29 September 2005
Each workshop was on the same pattern. It began with a market overview followed by presentations from a lawyer, someone already doing business in the area, a freight forwarder rejoicing in the name of Howard Hughes and private chats over coffee. The market overviews in each of the seminars that I attended covered simple history and geography.
The legal seminar for the USA was led by Ned Martin from the London office of DLA Piper et al. He gave a brief overview on the legal system touching on the federal structure, methods of doing business, business entities, taxation, consumer protection, employment et cetera. He counselled us not to believe everything that we hear about the USA being a litigious society. Out of 200 or so clients he had represented over many years, only a handful were contentious matters. He did, however, stress that one area most likely to lead to lead to litigation was patent or trade mark infringement.
I tested Ned with a question on long arm statutes and amenability to process of foreign businesses through activity on the internet. He is obviously an astute man because he saw that question coming and deftly avoided it. He said that a foreign company going about its normal, lawful business had nothing to fear. His only concession to me was that that might not be the case with an e-commerce site because of business method patents and the fact that patent applications do not have to be published in the USA. Over coffee afterwards, Ned told me that he had shared an office with Jay Westermeier whom I had met several times at Computer Law Association conferences.
The Brazilian law talk was given by a most charming lady called Vera Helena de Moraes Dantas of the London branch of Messrs. Noronha Advogados. She said a lot of interesting things but the two points that she emphasized were that there is functional as well as aesthetic registered design protection in Brazil, and that intellectual property owners have to register with INPI (the Brazilian patent office) as well as the central bank, federal, state and local governments and all sorts of other authorities in order to receive royalties. Vera confirmed that Brazil is signed up to TRIPs, Berne, the PCT and Madrid. The courts can be relied upon to grant interim injunctions pretty quickly but you can wait years or even decades for final judgment. In the question and answer session that followed her talk, Vera agreed that one way round that problem might be to insert an arbitration clause into a licence agreement. The courts readily enforce arbitral awards and support international arbitrations. Lawyers' fees are generally lower than in London and it is possible to recover costs (including legal fees and disbursements) from the losing party.
The talks on non-legal topics were also interesting. Trevor Bargh of Charter Solutions gave 10 tips for doing business in America which I actually jotted down: (1) have clarity of vision, (2) rely on your gut feelings, (3) make your business stand out from the crowd, (4) respect cultural differences, (5) think big, (6) have self belief, (7) don't be afraid to make mistakes, (8) create a sense of urgency, (9) be enthusiastic and (10) remember that nothing is impossible. These seem to me to be eminently sensible and just as applicable to doing business in Merseyside as in North America.
Another delightful young lady from Brazil called Ana Baccan spoke about "forfaits". At first, I thought it was a misspelling of "forfeit" but as her talk unfolded I realized that it was a system for discounting IOUs to get round the high cost of borrowing and residual inflation. Having taught the Institute of Bankers (apparently now "Chartered") evening class at a different polytechnic every night when I was a pupil in London 25 years ago where my students were often as responsive as a brick wall I challenged Ana to explain how those discounts are computed. Without batting an eyelid she produced the formula
fv = pv x (1 + i/t)
where fv is future value (that is to say the amount the debtor actually pays), pv is present value (the amount the creditor gets from his or her bank), i is the rate of interest per diem and t is the term expressed as the number of days for which the facility is required divided by 360. Either Ana is exceptional or the Brazilian education system is streaks ahead of ours.
Surprisingly, there weren't too many other lawyers about. I was the only barrister. In the queue for the buffet, I met an employment lawyer from Turners of Preston who was giving the talk on Canadian law who explained that he had developed his interest in Canadian law because his wife is Canadian. He added that his firm is linked to Roiter Zucker which I know slightly better.
Altogether a very jolly day. I heard some really good Bush jokes which must be apocryphal, mustn't they. One was "The trouble with imports is that they come from abroad". The other: "The reason why the French are not very good at business is that they don't have a word for entrepreneur."
For the benefit of Americans and other readers outside the EC, the phrase "data protection" refers to a body of legislation that requires users of computer systems ("data controllers") to hold and process data relating to living human beings ("data subjects") in accordance with a set of principles ("the data protection principles"). They are essentially as follows:
1. Personal data shall be processed fairly and lawfully.
2. Personal data shall be obtained only for one or more specified and lawful purposes, and shall not be further processed in any manner incompatible with that purpose or those purposes.
3. Personal data shall be adequate, relevant and not excessive in relation to the purpose or purposes for which they are processed.
4. Personal data shall be accurate and, where necessary, kept up to date.
5. Personal data processed for any purpose or purposes shall not be kept for longer than is necessary for that purpose or those purposes.
6. Personal data shall be processed in accordance with the rights of data subjects under this Act.
7. Appropriate technical and organizational measures shall be taken against unauthorized or unlawful processing of personal data and against accidental loss or destruction of, or damage to, personal data.
8. Personal data shall not be transferred to a country or territory outside the European Economic Area (the 25 states of the EC plus Norway, Iceland, Switzerland and Liechtenstein) unless that country or territory ensures an adequate level of protection for the rights and freedoms of data subjects in relation to the processing of personal data.
