tWeek 1

A. Trademarks are an indicator of origin

a. There is law that suggests slogans can be protected
b. Lil Nas X satan shoes
i. Trademark harms: ones that require and don’t require confusion
1. Regarding these shoes, would anyone be confused as to whether
these shoes are an actual nike product
2. If not is there some tarnishness argument that NIKE as a brand is
tarnished.
ii. Outcome: lawsuit was settled where the shoes had to be withdrawn
iii. Tarnishment, dilution, how far does confusion count to be classified as
tarnishment.
c. Colors and trademarks
i. You can trademark in relation to a colour, but you have to demonstrate that
it has acquired distinctiveness, consumers have been trained to respond to
that mark using those colours.
d. the need to keep free
i. it Is in the interest in other traders to keep various signs in the commons so
other people can use them
1. generally applied to colours and shapes but some discussion
whether words in fact should be kept free.
e. Holy blood and the holy grail (books by dan brown ‘the da vinci code’)
i. Question was whether there was infringement
ii. There may have been copying but what was copied were not elements
eligible for violations.
f. How much are we concerned with honor and reputation
i. Charging bull and fearless girl statue.
ii. Charging bull guy is pissed that the girl is placed in a derogatory way
towards his statue. How much do we care about an artist’s honour and
reputation.
g. What ought to be the role of patents especially with medical patents
i. More patents could lessen the incentive for innovation but then how do you
protect companies’ products that make a good product?
ii. Question also with what can be included and excluded in a patent.
iii. A lot in patent law is about proportionality : enough incentive and
protection that equals the benefit it confers on society.
B. What is intellectual property
a. Core regimes
1. Copyright, designs, patents, trademarks
ii. Other regimes
1. Moral rights, database rights, plant breeders’ rights, geographical
indicators of origin, breach of confidence, passing off.
b. There is little precise coverage of ‘intellectual property’
 i. There are a variety of lists including the big couple such as copyright but the
definition becomes more complex for example whether the protection
granted over confidential information counts as ‘intellectual property’
c. Spence, Intellectual Property, pp. 12-13
i. Intellectual property right is a right
1. That can be treated as property
2. (need to finish)
d. Intellectual property: some claims of what it is
i. Property (or property like)
1. Many regimes involve the grant of generally enforceable exclusive
rights which are capable of property like exploitation
2. Other areas of law treat it like property
3. Historical analysis suggests importance of propertization
4. Described as property in the relevant statues.
a. CDPA: copyright is a property right which subsists in
accordance with this part in the following descriptions of
work’
ii. Is intangible
1. Is this always accurate?
a. Moral right of integrity?
b. Artist’s resale right?
2. Consequences for subsistence and ownership
a. Eg. How do we describe the boundaries of the subject
matter
b. SPENCE p. 23-24, four key purposes of registration systems
i. Reducing over protection through self selection
ii. Provision of notice to 3P’s, with reduction in search
costs.
iii. Produces boundary signals, with benefits to liability
iv. For patents: creation of an information database.
3. How does the logic of registration impact on rights
a. How do we figure out who protects something and owns it
in the absence of it being a physical thing.
4. Consequences for justifications
a. To what extent do justifications for tangible property rights
apply to intangible property rights
b. Justification for property rights eg.
i. Starting point: the public domain (non-owned)
ii. One concern: the tragedy of the Commons 1968
(book)
1. People will act in their own self interest
rather than protect a resource for the
future.
 2. Its like with oil, people will act in self
immediate interest rather than preserve the
resource for the future. (or to stave off
global warming)
iii. Possible response
1. radeMore regulation
2. Private property rights
a. You have a stake in the resource
and caring for it.
3. Cooperative solutions, group access.
5. Response of IP to property rights
a. When IP overshoots: does IP suffer from the opposite
problem-the tragedy of the anticommons?
i. Intangible things are designed to be overused. We
put legal exclusivity on a thing that is inherently
limitless. Over time legal exclusivity overreaches
where “patent thickets’ form
1. People can no longer use the intellectual
property because it is so exclusive.
ii. The delicate balance between rights and openness.
iii. Is human generated
1. It is an individual rather than a God or anything else that creates
ideas, information, and technical principles.
a. Essentially states that humans are the one making the work
therefore they generate IP
2. A monkey took a picture of itself and there was a question whether
the photo had copyright protection .
a. Was litigated that monkey does not have statutory rights to
sue under the US copyright act.
i. Because monkeys are not incentivised by copyright
and legal exclusivity, they don’t care.
ii. Possibly that a human owner is required to
participate in market transactions and enforce
rights.
b. What about work generated by AI
i. CDPA s.9(3)- necessary arrangements test for
computer generated things
3. Spence pp. 25-29
a. How to deal with parallel creation- is independent creation
a defence?
b. How to deal with cumulative creation
i. We create in the context of other experience and
inspiration, there can be difficulties in thinking
 about who is the original author of an original thing.
Everything is a remix.
c. How to deal with multiple creatorship and works created in
employment
iv. IP excludes information and ideas
1. IP regimes attempt to exclude information, ideas, and other
“building blocks” from protection
a. Idea/expression dichotomy in copyright law
b. Exclusions from patentability
c. The “need to keep free” as an explanation for refusing
registration for non-distinctive and/or descriptive marks.
2. To what extent are the measures effective
a. Sometimes there are overlapping legal systems and societal
norms that excludes certain things for patentability.
v. Is time limited
1. Often said that IP rights are fixed and finite in duration, but there
are exceptions
a. Trademarks: registration may be renewed every 10 years
indefinitely long so long as they are still used
b. Breach of confidence: can be pleaded so long as information
is sufficiently secret.
c. Copyright: repeated instances of term extension.
vi. Diversity of rights and regimes
1. This can reduce the likelihood of coherent themes and justifications
and lead to issues with overlap
a. Lego is the intellectual property zombie that refuses to die,
i. Overlap- is it just a problem of aesthetics or is it an
actual public policy concern
1. Aesthetics
a. We want things to fit in one
category neatly instead of across
multiple problems.
2. Public policy
a. What if at the expiry of a certain
type of protection such as
trademark, you subvert it and then
say something should be protected
by copyright
b. Interlego v Tyco Industries 1989.
vii. IP is territorial
1. Domestic statues and laws do not have extra-territorial effect
a. Bilateral and multilateral treates have been one response to
issues associated with territoriality
 i. Many treaties require “national treatment” the IP
protections granted to foreign nationals must be
the same as or better than those afforded a MS’s
own nationals
b. Note: private international law dimension in relation to
enforcement.
e. Justifications for IP protection
i. Justifications for IP protection typically draw from the following
1. Utilitarian and economic theories (eg, incentives and social benefits)
a. Intellectual property is a quid pro quo (private rights
granted in return for public benefits)
b. Incentive effects
c. Information benefits (patent specifications)
d. Consumer search costs (trade marks)
e. Free competition is the default. Intellectual property is the
exception.
2. Deontological theories
a. Labour and reward-based theories (Lockean analysis)
i. If I did it I should get it, you sat down and spent
your own time to undertake a creative action.
b. Personhood theories (emphasising autonomy and dignity)
i. The poem contains a little of me and thus should be
protected. Interfering with my products, interferes
with my personality.

Lecture week 2

A. What is a trade mark

a. Can be seen as vessels for information
B. Trade mark messages
a. The essential function; indicator of origin
b. By extension: information about the quality of goods or services
c. Brand messages
i. Trade mark can become a commodity itself
ii. Some brand meanings can extend far beyond the goods or services to cover
issues of personal identity
iii.
C. The pepsi paradox
a. Research from neuroscience and psychology illustrates the importance of
subconscious factors in consumer decision making
i. Mlodinov, Subliminal
1. Activation of the ventromedial prefrontal cortex
a. Preferred coke when they knew they were drinking coke.
b. Brain’s bard appreciation module
 c. People who have a damaged area of this brain have no
indication of switching preferences.
ii. French/german wine study
iii. Detergent study
b. Johnson and ghuman p. 16
i. Neuoscientisits define branding as association design, or the process of
repeatedly exposing an audience to a consistent message that a company
wants their product to elicit. Then this branding is both consistent and
repetitive enough, it teaches us an association and alterls the underlying
architecture of our brain’s semantic network’
D. Justifications for protection
a. Trade marks as indication of trade source
i. Consumer search cost theory: trade marks allow consumers to identify the
products they want (origin function)
ii. Market diversification rationale: trade marks allow traders to differentiate
on grounds other than price (guarantee function)
iii. Are trade marks constitutive of a market economy
1. Burrel chapter, p.85: general acceptance that signs and symbols
that denote the trade origin or goods or services deserve some
degree of legal protection’
iv. Source-identification function
1. Coke v pepsi
v. (weak) guarantee of quality function
1. Creates an incentive for producers to maintain quality over time.
2. Consumers expect quality.
b. Justifications for protection
i. ‘trademarks help consumers to select goods. By identifying the source of
the goods, they convey valuable information to consumers at lower costs.
Easily identified trademarks reduce costs consumers incur in searching for
what they desire, and the lower costs of search, the more competitive the
market. A trademark also may induce the supplier of goods to make higher
quality products and to adhere to a consistent level of quality’
1. Scandia Down Corp v Euroquilt, INC, 772 F 2d 1423
ii. Trade marks as anchors of brand value
1. Protects the investment of the brand owner
2. And, supports the expressive autonomy of the brand owner, the
owner’s ability to control the messages associated with its trade
marks
3. Trade marks are associated with marketing innovation and help
traders recoup their investment in new products.
c. Implication: the need to prevent ‘confusion’
i. If you’re making people confused, the law should intervene.
ii. Wagamama ltd v City centre restaurants 1995 FSR 713 CH
1. Wagamama wanted to make a Indian restaurant called rajamama.
 2. Confusion could be that Wagamama is branching out or that there is
a separate Rajamama chain.
iii. If you interfere with the source function, if people are confused, the law
should step in to deal with.
d. Communication function
i. Brands give off a specific message.
e. Investment function
i. Coke played a huge role in shaping the image of Santa, we view santa
nowadays as a result of Coke’s massive advertising campaign.
ii. Companies build connection in the minds of consumers with values and
imagery.
f. Implication: protections against ‘dilution’
i. Operationalised in particular, in dilution harms: blurring, tarnishment, and
unfair advantage.
1. Tarnishing: unsavoury or negative connotations: a use that is
‘detrimental to the reputation of the trade mark’
a. Satan shoes
2. Blurring: overuse, a use that is ‘detrimental to the distinctive
character of the trade mark’
a. Mark becomes a generic word for a product.
3. Free riding: misappropriation; a use that ‘takes unfair advantage’ of
the senior mark.
ii. Burrell Chapter, p. 85
1. ‘the more dilution is examined the less sense it seems to make.’
g. Why registration
i. Why might a system of registered trade marks be superior to a system of
unregistered marks?
1. What benefits are conferred by requiring a register
a. Legal certainty: other traders know what to avoid when
developing a new product.
b. Provides clarity as to the subject matter of all the different
trademarked signs.
c. Renewal requirement, use requirement.
i. Unused or unwanted marks in theory get taken off
the register.
2. What costs are incurred by maintaining a register
a. You need to employ people to maintain the register
3. re there downsides in registration?
a. Trader who doesn’t know much about trademark law and
doesn’t know they need a trademark, some people simply
don’t have knowledge or resources
b. Those that are legally advised can undertake a process
called overclaiming
4. How does registration impact on the contours of the law
 a. Eg. Interpretative rules, relevance of actual confusion.
b. What happens if you want to register a sound mark: you
need representative registration for the register.
c. How do we interpret the language relating to the goods or
services or something
d. Relevance of actual confusion
h. Registration options
i. National system (UK)- register administered by the trade mark registry at
the IP office.
ii. EU trade marks system
1. Register administered by the EUIPO
2. The mark must be capable of registration throughout all member
states; all or nothing deal
3. EU stuff no longer applies in the UK
iii. International filing system
1. Permits a single application across multiple jurisdictions
2. Madrid agreement and madrid protocol
i. Registration basics
i. The application must include inter alia
1. A statement of the goods or services in relation to which
registration is sought
2. The relevant
ii. The nice classification system
1. Established by the Nice Agreement 1957
a. Currently has 45 classes; classes 1-34 cover goods, and
classes 35-45 cover services
i. Revised regularly
b. For each class there is a class heading, an explanatory note
and list of goods/services
j. Fence posts or sing posts
i. Starting point: the scope of protection is determined by what appears on
the register and not how the sign is used in the marketplace, ie the
representation on the register is a fence post
ii. But there is pressure to look beyond the register: trade mark law is (said to
be?) concerned with preventing consumer confusion, but confusion-if we
take it seriously- will be determined by what consumers encounter in the
marketplace
1. Relevance of green in Specsavers v Asda
iii. The register can look like it contains sign posts
k. Registered trade mark protection in the UK
i. Registered trade marks: Trad emarks act 1994 TMA
1. For many years, the national trade system was harmonised by the
trade marks directive
a. Latest directive the TMD 2015
 ii. there is also a unitary system for EU trade marks
1. latest regulation: the EU trade mark regulation 2017
2. Mirrors national system but with adjustments due to EU scope
3. Some CJEU cases we study will relate to EU trade marks
l. Market versus register
i. Consumers don’t encounter the cherry picked elements of branding, they
encounter everything.
ii. Register abstracts and cherrypicks
1. Coke pepper- does it have anything to do with cococola.
2. Is there infringement
a. Coke is used on the front although cococola trademarked it.
b. Also infringement on goods or services
i. Coke also trademarked it for spices and stuff as
well.
3. Issue of overclaiming_ coke’s trademarks extend very much past the
necessity.
m. Brexit: significance for trade mark law
i. Now that transition period has ended, the community system will not
protect marks in the UK
1. For all existing EU marks, a ‘comparable’ UK right will be created
a. Proprietors may opt out of this process
b. Adjustments will deal with assessment of use, reputation,
etc.
c. Issue: will create a huge amount of clutter on the UK
register
2. Exhaustaion
a. EU approach is that if a product is sold anywhere in the EEA,
the proprietor’s trade mark rights are exhausted by the act
in the EEA. This permits movement of so called ‘grey
market’ goods (parallel importation)
b. The Uk has chosen unilateral region exhaustion. If a product
is sold in the EEA, it can be imported in the UK, but the
converse it not true
n. Unregistered marks in the UK
i. Protected through tort of passing off
1. Common law action that pre-dates the emergence of the registered
trade mark system in the late 19th.
2. Action extends beyond signs that could be registered as trade marks
a. Often pleaded in parallel with a registered trade mark claim
3. Lord oliver in Reckitt & Colman: ‘the law of passing off can be
summarised by one short general proposition- no man may pass off
his goods as those of another’
ii. Australian case
 1. Simpson’s had duff beer and an Australian company started making
a real life fake
2. Twentieth century fox v the south australain brewery co ltd
a. It was held that ‘the name duff will induce customers into
believing that the product has a connection or association
with ‘the simpsons’”
o. Other protections in the UK

Lecture 2

A. Recap of last lecture

a. Application must include, inter alia:
i. Statement of the goods or services in relation to which registration is sought
ii. The relevant class (or classes) of those goods or services and
iii. A representation of the sign
B. TMA 1994
a. Section 1a (acquisition of rights: registration
i. Protectable subject matter and representation
ii. Absolute and relative grounds for refusal of registration
b. Section 1b (declaration of invalidity)
i. TM should not have been granted in the first place
ii. Post registration AD can save a TM in some cases
c. Section 2 Maintenance of rights
i. A TM can be revoked because of e.g. non use or genericide
d. Section 3a enforcement of rights
i. Double identity, confusing similarity and dilution harms
ii. Accessory liability (largely outside scope of course)
e. Section 3b defences
i. Own name, descriptive and nominative uses
ii. Misleading and comparative advertising directive, ecommerce directive.
C. Trade marks
a. (1) trade mark means any sign which is capable
i. Of being represented in the register in a manner which enables the relevant
parties to determine the clear subject matter of the protection afforded to
the proprietor anddddd
ii. Of distinguishing goods or services of one undertaking from those of other
undertakings.
iii. May consist of words or names, designs, letters, colours, etc.
b. ‘a sign’
i. Non exhaustive list
ii. Scope of definition
1. Phillips v Remington and Sieckmann
a. ‘ a sign is anything which can convey information… the only
qualification expressed in the directive is that it be capable
of being represented graphically’
2. Eurocermex SA v v OHIM
3. Dyson C-321/03
a. Specifications stated ‘mark consists of a transparent bin or
collection chamber forming part of the external surface of a
vacuum cleaner as shown in the representation’
b. No attempt to limit the registration to any particular shape
or any particular colour (only transparency)
c. 37: subject matter is not specific
i. 38: because trade marks are so inherently exclusive,
the unclear subject matter here would obtain an
unfair competitive advantage.
ii. 39: it was only a mere property of the product and
does not constitute a sign.
4. JW spear & son ltd v Zynga Inc
a. Mattel have a registration over a ‘tile mark’ comprising a 3d
tile with letter and numeral.
b. Arnold J
i. Mark not specific. Covers a multitude of different
appearances of tile.
ii. Mere property of the goods and not a sign.
Upholding registration would allow Mattel to obtain
an unfair competitive advantage.
5. Cadbury purple case
a. Societe des Produits Nestle SA v Cadbury UK ltd 2012
i. Application for the purple colour. Cadbury also filed
evidence of acquired distinctiveness.
b. Mark did not satisfy the requirements of ‘a sign’ within
meaning of article 2 as interpreted in the rulings of the CJEU
i. Lacked required clarity, precision, self containment,
durability and objectivity to qualify for registration.
6. Should color marks be considered
a. Libertel (c-104/01)
i. Application to register the colour orange for
telecommunications services
ii. 27: normally a colour is a simply property of things.
Yet it may constitute a sign. Depends on the context
in which colour is used.
7. Should ideational marks be excluded from being ‘signs’? What is an
ideational sign in itself?
a. Example: layout of Apples store
b. Heidelberger
i. CJEU says there are issues with colours and
combinations of colours constituting a sign, but
 notes that a colour can be capable of being a sign
23
ii. Other problems:
1. Colours are not normally distinctive,
although they may acquire distinctiveness
(38-39)
2. Even if a combo of colours satisfies the
requirements of Art. 2 the mark must still
satisfy other requirements, including those
in Art. 3 Assessment must take account of
the need to keep free
iii. Should colour marks be dealt at the ‘sign’ stage or
later in the system?
8. Expansion of subject matter
a. Expansion is supposed to simply reflect reality
b. The issues around expansion
i. Competition
ii. Overlap
iii. Subjectivity
iv. Infringement can relate to similar signs
v. Different subject matters require different rules.
9. The TMD 2015 update
a. Article 3
i. A trade mark may consist of any signs in particular
words, including personal names, or designs, letters,
numerals, colours, the shape of goods or of the
packaging of goods, or sounds provided that such
signs are capable of
1. Distinguishing the goods or services of one
undertaking from those of other
undertakings and
2. Being represented on the register in a
manner which enables the relevant parties
to determine the clear and precise subject
matter of the protection afforded to its
proprietor.
c. Representation on the register
i. Introduced by the TMD 2015
1. Former concept: ‘graphic representation’
2. Art. 3(b) essentially wants sufficient or adequate representation
ii. Going back in time with graphic representation
1. Sieckmann
 a. Graphic representation ‘must enable the sign to be
represented visually particularly by means of images, lines
or characters, so that it can be precisely identified 46
b. CJEU said this interpretation “is required to allow for the
sound operation of the trade mark registration system” 47
c. According to the Sieckmann criteria, trademark
representations in the register need to be clear,
precise, self-contained, easily accessible,
intelligible, durable and objective, in addition to
being represented in graphical form
iii. Sumary
1. Definition of ‘sign’ no longer refers to ‘graphic representation’
2. The need for a graphic means of representation has been
removed.
d. Grounds for refusal of registration
i. The absolute grounds for refusal of registration TMA s.3
1. A trademark should not be registered because it is contrary to some
public policy
ii. The relative grounds for refusal of registration in TMA s.5
1. Registration would conflict with someone else’s rights
2. Grounds overlap with tests for infringement.
iii. Absolute grounds for refusal
1. Signs which do not satisfy requirements of s. 1(1): s 3(1)(a)
2. Trade marks which are non-distinctive, descriptive or generic s. 3(1)
(b-d)
3. Signs that consist exclusively of the shape or another characteristic
which results from the nature of the goods, is necessary to obtain a
technical result, or which gives substantial value to the goods s. 3(2)
4. Trade marks that are contrary to public policy or morality are
deceptive, or applied for in bad faith ss. 3(3-6)
iv. TMA s. 3(1)(b-d): the following will not be registered
1. B) trade marks which are devoid of any distinctive character (non
distinctive)
2. C) trade marks which consist exclusive of signs or indication which
may serve, in trade, to designate the kind, quality, quantity or other
characteristics of goods or services (descriptive)
3. D) trade marks which consist exclusive of signs or indications which
have become customary in the current language or in the bona fide
and established practices of the trade (generic)
v. Distinctiveness: basic concepts
1. Distinctiveness can be thought of as a spectrum that moves from
purely descriptive marks to invented words
a. A range from SOAP (for soap) to KODAK (for film)
b. Devices and non-traditional marks can be treated similarly.
 2. This must be judged by reference to the goods or services claimed
a. APPE for fruit very different from APPLE for computers
3. Judged from the perspective of the ‘average consumer’ of those
goods and services.
a. Can hide policy considerations.
4. Can be ‘inherent’ or ‘acquired’
a. ‘secondary meaning’
5. Can be lost
a. ‘genericide’
vi. Distinctiveness: policy rationales
1. Policy consideration 1: consumers do not understand the sign as
indicating trade origin
a. But we can be trained to do this
2. Consideration 2: other traders needs to be able to use the same sign
(the need to keep free)
vii. How do we deal with ‘immediately intelligible’ invented words and terms
(medihemp)
1. S. 1(1)(b) a trade mark is any sign which is capable of distinguishing
goods or services of one undertaking from those of other
undertakings.
2. Koninklijke Philips v Remington: no added distinctiveness inquiry
3. “provided that a trade mark shall not be refused registration by
virtue of paragraph b, c, or d, above if, before the date of
application for registration, it has in fact acquired a distinctive
character as a result of the use made of it”
a. does not apply to other absolute grounds
b. post registration AD can save the mark.
viii. The different reasons behind s. 3(1)(b and c)
1. B (devoid of distinctive character): consumer reaction (the sign
functions as an indicator of origin)
2. (sign is descriptive): the need to keep free) (other traders need to
use that sign.
3. Windsurfing Chiemsee
4. 25: article 3(1)(c) pursues an aim which is in the public interest,
namely that descriptive signs or indications relating to the
categories of goods or services in respect of which registration is
applied for may be freely used by all….article prevents such signs
and indications from being reserved to one undertaking alone
because they have been registered as trade marks.
ix. Sat.1 v OHIM
1. 23: article 7(1)(b) intended to preclude registration of trade marks
which are devoid of distinctive character which alone renders them
capable of fulfilling that essential function (enabling consumer to
distinguish the product from others)
 2. 25: each of the grounds for refusal listed in Article 7(1) of regulation
is independent of the others and requires separate examination.
Moreover, it is appropriate to interpret those grounds for refusal
in the light of the general interest which underlies each of them
x. Issues with policy indications
1. Should consumer reaction be a reason to refuse registration as put
out in Windsurfing Chiemsee 31
a. Distinction has fallen down for colours (libertel) [60]
xi. How to apply s. 3(1)(b)
1. ‘devoid of distinctive character’
2. Bently p.982
a. ‘with the benchmark established does the sign possess
origin indicating ability-the analytical framework adopted to
test for it consists of three basic elements:
i. Assess the sign as applied for
ii. Against the backdrop of the goods and services
specified
iii. From the perspective of well informed, reasonably
observant, and circumspect consumers for those
categories of products.’
3. Some are more obviously origin-indicating
a. Apple, Nozema
4. Can a distinctive element (e.g. figurative aspects) compensate for
less distinctive elements? What about a combination of non-
distinctive elements?
xii. How to apply s. 3(1)c)
1. Applies to ‘trade marks which consist exclusively of signs or
indications which may serve, in trade, to designate the kind, quality,
quantity, intended purpose, value, geographical origin, the time of
production of goods or of rendering of services or other
characteristic of goods or service.
a. CREAMY for milk, MAXIMUM SUCTION for vacuum cleaners.
2. To determine whether a gebox of the ographical name can be
registered, assess whether the name ‘designates a place which is
currently associated in the mind of the relevant class of persons
with the category of goods concerned, or whether it is reasonable
to assume that such an association may be established in the future’
31 Windsurfing Chiemsee
3. Koininklijke KPN Nederland NV v Benelux-Merkenbureau
a. the competent authority must determine whether ‘the
trade mark currently represents in the mind of the relevant
class of persons, a description of the characteristics of the
goods or services concerned or whether it is reasonable to
assume that that might be the case in the future
 4. What about foreign words?
a. Cantatrella Bros v Modena Trading
i. Considers registration of ORO and CINQUE STELLE
for coffee
b. Matratzen
i. ‘it is possible that because of linguistic, cultural,
social and economic differences between the
member States, a trade mark which is devoid of
distinctive character or descriptive of the goods or
services concerned in one MS is not so in another
MS’
c. Caffe Nero v EUIPO
i. Nero tried to register their logo as an EU mark for
tea, coffee, and related things Class 30 as well as
retail store services connected with such Class 35
ii. General court justifies the exclusion of descriptive
marks by referend to the need to keep free and the
concern that descriptive marks fail to perform the
essential function
1. The general court considers descriptiveness
by reference to how the relevant public
understands the sign 17-20

Overview of the tort of passing off

A. Origins
a. Predates emergence of registered trade mark system and has origins in the torts of
deceit and MR
b. Originally, arose where D represented that his or her goods/services were those of
the plaintiff
i. E.g. MR central to the action (Reddaway v Banham 1896 AC 199)
1. 204: ‘nobody has any right to represent his goods as the goods of
somebody else’ (Lord Halsbury)
ii. Courts come to accept that the basis of equitable intervention (an
injunction) was property in the ‘goodwill’
B. Passing off in a general sense
a. Reckitt and Colman Products Ltd v Borden Inc 1990 1 WLR 491 (Jif Lemon)
i. Lord oliver, classic trinity
1. Goodwill, misrepresentation, and damage (or likely damage) to the
plaintiff
2. Further formulation in Erven warnink BV v J townsend & Sons ltd
1979
ii. How did the judges respond to concerns about potential anti-competitive
effects of this case.
C. The Goodwill part
 a. IRC v Muller & Co’s Margarine 1901 AC 214
i. 224: goodwill is ‘the attractive force that brings in custom’
b. Pointing to evidence of being well-known is not enough
i. Harrods v Harrodian School 1996 RPC 697
1. 711: the plaintiff must show a goodwill ‘attached to the goods or
services which he supplies by association with the identifying name
or get-up’ Millet LJ
c. Passing off protects the goodwill that manifests in signs that indicate trade origin,
what sort of signs?
d. When if at all, can a foreign trader bring an action for passing off in the UK?
Starbucks Limited v British Sky Broadcasting Group 2015 UKSC 31:
i. Is it necessary to have goodwill, in the form of customers, in the jurisdiction
of the corurt
1. Anheuser Busch Inc v Budejovicky Budvar NP
2. ConAgra Inc v McCain Foods (Aust) Pty Ltd 1992 106 ALR 465
ii. -52: the claimant must show that it has a significant goodwill, in the form of
customers, in the jurisdiction, but it is not necessary that the claimant
actually has an establishment or office in this country.’
D. The misrepresentation bit
a. Originally, MR was that D’s goods or services were those of the plaintiff- but over
time, actionable mr has been expanded.
b. Mere confusion is not enough, in terms of causing consumers to wonder. MR must,
however, have to have or likely to have a material effect on their behaviour
(sometimes deceptive)
i. Comic Enterprises Ltd v Twentieth Century Fox Film Corporation 2016 EWCA
Civ 41
ii. D does not have to act fraudulently or intend to deceive
c. Establishing deception
i. Can consider deception in relation to the general public or a subset
1. Not concerned with the ‘moron in a hurry’; Morning Star Co-
operative Society v Express Newspaper 1979
2. A ‘substantial number’ must be deceived
ii. Claimant does not need to present robust empirical evidence through for
example surveys. Evidence of actual confusion is often qualitative. Judges
will often form their own impression, perhaps with expert advice.
1. Criticism of survey evidence: Interflora v Marks & Spencer 2013
EWCA civ 319.
d. Relevant factors- Bently p.905
i. The strength of C’s sign: the more distinctive, the more it can overcome
differences in D’s sign, field of activity etc.
ii. Similarity of D’s sign
iii. Proximity of fields of business and their locations
1. Common field of activity between claimant and defendant not
required.
 2. Goodwill is not just territorial but local
iv. The characteristics of the market
v. The intention of D: more likely to infer deception where the defendant
acted fraudulently or ‘lived dangerously’
vi. The presence of a disclaimer.
E. Damage
a. Accepted types of damage include loss of profits and licensing revenues, and
damage to reputation
b. Should dilution (erosion of distinctiveness of C’s sign) form a head of damage in the
law of passing off?
i. Tattinger v Allbev
ii. Harrods v Harrodian School, p. 716: ‘I have an intellectual difficulty of
accepting the concept that the law insists upon the presence of both
confusion and damage and yet recognises as sufficient a head of damage
which does not depend on confusion’
iii. Bt v One In A Million 1999
F. Expansion 1: MR as to quality
a. AG Spalding Bros v AW Gamage Ltd 1915 32 RPC 273
i. Discussed stock fo the claimant sold by the defendants as if it were new and
improved
b. Rolls Royce Motors ltd v Zanelli 19079 RPC 148
i. Interim injunctions granted to restrain defendants from undertaking various
commercial acts with modified RR cars
c. Relevance to parallel importation: Colgate Palmolive v Markwell Finance 1989 RPC
497
i. Importation into UK of colgate toothpaste sold in brazil
ii. Action successful despite Colgate itself producing the inferior product.
G. Expansion 2: manifestations of goodwill
a. Earlier cases focused on names, symbols, logos, etc.
b. Later cases showed that goodwill can manifest in other ‘badges of origin’ such as
packaging, get up, advertising styles
i. Get up: Reckitt and Colman v Borden
1. What challenges may arise for demonstrating goodwill in relation to
packaging and get up
ii. Advertising themes:
1. Cadbury Shweppes v Pub Squash 1981 1 WLR 193: paved the way of
slogans and advertising images to become part of the goodwill of
the product
2. Telstra v Royal & Sun Alliance Insurance 2003 FCA 786: passing off
made out for one television ad due to use of the Mr. Googombil
character and other elements.
H. Expansion 3: extended passing off
a. Passing off can arise where there is shared goodwill based on features of the
product
 i. Bollinger v Costa Brava Wine Co 1960 CH 262 and Tattinger v Allbev 1993
FSR 64 (champagne)
ii. Erven Warnink v J Townsend & Sons 1979 AC 731 (advocaat)
iii. Chocosuisse Union des Fabricants de Chocolat v Cadbury LTd 1998 RPC 114
(laddie J)
1. ‘misrepsentation, in this context, lies in marketing goods in a way
which will lead a significant section of the public to think that those
goods have some attribute or attributes which they do not truly
possess’ Chadwick LJ 847
iv. Diageo North America v Intercontinental Brands 2010 EWCA CIv 920
1. Smirnoff vodka 37.5% vs Vodkat: 22% vodka blend
2. Extended passing off made out. Not necessary that the C’s mark has
“cachet” in the sense of being associated with a luxury product or
one of superior quality
v. Fage UK ltd v Chobani UK ltd 2014 EWCA Civ 5
1. Extneded passing off made out. It is necessary that, inter alia, the
group is defined with reasonable precision and that the name
denotes a particular kind of product with recognizable
characteristics.
I. Expansion 4: definition of trader
a. Defined broadly to include individuals not directly involved in production of goods
or services
i. Examples
1. Ballroom dances: Henderson v Radio Crop
2. A racing car driver: Irvine v Talksport Ltd
3. Creators of Teenage Mutant Ninja Turtles: mirage studios v
Counter-feat clothing company
J. Expansion 5: misrepresentations of control
a. Passing off can arise where the relevant MR is that the claimant has some control or
responsibility for D’s goods or services
b. Harrods v Harrodian school p. 712:
i. Misrepresentation ‘must be one which the plaintiffs would be taken by the
public to have made themselves responsible for the quality of D’s goods or
services’ Millet LJ
K. Protection of persona
a. Expansions 4 and 5 in particular, paved the way for successful actions in relation to
character and celebrity merchandising, and endorsement
b. This allows some protection of persona in the UK, despite there being no general
image right
i. Default rule is that copyright in a photograph is first owned by the author
(the photographer)
c. Mirage Studios 1991 FSR 145
i. Facts: production by D’s of t-shirts featuring humanoid turtle characters
similar to the Teenage Mutant Ninja Turtles
 ii. P. 155: ‘the critical evidence in this case is that a substantial number of the
buying public now expect and know that where a famous cartoon or
television character is reproduced on goods, that reproduction is the result
of a licence granted by the owner of the copyright or owner of other rights
in that character.’
L. Endorsement
a. Lyngstrad v Annabas Products 1977 FSR 62 (ABBA paraphernalia; no passing off)
b. Irvine v Talksport 2002 1 WLR 2355 CH
i. Laddie J held that the case involved endorsement and not merchandising.
1. ‘the question si whether on a balance of probabilities, a significant
proportion of those to whom this brochure was sent would think
that MR. Irvine had endorsed or recommended Talk Radio’
2. Passing off action successful .
c. Fenty v Arcadia Group Brands 2013 EWHC 2310 Ch
i. Facts: Rihanna issued proceedings against a fashion retailer that used a
picture of her on a tee without her consent. The store had consent from the
photographer but not her. Made claim that the shirt would lead the public
to assume she had licensed the image to them. Rihanna was a famous pop
artist and had ample good will, she had whole merchandising and
endorsement operations.
1. Also tons of MR on the store’s part. They made an effort to connect
their image in the public eye with celebrities. No other disclaimers
as well. Although there was
ii. The mere use of a celebrity’s image on a t-shirt is not enough ‘there must be
a misrepresentation about trade origin’ 35
iii. Factors that supported the passing off claim
1. The nature of the images: will be seen by a substantial portion of
those considering the product as related to her recent album.
2. Previous marketing activity undertaken in collaboration with
Rihanna
3. Not fatal that they did not have the R slash logo or the word
RIHANNA
iv. An appeal to the CA was Dismissed 2015 EWCA civ 3 Kitchin LJ held
1. 36: ‘there is a difference between character merchandising and
endorsement. The former ‘encompasses a range of activities that
involve licensing of name or likeness of famous characters, real or
fictional. Endorsement, on the other hand, describes on particular
kind of relationship between the characters and the goods which
bear their names or likenesses, and it implies authorisaiton and
approval’
2. 41: the public will not necessarily assume there was endorsement
just because the name or image o a celebrity appears on a product
3. 43: claimant in a case of this kind must make good his case on the
evidence. He must show that he has a relevant goodwill, that the
 activities of the D amount to a MR that he has endorsed or
approved the goods or services of which he complains, and that
these activities have caused or are likely to cause him damage to his
goodwill and business’
M. It is really about misrepresentation
a. Hogan v Koala Dundee 1988 20 FCR 314 Pincus J
i. Previous cases have overstated the degree to which members of the public
are familiar with licensing arrangements.
ii. The real harm is the wrongful appropriate of a reputation or wrongful
association with an image belonging to the plaintiff
iii. Injunction granted
b. Cases quickly reverted back to misrepresentation analysis.
i. Pacific Dunlop v Hogan
1. Beaumont J focused on whether public might believe wrongly that
there was a commercial arrangement between the parties.
2. Burchett J agreed but discussed the deliberate imprecision in
character advertising- that it is not intended to set of a logical train
of thought amongst viewers.
3. Sheppard J (dissenting) p. 572 “the witness who expressed my own
views closely was Mr. Jedlin who thought the advertisement was
terrible and that it could not have had anything to with Mr. Hogan”
N. The UK case law
a. There have been statements int eh case law that there is not and ought not to be a
tort of unfair competition in the UK
i. Hodgkinson & Corby v Wards Mobility Services Ltd 1994 1 wlr 1564
1. “there is no tort of copying. There is no tort of taking a man’s
market or customer. Neither the market nor the customers are the
plaintiff’s to won. There is no tort of competition.”

