04 October 2015

When one charity sues another - NOCN v Open College Network Credit4Learning

An open college network is a regional organization that accredits adult education courses offered by educational institutions and employers. The claimant was established to coordinate some of those organizations. It trades under the following signs:

It has registered those signs as trade marks as well as the letters OCN and NOCN for accreditation and certification in class 42 as well as other goods and services.

The defendant is an open college network which used to be affiliated with the claimant until 2006. Until judgment in these proceedings, it traded under the following sign:

The claimant sued the defendant for trade mark infringement and passing off. The defendant counterclaimed for invalidation of the claimant's registrations.  The action and counterclaim came on before His Honour Judge Hacon in NOCN (Formerly National Open College Network) v Open College Network Credit4Learning [2015] EWHC 2667 (IPEC) (25 Sept 2015)

It will come as little surprise even to those who have not read the judgment that the claim failed except in respect of the use of the dots device. The judge held that such use infringed the combined device and word marks under s.10 (2) of the Trade Marks Act 1994 and amounted passing off. It will be equally unsurprising that he found that the letters "OCN" were and remain entirely descriptive. Consequently, none of the claimant's marks was infringed by the use of those letters and such use did not constitute passing off.  His Honour also declared the OCN letter mark invalid under s.47 (1) of the Act,

In a postscript to his judgment Judge Hacon made this final observation:
"I now know that between them the parties, both charities, have incurred well over £400,000 on fees in this litigation. A very strong recommendation to settle at the case management conference was not taken up. The laudable cause of encouraging adult education will presumably have to endure an equivalent cut in funding solely because this dispute was not resolved at an early stage. Such an outcome is much to be regretted."
There is, however, some good stuff in this judgment.  At paragraph [22] he reaffirmed that goodwill is capable of subsisting in a business which consists of educational and charitable work of the sort carried on by the parties and other open college networks and referred to British Diabetic Association v The Diabetic Society [1996] FSR 1 as an example. Secondly his analysis of the origin and ownership of the goodwill where he rejected both parties' claims to goodwill associated with those letters in paragraphs [45] to [55].

Should anyone wish to discuss this case note or trade mark or passing off law in general, he or she should not hesitate to call me on 020 7404 5252 during office hours or send me a message through my contact form.

22 September 2015

Damages for infringing Copyright in Photographs - Absolute Lofts v Artisan Home Improvements

Author Bengt Nyman
Creative Commons Licence
Source Wikipedia

Judge Hacon's decision in Absolute Lofts South West London Ltd v Artisan Home Improvements Ltd and Another  [2015] EWHC 2608 (IPEC) (14 Sept 2015) is an interesting authority on how to assess damages for infringement of the copyrights subsisting in photographs. In this case His Honour considered the principles for assessing both compensatory and additional damages.

The Parties

Absolute Lofts South Wset London Ltd ("Absolute Lofts") claims to be  the largest loft conversion company in Greater London while Artisan Home Improvements Limited ("Artisan") offers fascias, block paving and loft conversions in Bradford. The owner of Absolute Lofts was  Craig Colton ("Mr Colton") and the owner of Artisan  Darren Ludbrook ("Mr Ludbrook").

The Facts

At various times Mr  Colton had taken photographs of loft conversions that his company has completed and posted them to its website as examples of its handiwork. Mr Ludbrook downloaded 21 of Mr Coltron's photos and arranged for them to be posted  to his own company's website implying that they were examples of its work. Absolute Lofts got to hear what Artisan had done and threatened it with proceedings for copyright infringement.  MrLudbrook removed the infringing items from the website and replaced them with images from a photo library called "Shutterstock" that he had bought for £300. The parties were unable to agree on damages so these proceedings were initiated.

The Action

Absolute Lofts sued Artisan and Mr Ludbrook for damages for copyright infringement including additional damages under s.97 (2) of the Copyright Designs and Patents Act 1988 and art 13 (1) of the Enforcement Directive (Directive 2004/48/EC on the enforcement of intellectual property rights). There was no dispute that copyright subsisted in the photographs or that Mr Ludbrook had copied them. The only matter that appears to have been in doubt was whether Absolute Lofts owned the copyrights. That was resolved when Judge Hacon allowed a written assignment of the copyrights in the photographs into evidence. The rest of the hearing was on the assessment of damages.

Compensatory Damages 

The judge referred to his earlier decision in Henderson v All Around the World Recordings Ltd [2014] EWHC 3087 where he attempted to set out the law on the calculation of compensatory damages in accordance with the decisions of Mr Justice Arnold in Force India Formula One Team Limited v 1 Malaysia Racing Team Sdn Bhd  [2012] RPC 29, [2012] EWHC 616 (Ch) and Mr Justice Newey in  32 Red Plc v WHG (International) Ltd and Others  [2013] EWHC 815 (Ch) (12 April 2013). I discussed those authorities at some length in my case note Inquiries as to Damages in the Intellectual Property Enterprise Court: Henderson v All Around the World Recordings Ltd. 5 Nov 2014. 

Judge Hacon directed himself that the starting point was what would have been agreed by the parties had they negotiated as willing licensor and willing licensee.  His Honour assumed paragraph [13] that
"Mr Colton and Mr Ludbrook entered the negotiations immediately before the acts of infringement, i.e. at the point when Artisan realised that images of loft conversions were needed in addition to those taken of its own loft conversions and a decision was taken to use those on Absolute Lofts' website."
Even though both sides presented evidence of what a professional photographer would have charged for photographs for Artisan's website His Honour disregarded it as "unhelpful" for two reasons:
"[21] First there is the obvious point that Mr Ludbrook was not concerned to have professional shots on his website. The hypothesis is that he would have been a willing licensee of Mr Colton's photographs and it was the common view of the experts that these, though no doubt perfectly adequate for the task they served (and looked fine to me), were not of a professional standard.
[22] More than that, I do not accept that in the hypothetical negotiations Mr Ludbrook would for a moment have contemplated paying for customised photographs of actual loft conversions. He was a man willing to represent other companies' loft conversions as having been done by Artisan. To that end, I have no doubt, he was prepared to use the cheapest images he could find that looked good enough and could pass for photos of loft conversions done by Artisan. When faced with Absolute Lofts' letter before action in May 2014, he commissioned a local website agency to replace Absolute Lofts' 21 photos with images that satisfied those criteria, sourced from a photographic library called 'Shutterstock'. This cost him £300. Mr Colton gave some evidence in cross-examination about whether one of the Shutterstock images could be of a loft in the UK. I am not convinced that it would occur to a typical observer of Artisan's website that this was a photograph of a loft located abroad. Anyway, this was just one image and collectively the 21 Shutterstock photographs were good enough for Mr Ludbrook.
[23] In the hypothetical negotiations Mr Ludbrook would have known that absent agreement he could obtain his images from a photographic library. As I have indicated, Mr Colton would have had it in mind that any agreed figure would be a bonus."
It seemed to the judge that what Mr Ludbrook actually paid to Shutterstock was as good a guide as any to what would hypothetically have been agreed between the parties. He therefore awarded Absolute Lofts the sum of £300.

Additional Damages

The judge found at paragraph [35] that Mr Ludbrook either knew that the copies of Absolute Lofts' photographs on Artisan's website were infringing copies or alternatively that he had reasonable grounds to know they were. That was sufficient to engage both s.97(2) of the 1988 Act and art.13 (1) of the Directive.

