31 December 2005

Dispute Resolution: Judicial Humour from across the Pond

My email today brought New Year's greetings from India and Australia (which I warmly reciprocate and pass on) and a bulletin of today's stories in the New York Times.

There are three stories on the law though none on intellectual property and technology. One is about the death penalty in China which is harrowing. It is a useful reminder to those of us who were disappointed by the governor of California's failure to spare Mr Tookie Williams (after he had already served a term of imprisonment that most civilized countries would regard as sufficient punishment for the crimes of which he had been convicted) that there are some parts of the world that are a great deal more bloodthirsty than the USA. Another is about the welcome drop in crime in New York. But the most entertaining is an article by Adam Liptak "So, Guy Walks Up to the Bar, and Scalia Says..." on the number of jokes cracked over the years by the various judges of the US federal supreme court.

According to Mr Liptak, Mr Justice Scalia tops the league with 77 laughs with Mr Justice Thomas at the bottom with no jokes to his name at all. Mrs Justice Ginsberg scores only 4. The new chief justice has already made his mark in just his first term by coming in a very respectable third. As Mr Liptak observes, "what passes for humor (sic) at the Supreme Court would probably not kill at the local comedy club." From the examples that he lists, however, I don't think that their lordships do too badly, especially since most Americans are far too deadly serious about everything, and their sense of humour seems (to my ears at any rate) to be much closer to that of our EC partners in Bundesrepublik Deutschlands than it is to ours. Take this quip by Mr Justice Kennedy for instance:
"Recently I lost my luggage," Justice Kennedy said. "I had to go to the lost and found at the airline, and the lady said has my plane landed yet.""[Laughter.]"

That at least survives translation to the printed page which most of the attempts at levity from the judges I have had to appear before would not. Most of the funnies attributed to "old Ziggie" - I don't know his real name because I never appeared before him but he would probably have been the Northern Circuit's answer to Mr Justice Scalia - after the port has circulated around the mess several times are far less memorable. The best advocate for laughs in my book is Leolin Price QC and the best judge has to be Sir Robin Jacob, who is amusing even when putting the boot in. In my neck of the woods, Judge Behrens in Leeds has had his moments and Judge Maddocks in Manchester has made me smile more than once. I won't say who are the worse wits at our Bar but those who think they are funny and are flattered by their instructing solicitors for their courtroom humour (probably when avoiding paying them or, worse, junior members of their chambers) rarely are.

The source for Mr Liptak's article is a new journal called "The Green Bag". Why "Green Bag"? Apparently, that is a receptacle in which members of the US legal profession traditionally carried their papers and law students their casebooks. It became a simile for a repository of knowledge. The journal is named after a publication which circulated in the USA between 1889 and 1914 and carried contributions from such distinguished writers as Louis Brandeis, Roscoe Pound, and Elihu Root.

I wish the new Green Bag well and I wish anyone who reads this blog a very happy and prosperous New Year.

30 December 2005

NIPC Radio: Thanks for the Suggestions

I have converted yesterday's WAV file into an MP3 file.

I should like to thank Matt and James for their helpful suggestions.

On listening to myself I noticed that I said that performances were protected by copyright. What I meant to say and should have said is by "rights in performances."

When I get to be familiar with the technology I will use a proper script.

29 December 2005

Privacy: New Staff Monitoring Software

In 1999 I was asked to present a paper to the meeting of the Section of Business Law of the International Bar Association in Barcelona on misuse of internet access by employees. At the time there was a lot of concern about employer's potential liability for racist, sexist or otherwise offensive emails like the "Beer and Women" comparison as well as fear that the recently passed but not yet enacted Human Rights Act 1998 might prevent effective monitoring.

As we were negotiating what turned out to be a rather ill advised and very short-lived merger with a London common law set, I couldn't do it myself but I did write a paper for my pupil Joanne Gretton to present. The paper contained valuable contributions from Joanne and also from my wife, Yatoni, who then practised at the employment bar. At paragraph 4 we argued that an employee's implied duty of fidelity would preclude unauthorized use of the internet, that some reasonable monitoring of such access would not necessarily infringe an employee's Convention rights and that companies should adopt an information handling policy.

At that time the main impediment to implementing our suggestions was the absence of any reliable internet use monitoring software but an article by Munir Kotadia in today's Tech News on ZD Net (Employees to be billed for personal Net use?) suggest that there may now be such an application. According to Munir, the Australian company Exinda has developed a system that allows a company to monitor exactly which web sites are visited by each employee and how much bandwidth has been used in terms of a cash loss to the employer. Quoting one of the company's directors, Munir says that the system was designed to ensure that employees could be held responsible for the cost of misused bandwidth and time. It opened the possibility of a 'please explain' and a bill for the costs of the bandwidth and time you wasted, continued the director.

Of course, the law is one thing, good industrial relations is another. There will be considerable cultural differences. I can see supine southerners with sky high mortgages buckling down to this sort of intrusions. I can't see - at least I hope I can't see - my fellow northerners putting up with it.

28 December 2005

NIPC Radio: Programme No 2 - How the Law protects Investment in Brands

My second broadcast is up but I fear I have been far too ambitious. Instead of relying on the Windows "Sound Recorder" which I used yesterday for my Introduction to Intellectual Property Law which limited the recording to 60 seconds I downloaded the Audacity editing application. I spent much of today playing with it when I should have been working on an article for the Journal of Intellectual Property Law and Practice. The resulting file is 8 minutes long and took me over an hour to upload even on broadband. It does work. I have downloaded it from the Huddersfield Intellectual Property website.

Anyway, I have spoken about "How the Law protects Investment in Brands". Although it takes a bit of time to download it should be worth the wait. I have thought about what makes a brand and what sort of investment is required to create one. In my view, there's more to the topic than trade mark registration and passing off.

I am not sure when I shall get round to "How the law protects Investment in Design". Probably when I have found a way to speed up uploading and downloading. Perhaps I ought to investigate zip files. Any suggestions?

WIPO Index of Patent Systems

A very useful resource on the WIPO website is the WIPO Index of Patent Systems. While ostensibly "a tool to help users of patent statistics to understand the impact of differences between patent systems on the interpretation of patent statistics," it could be of enormous practical value to business.

The laws of 41 countries are analysed and compared. Sadly, the UK, France, China and India are missing list but the European Patent Office is there as are the USA, Japan, Germany and South Korea and even Monaco and Libya. It should not be forgotten that the countries with the second and third highest rates of growth in PCT applications between 2003 and 2004 were from Korea and Japan respectively surpassed only by the Peoples' Republic of China (see Press Release PR/403/2005 "RECORD NUMBER OF INTERNATIONAL PATENT FILINGS IN 2004" 9 March 2005). In his talk to the UDRP panellists in October 2005, Dr Francis Gurry (who combines his role as head of the Arbitration and Mediation Centre with responsibility for the PCT) observed that if this growth continues, it will not be long before the bulk of the world's technical literature will be in a North Asian language.

Returning to the index, each national analysis consists of a table headed "Features", "Status" and "Changes in the Law Since 1990". The items in the "Features" column include "Types of protection for inventions", "Term of protection", "Subject matters excluded from patentability or not considered to be inventions" and so on.

