clinics were: "Have they got a case?" and "Do we really owe them that much." Judge Birss QC's documents only decision in Hoffman v Drug Abuse Resistance Education (UK) Ltd [2012]  EWPCC 2 (19 Jan 2012) answers both those questions..

Why the Case was Conducted in Writing
The reason why this was a documents only decision is  that the defendant went into liquidation before the acton came on for trial. Even though the liquidator advised him that no creditor was likely to get a dividend, the claimant asked for judgment.  Rather than put the parties to further expense, the judge ordered amended particulars of claim and a letter from the defendant answering that claim to stand as evidence pursuant to CPR 32.61 and para 31.1 of the Part 63 Practice Direction.  That was despite the fact that neither party's statement of case had been prepared by a lawyer.

The Facts
The claimant was a professional photographer who had taken photos of amphetamines, cannabis, crack and other drugs. His work had appeared on a government sponsored website called "Talk to Frank". The defendant was a charity that had helped schoolchildren understand the dangers of substance abuse and provided them with life skills to tackle peer pressure to take drugs. It commissioned a website from a developer who saw the photos on "Talk to Frank".   Assuming them to be Crown copyright and thus free to use  it posted them on the defendant's site in the mistaken belief that it did not need the photographer's permission. And of course the defendant relied on what its designer had said to it..

In the absence of conventional pleadings the judge had to do the best he could. The claimant complained that the defendant had infringed copyrights subsisting in his photographs. He referred to s.16 of the Copyright, Designs and Patents Act 1988 but did not specify any infringing act. The judge held that the defendant had communicated the photographs to the public within the meaning of s.16 (1) (d) as amplified by s.20:
"........  in this case the claimant's artistic works have been made available to the public on the defendant's websites by electronic transmission in such a way that members of the public may access the works from a place and at a time individually chosen by them."
By so doing it had infringed copyright. The defendant's belief that it was entitled to use the photos afforded no defence.

Section 97 (1) Defence
S.97 (1) of the Act provides a partial defence where the defendant did not know, and had no reason to believe, that copyright subsisted in the work to which the action relates but that did not apply here. The defendant knew that copyright of some sort subsisted in the work but believed wrongly that he was allowed to use it. 

The claimant sought damages of £28,500 based on an estimated revenue of £250 per photograph per year over 4 years together with a further 50% uplift on top for the use of the photographs as thumbnails. The judge thought that was too high. He directed himself at paragraph that the measure of damages was the sum that a willing user would have agreed to pay a willing photographer to post the photographs on its website.  As the photographs were pictures of drugs the likely market for such photographs would have been customers in the public and charitable sectors. His Honour assessed damages at £10,000.

As the infringement had taken place over 4 years during which period base rate had fallen from 5.75% to 0.5% the judge fixed interest at 4% - an average of 3% for the period between 2007 and 2011 plus 1%.

So the answer to be given in clinics is "yes" the photo libraries do have a case and "yes" they are entitled to the going rate for the use of their photo though that will vary according to the market for the work.

Further Information
Should anyone wish to discuss the question of costs with me further, he or she can call me on0800 862 0055 or use my contact form. I can also be reached on Facebook, Linkedin, twitter or Xing.

17 January 2012

Costs in the IPO

This article was prompted by the decision of Mr. Phil Thorpe in Farr v Orbis Corp. (No. 2) BL/0/469/11 23 Dec 2011 where the hearing officer refused to award the defendant costs off the scale published in Tribunal Practice Note ("TPN") 2/2000 as amended by TPN 4/2007 against a litigant in person.  As the time for appealing has not yet run out, and as I represented the claimant at the costs hearing, it would be wrong for me to say anything more about that particular case. Rather I wish to explore the Comptroller's jurisdiction to award costs for proceedings in the Intellectual Property Office.

S.107 (1) of the Patents Act 1977 provides:
"The comptroller may, in proceedings before him under this Act, by order award to any party such costs or, in Scotland, such expenses as he may consider reasonable and direct how and by what parties they are to be paid."
In Rizla Ltd.'s Application [1993] RPC 365 Anthony Watson QC confirmed that that section confers a very wide discretion upon the Comptroller with no fetter other than that he or she must act judicially. At the time of that appeal it was already the practice for hearing officers to award only a contribution towards the costs of a successful party. The question for Mr. Watson was whether the Comptroller had jurisdiction to award compensatory costs if proceedings were begun or maintained without a genuine belief that there was an issue to be tried. The deputy judge held that there was indeed such jurisdiction but it was to be exercised only in exceptional circumstances.

The exceptional circumstances that Mr Watson had to consider was whether there had been abuse of the tribunals' process.   In TPN 2/2000 Alison Brimelow helpfully added a few more examples at paragraph 9:
"A party seeking an amendment to its statement of case which, if granted, would cause the other side to have to amend its statement or would lead to the filing of further evidence, might expect to incur a costs penalty if the amendment had clearly been avoidable. In another example, the costs associated with evidence filed in respect of grounds which are in the event not pursued at the main or substantive hearing might lead to award which departs from the scale. Costs may also be affected if a losing party unreasonably rejected efforts to settle a dispute before an action was launched or a hearing held, or unreasonably declined the opportunity of an appropriate form of Alternative Dispute Resolution (ADR). A party’s unnotified failure to attend a hearing would also be a relevant factor."
Although the Comptroller took pains to point out that  it would be impossible to indicate all of the circumstances in which a Hearing Officer could or should depart from the scale of costs and wrong to attempt to fetter his or her discretion is such a way, it is reasonable to suppose that the conduct of the party at fault would have to be eiusdem generis the examples mentioned above.

