14 January 2013

The New Patents Court and Patents County Court Guides

For several months the "Patents Court Guide" link on the Justice Ministry website led not to a guide to the  practice of the Patents Court but to a guide to the new practice in the Patents County Court. Between the 23 April 1999 and the 30 Sept 2010 that would not have mattered because the rules and practice directions for the Patents Court and the Patents County Court were essentially the same. Since the 1 Oct 2010 the practices of the Patents Court and Patents County Court have diverged once more and there is now a small claims track in the Patents County Court where the claim for pecuniary relief (damages or profits) is less than £5,000. For more information on those developments, read "The New County Court Rules" 31 Oct 2010 and "Patents County Court - The New Small Claims Track Rules" 30 Sept 2012.

We now have a plethora of new practice guides:
Not to be outdone, the Scots have also been busy with their Act of Sederunt (Rules of the Court of Session Amendment No. 5) (Miscellaneous) 2012 which seems to have borrowed extensively from CPR Part 63 and the Part 63 Practice Direction (see Chapter 55 of the Court of Session Rules for the consolidated practice).  The Patents County Court Small Claims Track Guide was published in October and I mentioned it briefly in "Patents County Court: More on the Small Claims Track" on 13 Oct 2012 but the other two guides appeared just before Christmas.

This multiplicity of court guides may be confusing for those who do not specialize in intellectual property litigation so here are 10 short tips to commercial litigators who find themselves with an intellectual property case and also perhaps for intellectual property practitioners who try to steer clear of litigation.

  1. Intellectual property litigation is a little bit different from other types of civil litigation and it has its own rules and practices which are to be found in Part 63 of the Civil Procedure Rules and the Part 63 Practice Direction.
  2. The cases that are governed by those rules are those that fall within CPR 63.2 or para 16.1 of the Part 63 Practice Direction.
  3. A distinction is to be drawn between cases in the first category (essentially patents and registered designs which are sometimes called "hard IP") and everything else which is disparagingly called "soft IP".
  4. One consequence of the distinction between hard and soft IP is that cases in the High Court that fall within the first category are assigned to the Patents Court while everything else proceeds in the Chancery Division. Another consequence is that cases in the second category are eligible for the small claims track but cases in the first category are not.
  5. The Patents Court is the collective name of a group of Chancery judges (also referred to occasionally as "the assigned judges") who hear cases in the first category. The judge in charge of that list is Mr. Justice Floyd.   He and Mr. Justice Arnold hear cases that are thought to have technical difficulty because both of those judges specialized in intellectual property law before their elevation to the bench. They are assisted by a number of other judges who practised in other fields before their appointment. The Patents Court is part of the Chancery Division.
  6. The Patents County Court is theoretically part of the Central London County Court but it was detached from the rest of the court by HH Judge Fysh QC some years ago and now reposes in the Rolls Building which also houses the Patents Court and the rest of the Chancery Division.   It has one judge, HH Judge Birss QC and a number of district judges who hear cases in the small claims track.  It is likely to change its name to "the Intellectual Property County Court" in the not too distant future.
  7. It was once possible to issue claims that fall within para 16.1 in the Part 63 Practice Direction out of the Manchester, Liverpool, Leeds, Newcastle, Preston, Bristol, Birmingham, Cardiff, Caernarfon or Mold District Registries and County Courts and theoretically, it still is.   However, there is now very little point in doing so as the Patents County Court has rules specially designed for IP litigation, a specialist judge and controls on the time that can be spent and the costs that can be incurred whereas these other courts do not.
  8. Both the Patents Court and the Patents County Court Guides say that the judges are ready and willing to sit outside London but that has hardly ever happened.  There are a number of reasons for that which I don't really want to go into because it would upset a lot of people but here is what happened the other day. I represented a client from Liverpool while the other side was represented by solicitors in Leeds. As we had the burden of proof I wanted to make it as easy as possible for out witnesses to testify so I asked for a trial in the North, preferably in Liverpool or Manchester. The other side said that their witnesses came from Leeds and London and that a trial anywhere but Leeds would be at least as much trouble and just as expensive for them as a trial in London.   The judge was sceptical.   He said that he would not order a trial outside London without the agreement of all the parties.   As Leeds is a lot cheaper and easier to reach than London I agreed to Leeds which was the other side's home turf and also, incidentally, mine.   The judge remarked that it was one thing to order a trial in Leeds but quite another thing for it to happen and that everything would depend on court avaiolability.   As soon as the case management conference was over our side called Leeds Chancery listing and booked a court room.  Once they knew that they would not have to provide a judge and that the case would still be managed from London the Leeds District Registry could not have been more helpful.
  9. The case management conference is very important in both the Patents Court and Patents County Court.   It is taken by a judge and not a district judge or master.   Decisions are taken at the CMC which will affect the subsequent course of the litigation.   You should prepare for it thoroughly and field your best team for the hearing.
  10. Although the cost of IP litigation has come down dramatically in recent years it is still not cheap.  It is always worth considering alternatives such as examiners' opinions on whether a patent is valid and whether it has been infringed, the ICANN Uniform Domain Name Dispute Resolution Policy and Nominet's Dispute Resolution Service for domain name disputes and the Intellectual Property Office's mediation service.
Should amplification or clarification be required on any of those points, please do not hesitate to call me on 0161 850 0080 or send me a message through my contact form. You can also follow me on Facebook, Linkedin, twitter and Xing.