Although s.97 (2) of the CDPA has never been repealed or amended the judge thought it right to focus on the Enforcement Directive either because that sub-section is consistent with art 13 (3) in which case it would be pointless to apply it in parallel or it is not in which case it should not be applied at all.  However, he had to take account of art 2 (1) which preserves national law where it is more favourable to the rights holder. The upshot was that
"a successful claimant is entitled to rely on either s.97 (2) of the 1988 Act or on the defendant's unfair profits under art.13 (1) of the Directive, whichever would provide for the greater damages. Pursuant to s.97 (2) (a) the court is under an express statutory duty to have regard in particular to the flagrancy of the infringement whereas flagrancy is not a compulsory factor in the assessment under art.13 (1). In some circumstances the absence of flagrancy could therefore serve as a barrier to the minimum remedies available under art.13 (1). On the other hand, if flagrancy is such and/or the benefit accruing to the defendant by reason of the infringement is such that additional damages under s.97(2) would exceed those available under art.13 (1), an award under s.97 (2) is not precluded by the Enforcement Directive."
Art 13 (1) of the Enforcement Directive requires EU member states to
"ensure that the competent judicial authorities, on application of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in an infringing activity, to pay the rightholder damages appropriate to the actual prejudice suffered by him/her as a result of the infringement.
When the judicial authorities set the damages:
(a)    they shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the rightholder by the infringement;
(b)     as an alternative to (a), they may, in appropriate cases, set the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question."
Although paragraphs (a) and (b) are expressed as alternatives the judge thought it better to read the two as parts of a consistent whole. He held that Absolute Lofts was entitled to an award that took account of Artisan's unfair profits. Artisan's profits had increased from £226,000 in 2011, £478,000 in 2012 and £498,000 in 2013. His Honour concluded at paragraph [57] that he was
"entitled to infer that Absolute Lofts' photographs made a contribution to the company's profits in 2011 to 2013 by encouraging those who visited Artisan's website to pay Artisan to do a loft conversion and that the contribution was more than negligible."
Judge Hacon found that Artisan had profited from its acts of infringement. Those profits could be characterized as particularly unfair because they were generated by a misrepresentation to Artisan's customers that Artisan was capable of, and had completed, the loft conversions actually done by Absolute Lofts.

After taking all those factors into account Judge Hacon awarded Absolute Lofts additional damages of £6,000 making a combined total of £6,300.  At paragraph [60] the judge said he was satisfied that the infringement was "flagrant" and that the justice of the case justified an award of £6,000 by way of additional statutory damages under s,97 (2).

The Request for Reconsideration of the Compensatory Damages Award

Three days after the judgment Absolute Lofts asked Judge Hacon to reconsider his award of £300 by way of compensatory damages on the ground that it had failed to draw his attention to a provision of Shutterstock's licence that contained the following prohibitions:
"12. Use an Image in a manner that infringes upon any third party's trademark or other intellectual property, or would give rise to a claim of deceptive advertising or unfair competition. …
18. Use any Image (in whole or in part) as a trademark, service mark, logo or other indication of origin, or as part therefore, or to otherwise endorse or imply the endorsement of any goods and/or services.'
19. Falsely represent, expressly or by way of reasonable implication, that any Image was created by you or a person other than the copyright holder(s) of that image."
Absolute Lofts argued that Artisan had breached those terms and would not have been entitled to a £300 licence. In Absolute Lofts South West London Ltd v Artisan Home Improvements Ltd and another (No. 2) [2015] EWHC 2632 (IPEC) (17 Sept 2015) His Honour rejected that request partly because it did not follow that Artisan could not have obtained stock images from another library at a similar price and partly because it is always incumbent upon a claimant to present his best case at trial in accordance with his duty to further the overriding objective of the Civil Procedure Rules.


The most surprising aspect of this judgment is not the lavishness of the additional damages but the paucity of the compensatory damages resulting from the total disregard of the two expert witness. The judge took into account what Mr Ludbrook was prepared to pay rather than what was available for non-infringing use. As Mr Ludbrook's conduct was not far short of that of the defendant in Bristol Conservatories Ltd v Conservatories Custom Built Ltd. l1989] RPC 106 it could have been argued that the only photos that he was entitled to use were those of his company's handiwork and none other and that the taking of those photographs would have required the services of a professional photographer.

The additional damages award was 30 times the size of the compensatory damages award. Art 13 (1) requires member states to ensure that the competent judicial authorities order the infringing party to pay the rightholder damages "appropriate to the actual prejudice suffered by him/her as a result of the infringement". The starting point is to consider the actual prejudice suffered by the rightholder as a result of the infringement and save for the loss of the notional licence fee which was covered by the compensatory award there was none as the parties were not competitors. The defendant's profits would have been relevant if Absolute Lofts had sought an account of profts instead of damages but it did not. Moreover damages and profits have always been alternatives in our legal system. Successful claimants can enjoy one or the other but not both.

A £6,300 damages award is unlikely to be appealed but if ever there was a case for the Court of Appeal to lay down some hard and fast rules on the interpretation and application of the Enforcement Directive and indeed art 8 of Directive 2001/29/EC of the European Parliament and of the Council of the 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society to which His Honour also referred, this is it.

Further Information

If any reader wants to discuss this case or indeed copyright law or intellectual property in general, he or she should call me on 020 7404 5252 during office hours or use my contact form.

18 September 2015

The Pregabalin Trial: Generics (UK) Ltd v Warner-Lambert Company LLC

According to drugs.com, pregabalin is an anti-epileptic drug which works by slowing down impulses in the brain that cause seizures. A European patent for the drug was granted to Warner-Lambert Co, LLC ("Warner-Lambert")(now a subsidiary of Pfizer Inc.) under EP number 0 641 330. That patent expired on 17 May 2013 but was extended by a supplementary protection certificate ("SPC") until 17 May 2018. That SPC was allowed to lapse on 14 Oct 2013 and Warner-Lambert's data exclusivity in respect of the data used to obtain the marketing authorisation for prehabalin expired on 8 July 2014. Since then anybody has been free to make, import or sell pregabalin for treating epilepsy and generalized anxiety disorder in the United Kingdom and several companies including some of the parties to these proceedings have done just that.

Drugs.com notes that pregabalin also affects chemicals in the brain that send pain signals across the nervous system. It can therefore be used to control seizures and treat fibromyalgia as well as pain caused by nerve damage in patients with diabetes, herpes or neuropathic pain associated with spinal cord injury. A patent for those uses entitled "Isobuytlgaba and its derivatives for the treatment of pain" was granted to Warner Lambert LLC under EP number 0 934 061 on 28 May 2013. 

The Litigation

The generics drugs manufacturers Generics (UK) Ltd trading as Mylan ("Mylan") and Actavis Group PTC EHF ("Actavis") applied for revocation of Warner Lambert's pain relief patent on 24 June and 12 Sept 2014 respectively. The grounds upon which they seek revocation are obviousness and insufficiency. Mr Justice Birss ordered those two applications to be heard together.

On 8 Dec 2014 Warner-Lambert sued Actavis for infringement of its pain relief patent on the ground that it had supplied pregabalin for pain relief which it was entitled to make, import and sell only for epilepsy and general anxiety disorder treatment. Warner-Lambert applied for a complicated interim injunction to inhibit the prescription of Activis's generic pregabalin tablets in the NHS. The application came on before Mr Justice Arnold in January of this year. The judge refused the relief on the ground that there was no serious issue to be tried and that in any case the balance of convenience favoured Actavis but ordered the infringement action to be tried with the revocation proceedings (see Warner-Lambert Company, LLC v Actavis Group Ptc EHF [2015] EWHC 72 (Pat) and my case note Swiss Style Claims: Warner Lambert v Actavis 28 Jan 2015).

After that hearing there were a number of other interlocutory applications which Mr Justice Arnold summarized at paragraph 5 of his judgment in the trial of those various claims:
"I dismissed the application for an interim injunction for the reasons given in my judgment dated 21 January 2015 [2015] EWHC 72 (Pat) ("Warner-Lambert I"). Subsequently I dismissed an application by Actavis to strike out, alternatively for summary judgment dismissing, Warner-Lambert's claim for infringement under section 60(1)(c) of the Patents Act 1977 for the reasons given in my first judgment dated 6 February 2015 [2015] EWHC 223 (Pat) ("Warner-Lambert II"), but acceded to Actavis' application to strike out the claim for infringement under section 60 (2) for the reasons given in my second judgment dated 6 February 2015 [2015] EWHC 249 (Pat) ("Warner-Lambert III"). On 26 February 2015 I made an order, largely by consent, requiring the National Health Service Commissioning Board ("NHS England") to issue guidance to Clinical Commissioning Groups ("CCGs") in England and to the NHS Business Services Authority ("BSA") for transmission to NHS pharmacy contractors for the reasons given in my judgment dated 2 March 2015 [2015] EWHC 485 (Pat) ("Warner-Lambert IV"). On 28 May 2015 the Court of Appeal dismissed an appeal by Warner-Lambert against Warner-Lambert I and allowed an appeal by Warner-Lambert against Warner-Lambert III for the reasons given in the judgment of Floyd LJ delivered on that date [2015] EWCA Civ 556 ("Warner-Lambert CA")."
There have also been a number of case management hearings in which the Secretary of State for Health has been permitted to intervene in the infringement claim. Actavis has counterclaimed against Warner-Lambert for groundless threats.

