New Blogs: Securing Innovation

I am grateful to Stephen Nipper for drawing my attention to a new blog published by ip.com Inc called "Securing Innovation". He actually calls it an IP blog of note. The blog focuses on IP management and it has some interesting articles on the company's services.

Ip.com is actually a company I know a little since its UK arm is or at least was managed by my very good friend Dr. Ron Jones of Horizon Ceramics. It offers a number of services in this country including conferences and seminars on IP. I had the pleasure of speaking at one at Lancaster University last year. Its other services include searches, a secure document repository and a service called "defensive publication" which is probably more relevant to a first-to-invent regime like the USA than a first-to-file system like our own.

Ron's wife, Wei Huang, runs a very interesting consultancy called VTZ International which assists UK and other foreign businesses to sell to or invest in China. She actually represents nipc in that country as well as a leading Chongqing law firm in the UK.

I am not sure whether "Securing Innovation" will have any British or European content but even if it doesn't it provides some interesting insights into what is clearly a substantial and growing service industry in the USA.

Registered Community Designs: EC Accession to the Hague Agreement

On 1 Jan 2008, the EC (including the UK notwithstanding our wonderful PM's prior engagement at the Kirkcaldy Sea Otters' early morning Hogmanay swim around the Bass Rock or indeed to do just about anything to avoid showing enthusiasm for the EU) accedes to the Hague Agreement. This agreement is a bit like the Madrid Protocol and the Patent Co-operation Treaty in that it facilitates multiple applications for design registration from a single filing.

EC accession to Hague will not be anything like as far-reaching as its accession to Madrid since the only sizable countries outside Europe that are party to the agreement are Egypt, Indonesia, Morocco, Singapore and Turkey, but accession does present a protection option to British design owners that did not previously exist.

Even though HMG is not acceding to Hague in its own right, EC accession necessitates amendments to our law. S.11ZA (1) A) of the Registered Design Act 1949 will change from:

"The registration of a design (“the later design”) may be declared invalid if it is not new or does not have individual character when compared to a design which—
...........
(b) is protected as from a date prior to the relevant date by virtue of registration under this Act or the Community Design Regulation or an application for such registration"

to

"The registration of a design (“the later design”) may be declared invalid if it is not new or does not have individual character when compared to a design which—
...........
(b) is protected as from a date prior to the relevant date—
(i) by virtue of registration under this Act or the Community Design Regulation or an application for such registration, or
(ii) by virtue of an international registration (within the meaning of Articles 106a to 106f of that Regulation) designating the Community.”

with effect from 1 Jan 2008 by virtue of reg 2 of The Designs (International Registrations Designating the European Community) Regulations 2007 (SI 2007 No 2278). There are also slight amendments to the Community Design Regulations 2005 (SI No 2339), namely the insertion of a definition for "international registration" and it will be a defence to a threats action to prove the invalidity of an international registration.

Pork Pie Winner

I am glad to announce a winner of my pork pie offer. The first and so far only person outside West Yorkshire to pronounce Slaithwaite like a local is Mrs Jean Sutherland. Jean is a Scottish solicitor of West Country and North British provenance residing and domiciled in Caledonia. Having said that, she did go to school in Harrogate and lived in Elland for a while. Nevertheless she qualifies for the prize and if E. Grange & Son do mail order one of their biggest and juiciest pies is on its way to the homeland of Barney and Beazley's new friend.

Going to the Dogs - Quite Literally

After sounding off about the contemptible attack on the rule of law in Pakistan including the sickening sight of attacks on peaceful demonstrations by lawyers a few weeks ago, I vowed to stick to intellectual property in future. However, this spectacle by an honorary silk, bencher and first lord of the Treasury warrants another departure from this blog's editorial policy. Tone doesn't even make top billing. Starpulse rates Alan Jackson (whoever he may be) as the main guest star. This episode reminds me of the depiction at Naqsh-e Rustam of the humiliation of two Roman emperors by Shapur I of Persia. Perhaps we shouldn't be too surprised. Cartoons often drew Tone as a poodle, didn't they.

