Licensing Update - IPR in business (June 2003)

Arsenal wins on replay (Arsenal v Reed CA [2003] EWCA Civ96)

Court of Appeal affirms ECJ decision. Unauthorised products bearing Arsenal's name could not be sold by a trader, even if it was clear that they were not official AFC merchandise. Judgement in Arsenal's favour because Reed's use was such as would be perceived by some customers as a designation of origin. See Court of Appeal judgement on www.courtservice.gov.uk/judgmentsfiles/j1751/arsenal_v_reed.htm

R v Johnstone [2003] UKHL 28, 22 May 2003 House of Lords.

Bizarre situation with the Court of Appeal judgement in Arsenal v Reed handed down one day earlier. Johnstone was charged under section 92(1)(c) of the Trade Marks Act 1994 with being in possession of bootleg CDs bearing a trade mark consisting of the name of specific performers eg Bon Jovi. The House of Lords held that civil infringement of the trade mark is a prerequisite of criminal liability (section 92) and that use by the defendant as a trade mark is a prerequisite of criminal liability under section 10, the test being whether the consumer would take the sign as an indication of origin. Non trade mark use would not constitute infringement and this is what the House of Lords understood the ECJ to have ruled in Arsenal v Reed. See: www.parliament.the-stationery-office.co.uk/pa/ld200203/ldjudgmt/jd030522/john-1.htm

Irvine & ors v Talksport Ltd: [2003] EWCA Civ 423

Court of Appeal (01.04.03). A brochure promoting a radio station that had featured a doctored photograph of a racing driver (Eddie Irvine) holding a radio bearing the station's logo had been a false product endorsement and supported passing off action. The image on the front of the leaflet had been the clearest representation that Irvine had endorsed Talk Radio. The principles of what would be a reasonable fee for Irvine's endorsement of Talk Radio had been identified in General Tire and Rubber Company v Firestone Tyre and Rubber Company Ltd (1976) RPC 197. Applying those principles to the facts of this case and taking into account evidence as to endorsement deals signed by Irvine led to the conclusion that Talk Radio would in all probability had to pay at least £25,000 in order to do lawfully what it had done unlawfully. In the circumstances the appropriate award was £25,000. See: www.courtservice.gov.uk/judgmentsfiles/j1677/irvine_v_talksport.htm

Youatwork Ltd and another v Motivano Ltd (02/05/03).

The Respondent owned the MVL website platform and had entered into a licensing agreement with the applicants' who were members of the same group of companies. The principal agreement provided, amongst other things for the applicants' access to the MVL technology, Cable and Wireless plc to host the servers on behalf of the applicants and for the ability of the applicants' to terminate at reasonable notice. Subsequently the applicant served lawful notice of termination and following some correspondence, notified the respondent that if the respondent required access to the website hosting area they would need to give notice and be accompanied by employees of the applicants. The Respondent's then gave notice and moved the MVL website to their own hosting area. The applicants were successful in (1) obtaining a mandatory injunction requiring the respondents to reinstall the MVL technology to their selected hosting system and (2) for an injunction prohibiting further interference by the respondent until the end of the termination notice period.

Royal Society publishes report on the effects of IP on the conduct of science (14/04/03).

The current system for granting patents in the UK is encouraging a 'gold rush mentality', which restricts the free flow of scientific information and has damaging effects on both science and society, according to the report. The report titled "keeping Science Open: the effects of IP policy on the conduct of science expresses concern that in new fields such as genetics and computing researchers are being held back by patents that are too broad in scope, are not truly inventive and have little practical application. For further information and to view the report see the Royal Society website http://www.royalsoc.ac.uk

ICC (International Chamber of Commerce) Roadmap

Now in its fourth year the ICC (International Chamber of Commerce) Roadmap has established itself as a vital tool for any professional wanting a snapshot of the IP landscape. The Roadmap is compiled by more than 240 IP experts who make up the ICC's Commission on IP and this year looks at emerging IP issues such as information products, indigenous rights and biotechnology and genetic issues. See http://www.iccwbo.org/

Cray Valley Ltd v Deltech Europe Ltd & Others (16.04.03 EWHC 728 Ch.D)

A breach of confidence claim failed as the information did not have the necessary quality of confidence and was not imparted in circumstances giving rise to an obligation of confidence, but an infringement of copyright claim relating to the same information succeeded See www.courtservice.gov.uk/judgmentsfiles/j1713/cray_valley_v_deltech.htm

Germany puts levy of 12 Euros on PCs.

