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IP Two Minute Monthly – January 2017

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Damages and IP Infringements

The CJEU has ruled that Member States can, under their national laws, provide, as an alternative to damages to compensate a rights owner for their loss, that the infringer must pay double a reasonable royalty without having to prove actual loss, and that the Enforcement Directive did not preclude that (Case C-367/15).

Music and Copyright

Following our report last month that Duran Duran were unsuccessful in trying to recover their copyright under US law due to the terms of their publishing agreement, Paul McCartney is now seeking a declaration in the US courts that he will be able to recover US copyright in The Beatles’ songs.

Unitary Patent

The UPC Agreement and Court are on track for a December 2017 launch according to the Preparatory Committee, although the UK and Germany must ratify it first.

Employee Inventions and Patents

The Court of Appeal upheld a decision not to award compensation to a Unilever employee under s.40(1) Patents Act 1977 which requires a payment to the employee inventor where their patent resulted in an outstanding benefit to the employer. Although the income received by Unilever in relation to the patents was £24.5m, the hearing office did not consider that the benefits which the patents brought could be described as outstanding when looked at in the context of the overall performance of the group.

Similarity and Trade Marks

The marks PITU and LITU were found not to be sufficiently similar to each other as the letters “P” and “L” were visually and phonetically very different (Case T-187/16).

Information from Third Parties regarding IP Infringements 

The CJEU has confirmed that rights owners can commence separate proceedings against third parties in order to obtain information regarding the distribution of infringing items, even though the original IP infringement proceedings have been completed (Case C-427/15).

Films and Copyright

A US Judge has ruled that various well-known elements from Star Trek are protectable as copyright works, so that action could be taken against a company producing a new unauthorised Star Trek film. He found that some of the characters were protected by copyright, including Klingons and Vulcans, and that well-known elements such as the shape of the USS Enterprise, the uniforms, transporters and warp drive were also protectable, if not in themselves then in combination.

Groundless Threats and Patents

In a dispute between two temporary ice-rink manufacturers, the patentee failed to establish patent infringement as their patent was invalid due to a prior disclosure, and the letters it had sent to customers of the other company amounted to groundless threats of patent infringement. The patentee’s attempt to rely on an earlier priority document failed because a priority document does not “implicitly incorporate, and therefore disclose, all the common general knowledge in the art” (Icescape v Ice-World).

“Arrow” Declarations and Patents

The Court of Appeal has confirmed that declarations (known as “Arrow declarations”) that a product, process or use was old or obvious at a particular date could be granted provided that they were not a disguised attack on the validity of a granted patent (Fujifilm v AbbVie).

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