Non-compliance with those principles can lead to service of an order by an official known as "the Information Commissioner" (formerly called the"Data Protection Commissioner" and before that the "Data Protection Registrar") and failure to abide by such an order is an offence. Moreover, anyone who suffers damage as a result of such non-compliace can sue for an injunctive and pecuniary relief.
The data protection principle that affects people outside Europe and sometimes gives rise to some pretty intemperate language is the 8th data protection principle. Many countries around the world have enacted legislation similar to ours but one important exception is the USA. A British branch of an American company cannot lawfully transfer data relating to employees or customers in the UK to its US head office unless the US company provides legally enforceable guarantees on the storage and processing of such data that are broadly equivalent to those imposed by statute. Of course, many US and other foreign companies would do that voluntary out of self-interest but this legislation obliges them to do so if they want to exchange data freely across the Atlantic.
I will discusss these topics in more detail in a later post. I should also like to mention that I have added some more articles and case notes on computer contracts including some stuff that I wrote for the old Lancaster Buildings website on Y2K and preparing for the euro.
28 September 2005
Although written from a US perspective, there is an interesting article by Stacey Friends entitled "Name game: Tips for choosing a trademark" in Boston Bizwoman. On today's home page of that same website incidentally there is a poll on "Do you have long term care insurance?". A staggering 77% either do not have such cover or do not know what it is. Bearing in mind that this website is aimed at business women who can be expected to be better informed and better able to afford insurance than most other groups, I rejoice in the fact that I live in a country that still has a welfare state despite its limitations.
Tod Mayover, whose IP Counsel Blog I have commended more than once in the past, has an article on claim construction in the light of Phillips. v. AWH Corp. There is a lot of good stuff on his site.
27 September 2005
The transposed pages include materials by two of our distinguished former members, Raymond Henley who is now teaching the Bar vocational course at Manchester Metropolitan University and Richard Cole who left chambers to take up an appointment with the civil service.
Raymond wrote a very good case note on Nicholas Strauss QC's judgment in Countrywide Communications Limited v ICL Pathway Limited and International Computers Limited. This was a case where a potential sub-contractor did a lot of work to help the main contractor get a contract upon the understanding that it would get a share of the contract work if the bid was successful. The bid was in fact successful but the sub-contractor was not taken on. The judge allowed the sub-contractor a quantum meruit. This case deserved much better recognition because this sort of situation happens all the time. It happened to arise in the computer industry but it could have happened in contruction, engineering, putting together a syndicated loan and even legal work.
Richard's article is on the St Albans case. It concerns the question whether computer programs are goods and if so whether and how far the statutory implied term as to quality applies. Though some of these issues are no longer debated so much, the issues of fitness for purpose and satisfactory quality still arise. They are certainly things to be taken into account when drafting contracts.
My case notes are on Columbia Tristar Home Video (International) Inc. v Polygram Film International BV which concerns the duty to keep records for royalty purposes and Crowther v Brownsword and Another on the consequences of repudiation. Again, neither of those cases is particularly well known but they touch on points of significant practical importance.
It appears that the claimant copyright owners sued the wrong defendant. The IP address of the computer that had downloaded the allegedly infringing files belonged not to the defendant but to her 13 year old daughter. The claimant then applied to join the 13 year old with the intention of adding the mother to that claim as a joint tortfeasor on the ground that she had given her daughter the computer. As the case as first pleaded was obviously unsustainable the claimants applied to discontinue their original claim while reserving the right to join the mother as a defendant.
The question before the judge - the case was in the US District Court for Eastern District of Michigan which is roughly equivalent to the Chancery Division in England and Wales - was whether the case should be dismissed altogether or whether the claimants should be allowed to discontinue the action and bring a second action later. They invited the mother to consent to those terms but she refused to do so seeking by cross-application costs against the claimants.
The defendant did not escape entirely criticsm by the judge. He noted that she had refused to consent to an order that would have saved costs, that the claimants had tried to join only those responsible for the infringement, and such costs as the defendant had incurred resulted from efforts to hamper the efficient prosecution of the claim. Accordingly, he granted the claimants' application to discontinue and refused the defendant's application for costs.
Vnunet states that some defendants to file sharing suits have counterclaimed with antitrust and racketeering. It is not clear how whether any of those counterclaims has succeeded. In Europe, abuse of an intellectual property right can occasionally infringe art 82 EEC as in Magill, Radio Telefis Eireann and others v Commission  EUECJ C-241/91P (6 April 1995) but these cases are rare. Having said that, some of the file sharing claims on both sides of the Atlantic have occasionally seemed a little heavy handed.
Visits of the Court outside Washington are rare and as Dennis says, each venue should have a good crowd. He has offered to keep us posted with the progress of the cases that are listed before their honours.
The Federal Cicruit is the court of appeal for patent cases and its equivalent in England and Wales would be Sir Robin Jacob sitting on appeals from Sir Hugh Laddie with Sir David Neuberger and perhaps Sir Nicholas Pumfrey or whoever it is who has recently been appointed to replace Sir Hugh. It would be nice for their lordships after holding court in a lecture theatre at Manchester Met or Sheffield Hallam to queue up for fish and chips in the refectories of those temples of learning.
