IP - infringement claims Flashcards
Infringement structure
- Subsistence, validity, ownership
- Infringing act
- Comparison
- Defences
- Remedies
Copyright - Subsistence, Validity, Ownership
- 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
Copyright - Infringing Act
- Copying; or
- Issuing copies to the public; or
- Communicating to the public; or
- Without consent
Copyright - Comparison
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
Copyright - Defences
Usually revolves around undermining C’s case
Fair dealing (s.29/30)
Best course of action is to get consent.
All - Remedies
Injunction
Damages / account for profits (not awarded against innocent infringer)
Delivery up
Registered design - Subsistence, Validity, Ownership
Is the design registered?
5 to 25 years
Ownership: Author or assignee
Registered Design - Infringing Act
‘Use’ s.7(2):
- Making, offering, putting on the market, importing/exporting…
- Stocking
Registered Design - Comparison
Compare C’s design as registered with design used by D.
‘Individual character’ test - overall impression on ‘informed user’.
Registered Design - Defences
Statutory:
- Non-commercial purposes
- Experimental purposes
- Teaching purposes
- Component spare parts for repair of complex products
Other:
- Challenge case
- Challenge registration
Unregistered Design - Subsistence, Validity, Ownership
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.
Unregistered Design - Infringing Act
Reproducing without consent. Either by:
- making a product; or
- making a design document
for commercial purposes.
Unregistered Design - Comparison
Causal connection (exclude possibility of independent creation):
- Access
- Objectivity
Trademark - Subsistence, Validity, Ownership
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Has it been revoked?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.
Trademark - Infringing Act
Use of TM in the course of trade
- affixed to goods or packaging
Trademark - Comparison
Compare C’s mark as registered with D’s mark as used
Trademark - Defences
Statutory defences exist however usual defence is to invalidate C’s case or registration.
Patent - Subsistence, Validity, Ownership
Validity: is it registered?
Valid for initial 4 years then renewed annually for up to 20 years.
Patents - Infringing Act
s.60m Patents Act:
- Making a product
- Using a process
- Actions listed in relation to products made to the process.
Patents - Comparison
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)
Patents - Defences
Statutory:
- Private use
- Prior use
- Revocation
Common:
- Not within claim
- Invalidity
UDR v Copyright
Copyright infringement negates UDR (s.CDPA)
unless:
Cross-dimensional copying, s.51 CDPA removes copyright infringement from copying drawing of a non-artistic work.
Passing off
Jiff Lemon case
- Goodwill
- Unregistered TM
- TM reputation (distinctiveness)
- Business in the UK
- Misrepresentation
- Classic - likely to cause confusion as to origin
- Quality
- Reverse - 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
