Severn-Hafren

NIPC Severn/Hafren

IP and technology law news and comment from the Greater Bristol and South-East Wales city regions.

Saturday, 12 September 2020

Search Orders: TBD (Owen Holland) Ltd. v Simons and others


Author grahamwel Licence CC BY-SA 2.0 Source Wikipedia
Court of Appeal (Lords Justices David Richards, Newey and Arnold) TBD (Owen Holland) Ltd v Simons and others [2020] EWCA Civ 1182 (8 Sept 2020)

This copyright and breach of confidence which claim was issued out of the Cardiff District Registry. It was brought by a manufacturer of baggage trolleys, steps and similar equipment for the aviation industry against several of its former employees and the company that they joined. The litigation started when the claimant discovered that its customers had been canvassed by with promotional materials that reproduced the claimant's photographs and technical documentation.

The claimant applied for a search order against the former employees and their company. A search order is an order of the court requiring a property owner or occupier to admit a solicitor appointed to represent the court known as "the supervising solicitor", a small number of the opposing party's lawyers and maybe an expert in searching and recording computer memories or some other specialist. The order usually requires the owner or occupier to allow the search party to look for documents and other evidence that is relevant to the proceedings. If the searchers find relevant information the order permits the team to photocopy or record it in some other way,

The jurisdiction to make such orders lies ar the very extremity of the High Court's powers. They are made very sparingly and are not easy to obtain, A judge has to be persuaded that there is a very acute danger that the evidence will be hidden, removed or destroyed once the person possessing it learns that he or she is being sued or about to be sued. It is not enough to show that such person is a wrongdoer. It is necessary to show that he or she is unscrupulous enough to hide, remove or destroy evidence. For that reason, no warning is given to the property owner or occupier. In many cases, litigation begins with a search order.

Shortly after the issue of proceedings in the present case, the claimant obtained an injunction requiring its former employees to stop infringing its copyrights, to return any of its property that remained in their possession and to conform on affidavit that they had complied with the order. The infringing acts continued and the claimant suspected that the defendants had been holding something back. They applied to Judge Keyser QC for a search order which he granted. The order was executed and the claimant's suspicions proved to be justified. Following the execution of the order, the first defendant filed an affidavit confessing that his previous affidavit had been untrue and exhibiting 9 ring binders of documents some of which he had removed from the claimant's premises. A few weeks later the former employees' company stopped trading and later went into liquidation.

From the point of view of the claimant. this was the high water point of the litigation, Matters started to go awry when the claimant's solicitors and computer experts started to examine the documents that they had taken away from the defendants' premises most of which they were not entitled to see. The solicitors also applied for permission to commit the claimant's former employees to prison for interfering with the administration of justice under Part III of CPR Part 81.

Another of the former employees and several other defendants applied for the claim to be struck out on the ground that the claimant's solicitors and experts had breached the terms of the search order by inspecting documents that they were not entitled to see. They also complained that the claimant had used such evidence in an application for permission to bring the committal proceedings. The application was heard by Mr Justice Marcus Smith who is the Chancery Supervising Judge for Wales. He heard the application on 28 and 29 Nov 2019 and delivered judgment in TBD (Owen Holland) Ltd v Simons and Others [2020] EWHC 30 (Ch) on 17 Jan 2020.

Mr Jsutice Marcus Smith found that the claimant had breached the search order by inspecting the documents that its solicitors had recovered in the search. He held that the purpose of the search order was to preserve evidence. It did not give the claimant any right to rummage through materials that they were not entitled to see. However, the judge did not think it appropriate to strike out the claim at that time. Instead, he ordered the recovered material to be handed over to an independent law firm who would weed out any privileged or self-incriminatory material and identify documents relevant to the proceedings at the claimant's expense. He revoked permission that had already been given to institute committal proceedings against one defendant and refused permission to bring such proceedings against another. He stayed the proceedings and ordered the claimant to give security for the defendants' costs. I blogged about Mr Justice Marcus Smith's decision in Search Orders - TBD (Owen Holland) Ltd v Simons and Others 22 Jan 2020 NIPCl Law.

