IP Two Minute Monthly – February 2021

This is our summary of developments and cases in the world of IP from February which should take you no more than two minutes to read:

15.04.2021

Fashion, Passing Off and Design Rights

A company was found to have infringed UK and Community unregistered design rights in various dress designs, but there was no infringement for passing off, even though the Judge found that it had deliberately set out to emulate the Claimant, Original Beauty, going so far as to employ the same models and use the same locations for their photo shoots. The Judge concluded that the public would not assume that the two companies were sister brands, and so there was no likelihood of confusion. However, he did award additional damages for flagrant infringement, given that photographs of the Original Beauty dresses had been sent to the Defendant’s manufacturers to be copied (Original Beauty Technology Co Ltd and others v G4K Fashion Ltd and others [2021] EWHC 294).

One of the Defendant’s copy dresses shown on the right, found to infringe the design rights in the dress on the left.

Blocking Injunctions, Cyberlockers, Stream Ripping and Copyright

The High Court has granted blocking orders against the UK’s six major ISPs under s97A Copyright Designs and Patents Act 1988, this time extending the jurisdiction to cover cyberlocker and stream ripping operators’ websites. In doing so the Judge found that the operators committed acts of communication to the public, contrary to the Advocate General’s Opinion in YouTube/Cyando C-682/18 and C-683/18 which the Judge said was unlikely to be followed by the CJEU. That remains to be seen (Capitol Records and Others v BT and Others [2021] EWHC 409 (Ch) and Young Turks Recordings and Others v BT and Others [2021] EWHC 410 (Ch)).

The Duchess of Sussex and Copyright

Some surprise was expressed over the High Court’s decision to grant summary judgment to The Duchess of Sussex in relation to her misuse of confidential information claim regarding the The Mail on Sunday and MailOnline publishing a copy of her letter to her father, on the basis that she had a reasonable expectation of privacy. However, of little surprise was that she also succeeded in obtaining summary judgment in relation to her claims for subsistence and infringement of copyright. Substantial extracts from the five page letter were published, and the Judge described the Defendants’ argument that the letter was not protected by copyright because it was simply a statement of facts which did not reflect the author’s own intellectual creation as “utterly fanciful”. Indeed, the Judge was surprised that a newspaper would want to argue that “the author of text that is a recitation of pre-existing facts cannot claim a copyright where the recitation of facts [is] any part of the scope of its protection”, which could describe many newspaper articles. He also found that the article reproduced the letter in order to report its contents, which were not “current events”, and the use was not “fair”, so no defence was applicable. The only issue left outstanding for (any) trial was whether The Duchess was the sole author or co-author of the letter (HRH The Duchess of Sussex v Associated Newspapers Ltd [2021] EWHC 273 (Ch)).

Work Undertaken in the Course of Employment and Ownership of Copyright

In a case which may have more importance following the recent requirement for employees to work from home, the fact that some work was undertaken from home and using the employee’s own computer was of little relevance to the question of whether the work was undertaken in the course of that employee’s employment if the clear intention was that the work formed part of the employee’s duties (Michael Penhallurick v MD5 Ltd [2021] EWHC 293 (IPEC)).

XML Schema, Copyright and Database Rights

An XML Schema, which formed part of a computer app, was protected by copyright but not by database right, because it did not consist of a collection of independent data – the data could not be separated without losing the informative value which they had as a whole. The Defendant was found liable for copyright infringement and for additional damages, due to his failure to carry out a sufficient investigation (Software Solutions and others v 365 Health and Wellbeing Ltd and another [2021] EWHC 237 (IPEC)).

Malice and Breach of Confidence

While criminal activity, fraud and other reprehensible behaviour may provide a justifiable reason to publish confidential information, malice on its own cannot (London Borough of Lambeth v AM (No 2) [2021] EWHC 186).

Place of First Disclosure and Design Rights

London Fashion Week is to be entirely online this year, which may lead to a case which confirms whether the first launch of a design on a website, and therefore simultaneously in more than one country, can amount to having been first made available to the public in both the UK and the EU, so that design businesses can benefit from both the UK and Community unregistered design rights in their designs. For a discussion on the issues, see our previous article here.

Descriptive Words and Trade Marks

Fitness company Peloton is challenging US company Mad Dogg Atheletics’ right to own US trade marks for SPIN and SPINNING, arguing that they have become generic terms for exercise equipment and classes.

Best and Reasonable Endeavours

While some cases have considered an obligation to use best endeavours and all reasonable endeavours to be the same thing, in the latest case to consider this issue, the Judge concluded that in some cases best endeavours went further than reasonable endeavours (CIS General Insurance Ltd v IBM United Kingdom Ltd [2021] EWHC 347 TTC).

Crown Use and Patents

For a case on the interpretation of the Crown use sections of the Patents Act 1977, see IPCom GmbH & Co KG v Vodafone Group plc and others [2021] EWCA Civ 205.

Simon Clark

Author

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