2020 LW3IP revision lecture slides.pdf

LIMITLESS POTENTIAL | LIMITLESS OPPORTUNITIES | LIMITLESS IMPACT
Copyright Universityof Reading
IP Revision Session
Adrian Aronsson-Storrier
LW3IP
INTELLECTUAL PROPERTY LAW School of Law

2
WHAT DID THIS MODULE COVER
Copyright
Protects original expression: literary,
musical, artistic and dramatic works
Patents
Protects new and inventive inventions
Trade Marks
Protects brands/‘signs’ which act as a badge of
origin: logos, images, shapes, words
Breach of Confidence
Protects secret commercial
information
Passing off
Protects trade ‘get up’ of products and
unregistered trade marks
Privacy and data protection
Protects private and personal information/data

3
RATIONALES FOR IP PROTECTION
RECAP

4
LOCKEAN RATIONALE
• Locke & the labour theory:
•Nature was created for all to
share; it is a common;
•Each one owns their body, and
the labour it produces
•Mixing labour with
nature/material from the
commons creates a property
entitlement in the result.
John Locke, 1632-1704

5
HEGELIAN RATIONALE
• Hegel and the personhood or
self-realisation theory:
•To become fully self-
realised, an individual must
be able to “project” his/her
will onto objects in the
external world
•This requires a stable set of
claims over those objects –
i.e. property rights
Georg Wilhelm Friedrich Hegel,
1770 –1831

6
UTILITARIAN RATIONALE
• Bentham and Utilitarianism:
•“By the principle of utility is meant
that principle which approves or
disapproves of every action
whatsoever, according to the
tendency which it appears to have
to augment or diminish the
happiness of the party whose
interest is in question: or, what is
the same thing in other words, to
promote or to oppose that
happiness”
Jeremy Bentham, 1748 - 1832

7
COPYRIGHT RECAP

8
A COPYRIGHT CHECKLIST
PROBLEM QUESTIONS
Aspects to consider when addressing potential copyright infringements
under UK law (modified from
http://ipkitten.blogspot.co.uk/2014/11/struggling-to-understand-how-
to-address.html)
1. Is the allegedly infringed work protected by copyright in the first place?
• Does the work belong to one of the categories of works protected
under UK copyright? If so, which one? If not, are categories consistent
with EU law?
• Is the work sufficiently original (and which test applies)
• Who owns the copyright? What is the duration of protection?
2. What rights have been potentially infringed?
• ECONOMIC RIGHTS (test is in s16 CDPA) – primary or secondary?
• What rights have been potentially infringed? Is there derivation/a
causal connection? The whole/ a substantial part of the work?

9
A COPYRIGHT CHECKLIST
(CONT)
• MORAL RIGHTS
• They can be waived under UK law
• Integrity requires a “treatment” (see s80 CDPA), paternity right
requires assertion
3. Is/was there a licence – whether express or implied – in place? If so, what
is/was its scope?
4. Do any defences (also known as 'permitted acts' and 'exceptions')
apply?
• Is there any defence available under UK law?
• If so, can the dealing at hand be considered fair (matter of fact)? Factors
to consider include:
• Amount and quality of what has been taken
• Could have the same purpose been achieved otherwise?
• Effects on the market for the original work, eg substitution effect
• Is the original work unpublished?

10
TRICKY COPYRIGHT ISSUES -
ORIGINALITY

11
TRICKY COPYRIGHT ISSUES –
INFRINGEMENT
• Temple Island Collections Ltd v New English Teas [2012]
EWPCC 1 (12 January 2012)

12
TRICKY COPYRIGHT ISSUES -
HYPERLINKING AND GS MEDIA
• Eleonora Rosati, available http://ipkitten.blogspot.co.uk/2016/09/linking-after-gs-media-in-table.html

13
PASSING OFF RECAP

14
RECAP:
PASSING OFF

15
RECAP PASSING OFF:
RECKITT & COLEMAN V BORDEN
1. The claimant must be able to demonstrate
goodwill;
2. The defendant made a “misrepresentation”
that is likely to deceive the public;
3. The misrepresentation damages the goodwill
of the claimant

16
RECAP PASSING OFF:
ARNINK V TOWNEND -ADVOCAAT
• Warnink v Townend per Lord Diplock
• Passing off requires
1. a misrepresentation;
2. made by a trader in the course of trade,
3. to prospective customers of his or ultimate
consumers of goods or services supplied by him,
4. which is calculated to injure the business or goodwill
of another trader (in the sense that this is a
reasonably foreseeable consequence) and
5. which causes actual damage to a business or
goodwill of the trader by whom the action is brought
or (in a quia timet action) will probably do so.

