Case note 27 August 09: L’Oréal v eBay case

L’Oréal v eBay case

Trade mark owners often feel, with some justification, that eBay doesn’t do enough to stop the sale of infringing goods. L’Oréal certainly thought so, and hired investigators to make some test purchases. Of 287 purchases, only 84 were legitimate products intended for sale in the EEA, although the claimant stated that it had not deliberately targeted auctions likely to carry fakes or grey imports. 14 products were counterfeit, 49 never intended for sale, and 139 placed on the market outside the EEA and not intended for import.

eBay operates a programme known as VeRO (which stands for Verified Rights Owner), but L’Oréal refused to take part in that and sued eBay instead in the High Court, along with seven sellers of infringing products. (They have started over 100 law suits in Europe against eBay.) The claim said that eBay should be jointly liable with the sellers.

Mr Justice Arnold decided (in a 114-page judgment handed down in May 2009) that, although the sellers could be liable for the sale of infringing products, eBay was not liable. It was under “no legal duty or obligation to prevent infringement of third parties’ registered trade marks”, and “the fact that it would be possible for [eBay] to do more does not necessarily mean that they are legally obliged to do more”. It could pre-filter listings, use better filters on more aspects of the listing, demand disclosure of sellers’ identity, restrict volumes of high-risk goods, implement new anti-infringement policies, take better account of negative feedback, and take tougher action on infringers. But none of that meant that they were legally responsible for the fakes and grey imports.

eBay relied on the existence of VeRO and the contribution it makes to policing trade mark infringement, but L’Oréal said it is not acceptable because is places the onus of preventing infringement on the trade mark owner exclusively. It is also ineffective when it comes to punishing sellers.

The case raised a number of points of EC law, apart from the question of liability which is a purely domestic one. The judge followed Amstrad Consumer Electronics plc v The British Phonographic Industry Ltd [1986] FSR 159 (CA) and CBS Songs Ltd v Amstrad Consumer Electronics plc [1988] AC 1013 (HL) which are the leading authorities on joint liability for infringement (though in those cases it was copyright, not trade marks) and contributory infringement. In the first of those cases, Lawton LJ said at 205 and 206:

“What were the consequences in law, first of Amstrad knowing that the majority of those who bought their machines would use them to copy unlawfully pre-recorded cassettes protected by copyright and, secondly, of their intention to supply that market? … I am satisfied that mere knowledge on the part of the supplier of equipment that it would probably be used to infringe someone’s copyright does not make the supply unlawful; nor does an intention to supply the market for such user.”.

“… mere supplying with knowledge and intent will not be enough to make the supplier himself an infringer or a joint tortfeasor with someone who is. … the law relating both to patents and copyrights is in restraint of trade. Patentees and the owners of copyright have the rights given to them by statute and no others. Those who infringe those rights are penalised. Acts short of infringement are not. Amstrad’s supplying therefore was not an act of infringement.”

In the second case, Lord Templeman, with whom Lord Keith of Kinkel, Lord Griffiths, Lord Oliver of Aylmerton and Lord Jauncey of Tullichettle agreed, said at 1055E-F, 1057B-C, 1058E-H and 1060B-C:

“B.P.I. next submitted that Amstrad were joint infringers; they became joint infringers if and as soon as a purchaser decided to copy a record in which copyright subsisted; Amstrad could become joint infringers not only with the immediate purchaser of an Amstrad model but also with anyone else who at any time in the future used the model to copy records. My Lords, Amstrad sell models which include facilities for receiving and recording broadcasts, disc records and taped records. All these facilities are lawful although the recording device is capable of being used for unlawful purposes. Once a model is sold Amstrad have no control over or interest in its use. In these circumstances the allegation that Amstrad is a joint infringer is untenable.”

“My Lords, joint infringers are two or more persons who act in concert with one another pursuant to a common design in the infringement. In the present case there was no common design. Amstrad sold a machine and the purchaser or the operator of the machine decided the purpose for which the machine should from time to time be used. The machine was capable of being used for lawful or unlawful purposes. All recording machines and many other machines are capable of being used for unlawful purposes but manufacturers and retailers are not joint infringers if purchasers choose to break the law. Since Amstrad did not make or authorise other persons to make a record embodying a recording in which copyright subsisted, Amstrad did not entrench upon the exclusive rights granted by the Act of 1956 to copyright owners and Amstrad were not in breach of the duties imposed by the Act.”

