Ice Cream Van Case shows the Value of Design Registration

Royal Courts of Justice, London

Photo Wikipedia

The decision  of Mr Justice Arnold in  Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and others [2014] EWHC 4242 (Pat) (17 Dec 2014) shows the value of design registration. It costs relatively little and is very quick because there is no substantive examination unlike patents and trade mark registration. Unlike claims for unregistered design right infringement there is no need for the registered proprietor to prove copying or knowledge of the infringement on the part of the defendant. However, if copying and knowledge of the registration can be proved the infringer may now be prosecuted under s.35ZA of the Registered Designs Act 1949.

In the case that I just mentioned above a Crewe specialist vehicle converter successfully sued a company in Leeds and the individuals behind it for registered design, unregistered design right and trade mark infringement. I have set out the details in Designs in Ice Cream Vans: Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and Others 27 Dec 2014 NIPC Law.

The claimant converts commercial vehicles into ice cream vans. One of its models, the Whitby Mondial, wis based on the Mercedes Sprinter. The company registered the design of the Mondial under the Registered Designs Act 1949. Because all ice cream vans share a lot of common features and designers are constrained by technical, commercial, regulatory, cost and practical restraints the registration afforded a relatively narrow scope of protection but it was enough for the purposes of this litigation.

The judge found that the defendants had purchased one of the claimant's converted vans, made moulds from its parts and used those moulds to make a competing product called the Millennium. The copying was so blatant that the defendants even reproduced the claimant's trade mark.

Design registration is relatively straightforward and many businesses do it for themselves. You can find a lot of information on the Register a Design page of the Intellectual Property Office website. It is usually a good idea to instruct a patent or trade mark attorney to assist you. If you do not already have a patent or trade mark attorney you can search the databases of the Chartered Institute of Patent Attorneys or Institute of Trade Mark Attorneys through their websites. Alternatively, you can call my clerk Steve or George on 0161 850 0080 and he can give you the names of several with whom I or my colleagues have worked successfully in the past. Probably nobody is in a better position to judge whether an attorney knows his or her stuff than counsel for the reasons I explained in IP Services from Barristers 6 April 2013 4 to 5 IP.

If you want to discuss this case or design registration in general give me a call on 0161 850 0800 during office hours or use my contact form.

I wish all my readers a happy New Year.

Let's Take this Opportunity with Both Hands

Granada TV Studios, the Site for the Factory Arts Centre

Photo Wikipedia

There has been a lot of talk about "the Northern Powerhouse" lately.  In my article on the Northern Futures Summit in my IP Yorkshire blog I compiled a bibliography of articles that I and others have written about it. Now there is a commitment from HM Government to make it happen. On page 48 of his Autumn Statement, George Osborne, a local MP as well as Chancellor of the Exchequer, announced that HMG will invest over £7 billion in transport, science and technology and the arts and leisure to create a "Northern Powerhouse".

The transport investment will include upgrading the trans-Pennine rail system which may include a high speed railway ("HS3") and improvements to the Liverpool docks and across the Pennines. Bidders for the new rail franchisees will be required to increase capacity by 20% with new rolling stock and to improve station facilities.There will be similar improvements to road and rail connections in Yorkshire and the North East.

Investments in science and technology will include a centre for materials science based at Manchester University with satellites in Leeds, Liverpool and Sheffield, a Cognitive Computing Research Centre in Daresbury, a new National College for Onshore Oil and Gas in Blackpool and an Energy Security and Innovation Observing System at Thornton. The Chancellor gave details of these developments when he visited the Museum of Science and Technology on 8 Dec 2014 (see the press release "Chancellor puts science at heart of Northern Powerhouse" 8 Dec 2014).

Investments in the arts will include a Great Exhibition in the North to celebrate art, culture and design in the region, a massive new theatre and arts centre on the site of the Granada studios to be known as "The Factory Manchester" and various arts projects in all the Northern cities to commemorate the First World War. Of all the investments announced by the Government it is The Factory that has aroused most interest. On its website Manchester City Council wrote:

"The Factory Manchester will play an integral part in helping Manchester and the North of England provide a genuine cultural counterbalance to London, supporting the city and region's growth."

The Council estimates that the Factory Manchester will create 2,300 jobs and generate revenues of £134 million per year within 10 years.

This investment in communications, manufacturing, science, technology and the arts is bound to result in new businesses, designs, inventions and works of art and literature all of which will require legal protection. We shall continue to advise on the legal issues that may arise from time to time. Should anyone wish to discuss this article, the Northern Powerhouse or the Autumn Statement in general he or she should call me during office hours on 0161 850 0080 during office hours or click my contact form.