17
TRICKY ISSUES IN PASSING OFF:
JURISDICTIONAL SCOPE ISSUES
• Conflicting authority exists where there is no business activity,
but there are customers in the UK
• Most recent case to address the issue was Starbucks (HK)
Limited and another v British Sky Broadcasting Group plc and
others [2015] UKSC 31
- In order to establish goodwill, the claimant must have customers
within the jurisdiction,as opposed to people in the jurisdiction
who happen to be customers elsewhere. Thus, where the
claimant’s business is carried on abroad, it is not enough for a
claimant to show that there are people in this jurisdiction who
happen to be its customers when they are abroad.
• Here a HK TV operator had no customers in the UK, but
Chinese speakers in the UK would be aware of the brand, and
there was a related youtube channel

18
EXTENDED PASSING OFF

19
PERSONALITY MERCHANDISING
"[t]here is in English law no "image right"
or "character right" which allows a
celebrity to control the use of his or her
name or image.” This means that
"[a] celebrity seeking to control the use
of his or her image must therefore rely
upon some other cause of action such
as breach of contract, breach of
confidence, infringement of copyright
or, as in this case, passing off.”
Kitchin LJ in Fenty v Arcadia, [2013]
EWHC 2310 (Ch)

20
TRADE MARK RECAP

21
TRADE MARK RECAP:
• Trade mark definition
•A sign
•Capable of being represented graphically
•Capable of distinguishing goods or services
• Pathways to registration:
•National (UK) registration
•International filing via Madrid Protocol
•EU Trade Mark (formerly a Community Trade Mark)

22
TRADE MARK RECAP:
ABSOLUTE GROUNDS FOR REFUSAL
• S1(1) and 3(1)(a) and (2): Exclusion from registrability of signs that
do not fall within the statutory definition of a trade mark
• S3(1)(b)-(d): Exclusion from registrability of signs that are:
- Non-distinctive
- Descriptive
- Generic
• S3(3)-(6): Exclusion from registrability of signs that are:
- Contrary to public policy or morality
- Likely to deceive the public
- Prohibited by law
- Made in bad faith
Each of the grounds for refusing to register listed in S3(1) is
independent of the others and calls for separate examination

23
TRADE MARK RECAP:
ACQUIRED DISTINCTIVENESS
• Despite the s 3(1)(b)-(d) exclusion, marks can be saved if they
have acquired distinctive character via use:
• S3(1)(b)-(d): Exclusion from registrability of signs that are:
- Non-distinctive
- Descriptive
- Generic
Despite the general exclusion, descriptive, non-distinctive and
generic signs CAN be registered if they have acquired
distinctiveness through use.
• “a trade mark shall not be refused registration by virtue of paragraph
(b), (c) or (d) above if, before the date of application for registration, it
has in fact acquired a distinctive character as a result of the use made
of it”

24
TRADE MARK RECAP:
RELATIVE GROUNDS FOR REFUSAL
• Set out in s5 of the Act, and designed to ensure that protection
given to trade mark owners does not conflict with any pre-existing
marks.
• The owner of an earlier mark (A) can prevent the registration of a
sign by another (B) where the use of that sign would infringe the
rights of the earlier owner (A)
• A later registration can be refused where:
1. Marks are identical and the goods and services are identical (double
identity)
2. Marks are identical and the goods and services are similar, and there
is a likelihood of confusion with the earlier mark
3. Marks are similar and the goods and services are identical or similar,
and there is a likelihood of confusion with the earlier mark
4. Marks are identical or similar, and the earlier mark has a reputation,
and the use of the later mark would take unfair advantage of or be
detrimental to the character of the earlier mark

