Archive for the ‘Litigation’ Category

Copyright litigation update: musician succeeds in copyright claim dating back to the 60’s

Wednesday August 12th 2009, by Piers Strickland

The House of Lords has just handed down its judgment in the case of Fisher v Brooker & Others.  This case concerned whether Matthew Fisher was entitled to claim ownership to any of the copyright in the iconic song “A Whiter Shade of Pale“.

In the first instance proceedings, the Honourable Mr Justice Blackburne made the following three declarations:

  1. Mr Fisher was the co-author of the song.
  2. Mr Fisher was a joint owner of the musical copyright in the song, his share being assessed at 40%.
  3. The defendants’ licence to exploit the Work was revoked on 31 May 2005, the date when the action was started, 38 years after the initial release of the record.

This was, in effect, a strong victory for the claimant, despite the fact that the song dated back to the 1960s.

The case was appealed to the Court of Appeal, who upheld the decision that Fisher was a joint owner of the copyright in the song.  However, the Court of Appeal upheld the defendants’ appeal that given Fisher’s “excessive and inexcusable delay” before bringing a claim, i.e. from the 1960’s to 2005, it was unjust that Fisher should succeed in his claims to a joint interest in the song (i.e. whether he was entitled to the commercial spoils deriving from the song) or to have the implied licence to the respondents revoked.

The case was further appealed to the House of Lords (the highest court in the land for such cases of copyright infringement), which held that the Court of Appeal was wrong to hold that Fisher could on the one hand own the copyright in question, but then be barred from any chance of obtaining an injunction for copyright infringement.  The House of Lords noted that there was nothing under English law which set a time deadline for laying claim to ownership of copyright.  (The position in Scotland is apparently potentially different.) The House of Lords also noted the crucial distinction which exists between “the exercise of rights (i.e. exploiting copyright) and the obtaining of discretionary remedies (i.e. getting an injunction)”.

Accordingly, Fisher is now at liberty to enjoy his share deriving from the copyrights in the song and also has the theoretical right to obtain an injunction.  However, this theoretical right to an injunction would have to be determined by the trial judge in a claim for copyright infringement and be decided on the merits.  Although it was Fisher’s position that the proceedings were not about getting an injunction, such a claim was part of the originating copyright infringement proceedings.  In any event, it may well be that any further attempt to enforce an injunction against the defendants might be refused on equitable grounds relating to delay etc, but the point is that Fisher is not prevented from trying.

Hopefully for all parties, further proceedings will not be needed after this judgment from the House of Lords.

COMMENT: This case is bad news for the music industry.  One of main issues was on the subject of delay and related legal concepts, such as laches and estoppel.  The court rejected a defence on these grounds in respect of a claim to ownership of copyright.  This claim might therefore result in other aged musicians thinking about the possibility of launching their own copyright claims on the basis that they have not got their fair share of the historical spoils from a song.

Each case will have to be assessed on its merits.  But the case of Fisher v Brooker does offer considerable encouragement for potential claimants for musical copyright infringement (and for their lawyers).  Music companies are bound to be less impressed and may be talking to their insurers about this increased risk of a claim in respect of poorly drafted historic music agreements.

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New proposals to cut the cost of intellectual property litigation in the UK

Tuesday August 4th 2009, by Piers Strickland

The cost of running intellectual property ligation (i.e. litigation concerning patents, trade marks, designs, copyright etc) in the UK can often run into millions.  As a result, many SMEs are effectively barred from engaging in intellectual property litigation.  This is a serious issue as it constitutes a barrier to SMEs having access to justice.

A new set of proposals by some of the leading individuals involved in intellectual property law, the Intellectual Property Court Users’ Committee, has set out to try and reduce this injustice and produced a report.

The report points out that the (London) Patents County Court has failed in one of its key aims: to offer a more cost-effective alternative to litigating intellectual property rights in England and Wales, as opposed to the High Court in London.  There are several proposals made by the Intellectual Property Court Users’ Committee, but one of the most significant is the proposal to limit costs recovery from the losing party from £25,000-£50,000 for intellectual property litigation.

If the government acts upon the proposals of the Intellectual Property Court Users’ Committee and make such proposals legally binding in terms of the Civil Procedure Rules, then this might go a significant way towards making legal proceedings in the UK more affordable, in the way in which other countries have already provided for.

As such, the proposals have the support of Strickland LLP, which is committed to providing IP litigation services to range of companies, from SMEs through the large blue-chip companies.

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Important ECJ case for copyright disputes and copyright litigation

Wednesday July 29th 2009, by Piers Strickland

SUMMARY: ECJ holds that even 11 word long extracts from newspapers can amount to acts of copyright infringement if such reproductions are “the expression of the intellectual creation of their author”.

In a the recent case of Infopaq International A/S v Danske Dagblades Forening, Case C‑5/08, 16 July 2009, the ECJ considered whether reproduction of extracts from newspaper articles infringed copyright.

Facts

Infopaq International A/S (“Infopaq”) operated a business which collected summaries of selected articles from Danish daily newspapers.

Danske Dagblades Forening (“DDF”), a professional association of Danish daily newspaper publishers, became aware in 2005 that Infopaq was scanning newspaper articles for commercial purposes without authorisation from the relevant rights-holders. Taking the view that such consent was necessary, DDF complained to Infopaq about this procedure.

Infopaq denied that consent was required, and brought an action against DDF before the Østre Landsret (Eastern Regional Court), claiming that DDF should be ordered to acknowledge that Infopaq was entitled in Denmark to apply its data capture procedure without DDF’s or its members’ consent. The Østre Landsret dismissed that action, so Infopaq then appealed to the Højesteret (the Danish Supreme Court).

