NIPC Severn/Hafren

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

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

Standard YouTube Licence

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.

Tuesday, 17 October 2017

Venturefest Bristol and Bath

Author Arpingstone
Reproduced with kind permission of the copyright owner
Souce Wikipedia

Jane Lambert

Venturefest Bristol and Bath is taking place at Watershed Bristol. Watershed, 1 Canon’s Road, Harbourside, Bristol, BS1 5TX today and if you are in or can reach that neighbourhood today it is well worth a visit. You will find directions and travel information on the venue page of the event website.

Venturefest is the trade mark for a range of services in classes 35, 36 and 41. They include
"Arranging exhibitions for business purposes; conducting exhibitions for business purposes; arranging of trade fairs; promotion of fairs for trade purposes; business services relating to the provision of sponsorship for exhibitions and seminars; business consultancy services relating to the promotion of fund raising."
Events held under the Venturefest mark bring together local innovators and creatives, entrepreneurs and investors from a designated hinterland to a single venue for a day of talks and networking. There is an exhibition of local universities and professional, financial and business service providers and a competition where the region's brightest and best startups and growing companies pitch for investment. The first Venturefest was held at Oxford in 1999.  It was followed a few years later by Venturefest Yorkshire at York racecourse. Now there are Venturefests in almost every part of the UK.

The programme for today's Venturefest is here. The theme of this year's conference is "Smart Cities" and there will be a marketplace of "15 regional and national companies pushing the boundaries of Smart City innovation."The pitching contest which in other venues is called "Innovation Showcase" is known as "Silicon Gorge" in Bristol.

If you run or are thinking of starting a new business whether in Bristol, Bath or indeed anywhere you should give some thought as to how you will protect your goodwill, prevent other people from adopting your technology or offering similar designs right from the start. That is why I stress the importance of Putting IP at the Heart of Your Business Plan 2 Jan 2015 NIPC News and explain to every founder, accountant or investor Why every business plan should take account of intellectual property 3 April 2016 NIPC News. Whenever I have watched a pitching competition, one of the first questions that angels, bankers or venture capitalists ask is "What sort of intellectual property protection have you taken out?"

But I have also noticed that many business angels and private equity investors have only the sketchiest knowledge or understanding of IP and for them I have written An IP Primer for Business Angels and Private Equity Investors 29 Aug 2016 NIPC News.

Whether you are a founder, investor or professional advisor you need to focus on IP and as I have devoted my whole career to advising and assisting startups and other small businesses on how to protect and make money from their investment in branding, design, technology and creativity I am in a very good position to help you too.

Should you wish to discuss this article or protecting or leveraging your IP generally, call me on 020 7404 5252 during normal business hours or send me a message through my contact form.

Monday, 2 October 2017

Better than the M4 - "The Judicial Superhighway"

Author John Grayson
Licence Creative Commons Attribution-Share Alike 2.0

Jane Lambert

The Chancery Division, Circuit Commercial and Technology and Construction Courts sitting in Bristol and Cardiff are now known as "the Business and Property Courts" and linked to the Rolls Building in London  (see The Business and Property Courts of England and Wales Advisory note 27 Sep 2017 Judiciary website). The link between the courts in Bristol and Cardiff and London has been described as a "judicial superhighway" (see The Business and Property Courts of England & Wales - An Explanatory Statement  18 May 2017 by Sir Geoffrey Vos and Sir Brian Leveson). The objective of the judicial superhighway is to enable any kind of case to proceed outside London.

It will be possible to bring cases in Bristol or Cardiff if:

  • "one or more of the parties has an address or registered office in the circuit (particularly if the party is non-represented); 
  • at least one or more of the witnesses is located in the circuit; 
  • at least one of the witnesses expected to give oral evidence is located within the circuit 
  • the dispute occurred in a location within the circuit; 
  • the dispute concerns land, goods or other assets located in the circuit; or 
  • the parties’ legal representatives are based in the circuit."
One of the lists of the Business and Property Courts is the Intellectual Property List which is itself subdivided into lists for the Patents Court, Intellectual Property Enterprise Court ("IPEC") and the Chancery Division. Cases relating to patents, registered and registered Community designs, semiconductor topographies and plant breeders' rights must proceed in the Patents Court or the IPEC multitrack. Both courts are based in the Rolls Building but the Patents Court and IPEC Guides state that the Patents and Enterprise Judges will sit outside London for the convenience of the parties or to save time or costs. All other IP cases - that is to say, those involving breaches of confidence, copyrights, database rights, passing off, rights in performances, trade marks, unregistered Community designs and unregistered design rights - can be issued out of the Bristol or Cardiff District Registries or IPEC. Claims that can be tried in 2 days or less where the amount in dispute is less than £500,000 should be issued out of IPEC. 

Claims issued out of the Business and Property Courts must be headed as follows:




Claims in the Business and Property Courts that are issued after 2 Oct 2017 will be given a claim number with a prefix that reflects the Court, List or sub-list in which they are issued. The prefix for Patents Court claims is "HP", the prefix for IPEC claims is "IP" and the prefix for IP claims in the Chancery Division is "IL"

Anyone wishing to discuss this article or IP litigation generally should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

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...