So what circumstances would justify an award of costs off the scale? In Statoil ASA v University of Southampton BL 0/268/05 8 Sept 2005 Mr. Peter Hayward awarded the claimant £120,000 after finding that the defendant's refusal to make any concession on entitlement or inventorship even though its own main witness acknowledged that claim 1 had come from the claimants had caused the claimant to incur extra costs which it would not have incurred had the defendant behaved more reasonably. That case is probably the high water mark of the jurisdiction.   In Wragg v Donnelly BL 0/280/10 9 Aug 2010 I was unable to persuade Mr. Elbro to award off the scale costs where the claimant had persisted with his claim despite two s.74A opinions against him. Mr. Back refused to make an off the scale order in ASI Solutions Plc v Nu-Phatt BL 0?154/06 27 June 2006 where it was alleged that the defendant had maintained a case that was bound to fail; that its behaviour was an abuse of process; that its general behaviour caused the claimant unnecessary expense and that it had failed to settle.

Although it would appear from the case law that there is no consistency Rizla does in fact suggest an approach that appears to be followed by hearing officers in practice.  The starting point is "a presumption that the standard scale will provide a reasonable award." It is therefore up to the party seeking to persuade the hearing officer to depart from the scale to convince him or her that "in the particular circumstances of the case (my italics), the scale produces an unreasonable award." Only if he or she is so persuaded should the hearing officer enquire as to what would be a reasonable award.  The italicized words are important because it means that conduct that would justify a departure from the scale in one case would not necessarily justify it in another.   Clearly a litigant in person will be allowed more latitude than a major company or other institution represented by counsel.   As for the amount of the award the Comptroller observed rightly at paragraph 5 of TPN 2/2000 that her discretion under s.107 (1) allows her "to operate a nominal cost regime or a full recovery regime - or anything in between." Again, the quantum must be whatever may be reasonable in the particular circumstances of the case. 

Should anyone wish to discuss the question of costs with me further, he or she can call me on 0800 862 0055 or use my contact form. I can also be reached on Facebook, Linkedin, twitter or Xing.

15 January 2012

Copyright in Photographs: Temple Island Collections and Creation Records

In our very first NIPC newsletter which we published in June 1997 I wrote a case note on Mr. Justice Lloyd's decision in Creation Records Ltd. and Others v News Group Newspapers Ltd [1997] EMLR 444, [1997] EWHC Ch 370, (1997) 16 Tr LR 544. In that case Mr. Noel Gallagher of Oasis and others applied for an interlocutory injunction to restrain The Sun from offering for sale and selling a poster of Oasis that featured a photo of an elaborate set that included a white Rolls Royce in a country club swimming pool. The Sun's photograph was very similar to the photograph that appeared on an Oasis album cover. The similarity arose because The Sun's photographer shot the same scene at roughly the same time and from the same angle as Mr. Gallagher's photographer but he did not reproduce any part of Oasis's print or negative. The learned judge held that the plaintiffs had no arguable case for infringement of copyright though he accepted that they had an arguable case for breach of confidence.

Nearly 15 years later a tea wholesaler commissioned a graphic design company to arrange a number of photographs that its director had taken or acquired into a packaging design that showed a London bus crossing the Thames at Westminster bridge with the Palace of Westminster in the background.

That design was intended to be very similar to, but not actually copy, a photograph of a very similar scene that had been made by the founder and 
managing director of a company that made and sold gifts and souvenirs in August 2005 (a copy of which appears to the right).   The defendant company had previously entered a licence agreement with the claimant to reproduce that photograph.  That had led to a dispute over the amount actually due from the tea merchant to the gift and souvenir company which was resolved on paper by His Honour Judge Birss QC in Temple Island Collection Ltd v New English Teas Ltd. and Another (No. 1) [2011] EWPCC 21 (29 July 2011). It was common ground that "no photocopying style reproduction" had taken place, that the defendants' work was created from photographs that the second defendant had taken himself and that the whole point of the exercise was to avoid infringing.   Yet the claimant sued the defendants for copyright infringement in Temple Island Collections Ltd v New English Teas Ltd and Another (No. 2) [2012] EWPCC 1 (12 January 2012) and won despite Mr. Justice Lloyd's robust judgment in the Oasis case 15 years earlier. Why was this?

Judge Birss QC's judgment in Temple Island makes no reference to Creation Records which could be because neither counsel cited it and he didn't think of it or because neither he nor the parties believed it to be relevant. If it was for the second reason I should be surprised because the facts and arguments seem very similar, at least to me.