General Gossip: wiki revisions, EPC2000, my wonderful MP and the Copyright Act 1956

Just to let you know that I have uploaded the passing off page in the brands tree of WikIP.

Just in case you missed it, the revisions to the European Patent Convention agreed at Munich on 29 Nov 2000 came into force yesterday. It's already spawned the Patents Act 2004. If you want a belly laugh just look at the sort of guff that our wonderful government trumpeted in its press release (see Lord Triesman's press release on the UK-IPO website). Not a word about art 2 of the Protocol on the Interpretation of art 69 EPC you'll notice. They talk about nothing else in Slaithwaite Working Men's Club. A free Granges pork pie by the way, for the first reader not of West Riding residence or provenance to ring me up with the correct pronunciation of Slaithwaite. Clue, a pompous specimen of the young bar from the Smoke called Braithwaite got very tetchy when I referred to him as "my learned friend Mr Browit". Not surprising really when you think about the total lack of interest in intellectual property shown by my MP. Fortunately, one of the contenders for her job actually does know a thing or two about patents having managed a technology based small business.

Finally, one very welcome development on the OPSI website I've just noticed is that they've uploaded some pre-1988 legislation including the 1956 Copyright Act. It's surprising how often one still needs to refer to it. Only last week I had to look up the old law on Crown copyright. A number of other statutes which I consult frequently are also there including the Partnership Act 1890, the Supply of Goods and Services Act 1982 and the Insolvency Act 1986. Shouldn't have bought Halsbury's Statutes should I.

IP Crime: Intellectual Property Crime Report

One of the recommendations of the late lamented DTI's Innovation Report of 2003 was to develop a new strategy for dealing with IP Crime. Accordingly the UK-IPO set up set up a specialist IP Crime Group in 2004 to:

- Carry out a National IP Crime Strategy and publish an Annual Enforcement Report

- Bring together government policy-makers, industry and enforcers to create a co-ordinated approach to IP enforcement

- Establish an accurate measurement of IP crime within the UK

- Identify areas of threat and specific harm

- Support training for enforcement officers and spread best practice

- Build a more consistent approach to enforcement of IP crime and

- Raise consumer awareness.

The latest annual report has now been published and it makes pretty depressing reading. Apparently The true measure of the level of IP crime within the UK or for that matter the whole of the OECD is unknown but believed to be "significant".

The Group makes the following recommendations:

1. The UK - IPO in conjunction with a new "Strategic Advisory Board for IP Policy" (SABIP) to enhance the coordination of IP related research.
2. The Government (the UK-IPO) should work with IP Crime Group members to agree an accurate national standard measure of the level of IP crime, including industry revenue loss, industry profit loss, criminal market size and criminal gain.
3. The Government to agree that the UK-IPO records the seizures of counterfeit and
   pirated goods from all enforcement authorities and publish the results of prosecutions and Proceeds of Crime actions on an annual basis.
4. The use of the Proceeds of Crime Act and Financial Investigators to be encouraged when prosecuting IP criminals.
5. Members of the IP rights owning community should be encouraged to provide training and share expertise with enforcers to improve their technical knowledge and understanding of IP.
6. The UK-IPO to facilitate a continuing national program of awareness raising within enforcement authorities and officials within the judicial process, with the assistance of brands and trade associations where appropriate.
7. UK-IPO to develop and host a secure web-based resource that allows access by enforcers to counterfeit product identification guidelines and a contacts database listing brand protection departments and rights holders representatives’ details for use by the IP community.
8. Achieve the wider dissemination of expertise and knowledge pertinent to internet investigations through delivery by the IP rights owning community across enforcement agencies and the IP Crime Group membership.
9. UK-IPO to engage at corporate level with UK businesses, to ensure an understanding of the responsibilities and work programme being progressed by the UK-IPO / IP Crime Group.
   Intellectual Property Crime Report 2007 IP Crime Group.