Information about the UK, however, is available from various sources. For instance, I dug up the "Filing Statistics" for all patents, trade marks and designs for 2001 and 2002 from the Patent Office website which appears to have been last updated on 2 March 2005.

27 December 2005

Radio NIPC: First Experimental Broadcast

This may not be the most sensible for a barrister of my years to do but what the hell. I've gone on air. I have given the first of a series of talks on IP Basics. Tonight's was entitled "What is IP?" Tomorrow's which should be on www.hip.org.uk from 22:00 our time will be on "How the law protects brands". Until I am more familiar with web broadcasting all my talks will be short, simple and intermittent. Later, I hope to offer CPD training online for solicitors and the Bar online.

I really would appreciate some feedback on this one.

Should You apply for a Patent for Your Invention?

One of the questions from the floor at the presentation by Peter Hayward and Ian Lewis on Patent Office Advisory Opinions at Leeds on 24 Nov 2005 was "Why do lawyers advise their clients to seek patents or other intellectual property rights if they know the clients will never be able to afford them?" As I was in the chair I fielded the question to Richard Kempner of Addleshaws and he in turn bundled it off to Michael Harrison, this year's president of the Chartered Institute of Patent Agents.

I am bound to say that I am often asked the question "Should I apply for a Patent?" at inventors clubs and my monthly workshops in the Media Centre. I have now encapsulated the advice that I usually give in a new article on the Huddersfield Intellectual Property website "Should You apply for a Patent for Your Invention?" I appreciate that not every IP professional shares my views but then they do not always see the disappointment when I have to tell a chap who has spent his life savings on patenting his invention what is involved in enforcing his rights. Several have told me that they believe they would have been better off spending the money on a cruise or even down the rub-a-dub-dub.

26 December 2005

Utility Models: Jon Miles's Presentation Uploaded

One of the most interesting contributions to the Patent Reform Group's conference at Marks & Clerk's last March was Jon Miles's presentation on "innovation patents". These are Australian utility models which stake a claim to a new invention for a fraction of the cost of a full patent. Jon has very kindly made his slides available to us.

I hope that everyone had a good Christmas yesterday and having a good Boxing Day today.

25 December 2005

Conferences and Seminars 2005

All the events that chambers are running or to which we are collaborating are now gathered together on one "Events" page at http://www.hip.org.uk/events.htm.

The main one for the New Year will be a half day event on IP dispute resolution. We have three star speakers:

- Ignacio de Castro from the WIPO Arbitration and Mediation Centre who will speak on the arbitration, mediation and domain name dispute resolution services offered through the Centre;

- Sara Ludlam who has recently joined Keeble Hawson from industry will speak of industry's needs for cost-effective but still effective dispute resolution; and

- Felicity Brandwood or one of her staff from the NCC Escrow Service will speak on arbitration and ADR in escrow and other ICT disputes.

The event will take place at BPP Law School at Whitehall 2Whitehall Quays, Leeds, LS1 4HG between 14:00 and 17:45 on 10 May 2006. We should prefer not to have to charge but experience teaches us that solicitors only value things if they have to pay for it. We were all pretty disappointed by the fact that only half the people who said they were coming to hear Peter Hayward on 24 Nov actually turned up. It was a bit cold that day but then it was November. You can book through Jonathan Haines on JonathanHaines@bppls.com Tel +44 (0)845 6786868.

Feliz Navidad

24 December 2005

Patents: Renewal Fees - Comptroller shows some Christmas Spirit

S.25 (3) of the Patents Act 1977 provides:

"Where any renewal fee in respect of a patent is not paid by the end of the period prescribed for payment (the 'prescribed period') the patent shall cease to have effect at the end of such day, in the final month of that period, as may be prescribed."

S.25 (4) permits a patent to be restored If the renewal fee and any prescribed additional fees are paid during the period ending with the sixth month after the month in which the prescribed period ends. Should that deadline be missed an application has to be made to the Comptroller for the restoration of the patent.

At the time the patent in Ahmet Mustafa Onder and Mustafa Ilhameddin Ozbay's Patent lapsed on 3 Nov 2002 a patentee had to satisfy the hearing officer that he patent took reasonable care to see that any renewal fee was paid within the prescribed period or that that fee and any prescribed additional fee were paid within the six months immediately following the end of that period. That provision has now been replaced with a requirement that failure to pay the renewal fee within the prescribed period or to pay that fee and any prescribed additional fee within the period ending with
the sixth month after the month in which the prescribed period ended was unintentional.


The question before the hearing officer was whether Mustafa Ilhameddin Ozmay's had taken reasonable care. The answer was that he had. He had previously reminded himself of the need to pay renewal fees by making a note for himself in his electronic organizer. Unfortunately, that was lost on a business trip. His fall back was to ask his family to forward the usual repayment renewal to him in Turkey but, again unfortunately, that reminder never arrived. He then got preoccupied with work and the need to renew slipped was overlooked.

The hearing officer, possibly imbued with the Christmas spirit, concluded that he had made reasonable efforts to pay the fee using three different systems. They all failed through no fault of his own. Accordingly the hearing officer made an order for the restoration of the patent.

Managing Confidential Information

I have just put up two new articles on managing confidential information originally written by my wife and protecting intellectual property overseas through TRIPs.

Further information is on my Invention blog.

Have a nice Christmas tomorrow.

IP/it Update: New Articles and Case Notes

I have managed to update and upload two articles and two case notes from the old chambers site. The articles are on:
- Ocular Sciences where Mr Justice Laddie rammed home the distinction between the obligation of confidence to which some employees might become subject in the course of their work and the contractual and fiduciary duty to advance his employer's interests that all employees owe to their employer (Case Note: Ocular Sciences v Aspect Vision Care Have Faccenda's Chickens had their Chips?); and
- the distinction between the duty of confidence and fiduciary duty as originally discerned by the Canadian Supreme Court in Lac Minerals Ltd. v. International Corona Resources Ltd., [1989] 2 S.C.R. 574, 1989 CanLII 34 (S.C.C.) and developed by the Privy Council in Arklow Investments Ltd and Another v. I.D. Maclean and Others (New Zealand) [1999] UKPC 51 in "How far does an Obligation of Confidence overlap with Fiduciary Duty?"
All are important cases but for some reason or other they are not cited all that often. Ocular Sciences is important is important for design rights as well as confidence.

The two cases notes are on Wallace Bogan v Gove and Bunn v BBC. The former is on departing solicitors and contains many practical tips. The latter has a human rights dimension.

23 December 2005

Why the Country that pioneered the Industrial Revolution is falling behind everyone

A post on my other blog which ties in with the Gowers Review which I mentioned here briefly on 5 Dec 2005 (Gordon Bennett (or should that read "Brown"?) - Gowers Review of Intellectual Property) may go some way to explain why Europe in general and Britain in particular is lagging so far behind other countries in the patent application stakes. I review the EPO's study on the cost of patenting in "Cost of Patents: EPO tells us what most of us already knew".

Very briefly, it appears to cost £20,861.15 for a UK inventor or other applicant to get patent protection in his home market, compared to the £7,004.85 than an American would be charged and £3,731.36 that a Japanese would pay. There are lots of other useful statistics too.

