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Injunctions against ISPs Part II: the CJEU's Judgment in Scarlet

In Injunctions against ISPs I discussed Mr. Justice Arnold's judgment in Twentieth Century Fox Film Corporation & Others v British Telecommunications Plc [2011] EWHC 2714 (Ch) (26 Oct 2011) where he ordered BT to use Cleenfeed to hinder its subscribers from accessing the website known as Newzbin II. That judgment was applauded by those who lobby on behalf of the film, recording, games, publishing and other creative industries though by no means everybody in the industries themselves. I saw such lobbyists at work some years ago during consultations at the Patent Office on the implementation of the enforcement directive. For convenience I refer to them as Big Copyright.
Scarlet Less than a month afterwards the Court of Justice of the European Union delivered its judgment in C-70/10 Scarlet Extended SA v SABAM [2011] EUECJ C-70/10 (24 Nov 2011) that a number of Council directives precludes an injunction that compels an ISP to install monitoring software "which is capable…

Patents: Court of Appeal flushes Earth Closet Orders Down the Pan

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The Court of Appeal's decision in Fresenius Kabi Deutschland GmbH and Others v Carefusion 303 Inc [2011] EWCA Civ 1288 (8 Nov 2011) is likely to make life just a little bit harder for patentees, especially the individual inventors and small businesses that I tend to advise and represent. It's tough enough trying to enforce a patent because a common if not the most usual defence is that the patent is invalid. The usual ground for challenging the validity of a patent is obviousness and lack of novelty. Obviousness means that the invention involves no inventive step having regard to the prior art (that is to say everything that has been made available to the public anywhere in the world) while lack of novelty means that the invention has already been invented.
It was not easy to keep up to date with the prior art when most of the world's new technical literature was in English or some other European language but with the rapid growth of China, Korea and East Asian countries…

Patents: Human Genome Sciences Inc. v Eli Little and Co.

In its second intellectual property appeal (the first being Lucasfilm v Ainsworth [2011] UKSC 39 see my case note "Lucasfilm v Ansoworth The Supreme Court's First IP Appeal" 31 July 2011 IP/IT Update) the United Kingdom Supreme Court had to consider the way in which the requirement of industrial applicability extends to a patent for biological material. One of the conditions for the grant of a patent in art 52 (1) of the European Patent Convention ("EPC") is that the invention is "susceptible of industrial application." Art 57 further provides that "[a]n invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture." S.1 (1) (c) and s. 4 (1) of the Patents Act 1977 makes identical provision in respect of British patents. Footnote 5 to art 27 of TRIPS suggests that the term "capable of industrial application" may be deemed by a WTO member as synonymou…

Injunctions against ISPs

On 26 Oct 2011 Mr. Justice Arnold ordered British Telecommunications Plc to: "adopt the following technical means to block or attempt to block access by its customers to the website known as Newzbin2 currently accessible at www.newzbin.com, its domains and sub-domains and including payments.newzbin.com and any other IP address or URL whose sole or predominant purpose is to enable or facilitate access to the Newzbin2 website. The technical means to be adopted are: (i) IP address re-routing in respect of each and every IP address from which the said website operates and which is notified in writing to the Respondent by the Applicants or their agents; and (ii) DPI-based URL blocking utilising at least summary analysis in respect of each and every URL available at the said website and its domains and sub-domains and which is notified in writing to the Respondent by the Applicants or their agents." This order was granted upon the application of a group of film and TV programme makers…

Fishy! The Problem of Foreign Goodwill in the Context of the Internet

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In PlentymoreFirsh BL 0/029/11 (1 Feb 2011), the hearing office Mr. David Landau dismissed an application by Plentyoffish Media Inc. for the invalidation of UK trade mark number 2,453,920. The mark had been registered for dating services in class 47 with effect from 27 April 2007. The application was brought under s.47 of the Trade Marks Act 1994 on the ground that the applicant had an "earlier right" within the meaning of s.5 (4) of the Act. The applicant contended that it had run one of the world's largest on-line dating services under the sign "PLENTYOFFISH" since 2001.
The hearing officer dismissed the application on the ground that the applicant was unable to prove that it had goodwill in the UK as at the date of application for the mark."28) There is no need for a business to be based in the United Kingdom to have goodwill in this jurisdiction. There is nothing to stop a website based in Canada having a goodwill in relation to a dating business in th…

A New Justification for Granting Patents

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I have spent the morning reading a fascinating article by Professor Mark Lemley entitled "The Myth of the Sole Inventor" which you can download free of charge from the Social Science Research Network. Prof. Lemley holds the Neukom chair at Stamford University and, despite the assertion of one of his detractors that he is not a patent attorney, he is also a partner of Durie Tangri which is a San Francisco law firm specializing in IP. The article seems to have appeared in the MLR (not our Modern Law Review but something published by the "U of M Law School" which could be the University of Michigan but equally the University of Maryland).
The article seems to have stimulated some hostility around the blogosphere. The same reviewer who denied that Prof. Lemley was a patent attorney described his article as "a socialist diatribe". Having read the article very carefully and more particularly having lived under several governments by a party that once described i…