IPso Jure

Diversion ahead!

petergroves — Fri, 23 Apr 2010 12:27:18 +0000

Using WordPress has not suited me, for various reasons, and I am now posting exclusively on the original IPso Jure blog, on Blooger. Please go to www.ipsojure.co.uk. If I can work out how to put an automatic diversion in place, I will!

Regulation 19 defence for information society service providers

petergroves — Mon, 12 Apr 2010 12:09:47 +0000

I spent a lot of time at the weekend moving books around, having acquired a new bookcase. It now houses our collection of political biographies (plus my treasured but probably valueless autographed copy of The Middle Way), and it brought home to me how much politics has changed since I was involved in it. I don’t think it was necessarily gentler, but the media though which outrageous statements could be made immediately available to the whole world didn’t exist – so perhaps it seemed more civilised.

Then I read Kaschke v Gray & Hilton [2010] EWHC 690 (QB) (29 March 2010) and it confirms my impression. The facts don’t need setting out here. Suffice to say that G allegedly posted defamatory statements about K on a blog called Labourhome.com, controlled and operated by H. H applied to have the claim struck out, on the grounds that he had good defences under section 1 of the Defamation Act (not the author, editor or publisher) and Regulation 19 of the Electronic Commerce (EC Directive) Regulations 2002 (S.I. 2002 No 2013) (“mere conduit, caching and hosting”), lost before the Master, was refused permission to appeal, appealed against that to Eady J who allowed it, and then ended up appealing the Reg 19 (but not the s1) defence to the Honorable Mr Justice Stadlen.

H contended that all he did was make available the service in which others could post. It was not proactively moderated, or even closely monitored although as you’d expect he would (he said) consider postings about which complaints were made and take appropriate action. (The claimant’s complaint about the posting in question was sent by post to the wrong address rather than to the email address provided on the blog, which wasn’t a great start.)
However, it seems that the website did have a system – initiated, the master said, by H – under which entries on teh site were “recommended”: he had the power to adjust the scopre to give entries that status. He “promosted” posts – making them more prominent than they otherwise would be. He checked spelling and grammar when he did this, too. And of course he would delete material where necessary, as well as blocking spam accounts from posting. The s1 defence was not the stuff of summary judment: there was an issue to be tried. As for reg 19, the master referred to the judgment of Eady J (him again!) in Bunt v Tilley [2006] EWHC 407:

8. The high point of the claimant’s case in this respect is to rely upon the fact that the corporate Defendants have provided a route as intermediaries, whereby third parties have access to the internet and have been able to pass an electronic communication from one computer to another resulting in a posting to the Usernet message board. The Usernet service is hosted by others who are not parties to these proceedings, such as Google. It is not accepted that the relevant postings necessarily took place via the relevant ISP services but that would be a matter for the claimant to establish at trial. For the moment, that assumption should be made in his favour.

9. When considering the internet, it is so often necessary to resort to analogies which, in the nature of things, are unlikely to be complete. That is because the internet is a new phenomenon. Nevertheless an analogy has been drawn in this case with the postal services. That is to say, ISP do not participate in the process of publication as such, but merely act as facilitators in a similar way to the postal services. They provide a means of transmitting communication without in any way participating in that process.

Again, there were questions to be tried about the extent of H’s control over the service. Summary judgment was not appropriate.
The Master went on (just in case) to consider whether H could be said not to have actual knowledge of unlawful activity or information and not to be aware of facts and circumstances from which it would have been apparent
to him that the publication was unlawful. Those words “would have been” indicate of a test of observation by a reasonable person, having regard to all the circumstances. This was something else that was not suitable for summary determination, in teh Master’s view: the judge in the appeal did not need to go there.
There was also a triable issue about whether H had acted expeditiously in taking down the offending material. Although he had acted promptly when he received K’s email with a copy of her lawyers’ letter to him, originally sent in June but to the wrong address. He might have had the requisite knowledge or awareness before then. The judge in the appeal did not have to decide on this, as he was already satisfied that the claim should not be struck out.
An interesting judgment casting light on this important area, even though it is only on a summary application. An indication of how interesting is the fact that the judgment on these points runs to 37 pages. How long judgments are growing: just for fun, I compared it with Donoghue v Stephenson, whch runs to 25 – four lengthy speeches, and a short one from Lord Tomlin.