“My Lords, I accept that a defendant who procures a breach of copyright is liable jointly and severally with the infringer for the damages suffered by the plaintiff as a result of the infringement. The defendant is a joint infringer; he intends and procures and shares a common design that infringement shall take place. A defendant may procure an infringement by inducement, incitement or persuasion. But in the present case Amstrad do not procure an infringement by offering for sale a machine which may be used for lawful or unlawful copying and they do not procure infringement by advertising the attractions of their machine to any purchaser who may decide to copy unlawfully. … The purchaser will not make unlawful copies because he has been induced or incited or persuaded to do so by Amstrad. The purchaser will make unlawful copies for his own use because he chooses to do so. Amstrad’s advertisements may persuade the purchaser to buy an Amstrad machine but will not influence the purchaser’s later decision to infringe copyright. Buckley LJ observed in Belegging-en Exploitatiemaatschappij Lavender BV v Witten Industrial Diamonds Ltd, at p. 65, that ‘Facilitating the doing of an act is obviously different from procuring the doing of an act.’ … Generally speaking, inducement, incitement or persuasion to infringe must be by a defendant to an individual infringer and must identifiably procure a particular infringement in order to make the defendant liable as a joint infringer.”

“Under and by virtue of [the Copyright Act 1956] Amstrad owed a duty not to infringe copyright and not to authorise an infringement of copyright. They did not owe a duty to prevent or discourage or warn against infringement.

The judge also referred to a number of other cases. In Unilever plc v Gillette (UK) Ltd [1989] RPC 583 Mustill LJ, with whom Ralph Gibson and Slade LJJ agreed, said at 608-609:

“I have set out these cases in some detail in deference to the care with which they were analysed during the argument on this appeal. In truth, however, I believe that they do little more than illustrate how in various factual situations the courts have applied principles which are no longer in doubt, save perhaps as regards the relationship between indirect infringements by procuring and by participation in a common design. There may still be a question whether these are distinct ways of infringing, or different aspects of a single way. I prefer the former view, although of course a procurement may lead to a common design, and hence qualify under both heads. We need not however explore this question, since Mr. Gratwick has (rightly, in my judgment) disclaimed any reliance on that part of his clients’ pleaded case which is founded on procurement, and has concentrated his arguments on the allegation of a common design. As to the authorities on this subject, if I am right in the view just expressed that they are really cases on the facts, I suggest that little is to be gained by matching the circumstances of each case against each of the allegations in the draft amended statement of claim.

For my part I prefer to take the relevant part of the amendment as a whole, and to ask whether, if the allegations therein are proved to be true (and there seems no dispute that they will be), and if they are set in the context of the relationship between the companies in the Gillette Group, when that has emerged at the trial, a judge directing himself correctly could reasonably come to the conclusion that – (a) there was a common design between Boston and G.U.K. to do acts which, if the patent is upheld, amounted to infringements, and (b) Boston has acted in furtherance of that design. I use the words ‘common design’ because they are readily to hand, but there are other expressions in the cases, such as ‘concerted action’ or ‘agreed on common action’ which will serve just as well. The words are not to be construed as if they formed part of a statute. They all convey the same idea. This idea does not, as it seems to me, call for any finding that the secondary party has explicitly mapped out a plan with the primary offender. Their tacit agreement will be sufficient. Nor, as it seems to me, is there any need for a common design to infringe. It is enough if the parties combine to secure the doing of acts which in the event prove to be infringements.”

• In Credit Lyonnais Bank Nederland NV v Export Credit Guarantee Department [1998] 1 Lloyds Rep 19, Hobhouse LJ, with whom Thorpe LJ agreed, said at 46:

“The overall effect of these cases is clear. It is only conduct which comes into the first or the third of the categories I have set out above which constitute the commission of a tort. The criminal law for obvious policy reasons goes further than the civil law. Acts which knowingly facilitate the commission of a crime amount to the crime of aiding and abetting but they do not amount to a tort or make the aider liable as a joint tortfeasor.

