Welcome
Issue 10, October 2024
Since the last issue
I have discussed the following cases on patents and copyrights:
I also trained officials from the London Boroughs' Legal Alliance in intellectual property to enable them to provide business support in their districts.
After visiting Tallinn on 14 Oct 2024 I wrote about the business environment, intellectual property laws and legal system of Estonia in IP After Brexit on 25 Oct 2024. Estonia has been spectacularly successful in launching and growing new businesses and I saw signs of a similar enterprise culture in Wales at Digidol 24 on 25 Oct 2024.
Another important event that I visited on 17 Oct 2024 was the Northern Powerhouse Investment Fund Roadshow at the Royal Armories in Leeds which I discussed in NIPC Yorkshire.
The big event for November 2024 will be Wales Enterprise Day which takes place on 18 Nov 2024. The Menai Science Park will lead the celebrations with a lunchtime seminar in the boardroom and online. Further information and a link to the registration card can be obtained from Wales Enterprise Day 2024 - Diwrnod Menter Cymru 2024 of 1 Nov 2024 in NIPC Wales.
Copyrights
Works of Artistic Craftsmanship - Equisafety Ltd v Woof Wear Ltd.
This was an action by Equisafety Ltd ("Equisafety") for infringement of copyright in three high-visibility ("high vis") equestrian products. These were a waistcoat, an elasticated hat band, and a neckband for a horse some of which are shown above. The defendant, Woof Wear Ltd ("Woof Wear"), had exhibited similar goods at the Beta International Exhibition. Woof Wear admitted that if copyright subsisted in those items and if the claimant company owned such copyrights it would have infringed those rights. Consequently, the issues to be decided were whether copyright subsisted in the high-vis items and, if it did, whether Equisafety owned the copyrights.
Preliminary Hearing
At a preliminary hearing, Pat Treacy, sitting as an Enterprise Judge, ordered Equisafety to identify the products on which it relied. The company chose the waistcoat, hat band and neckband. It claimed to have designed the waistcoat in 2020 and the hat and neckband in 2019. The order recorded that Equisafety confirmed that it did not rely on any earlier versions of the products. That choice proved to be significant because the claimant could claim copyright only in amendments to those designs.
The Trial
The action came on for trial before Mr Ian Karet sitting as a deputy judge of the High Court on 18 June 2024. He handed down judgment on 25 Sept 2024. At para [61] Mr Karet dismissed the claim on the grounds that copyright could not subsist in those products as works of artistic craftsmanship and, even if it could, such copyrights would not have belonged to Equisafety.
Common Law Authorities
In reaching his decision Mr Karet considered s.1 (2) and s.4 (1) (c) of the Copyright, Designs and Patents Act 1988 ("CDPA") and paras [32] to [36] of Judge Hacon's judgment in Response Clothing Limited v The Edinburgh Woollen Mill Limited [2020] EWHC 148. In that case, Judge Hacon had referred to Mr Justice Tipping's definition of "artistic craftsmanship" in Bonz Group (Pty) Ltd v Cooke [1994] 3 N.Z.L.R. 216:
"... [F]or a work to be regarded as one of artistic craftsmanship it must be possible fairly to say that the author was both a craftsman and an artist. A craftsman is a person who makes something in a skilful way and takes justified pride in their workmanship. An artist is a person with creative ability who produces something which has aesthetic appeal."
Mr Karet noted that Judge Hacon had added at para [64] of his judgment in Response Clothing:
"I will adopt the Bonz Group summary definition of a work of artistic craftsmanship with clarifications which I believe to be consistent with the definition: (i) it is possible for an author to make a work of artistic craftsmanship using a machine, (ii) aesthetic appeal can be of a nature which causes the work to appeal to potential customers and (iii) a work is not precluded from being a work of artistic craftmanship solely because multiple copies of it are subsequently made and marketed. No binding English authority has been drawn to my attention which prevents me from construing s.4 (1) (c) in that way."
