In the final chapter of the successful trademark infringement proceedings brought by Jack Wills Ltd against House of Fraser (Stores) Ltd, the High Court assessed the profits that the defendant retailer had to pay Jack Wills. The decision provides a useful explanation of the factors to be considered when undertaking an account of profits.
Section 52 of the Copyright Designs and Patent Act 1988 limits the duration of copyright in artistic works that have been industrially exploited with the copyright owner's consent to 25 years (ie, the same maximum protection available for designs). The government intends to revoke Section 52 in light of concerns raised by designers; but following further objections from businesses, controversial new repeal proposals have been drafted.
A recent High Court decision not only demonstrates the difficulty for trademark owners in enforcing descriptive trademarks (and the risk that those trademarks may be found invalid), but also highlights potential pitfalls where trademarks coexist within the same market. Also of interest is the judge's criticism of the Court of Appeal decision in Interflora with regard to the burden of proof for 'double identity' cases.
Existing legislation provides for protection against groundless threats in respect of IP infringement brought by a rights holder against a competitor. However, the relevant provisions have caused problems in practice and many consider reform to be overdue. Such reform was the subject of a recent Law Commission consultation, which also considered whether an unfair competition law may have a role to play going forward.
A recent High Court decision dismissed trademark infringement and passing-off claims in respect of television channel name 'Discovery History'. The claimant failed to demonstrate that use of the word 'history' was not merely descriptive of a channel providing history programmes. While a commonly used word can acquire goodwill and reputation as a mark, it can be difficult to prevent competitors from using such a word.
A recent decision of the Patents County Court has found that a product can attract registered design protection where a new use has been found for an existing product – even where the appearances of existing products on the market and the new product are almost identical.
The High Court has ruled that users and operators of the peer-to-peer file-sharing website The Pirate Bay infringe the copyright of owners of content available through the website. The ruling was made at a preliminary stage in the content owners' application for an order that the court require various English internet service providers to block access to the website.
The Supreme Court has handed down its judgment in the long-running Star Wars case. The decision that foreign litigants can rely on their national copyrights in order to bring infringement claims before the English courts in certain circumstances, will raise concerns about a potential increase in forum shopping.
The collection and exploitation of data and databases is increasingly important, particularly to internet and digital media businesses. After the Court of Appeal revisited the question of how data and databases are protected in Football DataCo Ltd/Brittens Pools, and again referred questions to the Court of Justice of the European Union, the IP community must consider the protection available for databases.
The High Court has dismissed a claim by Dyson Limited for registered design infringement, despite the incorporation into the defendant's product of significant elements of Dyson's design. Among other issues, the case raises the question of whether competitors can escape infringement of elegant designs simply by making them more industrial-looking.
Rights holders seeking to assert their IP rights should be aware of the threats provisions in the Trademarks Act, which apply to patents, registered trademarks and registered and unregistered designs. A recent case reinforces the rule that even if a communication does not explicitly threaten infringement proceedings in the United Kigndom, a court may find that a threat is implied in context.
Information published by the European Commission on the number of customs cases involving counterfeit goods shows that the United Kingdom faces a major problem with imported infringing products. The economic climate appears to have tempted more consumers to purchase counterfeits. The trend also raises concerns about budgetary pressure on Her Majesty's Revenue and Customs.
The Court of Appeal has upheld the decision that the helmets worn by the Stormtrooper characters in the Star Wars films are not sculptures, and that a defence was available under Sections 51 and 52 of the Copyright, Designs and Patents Act. It also ruled on the ability of the claimant, LucasFilm, to enforce a judgment obtained in the Californian courts and on the justicability of US copyright claims in the English courts.
A dispute between fashion designer Stella MCartney and cosmetics company Nude Brands Limited over McCartney's proposed launch of a new perfume, Stella Nude, is a reminder to rights owners to ensure that requests for consent are carefully considered and receive a clear response. However, the court warned against pushing ahead with brand launches in order to present a fait accompli.
The High Court has held that repeats of three flagship ITV programmes on the company's digital television channels attracted not a residual flat-rate fee, as they would have done if shown on ITV1, but the lower percentage-rate royalty due for alternative methods of exploitation. Companies dealing with IP rights should consider the importance of 'future-proofing' agreements to protect future income.
A recent case against a trader who masterminded a business selling fake designer products on the auction website eBay raises the question of what IP rights owners can do to protect their business against the effect of counterfeit products offered for sale on online auction sites. What responsibility do auction sites have to rights owners whose rights are infringed or whose brand is diluted?
The Company Names Tribunal has issued its first decision under Section 69 of the Companies Act 2006 in relation to an objection against the registered company name 'Coke Cola Limited'. The procedure can prevent opportunistic registrations, but it remains to be seen whether it provides a less expensive, more efficient means of brand protection or simply becomes a new first stage of litigation.
LucasFilm v Ainsworth raised a number of IP issues. Unfortunately, in deciding the question of title to the IP rights raised by LucasFilm, and particularly in considering matters relating to copyright and commissioned works and copyright claims in tools, the judge failed to make necessary findings of fact and reached some muddled conclusions.
LucasFilm Limited v Ainsworth involved infringement issues relating to both UK and US copyright. The court dismissed Lucasfilm’s action for the infringement of UK copyright, considering the nature of artistic works and the defences available under Sections 51 and 52 of the Copyright, Designs and Patents Act. However, both parties have been granted leave to appeal, so the intergalactic saga may not be over.
The judge in the Star Wars Case has issued his judgment. Although the case deals with a number of issues, one of the key issues is that of jurisdiction where cross-border online trade has occurred - internet sales being the defendant's route to the US market. More controversially, it also permits English courts to admit actions concerning infringements of US copyright.
The High Court has recently held on summary judgment that both registered and unregistered Community design rights have an advantage over UK design rights, in that the 'innocent infringer' defence does not apply to Community designs; therefore, increased protection is available for holders of Community design rights.
Lucasfilm, film director George Lucas’s business empire, brought a High Court action against a UK prop designer alleging infringement of its IP rights in various costumes from the iconic Star Wars films. The designer has counterclaimed for a percentage of the vast merchandising profits from the films - a figure which would probably far exceed the value of Lucasfilm’s claim.
A dispute over copyright in the song "A Whiter Shade of Pale" has reinforced the importance of establishing the rights arising from various contributions to a piece of work in which copyright subsists. Unless the rights are defined and established at the time of creation, successful claims can be launched long after the creative process has ended, particularly when the rights owner seeks to exploit new markets.
It is common practice for information technology suppliers to seek to exclude or limit their liability within their standard terms and conditions. However, such provisions are enforceable under English law only to the extent that they are "reasonable". A recent High Court decision highlights the possible pitfalls when suppliers seek to rely on standard exclusion clauses.