It's not going to happen, of course, but para 18 of the the Patents Court Guide does say that the Patents Court will sit outside London "if the parties so desire, for the purpose of saving time or costs." Sir David Neuberger actually did sit in Birmingham in Hadley Industries Plc v. Metal Sections Limited, Metsec (UK) Limited  EWHC Patents 284 on 13 Nov, 1998 and Peter Ford often promised to sit in Manchester. I once nearly managed to bring Judge Fysh to Oldham but the other side caved in.
This state statute requires employers to notify employees in advance of surveillance unless they obtain a covert surveillance order from a magistrate. The notice must
(a) the kind of surveillance to be carried out (camera, computer or tracking), and
(b) how the surveillance will be carried out, and
(c) when the surveillance will start, and
(d) whether the surveillance will be continuous or intermittent, and
(e) whether the surveillance will be for a specified limited period or ongoing (s.10 (4)).
Certain places such as changing rooms and lavatories are off limits (s.15). There are also restrictions on blocking emails and internet access. There are exemptions for collective agreements and law enforcement.
On the same subject, the same E-law email mentions the 27th International Conference on Privacy and Personal Data Protection which took place at Montreux the week before last. One of the most interesting topics would have been "How can the requirements of data protection be reconciled with the fight against terrorism?" on Thursday, 15 September 2005 which had speakers from Ireland and Turkey. I looked in vain for speakers from our Home Office or Information Commissioner. Perhaps the Home Office was preoccupied in trying to cajole the rest of Europe to force the telecommunications industry into storing emails and mobile records for years and years at consumers' expense.
IP Central points to a working paper by Anne Layne-Farrar of The AEI-Brookings Joint Centre for Regulatory Studies entitled "Defining Software Patents: A Research Field Guide." Now although I don't usually agree politically with the the institutions that published this paper, I commend this work.
The 10 ideas, by the way, are:
1. The big bang
3. Quantum mechanics
4. The theory of everything
8. Climate change
Do we all agree?
26 September 2005
The blog links events at the summit to other news. Its latest post, for example, "China makes political misstep in WSIS" comments on a report of action taken by the Chinese government against local bloggers and its impact on China's image at the conference.
Not only did that site contain the Nigerian Copyright Act 1990, which supplied the answer that I needed for my advice, but also the Patents and Designs Act 1990 and many other statutes of that enormous and increasingly important country. Two particularly good sections of the website caught my eye. The Nigerian Internet Law Reports, a collection of transcripts of the Supreme Court, and an FAQ which offered some useful advice about some of the too good to be true propositions that occasionally beat our spam filters.
In view of the debate on my Oracle post a few days ago I was interested to see whether there was any equivalent to art 52 (2) (c) EPC and was interested to see that there wasn’t. It would appear that there is no obstacle to patents for software implemented inventions, but I would be interested to find out from Nigerian readers whether that is actually the case.
23 September 2005
Though litigants in person, they might have been expected to have fared better there. They certainly did not lack experience. Laddie J noted that one of them, Mr. Frost, had appeared 127 times in court, mainly in Scotland, although he had no legal education or qualification. His lordship added that that clearly had led him to acquire considerable self confidence as an advocate. Mr Frost did not appear to think much of our legal system. As the judge observed:
"time after time he suggested that Scottish law and procedure is very different. Some of his claims on this front I found surprising. For example, during one of his repeated complaints about the fact that this case had come on rapidly as a speedy trial, he intimated that to do so breached his human rights and that in Scotland it was not possible to order a speedy trial when a litigant in person was involved."
This complaint was particularly rich in that it was made by someone who had actually sought an early trial date.
In Edinburgh they fell at the first hurdle. Cintec was domiciled in Wales and Mr Frost had not pleaded any basis for jurisdiction in Scotland. Cintec applied to dismiss the claim on that point alone. Absent a Scottish domicile, a company can be sued in Scotland only if it can be brought within one of the exceptions in Sched 4. Lord McEwan considered all of them but none would fit.
It's a pity this case will not go further. Not many patent cases seem to come before the Scottish courts. Alba Diagnostics is the last one that I can think of and that went on much longer than it should have.
22 September 2005
More will follow but in the meantime I recommend:
- Tod Lewis Mayover's IP Counsel Blog which has some really good articles on contract drafting
- Contracts Prof Blog by some US academics, and
- Onecle which has masses and masses of precedents that have actually been used including many for the computer industry.
Anyone who needs an on-line version of the Sale of Goods Act 1979, Supply of Goods and Services Act 1982 and the Unfair Contract Terms Act 1977 should check out Western Circuiteer John Antell's site.
Mauritius is an interesting place. It is next door to La Reunion and the first language of most of its people is still French. Although it is in the Commonwealth its legal system appears to have a lot of French influences. For instance, in Sun Insurance Company Ltd v Seagull Insurance Company Ltd and another, a recent road traffic case, the magistrate talks about the need to prove "faute". According to the WIPO, the Ministry of Industry, Commerce and International Trade is responsible for intellectual property on the island. I searched the ministry website on the governmental portal but came back none the wiser. Maybe Sulliman can help.
Until it became a republic in 1992 the Privy Council was the court of last resort for Mauritius. There were always quite a few interesting cases from that part of the world, some of them requiring their lordships to consider French authorities. There were also quite a few Mauritian students at the Inns of Court, particularly Lincoln's. If any of them of my vintage read this blog, I should be glad to hear from them.