European Authorities
Mr Karet said that the question he had to decide was whether art 2 (a) of the Information Society Directive (2001/29) had an effect on copyright protection under the CDPA. He referred to the judgment of the Court of Justice of the European Union ("CJEU") in Case C-5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECR I-6569) and said :
"The Court of Justice has elaborated upon the requirement that the work be its author's own intellectual creation in a number of subsequent judgments. What is required is that the author was able to express their creative abilities in the production of the work by making free and creative choices so as to stamp the work created with their personal touch: see in particular...Case C-683/17 Cofemel—Sociedade de Vestuário SA v G-Star Raw CV [EU:C:2019:721] at [30]..."
He said that the CJEU had confirmed in Cofemel its decision in Case C-310/17 Levola Hengelo BV v Smilde Foods BV EU: C:2018:899 that there are two cumulative conditions to copyright protection. The first is that there must be subject matter that is original in the sense that it is the author's own intellectual creation. The second is that the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.
Mr Karet also referred to C-833/18 Brompton Bicycle Brompton Bicycle Ltd v Chedech/Get2Get where the CJEU held:
"[20] By its two questions, which it is appropriate to examine together, the referring court asks, in essence, whether Articles 2 to 5 of Directive 2001/29 must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result.
...
[26] It follows that a subject matter satisfying the condition of originality may be eligible for copyright protection, even if its realisation has been dictated by technical considerations, provided that its being so dictated has not prevented the author from reflecting his personality in that subject matter, as an expression of free and creative choices."
Finding
Following Biotrading and Financing Oy v Biohit Limited [1996] FSR 393 Mr Karet directed himself that he could only consider the amendments to the above-mentioned works mentioned in Ms Treacy's order and that none of those works was a work of artistic craftsmanship. Had copyright subsisted in any of those items there was no evidence that the claimant company would have acquired them.
Further Information
For a more detailed discussion of this case, see Copyright - Equisafety Ltd v Woof Wear Ltd., 31 Dec 2024, NIPC Law.
Patents
FRAND - Panasonic Holdings Corporation v Xiaomi Technology UK Ltd.
This was an appeal against Mr Justice Leech's judgment in Panasonic Holdings Corporation v Xiaomi Technology UK Ltd and others [2024] EWHC 1733 (Pat) which he handed down on 5 July 2024. His lordship had refused to grant Xiaomi Technology UK Ltd. and its associated companies a declaration that a willing licensor in the position of Panasonic would grant the Xiaomi companies a licence with immediate effect from the date of the order for a trial to determine the terms of a FRAND licence to the date of judgment in that trial.
The applicants had sought that declaration because Panasonic had launched patent infringement proceedings against them in the Unified Patent Court and the German national courts notwithstanding an undertaking that Panasonic had given to Mr Justice Meade to grant the applicants a worldwide licence to work those patents on whatever terms the English courts might find to be FRAND.
Panasonic admitted that it had brought the UPC and German proceedings to obtain injunctions that would enable it to achieve a negotiated settlement with Xiaomi rather than await the determination of the Patents Court. to achieve better terms than those determined by the Patents Court. Put bluntly, Panasonic wished to use the exclusionary power of injunctions granted by the German courts and/or the UPC to try to force Xiaomi to pay more than the English courts would order.
Mr Justice Leech refused the application because he required a high degree of assurance that the UPC and German litigation was contrary to Panasonic's commitment to grant licences on FRAND terms, Panasonic had offered not to enforce any injunctions it might obtain and he did not think that the declaration would serve any useful purpose.
Lord Justice Arnold gave Xiaomi permission to appeal noting that it was the first time that an application for such an interim declaration had been made in England. The appeal was heard by Lords Justices Moylan, Arnold and Phillips on 19 Sep 2024 and they handed down judgment in Panasonic Holdings Corporation v Xiaomi Technology UK Ltd and others [2024] EWCA Civ 1143 on 3 Oct 2024.
Lord Justice Arnold and Lord Justice Moylan allowed the appeal for the reasons set out in para [101] of Lord Justice Arnold's judgment:
"......... (1) Panasonic is in breach of its obligation of good faith under clause 6.1 of the ETSI IPR Policy by pursuing claims for injunctions in foreign courts despite having invoked the jurisdiction of the English courts to determine FRAND terms for a global licence and despite both parties having undertaken to enter into a licence on the terms determined by the Patents Court to be FRAND; (2) a willing licensor in the position of Panasonic would enter into an interim licence with Xiaomi, and FRAND terms of that licence would be those set out in the preceding paragraph; (3) making the declarations sought by Xiaomi would serve a useful purpose; and (4) the declarations should not be refused on the grounds of comity."
