2011 IP Developments Conference: 4

2010 was a fruitful year for breach of confidence actions, began John Hull (Memery Crystal), and unusually they weren't all employment cases.  John's analysis commenced with a review of Tchenguiz v Imerman, a battle over documentation needed in the course of a divorce settlement. In this decision the Court of Appeal reversed the previous rule that, in divorce proceedings, the parties can obtain and make use of pretty well any information they can get their hands on.  It now seems that the Hildebrand rule does not apply and that confidentiality can exist in a relationship even after it has broken down.

Next John reviewed Veolia v Nottinghamshire City Council, in which the Court of Appeal gave a strange decision on the quality of information as a form of property in which it failed to spot the well-established decision of Boardman v Phipps. This was a strange decision, he said, and looked as though it was wrong.

John then moved on to JN Dairies v Johal Dairies, in which confidential customer information was stolen by a former employee of the claimant, whose actions were recorded on CCTV.  An appeal was lodged on the basis that the trial judge was biased lacking objectivity on the basis that he had allowed the claimant to broaden its submissions from breach of confidence to cover bribery and conspiracy; the defendants said that they were not in a position to cope with this.  In truth there may have been a lapse in terms of case management, but the trial judge's decision was upheld.

Employment cases were covered too: Phoenix Partners v Asoyag and Tullett Prebon v BCG (the case of the eight missing BlackBerries).

Non-disclosure agreements (NDAs) lay at the heart of Jones v Ricoh (UK) Ltd, where two businessmen who were ousted from a business by venture capitalists were entitled to sue them for breach of the NDAs where information disclosed by them was effectively used against them.

John ended with a selection of privacy cases, of which the most significant was JIH v News Group, where both parties agreed to keep the claimant's identity and the subject-matter of the application secret.  The court agreed to keep the subject-matter secret but not the claimant's name, having regard to the interests of the public and third parties.

Closing the session, and bringing a very busy day's conferencing to an end, was Ben Allgrove (Baker & Mackenzie), speaking on the recent England and Wales case law on extended passing off, as featured in the VODKA/VODKAT ruling last year by Mr Justice Arnold, upheld here by the Court of Appeal. Ben ran through the principles involved in protecting terms which, while they might seem quite generic, have some "cachet".

Survey evidence was discussed in this case; it always seems to arise somehow. Here the claimants did not challenge the defendants' request to run a survey, but did attack it once it was submitted.  Here, again, this is a case management issue -- but the claimant was entitled to challenge it once it was completed.

The bottom line is that, on the assumption that actions of this  nature are not anticompetitive, disclaimers and clear flagging of the fact that an alcohol-based drink like VODKAT is not actually vodka should be utilised if a trader wants to avoid the risk of extended passing-off litigation from a user of the "cachet" term.

Ben then discussed the latest England-and-Wales development in trade mark infringement and passing off -- recognition of the notion of "initial interest confusion" -- in light of the OCH-ZIFF ruling.  This could have major repercussions for uses of trade marks as keywords.

2011 IP Developments Conference: 3

The post-prandial session of this year's IP Round-up conference, organised by CLT, began with a description by David Musker (Jenkins) of the current state of European design law, focusing on the main subject of litigation under Community design law -- the cancellation of registered Community designs.  This presentation finished with David's account of the General Court's decision in Beifa, in which both the Cancellation Division and Board of Appeal of OHIM assumed that the challenge to the registrant's design for a writing device was based on the applicant for cancellation's figurative (two-dimensional) mark and the three-dimensional design.

David followed by introducing a new cancellation case, T-513/09 Baena Grupo v OHIM (available only in Spanish and French), in which it was assumed that the informed users of the two designs represented here -- children -- would distinguish them by relation to their facial expressions rather than by their many similarities.

David concluded with a poll of participants as to whether the vacuum cleaner products of Dyson and Vax (which you can view here) were made to the same design, explaining how the judge in Dyson v Vax approached the comparison between them, factoring in the criterion of functionality and its effect upon design.

"Wake up and smell the copyright!", proclaimed copyright consultant and 1709 Blogger Hugo Cox in his appraisal of the present state of copyright protection and enforcement.  Hugo first subjected the concept of originality to his scrutiny, considering the impact of the ECJ's ruling in Infopaq upon the High Court for England and Wales ruling in Meltwater. Further issues relating to protected subject-matter are awaited in the SAS and Dataco references to the ECJ.

Moving on to infringement and remedies, Hugo reviewed the important decision in Experience Hendrix v Times Newspapers, among others. Observing that actions brought against a large number of alleged defendants were not cost-effective, despite the availability of the Patents County Court, he described the statutory solution to large-scale online infringement via the Digital Economy Act 2010.  The earliest that the British version of "three strikes" can come into force is 2012, and further legislation -- which may not be politically popular -- will be needed for this purpose.