The Trial

The revocation applications together with Warner-Lambert's infringement claim and Actavis's threats action came on for trial before Mr Justice Arnold on 29 June 2015. His Lordship delivered judgment on most of those issues on 10 Sept 2015. The case reference is Generics (UK) Ltd v Warner-Lambert Company LLC [2015] EWHC 2548 (Pat) (10 Sept 2015).

The Patent in Suit

European patent number 0 934 061 was granted "for the use of an analog of gamma-aminobutyric acid (GABA) in pain therapy, as the compound exhibits analgesic/antihyperalgesic action." It was summarized as
 "a method of using a compound identified below in the treatment of pain, especially for treatment of chronic pain disorders. Such disorders include, but are not limited to, inflammatory pain, postoperative pain, osteoarthritis, pain associated with metastatic cancer, trigeminal neuralgia, acute herpetic and postherpetic neuralgia, diabetic neuropathy, causalgia, brachial plexus avulsion, occipital neuralgia, reflex sympathetic dystrophy, fibromyalgia, gout, phantom limb pain, burn pain, and other forms of neuralgic, neuropathic, and idiopathic pain syndromes."
Claim 1 was for the
"Use of [pregabalin] or a pharmaceutically acceptable salt thereof for the preparation of a pharmaceutical composition for treating pain."
The subsequent claims were for such use in the treatment of different types of pain.

Swiss Style Claims

In my previous case note I wrote:
"The use of pregabalin for the treatment of pain is an example of a "Swiss style claim". In G 5/83 the Enlarged Board of Appeal of the European Patent Office held that a patent could be granted for a second or subsequent medical use if a specification claimed the use of a known substance that was already used for the treatment of one condition in the manufacture of a medicament for the treatment of another condition. Since the revision of the European Patent Convention by the Act revising the European Patent Convention of 29 Nov 2000 it has ceased to be necessary to draft claims for second and subsequent medical use in this way because art 54 (5) of the Convention now permits second and subsequent medical uses of known substances."
Between paragraphs [88] and [90] of his judgment Mr Justice Arnold explained the policy for formulating patent claims in this way:
"[88] It has increasingly been recognised over the past 30 years or so that it is important to find new uses for existing medicines. Existing medicines have the advantage that they are known compounds which have been shown to have acceptable safety profiles, and therefore need much less testing from that perspective. Experience shows that a compound which has therapeutic benefit in one application not infrequently turns out to have therapeutic benefit in another application (sometimes more than one other application) which may be quite different to the first application. Thus there is significant potential and value in finding such second (and third, etc.) medical uses. Discovering such second medical uses requires difficult and expensive research, however. How is such research to be funded? The answer which has been provided by the European patent system is to grant patents for second (and subsequent) medical uses of known compounds. The monopoly thus conferred on the inventor who finds the second medical use provides the return on the investment required to fund the research.
[89] There are two significant obstacles to the grant of patents for second medical uses under the European patent system: first, the compounds themselves are not new, which is a fundamental requirement for patentability of a product; and secondly, methods of treatment of the human (or animal) body by therapy are not patentable, in order to protect doctors from claims for patent infringement. The European patent system has attempted to overcome these obstacles in two ways.
[90] The first way was through a piece of judicial lawmaking which fudged some of the difficult issues. This involved the use of claims in Swiss form i.e. "use of substance X for the preparation of a medicament (or pharmaceutical composition) for treating indication Y" (a purpose-limited process claim): see G 05/83 Eisai/Second medical indication [1985] OJ EPO 64."
As I indicated in my previous note it is no longer necessary to draft patents in this form because the European Patent Convention has been revised. The judge made clear at paragraph [92] that it should not be assumed that anything he said in his judgment about Swiss form claims necessarily applies to claims in the new form.


Referring to Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 and Pozzoli v BDMO SA [2007] BusLR D117, [2007] EWCA Civ 588, [2007] FSR 37 Mr Justice Arnold directed himself as follows:
"(1)  (a) Identify the notional 'person skilled in the art';
(b) Identify the relevant common general knowledge of that person;
(2)  Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3)  Identify what, if any, differences exist between the matter cited as forming part of the 'state of the art' and the inventive concept of the claim or the claim as construed;
(4)  Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"
The Skilled Addressee

It was common ground that the "person skilled in the art" in this case would be  a team consisting of a neuroscientist and a clinician. The neuroscientist would be a pre-clinical researcher with an interest in developing new analgesics and knowledge of various animal models of pain. He or she would typically have a master's degree or doctorate in neuroscience, pharmacology or neurophysiology or a related biological field and would be familiar with the molecular physiology of pain and analgesia. The clinician would specialize in the treatment of pain. The judge decided he or she could be a rheumatologist, neurologist or anaesthetist. The members of the team would work together and be led by the neuroscientist.

Common General Knowledge

Mr Justice Arnold referred to his review of the law on "common general knowledge" between paragraphs [105] and [115] of his judgment in  KCI Licensing Inc and Others v Smith & Nephew Plc and Others [2011] Bus LR D27, [2010] EWHC 1487 (Pat), [2010] FSR 31 which had been approved by the Court of Appeal on appeal (see KCI Licensing Inc and Others v Smith & Nephew Plc and Others  (2011) 117 BMLR 81, [2011] FSR 8, [2010] EWCA Civ 1260. The learned judge added the following points between paragraphs [121] and [125]:
[121] First, in some cases the party attacking the patent seeks to build up the common general knowledge in order to bolster its case on its obviousness. In other cases the patentee seeks to build up the common general knowledge in order to bolster its case on sufficiency. In the present case both sides sought to build up different aspects of the common general knowledge for their respective purposes. As is common ground, whichever party seeks to establish that something is common general knowledge and whatever that party's purpose in doing so, the burden lies on the party seeking to establish the common general knowledge and the test to be applied is the same.
[122] Secondly, in some cases the breadth of the claims is such that they cover two (or more) different fields and hence are addressed to persons skilled in both those fields. The fields may be different aspects of the same art or, in an extreme case, different arts altogether. In such circumstances it is legitimate to consider the question of obviousness from the perspective of each addressee, and hence in the light of that addressee's common general knowledge, although this does not mean that there cannot be invention in marrying two different arts: see Inhale Therapeutic Systems Inc v Quadrant Healthcare plc [2002] RPC 21 at [35]-[42] (Laddie J). Counsel for Mylan and Actavis accepted that, at least on the facts of the present case, the same approach should be applied to sufficiency i.e. it is enough if the invention can be performed by one of the addressees using that addressee's common general knowledge.
[123] Thirdly, an issue arises in this case as to whether common general knowledge has a territorial dimension. What if a matter was known to persons skilled in the art in the USA, but not to persons skilled in the art in the UK? In Teva UK Ltd v Merck & Co Inc [2009] EWHC 2952 (Pat), [2010] FSR 17 Floyd J (as he then was) said:
'101. A question arises as to whether it is sufficient to establish that a particular fact was known in the United Kingdom, or whether it is necessary to establish, where the art is an international one, that it was known more widely.
102. Mr Thorley maintained that the relevant common general knowledge was that in this country. Mr Birss was content to accept that proposition, whilst pointing out that where the art was an international one, it is relevant on the facts to take account of evidence that individuals abroad had not heard of it. Neither side showed any enthusiasm for arguing that common general knowledge had to be more extensive than the United Kingdom.
103. I am content to proceed on this legal basis, as I did not hear detailed argument on the point. It would seem to me to be an odd result if a patent for the United Kingdom could survive if it was obvious in the light of the common general knowledge in this country. A more difficult question may arise if a fact is only common general knowledge abroad. But that does not arise here.'
[124] The question does arise here. Counsel for Warner-Lambert submitted that matter relied on as being common general knowledge must be shown to be common general knowledge in the UK, but counsel for Mylan and Actavis disputed that this was necessary. Although I only received limited argument on the point, it seems to me that, at minimum, it must be shown that the matter in question was common general knowledge in the UK. The reason for this is that, whether one is concerned with the validity of a European Patent (UK), or a UK patent, one is concerned with a right in respect of the UK. It is true that the prior art may have been published anywhere in the world, but I do not think that alters the need for the skilled team to consider that art as if they were located in the UK. I do not think it matters that a fact was common general knowledge in (say) China, if it was not common general knowledge here. The position may be different if all the persons skilled in a particular art in the UK are acquainted with the position in China, but no point of that kind arises here. I do not consider that this approach is contrary to Article 27(1) of TRIPS, which provides that "patents shall be available and patent rights enjoyable with discrimination as to the place of invention", as counsel for Mylan and Actavis submitted.
[125] Fourthly, as is established by the authorities discussed in KCI, in order to acquire the status of common general knowledge, a matter must be generally known and generally regarded as a good basis for further action by the bulk of those engaged in the art in question. What amounts to being "generally regarded as a good basis for further action" is a context-dependent question. Thus a scientific theory does not have to have been generally accepted as correct if it is regarded as a reasonable working hypothesis by the bulk of those skilled in art. Furthermore, a theory may be regarded as a good basis for some forms of action (such as experiments in vitro or in animal models) even if not for others (such as administration to humans). See Intervet UK Ltd v Merial [2010] EWHC 294 (Pat) at [145] and Novartis AG v Focus Pharmaceuticals Ltd [2015] EWHC 1068 (Pat) at [91]-[92]"
Between paragraphs [126]  and [239] the judge reviewed the evidence and concluded at paragraph [205] that it was common general knowledge that:
  1. Neuropathic pain was characterized by secondary hyperalgesia and allodynia, in the sense that these symptoms were present in the large majority of patients, but a significant minority did not display these symptoms.
  2. Secondary hyperalgesia and allodynia involved central augmentation. In some cases this would be central sensitisation, but not in all cases.
The Inventive Concept