Lord Justice Phillips would have refused the appeal on the ground that an anti-suit injunction would have been a more appropriate remedy.
I discussed this case in more detail in FRAND - Panasonic Holdings Corporation v Xiaomi Technology UK Ltd. on 14 Oct 2024 in NIPC Law.
Practice - Bayer IP v Aspire Pharma
This was an application by Bayer Intellectual Property GmbH for an interim injunction to restrain the sale of rivaroxaban for once-daily administration from the expiry of a supplementary protection certificate for the product until after any consequentials hearing following the handing down of judgment in Aspire Pharma Ltd's claim for a declaration of non-infringement of European patent number 1 845 961 B1 for the treatment of thromboembolic disorders with rivaroxaban. Bayer sought the injunction because one of the possible outcomes of the non-infringement declaration litigation was that the patent was valid and infringed. The SPC expired on 1 April 2024 and His Honour Judge Hacon had promised judgment in the non-infringement declaration action on 9 April 2024 or shortly afterwards.
Judge Hacon reminded himself of Lord Diplock's speech in American Cyanamid Co v Ethicon Ltd [1975] AC 396:
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"(1) Whether there is a serious issue to be tried.
(2) Whether damages would be an adequate remedy to the applicant for the interim injunction in the event that no interim injunction is granted and the judgment at trial finds that the applicant is entitled to an injunction. If yes and the defendant would be in a financial position to pay, no interim injunction will be granted.
(3) If not, whether damages would be an adequate remedy to the respondent in the event that an interim injunction is granted and the judgment at trial finds that the applicant is not entitled to an injunction. If yes and the applicant would be in a financial position to pay, the interim injunction will be granted
(4) If damages would not be an adequate remedy to either side, where the balance of convenience lies, in particular the balance of likely irreparable harm to each side. (5) If the balance is equal, it is a counsel of prudence to preserve the status quo."
He also referred to the Court of Appeal's judgment in Neurim Pharmaceuticals (1991) Ltd and another v Generics (UK) Ltd and another (Rev2) [2022] EWCA Civ 370:
"(1) Where there are or will be two or more manufacturers competing for the generic market, this commonly leads to a price war between the suppliers and hence a downward spiral in the price which is apt to cause the patentee damage which is difficult to quantify even if the patent monopoly is subsequently restored by an injunction.
(2) Where the defendant is the only player in the generic market, there is no incentive for it to reduce its price much below that of the branded manufacturer. Moreover, being the first generic supplier is likely to carry a particular advantage by way of accumulating loyalty to its own supplier brand that would be lost if kept off the market in the relevant period by an injunction.
(3) If one or more generic suppliers are already on the market, irreparable damage to them may be caused by an injunction restraining their sales, being those identified by Arnold LJ in his paragraph [33].
(4) Where both sides are equally likely to suffer damage that could not be adequately compensated, specifically where the uncertainties involved in a future calculation of damages on each side are of a similar order, preservation of the status quo assumes importance."
Judge Hacon held that points (1) and (4) applied to his case but the others did not.
He summarized the issues before him at para [44] of his judgment:
"As might be expected, the parties agreed that there is a serious question to be tried. It has been tried and" judgment will be given in the first week of next term. There was no dispute that there is a potential for irreparable harm to one side or the other whether an interim injunction is granted or not. The issue between the parties concerned the balance of irreparable harm."
He reasoned as follows in para [55]::
"I doubt that either Bayer or any of the respondents would suffer a great deal of irreparable harm on the alternative hypotheses of an injunction being granted or not. Bayer's counterfactual sales absent an injunction in that short period should be fairly easy to calculate. The level of Bayer's current sales is known. To the extent that actual sales were to fall below that figure, damages would fall due. I do not say that Bayer is not at risk of any irreparable harm at all because there would be uncertainties, but they would be modest. The same applies in mirror-image to any losses the respondents may suffer in the event of an injunction. Dr Chowdhury's concerns, assuming they are valid, would only arise over a longer period than 9-10 days. If there were an injunction over that short period which is thereafter lifted, it seems to me a graph of each of the respondents' sales could be notionally moved back by 9-10 days or by whichever time that the evidence may suggest is appropriate. An area under the curve calculation – the area between the lines of notional and actual sales until they meet at steady state – would be sufficiently accurate to calculate the losses of each respondent with reasonable accuracy."