What about suing intermediary websites for "authorising" infringements by creating the impression that acts of copyright infringement are licit?  This issue was raised in the context of Newzbin, a case in which the facts were quite different to those of for example the BitTorrent technology but where some of the same legal concepts might be applicable. Currently two references are before the ECJ as to the extent to which injunctive relief may be available against intermediaries given that, they are under no general duty of monitoring their content, they might reasonably be expected to cease repeating or prevent the occurrence of infringements of which they have  knowledge.

Hugo finished with a short summary of the saga of the Google Book Search, which still awaits a final settlement.  The number of books scanned into Google Book Search now stands at 15 million, and the figure continues to rise.

Leading up to the coffee break, Mark Ridgeway and Jim Ford (Allen & Overy) spoke on intellectual property licensing.  Mark started off by praising data licensing and the means of calculating indices, topics for which the banking sector has a voracious appetite -- and which do have an IP dimension.  If there's a contractual licence, remember that a licensee's acts are bounded by the limits of what is licensed, not by the scope of the IP right itself.  Mark commenced with a review of GlobalCOAL, a recent decision that emphasised precisely this point -- and which is a reminder that an IP licence might even carry post-termination restrictions on the licensee that go beyond the scope of the acts restricted by the IP rights themselves.

Mark then reviewed Butters, which considered the effects of an "anti-deprivation principle" (that there cannot be a valid contract that a man’s property shall remain his until his bankruptcy but that, on the happening of that event, the property goes over to someone else, being taken away from his creditors). The trial court felt that an IP licence could be terminated at the point at which the licensee became insolvent, but the Court of Appeal disagreed.

Taking over, Jim considered the meaning of the word "perpetual" in a software contract in BMS Computer Solutions v AB Agri. According to the Court of Appeal, the word "perpetual" -- taken in its context -- meant "of indefinite term" rather than "forever". Finally, Jim reviewed Oxonica v Neuftec, a patent licence which turned on the meaning of the tiny word "or".  Here, the parties sometimes clearly meant "and" and sometimes "or", depending on its context.

2011 IP Developments Conference: 2

The second session, launched by Aaron Wood (Wood TMD but, from next week, Grant Spencer), reviewed recent and current developments in trade mark applications and oppositions. He opened with an explanation of the IP TRANSLATOR application, which is currently on appeal to the European Court of Justice. Aaron explained how -- despite its pretensions to harmonisation -- Europe is divided between those jurisdictions that regard an application for a mark in respect of a Nice Class heading covers only the words used in the heading or all the goods or services within that heading.  Thus "musical instruments" is the class heading for Class 15, which includes "music stands"; should an application to register a trade mark for "musical instruments" cover stands too?

The Court of Justice's Lego ruling was next for Aaron's scrutiny. Noting that Community trade mark protection for the Lego brick shape was first sought in 1996, he observed how much it had been litigated during that period.  He then contrasted the decision to cancel the mark with other registrations in which a shape had been registered without any dispute as to its registrability on grounds of functionality or distinctiveness.

Rider with coat-tails ...

Darren Meale (Herbert Smith) then tackled some trade mark enforcement and litigation topics. Darren reviewed the issues of comparative advertising and obtaining unfair advantage through the use by a smell-alike perfume seller of the brand name of the famous perfume the scent of which was emulated by that smell-alike product -- the subject of the European Court of Justice ruling in Case C-487/07 L'Oreal v Bellure, excoriated by the referring court here. The ECJ concentrated not on the damage to the brand referred to, but to the advantage secured by a free rider "hanging on to the coat-tails" of that brand.

The failing of this ruling to distinguish be.tween "advantage" and "unfair advantage" is serious, but the courts have not subsequently applied this rigidly; they've still required some extra ingredient, in addition to "advantage", before agreeing that an advantage is unfair -- as has been shown by the Specsaver case.  Darren then showed us his handy "free-riding spectrum" chart, ranging from counterfeiting at one end, as the extreme form of unfair advantage, to supplying a market for a breakthrough market where the first business on to the market can't meet demand.

Darren then reviewed the Lidl/Leclerc supermarket dispute over price comparisons made on the basis of the contents of a basket of products: do the comparisons have to be made on the basis of identical goods, and are the prices of the goods themselves representative of the shops' prices as a whole? The ECJ ruling gave a lengthy set of guidelines for national courts to apply.

Finally Darren looked at Google France and subsequent decisions on whether the sale and use of trade marks as search result keywords infringed trade mark rights, bringing us up-to-date with the pending Interflora litigation, where the question before the European Court of Justice is not whether AdWord use impacts on the trade mark's essential function but rather whether it confers an unfair advantage under Article 5(2) of the Trade Mark Directive.  He closed with a review of the Advocate General's Opinion in the pending eBay reference, where his advice was not to view liability for hosting infringing websites as a binary issue (liable/not liable) but rather to view the host's conduct as a whole within the context of the relevant trade mark and e-commerce litigation.

Method of exercising a cat:
patentable in the US under Bilski?

