Dealings and Enforcement Law of Property PDF

**Dealings and Enforcement\ Law of Property\ Dr Titilayo Adebola** **Overview**\ ❑ What can you do with IP?\ ❑ Key IP Subjects discussed\ ❑ Copyright\ ❑ Patents\ ❑ Trademarks ❑ Owner of IP can\ ❑ Use to develop works/products\ ❑ Sell (Assignment)\ ❑ Share (License)\ ❑ Securitise\ ❑ Stop others fro...

**Dealings and Enforcement\ Law of Property\ Dr Titilayo Adebola** **Overview**\ ❑ What can you do with IP?\ ❑ Key IP Subjects discussed\ ❑ Copyright\ ❑ Patents\ ❑ Trademarks ❑ Owner of IP can\ ❑ Use to develop works/products\ ❑ Sell (Assignment)\ ❑ Share (License)\ ❑ Securitise\ ❑ Stop others from unauthorised use **Key Question**\ ❑ Are my IP rights still valid/do they exist?\ ❑ Check databases\ ❑ Are tests met? For example, have I used my trademarks? **Strategies: Protecting IP**\ ❑ Conducting Audits: Effective management of IP includes periodic audits\ ❑ WIPO: IP Audit -- Auditing Your Intellectual Property\ ❑ Drafting strong/effective IP agreements and contracts\ ❑ Build robust IP portfolios **Copyright**\ ❑ Copyright, Designs and Patent Act 1988\ ❑ S 90 (1) Copyright is transmissible by assignment, by testamentary disposition or by operation of law, as personal or moveable property\ ❑ An assignment or other transmission of copyright may be partial, that is, limited so as to apply\ (a) to one or more, but not all, of the things the copyright owner has the exclusive right to do\ (b) to part, but not the whole, of the period for which the copyright is to subsist **Patent**\ ❑ Patents Act 1977\ ❑ S 31(2) Any patent or application for a patent, any right in or under any patent or any application, is incorporeal moveable property\ ❑ S 31(7) An assignment of a patent or application for a patent or a share in it, and an exclusive licence granted under any patent or any such application, may confer on the assignee or licensee the right of the assignor or licensor\ ❑ S 48 At any time after the expiration of three years, or of such other period as may be prescribed from the date of the grant of a patent, any person may apply to the comptroller for a compulsory license based on one or more of the 'relevant grounds' set out **Trade Marks**\ ❑ Trademarks Act 1994\ ❑ S 22, A registered trade mark is personal property (in Scotland, incorporeal moveable property)\ ❑ S 24(1), A registered trade mark is transmissible by assignment, testamentary disposition or operation of law in the same way as other personal or moveable property\ ❑ S 24 (1) It is so transmissible either in connection with the goodwill of a business or independently\ ❑ S 24 (5), A registered trade mark may be the subject of a charge (in Scotland, security) in the same way as other personal or moveable property\ ❑ S 28 -31, A registered trade mark can be licensed **Assignment/assignation in general\ **❑Registered rights\ ❑Should record transfer, impact on rights against others\ ❑Need writing\ ❑Important to be able to track ownership over the years so can sue: eg Naxos Rights International \[2012\] CSOH 158\ ❑Can include future improvements to patent: Buchanan v Alba Diagnostics \[2004\] UKHL 5\ ❑Note: may be separated from underlying business and sold\ ❑Trade mark\ ❑Emanuel v Continental Shelf \[2006\] ETMR 56; Case C-259/04\ ❑Compare assigning goodwill -- not a separate asset -- passing off unregistered trade marks **Seeking/granting a licence in general**\ ❑ Exclusive (only person can "use" it -- including not IP owner), Non-exclusive (more than one "user"), Sole (only one licence -- doesn't determine number of "users"\ ❑ Can have a variety of licences. For example, a book can be licensed to be converted to a cartoon and a film\ ❑ Requirement regarding writing\ ❑ S 30(4), (6) and 31((4)-6) PA, S 28(2) TMA, S 92 CDPA (exclusive)\ ❑ Patent and trade mark licence should be recorded with UKIPO\ ❑ Payment systems: how to determine the amount for royalties or license\ ❑ Lump sum? Percentage? Risk?\ ❑ See Intellectual Property Office Guidance **Securitise**\ ❑ S 25(2)(c) Trade mark Act: Granting of security (fixed or floating) must be registered\ ❑ S 31 Patents Act: Special arrangements for patents in Scotland\ ❑ S 31(3) Patents Act - any patent or such application may be assigned and security may be granted over the application or right\ ❑ S 33 (4) Patents Act: A licence may be granted, under any patent or any application for a patents, for working the invention which is the subject of the patent or the application **Enforcement**\ ❑ Order to stop: Interim Injunctions/Interim interdicts, Permanent Injunctions/Interdicts\ ❑ Order to pay\ ❑ Damages (purpose is compensatory) or account of profits (discretionary equitable remedy)\ ❑ Must choose Island Records v Tring \[1996\] 1 WLR 1256\ ❑ Copyright additional damages "flagrant"\ ❑ Notts Healthcare NHS Trust v News Group \[2002\] EWHC 409 (Ch)\ ❑ can have them alongside account (Cala Homes v McAlpine \[1995\] FSR 818)\ ❑ Order to erase (trademarks, for the infringing sign to be erased or removed from any infringing goods/products)\ ❑ Deliver up, dispose infringing items\ ❑ Section 1 Administration of Justice (Scotland) Act 1972: Order for search to find evidence\ ❑ Mainly Court of Session\ ❑ Section 107 and 107A Copyright Design Patent Act criminal offence: Sheriff court **Injunction/interdict: interim and permanent**\ ❑ Interim: relative strength of cases and balance of convenience\ ❑ American Cyanamid Co v Ethicon Ltd \[1975\] AC 396, NWL v Woods \[1979\] 3 All ER 614\ ❑ S12(3) HRA no injunction where the defendant seeks to justify disclosure by reference to freedom of expression unless applicant likely to esablish at trial that publication should not be allowed Cream v Banerjee \[2005\] 1 AC 253\ ❑ Permanent power conferred by legislation, but at discretion of court Evalve v Edwards \[2020\] RPC 13 -- court reluctant to decline to grant injunction- finds then most cases in public interest\ ❑ Grant v Lidl \[2021\] CSIH 38 -- Scottish/English/UK\ ❑ Can grant orders against in intermediary -- centre of web ISPs Cartier v BSB \[2016\] ETMR 43 and UPC v Constantin \[2014\] ECDR 12\ ❑ Duchess of Sussex v Assoc News \[2021\] FSR 16 good eg of flexibility of orders which can be explored around copyright and publication: declaration (yes), injunction (no), statement that there was infringement (yes) **Damages**\ ❑ The Award for damages seeks to compensate for the loss or injury caused by an infringement\ ❑ Section 96 (2) Copyright, Designs and Patents Act, Section 61 (1) (c) Patent Act, Section 14 (2) Trade Mark Act\ ❑ Central principles of assessment of damages are set out in General Tire and Rubber Co. Ltd v Firestone Tyre and Rubber Co. Ltd (1976) RPC 197 (discussed under patents)\ ❑ Lost sales, lost royalties, lost licence fee\ ❑ Consequential loss (Geber Garment Technology Inc v Lectra Systems ltd (1997) RPC 443 (CA)\ ❑ See also, Intellectual Property (Enforcement, Etc) Regulations 2006 **Additional Damages/Copyright\ **❑ Additional damages awarded in addition to an award of 'normal' damages\ ❑ Section 97, Copyright Designs and Patents Act\ ❑ Can only claim additional damages if damages (as outlined in the previous slide) are claimed\ ❑ Ravenscroft v Herbert (1980) RPC 193, Redrow Homes Ltd v Bett Brothers Plc (1999) 1 AC 197\ ❑ Where damages are not granted, additional damages are also declined\ ❑ Not possible to claim additional damages with an account of profits\ ❑ Court awards additional damages based on the flagrancy of infringement and any benefit that may accrue to the defendant by the infringement\ ❑ Nottinghamshire Healthcare NHS Trust v News Group Newspapers Ltd (2002) EWHC 409 (Ch)\ ❑ According to the Pumphrey J, 'if this sum \[10,000\] exceeds the sum appropriate under Section 97 (2) having regard to the benefit of the defendant, then no further infringement of this kind will take place' **Accounts of Profits**\ ❑ Equitable remedy: calculates profits made by the defendant resulting the infringement (not the loss caused to the claimant)\ ❑ Celanese International Corp v BP Chemicals Ltd 'The defendant is treated as if he/she conducted his/her business and made profits on behalf of the plaintiff'\ ❑ Main point is: what profits were made because of the actual infringing activity\ ❑ A claimant cannot seek both an award of damages and an order for an account of profit. Must choose between them. Claimant is entitled to information from defendant, including financial records\ ❑ Island Records v Tring International Plc (1996) 1 WLR 1256 **Delivery Up and Disposal**\ ❑ Order of delivery up requires delivery up of goods which are in the UK and within the defendant's custody, power or control on the day that the order is made\ ❑ Mayne Pharma v Pharmacia Italia (2005) EWCA Civ 294\ ❑ An application may be made to the court for an order of disposal, where infringing goods have been delivered up\ ❑ Courts may order the infringing goods to be destroyed, forfeited to the owner of the IP or otherwise dealt with\ ❑ Section 114, Copyright Designs and Patents Act, Section 61 (1) (b) Patent Act, Section 19, Trade Mark Act **Alternative Dispute Resolution**\ ❑ Future Disputes: WIPO Arbitration Clause "Any dispute, controversy or claim arising under, out of or relating to this contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules. The arbitral tribunal shall consist of \[a sole arbitrator\] \[three arbitrators\]. The place of arbitration shall be \[specify place\]. The language to be used in the arbitral proceedings shall be \[specify language\]. The dispute, controversy or claim shall be decided in accordance with the law of \[specify jurisdiction\]." **Alternative Dispute Resolution\ **❑ Existing Disputes: WIPO Arbitration Submission Agreement\ ❑ We, the undersigned parties, hereby agree that the following dispute shall be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules:\ ❑ \[brief description of the dispute\]\ ❑ The arbitral tribunal shall consist of \[a sole arbitrator\]\[three arbitrators\]. The place of arbitration shall be \[specify place\]. The language to be used in the arbitral proceedings shall be \[specify language\]. The dispute shall be decided in accordance with the law of \[specify jurisdiction\]. **Summary**\ ❑ Understand the subject matter, type of IP and rights conferred\ ❑ Dealings can take various forms\ ❑ Development of products\ ❑ Assignments\ ❑ Licenses\ ❑ Security\ ❑ Enforcement