None of these comparisons even starts to consider the cost of enforcement which is so much higher here than in the rest of Europe as the report of the government's own advisory committee on intellectual property reported two years ago in "The Enforcement of Patent Rights". Two members of the committee, Mandy Haberman and Roland Hill, called the enforcement a systems failure in their supplementary report. In his response, Lord Sainsbury dismissed the former and ignored the latter.

The lesson to be drawn -

THE LABOUR PARTY DOES NOT

TAKE INNOVATION SERIOUSLY.

Patent Infringement: Mr Justice Pumfrey's Judgment in Canady v Erbe Elektromedizin GmbH and others

This was a claim for infringement of a European patent for a surgical coagulation device, that is to say a device for directing an argon beam onto an area of tissue to induce coagulation. The action was brought against a German manufacturer of medical equipment, a Japanese optical equipment manufacturer and their respective UK distributors. Much of the battle focused on the handle by which the device was manipulated. The interest for those not directly involved in the case lies in the application of the Protocol on Interpretation of art 69 EPC.

Mr Justice Pumfrey adopted with approval the approach of Mr Roger Wyand QC in Mayne v. Pharmacia [2005] EWCA Civ 137:
"(a) The first, overarching principle, is that contained in Art.69 [of the European Patent Convention] itself . . .
(b) Article 69 says that the extent of protection is determined by the terms of 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.
(c) It follows that the claims are to be construed purposively – the inventor's purpose being ascertained from the description and drawings.
(d) 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.
(e) . . .
(f) Nonetheless 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 Art.69 itself. It is the terms of the claims which delineate the patentee's territory.
(g) 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 . . .
(h) 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 . . .
(i) It further follows that there is no general "doctrine of equivalents" . . .
(j) 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.
(k) Finally purposive construction leads one to eschew what Lord Diplock in Catnic
[Catnic Components Limited v. Hill & Smith Limited
[1982] RPC 183] called (at p.243): 'The kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge'."

The judge added that one has to consider how the specification would be construed by a person skilled in the art which in this case would be a maker of probes.

The application of those eminently sensible principles will vary from case to case and anyone wanting to find out how Mr Justice Pumfrey applied them in this case had better read it. All I will say is that he did not consider that the patent had been infringed. It appears to me that that was because of the narrowness of the claims but I didn't draft them and I wasn't there in court. The case is still an instructive one to read.

Dispute Resolution: Changes to PD-Protocols

As a mediator and arbitrator I should welcome the following amplification to PD-Protocols:

"The courts increasingly take the view that litigation should be a last resort, and that claims should not be issued prematurely when a settlement is still likely. Therefore, the parties should consider whether some form of alternative dispute resolution procedure would be more suitable than litigation, and if so, endeavour to agree which form to adopt. The Legal Services Commission has published a booklet on ‘Alternatives to Court’, CLS Direct information leaflet 23 (www.clsdirect.org.uk/legalhelp/leaflet23.jsp),
which lists a number of organisations that provide alternative dispute resolution services.

The parties may be required by the Court to provide evidence that alternative means of dispute resolution were considered."


My problem is that mediation can add an unwelcome extra layer of costs into the already expensive process. That probably explains why only 3% of CEDR's cases in 2004 concerned IP (see "CEDR Solve mediation statistics 2004" March 2005). That does not mean that there is no place at all for ADR. Some ADR processes work very well. The domain name dispute resolution services offered by the WIPO, Nominet and other service providers offer very good value which is no doubt why they are so popular with the public. The new Patent Office opinion service under s.74A and s.74B of the Patents Act 1977 (as amended) is also taking off nicely.

Some years ago a committee of IP practitioners chaired by Michael Skrein of Richards Butler plus Sir Hugh Laddie put together some really good pre-action protocols for IP litigation. They were put on ice to abide a general pre-action protocol. All that came of that exercise was a few extra sub-paragraphs of para 4 of PD-Protocols. Skrein's protocols have morphed into a Code of Practice for pre-action conduct in intellectual property disputes. I always refer to them whenever I settle a letter of claim or letter of response to a client. Some specialist IP firms from London who ought to know better have tried to put the frighteners on my little high street or suburban clients from the North of England by affecting not to have heard of them. They threaten all sorts of dire consequences unless my chaps give the most outrageous undertakings by yesterday. But I can increasingly inject some steel into their resolve.

22 December 2005

Competition and IP Interface: Two Old Case Notes and One New

Mr Justice Etherton's judgment in Attheraces Ltd and another v British Horse Racing Board and another [2005] EWHC 3015 (Ch) (21 Dec 2005) appeared on the BAILII website just as I was updating and transposing two older case notes on the Antitrust/IP Interface.

Old Case Notes
The first of those two old case notes was the Commission's decision in the IFPI Simulcasting Exemption. Since the exemption was for a very short period and it was granted under Reg 17 which has now been repealed it is largely of historical importance. The second case note, the Court of Appeal's decision in Intel Corporation v Via Technologies Inc. and others [2002] EWCA Civ 1905 (20 Dec 2002) is very much of current interest. It is an example of a Euro-defence that does work in contrast to Sportswear Company Spa and another v Ghattaura (t/a "Gs3") [2005] EWHC 2087 (Ch) (3 Oct 2005 which did not and which I mentioned here in "Euro Defences: Another one bites the Dust" on 6 Oct 2005.

New Case Note
The new case is Attheraces. This was a claim by a provider of TV footage, sound commentary and other content to broadcasters and website owners against the owner of a massive database of race meetings, runners, times and similar information for an injunction, declaration and other relief to restrain an abuse of a dominant position under art 82 of the Treaty of Rome and s.18 of the Competition Act 1998. The alleged abuse was "excessive, unfair and discriminatory pricing by the defendants.

The judge found for the claimant content providers. The product supplied by the defendants was UK pre-race data, that is to say dates, times, entrants and other pedestrian data and nothing more. He rejected the defendants' contention that it represented
"the ability to create value from the whole show of British racing"
or that it was a bundle comprising both British pre-race data and British racing pictures. The relevant product market was the market for the supply of UK pre-race data to those in the horse racing industry that required such information for the services they provide their customers (in particular bookmakers and producers of TV channels or internet sites relating to horse racing). The geographical extent of that product market, for the purposes of these proceedings, was all countries outside the UK and Ireland.

The defendant horse racing board was dominant in that market. It had abused its market dominance by threatening to terminate the supply of pre-race data to the claimant even though the claimant was an existing customer of the board and pre-race data was an essential facility controlled by the defendant, without which the claimant would be eliminated from the market. There was no objective justification for such conduct. It was irrelevant that the parties were not competitors.

The defendants sought to justify their proposals as to price as being reasonable charges on the claimant's overseas customers who would otherwise be "free riders" but his lordship did not consider that to be a correct description of them as a matter of substance or form. Further the prices proposed prior to the commencement of the proceedings were unfairly excessive, and also discriminated unfairly against the claimant. Further, the defendants continued to insist, until after the commencement of the proceedings, that the claimant enter into an intellectual property licence from the defendants, even though the use by the claimant would not infringe any intellectual property right of the defendants.

