IP Two Minute Monthly - July 2013

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Here are our summaries for last month which shouldn't take you more than two minutes to read.

ONLINE BLOCKING INJUNCTIONS AND COPYRIGHT

The High Court has granted another blocking injunction to the FAPL against the major ISPs (who consented to the order), this time regarding a website providing access to Premier League football matches. The Court found that, whilst the live stream of the football matches came from third party servers, the website in question, FirstRow, was liable for communication to the public because it aggregated the streams and provided a one-click link for users.

IMAGES AND PASSING OFF

Whilst confirming that English law does not recognise the concept of image rights, the High Court did rule that Topshop was liable in passing off when it used a photograph of the popstar Rihanna on a t-shirt without her consent. Rihanna had to prove that she had a reputation in the UK, that Topshop had made a misrepresentation which led to confusion by consumers and caused Rihanna to suffer damage. The Judge was influenced by the fact that Topshop had associated itself with Rihanna in past promotions, and by the fact that she was wearing the same clothes in the photographs which she wore in one of her videos, such that a substantial number of her fans may have assumed that the t-shirt had been authorised by the singer.

You can read a detailed summary of the trial, detailed summary of the trial and about the Judgment .

DAMAGES AND PATENTS

The Supreme Court has finally overturned a long-standing but seemingly nonsensical ruling that damages are still payable for a patent infringement under a UK Court action even if that patent has subsequently been revoked.

In the Virgin case, the Court of Appeal had required the defendant which had been found to have infringed Virgin’s patent to pay damages for that infringement even though the European Patent Office had since revoked the relevant claims in the patent due to the existence of prior art.  The position now is that the defendant would have a defence to the damages claim because the patent claims would be treated as never having existed.

In future, it is expected that UK infringement claims will be stayed pending an EPO ruling on any validity challenge to a patent.

SKY, MICROSOFT AND TRADE MARKS

BSkyB were successful in their trade mark litigation against Microsoft over the latter’s use of the name SKYDRIVE for their online file storage offering. The Judge found that the word DRIVE was descriptive, so that the dominant element of the SKYDRIVE brand was SKY, and was therefore confusingly similar to BSkyB’s SKY trade marks. Microsoft were also liable for “diluting” the BSkyB marks and for passing off – the fact that the SKYDRIVE app was preinstalled on various non-Microsoft devices made it difficult for the consumer to see any link with Microsoft. However, the Judge also made it clear that use of MICROSOFT SKYDRIVE was also a trade mark infringement.

APPLE, SAMSUNG AND DESIGNS

Samsung successfully challenged two applications for Community registered designs filed by Apple for different shapes of tablet computer (e.g. new iPad designs). The applications failed because very similar designs had already been thought up and published by Apple fans on fan sites, so that Apple’s designs were not sufficiently new. Apple’s rather optimistic argument that these should be discounted as there were too many sites for them to monitor was rejected. However, surprisingly OHIM also decided that any leak of confidential information which resulted in a new design being disclosed without the owner’s consent (Apple having argued that their designs were leaked) would only be discounted if the leak occurred within 12 months of the design application. Hopefully this ruling will be overturned on appeal.

WEBSITE CONTENT AND COPYRIGHT

Online media monitoring company, Meltwater, have settled their appeal against the judgment obtained against them in the US by The Associated Press for copyright infringement through scraping content from publishers’ websites. The parties have announced that they will be working together in the future. Our case for NLA media access involving Meltwater has been referred to the European Court of Justice.

GREEK YOGHURT AND PASSING OFF

A yoghurt made in the same manner that Greek yoghurt is made cannot be called Greek yoghurt if it is not made in Greece as that would amount to a misrepresentation to a substantial section of the relevant public who know that Greek yoghurt is made in Greece (the Fage case).

CONDITIONAL FEE AGREEMENTS AND THE PATENTS COUNTY COURT

In an interesting decision relating to the rights in poultry feeders, the High Court refused an application to transfer a patent and design infringement case to the PCC on two grounds: a) that whilst the patent issues were straight-forward, the design right issues added an extra layer of complexity; and b) the cost caps which apply in the PCC would defeat the benefit of the CFA entered into by the Claimant before the transfer request (Crocker v Giordano).

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