25
TRADE MARK RECAP:
INFRINGEMENT
• S(9)(1) - The proprietor of a registered trade mark has exclusive
rights in the trade mark which are infringed by use of the trade
mark in the United Kingdom without his consent.
• The grounds for infringement of S10(1)-(3) mirror the relative
grounds for refusal in S5(1)(3)
>No requirement of knowledge or intention on the part of
the defendant. Liability is strict
>No need to demonstrate damage
>Possibility to commence an action for infringement even
though the mark has not been used
• Two main differences between infringement and relative refusal:
1. Need to identify the defendant’s sign
2. In order to infringe, it must be shown that the defendant used the
mark “in the course of trade”

TRICKY ISSUES:
SHAPE EXCLUSION
A sign shall not be registered as a TM if it consists
exclusively of:
(a) The shape which results from the nature of the
goods themselves
(b) The shape of goods which is necessary to obtain a
technical result
(c) The shape which gives substantial value to the goods
(3)(2) TMA 1994

TRICKY ISSUE:
GEOGRAPHICAL ORIGIN
• Descriptive marks relating to geographical origin:
• Windsurfing Chiemsee
>ECJ: does the geographical name designate a place which
is currently associated in the mind of the relevant class of
persons with the category of goods concerned, or is it
reasonable to assume that such an association may be
established in the future?
>If there is an established connection between the place and
the products in question, registration will normally be
refused
>The connection is not necessarily confined to a belief that
the goods were manufactured in a particular place, but also
for example that the goods were conceived or designed in
that place

28
PATENT RECAP
28

29
PATENT RECAP:
• Pathways to patent protection:
>National UK Patent (+PCT)
>European Patent
>European Patent with Unitary Effect
(Uncertain future due to Brexit and German Courts)
• Conditions for patentability
>Industrially Applicable
>Novelty
>Inventiveness
• Exclusions

30
PATENT RECAP
• Exclusions from patentability
>Computer Programs
>Medical and veterinary treatment
>Biological processes for plants or animals
>Morality
• Inventorship – who is eligible to apply for a patent
• Infringement and claim interpretation

31
PATENT RECAP:
INVENTIVENESS
• Approach to determining inventiveness in UK:
1. Identify the notional ‘skilled person in the art’ and the
relevant common general knowledge of that person;
2. Identify the inventive concept of the claim, or construe it;
3. Identify what, if any, differences exist between the matter
cited as the ‘state of the art’ and the inventive concept in
the claim;
4. Viewed without any knowledge of the alleged invention, do
those differences constitute steps which would have been
obvious to the person skilled in the art, or do they require a
degree of invention?
• (Pozzoli v BDMO [2007] FSR 37)

32
TRICKY ISSUES:
EXCLUSIONS & COMPUTER PROGRAMS

33
TRICKY ISSUES:
ELI LILLY V ACTAVIS [2017]
• Para 54 “a problem of infringement is best approached by addressing two
issues, each of which is to be considered through the eyes of …the person skilled
in the relevant art. Those issues are:
• (i) does the variant infringe any of the claims as a matter of normal
interpretation; and, if not,
• (ii) does the variant nonetheless infringe because it varies from the
invention in a way or ways which is or are immaterial?
• If the answer to either issue is “yes”, there is an infringement; otherwise, there is
not. Such an approach complies with article 2 of the Protocol, as issue (ii)
squarely raises the principle of equivalents, but limits its ambit to those variants
which contain immaterial variations from the invention”
• The approaches in Catnic and Kirin-Amgen are wrong to the
extent that they conflate these issues
• The three questions in improver can be helpful in answering
the 2nd issue, but need to be reformulated.

