IP - infringement claims

Question 1

Infringement structure

Answer 1

1. Subsistence, validity, ownership
2. Infringing act
3. Comparison
4. Defences
5. Remedies

Question 2

Copyright - Subsistence, Validity, Ownership

Answer 2

• Type of work e.g. literary, dramatic, musical
• Fixed
• Original i.e. not copied
• Author = person who created
• Duration = life + 70 years
• Ownership: Author / employer / contract

Question 3

Copyright - Infringing Act

Answer 3

• Copying; or
• Issuing copies to the public; or
• Communicating to the public; or
• Without consent

Question 4

Copyright - Comparison

Answer 4

Designer’s Guild case:

• Causal connection (exclude possibility of independent creation):
  - Access
  - Objective similarity
• Substantial part (of C’s work, irrespective of proportion of D’s work):
  - Quantitative
  - Qualitative

Question 5

Copyright - Defences

Answer 5

Usually revolves around undermining C’s case

Fair dealing (s.29/30)

Best course of action is to get consent.

Question 6

All - Remedies

Answer 6

Injunction

Damages / account for profits (not awarded against innocent infringer)

Delivery up

Question 7

Registered design - Subsistence, Validity, Ownership

Answer 7

Is the design registered?

5 to 25 years

Ownership: Author or assignee

Question 8

Registered Design - Infringing Act

Answer 8

‘Use’ s.7(2):

• Making, offering, putting on the market, importing/exporting…
• Stocking

Question 9

Registered Design - Comparison

Answer 9

Compare C’s design as registered with design used by D.

‘Individual character’ test - overall impression on ‘informed user’.

Question 10

Registered Design - Defences

Answer 10

Statutory:

• Non-commercial purposes
• Experimental purposes
• Teaching purposes
• Component spare parts for repair of complex products

Other:

• Challenge case
• Challenge registration

Question 11

Unregistered Design - Subsistence, Validity, Ownership

Answer 11

Design (s.213(2) CDPA):
- Shape or configuration of:
     - whole or part of an article
     - whether internal or external
Arises automatically

Originality: Not copied or commonplace.

Must be ‘fixed’ i.e. recorded.

Question 12

Unregistered Design - Infringing Act

Answer 12

Reproducing without consent. Either by:

• making a product; or
• making a design document

for commercial purposes.

Question 13

Unregistered Design - Comparison

Answer 13

Causal connection (exclude possibility of independent creation):

• Access
• Objectivity

Question 14

Trademark - Subsistence, Validity, Ownership

Answer 14

Validity: is TM registered?

Has it been revoked?

• No use within continuous 5 year period
• Loss of distinctiveness
• Invalidated

Must be renewed every 10 years.

Question 15

Trademark - Infringing Act

Answer 15

Use of TM in the course of trade

• affixed to goods or packaging

Question 16

Trademark - Comparison

Answer 16

Compare C’s mark as registered with D’s mark as used

Question 17

Trademark - Defences

Answer 17

Statutory defences exist however usual defence is to invalidate C’s case or registration.

Question 18

Patent - Subsistence, Validity, Ownership

Answer 18

Validity: is it registered?

Valid for initial 4 years then renewed annually for up to 20 years.

Question 19

Patents - Infringing Act

Answer 19

s.60m Patents Act:

• Making a product
• Using a process
• Actions listed in relation to products made to the process.

Question 20

Patents - Comparison

Answer 20

Compare wording of patent as registered with D’s product / process.

Purposive (as opposed to literal) approach:

What a person skilled in the art understands the words to mean.

Use description and drawing (s.125)

Question 21

Patents - Defences

Answer 21

Statutory:

• Private use
• Prior use
• Revocation

Common:

• Not within claim
• Invalidity

Question 22

UDR v Copyright

Answer 22

Copyright infringement negates UDR (s.CDPA)
unless:

Cross-dimensional copying, s.51 CDPA removes copyright infringement from copying drawing of a non-artistic work.

Question 23

Passing off

Answer 23

Jiff Lemon case

1. Goodwill
   
   • Unregistered TM
   • TM reputation (distinctiveness)
   • Business in the UK
2. Misrepresentation
   - Classic - likely to cause confusion as to origin
   - Quality
   - Reverse
3. Damage
   - Actually suffered
   - Likely to suffer e.g. loss of sales, erosion of mark’s distinctiveness, inability to licence.

Remedies: injunction, delivery up, damages/account for profits