Further Reading

8 Dec 2014	HM Treasury	Chancellor puts science at heart of Northern Powerhouse
3 Dec 2014	HM Treasury	The Autumn Statement
3 Dec 2014	Jennifer Williams	Autumn Statement: Chancellor's £1.3bn Christmas bonus for Manchester	Manchester Evening News
3 Dec 2013	Jennifer Williams	New multi-million pound theatre and £250m science institute to be built in Manchester, Chancellor confirms	Manchester Evening News
3 Dec 2014	BBC	Manchester to get new £78m theatre named The Factory
8 Nov 2014	Jane Lambert	Northern Futures Summit	IP Yorks

Start Smart

Lowry Hotel

Photo Wikipedia

I first mentioned the Business Growth Hub on the 31 Dec 2012. It describes itself as

"A community for ambitious growing businesses to thrive, with the support and expertise of first class industry leaders brought together by the Business Growth Hub ,"

The Business Growth Hub was established in 2011 and is accountable to the Greater Manchester Local Enterprise Partnership. On the 22 Oct 2014 it organized Manchester's first ever Venturefest (a rare example of Manchester following a lead from Yorkshire) and on Friday 7 Nov 2014 it held its first Start Smart Conference at The Lowry Hotel.

The conference was directed at those thinking of setting up their own businesses.  Having attended the Northern Futures Summit 8 Nov 2014 IP Yorkshire and Ballet Black's Triple Bill 7 Nov 2014 Terpsichore in Leeds the day before I arrived at the morning coffee break which meant that I missed Prof Lynn Martin of the Centre for Enterprise at Manchester Metropolitan University, Isla Wilson of Ruby Star Associates and Gemma Roe of Rotunda Living. However, I did catch futurologist Tom Cheeswright of Book of the Future and Justin Urquhart Stewart of Seven Investment Management who delivered interesting and in a sense complementary presentations. 

My ears pricked up when Mr Urquhart Stewart said that he had been a barrister which prompted me to ask him why in the Q & A session at the end. I observed that this was rather a good time to be a barrister as the Legal Services Act 2007 had opened up the industry to competition. I added that the Bar built had always outsourced its management and marketing operations to clerks while getting on with the business which was a business model that both he and Mr Cheeswright had commended.  Mr Urquhart Stewart replied that I was a very rare breed indeed. In his experience most barristers and indeed solicitors were foundering. He said that his brother who was responsible for running a set of chambers elsewhere in the country had engaged the services of a marketing guru without thinking about who they were marketing to or what they were marketing. However, he did concede that there was something in my observation and that lawyers (like anyone else) should respond to change by assessing what they were good at and offering their services to those who needed their skills rather than bemoaning changes in the market.

For the last two hours we attended business breakout master classes in accessing finance, cyber security, marketing Manchester and IP.  I had put my name down for IP and accessing finance. The IP master class was given by Tom Lambert and Rachel Nicholls and I am ashamed to say that I probably made a confounded nuisance of myself (for which I apologize) by asking questions of second medical use when Tom was talking about obviousness and the unitary patent as well as making an observation about confidentiality. They both spoke well and I learned something new from Rachel, namely that the tick that Nike has registered as a trade mark may derive from a fold on the dress of a statute of the goddess. I never made the access to funding seminar because I was waylaid by Sean Randles by webvm who taught us all about making YouTube videos. Another excellent presentation.

During the day I met some interesting entrepreneurs including a young chemical engineer who was starting her own industrial waste disposal consultancy and had brought her little boy with her. Regrettably she had forgotten her business cards but I gave her one of mine and I do hope that she gets in touch with me for I can think of several possible areas for collaboration. I also met Gyles Denn, the Business Growth Up's Start-up Manager who impressed me considerably and we discussed possible ways in which I can contribute to the business community of my native city.

Altogether it was an excellent day. Comparing it to Northern Futures the day before we may not have had the Deputy Prime Minister, Mayors and Council Leaders or leading thinkers like Jim O'Neil, Ed Glaeser or Tony Travers but we got some really useful practical tips and information which we can use in our businesses tomorrow. If anyone wants to discuss this article or entrepreneurship in general, he or she should call me during office hours on 0161 850 0080 or click my contact form.

TechNorth

wonder if TechNorth from @North_Futures will be interested in forming links with the local #iplaw community @nipclaw https://t.co/TRpQID2DCw
— Barbara Cookson (@filemot) October 24, 2014

I am grateful to Barbara Cookson for alerting me to the press release Deputy Prime Minister launches TechNorth.  According to the press release TechNorth is

"a major new Northern Futures project bringing the pockets of excellence in tech industries from across the North together to form an internationally renowned virtual hub." 