Liability for defamation introduced by search engine

petergroves — Tue, 06 Apr 2010 09:12:50 +0000

Search engines collect information about stories appearing all over the web, and present them to the searcher with no real context. What if the search engine results present snippets of information in a way that implies something defamatory? This was what happened in Budu v The British Broadcasting Corporation [2010] EWHC 616 (QB) (23 March 2010), where the complaint was firstly that the BBC had published items on its news website and secondly that snippets appearing in a Google search were also defamatory.
To deal with the first problem, the BBC attached what are known as Loutchansky notices to the articles (see Loutchansky v Times Newspapers [2001] EWCA Civ 1805). These state (they are, of course, still there to see) that Mr Budu denies the allegations in the first story, and that the article is subject to legal proceedings. Anyone searching on the claimant’s name would not find the first, allegedly defamatory, article: however, they would find the follow-up ones in which the denial is reported, and could follow a link back to the original story in which his name is not mentioned. The notice serves to put the BBC in the clear, and anyway taking the claimant’s “trenchant and detailed factual rebuttal”, as reported by the BBC, into account, the judge (Mrs Justice Sharpe) found in favour if the BBC.
She also struck out the claims relating to the republication on Google. The principle that search engines themselves are not liable was established in Metropolitan International Schools Ltd v Designtechnica Corporation & Ors [2009] EWHC 1765 (QB) (a judgment of Mr Justice Eady), and Mrs Justice Sharpe saw no reason for the BBC to bear any liability for the republication: “It would not be appropriate or just in my view to make the publisher of the original webpage responsible in law for a snippet which makes a defamatory allegation (for example, because it detaches certain words from their context) not made in the original webpage itself,” she said.

Oil drilling patent invalid (old news!)

petergroves — Tue, 30 Mar 2010 08:40:39 +0000

Red Spider Technology v Omega Completions Technology [2010] EWHC 59 (Pat) is a patent case before Mr Justice Mann dating from 21 January 2010 but only just on BAILII. It’s an infringement claim, plus a challenge to validity on grounds of insufficiency, lack of novelty and obviousness, with amendment and priority points too. There is also a claim of design right infringement. 47 pages in the printable RTF version, which is a bit too much to assimilate this early in the morning, so I will post the bare bones and add more if appropriate when I have had a chance to study the judgment. I think it might teach me more about drilling for oil than it does about patent law …
It does say that all the claims failed, and the counterclaim succeeded so the patent was revoked. Another case to add to the balance that shows whether the courts are ‘anti-patent’ or not. But to class a case as ‘anti-patent’ does strike me as shortsighted – just because a patent is revoked doesn’t mean the judge (or the courts in general) is against patents as a whole: more patents – more IP of any description – is not necessarily an unalloyed good thing. Although sometimes it seems that quantity, not quality, matters most.

When will they ever learn?

petergroves — Tue, 30 Mar 2010 08:01:24 +0000

Two items on Radio 4 news this moring, both slightly off-piste for an IP blawg but not too far … RBS fined £28.6m for breaching competition law by exchanging information with Barclays about loan rates to large professional borrowers (story here on the BBC website), and a journalist censured by the PCC for what he wrote in a blog – establishing that blogs operated by those subject to the PCC have to maintain the same standards as their printed editions (story here).
The competition law breaches date back to late 2007 and early 2008, so predate the nadir of the banking industry and (more importantly) the nationalisation of RBS. It still raises many questions about conduct and corporate governenance there – how could any competent executive imagine this conduct was permissible, or even that they might get away with it? Whacking the nationalised bank with a penalty like that also looks a bit questionable, though it doesn’t represent many bonuses …
From a more objective legal perspective, it’s noteworthy that RBS co-operated with the investigation and secured a £5m reduction, and that Barclays avoided a penalty by blowing the whistle on the the illegal practice.

Which gives me an opportunity to plug a client who makes the perfect gift for a banker who finds a competition law problem to report.

First design case in General Court: ‘overall impression’ and ‘informed user’

petergroves — Tue, 30 Mar 2010 07:27:06 +0000

Case T-9/07, Grupo Promer Mon Graphic SA v Office for Harmonisation in the Internal Market, PepsiCo Inc is a little bit of history, not very new (dating from 18 March) but still important – especially for a design law enthusiast like me. And, being in the process of bringing my designs lecture notes up to date for a CLT course next month, I need to do some work on it – and posting a note here can form part of that exercise.
The case, as cases in this area so often do, involved a design for an article of astonishing banality. Not an exhaust pipe, pig fender or slurry separator, but a ‘metal rapper’, ‘tazo’ (the Spanish word, apparently) or ‘pog’, a small disc used for promotional purposes (like the cards I used to collect when a child, though rather less informative: I learnt more from the ‘flags of the world’ cards that came with my chewing gum than I learnt at school during the same period). David Stone, writing in the Class 99 blog, identifies no fewer than 10 important points in the judgment: interested though I am in linguistics, and despite my sentimental fascination with Romania, I am not going to spend time considering where the Romanian (and French) language versions of the regulation differ from others.
The two points that strike me as most important are, first, the importance of the indication of product for the application of the overall impression test, and second, the identity of that elusive individual, the informed user.
When registering a design, an indication of the product is needed – but does not limit the scope of the protection given by the registration to that product. The Court took that view that the indication of product is something to be taken into account – but in the present case, where the articles to which the design was actually applied form a particular category, it is proper to look at that narrower category. Although the registration mentioned ‘promotional items for games’ the Court (like the Board of Appeal) focused on pogs, rappers or tazos. This had a profound effect on the amount of design freedom enjoyed by the designer, and therefore on the way the overall impression test would work when considering whether there was a conflict. Design freedom being much more limited than it would have been if the wider category were referred to, the greater the distance from the state of the art needed in order to make a different overall impression.
On whom does this impression have to be made? This is the informed user in Community design law – neither amanufacturer nor a seller, the court held, to no great surprise. The informed user is particularly observant and has some awareness of the prior art, as the case law (includng the Court of Appeal’s judgment in Proctor & Gamble v Reckitt Benckiser) suggests. In the present case, the product was an intermediate product – it advertised something else. Was the informed user the 5 to 10 year old end user or the intermediate trade user, the marketing executive using the intermediate product to market that other product? An interesting and important question – unfortunately, because it made no difference in this case, the court only had to note that it could be one or the other. At least we know it isn’t the manufacturer or supplier.