Mr. Gallagher's effort in constructing his set in Creation Records seems to have involved far more thought and work than that of the claimant's managing director in Temple Island.   Mr. Justice Lloyd described his arrangement at paragraph [2] of his judgment in Creation:
"Mr Noel Gallagher, who it seems has control of the artwork, supervised the placing of various objects around the pool, which by then had been partly refilled with water, until he was satisfied with the scene including the positioning of the members of the group. Photographs were then taken of the scene by Mr Michael Spencer Jones over a period of time from mid-afternoon to late at night so that the group would have a choice of images in different lights and from different angles and heights. Mr Gallagher exhibits to his affidavit a photograph which, he says, he envisaged as being used for the front sleeve of the album. This has the swimming pool in the foreground with the Rolls Royce seemingly emerging from the water towards the camera. The hotel is beyond and to the right. In the far distance is a wooded area with a partly clouded sky above. The five members of the group are posed round the pool, one on a scooter, one climbing out of the pool and others with or near other objects seemingly unrelated to each other. The various objects were ordered two days before from a warehouse in London; none of them was made for the purpose."
Similarly, Judge Birss QC related how the claimant's photograph came into existence between paragraphs [4] and [6] of his judgment in Temple Island:
"4. ................. The claimant's managing director Mr Fielder created the work by taking a photograph in August 2005. He wanted to create a single, modern and iconic scene of London. Having taken images of the river and the Houses of Parliament for many years Mr Fielder knew where to stand. In fact the place he stood is where many tourists also stand with their cameras. He knew he would be able to capture the bus heading to the south side of the river and thus show the front of the vehicle. He could ensure that other landmarks, i.e. Parliament, Westminster Bridge, and the river, were included and he would have a strong skyline.
5. Once the photograph was taken Mr Fielder manipulated it on his computer using a well know standard piece of software called Photoshop. He had the idea of making the red bus stand against a black and white background from the film Schindler's List. That film includes striking use of the technique in a different context.
6. In summary the manipulations Mr Fielder undertook were: the red colour of the bus was strengthened; the sky was removed completely by (electronically) cutting around the skyline of the buildings; the rest of the image was turned to monochrome save for the bus; some people present in the foreground of original photograph were removed (there was a small group on the stairs and a person at the top under the lamppost); and the whole original image was stretched somewhat to change the perspective so that the verticals in the buildings were truly vertical. Mr Fielder spent about 80 hours on this including the photography trips."
The judge continued at [7] that the claimant's image became famous in its industry and was used not just for its mugs, key fobs and stationery which were distributed by the National Gallery among others but was also licensed to Historic Royal Palaces. However, the release of an album of a well known group of musicians was not without commercial significance.

In Creation Records it was argued that that the scene itself (the arrangement or composition of the members of the group, the various objects and the site) was a copyright work as a sculpture or collage within the meaning of s.4 (1) (a) of the Copyright, Designs and Patents Act 1988 or as a work of artistic craftsmanship within the meaning of s,4 (1) (c). Mr. Justice Lloyd did not see how that could be so. It was also argued faintly that the scene was a dramatic work. Since the scene was inherently static, having no movement, story or action, the judge could not accept that argument either. As he put it at paragraph [8]:
"I do not regard this as seriously arguable. I do not see how the process of assembling these disparate objects together with the members of the group can be regarded as having anything in common with sculpture or with artistic craftsmanship. No element in the composition has been carved, modelled or made in any of the other ways in which sculpture is made (see Breville (Europe) Pic v Thorn EMI Domestic Appliances Limited [1995] FSR 77 at 94). Nor does it seem to me to be the subject or result of the exercise of any craftsmanship (see George Hensher Limited v. Restawile Upholstery (Lanes) Ltd. [1976] A.C 64, especially Lord Simon at 91)."
The judge considered Martin Mann QC's decision in Shelley Films Limited v. Rex Features Ltd. [1994] E.M.L.R 134 where the learned deputy judge held that it was at least seriously arguable that a film set prepared for the film to be called "Mary Shelley's Frankenstein" was a work of artistic craftsmanship so that an unauthorised photograph taken of an actor on the set was a breach of copyright in the set as well, for different reasons, as of other elements in the photograph. He distinguished that case on the basis that a photographer's arrangement was an ephemeral composition for the purpose of a photograph with no independent existence of its own:
"Mr Gallagher's composition from all of those examples as being put together solely to be the subject matter of a number of photographs and disassembled as soon as those were taken. This composition was intrinsically ephemeral, or indeed less than ephemeral, in the original sense of that word of living only for one day. This existed for a few hours on the ground. Its continued existence was to be in the form of a photographic image."
The second argument in Creation Records was that The Sun's photo was a copy of the official Oasis photograph regardless of the order in which they were taken.  His lordship could not see how that could be so. He observed at paragraph [1]:
"Of course copyright subsists in the official photograph and if it were the only source of the scene it would be an infringement to copy that, either by a direct copying process or by the scene being recreated and a fresh photograph taken of that recreation. But it is a basic proposition of copyright law that two works created from a common source do not by reason of that fact involve copying one of the other, however similar they are. Nothing in Bauman v. Fussell [1978] R.P.C. 485 is inconsistent with this."
It was finally argued that Mr Gallagher was the author of any photograph because he had set the scene and arranged the angle and lighting of the shot. The judge dismissed that argument on the ground that it is the person who takes the photo (that is to say, presses the shutter button) who can ordinarily claim to be the author of the work.

In Temple Island Judge Birss was taken to a decision of the Austrian Supreme Court in O (Peter) v F KG ([2006] ECDR 9) from which he concluded at paragraph [19] of his judgment that:
"A photograph of an object found in nature or for that matter a building, which although not natural is something found by the creator and not created by him, can have the character of an artistic work in terms of copyright law if the task of taking the photograph leaves ample room for an individual arrangement. What is decisive are the arrangements (motif, visual angle, illumination, etc.) selected by the photographer himself or herself."
He also relied on the commentary in the text book Laddie Prescott & Vitoria (4th Ed.) in paragraphs 4.60 and 4.61 that copyright in a photo resides in the aspects for which there is room for originality, namely:
  • specialities of angle of shot, light and shade, exposure and effects achieved with filters, developing techniques and so on;
  • the creation of the scene to be photographed; and
  • being in the right place at the right time.
Taking the second and third two aspects together, he concluded at paragraph [27]:
" The relevant point in this case seems to me to be that the composition of a photograph is capable of being a source of originality. The composition of an image will certainly derive from the "angle of shot" (which Laddie Prescott and Vitoria categorise in sub-paragraph (i)) but also from the field of view, from elements which the photographer may have created and from elements arising from being at the right place at the right time. The resulting composition is capable of being the aggregate result of all these factors which will differ by degrees in different cases. Ultimately however the composition of the image can be the product of the skill and labour (or intellectual creation) of a photographer and it seems to me that skill and labour/intellectual creation directed to that end can give rise to copyright."
Since Sir Hugh Laddie and other members of 8 New Square published the first edition of their bible, the digital camera and mobile phone have been invented and photographic editing software such as Photoshop have appeared.  That has given rise to what the judge rightly called a 4th aspect in which there is room for originality, namely the setting of the photo using such software. In my exceedingly humble and tremulous opinion that is the only possible point of difference between the situation in Temple Island and that in Creation Records.  In designing their packaging the defendants had the claimant's image as generated by the software in mind and it was that which they had copied. 