The claimant appealed against Mr Justice Marcus Smith's judgment to the Court of Appeal. The appeal was heard by Lords Justices David Richards, Newey and Arnold on 22-24 July 2020. They handed down a massive 286 paragraph judgment almost all of which had been written by Lord Justice Arnold. In his powerful and exhaustive lead judgment, the learned Lord Justice traced the history of the litigation, analysed the search order, reviewed the case law and considered carefully Mr Justice Marcus Smith's judgment. He held that search orders exist for preserving evidence and nothing else and that the claimant had been wrong to examine the documents that it had seized. It upheld Mr Justice Marcius Smith's decision with one slight variation. Instead of delivering the documents to independent solicitors, he allowed the defendants' solicitors to carry out the sifting. He did not lift the stay or the requirement to give security for the defendants' costs. He revoked the permission that Judge Keyser had given for committal proceedings. The other Lords Justices delivered short concurring judgments. I discussed the appeal in The Court of Appeal Revisits Search Orders - TBD (Owen Holland) Ltd v Simons and others 10 Sept 2020 NIPC Law.

Lord Justice Arnold noted that the law on search orders developed when most documents were on paper. Nowadays, they were more likely to be in digital form and kept on a computer, tablet, phone or other device or in the cloud. For the last decade or so it has been possible for computer experts to make perfect copies of the content on a computer by a technique known as imaging. Imaging was less intrusive than an old fashioned search order but safeguards were required to protect respondents' privacy and other interests. He suggested that courts that are asked for a search order for the purpose of imaging should consider whether an imaging order should be made instead. He called for the Rules Committee to produce a standard form imaging order on the lines of the standard form search orders and freezing injunctions.

As this is an important case I will deliver a talk on it and some of the other issues that Lord Justice Arnold and Mr Justice Marcus Smith discussed in their judgments by Zoom before the end of the month. Anyone wishing to attend the call or discuss this article is welcome to call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Thursday, 27 August 2020

Bristol Innovation Group: Street2Boardroom


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Jane Lambert

I have just mentioned the Bristol Innovators Group in my NIPC Inventors Club blog.  I was unable to find a website for the group but I have found their YouTube channel.  It has published two videos including an interview with Clayton Planter who has founded a project in Bristol called Street2Boardroom.

According to its website,
"Street2Boardroom is designed for young people (18+) and adults who find themselves caught in a range of illegal activities, giving them the skills, knowledge and confidence to apply what they have learned from the street – to learn the legal hustle!"
Street2Boardroom offers a 4-week course to teach basic business skills and mentoring.  The course is open to anyone who would like to turn his or her life around and learn how to set up and run his or her own business.  A YouTube video entitled Street2Boardroom trailer.

Mr Planter founded Street 2 Boardroom in 2016. He describes himself on Linkedin as "creative entrepreneur, Consultant, Coach, Educator & Speaker: Board member on U.W.E Business & Law advisory board."  Before setting up Street 2 Bedroom he worked with young people and adults from disadvantaged backgrounds and helping them realize their potential.

This interview shows that the Bristol Innovation Group embraces innovation and enterprise in the widest possible sense.  They are interested not just in technology and business but in their society as well. Something that clubs and groups in other places might wish to consider for themselves.

Every community of the UK has disadvantaged groups. Not just big cities but big, medium-size and even small towns and villages. Mr Planter cannot be everywhere but he may be able to inspire and encourage others to follow his example.

Sunday, 8 December 2019

Business and Property Courts in Wales - Happy Camper Productions Ltd v BBC

Author Ham II Licence CC BY-SA 3.0 Source Wikipedia Cardiff Crown Court




















Jane Lambert

Chancery Division (HH Judge Keyser QC) Happy Camper Productions Ltd v British Broadcasting Corporation [2019] EWHC 558 (Ch) (11 Feb 2019)

I am grateful to Mr Iain Connor of Pinsent Masons for bringing this case to my attention in his presentation to the International Copyright Law Conference entitled Key Case Law Update, Critical Developments in 2019 on 3 Dec 2019.

This was an application for an interim injunction to restrain the BBC from broadcasting the first episode of Pitching In. It was a drama about the owner of a caravan park in North Wales. The applicant alleged that it infringed copyright in the script for a TV programme (or alternatively a film based on the script) about the owners of a holiday camp in West Wales that had been written by the directors of the claimant production company. The application was made the day before Pitching In was due to be broadcast. Cancelling the transmission could have cost the BBC £130,000 in rescheduling costs and a great deal more in reputational damage.

