THURSDAY -- WHAT A BUSY DAY

1 Two coups for the Butterworths All England Direct:

* Clearsprings Management Ltd v Businesslink Ltd and another [2005] EWHC (Ch) 1487, a Chancery Division decision of Christopher Floyd QC, sitting as a deputy judge of the High Court.

Clearsprings provided accommodation and related services to asylum seekers; nearly all its turnover came from a contract it had with the National Asylum Support Service, a department of the Home Office. Apart from providing accommodation , Clearsprings was obliged to report certain information to the Home Office. Businesslink was a small software development company which Clearsprings identified as a suitable contractor to develop its computer system. It wanted Businesslink to develop a web-based database system giving it access to a database. To develop this software, Clearsprings gave Businesslink information concerning its business practices, thus enabling Businesslink to create the CMIS computer system. It was agreed that Businesslink owned the copyright in CMIS. In the course of subsequent proceedings between the parties, the court was required to determine what rights in law or equity, if any, Clearsprings had in CMIS's copyright.

Clearsprings said it was an implied term of the contract between the parties that it would own the copyright by assignment or that it would at least enjoy an exclusive licence. Businesslink accepted that Clearsprings had a licence to use CMIS in its own business but argued that it should not be held to have implied agreed to assign or grant an exclusive licence of the copyright: the effect of an exclusive licence would restrict Businesslink from making use of the generic code incorporated in CMIS, which owed nothing to Clearsprings' procedures.

Christopher Floyd QC ruled that, on the facts, it was unnecessary to imply into the contract any term giving Clearsprings exclusivity in relation to the copyright in CMIS. The only terms which were necessary to give the contract business efficacy were (i) a licence for Clearsprings to use the software for the purposes of its business and (ii) a restriction on Businesslink using the information about Clearsprings' operating procedures for purposes other than those of Clearsprings. All Clearsprings had was an implied non-exclusive, personal licence under the copyright in CMIS, with no right to sub-license. That licence was perpetual, irrevocable and royalty free. Clearsprings was also allowed to repair, maintain, and upgrade the CMIS in accordance with the requirements of its business of providing accommodation, care and related services to asylum seekers.

The IPKat says this decision is the most detailed yet on which terms may or not be implied into a software commission contract. He congratulates the court on taking the business efficacy rule so far.

* Hewlett-Packard Development Company LP and another v Expansys UK Ltd [2005] EWHC 1495 (Ch), one of the last IP decisions from Mr Justice "Not a happy bunny" Laddie.

HP made and sold electronic personal organisers under the trade marks HP and iPAQ. Both those marks were registered for electronic personal organisers. HP’s personal organisers were sold in many countries of the world including Malaysia and Pakistan. Expansys, an online reseller of electronic equipment, found a supply of HP's organisers bearing the HP and iPAQ marks in those countries and tried to sell them in the UK. HP said this infringed its trade marks and that Expansys had no real or credible defence, applying for summary judgment. Expansys denied infringement and said that (i) HP weren't entitled to summary judgment since they were too slow in bringing the proceedings; (ii) it was arguable that HP had given an unequivocal renunciation of their right to object to importation of those grey imports and (iii) since HP's behavour was anti-competitive , they were not entitled to use their registered trade mark rights against otherwise unlawful importation of their goods.

Laddie J allowed the application since none of the defences had a real prospect of success at the trial. Mere delay was not enough to give rise to a triable defence. The facts relied on came nowhere near to unequivocally demonstrating that HP had renounced its rights: far from consenting to importation, HP objected to it and Expansys was aware of that at all material times. Finally, if there was an abuse of a dominant position, what was prohibited was the abuse, not the dominant position or the abuser’s ability to continue in the relevant market and to exploit his various property rights.

The IPKat notes that Laddie J explained his decision on the competition in the following terms: the enforcement of HP's trade mark rights did not determine whether or how HP fixed prices in the UK; nor could Expansys show any relevant nexus between the alleged breaches of competition law and enforcement of HP's intellectual property rights.