In reaching his decision Judge Birss found objective similarity between the two works and evidence of access:
"55. On the question of copying, I find that the common elements between the defendants' work and the claimant's work are causally related. In other words, they have been copied. There are two points. First the evidential onus to address a point like that is on the defendants here given the obvious similarities between the claimant's and defendants' work and the undoubted access of the defendants to the claimant's work. Mr Houghton did not refer to any particular element and assert that it came from a source independent of Mr Fielder. Sphere did not give evidence at all.
56  I have referred to the obvious similarities between the works. The defendants went to considerable lengths to point up the differences between the images. They analysed the overall composition which is said to be very different both vertically and horizontally. The balance of foreground, middle ground and far ground features were analysed and said to be different in key respects. The fact the river is absent from the defendants' work was pointed out. These differences all exist but it seems to me that on the question of copying they do not help. In this case it is not a coincidence that both images show Big Ben and the Houses of Parliament in black and white with a bright red bus driving from right to left and a blank white sky. The reason the defendants' image is like that is obviously because Mr Houghton saw the claimant's work. The differences do not negative copying, on the facts of this case they have a bearing on whether a substantial part is taken (but taking care to bear in mind Designer's Guild).
57. Second Mr Houghton did not suggest he had seen any of the other similar works relied on above before seeing Mr Fielder's image. The whole point of this case is that Mr Houghton and his company wish lawfully to produce an image which does bear some resemblance to the claimant's work. The inference that I draw is that Mr Houghton sought out this other material after he had decided to produce an image similar to the claimant's. He found examples of common elements in various different places. That does not avoid a causal link. If Mr Houghton had seen Mr Fielder's image, decided he wanted to use a similar one, found the Rodriguez or Getty photographs and put one of those on his boxes of tea, there would be no question of infringement. Those images are not causally related to Mr Fielder's, they are independent works. But that is not what happened. At best the defendants used these other images to show that certain individual elements in Mr Fielder's work can also be found elsewhere. That does not make those different sources the actual origin of an element in the defendants' image. I reject the submission that the other similar works acted as a relevant independent source for the defendants."
I have to say that although I follow the logic I feel very uneasy at Judge Birss's decision in Temple Island. It seems to come very close to protecting copyright in an idea as opposed to expression. That is something that art 9 (2) of TRIPS says cannot be.

Should anyone wish to discuss this case, he or she should give me a call on 0800 862 0055 or complete my contact form. You can also contact me through twitter, Facebook, Linkedin or Xing,

Post Script

9 Feb 2015    I have just received the following email:

Dear Jane Lambert,

I tried to reply to your blog piece about the Temple Island Collections Ltd Vs New English Teas Ltd court case, but having typed in the comment I was informed that it was too many characters long so I thought I'd try here instead. You're welcome to reply if you wish to but not obliged to.

Without getting angry and posting in a such fashion that would be deemed offensive I have to say that this situation is particularly worrying for both professional and amateur photographers. I myself believe that if you are at least a half competent photographer being given a commission to photograph a building or a scenic location then you would be able to work your way around to find the best composition. At that point having done so and taken the shot it would in turn almost mirror the previous photographs taken by other photographers.

For those with an artistic education or an Open College of the Arts Photography Degree will more than likely produce photographs of much similarity in even more difficult to mirror locations because they are all taught with the same basics.

All this for photographers of all skill levels has come at the wrong time - a time when people with cameras are coming under scrutiny for their volume of use. We now suffer over ego'd shop security staff leaving their place of employment to pursue 'out of their jurisdiction', members of the public who wish to take photos of beautifully designed modern buildings. These business's are quite happy to design buildings that draw people in to spend their money but not happy for the same buildings design to attract people to take a few photos.

Someone once wrote "sometimes the best things about something are also the worst things" meaning that what makes something so popular also is the root cause of it becoming so unpopular. Back when I was using a 35mm film SLR people liked being photographed, having their car and other possessions photographed but unfortunately due to a handful of unsavoury characters using their cameras for the wrong purposes, we the genuine artists are forced to pay with reduced levels of photographic freedom.

Such an unsavoury character as far as photographic freedom is concerned would be the claimant Mr Justin Fielder whose photograph of the red bus crossing Westminster bridge was by far the better of the two images anyway. And considering that the two companies sold entirely different products you have to ask if there was really any case to answer apart from one party who's image I believe gained more fame from the court case than it did from the packaging and products it was used on.

My concern here (being entirely ignorant of how Judges operate) is whether Judge Birss QC was correctly advised on the use of Photoshop. The program Photoshop of which the latest version (CS6) currently retails in the UK for £549.00 and anyone who is serious about their photography, Professional or amateur will endeavour to fund the purchase of this valuable piece of software. Which in turn brings me to the subject of the program and I ask - can it really be called the 4th aspect? The technique used by the claimant Mr Justin Fielder is not so much a technique, but more of a setting in Photoshop itself.