Part of the reason for that may be the statutory entrenchment of the ideas-expression dichotomy by s.102 (b) of the US Copyright Act (17 USC 102 (b)) now transposed to TRIPS by art 9 (2) of that Annexe. Part of it may be psychological arising from the requirement to register a copyright in order to bring proceedings in the USA. The significance of that requirement is that it leads to the dissection of a work into "copyrightable" and "non-copyrightable" elements. We have never taken that approach in England. Copyright subsists in a work as a whole. The work may be infringed by copying the whole or a "substantial part". "Substantiality" has never depended on quantity but on quality or, as I prefer to put it, "value added". Thus, in Warwick Film Productions Ltd. v Eisinger  1 Ch 508, whole screeds were lifted from the antecedent work. However, that did not matter because those screeds were the transcript of a trial (Oscar Wilde's as it happens) that had themselves been lifted and were either out of copyright or licensed. Because they were not part of the value added by the author of the antecedent work they were not a substantial part of that work.
All this brings me to the main point which is that my US colleague, Toni Tease, publishes a first class monthly newsletter on her website called "Intellections". Like me, Toni practises intellectual property in a small town not far from a great national park. In her case, the park is Yellowstone (she practises in Billings, Montana) and in mine it is the Peak District National Park (which is much closer to Huddersfield though we don't have geysers or (hopefully) extinct volcanoes). Toni has written a really good article entitled in this month's Intellections entitled "The Importance of Copyright Registrations in Protecting your Copyrightable Works" whcih I commend to English and other Commonwealth IP lawyers, in particular, but also to anyone else interested in this area of US copyright law.
As I have lived through this period, wrote the first Atkin Court Forms on computer supply litigation in 1986 and actually appeared as counsel in some of the English cases, I have traced the history from the days of Gates v Swift  RPC 339 through the Copyright (Computer Software) Amendment Act 1987, the early "look and feel" cases on both sides of the Atlantic, the various EC copyright directives, right up to the WIPO Copyright Treaty of the present.
I have also put in a few links to some of the cases that are now on the internet and the UK and US statutes and the directives. There should be plenty of scope for nostalgia if nothing else.
20 September 2005
The High Court's rejection of that argument caused a lot of consternation at the time. Writing in The Times Roger Maynard and Francis Gibbs said that international media organizations with a strong internet presence were deeply concerned. They expressed the fear that anybody who objects to a website article would be tempted to sue in a country that had favourable defamation laws. David Rowan wrote in the same paper that a consensus was emerging that the case "could make the web a far tamer and less outspoken place". David Fickling and Stuart Miller wrote in The Guardian that media companies and internet campaigners had denounced the decision and feared that it would open the floodgates for a wave of libel actions from around the world. An
opinion article in The New York Times entitled "A Blow to Internet Freedom" compared the judgment to efforts by the Zimbabwe authorities in seeking to punish a writer for an article that the local police had downloaded from a London newspaper's website.
As I argued at the time in a case note on the old NIPC website, those arguments were overdone because they took no account of the rule in Henderson v Henderson (1843) 3 Hare 100 at 115 which had recently been reinforced by the House of Lords' decision in Johnson v. Gore Wood & Co.  UKHL 65;  1 All ER 481;  2 WLR 72 (14 Dec, 2000). That rule was sufficient to prevent multiple actions arising out of substantially the same subject matter. As I had confidently expected, free speech on the internet did not come to an end and the excitement over the High Court's decision died down not to be awakened until now.
On 16 Sep 2005 the Ontario Court of Appeal allowed an appeal by the Washington Post against the refusal of the lower court to stay a claim by a Guinean citizen domiciled in Ontario in respect of a libel alleged to have been published in 1997 which was several years before the claimant took up residence in Ontario (Bangoura v Washington Post and others (2004), 235 DLR (4th) 564). One of the authorities upon which the judge below relied was the Australian High Court's judgment in Gutnick. Their lordships refused to follow that decision because they did not consider it to be helpful.
The Ontario Court gave no reason for not following Gutnick but there is nothing in their judgment to suggest that they had abandoned the Commonwealth multiple publication doctrine for the American single publication rule. The only ground for distinguishing Gutnick appears to have been one of scale. The publisher in Gutnick had 1,700 online subscribers in Victoria whereas only 7 copies of the offending newspaper had been distributed in Ontario. At paragraph  they noted:
"Gutnick was a well-known businessman who resided in Victoria at the time of the impugned publication. There was evidence that BarronÃ’s had some 1,700 Internet subscribers in Australia. Gutnick undertook that he would sue only in Victoria and only in respect of damages to his reputation in that state."
At paragraph  it was noted that there were only 7 subscribers in Ontario.
Out of fairness to the Court, it has to be emphasized that was not the only or even the main reason for its decision. Their lordships were bound by the Court's previous decision in Muscutt v. Courcelles, 2002 CanLII 44957 (ON C.A.) (2002-05-29) which set out the matters to be considered when determining whether to allow service of process outside the jurisdiction:
(i) the connection between the forum and the plaintiff’s claim;
(ii) the connection between the forum and the defendant;
(iii) unfairness to the defendant in assuming jurisdiction;
(iv) unfairness to the plaintiff in not assuming jurisdiction;
(v) the involvement of other parties to the suit;
(vi) the court’s willingness to recognize and enforce an extra-provincial judgment rendered on the same jurisdictional basis;
(vii) whether the case is interprovincial or international in nature; and
(viii) comity and the standards of jurisdiction, recognition and enforcement prevailing elsewhere.