If speaking post-lunch is the graveyard  slot, it is something of a dislocated metaphor to describe the pre-lunch talk as the hors d'oeuvres. This function was tastefully discharged by Matt Fisher (Senior Lecturer in IP, UCL, and fellow Kat) in his "gentle guide to latest patent developments". Matt started with the sad saga of computer-implemented inventions and the much-pondered battle between the European Patent Office (EPO) and the British courts.  The European Patent Convention clearly excludes "computer program" as such from being patentable subject-matter -- but everyone agrees that some computer programs are patentable while others are not.  The Enlarged Board of the EPO was asked by its President to rule on a number of questions arising from the resulting uncertainty -- but in G 3-08 it ruled her questions inadmissible. Matt then reviewed the Enlarged Board's decision in detail, setting out with admirable clarity both its reasons for rending it admissible and for the reflection of its comments on its own earlier rulings. The bottom line is that, in addition to the relative bars to patentability based on novelty and inventive step, there was also now an absolute requirement of an "invention".  Surely the British courts would now have to take notice of the EPO's approach, he added.

Moving on to the Supreme Court's ruling last year in Bilski (on which see the AmeriKat here and here), Matt pointed out that there are no statutory exceptions to patent-eligibility corresponding to those in the European Patent Convention.  He contrasted the approach of the various US Supreme Court's justices and their attitude to the old "machine-or-transformation", having first traced that decision's antecedents from State Street and the rulings of the lower courts. That test would no longer be the sole test of patent-eligibility.  As Matt pointed out, the court's murmurings were in some respects not dissimilar to those emanating from the Enlarged Board of the EPO.

Finally Matt addressed industrial applicability, there being a new case to cite in Eli Lilly v Human Genome Sciences Inc, as well as a string of perpetual motion machines. Industrial application must be disclosed in the patent application, said the court, in a decision which is now winging its way to the Supreme Court and which might, with luck be the subject of more analysis next year.

2011 IP Developments Conference: I

Opening this year's annual Intellectual Property Developments round-up conference, organised by CLT, Trevor Cook (Bird & Bird) gave an overview of some of the international developments.  Starting with WIPO, Trevor noted that the almost inexorable upward trend in international filings administered by WIPO, following its 2009 blip, had continued again.  On the copyright side, WIPO had scored an "easy victory" with its treaty on copyright exceptions in favour of visually impaired persons.  However, some countries that are none too keen on copyright are viewed as seeing this as a stalking horse for further exceptions in favour of educational and other uses of copyright-protected works. Work on WIPO's Development Agenda continues apace, though with some rumblings of discontent from those who consider that this is not the course that an IP protection organisation should be taking.  Anxious developed countries should remember that the international order will not change, whatever course the Development Agenda takes, unless they agree to it.

Outside WIPO, there has been plenty going on, both in terms of Free Trade Agreements (FTAs, or "bilaterals") between the US or EU and third countries and with regard to the agreement of the final text of ACTA.  Looking at the FTAs, these have really been driven by the US and deal with numerous trade-related topics of which IP is just one.  At present the EU is negotiating a FTA with Canada, which has attracted criticism in Canada on account of patent linkage..

As for ACTA, which was attacked for its lack of transparency as well as for its content, the final version has jettisoned some of its original material but is still drawing criticism -- even for provisions which were happily accepted when they were incorporated into the TRIPS Agreement in 1994. ACTA is actually quite limited; it does not apply to patents or to regulatory data and does not demand "three stripes" treatment for file-sharers. Even if and when it comes into force, ACTA is deemed to be "entirely in accordance" with the EU's acquis.  


Trevor finally addressed the issues of the new regime for pan-European patents and courts for litigating them.  The Advocates General were deeply critical of the proposals for the court and its oversight by the European Court of Justice.

Taking over from Trevor was Tony Clayton (Chief Economist, Intellectual Property Office), who assured participants that the government spent no money other than that which it raised through its own fees and activities.  Tony gave a fascinating explanation of the government's drive to make IP policy evidence-based.

Tony alluded to some of the research recently commissioned by the late Strategic Advisory Board on Intellectual Property Policy (SABIP), which sought to get a handle on the economic value and impact of IP. This included collating data on the scale of the impact of the backlog in the processing of patent applications. The IPO has also sought to place IP assets within the context of intangible knowledge, so that their capture value can be ascertained at the point at which people pay for them and they show up in the country's Gross Domestic Product (GDP).  Knowledge and research results are now seen as part of the GDP, though branding and design currently are not. The economic impact of copyright is difficult to estimate, but its value is "horribly understated".  Why does this matter? Twenty years ago, tangible investment was greater than intangible investment, but now intangible investment is dominant. The IPO is also interested firms that don't use IP rights (the IPKat thinks this must mean "that think they don't use IP rights"). Tony commended the research reports on the IPO's website to the audience and concluded by listing the studies in which the IPO is involved, either by itself or with others.