An injunction is an order of the court to do or refrain from doing something. In Scotland, such an order is known as an interdict. In the United Kingdom, disobeying an injunction or interdict is a contempt of court which can be punished by a fine or imprisonment. In Wales and England, an injunction can be awarded after a trial when the parties' rights and obligations have been determined to prevent further infringement of the successful party's rights. That is known as a "final injunction". But an injunction can also be granted at the beginning of the court proceedings before those rights and obligations have been determined to prevent irreparable harm to one or more parties in the period between the issue of proceedings and the trial of the action. Injunctions of that kind are known as "interim injunctions."

As the court does not know for sure how an action will end, an applications judge in Wales or England will grant an interim injunction only if he or she is satisfied that the applicant could win and that the respondent could not compensate the applicant adequately by paying damages. That may be for many reasons. Possibly the respondent would not have the means to pay any damages. Alternatively, it may be impossible to assess the full extent of the loss because records might not be kept or evidence would be missing. There are also some kinds of loss for which no amount of money would be adequate recompense.

If damages will not be an adequate remedy for the applicant, the court will consider the position of the respondent if it grants an injunction and the order turns out not to have been justified. In most cases, the respondent would simply be delayed for the period between the start of the proceedings and their resolution which can be compensated by the applicant. In nearly every case an applicant will be required to promise to pay damages to the respondent if the injunction turns out not to have been justified. That promise is known as a "cross-undertaking in damages," In those circumstances, the court has to consider whether the applicant could afford to pay such damages if ordered to do so and whether those damages would be adequate compensation for the respondent. All of those factors were considered by the House of Lords in American Cyanamid Co. v Ethicon Ltd [1977] FSR 593, [1975] 1 All ER 504, [1975] 2 WLR 316, [1975] UKHL 1, [1975] AC 396.

His Honour Judge Keyser QC, who heard Happy Camper Productions Ltd.'s application against the BBC, referred to that case at paragraph [17] of his judgment (see Happy Camper Productions Ltd v British Broadcasting Corporation (BBC) [2019] EWHC 558 (Ch) (11 Feb 2019)). He said:
"The test to be applied is accordingly the familiar test in American Cyanamid Co (No 1) v Ethicon Ltd [1975] AC 396. In very broad terms, the purpose of the exercise, without adjudicating on the case, is to seek to ensure that if one makes a mistake it is the least bad mistake one can make, in this sense: one is concerned with the question, Is it worse to have granted an injunction on an interim basis if ultimately it should be found that there is no entitlement to an injunction, or to have refused an injunction if ultimately it should be found that there is an entitlement to an injunction? That is the broad idea behind the test."
His Honour appears to have concluded that the "least bad mistake" would be to refuse Happy Camper Production's request for an interim injunction and his reasons were as follows.

First, he had serious doubts as to whether the claimant could win. The production company was formed after the script for the claimant's show had been written which meant that the authors did not write it in the course of their employment and there was no evidence that any copyrights had been assigned to it. More seriously there was not much evidence of copying. The producer of the BBC's programme had been given a copy of the claimant's script but there was little evidence that she had actually read it. There was even less that she, the BBC or its programme makers had copied it. The setting of both works in a caravan park in Wales was the main common feature but the plots and characters were very different. Moreover, although the learned judge did not mention these cases, it is not easy to protect the format of a TV show (see Green v Broadcasting Corporation of New Zealand [1989] UKPC 26 (18 July 1989), Fraser v Thames Television [1984] QB 44 and Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd and another [2017] EWHC 2600 (Ch) (19 Oct 2017)).

Secondly, Judge Keyser thought that the claimant could be compensated adequately by an award of damages were its directors to prevail. Those authors had submitted their manuscript to the BBC in the hope of licensing it. Am award of damages could be based on the licence fee that would have been negotiated by the parties had the script been accepted.

Thirdly, pulling the programme the day before its first transmission of Pitching In would have been very damaging to the BBC and there was a serious question mark as to whether the claimant could even meet the immediate cost of rescheduling its programmes. Injunctions are an equitable remedy and there is a maxim that delay defeats equity. The claimant knew about the corporation's plans to broadcast Pitching In for 6 months but had held back until the very last moment before launching this application. As the judge remarked, that was "dreadfully late".