The idea is to

"co-ordinate the many pockets of excellence dotted around the region – including the existing digital technology expertise of Manchester, Leeds, Sheffield, Liverpool and the North East tech cluster. It will do what Tech City UK has done for East London – put it on the international map."

Not surprisingly, Rory Cellan-Jones, the BBC's technology correspondent,  has expressed some caution ("Can a northern tech cluster take off? 23 Oct 2014 BBC).

Tech City succeeds because skills, capital, customers and suppliers are concentrated in the same place. It is one of the consequences of agglomeration.  If there is to be a technology cluster in the North the conditions that created Tech City - in other words, agglomeration - have to be created here.

As it happens I was at the  "International Economic Conference" in Leeds on 4 July 2014 where Nick Clegg announced the launch of Northern Futures (see Power. Performance. Potential. Leeds Economic Conference 5 July 2014).  In his speech Clegg called for the great city regions (or metros) of the North to work together to create a Northern agglomeration.  As you can see from my article, though Clegg spoke quite a lot of sense his message to local politicians seemed to fall on deaf ears.

A couple of things have happened since 4 July 2014 that may change such attitudes. First, the Scottish referendum forced the government to promise the package of powers to the Scottish Parliament that are known as "devo max". That has created something of a backlash in the rest of the UK which will only be satisfied when similar powers are devolved to Wales and Northern Ireland and the regions of England. Secondly, the City Growth Commission of the RSA (Royal Society for the encouragement of Arts, Manufactures and Commerce) published Unleashing Metro Growth: Final recommendations of the City Growth Commission on 23 Oct 2014.  The report envisaged six "powerhouse super city regions" by 2030 namely London, North, Midlands, Central Scotland, North East and Severn. The North super city region would consist of Greater Manchester, West Yorkshire, South Yorkshire and Merseyside with a combined population of 6.9 million and a GVA at 21012 prices of £232 billion (an uplift of £19.4 billion).

The idea of a northern agglomeration has been met with scepticism and outright hostility in some circles. "We don't want some kind of northern goo" tweeted someone in response to one if my earlier articles. But agglomeration need not mean loss of identity or the abandonment of local loyalties.  Look at London football teams. There has never been a "London United". Teams like Arsenal, Chelsea, QPR, Tottenham and West Ham which compete in the Premier League are based in districts of Greater London. London is a network of villages and the sense of belonging to the "East End" or "South London" is arguably as strong as county loyalties in the North.

Further Reading
For a bibliography on Northern regeneration and devolution, see my article Northern Futures Summit 8 Nov 2014 IP Yorkshire

CPD Event - "The Intellectual Property Act 2014 - What it means for you and your clients" Liverpool 29 Sept 2014

Jane Lambert

On the 1 Oct 2014 most of the sections of the Intellectual Property Act 2014 will come into force (see "The Intellectual Property Act 2014 (Commencement No. 3 and Transitional Provisions) Order 2014" 6 Sept 2014). The Act makes substantial changes to patent, registered design and unregistered design right law which I summarized in "Reflections on the Intellectual Property Act 2014" 7 June 2014 4-5 IP Tech. 

To discuss those provisions and their practical effect for businesses and their investors and professional advisers I shall be leading a seminar at the offices of QualitySolicitors Jackson & Canter at 88 Church Street, Liverpool, L1 3AY at 16:00 on 29 Sept 2014. Everybody is welcome - artists, bankers, business angels and private equity investors, chartered accountants and other business advisers, designers, entrepreneurs, inventors, patent and trade mark attorneys, solicitors and counsel. All have an interest in this statute and its implementation.

The boardroom at Jackson & Canter has space for only 20 people so it is essential to book. You can do that in two ways. You can call my clerk George on 020 7404 5252 or you can book on-line.  Although there is no charge for the event I shall be passing round the wig for the Lord Mayor's charities. I learned about them yesterday from the Lady Mayoress herself at a wonderful series of ballet, jazz and contemporary classes given by KNT Danceworks in the magnificent ballroom of Liverpool town hall (see "Not every class that you can use Lord Canning's eyes for Spotting" 9 Sept 2014 Terpsichore). At the request of Philip Hannay of Cloch Solicitors in Glasgow we shall try to broadcast the talk or upload a film of my presentation to YouTube.

Our chambers is already accredited to issue CPD points for the SRA and BSB and George is looking into the possibility of obtaining accreditation from IPReg.

Post Script

Liverpool town hall has posted a lovely pic of the Lord and Lady Mayoress and our dance teacher to twitter which I have embedded below.