Actually if the government really wants to make a difference to IP enforcement it would extend The Company Directors Disqualification Act 1986 to directors of companies that infringe intellectual property rights in the way that s.204 of the Enterprise Act 2002 penalizes directors of companies that breach national and EC competition law. I have suggested this before but nobody seems to take any notice.

Wikid - Change of Name and New Pages

Thank you to everyone who has had a kind word for my IP Wiki, especially David Pearce who pointed out that my IP wiki was not the first in the UK. It rather reminds me of "IPKat eats Humble Pie" a couple of years ago when the IPKat team found out that I was not the first barrister to publish an IP Blog. David has referred me to UK Patents for which I am grateful because it is really good.

I have changed the name of the wiki from "Intellectual Property" to "WIKIP". Such an obvious pun. Someone must surely have fenced it off for am IP wiki before now. Actually, someone has registered it as a domain name but for what appears to be an excellent beverage called zrii which is "a blend of pure natural fruits and herbs based on 5,000 years of Ayurvedic health wisdom and Western medical science which work together in a nutritional preservative free form. Apparently the "Zrii taste enlivens the tongue and delivers the potency of amalaki" (see http://www.wikip.com/). I wonder whether felines drink it.

I have added two new pages to WIKIP on brands and trade marks. More to follow soon.

Design Right and Personal Liability of Directors: Societa Esplosivi Industriali Spa v Ordnance Technologies (UK) Ltd Round 2

This was the second round of a case that had already been partly decided by Mr Justice Lewison nearly 4 years ago (see Societa Esplosivi Industriali SPA v Ordnance Technologies Ltd. and Others [2004] EWHC 48 (Ch) (21 Jan 2004)). That judge had declined to decide certain issues at that trial because the defendants had failed to give adequate disclosure. The issues that remained were:
- whether the defendant Ordnance Technologies Ltd. and its former managing director were in breach of contract;
- whether they had infringed the claimant's copyright;
- whether they had breached obligations of confidence and equitable confidence; and
- whether they had infringed the claimant's design right.
The dispute concerned weapons systems, namely multiple warhead systems and dense metal penetrators. By the time the adjourned issues came on for trial, Ordnance Technologies Ltd. had been wound up and the dispute was essentially between the claimant and that company's former managing director. These remaining issues came before Mr. Justice Lindsay.

Why this Case is worth reading
The judge disposed of the contract, copyright and confidence claims in short order. Most of the meat of his judgment concerned the construction of s.213 and s.226 (1) (b) and the personal liability of the director. There's not really much new law but some well known principles are conveniently expressed.

"Commonplace" revisited
The one point on subsistence was whether a conical projectile design which applied design principles that had been known since the 19th century could be described as commonplace. The judge dealt with this point as follows:

"Whilst, in that design field, conical liners, for example, are not at all unusual, it has been made clear to me that small variations in shape, internal and external, can make large difference to the charges' performance. So far as concerns the shape, the thickness, constant or otherwise, in the walls of the cone, the rectilinearity or curve of the sides of the cones, the angle of the sides of the cone to one another, the extent to which the point of the cone is sharp or is rounded and its thickness at that point are all factors varying from one design to another and which lead to significantly different performance. Liners, albeit commonly broadly conical, are, so to speak, bespoke, tailored, along with the whole of the shaped charge, very much to the classes of targets at which they are intended to be aimed and which they are intended to destroy and tailored also to how they are to be delivered to the target. Further, evidence was given to me of Lancer 2 shaped charges having a performance which, at the time, was unmatched anywhere in the world, a performance in the attainment of which the particular shaped charge liner and the shape of that crucial component was, with other features, an important factor. That tends to suggest the shape of the relevant liners was uncommon. No evidence was led which suggested the ordinariness of the Lancer 2 shaped charge either as a whole or as to any of its parts and I am left in no doubt but that neither in whole or in part was the Lancer 2 shaped charge warhead "commonplace" within the intendment of section 213(4). Both the design of its parts and the design of the whole were original designs for the purposes of the Act."