Maintenance of rights & relative grounds and infringement

A. Ways a proprietor can lose rights

a. Surrender TMA s. 45
b. Revocation TMA s. 46
i. The mark was validly registered but something has happened in the interim
that means it should be revoked, e.g. non use without proper reasons; mark
has become generic, mark has been used in a way that is liable to mislead
the public
c. Removal for invalidity TMA s. 47
i. The mark ought never to have been registered
ii. In someinstaces, post registration acquired distinctiveness can operate to
save a mark
d. Or the obvious way, doesn’t pay the renewal fee.
B. Revocation for non use
a. TMA s. 46(1)(A), (b)
 i. Within the period of five years following the date of completion of the
registration procedure [the trade mark] has not been put to genuine use in
the UK by the proprietor or with his consent, in relation to the goods or
services for which it Is registered, and there are no proper reasons for non-
use
ii. That such use has been suspended for an uninterrupted period of 5 years,
and there are no proper reasons for non-use.
b. What does genuine use mean
i. Use requires public-facing activities and that the mark is used as a trade
mark: Ansul v Ajax C 40/41 para 37
c. With his consent
i. Means that use by a licensee can count
d. What are proper reasons for non use
i. Armin Haupl v Lidl: seems to effect a high threshold for this proviso to apply
e. Use of a modified form of the mark can be sufficient to have used the mark TMA s.
46(2)
f. What is meant by non use. Consider the scenarios
i. Owner A obtains registration of a number of marks including a logo with
words overprinted and the same logo without words overprinted. The logo
is only ever used with words. Has owner A ‘used’ the wordless logo.
ii. Owner B obtains registration for a word mark. The specifications claim that
mark in relation to ‘clothing, footwear, and headgear.’ Owner B only uses
that mark in relation to clothing worn by cyclists.
C. Scenario 1: specsavers
a. Specsavers’ mark vs Asda’s optician section: very similar in shape, only real
difference is words
b. Should instead the wordless logo have been registered by Specsavers? Does it have
inherent distinctives? AD?
c. Analysis: has there been use of the wordless logo mark (bearing in mind that the
word ‘specsavers’ obscured part of the mark’
i. In determining whether there has nevertheless been use, it must be asked
whether the ‘the distinctive character of the trade mark in the form in which
it was registered is not changed’ 21
ii. There can be genuine use of the wordless logo mark through its use in a
composite mark, even though both ‘specsavers’ and the composite mark
have themselves been registered.
iii. Kitchin LJ held that the national court is required to ‘consider the use which
has been made and ask itself whether the differences between the form in
which the mark has been used and that in which it is registered do not
change the distinctive character of the mark as registered 22
iv. If the mark as registered is used only as a part of a composite mark, ‘the use
must be such that the mark as registered is itself perceived as indicative of
the origin of goods or services’ 22
v. Specsavers prevails
D. Scenario 2: Roger Maier v ASOS
a. TMA s. 46(5): where grounds for revocation exist in respect of only some of the
goods or services for which the trade mark is registered, revocation shall relate to
those goods or services only
b. The decisions in the case
i. Identify the goods or services in relation to which the mark has been used:
how would the average consumer fairly describe them?
ii. Examine the categories of goods or services for which the mark has been
registered: are they so broad that they encapsulate subcategories? If so, use
in one sub-category will not constitute use across other sub-categories.
E. Broad specifications
a. Does the use of a vague or overly broad specifications enliven any of the absolute
grounds for refusal of registration
i. Sky v SkyKick
1. Arnold J
a. Can a mark be declared wholly or partially invalid because
some or all terms in the specifications are lacking in
sufficient clarity and precision
i. Is ‘computer software’ too general.
ii. Lack of clarity and precision in the drafting of the
specifications is
1. Not a free standing ground for refusal of
registration
2. Not an issue for graphic representation, as
that aspect goes to the representation of
the sign
3. And not contrary to public policy.
iii. Fortified by revocation for non use [70]
b. Can it be bad faith simply to apply to register a trade mark
without any intention to use it in relation to the specified
goods or services
i. If yes, can an application be made partly in bad
faith?
ii. Registration with no intent to use constitutes bad
faith when the proprietor had the intention of
either
1. Undermining, in a manner inconsistent with
honest practices, the interests of third
parties’ or
2. Obtaining without even targeting a specific
third party, an exclusive right for purposes
other than those falling within the functions
of a trade mark
iii. Bad faith can be partial.
 2. Held that Sky had applied for the trade marks partly in bad faith
a. No prospect of sky using the marks across the specifications
b. Sky had a deliberate strategy of seeking very broad
protections
3. Arnold LJ rewrote some of the specifications have regard to the bad
faith
4. Sky’s appeal is successful
a. The case is different to that of the trade mark squatter
b. No prospect of use argument
i. Depends on the category, for broad categories such
as computer software, it is not necessary to show
an intent to use in every subdivision
c. broad strategy/no justification argument
i. the applicant’s commercial strategy does not need
to be specific
F. Relative grounds: TMA s. 5
a. Conflicts with earlier marks: ss. 5(1)-(3)
i. Mirror grounds for infringement: double identity, confusing similarity and
dilution
ii. ‘earlier trade mark’ defined in s. 6
b. Conflicts with earlier rights ss. 5(4)
i. Unregistered marks/signs protected by passing off
ii. Designations of origin and geographical indicators
iii. Other earlier rights, e.g. copyright and design rights.
c. Note
i. Section 5 does not prevent registration if the proprietor of the earlier mark
or right consents s..5(5)
ii. Refusal can relate to only some goods and services: s. 5A
iii. What if the proprietor opposing the mark has not used the mark in the five
years prior to the applicant’s application (or priority date)? See. S. 6a
1. Mirrors the use requirements in s. 46(1)
2. Section 6A is relevant only to whether conflict with that earlier mark
can be considered by the registrar. It does not not result in the
whole/partial revocation of the opponent’s mark.
G. Infringement: TMA s. 10
a. 1) ‘a person infringes a registered trade mark if he uses in the course of trade a sign
which is identical with the trade mark in relation to goods or services which are
identical with those for which it is registered
b. Referred to as double identity infringement
i. Identical sign in relation to identical goods or services
ii. there must be ‘use in the course of trade’ but there is no express
requirement for confusion
c. 2) ‘a person infringes a registered trade mark If he uses in the course of trade a sign
where because
 i. A) The sign is identical with the trade mark and is used in relation to goods
or services similar to those for which the trade mark is registered or
ii. B) The sign is similar to the trade mark and is used in relation to goods or
services identical with or similar to those for which the trade mark is
registered.
1. there exists a likelihood of confusion on the part of the public
which includes the likelihood of association with the trade mark
iii. sometimes referred to as confusing similarity
d. 3) ‘a person infringes a registered trade mark if he uses in the course of trade, in
relation to goods or services, a sign which
i. A) is identical with or similar to the trade mark
1. where the trade mark has a reputation in the United Kingdom and
the use of the sign, being without due cause, takes unfair advantage
of, or is detrimental to, the distinctive character or the repute of the
trade mark.
2. Sometimes referred to as dilution
H. Infringement options

If the marks are… And the goods/services are… Possible actions

Identical Identical s. 10(1)&(3)

Identical Similar s. 10(2) & (3)

Similar Identical s. 10(2) &(3)

Similar Similar s. 10(2) & (3)

Identical Not similar S. 10(3)

similar Not similar S. 10(3)

I. Relative grounds vs infringement

a. The relative grounds for refusal of registration mirror the circumstances in which a
trade mark is infringed.
b. The analysis is very similar at the subsitence and infringement stages. A key
difference is what is being compare:
i. The subject being compared: mark v mark applied for s. 5 and mark v sign
used in the course of trade by the defendant s. 10 and
ii. The goods/services being compared: registered v noted in application (s. 5)
and registered v used (s. 10)
J. The relevance of the register
a. Coca cola has
 i. Word mark coke as well as across lots of classes including Class 30
b. D uses
i. The sign COKE in relation to pepper.
c. This is the identical sign for identical goods-s.10(1)
i. Would anyone be confused.
K. The recommended approach
a. Identity of marks and identity of goods/services
i. Identify of marks
1. In what circumstances will
a. The applicant’s proposed mark to be identical to the earlier
mark?
b. D’s sign be identical to the claimant’s mark?
2. Two issues
a. For infringement- identifying the sign
b. For infringement and relative grounds-how strict is the test
of ‘identity’
3. Indications from case law
a. LTJ diffusion SA v Sadas Vertbaudet SA (C-291/00)
i. Issue at hand: Arthur vs Arthur Et Felice
b. Reed Executive v Reed Busines Information 2004 RPC 40 CA
i. Issue at hand: Reed vs Reed business information
c. Hasbro v 123 Nahrmittel 2011 EWHC 199 CH
i. Issue at hand: play doh vs the edible play dough
1. What if the sign was just ‘play dough’
ii. Identity of goods/services
1. At the identity stage, the test is whether D’s product or service falls
within the claimant’s specifications
a. Illustration: Bob has a mark in relation to ‘land vehicles
propelled wholly by the rider’ Carol uses an identical sign
for skateboards.
b. Ask: are skateboards considered ‘vehicles’
2. It the NICE classification relevant
a. E.g. Bob’s mark is registered in Class 12; skateboards are in
Class 28 (toys and sporting articles). Is this relevant?
i. Reliance Water Controls v Altencnic 2001 EWCA Civ
1928
b. Similarity of marks and similarity of goods/services
i. For confusing similarity
1. Principles in relation so ss.5(2)/10(2)
a. Similarity is a threshold requirement AND
b. The similarities between the marks and good/services must
create a ‘likelihood of confusion’
 i. Likelihood of confusion is assessed by reference to a
global assessment test with interdependent factors
e.g. Specsavers 2012 EWCA Civ 24
ii. Confusion must relate to trade origin-different
forms that confusion may take.
2. Global appreciation test
a. Specsvaers v Asda 2012 EWCA Civ 24
i. The likelihood of confusion must be appreciated
globally by taking into account of all relevant factors
ii. The matter must be judged through the eyes of the
average consumer of the goods or services in
question, who is deemed to be reasonably well
informed and reasonably circumspect and
observant, but who rarely has the chance to make
direct comparisons between marks and must
instead rely upon the imperfect picture of them he
has kept in his mind, and whose attention varies
according to the category of goods or services in
question
iii. The average consumer normally perceives a mark as
a whole and does not proceed to analyse its various
details.
iv. The visual, aural and conceptual similarities of the
marks must normally be assessed by reference to
the overall impressions created by the marks
bearing in mind their distinctive and dominant
components, but it is only when all other
components of a complex mark are negligible that it
is permissible to make the comparison solely on the
basis of the dominant elements
v. Nevertheless, the overall impression conveyed to
the public by a composite trade mark may, in
certain circumstances, be dominated by one or
more of its components.
vi. And beyond the usual case, where the overall
impression created by a mark depends heavily on
the dominant features of the mark, it is possible
that an element corresponding to an earlier trade
mark may retain an independent distinctive role in a
composite mark without necessarily constituting a
dominant element of that mark.
vii. A lesser degree of similarity between the goods or
services may be offset by a greater degree of
similarity between the marks and vice versa
 viii. There is a likelihood of confusion where the earlier
mark has a highly distinctive character, either per se
or because of the use that has been made of it.
ix. Mere association, in the strict sense that the later
mark brings the earlier mark to mind, is not
sufficient.
x. The reputation of a mark does not give grounds for
presuming a likelihood of confusion simply because
of a likelihood of association in the strict sense; and
xi. If the association between the marks cause the
public to wrongly believe that the respective goods
or services come form the same or economically
linked undertakings, there is likelihood of confusion.
3. Assessing similarity: goods & services
a. Canon v MGM (C-39/97) 1999 ETMR 1:
i. Earlier mark was CANON for cameras and
projectors, televisions filming and retransmissions
devices, etc.
ii. Later mark was CANNON for films record on video
tape cassettes, distribution of films, etc.
iii. In assessing similarity of goods and services, all the
relevant factors should be taken into account 23
1. Those factors include inter alia, their
nature, their end users and their method of
use and whether they are in competition
with each other or are complementary .
iv. Court of justice also says that there is an
interdependence in the factors relevant to the
global assessment test.
b. British Sugar v James Robertson & Sons 1996 RPC 281 (CH)
4. Specsavers
a. The asda slogans: “be a real spec saver at ASDA” “spec
savings at asda”
i. Kitchin LJ 87: ‘the court must consider the matter
from the perspective of the average consumer of
the goods or services in question and must take into
account all the circumstances of that use… The sign
is not to be considered stripped of its context .
b. What about the color green
i. Trial judge Mann J
1. The use of colour by Specsavers is not
relevant
2. Need to support the certainty of the
register
 ii. In the court of appeal, Kitchin LJ tentatively agreed
with Spescavers that Mann J erred in this regard.
1. Particularly relevant to analysis of the
wordless logo mark
2. Compare the worded logo marks-the trial
judge’s ultimate conclusions on this claim
were correct.
3. Referred questions to the CJEU.
a. Specsavers v Asda (c-252/12)
i. Where a mark has not been
registered in colour but
proprietor extensively used
it as so that it has become
associated in the public
mind… ‘the colour or
colours which a third party
uses in order to representa
sign alleged to infringe that
trade mark are relevant in
the global assessment of
the likelihood of confusion
or unfair advantage under
that provision’
5. Roger Maier v ASOS 2015 EWCA Civ 220
a. There is similarity between the signs and the goods
b. Likelihood of confusion made out
i. No confusion in practice
ii. But the trial judge did not consider a notional and
fair use of the mark across the goods in the
specification
iii. Likelihood of confusion accepted in relation to
causal wear.
6. Comic Enterprises v Twentieth Century Fox (the glee case)
a. Glee club in Notts and then the US drama tv series called
Glee
b. On confusing similarity
i. There is a ‘reasonable degree of similarity’ between
the mark and sign
ii. There is also similarity in the services provided by
CEL and FOX ‘and reasonably so’
iii. the analysis is finely balanced, but likelihood of
confusion is made out
1. evidence of actual confusion held to be
significant
 2. not fatal that this is often ‘wrong way
round’ confusion
3. what sort of connection?
c. ‘I think it not unreasonable to suppose that a consumer
might think that the producer of the TV show was also in
some way responsible for or connected with the comedy
and music venue.
7. Types of similarity: marks
a. Visual similarity
b. Aural similarity: Lloyd Schuhfabrik Meyer & Co. GmbH v
Klijsen Handel BV (C-342/97) (Lloyd v Loint’s both for shoes)
i. May be particularly important for goods and
services perceived verbally or for which word of
mouth is important
c. Conceptual similarity: SAbel v Puma (C-251/95) 1998 RPC
199 (right)
ii. For infringement by dilution
1. TMA. Ss. 5(3) & 10(3)
a. These provisions protect marks ‘with a reputation’ from
three harms: blurring, tarnishment, and free riding
i. Will refer to these together as ‘dilution’: note
slippage in language
b. Apply where an identical or similar mark has been used in
relation to any goods or services
i. Davidoff & Cie SA v Gofkid Ltd C-292/00
2. Applies only to marks that have a reputation
a. The requirement for a reputation is not onerous
b. General Motors Corporation v Yplon SA (C-375/97)
i. There must be a sufficient level of familiarity with
the claimant’s mark
1. Can be ‘the public at large or a more
specialized public’
ii. This will be satisfied when ‘the earlier mark is
known by a significant part of the public concerned
by the products or services covered by that trade
mark’
iii. Judged by ‘all the relevant facts of the case’
3. Confusion as to origin not required- a ‘link’ is sufficient
a. Specsavers Kitchin LJ 120: Infringement requires… ‘such
that the average consumer makes a connection between
them. It is not necessary that the degree of similarity is such
as to create a likelihood of confusion’ Must be a link
b. Intel Corp v CPM Uk C-252/07: whether there is a link is
assessed globally and includes
 i. The degree of similarity between the conflicting
marks
ii. The nature of the goods or services for which the
conflicting marks were registered, including the
degree of closeness or dissimilarity between those
goods or services, and the relevant section of the
public
iii. The strength of the earlier mark’s reputation
iv. The degree of the earlier mark’s distinctive
character, whether inhere or acquired through use
v. The existence of the likelihood of confusion on the
part of the public.
4. Dilution harms
a. Court of justice has identified three harms in the statutory
language
i. Blurring: detrimental to the distinctive character…
of the mark.
ii. Tarnishment: detrimental to… the repute of the
mark
iii. Free riding: takes unfair advantage… of the
distinctive character or the repute of the mark
b. The meaning of blurring and tarnishmentw as disccused in
US case Mattel Inc v MCA Records Inc 296 F 3d 894 9th
circuit 2002
i. ‘dilution refers to the whittling away of the value of
a trademark’ Tylenol snowboards. Harry Potter dry
cleaners. ‘these uses dilute the selling power of
these trademarks by blurring their uniqueness and
singularity and or by tarnishing them with negative
associations’
ii. ‘dilution protects owners from an appropriation of
the substantial investment that they have made in
their marks.’
5. Doctrinal indications: blurring
a. Intel corp v CPM UK C 252/07
i. arises where the earlier mark’s ability to identify the
origin of goods or services… is weakened, since use
of the later mark leads to dispersion of the identity
and hold upon the public mind of the earlier mark,
29, 76
ii. The stronger the distinctive character of the earlier
mark or the more that mark is unique, the more
likely detriment will have been caused to it; 69/75
 iii. There must be ‘evidence of a change in the economic
behaviour of the average consumer of the goods or
services for which the earlier mark was registered
consequent on the use of the later mark, or a serious
likelihood that such a change will occur in the future’
77
b. Interflora v Marks & Spencer C 323/09
i. Facts: Concerned Google’s adwords service. M&S
purchased keywords including ‘interflora’. The M&S
advertisement read: M&S flowers online. Followed
by link. ‘gorgeous fresh flowers and plants. Order by
5pm for next day delivery.
1. In adwords cases, an action for double
identity infringement is available where
a. The keyword purchased by D is
identical to the claimant’s mark
b. The keyword was registered
without the trade mark claimant’s
consent.
c. D used the keyword in relation to
identical goods or services and
d. That use is liable to have an adverse
effect on one of the functions of the
trade mark.
2. Functions (expanded upon at end of this
week’s notes with Loreal case)
a. Essential function: to guarantee to
consumers the origin of the goods
i. There will be an adverse
effect on essential function
where ad does not enable
reasonably observant
internet users to ascertain
whether the goods in the
ad originate from
proprietor of trade mark or
an undertaking
economically linked to
them.
b. Advertising function: use of the
mark ‘to inform and persuade
consuemrs
i. Repeats statements from
Google France case that the
 advertising function is not
affected in these sort of fact
patterns
c. Investment function: use ‘to acquire
or preserve a reputation capable of
attracting consumers and retaining
their loyalty’
i. There will be an adverse
affect on the trade mark’s
investment function if the
use ‘substantially interferes
with the proprietor’s use of
its trade mark to acquire or
preserve a reputation
capable of attracting
consumers and retaining
their loyalty.
ii. Overlaps with advertising
function, but distinct.
ii. Suggests you don’t have to wait and see
iii. If the keyword triggers an advertisement which
enables the ‘reasonably well-informed and
reasonably observant internet user to tell that the
goods or services offered originate not from the
proprietor of the trade mark but, on the contrary,
from a competitor of that proprietor’
1. This will not impair the trade mark’s
distinctiveness [81]
6. Doctrinal indications: tarnishment
a. L’Oreal v Bellure C-487/07) [40]:
i. Tarnishment is caused when the goods or services
for which the identical or similar sign is used by the
third party may be perceived by the public in such a
way that the trade mark’s power of attraction is
reduced.
1. Likelihood may arise from the fact that the
goods or services offered by a TP possess a
characteristic or quality which is liable to
have a negative impact on the image of the
mark.
b. Claeryn/Klarein 1976 (Benelux Court of Justice 1975)
i. Applied a provision which allowed the proprietor to
oppose ‘any other use without due case in the
course of trade of the mark or a similar sign made
 under such conditions that would case damage to
the owner of the mark’
ii. Has been described as giving the ‘widest possible
interpretation’ to that language.
7. Doctrinal indications: unfair advantage
a. L’oreal v bellure
i. Parasitism or free riding relates not to the
detriment caused to the mark ‘but to the
advantage taken by the TP as a result of the use of
the identical or similar sign’
ii. This is assessed by a global assessment: 44
1. Relevant factors:
a. Strength of mark’s reputation
b. Degree of distinctive character of
mark
c. Degree of similarity between marks
at issue
d. Nature and degree of proximity of
the goods or services
iii. Following the decision, D’s accepted th historical
infringement in relation to some of the original
packaging
1. Jacob LJ would have held that the
comparison ists gave rise to infringmenet
under art. 5(2) [46-50]
a. He was highly critical of the ECJ
decision, and of free riding as a
trade mark harm: [16-19]
i. The term free riding is
subtly and dangerously
emotive. It does not
provide clarity regarding
the boundary between
permissible and
impermissible conduct
ii. Poor consumer are the
losers.
b. Interflora v Marks and Spence
i. If an advertiser purchases as a keyword the trade
mark of a competitor, that advertiser intends users
to click on his or her link. It cannot be denied that
the advertiser’s purpose is to take advantage of the
distinctive character and reupute and that these
 sales will confer a benefit on the advertiser that has
not been paid for [84-90]
8. Without due cause
a. Interflora v Marks & Spencer [91]: activity will not be
without due cause (i.e. be permissible) where:
i. The goods or services offered are not mere
imitations
ii. There is no dilution or tarnishment
iii. There is no adverse affect on the functions of the
trade mark concerned
iv. The goods or services are presented as a mere
alternative to those of the proprietor.
b. Leidseplein Beheer v Red Bull
i. Where blurring, tarnishment and/or unfair
advantage is made out, the onus shifts ot the
defendant to show due cuase 44
ii. Due case is a balancing mechanism to ensure that
the interests of competitors are considered. It is
assessed not only be reference to objective factors
but the subjective interests of the defendant 46-48
1. In this case (continued use of prior sign) this
includes historical use and good faith of the
defendant [50-60]
9. Example: Comic Enterprises (glee case)
a. On dilution
i. Requirement for a reputation made out
ii. Link necessarily established by the findings on
likelihood of confusion
iii. There is detriment through being swamped and
evidence of a change in the behaviour of consumers
iv. Fox did not have due case.
iii. ‘use in the course of trade
1. Required for all three limbs of infringement
a. ‘use of a sign is defined in TMA s. 10(4)
i. Includes affixing the sign to goods or their packaging
offering goods for sale under the sign, using the sign
in advertising, etc.
ii. In para. E, includes use in comparative advertising in
a manner contrary to the misleading marketing
regulations 2008
b. Requires that the use take place in the context of
commercial activity with a view to economic advantage, and
not as a private matter; Arsenal v Reed (c-206/01
c. Must D have used the sign ‘as a trade mark’
 i. Compere ss. 10(2) &(1)
1. TMA s. 10(1)
a. ‘a person infringes a registered
trade mark if he uses in the course
of trade a sign which is identical
with the trade mark in relation to
goods or services which are
identical with those for which it is
registered’
i. Veda Advantage v Malouf
Group 2016
ii. Arsenal v Reed
iii. Adam opel v autec
b. Possible principles behind s. 10(1)
i. Strict liability, subject to
defences
ii. The interpretation
preferred by Jacob J in
British Sugar v James
Robertson & Sons
iii. Consistent with taking
seriously the property
function of the register
iv. Confusion so likely it
should be inferred: e.g.
TMD 2015 Recital 16
ii. Holterhoff C-2/00
1. Court of Justice states that the facts are
outside art. 5(1)(a) as use of the mark ‘does
not infringe any of the interests which
Article 5(1) is intended to protect’ [16]
2. This is a purely descriptive use
a. Trade mark referred to in the
course of commercial negotiations
with a potential customer
b. Reference made to describe the
characteristics of the produce
offered for sale
c. The reference cannot be
interpreted by the potential
customer as indicating the origin of
the product.
3. Arsenal v Reed
 a. Laddie J referred to the Court of
Justice the question of whether Art.
5(1)(a) requires that the use
indicate trade origin
b. The ecj answered that the relevant
question is not trade mark use but
whether the use affects the
functions of the trade mark, in
particular the essential function
c. The ECJ observed that the use by
Mr. Reed suggested a material link
between the goods and the trade
mark proprietor. Laddie J ignored
this when the case returned to the
High court but this was reversed by
the court of appeal.
d. Quotes
i. ‘the exercise of that right
must therefore be reserved
to cases in which a TP use
of the sign affects or is
liable to affect the functions
of the trade mark, in
particular its essential
function of guaranteeing to
customers the origin of the
goods.
2. What is the relevance of the so-called functions analysis developed
by the CJEU
a. L’oreal v Bellure C-487/07
i. Art. 5(1)(a) allows a trade mark proprietor to
‘protect his specific interests as proprietor, that is to
ensure that the trade mark can fulfill its functions…’
[58]
ii. These functions include
1. The essential function (guaranteeing origin)
2. Guaranteeing the quality of goods or
services
3. And the communication, investment and
advertising functions
b. Criticisms of functions
i. After Loreal, a number of concerns and questions
were raised about functions analysis
 1. The definition of the functions, and how
they are affected is unclear
2. These are questions about whether
functions can be operationalized to create
working rules of law
3. How does functions analysis fit with the
other infringement provisions in ss. 10(2)
and (3)
4. Functions analysis may be contributing to
the expansion of liability for dilution harms.
c. Cosmetic Warriors Ltd v Amazon.co.uk Ltd 2014 EWHC 181
Ch
i. LUSH products are not sold on the amazon website
1. Complaint had three components
ii. Sponsored ad on search engine.
1. Lush soap at Amazon.co.uk. Low prices on
Lush soap. Free UK delivery on amazon
orders.
iii. Sponsored ad on search engine
1. Bomb Bath at Amazon.co.uk. low prices on
bomb bath. Free uk delivery on amazon
orders
iv. Use on internal amazon search engine
1. Consumer starts to type in ‘lu’. Drop down
menu appears offering lush products (but
they do not actually sell them)
2. If the user searches for ‘lush’ these
products appear based on the algorithm.
iv. Defences vs
1. What is the difference between defending and defences
a. Defending: the suite of strategies available to a person
when resisting a claim
b. Defences: explicit limits on rights which permit conduct that
is prima facie infringing.
2. Some strategies for defending claims
a. Put the claimant to proof
b. Challenge the mark
i. Application to remove: the mark did not meet the
requirements for registration and ought to be
declared invalid s. 47; and/or
ii. Application to revoke: the mark ought to be
annulled for non-use genericde, etc. : s. 46. (note s.
11A-non use as a defence)
3. Strategies for defending continued
a. argue that the elements of s. 10 are not made out
i. e.g. the sign and mark are not identical; there is no
likelihood of confusion; etc.
ii. elements of infringement analysis now seem to
cover matters that some would say ought to be
considered under the rubric for defences- e.g.
compare British Sugar and Holterhoff
b. vs rely on a defence
i. s. 11(2) (own name, descriptive and nominative
uses)
1. for this defence to apply, D’s conduct must
a. fall within paragraphs A, b, or c
i. a) use by an individual of
his own name/address
ii. b) use of signs or
indications which are not
distinctive or which concern
kind, quality, quantity,
intended purpose,
geographic origin, other
characteristics, etc, or
iii. c) referential use, in
particular use of a trade
mark where it is ‘necessary’
to indicate the intended
purpose of goods/services
b. and satisfy the proviso
i. ‘provided the use is in
accordance with honest
practes in industrial or
commercial matters.
ii. The proviso
1. Many of the considerations for “honest
practices” recur from case to case: Hasbro v
123 Nahrmittel
2. Gillette v LA Laboratories. (c-228/03)
a. The proviso “constitutes in
substance the expression of a duty
act fairly in relation to the
legitimate interests of the trade
mark owner [41]
3. Factors that may suggest against there
being honest practices
 a. Use that suggests a commercial
connection between the defendant
and the trade mark proprietor.
b. Use that affects the value of the
trade mark by taking unfair
advantage of its distinctive
character or repute
c. Use that discredits or denigrates
the mark
d. Use that presents the product as
being an imitation or replica.
iii. S. 11(2)(A) The use of the own name
1. Former approach
a. Can be invoked by natural persons
and companies: Reed Executive v
Reed Business Information esp.
[127-129]
i. Anheuser Busch v Budvar
b. Can apply to tading names: hotel
Cipriani SRL v Cipriani (Grosvenor
street) ltd [2010] EWCA Civ 110
2. This changed under TMD 2015 Art. 14(1)(a):
applies to individuals (natural persons)
only
a. Unsuccessfully challenged in Sky v
Skykick 2018
iv. S. 11(2)(B) descriptive and non distinctive elements
1. Why have a defence for descriptive uses?
a. Because of the effect of acquired
distinctiveness
b. Consider the position of other
traders who need to use these
descriptive marks to
i. Describe their own goods
or services or
ii. Compare their own goods
or services with those of
other traders
2. Unter TMD 2015, the defence in s. 11(2)(b)
was extended to non-distinctive elements
a. A trade mark that is distinctive may
have non-distinctive elements-
those should be fair game too.
 3. Is it a problem that D uses a descriptive
term as an indication of trade source
a. Later cases suggest this is not fatal
b. E.g. Gerolsteiner Brunnen v Putsch
C-100/02
i. Gerolsteiner owns GERRI in
relation to mineral water.
Putsch distributes soft
drinks in Germany that are
sold by reference to the
words KERRY spring.
ii. The defence in art. 6(1)(b)
could still apply even if the
use, in addition to
indicating geographical
origin- had trade mark
significance.
4. Hasbro v 123 Nahrmittel
a. Play dough vs yummy dough (edible
play dough)
b. Challenge to the validity of H’s mark
Fails
c. Infringement succeeds
i. Goods are identical
ii. Signs used by D is the
edible play dougbh
iii. Likelihood of confusion?
Yes- ‘to those who make
the connection, the signs
complained are
misappropriating the cachet
which is attached to the
marks… the words “edible
play dough” touch on
Hasbro’s high profile’
v. S. 11(2)C) referential use
1. Significance of s. 11(2)©: facilitates the free
movement of goods and the freedom to
provide a services by providing a defence
for traders who need to refer to the mark of
another trader in order to offer their goods
or services to the public
2. Examples:
 a. BMW v Deenik: repair services for
BMW cars
b. Gillette v LA Laboratories: the
production of blades that are
compatible with Gilette handles.
3. Comparative advertising
a. 2006 directive on misleading and
comparative advertising (MCAD)
sets out, in art. 4, circumstances in
which comparative advertising shall
be permitted.
i. Comparative advertising
defined in article 2©
b. Art. 4 has been referred to in trade
mark cases
i. Loreal v Bellure: links it to
Art. 6 (defences)
c. Under TMA s. 10(4)(e)
i. ‘use’ of a sign includes use
‘in comparative advertising
in a manner that is contrary
to the business protection
from misleading marketing
regulations 2008’
4. 2008 regulations ,reg 4
a. Comparative advertising shall be
permitted where it
i. Is not misleading
ii. Compares goods/services
meeting the same needs or
intended for the same
purpose
iii. Objective compares one or
more material, relevant,
verifiable and
representative features
(which may include price)
iv. Does not create confusion
among competitors
v. Does not discredit or
denigrate the mark
vi. (for products with
designations of origin)
 relates to products with the
same designation
vii. Does not take unfair
advantage of the reputation
of the mark
viii. Does not present
goods/services as imitations
or replicas of the
good/services bearing the
mark;
c. Specsavers
i. The finding in relation to the second strapline and
the logos was overturned on appeal (ie unfair
advantage also made out for those)
1. [153-164]
2. The sign “spec savings” and the mark
“specsavers are very similar, when assessed
visually, aurally and conceptually
3. The average consumer seeing the strapline
would make a connection to Specsavers-
and this was Asda’s intention
4. This constitutes an unfair advantage
5. 154: Asda intended to benefit from the
power of attraction attaching to the
specsavers brand and to exploit without
paying any compensation, Specsavers’
marketing efforts by conveying to
consumers that Asda offered real value in
the form of spectacle savings
d. Comparative advertising
i. Issue: many comparative advertisements do not
contain explicit, objective comparisons
ii. Illustration: Thompson v Eagle Boys Dial a Pizza
Australia Pty limited [2001] FCA 741
1. Being used for facts-not a trade mark case
2. Australian TMA s. 122(1): a person does not
infringe a registered trade mark when:… d)
the person uses the trade mark for the
purposes of comparative advertising.
e. and many more: acquiescence (s. 48); registration subject to
disclaimer or limitation (s. 13)

British sugar similarity of goods analysis

Introduction to Copyright

A. scope of course
a. our focus
i. the economic and moral rights of copyright; and
ii. direct infringement of copyright
b. note other rights and enforcement regimes
i. enforcement regimes for TPM’s
ii. performers’ rights, eg anti bootlegging.
iii. Secondary infringement provisions
iv. Criminal liability
B. Sources of law
a. Copyright, designs, and patents act 1988 (CDPA) plus associated statutory
instruments
i. Previous statutes: 1911 act and 1956 act
b. The development of UK copyright law has been influenced greatly by the partial
harmonization of copyright in the EU
i. The ‘vertical’ directives, e.g.:
1. Term, databases, rental and lending rights, computer programs,
orphaned works, etc.
ii. The ‘horizontal’ directive: information society Directive (ISD)
1. Amended and supplemented by the DSM directive
iii. Other directives relevant to copyright: Enforcement Directive and E-
Commerce Directive
C. EU directives
a. Directives are interpreted by the CJEU
i. The CJEU is in regular receipt of references in relation to copyright.
ii. It has been said that the CJEU is harmonizing beyond the directives
1. “harmonization by stealth’
2. Ex. AOIC as the general standard for originality; scope of the
communication right to cover the unharmonized right of public
performance.
D. What about Brexit
a. Reminder of the new legal framework
i. Retention of EU law is the starting point
ii. Guidance for interpreting retained EU case law: European Union Withdrawal
Act 2018 s. 6
1. No court is bound by CJEU cases handed down after the transition
period.
a. Although judges ‘may have regard to anything done… so far
as it is relevant’
b. the Supreme Court is not bound by any retained EU case
law… and nor is the Court of Appeal: SI 1525/2020 reg. 3 (b)
2. the UK was not required to implement the DSM directive
a. the UK might cherry pick bits that it likes.
 b. Some of the techniques that UK judges have used when considering CJEU case law
i. ‘focus on the words of the CDPA’
1. Response Clothing v The Edinburgh Woolen Mills [2020] EWHC 148
(subject matter)
ii. ‘nothing to see here’
1. Nla v meltwater holding [2011] EWCA Civ 890 (originality)
iii. ‘there is a major change’ \
1. TuneIn v Warner Music 2021 (communication to the public)
E. Structure of copyright: economic rights
a.