Karen from @danceliverpool with @CllrEricaKemp & @RachelPlant5 @TownHallLpool pic.twitter.com/u46yC2z0Sf
— Liverpool Town Hall (@TownHallLpool) September 8, 2014

How the Law protects Film Making

Media City, Manchester where much of the UK creative industry is located

Photograph Wikipedia

Jane Lambert

The announcement on Tuesday of a £13 million investment by Vistaar Productions in a post production facility in Manchester coinciding with the Deputy Prime Minister's trade delegation to India is a good time to consider the legal protection of film making in the United Kingdom.

Copyright subsists in films pursuant to s.1 (1) (b) of the Copyright, Designs and Patents Act 1988 ("the CDPA").  It is a property right that confers upon the owner the exclusive right to do a number of restricted acts. Those acts include:

• copying the film;
• issuing copies to the public;
• renting or lending the film to the public;
• performing, showing or playing the film in public;
• communicating the film to the public;
• making an adaptation of the work or doing any of the above in relation to an adaptation.

Anyone who does any of those acts without the licence (that is to say the permission) of the copyright owner infringes the owner's copyright. In England and Wales the copyright owner can sue the person who does those acts without his or her permission ("the infringer") in the High Court or the Manchester, Liverpool and certain other county courts for damages (compensation for any losses the copyright owner may have sustained) or, alternatively, the surrender of any profits that the infringer may have gained from his or her wrongdoing together with an injunction (or order of the court)  to cease and not repeat the infringement or risk a heavy fine or imprisonment.

A "film" is defined by s.5B (1) as "a recording on any medium from which a moving image may by any means be produced". The sound track accompanying a film shall be treated as part of the film for the purposes of this legislation but this provision does not affect any copyright that may subsist in the sound track as a sound recording. The definition of a film should be contrasted with the definition of a photograph and a broadcast. S.4 (2) defines a photograph as

"a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film."

A  broadcast is defined by s.6 (1) as

"an electronic transmission of visual images, sounds or other information which –
(a) is transmitted for simultaneous reception by members of the public and is capable of being lawfully received by them, or
(b) is transmitted at a time determined solely by the person making the transmission for presentation to members of the public,"

but does not include certain types of internet transmissions.

There is no system of copyright registration in the United Kingdom. Copyright subsists automatically in a film from the moment it is made so long as the following nationality, residence or publication qualifications are met. The first way in which those requirements may be met is if the producer or principal director is a British citizen or resides in the UK (see s.154 (1) CDPA). Those requirements are also met if the producer or principal director is a citizen or resident of some other country that provides copyright protection for the works of British citizens or residents under a treaty or bilateral agreement with the British government. As most countries are party to the Berne Convention, Universal Copyright Convention or TRIPS (Agreement on Trade-Related Aspects of Intellectual Property Rights) that includes India, the USA and most if not all other film making countries. The requirements are also met if the film is first published in the UK or one of those other countries under s.155 (1) of the CDPA. Unlike artistic, dramatic, literary and musical works there is no requirement for originality for the subsistence of copyright in a film but s.5B (4) provides that "copyright does not subsist in a film which is, or to the extent that it is, a copy taken from a previous film."

Unless the producer and principal director are the same person a film is treated as a work of joint authorship - that is to say "a work produced by the collaboration of two or more authors in which the contribution of each author is not distinct from that of the other author or authors." The producer and principal director will own the copyright in their film unless they were employed to make the film under a contract of employment in which case their employer will own that copyright.

Subject to a number of exceptions, s.13B of the CDPA provides that copyright expires at the end of the period of 70 years from the end of the calendar year in which the death occurs of the last to die of the following persons -
(a) the principal director,
(b) the author of the screenplay,
(c) the author of the dialogue, or
(d) the composer of music specially created for and used in the film.

It is important to note that different rules apply to films made for the Crown, Parliament or international organizations.

The director of a film also has the right to be identified as the director, to object to derogatory treatment of his or her film and the right not to have a film attributed to him or her falsely. These rights are known as moral rights and are subsist quite separately from the copyright in the film.

It is important to note that the film copyright in a film is only one of a number of copyrights that will involved in making the film. For instance, copyright is likely to subsist in the screenplay as a dramatic work and in the score for the sound track as a musical work. Design right is likely to subsist in the the designs of the props and costumes. Each of the actors is a performer with the right to object to the filming, taping or broadcasting of his or her performance. The studio or distributors of the film will almost certainly register trade marks. 