None of the authorities on the commonplace exception was referred to by the judge.

Construction of "making a design document recording the design for the purpose of enabling such articles to be made"
The issue here was the mental element necessary for liability under s.226 (1) (b) imported by the words "for the purpose of". That is really the only part of the judgment that is novel. The judge said

"it is, in point of construction, a necessary component of a successful allegation within the documents class of section 226(l)(b) that it should be proved of the alleged infringer that at the material time what he did or authorised to be done by way of the making of a design document recording the design in question was done with the purpose in him that articles to the design should thereby be enabled to be made. It is not required that he should have the purpose that he or he whom he authorises should himself or themselves make or be enabled to make such articles but rather that within the infringer there should be the purpose of enabling the articles to be made. Moreover, as with any other state of mind, its proof is not necessarily to be negatived by a denial by the defendant concerned; whether the necessary purpose did or did not exist at some material time is likely to require an evaluation of all surrounding circumstances, amongst which the defendant's own denial, if there has been one, is merely a part and not necessarily a credible part."

This is the part of the case that is most likely to be remembered.

Directors' Liability
Mr Justice Lindsay found that design right did subsist and that it had been infringed by Ordnance Technologies Ltd. Since that company no longer existed the question was whether the director should be personally liable. In concluding that he was, the judge applied the reasoning of the Court of Appeal in MCA Records Inc v Charly Records Limited [2002] FSR 26 401.

Wikid - Services for SME, Inventors and Designers

We were one of the first barristers' chambers with a website, one of the first with a blog, one of the first with a ".eu" TLD (though we have not yet decided how to use it), one of the few with a ".law.pro" domain (though we are probably going to give that up) and the first with a WAP site (which we definitely have given up). Now we are one of the first (if not the first) to launch and support a voluntary public wiki for our area of the law.

We could be wrong, but we think we have the first IP law wiki anywhere - at least in the UK Like our other websites and this blog, the wiki will concentrate on advice for SME and creative and innovative individuals. They need specialist legal services just as much as Siemens and Microsoft but can't afford the silly fees that are often charged for such services.

Though this has been launched and is supported by nipc it is open to everyone with an interest in IP and technology law and we hope everybody will take part.

Claims against States: Czech Republic v European Media Ventures SA

Governments undertake international obligations to protect the intellectual assets of their own and other countries' nationals but what happens if they don't? What if, for example, a state does not enforce its brand new copyright statute or even enact copyright legislation with the result that pirate copies of first run films or the latest application software flood world markets?

If the delinquent state belongs to the WTO (World Trade Organization) victims of that state's failure to suppress piracy can ask their government to call upon that state to comply with its obligations under TRIPs (Trade-Related Aspects of Intellectual Property Rights). If that state fails to do mend its ways, the complaining state can call for consultations under Annexe 2 to the WTO Agreement. Should those consultations fail a dispute settlement panel can be set up which will report to the Dispute Settlement Body of the WTO. If a breach is found and the member in breach still does not live up to its obligations the complaining party may ask the Dispute Settlement Body to authorize trade sanctions on the defaulting party. The index of disputes by subject matter on the WTO website shows that there have been a few disputes relating to TRIPs.

The problem with TRIPs from the point of view of an IP owner is that the complaint is made by governments not the owner. Governments may not want to take up the complaint because they have other interests to protect. Even if a national government does launch a complaint the IP owner will not usually benefit directly.