Are we to believe that Judge Birss QC would allow the claimant Mr Justin Fielder to copyright a technique that is already copyrighted through Adobe Photoshop's copyright policy anyway. It's a setting that works like this.........

1) Take a photograph in full colour
2) Open it in Photoshop
3) Choose 'desaturate image'
4) Select 'History Brush'
5) Move History Brush over the parts of the image that you wish to return the colour.
6) Save the finished image under a different name.

This process takes so little time and has been described and used in magazines for many years and the claimant Mr Justin Fielder cannot possibly be considered as the pioneer of this technique.
I know that I am a bit late posting about this but I do feel aggrieved every time I come across this court case on the internet. I did see the original article in Amateur Photographer Magazine a couple of years ago and it infuriated me then. I know that English Teas have been given the right to appeal and I hope they do even if not for any other reason than standing up for photographers rights and common sense.
If English Teas should attempt and fail to overturn the original court ruling I do wonder how far this legal disease will spread - will artists who paint very similar landscapes due to their Open College of the Arts degree education be made to defend themselves in court in the future? How about Guitarists who use techniques of playing that were discovered by others?

What happens if other countries across the world refuse to adhere to courts ruling in this country? Will they come here and photograph as they see fit and publish their works back home in a way that our very own people are unable to here?
I only hope that my points of view here can be offered perhaps in better wording to the Judge who would oversee the appeal should it ever go ahead - if not then it could in time affect everything to do with photography in Britain - especially sales of photographic equipment which are already starting to drop due to the natural popularity falloff you get when people have spent what they are going to on a new electronic format.

We have been described as "Britain - a country of photographers" and I only hope we can stay that way.

Anyway my point of view expressed I wish you well Jane and also much success.

With kind regards,

Michael Stretton - an amateur photographer.

see also

"Is this a copy? John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd" 11 Dec 2014
"Monkey Business - copyright in a photo where the shutter is operated by an animal" 7 Aug 2014

08 January 2012

Copyright: Forensic Telecommunications Services Ltd. v West Yorkshire Police

In Forensic Telecommunications Services Ltd v West Yorkshire Police and Another [2011] EWHC 2892 (Ch) (9 November 2011) the claimant company ("FTS") complained that the West Yorkshire Police and one of the force's former detective constables had infringed its copyright, alternatively its database right, in certain tables of data referred to as "the PM Abs Lists" and had misused information consisting of the data in those tables that was alleged to have been disclosed to them in confidence. In an 142 paragraph judgment that discussed every aspect of copyright and database law from TRIPS to the interpretation of EU directives, Mr Justice Arnold threw out the claim for copyright infringement on the ground that copyright did not subsist in "the PM Abs Lists" but allowed the claim for database right infringement and breach of confidence. In the last paragraph of his judgment, his lordship said:
 "I cannot part from this case without expressing my concern that it should have come this far. I fear that the costs will have been out of all proportion to what is at stake. That is regrettable in any litigation, but particularly so where public money is involved."
As an unfortunate council taxpayer of the defendant county I say amen to that.

Why the Copyright Claim Failed
The "PM Abs Lists" consisted of 
"a list of 33 pairs of PM Abs addresses covering 25 different Nokia models. Each address consists of eight alphanumeric digits, representing four bytes of binary data in hexadecimal notation. For example, for model 1100 the addresses are 017F0000 (start) and 01FFFFFF (end). In the case of model 6230 there are three pairs of addresses, one each for firmware revisions identified as 3.xx, 3.40 and 5.xx. In the case of some other models, such as 6510 and 7260, more than one pair of addresses is given, but without identifying the relevant firmware revisions."
Counsel for FTS submitted that copyright subsisted in the PM Abs List since 
(i)    it was a table, or alternatively a compilation, other than a database, 
(ii)   it was the author's intellectual creation and 
(iii)  the author satisfied the qualification requirements under the 1988 Act. 
Counsel for the defendants disputed points (i) and (ii), but not point (iii). In relation to point (i), he submitted that the PM Abs List was a database.

The judge noted that s.3A of the Copyright, Designs and Patents Act 1988 provides that a database is only original if, by reason of the selection and arrangement of its contents, the database is its author's own intellectual creation. By contrast, s.3 contains no corresponding provision in relation to a table or compilation other than a database. The "PM Abs List" were a collection of numerical data.   Although copyright did not subsist in the individual items of data his lordship held at paragraph [88] that the PM Abs List was a table which is a database, albeit a very simple one.   The PM Abs addresses in it were both systematically arranged and individually accessible, because the List was arranged into columns and rows. The first column listed the model number, the second column listed the start address and the third column listed the end address. Thus one could use the notional column headings and row labels as primitive indices or keys to retrieve a particular start or end address for a particular model of phone.  However,  counsel for FTS had conceded that, if the PM Abs List was a database, it was not protected by copyright since it was not the author's own intellectual creation by virtue of the selection and arrangement of its contents and in his lordship's judgment that concession had been rightly made.  The author had not selected the contents. They were acquired as a matter of happenstance over time.  The arrangement was the most obvious and basic one possible. The recitals to the Database Directive indicate that copyright in a database covers the structure of the database but the PM Abs List had no structure and therefore was not entitled to copyright protection.

Whether Copyright would have been infringed
Although unnecessary to his judgment, Mr Justice Arnold went on to consider whether copyright would have been infringed had it subsisted in the database and whether any of the defences to copyright infringement would have availed the police. His lordship decided both of those of those points against the boys and girls in blue. Similarities between the claimant's list and the defendants' raised a presumption of copying which the rozzers failed to rebut. Their arguable defence would have been fair dealing and the conditions for that defence had not been fulfilled.