Applying that doctrine, it is not hard to see how the Court reached its decision on the particular facts of that case.
In writing this post, I have to make clear that I am not chambers' expert on defamation. That honour belongs to my colleague Lois Cole-Wilson who will be glad to advise further on this and related issues.
I have also experimented with linking that article to related posts on this blog and also linking those blogs to the site index.
19 September 2005
Not long ago I commented on NMR's Application which was the first decision of the Comptroller following CFPH. Now there is another one and it is even more interesting than the last because of the route by which the hearing officer arrived at his decision. Oracle Corporation's appeal agent the examiner's refusal of a patent for a method of converting text from one mark-up language into another was rejected because the hearing officer, Stephen Probert, interpreted Peter Prescott QC's judgment in CFPH as prohibiting anything that foreclosed computer programs to the public:
"If computer programs are not to be foreclosed to the public, then it is clear to me that I cannot allow this application to proceed to grant. Not only would the present claims (if granted) foreclose computer programs to the public but, on my reading of the claims, there is little or nothing else that would be foreclosed by them."This argument is attractive but it is hard to see how this reasoning can be upheld. If it is right, the no computer program would ever be patented. It will be interesting to see how the case law develops.
17 September 2005
While I will give a hotel and restaurant review, the main purpose of this post is to give an intro to the legal and financial status of the Isle of Man. Though I am here on holiday, I enjoy my work so much that intellectual property is never far from my thoughts and I spent much of yesterday thinking about the island as a venue for special purpose vehicles for securitizing royalty streams and escrow. About two weeks ago, I had emailed one of the advocates (the equivalent of solicitors in Canada or attorneys in the USA as they have a fused profession here as in North America) who claims expertise in media and technology law but that man never responded to two emails, two telephone calls or even a voicemail message. So, if there are opportunities to be had here, neither he nor his firm will participate in them.
For readers outside our continent, the Isle of Man is an island about 50 kilometres long and 15 wide in the Irish sea almost equidistant to England, Scotland, Wales and Ireland. While it is part of the British Isles it is not part of the United Kingdom. Nor is it part of the European Union or the European Economic Area though it enjoys qualified access to EC markets and some Community laws apply here. Its relationship is governed with the rest of the EU is by art 296 (c) of the Treaty of Rome as amended and Protocol 3 of the treaty by which the UK acceded to the EC. It was once an independent kingdom though the King of Man restyled his title to that of "Lord of Man" in the 15th century. The title of Lord of Man has now passed to the Queen of the United Kingdom who is represented in the island by a Lieutenant-Governor. The island has its own ancient legislature known as the Tynwald to whom the executive (the Council of Ministers) is responsible. For most practical purposes, the island is self-governing though the UK Parliament has occasionally legislated for the Isle of Man. For example, s.47 of the Registered Designs Act 1949 as amended extends UK registered designs law to the island.
Intellectual property rights are protected in the island by British statute, local statutes and common law. The registrable rights, that is to say patents, trade marks and designs, are governed by Acts of the UK Parliament while copyrights, design rights and rights in performances are governed by Acts of Tynwald that appear to be based substantially on our Copyright, Designs and Patents Act 1988. Obligations in confidence and the law of passing off are governed by the local common law. A basic introduction to IP law in the island appears on the Manx government website. In addition, the island has its own data protection legislation with its own Data Protection Supervisor who appears to operate similarly to the Information Commissioner in Wilmslow and it has its own country code top level domain name space administered by the Isle of Man Domain Registry.
Because taxation in the Isle of Man is more favourable than in the UK and other EC states it has a highly developed financial services sector. One of the things that I hope to ascertain while I am here is its appropriateness for securitization and source code escrow schemes. On those things I shall keep you posted.
Now the hotel and restaurant review. I am staying at the Admiral House on a special deal from the holiday company associated with the Isle of Man Steam Packet Company which operates ferries between the island and Great Britain and Ireland. The hotel is clean enough with the usual mod cons but it is terribly noisy. We are on the ground floor facing a side road off the Prom. My wife tore more than one strip off the management last night for the thump, thump, thump of the disco. Alluding to what the Duke of Wellington once said of the Highlander regiments at the battle of Waterloo, I don't know what they do to the enemy but my wife laying into tradesmen sure as hell scares the life out of me. Also, they are attached to an Italian restaurant called Ciappellis which is woefully overpriced. I paid £124.70 last night for a 2 course meal with the cheapest wine on the wine list that was just alright with pretty average service. Petrol here is also dear (£1.09 a litre of unleaded) but that is at least forgivable given geography and the world oil market. My impression after one day. It's a nice place to visit but I shan't darken the doors of the Admiral's house or Ciappelli's again. I shall stay at Port Erin next time which is enchanting.
16 September 2005
I have already mentioned the relevant issues in my post of 12 Sept 2005 on the free seminar on Patent Office advisory opinions which will take place in Leeds 24 Nov 2005. This new commencement order will make the new seminar even more timely.
The necessary changes to the Patent Rules 1995 will also come into being on 1 Oct 2005 as a result of The Patents (Amendment) Rules 2005. All the more reason to turn up to Mr Hayward's talk at BPP Law School on 24 Nov 2005.