The judge identified the inventive concept by construing the claims in accordance with the principles set out in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9, [2004] UKHL 46, [2005] 1 All ER 667, (2005) 28(7) IPD 28049, [2005] RPC 169 and summarized by Lord Justice Jacob at paragraph [5] of his judgment in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062, [2010] RPC 8:
"(i) The first overarching principle is that contained in Article 69 of the European Patent Convention.
(ii) Article 69 says that the extent of protection is determined by the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to be construed in context.
(iii) It follows that the claims are to be construed purposively - the inventor's purpose being ascertained from the description and drawings.
(iv) It further follows that the claims must not be construed as if they stood alone - the drawings and description only being used to resolve any ambiguity. Purpose is vital to the construction of claims.
(v) When ascertaining the inventor's purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different.
(vi) Thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol - a mere guideline - is also ruled out by Article 69 itself. It is the terms of the claims which delineate the patentee's territory.
(vii) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements.
(viii) It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context.
(ix) It further follows that there is no general 'doctrine of equivalents.'
(x) On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context.
(xi) Finally purposive construction leads one to eschew the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge."
The judge reminded himself that Swiss style claims are process claims rather than product claims and that they are directed to manufacturers of medicaments or pharmaceutical compositions.

Conclusion on obviousness

Having construed the claims Mr Justice Arnold compared the inventive concept as contained in  those claims with the prior art relied upon  by and Mylan and Actavus and considered whether they constituted steps that would have been obvious to the neuroscientist and clinician mentioned above having regard to common general knowledge. His Lordship concluded at paragraph [338] that they did not.


S.14 (3) of the Patents Act 1977 requires a specification to
"disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art."
If it does not to do so, any patent that may have been grated for the invention may revoked under s.72 (1) (d). Revocation on that ground is known as "insufficiency."  In Eli Lilly & Company v Human Genome Sciences Inc(2008) 31(10) IPD 31066, (2009) 105 BMLR 27, [2008] EWHC 1903 (Pat), [2008] RPC 29 Mr Justice Kitchin (as he then was) had said at paragraph [239] of his judgment:
"The specification must disclose the invention clearly and completely enough for it to be performed by a person skilled in the art. The key elements of this requirement which bear on the present case are these:
(i) the first step is to identify the invention and that is to be done by reading and construing the claims;
(ii) in the case of a product claim that means making or otherwise obtaining the product;
(iii) in the case of a process claim, it means working the process;
(iv) sufficiency of the disclosure must be assessed on the basis of the specification as a whole including the description and the claims;
(v) the disclosure is aimed at the skilled person who may use his common general knowledge to supplement the information contained in the specification;
(vi) the specification must be sufficient to allow the invention to be performed over the whole scope of the claim;
(vii) the specification must be sufficient to allow the invention to be so performed without undue burden."
Having already construed the claims and identified the skilled addressee and the common general knowledge Mr Justice Arnold considered whether the specification was sufficient to allow the invention to be performed over the whole scope of the claim without undue influence. He concluded at paragraph 358 that some but not all the claims were invalid for insufficiency. The invalid claims were 1, 3, 4, 6, 13 and 14.


Having decided that claims 1 and 3 were invalid for insufficiency it was not strictly necessary for the judge to decide whether those claims had been infringed. Warner-Lambert's case was that pregabalin that had lawfully been manufactured by Actavis for the treatment of epilepsy and generalized anxiety disorder had been supplied for pain relief.

Warner-Lambert  relied on s.60 (1) (c) and (2) of the Patents Act 1977.

As to the claim under 60 (1) (c) Mr Justice Arnold held that in a Swiss style claim it is necessary to prove intention on the part of the manufacturer that the medicament or pharmaceutical composition should be used for the new therapeutic use. As there was no evidence that Actavis intended its products to be used to treat pain unless and until claims 1 and 3 of the Patent were held invalid the claim failed on that head.  In Warner-Lambert Company, LLC v Actavis Group Ptc EHF and others [2015] EWCA Civ 556 Lord Justice Floyd had said at paragraph [127] of his judgment that s.60 (1) (c) would be infringed if a generics manufacturer knew or could foresee that his products would be used for the new use. Even applying that test Actavis would not have infringed claims 1 and 3.

As for the claim under s.60 (2)  there was no act of manufacture by any party downstream from Actavis, nor even the prospect of such an act. The claim under that head failed too.

The judge agreed to declare that neither Actavis nor any of its wholesalers, nor any doctors. patients or intermediaries had infringed Warner-Lambert's patent.


Shortly before Actavis was due to launch its generic pregabalin Warner-Lambert wrote to the Department of Health, NICE, superintendent pharmacists and others indicating that the prescription of  that product for pain relief would infringe its patent. The judge held that some of those letters were unjustifiable threats within the meaning of s.70 (1) of the Patents Act 1977.


At paragraph [727] of his judgment, Mr Justice Arnold concluded that:
"i) none of the claims of the Patent is obvious over any of the prior art relied upon by Mylan and Actavis;
ii) claims 1, 3, 4, 6, 13 and 14 of the Patent are invalid on the ground of insufficiency;
iii) even if claims 1 and 3 are valid, Actavis have not infringed those claims pursuant to section 60(1)(c) or section 60(2); and
iv) Pfizer is liable for making groundless threats of patent infringement proceedings, albeit not in all the cases alleged by Actavis."

At paragraph [722] the judge said:
 "I have now lived with this case for nine months. During that time, I have heard and determined the applications which led to the Warner-Lambert I, II, III and IV judgments, I have heard and determined a number of other case management applications, I have heard the trial and I have written this judgment. During that time, I have reflected repeatedly and at length on the issues raised by this litigation. At the end of that period of reflection, I remain more convinced than ever that the best solution to the problem of protecting the monopoly conferred by a second medical use patent while allowing lawful generic competition for non-patented indications of the substance in question is to separate the patented market for the substance from the non-patented market by ensuring that prescribers write prescriptions for the patented indication by reference to the patentee's brand name and write prescriptions for non-patented indications by reference to the generic name of the substance (the INN)."
He urged patentees who want their second medical use patents to be enforced to provide NHS England with all the information and assistance it requires to enable it to issue appropriate guidance as and when required. He urged generic companies who want their interests in obtaining untroubled access to lawful markets protected to cooperate with NHS England as well.  "In short," he added "what is needed is a system for dealing with these situations."

Further Information

Should anyone wish to discuss this case or patent law in general, he or she should call me on 020 7404 5252 during office hours or send me a message through my contact form.