…

Accordingly, in my judgment there is no second category in the law of tort. Mere assistance, even knowing assistance, does not suffice to make the ’secondary’ party liable as a joint tortfeasor with the primary party. What he does must go further. He must have conspired with the primary party or procured or induced his commission of the tort (my first category); or he must have joined in the common design pursuant to which the tort was committed (my third category).”

• In SABAF SpA v Meneghetti SpA [2002] EWCA Civ 976, [2003] RPC 14 Peter Gibson LJ giving the judgment of the Court said at [59]:

“The underlying concept for joint tortfeasance must be that the joint tortfeasor has been so involved in the commission of the tort as to make himself liable for the tort. Unless he has made the infringing act his own, he has not himself committed the tort. That notion seems to us what underlies all the decisions to which we were referred. If there is a common design or concerted action or otherwise a combination to secure the doing of the infringing acts, then each of the combiners has made the act his own and will be liable. Like the judge, we do not think that what was done by Meneghetti was sufficient. It was merely acting as a supplier of goods to a purchaser which was free to do what it wanted with the goods. Meneghetti did not thereby make MFI’s infringing acts its own.”

L’Oréal argued that eBay did indeed participate in a common design to infringe the trade marks, because it acted along with the individuals selling the goods in an action that resulted in an infringement. It promoted listings, exercised at least some control over the sale and over the sellers (both legally and technically) and profited from the sales. It went along with the infringements, unlike Amstrad which merely sold a machine that was later used to infringe.

L’Oréal also made the point that eBay could insure against liability, a suggestion with which the judge expressed some sympathy. “In characterising L’Oréal’s claim as an attack on eBay’s business model, it seems to me that counsel for eBay Europe came close to the heart of the issue. As the evidence in this case graphically demonstrates, eBay and its competitors have created a new form of trade which carries with it a higher risk of infringement than more traditional methods of trade. I consider that there is much to be said for the view that, having created that increased risk and profited from it, the consequences of that increased risk should fall upon eBay rather than upon the owners of the intellectual property rights that are infringed. ”

The judge agreed with L’Oréal’s counsel, that this was a rather different situation from that in the Amstrad cases, where goods were supplied and the buyer used them to infringe, but he accepted three points made by eBay’s counsel which, he said, provided a complete answer to the claims:

“First, he submitted that, as a matter of law, eBay Europe were under no duty or obligation to prevent third parties from infringing L’Oréal’s (or anyone else’s) registered trade marks. In support of this, he relied in particular upon the final passage from the speech of Lord Templeman in CBS v Amstrad quoted above.

“Secondly, he submitted that, as a matter of fact, the Site operates in a neutral and impartial manner, irrespective of whether it is being used by sellers to sell infringing goods or non-infringing goods. To the extent that the Site discriminates between the sale of infringing and non-infringing goods, it attempts to prevent or at least minimise infringements, in particular through the VeRO programme.

“Thirdly, he submitted that, at worst, eBay Europe was guilty of facilitating infringements with knowledge that infringements were likely to occur (but not foreknowledge of the specific infringing acts). As shown by the authorities cited above, that was not enough to amount to joint tortfeasorship. In this regard, he pointed out that the particular infringements complained of had to be considered in the context of the Fourth to Tenth Defendants’ trading histories generally. He submitted that these showed that the Fourth to Tenth Defendants had sold a large proportion of items without complaint. He also submitted that their trading histories were as individual and distinctive as their own fingerprints.”

Several further claims were referred to the Court of Justice of the European Communities. These relate to whether eBay should be liable for sponsored links featuring L’Oréal trade marks and whether an injunction should he granted against eBay in respect of the infringing sales made by the seven sellers.

Analysis: Novelty: House of Lords lays down the rules

Novelty: House of Lords lays down the rules

The House of Lords has been particularly active in the patents field in the last couple of years.  You might wait for ages for their Lordships to hear a patent case, and then along come three in quick succession, beginning with Kirin Amgen and SABAF.  The latest in the trilogy is Synthon BV v SmithKline Beecham [2005] UKHL 59 in which the issue was whether a prior disclosure destroyed the novelty of an invention the subject of a later application.

Synthon filed a patent application, using the Patent Co-operation Treaty, on 10 June 1997.  They claimed a broad class of sulphonic acid salts, including paroxetine methansulfonate, or PMS, and the specification described how to make it in crystalline form.