F. Direct infringement of copyright

a.

G. Important copyright principles

a. Territoriality
 i. IP law is territorial: domestic statutes and laws do not have extra-territorial
effect
ii. Bilateral and multilateral treaties have been one response to issues
associated with territoriality
1. Many treaties require ‘national treatment’
a. The IP protections granted to foreign nationals must be the
same as or better than those afforded a Member State’s
own nationals.
iii. Key international instruments relevant to copyright
1. Berne Convention for the Protection of Literary and Artistic Works
1886 (Berne)
2. Agreement on Trade related aspects of intellectual property 1994
(trips)
3. WIPO copyright treaty
iv. Note other bilateral trade agreements
1. UK will be negotiating a lot of these.
b. Prohibition on formalities
i. Berne Convention art. 5(2) ‘the enjoyment and the exercise of these rights
shall not be subject to any formality’
ii. Many copyright statutes have formalities requirements for assignments and
exclusive licencees
1. E.g. CDPA s. 90(3): ‘an assignment of copyright is not effective
unless it is in writing signed by or on behalf of the ‘assignor’
2. But an assignment that does not comply with formalities may take
effect in equity.
c. Idea-expression dichotomy
i. The proposition that copyright protects particular forms of expression and
does not extend to the underlying ideas
1. For an articulartion: IceTV 2009
a. Copyright does not protect facts or information, instead it
protects the particular form of expression of the
information (words figures and symbos).
b. ‘the information/expression dichotomy, in copyright law, is
rooted in considerations of social utility. It is an exception to
the law’s general abhorrence of monopolies.
2. Reflected in a number of doctrines, especially as regards to
infringement and defences
a. Are these doctrines adequate to protect speech interests of
those who use or re-use copyright material
3. For some works, it may be difficult to differentiate expression and
form.
d. Proprietary underpinnings
i. Can do property type exploitation such as assignment and licensing
 ii. For the most part, copyright fits most comfortably within the category of
property rules rather than liability or inalienability rules
1. Calabresi & Melamed 1972 85 Harvard Law Review 1089.
iii. Other areas of law treat it like property
iv. The relevant statute describes it as property: CDPA s. 1(1)
v. Property concepts- or at least, certain understandings of property- underpin
many law reform and political debates.
vi. Some consequences
1. Distinction between tangible and intangible
a. Re Dickens; Dickens v Hawksley 1935
2. Identification of subject matter
a. In other IP systems, registration is used to delineate the
object of rights, what about copyright.
3. Depth of rights
a. IP rights relate not just to the literal iteration of the
intangible, but extend below. But how far?
H. Case Study: sampling in music
a. ‘by rewarding the author or compose with some form of monopoly in relation to his
or her work… it may be that the extent of that monopoly, both in terms of time and
extent of restriction, ought not necessarily be the same for every work’ Emmet J
b. EMI Songs Australia Pty Limited v Larrikin Music Publishing Pty Limited
i. Court considered whether Larrikin (a music publisher) was the owner of the
copyright in classic Australian children’s song ‘Kookaburra Sits in the old
Gum tree’ written and composed in 1934 by Marion Sinclair.
ii. Court held the copyright belonged to Larrikin.
iii. Substantive issue was whether the 1979 and 1981 recordings of a different
work infringed the copyright .
iv. Jacobson J applied three step approach to comparing competing works
1. Identify the work in which copyright subsists
2. Identify in the allegedly infringing work the part that has been
derived or copied from the copyright work; and
3. Determine whether the part taken is a substantial part of the
copyright work
4. There was no dispute between the parties that Kookaburra was an
original composition.
v. Held that the there is a sufficient degree of objective similarity between the
two songs and there was valid copyright infringement.
I. Why is copying a problem
a. It reduces the incentives for musicians to write and distribute music
i. Often presented as part of a utilitarian justification for copyright
ii. Copyright works are intangible and therefore non-revalrous and non
depletable
iii. In the absence of legal protection, works can be copied at the marginal cost
of copying without the copyist bearing the costs of creation
 iv. This may lead to an undersupply problem if copyright owners cannot
capture the benefits generated by their works
v. The creation of exclusive rights allows copyright owners to internalize these
benefits, thus encouraging creation and distribution
vi. This is important not just for creators, but for investors and other
downstream parties.
b. Some questions about the incentivization justification
i. Can we be confident that the availability of copyright protection Is the
incentive. What other factors encourage creation. Are people aware of he
law?
ii. If we agree with the justification
1. What level of exclusivity is optimal
a. Issue for translating utilitarian theory into practice
b. How do we ensure that copyright does not overreach
i. ‘tragedy of the anticommons’ problem.
iii. Can we respond to the motivations of different authors, variation in creative
conditions
c. Sinclair and Zevon applied their labour to creating their respective works, and ought
to be able to benefit from their efforts
i. A natural rights approach derived from Lockean Labour Theory
ii. Note qualifications on a Lockean approach, especially the enough and as
good proviso
iii. May have heightened attractiveness for copyright, to the extent the creator
is making a new work and not merely seeking to appropriate an existing
lthing
iv. What sort of labour counts? And are copyright works really “new” and made
solely by the creator;
d. People should not free ride off the efforts of others or reap where they have not
sown
i. Is this a new justification or a restatement of an incentives or labour based
thesis
1. As an economic concept, free riding is about destroying incentives
ii. Positive externalities are ubiquitous in society. The mere presence of
positive externalities does not tell us that legal intervention is warranted
J. Sheeran
a. (different case but still good) Ed townsend’s heirs were suing Ed Sheeran for
copyright infringement on his two songs “lets get it on” and “Thinking out loud”
i. Ed Sheeran moved for summary judgement arguing that
1. Scope of plaintiff’s copyright protection in the song Is limited to the
sheet music deposited with the copyright office not the sound
recording
a. Court found not necessary to decied whether deposit copy
or sound recording defined scope of composition’s
copyright, would not affect outcome.
 2. The two songs are not substantially similar
a. ‘total concept and overall feel’ test considers whether an
average lay observer would have recognized the alleged
copy as having been appropriated from the copyright work
b. More discerning test: court extracts the unprotectable
elements and consider whether the protectable elements
standing alone are substantially similar.
3. Any alleged similarities are commonplace musical elements
a. The two points here were found to be too ambiguous and
to answer the question, there would need to be a trial.
4. Plaintiff griffin lacks standing.
b. Class notes
i. Why is public performance a problem
1. Sheeran did not cnsent<- control issue
2. They did not pay <-remuneration issue
3. Sheeran may be though to have endorsed the message of the
posters <- reputation and compelled speech issues
4. Sheeran does not like his song being used in this context <- dignity
issue
ii. To what extent ought each of these concerns to be relevant to copyright
law? Consider
1. Fair dealing for criticism, review, parody and satire
2. Moral rights.
K. Why is copying a problem
a. As a matter of dignity and autonomy, authors should be able to control the use of
their works
i. Another natural rights approach based on personhood (Kant, Hegel, etc)
ii. There is a suggestion that continental European copyright systems are more
informed by these considerations than common law countries
iii. To what extent can this account explain the totality of copyright? Does it
apply to all creative conditions?
L. The public domain
a. Usage varies but the ‘public domain’ can be said to refer to things not protected by
copyright. E.g.
i. Subject matter that was formerly protected but for which copyright
protection has expired ( a key idea in the social contract understanding of
copyright)
ii. Ideas. Information, facts, and non protectable subject matter
iii. [under a broad view] other instances where uses do not infringe copyright,
e.g., insubstantial copying and use permitted by an exception such as fair
dealing
b. ‘public domain’ is not meant to mean public or to the public in this context.

Subject Matter in relation to copyright

A. Subsistence in the UK (subsistence means the work has to be original and have taken a
minimal amount of effort)
a. The work is within the subject matter listed in CDPA s. 1(1)
b. The work is
i. For LDMA’s original-s.1(1) or;
1. LDMA’s=work will be automatically protected by copyright since
creation.
ii. For the rest, not copied- see ss. 5a(2), 5b(2), 6(6), 8(2)
c. For LDM’s, the work is recorded in a material form: s. 3(2)
i. Recording does not need to be undertaken by or with the permission of the
author s. 3(3)
d. The work is sufficiently connected to the UK ss. 153-156
i. Reciprocal arrangements for foreign works
e. Judicial exclusion of some works due to immorality and transitional arrangements
for works that exited prior to 1 august 1989.
B. Categories of protected work
a. CDPA s. 1(1) recognizes eight categories of protected work
i. LDMA;s
1. Literary, dramatic, musical and artistic works.
2. Sound recordings, films and broadcasts
3. And typographic arrangements (TAPES)
b. Different ‘boxes’
i. Hyperion Records v Sawkins 2005 EWCA Civ 565
1. 74: ‘the definition of “music” is not a definition at all-its obvious
purpose is just to separate out lyrics or choreographical directions
or the like. They go into a different “box” for copyright purposes.’
c. this has been understood as an exhaustive list.
C. Authorial works and related rights
a. A distinction has been drawn between authorial works and those created by
entrepreneurs
i. Works of authors protected by authorial copyrights
ii. Works of entrepreneurs protected by related rights
b. This approach is reflected in European copyright directives.
c. Such a distinction was adopted in the Copyright Act 1956 UK . Pt 1 and Pt. 2
d. There is no longer a clear division in the CDPA
i. All subject matter described as copyright works s. 1(2)
ii. This can create problems- e.g. film copyright (soon)
D. Literary works
a. Inclusive definition of “literary work” CDPA s. 3(1)
i. Works (not being dramatic or musical works) that are written, spoken or
sung.
ii. Includes tables, compilations, databases, and computer programs.

a. Literary works must communicate instructions,

information, or pleasure.
 b. Provided some people can understand the stuff, it can be
a literary work
c. Do not need intent in the traditional sense
b. No Literary quality is not required.
i. University of London Press v University Tutorial Press 1916 2 CH 601
1. University of London appointed two professor who made an exam
to publish. D university published question papers similar.
2. Could the academic paper be considered as a literary work enjoying
copyright protection.
3. The court found that at the relevant time, literary work included:
maps, charts, plans, tables and compilation.
a. The paper required compilation of question with the
application of intelligence and reasonable consideration.
The works will be literary work even if it is not literature.
4. What is worth copying is prima facie worth protecting
c. A literary work affords information, instruction or pleasure in the form of literary
enjoyment
i. Exxon v Exxon Insurance 1982 Ch 119
1. The word exxon formed part of the corporate names of the
company. D’s were also using the word in their trading name. Exxon
corp claimed copyright and sought an injunction to stop D from
using the word Exxon and change name to something excluding
exxon.
2. Judge refused to grant an injunction because “exxon” did not qualify
as an “original literary work” suitable for protection under the
Copyright Act 1956
3. Court of Appeal dismissed the appeal and held that the act
afforded protection to “original literary work”
a. A literary work was something that conveyed information
instruction, or pleasure. The word Exxon did not do this.
E. Computer programs
a. TRIPS art. 10(1): computer programs whether expressed in source code or object
code are protected as literary works
b. Bexpecnostni Softwarova ASociace C-393/09)
i. 35: ‘the object of the protection [of the software directive] is the expression
in any form of a computer program which permits reproduction in different
computer languages, such as the source code and the object code
ii. Graphic user interface is not a computer program
1. The essential element of a GUI is its ability to allow a user to
interact with the computer program. Since the feature is not
maintained when the GUI is broadcast on television, there is no
communication to the public of the GUI.
c. SAS institute v World Programming 2013 EWHC 69
i. Doubts that SAS language and data files formats are works.
 ii. Court was asked the extent to which developer of a computer program may
lawfully replicate the functions of an existing program. SAS had produced a
software language and system. D had produced software intended to mimic.
iii. Held that
1. If expression is dictated by technical function, then the criterion of
originality is not satisfied
2. And where that is the case, the product is not an intellectual
creation of the author at all.
iv. Own intellectual creation=exercising of expressive and creative choices in
producing the work.
F. Headlines and Titles
a. Francis Day and Hunter v 20th Centrufy Fox 1940 AC 112 PC
i. “the man who broke the bank at Monte Carlo”
ii. Copyright protection was asserted in connection with the title above
iii. Held that it was not a literary work capable of attracting copyright
protection. Such titles do not involve literary composition and will not be
sufficiently substantial to justify claims of copyright infringement.
b. Fairfax Media publications v Reed 2010 FCA 984
i. Examples: “investors warned on super changes” “Blackout probe sheds little
Light’
ii. Newspaper headlines do not have copyright protection.
1. Not capable of being literary works in which copyright can subsist
c. Infopaq International v Danske Dagblades Forening (c-5/08 [44-47]
i. Suggests that Short Literary works and components of literary works can be
original
ii. 47: ‘the possibility may not be ruled out that certain isolated sentences, or
even certain parts of sentences in the text in question, may be suitable for
conveying to the reader the originality of a publication such as a newspaper
article.
1. “copyright within the meaning of article 2(a) of Directive 2001/29 is
liable to apply only in relation to a subject matter which is original in
the sense that it is its author’s own intellectual creation.’
d. Newspaper licensing agency ltd v meltwater 2010 EWHC 3099 CH 2011 EWCA Civ
890
i. Proudman J: applying Infopaq, accepted that some headlines were
protected as original Literary works
1. There is skill in enticing and entertaining headlines
ii. Court of appeal: this conclusion is unassailable
1. Unable to be attacked or questioned.
G. Databases & compilations
a. Such things could be
i. A table or compilation other than a database : CDPA s. 3
ii. An original database: CDPA s. 3(A)
 1. S. 3(a)(1): “a collection of independent works, data or other
materials which
a. Are arranged in a systematic or methodical way
b. And are individually accessible by electronic or other means
2. Must be authors original intellectual creation by virtue of selection
or arrangement s. 3(a)(2)
iii. A database within the sui generis right: copyright and rights in databases
regulations 1997 part 3
1. Although an EU innovation, this has survived Brexit
b. The sui generis database right
i. Database has the same meaning as CDPA. S 3(A)(1): reg. 12(1)
ii. This right arises “if there has been a substantial investment in obtaining,
verifying or presenting the contents of the database” reg 13(1)
1. Originality is not required
2. The copyright status of the database or its contents is not relevant.
3. Investment “includes any investment, whether of financial, human
or technical resources” reg. 12(1)
iii. Shorter duration than copyright
iv. Introduced because of concerns about unprotected (nonoriginal)
databases…. Has it achieved its stated aims?
H. Dramatic Works and Films
a. Definitions in CDPA
i. Dramatic work “includes a work of dance or mime” s. 3(2)
1. To be protectable, a dramatic work must be original: s. 1(1)(a)
ii. Film means “a recording on any medium from which a moving image may by
any means be produced. S. 5(b)(1)
1. To be protectable, must not be a copy of a previous film: s. 5b(4)
2. Includes all manner of recordings- CCTV, actuality footage, etc.
iii. Film copyright is tricky as films often embody images that have dramatic
purposes.
1. This dual character is reflected explicitly In the copyright statues in
other countries (Germany copyright act)
b. German Copyright act
i. Art. 1: the authors of works in the literary, scientific, and artistic domain
enjoy protection for their works in accordance with this act
ii. Art. 2(1) protected works in the literary scientific and artistic domain include
in particular
1. Literary works such as written works, speeches and computer
programs
2. Musical works
3. Pantomimic works including works of dance
4. Artistic works including works of architecture and of applied art
5. Cinematographic works
iii. Arts. 85 (audio recordings) 87 (Broadcasts) 94 (films)
I. The UK approach to film
a. Norowzian v Arks (no. 1 ) 1998 FSR 394: the film right pertains only to acts with the
recording
i. Considered ‘thin’
b. Norowizan v Arks No. 2 2000: a dramatic work ‘is a work of action, with or without
words or music, which is capable of being performed before an audience. A film will
often though not always, be a work of action and it is capable of being performed
before an audience’ p. 367
i. DW copyright is ‘thick’ gives greater reach to an infringement claim
c. For issues with the UK approach, compare
i. Term Directive Arts. 2, 3(3)
1. Art 2
a. (1) author of a cinematographic work is the principal
director (s)
b. (2) term of protection is 70 years after death of last of the
following persons to survive irrespective of whether they
are authros
2. Art 3(3)
a. The rights of producers of the first fixation of a film shall
expire 50 years after the first fixation is made or the film is
first published.
ii. CDPA ss. 9(1), (2) (ab), 12(2), 13(b)
1. S. 9(1)
a. The author of a dramatic work is the person who creates it
2. S (12(2)
a. Copyright expires at the end of the period of 70 years from
the end of the calendar year in which the author dies
3. 9(2)(AB)
a. The author of a film is the producer and principal director
4. S. 13(b)
a. Term of protection is 70 years after the death of the last of
the following persons to survive
i. Principal director, author of screenplay, etc. as per.
Art. 2 of the term directive.
J. Dramatic formats
a. Green v broadcasting corporation of new Zealand 1989 RPC 900
i. There must be ‘sufficient unity for the work to be capable of being
performed’
1. This test was not met
b. The Ukulele Orchestra of Great Britain v Clausen 2015
c. Banner Universal Motion Pictures v Endemol Shine Group 2017
d. Notes
i. Whatever the law says, there is a widespread industry norm of buying and
selling format ‘rights’
 ii. BOC may provide some protection of those pitching ideas.
K. Musical Works & Sound Recordings
a. Definitions in the CDPA
i. MW “means a work consisting of music, exclusive of any words or action
intended to be sung, spoken or performed with the music” CDPA s. 3(1)
ii. SR means
1. “a recording of sounds from which the sounds may be reproduced
2. Or a recording of the whole or any part of a LDM from which sounds
reproducing the work or part may be produced, regardless of the
medium on which the recording is made or the method by which
the sounds are reproduced or produced” CDPA. S. 5(A)(1)
b. Hyperion Records Ltd v Sawkins 2005
i. 53: ‘in the absence of a special statutory definition of music, ordinary usage
assists… The essence of music is combing sounds for listening to. Music is
not the same as mere noise. The sound of music is intended to produce
effects of some kind on the listeners emotions and intellect’
ii. What counts as “work” goes beyond the mere notes 54-56
c. Coffey v Warner/Chappell Music LTD 2005 EWHC 449
i. Focus must be on the composition rather than interpretation or
performance characteristics by the performer
ii. Nor was it proper for the claimant to define the work by reference to
certain cherry picked features.
d. Australia: Boomerang Investments Pty Ltd v Padgett 2020 FCA 535
i. Are the lyrics, although separately protected as a LW, also part of the MW?
1. Yes [65-77]
2. ‘it would seem to me to be surreal to ask about the various qualities
of the musical work constituted by a song whilst insisting that one
must put the activities of the instrument which is the human voice
entirely from one’s mind and consider the song only as a non
human instrumental episode’ 69
e. Compare CDPA s. 3(1): a MW does not include ‘any words or action intended to be
sung, spoken or performed with the music’
i. Hayes v Phonogram Limited 2002 EWHC 2062 CH
ii. Pre 1988 approach: Williamson Music Ltd v Pearson partnership 1987 FSR
97
L. Artistic works and craftsmanship
a. Start with CDPA. S 4(1)- artistic work means
i. A graphic work, photograph, sculpture or collage, irrespective of artistic
quality.
ii. A work of architecture being a building or a model for a building or
iii. A work of artistic craftsmanship
b. Key terms in s. 4(2)
i. Graphic work includes “any painting, drawing, diagram, map chart or plan”
and “any engraving, etching, lithograph, woodcut, or similar work”
 ii. Sculpture “includes a cast or model made for purposes of sculpture’
c. Creation Records v NGN
i. Does copyright subsist in the set for an album cover as
1. A sculpture?
2. A work of artistic craftsmanship?
a. Compare Shelley films v Rex Features 1994
3. A collage?
ii. On what basis did the plaintiffs prevail?
iii. Photoshoot at a hotel for an album cover. Album had a white RR on a
swimming pool and other features. Newspaper took an unathorised photo
of the seen. The plaintiff sought an injunction for the picture.
1. Court held that the scene of a photoshoot at a hotel could not be a
dramatic work since it was inherently statice having no movement,
story or action. Not a sculpture or artistic work.
2. Court found that the photo was in breach of confidence.
3. Held that photo could not be regarded as a copy of the official
photo. Person who arranged the scene did not own the copyright in
the unauthorized picture.
d. What is a painting (Merchandising v HarpBond)
i. Is adam ant’s distinctive makeup a “painting” for the purposes of copyright
law?
ii. “a painting is not an idea, it is an object, and paint without a surface is not a
painting… Makeup, as such, however idiosyncratic it may be as an idea,
cannot possibly be a painting for the purposes of the Copyright Act 1956”
Lawton LJ FSR p. 46
e. Sculptures and engravings
i. Sculpture: “includes a cast or model made for purposes of sculpture” CDPA
s. 4(2)
ii. Graphic work includes “any engraving, etching, lithograph, woodcut or
similar work’
iii. Broad definitions: Lincoln Industries v Wham-O 1985 3 IPR 115
1. Similar: breville Europe 1995 FSR 77
f. What is a sculpture
i. There has been pushback
1. RE greenfield Products v Rover scott bonnar 1990
2. Metix 1997
a. “a three dimensional work made by the artists’ hand”
ii. How did the USKC classify the Imperial Stormtrooper helmets used in the
film Star Wars
1. Lucasfilm Ltd v Ainsworth 2012
a. A synthesis of Mr. Justice Mann’s factors as to what is a
sculpture 118
 i. Take account of the normal use of the word
“sculpture” bearing in mind it refers not just to
things you see in art galleries.
ii. Do not judge artistic worth
iii. It is essential that the sculpture was intended to
have “visual appeal” (ie: was of an artist’s hand),
although it is not fatal that the object has other
purposes too
1. WhamO and Breville wrongly decided
2. Explains why a pile of bricks can be a
“sculpture” when displayed at the tate
modern but not when dumped in a
driveway.
3. Not fata if the artist’s vision is not realized.
4. Process of fabrication is not determinative-
just because something is creating by
carving does not mean it is a sculpture.
g. Works of artistic craftsmanship
i. It is useful to have a roaming category of these types of works
ii. The object does not need to be hand-made but does need to manifest some
pride In sound workmanship
1. Hensher v Restawhile Upholstery 1976
a. 64
b. Factors
i. Was the prototype for a mass produced,
upholstered chair “artistic” it having been conceded
that it was a work of craftsmanship
ii. Whilst the house of Lord held unanimously that the
answer was no, the reasons differed significantly
1. Lord Reid: public response
2. Lord Morris: view of experts
3. Viscount Dilhorne: a finding of fact
4. Lord Kilbrandon: the intention of the
creator
5. Lord Simon: work produced by artistic-
craftsman
iii. But how is the requirement of artistic quality established? Note the
divergence of approaches in Hensher
h. Lucasfilm Ainsworth cont.
i. It was unsuccessfully argued before Mann J that the helmet was a work of
artistic craftsmanship
ii. Mann said statement from Bonz Group 1994 3 NZLR 216 as uself
1. “for a work to be regarded as one of artistic craftsmanship, it must
be possible fairly to say that the author was both a craftsman and
 an artists A craftsman is a person who makes something in a skillful
way and takes justified pride in their workmanship. An artist is a
person with creative liability who produced something which has
aesthetic appeal.
i. The Australian approach
i. Burge v Swarbrick 2007 HCA 17
1. The phrase “work of artistic craftsmanship” is a composite one
should be construed as a whole: [56]
2. The work must satisfy a threshold level of artistic quality: a “real or
substantial artistic element [52]
3. The question of whether a work is one of artistic craftsmanship is to
be assessed objective 63-65
4. Utilitarian items can be works of artistic craftsmanship. However the
more the creator is constrained by functional considerations, the
less likely he or she will have produced a work of “artistic”
craftsmanship.
5. [73]: matters of visual and aesthetic appeal were but one of a range
of considerations in the design of the plug.
6. Held that the work of Mr S. was not that of an artist-craftsman
[85]
j. EU harmonisation
i. Starting point: limited harmonisation in the directives regarding subject
matter
ii. But there is CJEU authority to suggest that copyright can subsist in any work
that is its author’s own intellectual creation (AOIC)
1. Bespecnostni Softwarova Asociace 44-47
2. FAPL [96-99]: football matches not “works” because they’re not
their AOIC
3. Any work? Arnold J in SAS 27
a. “nevertheless, it remains clear within the meaning of Art.
2(1) of the Berne Convention… [Literary and AW] not to
include sound recordings or broadcast.
iii. Other cases that may also be harmonizing subject matter
1. Levola Hengelo BV v Smilde Foods BV
a. Dutch supreme court has accepted that, in principle,
copyright can subsist in a perfume but opposite result
reached in France 22-24
b. Concludes that the taste of a food product cannot be a work
within the meaning of InfoSoc 44
i. To be a work, the subject matter “must be
expressed in a manner which makes it identifiable
with sufficient precision and objectivity, even
though that expression is not necessarily in
permanent form” 40
 c. Is this reasoning compelling?
2. Cofemel-Socidedade de Vestuario SA v G-star Raw CV
a. “work” in ISD art 2(A0 is an autonomous European Concept:
requires
i. The existence of an original object that is the AOIC
ii. That the work is “identifiable with sufficient
precision and objectivity” 40
1. There should be “no element of
subjectivity-given that it is detrimental to
legal certainty-in the process of identifying
the protected subject matter” 41
b. for designs, the only requirements for copyright protection
are those above. Member States may not add other
requirements
i. designs which meet originality requirements can
be protected.
c. Significance
i. Judgement adds further weight to the proposition
that EU law precludes an exhaustive list of subject
matter
ii. A lot may turn on the definition of AOIC
iii. If we take seriously the idea that it is improper for
there to be any assessment of artistic quality or the
creator’s intention, what odes it mean for
1. Works of artistic craftsmanship
2. Sculpture: as understood in Lucasfilm.
3. SL and Brompton Bicycle Ltd v Chedech
iv. BSA Case C 393/09
1. 45: the court has held that copyright within the meaning of directive
2001/29 is liable to apply only in relation to a subject matter which
is original in the sense that it is its author’s own intellectual creation
2. 46: consequently, the graphic user interface can, as a work be
protected by copyright if it is author’s own intellectual creation
3. 47: it is for the national court to ascertain whether that is the case
in the dispute before it.
k. ‘focus on the words of the CDPA;
i. Response Clothing Ltd v The Edinborough Woolen Mill
1. This fabric is not a graphic work, but accepts it is a work of artistic
craftsmanship
a. Uses the formulation in Bonz
b. How does Judge Hacon deal with Hensher?
i. ‘no binding principles of law can be deduced from
that judgement” 54
 2. What about CJEU case law? The question is “whether it is possible”
to interpret CDPA s. 4(1)© in accordance with EU law and not
whether EU law removes all gaps in protection 63
3. “complete conformity with ISD art. 2… would exclude any
requirement that the wave fabric has an aesthetic appeal and thus
would be inconsistent with the definition of work of artistic
craftsmanship stated in Bonz Group. I need not go that far since I
have found on the facts that the Wave Fabric does have aesthetic
appeal. This part of the definition in Bonz group is satisfied,
whether or not, in law, it is required’