The prices specified from time to time were excessive and unfair, and so an abuse of the defendant's dominant position in the market, because they were significantly in excess of the economic value of the pre-race data and not otherwise justified. The economic value of the data is to be measured, on the facts of the case, by the cost of producing the database (about £5m) together with a reasonable return on that cost. The proposed charges were so far in excess of any justifiable allocation of that amount as to be plainly excessive. They were not justified by any application of the economic principle of pricing.

21 December 2005

Competition: Common Law Restraints of Trade

I have written a new article on common law restraints of trade and linked it to existing case notes that we wrote some time ago on:
- Emersub XXXVI Inc and Another v Wheatley (1999) 14 July 1998 Queen's Bench Division: Wright J;
- International Consulting Services (UK) Ltd v Hart [2000] IRLR 227; and
- Prosoft Resources Ltd. v Griffiths [1999] ScotCS 96 13 Apr 1999 (Lord Maclean).

Emmersub does not appear ever to have been reported which is a pity as it is an interesting case that illustrates what should happen where an employee is also the vendor of a business.

Copyright: Resale Rights Directive Implementation

London patent agent Richard Gallafent has alerted subscribers to Ideas 21 newsgroup IPR Talk to the draft The Artist's Resale Right Regulations 2006. The page has been up since 15 Dec and readers of this blog may remember my post of 17 Dec 2005 "Copyright: Resale Right Directive to be implemented in New Year" where I also mentioned them.

Gallafent makes an interesting point in his post to IPR Talk:

"It's supposed to benefit Artists and their dependants/successors, but surely all that will now happen is that the galleries will insist on their artists never owning the paintings they hope to sell, i.e. the contract with the gallery will specify that the latter owns the canvas or whatever and the resulting work, agreeing to try and sell it against a commission to the artist of a substantial proportion of the price they get, retaining what used to be their modest commission. The work will never attract resale rights in such a case, thus relieving the Gallery of any responsibility to pay it or ensure it is paid!

Or have I (and the author of the section "What about employee created works?" in the "guide" on the PO website) got this wrong?"

I am sure that there must be some clever point here - it does after all come from the author of a book on IPR and taxation - but I am not sure what it is. I should welcome Richard's coming onto this blog to explain. The resale right arises after the first sale which would include the sale of the canvas or other medium wouldn't it. The right is in any case like a moral right than an economic right. Looking at the directive (Directive 2001/84/EC of the European Parliament and of the Council of 27 September 2001 on the resale right for the benefit of the author of an original work of art) it seems to be a free standing right.

If copyright is never to belong to the author the gallery would have to commission the work and obtain copyright under the commission contract, but that's not going to happen in every case.

Furthermore, as Nottingham patent agent David Pearce observes, the rates are very stingy. Why bother to avoid them? As I said in my previous post, similar rules have subsisted in other countries including some with major art markets without too much concern.

Competition: Technology Transfer Block Exemption

I have written and uploaded a brand new new article on the technology transfer block exemption which came into force on 1 May 2004 and is due to remain in place for 10 years. This new block exemption repeals and replaces the previous technology transfer block exemption (Regulation (EC) No 240/96).

This is the first of the new style post Reg 17 block exemptions. Unlike the previous ones it does not serve as a model contract with "white" permitted clauses. It does, however, have a list of what used to be called "black" clauses save that they are now called "hardcore" and "excluded" restrictions. As I said in yesterday's post on the modernization regulation, much of the point of a block exemption has been removed with the abolition of the requirement to notify and the power of national competition authorities as well as the Commission to revoke an exemption.

While on the subject of competition law, there are two interesting new additions to DG Competition's website. One is a green paper on damages for infringing EC antitrust law. The Commission wants a response by 21 April 2006. There are some useful links to some speeches by Neelie Kroes, research papers and other materials on the DG's press release. The other addition is the Annual Report on Competition Policy which weighs in at over 200 pages.

I have now nearly completed my update on competition law for the IP/it-Update website. Tomorrow I shall tie up some case notes with a short introduction to contracts in restraint of trade.

Merry Christmas!

20 December 2005

Competition Law: Modernization Regulation

As I promised yesterday, I have written my article on Reg 1/2003 and uploaded it to my IP/it Update website. I also recommend Matthew Gream's as well. He has kindly added the links to a presentation in pdf and attachment in his comments to my post on the last update to this website.

19 December 2005

The Human Touch

I had a call this afternoon from a solicitor called Justin Patten. He has a very good blog and an even better website. He rang to draw my attention to one of his own cases, a complaint by the painter Ed Miracle against the publisher of the best selling business book "The World is Flat". The irony of the case, says Justin, is that the author of that book excoriates IP infringement. Justin's case has already been picked up by The Times. It seems a very interesting case and I hope it will be resolved quickly and satisfactorily.

Justin practises in the style of "Human Law". He explains on his website that his firm explores the link between the law, technology and people." He promises "cost-effective solutions to clients on key legal issues affecting the digital economy" in particular employment law and intellectual property. He offers a couple of presentations and notes on employment issues. I wish him all the best.

Patents: Pfizer and Others v Ranbaxy Labs and others

The latest round in the Pfizer v Ranbaxy struggle took place in front of District Judge Farnan of the US District Court for Delaware on Friday and as most people who have been following this epic on at least three continents will already know it went to Pfizer. A transcript of the judgment can be downloaded courtesy of the court website.

According to The Hindu business news Ranbaxy intends to appeal which is not surprising given that its share price is some way off its best. The Hindu also gives a link to the decision in Norway and I've mentioned lipitor litigation in Ireland and the USA as well as here in this blog.

EC Competition: Review of Art 82

Some months ago, Neelie Kroes announced a review of the enforcement of art 82 of the Treaty of Rome. To aid the discussion a staff paper has been published today which I have skimmed briefly. There are a number of references to intellectual property licensing though it appears to me to be pretty well IPR neutral. The paper proposes a framework for the continued rigorous enforcement of the article and also for analysing abusive exclusionary conduct. The Commission invites comments by 31 March 2006.

For more information, see the Commission's press release, a speech by the commissioner to Fordham law school on 23 Sep 2005 and a paper by some continental academics to whom the Commission appears to be paying regard.

Competition Law and IP: Updated Article and OFT Talk Transposed

On 1 May 2004 EC and indeed British competition law went through a sea change:

(1) The 40-year regime of notifying all agreements "which have as their object or effect the prevention, restriction or distortion of competition within the common market" to the European Commission pursuant to reg 17/62 was abolished by the so-called "Modernizing Regulation" (Council Regulation (EC) No 1/2003 of 16 December 2002
on the implementation of the rules on competition laid down in Articles 81 and 82 of the Treaty)
; and

(2) The Commission adopted the Technology Transfer Block Exemption (Council Regulation (EC) No 772/2004 of 27 April 2004 on the application of Article 81(3) of the Treaty to categories of technology transfer agreements).

