26 May 2006

IPR in New Media: b.TWEEN06

Catch up time! So much has happened. Where should I start?

I've just spent a really interesting two days as a sort of speaker at large at the b.TWEEN06 new media fest at the National Photographic Museum in Bradford yesterday and today. I was there to conduct one-to-one sessions on intellectual property issues.

The conference was opened by David Putnam who told a parable about a boat race between GM and Toyota. Toyota won by a mile largely because their crew had 8 men rowing and only one steering in contrast to the GM team which was the other way round. The parable continued with the US team flattening their management for the next race with the effect that there was still only one oarsman. This time the Japanese won by 2 miles. GM sacked its oarsman and distributed the research and development money saved on stock options for its directors.

Lord P was followed by John Sanborn, Creative Director of eBay, Inc, who could at least appreciate a good joke at his nation's expense. He had developed a new eBay service called eBay Express which will sell new products at fixed prices. It is already operating in the USA and will come here soon.

It was a very full programme with discussions on funding, commissioning, collaboration, innovation, new technology and much much more. Two particular presentations particularly impressed me - an overview o Indian history, culture and geography by Ved Sen of ThinkPLANK a sort of convergence strategy company and Matt Lock of BBC New Media on the Innovation Labs project.

One thing that was great fun for me though perhaps not for Gez O'Brien of StarDotStar who partnered me was a pitching competition to redesign the National Photographic Museum. Gez put in a really good bid which I tried to support. We didn't win but that was because we were up against the fairy Tinkerbell. Another really good thing was b.tween2cultures a cross-cultural dialogue between China and the UK produced by talented Chinese artist Yang Lei. I really enjoyed the event and learned a lot.

So far as we IP lawyers are concerned I think the essential message is that the industry appears to be relying on technical rather than legal means of protecting its investment in technology and content. Content is shared and collaborative which means that it is up to the collaborators rather than the publisher to protect their rights if they seer the need. I was asked a few questions on patenting but most people wanted to know more about ascertaining and clearing digital rights.

15 May 2006

Confidential Information: Norbrook Laboratories Ltd v. Bomac

The interesting point about the Privy Council's judgment in Norbrook Laboratories Ltd v. Bomac Laboratories Ltd (New Zealand) [2006] UKPC 25 (4 May 2006) is that it was expressed as a decision in contract. This is a departure (at least in emphasis) from many recent decisions on confidentiality such as Campbell v MGN Ltd [2004] UKHL 22 (6 May 2004) that have treated a duty in confidence as a freestanding equitable obligation in its own right quite independent of any contractual obligation.

In Norbrook, by contrast, the claim was for breach of a confidentiality agreement. Clause 3 of an agreement by which a UK manufacturer disclosed the formula and other confidential information about one of its products to its local distributor so that it could obtain permission from the licensing authority to distribute the product in Aotearoa-New Zealand required the distributor to "maintain in confidence and not use, except as contemplated herein, any information provided by NORBROOK or its agents" for 15 years from the date of receipt. In the event the application was successful. A licence was obtained and the product was marketed successfully in NZ.

Problems arose when Norbrook decided to cut out the Aotearoa-NZ middle man and market its products directly in the dominion. The distributor decided to obtain a comparable product from another source and eventually found a supplier in Argentina. In discussions with the Argentine supplier the distributor disclosed information that had been part of the information that Norbrook had disclosed to it in confidence to pass on to the licensing authority. When he made the disclosure the official believed honestly and sincerely that the information that he had disclosed was in the public domain.

The trial judge took the view that he had been right but his decision was overturned by the NZ Court of Appeal on the ground that the judge's findings of fact were unsustainable (see Norbrook Laboratories Limited v Bomac Laboratories Limited [2004] NZCA 56 (5 May 2004)). However, it did not disturb his judgment dismissing the claim on the ground that "there was no misuse of confidential information in this case" (page [43]).

The Privy Council was unable to agree. It found that there had been a disclosure of confidential information by the NZ company to its Argentine supplier in breach of the non-disclosure agreement. The Board was quick to stress that that disclosure may have made no difference because the secret formula may already have been known to one or other of the parties but that was an issue that had not been explored fully by the courts below. Setting aside the decision of the trial judge and Court of Appeal the Privy Council ordered those points to be considered by the High Court of NZ.