08 January 2013

Guest Post - Kate Storey: Guernsey's Image Rights




Many thanks for your interest in Guernsey's innovative image rights legislation. Your blog gives me the opportunity to highlight the benefits of having Guernsey registered image rights if you are a personality based outside Guernsey, anywhere in the world. By 'personality' it is meant the personality of any individual, corporate entity or fictional character, or a group or double act, whether alive/in existence or deceased/dissolved within 100 years prior to the date of application (in this latter regard, think of the continued commercial significance of Elvis, Michael Jackson and Marilyn Monroe). The Guernsey legislation will be of interest to those in the public eye, or those at the beginning of their careers who anticipate being well known in the future, in a wide or relevant sector of the public in any part of the world.

The below listed benefits are extracted from an article I co-authored, which is due to be published in the Entertainment Law Review later in the year.

It is important to note that the Guernsey registered image right is not a tax product, but a new form of intellectual property right, which is welcomed by those seeking clear legal recognition of image rights. Addressing the question of whether protection for the personality should be a decision for the courts or for the legislator, Lindsay J has stated (in Douglas v Hello! [2003] EWHC 786 (Ch): "…if Parliament does not act soon the less satisfactory course, of the courts creating law bit by bit at the expense of the litigants and with inevitable delays and uncertainty, will be thrust upon the judiciary". The Guernsey legislature has answered this call.

Being rights which apply in Guernsey, they are not proposed as the worldwide panacea to enforcement issues, but rather to assist with recognition of image rights as specific rights and to add clarity to Guernsey or non-Guernsey structures established to hold and licence image rights and the licensing contracts themselves. They are also proprietary rights transmissible by will and so will be useful in estate planning.

Registration of Guernsey image rights is more expensive than registration of trade marks, but if you take the example of Tiësto, the Dutch DJ, who has recently registered Guernsey image rights, as an individual as opposed to a corporate personality he will have paid £1,000 registration fees for registration of his personality and £100 per specific image registered. The registration of the personality lasts for 10 years and gives protection for any unregistered distinctive images associated with his personality, so £100 a year. The registration of an image (which has presumed distinctiveness by virtue of registration) lasts for 3 years, so £33.33 a year. Of course there will be agent's fees on top of the registration fees, but when looked at over the full period of protection, costs of registration do not seem so steep for the benefits provided.