A block exemption under the post modernization regulation is not quite the same as one made under Reg 17/62. For a start there is no longer any need to notify either to the Commission for exemption from art 81 (1) or to the Office of Fair Trading for exemption from the Chapter I prohibition under the Competition Act 1998. Consequently, there is no longer any need to spell out white clauses. It is enough just to specify the black clauses, what our US friends call "no-nos" such as price fixing as in art 4 (1) (a) of the block exemption. The other big difference is that national competition authorities can withdraw the benefits of the block exemption within their territories if necessary.

I have updated and transposed a couple of old articles which may help:
- The Enterprise Act 2002 - the provisions that affect IP & Technology; and
- the slides presented by Steven Preece of the OFT to a seminar which my old chambers' boardroom organized in December 2003 entitled "Competition law and IPR – recent developments A View from the Office of Fair Trading".
Steven's presentation was masterly and I am sorry to say most of the Manchester solicitors who said they were coming backed off. Those who did turn up were from Addleshaws, Berg & Co and Hill Dicks which says something about those bods.

It is worth mentioning that Patrick Cantrill of Walker Morris Solicitors has promised to give a talk entitled ‘A review of the Technology Transfer Block Exemption’ at Fox Hayes Best Practice Suite, 118 North Street, Leeds, LS2 7AN, between 18:00 and 20:00. That suggests they hope to have moved by then so this is a good opportunity for me to wish Debbie and Liz (who are both good mates of mine) the best of luck. Not much of a Christmas for them so it seems.

18 December 2005

Trade Marks: The Last Best Place

My US colleague Toni Tease of Billings, Montana has a fascinating story in the December issue of her newsletter Intellections entitled "The Saga of the Last Best Place". It is very short and well worth reading.

I first learned of the tale in the summer from my fellow blogger Martin Schwimmer before I knew of Toni's interest. The story seemed a bit far fetched and I had assumed that the journalist had picked up the wrong end of the stick. I emailed a link to an article about the case in The Billings Gazette to Toni because I thought it might amuse her. She replied that the substance of the report was accurate and indicated that she knew a great deal about the case.

I have not yet had the pleasure of visiting Montana but everything that I have heard of the state is appealing. Part of that appeal is personal in that one of my dearest friends from both St Andrews and UCLA served in both houses of the state legislature and actually led the Democrats for a while in one of those chambers, but I also incline towards small, rural communities in this increasingly urbanized world. I may be very badly informed but I get the impression that there are still remnants of the Jeffersonian ideal in places like Montana.

Because of that bias, part of me is pleased that the residents of Montana have kept this symbol of their heritage. I am not sure that they would have lost their illustrious heritage merely because someone monopolizes the sign for hotels, estate agency or mail order but I can well understand their objection. I live a few kilometres from Haworth where Anne, Emily and Charlotte Bronte grew up and I bridle at the vulgarization of the connection with three of the greatest novelists in our language by some of the local traders.

Having said that, the way in which David Lipson's trade mark application was defeated seems a bit arbitrary. Some - and not necessarily those on the right - would call it downright expropriation. It is a very long time since I studied the US federal constitution but I seem to remember something in the 5th amendment about a right not to be deprived of property without due process of law or to have private property taken for public use without just compensation. Of course, I write this on the day that the president admits to ordering wire taps within the USA without statutory authority so it may be that the Bill of Rights are not what they were when I was a student.

I have given some thought as to what would happen here in a similar situation and I think that there would have been several grounds of objection under art 7 (1) of the Community Trade Mark Regulation (and the equivalent provisions in national trade mark statutes). I also wonder how on earth a sign based on a byword for Montana could possibly have become distinctive. Community and national trade mark laws provide processes for invalidation of marks that should never have been registered in the first place so missing the deadline would not have mattered very much.

On the other hand, had Mr Lipson registered the "Last Best Place" as a domain name it might have been a different story again. The New Zealand government was unable to recover from a Seattle company in D2002-0754 New Zealand v Virtual Countries Inc for very much same the reasons that Toni mentions in her article. New Zealand is also a large, remote mountainous place with a tiny population like Montana. One can't help feeling sorry for the Kiwis and wish they had the clout that Montana enjoyed in the US federal senate.

17 December 2005

Copyright: Resale Right Directive to be implemented in New Year

Art 12 (1) of the Resale Right Directive (Directive 2001/84/EC of the European Parliament and of the Council of 27 September 2001 on the resale right for the benefit of the author of an original work of art) is supposed to be implemented by 1 Jan 2006. The directive requires EC member states to provide a right for the benefit of the author of an original work of art known as resale right or occasionally "droit de suite". Such right is
"an inalienable right, which cannot be waived, even in advance, to receive a royalty based on the sale price obtained for any resale of the work, subsequent to the first transfer of the work by the author."

France has recognized such a right since 1920, Italy since 1945 and Germany since 1965. As it was resisted by UKIP and some other British MEPs as a continental innovation likely to threaten London's preeminence in the art market, it is worth pointing out that it is not altogether unknown in the English speaking common law world. Such a right is conferred by s.986 of the California Code. Los Angeles, like London, has a substantial international art market which seems to have survived.

In my article "Copyright: Suites for Artists - Resale Right Directive" which I wrote shortly after the directive had been adopted, I outlined its provisions and considered what would have to be done to bring it into effect in the UK. The Patent Office has just completed a consultation to which I contributed and has now published some draft regulations and guidance for business.

I plan to arrange a conference or seminar on the topic which will carry CPD points in Leeds and/or Manchester early in the New Year. The likely cost will be £50 + VAT and the likely venues will be the Round Foundry Media Centre and Salford University unless I get someone in those towns to provide rooms free. I would also run it in London, Birmingham, Newcastle and somewhere nice in Scotland like St Andrews or Pitlochry if someone would like to take responsibility for managing it.

Competition: More Good Stuff

I've updated my introduction to the Enterprise Act 2002 which I wrote in March 2003. It was originally the handout for talks that I gave to Keeble Hawson, Denison Till and the Liverpool Law Society in February and March 2003. The article traces the history of the development of British competition law before the Competition Act 1998, sets out the policy objectives that prompted this legislation, outlines the Competition Act 1998 and provides an overview to the statute. There are links to the legislation, OFT, Competition Commission, Competition Appeal Tribunal et cetera.

Competition: Bringing Down the Cost of Cars

On the day that Tony Blair negotiated an EC budget settlement which is almost certain to get roasted by our Euro-sceptic tabloids I was editing and updating an article entitled "Bringing Down the Cost of Cars" that I first published in the NIPC European Newsletter in March 1998. Even the most curmudgeonly Eurosceptic ought to appreciate the steady work of the Commission over the last 15 years to iron out the enormous price disparities that used to subsist between the UK and the Continent.

The Commission has accomplished that task in two ways. The first way is by applying art 81 (1) EEC rigorously as is shown by the €49.5 million fine that it levied on Peugeot on 5 Oct 2005 for allegedly obstructing the export of cars from the Netherlands. The second way has been by researching and publishing new car prices across the EC on its website since 1997.

Now I have not had much time for Blair since he made his "shoulder to shoulder" speech in 2001 but I do have some sympathy with him over the flak that he is almost certain to encounter for the concessions that he has had to make to save the European enterprise. Since it is unlikely that we in Europe will be able to look to the USA in this increasingly turbulent world it follows that we must look to each other.