Anyone wishing to discuss this article, copyright or interim injunctions generally may call me on 020 7404 5252 during office hours or send me a message through my contact form.

This case note previously appeared in NIPC Wales/Cymru on 5 Dec 2019

Wednesday, 10 July 2019

Small Claims Track IP Litigation in Bristol and Cardiff

Author Ham II Licence CC BY-SA 3.0 Source Wikipedia Cardiff Crown Court




















Jane Lambert

One of the most interesting announcements of the new Intellectual Property Enterprise Court Guide is the decision to appoint from October 2019 district judges to hear small intellectual property claims in Bristol and Cardiff (see The New IPEC Guide 4 July 2019 NIPC News).

The cases that those district judges will be entitled to hear pursuant to CPR 63.27 will be claims for £10,000 or less for the infringement of intellectual property rights other than patentsregistered and registered Community designssemiconductor topographies and plant varieties. In Small IP ClaimsI gave examples of cases that might be suitable for the small claims track and of others that would not.  The claimant must ask for the claim to be allocated to the small claims track in its particulars of claim and no objection should be raised by the defendant.   However, even if a case falls within the jurisdiction of the small claims track and the parties want it to stay there, the court may transfer it to the multitrack if it is likely to take more than a day to try or there is a difficult point of law or factual issue to decide.

Proceedings in the small claims track are governed by CPR Part 27 and the Part 27 Practice Direction as modified by CPR 63.27 and CPR 63.28 and paragraph 63.32 of the Part 63 Practice Direction.  Though successful claimants can obtain final injunctions and orders for delivery up of infringing materials as well as damages or accountable profits they cannot claim interim injunctions.  Liability and the amount of any damages or other pecuniary relief to be awarded are decided at the same time.  Directions are given automatically in accordance with Appendix B or of the Part 27 Practice Direction after statements of case are exchanged and although the court has power under CPR 27.6 to hold preliminary hearings these are the exception rather than the rule. There is no provision for disclosure and the costs that may be recovered from an unsuccessful party are limited to court fees, £260 if an injunction is sought and a lawyer has been instructed, travelling expenses and loss of earnings up to £95 per witness and up to £750 in experts' fees.

The new IPEC guide indicates that those wishing to bring an IP case in the small claims track in Bristol or Cardiff should use the electronic filing system.

Anyone wishing to discuss this article or small claims track IP litigation generally should call me on 020 7404 5252 or send me a message through my contact page.

Wednesday, 24 October 2018

China IP Roadshow

Tom Duke














Jane Lambert

Tom Duke is our IP attaché to the Peoples' Republic of China and the Hong Kong Special Administrative Region.  China and Hong are not only large and growing markets for British goods and services, they also offer enormous opportunities to British investors.  Particularly with the One Belt, One Road project and other initiatives which I discussed in The Shanghai Cooperation Organization 9 Sept 2017 NIPC Brexit.

As is the case everywhere, investments in branding, design, technology and creativity have to be protected in China and Hong Kong from counterfeiting and plagiarism.  As a member of the World Trade Organization China has to adhere to the TRIPS agreement which sets minimum standards for the protection of intellectual assets.  China has comprehensive and up to date intellectual property laws and courts presided over by specialist judges who are increasingly astute to IP infringement.  It is often forgotten that more patent applications are filed from China than any other country in the world.

From time to time Mr Duke tours the UK to discuss IP protection in China with local business leaders.  Last year he visited the North of England and Scotland and I chaired his visits to Leeds and Barnsley. Those meetings were very successful and have led to longstanding relationships and successful transactions (see Meet our IP Attaché in China 21 July 2017 IP Yorkshire).

Mr Duke is about to return to the UK and will give two talks in this region.

On 1 Nov 2018 he will speak at Glamorgan County Cricket Club's grounds at Sophia Gardens in Cardiff between 08:00 and 10:30.  The title of his talk is Succeeding in China: How to Mitigate Intellectual Property Risk. Admission is free but you must register through the Business Wales website.

On 2 Nov 2018 he will speak on the same subject at the Leigh Court Business Centre in Bristol between 12:00 to 14:30.  Again, admission is free but you have to register through Eventbrite.