Authorship and Originality

A. Authorship
a. Important in copyright law for a number of reasons
i. Statutory rules regarding ownership
ii. Many rules and principles rely on authors and authorship e.g. duration,
qualifying factors.
iii. Authorship is tied closely to the concept of originality.
1. Originality reflects the idea that ‘authorial presence’ is required.
a. Goldstein & Hugenholtz 3rd edition p. 191
iv. some authors receive moral rights
v. authors are the objects of the “social contract” and rewards of copyright.
b. Statutory indications
i. The term “author” is defined in CDPA s. 9(1): “author, in relation to a work,
means the person who creates it”
ii. The CDPA provides assistance regarding the so called authors of
entrepreneurial works
1. For sound recordings, this is the producer. S. 9(2)(aa)
2. For films, the producer and the principal director: s. 9(2)(ab)
3. For broadcasts, the person making the broadcast: s. 9(2)(b)
4. For TAPE’s: the publisher s. 9(2)(d)
iii. There are provisions for computer generated works in s. 9(3), works of
unknown authorship in ss. 9(4), (5) and presumptions regarding authorship
in ss. 104 & 105
B. Sound recordings & films
a. Who is the ‘person who creates it’
i. producer is defined in s. 178 “in relation to a sound recording or a film,
means the person by whom the arrangements necessary for the making of
the sound recording or film are undertaken
ii. principal director is not defined.
b. Cases
i. Beggars banquet v carlton 1993 EMLR 349
ii. A&M records v Video Collection INternation 1995 EMLR 25
 1. IE was tasked with making music to dance to. Engaged a Mr. Pullen
who in turn egaged an arranger and a conductor (r). R did the
following, commissioned and paid for the musical arrangmenets,
booked everything and paid everything.
2. Who was the author?
a. IE undertook the arraignments through Mr. Pullen. R made
the recordings but MR. P undertook the arrangements. It
was also an implied term in the contract between R and Mr.
P that IE Would own the recordings.
iii. Slater v Wimmer 2012
1. Meaning of producer and principal director for films
2. Mr. W believed he had commissioned Mr. S to film the footage on
the basis that he would own all the Ip rights. Mr. S believed
otherwise.
3. Judge Birss considered under s. 10(1a) of the CDPA 1988 that both
were joint owners of the film footage.
C. LDMA’s
a. The term “author” is defined in CDPA s. 9(1)
i. Author=the person who creates it
ii. Authorship is a factual matter and cannot be determined by private
rodering and contract.
1. Kogan v Martin
a. Martin was seeking a declaration from the court that he was
the sole author of a screenplay. While writing it, he was
romantically involved with an opera singer (kogan) and they
lived together, separating before the final draft. Mrs. K
argued she was a joint author.
b. Held that she was a joint author, making a contribution of
20%
c. LJ Floyd summarized the 11 key requirements of joint
authorship at 53 as follows
i. A work of joint authorship is a work produced by
the collaboration of all the people who created it
ii. There will be a collaboration where those people
undertake jointly to create the work with a common
design as to its general outline, and where they
share the labour of working it out...
iii. Derivative works do not qualify. Works where one
of the putative authors only provides editorial
corrections or critique... do not qualify. Ad hoc
suggestions of phrases or ideas... do not qualify.
iv. In determining whether there is a collaboration to
create a literary or artistic work it is never enough
to ask "who did the writing?"... For example there
 may be joint authorship if one person creates the
plot and the other writes the words...
v. Joint authors must be authors, in the sense that
they must have contributed a significant amount of
the skill which went into the creation of the work...
The statutory concept of an author includes all
those who created, selected or gathered together
the detailed concepts or emotions which the words
have fixed in writing.
vi. Contributions which are not "authorial" in the
above sense do not count...
vii. The question of what is enough of a contribution is
to be judged by the Infopaq test, i.e. whether the
putative joint author has contributed elements
which expressed that person's own intellectual
creation. The essence of that term is that the
person in question must have exercised free and
expressive choices. The more restrictive the choices
the less likely it will be that they satisfy the test.
viii. The contribution of a putative joint author must not
be distinct.
ix. There is no further requirement that the authors
must have subjectively intended to create a work of
joint authorship.
x. The fact that one of the authors has the final say on
what goes into the work may have some relevance
to whether there is a collaboration, but is not
conclusive...
xi. It follows that the respective shares of joint authors
are not required to be equal, but can reflect, pro
rata, the relative amounts of their contributions.
D. What contributions count?
a. Being a mere scribe is not enough
i. But note Walter v Lane 1900 AC 539
1. Facts of the case:
a. Times newspaper reporters wrote down notes of speeches
given by Earl of Roseberry. Reports added punctuation,
revision and correction. The respondent published a book
containing the speeches using the newspaper as a source
2. Pre dates explicit originality requirement for LW’s-legal question
related to authorship
3. Description in Desktop Marketing [59]
a. “the case may represent the high point of the line of
authority supportive of the proposition that one can be the
‘author’ of a work without scope for variance in expression.
ii. Walter v Lane cont.
1. Lord James p. 554: “a translator from one language to another
would be so”
b. Authorship does not require the production of a novel work, many works contain
preexisting information
i. “the compilation of a street directory, the reports of proceedings in courts
of law… have been held to bring the producers within the word “author”
c. Walter v Lane-outcome
i. CA initially said work was not original but HOL reversed the previous
decision. HOL held that the reporters were authors of these speeches under
copyright act 1842. Effort, skill and time were sufficient to make the
reporters’ work original.
d. Under UK law, as harmonized by Eu Copyright law, is Walter v Lane still good law?
i. In order for a work to be protected, an authorial work must be its author’s
own intellectual creation
ii. Even if there is skill and labour in writing by hand a transcript of a speech, is
the product an AOIC: does it embody creative choices?
E. Joint authorship
a. Means a work produced by collab of two or more authors in which the contribution
of each author is not distinct from that of the other author or authors.
i. S. 10
b. What contributions make someone a joint author
i. Tate v Thomas
1. MR. P commissioned the plaintiff to write music of a play and it was
agreed that two other should write the libretto. Peterman devised
the name of the play and leading characters, arranged scenic effects
and supplied certain catch lines in the dialogue. HE claimed all this
entitle him to be a joint author
2. Held that it was not enough to claim joint authorship in a play that a
contributor suggested a comic routine or a plot. The science effects
 were not in themselves subject to copyright protection under the
1911 act, and therefore to be disregarded, and his other
contributions were too insignificant.
ii. Donoghue v Allied newspapers
1. Farwell J “if the idea, however original, is nothing more than an
idea, and is not put into any form of words or any form of
expression such as a picture, then there is no such thing as
copyright at all”
2. “a person may have a brilliant idea…. But if he communicates that
idea to an author or an artist or a playwright, the production which
is the result of that communication is the copyright of the person
who has clothed the idea in form”
iii. Martin v Kogan
1. Screenplay was written after the relationship between two partners
broke down: There was no collaboration in producing the final
version [16-26]
a. Consent to use material from existing drafts not enough
i. Regardless, even if they were, Ms. K provided
minimal input to earlier drafts 75-85
b. Relevance of primary and secondary skills in assessing joint
authorship
2. Key points
a. Collaboration [32-35]
i. A collaborative work is different from a derivative
work
ii. Just because someone makes a contribution does
not mean it was in the course of collaboration
pursuant to a common design
1. Acting as a critic to make suggestions in
relation to a draft
iii. Collaboration does not require that both authors
did some of the writing.
b. Two or more authors [36-41]
i. The penmanship test: ray v classic FM 1998
1. Joint author “must contribute to the
production of the work and create
something protected by copyright which
finds its way into the finished work”
a. Contribution must be something
that approximates to penmanship.
ii. Cala homes v mcalpine
1. “to have regard merely to who pushed the
pen is too narrow a view of authorship”
 a. Mr Date was a co-author along with
the architect who drew the plans
because he was responsible for
deciding in detail what those
drawings were to look like.
b. “it is wrong to think that only th
person who carries out the
mechanical act of fixation is an
author.
iii. Similar to case of Heptulla v Orient Longman Ltd
1. When there is a joint design and mutual
contribution, then they are joint authors.
a. The approach of CALA is preferred.
c. Contribution
i. The joint author must make an authorial
contribution. What counts will depend on the type
of work
ii. There must be elements expressed in the work that
were the author’s own intellectual creation
d. Other matters
i. Subjective intention to create a joint work is not
required
ii. “final say” may be relevant but is not determinative
1. It was one of several reasons for rejecting
the claim of joint authorship in Brighton v
Jones
i. Brighton directed Jone’s
play. Jones rewrote the play
later and it became a major
success.
ii. Brighton claim that because
of her contribution to the
play during rehearshals, she
should be a joint author.
iii. Were the changes and
contributions made by
Brighton sufficiently
significant to establish joint
authorship on the play
iv. Held that in order to be a
joint author, one must
make a significant
contribution towards the
creation of the work.
 2. Brighton v Jones cont.
a. Contributions do not need to be of
equal magnitude to the
contributions of other joint authors
but they must be significant.
b. Contributions must be
contributions to the creation of the
work
i. Improving a work is not
creating the work. Brighton
had only improved a work
c. A person can become joint author
even when they don’t physical
author of the work. Used case law
of Cala
e. Originality reflects the idea that ‘authorial presence’ is
required in copyright works
i. Did the author use the right type and amount of
effort when making the work
ii. Introduced as an explicit requirement for
subsistence in the 1911 act
iii. Starting point: not copied
1. University of London Press pp. 609
a. “the work must not be copied from
another work-that it should
originate from the author.’
F. Originality
a. What might be required to ‘originate’ a work beyond that work being not copied
i. Sweat of the brow or mere industriousness is sufficient
ii. The work is an intellectual creation, possess a creative spark, etc. labour
alone is not enough
iii. The work must be unique or inventive. (NOT)
G. Originality & EU copyright Law
a. ISD: no mention of originality or intellectual creations
b. Database Directive Art. 3(1): refers to ‘databases which by reason of the selection or
arrangement of their contents, constitute the author’s own intellectual creation’
c. Software directive:
i. Recital 8: how to determine whether a computer program is an original
work
ii. Art. 1(3): ‘a computer program shall be protected if it is original in the sense
that it is the author’s own intellectual creation
d. Term directive
i. Recital 13 refers to Berne art 2(5)
 ii. Art. 6: provisions of the term directive apply to photographs that are
‘oriingal in the sense that they are the author’s own intellectual creation’
e. CJEU CASE law is such that AOIC is the standard for ALL copyright works.
H. Originality & CJEU Case law
a. Infopaq
i. Under ISD art. 2(a) authors have a right of reproduction in their ‘works’
ii. The scheme in Berne Art. 2 presupposes that protected works are
‘intellectual creaitons’
1. Similar: EU directives referring to AOIC’s
iii. In creating a harmonized framework, the ISD is based on the same principle
iv. As such, copyright, within the meaning of ISD art 2(a) applies only in relation
to subject matter that is ‘original in the sense that it is it’s authors own
intellectual creation’
b. Funke Medien v Germany
i. Military status reports can be protected by copyright only if the reports are
an intellectual creation of their author which “reflect the author’s
personality and are expressed by free and creative choices made by that
author in drafting those reports, which must be ascertained by the national
court in each case’
c. Cofemel v G-star raw
i. 30: for a subject matter to be original, ‘it is both necessary and sufficient
that the subject matter reflects the personality of its author, as an
expression of his free and creative choices…’
ii. 31: if there are rules which have no room for creative freedom, the subject
matter cannot be considered original.
I. Originality & the UK
a. The traditional test for originality in British copyright law required labour, skill and
or judgmenet
i. Phrase has been used disjunctively and cumulatively
ii. Other language and concepts have also been used
b. the Uk no uses the EU test of AOIC
i. you will still see reference to the traditional language in the case law
ii. to what extent is AOIC different from the traditional approach.
J. Meltwater 2011 EWCA Civ 890
a. The word ‘original’ does not connote novelty but that the work originated with the
author
i. University of London Press v University Tutorial Press Ltd; Ladbroke v
William Hill [19]
ii. The analysis in Infopaq [33-37] related to the conditions necessary to attract
copyright protection
iii. Infopaq has not “qualified the long standing test established by [university
of London and Ladbroke”
K. Databases and compilations
a. Traditional approach: Uk
 i. Ladbroke ltd v William hill 1964
1. A fixed odds football betting coupon is an original LW
2. Things to note
a. The different articulations of the originality standard
b. Preparatory work in determining the bets counted
ii. GA cramp & Sons Ltd v Frank Smythson
1. The tables in pocket diaries are not original: the selection of the
information is “commonplace, obvious, very minimum of labour and
judgement’
2. No argument that there was originality in the arrangement.
b. Traditional approach: Australia
i. Desktop Marketing v Telstra 2002 FCAFC 112
1. On labour being sufficient
a. Sackville J: originality, for a compilation, can be satisfied
through
i. Skill jjudgmenet or knowledge in the selection or
presentation of the information orrrrr
ii. Substantial labour or expense in collecting the
information
b. Lindgren J: “the labour and expense of collecting, verifying
recording and assembling data to be compiled” can
establish originality
2. why this approach
a. Black CJ: the common thread in the cases on industrious
collection is the “reluctance of the courts to allow unfair
advantage to be taken of the outlays of another in
originating a work”
L. Databases- EU/UK law
a. In the EU/UK, databases can be protected
i. As original Lw’s-full copyright protection
1. CDPA s. 3(2)
ii. Under the sui generis database right
1. Requires a substantial investment in obtaining, verifying or
presenting the contents of the database.
M. Current approach: Australia
a. Later case law has changed the approach away from the protection of labour and
towards protecting the particular form of expression
i. IceTV pty ltd v nine network Australia pty ltd
ii. Telstra corporation Ltd v Phone Directories Company Pty Ltd
1. Original means
a. Originated by an author
b. Author must be an actual person
c. To qualify as an author, person must bring forward
independent intellectual effort
 d. The point of copyright monopoly is the encouragement of
new works, not good works.’
b. Earlier AU case law must be treated with caution, although the shift in approach
should dnot be over-estimated
i. Jr Consulting & Drafting Pty Limited v Cummings 2016
N. Derivative works
a. Traditional approach
i. What standard ought to apply where a work incorporates pre-existing
works?
ii. There is authority that the relevant skill labour or judgement must give the
new work ‘some quality or character which the raw materials did not
possess and which differentiates the product from the raw material
1. Macmillan v Cooper 1924
iii. Interlego v Tyco industries
1. ‘skill labour or judgement merely in the process of copying cannot
confer originaliy
2. ‘copying, however much skill or labour may be devoted to the
process, cannot make an original work’
b. Sawkins v hyperion records
i. Dr. sawkins was successful before Patten J
1. The relevant test where a musical work is based on an existing score
is “whether the new work is sufficiently original in terms of the skill
and labour used to produce it
a. This was satisfied
2. Purpose of copyright is to protect skill and labour from
misappropriation
ii. Per Jacob LJ
1. Walter v Lane is still good law [78-83]
2. [83]: one has to consider the extent to which the ‘copyist’ is a mere
copyist… IN the end the question of degree how much skill, labour
and judgement went into the making of the copy is that of the
creator of the copy?
3. “Dr. Sawkin’s work was not mere servile copying… He recreated
Lalande’s work using a considerable amount of personal judgement.
[86]
4. [87]: “the sort of work done by Dr. Sawkins should be encouraged.’
O. Photographs
a. Often involve the faithful reproduction of the subject matter in front of the lens
b. Photographs are taken in a vast array of circumstances, many of which involve
minimal creativity or labour on the part of the photographer.
c. What serves to make a photograph original: Laddie, Prescott & Vitoria identify three
possibilities
i. Rendition: angle, exposure and effects, lighting, etc.
ii. Creating the scene to be photographed
 iii. “right place, right time” originality
d. Painer v standard Verlags
i. A work will be an AOIC if the author ‘was able to express his creative
abilities in the production of the work by making free and creative choices’
[89]
ii. For a portrait photograph, the photographer can make free and creative
choices in several ways and at various points in its production
iii. By making these choices, a photographer can stamp the photograph with
their ‘personal touch’
e. Temple Island Collections 2012
i. The impact of EU law is that copyright may subsist in a photograph that is
the AOIC [18]
ii. The claimant’s work is Mr. Fielder’s own intellectual creation both in terms
of his choices in taking the photo and in post productions manipulations
[51-52]
1. [53] these elements above derive from and are the expression of
the skill and labour exercised by Mr. Fielder, or in INfopaq terms,
they are his intellectual creation
2. It is not fatal that it includes iconic symbols such as Big Ben
P. Originality through staging & rendition (creation records v news group newspapers
a. One argument was that the ‘naught’ photograph was a copy of the official photo
b. This argument was rejected: they both photographed the same unprotected scene.
c. But restaging might be different
i. The composition of a photo is a protectable (original) element.
d. What would and should happen here>
i. Bridgeman v Corel
1. Are high quality photos of two dimensional public domain works of
art themselves original and protected by copyright>
a. Although a US case, applies UK law
2. “but ‘slavish’ copying’ although doubtless requiring technical skill
and effort, does not qualify”
Q. More from Judge Kaplan
a. Mannion v Coors Brewing company
i. Photograph is original because of rendition and composition
R. DSM directive art. 14
a. MS shall provide that when the terms of protection of a work of visual art has
expired
i. Any material resulting from an act of reproduction of that work
ii. Is not subject to copyright or related right
iii. Unless the material resulting from the act of reproduction is original in the
sense that it is the author’s own intellectual creation
b. What is the article trying to do
i. Art. 6 term directive
1. Photos have to be AOIC
 2. No other criteria to determine eligibility for protection
a. MS may provide for the protection of other photos.
S. Final thoughts
a. Traditional approach vs aoic (dr. Hudson)
i. Although in many cases the traditional test and AOIC will yield the same
result, there are some instances in which they will lead to different
ouctomes.
ii. You will sometimes see British judges apply language from the traditional
test despite the headline test being AOIC
iii. The headline test for oringiality in the UK is AOIC
iv. Don’t apply the traditional test in IP exams.
b. Translations
i. Translations are a mystery of copyright
ii. A translation is a derivative work. To be protected it must be original
1. Note berne art. 8 (translation right)
iii. But the translator only enjoys so much freedom to stamp their ‘personal
touch’ on the work
1. May not look ‘original’ under an ‘intellectual creation; standard

Moral rights

A. Berne convention art 6 bis

a. 1) independently of the authors economic rights and even after the transfer of the
said rights, the author shall have the right to claim authorship of the work and to
object to any distortion, mutilation, or other modification of or other derogatory
action in relation to the said work, which would be prejudicial to his honor or
reputation.
B. Basic concepts
a. Granted to
i. Authors of LDMA’s and directors of copyright films
1. Part 1 chapter 4
ii. Performers in qualifying performances
1. Part 2 chapter 3
2. Ss. 180-181 for definitions
b. Duration rules: s. 86
c. Infringement actionable as a breach of statutory duty: s. 103(1)
d. Rights recognized in the CDPA as “moral rights”
i. The right to be identified as author or director s. 77
ii. The right to object to derogatory treatment of the work s. 80
iii. A right against false attribution s. 84
iv. A limited privacy right for those who commission, for private and domestic
persons, the taking of a photograph or making of a film s. 85
e. It is usually said that moral rights are inalienable
i. Cdpa s. 94 rights not assignable
ii. What happens on the death of the author? S. 95
 f. However, under the CDPA
i. Moral rights can be waived in an instrument that uses sighed writing: s.
87(2); and
ii. An author may consent to an infringement s. 87(1)
g. There are also limitations on each right although there is no general reasonableness
or fair use defence
i. Limited instances where permitted acts in relation to copyright also exclude
moral rights infringement e.g. s. 79(4)
C. Justifications for moral rights
a. Personhood understandings, e.g.
i. Theberge 2002 2 SCR 336 per Binnie J at [15]
1. “moral rights by contrast, descend from the civil law tradition. They
adopt a more elevated and less dollars and cents view of the
relationship between an artis and his or her work. They treat the
artists’ work as an extension of his or her personality, possessing a
dignity which is deserving of protection
b. economic rationales e.g.
i. Vaver 1988 14 Monash University Law Review 284
ii. Ginsburg 1990 1 Entertainment Law Review 121, 122
1. Moral rights of attribution and integrity ‘improve the climate in
which authors create works of authorship’
2. Non-pecuniary benefits such as recognition
3. Signals about the value society places on authorship
4. Public benefits: accurate information regarding authorship;
confidence regarding authenticity of works
c. Cultural heritage rationale
i. Merryman 1976 27 Hastings Law Journal 1043
D. Critiques
a. Attribution (paternity) rights concern the ability to claim authorship
i. Existence does not seem to be contentious
b. Integrity rights concern the ability to preserve the work in the form it was created
i. Can be very contentious because of the impact on consumers, downstream
authors, producers, etc.
1. Loughlan 2000 5 Media & Arts Law Review 1
2. Has been argued to rest on (discredited) ideas about singular
authorship
a. Ginsburg p. 127
E. Attribution right
a. Right to be identified as the author or director when certain acts are performed with
the LDMA ro film s. 77(1)
i. For acts ss. 77(2-6)
ii. E.g. for authors of LW’s and DW’s the right arises when the work is
published commercially, performed in public, communicated to the public.
 b. What sort of identification? See s. 77(7) (location and prominence) and s 77(8)
(form)
c. The right must be asserted in order for it to be exercised s. 78
d. There are exceptions to the right in s. 79, e.g., it does not apply to computer
programs or works made for the purpose of reporting current events; and is limited
for employee crafted works.
F. Assertion- how?
a. Four methods
i. On assignment of copyright, by a statement in the instrument effecting the
assignment s. 78(2)(a)
ii. By a written instrument signed by the author/director s. 78(2)(b)
iii. In relation to the public exhibition of an AW
1. By identifying the author on the original or copy, or a frame mount
or other thing to which it is attached s. 78(3)(a)
2. By an assertion in a licence permitting copies to be made s. 78(3)(b)
iv. Who is bound by these assertions? S. 78(4)
b. Cornish, Llewellyn & Aplin (8th edition) [12-71]
i. Question whether the requirements for assertion complies with Berne art.
5(2) and suggest is should be abandoned as “ a confusing complexity which
achieves title”
G. Sawkins v Hyperion Records 2004
a. CD booklet: “with thanks to Dr Lionel Sawkins for his preparation of performance
materials for this recording”
b. 85: although Dr. S is named, he is not identified as the author of the copyright work.
The sleeve has to clearly convey Dr. Sawkins authorship to all possible readers and
not simply to those who might have some inside or particular knowledge of what to
infer from the words that have been used…
c. Conclusion upheld on appeal at 66-69
H. False attribution
a. Right of a person not to have an LDMA falsely attributed to that person as author, or
a film falsely attributed to a person as director, when certain acts are performed
with that work or film s. 84(1)
i. for acts ss. 84(2-7)
b. examples:
i. noah v shuba 1991; note s. 89(2)
ii. clark v associated newspapers 1998
1. Lightman J asked: “what is the single meaning which the literary
work conveys to the notional reasonable reader”
2. What does this case mean for the publication of parodies?
iii. Harrison v Harrison 2010
c. Steps
i. Identify
1. The works or parts and
2. The people to whom authorship is attributed
 ii. What is the act that gives rise to an infringement
1. Public display of material in s, 84(4)
iii. What is the singular meaning of the attribution per clark.
I. Integrity right
a. Berne art 6: the right; “to object to any distortion, mutilation or other modification
of or other derogatory action in relation to the said work, which would be
prejudicial to his honor or reputation
i. In the UK implemented in CDPA s. 80(1): authors of LDMA’s and directors of
copyright films have “the right in the circumstances mentioned in this
section not to have his work subjected to derogatory treatment’
b. Loughlan pp. 6-7
i. The right of integrity gives the author “a right of control over meaning and
context and use which takes legally mandated precedence over both the
needs of other artists who may… wish to change its meaning and context,
and over the role of readers and viewers as meaning-makers of the work. “
c. Case studies in Loughlan 2000
i. Physical mutiliation of an original work (Buffet v Fersing)
1. Merryman & Elsen: No one else is hurt if you take an axe to your
computer in rage and frustration, but if you deface a work of art you
wrong the artist (and arguably everybody else)”
ii. Physical mutilation of a reproducrtion or copy (Theberge v Galerie dArt du
Petit Champlain 2002)
1. gallery purchases paper-based products featuring images of
paintings by Claude Theberge. It transfer the ink from the paper and
onto canvass
2. there is no increase in the number of copies but the type of work as
changed from a paper backed product to a canvass one.
3. Mr. Theberge obtains prejudgment seizure but the legality of this
depends on the canvasses being “infringing copies” under the
copyright act
4. Is there an infringement of the artists reproduction right (Binnie J)
a. Once an authorized copy is sold, it is generally for the
purchaser to determine what happens to it [31]
b. The reproduction right was not infringed by this act- no
additional copies came into existence: [42-50]
c. The artist’s real concern related to his moral rights and the
market impact of the canvasses [20]
i. Concerns about circumventing the moral rights
regime [60]
d. Do you think that the gallery’s modification violated Mr.
Theberge’s right of integrity
iii. Changing the context or situation of a work (Shostakovich v Twentieth
Century Fox)
 iv. Performance and interpretations of a work, e.g. not following the stage
directions in a play
v. Creating a new work using the old e.g. appropriation art parodies.
d. The integrity right in the UK
i. Under the CDPA there must be
1. A treatment per s. 80(2)(a)
2. That is derogatory per s. 80(2)(b) and
3. An action with that work that falls within one of the circumstances
mentioned in ss. 80(3-6)
a. E.g. for AW’s, the listed circumstances include commercial
publication, exhibition in public, communication to the
public, etc.
ii. And not the exceptions s. 81 and qualifications s. 82 to the integrity right.
J. Treatment
a. S. 80(2)(a): “Any addition to, deletion from or alteration to or adaptation of the
work”
i. Confetti Records v Warner Music UL Ltd
ii. Pasterfield v Denham
b. Does Berne art 6bis contemplate something broader?
i. What about treatments that are contextual or which take place outside the
fourt corners of the work
1. Snow v Eaton Centre Ltd 1982
2. Harrison v Harrison 2010
a. 60: ‘treatment of a work is a broad general concept, de
minimis acts apart, it implies a spectrum of possible acts
carried out on a work, from the addition of say, a single
word to a poem to the destruction of the entire work…
Moreover, I see no legislative intention to limit the meaning
of the word in spite of ss. 2(a)(i-ii) and s. 80(7). The limit to
the generality of the word is surely to be found later: in the
possible prejudice to the honour or reputation of the author
arising from the treatment’
K. Derogatory
a. CDPA s. 80(2)(b): ‘The treatment of a work is derogatory if it amounts to distortion
or mutilation of the work or is otherwise prejudicial to the honour or reputation of
the author or director
i. Is prejudice to honour or reputation required in all cases
1. Majority view is yes: Confetti Records v Warner 2003
2. But compare Delves Broughton v House of Harlot 2010
ii. what is meant by “honour and reputation”? Are subjective considerations
relative.
1. Snow v eaton centre
a. Relevant distortion or modification: the attachment of
ribbons to the geese
 b. The words “prejudicial to his honour or reputation” involve
a certain subjective elment or judgement on the part of the
author so long as it is reasonably arrived at.
b. UK approach
i. Tidy v Trustees of the natural history museum 1995 39 IPR 501
1. “I personally find it difficult to see how I could possibly reach the
conclusion that the reproduction complained of is prejudicial to the
honour or reputation of the plaintiff without having the benefit of
evidence relevant to the effect of the reproduction on Mr. Tidy’s
reputation in the minds of other people and the benefit of cross
examination of any witnesses giving evidence on this point” p. 504
ii. PAsterfield v Denham 1999
1. For a treatment to be derogatory, “the plaintiff must establish… that
the treatment… is either a distortion or mutilation that prejudices
his honour or reputation as an artist. It is not sufficient that the
author is himself aggrieved by what has occurred” p. 182
iii. Confetti Records v Warner music Uk Ltd
1. 157: however, it seems ot me that the fundamental weakness in
this part of the case is that I have no evidence about Mr. Alcee’s
honour or reputation. I have no evidence of any prejudice to either
of them. Mr. Alcee himself made no compliant about the treatment
of “burnin” in his witness statement. Mr. Shipley invites me to infer
prejudice. Where the author himself makes no complaint, I do not
consider that I should infer prejudice on his behalf.
iv. Perez v Fernandez
1. 87: “Artists go to great lengths to choose whom they associate with,
and these associations form a central part of their reputation. In
those circumstances, I accept that the version of the sogn had not
been authorized by the author shoul dbe regarded as prejudicial to
him per se. Were it to be suggested otherwise, Ms. Martinez’
affidavit establishes to my satisfaction that the association with Mr.
Fernandez is one which Mr. Perez himself strongly considered to
be prejudicial to his reputation and which caused him anger and
distress.”
c. Boomerang Investments Pty Ltd v Padgett (Australia)
i. Perram J (obiter) 400-410
1. the change in the lyrics from “love” to “France” is a material
alteration or distortion: 400
2. ‘perhaps with some hesitation’ , there was prejudice to honour but
not reputation
a. Honour ‘as a matter of ordinary language connotes in his
context a personally held set of high minded principles [401]
i. Subjective but with objective overlay.
 3. 403: An author’s sense of honour might well be prejudiced when
the author being of one political persuasion finds their work used
without permission to promote political values which they find
repellant; or a DJ with an edgy reputation… finds his work borrowed
by an advertising agency and used to sell incontinence aids’
4. 405: ‘It is not far fetched to imagine that Mr. Vanda did not wish to
see the central lyric altered and there is therefore good reason to
accept that evidence unless it otherwise be known not to be so’
ii. Academic commentary
1. S. Ricketson and J. Ginsburg: International Copyright and
Enighourbing Rights paras. 10.27-10.32
2. T. Cheng-Davies ‘honour in UK copyright law is not ‘a trim
reckoning’- its impact on the integrity right and the destruction of
works of art’ 36 oxford journal of legal studies 272
L. Parodies
a. Is there a treatment
b. Is it derogatory
c. Is placing a modified jacket on a book within the circumstances in ss. 80(3) and 4
d. Are there any applicable exceptions?
e. Broader question: if we accept that this is a successful parody for the purpose of any
copyright claim, should this preclude or be relevant to moral rights?
M. Performance based works
a. How should integrity rights be applied to performance based works, given these are
often enjoyed through the medium of a performer, rather than perceived directly in
the form created by author’s hand
b. Illustration: Schott Musik International GMBH & CO v Colossal records of Australia
pty ltd 1997
i. Techno version of a song held to not “debase” the original under provision
that predated comprehensive moral rights provisions.

Ownership, Exploitation & Rights

A. Ownership
a. The author of a work is the first owner of any copyright in it cdpa s. 11(1)
i. Note authorship provisions s. 9
b. But there are different default rules for employees in s. 11(2) and Crown copyright
in s. 11(3)
c. Furthermore copyright is a “proprietary right” s. 1 that can be assigned, licensed,
mortgaged and bequeathed under a will.
d. Joint ownership of copyright is possible and does not necessarily need to be in equal
shares.
B. Employee created works
a. Where an LDMA or film “ is made by an employee in the course of his employment,
his employer is the first owner of any copyright in the work, subject to any
agreement to the contrary” cdpa. S11(2)
 b. To determine whether this section applies, ask
i. Whether the author is an employee (engaged under a contract of
service/apprenticeship s. 178) or an independent contract (engaged under a
contract for services) and
ii. If the author is an employee
1. Whether the work was made “in the course of employment”
2. And whether there is “any agreement to the contrary”
C. Who is an employee
a. The degree of control by the employer
b. The integration of the worker into the business of the emplopyer
i. Stevenson, Jordan & Harrison Ltd v Macdonald & Evans 1952 (lord Denning)
ii. Beloff v Pressdam Ltd 1973
1. P. 42: “the greater the skill required for an employee’s work, the
less significant is control in determining whether the employee is
under a contract of service… The test which emerges from the
authorities seems to me, as Lord Denning said, whether on the one
hand the employee is employed as part of the business and his
work is an integral part of the business or whether his work is not
integrated into the business but is only accessory to it, or as
Coooke J expressed it, the work is done by him in business on his
own account”
c. How the parties understand the relationship
i. Ray v classic fm 1998
d. the terms of the contract as a whole, e.g. in relation to pay, hours, place of work,
ability to have other business commitments: ray v Classic FM pp. 638-9
D. In the course of employment
a. Does the work fall within the scope of the employee’s duties?
i. Could the employer order the employee to create a work of that type
b. ExampleL noah v Shuba 1991
i. It was clear that Dr. Noah was an employee of Public Health Laboratory
Service when he wrote the guide. But was it written ‘in the course of
employment’
E. Assignment
a. Copyright can be assigned: s. 90(1)
i. Partial assignments are ok: s. 90(2)
ii. Assignments of ‘future copyright’ are also ok: s. 91
1. Removes the need for the assignee to join the legal owner or
require a legal assignment from that individual
a. B4U network Ltd v Performing right society ltd
b. It is not essential that particular terminology be used
i. IBCOS v Barclays Mercantile 1994
1. Assignment though the words “x recognizes that all PK software
manuals are the sole property of PK”
ii. Larrikin Publishing v EMI songs 2009
 1. No assignment through conditions of entry that “all matter entered
to become the property of the guide association”
F. Licenses
a. May be
i. Express or implied
ii. Bare or contractual
iii. Limited in various ways- time rights, etc.
iv. And exclusive (Defined s. 92(1) or non exclusive
1. Exclusive licensees have standing to sue per s. 101. Non exclusive
licencees may have standing to sue but the requirements in s.
101a(1) must be met, including that the license uses signed writing
and grants a right of action under s. 101a
G. Implied licenses and assignments
a. A particular issue for commissioned works in which the contract is silent as to
copyright
i. Underlying approach said to be minimalist touch: Ray v Classic FM pp. 64--4
ii. But there are numerous cases where an assignment has been implied: e.g. R
griggs Group Ltd v Evans
H. Assignment: formalities
a. “an assignment of copyright is not effective unless it is in writing signed by or on
behalf of the assignor” CDPA s. 90(3)
b. But an assignment that does not comply with the signed writing requirement may
nevertheless take effect in equity
i. Western front limited v Vestron inc 1987
c. What about an implied assignment that also fails to comply with formalities
i. Warner v Gestetner 1988
I. Assignment commentary
a. Why have a requirement for signed writing?
b. Bentley et al. p. 138
i. “the impact of the decisions is to undermine a clear scheme that is designed
both to achieve certainty in transactions and to protect authors
c. Compare the stricter approach of the US where s. 204 of the copyright act of 1976 is
taken seriously
i. “a transfer of copyright ownership other than by operation of law, is not
valid unless an instrument of conveyance or a note or memorandum of the
transfer is in writing and signed by the owner of the rights conveyed or such
owner’s duly authorized agent
J. Rights: background
a. The rights of the copyright owner (restricted rights) are listed in cdpa. S. 16(1)
i. To copy the work s. 17
ii. To issue copies of the work to the public s. 18
iii. To rent or lend the work to the public s. 18A
iv. To perform, show or play the work in public s. 19
v. To communicate the work to the public s. 20 and
 vi. To make an adaptation of the work or do any of the above in relation to an
adaptation s. 21
b. The right to copy applies to all categories of copyright work. The other rights apply
only to some categories of work
c. Some rights have been harmonized at the EU level
d. Our focus
i. Copying, including its relationship with adaptation
ii. Communication to the public, including its relationship with public
performance and authorization
K. Distribution and copyright
a. Copyright law gives rights in relation to
i. Putting a work (original or copy) on the market
1. Rights of divulgation, first publication, issue of copies
b. And
i. What happens once that copy is put on the market
1. Clarification of whether/when distribution rights exhausted
 2. Rental and lending rights
3. Resale royalty right (droit de suite)
L. Copying statutory indications
a. The right to copy is an exclusive right for all categories of copyright work, although
for TAPE’s it is confined to the creation of a facsimile copy
b. Indications from s. 17
i. For LDMA’s copying means “reproducing the work in any material form”
including electronic storage
ii. For AW’s it includes making a 3d copy of a 2d work and vice versa
iii. For films and broadcasts, it includes making a photo of any image forming
part of the film or broadcasts
iv. Copying includes transient and incidental copies.
M. Non-literal copying
a. The CDPA definition of copying encompasses non literal copying
i. this is also reflected in the UK case law
ii. there is an adaptation right in s. 21 for LDM’s however, the right is defined
exhaustively in s. 21(3)
1. e.g. translations, dramatizations, musical arrangements
2. the adaptation right Is not harmonized.
b. Compare US law, where there is a reproduction right and a right to prepare
derivative works
i. US copyright act s. 101: ‘a derivative work is a work based upon one or more
preexisting works, such as a translation, musical arrangement,
dramatization, fictionalization, motion picture version, sound recording, art
reproduction, abridgement, condensation, or any other form in which a
work may be recast, transformed, or adapted.
c. There has been much far less CJEU guidance in relation to non-literal copying when
compared with literal copying
d. Although the right to copy extends beyond making literal copies, there must still be
objective similarity and derivation:
i. Francis Day & Hunter v Bron 1963
1. Cross-reference infringement
e. The degree to which non literal complies implicate the right to copy will depend on
i. Whether the relevant copyright is ‘thick or thin’ and
ii. For thick copyright, the nature of the work
f. E.g. reshooting a film does not infringe copyright in the film as a recording but may
infringe the copyright in the film as a dw if the film is also a dramatic work.
N. Thick versus thin copyright
a. Norowzian v Arks No 1: no infringement of the film right, as this pertains only to acts
within the recording
i. In other words, is thin
b. Norowzian v Arks No 2: Joy is also a dramatic work
i. This opened the door to a successful claim, as DW’s (protected by thick
rights) can be infringed by reshooting.
c. For simple LDMA’s, it may be that infringement only arises for exact or near to exact
copying
i. Kenrick v Lawrence
ii. are photos protected by thin or thick copyright
1. Creation records v NGN
d. Creation records
i. “if the subject matter is not itself protected by copyright, in principle two
different photographers can take separate photos of the same subject
without either copying the other. Of course copyright subsists in the official
photo and if it were the only source of the scene, it would be an
infringement to copy that, either by a direct copying process or by the
scene being recreated and a fresh photo taken of that recreation.’
e. Bauman v Fussell 1978
i. Somervell LJ p. 487
1. “if a photographer has control only of the angle and moment he or
she photos a scene, and exerts no control of the scene itself, then
reproducing the scene is not taking a “substantial part” of the
photograph as it does not represent the author’s work. If on the
other hand, the photographer staged the subject-matter of the
photo, the design may be part of the protectable elements of the
work.
ii. Romer LJ dissenting
1. ‘a cockfight is neither a static nor a leisurely affair but a combat of
rapid movement”
2. There was no evidence before the court to suggest the posture of
the bird was commonplace
3. There was skill in capturing the birds at a particular striking
moment: “the plaintiff’s photograph appears to me to have
captured a very striking attitude’
4. “or assume the case of a man who preferred photographing big
game to shooting them and was fortunate enough and sufficiently
skilled, to take a series of photos of some incident which had rarely,
if ever, been caught by a camera before…. Substantial part of the
photographers work.
f. European harmonization
i. Information society directive art. 2
1. MS must grant to authors, phonogram producers, film producers
and broadcasters “the exclusive right to authorize or prohibit direct
or indirect, temporary or permanent reproduction by any means
and in any form in whole or in part”
ii. Software directive, Art. 4(A) computer programs
iii. Database Directive Art. 5(a) original databases)
iv. Reproduction should be interpreted broadly
 1. Infopaq [40-51]: copying an 11 word snippet from a newspaper
article can be a reproduction in part if the snippet expresses the
author’s own intellectual creation
2. FAPL [159]: ‘the reproduction right extends to transient fragments
of the works within the memory of a satellite decoder and on a
television screen’
v. What about non literal copies
1. Position may become clearer as case law handed down
2. INfopaq: 44: drafting a summary of newspaper articles is not an act
that is restricted by EU legislation
3. SAS 63-70: a computer program might be a reproduction of a
manual for another program if that reproduction constitutes the
expression of the intellectual creation of the author of the user
manual”
4. Pelham v Hutter
g. Pelham v hutter
i. Considers the meaning of “reproduction in whole or part” as this applies to
phonograms: ISD art 2©
ii. Starting point: “usual meaning in everyday language while also taking
account of the statutory context and purpose 28
1. In principle: reproduction in part can include very short sound
samples 29-30
iii. But using a modified sample: “unrecognizable to the ear” in a new work is
not a reproduction 31
iv. The grand chamber justified this conclusion by reference to fair balance and
to the usual meaning of reproduction in everyday language 32-38
v. Does this approach also apply to musical works being authorial works with
thick copyright
1. Cross reference: substantial (original) part
O. Communication to the public
a. What is a communication to the public
i. Note
1. The different acts that might be within this definition and
2. The different options for recognizing these acts in copyright law
b. CTTP is harmonized in Europe: ISD art 3
i. Art 3(1)-authors have right of communication to the public including by
making available
ii. Art 3(2)- performers, phonogram producers, film producers and
broadcasters have right of making available
iii. Art. 3(3)- no exhaustion
c. In the UK CTTP applies to all categories of work except for TAPEs: CDPA s. 20(1) it is
defined to include
i. Broadcasting (defined s. 6(1) and (1a) and
ii. Making available s. 20(2)
 1. The UK approach was broader than that required by art 3
P. Issues and questions
a. Doctrinal questions to consider
i. The meaning of “communicate”
ii. The meaning of “to the public”
iii. Some cases state that a “new public” is required
iv. The relevance of other factors
v. The relationship between CTTP and other rights
b. This area is difficult, but some underlying themes and policy imperatives can be
gleaned from the CJEU case law
Q. CTTP
a. Act of communication
i. Clear examples: television broadcast, streaming radio programme online
ii. In the UK, the difference between the communication to the public right s.
20 and the public performance right s. 19 has traditionally been based on
the location of the audience
1. Directly present: public performance CDPA s. 19
a. The performance of the work in public is a restricted act for
LDM’s s. 19(1)
b. The playing/showing of the work in public is a restricted act
for SR’s films and broadcasts: s. 19(#)
c. Unifying theme: the public is present at the performance
i. Can be through a live performance or artificial
means of delivery (a radio)
d. Who is the public
i. Duck v Bates
ii. Harms v Martans
2. Not present at origin: communication to the public
iii. Information society directive recital 23
1. The right should be understood in a broad sense covering all
communication to the public not present at the place where the
communication originates
2. The right should cover any such transmission or retransmission of a
work to the public by wire or wireless means including broadcasting
3. The right should not cover any other acts.
iv. Case law from the CJEU has broadened the meaning of communicate. This
has led to the communication right overlapping with the public performance
right. AS such the distinction between the two rights is breaking down
v. This is how it happened
1. FAPL 2008
a. At first instance, Kitching J stated [262}
i. “it is my provision view they have not
communicated them to the public within the
meaning of art 3. There has been no retransmission
 by the publicans whether by wire or otherwise.
They have simply received the signal, decoded it
and displayed it on a television
b. He nevertheless referred to the EJC the question of whether
the facts revealed a communication to the public.
c. jThe Court of justice held at [193] that
i. ‘the concept of communication must be construed
broadly, as referring to any transmission of the
protected works, irrespective of the technical
means or process used”
d. This includes where a publican transmits broadcast works to
customers via a television screen and speakers: 195-196
e. What about recital 23? The ECJ seemed to define the origin
as the football match and not the television screen [203]
f. On return to Kitchin J it was held
i. S. 20, defines communication to the public as
communication to the public by “electronic
transmission” applying the answers of the ECJ there
is a “transmission” of FAPL’s copyright works to the
public using electronic instruments [57]
ii. There is an overlap between the public
performance and communication to the public
rights, and in this case the publican’s act implicated
both rights [63]
iii. The defendants prevailed because s. 72 was held to
apply to the public performance and
communication rights.
vi. CJEU gave A broad definition was given to transmission in FAPL in a way that
overlaps with UK law
1.
vii. Other CJEU case law has placed weight on an intervention to give access
1. SGAE v Rafael Hoteles: televisions in guest bedroom slinked to
central antenna
2. PPL v Ireland
a. Televisions in guest bedrooms linked to central antenna
i. Supply in guest bedrooms of CD players and CD’s
b. “whether there is a communication to the public requires
an “individual assessment’: [29]. This assessment involves
several complementary and interdependent criteria [30]
c. A ley factor is the “indispensable role played by the user.
The user makes an act of communication when it
intervenes, in full knowledge of the consequences of its
action, to give access to a broadcast containing the
protected work to its customers. IN the absence of that
 intervention, its customers although physically within the
area covered by the broadcast, would not, in principle, be
able to enjoy the broadcast work [31]
3. Svensson v Retriever Sverige AB: hyperlinks.
a. Swedish newspaper that makes their articles available on
their website. The website does not have a login to read
function, no pay wall, it wasn’t geo locked.
i. Was a link to an article on a different website an act
of communication to the public.
ii. A link is an intervention to give access, it helps
facilitate access of a work and meets the definition
of communication
b. [18] the provision, on a website, of clickable links to
protected works published without any access restrictions
on another site, affords users of the first site direct access
to those works.
c. [19] for there to be an ‘act of communication’ it is
sufficient… that a work is made available to a public in such
a way that the persons forming that public may access it,
irrespective of whether they avail themselves of that
opportunity
d. [20] it follows that… the provision of clickable links to
protected works must be considered to be making available
and therefore an ‘act of communication’
i. No new public, the whole internet is a single
technical means, it was made available to all
internet users.
b. To the public
i. The case law utilizes a fairly stable set of indicators regarding the makeup of
the public
1. SGAE: the term public refers to an indeterminate number of
potential television viewers” [37] in determining the size of the
group, simultaneous and sequential access may be cumulated [38-
39]
2. PPL v Ireland: the term public refers to an indeterminate number of
potential listeners and a fairly large number of people” [33] it refers
to people in general rather than a private group [34]