The Højesteret stayed the proceedings and asked the ECJ for a preliminary ruling on:

•    Whether the concept of ‘reproduction in part’ within the meaning of the Copyright Directive is to be interpreted as meaning that it encompasses the storing and subsequent printing out on paper of a text extract consisting of 11 words;

•    Whether acts of reproduction occurring during a data capture process, such as that at issue in the main proceedings, satisfy the conditions laid down in Article 5(1) of Copyright Directive and, therefore, whether that process may be carried out without the consent of the relevant rightholders, since it is used to draw up summaries of newspaper articles and consists of scanning those articles in their entirety to produce a digital file, storing an extract of 11 words and then printing out that extract.

The Law

Article 2(a) of the Copyright Directive states that:

“Member States shall provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part:

(a) for authors, of their works”

Article 5(1) of the Copyright Directive provides that:

“Temporary acts of reproduction referred to in Article 2, which are transient or incidental and an integral and essential part of a technological process and whose sole purpose is to enable:

(a) a transmission in a network between third parties by an intermediary, or

(b) a lawful use

of a work or other subject-matter to be made, and which have no independent economic significance, are exempted from the reproduction right provided for in Article 2.”

The exceptions and limitations provided for in Article 5(1) can only be applied in certain special cases which do not conflict with normal exploitation of the work or other subject-matter and do not unreasonably prejudice the legitimate interests of the right-holder (Article 5(5), Copyright Directive).

Decision

The ECJ held that Infopaq’s data capture process did come within the concept of reproduction as set out in Article 2 of the Copyright Directive, if the elements reproduced were the “expression of the intellectual creation of their author”.

The ECJ also ruled that the act of printing out an extract of 11 words, during such a data capture process, was not transient in nature as required by Article 5(1) of the Copyright Directive. Therefore, that process could not be carried out without the relevant right-holders’ consent.

Comment

The battleground in copyright disputes and in copyright litigation will be over the question of whether the reproduction in question will constitute an “expression of the intellectual creation of their author”.   It has been left for the national courts to decide upon this issue.

In the courts of England and Wales, copyright infringement matters have been recently decided by assessing whether a “substantial part” of the copyright work has been reproduced.  The substantial part test is part qualitative and part quantitative.

The new test introduced by the ECJ seems to be different.  It doesn’t seem to place the reproduced text in its originating context, but instead asks whether this text alone is the expression of the intellectual creation of their author.  This will be difficult for the national court to decide during copyright litigation proceedings and will provide hours of fun for barristers in court (and thus hours of frustration for clients…).

The ECJ also gave some useful guidance about Article 5(1) of the Copyright Directive.  In particular, in respect of what amounts to a “transient” act for the purposes of that provision. The ECJ made clear that, amongst other things, in order to fall under this condition the process had to be automated so that the copy created was deleted automatically, without human intervention.  Again, the ECJ left it for the national courts to decide whether such acts of reproduction were transient given this guidance.

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Trade mark litigation – the importance of instructing a specialist trade mark litigation lawyer

Wednesday July 29th 2009, by Piers Strickland

When I am acting for a client and the other side has instructed a lawyer who does not understand trade mark law or is handling the dispute themselves in-house with no specialist trade mark law experience, then, in tennis terms, I always feel it is 40-0 to my client, on serve.

Trade mark litigation is not an area for a non-specialist, as trade mark law is a specialist area requiring a broad experience of handling a range of trade mark disputes through the courts.

Set out below are some of the traps for the inexperienced lawyer dabbling in trade mark disputes / litigation:

1.    Beware a threats action. Section 21 of the Trade Marks Act 1994 gives the right to any person aggrieved by a groundless / unjustified threat of trade mark infringement.  Therefore, if you send out an unjustified threat of trade mark infringement (such as by way of a cease and desist letter / letter before action), then you, the trade mark owner, may find yourself as the defendant in a trade mark litigation action. Not the best way to start a trade mark enforcement programme…

2.    Think about other intellectual property rights. Intellectual property law encompasses a myriad of different intellectual property rights.  You want to make sure that you are enforcing the correct intellectual property rights.  Think about and take specialist advice on unregistered trade mark law (passing off), copyright, design rights, confidential information, patents etc.

3.    Consider building up your registered trade marks (and other intellectual property rights) portfolio before writing to the other side in a trade mark dispute.  It may often be better to get your house in order before firing off a letter alleging trade mark infringement.

4.   Consider the position in other jurisdictions. Even if you have a strong case for trade mark infringement in the UK, do you have operations in other countries, or an intention to expand internationally?  How will a trade mark dispute in the UK affect the trade mark position internationally?  What is your intellectual property / trade mark position outside the UK?  For example, could the other side cause you problems in the future outside the UK in respect of intellectual property infringements?

5.    Consider how you are going to pay for trade mark infringement / litigation proceedings if needs be. (Strickland  LLP can help here as our fees are much more competitive than our competitors at BigLaw).

6.    Make sure you get the first letter to the other side right. This is important, not only for creating the right impression on the other side, but also to create the right impression on the ultimate audience, the court.  Poor letters before action for trade mark infringement and other intellectual property infringement matters can have costs consequences later on in the litigation.

7.    Think laterally about the settlement agreement. If you reach a settlement with the other side, i.e. you avoid having to go through a round of litigation and attend court hearings, or at least you bring the litigation to an early end, then make sure the settlement agreement is sufficient for your needs, whether you are the claimant or the defendant.  One of the most annoying situations for a client is to spend a lot of money on an intellectual property dispute / piece of intellectual property litigation, only then not to fully exploit their bargaining position by virtue of poor drafting in the final version of the settlement agreement.

The above just gives a flavour of the inherent complexities in trade mark litigation and other forms of intellectual property litigation.

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