Benefits of Guernsey registered image rights:
  • legal certainty as to the scope of protection for a personality's image by statutory clarification of the rights and the public interest exceptions to the rights;
  • publication to the world by means of the online Register of Personalities and Images of the bundle of image rights which the registrant considers to be his protectable rights (and to which reference can be made in licensing/assignment contracts);
  • adds clarity to existing structures already set up by personalities to market their image rights and provides another form of intellectual property right to add to their existing portfolio of intellectual property rights and contractual rights, which may be helpful in enforcing those other rights;
  • attractive to those at the beginning of their career, as there is no requirement to be famous to register - they can watch the value of their Guernsey image rights grow as their career develops;
  • Guernsey image rights can be held in a Guernsey structure, which offers tax neutral treatment of income arising from those image rights and no capital gains tax on a disposal (or they can be held in a structure based outside of Guernsey);
  • one of the main attractions of the legislation, from a succession planning viewpoint, is that it enables personalities to incorporate image rights formally into their succession planning for the first time, since Guernsey image rights are property assets which can be perpetually renewed and last beyond death, and can be passed on to beneficiaries by will;
  • wider scope of protection than that given by registered trade marks, as follows:
-    for Guernsey image rights there is no requirement for the personality to be well known in order to register, whereas a registered trade mark must have inherent distinctiveness or acquired distinctiveness through use prior to registration in order to be registrable;
-    the protection given by Guernsey image rights is not tied to particular classes of goods/services as for a registered trade mark;
-     there are no specific use requirements for Guernsey image rights, in contrast to required user within 5 years of registration for registered trade marks;
-      wider definition of infringing use for Guernsey image rights than for registered trade marks infringing use under the Ordinance includes copyright infringing acts;
-     registration of a personality gives protection for unregistered images associated with the personality, as well as images specifically registered against the personality.
The above are the views of the writer alone and should not be relied upon as legal advice.

For further information call Kate Storey on +44 (0)1481 734244, email  kate.storey@collascrill.com. 

02 January 2013

Guernsey's Image Rights Legislation


























Guernsey is a tiny island in the English Channel with a population of 66,000 and a land area of 63 square kilometres. As you can see from the picture above, it has blue pillar boxes and also, so I am told, blue phone boxes. It is all that is left of the Duchy of Normandy which was lost to France by King John.  It has its own language called Guernésiais which is spoken by over 1,000 people (mainly OAPs) though English is the language of business, government and everyday life.

For me the most interesting thing about Guernsey us that ut has its own intellectual property law which I last discussed two years ago in "Guernsey's Patent Law".   This is made possible by The Intellectual Property (Enabling Provisions) (Bailiwick of Guernsey) Law, 2004. S.1 of that statute provides:
"The States may by Ordinance make such provision as they think fit in relation to the law concerning intellectual property; and any such Ordinance may, without limitation, make provision in respect of the following matters and the following intellectual property rights -
(a) the implementation of -
(i) any international instrument relating to intellectual property or any aspect thereof (including, without limitation, the Agreement on Trade-related Aspects of Intellectual Property Rights, including Trade in Counterfeit Goods[b]),
(ii) any right, power, liability, obligation, prohibition or restriction created or arising, or any remedy or procedure provided for, by or under any such international instrument,
(b) copyright,
(c) patents and utility models,
(d) trade marks and service marks (registered and unregistered),
(e) design rights (registered and unregistered),
(f) database rights,
(g) biotechnological rights,
(h) plant variety rights,
(i) semi-conductor, and integrated circuit topography, rights,
(j) intellectual property rights in respect of the information society,
(k) geographical indications,
(l) domain names,
(m) image rights,
(n) the registration of intellectual property rights (whether by way of first registration, re-registration, filing, recognition of rights granted in any other jurisdiction, or otherwise),
(o) the administration, protection, assessment and enforcement of intellectual property rights, including (without limitation) provision as to -
(i) the examination of, and searching in respect of, applications,
(ii) appeals in relation to registration decisions,
(iii) modes of civil enforcement,
(iv) modes of criminal enforcement,
(v) remedies in respect of contraventions of intellectual property rights, and
(vi) the establishment of a tribunal and a panel of persons from whom the members of the tribunal are to be drawn,
and otherwise as to the administration of justice in relation to intellectual property rights,
(p) the jurisdiction and powers of the courts of the Bailiwick (including, without limitation, provision that the Royal Court shall have jurisdiction and powers throughout the Bailiwick), and the constitution and procedure of those courts, in relation to intellectual property rights and matters set out in paragraph (n),
(q) exceptions and derogations from the enforcement and applicability of intellectual property rights on social, community, ethical and other grounds,
(r) the establishment of an Intellectual Property Office (by whatever name called, and whether as a department of the States or of any committee thereof or as a separate legal entity) with responsibility for the registration of intellectual property rights and the administration of this Law and any Ordinance under it, and with such rights, liabilities, powers, functions and capacity as may be specified by Ordinance, and
(s) the vesting of any right, liability, power and property in the Intellectual Property Office."