c. A new public?
i. Cases have also referred to the need for a “new public”? Why has this factor
developed and when is it required? Consider
1. SGAE v Rafael hotels
a. What is a new public
 i. [40] a public different from the public at which the
original act of communication of the work is
directed
b. There was a new public: although in the broadcast area,
guests could not, without the hotels’ intervention, enjoy the
broadcast work.
2. Svensson v Retriever Sverige AB
a. Although there was a communication it was not to a new
public
i. 27: “where all the users of another site to whom
the works at issue have been communicated by
means of a clickable ink could access those works
directly on the site on which they were initially
communicated, without the involvement of the
manager of that other site, the users of the site
managed by the latter must be deemed to be
potential recipients of the initial communication
and therefore, as being part of the public taken
into account by the copyright holders when they
authorized the initial communication”
3. And ITV broadcasting v TC catch up
a. The retransmission constitutes a communication
b. The retransmission was to the public
c. But must it be to a new public? In this case no
i. The court of justice is creating a division between
access being given to an existing broadcast signal
(new public required) and the creation of an
entirely new transmission (must be authorized by
the copyright owner, new public irrelevant 38-29
ii. GS media BV v Sanoma media
1. Another hyperlinks case
2. The links were to unauthorized copies of photos
a. As a policy matter, what approach should be taken to links
to unathorised content?
3. Syntethsis: individual assessment
a. A user with knowledge of the consequences of their action,
who gives access to the work, in particular where viewers
would not in principle be able to enjoy that work [35]
b. A sufficiently large and indeterminate number of potential
recipients to constitute the public [36]
c. The communication uses different technical means to those
previously used OR is to a new public [37]
d. A communication of a profit making nature [38]
 i. A relevant factor [34] a “not irrelevant”
consideration
iii. Nuance for hyperlinks
1. 55: in order to establish whether the fact of posting on a website,
hyperlinks to protected works, which are freely available on another
website without the consent of the copyright holder, constitutes a
‘communication to the public’… it is to be determined whether
those links were provided without the pursuit of financial gain by a
person who did not know or could not reasonably have known the
illegal nature of the publication of those works on that other
website or whether on the contrary those links are provided for
such a purpose, a situation in which that knowledge must be
presumed.
iv. Stitching Brein v Wullems
1. The Filmspeler case, involves pre-loaded links
a. The selling of the physical product is not communication but
instead the loading of links beforehand is.
2. There is a communication
a. Emphasies the essentialrole of the user [31]
b. The intervention of MR W gives users of the Filmspeler
device direct access to prot4ected works [42[
3. This case involves links to unathorised content
a. Apply GS media, there is actual knowledge
4. the multimedia player was sold in order to make profit.
v. Land Nordrhein-Westfalen v Renckhoff
1. New public required: both communications involved the same
technical means
2. There is a new public
a. Rights are preventative
b. Svennson reasoning does not apply- this is not a hyperlinks
case.
vi. Tom Kabinet
1. The facts enliven the communication right not the distribution right
2. There is no exhaustion of the communication right
3. The CJEu gave a strong indication that there was, on these facts, a
communication to the public.

Copyright infringement

A. Direct infringement of copyright

a. CDPA s. 16(2): copyright in a work is infringed by a person who without the licence
of the copyright owner does, or authorizes another to do, any of the acts restricted
by the copyright.
b. Cdpa s. 16 (3)
 i. References in this part to the doing of an act restricted by the copyright in a
work are to the doing of it
1. In relation to the work as a whole or any substantial part of it and
2. Either directly or indirectly; and it is immaterial whether any
intervening acts themselves infringe copyright.
c.

B. Who may sue

a. Owners of copyright?
i. Yes s. 96(1)
b. Assignees? Yes (as they become the owner)
c. Exclusive licensees?
i. Yes. S. 101 for rules in relation to actions brought by such individuals
d. Non-exclusive licensees
i. Sometimes. In the UK a non exclusive licencee can sue if he or she was
granted a right to sue in accordance with cdpa s. 101(A)
C. Authorisation
a. Acts restricted by the copyright
i. The cdpa sets out the restricted rights of the copyright owner
ii. A person can also infringe copyright by authorizing someone else to perform
an infringing act
1. Communication to the public, as defined by the Court of Justice
would seem to overlap with the UK authorization right.
b. CBS v Ames Records & Tapes LTD
i. Whitford J p. 106: “any ordinary person would, I think, assume that an
authorization can only come from somebody having or purporting to have
authority and that an act is not authorized by somebody who merely
enables or possibly assists or even encourages anther to do that act, but
 does not purport to have any authority which he can grant to justify the
doing of the act”
c. CBS v Amstrad
i. Lord Templeman p. 1054: “In the present case, Amstrad did not sanction,
approve or countenance an infringing use of their model and I respectfully
agree… that in the context of the copyright act 1956 an authorization means
a grant or purported grant, which may be express or implied, of the right
to do the act complained of. Amstrad conferred on the purchaser the power
to copy but did not grant or purport to grant the right to copy”
d. UNSW v Moorhouse per Gibbs J
i. The word “authorize” has been held to have its dictionary meaning of
“sanction, approve, countenance.”
ii. “ a person who has under his control the means by which an infringement
of copyright may be committed- such as a photocopying machine- and who
makes it available to other persons, knowing or having reason to suspect,
that it is likely to be used for the purpose of committing an infringement
and omitting to take reasonable steps to limit its use to legitimate purposes,
would authorize any infringement that resulted from its use”
iii. Per Jacobs J (with whom McTiernan ACJ agreed)
1. “there was no express permission given to (Mr. Brennan, the “trap”
copier) but the real question is whether there was in the
circumstances an invitation to be implied that he, in common with
other users of the library, might make such use of the photocopying
facilities as he thought fit” p. 21
2. Note the narrow and broad readings of the case
a. Narrow: an application of the implied permission approach
b. Broad: authorize means “allow to happen”
e. Twentieth century fox v newzbin
i. Kitchin J 90: “in my judgement, it is clear… that “authorize” means the grant
or purported grant of the right to do the act complained of. It does not
extend to mere enablement, assistance or even encouragement. The grant
or purported grant to do the relevant act may be express or implied from all
the relevant circumstances”
1. What are the relevant circumstances?
f. Cont.
i. 90: in the cause of authorization by supply, relevant factors might include
1. “the nature of the relationship between the alleged authorizer and
the primary infringer”
2. “whether the equipment or other material supplied constitutes the
means used to infringe”
3. “whether it is inevitable it will be used to infringe”
4. “the degree of control which the supplier retains” and
5. “whether he has taken any steps to prevent infringement”
 ii. 102: For all these reasons I am entirely satisfied that a reasonable member
of (newzbin) would deduce from the defendant’s activities that it purports
to possess the authority to grant any required permission to copy any film
that a member may choose from the movies category on newzbin and that
the defendant has sanctioned, approved and countenanced the copying of
the claimants’ films, including each of the films specifically relied upon in
these proceedings.
g. Another option: CDPA s. 97A
i. Gives the high court the power “ to grant an injunction against a service
provider, where that service provider has actual knowledge of another
person using their service to infringe copyright
1. Blocking orders made in relation to Newzbin2 in 2011 EWHC 1981
and 2011 EWHC 2714
h. Dramatico entertainment v bsb
i. Proceedings in relation to The Pirate Bay but brought against ISPS under
cdpa s. 97A
1. Orders made in 2012 EWHC EWHC 1152 CH
ii. Users of the pirate bay were primary infringers
1. By copying (through downloading files)
2. By communication to the public (through allowing files to be
available to the “swarm”
iii. The operators of the Pirate Bay authorised these infringing acts.
iv. Arnold J applied the factors from NEzbin at 73-80
v. He concluded that not only did the operators sanction, approve and
countenance the infringements but purported to grant users the right to do
those acts. At 80: “it is no defence that they openly defy the rights of
copyright owners”
vi. Arnold J did not consider whether the operators were communicating the
works to the public
1. Compare Newzbin at 125: Kitchin J also concludes that the
defendant itself communicated the films to the public.
i. Stichting Brein v Ziggo
i. The operators of The Pirate Bay communicated works to the public even
though those works were placed on the platform by users
1. The operators intervened to provide access by making available and
managing the platform. Without this intervention, “the works could
not be shared by the users or, at the very least sharing them on the
internet would prove to be more complex (36)
2. This is not the “mere provision” of physical facilities because of the
indexing and search functions (38)
3. The operators were aware of the infringing materials and given
advertising revenues, operated the platform for profit (44-46)
j. Warner Music Uk Ltd v Tune In Inc
i. Birss J in the High Court
 1. For the authorization based arguments, the primary infringers were
the radio stationsin categories 2 to 4 (through their stations being
targeted to listeners in the UK) and the users (through the recording
function)
2. TUnein had authorised infringement in relation to both classes of
primary infringer, applying the newzbin factors
ii. This was upheld on appeal.
D. Causal connection
a. There must be a causal connection between the claimant’s and defendant’s works,
i.e. the latter must be derived from the former
i. Independent creation is a defence
1. The derivation can be indirect: King Features Syndicate v Kleeman
1941
ii. How is derivation established? Can there be subconscious copying?
1. Francis Day & Hunter Ltd v Bron
b. Designers guild per Lord Millet
i. Steps in action for infringement
1. Identify those features of D’s design which plaintiff alleges have
been copied
a. Court undertakes visual comparison: not to see if designs
are similar but whether similarities relied on are sufficiently
close, numerous or extensive to make the copying more
than coincidence.
ii. “If the plaintiff demonstrates sufficient similarity, not in the works as a
whole but in the features which he alleges have been copied, and
establishes that the defendant had prior access to the copyright work, the
burden passes to the defendant to satisfy the judge that, despite the
similarities, they did not result form copying.” P . 2425
iii. Cited with approval by Judge Birss QC in Mitchell v BBC (23) although not
caveat for subconscious copying at 38-39
c. Baigent 2007
i. (122) in cases in which the issue of copying has to be decided on disputed
evidence the court should be guided by the sound legal principle that proof
of similarity between he alleged infringing work and the original copyright
work, coupled with proof of direct or indirect access to the original, is prima
facie evidence of copying for the defendant to answer
1. Francis Day & Hunter v Bron at 612 per Wilberforce J
ii. 124) Mummery LJ
1. Assess the similarities between the alleged infringing work (w2) and
the original copyright work (w1)
2. Assess whether the author of W2 had direct or indirect access to
W1
3. Determine whether the author of W2 made use of material derived
from W1
 4. If the defendant argues that no such use was made, consider his
explanation for the similarities between w2 and w1
5. If there is a causal connection, turn to consider whether a
substantial part of W1 was used.
d. Illustration: Mithcell v BBC 2011 EWPCC 42
i. Michell could make out a sufficient case to shift the onus to the BBC
ii. What did the BBC say by way of response
iii. Was there subconscious copying?
e. Illustration: boomerang 2020
i. Stage 1: is the music around the words ‘love is in the air’ in warm objectively
similar to love
1. Don’t do a strict note for note comparison. Judge should listen to
the work in the shoes of the ‘ordinary, reasonably experienced
listener’ 97
2. Looking at the musical scores can be useful but is not determinative:
98
ii. Stage 2: is there derivation?
1. If so, was that copying done knowingly or subconsciously?
E. Substantial Part
a. Substantial part
i. Cdpa s. 16(3)(a): “references in this part to the doing of an act restricted by
the copyright in a work are to the doing of it in relation to the work as a
whole or any substantial part of it”
1. Not significance of this language for partial and non literal copying
b. Traditional approach: generally 1)
i. Bently pp. 199-207, 210-215
1. Identify the parameters and protected components of the
claimant’s work
a. Hyperion records v warner music (1991, unreported;
described Bently pp. 201-202
2. Determine whether a substantial part of the claimant’s work has
been taken.
c. Traditional approach: LDMA’s 2)
i. The focus is on the quality of what is taken rather than the quantity
ii. A part will not usually be substantial unless it is also original
1. Ladbroke v William Hill
2. Newspaper Licensing Agency v Marks & Spencer
3. EMI songs Australia v larrikin music publishing 2011
a. “whether an alleged infringer has copied a substantial part
depends much more on the quality than on the quantity of
what has been taken. In any case, what amounts to a
substantial reproduction cannot be defined in precise
terms, but is a matter of fact and degree… A part that, by
itself, has no originaility will not normally be a substantial
 part of the copyright work and reproduction of that part will
therefore not be an infringement. There is no copyright in
some unoriginal part of a whole in which copyright
subsits…”
d. Traditional approach 3)
i. Recognisability and distinctiveness have been emphasized in some cases:
e.g. Hawkes & sons v Paramount Flm Service; EMI Songs v Larrikin
1. ‘it may be sufficient if the taken part is “a vital or material part, even
though quantitatively it may be only a small party” : Boomerange,
203, citing, EMI
ii. EMI
1. 49: “However, even though the alleged infringement is not very
prolonged in its reproduction, there will nevertheless be
infringement if what is reproduced is a substantial vital and
essential part of the original (Hawkes v Paramount at 606)
2. further, there will be infringement if the bars of a musical work that
are taken contain what constitutes the principal air or melody of the
copyright work, which anyone who heard the alleged infringing
work would recognize as being the essential air or melody of the
copyright owkr (Hawkes 609)
e. traditional approach: LDMA’s 4
i. a substantial part can arise from features abstracted from the work-but
note the idea/expression dichotomy
1. Desingers’ guild per lord Hoffman
a. P. 2422: “there are numerous authorities which show that a
part which is regarded as substantial can be a feature or
combination of features of the work, abstracted from it
rather than forming a discrete part.”
2. Kenrick v Lawrence 1890
3. Designers’ Guild per Lord Hoffmann: “generally speaking, in cases of
artistic copyright, the more abstract and simple the copied idea, the
less likely it is to constitute a substantial part.
a. Originality, in the sense of the contribution of the author’s
skill and labour, tends to lie in the detail with which the
basic idea is presented”
4. Baigent 145-146
a. “It is not, however, sufficient for the alleged infringing work
simply to replicate or use items of information, facts, ideas,
theories, arguments, themes and so on derived from the
original copyright work.
5. Temple Island 2012 EWPCC 1
a. Judge Birss QC held the common elements between the 2
works were causally connected and that a substantial part
of the claimant’s work had been copied.
 i. Looked to features of composition and visual
contrast
ii. Rejected (albeit not easily) D’s submissions that a
finding of infringement would protect ideas 63-64
f. European approach
i. ISD language- “A part”
ii. What is the impact of CJEU case law, bearing in mind that
1. Not all rights are harmonized and
2. The CJEU has focused on partial copying rather than non literal
copying
iii. Bently p. 200
1. The EU test (Infopaq) applies to LDMA’s for the rights of
reproduction, distribution and communication
2. An EU test applies to SR’s, films and broadcasts
a. Since writing, the CJEU handed down a judgement in
relation to phonograms: Pelham v HUtter
3. The traditional test applies to
a. Ldma’s for the public performance and adaptation rights
and
b. TAPE’s
iv. LDMA’s
1. ISD Art 2(A): “member states shall provide for the exclusive right to
authorize or prohibit reproduction in whole or in part…?”
2. Bently pp. 207-210
a. The CJEU approach focuses on the originality of the part
taken and not on defining the overarching work (Infopaq
38-39)
3. Infopaq test
a. 37L copyright within the meaning of art. 2A of ISD is liable
to apply only in relation to a subject matter which is original
in the sense that it is its author’s own intellectual creation”
b. 38: As regards the parts of a work, it should be borne in
mind that there is nothing in the ISD or any other relevant
directive indicating that those parts are to be treated any
differently from the work as a whole. It follows that they are
protected by copyright since as such, they share the
originality of the whole work.
c. 39: in the light of the considerations referred to in para 37
of this judgement, the various parts of a work thus enjoy
protection under art 2(a) of ISD, provided that they contain
elements which are the expression of the intellectual
creation of the author of the work
v. British application of Infopaq
1. NLA v Meltwater 2010 EWHC 3099
 a. 85: “in many though not all) cases the text extracts, even
leaving aside the headline, do contain elements which are
the expression of the intellectual creation of the author of
the article as a whole”
i. Affirmed on appeal in 2011 EWCA Civ 890.
2. How much of a change is this
a. Originality has long been a relevant factor for substantial
part analysis in the traditional approach.
b. That said, it has been observed that CJEU case law has
placed greater emphasis on the dematerialization of the
work
c. But might there be an implicit rollback from Infopaq in CJEU
cases such as Levola Hengelo BV which take more seriously
the definition of ‘work’
d. Plus Brexit
F. Entrepreneurial works
a. The traditional approach adopts a similar two part analysis for authorial and
entrepreneurial works
i. But does substantiality need to be judged different;y?
1. Newspaper licensing agency v marks & spencer
a. When considering newspaper as typographical
arrangements, is the relevant work the individual articles or
the newspaper as a whole
b. What was the test for substantiality?
2. FAPL 2008 EWHC 1411 208-209
b. NLA v M&S
i. “HOL decided in Ladbroke that the question of substantiality is a matter of
quality rather than quantity…” what is that quality?
1. “that question… must be answered by reference to the reason why
the work is given copyright protection… it follows that the quality
relevant for the purposes of substantiality is the literary originality
of that which has been copied. IN the case of an artistic work, is is
the artistic originality of that which has been copied”
ii. “in the recent case of Designers Guild, the house decided that although not
the smallest part of a fabric design had been reproduced with anything
approaching photographic fidelity, the copying of certain of the ideas
expressed in that design which, int ehir conjoined expression, had involved
original artistic skill and labour, constituted the copying of a substantial part
of the artistic work”
c. Traditional approach
i. The Panel No 2 2005 per Finkelstein J
1. Substantiality is a qualitative test: 27
 2. Start by examining whether the part taken is the “heart” or “central
to” the program, or the program’s “highlights” or “at least an
important ingredient”
a. In the Australian high court, the term “broadcast” was
defined to mean “program”
3. If this does not yield a conclusion, other factors may be considered,
such as the plaintiffs financial interest and the defendant’s purpose
28
d. Justice Arnold’s prediction
i. England And Wales Cricket Board v Tixdaq: Arnold J says INopaq style
reasoning must be also applied to films and broadcasts but in a way that
has regard to their rationales for protection
ii. 66:
1. “I do not consider that it follows that reproduction of any part of a
broadcast or first fixation amounts to an infringement… Nor does it
follow that the test is a purely quantitative one”
2. By showing highlights, broadcasters and producers have invested in
the technology and the process of editing.
a. “thus the footage is not undifferentiated either in terms of
its interest to viewers or in terms of its commercial value or
in terms of the equipment and skills that is required to
produce it. HTa tbeing so, I consider that the correct test of
substantiality is to consider the degree of reproduction
both quantitatively and qualitatively, having regard to the
extent to which the reproduction exploits the investment
made by the broadcaster or producer”
e. European approach: Pelham v HUtter
i. What is the meaning of “reproduction… in part” as this applies to
phonograms?
ii. Starting point: “usual meaning in everyday language” while also taking
account of the statutory context and purpose 28
1. In principle “reproduction in part” can include very short sound
samples 29-3-
2. Seems that Arnold J made the wrong prediction in Tixdaw
3. But is the CJEU’s approach better?
iii. Note caveat for modified samples that are unrecongisable to the ear 31

Copyright defences

A. Overview
a. “acts permitted in relation to copyright works” CDPA part 1 Ch III
i. Sometimes referred to as “exceptions and limitations”
ii. Equivalent exceptions in relation to rights in performances
iii. Separate exceptions in relation to moral rights
1. One issue: interplay of copyright & moral rights.
B. The role of exceptions in copyright law
a. In modern copyright law, exceptions perform a lot of important functions
i. This is sometimes referred to as “balance”
1. Warner v tunein 2019: balance between isd art. 3 (communication
right) and Art. 5 (permitted cases for exceptions and limitatinos)
2. Issues with the term “balance” burrel and Coleman, Copyright
exceptions: the digital impact
b.

c. Example: transient copying

i. CDPA s. 28A: copyright is not infringed “by the making of a temporary copy
which is transient or incidental, which is an integral and essential part of a
technological process and the sole purpose of which is to enable
1. A transmission of the work in a network between third parties by an
intermediary
2. A lawful use of the work
a. … and which has no independent economic significance”
ii. Enacts the compulsory exception in ISD art. 5(1)
d. Meltwater 2013
i. Is a licence required if clients view the monitoring reports on Metlwater’s
website rather than in downloaded or email form
ii. No: the on screen and cached copies are within art. 5(1)
1. Considers CJEU judgements on Art 5(1) in Infopaq, FAPL, and
Infopaq II
2. This conclusion is supported by policy considerations: esp. [36[
3. Nevertheless refers case to CJEU
iii. CJEU agrees that art. 5(1) applies to these copies: NLA v Meltwater C-360/13
e.
C. European harmonization and the impact of Brexit
a. ISD art. 5 sets out a closed list of the cases to which an exception or limitation must
be directed
 i. Mandatory exceptions: ISD art 5(1) and DSM Directive Arts 3-11 (TDM,
illustration for teaching and preservation copying)
b. Drafting freedoms of MS?
i. Cannot enact exceptions outside art. 5
1. Pelham v Hutter [55-65] and note
2. Funke Medien NRW GMBH v Germany [55-64]
ii. Have some freedom in drafting and interpretation but note caveats
1. Funke Medien v Germany [27-54]
2. Spiegel Online GmbH v Volker Beck [16-39]
c. EU wide considerations and interpretative canons
i. MS must comply with:
1. all the conditions lad down in Art 5 and
2. General principles of EU law, proportionality
ii. Implementation must further the objectives of the ISD
1. High level of protection for authors
2. Ensuring the proper functioning of the internal market
3. Safeguarding the effectiveness of exception, in order to produce a
fair balance between the rights and interests of rightsholders and
users
iii. Exceptions must comply with ISD art. 5(5) (three step test)
iv. Interpretation of the ISD must ensure a fair balance is struck between
Charter rights
v. Autonomous European concepts
1. Deckmyn v Vandersteen [14-17] (definition of parody)
d. objectives of the ISD
i. Infopaq [56-59]: the cases in Art. 5 must be interpreted strictly:
1. Given that they derogate from the “general principle” of the ISD
(reproduction and other acts require authorization
2. In the light of Art. 5(5) and
3. To enhance legal certainty: recitals 4, 6, 21
ii. FAPL [162-164]: while exceptions must be interpreted strictly, the
interpretation “must enable the effectiveness of the exception to be
safeguarded and permit observance of the exception’s purpose?
1. Allowing the development and operation of new technologies and
2. Providing a fair balance between right holders and those who wish
to utilize new technologies
e. ISD art 5(5)
i. Excpetiosn permitted under ISD “shall only be applied in certain special
cases which do not conflict with a normal exploitation of the work or other
subject matter and do not unreasonably prejudice the legitimate interests of
the rightholder”
1. Language follows the “three step test” in international copyright
law: Berne art 9(2); TRIPS, art 13
2. it seems that the audience for Art. 5(5) include judges
 a. FAPL [181]
f. what about Brexit?
i. Brexit is significant as Eu copyright law has changed/differs from the
traditional UK approach in various ways
ii. The new legal framework
1. Starting point: retention of EU law
2. Guidance for interpreting retained EU case law: EU withdrawal act
2018 s. 6
a. No court is bound by CJEU cases handed down after the
transition period, although judges ‘may have regard to
anything done… so far as it is relevant.
b. The supreme court is not bound by any retained EU case
law and neither is the court of appeal
3. The UK was not required to implement the DSM directive
iii. Some of the techniques that UK judges have used when considering CJEU
case law
1. ‘focus on the words of the CDPA’
a. Response clothing v The Edinburgh Woolen Mills (subject
matter)
2. ‘Nothing to see here’
a. NLA v Meltwater Holding (originality)
3. ‘there is a major change’
a. Tunein v warner music (communication to the public)
iv. Questions for exceptions
1. To what extent, if at all, does the EU/CJEU approach (Autonomous
European concepts, human rights and balancing exercsies, etc)
differ from the fairness consdierations of fair dealing case law
2. To the extent that approach does differ- how will UK judges deal
with retained and new CJEU case law
3. Note approach in England and Wales Cricket Board v Tixdaq 2016
D. 2014 reforms to the CDPA
a. The suite of exceptions in the CDPA was expanded in 2014
i. Fair dealing expanded to include new purposes
ii. Reforms to existing exceptions
iii. Introduction to new exceptions e.g.
1. Data mining s. 29A
2. Private copying s. 29B
a. Quashed in July 2015: BASCA v SoSBIS 2015
3. Making works available via dedicated terminals in cultural and
educational establishments s. 41(b)
iv. Limits on contracting out.
E. Fair dealing
a. Overview
 i. The use must be fair and fall within one of the FD purposes and meet any
other requirements (e.g. sufficient acknowledgement)
ii. These purposes are (new 2014 purposes bold)
1. Research for non-commercial purpose (s. 29(1)) or private study: s.
29(1C)
2. Criticism or review: s. 30(1)
3. Quotation: s. 30(1ZA)
4. Reporting current events: s. 30(2)
5. Caricature, parody or pastiche: s. 30A
6. Illustration for instruction: s. 32(1)
iii.
b. Fairness: the traditional approach
i. The test is one of impression and degree:
1. Hubbard v vosper 1972 (Lord Denning MR)
a. P. 94: “it is impossible to define what is “fair dealing”. It
must be a question of degree. You must consider first the
number and extent of the quotations and extracts. Are they
altogether too many and too long to be fair? Then you must
consider the use made of them. If they are used as a basis
for comment, criticism or review, that may be fair dealing”
b. “if they are used to convey the same information as the
author, for a rival purpose, that may be unfair. Next, you
must consider the proportions. To take long extracts and
attach short comments may be unfair. But short extracts,
and long comments may be fair. Other considerations may
come to mind also. But, after all is said and done, it must be
a matter of impression”
2. Pro Sieben Media v Carlton UK Television 1999 (Robert Walker LJ)
a. P. 619 “fair dealing is a question of degree… or of fact and
impression… The degree to which the challenged use
competes with exploitation of copyright by the copyright
owner is a very important consideration but not the only
consideration.
b. The extent of the use is also relevant, but its relevance
depends very much on the particular circumstances. If the
fair dealing is for the purpose of criticism, that criticism may
be strongly expressed and unbalance without forfeiting the
fair dealing defence: and (if it lies anywhere) in the law of
defamation, not copyright”
ii. Some considerations in the case law
1. The amount taken:
a. Hubbard v vosper
2. Whether the defendant’s work competes with or substitutes for the
claimant’s work:
 a. Ashdown v Telegraph Group 2002
3. Whether I was necessary to use the calimant’s work to achieve the
defendant’s purpose:
a. Hyde Park Residence v Yelland 2001
i. Aldous LJ pp. 158-9: “the cases establish and I
believe it right, that it is appropriate to take into
account the motives of the alleged infringer, the
extent and purpose of the use, and whether that
extent was necessary for the purposes of reporting
the current events in question. Further if the work
had not been published or circulated to the public
that is an important indication that the dealing was
not fair”
ii. Held: fair dealing not mate out
1. Compare Jacob J at 1999 RPC 655
4. The motives of the defendant and how the work was obtained.
5. Whether the claimant’s work was published or unpublished
a. HRH Prince of Wales v Associated Newspapers 2007
c. Fairness: European harmonization
i. Do European concepts inform fairness or oust fairness
1. E.g. Deckmyn on fair balance
a. Exceptions seek to achieve a “fair balance” between the
rights and interests of authors and the rights of users: at 26
b. This is assessed by reference to “all the circumstances of
the case” this includes any legitimate interest of the
rightsholders in not having their work associated with a
discriminatory message: and the freedom of expression fo
the user
2. E.g. England and Wales Cricket Board Limited v Tixdaq Limited 2016
ii. to what extent does this make a difference in practice-is it ultimately an
open textured balancing test
d. sufficient acknowledgement
i. defined in s. 178: ‘means an acknowledgement identifying the work in
question by its title or other description, and identifying the author unless
1. in the case of a published work, it is published anonymously
2. in the case of an unpublished work, it is not possible for a person to
ascertain the identity of the author by reasonable inquiry’
ii. SAS institute v World Programming 2010
1. “there is no dispute that the SAS manuals were published
anonymously and thus no identification of the uathors was
required. Consel for SAS institute submitted that WPL had failed to
identify the SAS manuals by their title or other description. Counsel
for WIPL submitted that the identification need not be formal,
relying by analogy on the decision…
 2. In Pro Sieben that the corporate author of a television programme
could be identified by its logo. AS a matter of principle, I accept that
submission. The difficulty, is that I cannot see the WPS guides
contain any acknowledgement of the SAS manuals as a source
whatsoever. The wpl website from which the WPS guides may be
downloaded clearly acknowledges the SAS components by name,
but in my view that is not the same thing.
e. Made available to the public
i. Required under cdpa s. 30(1a): for the purposes of subsections (1) and (1ZA)
a work has been made available to the public if it has been made available
by any means including
1. The issue of copies ot the public
2. Making the work available by means of an electronic retrieval
system
3. The rental or lending of copies of the work to the public
4. The performance, exhibition, playing or showing of the work in
public
5. The communication to the public of the work
ii. But in determining generally for the purposes of those subsections whether
a work ahs been made available to the public no account shall be taken of
any unathorised act.
f. Made available part 2
i. “unathorised acts” do not count. But does “authorized” mean “with the
author’s consent” or “not unlawfully”
1. S. 178 defines unathorized as anything ‘done otherwise than by or
with the licence of the copyright owner”
a. This would suggest consent is required, although note the
language of ‘licence’ which we would typically refer to
permission by the copyright owner to perform a restricted
act.
b. Taking this language and applying Spiegel: it would appear
that the consent of the copyright owner is required for a
work to be “made available to the public” for the purpose of
s. 30(1A)
2. But why does f(i) matter)
a. CDPA s. 178 “unathorised” as regards anything done in
relation to a work means done otherwise than- (a) by or
with the licence of the copyright owner”
i. For Berne Art 10(1): there is a good case that the
equivalent language means “not unlawfully”:
1. Hudson, Drafting copyright exceptions:
from the law in books to the law in action
2020 pp. 281-284
 ii. Spiegel Online [95]: “that work, in its specific form,
was previously made available to the public with
the rightholder’s authorization or in accordance
with a non-contractual licence or statutory
authorization”
ii. HRH Prince of wales v associated newspapers: the circulation of copies of a
diary amongst elect recipients did not make it available for the purposes of
s. 30(1)
F. Case study 1: Research, Study & Educational Use
a. Research & Private Study s. 29
i. 1) fair dealing with a work for the purposes of research for a non
commercial purpose does not infringe any copyright in the work provided
that it is accompanied by a sufficient acknowledgement
ii. 1b) no acknowledgement is required… where this would be impossible for
reasons of practicality or otherwise
iii. 1c) fair dealing with a work for the purposes of private study does not
infring any copyright in the work
iv. “Sufficient acknowledgement” and “private study” are defined in s. 178
b. Indications from the case law
i. What are research and private study
1. Compare
a. de Garis v Neville Jeffress Pidler Pty Ltd 1990
b. Law Society of Upper Canada 2004
c. SOCAN v Bell Canada 2012
2. Suggestion that research need to be read as “scientific research” to
comply with ISD art 5(3)(a): Forensic Telecommunications Services
Ltd v Chief Constable of West Yorkshire Police 2011
ii. S. 29 applies only to non commercial research and private study
1. The status of the organization if not determinative:
a. controller of HM stationery Office v Green Amps 2007
iii. what about agency arguments
1. Sillitoe v mcgraw-hill book company (UK) ltd 1983
a. Publishers could not rely on private study defence
2. CDPA s. 29(3) seems to countenance copying by third parties
3. For acts by librarians and in teaching, note CDPA ss. 32 and 40A-
44A(including fulfilling researcher requests.
c. Illustration for instructions: s. 32
i. Fair dealing with a work for the sole purpose of illustration for instruction
does not infringe copyright in the work provided that the dealing is
1. For a non commercial purpose
2. By a person giving or receiving instruction (or preparing for giving or
receiving instruction) and
3. Accompanied by a sufficient acknowledgement (unless this would
be impossible for reasons of practicality or otherwise
 ii. For more: E Hudson & P Wragg, ‘Proposals for copyright law and education
during the Covid 19 Pandemic 2020
1. E Hudson, ‘Copyright Guidance for using filmsin online teaching
during the covid 19 pandemic’ 2020
G. Case study 2: reporting current events
a. Reporting current events: s. 30(2)
i. 2) fair dealing with a work (other than a photograph) for the purpose of
reporting current events does not infring any copyright in the work provided
that subject to ss. (3)) it is accompanied by a sufficient acknowledgement
ii. 3) no acknowledgement is required in connection with the reporting of
current events by means of a sound recording, film or broadcast, where this
would be impossible for reasons of practicality or otherwise.
b. Indications from case law
i. Pro Sieben Media AG v Carlton Uk Television Ltd 19999
1. Reporting “current events” is an expression “of wide and indefinite
scope” and should be “interpreted liberally” p .620
2. Also consider criticism and review under s. 30(1)
ii. Liberal reading affirmed in Ashdown v telephragh Group 2002
1. Refers to public interest considerations and the impact of the
human rights act, especially ss. 2(1) & 12
2. “the defence… is clearly intended to protect the role of the media in
informing the public about matters of current concern to the public”
at [64]
3. But fair dealing under s. 30(2) fails due to lack fo fairness.
iii. England and Wales Cricket Board Limited v Tixdaw limited
1. Reporting can relate to sporting events. It can be undertaken by
citizen journalists
2. The analysis of fair dealing must consider the language of ISD art.
5(3)©
a. That the use must be limited to the “extent justified by the
informatory purpose”
3. Issues here: the clips were shown for their intrinsic interest rather
than as reporting; plus there was no fair dealing
iv. HRH the Duchess of Sussex v Associated Newspapers 2021
1. Sir Geoffrey Vos MR 102: the trial judge might have cited Pro Sieben
on the large and liberal interpretation given to reporting current
events, but this omission
a. “does not really impact his reasoning… to the effect that D
knew it was dealing with an unpublished work, it copied a
large and important proportion of the work’s original
literary content, most of which infringed the claimant’s
privacy rights and was disproportionate of any legitimate
reporting urpose
 b. The fairness of the reproduction was, therefore, very
limited. Most importantly, perhaps, the use made of the
letter was unfair, because it was not about reporting
current events, but reporting the actual cotnetns of the
letter to make the splash of publication already referred to.
H. Criticism, Review, Quotation
a. Indications from UK case law
i. Time warner v Channel Four 1994: injunction was dissolved, four main
things discussed
1. Th way the film was obtained
2. The argument that the programme misrepresented the film
3. The total length of the extracts
4. The purpose of the programme
5.
ii. Pro Sieben Media v Carlton UK Television Ltd 1999
1. Criticism and review are “expression of wide and indefinite scope”
and should be “interpreted liberally” p. 620
2. Criticism may extend to the “ideas to be found in a work and its
social or moral implications” p. 621
3. Criticism “may be strongly expressed and unbalanced” p. 619
iii. What is the significance of “of that or another work” Compare
1. Hubbard v Vosper
2. Pro Sieben
3. Ashdown v Telegraph Group Ltd 2002
a. Agreed at [61] with the approach of the trial judge that “the
articles are not criticisng or reviewing the minute: they are
criticizing or reviewing the actions of the prime minister and
the claimant in COtober 1997
b. Quotation s. 30(1ZA)
i. Copyright in a work is not infringed by the use of a quotation from the work
(whether for criticism or review or otherwise) provided that
1. The work has been made available to the public
2. The use of the quotation is fair delaing with the work
3. The extent of the quotation is no more than Is required by the
specific purpose for which it is used, and
4. The quotation si accompanied by a sufficient acknowledgement
(unless this would be impossible for reasons of practicality or
otherwise)
c. Language of ISD art 5(3)(d)
i. Permits member states to make an exception to the reproduction and
communication rights for “quotations for purposes such as criticism or
review provided that they relate to a work or other subject-matter which
ahs already been lawfully made available to the public, that, unless this
turns out to be impossible, the source, including the author’s name, is
 indicated, and that their use is in accordance with fair practice, and to the
extent required by the specific purpose”
d. Applying CDPA s. 30(1ZA)
i. Matters not in contention
1. Can apply to any type of copyright work
a. Pelham v hutter [68[
b. And note history of Berne art 10(1)
2. A quotation can comprise an entire work
a. Assumed in Painer v Standard Verlags (C-145/10) [123]
b. put beyond doubt in Pelham [71] and Spiegel Online [78}
i. Both refer to a quotation being a work or extract
c. but the use must still be proportionate and accord with fair
practice.
3. Not necessary for the quotation to be made in a work that is also
protected by copyright: painer [136] Spiegel Online [78]
ii. Some matters are intended to preserve discretion (are not “measures of full
harmonization”):
1. The purposes for which quotation can be applied
2. Proportionality
3. And fair practice
a. MS have some freedom in implementation but note
caveats-
i. Funke Medien v Germany [27-54]
ii. Spiegel Online v Beck [16-39]
b. Pelham v HUtter [69]: the use “must not be extended
beyond the confines of what is necessary to achieve the
informatory purpose of that particular quotation
i. Similar: Spiegel online v Beck [83]
iii. Given the quote in Pelham, how far does the quotation exception extend
1. questions
a. To what extent if at all can a quote be modified
b. Does the quote need to be identifiable?
c. Does the quote need to “relate back” to the source work or
enter into a “dialogue” with it?
2. A.G. Trstenjak in Painer, AG210: under natural usage, a quotation
must be reproduced “without modification in identifiable form” ISD
art. 5(3)(d) adds a further requirement that there be a “material
reference back” to the quoted work.
3. Compare T. Aplin & L. Bently, Global Mandatory Fair Use: The
nature and Scope of the right to Quote Copyright works
iv. Aplin & Bently argue, in relation to Berne art 10(1) that as there are no
limiting words in relation to the user’s purpose it is necessary only that the
user has a purpose
 1. Would seem to be open for ISD art. 5(3)(d) and CDPA s. 30(1za):
“criticism or review” is illustrative.
2. There were indications in Painter that the CJEU might prefer a
narrower interpretation [120] of the judgement] and this has been
confirmed in Pelham v Hutter and Spiegel Online v Beck
e. Pelham v Hutter
i. “the essential characteristics of a quotation are the use… of a work or, more
generally, of an extract from a work for the purposes of illustrating an
assertion, of defending an opinion or of allowing an intellectual comparison
between that work and the assertions of that user” [71]
1. Use of a sound sample from a phonogram may amount to a
quotation “provided that that use has the intention of entering into
dialogue with the work from which the sample was taken” 72
a. Compare A.G. Szpunar (AG67)
b. How would this be dmonstated in practice?
c. Note comments on modified samples: there may be no
reproduction if the sample is ‘unrecognizable to the ear’
i. on return the German court held that quotation
does not apply, but did countenance that a sample
might be a pastiche
f. Spiegel online v Beck
i. Quotation includes a hyperlink to a file that is downloaded independently.
1. It is not necessary that the quoted work “be inextricably integrated”
[80]
2. CJEU also mentioned the special role of hyperlinks in supporting the
operation of the internet and the freedom of expression of users:
[81]
ii. Emphasis at [79] that
1. There needs to be a “close and direct link” between the quoted
work and the reflections of the user
2. Cannot take so extensively as to compete with the source work.
I. Caricature, parody & Pastiche
a. Parody exceptions- why?
i. Parody is an important activity for reasons of free speech and artistic
expression. However, the nature of the genre means that many parodies
will infringe copyright
ii. If we leave parody to market based transactions, this will result in market
failure as copyright owners will not tend to licence parodists
iii. We therefore need legislative intervention through a (free) statutory
exception
iv. Result in the UK: CDPA s. 30A(1) (“fair dealing with a work for the purposes
of caricature, parody or pastiche, does not infringe copyright in the work.
b. Eu harmonization
 i. ISD art . 5(3)(k): permits member states to provide an exception or
limitation for ‘use of the purpose of caricature, parody or pasthice’
1. What is meant by each word
c. Definitions- IPO guidance notes
i. Caricature:
1. “portrays its subject in a simplified or exaggerated way, which may
be insulting or complimentary and may serve a political purpose or
be solely for entertainment.”
ii. Parody
1. “imitates a work for humorous or satirical effect. It evokes an
existing work while being noticeably different from it.
iii. Pastiche
1. “is musical or other composition made up of selections from various
sources or one that imitates the style of another artist or period.
d. Caricature
i. Attorney General v Trustees of The art gallery of NSW 1944
1. Not a copyright case
2. Was William Dobell’s painting of friend Joshua Smith a “portrait” for
the purposes of the Archibald prize (which Dobell won)
3. The argument against was that the painting was a caricature not a
portait.
4. Decision of the trustees upheld.
e. What is parody
i. Laugh it off promotions [2006] Sachs J [76-77]: ‘parody is inherently
paradoxical. Good parody is both original and parasitic, simultaneously
creative and derivative… Parody is appropriation and imitation, but of a kind
involving a deliberate dislocation… unlike the plagiarist whose intention is to
deceive, the parodist relies on the aduience’s awareness of the target work
or genre, in turn, the complicity of the audience is a sine qua non of its
enjoyment.
f. Deckmyn v Vandersteen
i. Quotes
1. Parody should be construed by considering its “usual meaning in
everyday language, while also taking into account the context in
which it occurs and the purposes of the rules of which it is part” [19]
2. For parody there are characteristics; that it evokes but is noticeably
different from, an existing work; and that it involves humour or
mockery [20]
3. In applying Art 5(3)(k), a “fair balance” must be maintained between
the rights and interests of rightsholders and the freedom of
expression of users: 26-27
ii. On fair balance
1. The CJEU identifies freedom of expression of the user as one
relevant interest
 2. What are the interests and rights of authors and others in arts. 2
and 3
a. Take ‘all the circumstances of the case’ into account [28]
b. Here, a relevant factor is the discriminatory message-
holders of rights have ‘in principle, a legitimate interest in
ensuring that the work protected by copyright is not
associated with such a message’ [31]
i. A compelled speech argument
ii. Note the nature of the speech in this case-political
speech.
g. Target vs weapon parody
i. Target parody: the relevant comment pertains to the work, its underlying
thoughts or philosophies or works of that type
ii. Weapon parody: the work is used to illustrate broader ideas or commentary
1. Fair dealing exceptions in Australia and Canada expressly include
satire
2. Deckmyn suggests that weapon parody is included.
iii. At what point are we outside the realms of parody
h. Blanch v Koons
i. It was held that Koons’ work, which was characterized as a satire, was not
infringing by virtue of fair use
ii. key ideas
1. in assessing the purpose of the use, it is relevant whether the work
is transformative or merely supersedes the original
2. Koons’ use may be commercial, but this is not determinative,
especially given the transformative nature of his use.
3. The amount reproduced reasonable given Koons’ purpose
4. There was no evidence of actual or potential market harm to blanch
i. Cariou v prince (2nd circuit)
i. It was wrong of the district court to read into the fair use defence a
requirement that the defendant’s use must comment or or critically refer
back to the original works. What is required is tha the new work provide
“new expression, meaning or message”
1. Although the intention f the artist is relevant, it is not determinative
ii. If a case with similar facts were heard in the UK, might this work be for the
purposes of pastiche?
j. What is pastiche
i. The OED definition for pastiche as a noun
1. 1a) a novel poem painting etc, incorporating several different styles
or made up of parts drawn from a variety of sources
a. B) A mucial composition incorporating different styles; a
medley
 2. 2a) A work, esp. of literature, created in the style of someone or
something else; a work that humorously exaggerates or parodies a
particular style.
a. B) the technique of incorporating distinctive elements of
other works or styles in a literary composition, design, etc.
k. Pastiche
i. E. Hudson: ‘The pastiche exception in copyright law: A case of mashed-up
drafting [2017]
1. Argues that significant additional work is done by the word
“pastiche” CDPA s. 30A
2. Possible applications: mash ups, fan fiction, music sampling, collage,
appropriation art, medleys and many other forms of homage and
compilation
3. Illustration: the defendant’s work in Carious v Prince is a pastiche.
The key question, if these facts occurred in the UK, would be
whether it is a fair dealing. ‘
l. AWF v Goldsmith
i. The 2nd circuit focused considerable attention on the nature of a
transformative work. It held that Warhol’s works were not transformative
and that fair use did not apply
ii. What if this case had arisen under UK law? Key legal issues
1. Is goldsmith’s photograph original?
2. Has the defendant taken a substantial part of the claimant’s work?
a. Temple Island Collections v New England Teas
3. Most obvious fair dealing exception: pastiche in s. 30A
a. It’s a pastiche- but is it fair? What factors ought to be
relevant?
b. Note alternative argument under s. 30(1ZA) This would
likely require a losser definition of quotation than that
accepted in Pelham.