Competition: Case notes on Crane Wire, Wire Netting and Ladbroke Racing transposed

The Crane Hire (Stichting Certificatie Kraanverhuurbedrijf (SCK) and Federatie van Nederlandse Kraanbedrijven (FNK) v Commission of the European Communities), Wire Netting (C-219/95 P Ferriere Nord SpA v Commission [1997] ECR I-04411) and Ladbroke Racing Cases were three important decisions of the European Court. They concerned standardization, certification, ECSC policy and fines as well as other matters. I wrote a combined case note for our first and only European newsletter. It consisted of some 100 pages and I wrote, copied, posted it to 4,000 recipients when we were setting up these chambers. It put me off the road for a year. That was because I was so exhausted at the end of it that I fainted in Sainsbury's in Wakefield and had to be taken to Pinderfield's hospital. The doctors couldn't rule out epilepsy so I was off the road for a year. Glad to say I've had no recurrence though I still throw myself into my work.

16 December 2005

IP/it Update: Copyright Christoffer v Christoffer v Poseidon Film Distributors Ltd.

Although not widely reported Christoffer v Poseidon Film Distributors Ltd.[2000] ECDR 487 is not an unimportant case. Mr Justice Parke's judgement contains some interesting issues on originality, infringement and moral rights. I wrote a note on the case that has somehow managed to climb the Yahoo rankings. I have today updated and revised that note.

15 December 2005

Trade Marks: A Blast from the Past from the Land of Saints and Scholars

Before the phrase "Celtic Tiger" was coined, it was a standing joke that Aer Lingus captains would remind their passengers to set their watches back to the 1950s upon landing at Dublin or Shannon airports. Such jokes were at best silly and, in my view, in bad taste. Now that Dell, Microsoft, Dublin house prices and the common agricultural policy have propelled Irish GDP per head well ahead of our own they are just not cracked anymore.

But I got a tinge of nostalgia on reading Mr Justice Clarke's judgment in Metro International S.A. and others v. Independent News & Media plc [2005] IEHC 309 (7 Oct 2005). This was a motion for an interlocutory injunction - note not an application for an interim injunction - but a good old fashioned motion of the kind that I used to argue before the Vice-Chancellor of the County Palatine of Lancaster in Deansgate or, if I was really lucky, a Chancery Judge in the Thomas Moore Building in the Strand. This is pre- Human Rights Act, pre- Series 5 Software Limited v. Clarke [1996] FSR 273 and above all pre- CPR stuff. And, again IMHO, none the worse for that.

The issue was whether the powerful consortium of newspaper publishers who distribute the "Metro" freesheets in England and around the world should be granted an order restraining until trial the launch of a free newspaper in Dublin also by the name of "Metro". The plaintiffs relied on the registration of a trade mark "of a Metro device or stylised mark". The judge described the device as "a representation of the word Metro with the O depicted in the form of a globe".

Reviewing the case law on s.14 (2) of the Irish Trade Marks Act 1996 (which is substantially the same as our s.10 (2)) the judge noted that the above section had introduced a totally new concept into the definition of infringement namely the idea of "association" which was first considered in Ireland by Mr Justice McCracken J. in Smithkline v. Antigen Pharmaceuticals Limited [1999] 2 ILRM 1. After considering Sabel v Puma and subsequent case law his lordship concluded that there was a serious issue to be tried as to whether the above factors might lead the court to take the view, at trial, that there is a sufficient likelihood of confusion so as to meet the test for infringement and hence that there was a serious issue to be tried.

The judge then turned to the issue of the adequacy of damages and balance of convenience citing not Lord Dipliock's speech in American Cyanamid but more words of Mr Justice McCracken in B & S Limited v. Irish Autotrader Limited [1995] 2 I.R. 142 which appear to be of almost identical effect:

"1. An interlocutory injunction should be refused if damages would adequately compensate the plaintiff for any loss suffered between the hearing of the interlocutory injunction and the trial of the action provided the defendant would be in a position to pay such damages.
2. Should this test be answered in the negative an interlocutory injunction should be granted if the plaintiffs undertaking as to damages would adequately compensate the defendant should he be successful at the trial in respect of any loss suffered by him due to the injunction being in force between the date of the application for the interlocutory injunction and the trial, again assuming that the plaintiff would be in a position to pay such damages.
3. If damages would not fully compensate either party then the court may consider all relevant matters in determining where the balance of convenience lies but these will vary depending on the facts of each case.
4. It is normally a council of prudence, although not a fixed rule, that if all other matters are equally balanced the court should preserve the status quo.
5. Again where the arguments are finally balanced, the court may consider the relative strength of each parties case as revealed by the affidavit evidence adduced at the interlocutory stage where the strength of ones parties case is disproportionate to that of the other."


If and in so far as there is a difference between Lord Diplock and Mr Justice McCracken, the latter perceived it to be as follows:

"While Lord Diplock only used the phrase "balance of convenience" when considering the position if damages were not an adequate remedy for either party, I would be more inclined to the view that the entire test rests on a balance of convenience, but that the adequacy of damages is a very important element, and may frequently be the decisive element, in considering where the balance of convenience lies."

Mr Justice Clarke's judgment was a very careful balancing of the interests in accordance with the principles propounded by Mr Justice McCracken. In the end, Mr Justice Clarke inclined towards the plaintiffs because in the particular circumstances the consequences of their not obtaining an interlocutory injunction at this stage but succeeding at trial would be significantly greater than the corresponding consequences for the defendants of being injuncted pending trial but being released from that injunction upon being successful. The plaintiffs' victory was not total. The judge gave the defendants liberty to apply if they could devise a masthead that contained the word "Metro" but did not risk confusion with the plaintiffs' registered mark. Moreover, he urged the parties to get a move on with the trial indicating that her would be very likely to transfer the case to the new Commercial Court where the case could come on very quickly indeed.

14 December 2005

Say hello to the Dragon

I have just received an email from the IP Dragon who has a blog on Chinese IP law. His (or perhaps her) URL is http://ipdragon.blogspot.com/ and I urge everyone to pay it a visit. The Dragon has got some good posts - particularly the last one on the WTO ministerial in Hong Kong.

When I was at the WIPO domain name panellists' beano in Geneva in October, the one presentation that knocked me sideways (even more than the needling from Larry Nodine) was Francis Gurry's right at the end. He presented some statistics on the prodigious activities of inventors in Korea, China and Japan from which he concluded that before long much of the world's technical literature will be in a North Asian language. A commentary in English on what is going on in this critical part of the world is priceless. I have set my RSS to collect the Dragon's updates and I think others may benefit if they do the same.

Patents: Opinions on Validity and Infirngement

When Peter Hayard visited Leeds last month he left copies of the first two requests for opinions under s.74A with Jonathan Haines of BPP Law School. Jonathan very kindly arranged for them to be copied and distributed copies to everyone who was interested. Mine arrived yesterday.

The first request, which was lodged by Dr Robert Lind of the Oxford branch of Marks & Clerk on 18 Oct 2005, is for an opinion on whether European patent 1,351,732 granted to Novo Nordisk A/S is valid. The second, which was lodged the very next day by my friend Chris Hemmingway of Bailey Walsh LLP (who happen to be my personal patent agents), is a request for an opinion on infringement. Since they made their requests there have been two other applications.