One of the folk who practise Guernsey intellectual property law is Kate Storey. I first met Kate when she was an associate with Cobbetts which in my humble opinion is the best intellectual property law firm in Manchester by a country mile and she was one of the best instructing solicitors I have ever had.  Her instructions were always precise and contained exactly the information that I needed and no more.   Sadly, Kate has left Manchester for Guernsey and now works for Collas Crill, a Channel Islands firm with offices in London and Singapore.   On 19 Nov 2012 Collas Crill gave a talk in Manchester on The Image Rights (Bailiwick of Guernsey) Ordinance, 2012 which came into force on 3 Dec 2012.   I attended at Kate's invitation.

Kate and her colleagues have written quite a lot of articles on this topic and helped to draft the legislation.   It would therefore be otiose if not presumptuous of me to duplicate their work.  I would commend in particular their FAQ which defines image rights as
"property rights acquired by the registration of a “personality”in Guernsey’s Register of Personalities and Images, which gives the proprietor of the registered personality exclusive rights in the images associated with or registered against that registered personality."
personality as
"a person’s essential brand, i.e. the name by which the person is known.To be registrable under the IR Ordinance, it must be the personality of one of five types of person or subject, referred to as the “personnage”
and personnage (which I understand to be a Guernésiais word) as "the person or subject whose personality is registered."  A personality can only be registered if it is one of the following:
(a)    a natural person, i.e. a human being who is alive or has died within the period of 100 years preceding the date of filing the application for registration of the personality,
(b)    a legal person, i.e. a body corporate or other body having legal personality that is currently in existence, registered or incorporated or has ceased to be in existence, registered, or incorporated within the period of 100 years preceding the date of filing the application for registration of the personality,
(c)    a joint personality, being two or more natural persons or legal persons who are or who are publicly perceived to be intrinsically linked and who together have a joint personality, e.g. a comedy double act,
(d)    a group, being two or more natural persons or legal persons who are or who are publicly perceived to be linked in a common purpose and who together form a collective group or team, e.g. a sports team or pop group, or
(e)    a fictional character of a human or non human, e.g . Popeye (human), Superman (non human), Mickey Mouse (non human).
Image rights therefore fill the gap between the protection afforded to a celebrity by copyright, registration of a trade mark and the law of passing off.

As you can see from Collas Crill's schedule of fees registration is not cheap.   The Guernsey Image Rights Registry charges between £1,000 and £5,000 for a personality application depending on the nature of the personnage plus £100 to £200 for each registered image and there are professional fees on top of that.   S.97 of the Ordinance provides for a register of "image rights agents" which it implemented by reg. 5 of The Image Rights (Bailiwick of Guernsey) Regulations, 2012.   Reg 5 (4) (b) of those regulations require an image rights agent to have a business address in Guernsey which will rule out most UK patent and trade mark attorneys and law firms.

