2011 IP Developments Conference: 3

The post-prandial session of this year's IP Round-up conference, organised by CLT, began with a description by David Musker (Jenkins) of the current state of European design law, focusing on the main subject of litigation under Community design law -- the cancellation of registered Community designs.  This presentation finished with David's account of the General Court's decision in Beifa, in which both the Cancellation Division and Board of Appeal of OHIM assumed that the challenge to the registrant's design for a writing device was based on the applicant for cancellation's figurative (two-dimensional) mark and the three-dimensional design.

David followed by introducing a new cancellation case, T-513/09 Baena Grupo v OHIM (available only in Spanish and French), in which it was assumed that the informed users of the two designs represented here -- children -- would distinguish them by relation to their facial expressions rather than by their many similarities.

David concluded with a poll of participants as to whether the vacuum cleaner products of Dyson and Vax (which you can view here) were made to the same design, explaining how the judge in Dyson v Vax approached the comparison between them, factoring in the criterion of functionality and its effect upon design.

"Wake up and smell the copyright!", proclaimed copyright consultant and 1709 Blogger Hugo Cox in his appraisal of the present state of copyright protection and enforcement.  Hugo first subjected the concept of originality to his scrutiny, considering the impact of the ECJ's ruling in Infopaq upon the High Court for England and Wales ruling in Meltwater. Further issues relating to protected subject-matter are awaited in the SAS and Dataco references to the ECJ.

Moving on to infringement and remedies, Hugo reviewed the important decision in Experience Hendrix v Times Newspapers, among others. Observing that actions brought against a large number of alleged defendants were not cost-effective, despite the availability of the Patents County Court, he described the statutory solution to large-scale online infringement via the Digital Economy Act 2010.  The earliest that the British version of "three strikes" can come into force is 2012, and further legislation -- which may not be politically popular -- will be needed for this purpose.

What about suing intermediary websites for "authorising" infringements by creating the impression that acts of copyright infringement are licit?  This issue was raised in the context of Newzbin, a case in which the facts were quite different to those of for example the BitTorrent technology but where some of the same legal concepts might be applicable. Currently two references are before the ECJ as to the extent to which injunctive relief may be available against intermediaries given that, they are under no general duty of monitoring their content, they might reasonably be expected to cease repeating or prevent the occurrence of infringements of which they have  knowledge.

Hugo finished with a short summary of the saga of the Google Book Search, which still awaits a final settlement.  The number of books scanned into Google Book Search now stands at 15 million, and the figure continues to rise.

Leading up to the coffee break, Mark Ridgeway and Jim Ford (Allen & Overy) spoke on intellectual property licensing.  Mark started off by praising data licensing and the means of calculating indices, topics for which the banking sector has a voracious appetite -- and which do have an IP dimension.  If there's a contractual licence, remember that a licensee's acts are bounded by the limits of what is licensed, not by the scope of the IP right itself.  Mark commenced with a review of GlobalCOAL, a recent decision that emphasised precisely this point -- and which is a reminder that an IP licence might even carry post-termination restrictions on the licensee that go beyond the scope of the acts restricted by the IP rights themselves.

Mark then reviewed Butters, which considered the effects of an "anti-deprivation principle" (that there cannot be a valid contract that a man’s property shall remain his until his bankruptcy but that, on the happening of that event, the property goes over to someone else, being taken away from his creditors). The trial court felt that an IP licence could be terminated at the point at which the licensee became insolvent, but the Court of Appeal disagreed.

Taking over, Jim considered the meaning of the word "perpetual" in a software contract in BMS Computer Solutions v AB Agri. According to the Court of Appeal, the word "perpetual" -- taken in its context -- meant "of indefinite term" rather than "forever". Finally, Jim reviewed Oxonica v Neuftec, a patent licence which turned on the meaning of the tiny word "or".  Here, the parties sometimes clearly meant "and" and sometimes "or", depending on its context.