A much better solution from the point of view of IP owners are bilateral investment treaties. These are agreements between two governments that protect the investments of each country's nationals in the territories of the other. As good an example as any is the one that subsists between HM government and the Republic of Sierra Leone for the Promotion and Protection of Investments made in Freetown on 13 Jan 2000. Art 1 (a) of the treaty defines "investment" as "every kind of asset" and in particular, though not exclusively, includes "intellectual property rights, goodwill, technical processes and know how." The same provision makes clear that the term "investment" includes all investments, whether made before or after the date of entry into force of the agreement. Bilateral investment treaties contain a prohibition of expropriation in the following form:

"Investments of nationals or companies of either Contracting Party shall not be nationalised, expropriated or subjected to measures having effect equivalent to nationalisation or expropriation (hereinafter referred to as "expropriation") in the territory of the other Contracting Party except for a public purpose related to the internal needs of that Party on a non-discriminatory basis and against prompt, adequate and effective compensation. Such compensation shall amount to the genuine value of the investment expropriated immediately before the expropriation or before the impending expropriation became public knowledge, whichever is the earlier, shall include interest at a normal commercial rate until the date of payment, shall be made without delay, be effectively realizable and be freely transferable. The national or company affected shall have a right, under the law of the Contracting Party making the expropriation, to prompt review, by a judicial or other independent authority of that Party, of his or its case and of the valuation of his or its investment in accordance with the principles set out in this paragraph."

Art 8 (1) of the treaty entitles nationals of either country to refer disputes with the government of the other contracting party to arbitration before ICSID (the International Centre for the Settlement of Investment Disputes). "Expropriation" is given a very broad interpretation in these agreements. In Metalclad v United Mexican States (CASE No. ARB(AF)/97/1, 30 Aug 2000) the arbitral panel (Professor Sir Elihu Lauterpacht, QC, CBE of the UK (president), Mr Benjamin R. Civiletti of the USA and Mr José Luis Siqueiros of Mexico) held that refusal of planning permission by a local authority for a landfill site could amount to "expropriation" in some circumstances. Although the decision was partly set aside by the British Columbia courts the very broad definition of "expropriation" was unaffected. Although there has been only one case on intellectual property (Shell Brands International AG and Another v Republic of Nicaragua (ICSID Case No. ARB/06/14 which appears to have been settled) there is no reason why a government that fails to protect a complainant's investment in brands, design, technology or creative works should not be held to account before ICSID.

The jurisdiction of tribunals such as ICSID to hear complaints against sovereigns by private companies under bilateral investment treaties came before Mr Justice Simon of the English Commercial Court in Czech Republic v European Media Ventures SA [2007] EWHC 2851 (Comm) (5 Dec 2007). The dispute arose between the Czech government and a Luxembourg TV company under the terms of a bilateral investment treaty between the Belgo-Luxembourg economic union and the Czech Republic. The treaty provided as follows:

"1. Disputes between one of the Contracting Parties and an investor of the other Contracting Party concerning compensation due by virtue of Article 3 Paragraphs (1) and (3), shall be the subject of a written notification, accompanied by a detailed memorandum, addressed by the investor to the concerned Contracting Party. To the extent possible, such disputes shall be settled amicably.
2. If the dispute is not resolved within six months from the date of the written notification specified in Paragraph (1), and in the absence of any other form of settlement agreed between the parties to the dispute, it shall be submitted to arbitration before an ad hoc
tribunal."

The Luxembourg company complained of indirect expropriation of its investment in a Czech television station 'TV3' and referred the dispute to the ad hoc tribunal in accordance with para (2) of the above article. The tribunal (Lord Mustill (Chairman), Dr Julian Lew QC, and Professor Christopher Greenwood QC, CMG) found that it had jurisdiction to hear the Luxembourg company's complaint and made an award to that effect. The Czech government challenged that award on the grounds that art 8 (2) conferred jurisdiction on the tribunal only to determine the amount of compensation where a claim had been admitted but not to decide liability. After a very interesting discussion on the approach to interpreting a treaty, Mr Justice Simon held that the article did confer jurisdiction on the tribunal to determine liability as well as quantum.

Metalclad was a fairly small California company and it was represented before ICSID by Clyde C Pearce a sole practitioner practising in Salinas (a town in California about the size of Huddersfield). It was nevertheless able to bring a government to book. If a small or medium enterprise in say the UK finds that its rights in Utopia are not protected by the Utopian courts for one reason or another it has a directly enforceable right to compensation without recourse to expensive big city law firms.