Database Right
Having found that the "PM Abs List" was a database and that it had been reproduced by the defendants there was no serious defence to the claim for database right infringement.

Breach of Confidence
Like Judge Pelling QC in the Reggae Reggae sauce case, Mr. Justice Arnold referred to the well known formulation of the action for a breach of confidence in Coco v A.N. Clark (Engineers) Ltd [1969] RPC 41 at 47:
"First, the information itself ... must 'have the necessary quality of confidence about it'. Secondly, that information must have been communicated in circumstances importing an obligation of confidence. Thirdly, there must have been an unauthorised use of the information to the detriment of the party communicating it."
The judge held that the PM Abs List did have the necessary quality of confidence at the relevant date since it was valuable information collated by FTS through the exercise of skill, judgement and labour which was not in the public domain. Counsel for the coppers mounted an argument to the effect that the PM Abs List did not have the necessary quality of confidence because FTS had not taken sufficient steps to protect the confidentiality of the information. In his lordship's judgment that was immaterial, because this is not a case where FTS had to establish that the information had the status of a trade secret. The police were or should have been aware that that this information gave rise to an obligation of confidence and this obligation was breached when they made use of it.

Like all of Mr Justice Arnold's judgments this case is chock full of citable material and I have bookmarked it under "copyright", "database right" and "confidence" in my "skelly" file for that very reason. I have a lot of sympathy for the claimants over the subsistence of the copyright point.   Maybe the CJEU will throw developers in their position a bone when it hears Football Dataco Ltd and Others v Yahoo! UK Ltd and Others [2011] RPC 9, [2011] ECDR 9, [2010] EWCA Civ 1380.   In the meantime, anybody who wants to discuss this case or discuss copyrights, database rights or the law of confidence is welcome to call me on 0800 862 0055 or fill in my contact form.

05 January 2012

Is there any IP in Recipes? Reflections on the Reggae Reggae Case

Most of us will have eaten so much over Christmas that food is likely to be one of the last things on our minds. Nevertheless, I was put in mind of food yesterday by two things. First, a Linkedin connection with Aunty Bernadette George, the owner of "Smokey Bites" whose African and Caribbean catering service is famous throughout London and beyond. Secondly, I read Judge Pelling QC's decision in Bailey and another v Graham and Others [2011] EWHC 3098 (Ch) (25 Nov 2011), "the Reggae Reggae Court Case" as the Levi Roots website put it.

Aunty Bernadette and Levi Roots are  both known to the legal profession though, in Aunty Bernadette's case, entirely in a good way. One of her testimonials comes from one of my instructing solicitors and her list of customers includes the Middle Temple and "De Silver Chambers" which I assume to be Argent Chambers (the chambers of Herendra de Silva QC).

The Reggae Reggae court case was decided entirely on the facts.   The judge put the claimants' case as follows:
"The claimants' case is that the Product is derived directly from the first claimant's own unique and secret recipe for jerk sauce that they maintain was supplied by the first claimant to the first defendant only following an agreement between each of the claimants and the first defendant that they would together exploit the commercial opportunities represented by the first claimant's sauce and would divide the profit to be derived from that exploitation on an equal basis. The claimants' only pleaded case is that following the making of this alleged agreement the first claimant showed the first defendant how his sauce was prepared and what ingredients are used – see Paragraph 11 of the amended Particulars of Claim [1/5] and Response 46 to the Part 18 Request for Further Information in relation to the Particulars of Claim [1/25]. It is alleged that thereafter the first defendant sought to exploit the first claimant's recipe for his own benefit in breach of the alleged agreement. If and to the extent there was no agreement as alleged, then the first claimant alleges that the information concerning the first claimant sauce was imparted to the first defendant in circumstances that attracted the duty of confidence and that the alleged exploitation by the first defendant of the first claimant's recipe thereafter constituted a breach of that duty."
His lordship found himself unable to accept the evidence of either the claimants or the defendants and his job was not made any easier by the paucity of contemporaneous documents. As the burden of proof was on the claimants and as they had failed to discharge it he found for the defendants.

There was only one bit of law in the case and that was towards the end when he considered the claim for breach of confidence. The judge directed himself correctly at paragraph [102] that "in order to succeed, the first claimant must show that that which he claims confidence in (his recipe) was imparted to the first defendant in circumstances importing an obligation of confidence - see Coco v. A.N.Clark (Engineers) Limited [1969] RPC 41 at 47." Having found no agreement between the parties on the contract claim he concluded that there was no prospect of the claimant's satisfying that requirement.