Both requests are interesting. They are supported by concise and cogent written argument. Robert attacks Novo Nordisk's patent on grounds of anticipation and obviousness and he supports his argument on anticipation with a PCT application already in the regional phase in the EPO and a US grant. I have not yet had the time to read those specifications but I can see where he is coming from.

Although Chris is seeking formally an opinion on validity as well as infringement he concludes that no evidence has been provided by the alleged infringer or their solicitors, Osborne Clarke, to indicate that his client's patent is invalid. He lodges the international search report which seems to back him up. Neverthleless, he reserved the right to request an opinion on validity should it become a live issue in the proceedings.

The issue on infringement is quite narrow. The patent in suit is for a shower enclosure which fits into grooves in the sides of a bath. The issue appears to be whether Chris's client's patent actually requires a screen forming part of the enclosure to slide into the grooves. The Bristol argument, if I understand it correctly, is that the patent can be circumvented by attaching some sealing strip underneath the screen. The Yorkshire argument is that the correct interpretation of the claim is that the screen engages with the shoulder irrespective of which component part actually connects with the shoulder. I won't say what I think of either side's argument yet. I'll leave that to the hearing officer.

Peter Hayward was very pleased with these submissions and I am too. If more follow and if the opinions are upheld by Mr Justice Pumfrey, Mr Justice Kitchen and ultimately by the Court of Appeal there may well be a cheap and cheerful remedy for British patentees here in the UK. That would be good for the country.

Seminar - IP for BM-all that a Bmedi@ member or its client needs to know about intellectual property at the outset

Anyone who practises in or near Bradford should come to hear Lucas Bateman, lately of Cobbetts, on 19 Jan 2006. Lucas is the bees knees when it comes to advising start-up high tech companies. Two of his boys won top award at Venturefest last year and they were gracious enough to announce it in their acceptance speech. Also speaking will be patent agent Janet Bray and yours truly.

There will be all the wine and pizza you can consume just for £15 if you are a non-member of free if you join.

For further details contact Steph on 01274 841326 Stephanie@bmedia.org.uk. In case, you are wondering the picture above shows real bees' knees - according to the BBC anyway.

Telecommunications Dispute Resolution: Commonwealth Telecommunications Organisation ADR Centre

I have just had an email from Gregg Hunt of the Chartered Institute of Arbitrators altering me to a speech that he gave to the Commonwealth Telecommunications Organisation ADR Centre on 8 Dec 2005. The dispute resolution clauses Gregg mentions are to be found on the "Resources" page of the CIArb website.

Although he doesn't mention it in his speech, the CIArb has set up a panel for the communications industry known known as the "Communications Providers ADR Service". If you visit the website you will see that it offers dispute resolution services right across the board including internet access and mobile telephony. Those services include mediation, adjudication and ENE. Referral clauses are available for all three methods of dispute resolution. I am a panel member as is Christopher Floyd QC and two big names from Manchester Clive Freedman QC and Michael Black QC.

Information about what I personally do in IP and telecommunications mediation and dispute resolution generally is available at the "Dispute Resolution" page of my chambers website.

Intellectual Property shouldn't be just for the Rich and Powerful Part II

Yesterday I spoke about the inequality of access to the legal tools that protect investment in brands, design, technology and the arts even in very advanced countries like my own and what I personally have tried to do about it over the last 20 years. This inequality is magnified internationally.

A number of organizations try to do something about that and a pretty good means of keeping up to date with them is the blog and website Intellectual Property Watch. At the moment everyone's attention is focussed on the WTO ministerial in Hong Kong. There have already been a couple of good posts on those proceedings, namely a mention of the 6 Dec 2005 agreement in respect of generic medicines and Chinese legislation to implement an earlier agreement ("TRIPS Public Health Amendment Questioned; China Implements Decision" and "Experts Debate IP Issues As Hong Kong WTO Ministerial Opens", both by Tove Gerhardsen).

There is, of course, much, much more on all sorts of topics on the interface between IPR and development ranging from the medicines agreement, the extension of art 66 TRIPs, protection of indigenous and traditional knowledge, food policy to name just a few. I shall be inserting a link through to this site as soon as I have time to work on the template of this blog.

13 December 2005

Intellectual Property shouldn't be just for the Rich and Powerful

Until its merger with the Supreme Court by the Courts Act 1971, the Palatinate Court of Lancaster had exercised chancery jurisdiction in North-West England since 1351. It had enjoyed considerable independence including nominating its own silks. Judah Benjamin, the former confederate attorney-general, was denied silk in London for fear of offending the US government but was elevated to Queen's Counsel in Lancashire. I am proud to say that the members of the Northern Circuit rarely think twice about offending powerful interests when justice demands. We would be even less cautious of upsetting the present incumbent of the white house.
Even after the merger, the title of Vice-Chancellor survived, largely through the campaigning effort of a remarkable Cheshire solicitor called Dykhoff. However, while the Vice-Chancellor's title had survived, his status did not. When I returned to independent practice, the Vice-Chancellor was in fact a county court judge assisted by two deputies - one of whom pioneered active case management a decade before the CPR - especially before lunch when motion day fell on a Friday. There was in fact very little High Court business in the North. Half of the judges' time was spent in the Crown or county court.
Shortly after I had returned to Manchester in the mid-1980s, the Vice-Chancellor of the day, His Honour Andrew Blackett-Ord announced his retirement. Rumours spread that he would not be replaced and that all chancery business would be in London. I had been offered a tenancy at what were then by far the best chancery chambers in the North because I knew something about intellectual property and technology law. I was a bit of an oddity in that I had not read natural sciences at university and had been a pupil in general chancery chambers (albeit those in which Lord Hoffmann as he now is was practising. I had picked up my a pretty good knowledge and understanding of branding, computer and telecommunications law through serving as in-house legal advisor to VISA International for Europe, the Middle East and Africa. That experience did not impress the head of Francis Taylor Buildings or 6 Pump Court (now 8 and 3 New Square) - much less their clerks - but it did impress Butterworths who commissioned me to write the very first chapters on computer law and data protection for both the Encyclopedia of Forms of Precedents and Atkins Court Forms and it was also enough to get into Bridge Street Chambers in Manchester.
The prospect of losing the little bit of chancery work that we had to London impelled my chambers, and particularly Peter Keenan, to campaign for a successor to Andrew Blackett Ord. He produced an impressive dossier as to why the court should stay in the North. As I had worked for the Economist Intelligence Unit, Vivian Gray and Williams & Glyn's Bank before reading for the Bar I composed the economic chapter. So far as I can remember it over 20 years, my argument was that a modern business community depends on its professionals for advice on financial services, that they in turn rely on their lawyers and that their lawyers can gather the expertise necessary to give skilled advice only if there is a court doing commercial law. I can't say whether anybody took any notice of my argument but the Lord Chancellor certainly took notice of our campaign for we received the welcome news that a High Court judge would spend half of every term in Lancashire and Yorkshire. The first of those judges was Richard Scott who went all the way up to the House of Lords and he was followed by Andrew Moritt.
Although I went to school in London and university at St Andrews and Los Angeles, I was born in Manchester and am very attached to the North. I care about this region and would not want to live anywhere else. Over the last 100 years or so industry has retreated steadily and we have lost many of our best and brightest people to London and overseas. Most distressing of all is the development of a sort of cultural cringe that if you really want to get the best of anything you really have to get it from the South. The sad fact is that to a certain extent it is true but only because people who stay here lower their sites and will it to be so.
Now I don't think that has to be true which is why I have spent my career at the Bar in a field that has traditionally been practised only in London. The people who come to me are generally small businesses - many of them start-ups - who can usually afford to instruct only small and medium general practice law firms. Fee earners of those firms rarely stray into the High Court let alone the Chancery Division. Much of my time is actually spent on educating them which is why I have always published regular newsletters, given plenty of talks and kept a pretty comprehensive website on intellectual property and technology law.
Although my website was shortlisted for The Lawyer of the Year awards and we had all sorts of accolades from the legal press over the years people have complained that it is difficult to navigate. I have therefore spent the last month or so simplifying it and I am glad to say that the new site is up and running.
The emphasis of this new site is giving a good service. The question on the Home Page is "How can we help you" and visitors are given a choice of

