28 February 2020

TIPSY Dinner for Mr Justice Birss

Author General Tire Source Wikipedia General Tire 

Jane Lambert

Mr Justice Birss was the guest of honour at  The Intellectual Property Society of Yorkshire ("TIPSY") dinner at the DoubleTree by Hilton hotel at Granary Wharf in Leeds on 27 Feb 2020.  Once again it was organized by Mr Andrew Clay, a solicitor specializing in intellectual property law in Harrogate. The meal with its choice of three dishes for each course was excellent. I chose soup, salmon and crumble together with white and red wine, mineral water and coffee.

After dinner, Dick Waddington pf Appleyard Leeds introduced our guest and invited him to speak on the Assessment of Damages for IP Infringements.   Disarmingly the judge acknowledged that he had not chosen the most riveting topic for an after-dinner speech.  Having said that, his talk was as interesting and entertaining as any on the subject. The only hissing he received was when he mentioned his Scottish birth and Lancastrian education.  He had contemplated (but then thought better of) appearing in his old school tie which included red roses in its design. However, he revealed a Yorkshire connection in that his mother had moved to Ilkley.

The speaker began with a reminder that intellectual property infringement was a tort and that an award of damages in tort was supposed to put the injured party in the position he or she would have been had the wrong not been committed. Easy to say but not always easy to apply.  There were two qualifications to that rule
  • An account of profits which is restitutionary or perhaps fiduciary in nature is available as an alternative to damages; and
  • Damages for the misuse of confidential information is a remedy for a breach of an equitable duty rather than compensation for a tort.
Mr Justiice Birss reminded his audience of the House of Lords' decision in General Tire and Rubber Company v Firestone Tyre and Rubber Company Ltd [1976] RPC 197, [1975] 1 WLR 819, [1975] 2 All ER 173, [1975] FSR 273 which considered different ways of assessing damages.  One way was to calculate the loss of sales.  Another was to compute the royalties that would be agreed by a willing licensor and a willing licensee bargaining at arms' length,  There were however difficulties with both approaches.  Litigants were very different from parties wanting to do business with each other and there are circumstances when a claimant would have incurred losses from sales of a non-infringing item even if there had been no infringement.

The judge discussed such cases as Wrotham Park v Parkside Homes  [1974] 1 WLR 798 and Attorney General v Blake [2001] Emp LR 329, [2000] EMLR 949, [2000] UKHL 45, [2001] 1 AC 268, [2000] 4 All ER 385, [2000] 3 WLR 625, [2001] IRLR 36, [2000] 2 All ER (Comm) 487, [2001] AC 268, [2001] IRLR 37 where the object was to impose a cost on the defendant for breaching a restrictive covenant or a duty of confidence rather than delivering compensation. He also considered  Morris-Garner & Anor v One Step (Support) Ltd. [2019] AC 649, [2018] WLR(D) 260, [2018] 3 All ER 659, [2018] 1 Lloyd's Rep 495, [2018] UKSC 20, [2018] 2 All ER (Comm) 769, [2018] IRLR 661, [2018] 2 WLR 1353.

Points that the judge mentioned briefly included alternative ways of computing FRAND royalties - extrapolation or comparables - the right of a successful claimant to request disclosure of a defendant's sales so that he can make an educated choice as to damages or an account of profits, assessing damages liberally and the innumeracy of many lawyers.  Only at the very end did the judge mention the Enforcement Directive and then only in passing.

Mr Justice Birss reminded the audience that small claims track IP cases could now be brought in Leeds and other major cities outside London and he urged his audience to use them.  If there was demand for IP litigation outside London the courts would arrange for multitrack cases to be heard there.  In the Q and A that followed, one questioner asked about punitive damages in IP, another mentioned a rumour that the UK planned to withdraw from the Unified Patent Court agreement while Mr Clay speculated on a claim for a battleship fitted with a tine whistle.  I raised my hand and gesticulated wildly but Dick Waddington did not see me.

It was a very good evening and I look forward to the next one which is likely to be in June with Michael Silverleaf QC as the guest speaker.   Anyone wishing to discuss this article or damages generally may call me on 020 7404 5252 or send me a message through my contact page.