Intellecual Property Law September 2005

Welcome to a slightly different format of Legal Writes. In this issue, as well as dealing with certain legal topics, I am taking the opportunity of explaining what the department does. Many of you will be familiar with Colin Hoffman’s work in licensing and in particular in the medical and pharma fields, and Damien Bailey’s work in design and copyright litigation. I have joined the practice to expand the contentious Intellectual Property side of the practice and develop certain other areas of work which are embraced within the broad framework of Intellectual Property. In other newsletters we will introduce you to other members of the team. At the end of the article are some of my reported cases over the years and which give an indication in themselves of the broad range of activity. Perhaps the most important development the group will be undertaking is expanding its advice on media and privacy issues and which embrace where appropriate protecting reputations by the laws of defamation and malicious falsehood. In this issue I am concentrating on two areas which are of constant and hot concern to many businesses those of privacy and image rights and trade mark and branding issues.

What is Intellectual Property?

Many businesses have intellectual property which they have failed to recognise or insufficiently protect. One of the reasons for that is that it falls across so many different disciplines and areas of law. The table on the left illustrates this very efficiently. Accordingly, the department will explain its functions by trying to relate these

Trade Marks and Brands – Is there a difference?

This is a classic lawyer’s question because it admits of the answer yes and no! A trade mark is a badge of origin or sign which identifies goods or services as originating from a particular source. Brands are merely an expansion of that name to additional goods and services. However, one is conscious that the development of brands has become an enormous international business. There is, therefore, in my view now a clear distinction between a trade mark in its original sense and brands which spin out often of the original name and whether registered or unregistered into something which is greater than its original part.

Take the example of a football club. Its original goods or services is the playing of football. It is entitled to protect the name of the club as a trade mark. But, increasingly, that trade mark is rolled out as a brand across a whole range of non-related merchandise and products which rely on the original provision of the company’s activities, in this case football to endorse or sell a whole range of other goods which have no connection with football, but which nonetheless rely upon the original name. Obvious examples are clothing, head gear, footwear and so forth.

In addition, the star players of a football club become an image or brand in their own right. The article opposite explores some of the issues which relate to those rights. One of the key areas for businesses is to consider how far they can exploit a name which is successful in one area into non-related areas. In other words, how far can a trade mark be converted into a brand, i.e. something which is capable of selling a product or merchandise beyond the original scope of the business. How far does that need to be supported by licensing, franchising and other outsourcing so as to enable a
business which is not in that area of manufacture or provision of services to enjoy the benefit of the acquired goodwill?

Privacy and Image Rights

Historically, English law was slow and reluctant to have any concept of privacy as in many areas there was a conflict between the right of free expression, for example, of newspapers to criticise those who were in the public eye; and the rights of the individual to privacy. The IP group will help identify and deal with these problems, not just within the traditional areas of libel and slander which is the protection of reputation against untruths, but also the use of images and rights in a way which has not been endorsed or allowed by the owner.

Two leading cases in this area have expanded the scope of where intellectual property lawyers are able to assist. The first which is well known has been the case of Douglas –v- Hello Magazine which has been tried both in the High Court and in the Court of Appeal. Although ultimately the amount of compensation involved was small, and the costs of achieving the result very high, the Douglas –v- Hello case established the important principle that privacy could be protected and contractual arrangements made safeguarded by the application of the law. Thus, although the Douglas’ sold photographs to Hello Magazine it was able to restrain their use by OK Magazine. This provides a rather strange paradox, one invites guests to ones wedding, one has photographs of the wedding published for the whole world to see but it is still an invasion of privacy for someone not authorised to take photographs to publish them without consent and (particularly) for their commercial advantage.

Closely aligned to this new right of privacy is the right of individuals to protect their images for their own commercial advantage. A leading case involved Eddie Irving (a well known racing driver) –v- Talksport. They used his image without permission and he was able to successfully sue because as they used his image in a way he might have done they were not entitled to do so without a contractual arrangement. This entitled him to compensation for use. This is of supreme importance to all sports personalities.

However, when is image use not image use? The answer to that arose in a problem which the department recently advised on, involving a well known footballer whose image was used as part of a compilation. The body in question was preparing notes on footballers and other sportsmen for access over the internet, and certain celebrities were paid for the use of their rights and had an expanded item about them.

Separately, the provider had done its own research and made up notes with small photographs on literally hundreds of sports personalities. In these circumstances, our view was that those rights were not protected under Irving –v- Talksport because they were not an abuse of image rights. On the contrary a conflicting principle arose, that the person who had made the compilation was itself entitled to protection. The leading case on that being Ladbroke –v- William Hill, a House of Lords case dating back to 1984.

Some of my reported cases.

In the 1980’s

House of Spring Gardens –v- Waite
English High Court and Court of Appeal, Irish High Court and Irish Supreme Court

This series of cases was reported extensively both in England and the Republic of Ireland between 1982 and 1987 and involved breach of copyright and misuse of confidential information arising out of a contract for the supply of bullet proof vests to Libya. It made extensive use of the search and cease jurisdiction and established it for the first time in Ireland, Jersey, Guernsey and the Isle of Man.

Hazel Grove Music –v- Elster
English High Court

On search and seize order
Granby Marketing –v- Interlego
English High Court

Involved below the line advertising.

In the 1990’s

Lancashire Fires –v- Lyons –English High Court and Court of Appeal

This concerned the misuse of confidential information by an employee, and protection of secret processes.

Russell Williams Ltd –v- Designers Guild
English Court of Appeal and House of Lords

This case involved alleged infringement of copyright in certain textile designs. In the Court of Appeal the trial judge’s decision was overturned and the copying allegations were dismissed. In the House of Lords the trial judge’s decision was restored but on the grounds that the Court of Appeal should not have interfered with the trial judge’s discretion!

Texas Ironworks In’c Patent (reported in 2000)
Court of Appeal

Concerned a patent relating to an oil well liner and the issues involved inventive step, added matter and infringement.

In the 2000’s

Building Product Design –v- Sandtoft
Patents County Court

Infringement of patent relating to roofing materials.

Oystertec Plc –v- Fraser & Others
Patents Court

Entitlement to patent and related issues

Oystertec Plc’s patent
Patent Office

As part of the Oystertec litigation which was widely reported in the popular press because of its connection to Paul Davidson “the Plumber”. Oystertec made an application to the High Court for disclosure of an opponent to its patent. The High Court declined to intervene following an enlarged Board of Appeal decision in Europe.

Electrocoin –v- Coinworld.
English High Court

This involved infringement of trade mark on the reels of a fruit or amusement with
prizes machine.

In the next issue of Legal Writes I will concentrate on identifying information & knowledge belonging to a business which is most often inadequately protected. I will consider know-how, secret process, confidential information and how this relates to employees contracts. In the case of patents, what the new regime for compensating employees for rights to inventions actually means in practice.

We all look forward to assisting all our clients with their various needs in this area. Colin and I between us, have over 60 years relevant experience in the contentious and non-contentious intellectual property field. That breadth of experience is unique outside of London.

For further details please contact Ian Morris, Head of Contentious Intellectual Property on 0161 832 3434 or by email at ianmorris@kuits.com