15 September 2005
To an English lawyer the complaint is a curious document. It's nothing like our particulars of claim. The only thing that I have ever seen in my professional career that comes close is a Scottish pleading though mercifully the Americans don't spice it up with lots of "esto" and other dog Latin the way the Scots do. I seem to remember that the Scots stick the defendant (sorry "defender's" pleading) alongside the claimant's (I mean "pursuer") in a confusing mass of verbiage that makes me think of haggis.
Getting back to the Spyware case the claims against the defendant are alarming: computer fraud and abuse, breaches of federal electronic communications privacy and wiretap legislation, trespass to goods, consumer fraud, negligence, computer tampering and invasion of privacy. I'll follow this case and keep everyone posted.
The reasons for the decision are that:
- voice over broadband services are provided by access lines that are already regulated; and
- such service can also be provided by any access provider (that is to say, a traditional telco).
This decision comes more than a year after ARCEP's submission to the Commission (a copy of which can be downloaded from ARCEP's website).
The ARCEP site seems rather more interesting than the Offcom site. For a start they have quite a good blog. They have also bothered to translate much of their material into English and German.
We have kicked off with an "Information & Communications Technologies" index which will link to Intellectual Property, Computer Supply Contracts, Non-Contractual Liability, Privacy and Freedom of Information, Computer Misuse and Telecommunications Regulation. These already link to our Database Rights and Semiconductor Topography pages.
Other index pages will link to E-commerce, Biotechnology, Healthcare, Universities, Fashion and Textiles.
14 September 2005
The FAQ express the view that "technical contribution" has been superseded in the UK by the CFPH and Halliburton judgments, which not everyone would agree with, and refer to the Practice Note of 29 July 2005. Perhaps stung by criticsm of the kind that I mentioned in "Software Patents - Call for EP Resolution" on 31 Aug 2005, the Patent Office denies that the Directive would merely have regularized the Patent Office's current position of granting patents it shouldn't. It sets out its view of the law in its leaflet "The Computer Implemented Inventions Directive Explained."
The Patent Office has also updated its page on the difference between the US and EU positions, It cites State Street as an example of a 'software' patent that has been accepted in the US which would have remained unpatentable under the current text of the EU Directive.
13 September 2005
It was almost my first contact with the Einstein Network. I have checked through some of their other offerings on the law and have found some useful stuff. Jonathan Barnes of 5 Raymond Buildings has made a cassette on Douglas v Hello  EWCA Civ 595, Daniel Beard of Monckton on Damages in Competition Law and Keith Weatherspoon of Freshfields on Freedom of Information. I feel flattered to join such eminent company.
The filming, which took place in Victoria near the Treasury Solicitor's Department, finished at noon. The route back to my flat in Clifford's Inn took me past the Ashes victory celebration and I caught a glimpse of the players' coaches returning from The Strand. While I am as delighted as anyone that England has finally won a series against Australia, I was not tempted to join in the party. With a considerably larger population than that of Australia, I take the view that England should win more often.
12 September 2005
Each item will contain information on claims filed in the previous week with the names of the parties, district court, and case number. As they explain in their post, this is a very useful piece of information. It alerts defendants who are parties to claims that have not yet been served. The fact that a competitor has been sued can also be useful to those who could easily find themselves in the same position.
On a related but different point, I asked Gary Townley of the Patent Office whether there would be any objection to my providing an RSS feed for Patent Office news along the lines of the Rethink(IP) service. I was told that it would be unnecessary because the Patent Office will announce its own feeds very soon.
This will be my contribution to a rolling programme of talks to be organized by a group of practising and academic intellectual property lawyers, patent and trade mark agents, business people and others interested in intellectual property in the North of England. Other members of our group will arrange talks on technology transfer, freedom of information and branding over the coming academic and legal year.
The reason I have approached those speakers is that Mr Hayward will be in charge of advisory opinions and Mr Lewis works for one of the market leaders in intellectual property litigation and asset protection insurance. For those who know nothing about advisory opinions, they are an initiative to reduce the risk and cost of litigation by publishing the considered view of the Patent Office on whether a patent is valid and, if it is, whether it has been infringed. By way of introduction, the Patent Office had published a guidance note on the subject which may be downloaded from the Patent Office website. The statutory provisions which implement this scheme are to be found in s.13 of the Patents Act 2004. That section inserts new sections s.74A and s.74B into the 1977 Act. Draft rules for insertion into the Patent Rules 1995 have been published and a consultation on their implementation has recently closed. Mr Hayward spoke about the proposed rule changes at a meeting at the Patent Office organized by the IP Institute on 1 July 2005. We hope that he will be able to add to what he said in London in July since he should know the results of the consultation by then.
It might be expected that a favourable advisory would make it cheaper and easier for a patentee or indeed person threatened with patent infringement to obtain after-the-event insurance. At present, insurers require a very bullish opinion by counsel or solicitor advocate specializing in the field and charge premiums of 33% of the amount insured. I have asked Mr Lewis to consider whether a favourable opinion from the Patent Office will make any difference to the premium or acceptance of the risk. If he says that his company will still require counsel's opinions and a 33% premium before they will accept the risk much of the appeal of the scheme will disappear.