Patents: an introduction

A. Outline
a. What is a patent
b. The patent application
c. Why do we have patents
d. What are the international and regional frameworks governing uk partent law
e. What are the routes to patenting in the UK
B. What is a patent
a. A patent
i. Is a purely statue based right
ii. Provides a limited period of monopoly (ie right to exclude) over an
invention, which lasts 20 years form date of filing the patent application
 iii. Grants an exclusive right to prevent others from making, using, offering for
sale, selling or importing the patented product; or from using the patented
process or from using, offering for sale, selling or importing the product
obtained directly by that process.
iv. Patents act 1977
b. Substantive provisions
i. S. 1(1): a patent may be granted only for an invention in respect of which
the following conditions are satisfied, that is to say
1. The invention is new
2. It involves an inventive step
3. It is capable of industrial application
4. The grant of a patent for it is not excluded by subsections 2 and 3 or
section 4a below
ii. And references in this act to a patentable invention shall be construed
accordingly
iii. Same requirements as European Patent convention article 52
1. Art. 52(1) EU patents shall be granted for any inventions in all fields
of technology, provided that they are new, involve an inventive step
and are susceptible of industrial application.
c. Non-inventions
i. S. 1(2): it is hereby declared that the following (among other things) are not
inventions for the purposes of this act, that is to say, anything which consist
of
1. A discovery, scientific theory or mathematical method
2. A literary, dramatic, musical or artistic work or any other aesthetic
creation whatsoever
3. A scheme, rule or method for performing a mental act, playing a
game or doing business, or a program for a computer
4. The presentation of information
ii. But the foregoing provision shall prevent anything from being treated as an
invention for the purposes of this act only to the extent that a patent or
application for a patent relates to that thing as such.
d. Excluded inventions.
i. s/ 1(3): a patent shall not be granted for an invention the commercial
exploitation of which would be contrary to public policy or morality
ii. s. 4A(1): a patent shall not be granted for the invention of
1. a) a method of treatment of the human or animal body by surgery
or therapy or
2. a method of diagnosis practiced on the human or animal body.
C. the patent application
a. registered rights v unregistered rights
i. copyright is an unregistered right system
ii. patents are a registered right system
b. registration requirements
 i. s. 14(2): every application for a patent shall contain
1. a) a request for the grant of a patent (normally including the title of
the invention, and biographical information such as the contact
details of the applicant and inventor.
2. B) A specification containing a description of the invention, a claim
or claims and any drawing referred to in the description or any claim
and
3. c) an abstract ;
ii. same requirements as EPC article 78(1)
c. the specification
i. consist essentially of the instructions necessary for performance of the
invention (the description)
1. i.e. how to do or make the thing in question and associated
drawings. It then ends with the claims
ii. s. 14(3) PA 1977 “the specification for an invention shall disclose the
invention in manner which is clear enough and complete enough for the
invention to be performed by a person skilled in the art”
1. the specification must sufficiently disclose the invention
2. s. 14(3) echoes the ground of revocation found in s. 72(1)©
d. The description
i. Typically the description will contain
1. Background of the invention
2. Advantages of the invention compared to the state of the art
3. Instructions as to how to perform the invention.
e. The claims
i. The heart of the patent
1. They refine the invention and determine its scope of protection
a. S. 125 PA 1977
b. Art 69 EPC
ii. the requirements of the claims are found in s. 14(5) PA 1977 (See also art 84
EPC)
1. “the claim or claims shall
a. Define the matter for which the applicant seeks protection
b. Be clear and concise
c. Be supported by the description and
d. Relate to one invention or a group of inventions which are
so linked as to form a single inventive concept.
iii. 2 main types
1. Product
a. Ie. a claim to an apparatus, an object or thing
2. Process
a. i.e. claims to a recipe, a method or manner of use
iv. whether the claim is to a product or process has profound implications for
the acts of infringement
 v. note the importance of the claims for both patentability and infringement.
vi. The anyways up cup example claim
1. “the vessel being provided with valve means adapted to prevent
flwo of liquid from the interior of the container through the
mouthpiece unless a predetermined level of suction is applied to
the mouthpiece.
2. Haberman v Jackal Intl 1999
a. N.b. the inventive concept was “the use of a simple slit
valve to prevent leakage of fluid from the outlet of a
training cup”
f. The drawings are mad
g. Registration process
i. S. 14(2): every application for a patent shall contain
1. a) a request for the grant of a patent (normally including the title of
the invention, and biographical information such as the contact
details of the applicant and inventor
2. B) a specification containing a description of the invention, a claim
or claims and any drawing referred to in the description or any claim
and
3. C) an abstract
D. Why do we have patents (history and justifications)
a. History
i. Tanya Aplin and Jennifer Davis
1. “these monopolies became a source of discontent because they
artificially raised prices, gave patent holders wide powers of
enforcement of their rights, adnw ere granted for questionable material
ii. Chronology
1. 1300s- English Kings would use royal powers to attract trade
2. 1449- Henry VI granted the first known English letters patent
3. 1474-The republic of venice enacts a patent scheme that grants
inventors exclusive rights
4. 1500s- royal privileges but ‘abuse’
a. Darcy v allen 1602
5. 1623-the statute of monopolies (21 Jac. I., cap 3)
a. S. 1 “all monopolies… are and shall be utterly void and of none
effect”
b. S. 6 this declaration “shall not extend to any… Patents and
Graunt of Privilege to the true and first inventor.
iii. The emergence of modern patent law
1. 1827: the process to obtaining a patent was “expensive, clumsy and
uncertain”
2. 1850-1875- great patent controversy
a. Concurrent debates took place in Enlgnad, France, Germany,
Holland and Switzerland.
 b. The anti patent movement was motivated by free trade
ideology
c. The pro patent advocates need to establish their own
justificaiotns
d. Economic depression in the 1870s Europe abated the free-trade
movement.
3. 1852- patent law (amendment) act
4. 1883- paris convention; patents, designs and trade marks act 1883
a. The patent office began to examine applications for formal
defects and sufficient descriptions
b. Patentees had to included at least one claim in their
specifications
th
iv. 20 century patent law
1. Patents act 1902- added a ‘novel’ search into the examination process
a. Patents and designs act 1907, 1919, 1942
b. Patents and designs convention act 1928
c. Patents etc. international conventions act 1938
2. Patents act 1949- allowed for pre-grant ‘obviousness’ oppositions
a. S. 101(1): “invention” means any manner of new manufacture
the subject of letters patent and grant of privilege within s. 6 of
statute of monopolies and any new method or process of
testing applicable to the improvement or control of
manufacture.
3. Patents act 1977- a ‘watershed’ based in part on EPC & CPC
4. Patents act 2004- gives effect to the EPC 2000
b. Justifications
i. Are patents ethical or pragmatic
1. Are these two notions complementary or in conflict?
ii. Four best known theoretical justifications for patents
1. A natural property right (exclusivity over ones own ideas
a. Should this not be permanent and inalienable?
2. A post-inventing reward (by exclusivity) for aninvention
a. Proportionate to the societally usefulness of the invention
3. A pre-inventing incentive (by exclusivity) to encourage invention
a. Based on a presumption that industrial progress is desirable for
society
4. An exchange (exclusivity) for the disclosure of trade secrets
a. Based on a presumption public knowledge is best for future
generations;
iii. Fritz MAchlup: An economic Review of the patent system (Study of the
subcommittee on patents, trademarks, and copyrihgts: study no. 15,
Washington: US govt Print off 1958) 78-80
E. What are the international and regional frameworks governing uk patent law
a. International
 i. Paris convention 1883
1. National Treatment; independence of patents; 12 month priority rule;
compulsory licenses
ii. TRIPS agreement 1994
1. Incorporates paris provisions; sets down minimum standards for
substantive patent law- see art. 27
iii. Patent cooperation treaty (PCT) 1970
1. Creates a mechanism for international patent applications.
2. Effectively a one stop shop for application and preliminary examination
of a patent
a. National offices still deal with substantive examination and
grant
3. Patents are in the “international phrase” for a prescribed period, after
which they are deemed to be in the “national phase”
a. International phase is usually 21 months, but in the case of the
UK is 31 months
b. To enter the national phase, all necessary fees must be paid and
translations entered at the relevant office
4. The patents issued are still “national patents”
5. Single application-> checks formalities gives application an
international filing date-> forwards a copy to the international bureau
and international searching authority-> patent office of a contracting
state
b. regional
i. European patent convention (EPC) 1973; 2000
1. Establishes a centralized system of obtaining patents in contracting
states
ii. Community patent convention CPC 1975
1. Aimed to established a single community patent obtainable via one
central procedure and binding in all contracting states (has never come
into force)
2. Not an eu measure
iii. Consequences of EPC on UK patent law
1. Heed should be taken of EPO board of appeal decisions
a. S. 130(7) PA 77 provisions “are so framed as to have, as nearly
as practicable, the same effects in the UK as the corresponding
provisions of the EPC
i. Gale’s application 1991 per Nicholls LJ
ii. Merrell dow v Norton 1996 per lord Hoffman
iii. Eli Lilly v HGS 2010 per Jacob LJ and 2011 per lord
Neuberger
iv. Supplemented by specific EU measures
1. Supplementary protection certificate regulation
2. Biotechnology directive
 3. Unified patent package
F. The application process
a.

b. Tends to take about 2.5 years in total from filing date to granting of the patent.
i. Term is then for 20 years from the filing date (PA77 s. 25, EPC art. 63)
ii. Filing date
1. Also default priority date (PA77 s. 5 art 87)
2. The priority date is used to determine novelty s. 2
3. But…

c. Priority date
i. Unless earlier priority is claimed (usually Paris or PCT)
1. Later application must be “supported by matter disclosed” (s. 5(2) in an
earlier application in order to claim priority
ii. If so, UK application is backdated (for the purposes of validity only) to the first
filing date in another contracting state
iii. Term still calculated from actual filing date.
d. Preliminary examination and search
i. Preliminary examination: check formalities are complied with (PA 77 s. 15A)
1. Application is complete, fees have been paid
ii. Search: basic (limited) search for potential prior art (s. 17
e. Publication date
i. The application is published “as soon as possible” after 18 months from the
priority date, or where there is none, the filing date (s. 16, r 26)
1. Either in the Patents Journal or European Patent Bulletin
ii. Application may be withdrawn before this date without contents becoming part
of the state of the art
iii. Third parties can no make observations as to whether the patent should be
granted or not (s. 21)
1. N.b. cannot “oppose” the grant at this stage.
 f.
Substantive examination
i. Must be requested (together with the prescribed fee) within 6 months of
publication date (s. 18, r 28(2)
ii. Application is scrutinized to see if it complies with the provisions of the
PA77/EPC regarding patentability
g. Grant
i. The patentee can now bring infringement proceedings (s. 61)
ii. The patentee can also backdate damages to the publication date (s. 69)
h. EOP (only) oppositions
i. In the case of a European Patnet, there is a period of 9 months following the
notice of grant being published in the European patent bulletin in which it can
be “opposed”
ii. Successful opposition will result in the patent being knocked out at source.
G. The process outlined
a.

Patents 2: novelty

Core issues

A. Statutory requirements for patent grants

a. PA 77 s.1(1): patent amy be granted only for an invention in respect of which the
following conditions are satisfied
i. The invention is new
ii. It involves an inventive step
 iii. It is capable of industrial application
iv. The grant of a patent for it is not excluded by ss. 2-3) or section 4a.
b. EPC 2000 art. 52(1): European patents shall be granted for any inventions, in all fields of
technology, provided that they are new, involve an inventive step and are susceptible of
industrial application
B. When is an invention new?
a. PA&& s. 2(1): an invention shall be taken to be new if it does not form part of the state
of the art”
b. EPC 2000 Art. 54(1): an invention shall be considered to be new if it does not from part
of the state of the art
C. What is the state of the art
a. S. 2(2): the state of the art in the case of an invention shall be taken to comprise all
matter (whether a product, a process, information about either, or anything else) which
has at any time before the priority date of that invention been made available to the
public (whether in the UK or elsewhere) by written or oral description, by use or in any
other way
b. Art. 54(2): the state of the art shall be held to comprise everything made available to the
public by means of a written or oral description, by use, or in any other way, before the
date of the filing of the Eureopan Patent Application
D. The state of the art comprises
a. Patents act
i. All matter (product, process, info about either, anything else)
ii. Made available (by written or oral, by use or in any other way)
iii. To the public
iv. Whether in the UK or elsewhere
1. Ie. absolute novelty
v. Before priority date
b. Eu patent convention
i. Everything
ii. Same
iii. Same
iv. In EU
v. Before the date of filing (but check out art. 89: effect of priority right.
E. Before the priority date
a. Pa 77 s. 130(1): priority date means the date determined as such under s. 5
b. S. 5(1)
i. The priority date… is except as provided by the following provisions, the date of
the filingthe application
c. Unless paris convention priority date applies
 F.

G. The public
a. Humpherson v Syer 1887: Bowen LJ
i. Has the invention “been communicated to any member of the public who was
free in law or equity to use the invention as he pleased”
b. Bristol myers Co’s application 1968 Lord Parker CJ
i. “the invention is public if information, whether in documentary form or in the
form of the invention itself, has been communicated to a single member of the
public without inhibiting fdetter.
c. Plg research v ardon international, Aldous J
i. The public constitutes “at least one member of the public who was free in law
and equity to use” the relevant information
H. Expected disclosures
a. S. 2(4) PA&& provides a “six month” grace period in case whether the invention has
been disclosed due to
i. Breach of confidence
ii. Being obtained unlawfully
iii. The inventor displaying the invention at an “international exhibition” as defined
by the Convention on International Exhibitions 1928
I. The state of the art
a. However, under s. 2(3) PA77, the state of the art includes earlier unpublished patent
applications, i.e. matter contained in other patent applications where that earlier
application is published on or after the priority date of the later application but which
has an earlier priority date
i. Woolard’s application 2002
ii. The abstract is excluded under s. 14(7) PA77

Made available

A. PA77 provides three express means of making info available to the public
a. Priori disclosure by written description
b. Priori disclosure by oral description
 c. Prior disclosure by use
d. Plus the catch-all; or in any other way
B. But what needs to be ‘made available’
a. The physical invention?
b. The information?
C. Merrel Dow v Norton 1996
a. Patent claim described a “chemical reaction in the human body produced by the
investion of terfenadine and having an anti-histamine effect
i. This drug was made available to and used by volunteers in clinical trials in 1977
and 1978
ii. Product claim described a chemical formula or as lod Hoffman called it: “the
accid metabolite”
b. Swarb facts: patent for a substance which had been produced naturally before
application of process was invalid. Patent was invalidated after discovery that effect was
produced naturally from an acid metabolite.
i. Patent infringement does not require that one should be aware that one is
infringing: “whether or no a person is working an invention is an objective fact
independent of what he knows or thinks about what he is doing”
c. Per Lord Hoffman: held that the 1980 application lacked novelty (the invention had been
anticipated)
i. The acid metabolite had already been made available to the public before the
priority date
1. Prior disclosure by use? Volunteers at previous trials took the
terfenadine and thus made the acid metabolite within their livers.
a. Held no.
i. Under the 1977 act an invention is a piece of
information
ii. “the use of a product makes the invention part of the
state of the art only so far as that use makes available
the necessary information”
iii. “the acts relied upon (the ingestion of the 1972
patented drug during the 1977/78 clinical trials)
conveyed no information which would have enabled
anyone to work the invention, ie. to make the acid
metabolite.”
2. Prior disclosure by written description?- the 1972 patent specification
for terfenadine described the 1980 application (although in very
different terminology)
a. Prior disclosure did anticipate
i. “knowledge of the acid metabolite was… made
available to the public by the 1972 terfenadine
specification under the description ‘ apart of the
chemical reation in the human body produced by the
 ingestion of terfenadine and having an anti-histamine
effect”
ii. “this description, would not enable anyone to work the
invention in the form of isolating or synthesizing the
acid metabolite. But for the purpose of working the
invention by making the acid metabolite in the body by
ingesting terfenadine, I think it plainly was. It enable the
public to work the invention y making the said acid
metabolite in their livers”
ii. The 1977 act adopts an ‘information disclosure’ rationale
1. An invention (information) is anticipated when, before the priority date,
someone makes available to the public “the necessary information” to
work the invention
2. but what if someone else (a competitor) is working the invention in
secret or happens to be uninformed but working the invention (i.e.
making the invention but doesn’t even realise it.
a. Bristol Myers v Beecham Group 1974
i. Under the patent act 1949
ii. 1962: beecham UK obtained a patent for penicillins.
Patent included product claim for product ampicillin a
derivative of penicillin. Specification described several
methods of making A.
iii. 1963: A can take on four forms. US company applied for
patent for Amp trihydrate form. They were first to
discover that version possessed important practical
advantages over the other 3 forms. It was more stable
and had a longer shelf life. Specification claim methods
of making AMP TRI undisclosed by Beecham
iv. Beecham’s opposed the US patent. Beecham had not
been following its methods but “sought to improve
upon them” different forms of amp were made and
mixed together. Foru bathes of the mix took on the
ampicillin trihydrate form. The four batches were sold
on the market but purchasers did not know or could not
discover the content.
b. Held: prior use by way of selling the capsules
i. A patent should not be granted if it would stop
someone “from doing what he had done before”
whether in public, secretly, or otherwise uinformatively
ii. Known as the right ‘right to work’ rationale
d. Lord Hoffman final.
i. The information disclosure rationale for patents than under the patents act 197
is different to the “old UK patent law”
1. Patents act 1949 and earlier
 ii. The new approach introduces “a substantial qualification into the old principle
that a patent cannot be used to stop someone doing what he has done before”
iii. Acts done secretly or without knowledge will not participate
iv. But “a gap has opened between the tests for infringement and the anticipation”
Defendants will have to rely on s. 64
D. Synthon v Smithkline Beecham 2005
a. Smithkline Beecham obtained patent for paroxetine methanesulfonate (PMS) in a
particular crystalline form
b. Synthon applied for revocation for lack fo novelty, this was based on an earlier patent
application they had made (and which was granted) which claimed a broad class of
sulfonic acid salts which included PM
i. This was filed but not published before SB’s priority date- relied on s. 2(3) PA 77
c. Question: whether the SB invention is “new” having regard to the synthon’s priori
disclosure?
d. Lord Hoffman
i. Anticipation (i.e. information if validly made available to the public) is assessed
under a two step test; requiring both
1. Prior disclosure, and
a. To determine this, apply the reverse infringement tet
b. Lord Hoffman cited this passage from General Tire v Fireston
1972
i. “the matter relied upon as prior art must disclose
subject matter which, if performed, would necessarily
result in an infringmenet of the patent”
c. held that there had been prior disclosure
i. the crystalline form was in fact monomorphic, meaning
that PMS only had one crystalline from, so the
performance of Synthon’s invention would necessarily
have infringed the SKB patent.
d. “IN merrell dow, the ingestion of T… necessarily entailed the
making of the patented acid in their livers. It was therefore an
anticipation of the acid metabolite, even though no one was
aware that it was being made or even that it existed. But the
infringement must be not merely a possible or even likely
consequence of performing the invention disclosed by the prior
disclosure. It must be necessarily entailed. (23)
e. But there was an error in synthon’s description.
2. Enablement
a. Next consider if the disclosure is an enabling disclosure
b. Enablement: means that the ordinary skilled person would have
been able to perform he invention which satisfies the
requirement of disclosure
i. “for the purpose of enablement however, the question
is no longer what the skilled person would think the
 disclosure meant but whether he would be able to work
the invention which the court has held it to disclose.
c. “thus in Merrell, the question of enablement turned on whether
the disclosure enabled the skilled man to take terfendadine and
feed it to hay fever sufferers, not on whether it enabled him to
make the acid metabolite”
d. Held that synthon’s application was an enabling disclosure
i. PSA would be able, with reasonable trial and error, to
produce PMS in crystalline form. SMB’s invention
therefore lacked novelty.
E. Reconciling Merrel Dow & Synthon
a. The reverse infringement test, according to Synthon, is relevant to whether there is
disclosure of the invention
b. Why then was the prior use in Merrell Dow (volunteers at the 77/78 trials) not an
anticipation?
i. Lack of disclosure?
ii. Lack of enablement?
F. Interpreting the prior act
a. Through the eyes of the person skilled in the art
b. Documents interpreted as at the date of publication
i. other prior art is interpreted as at the priority date
c. cannot ‘mosaic’ documents
d. information which a PSA can derive from a product includes anything which can be
ascertained from analysing the product, even if there no motivation for doing so
i. availability to the public 1993 J EPO 277

advanced novelty issues

A. purpose-limited process patents for second (and other) medical use

B. Novelty of pharmaceuticals
a. Epc 1973, art. 52(4) excluded inter alia methods of treatment of the human or animal
body by therapy from being capable of industrial application
i. Art. 53© EPC 2000 which retained the exclusion but removed the “legal fiction”
b. EPC 1973, art. 54(5)
c. Art. 52(4) “shall not exclude the patentability of any substance of composition (ie a
product) comprised in the state of the art… provided that its use for any method
referred to in that paragraph is not comprised in the state of the art
i. Art. 54(4) & (5) EPC 2000
C. GO5/83 Eisai/Second Medical Indication 1979-85 EPOR B241 EBA
a. However, Art 54(5) EPC 1972 created an exception to novelty for pharm substances and
allowed for purpose-limited products claims for a first method of medical treatment,
provided that the use was novel
i. A purpose limited product avoided art. 52(4) prohibition because it was not a
method of treatment.
 b. Art. 54(5) EEPC 1972 does not prevent second (and other) medical uses as purposes
limited process claims, provided the use was novel
i. To avoid art. 52(4) prohibition on methods of treatments, the purpose limited
process claims would have to be directed at the process of manufacture
ii. Swiss-form claim: “use of a substance or composition for the manufacture of a
medicament for a specified (new) therapeutic application)
D. Bristol Meyers Squibb v Baker Norton Pharma
a. History of Taxol
i. It was identified in 1962 as part of a screening programme for anti-tumour
agents initiated by the US national cancer institute
ii. Its active agent was first isolated in 1971 from the bark of the pacific yew
iii. About 1971 it was shown to have anti tumour activity in mice
iv. In 1980, a formulation was devised that increased the solubility of Taxol, which
enabled animal studies to be carried out.
v. By 1983, the NCI were in a position to apply for regulatory permission to try the
drug in humans
vi. Initial trials, known as Phase 1, were started in 1984. However, after receiving
just a few mils of taxol, patients started developing an acut reaction, including
skin rash, shortness of breath, reduction of blood pressure and cardiac rhythm
abnormalities. As a result all Phase 1 trials to have an infusion time of 24 hours
initially (coming down to a minimum of 6 hours if there was no adverse
reaction, and the use of premedication. The idea was to minimize the danger of
toxic shock
vii. In 1991, the NCI teamed up with a commercial partern BMS, BMS would tackle
the problem of supplied and undertook responsibility for all the trials outside
the US.
b. Problems with it
i. The long infusion duration is inconvenient for patients, and is expensive due to
need to monitor patients for entire 6 to 24 hour infusion duration.
ii. The long infusion time request hat a patient spend at least one night in a
hospital or treatment clinic. Thus, it is highly desirable to develop a taxol
infusion protocol which would allow for recipients to be treated on an out-
patient basis
iii. It is also desirable to avoide the high dosages of taxol to avoid adverse toxic side
effects.
iv. Due to extremely limited supply of taxol and high dosage requirement per
patient, demand for Taxol greatly exceeds supply
c. Facts: Baker argued that the BMS invention was not new
i. BN relied on public lecture (prior disclosure by oral description) before priority
date which discussed different Taxol dosage during the initial stages of a clinical
study and compared 24 hour continuous infusion with short, 3 hour infusion
1. The lecture indicated that 3 hour infusion was as feasible and safe as 24
hour continuous infusion
2. But the lecture did not indicate that neutropenia was reduced.
 ii. Q1: did the claim contain a novel invention
1. Alduous LJ said no; the public lecture “disclosed that Taxol was suitable
for trying to treat cancer using a three hour treatment… the lecture
contained clear and unmistakable directions to carry out such a three
hour infusion.” The claim therefore lacked a new use. AS for reduced
side-effects, this was a “discovery” (excluded under s. 1(2)(a), not a new
therapeutic use. The claim therefore lacked a novel invention
2. Buxtn LJ said NO: the trial judge was right to hold “this is not a case of a
second or other medical use. It is a case of mere discovery about an old
use” The claim therefore lacked novelty.
3. Holman J said YES (maybe): the lecture “clearly disclosed” the 3 hour
dosage regime.
a. “the only integer which could be said to be novel is… inducing
less neutropenia” that had not been disclosed by the lecture but
would have been “obvious”
iii. Q2: what does a swiss-from claims require to be novel? More specifically, could
a new dosage regime be novel?
1. Alduous LJ” Novelty in a swiss-type claim resides in “the new second (or
subsequent) therapeutic use” the judge was right to conclude that it
was not a claim for a second therapeutic use. The midcaments in
question were known to be suitable for treating cancer. The remainder
of the claim relates to the way that such a medicament was to be used.
2. Buxton LJ: identified the claim as “an improvement in the method of
administering an existing treatment; it is not a new therapeutic
purpose. Referring to Eisai: “second medical use must be for an end-
purpose distinctively different from the first, alneit also medical,
purpose for which the substance was used. That not only follows from
the structure of the Board’s argument, but also from the need to
respect the exclusion of methods of medical treatment.
3. Holman J: agree with Buxton LJ: there must be a therapeutic application
or purpose which is not only inventive but new.
E. Actavis v Merck 2008
a. Lesser dosage become a new valid patent
b. Warren J held lack of novelty
i. CA held that novelty was not an issue: No one had ever… given clear and
unmistakable directions” to use finasteride in this dosage for this purpose.
However, “whether it would be obvious is quite a different matter” in this case,
the trial judge had been right that the invention was not obvious.
c. Held CA: according to Eisai: novelty can come not just from new therapeutic use but
from a new dosage regime
i. “where the medicament itself is novel in the sense of having novel technical
feature- e.g. a new formulation, dosage or synergistic combination- the ordinary
requirements of Art 54(1-4) EPC will be met” Eisai [20]
d. Other EPO decisions supported this view
 e. Did Bristol Meyers hold to the contrary
i. In this case, the court held that the ratio of Bristol Meyers was that the claim
was a method of medical treatment- no clear ratio on novelty of dosage
regimes
ii. Even if there was a clear ratio to the effect that a new therapeutic was required
and precluding new dosage regimes, carve out an exception to precedent:
1. “this court is free but not bound to depart from the ratio of its own
earlier decision if it is satisfied that the EPO Boards of Appeal have
formed a settled view of European Patent Law which is inconsistent
with that earlier decision. Generally this court will follow such a settled
view.