13 August 2015

Wilmslow versus the Bahamas: Dawson-Damer and Others v Taylor Wessing and Others

Source Wikipedia
Reproduced under a Creative Commons Licence

Probably because it implements an EU directive and costs small business owners money to support a bureaucracy in Wilmslow and is cited by petty officials as an excuse for all sorts of irritations the Data Protection Act 1998 is one of the least understood and most maligned and least appreciated Acts of Parliament on the statute book. It does have its used of course and I for one would keep but I suspect that I am in a minority. If Parliament were ever to repeal this legislation the population would breath a mighty and very audible sigh of relief.

In Dawson-Damer and Others v Taylor Wessing LLP and Others [2015] EWHC 2366 (Ch) (6 Aug 2015) the claimants in an action in the Bahamas over the administration of a trust sued solicitors who had advised the trustees of that trust in England for an order under s.7 (9) of the Data Protection Act 1998. The order that they sought would have required Taylor Wessing to deliver all data of which those claimants were the data subject (including data in which they were identified expressly or by inference) in the solicitors' possession custody or power.  Taylor Wessing resisted the claim on the ground that the data were exempt from the subject access provisions of the Act by reason of paragraph 10 of Schedule 7.  The action came on before His Honour Judge Behrens sitting as a judge of the Hight Court.

The relevant statutory provisions are as follows.  S. 7 (1) of the Data Protection Act 1998 provides inter alia:
"Subject to the following provisions of this section and to sections 8, 9 and 9A, an individual is entitled—
(a)  to be informed by any data controller whether personal data of which that individual is the data subject are being processed by or on behalf of that data controller,
(b)  if that is the case, to be given by the data controller a description of—
(i) the personal data of which that individual is the data subject,
(ii) the purposes for which they are being or are to be processed, and
(iii) the recipients or classes of recipients to whom they are or may be disclosed,
(c) to have communicated to him in an intelligible form—
(i) the information constituting any personal data of which that individual is the data subject, and
(ii) any information available to the data controller as to the source of those data ........"
Paragraph 10 of Schedule 7 provides:
"Personal data are exempt from the subject information provisions if the data consist of information in respect of which a claim to legal professional privilege or, in Scotland, to confidentiality of communications could be maintained in legal proceedings."
The court has a discretion under s.7 (9) to compel compliance with subject access requests under s.7 (1):
"If a court is satisfied on the application of any person who has made a request under the foregoing provisions of this section that the data controller in question has failed to comply with the request in contravention of those provisions, the court may order him to comply with the request."
The issues that the judge was asked to decide were the extent of the discretion and whether the paragraph 10 exemption extends to overseas proceedings or even to proceedings between trustee and beneficiary in the courts of England and Wales.

His Honour summarized the claimants' case at paragraph [6] of his judgment:
"Mr Swift QC on behalf of the Claimants accepts that the 1998 Act contains an exemption in respect of data in respect of which a claim for legal professional privilege could be made in legal proceedings. He contends that the exemption should be construed narrowly. It does not extend to the rules of equity in England and Wales under which trustees are not required to disclose trust documents to beneficiaries. Equally it does not extend to local Bahamian rules which apply to disclosure in respect of trust litigation in the Bahamian courts. He submits that as Ashley [the first named claimant] is a beneficiary under the Glenfinnan Settlement [the trust which was the subject of the litigation in the Bahamas] any privilege attaching to Grampian resulting from advice taken is a joint privilege with the result that Grampian cannot rely on the privilege against Ashley. Mr Swift QC invited me to take a narrow view of the discretion afforded to the Court in s 7(9) of the 1998 Act. In particular he drew my attention to the large number of exceptions in Part IV and Schedule 7 and of the power of the Secretary of State in s 38 to make further exceptions. He submitted that the Court should not, as a matter of principle, use its discretionary powers under s7(9) to make further exceptions. In general terms he submitted that if the data was not within one of the exemptions the Court should normally order its disclosure. He accepted that one of the motives for making the subject access requests may have been to obtain documents which might be of use in the Bahamian proceedings but he contended that the Claimants could also verify if the data was correct and, if necessary, take steps to have it corrected."
Judge Behrens  rejected all those contentions.

As to the whether the first (namely whether paragraph 10 of Sched 7 should be construed narrowly so as to exclude overseas proceedings) the judge referred to the Court of Appeal's decision n Durrant v Financial Services Authority [2003] EWCA 1746.  Lord Justice Auld said at paragraph [27] of his judgment in that appeal:
"In conformity with the 1981 Convention and the Directive, the purpose of section 7, in entitling an individual to have access to information in the form of his “personal data” is to enable him to check whether the data controller’s processing of it unlawfully infringes his privacy and, if so, to take such steps as the Act provides, for example in sections 10 to 14, to protect it. It is not an automatic key to any information, readily accessible or not, of matters in which he may be named or involved. Nor is to assist him, for example, to obtain discovery of documents that may assist him in litigation or complaints against third parties."
Relying on that passage His Honour concluded at at sub-paragraph (2) of paragraph [62] that the purpose of the legislation is "to protect the Claimants' right to privacy and accuracy of the information held" on him and that  it "is no part of its purpose to provide the Claimants with information or disclosure of documents which may assist them in litigation against Grampian whether in England or the Bahamas." He therefore held at paragraph [62] that "paragraph 10 of Schedule 7 should be interpreted purposively so as to include all the documents in respect of which Grampian would be entitled to resist compulsory disclosure in Bahamian proceedings."

As he had decided that the subject access request was exempted by paragraph 10 of Sched. 7 the exercise of his discretion did not arise but the judge added at paragraph [73] that he would have declined as a matter of discretion to order Taylor Wessing to comply with the subject access requests for the following reasons:
"1. In my view the real purpose of the subject access requests was to obtain information to be used in connection with the Bahamian proceedings. As Mr Taube QC said at the beginning of his oral submissions – "context is everything". These requests were made after MWE had written the letter of 18 February 2014 challenging the validity of the 2006 and 2009 appointments and TW had sent a detailed reply on 9 July 2014. It is, to my mind, of considerable significance that MWE stated in their letter of 4 August 2014 that they would reply to the letter of 9 July 2014 when they have received the documents. Furthermore there is no suggestion in any of the evidence filed on behalf of the Claimant that they wish to check the accuracy of the information held by TW and to have it corrected if it is inaccurate. In my view the Claimants would not have brought the application at all if it had not been for the purpose of assisting in the Bahamian proceedings which were being contemplated. As Auld LJ makes clear in paragraph 27 of Durant this is not a proper purpose.
2. In my view Mr Taube QC's arguments on the question of whether it is reasonable and proportionate to expect TW to carry out a search are just as valid on the question of the exercise of the discretion under s 7(9) of the 1998 Act. This is a case where the question of which documents are discoverable will have to be determined in the Bahamian proceedings according to Bahamian law. The extent to which disclosure will be ordered may depend (if Sir Michael is correct) on the allegations that Ashley makes in those proceedings. The parties in the Bahamian proceedings are the trustee and the beneficiary. It is plainly more desirable that the issue be determined between those parties rather than between TW and the beneficiary. It seems quite unnecessary that the matter should be determined by the English Court in addition to the Bahamian Court.
3. If and in so far as the exception in paragraph 10 of Schedule 7 is restricted to the English law of disclosure and if and in so far as the documents discoverable under English law are more extensive than those under Bahamian law it does not seem to me a proper use of the 1998 Act to enable the Claimants to obtain documents that they could not obtain in the Bahamian proceedings."
Although the judge gave the defendants permission to appeal I should be very surprised if the Court of Appeal overrules him. The purpose of the Act is to regulate "the processing of information relating to individuals, including the obtaining, holding, use or disclosure of such information" and it is not to introduce novel and far-reaching procedures which would undermine  our own and foreign judicial systems. The data protection legislation has received a very bad press lately particularly over the right to be forgotten (see Right to be forgotten: a Transatlantic Dialogue 1 Aug 2015). Had the case been decided differently the legislation would have been even further discredited. 