Also online is the PCT Gazette which is accessible from the WIPO's new "Patentscope" Patent and PCT Application portal. A particularly useful resource from this portal is the PCT newsletter which contains a table summarizing the type of protection within each contracting party. The table indicates whether "national" or regional (that is to say, European, Eurasian or OAPI) patents and utility models are available in a particular country. There is also a search facility on the portal.
The article by Lucy Sheriff "UK Govt wants you to lurve ID cards" contains some potential hostages to fortune. For instance, Mr Burnham is supposed to have told the BBC:
"We have been slower to respond to more subtle claims that ID cards weaken the privacy of the individual against the state. In fact, the exact opposite is true," he told the BBC. "It may sound like a bold claim but our ID card system will protect personal data and privacy."
As Ms. Sheriff noted, "the minister did not go into detail as to how the card would do this."
Readers interested in balance may like to see the contrary case on the Liberty site.
11 September 2005
While there are many sites on the internet there are prettier than Mr. Ryder's, there are few that are as useful. His site contains lots of good, short articles in straightforward English. My favourite is "How to Build Your Law Practice With Dignity" in which he introduces his concept of education based marketing. Here is a snippet:
He amplifies his concept in other articles on his site such as "What is Education-Based Marketing?" and "How to Use Education to Market Legal Services with Dignity".
"Educate your audience with written information and advice. Write your message in a form that you can send to anyone who calls your office. Then, by offering to mail copies without charge, you attract calls from genuine prospects. When prospects call, they give you their names and addresses, which you add to your mailing list.
Important: The longer your materials, the better. The longer you keep your prospect's attention -- and the more information you provide -- the more likely he is to hire your services. Not all prospects will read everything you send. But many will, provided your materials are well written and relevant to the person's problem. The current fact kit I offer varies from 40 to 50 pages in length. Many lawyers tell me they read every word."
In addition to his website, Mr Ryder distributes a regular newsletter with a short article with at least one very big tip together with news, comments and suggestions from his readers from around the world. He also holds marketing conferences for lawyers, usually by phone nowadays. Because of time zone differences I have not yet been able to attend any of them, but I hope to do so soon.
Although I think there is something of value on his site even for very large law firms, it is small country and suburban practices to whom the site appears to be directed. Now that we can accept instructions directly from the public, there is a lot to interest members of my branch of the legal profession.
10 September 2005
Originally known as the Official Referee's Court, it was something of a Cindarella for many years. Even though very complicated high value cases often came before it, the judges of that court were circuit rather than High Court judges and they were addressed even in the Royal Courts of Justice as "Your Honour" and not "My Lord". Its status has been elevated by three important developments. The first was the Practice Direction of 9 October 1998 which changed its name and established it as a specialist court within the Queen's Bench Division under the supervision of a High Court Judge. Judges of the TCC were henceforth to be addressed as "My Lord" wherever they sat. The second major development was devolution of TCC jurisdiction to the county courts which occurred on 26 April 1999 with the implementation of the Civil Procedure Rules. The third and perhaps most important development was the announcement by the Lord Chief Justice on 5 July 2005 of the extension of the High Court judges' involvement in the Court and its sittings. There will now be a full time High Court judge backed up by other judges of the Queen's Bench Division.
The TCC hears claims that involve issues or questions which are technically complex or those in which a trial by a TCC judge is otherwise desirable. That includes "claims relating to the design, supply and installation of computers, computer software and related network systems" as well as building and engineering disputes. There was case management in the TCC long before the CPR came into force. As in the Patents and Commercial Court, cases have always been managed by judges. Masters and district judges have no role in its proceedings.
Many recent judgments of the TCC are reported on the British and Irish Legal Information Institute.
We have always had a website ever since we opened in 1997. Unlike most other barristers' chambers we have used it to communicate information about intellectual property and technology law rather than replicate our chambers brochure. Lots of barristers claim expertise in intellectual property though as often as not those same barristers also claim expertise in many other areas of the law. We took the view that solicitors, patent and trade mark agents, foreign lawyers and other clients and potential clients could judge whether we actually do know what we are talking about if they could see some of our articles, case notes and presentations.
Just before Alex Khan and I left Kingsgate Chambers at the end of last year we had over 320 articles, case notes, PowerPoint presentations and other materials on our site, most of which we are trying slowly to transpose.
Some people appreciated this approach because we were shortlisted for "The Lawyer of the Year" multimedia award within a year of opening and attracted attention from all sorts of news media including the Washington post.
Anyway, I digress, today I have brought some of those articles back on line. I have put up a new "Industries and other activities page" which links to the old "Information and Communications Technologies", "E-Commerce" and "Dispute Resolution" pages.
This is a lot of work and I am primarily a barrister. I am usually dashing off getting or resisting injunctions, drafting contracts, advising in conference and that sort of thing. To help revive and keep this site and blog alive I have roped in some very bright students and ex-students from BPP Law School in Leeds. They should be coming on stream in the next few weeks. This is all part of a much bigger project to set up under the auspices of the BPP in Leeds and Manchester an IP Centre of Excellence in the North. There will be more on this later.