2 Should patent agents be judges?

The Telegraph reports that Lord Falconer has proposed opening up the judiciary in England and Wales so that you don't have to be a barrister or a solicitor in order to be serve as a judge. This would leave it open to patent agents and trade mark attorneys to be appointed to the judiciary. The Lord Chief Justice, Lord Woolf, is apparently not impressed. The article continues:

"The public needs to have confidence in judges who more closely reflect the diversity of the nation and who have a real understanding of the problems faced by most people," Lord Falconer said yesterday.

Trade mark attorneys? Patent agents? Who is Lord Falconer kidding?

I have no wish to offend intellectual property specialists, who no doubt perform an excellent service for their commercial clients. But why does filing an application to register a trade mark or conducting litigation in the Patents County Court give you a better understanding of the problems faced by estranged parents seeking contact with their children or debtors being evicted from their homes?".

The IPKat doubts that IP specialists would be deployed out of position, as it were, but wonders whether such appointments would be necessary or desirable even for dealing with IP disputes. Merpel adds, "Do many patent agents and trade mark attorneys have much experience of arbitration? And are they good at it? That might give us an idea of their inherent suitability to serve as judges".


3 Selenium-Ace

In Case T-312/03 Wassen International Ltd v OHIM, Stroschein Gesundkost GmbH the Court of First Instance has ruled that the Community trade mark applicant's SELENIUM ACE word mark, for goods and services in Classes 3, 5 and 42, was likely to cause confusion with the opponent's earlier figurative German mark (illustrated here) for much the same goods.


4 ALADDIN/ALADIN

In Case T-126/03 Reckitt Benckiser (Espans) SL v OHIM, Aladin Gesellschaft the Court of First Instance annulled the Board of Appeal's decision on a complex "proof of use" issue relating to whether the opponent's mark had been used or not. Time is too pressing for the IPKat to deal with this case in detail, but it looks quite interesting and he will be reading it at leisure over the weekend. If anything exciting is said in it, he'll let you know.


5 A packet of fun

In Case C-173/04 Deutsche SiSi v Werke GmbH, Advocate General Luis-Jarabo Colomer of the European Court of Justice has given his Opinion on whether the Court of First Instance was correct to reject SiSi's application to register as a Community trade mark a package shape for soft drinks. Alas, it's not in English, but can anyone tell the IPKat what this means:

"V – Kostenentscheidung

61. Gemäß Artikel 122 in Verbindung mit Artikel 69 § 2 der Verfahrensordnung des Gerichtshofes, der gemäß Artikel 118 auf das Rechtsmittelverfahren Anwendung findet, ist die unterliegende Partei zur Tragung der Kosten zu verurteilen. Wenn der Gerichtshof entsprechend meinem Vorschlag die von der Rechtsmittelführerin geltend gemachten Rechtsmittelgründe zurückweist, sind ihr die Kosten des Rechtsmittels aufzuerlegen.

VI – Ergebnis

62. Aus den genannten Gründen schlage ich dem Gerichtshof vor, das von der Rechtsmittelführerin gegen das Urteil des Gerichts erster Instanz vom 28. Januar 2004 in den verbundenen Rechtssachen T‑146/02 bis T‑153/02 eingelegte Rechtsmittel zurückzuweisen und der Rechtsmittelführerin die Kosten des Verfahrens aufzuerlegen".

6 En garde!

Last but not least, the ECJ has ruled in Case C-192/04 Lagardère Active Broadcast v Société pour la perception de la rémunération équitable and others. In this case the Court was asked to rule on the making of royalty payments in certain cross-border situations. The ruling says it all:

"1. In the case of a broadcast of the kind at issue in this case, Council Directive 93/83/EEC on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission does not preclude the fee for phonogram use being governed not only by the law of the Member State in whose territory the broadcasting company is established but also by the legislation of the Member State in which, for technical reasons, the terrestrial transmitter broadcasting to the first State is located.

2. Article 8(2) of Council Directive 92/100 on rental right and lending right and on certain rights related to copyright in the field of intellectual property must be interpreted as meaning that, for determination of the equitable remuneration mentioned in that provision, the broadcasting company is not entitled unilaterally to deduct from the amount of the royalty for phonogram use payable in the Member State in which it is established the amount of the royalty paid or claimed in the Member State in whose territory the terrestrial transmitter broadcasting to the first State is located".

The IPKat will be studying the implications of this decision. Meanwhile, he's happy to hear from anyone with strong opinions on it.