- BTG is suing online retailers Amazon and Barnes and Noble (16/09/04) over the use of online marketing technology after failure to agree licence terms.
On 15 September 2004 British Technology Group (BTG) announced that it had filed suit in the Federal Court of Delaware against Amazon.com and BarnesandNoble.com (as well as against the smaller firms Netflix and Overstock.com) for infringement of US Patent 5 717 860. Amazon.com and BarnesandNoble.com are also accused of having infringed US Patent 5 712 979. The announcement followed an unsuccessful attempt by the parties to agree on commercially acceptable licence terms.
The patented technology, developed by Infonautics Corp, was acquired by BTG in 2002 and relates to tracking the navigational path of a user through the World Wide Web. It is used by the Defendants in their online marketing programmes.
Ian Harvey, BTG's Chief Executive Officer, commented: "We believe the patents are fundamental to the tracking of users for the online marketing programmes used by Amazon.com, BarnesandNoble.com, Netflix and Overstock.com, and that the commercial potential of the patents is significant."
BTG is claiming damages of an unspecified amount as well as an injunction against the future use of the technology.
- Kenyan Wildlife Service claim Leicester University and US biotech, Genencor (05/09/04) have not complied with the Convention on Biological Diversity (CBD) and illegally extracted the country's biological resources in relation to enzymes isolated from extremophile bacteria from soda lakes in the Rift Valley. The enzymes are used commercially to fade jeans. The CBD commits parties to "fair, equitable sharing of the benefits accruing from the utilisation of genetic resources".
The Kenyan Wildlife Service (KWS) has launched a multi-million dollar claim in the US against the Californian biotech firm, Genencor. The claim relates to the enzymes "Puradax cellulose" and "IndiAge Neutra" which can brighten fabrics without using bleach, and can soften denim to give it the commercially desirable "stonewashed" appearance.
The enzymes are derived from organisms discovered in the highly alkaline lakes of Kenya's Rift Valley, in 1992, by microbiologist Dr William Grant from Leicester University. The samples taken from the lake were subsequently sold to Genencor, and the extremophile genes responsible for making these enzymes were genetically engineered into bacteria, and cloned on an industrial scale. Genencor filed patent applications and have made more than $1m in sales to detergent manufacturers and textile firms.
The KWS claims that Grant and Genencor did not have permits to take the samples and, consequently, is claiming royalties deriving from what they have referred to as an "illegal extraction of the countries biological resources".
- First intellectual property (IP) crime strategy developed by the Patent Office is launched (10/08/04) as a blueprint to crackdown on the trade in counterfeit goods by Industry Minister.
The UK Patent Office takes the view that counterfeiting and piracy are clear and serious threats to business, consumers and government; resulting in the loss of money and economic knowledge. Consequently, on 10 August 2004, the Patent Office published the first National IP Crime Strategy, designed to co-ordinate the efforts of many enforcers and rights owners to tackle this problem.
The strategy brings together brand owners, police, trading standards and customs to:
- increase the sharing of intelligence between different agencies;
- improve training for those working at the front-line;
- better co-ordinate the agencies involved in the fight against intellectual property crime; and
- monitor progress and success by publishing an annual national enforcement report.
The Strategy may be viewed at www.patent.gov.uk/about/enforcement/ipbook.pdf
- Explora Group Plc v Hesco Bastion Ltd and The Trading Force Ltd (28/07/04). A contract was not subject to express or implied prohibition on assignment. One party to the contract was therefore entitled to assign the benefit of that contract to a third party without the prior permission of the other party.
- HSS Hire Services Group Plc v RMB Builders Merchants Ltd and Grafton Group (UK) Plc (29/07/04). Under a licence, the sale of the licensee to a third party constituted an event of default and breach of the licence. The third party purchaser of the licensee was guilty of wrongful interference with contract.
The claimant brought a claim for damages against the first defendant for alleged repudiatory breach of a licence agreement and against the second defendant for the alleged tort of inducing such a breach.
