27 December 2014

Leeds Ice Cream Van Makers lose Design and Trade Mark Infringement Claim

In Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and Others [2014] EWHC 4242 (Pat) (17 Dec 2014) a company in Leeds which converts commercial vehicles into ice cream vans and the individuals behind it were sued in the Patents Court by Whitby Specialist Vehicles Ltd for registered design, design right and trade mark infringement. I have discussed the case in detail in Designs in Ice Cream Vans: Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and Others 27 Dec 2014 NIPC Law.

The case was unusual in that it proceeded in the Patents Court which is a specialist court within the High Court for the trial of patent, registered design, semiconductor topography and plant breeders' right claims worth over £500,000. The case against the defendants was that they had bought one of the claimant's vans and used it as a template for making parts that they used to convert other vans. While any copying is serious it is unlikely that the damages or accountable profits will come close to the £500,000 figure. The usual forum for disputes of this kind is the Intellectual Property Enterprise Court ("IPEC") which I mentioned in Holding your Own - How to stop others from ripping you off if you are a Private Inventor 5 April 2014. There trials are completed in one or at most two days and the costs of  trial on liability are limited to £50,000. The costs in the Patents Court will be much higher.  Why the case was not transferred to IPEC is curious and that may be because nobody asked for such a transfer. That could be because the brothers and their company were unrepresented and the father, who was represented by Leeds solicitors and Manchester counsel, contested only his personal involvement in the infringement.

This case is worth reading for Mr Justice Arnold's analysis of the law relating to registered designs and unregistered design right infringement and the meticulous way in which he dissected the factual evidence against the father.  It is likely to be referred to in future cases on registered design and design right infringement. Finally, the claimant company has nothing to do with the seaside town. It is actually based in Crewe. It takes its name from its founder whose surname was Whitby.  If anyone wants to discuss this case or registered design and unregistered design right law with me after the Christmas holidays, call me on  01484 599090 or use my contact form.

22 December 2014

GOSH - a special IPR that never grows old

Peter Pan statute in Kensington Gardens
Photo Wikipedia

Last week Northern Ballet danced Peter Pan at The Grand theatre in Leeds. I saw it on Saturday. It was a brilliant production and I have reviewed it in my ballet blog (see Not too sure about Fairies but I certainly believe in Rachael Gillespie 21 Dec 2014). Peter Pan was written by J M Barrie who gave his rights in relation to the boy who never grew up to Great Ormond Street Hospital ("GOSH") (see "Peter Pan and the Hospital" on the hospital's Peter Pan website).

At the time of the assignment copyright subsisted in a literary work for the life of the author plus 50 years. Barrie died in 1937 so those copyrights would have expired on 31 Dec 1987.  The expiry of Barrie's copyrights coincided with the passage through Parliament of the Copyright, Designs and Patents Bill. Lord Callaghan of Cardiff took the opportunity to persuade his fellow law makers to insert a new Schedule 6 into the Bill for the benefit of GOSH (see Hansard HL Deb 10 March 1988 vol 494 cc 805-60 for Lord Callaghan's introduction and the debate on the amendment).  In his speech Lord Callaghan said:
"This new schedule would not revive the copyright. That would certainly not be the intention, the purpose or the effect of it. However, it would enable Great Ormond Street to continue to receive the royalties that have been paid under the copyright. But of course any right that the hospital used to have to refuse permission in connection with the work—I think that it was hardly ever refused—disappears and will continue to disappear. Nevertheless, the hospital will continue to receive royalties which, as your Lordships may know, are negotiated between the hospital and those who perform the play or who publish books from time to time. The purpose of the schedule is to provide for that to continue. I hope that that meets with your Lordships' approval. I am grateful for the support which I have had from noble Lords on all sides of the House. I know that the hospital appreciates what has been done."
The government accepted Lord Callaghan's amendment and it is now Schedule 6 of the Copyright, Designs and Patents Act 1988.

Paragraph 2 (1) confers on the trustees of the hospital a royalty in respect of any public performance, commercial publication or communication to the public of the whole or any substantial part of J M Barrie's play Peter Pan ("the work") or an adaptation of it. This provision creates a unique intellectual property for the hospital rather than a copyright as such.  This right cannot be assigned (see paragraph 7 (1)) or applied to any other purpose within the National Health Service (paragraph 7 (2)) and the cy-près rule does not apply (paragraph 7 (3)).

The exceptions that would have applied had copyright not expired continue to apply to this special IPR (see paragraph 3). Paragraph 4 provides that no royalty shall be payable for "anything done in pursuance of arrangements made before the passing of this Act."  This provision creates an anomaly in that it refers to arrangements made before the passing of the Act rather than its commencement. The Act was passed on 15 Nov 1988 but did not come into effect until 1 Aug 1989.  It is clear that royalties would not be payable for anything done in respect of Barrie's play between 31 Dec 1987 when copyright expired and the 15 Nov 1988 but it is not clear whether a royalty would have been due for arrangements made between royal assent and the commencement date. This difficulty is now entirely hypothetical because any claim by the trustees would now be statute barred. Moreover, Lord Callaghan remarked that many theatrical promoters continued to donate to GOSH after copyright expired.