Purpose limited product patents for second and other medical sue

A. EPC 2000 amendments

a. Art 54(4): paragraphs 2 and 3 shall not exclude the patentability of any substance or
composition, comprised in the state of the art, for usein a method referred to in Article
53©, provided that its use for any such method is not comprised in the state of the art
i. Ie purpose limited product claims for first medical use
b. Art. 54(5): para’s 2 and 3 shall also not exclude the patentability of any substance or
composition referred to in para 4 for any specific use in a method referred to in article
53© provided that such use is not comprised in the state of the art
i. Ie purpose limited product claims for second medical use.
B. G2/08 Dosage Regime/Abbott Respiratory (enlarged board of appeal, EPO 19.02.2010)
a. Use of nicotinic acid for the manufacture of a sustained release medicament in a
specified dosage for the treatment of hyperlipidaemia
b. Technical board of appeal referred three question
i. Where it is already known to use a particular medicament to treat a particular
illness, can this known medicament be patented under the provisions of art.
53(c0 and 54(5) EPC 2000 for use in a different new and inventive treatment by
therapy of the same illness?
1. Held that the medicament can treat the same illness, it need not be for
another disease
a. Consistent with Eisai
b. Art 54(%) EPC 2000 sought ot fill lacuna in old law which had
been closed in a praetorian way by Eisia and subsequent cases
c. Confirmed by preparatory documents
ii. If the answer is yes, is such patenting also possible where the only novel feature
of treatment is a new and inventive dosage regime
1. Given that the specific use in art 54(5) may reside in something else
than the treatment of a different illness, a novel dosage regime is
permissible
iii. Are there any special considerations applicable when interpreting and applying
art 53© and 54(5) EPC 2000
 1. Where the subject matter of a claim is rendered novel only be a new
therapeutic use of a medicament, such claim may no longer have the
format of a so called swiss-tye claim
c. Accordingly by 29 january 2011 all new applications are required to comply with the EPC
2000 change in claim format
d. Therefore, the last swiss form claim will expire at the end of January 2031 (or 2036 if
supplementary protection certificates are included in the equation.

Non-medical purpose limited product patents

A. G2/88 Mobil/Friction reducing additive 1990 EPOR 73 (enlarged board of appeal)

a. There was a known compound used as an additive for motor oils to reduce rust
b. There was a patent claim for using it as a friction reducing additive in lubricating oil
c. Held that:
i. “in relation to a claim to a use of a known entity for a new purpose, the initial
question is again: what are the technical feature of the claimed invention? If the
new purpose is achieved by a ‘means of realisation’ which is already within the
state of the art in association with the known entity, and if the only technical
features in the claim are the known entity in association with the old means of
realisaiton, then the claim includes no novel technical feature. In such a case,
the only ‘novelty’ in the claimed invention lies in the mind of the person
carrying out the claimed invention, and is therefore subjective rather than
objective.’
d. But the fact that the substance achieved the new purpose would result in an objective
technical feature of the invention, not residing in the mind of the user
i. See also G06/88 Bayer
ii. Are there problems with this? Check Merrell Dow v Norton?

Selection Patents

A. This notion derives form the problems caused by patenting compounds- generic disclosure (of a
broad class of compounds) yet later discover that an individual compound within the class has a
particular advantage
a. Special rules on novelty?
i. Under old law yes
1. IG Farbenindustri’s patent 1930
2. Du pont 1982
ii. Under the PA77- NO
iii. Dr Reddy’s Laboratories UK Ltd v Eli Lilly 2008 EWHC 2345 and 2009 EWCA CIV
1362
1. Apply general novelty principles
B. Dr Reddy’s laboratories UK v Eli Lilly 2009 EWCA 1362
a. Claim was a product claim of a checmical formula and other claims related related to
use and composition and dosages
b. Appeal by Dr Reddy against refusal to revoke Eli Lilly’s patent for an anti psychotic agent
used in treatment of schizo. DR Reddy said patent suffered from
 i. Deficiency of novelty over a prior disclosure made by Eli Lilly in an earlier patent
ii. Obviousness over the same patent
iii. Further bout of obviousness which had been brought about by the earlier
publication of an article by one of Eli Lilly’s scientists.
c. Reddy argued novelty
d. Jacob LJ
i. “an old question and answer runs as follows: “where does a wise man hide a
leaf? In a forest” It is, at least faintly, ridiculous to say that a particular leaf has
been made available to you by telling you that it is in Sherwood forest .Once
identified, you can of course see it. But if not identified you know only the
generality: That Sherwood Forest has millions of leaves… Similarly it makes no
sense to say that a generalized prior description discloses a specific matter
falling within in”
ii. “So what one must look for nby way of an anticipation is an “individualized
description” of the later claimed compound or class of compounds. This case is
miles from that”
iii. Also “where you have a patent for a particular chemical compound and parior
art general disclosure, performance of the general disclosure… does not
necessarily result in infringement of the patent.:

Patents 3: inventive step

A. The requirement
a. S. 3 PA 1977
i. “an invention shall be taken to involve an inventive step if it is not obvious to a
person skilled in the art…’
b. Art. 56 EPC
i. ‘an invention shall be considered as involving an inventive step if, having regard
to the state of the art, it is not obvious to a person skilled in the art…’
B. What is the rationale behind the inventive step
a. Step v Emson 1993; Lord Hoffman LJ: Inventive step is a “question of fact and degree
which must be answered in accordance with the general policy of the patents act to
reward and encourage inventors without inhibiting improvements of existing technology
by others. The question is therefore whether in accordance with this policy, the patent
discloses something sufficiently inventive to deserve the grant of a monopoly’
b. How is this different from novelty?
C. The similarities
a. Both share a common core-definition of prior-art: s. 2(2) PA 1977; Art 54 EPC
i. However, s. 2(3) prior art (pre published applications) do not count for inventive
step
b. Both novelty and inventive step consider the prior art as if brought to the notice of the
person skilled in the art
i. However, see Mills & Rockley (electronics) v Technograph Printed Circuits 1971
Lord Reid: ‘when dealing with obviousness, unlike novelty, it is permissible to
 make a ‘mosaic’ out of the relevant documents, but it must be a mosaic which
can be out together by an unimaginative man with no inventive capacity.’
D. Otherwise novelty and inventive step are fundamentally different in character
a. Whereas novelty is concerned with flag posts… inventive step is all about sign posts.
E. Person skilled in the art
a. Crucial to the determination of obviousness/inventiveness
b. Also relevant to other concepts
i. Novelty
1. In order to invalidation, prior art must anticipate the claimed invention
and enable a person skilled in the art to perform it.
ii. Enablement/sufficiency
1. The person that must be able to perform the invention from the
instructions
iii. Claim construction
1. The person through whose eyes the claims are viewed.
c. A good summary
i. Pfizer Ltd’s patent 2001 [62] Laddie J
1. This is not a real person, he is a legal creation
2. He is supposed to offer an objective test of whether a particular
development can be protected by a patent
3. He is deemed to have looked at and read publicly available documents
and to know of public uses in the prior art
4. He understands all languages and dialects
5. He never misses the obvious nor stumbles on the inventive
6. He has no private idiosyncratic preferences or dislikes
7. He never thinks laterally
8. He differs from all real people in one or more of these characteristics
d. Other attributes of person in the art
i. Mills & Rockley (electronics) v technograph printed circuits 1971: 193 per lord
reid
1. Is well acquainted with workshop techniques
2. Has carefully read all the literature
3. Possessed of the common general knowledge
4. Competent, but “incapable of a scintilla of invention”
ii. Rockwater v Technip 2004: Jacob LJ
1. The man can, in appropriate cases, be a team- an assembly of nerds of
different basic skills, all unimaginative,
2. But the skilled man is not a compete android, for it is also settled that
he will share the common prejudices or conservatism which prevail in
the art concerned.
e. Approaching the prior art
i. Consider the weight attached to documents
1. Is the publication at all relevant to the issue at ahand?
2. Perhaps more likely to be seen as relevant if in similar/related field?
 a. Mobius/Pencil Sharpener 1985
3. Would it have been taken seriously?
ii. Mind set of the skilled addressee
1. No idiosyncratic prejudices but shares the common prejudice of the
trade
2. We identify these issues and approach through common general
knowledge.
F. Common general knowledge
a. Scinopharm Taiwan v Eli Lilly 2009 [20] per Kitchin J
i. The common general knowledge is all that knowledge which is generally known
and generally regarded as a good basis for further action by the bulk of those
engaged in the art to which the invention relates…
ii. It also includes all the material which the skilled person knows exists and which
he would refer to as a matter of course, if he cannot remembet it and which he
generally understands is sufficiently reliable to use as a foundation for further
work…
iii. It does not, however, include everything which may be turned up on a literature
search.
b. CGK includes prejudice of the trade; dyson v hoover 2002: Sedley LJ
i. The vacuum-cleaner industry was functionally deaf and blind to any technology
which did not involve a replaceable bag
ii. The fact that the handicap was entirely economically determined made it, if
anything, more entrenced.
iii. It is entirely in accordance with what we know about innovation that this
commercial mindset will have played a part in setting the notional skilled
addresse’s mental horizon
iv. A true inventor is an individual who as able to lift his eyes above the mental
horizpn and see a bag free machine.
c. SEB v De’longhi 2003
i. PSA was a team of people: design engineer, a production person and a
marketing person
ii. CGK included
1. Knowledge that the skirt can made of metal and that the vessel can rest
on the skirt
2. General idea of a double walled fryer
3. Strong emphasis on the use of plastics where possible
4. General trend, driven in part by safety considerations, to enclose heated
appliances in plastic casings.
5. The plastics suitable for use in domestic appliances.
G. When is an invention obvious? The UK Approach
a. Windsurfing International v Tabur Marin 1985: 73 Oliver LJ
i. Apply a four step test in answering the question
1. Identify the inventive concept embodied in the patent in suit
 2. Identify the person skilled in the art at the priority date and impute to
them with the common general knowledge at that date.
3. Identify what, if nay, differences exist between the prior art and the
alleged invention
4. Ask whether, viewed without any knowledge of the alleged invention,
those differences constitue steps which would have been obvious to the
skilled man or whether they required any degree of invention.
b. Pozzoli v bdmo 2007
i. The test
1. 1.
a. A) identify the notional “person skilled in the art”
b. B) identify the relevant common general knowledge of that
person
2. 2) identify the inventive concept of the claim in question or if that
cannot be readily be done, construe it .
3. 3) identify what, if any differences exist between the matter cited as
forming part of the “state of the art” and the inventive concept of the
claim or the claim as construed’
4. Viewed without any knowledge of the alleged invention as claimed, do
those differences constitute steps which would have been obvious to
the person skilled in the art or do they require any degree of invention?
ii. Issues
1. Prior art
a. What was new about the patent was not that it claimed a
container for holding two or more discs where the heigh of the
container was less than twice its width, such containers were
already known.
2. Novel concept
a. What was new was that the discs were partially overlapped and
spaced apart and that their axes were offset.
iii. Definitions
1. Person skilled in the art- person who might wish to package discs
2. CGK- person would know about common forms of packaging CD’s
including 2:1 tray where two CD”s are accommodated side by side
a. Rejected the idea that there was prejudice int eh industry
against overlapping CD’s
3. Inventive concept-overlapping discs, spaced apart via a step like
arrangement
4. Was it ovvious?
a. Yes. If you wanted to reduce the height of a 2:1 container it was
obvious to overlap the discs
i. “one might well have taken a different view if
immediate commercial success followed the
 introduction of the first version of the pozzoli product.
But that is not the case.” [66]
iv. Step 2 of pozzoli test
1. Note that it is the inventive concept of the claim that you are looking
for-not the specification as a whole
a. Different claims can have different concepts
2. Look for
a. What the claim means and
b. Which bits matter for the purposes of the invention
3. Essentially trying to strip out unnecessary verbiage and make a precis of
the invention
a. SABAF v MFI 2005
H. Obvious to try?
a. Conor v Angiotech 2008
i. The claims
1. Claim 1: a stent for expanding the lumen of a boy passageway, tubular
structure coated with an anti-angiogenic factor and a polymeric carrier…
science shit.
2. Claim 11: a stent according to any one of claims 1 to 5 for treating
narrowing of a body passageway
3. Claim 12: a stent according to Claim 11 for treating or preventing
recurrent stenosis<- Was claim 12: obvious to try.
ii. Lord Hoffman
1. One should apply “ordinary principles of obviousness to the claimed
invention” obvious to try is not a separate test
2. In this case, was it “obvious to use a taxol coated stent to prevent
restenosis
3. Obvious to try may be a factor that can be taken into account per
Generics v H Lundbeck 2007 {72} Kitchin J (endorsed by Hoffman in
Conor Medsystems v Angiotech Pharma 2008 [42]
a. “the question of obviousness must be considered on the facts of
each case. The court must consider the weight to be attached to
any particular factor in the light of all the relevant
circumstances. These may include such matters as
i. The motive to find a solution to the problem the patent
addresses
ii. The number and extent of the possible avenues of
research,
iii. The effort involved in pursuing them an d
iv. The expectation of success
iii. Regarding obvious to try
1. The relevant question is whether ti would be obvious that the PSA
would (rather than could) have undertaken this avenue of research
 2. In this case, the relevant question was whether it was obvious that a
taxol coated steent would treat restenosis (as opposed to whether it
was obvious that Taxol might have this effect)
3. An invention could be considered obvious where it was obvious to try,
but only where there was a fair expectation of success to warrant trial-
how much of an expectation depended on facts of case.
b. Consider the factors of each case
i. Actavis group v icos 2019 UKSC [63] Lord Hodge
1. “kitchin J’s list of factors is illustrative and not exhaustive. Another
factor which needs to be considered in the present case si [5] the
routineness of the research’
ii. Other factors could be
1. 6) the burden and cost of research
2. 7) the value judgements of the skilled person
3. 8) whether the results were “unexpected or surprising” but question
“added benefit” or “golden bonus” feature when the claim is obvious
for other reasons.
c. Not directed to whether commercially obvious
i. Hallen v Brabrantia 1991
1. Self pulling corkscrews known
2. Teflon known as friction reducing material
3. It is thethwe it is technically or practically obvious
I. The EPO approach
a. Bayer/Carbonless copying 1979-85
b. Problem and solution
i. Determine the “closest prior art” by looking at the patent’s technical teaching
and claims
ii. Establish the “objective technical problem” to be solved, by a comparison
between what the invention does and what the prior art discloses; and
iii. Consider whether or not the claimed invention, starting from the closest prior
art (and bearing in mind the objective technical problem) would have been
obvious to the skilled person- ie ask whether the claimed invention is an obvious
solution to the problem identified.
iv. Note the criticism: Jacob LJ actavis v Novartis.
c. Is there a difference between the two tests
i. Actavis group v icos 2019: 62 Lord Hodge
1. “while both approaches focus on the inventive concept put forward int
eh claims, neither approach should be applied in a mechanistic way.
Both are glosses on the text of s. 3 of 1977 act and article 56 of EPC and
neither require a literalist approach to the wording of the claim in
identifying the inventive concept.”
J. Summary
a. Assessin obviousness
i. Question of whether something is obvious or not will require evidence
 1. Remember that the question is to be assessed as of the priority date of
the patent in question
2. If the claim is broad, the inventive concept will also be broad
3. Obviousness is tested against the mental and developmental norm of a
notional uninventive person skilled in the art.
4. Legitimate to proceed as if prior art had been collected and dumped on
the desk of a new entrant to the art at the priority date
5. But remember that prejudice of the trade might affect how the SA views
the prior art.
K. Evidence
a. Primary evidence
i. It is not helpful to approximate experts to the PSA
ii. The primary function of expert witnesses is “to educate the court in the
technology” but it is also permissible to opine on obviousness
iii. But, by no means must the court follow the opinion of the expert
iv. What matters most is the reasons given for the opinion
v. Rockwater v Technip 2004: [12-14] Jacob LJ
b. Secondary evidence
i. Commercial success and long-felt want
1. Molnlycke v procter & Gamble 1994
a. Secondary evidence must be kept in its place
2. Haberman v jackal intl 1999
a. Commercial success can give insight into the perception of
those in the art
3. Aujourd-Hui 2000 EPOR 265
4. NICHIa v argos 2007
a. “if it was so obvious, why was it not done before? Is a powerful
question for the patentee to ask when the cited art is old, and
more so when it is old and well known:
L. Practical example
a. Haberman v jackal intl 1999
i. Inventive concept_ simple slit valve to prevent leakage
ii. CKG
1. Teats were drip resistant
2. Training cups were prone ot leak
iii. Factors to assess obviousness
1. Significance of the problem
2. Widely known problem
3. Proximity to prior art
4. Other solutions
5. Inhibiting factors
6. Commercial success on technical merits.
iv. Decision
1. “long-felt want” invention
 2. The success was based on the incorporation of the simple slit valve
3. From 658k cups to 2 milllino cups
4. Although inventive step was smill and simple it was not obvious
5. Commercial success can give insight into the perception of those in the
art.

Patents 4: medical inventions & entitlement

A. Outline
a. Medical inventions
i. General structure of excluded subject matter
ii. Therapeutic methods
iii. Surgical methods
iv. Diagnostic methods. \
b. Entitlement
i. Basics
ii. Who is the inventor?
iii. Employee inventors
iv. Employee compensation
B. Medical inventions
a. International obligations: TRIPS
i. Art. 27 (1) “patents shall be available for any inventions, whether products or
processes, in all fields of technology, provided that are new, involve inventive
step and are capable of industrial application
1. FN%- “for the purposes of this article, the terms “inventive step” and
capable of industrial application” may be deemd by a MS to be
synonymous with the terms “non obvious and useful” respectively.
ii. But art. 27(2) & (3) permits exclusions on the grounds of
1. Ordre public or morality
2. Diagnostic, therapeutic or surgical methods for the treatment of
humans or animals
3. Plants and animals other than micro-organisms, and essentially
biological processes for the production of plants or aniumals other than
non biological and microbiological processes.
iii. European patent convention
1. 1973
a. 52(4): methods for treatment of the human or animal body by
surgery or therapy and diagnostic methods practicesed shall not
be regarded as inventions which are susceptible of industrial
application
2. 2000
a. 53© EU patents shall not be gratned in respect of… methods for
treatment of the human or animal body by surgery or therapy
and diagnostic methods practicsed on the human or animal
body;
b. Industrial application
i. An invention is capable of industrial application if it can be used or made in ‘any
kind of industry’ PA77 s. 4(1) EPC 2000 art 57
ii. Chiron v Murex 1996
1. Industry should be understood as “trade or manufacture in its widest
sense and whether or not to profit’
2. But ‘there is no industry for the making of useless products’
3. Patentable inventions must therefore have ‘some usefl purpose’
iii. Human genome sciences v eli lilly 2011
1. The patent must disclose “a practical application” and “some profitable
use” for the claimed substance, so that the ensuing monopoly “can be
expected (to lead to) some… commercial benefit”
2. A “concrete benefit” namely the invention’s “use;… in industrial
practice’
c. Interpreting the EPC 1973 exclusions
i. Diagnostic Methods 2006 (EBA)
1. “from the systematics of art. 52 EPC 1973 it follows that diagnostic
methods practiced on the human or animal body referred to in art.
52($) EPC 1973 are inventions within the meaning of art. 52(1) EPC 1973
2. “however, by means of a legal fiction, are regarded as not susceptible of
industrial application”
3. “the exclusion from patentability… under art 52(4) EPC 1973 seems
actually to be based on socioethical and public health considerations”
4. “medical and veterinary practitioners should be free to take the actions
they consider suited to diagnose illnesses by means of investigative
methods”
5. “consequently, the policy behind the legal fiction… appears to be aimed
at ensuring those who carry out… medical treatment of humans or
veterinary treatment of animals are not inhibited by patents”
ii. MEDI-PHYSICS/treatment by surger (EBA)
1. “the prevailing view has always been that medical practice must not be
hindered by patent protection”
2. “the reasons for this can be classified in 2 main categories, namely
a. The consideration that medical practice cannot be regarded as a
branch of industry
b. The need to ensure medical care for the public but it may seem
that with time the focus has moved from the first aspect to the
latter”
3. “the purpose of art. 52(4) PEC 1973 is to remove any obstacle to the
freedom to choose the best medical treatment to be applied to a
pateitn and to avoid any delay in the application of such medical
treatment”
4. “hence the exclusion of art. 52(4) EPC 1973 is intended to protect
patients”
 d. Interpreting the 2000 exclusions
i. Medi-physics (same case0
1. “dissociation from the criterion of industrial applicability will also
formally have been achieved with the entry into force of the EPC 2000,
since the exclusion of medical methods from patentability will appear in
the systematically correct place, ie among the exception to patentability
listed in art. 53 EPC 2000”
C. Excluded methods #1: therapeutic methods
a. Salminen/pigs IIII v (opposition by Medata systems) T58/87 1989 EPOR 125
1. claim was centered around a method for preventing piglets from
suffocating.
ii. A therapeutic method is “any non surgical treatment which is designed to cure
alleviate, remove or lessen the symptom of, or prevent or reduce the possibility
of contracting any malfunction of the… body”
iii. A therapetuci method “also relates to the treatment of a disease in general or
to a curative treatment in the narrow sense, as well as the alleviation of the
symptoms of pain and suffering’
iv. ‘the behaviour of newborn piglets to creep under the dam standing up to eat
and drink either during or after farrowing cannot be fairly regarded as a
malfunction of piglets whose instinct is not adequately developed.
v. ‘claim 1… clearly covers a method for protection of piglets from the
disadvantageous conseuqnces of this behaviour, such as suffocating under the
dam, by blowing air under the standing dam thus creating unpleasant conditions
for the pigelts. This cannot reasonably be called a treatment by therapy which is
practiced on bodies of piglets within the meaning of art. 52(4) EPC_
vi. The invention is concerned with preventing accidents, analogous to a method of
preventing a worker from trapping his hand in machinery.
b. DU/Pont/Appetite suppressant t144/83 1987 EPOR 6 (TBA)
i. Claims
1. Method of improving the bodily appearance of a non-oppiate addicted
mammal (through a pill)
2. The method of claim 1 where animal is a human
ii. Therapy relates to
1. The curative treatment of a disease or
2. The allevision of the symptoms of pain and suffering
iii. Claim 1 “clearly covers a method of cosmetic use and is unrelated to the therapy
of human or animal or body in the ordinary sense. This is because loss of weight,
like gain of weight, is normally not dictated as a desirable effect by medical
considerations at all”
iv. Cosmetic treatment “is designed to beautify hair, skin, copmexion, etc… or
intended to improve appearance
v. However, in some cases there is “no sharp distinction” between cosmetic
treatment and therapeutic use
 1. “it may even be difficult to distinguish between the cosmetic and
therapeutic effect, that is, losing weight and curing obesity.
vi. “this should not, however be allowed to work to the disadvanrtage of an
applicant who…. Seeks patent protection for cosmetic treatment but not for the
therapeutic treatment as such”
1. “the fact that a chemical product has both a cosmetic and a therapeutic
effect when used to treat the human or animal body does not render
the cosmetic treatment unpatentable.
c. ICI/Cleaning plaque v (opposition by blendax)
i. Claim 1: a method of cleaning plaque and or stains from human teeth
ii. the decision
1. the prevention of tooth decay is a disease, therefore a therapeutic
method (even if it had cosmetic benefits too)
2. “the invention as here claimed is not directed solely to a cosmetic
effect, but is also necessarily defining a treatment of the human body by
therapy as well”
3. The claim was unpatentable
D. Excluded methods #2: surgical methods
a. MEDI-PHYSICS/treatment by surgery G1/07 2010 EPOR 25 (EBA)
i. Claims involved the delivery of polarized XE by inhalation
1. However the description envisaged an injection of polarized Xe into the
hart for the purposes fo claim 17
ii. Held: it is not possible to give an “exact” and “comprehensive” definition of
‘treatment by surgery’
1. First instance bodies and boards of appeal are much better suited to
define the boundaries of the concept of “treatment by surgery” based
on the technical reality of the individual cases under consideration
iii. An injection of polarized Xe into the heart (although only a step of the claim)
represented a substantial physical intervention on the body which requires
professional medical expertise to be carried out and which entails a health risk
even when carried out with the required professiaonl care and expertise” the
patent in case was thus excluded
1. However, required medical expertise and potential health risks “may
not be the only criteria” relevant to whether a claim is a method of
‘treamtent by surgery’
2. The term ‘treatmnet by surgery” is not confined to surgical methods
purusing a therapeutic purpose- ie curative surgery
b. T1631/17 31/07/2020 (TBA) (available only in german)
i. Claim 1 related to a “method and material kit for the production fo tooth
replacement parts
ii. Court held that
1. Claim 1 did not contain any feature explicitly involving a method of
treatment by surgery
 2. However, if a surgical method of treatment is an essential feature (Ie a
step) of the invention (whether implicitly or explicitly), the invention is
excluded from being patentable under art. 53© EPC
3. Preparing the patients’ teeth is astep that can only be performed
directly on the patient. It conssitues a step of “treatment of the human
body by surgery” because it “involves extracting body tissue in an
invasive manner”
E. Excluded method #3: diagnostic methods
a. Diagnostic Methods G1/04 2006 EPOR 15 )EBA)
i. Whether a method is a diagnostic method does not depend on the participation
of a medical or veterinary practitioner. One must look at the invention, not the
user.
ii. Assessing whether a claim in an excluded diagnostic method is a multi-step test
(whereas therapeutic and surgical methods can “be establsiehd by a single
method step” the claim must include features relating to
1. Examination
2. Comparison of data with normal values
3. Recording significant deviation and
4. The deductive medicinal or veterinary decision phase.
iii. In regards to previous point
1. First three steps concern steps of a technical nature
a. All 3 steps must satisfy the criterion practicsed on the human or
animal body, implies any interaction with the human or animal
body
2. The last bit: as an intellectual exercise this phase is not regarded as an
invention within the meaning of art. 52(1) EPC (unless as a result of
developments in the field of diagnostic technology, a device cpabale of
reaching diagnostic conclusions can be used
iv. EBA reasons
1. Text of the provision supports a narrow interpretation
2. Too difficult to define medical and veterinary practitioners, yet legal
certainty is needed
3. Protection of pracircioners can be achieved though other means
4. Practitioners will not be hampered because the methods are getting
more and more complex and technically sophisticated in the field of
diagnostics
5. Inventors in the field of diagnostics should not be deprived of
comprehensive patent protection
b. MEDY-Physics again
i. Multi step diagnostic method which comprise or encompass a therapetuci or a
surgical step are excluded
ii. This gives full effect to the purpose of the different exclusions ie. freedom to use
the best available treatments to the benefit of their patietns without worry that
they might be infringing a patent
 1. Unlike art. 52(4) there is no reference to ‘as such’
2. Support from EPA decision in Diagnostic methods G1/04 2006 EPOR 15
(EBA)
F. Entitlement
a. S. 7(1) : “any person may make an application for a patent either alone or jointly with
another
i. S. 7(2): a patent may only be granted to
1. The invention
2. Listed persons (including employers) entitled to the hwole of the
property;
3. or their successors
ii. S 7(3): “in this act “inventor” in relation to an invention means the actual
deviser of the invention and “joint inventor” shall be construed accordingly.
iii. Presumption: s. 7(4): “except so far as the contrary is estbalsihed, a person who
makes an application for a patnet shall be taken to be the person who is entitled
under ss. (2) above to be granted a patent and two or more persons who make
such an application jointly shall be taken to be the persons so entitled’
b. effect of ownership
i. proprietor (owner) can assign, license, or mortgage the patent and can sue for
infringmenet ss. 30 and 61
ii. joint proprietors each have an equal, undivided share in the patent (unless
otherwise agreed) and a co-proprietor may carry out any of the exclusive acts
for his own benefit without the consent of the other coproprietors and without
having to compesante them: s. 36(2) [ie akin to joint tenants in land law)
iii. consent must be obtained, however to assign, mortgage or licence the patent or
to amend the patent specification. Failure to agree (ie. a deadlock) can be
resolved by the Comptroller of Patents: hughes v Paxman 2007
c. determining entitlement
i. before grant of a patent s. 8(1)
1. a) any person may refer to the comptroller the question whether he is
entitled to be granted (alone or with any other persons) a patent for
that invention or has or would have any right in or under any patent so
granted or any application for such a patent; or
a. ie when X tells Y about x”s inventive concept; but X does not
transfer right to secure grant to Y, but Y applies for the grant or
where X and Y produce the inventive concept together; but only
Y applies for the grant’
2. b) any of two or more co-proprietors of an application for a patent for
that invention may so refer the question whether any right in or under
the application should be transferred or grated to any other person’
ii. after grant of a patent s. 37(1)
1. “any person having or caliming a proprietary interest in or under the
patent may refer to the comptroller the question
a. A) who is or are the true proprietors of the patent
 b. Whether the patent should have been gratned to the person to
whom it was granted or
c. Whether any right in or under the patent should be transferred
or granted to any other persons’
i. Note: reference must be made before the end of 2
years after the date of the grant of the patent unless
proprietor knew at the time of grant or transfer that he
was not so entitled s. 37(5)
G. Who is the inventor
a. Inventor
i. S. 7(2)(a) states that a patent should be granted primarily (ie by default) to the
inventor or joint inventors
ii. S. 7(3) defines the inventor as: teha ctual devisor of the invention and joint
inventor is to be construed accordingly
iii. basic two step test:
1. identify the inventive concept
2. identify who came up with the inventive concept (laddie J, University of
Southampton’s applications [2005] RPC 11 [234]
b. Staeng’ spatents 1996 RPC 183 (patent office)
i. Invention concerned securing electric cable sheathing to the body portion of a
‘connector backshell adaptor’
1. Roberston (employee of S) named as inventor. Neely (employee of
Hllerman) applied to be named sole inventor
2. The two companies worked in close collaboration, when R causually
asked N if there was a better way of securing
3. N suggested the sue of a constant tension spring
4. Held that N contributed to the invention the idea of using a spring
coiled around the body of the adaptor but N had not discharged the
burden of proof to show he was the sole inventor because he had not
come up with that idea unprompted- joint inventors
c. Yeda v Rhone-Poulenc rorer 2007 UKHL 43; 2008 RPC 1
i. Per Lord Hoffman [21]
1. ‘the effect of s. 7(4) is that a person who seeks to be added as a joint
inventor bears the burden of proving that he contributed to the
inventive concept underlying the claimed invention…”
2. … and a person who seeks to be substituted as sole inventor bears the
additional burden of proving that the inventor named in the patent did
not contribute to the inventive concept”
d. University of southampton’s application 2006
i. The university filed a patent for a method for controlling pests by traping or
killing them by exposing the pest to a composition consisting of magnetic
particles
1. Mr. M had contacted prof H (of Southampton) after reading about H’s
invention for pest control which involved the use of electrostatic talcum
 powder and suggested the idea of using magnetic particles instead
(since they would not lose their stickiness over time) but M did not
know his idea would work
2. H tested M’s suggestion and with trial and error, the suggestion worked
3. University filed an application identifying H as the inventor
4. M brought a reference under s. 8 PA 77
ii. Held by the comptroller and in the patents ocurt-joint inventors
1. But court of appeal held that Mr M was sole inventor
2. The heart of the invention was the substation of magnetic particles for
electrostatic particles- that was provided by M
3. While M did not know whether his idea would work or, if it did, that it
would work because of adhesion to the legs of the insects (‘sticky
poison’ concept) but this didn’t matter. These matters would be worked
out by routine trial and experimentation and by adding what “any
ordinary skilled worker in the field of insect killing would have known” H
simply added common general knowledge
e. Thaler v The comptroller general of patents designs and trade marks 2021
i. An ‘inventor’ must be a natural person
1. Calin Birss LJ:
a. “history is relevant” to the question of whether AI can be an
‘inventor’
i. The term the actual deviser of the invention is a term of
art carried over from the patnets act 1949
ii. The 1949 act “makes clear” that the actual deviser of
the invention must be a person
iii. “if dr. thaler had said he was the inventor in this case it
is plain that would have been accepted at face value by
the comproller and the patents would have gone to
grant”
2. CF, the Australian DABUS case
ii. Richard Arnold LJ:
1. Argument 1:
a. A “systematic interpretation” of the act shows that only humans
can be inventors
i. a dictionary definition of “Deviser” is a “person who
devises, a contriver, a planner an inventor”
ii. the other proviions of s. 7 refer to persons
iii. s. 2(4), 3 8, and 12 suppor this conclusion
2. argument 2: s. 13 confers to a “species of moral right (more
specifically… a “paternity” right that is to say, a right to be identified as
the creator of something) only persons can have rights”
H. employee inventors
a. EPC 2000 art. 60(1)
 i. The right to a EU patent shall belong to the inventor o rhis successor in title. If
the inventor is an employee, the right toa EU patent shall be determined in
accordance with the law of the state in which the employee is mainly employed;
if the state in which the employee is mainly employed cannot be determined,
the law to eb applied shall be that of the state in which the employer has the
place of business to which the employee is attached.
ii. Ie employee inventors are always regulated by national laws.
b. S. 7(2) PA 77
i. A patent for an invention may be granted
1. Primarily to the inventor or joint inventors
2. B) in preference to the foregoing, to any person or perosns who,
a. By virtue of enactment or rule of law
b. Or any foreign law or treaty or international convention
c. Or by virtue of an enforceable term of any agreement entered
into with the inventor before the making of the invention, was
or were at the time of the making of the invention entitled to
the whole of the property in it (other than equitable interests)
in the UK
c. Type 1: employed to invent
i. S. 39(1) PA 77
1. “notwithstanding anything in any rule of law, an invention made by an
employee shall, as between him and his employer be taken to belong to
his employer for the purposes of this act and all other purposes if
a. A) it was made in the course of the normal duties of the
employee or in the course of duties falling outside his normal
duties, but specifically assigned to him, and the cirucmstnace sin
etiehr case where such that an invention might reasonably be
expected ot result from the carrying out of his duties”
ii. Harris’s patent 1985
1. Slide valve for controlling flow of material (esp coal dust) thought to be
an improment on known valves in that it reduced problems of jamming
the valve plate and erosion of seals
a. Mr Harris was employed as manager of the valve department
and made the intervention whilst employed. Emploiyer, reiss
old values and provided an after sale serive.
b. Reiss argued that patent should have been granted to them and
not h.
2. Held that the question is not would any invention have been made. One
must ask whether an invention of the type that was made would have
been expected to result from carrying out normal or specifically
assigned duties.
a. H’s normal duties did not include providing solutions to
problems relating to the design of the vlaves because the
company itself never undertook this activity.
 iii. Gerater galsgow health boards’ application 1996
1. Employment: Dr M employed by board as a registar in the department
of ophthalmology
2. Invention: optical spcaing device for use with an indirect opthalmoscope
3. In assessing ‘normal duties’ important ot look at the duties actually
carried out by the employee and not simply what was stated in the
employment contract- clinical treatment; teaching, research and
invention (but never actually completed research and innovation)
iv. Life v pinkava 2007
1. Invention: system fo rtradingin financial instruments on an electronic
exchange
2. Court reiterated that it must look at what the employee actually does
alongside his contract of employment
3. In this case, the normal duties exceeded those stipulated in the contract
[they had evolved over time] meaning he had been employed to
innovate.
d. Type 2 special obligation employees
i. S. 39(1)(b) “the invention was made in the course of the duties of the employee
and, at the time of making the invention, because of the nature of his duties and
the particular responsibilities arising from the nature of his duties he had a
special obligation to further the interests of the employer’s undertaking”
1. Note: no requirement of ‘normal duties’ or ‘specifically assigned duties’
only two requirements
a. Made in the course of employment
b. Special obligation
2. Ie senior managerial position, vp, etc.
ii. Harris’s patent_ Mr H had no special obligation- he could not manage staff, ie
hire, fire or agree to their annual leave, did not attend board meetings, duties
confined to sale and trouble shooting.
1. Mr. Harris’s employer had no entitlement ot he patent grant under s.
38(1)(b)
iii. Staeng’s patent- Mr N had a special obligation, was treated as a senior
executive, position of high status and responsibility, profit bonus scheme, was
supported to develop new products, involved in high level meetins and
management of staff
1. Mr. Neely’s employer would have been entitled to the patnet grant
under s. 38(1)(b)
I. Employee compensation
a. Available in two circumstances under s. 40 pa 77
i. Where the granted patent is owned by the employer by virtue of s. 39 and the
invention or patent (or combination of both) if of outstanding benefit to the
employer
ii. Where an employee has made an invention and owns a patent for it, but has
since assigned his rights in the invention or granted an exclusive licence to his
 employer and the benefit derived by the employee from this transaction is
inadequate in relation to the benefit derived by the employer from the patent.
b. Shanks v unilever 2019
i. S worked for U, paid a salary of 18k, would be 57k in todays money
1. S invented a device for precise measurement of fluids useful in home
diagnostic kits for diabetes.
2. Ownership vested in U by virtue of s. 39
3. When invention was licensed royalties of 23 million poudns were
received over lifetime of patent. Should S receive compensaitno or is U
too big to oay.
c. Outstanding benefit-none in shanks
i. “in Kelly, Floyd J (drawing on Alduous J in Memco-Med Ltd’s patent 1992 stated
in para 60iv) “outstanding” means “something special” or “out of the ordinary”
and more than “substantial, significant or good” the benefit must be something
more than would normally expect to arise from the duties for which the
employee is paid. Para 198
ii. “the benefit provided by the shanks patents was a substantial and significant
one in money terms…. But U makes profits at an order of magnitude greater on
other inventions, albeit primarily by manufacture and at a much lower rate of
return than was provided by Shank’s patents…. Taking account of the size and
nature of U, the benefit provided by the shanks patents falls short of being
outstanding” para 222-223
d. Outstanding benefit
i. Memco Med Ltd patent 1992
1. Patent relating to improved unit for preventing the odors from closing
on a person getting into or out of a lift
2. Sales from 1982-1989 totalled just over 4 million out of total sales of
11.5 million about 35%
3. Held that
a. ‘outstanding’ denotes something special and requires the
benefit to be more than substantial or good… courts will
recgnise outstanding benefit when it occurs.
b. Onus of proof lies upon the person seeking to invoke the
provision, ie the employee
c. Sales of the improved unti were of great importance but were
all made to one customer and the evidence suggested that the
business relationship between the employer and that customer
would have been the same whether or not a patent had been
granted.
ii. Kelly and Chiu v GE healthcare 2009
1. Co inventors of a radioactive imaging magnet ‘myoview’
a. sales exceeded 1.3 billion pounds and accounted for large
portion of employer’s profits
 2. held that the patents were of outstanding benefit (having regard to the
size and nature of employer’s undertaking)
a. “the benefits went far beyond anything which one could
noramlyl expect arise form the sort of work the employees were
doing” 148
i. Kept them in business: had the patents not existed,
Amersham (subsequently taken over by GE healthcare)
would have faced a financial crisis, whereas with the
patents, its business was transformed
ii. Major factor in achieving corporate deals.
iii. Shanks v U 2014- Arnold J
1. No outstanding benefit-permission to appeal granted
iv. Shanks v U 2017 CA
1. Dismissed the appeal
2. “outstanding” was an ordinary word meant to identify the exception
nature of the benefit that should exist for an award of compensation to
be made; also a relative concept to be measured against all relevant
factors
3. The relevant undertaking was the unliver; the multifactorial test has
been applied appropriates
a. Permission to appeal granted.
v. Shanks v unilever 2019
1. What are the principles governing the assessment of outstanding
benefit
a. Who is the employer?
i. Important to get the right “starting point”
ii. The term “emplpoyer” to mean the inventor’s actual
employer
1. Ie CRL (the subsidiary)
b. What is the relevant beefnit
i. The benefit of the patent means the benefit in the
hands of the employer, after deduction of any costs to
the emploiyer of securing the benefit
1. S. 40(1) is concerned with assessment of
benefit. This exercise is quite different from an
assessment of profits.
2. Employee must account for any tax due on tha
share and the employer must account for any
tax due on the balance
c. Is the benefit outstanding?
i. Outstanding= exceptional/ stands out
ii. It sboth a relative and qualitative term
iii. Memco med patent and Kelly case
 1. “all helpful to a point as illustrations of
circumstances which were found to fall each
side of the line. But at the end of the day, they
provide no substitute for the statutory test
which requires the benefit to be “outstanding”
d. What is the employer’s undertaking
i. The correct approach is to look at the commercial
reality of the situation… from the perspective of the
inventor’s employer
ii. Relevant question
1. How is the patent exploted: manufacturing or
licensing?
2. Where a group company operates a research
facility for the benefit of the whole group and
the work results in patetns which are assigned
to other group member sfor their benefit, the
focus of the inquiry into whether any one of
those patents is of outstanding benefit to the
company must be the extent of the benefit of
that patent to the group
3. How does the specific benefit compare with the
benefits derived by the group from other
patents for inventions arising from the research
carried out y the inventor’s employer
e. The relevance of size and nature of the employer’s undertaking
i. There is no single answer
ii. In some cases, because of size of business, the benefit
may not be outstanding. In others it allows the
company to make major benefits.
iii. Tribunal should be very cautious before accepting a
submission that a patent has not been of outstnaidn
gbeenfot to an employer simply because it has had no
significant impact on its overall profitability or the value
of its sales.
2. “it is true that unilever patented and maintained a patent portfolio
which protected it… but the rewards it enjoyed were substantial and
significant, were generated at no significant risk, refleced a very high
rate of return, and stood out in comparison with the benefit U derived
from other patents… they could not be attributed to the devloepment
or application of U’s wider business assets or infrastructure… In short
the benefit U enjoyed from the Shanks patetns was outstanding within
the meaning of s. 40 of 1977 act”
e. Assessing a fair share
i. Shanks v unilever 2019
 1. Held: fairs hare was 5%. Benefit considered, not profit. The 24m
received in licencse fees may require an uplift to account for the impact
of time on the value of money and or inflation (comptroller cannot
charge interest) shanks award 2 million.
ii. Kelly and Chiu v Ge Healthcare 2009
1. Held that the fair share might lie somewhere in the broad range from nil
to as much as 33%, considered that 3% of the value of the benefit was a
just and fair award to the empliyees calimanst, this translated to 1
million and 500k.
f. Contractual override
i. S. 42(2)
1. Any term in a contract to which this s. applies (ie any contract relating
to inventions made by an employee) which diminishes the employee’s
rights in inventions of any description made by him after the appointed
day and the date of the contract, or in or under patents for those
inventions or applications for such patents, shall be unenforceable
against him to the extent that it diminishes his rights in an invention of
that description so made, or in or under a patent for such an invention
or an aplpicatino for any such patent”