HSS Hire Services Group (HSS) was an international business hiring out tools for the building trade and domestic use either directly or through builders' merchants acting under licence agreements. RMB was a builders' merchant with five branches in the north of England. In June 2001, HSS and RMB entered into a five-year licence agreement that permitted RMB to run a tool hire agency under HSS's name. The agreement provided that a change of control of the licensee would constitute an event of default that would entitle HSS to terminate the agreement. In May 2002, RMB was sold to Grafton and HSS was informed. A number of calls were made between the three companies in respect of the sale and the licence agreement. However, the content of those calls was disputed. HSS contended that Grafton informed HSS in a telephone conversation that it did not wish to continue with the agency agreement as it had its own hire business. HSS and Grafton contended that no such conversation took place, and HSS was only informed of the sale.
It was held that the management of RMB and Grafton had known throughout that RMB's sale to Grafton, would inevitably terminate the licence agreement. Their relationship was that of two separate limited companies and of buyer and seller, not principal and agent. Their interests in relation to HSS were distinct. On the evidence, RMB's conduct with HSS constituted a refusal on its part to perform the licence agreement. RMB knew that its sale to Grafton would inevitably bring out the termination of the licence agreement and that it was an event of default on its part that would have to be treated by HSS as terminating the agreement when HSS discovered what Grafton's intentions were. Accordingly RMB, by the words and conduct of its representative, was in repudiatory breach of contract that HSS had to accept as terminating the licence agreement between them. Furthermore, Grafton had wrongfully interfered with the contract between HSS and RMB, as it knew that its purchase would inevitably result in a breach of contract by RMB or by its successor as it did not want the licence agreement to continue and was eager for it to end.
- Raks Holdings AS v TTPCOM Ltd (29/07/04). Claimant's application for an interim injunction restraining defendant from disclosing confidential information (and breaching obligations under a licence agreement) refused.
The claimant applied for an interim injunction restraining the defendant from making use of allegedly confidential information. The parties were involved in developing a new model of a mobile telephone handset with an integral camera. The claimant licensed software products and hardware designs in relation to a new mobile phone technology to the defendant. The claimant claimed that the defendant had breached a confidentiality agreement on the basis that the defendant had allegedly disclosed all or some of its confidential information to a third party and allowed that information to be used in the production of a handset by that third party. It was held that the claimant's application for an injunction was not reasonably arguable. The mere assertion of the label confidential on documents didn't mean they were necessarily confidential. It was the claimant's duty to ensure that the defendant knew what information was in issue. It was not good enough, to say the defendant could work it out for itself. In addition, the claimant's delay in applying for the injunction was fatal to its claim. The lack of urgency indicated that R did not really fear irreparable damage in the meantime.
The Government publishes its ten year investment framework (20/07/04) alongside the 2004 Spending Review.
Having consulted with the scientific community, businesses, charities, regional and devolved bodies, international contacts, as well as other key stakeholders; the government has published a framework setting out its ambition for UK science and innovation over the next decade.
The framework focuses on the contribution of science and innovation to:
- economic growth; and
- public services.
It then addresses the attributes and funding arrangements of a research system capable of delivering its goals.
The framework can be downloaded at the following web address:
www.hm-treasury.gov.uk/spending_review/spend_sr04/associated_documents/spending_sr04_science.cfm
- Lionel Sawkins v Hyperion Records Limited [2004] EWHC 1530 (01/07/04) Editor of classical music may be entitled to copyright protection in respect of his editions where they do not include any new notes. Record companies liable for unpaid royalties?
It was held that a claim to copyright in a new version of a musical work could not be rejected simply because the editorial composer has made no significant changes to the notes, whether by correction or addition. Such a test would be too rigid. Instead, the question to ask in any case where the material produced is based on an existing score is whether the new work is sufficiently original in terms of the skill and labour used to produce it.
The judgement for this case may be accessed at www.courtservice.gov.uk/View.do?id=2636