An IPSOC Q&A with Mr Justice Birss

IPSOC, the society for junior IP lawyers, recently had the pleasure of a Q&A with Mr Justice Birss.

The questions covered a wide range of issues from recent developments in the law of patents, copyright and image rights to FRAND licensing. The only topic we sadly didn’t touch on was bees but fear not, you can read about his bee keeping skills here.

After an introduction by Anna Rawlings, Birss J was reminded that his career began on the consulting side of Arthur Anderson (now Accenture).  Anderson is an interesting brand story.  There was an arbitration between the accountancy and consultancy sides of the business as to which part should be entitled to use the name ARTHUR ANDERSON.  The consultants won but the victory was short lived. The Enron scandal hit shortly after the arbitration was resolved. As Anderson were Enron's accountants, the brand was seriously tarnished and the Accenture rebrand of the consultancy business began. A nice introduction to the evening and a reminder of both the value of a brand and how quickly that brand value can vanish.

Image rights

Before getting into the Q&A, Birss J gave a quick overview of the recent changes in the world of image rights in England.  Image rights in England tends to be based on the law of passing off and more specifically false endorsement.  Birss J presidedover both the Betty Boop case (about character merchandising) - see the IPKat here - and more recently the Rihanna T shirt case - the IPKat's analysis of the Court of Appeal decision is here.

In Birss' view, his decisions did not represent a sea change in the law but rather a willingness to consider the evidence  that a significant number of people had been deceived.  As he put it "if people have been conned, that’s passing off".

In his view, a dedicated image rights statute was not necessary as the law is sufficiently flexible to get you to the desired result. If you don't have a reputation like Rihanna, privacy and data protection can be used instead. The damages may not be great but the desired result of stopping the use of the image can be achieved.

Are we out of step with the rest of Europe where personality rights and parasitism offer stronger protection over image rights? 

We’re fine as we have lots of different means of reaching a fair conclusion. As Birss J noted, it’s not a competition to see who can offer the most rights!

Patents and FRAND licensing

The discussion then turned to patents and FRAND licensing.  Birss would not be drawn on his views of the Supreme Court's decision in Eli Lilly v Actavis (see the IPKat here - the 109 comments on the post is a good indication of how controversial this decision has been). 

Another recent controversial decision concerns the Unwired Planet FRAND litigation (see the IPKat here). This is about the terms on which standard essential patents should be granted. One of the audience questions concerned the decision to grant a global FRAND licence. As Birss noted, if patent licences are mostly global - this was the clear conclusion from the evidence he was provided - that’s a FRAND feature which should be taken into account when deciding what are FRAND terms. As a matter of policy, he noted that having disputes litigated in one jurisdiction and applying elsewhere is normal and accepted outside the world of IP.  IP is one of the last areas of law where we worry about what’s being said in other jurisdictions.  He recalled the late night headaches that parallel jurisdictions for IP rights can create.

Designs

Designs were not given much attention but, as he noted, they are really important for businesses but we have overcomplicated the rights available by having too many options and not enough clarity.

Own name defence

The recent CJEU reference in Skykick (see IPKat here) was given a name check.  It remains to be seen what will be decided regarding the removal of the own name defence for companies.  In Birss' view, the own name defence is fair enough for people who should be able to trade under their own name (unless restricted contractually from doing so) but it is more problematic with a company where you can choose the company name.  [Warning - Birss J made it clear at the start that any comments should not be taken as an indicator of how he will decide a case in the future. So take these comments with a pinch of salt.]

IPEC and Shorter/Flexible Trials Schemes

IPEC has levelled the playing field for IP protection “it’s really cool”.  The great thing about IPEC is that now parties of all sizes can be represented in court and get the attention they deserve.

After the event Birss J commented on the two case management schemes which are currently being piloted in the Rolls Building: the Shorter Trials Scheme and Flexible Trials Scheme. Both have been very well received and embraced beyond the world of IP. They will hopefully be rolled out on a permanent basis before too long.

Shout out to Osborne Clarke for kindly hosting the event.