Francis Gurry, Director-General of the World Intellectual Property Day (the UN specialist agency for intellectual property) discussed the IP issues film making in "WIPO Director General Francis Gurry on 'Movies - A Global Passion." He made that video as a contribution to World IP Day which this year focussed on the cinema. There us more discussion on IP and cinema on the World IP Day page on the WIPO website.

This is a complex topic upon which everyone involved in film making and distribution requires specialist advice. We are lucky that one of our members, Thomas Dillon, has specialist expertise which he gained as Vice President and Deputy General Counsel EMEA in the Brussels office of the Motion Picture Association. We are also fortunate in sharing space with Atlas Tax Chambers who can advise on the tax incentives and other allowances that are available in this country. Should you wish to discuss this article further call me on 0161 850 0080 during office hours or message me through my contact form. You can also tweet me, write on my wall or send me a message through G+, Linkedin or Xing

What happens to the Judicial Infrastructure if the North becomes connected?

Yesterday the city regions of Leeds, Liverpool, Manchester, Newcastle and Sheffield published One North A Proposition for an Interconnected North. In it the leaders of Leeds, Manchester, Newcastle and Sheffield city councils and the Mayor of Liverpool wrote:

"The 15m population of the North is larger than London and almost as big as the Netherlands but our economy is not doing as well. Our ambition is for the North to be a dynamic counterweight and complement to the London and South-East economy, a destination of choice for investors, helping re-balance and grow the national economy in the decades ahead."

To achieve that ambition, the leaders and mayor propose "a transformation of connectivity at the heart of an aim to maximise economic growth in the North."

The leaders and mayor want a new high speed railway linking their cities and other population centres on the lines of the HS1 link in Kent shown above as well as improvements to, and better management of, the road network. They list the expected benefits as follows:

• "Stimulating business investment and innovation by supporting economies of scale and new ways of working.
• Achieving agglomeration economies by bringing firms and their employees closer to business rivals and partners.
• Enabling firms to access a larger labour supply and providing wider employment opportunities for workers and those seeking work.
• Increasing competitiveness through access to new and larger markets with the benefits of increased labour market specialisation.
• Reducing trading costs and using more efficient logistics networks.
• Strengthening the existing comparative advantages of the North as a place to do business."

All this is very much in line with my own thinking which I expressed in a number of articles in this and other blogs (see "Power. Performance. Potential. Leeds Economic Conference" 5 July 2014) but, more importantly, it is also in line with the utterances of senior figures in the Conservative, Labour and Liberal Democrat parties. It follows that there must be  good chance that the high new speed railway and improved road links will be built.

If those links are built and the  benefits mentioned above materialize there is likely to be an acceleration of business activity resulting in increased demand for intellectual property services of all kinds. As I noted in "Are Southerners really more innovative than we are?" 20 July 2014 and "Well at least a Yorkshireman invented Cats' Eyes" 20 July 2014 the North of England trails London and the Home Counties in the number of patent applications. If business investment and innovation are to be stimulated there should be far more applications from this region. Inevitably there will be more disputes which businesses will wish to resolve locally.

Until its merger with the Chancery Division the Court of Chancery of the County Palatine of Lancaster had jurisdiction to hear patents and design cases in Liverpool and Manchester. Although other intellectual property claims were brought regularly in the Leeds, Liverpool, Manchester, Newcastle and Preston District Registries and County Courts until October 2010 (and in theory still can be) patent, registered design, plant breeders' rights and semiconductor topography cases have been reserved to the Patents Court and the Intellectual Property Enterprise Court ("IPEC") and its predecessor the Patents County Court.

Page 15 of the One North proposition sets out a timescale for building the transport links and other improvements by the next Preston Guild. By that time the Unified Patent Court should be up and running. Art 7 (4) of the Agreement on a Unified Patent Court permits contracting countries to designate up to 4 local divisions of the Court of First Instance and the German Federal Minister of Justice has already indicated that Germany will take advantage of that provision by setting up local divisions in Düsseldorf, Hamburg, Mannheim and Munich (see "Lokalkammern in Düsseldorf, Hamburg, Mannheim und München Europäische Patentgerichtsbarkeit auf gutem Weg" 14 March 2014 German Federal Ministry of Justice website). If the North is to become "a dynamic counterweight and complement to the London and South-East economy, a destination of choice for investors" it is essential to establish a local division in Manchester or Leeds.

IPEC is already part of the High Court and its judges have indicated that they will sit anywhere in England and Wales. There would be no difficulty in appointing a second circuit judge and at least one district judge to sit permanently in the North.

In 1988, well before the 1992 Preston Guild, Henry Carr QC and I debated the case for a local IP court for the North of England in the Manchester Club. With any luck we shall have such a jurisdiction by the next Guild.