Chapter 3: Sanctions for misuse of intellectual property, including civil remedies and criminal sanctions

Question 1

What are the requirements for an interim injunction and based in which case?

Answer 1

1. Whether there is a serious question to be tried.
2. Whether damages would be an adequate remedy.
3. Who the balance of convenience favours.
   American Cyanamid

Question 2

What are the pre-conditions to grant an Anton Piller order? (2)

Answer 2

1. The potential damage to the claim must be very clear
2. There must be a very strong prima facie case
3. There must be clear evidence that the defendant has incriminating documents and that they will likely be destroyed.

Question 3

What are the three main stages of proceedings?

Answer 3

• preliminary/evidential
• trial of liability
• assessment of quantum.

Question 4

Which topics fall outside of the scope of unjustified threats?

Answer 4

Threats to sue for primary infringements – manufacture,
copying, marking, importation, using a patented process – are not
within the threats provisions.

Question 5

Occasionally it is difficult to find out who is infringing, explain the Norwich Pharmacal case.

Answer 5

Occasionally it is difficult to find out who is infringing. In Norwich
Pharmacal Co v Customs and Excise Commissioners,
Customs and Excise, who had records of infringing imports but were
not wrongdoers, were ordered to reveal details of importer and
imports. Although the Civil Procedure Rules, Part 31.16 refers to the
need for the person against whom a disclosure order is sought to be
a likely party, disclosure will be available against a non-wrongdoer
where the action cannot proceed without information to an infringer’s
identity.

Question 6

What is an Anton Piller order?

Answer 6

An Anton Piller order (otherwise known as a search order) is an order from the Court which permits the inspection of the defendant or respondent’s premises and civil search for and seizure of relevant materials and documents. The purpose of an Anton Piller order is to preserve evidence which may be in danger of destruction or concealment.

Question 7

What is an interim injunction?

Answer 7

Probably the most important remedy is the interim injunction, an order
to prevent infringement pending trial.

Question 8

When can a claimant apply for summary judgment and name a case where this was successful.

Answer 8

If the claimant has a very strong case, they might wish to apply for
summary judgment under CPR, Part 24.

Sony Music Entertainment (UK)
Ltd v Easyinternetcafé Ltd

Question 9

Explain the 2 main forms of money remedies.

Answer 9

1. Damages

2. Account of profits

Question 10

How are damages calculated?

Answer 10

1. Damages, calculated on inquiry as to damages
2. Accounts of profits, a phrase which
   usually refers both to the process and the result (i.e. an order that the
   defendant pay to the claimant any profits wrongfully generated by
   infringement).

The claimant usually asks for both at the outset, but has
to elect either for an inquiry as to damages or an account of profits.

Question 11

Explain non-pecuniary final remedies.

Answer 11

The final injunction and order for the delivery of infringing products for
destruction are useful in destroying the infringements and preventing
further infringing products from being created.

Question 12

In which case can there be no criminal offence? Name the case as well.

Answer 12

Although the wording of the criminal sections is
somewhat different from that of the civil sections, in R v Johnstone
[2003] FSR 42, [2003] UKHL 28 HL, the House of Lords held that there
could be no criminal offence in circumstances which did not amount to
a civil infringement.

Question 13

Debate the problem of costs for enforcement.

Answer 13

Based on Kingston’s paper, this is especially an issue for SME’s as they do not have an in house legal department, they either have to outsource the dispute or take care of it themselves, which disrupts their day to day business.

Question 14

Give 2 possible solutions by Kingston for the high costs of enforcement

Answer 14

1. Positive discrimination - give SME’s 50% discount on all fees
2. Removing patent disputes from courts by mandating compulsory technical arbitration in all disputes.

Question 15

Based on Robin Fry’s article, what are advantages and disadvantages of criminal sanctions for IP.

Answer 15

Advantages: Speed, title, deterrence, personal liability & costs
Disadvantages: Inability to settle, judges may be unfamiliar with IP, lack of effective compensation & burden of proof.