Patents 5: sufficiency: plausibility and claim construction

Claim construction

A. Reminder: what is a claim?

a. The claims are the heart of the patent
b. They “define the matter for which protection is sough”
i. EPC art 84; also PA77 s. 14(5)(a)
c. They also determine the “extent of the protection” conferred by a patent
i. EPC art 69 also PA 77 s. 125(1)
d. Claims must (epc art. 84 and s. 14(5)
i. Be clear and concise
ii. Be supported by the description and
iii. Relate to one invention or a group of inventions which are so linked as to form a
single inventive concept.
B. The protocol
a. S. 125(3): the protocol on the interpretation of art 69 of the EPC shall apply
b. The protocol instructs courts to
i. Avoid a strict, literal wording of the claim, only using the description and
drawings to resolve an ambiguity in the claims
ii. Avoid reading the claims as a guideline, and constructing the actual scope of
protection by asking what the skilled person would have considered the
patentee to have contemplated in light of the description and drawings
 iii. But courts must take “due account” of any element which is equivalent to an
element specified in the claims
c. In interpreting the claims, courts should achieve a position between these two policy
objectives:
i. A fair protection for the patentee and
ii. A reasonable degree of certainty for third parties.
C. Actavis v Eli Lilly 2017 UKSC 48
a. Permetrexed is a cancer treatmenet but it can have “seriously damaging, sometimes
even fatal side effects”
b. Eli lilly discovered that the side effects could be largely avoided if the drug was
administered in combination with B12
i. Claim: “use of P disodium… in combination with B12”
c. SC held that the inventive concept was use of “permetrexed in combination with
vitamin b12”
i. The particular salt use (ie disodium) did not matter because the salt breaks up
the solution
d. Should the genreci drug manufacturer be free to manufacture its drug?
i. Held that there is “no obvious leeway” in disodium to be read as including
dipotassium
ii. Skilled person would be agroup consisting of an oncologist and a chemist
iii. EPC art 69: “the extent of the protection conferred by a EP shall be determined
by the terms of the claims. Nevertheless, the description and drawing shall be
used to interpret the claims”
iv. Lord hoffman in Kirin-Amgen v Hoechst Marion 2004 UKHL 46 held that art. 69
“unequivocally” limited patent protection to the wording of their claim and
“firmly shuts the door on any doctrine which extends protection outside the
claims”
v. However some interpretive leeway lies in the flexibility of the language use
1. The claims should be given a purposive interpretation (as apposed to an
acontextual reading)
2. Protocol art 2 requires “due account” to be taken of variant elements
that are equivalent to element specified in claims.
3. Lord Hoffman held that the person skilled in the art would understand
the possibility of equivalents as “an important part of the background of
facts”
e. Claim construction involves
i. Interpreting the words of the claims and
ii. Consideration of the extent or scope of protecitno
f. Infringement is best approached in two steps
i. Does the variant infringe any of the claims as a matter of normal interpretation
and if not
ii. Does the variant none the less infringe because it varies from the invention in a
way or ways which is or are immaterial?
g. Step 1: construing the claims
 i. Apply the “normal principles” of interpreting documents
ii. The normal principles require a purposive interpretation of the claim
1. What would the skilled person understand the claim to mean
a. Mylan v Yeda 2017
b. Fisher & Paykel v ResMed 2017
c. L’Oreal v RN ventures 2018
d. Icescape v Ice World International 2018
D. Catnic components v hill & smith 1982

a.
b. The question is whether the skilled person would understand that strict compliance
with a particular descriptive word or phrase appearing in a claim (vertical) was intended
by the patentee to be an essential requirement of the invention so that any variant
would fall outside the claimed monopoly even though it could have no material effect
upon the way the invention worked.
c. ‘Vertical’ on this instances, could include 6 degrees off from vertical as the difference
only resulted in a .6% decrease in load bearing characteristics of the lintel
d. D’s product fell within the scope of the patentee’s claim.
E. Improve v Remington 1990 (patents court)
a. Claim: an electrically poweed depilatory device comprising… a helical spring

b.
c. The rubber rod had no material effect on the way the invention worked and
i. It would have been obvious that the attributes of the helical spring- bendy and
slitty- if featured in a rubber rod would work the same way.
ii. However, the skilled reader would not have understood the language of “rubber
rod” to be an approximation of “helical spring”. The rubber rod is a different
thing which can (in limited circumstances) work in the same way.
F. Kirin Amgen v Hoechst Marion 2004
 a. Claim: DNA sequence for use in securing expression in a procaryotic or eucaryotic host
cell of polypeptide product to increase bone marrow and red blood cells.

i.
b. The endogenous method had no material effect on the way the invention worked. IN
each case, one has an “identical string of DNA”
c. However, TKT had not infringed any of the claims and Amgen’s appeal would be
dismissed.
i. A claim would, on its proper construction, cover products or processes which
involved the use of technology unknown at the time the claim was drafted.
ii. However, the question was whether the person skilled in the art would have
understood the description in a way which was sufficiently general to include
the new technology.
G. Actavis v Eli lilly cont.
a. Lord hoffman’s approach is “wrong in principle” to stop at stage 1
b. Step 2: extent of protection, ie, equivalence of immaterial variants
i. The courts should ask itself three questions when determining the full scope of
protection offered by a patent.
c. Questions
i. Notwithstanding that the variant is not within the literal meaning of the
relevant claims, does the variant achieve substantially the same result in
substantially the same way as the invention, ie the inventive concept revealed
by the patent
1. Yes, in this case, the products worked in the same way as the invention,
they all ultimately involved a medicament containing the P and vit B12
ii. Would it be obvious to the skilled person, reading the patent at the priority
date, but knowing that the variant achieves substantially the same result as the
invention, that it does so in substantially the same way as the invention
1. Yes. The notional addressee of the patent would appreciate (and would
have appreciated at the priority date) that each of the Actavis products
would work in precisely the same way as P disodium when included in a
medicament with vit B12
iii. Would the skilled person have concluded that the patentee nonetheless
intended that strict compliance with the literal meaning of the relevant claims
of the patent was an essential requirement of the invention
1. No, the addressee of the patent would understand that the reason why
the claims were limited to disodium salt was because that was the only
P sal on which experiments described in specification had been carried
 out. However, it does not follow that the patentee did not intend any
other permetrexed salts to infringe: the suggestion confuses the
disclosure of the specification of a patent with the scope of protection
afforded by its claims
d. In regards to the last question, the court noted
i. Although the language of the claim is important his should be considered in the
context of the specification and the knowledge and enterprise of the skilled
person.
ii. The fact that the language does not cover the variant is not enough to justify
holding that the answer to the third question is yes, the patentee intended strict
compliance with the literal meaning of the claim. One is asking this question
because the variant falls outside the wording of the claim
iii. It is appropriate to ask whether the component is an essential part of the
inventive concept or invention- this is not the same as asking whether it is an
essential part of the product or process incorporating the invention.
iv. When considering a variant which would have been obvious at the date of
infringement rather than the priority date it is necessary to imbue the person
skilled in the art with more information than he might have had at the priority
date.
H. Icescape v ice world 2018
a. Claim concerned a cooling unit for a mobile ce rink.
i. Something about cooling liquids
ii. 70: “the natural reading of these two integers in light of the teaching of the
specification and the common general knowledge is that the two manifolds are
connected together in series so that the fluid does not leak as it flows between
them from one to the other”
b. Lord kitchin para 59
i. “it is in my view, clear that the new approach is markedly different from that
which the courts in this country have adopted since Catnic
ii. Lord Hoffman had effectively conflated the two issues into one single issue of
construction
iii. Lord Neuberger had considerable difficulties with the notion that there was a
single conflated, or compound, issue and that, even if this notion were correct,
that the issue was one of interpretation. IN his view this was wrong In principle
and could lead to error”
iv. Questions from above in eli lilly
1. Yes, the variant does satisfy the aims of the patent, providing a cooling
member which can be installed rapidly and is reliable in operation
2. Yes, The icescape system achieves substantially the same result as the
invention and does so in precisely the same way
3. No. The inventive core of the patent has nothing to do with the coupling
of the elements together or whether the fluid flows through them in
series or in parallel.

Should Multiple differences be assessed separately, or taken together?

 A. Regen lab v estar 2019
a. HHJ Hacon para 211
i. Multiple differences between the alleged infringement and the claim on a
normal construction be assessed as a single variant product or process with all
differences taken together
ii. “the question is whether the accused product or process is a variant falling
within the scope of the claim taking all equivalents into account. Of course, it
will often be convenient to consider equivalents one by one, but there must be
a single overall answer in relation to each accused product or process”
B. Technetix v Teleste 2019
a. HHJ Hacon para 109
i. “to establish infringement as explained in Actavis a patentee must show that
the accused product or process either
1. Has all the integers of the claim on a normal construction or
alternatively
2. Taking all the equivalent features of the accused product or process in
sum, that it satisfies the three revised improver questions”

Does the doctrine of equivalents apply to numerical limitaitons

A. Regen Lab v Estar 2019 cont.

a. The doctrine of equivalents does apply numeral limtiations
b. Per HHJ Hacon para 217
i. Holding otherwise “would put numerical claims into a special class: the doctrine
of equivalence does not apply to them”

Is there a defence to infringement if the equivalent lacks novelty or inventive step over the common
general knowledge.

A. Techetix v Teleste 2019

a. What if the equivalent itself had been anticipated or was obvious
i. Infringement?
ii. Defence?
b. HHJ Hacon 94
i. “one way of reconciling… the doctrine of euqivalents would be to say that if an
accused product or process is an equivalent and for that reason is normally
within the scope of the claim, but the equivalent would have lacked novelty or
inventive step over the prior art at the priority date, then it is deemed to fall
outside the scope of the claim, thus providing a defence to infringement”
c. German law provides for such a defence, first stated in the judgement of the federal
supreme court in Formstein GRUR 1986
i. There is a defence along the same lines under dutch law: Core distribution Inc v
Lidl Nederland GmBG
ii. In the US there exists the similar principle of ‘ensarement’: the range of
equivalents cannot be so extended as to ensnare the prior art
d. Hacon HHJ para 99-100
 i. “one route the SC or the court of appeal may take in due course, regarding the
interplay between the scope of a claim on the one hand and novelty and
inventive step on the other, is the introduction into English law of a formstein
defence”
ii. “I cannot rule out such a possibility. I will therefore consider.. they hypothesis
that such a defence exists”

Interpreting Swizz-Type claims

A. Warner-Lambert v generics 2018

a. Claim: use of P for the prep of a pharmaceutical composition for treating neuropathic
pain
b. Held that the patent was invalid for lack of sufficiency
i. Therefore obiter comments on infringement
B. Case cont: Infringement under s. 60(1)©
a. Uk SC identified four possible tests
i. Foreseeability tests- is it foreseeable that more than a deminimis amount of
generic drug would be used for the treatment of neuropathic pain (w-L)
ii. Qualified foreseeability test- above test subject to two qualifications
1. Intentional v accidental downstream use
2. And all reasonable steps have been taken to prevent use of generic drug
for the treatment of neuropathic pain
3. (CA, W-L alternative.
iii. Intention-must show subjective intention to target drug for the use in treating
pain (actavis, Arnold J)
1. Supported by Briggs and Hodge
iv. Outward presentation test- look at the physical characteristics of the product as
it emerges from the relevant process, including its formulation dosage,
packaging, labelling, patient information leaflet
1. Supported by Sumption, Reed, and seemingly Mance.
C. Use of X for the preparation of Y for treatment of Z
a. Lord Mance para 201: the second word “for” must under such a claim relate to one of
two different subjects
i. Use of X… for treamtn of Z
1. If one reads the claim this way, it is natural to enquire into the
subjective intention of the manufacturer in preparing the composition
ii. A medicament… for treatment of Z
1. If one reads the claim this way, it is natural to focus on objective
appearances or characteristics, and in particular on the way in which
composition is prepared, presented and marketed.
b. Lord Sumption (with lord reed agreeing) para 83-84
i. In a purpose limited process claim, the badge of purpose is the physical
characteristics of the product as it emerges from the relevant process, including
its formulation and dosage, packaging and labelling and the patient information
leaflet.
 ii. It provides an objective test, which is not dependent on proof of the internal
cogitations of the manufacturer
iii. The EPO has already recongised that in a purpose limited claim, the designated
purpose is an inherent characteristic of the invention
iv. The physical presentation of the product is generally part of the process of
manufacture. Subsequent activities of the manufacturer in marketing the
product are not
v. It provides legal certainty, in particular for those downstream of the
manufacturer who deal in the product
vi. It strikes a fair balance between the public interest in rewarding the invention
by allowing the patentee to exploit his monopoly and the public interest in the
free use of the invention for therapeutic uses which do not have, or no longer
have, patent protection
vii. I shall call this, for want of a better phrase, the “outward presentation” test
c. Lord Briggs paras 162-173
i. The purpose limitation in any swiss form claim necessarily involves some kind of
mental elemtn
ii. A subjective intent test accommodates all forensic means whereby a purpose of
the generic manufacturer to serve (and profit from) the market for neuropathic
pain could be proved, including but not limited to the packaging of the product
iii. Anything from which the court could properly find that the M had such a
purpose could be relied upon, including targeted disclosure, during litigation, of
documentary records of the manufacturer’s decision making processes.
iv. This solution is a compromise that falls short of providing complete protection
to patentees from the invasion of their monopoly.
1. Departure from German “only packaging will do” solution by permitting
any means of proof of the M’s purpose (but well short of mere
foreseeability) will provide less than perfect legal certainty for those
who deal in and dispense the generic versions of P. Nonetheless as I
have said, the packaging, labelling and patient instruction leaflets iwill in
most cases be the best evidence of the manufacturer’s intention ;

Sufficiency and Support

A. S&S
a. Within 6 months of publication of a patent application, the applicant must request a
substantive examination (PA 77 s. 18(1); EPC art 94)
i. A positive requirement
b. The patent office will check PA 77 s. 18(2); EPC art 94(1)
i. Whether the invention is new; involves an inventive step; is capable of industrial
application; and is not excluded subject matter (PA 77, s. 1(1); EPC art. 52)
ii. But also…
c. Whether the specification (as a whole) discloses the invention in a manner which is clear
enough and complete enough for the invention to be performed by a person skilled in
the art (Pa 77 s. 14(3); EPC, art 83)
 i. Ie sufficient disclosure of the invention “this is plainly a requirement of an
“enabling disclosure” Lord Hoffman, Biogen and
d. Whether the claims define the scope of protection; are clear and concise; are supported
by the description; and relate to single inventive concept (PA 77, s.14(5), EPC art. 84
i. “a description would not ‘support’ the claims… unless it contained sufficient
material to enable the specficiation to constitue the enabling disclosure”
e. With regard to revocation after grant, the court or comptroller can revoke after grant
i. Where the invention is not new; does not involve inventive step; incapable of
industrial application or is within excluded subject matter (PA 77 s. 72(1)(a);
EPC, art 138(1) (a)
ii. Whether the specification does not disclose the invention in a manner which is
clear enough and complete enough for the invention to be performed by a
person skilled in the art” ie insufficient disclosure
f. But no grounds to revoke where the claims are unsupported by the description.
B. Biogen v medeva plc 1996
a. Lord Hoffman 60: Section 72(1) states exhaustively the grounds upon which a patent
may be revoked. These gorunds do not, as such included non compliance with s. 14(5)
(ie claims lack support)
b. But the substantive effect of s. 14(5)©, namely the description should, together with the
rest of the specification constitute an enabling disclosure (the support requirement) is
given effect by s. 72(1)© (ie insufficiency of revocation grounds)
c. “there is accordingly no gap or illogicality in the scheme of the act”

The different types of insufficiency

A. Sandvik v Kennmetal 2011

a. The courts recognize three types of insufficiency
i. Classical insufficiency
1. The skilled person is unable to carry out the claimed invention in light of
the instructions in the description in the specification and the CGK
ii. Ambiguity and or uncertainty
1. The claim is ambiguous and or uncertain so the skilled person does not
know what falls within the claim
iii. Excessive claim breadth
1. That the claim is broader than the technical contribution of the patent.
2. Often referred to as biogen insufficiency
B. Classical insufficiency
a. Mentor v Hollister 1993 ‘the freedom catheter’
i. Patent specifications are written for the skilled person, who can
1. Apply common general knowledge
2. Engage in routine tests and
3. Correct obvious errors in the specification
ii. Consequently, disclosure of an invention does not have to be complete in every
detail, so that anyone, whether skilled or not, can preform it
 iii. However, the addresses must be able to perform the invention without any
further inventive step on their part.
b. The “heart of the test”
i. ‘can the skilled person readily perform the invention over the whole area
claimed without undue burden and without needing inventive skill
1. Novartis v Johnson & Johnson Medical 2010: 74 Jacob LJ
c. The standard of what has to be produced can best be described in general terms as a
“workable prototype”; Mentor v Hollister 1993
i. The disclosure “does not have to be of sufficiently high quality to be ready to be
sold”
1. Varian Medical Systems International v Elekta 2017: 166
C. Ambiguity and or uncertainty
a. Kirin Amgen 2004
i. Claim 19 of KA’s patent covered a specific type of EPO product which had a
”higher molecular weight.. .from EPO isolated form urinary sources”
ii. The specification did not however, identify what value the skilled person used
“as the comparator” so which comparator should the skilled person use when
interpreting the claim
1. Use the first comparator which came to hand
2. Working through several specimens (All of which are extremely hard to
come by) to try and figure out the right comparator)
iii. Claim 19 held insufficient (and therefore invalid)
b. Ana Kasei v Neo Chemicals 2019
i. The form of insufficiency exemplified by Kirin Amgen is sometimes inaccuractely
called “ambiguity”. Ambiguity usually refers to a situanio where words are
capable of more than one meaning…
ii. It was recognized, however, that the mere fact that the claim was capable of
two different constructions did not render the claim invalid under this ground if
the normal process of construction through the eyes of the skilled person could
resolve the issue
iii. The vagueness or uncertainty of the claim had to go beyond this.
D. Excessive claim breadth
a. Where a patent application only contains sufficient disclosure to enable part of the
claims to be worked
i. Biogen v Medeva 1997
1. Product claim: an artificially constructed molecule of DNA carrying a
genetic code which, when introduced into a suitable host cell, would
cause that cell to make antigens of the virus Hep B
a. Note: this is not a simple product claim. Biogen is claiming “a
molecule identified party by the way in which it has been
made… and partly by what it does”- Generics v Lundbeck 2009:
Lord Neuberger
2. Disclosure: the specification only provided one particular method of
creating a particular recombinant DNA molecule.
 3. Lord hoffman
a. The patent was invalid
b. The claims did not disclose “a principle capable of general
application”
c. The specification (which was of one particular method of
creating a particular recombinant DNA molecule) was not clear
and complete enough to a skilled person to work the broad
monopoly that was claimed (ie a claim over any recombinant
DNA molecule which expressed the genes of any HBV antigen in
any host cell or any method of creating such a molecule.
d. The metaphor used by one witness was: “before the genome
had been sequnces everyone was working in the dark. Professor
murray invented a way of working with the genome in the dark.
But he did not switch on the light and once the light was on his
method was no longer needed”
ii. Genreics v Lundbeck 2009
1. Lord Neuberger
a. Lundbeck had previously held a patent for an organic compound
Citalopram which operates as an anti depressant. The patent
later expired.
b. Citalopram is a “racemate” compounding, meaning that it is a
combination of two types of molecules, one + and the other -. It
was not known during the first patent whether it was the + or –
molecules that were responsible for the anti depressant
qualities.
c. Lundbeck later devised a novel and inventive means of
separating the + and – molecules and discovered that it was the
+ molecule that had the desired effect. They then applied for
and obtained a European patent in the UK for the + molecule,
known as escitalopram.
d. A group of generic pharmaceutical companies argued that the
patent monopolized all ways of arriving at + citalopram and fail
Biogen.
e. Held that the + citalopram product was valid
i. The biogen claim was as much as a process claim as a
product claim
ii. It claimed all ways of producing the antigens (a very
large number of possible embodiments) but only
disclosed one way in which the DNA fragments could
produce HBV antigens.
iii. The claim therefore including ways of making the
product which “owed nothing to the teaching of the
patent or any principle which it disclosed”
 iv. Lundbeck patnet was a product claim, which gives a
great scope of protection.
iii. Regeneron Pharma v Kymab 2020
1. Something about rats
2. Lord briggs 55:
a. The requirement of sufficiency imposed by art 83 of the EPC
exists to ensure that the extent of the monopoly conferred by
the patent corresponds with the extent of the contribution
which it makes to the art. Patentees are free to choose how
widely to frame the range of products for which they claim
protection. But they need to ensure that they make no broader
claim than is enabled by their disclosure
b. In the case of a product claim, the contribution to the art is the
ability of the skilled person to make the product itself rather
than (if different) the invention
i. the invention in this case may have been the reverse
chimeric locus method but this is different to the mice
as products.
c. A patentee does not have to demonstrate in the diclsoure that
every embodiment within the scope of the claim has been tried,
tested and proved to have been enabled to be made
d. The disclosure required of the patentee is such as will, coupled
with the common general knowledge existing as at the priority
date, be sufficient to enable the skilled person to make
substantially all the types or embodiments of products within
the scope of the claim. That is what, in the context of a product
claim, enablement means.
e. A claim which seeks to protect products which cannot be made
by the skilled person using the disclosure in the patent will,
subject to de minimis or wholly irrelevant exceptions, be bound
to exceed the contribution to the art made by the patent,
measured as it must be at the priority date
f. Patentees may rely, if they can, upon a principle of general
application if it would appear reasonably likely to enable the
whole range of products within the scope of the claim to be
made
g. But they take the risk, if challenged, that the supposed general
principle will be proved at trial not in fact to enable a significant,
relevant, part of the claimed range to be made, as at the priority
date.
h. Enablement across the scope of a product claim is not
established merely by showing that all the products within the
relevant range will, if and when they can be made, deliver the
same general benefit deliver the same general benefit intended
 to be generated by the invention, regardless how valuable and
ground breaking that invention may prove to be
i. The claim is insufficient: the invention claimed products (mice)
with a range of variable DNA replacement (“all or any”) but
enabled the production of only a part of the range.
3. Lady black (dissenting)
a. It is when it comes to characterizing this claim, determining
what its scope is, and deciding whether it is enabled across that
full scope that the argument arises.
b. Agreed with the CA, the reverse chimeric locus method (not the
mice as products) was the technical contribution .
4. Lord Hoffman: ‘Of mice and Law Lord’
a. “it seems to me… that the SC was barking up the wrong tree.
They were concerned with a different kind of invention. IN
order to decide whether as art 83 requires, the specification has
disclosed “the invention” in a manner sufficiently clear and
complete for it to be carried out by a person skilled in the art,
you first have to decide what the invention is. The “invention” is
the technological advance that you have made and for which
you claim a monopoly: a new product or a new process.”
b. “the invention was to produce mice which were not
immunologically sick but still had "all or some” of their variable
regions replaced. The invention was indifferent to how much of
the variable regions was replaced and it said little or nothing
about how you replaced the”

Plausibility

A. Warner Lambert v Generics 2018

a. Claim: use of pregabalin for preparation of a pharmaceutical composition for treagin
neuropathic pain:
i. If s. 14(3) is read literally (the specification diclsoes the invention clear enough
and complete enough for the invention to be performed by a skilled person) all
that needs to be disclosed is the new purpose which is enough to enable it to be
administered to a patient suffering from the relevant condition
ii. The skilled person does not need to know how or why the invention works in
order to replicate it
iii. The reulst would be that the knowledge which made the identification of the
new purpose inventive need not be disclosed at all- ie fail the patent bargain.
Patents could be granted on a “wholly speculative basis”
b. The patentee must disclose some reason for regarding their assertion (that pregabalin
can treat neuropathic pain) is plausible
i. Lord Sumption (with whom lord reed agrees)
1. Patentees have a positive requirement to show their inventions are
plausible
 2. The specification must show that something was worth trying for a
reason, ie not just because there was an abstract possibility that it
would work but because reasonable scientific grounds were disclosed
for expecting that it might work. This can be demonstrated by
“experimental data” or “a prior reasoning” (ie a coherent theory or
unifying principle)
3. The disclosure of those grounds marks the difference between a
speculation and a contribution to the art.
ii. Lord Hodge and Lord Mance (dissenting)
1. The positive requirement “imposes too high a threshold and imposes a
burden on a patentee which the case law of the Board of Appeal of the
EPO does not justify”