09 September 2005
- settling and reviewing assignments of computer software, databases and other works;
- settling and reviewing shrink-wrap, click wrap and other licences;
- drafting and reviewing hardware, software development and turnkey agreements;
- drafting and reviewing terms of trade including website and internet access conditions
- drafting and reviewing hardware, software and maintenance agreements;
- advising and representing applicants for software implemented and business method patents
- advising and representing parties before the Technology and Construction Court
- advice and representation in data protection and freedom of information claims;
- advice and representation in domain name disputes before the UDRP panellists or Nominet DRS experts; and
much, much more.
09.30 Registration and Coffee
10.00 Welcome and Introduction
Roger Cook, Leeds City Council
10.15 Why is There a Privacy Fuss ?
Dr Chris Pounder, Pinsent Masons, Solicitors
11.00 Coffee Break
11.15 ID Management in the NHS - the Perils and Pitfalls
Margaret Moore, NHS Primary Care Sector
12.00 Buffet Lunch and optional tour of Elland Road
13.15 The "Laws" of Identity and the Need for an Identity
14.00 Identity Management in the Banking Sector
Exact Title and Speaker to Be Confirmed
14.45 Tea Break
15.00 The Truth about Biometrics ! - Dispelling the Myths
Jonas Andersson, Stephen Edwards Precise Biometrics
Norman Jackson, BCS-ISSG, and
Roger Cook, Leeds City Council
Like Carin and indeed like NIPC, they do a lot to raise IP awareness locally. One of their initiatives is a "free advice day" on 15 Sep 2005. The Lord Mayor announced similar free clinics by Carin yesterday.
I understand that Aisla and Kate are just coming up for their first anniversary. Chambers wish them the best of luck.
For those outside Europe, database right is a new intellectual property right that protects investment obtaining, verifying and presenting the contents of a database as distinct from the intellectual effort of creating it. It avoids the sort of difficulties that occurred in the USA as a result of the US Supreme Court's judgment in Feist publications Inc. v Rural Telephone Service Co. 499 US 340 (1991).
The source of database rights law in Europe is Directive 96/9/EC ("The Database Directive") which we have implemented in the UK by The Copyright and Rights in Databases Regulations 1997. Last year, several references were made to the European Court of Justice on various points that rose from the directive. Links to those cases are available from our database rights information page. Shortly before the end of last year's law term, the decision of the European Court was applied by the Court of Appeal (see British Horseracing Board Ltd and others v William Hill Organization Ltd  EWCA Civ 863 (13 July 2005)) Quite apart from intellectual property law, the British Horseracing transcripts are worth reading because they are an interesting example of the interplay between the national and Community jurisdictions.
The first is that the Patent Office has advertised a seminar entitled "Intellectual Property "The Commercial Reality for SMEs" on 27 Sep at The Institute of Child Health in London. According to the press release, the speakers will be:
Lawrence Cullen of the Patent Office,
David Begg, Principal, Tanaka Business School, Imperial College, London
Henry Carr, QC Pitfalls and problems of litigation
Kim Cauthorn, Kroll USA Risk assessment
James Riddiough, Smith & Williamson IP valuation
Ian Lewis, Miller Insurance Service Limited Insurance for litigation and liability risks
Matthew R Hogg, Kiln Insurance for economic loss
Vanessa Winspeare, Smith & Williamson Valuation of damages.
The choice of names is interesting. The Tanaka Institute at Imperial College have recently been conducting a survey on the future of the IP Institute. I spent some earlier over the last few weeks being interrogated by one of their researchers (see IPKat at "IPI Survey, Have your Say"). Henry Carr QC gave a good contribution at the IP Institute's seminar on advisor opinions at the Patent Office on 1 July 2005. Miller claims to be market leaders in insurance.
The other thing that I should mention is a rather interesting debate on IPR Talk. This is a service offered by Ideas21 though I think anyone can subscribe. I posted a link to my post on the proposal for another enforcement directive which nobody seemed to be interested in until a day or so ago. A contributor then posted a contribution welcoming the development on the grounds that it would be good for "UK Plc" whatever that may be. I waded in with a response that the proposal was ill thought through and unlikely to be adopted. John Mitchell of the Patent Reform Group has now joined in. There are some good debates with real inventors (ie people who are not lawyers or patent agents). It's worth joining IPR Talk.
08 September 2005
The software is apparently supplied by a company called SPSS. According to the post, this software relies on demographic, social, lifestyle, emotional and behavioural factors as well as information on the original charges and offence.
Vnunet.com expressed my concerns more eloquently tha I could:
"How good was the programmer who did this, and is there any inbuilt bias in the system? Are we going to see a computer report on what could be a man's llife inside or outside prison, and will lazy administrators use this without checking the facts themselves?
Finally is the software perfect, with no flaws that could damn someone on false evidence? There's little doubt that only a fool would guarantee the answers to these questions."
Formerly known as Carin Burchell Trade Mark Services, they have also recently re-branded to BRANDED!
Personal congratulations are also due to Carin's colleague, Gareth Price, on his recent wedding.
Branded! is one of the professional firms listed by Huddersfield Intellectual Property Forum. Anyone else who wishes to be listed by HIP should contact our practice manager.
PS Just come back from the grand opening of Carin's new offices. They are very smart indeed. They are located on a new business park a couple of miles outside the town centre where there are lots of other new businesses. In her speech, the Lord Mayor (actually a lady), celebrated Carin's 10 years in practice.