When ‘search engines’ can’t hide

petergroves — Tue, 30 Mar 2010 06:47:03 +0000

Hard on the heels of the AdWords case, Mr Justice Arnold has decided a rather different case where the service provider couldn’t escape liability for copyright infringements. Twentieth Century Fox Film Corporation & Anor v Newzbin Ltd [2010] EWHC 608 (Ch) (29 March 2010), as the title tells you, concerned films, although other types of copyright work (or ‘content’ as we must learn to call them) were also mentioned. The defendant operated an online indexing facility, in which volunteer editors collected and collated information about media files available online – and who the defendants encouraged to concentrate on films, the most popular type of file among the users of the premium service (30p per week). Because it knew about the infringements that were taking place, and because of its editorial involvement which facilitated the infringements (including the way the site was strutred to guide premium members to the infringing copies and providing the means to download them), the defendant was authorising the infringements. I wonder whether the members of the House of Lords who decided, back in the mid-80s when they seemed intent on keeping intellectual property law in its box, that Amstrad’s twin-deck, high-speed tape recorder did not involve an ‘authorisation’, would agree?
The difference is that reasonable members of the service (700,000 of them) would have believed that the defendants had the authority to grant permission to users to make copies. It had ‘sanctioned, approved and countenanced the copying of the films’, and moreover it had ‘procured and engaged in a common design with its premium members to infringe the copyrights’. It was not just a passive participant in the process, which distinguishes the case (if it were necessary to do so) from the AdWords case.
The site displayed plenty of notices warning users not to infringe copyright: the judge dismissed these, in a well-known expression which I will nevertheless file away for future use in this context, as ‘window dressing’.
Out-Law, as always, has the story and the report is well worth reading.

Economic duress

petergroves — Mon, 29 Mar 2010 07:52:33 +0000

A little off-piste for an IP blawg, perhaps, but Kolmar Group v Traxpo Enterprises [2010] EWHC 113 (Comm), a judgment of 1 February this year by Mr Justice Christopher Clarke, is noteworthy. The defendants, having agreed a contract price, tried to bump it up when the claimants were in no position to resist – with an expensive ship hanging around in the port and a major customer anxious to get its hands on some methanol (which, given that the Chemistry Department at Oxford University tells me it is ‘[T]oxic by inhalation, ingestion or skin absorption’ is probaly not the best turn of phrase to use). So they forked out and then claimed restitution, which the court awarded to them.

That’s an interesting point of law to note (though hardly a novel one), and of course it’s not limited to shipping cases. It’s also potentially an attractive plot device for a work of fiction …

Deja vu all over again

petergroves — Wed, 24 Mar 2010 09:07:47 +0000

In my regular perusal of the blawgs, especially the IP ones, I came across a rather heated discussion on Dennis Crouch’s excellent Patently-O on the use of design patents (the US equivelant, roughly, of our registered designs) to protect designs for car parts. It’s hard to believe that the Americans are only now tearing each other apart over this as we did in the 1980s …
Each to their own, and the US law in this area is sufficiently different from ours as to make comparisons difficult. But I hope they don’t make the same mistakes we made, pruning the duration of (unregistered) protection so there’s hardly anything left, carving out exceptions to protection that are almost as wide as the protection was to start with, and capping it all off with compulsory licensing and licensing of right provisions. I always thought that the vehicle manufacturers lost the battle by overstating their case. And it wasn’t a battle that should have been fought out in the intellectual property arena anyway: it raised important product liability and safety issues which should have been addressed as such.
I believe that US law on dealer protection has a great deal to teach us, so perhaps it’s only right that we should offer them the benefit of our experience in dealing with design protection for parts.

Trade mark oppositions in Italy

petergroves — Wed, 24 Mar 2010 09:06:23 +0000

A newsletter from my friend Avv. Luca Giove tells me that Italy has put in place new legislation to permit opposition proceedings to be brought. Until now, the only course available to a trade mark owner was to apply to nullify the trade mark after registration.
Nullity actions in the Italian courts will still be the only way to deal with conflicts with unregistered trade marks and dilution or unfair advantage. Oppposition proceedings will, where they are available, be much quicker than nullity proceedings – a mximum of 24 months after the application is filed. (Does that mean the application for registration, or the application that kicksoff the opposition proceedings?)
The problem is that until the terms and the manner of payment of the opposition fee are set out by Decree, you can’t actually file an opposition. But at least it’s a step in the right direction.