- information on the law leading to this blog, the IP/it-Update resource which now has over 400 articles, case notes and presentations (many but by no means all of them indexed) and my inventors' site and blog;

- lawyers or clients looking for a specialist advocate or advisor can click on the specialist advice and representation link;

- those looking for advice on non-contentious work can link to my site since I do nearly all of that kind of thing here though we do have a member with a similar practice in Scotland who happens also to be expert in cross-border jurisdiction and remedies;

- there is also a link to my mediation, arbitration and expert determination page;

- there is a link to our domain name page which I call "Cyber-Repossess" for UDRP, DRS and Czech Court of Arbitration cases; and

- finally there is some information on our chambers with some history, links to our members, Lois, Alex and Richard.

This is meant to be a resource not an advertisement. I really hope it will be useful. If it can be improved let me know how.

12 December 2005

Database Rights: Commission Evaluation - Talk about Faint Praise

Art 16 (3) of the Databases Directive (Directive 96/9/EC of 11 March 1996 on the legal protection of databases OJ L 077 , 27/03/1996 P. 20 - 28) requires the European Commission to submit a report on the application of the Directive, particularly the application of the sui generis right, including arts 8 and 9, and especially whether the application of that right has led to abuse of a dominant position or other interference with free competition which would justify appropriate measures being taken, including the establishment of non-voluntary licensing arrangements to the Council and Parliament before the end of the third year and subsequently every 3 years after that. Where necessary, the Commission has to submit proposals for adjustment of the directive in line with developments in the area of databases.

The Commission has published its evaluation today and invited the public to comments on its work by 12 March 2006. I have only had a chance to skim through it but my preliminary view is that it is a long way short of a ringing endorsement of the legislation. Significantly, the evaluation concluded that the economic impact of the “sui generis” right on database production was unproven although a survey of the database publishing industry produced generally favourable responses. I have always been sceptical of the value of database right though I have used it to obtain interim injunctions in departing employee cases that I might not have got had I relied on the law of confidence alone and I have also used it in licensing.

Interestingly, no other major economy outside the Europe has followed this lead so far as I am aware. There has been the odd bill presented to the US congress but there has never been much appetite for sui generis protection. There is no requirement under TRIPs. Art 10 (2) requires member states to protect "compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations" but the article continues that such protection shall not extend to the data or material itself.

10 December 2005

Competition: Australian Retailers Association v Reserve Bank of Australia

A couple of months ago I commented on the OFT (Office of Fair Trading) finding on MasterCard's Interchange fees. There is now an interesting case from Australia on a similar subject. In Australian Retailers Association v Reserve Bank of Australia [2005] FCA 1707 (28 Nov 2005), the case was an application by a group of merchants for judicial review of the decision of the Australian central bank to designate the EFTPOS (electronic funds transfer at the point-of-sale) payments system under the federal Payment Systems (Regulation) Act 1998.

This statute enables the central bank to "designate" a payment system if it considers it to be in the "public interest" to do so and to lay down standards that must be complied with once the designation has been made. Factors to be taken into account when determining whether something is in the "public interest", include the system's efficiency and competitiveness.

An "interchange fee" is a payment by a consumer for clearing an inter-bank electronic funds transfer. Those fees had hitherto been negotiated by the banks without any input from the central bank or other regulator. A likely consequence of the designation of EFTPOS was a reduction of interchange fees. The merchants feared that interchange lower fees from consumers would mean higher contributions from the merchants. Hence the challenge by judicial review.

The judge, Weinberg J, dismissed the application because Australian law requires an applicant to prove error of law. It is not enough to show that the bank exercised its discretion unreasonably. That the merchants were unable to do.

IP/it Update: TRIPs page uploaded and updated

I have updated my 2002 article on TRIPs and uploaded it to my IP/it Update website. I have of course mentioned the extension of time for the least developed nations to implement the agreement under art 66.

IP/it Update: Paris Convention page uploaded

I have just uploaded an article on the Paris Convention that I wrote a few years ago. There are links to the list of members and the index page of the Treaties with links to one or two of the more important articles. I have also cross-linked back to patents, Designs, Trade Marks and Geographical Indications.

Personal Website Update - Domain Names Case Study

I have put up another case study on my personal website. This one is a domain name case where I managed to sort out a domain name dispute through the UDRP (Uniform Domain-Name Dispute-Resolution Policy). This is a public access case where the client had been advised that his only remedy lay in litigation. He came to see me in Easter and he had his domain name back by June. He would also have had change from £2,000. Had he sued in the Leeds District Registry or indeed the Royal Courts of Justice he would probably still be at it. And it would have cost him a lot more than £2,000.

09 December 2005

My .law.pro Website

A year ago I bought one of the first .law.pro domain names in England. The address is www.johnlambert.law.pro. I uploaded a few pages shortly after I acquired it but not much more until I received a renewal reminder a few weeks ago. As the renewal fees for this domain are by no means cheap I decided that I might as well expand it to provide information that might be of some use to people who are actually looking for specialist counsel or indeed a specialist mediator or arbitrator.

The site is divided into 7 main sections and covers my chambers, practice, contentious work, non-contentious work, arbitration, mediation and other ADR, terms of work and contact details. I also have my bio and faq. The practice section is divided into my various practice areas - intellectual property, information and communications technology, media and entertainment and competition law. Some of these practice areas are broken down into sub-areas such as patents, copyrights, designs rights etc.

There is a similar breakdown of the contentious, non-contentious and dispute resolution sections. In each of those sections there is a case study of some work that I have actually done with a link to the transcript where possible. For instance, my case study for contentious patent work is Sapey v Trianco. As most non-contentious and dispute resolution work is confidential I can only describe the case in outline.

I tie up this website with materials on the IP/it-Update , Huddersfield IP Forum, this blog and other websites for which I am responsible. I shall publish news of updates of my .law.pro website here just as I do for the IP/it-Update and chambers websites.