However, and this is where the interesting bit starts, Judge Pelling QC questioned at paragraph [104] whether the recipe on which reliance was placed by the claimants is sufficiently certain to have the necessary quality of confidence about it to found a claim for breach of confidence.  He set out his concerns in the following paragraphs:
  1. .".................... It is sufficient to note that the recipe is riddled with imprecision as for example "2-3 lbs of chopped onion …". This recipe was to prepare 25 litres of sauce. Whether 2lbs or 3 lbs of onions are used will make a difference and perhaps a significant difference to the taste of the end product. Similar points can be made by reference to the fact that the recipe does not state whether the seeds should or should not be removed from the Scotch Bonnet peppers, refers to 5-7 whole chopped garlic which is as imprecise as the specification in relation to onions and is significant for the same reasons. Contrary to what the first claimant considered to be the position, soy sauce and browning are different substances with different flavours and different properties. However, the recipe says merely that "150 mls of soy sauce/browning …" should be used. "All Purpose seasoning" is specified but the evidence shows that different proprietary brands of such seasoning contain different herbs with different flavours in consequence.
  1. However there are two points which to my mind fatally undermine the notion that this recipe is capable of supporting a claim for breach of confidence. First, it provides that the cook should add "… water to dilute to gain the required thickness and strength …". No two chefs using the recipe are likely to get the same outcome following a direction of this sort. Some will produce sauce that is runnier and/or weaker than others. The only methodology specified is to blend without specifying for how long or to what consistency. It is then said that the ingredients should be mixed together with ketchup and then stir in water and "… add the vinegar, keep stirring all the time, keep tasting until desired taste is reached.". This emphasizes what must now be obvious that there is nothing special either about the ingredients or the methodology of making them into a sauce what matters is the strength or weakness and/or taste of the sauce which is a matter for individual preference to be achieved by adjusting the contents of the product.
  1. The recipe contains no provision concerning cooking although the first claimant maintained in the course of his evidence that the sauce was cooked – see T1/143-144. If it is to be cooked (and Ms Ballantyne thought it was [T4/138] but Mr. Sadiki Bailey thought it was not [T3/79]) the evidence was (and it is in any event obvious) that the effect of cooking would be to alter the flavour of the end product. If the first claimant is correct and his sauce is to be cooked then this introduces a further random element because the recipe is entirely silent on whether the sauce should be cooked and if so for how long and at what temperature. On the first claimant's own evidence the outcome could be variable. According to him, when he was in hospital in 2004, he first supplied his recipe to his chef and then to his son. The chef was unable to create a sauce from the information supplied or at any rate one that was useable. That was why what he maintains is the same information was supplied to his son Damian. There is every reason to doubt the accuracy of this evidence. The claimants' case as to this incident had changed in material respects. But that does not matter for present purposes. If a presumably competent professional chef cannot make a sauce from the recipe that replicates what the first claimant's sauce was like then the recipe is obviously wanting in particularity.
  1. Finally there is an added difficulty. The ingredients used are completely standard and would have to be listed on a sauce that was sold to the public as such. Thus the confidence would be capable of existing only in the quantities used and the methodology of preparation. Those elements are as I say too imprecise to enable the repeated preparation of a product to a consistent standard. In those circumstances I do not consider this recipe is sufficiently well developed to be capable of being confidential information."
Finally, the judge doubted whether the recipe was ever secret in any real sense at all. It was on the first claimant's own case supplied to his chef in 2004 as well as to his son. He took no steps to ensure that when he prepared the sauce he was on his own. He made no attempt conceal what he was doing from two of the witnesses. He was on his evidence happy to demonstrate the making of his sauce at the alleged demonstration not merely to his supposed partner the first defendant but also to a Mr. Hoffman who was not only an experienced chef but also the proprietor of a rival cafĂ©. No confidence was claimed in the recipe when it was set out in the response to a Part 18 request.  

The failure of the claim in confidence has made me ask myself what intellectual property could possibly subsist in a recipe. 

Copyright, perhaps, if the recipe is original. My late Aunt Nelly, who studied domestic science in what later became Manchester Metropolitan University's law school and was an excellent cook, wrote down hundreds of recipes for such delicacies as Lancashire hotpot like the dish in the picture. But were any of them original? If they were dictated by her teachers any copyright subsisting in the recipe would belong to them or more likely the domestic science school that employed them.   My late aunt was born at the beginning of the last century so the relevant statute would have been the Copyright Act 1911 s.5 (1) (b) of which would have applied. Another problem with copyright is infringement.   Making jollof rice (one of my favourites and a dish supplied by Aunty Bernadette) to a recipe is not one of the acts restricted by s.16 (1) of the Copyright, Designs and Patents Act 1988.

What about performers' rights? After all since my dear friend @Msnoeticat kindly restored my TV reception following the digital switch over I have noticed an enormous number of cooking programmes on telly. Certainly there is copyright in a broadcast but is a cooking demonstration a performance within the meaning of the Act? S.180 (2) defines a "performance" as a
(a) a dramatic performance (which includes dance and mime),
(b) a musical performance,
(c) a reading or recitation of a literary work, or
(d) a performance of a variety act or any similar presentation,
which is, or so far as it is, a live performance given by one or more individuals;
If a chef is a performer then why not a footballer, a schoolmaster or even the poor so and so on a help desk. Barristers even!

I suppose confidence could subsist in a recipe. I once won an interim injunction for a company making glazes to restrain one of its R & D personnel from joining a competitor on the grounds that the recipes for the glazes were confidential information. But these were very much more precise than the sauce recipe in the Reggae Reggae case and they were cooked up in applicant's R & D department by chemists with PhDs. The recipe for Coke or Chartreuse might fit the Pelling criteria but how much else?

That leaves only trade marks if you have a sign that is capable of registration but, remember, it must be put to genuine use within 5 years of registration otherwise it can be revoked under s.46 (1) (a) of the Trade Marks Act 1994.

Just before I go, Auntie Bernadette has asked me to tell all my friends which include you, gentle readers, that she has opened a restaurant at called "Across Continents" at 177 Streatham High Road, London SW16 6EG. You can book a table on +44 (0) 203 441 6795 and yes she does serve jollof rice at an unbelievably reasonable £6.80. I wonder whether she could be encouraged to open a branch in the North.

Copyright: Hooper Calls for Evidence

The first of Professor Ian Hargreaves's recommendations in his report Digital Opportunity was that "Government should ensure that development of the IP System is driven as far as possible by objective evidence." In carrying out his feasibility study on a digital copyright exchange Richard Hooper has called for evidence on:

(1) whether the copyright system really is unfit for purpose; and
(2) the correctness or otherwise of his suggested definitions.