He decided to grant the injunction because the Court of Appeal had emphasized the importance of maintaining the status quo. Any other decision would change the status quo in respect of any application that there might be after judgment had been handed down. That would potentially give rise to significant irreparable harm to Bayer.
I have written about this case in Practice - Bayer IP v Aspire Pharma in NIPC Law on 18 Oct 2024.
Business Support
In The End of LEPs (8 Aug 2024 NIPC News), I noted that the government had announced in its Guidance for Local Enterprise Partnerships (LEPs) and Local and Combined Authorities: Integration of LEP functions into local democratic institutions of 4 Aug 2023 that central government funding to LEPs would cease from April 2024 and that the LEPs' functions would be transferred to local authorities.
To assist local government officials in discharging their new responsibilities, I have prepared a 90-minute introduction to IP law which I have offered to local authorities throughout England and also to Ambition North Wales. So far my offer has been accepted by the London Boroughs' Legal Alliance and I delivered a presentation to them on 1 Oct 2024.
As I pointed out at the Northern Powerhouse Investment Fund Roadshow in Leeds on 16 Oct 2024, the success of the Fund and similar initiatives in other regions will depend to a significant extent on the level of business support available for startups and other small and medium enterprises from their local authorities.
Estonia
Estonia has been very successful in establishing and growing new businesses. Examples of Estonian companies that have become household names are Skype, Bolt and Starship Technologies. In Estonia (25 Oct 2024 IP After Brexit) I have gathered information and pointed to resources that might be of use to UK entrepreneurs.
Many of Estonia's new businesses are in such activities as software development, fintech, electronics and robotics. Those activities require a highly developed digital infrastructure. In an article for Wired dated 28 Oct 2016, Matt Reynolds described Estonia as "the world's most digitally advanced society." It launched the first 5G mobile network in 2020 and offers very fast broadband to homes and businesses throughout the country. Those activities also require a highly educated workforce and perhaps another reason for Estonia's success is that it scores high marks consistently in the OECD's PISA (Programme for International Student Assessment) (see PISA 2022 results: Estonia’s education is the best in Europe Invesr Estonia.
Estonia is party to the European Patent Convention and has its own Patents Act which was enacted in 1994. It is also party to the Paris Convention, Patent Cooperation Treaty, the Patent Law Treaty and TRIPs. Estonia also protects inventions as unitiltu models under the Utilities Models Act 1994. Other intellectual property statutes to be noted are the Trade Marks Act 2002, the Industrial Design Protection Act 1997, the Layout-Designs of Integrated Circuits Protection Act 1998 and the Copyright Act 1992 which also protects rights in performances and database rights, Estonia has acceded to the Berne and Rome Conventions, the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. Geographical indications are protected by Regulation 2019/787 and Regulation 2024/1143.
The Estonian Patent Office at Tatari 39 in Tallinn keeps comprehensive databases of inventions, trade marks, industrial designs and geographical indications. It also keeps a list of patent attorneys. A service that sounds as though it would be very useful to startup founders and other small business owners is pro bono advice on patent and utility model applications by patent examiners between 15:00 and 17:00 on Tuesdays (see "Free Consultations" on the Patent Office website.
Precedents for establishing, investing in and advising new businesses are available from the Startup Estonia page. These include agreements for assigning and licensing intellectual property rights which I have reviewed and believe to be sound. Non-residents of Estonia who want to incorporate and run a company in that country remotely can apply for a status called e-residency, Successful applicants receive a digital identity which enables them to access many government and private services that would otherwise be reserved for Estonian nationals and permanent residents.