Everybody who attended the Manchester seminar was given a copy of the 2012 Ordinance by Collas Crill which I read on the tram back to Mumps.   It is not a particularly long statute with 117 sections and no schedules.   It seems to be a mashup of the Copyright, Designs and Patents Act 1988 and the Trade Marks Act 1994.  The first 5 sections with the definition of image rights, personality and personnage which I have discussed above.   The next 5 concern registrability and there appear to be absolute and relative grounds of refusal as in trade marks.   Sections 11 to 13 provide for applications for registration and 14 to 26 the registration procedure.   Sections 27 to 30 cover infringement - juicy! - 41 to 50 infringement proceedings.   As with copyright there are a number of exceptions which are set out in sections 31 to 40 and many of these seem to be the same as for copyright.   Sections 50 to 60 are concerned with image rights as property and sections.61 to 64 with licensing.  Also like copyright there are moral rights which are covered by sections 65 to 77.  The rest of the Ordinance is take up with the registry and register, image rights agents, criminal offences and miscellaneous and general provisions.

For me as a barrister the most interesting provision was s.41.   S.41 (1) provides:
"An infringement of a registered personality's image rights is actionable by the proprietor of the image rights."

"Infringement" is defined by s.27:
"(1) The image rights attributable to a registered personality ("registered personality's image rights") are infringed by the use of an image for a commercial purpose or a financial or economic benefit -
(a) where, because the image is identical or similar to a protected image of that registered personality, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with that registered personality, or
(b) which is identical or similar to a protected image of that registered personality and the use of the image, without due cause -
(i) takes unfair advantage of the distinctive character or repute of the personnage, or
(ii) is detrimental to the distinctive character or repute of the personnage, or the value of that registered personality or that registered personality's images,
without the consent of the proprietor of the image rights.
(2) In this Ordinance, "protected image" means an image which -
(a) is distinctive (see section 28),
(b) has actual or potential value (see section 29), and
(c) satisfies the requirements for registration of an image under this Ordinance (whether or not it is registered).
For the avoidance of doubt, an image which is declared invalid or the registration of which is revoked under this Ordinance, is not a protected image.
(3) For the purposes of this section a person uses an image if, in particular (but without limitation), the person-
(a) uses the image in a communication to the public,
(b) uses the image in connection with sponsorship,
(c) uses the image for the purposes of marketing or endorsing goods, services, activities or events,
(d) affixes the image to goods or to the packaging thereof,
(e) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the image, or offers or supplies services under the image,
(f) imports or exports goods under the image,
(g) uses the image on business papers,
(h) incorporates the image in a flag, banner, poster or any other similar article, or
(i) uses a registered image as an internet domain name or as a company name.
(4) A person who applies an image to material intended to be used for labelling or packaging goods, as a business paper, or for the purposes of sponsorship or marketing or endorsing goods, services, activities or events, shall be treated as a party to any use of the material (including electronic material) which infringes the registered personality's image rights if the person knew or had reason to believe that such use of the image was not duly authorised by the proprietor of the image rights or a licensee.
(5) References in this Ordinance to the infringement of a registered personality's image rights are to any such infringement of the image rights of the proprietor of such rights.
(6) The use of an image includes the use of part of an image."
S.41 (2) sets out the remedies which appear to have been cribbed from our own Copyright, Designs and Patents Act 1988.
"In an action for infringement all such relief by way of damages, injunctions, accounts or otherwise is available to the proprietor of the image rights as is available in respect of the infringement of any other property right."
Finally, there is a threats action (s.47) and remedies for infringing moral rights (s.77)..

At the talk I asked about the cost of enforcement and was told that like all litigation in Guernsey intellectual property litigation is expensive.  I also asked about the expertise of the local judges and was told that if there were ever an IP case in the Guernsey courts they would fly in an English patent silk to hear it.

So there you have it, folks. Given that Guernsey is a very small place and that very few other countries have comparable legislation I struggle to see why anybody would spend a shed full of lolly on a Guernsey image right.   The obvious answer is that there must be some kind of tax benefit but when businesses and individuals are pilloried for tax avoidance one wonders whether it is worthwhile.  If you are a Premier League footballer, comic, internet business or other celebrity who doesn't care a damn about British public opinion and you want to learn more about this law or indeed Guernsey intellectual property in general  call me on 0161 850 0080 or send me a message through my contact form. You can also follow me on Facebook, Linkedin, twitter and Xing.   

As this is my first post of 2013 I wish all .my readers, clients and anyone else who may read this article a very happy and prosperous New Year.