A copy of the call for evidence can be downloaded from the IPO's website and his terms of reference can be viewed here. Responses to the call for evidence have to be submitted by email no later than the 10 Feb 2012.

Jane Lambert "IP Policy: Does Hargreaves say anything new?" 24 June 2011

02 January 2012

Patentability of Computer Programs: Halliburton Energy and Protecting Kids

It is some years since I last discussed software patents ("Software Patents: January Patents Ltd.'s Application", 16 Jan 2009, "Software Patents: New Guidance from the IPO", 29 Dec 2008 and "Patents: Software Protection after Symbian and Bilski" 11 Nov 2008) and Judge Birss QC's decision in Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat) (5 Oct 2011) and Mr. Justice Floyd's in Re Protecting Kids the World Over (PKTWO) Ltd [2011] EWHC 2720 (Pat) (26 Oct 2011) justify a return to the topic.

The Statutory Exclusion
Most people in intellectual property and many in information technology know that art 52 (2) of the European Patent Convention and s.1 (2) of the Patents Act 1977 exclude from patentability:
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
(d) presentations of information.
However, the exclusion is not total. Art 52 (3) and corresponding words in the Patents Act 1977 provide that these provisions "shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject‑matter or activities as such." It has also been noted many times that there is no corresponding exclusion in the patents legislation of the United States, Japan, China or other leading industrial nations.

Effect of the Exclusion
In practice, the "as such" provisions have enabled many patents to be granted for software implemented inventions both by the European Patent Office and the Intellectual Property Office. As Judge Birss QC explained in Halliburton Energy Services at paragraph [27]
"at the heart of the law is the consistent principle that an inventor must make a contribution to the art (that is to say the invention must be new and not obvious) and that contribution must be technical in nature (susceptible of industrial application and not within one of the areas excluded by Art 52(2))."
He added that he took that observation from Mr Justice Kitchin in Re Crawford's Application [2006] RPC 11 which was decided just before Aerotel and in his lordship's view it was still good law.

In deciding whether a claim is "technical in nature" and "not one within the seas excluded by art 52 (2)" Lord Justice Jacob proposed the following 4-stage approach:
  1. Properly construe the claim
  2. Identify the actual contribution
  3. Ask whether it falls solely within the excluded subject matter, and
  4. Check whether the contribution is actually technical in nature.
Judge Birss added at paragraph [30] that "an invention which makes a contribution to the art which is technical in nature (to echo Kitchin J's words in Crawford) is patentable even if it is implemented entirely on a computer and even if the way it works is entirely as a result of a computer program operating on that computer." It is necessary to consider "what task it is that the program (or the programmed computer) actually performs. A computer programmed to perform a task which makes a contribution to the art which is technical in nature, is a patentable invention and may be claimed as such. In those circumstances the patentee is perfectly entitled to claim the computer program itself. If the task the system performs itself falls within the excluded matter and there is no more to it, then the invention is not patentable. Mr. Justice Floyd endorsed Judge Birss QC's approach at paragraph [15] of his judgment in Re Protecting Kids the World Over.

Scope of the Exceptions
Lord Justice Jacob's approach does not dispose of all difficulties. For instance, in Halliburton Energy Judge Birss QC had to decide between a wide interpretation of the words "schemes, rules and methods for performing mental acts" or a narrow one. The wide interpretation excludes "schemes, rules and methods for performing mental acts" that can be carried out mentally regardless of whether they are carried out in that way. The narrow interpretation catches only those schemes, rules and methods that are actually carried out mentally. Having considered the authorities, the judge concluded that the mental act exclusion is to be construed narrowly.

Protecting Kids
in Re Protecting Kids the World Over the hearing officer had held that a claim for
"A system for monitoring electronic communications comprising:
  • a data communications analysis engine for packet sniffing and assembling packets for further analysis of their content;
  • apparatus as claimed in any one of claims 20 to 32 for providing an aggregate alert level;
  • a security warning algorithm adapted to provide at least one of a number of alert notifications to users based on predetermined user settings in response to the raising of the aggregate alert level;
  • a request and response engine for sending a notification request to an administrator/user advising the aggregate alert level, receiving a response from the administrator/user comprising one of a plurality of actions to be taken wherein the actions include one of alerting a user in an electronic communication, terminating the electronic communication and shutting down the user equipment;
  • a system log engine for recording and categorising communications data, actions taken and states within the system."
was not patentable because it related to a computer program and to a method of performing a mental act as such. The applicant appealed. Shortly before the hearing of the appeal Judge Birss QC's judgment in Halliburton Energy was published whereupon the Comptroller indicated that he relied solely upon the computer program exception.

The Comptroller's counsel argued that the claim was nothing more than a computer program as such. She submitted that all the claim does is to inform the user or administrator of the result of the data analysis performed by the computer program and that was not a technical process. The judge did not accept that argument. The invention sent a message to the user or administrator's mobile or other remote terminal that the system had found and was evaluating potentially undesirable and that was qualitatively different from a system that merely displayed the result of the processing on a screen. It amounted to an improved monitoring system which was an advance on the prior art.

Both of these cases are important but I think Halliburton Energy is the one most likely to be cited. Judge Birss QC's analysis of art 52 (2) and (3) and the authorities should make it considerably easier to get computer implemented inventions past the examiner. With the benefit of hindsight his elegant reconciliation of Mr Justice Pumfrey's decision in Halliburton v Smith [2005] Info TLR 323, [2005] EWHC 1623 (Pat), [2006] RPC 2 with later decisions seems obvious. Perhaps European industry is not at such a disadvantage to competitors in countries without the equivalent of art 52 (2) after all.