34
TRICKY ISSUES:
ACTAVIS GUIDELINES
(1) Does the variant achieve the same
result in substantially the same way as
the invention
(2) on being told what the variant does,
would notional addressee would consider
it obvious that it achieved substantially
the same result in substantially the same
way as the invention.
Variant
infringes
Variant
does not
infringe
Yes
No
(3) Would a reader of the patent have
concluded that the patentee nonetheless
intended that strict compliance with the
literal meaning of the relevant claim(s)
was an essential requirement of the
invention?
Yes
No, it works a
different way
No
Yes

35
BREACH OF CONFIDENCE, PRIVACY
& RIGHT TO BE FORGOTTEN RECAP

36
RECAP:
HISTORY OF PRIVACY
Warren and Brandeis, The Right to Privacy (1890),
arguing for the existence in US law of ‘the right to
be let alone’

The Google Spain Case
• Google Spain SL & Google Inc. v Agencia Española de
Protección de Datos ( AEPD) Mario Costeja González
Case C- 131/12, 13 May 2014
• Original case went to the Audiencia Nacional in Spain
who then referred it to the CJEU to establish jurisdiction
and determine the question of whether a search engine
could be considered a data controller and be asked to
erase links to information.
RECAP:
THE RIGHT TO BE FORGOTTEN

38
RECAP:
BREACH OF CONFIDENCE
• Coco v Clark [1969] RPC 41

39
RECAP: BREACH OF CONFIDENCE
AND PRIVACY
• Criteria for Breech of Confidence (from Coco):
1. the information was capable of being protected
2. the defendant was under a legal obligation of
confidentiality
3. the obligation of confidence has been breached
• Defences include publication in the public interest (AG v
Guardian)
• Privacy interests can be protected under a modified form of the
doctrine:
• Focus on whether the the claimant has a reasonable
expectation of privacy (Campbell)
• Need to balance Privacy v Freedom of Expression (Mosley)

40
RECAP:
PROTECTABLE INFORMATION
• Examples of protectable information include
•Chemical formulae (Amber Size & Chemical Co v Menzel [1913] 2 Ch 239)
•Secret manufacturing processes (Herbert Morris [1916] AC 688)
•Special methods of construction (Reid and Sigrist v Moss and
Mechanism [1932] 49 RPC 61)
•The concept for a new TV programme (Fraser v Thames TV
[1983] 2 All ER 101)
•Customer lists (Faccenda Chicken v Fowler [1987] 1 Ch 117)
•Wedding photographs (Douglas v Hello! [2008] 1 AC 1)
•Marital secrets (Argyll v Argyll [1967] Ch 302)

41
RECAP:
OBLIGATION OF CONFIDENTIALITY
• The second element requires that the defendant was
under a legal obligation of confidentiality
>Can be contractual / extra-contractual ; express /
implied
>Can be implied by the circumstances in which the
information was received
• The recipient of information can be:
> In direct relationship with the claimant;
>In an indirect relationship (confider → confidant →
third person)
>Be a stranger/have no relationship to the
claimant

42
TRICKY ISSUES:
PUBLIC INTEREST DEFENCE
• Attorney-general V Guardian Newspapers Ltd (No 2)
(‘Spycatcher’); HL 13 Oct 1988:
»It is that, although the basis of the law's
protection of confidence is that there is a
public interest that confidences should be
preserved and protected by the law,
nevertheless that public interest may be
outweighed by some other countervailing
public interest which favours disclosure.
•For government secrets – is there a public interest
in showing that the material should not be
published? Why does this requirement exist?

43
TRICKY ISSUES:
EXPECTATION OF PRIVACY
• Murray v Express Newspapers
• Considerations to determine if reasonable expectation
of privacy:
>The attributes of the claimant;
>The nature of the activity in which the claimant was
engaged;
>The place at which it was happening;
>The nature and purpose of the intrusion;
>The absence of consent and whether it was known or
could be inferred;
>The effect on the claimant, and
>The circumstances in which and the purposes for which
the information came into the hands of the publisher

44
TRICKY ISSUES:
BALANCING ART 8 AND 10
• Mosley v News Group Newspapers
Ltd (No 3)
>Did the public have an
interest in knowing an
allegation involving Nazi or
concentration camp role-
play?
>How should Art 8 and Art 10
be weighed?

45
OVERLAP OF IP RIGHTS

46
TRICKY ISSUES:
OVERLAP OF IP RIGHTS

47

48
FURTHER QUESTIONS
• Adrian Aronsson-Storrier
a.m.storrier@reading.ac.uk
Room 126N, Edith Morley Building
Office hours – Contact me by email after term ends!

2020 LW3IP revision lecture slides.pdf

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