Anyone wishing to discuss this article or IP in China generally should call me on 020 7404 5252 or send me a message through my contact page.

Wednesday, 18 July 2018

Newport to host UK Space Conference 2019


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Jane Lambert

According to the UK Space Agency, the UK Space Conference is the most influential event for the space community, bringing together government, industry and academia. Last year it took place in Manchester and attracting 1,223 delegates to hear 224 speakers deliver a 3 day programme of talks and discussions.

The next conference will take place in Newport at ICC Wales between 9 to 11 July 2019 (see the UK Space Agency's press release Wales announced as host for UK Space Conference 2019 17 July 2018).  Newport is a good location with the Intellectual Property Office is in the city and being close to much of the British aerospace industry.

Several of the presentations that were delivered in Manchester can be downloaded including patent attorney Adam Brocklehurst's on intellectual property, Mike Lawton's of Oxford Space Systems on the same topic from the point of view of a recently established startup and Geraint Morgan's on technology transfer.

Quite apart from the working sessions and social events such as the Sir Arthur Clarke gala dinner and award ceremony there is a lot to see in Newport.  The Roman garrison museum at Caerlaon,  the medieval castle, the transporter bridge, the Riverfront Theatre which is home to Ballet Cymru, Wales's national classical ballet company and of course the Usk and Wye Valleys just to the North.

Anyone wishing to discuss this article or any related topic should call me on 020 7494 5252 or send me a message through my contact form.

Tuesday, 30 January 2018

Bath to lead the new Institute of Coding

University of Bath
Author Mitchoicecream
Licence Creative Commons Attribution-Share Alike 2.5 Generic
Source Wikipedia Commons











Jane Lambert

The Higher Education Funding Council for England has awarded £20 million to a consortium of universities, businesses and professional bodies to establish a new Institute of Coding.  "Coding" in this context means very much the same as "programming". In other words, writing instructions to a computer in a way that those instructions can be converted into electronic impulses.  Such instructions can be a valuable intellectual asset the reproduction, use and adaptation of which are restricted by copyright.

The Director of the new Institute is to be Dr Rachid Hourizi of the University of Bath which is to be the lead university (see the Institute of Coding page on the the HEFCE website).  Other universities,  businesses and organizations participating in the project are listed in a joint press release dated 25 Jan 2018 by the Department of Education and the Minister of State for Universities, Science, Research and Innovation.

According to that press release, the Institute is centred around the following themes:
"1. University learners (led by the Open University) – To boost graduate employability through a new industry standard targeted at degree level qualifications. IoC programmes will incorporate learning which solves real-world business problems and develops business, technical and interpersonal skills in equal measure.
2. The digital workforce (led by Aston University) – To develop specialist skills training in areas of strategic importance.
3, Digitalising the professions (led by Coventry University) – To transform professions undergoing digital transformation (e.g. helping learners retrain via new digital training programmes provided through online and face-to-face learning).
4. Widening participation (led by Queen Mary University of London) – To boost equality and diversity in technology-related education and careers (e.g. tailored workshops, bootcamps, innovative learning facilities and other outreach activities). In 2017, female programmers and software developers made up just 3.9 per cent of tech and telco professionals in the UK.
5 Knowledge sharing and sustainability (led by the University of Bath) – To share outcomes and good practice, ensuring long-term sustainability of the IoC. This will include building up an evidence base of research, analysis and intelligence to anticipate future skills gaps."
According to the Institute of Coding competition: Invitation to submit applications for funding to enhance higher-level digital skills provision the money is to be spent between  1 April 2018 and 31 March 2019. The purpose is to develop and grow digital skills to meet the current and future needs of industry as it appears from several reports that there is a shortage of the right skills.

I shall be monitoring the Institute to see what happens and will report back from time to time.  In the meantime if anyone wants to discuss this article or the project generally, he or she should call me on +44 (0)20 7404 5252 or send me a message on my contact form.

Search Orders: TBD (Owen Holland) Ltd. v Simons and others

Author g rahamwel   Licence CC BY-SA 2.0   Source Wikipedia Jane Lambert Court of Appeal   (Lords Justices David Richards, Newey and Arnold)...