Before closing this post I have to apologize for the lack of material over the last few weeks. That was largely because my time has been taken up with organizing the IPCEX event on ADR and IPR which, fortunately for me, turned out OK. I will give more details of that seminar when I return from DLA Piper's seminar on dispute resolution in China which is to take place in London tomorrow. China is my new interest and I shall report on that too when I get back from the Smoke.

04 May 2006

ADR Seminar Leeds 10 May: Bar Council will give 2.5 hours CPD Point

I am glad to say that Cordelia Lean of the Bar Council will allow 2 hours and 30 minutes CPD points to any barrister who attends our seminar at BPP Law School in Leeds on 10 May 2006.

IPCEX has not yet had time to apply to the Law Society, ITMA or CIPA for CPD accreditation but I think that those professions also offer ad hoc accreditation. Check the Law Society's FAQ.

We are now close to bursting point. I have to decide whether or not to look for more space in another building so I really do need to know who is coming in good time.

Shelagh Gaskell

I am very sad to learn from Pinsent Masons' website of the death of Shelagh Gaskell. I had known Shelagh for over 20 years. Although we had lost touch some years ago I will miss her greatly. I am sure I shall not be the only lawyer to do so.

She was a lovely lady but a very formidable one. The first time I met her was at Leeds University shortly after she would have joined Dibb Lupton Fawcett (as DLA Piper was known at that time). I was giving a talk on protecting semiconductor chip topograpraphies which was a burning issue before the Washington Treaty. Simon Chalton, who was then senior partner of Dibbs, brought her along and I remember that she asked me some very perceptive questions.

I got to know her better at the IBA conference in Buenos Aires in 1988. There were not many Brits at that conference - HMG had not yet restored diplomatic relations with Argentina - and even fewer Northerners. Apart from Simon and Shelagh the only other delegate from the North was Dan - now Lord - Brennan QC so I think we stuck together. That was the best IBA conference ever.

There were not many computer lawyers in the 1980s. The few of us who practised in the North - John Morris and Felicity Brandwood of the NCC, Graham Wood of Cobbetts, Jonathan Moakes of Halliwell Landau, Dai Davis of Hepworth & Chadwick and Simon and Shelagh of Dibbs - had a little dining club where someone would read a paper and we would discuss it over dinner. That was came to an abrupt end when the Manchester Club removed to the top of a high rise on Charlotte Street.

Shelagh followed Simon from Dibbs to Masons and stayed there after Simon moved on to Bird & Bird. We lost touch some time after I opened nipc in 1997. That was probably because I no longer had sufficient spare time or money for IBA and CLA conferences.

I should like to express condolences to all her friends and colleagues at Pinsent Masons, DLA Piper and elsewhere.

02 May 2006

Dispute Resolution: ADR and Arbitration of IP Disputes

Free Seminar: BPP Law School, Leeds
Wednesday, 10 May 2006 14:00 - 17:00

On 3 April 2006 the UK Patent Office announced a new mediation service for the resolution of intellectual property disputes. That announcement followed hard on the implementation of s.74A and s.74B of the Patents Act 1977 providing for advisory opinions on the validity and infringement of patents.

These initiatives indicate determination on the part of HM government that to do something about the scandal that England and Wales is one of most expensive places in the developed world to enforce intellectual property rights. This scandal is one of the reasons why the UK trails not just the USA, Japan, Germany and France in the number of European patent applications every year but even the Netherlands.

Things are about to change and if you want to learn about these changes the best opportunity is to attend a free IPCEX seminar at BPP Law School, 2 Whitehall Quays, Leeds LS1 4HG on Wednesday 10 May 2006 at 14:00.

We have top speakers for this event: Ignacio de Castro Head - Information and External Relations Section of the WIPO Arbitration and Mediation Centre in Geneva, Peter Back of the Patent Office and our very own Sara Ludlam of Keeble Hawson.

If you are really serious about intellectual property you will come. This seminar won't be repeated - at least not in the North and probably not in London. It is worth travelling up from London, down from Edinburgh, certainly over the Pennines and even catching a plane to attend. It is worth re-arranging and even cancelling appointments. Your clients will be much happier to know that you are up to date on this seismic change in IP dispute resolution than chatting to them about the cost of legal services. So no excuses. Be there.

Call +44 (0)870 990 5081 or email seminars@ipcex.org.uk quoting "10 May 2006" to reserve your place.