Paragraph 6 provides that sums received by the trustees by virtue of this Schedule, after deduction of any relevant expenses, shall be held by them on trust for the purposes of the hospital. Disputes as to the amount of the royalties payable to the trustees are to be referred to the Copyright Tribunal under paragraph 5.

These provisions apply only to the United Kingdom. The minimum term of copyright in the rest of the EU was extended to 70 years by the term directive (Council Directive 93/98/EEC of 29 October 1993 harmonizing the term of protection of copyright and certain related rights OJ L 290, 24.11.1993, p. 9–13). That extended term expired on 31 Dec 2007 except in Spain where it continues until 2017 (see Publishing and the Stage on the GOSH website). In the USA copyright in the play continues until 2023.

It is of course possible for those who wish to benefit the hospital to donate to GOSH and they may do so through the GOSH charity website and I encourage them to do so.

Should anyone wish to discuss this article or copyright law in general he or she should call me on 01484 599090 or 020 7404 5252 during normal office hours or send me a message through my contact form.

Post Script

We have our own children's hospital in Leeds which also needs support (see Leeds Children's Hospital Appeal). Happily Peter Pan (otherwise known as Gavin McGaig) and Tinkerbell (Alice Bayston) paid them a visit on 16 Dec 2014 (see Peter and Tink at Leeds Children's Hospital on Northern Ballet's website). They are two of Northern Ballet's promising dancers and I was fortunate enough to interview Gavin earlier in the year (see Meet Gavin McCaig of Nothern Ballet 3 Sept 2014),  If you want to contribute to the Leeds Children's Hospital appeal click here for its "Just Giving" page,

20 December 2014

The Sheffield Devolution Agreement should mean more Business Support - but will it be the Right Kind?

Sheffield Town Hall
Photo Wikipedia

In his Autumn statement the Chancellor of the Exchequer announced investments of up to £7 billion to transform the great cities of the North of England into an economic powerhouse.  At paragraph 1.187 of his statement he wrote:
"Studies have shown that innovators and entrepreneurs are attracted to work in creative and cultural areas, which offer a high quality of life. Strong civic leadership is instrumental in enabling this. In addition, research by the OECD shows that cities around the world with fragmented governance structures have lower levels of productivity than those that do not."
 The Chancellor referred to HM government's devolution agreement with Greater Manchester Combined Authority agreement on 3 Nov 2014 in his statement and added that other city regions had come up with similar proposals.  One of the first of those city regions is Sheffield City Region which announced a devolution deal with with the government of 12 Dec 2014.

Details of the deal appear on the Sheffield City Council website. Under the deal a range of powers will be transferred to the Sheffield City Region Combined Authority and the Sheffield City Region Local Enterprise Partnership in relation to skills and training, employment, business support, transport, housing and future devolution.  The business support programme promises the following:
  • "Sheffield City Region will align national and local business support through the LEP’s growth hub, so that businesses get a joined up service which meets their needs. The Government will work with SCR to develop a devolved approach to the delivery of business support from 2017 onwards, subject to the outcome of future spending reviews
  • UKTI will become principle partner with Sheffield City Region’s Export Centre of Expertise and work closely with the LEP to encourage more businesses to export.
  • Government and Sheffield City Region will work towards a solution that will allow the Yorkshire JEREMIE to continue on an interim basis."
Having set up and supported the Sheffield inventors Group and operated IP clinics in Barnsley and Rotherham over the last 10 years, I welcome the creation of a business growth hub in the city region. 

The announcement promises "a comprehensive suite of services that will be tailored to the bespoke needs of businesses."  One of those needs is independent expert advice on IP strategy, that is to say advice on the intellectual property rights that are needed to achieve a business's objectives. There are plenty of business advisers in South Yorkshire but few of them understand how to to use the bundle of laws that protect investment in branding, design, technology or creative works that we call "intellectual property". Similarly, there are patent and trade mark attorneys who can prosecute patent, trade mark and registered design applications but few of them can advise on the business needs of their clients,

I will continue to provide pro bono advice on IP strategy at the Barnsley Business Innovation Centre on the second Tuesday of the month between 10 and 12 and will carry on supporting the Sheffield Inventors. Should anyone wish to discuss this article, IP strategy, business support or the devolution agreement, call me on 01484 599090 during office hours or message me through my contact form. I might not be too pleased to be mithered on 25 Dec but I am available to business owners and their professional advisers at all other times. 

Merry Chrsitmas!