05 August 2015

Ukulele Wars: The Ukulele Orchestra of Great Britain v Clausen

Although Judge Hacon's decision in The Ukulele Orchestra of Great Britain v Clausen and Another [2015] EWHC 1772 (IPEC)  was reported as a "victory" in the Independent (The Ukulele Orchestra of Great Britain wins duel with German 'copycat' 3 July 2015) it was somewhat of the pyrrhic kind.  The Ukulele Orchestra of Great Britain sued The United Kingdom Ukulele Orchestra for trade mark infringement, copyright infringement and passing off and applied to strike out the defence on the grounds of abuse of process less than two weeks before the trial. The claim succeeded on passing off but failed on all other counts. The claimants lost their Community trade mark and the judge saw no merit in the strike out application whatever.

The case is an interesting one because it considers what can be protected by intellectual property. The parties were very similar acts.  The claimants' was described as follows by Judge Hacon at paragraph [1] pf his judgmenrt:
"The Claimant ("UOGB") is a partnership of two individuals, George Hinchliffe and Marian Lux. In 1985 they founded and have since operated a group of musicians who play ukuleles and who collectively perform under the name 'The Ukulele Orchestra of Great Britain'. Over the years their gigs have developed a certain style, with the members wearing evening dress – black tie or gowns as the case may be – telling jokes and delivering mostly well known rock songs and film themes on their ukuleles. UOGB has enjoyed considerable success, particularly in this country and in Germany."
Here they are playing Wagner at the Proms:

And here are the defendants playing Bach:

They are a limited partnership under German law based in Germany but consisting of British players.

The claimants had registered THE UKULELE ORCHESTRA OF GREAT BRITAIN as a Community trade mark for
"Organisation, management, staging and provision of live events, concerts, musical performances, and theatre and stage productions; concert services, orchestra services, production of radio and television programmes; publication of electronic publications relating to music and musical instruments; entertainments services"
in class 41 as well as for various goods in classes 9, 15, 16, 18, 25 and 28.

The judge held that had that CTM registration been valid the defendants would have infringed it under art 9 (1) (b) and (c) of the Community trade mark regulation (Council Regulation (EC) No 207/2009of 26 February 2009on the Community trade mark OJ 24.3.2009 L78/1).  After considering paragraphs [33] to [39] of Lord Justice Floyd's judgment in JW Spear & Sons Ltd & Ors v Zynga Inc [2015] FSR 19, [2015] EWCA Civ 290 Judge Hacon concluded at paragraph [57]:
"The CTM and the accused sign are visually and aurally similar to the extent that they both contain the words 'ukulele orchestra'. I think this is an instance in which conceptual similarity is likely to register strongly with the average consumer. In that regard mark and sign are extremely close. As was pointed out at trial, it is certainly true that 'Great Britain' and 'the United Kingdom' do not mean the same thing. But even in this country some pedants might hesitate before getting the difference right. I doubt that the distinction either means anything or matters at all to the vast majority of people elsewhere in the EU. The average consumer, in short, would regard mark and sign as having the same meaning."
Basing himself just on that and the other matters to be taken into account as directed by the above passage from Spear v Zynga he reached the view that there was a likelihood of confusion.

There was also some actual evidence of confusion. The judge observed at paragraph [68]:
"It is possible that if all these instances had been fully explored and tested in cross-examination, some would have fallen away as not being proof of relevant confusion. I was left with the impression that many would support UOGB's case on confusion. In my view, if the CTM had been valid, it would have been infringed by UKUO pursuant to art.9(1)(b)."
That same evidence was relied on in the action for passing off. Judge Hacon said at [92]:
"I am satisfied that the evidence adduced in support of the likelihood of confusion pursuant to art.9(1)(b) establishes that Yellow Promotion's use of the trade name 'The United Kingdom Ukulele Orchestra' misrepresents to a substantial proportion of the public in this country who recognise 'The Ukulele Orchestra of Great Britain' as the trade name of a particular musical group, that UOGB and UKUO are the same group or are otherwise commercially connected. I am also satisfied that this has caused damage to UOGB's goodwill, particularly by way of loss of control over UOGB's reputation as performers."
That was the one bit of the case upon which the claimants succeeded.

As for the remainder of the case the judge threw out the trade mark infringement claim and invalidated the CTM registration on the ground that it was descriptive within the meaning of art 7 (1) (c). The copyright claim failed on the basis that no copyright could subsists in the claimants' act though it might subsist in recordings of one or more of their performances. The strike out application was based on an inference that the defendants had doctored evidence and that a fair trial was not possible. The judge disagreed.

The judge was right to decide this case as did. This was an attempt to suppress a lookalike or to put it another way to monopolize an entertainment style. That would have had very profound and deleterious effects on the performing arts had it succeeded. It would have outlawed not just tribute bands but many legitimate artists who may be influenced by an earlier work and create something new in the same style without copying it.

Should anyone wish to discuss this case with me he or she should call me on 020 7404 5252 during office houses or send a message through my contact form.

01 August 2015

Right to be forgotten: a Transatlantic Dialogue

Cathy Gellis
Jane Lambert

On 12 June 2014 La Commission Nationale de l'Informatique et des Libertés (CNIL). the French data protection authority, issued a notice requiring Google to apply de-listing from all platforms of its search engine such as Google Sierra Leone and Google Mongolia and not just those like Google UK, Google France and Google Deutschland that are marketed to residents of EU member states. In his post Implementing a European, not global, right to be forgotten 30 July 2915 Google's privacy counsel Peter Flecischer stated that Google had refused to implement that notice and had asked the CNIL to withdraw it.

It is possible that the CNIL will change its mind and do so but it is more likely that it won't.  In that case the President of the Commission could nominate a Rapporteur and ask him or her to draft a report recommending sanctions to be imposed on Google for such non-compliance. Google could of course challenge the CNIL's decision in the Conseil d'État. As the obligation that the CNIL purports to enforce arises under EU law  the Conseil d'État will be urged to seek a preliminary ruling under art 267 of the Treaty on the Functioning of the European Union ("TFEU") from the Court of Justice of the European Union ("CJEU") on the nature and extent of the so-called right to be forgotten.

I say "so-called" because you will struggle if you look for the right to be forgotten in the Data Protection Directive (Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data OJ L 281 , 23/11/1995 pages 31 - 50) or member states' implementing legislation. The phrase "right to be forgotten" may not have been coined by the CJEU in C‑131/12 Google Spain SL and Another v Agencia Española de Protección de Datos (AEPD) ex parte Costeja 36 BHRC 589, [2014] 3 CMLR 50, [2014] EMLR 27, EU:C:2014:317, ECLI:EU:C:2014:317, [2014] All ER (EC) 717, [2014] 3 WLR 659, [2014] ECDR 16, [2014] 2 All ER (Comm) 301, [2014] EUECJ C-131/12, [2014] 1 QB 1022, [2014] QB 1022 bur it entered everyday speech after that judgment.

The Costeja case was a reference for a preliminary ruling under art 267 TFEU from the Audencia Nacional in Spain. It was made in an application by Google Spain and its US parent company to quash an order of the AEPD, the Spanish data protection authority. The AEPD required Google to withhold from its search results URLs to advertisements that had appeared in a Spanish newspaper many years ago of an auction of Mr Costeja's property that had been seized and sold to pay his social security arrears. Mr Costeja had complained to the AEPD that the advertisements came up on every search of his name. He had rebuilt his life since then and those advertisements were a constant embarrassment.  He asked the AEPD to order the newspaper to remove the advertisements and Google to stop including them in its search results.  The AEPD rejected his request in respect of the newspaper since the advertisements had been ordered by the Spanish Ministry of Labour but upheld it against Google.

In the Audencia Nacional the Google companies had argued that Spanish data protection law did not apply to search engines. They argued that search engines were not "data controllers", that they did not process personal data and that in any case they were not within the Spanish courts' jurisdiction. As the Spanish legislation purported to implement the Data Protection Directive the Audencia Nacional referred those questions to the CJEU. The actual questions and reply are lengthy but paragraph [1] of the CJEU's judgment summarizes them conveniently:
"This request for a preliminary ruling concerns the interpretation of Article 2(b) and (d), Article 4(1)(a) and (c), Article 12(b) and sub-paragraph (a) of the first paragraph of Article 14 of Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data (OJ 1995 L 281, p. 31) and of Article 8 of the Charter of Fundamental Rights of the European Union (‘the Charter’)."
The CJEU recognized at paragraph [19] that it had to apply a 1995 directive to technologies that had emerged after the adoption of that legislation.