Estonia is a civil law country. The court system is divided into civil and administrative law branches. Civil courts determine commercial disputes in accordance with The Estonian Commercial Code. The County Court is the court of first instance for all matters including intellectual property disputes. According to Taylor/Wessing's Patent Map Estonia does not have a specialist patents court though, as I mention below, there is at least one County Court judge with patents expertise. Typical costs of a patent trial where infringement and validity are an issue are €25,000 to €45,000, Appeal lies to the Circuit Courts and ultimately the Supreme Court which is also a court of cassation.
Estonia has ratified the Unified Patent Court Agreement and has adapted the unitary patent (see the UPC Member States Map on the Unified Patent Court website). Estonia falls within the Nordic-Baltic Regional Division of the Court of First Instance which also includes Sweden, Latvia and Lithuania. Kai Härmand who is also a member of the Estonian judiciary sits in that Regional Division. One of the hearing centres of the Nordic-Baltic Regional Division is in Tallinn at Lubja 4.
Wales
Digidol 24
In Tallinn, I remarked that Estonia reminded me of Wales. Estonia has a highly developed digital infrastructure that has launched businesses like Skype, Bolt, and Starship Technologies. Having spent Wednesday, 23 Oct 2024 at Digidol 24 - Wales's Digital Conference, Wales reminded me very much of Estonia. An impression was strengthened by the news that Llanbrynmair in Powys was the first telephone exchange area in the UK where every resident had access to ultrafast broadband (see Mari Grug 19 Oct 2024 BBC website).
Digidol 24 was the biggest event that I had ever attended at the Menai Science Park and one of the best. Plenary sessions were held in the science park's atrium where the Tanio is located. There were breakout sessions in room G69 and the Ffiws, Boardroom and Collaboration rooms. I attended the plenary sessions but visited the Ffiws room for lunch and the exhibition stands in G69.
One of the most interesting presentations of the day was an introduction to Glu by Mike Hawkes of CapVentis. Dr Hawkes had previously spoken at Wales Enterprise Day in 2023. Glu appears to be a comprehensive suite of business applications built around a single-core Glu Foundation. The "Our Glu Journey" segment at the end of the Glu page on the CapVentis website provides further information. If my understanding is correct, this technology could be of immense commercial value.
Another fascinating presentation was delivered by Paul Kinlan of Google. He discussed the history of the development of the Chrome browser and operating system and Google's plans for its future development.
After lunch, Llion Jones delivered an online presentation on artificial intelligence from Tokyo. He is one of the authors of Attention is All You Need which proposed a simple network architecture called "the Transformer" based solely on attention mechanisms. According to the Eventbrite card, the Transformer became the basis of ChatGPT. Mr Jones is now working for Sakana AI which describes itself on https://sakana.ai/seed-round/ as a new AI research company based in Tokyo. It aims to develop transformative AI that will lead to the next paradigm. The main focus of its research and development of new kinds of foundation models will be based on nature-inspired intelligence. The company's name is Sakana (さかな) which means "fish" in Japanese. It is meant to invoke the idea of a school of fish coming together and forming a coherent entity from simple rules.
A highlight of the day was an unscheduled session of short presentations by three of M-SParc's tenants in the atrium. One of the speakers was Tomos Owen who co-founded Pelly. That is an app that helps football clubs make recruitment and other decisions. This is another product that has been developed in the science park and has considerable commercial potential.
The last of the plenary speakers was Susi Marston who discussed the digital infrastructure that is soon to be rolled out in Wales. She promised very similar services to those that are available in Estonia including tariff-free voice calls and very fast broadband. BT had a stand in the atrium which I visited during one of the breaks. There I learned about the 5G mobile network that the company is installing.
The event was hosted by Ameer Davies-Ranam. Ameer (or Sgrameer as he is known on YouTube) kept me amused and actually taught me a bit of Welsh during lockdown. I loved his pub, burger, Chinese, Christmas dinner, curry and other eatery reviews. He is such a good sport that he even tried Welsh folk dancing which includes a leap known as "the grasshopper".
I have written more about the event in Digidol 24 (26 Oct 2024 NIPC Wales).
Contact
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Thanks for sharing Jane
Senior Consultant Barrister
1moThanks, Jane. All looks very interesting. Best wishes, Alex.
Barrister
1moThanks for re-sharing my post, Noreen.
Diddorol iawn Jane.