The German lower house has agreed to a flat levy of 12 Euros on PCs to compensate rightsholders for private copying as part of a bill transposing the EU Copyright Directive into national law. Angry hardware manufacturers complained that rightsholders will now end up getting both the levy plus royalties from pay-as-you-go measures, mainly through improved digital right management (DRM) measures on DVDs, CDs and new recording devices. Royalty collecting societies claim that continuation and extension of the levy system (in place since 1960s) implies a right to private copying.

Transferring ownership of domain name ending .uk

Transferring ownership of domain name ending .uk will from 19th May carry a fee of £30 plus VAT. The fee is being introduced by Nominet UK, the registry for all .uk domain names to cover increasing costs.

FIFA World Cup 2002 game banned in Germany.

German Court ruled that the Californian based computer games company, Electronic Arts can no longer sell FIFA World Cup 2002 game in Germany because the Bayern Munich and German national team goalkeeper, Oliver Kahn did not give permission for his image to be used. Electronic Arts must compensate Kahn and face a fine of 250,000 Euros if they do not take product off the market. According to Gamesindustry.biz EA had obtained a licence from both the European Football Players' Federation and the German Bundesleague. However, Kahn is not a member of either organisation so the game must be withdrawn.

Patent Office issues notice on patentability of inventions involving human stem cells.

The Notice sets out the Patent Office's general practice and states that it is ready to grant patents for inventions involving human embryonic pluripotent stem cells. See http://www.patent.gov.uk

Internet company

Internet company behind cd-wow.com is being pursued in the High Court by the British Phonographic Industry (BPI) and others. The BPI claims that its members are the owners or exclusive licensees of the UK copyright in the recordings being offered for sale and the discs are being imported without their consent. The act of putting into circulation in the EEA copies not previously put into circulation in the EEA by or with the consent of the copyright owner is an infringing act.

Cambridge Antibody Technology (CAT)

Cambridge Antibody Technology (CAT) is in dispute with Abbott Laboratories (ABT) over royalties payable on sales of the rheumatoid arthritis potential blockbuster drug (ABT estimate annual sales of more than £640m) called Humira. In 1995 CAT licensed its phage display technology to a subsidiary of BASF that is now part of its development partner ABT. Humira is a product of the technology and is the first humanised antibody to be approved by the Food and Drug Administration. The drug also recently received a positive opinion in Europe from the EMEA. The problem for CAT is a vaguely worded licence agreement. ABT have told CAT that according to the terms of the licence it has the right to deduct from its payments to CAT other IP licence fees. If such a claim is upheld then royalty payments from Humira may fall to 1.5% of revenue from about 4%.

Carlton Film Distributors Ltd v VDC Ltd (19/03/03)

Application by Carlton (C) for a Norwich Pharmacal order (see Norwich Pharmacal Co v Commissioners of Customs & Excise (1947) AC 133) against VDC Ltd (VDC). C granted licences to VCI in relation to certain films. C believed that VCI had breached licences by manufacturing or causing the manufacture of too many videograms but was unable to obtain the information required to plead an allegation of breach of contract. VDC was a duplicator and was contracted by VCI to reproduce videograms. The order sought was granted as such information went to the heart of the potential claim.

OK's exclusivity in Douglas/Zeta-Jones wedding photos upheld on basis of trade secret rights.
High Court 11th April 2003.

The High Court found Hello! Magazine to be liable for breach of confidence, without need for any new 'privacy' law. Hello! published photographs obtained by an intruder. The contract with OK magazine was based on commercial 'trade secret' rights and Hello! acted 'unconscionably'. The position would have been less strong if only private/personal confidentiality was involved. Full decision at: http://www.courtservice.gov.uk/judgmentsfiles/j1700/douglas_v_hello.htm