Essentially, the CJEU held that Google (and no doubt all other search engines including Yahoo and Bing) were data controllers and that they processed personal data. It followed that Spanish data protection law applied to their activities and that they had to comply with its data quality and subject access provisions just like everybody else. One consequence of the CJEU's decision was that Google and other search engine operators were subject to enforcement notices from national data protection authorities. Also, they could be sued by data subjects in national courts for any loss or damage that might arise from breaches of their obligations under those laws.

Google responded to that judgment by establishing procedures for handling requests for search result removals. It prepared a simple form and FAQ for such requests. As of 31 July 2015 Google had received 291,243 removal requests and considered nearly 1,6 million URLs since Costeja. It had removed 41.3% of those URLs and had rejected removal requests in respect of 58.7%. Its Transparency Report gives examples of requests that it has accepted and others that have been rejected. Those whose requests are rejected are, of course, free to complain to their national data protection authority or bring proceedings in their national courts. It is not known how many have done so. Bing and Yahoo have established similar procedures. Bing's request form is here and Yahoo's is here.

Although Mr Fleischer characterized the right to be forgotten as a European right and not a global one, similar rights seem to exist elsewhere. In Melvin v Reid and Others 112 Cal.App. 285 (Cal. Ct. App. 1931), for example, the California Court of Appeal allowed a claim against a film maker who had exposed the claimant's early life as a prostitute on the ground that the film had invaded her privacy. It seems to me that the issues in that case as well as the outcome were very similar to those in Costeja.

Should anyone wish to discuss this article with me, the right to be forgotten or data protection generally, he or she should call me on 020 7404 5252 during office hours and send a message through my contact form.

Post Script

As I wrote this post at the suggestion of Cathy Gellis who practises IP and internet law in California I drew it to her attention by twitter to which she kindly replied:
Helpfully, she also made the following observations:
@nipclaw or let me rephrase: the right to privacy may remain, but not such that deletion would be a recognized remedy.
Adding in her next tweet
@nipclaw especially not by a party not connected to the act that invaded the privacy. Section 230 would also preclude.
I am sure Cathy is right but nobody even in Europe argues that excluding URLs from a search report is the only or even in many cases the appropriate remedy.

I replied:
@CathyGellis I think Melvin was an action for damages rather than an injunction. The point is that the cause of action appears to subsist.
I added:
CathyGellis The cause of action in Melvin seems to be invasion of privacy which is essentially what data protection is all about.
And concluded
@CathyGellis my point is that the right to be forgotten (subject access and data quality) exists well beyond the shores of the EU states.
We shall have to see how this area of the law develops on both sides of the Atlantic but one thing of which I am very sure is that Americans don't take injustice and invasion of privacy lying down. Had Mr Costeja lived in San Francisco rather than Spain I suspect he would have consulted Cathy or some other US lawyer and asked whether there was anything to be done about the embarrassing search records. Knowing Cathy as I do, it is more than likely that she would have found a way to help him.

Further Reading

Farhad Manjoo  ‘Right to Be Forgotten’ Online Could Spread 5 Aug 2015 NYT

31 July 2015

Copyright in Commissioned Works: Atelier Eighty Two Ltd v Kilnworx Climbing Centre CIC and Others

A question that I am often asked at pro bono IP clinics as well as in my practice is who owns the copyright in a commissioned work when the graphic or web designer or software house fall out with their customer. The basic principles were set out by Mr Justice Lightman in Robin Ray v. Classic FM Plc [1998] ECC 488, [1998] EWHC Patents 333, [1998] FSR 622, (1998) 21(5) IPD 21047, [1999] ITCLR 256 and amplified and clarified by the Court of Appeal in R Griggs Group Ltd and Others v Evans and Others [2005] EWCA Civ 11. The issue arose again in Atelier Eighty Two Ltd v Kilnworx Climbing Centre CIC and Others [2015] EWHC 2291 (IPEC).

In Atelier a graphic designer called Rik Kirk made the logos shown above in August 2011. At that time he was an executive director of the design company Purple Penguin Design Ltd. of Timperley near Altrincham. He was asked to create those logos by one Lionel Bunting who was then a director of both the claimant Atelier Eighty two Limited and the defendant Kilnworx Climbing Centre CIC. Kilnworx was never able to pay Purple Penguin's invoices. These were paid instead by Ateler which also claimed to have paid many other expenses. The parties fell out in 2012. By an assignment dated 23 Aug 2013 Purple Penguin purported to assign whatever copyrights it held in the logos to Atelier. Atelier asked Kilnworx not to use the logos. When it continued to do so Atelier sued Kilnworx and two of its directors for copyright infringement.

The defendants argued that Kilnworx was and always had been the beneficial owner of the copyright or at the very least the exclusive licensee.

In Ray Mr Justice Lightman said at page 640:
The general principles governing the respective rights of the contractor and client in the copyright in a work commissioned by the client appear to me to be as follows:
(1) the contractor is entitled to retain the copyright in default of some express or implied term to the contrary effect;
(2) the contract itself may expressly provide as to who shall be entitled to the copyright in work produced pursuant to the contract. Thus under a standard form Royal Institute of British Architects ('RIBA') contract between an architect and his client, there is an express provision that the copyright shall remain vested in the architect;
(3) the mere fact that the contractor has been commissioned is insufficient to entitle the client to the copyright. Where Parliament intended the act of commissioning alone to vest copyright in the client e.g. in case of unregistered design rights and registered designs, the legislation expressly so provides (see section 215 of the 1988 Act and section 2(1A) of the Registered Designs Act 1949 as amended by the 1988 Act). In all other cases the client has to establish the entitlement under some express or implied term of the contract;
(4) the law governing the implication of terms in a contract has been firmly established (if not earlier) by the decision of the House of Lords in Liverpool City Council v. Irwin [1977] AC 239 ('Liverpool'). In the words of Lord Bingham MR in Philips Electronique v British Sky Broadcasting [1995] EMLR 472 ('Philips') at 481, the essence of much learning on implied terms is distilled in the speech of Lord Simon of Glaisdale on behalf of the majority of the Judicial Committee of the Privy Council in BP Refinery (Westernport) Pty Ltd v. The President,Councillors and Ratepayers of the Shire of Hastings (1978) 52 ALJR 20 at 26:
'Their Lordships do not think it necessary to review exhaustively the authorities on the implication of a term in a contract which the parties have not thought fit to express. In their view, for a term to be implied, the following conditions (which may overlap) must be satisfied:
(1) it must be reasonable and equitable;
(2) it must be necessary to give business efficacy to the contract, so that no term will be implied if the contract is effective without it;
(3) it must be so obvious that "it goes without saying";
(4) it must be capable of clear expression;
(5) it must not contradict any express term of the contract.'
Lord Bingham added an explanation and warning:
'The courts' usual role in contractual interpretation is, by resolving ambiguities or reconciling apparent inconsistencies, to attribute the true meaning to the language in which the parties themselves have expressed their contract. The implication of contract terms involves a different and altogether more ambitious undertaking: the interpolation of terms to deal with matters for which, ex hypothesi, the parties themselves have made no provision. It is because the implication of terms is so potentially intrusive that the law imposes strict constraints on the exercise of this extraordinary power. … The question of whether a term should be implied, and if so what, almost inevitably arises after a crisis has been reached in the performance of the contract. So the court comes to the task of implication with the benefit of hindsight, and it is tempting for the court then to fashion a term which will reflect the merits of the situation as they then appear. Tempting, but wrong.'
(5) where (as in the present case) it is necessary to imply the grant of some right to fill a lacuna in the contract and the question arises how this lacuna is to be filled, guidance is again to be found in Liverpool. The principle is clearly stated that in deciding which of various alternatives should constitute the contents of the term to be implied, the choice must be that which does not exceed what is necessary in the circumstances (see Lord Wilberforce at 245 F–G). In short a minimalist approach is called for. An implication may only be made if this is necessary, and then only of what is necessary and no more;
(6) accordingly if it is necessary to imply some grant of rights in respect of a copyright work, and the need could be satisfied by the grant of a licence or an assignment of the copyright, the implication will be of the grant of a licence only;
(7) circumstances may exist when the necessity for an assignment of copyright may be established. As Mr Howe has submitted, these circumstances are, however, only likely to arise if the client needs in addition to the right to use the copyright works the right to exclude the contractor from using the work and the ability to enforce the copyright against third parties. Examples of when this situation may arise include:
(a) where the purpose in commissioning the work is for the client to multiply and sell copies on the market for which the work was created free from the sale of copies in competition with the client by the contractor or third parties;
(b) where the contractor creates a work which is derivative from a pre-existing work of the client, e.g. when a draughtsman is engaged to turn designs of an article in sketch form by the client into formal manufacturing drawings, and the draughtsman could not use the drawings himself without infringing the underlying rights of the client;
(c) where the contractor is engaged as part of a team with employees of the client to produce a composite or joint work and he is unable, or cannot have been intended to be able, to exploit for his own benefit the joint work or indeed any distinct contribution of his own created in the course of his engagement: see Nichols Advanced Vehicle Systems Inc v. Rees [1979] RPC 127 at 139 and consider Sofia Bogrich v. Shape Machines unreported, 4th November 1994, Pat Ct and in particular page 15 of the transcript of the judgment of Aldous J.
In each case it is necessary to consider the price paid, the impact on the Contractor of assignment of copyright and whether it can sensibly have been intended that the contractor should retain any copyright as a separate item of property;
(8) if necessity requires only the grant of a licence, the ambit of the licence must be the minimum which is required to secure to the client the entitlement which the parties to the contract must have intended to confer upon him. The amount of the purchase price which the client under the contract has obliged himself to pay may be relevant to the ambit of the licence. Thus in Stovin-Bradford v. Volpoint Properties Ltd [1971] 1 Ch 1007, where the client agreed to pay only a nominal fee to his architect for the preparation of plans, he was held to have a licence to use the plans for no purpose beyond the anticipated application for planning permission. By contrast in Blair v. Osborne & Tompkins [1971] 21 QB 78 , where the client was charged the full RIBA scale fee, his licence was held to extend to using the plans for the building itself. Guidance as to the approach to be adopted is provided in a passage in the judgment of Jacobs J. in Beck v. Montana Construction Pty [1964–5] NSWR 229 at 235 cited with approval by Widgery LJ in Blair v. Osborne & Tompkins supra at p.87:
'it seems to me that the principle involved is this; that the engagement for reward of a person to produce material of a nature which is capable of being the subject of copyright implies a permission, or consent, or licence in the person giving the engagement to use the material in the manner and for the purpose in which and for which it was contemplated between the parties that it would be used at the time of the engagement.'
(9) the licence accordingly is to be limited to what is in the joint contemplation of the parties at the date of the contract, and does not extend to enable the client to take advantage of a new unexpected profitable opportunity (consider Meikle v. Maufe [1941] 3 All ER 144 )."
Those principles were applied by the Court of Appeal in Griggs  which also concerned a customer's beneficial interest in a logo that had been designed for it, Lord Justice Jacob added at paragraph [16]:
"[16] So in the end, Mr Hobbs did not really challenge Lightman J.'s statement of the law which the deputy judge went on to apply. Mr Hobbs went on, however, to challenge that application. The deputy judge said this:
'36. It seems to me that when a free-lance designer is commissioned to create a logo for a client, the designer will have an uphill task if he wishes to contend that he is free to assign the copyright to a competitor. This is because, in order to give business efficacy to the contract, it will rarely be enough to imply a term that the client shall enjoy a mere licence to use the logo, and nothing more. In most cases it will be obvious, it will 'go without saying', that the client will need further rights. He will surely need some right to prevent others from reproducing the logo.
37. Indeed it seems to me that, in the ordinary way, a logo is a paradigm case falling within principle (7) in Lightman J's formulation.'
[17] Mr Hobbs initially characterised this as 'adopting a skewed approach' in favour of the commissioner. But as the argument developed, I think he in effect resiled from this. For he accepted that if Mr Evans' brief had simply been to combine two logos so as to produce a composite logo for the client, business efficacy would indeed require that all rights in the work should belong to the client.
[18] What, submitted Mr Hobbs, made all the difference in this case is that Mr Evans did not know that what he was being asked to produce was just a logo trade mark for the client – a mark which the client would be free to use all over the world actually on the boots as well as on point of sale material and elsewhere. All Mr Evans was told, and thought he was producing, was material for UK point of sale. That being so, runs the argument, all the client needed was a licence (possibly exclusive) for that purpose. A minimalist approach (see Lightman J.'s para.[6]) to the admittedly necessary implied term gives no more than that. It follows that there was no implied term as to title to copyright at all, and only a limited licence. Apart from that Mr Evans retained all the rights.
[19] I find that conclusion fantastic. If an officious bystander had asked at the time of contract whether Mr Evans was going to retain rights in the combined logo which could be used against the client by Mr Evans (or anyone to whom he sold the rights) anywhere in the world, other than in respect of point of sale material in the UK, the answer would surely have been 'of course not.' Mr Evans had no conceivable further interest in the work being created – indeed he surely would never have had the job at all if there had been a debate about this and he had asserted that that was to be the basis of his work.
[20] Moreover the deputy judge's conclusion of fact at para.[47] (quoted at [11] above) is conclusive. He found that the reference to 'UK point of sale' material was only for identification of the work to be done. In other words it was not there to describe or limit the rights in the work.
[21] I should add that the judge's conclusion that Mr Evans was paid the proper rate for the work (and his rejection of the contention that he would have charged more if he had known about intended wider use) disposes of any possible argument based on the notion that Mr Evans needed to retain the copyright so that he could call for payment for such further use. Further use does indeed often cause problems as between an author and his commissioner and it is always better if payment for this is spelt out in the contract. A right to further payment for unforeseen or undisclosed further use may in some cases be implied. In others the author may indeed retain copyright and actually be able to prevent further use. All depends on the circumstances. In the present case, however, there is simply no such problem."
Judge Hacon found for the defendants. He set out his reasoning at paragraph [29] of his judgment:
"[29] In my judgment, in August 2011 Kilnworx through Mr Bunting and Purple Penguin through Mr Kirk entered into an agreement for the creation of the Logos as described above. There was an implied term in the contract. It was a term of the usual nature to be implied into a contract for the creation of a logo, namely that Kilnworx would own the copyrights in the Logos. Purple Penguin, as Mr Kirk's employer, was the owner of the legal interest in the copyrights at the time the Logos were created. It held such copyrights on trust for Kilnworx. By the written agreement dated 23 August 2013 between Purple Penguin and Atelier the legal interest was assigned to Atelier.
[30] Atelier was not a purchaser of the copyrights for value without notice of Kilnworx's claim to the copyrights. In other words and in a further parallel with Griggs, Atelier is not a darling of equity (see Griggs at [7]). Therefore Atelier took the legal interest in the copyrights subject to Kilnworx's equitable interest.
[31] I think the reality is that Atelier's current claim to the unencumbered ownership of the copyrights in the Logos is borne of the unfortunate and bad tempered split between the individuals who thought up the Kilnworx project and a wish on the part of Mr Bunting to hold Kilnworx and its remaining directors over a copyright barrel in order to recover some of what he believes to be the £45,000 or so owed to him. There is nothing intrinsically wrong in that, but the barrel has to be there. In my view it is not."
It followed that Kilnworx was beneficially entitled to the copyrights and that the action for infringement failed.

It is important to remember that each case revolves in its own facts and while it may not be easy to argue that the author of a commissioned work is free to do with the work whatever he wishes there may be circumstances where that was the manifest intention of the parties. Mr Justice Lightman referred to the RIBA contract and that is as it should be since it is the architect and not the client who has an interest in preventing unauthorized reproduction of his designs. That is because it is the architect and not the client who suffers loss - namelyt a second commission and chance to earn another fee - when his design is pirated. In the case of a logo the parties' interests are reversed, It is the client and not the author who will use the logo as a trade mark or seek damages for loss of sales if the mark is infringed.

Although a short case it is an interesting one. I have already referred to it in one skeleton argument and I expect my reference to be the last. As the case comes from the Potteries and as I know well both the counsel for the claimant and his instructing solicitors and the trade mark attorney for the defendants I read the judgment with considerable personal interest. I have no doubt that it would have been hard fought and well argued on both sides. Should anyone wish to discuss this case or copyright in general he or she should not hesitate to call me on 020 7404 5252 or fill in my contact form.