On 23 April 1999 – before the Synthon application reached the publication stage – SmithKline Beecham (SKB) filed a UK patent application that also claimed PMS.  In the form in which it was granted, it identified the particular form of PMS claimed in the patent by reference to specific infra red (IR) and x-ray diffraction (XRD) peaks.  The IR peaks were different to those in Synthon’s patent, and Lord Hoffman (who again gave the leading judgment in the Lords) remarked that a skilled person reading both documents would believe that they described two different crystalline forms, or polymorphs, of PMS.

Synthon applied to revoke the SKB patent, arguing that the form of PMS claimed in it was not new.  The fact that the Synthon patent had not been published at the time SKB filed their application makes no difference – under section 2(3) of the Patents Act 1977 it still formed part of the state of the art, though SKB could not have known about it.  So was it what is referred to as an ‘enabling disclosure’?

Synthon had to show two things to succeed in their revocation action: first, that their earlier application disclosed what was in the SKB patent, and second that the disclosure was sufficient – that it would enable a skilled person to perform the invention.  The first stage was difficult enough: Synthon’s case was based on a mistake about the IR readings in its patent, and in addition it seemed to be likely that PMS was monomorphic, not polymorphic.  Jacob J had held at first instance that these defects were not fatal to Synthon’s case: if the skilled person set out to perform the invention and make PMS according to the Synthon patent, the result would be what the SKB patent disclosed even though he or she had thought they were making something different.

As for the enablement requirement, the problem here was that the Synthon patent used an unsuitable solvent.  Jacob J accepted Synthon’s argument here as well, that the skilled reader of the patent would try various solvents if the one specified in the patent did not do the trick, and within a reasonable time would make PMS.

The Court of Appeal allowed SKB’s appeal, and Synthon appealed to the House of Lords, which allowed its appeal.  Lord Hoffman considered that their Lordships should be reluctant to overturn a finding of fact by such an experienced judge.  In their analysis of the law, their Lordships highlighted the serious risk of confusion that can arise if the distinction between disclosure and enablement is not recognised.  They are, Lord Hoffman said, distinct concepts, each of which has to be satisfied and each with its own rules.

In particular, the different rules prescribe different roles for the skilled person.  In considering whether there has been disclosure, the skilled person’s general knowledge is taken into account when the patent is construed, but once it is construed the skilled person plays no further part; in relation to enablement, the skilled person must be able to make the invention work and must be assumed to be willing to try out different experiments to achieve this.

For an item of prior art to amount to a disclosure of an invention , Lord Hoffmann observed that if performed it must necessarily result in an infringement of the patent.  There is no need for the person working the invention to be aware that an infringement is being committed (Merrell Dow v Norton[1]) so the disclosure condition can be satisfied even if the person who created the prior art was unaware that it would infringe the patent.  So did Synthon’s patent application disclose an invention which, if performed, would infringe the SKB patent?

Because the trial judge had found that the PMS crystal was monomorphic, Lord Hoffmann was in no doubt that the crystal disclosed in the Synthon patent had all the characteristics of the crystals claimed in the SKB patent.  The inaccurate disclosure of the IR spectrum was irrelevant: because there was only one form of the crysttal, this part of the specification was superfluous.  The skilled person might be puzzled to find that the IR spectrum differed from what the patent taught, but the crystals would still infringe.

As for enablement, Lord Hoffmann explained that this condition would be satisfied when the ordinary skilled person would be able to perform the invention, satisfying the requirement of disclosure.  Here, the disclosure was to crystalline PMS and the information about the IR spectrum was irrelevant, and as noted above Lord Hoffmann saw no reason to differ from the view of the trial judge.

In this important case, the House of Lords has settled the principle that disclosure and enablement are distinct matters – though Lord Walker noted in his judgment that how far distinct will vary from case to case, and with a simple technology a basic disclosure may well enable the skilled person to perform an invention.  It has also made clear that the test of enablement would be the same whether the question under consideration concerned sufficiency or anticipation.  It is also noteworthy that, when considering what is in the prior art, it is the substance of the disclosure that has to be considered, not how it is characterised: the false IR spectrum information did not change what it was that the patent protected.

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[1]

Court of Appeal upholds levofloxacin patent and SPC

On 2 July 2009, the Court of Appeal in Generics (UK) Limited v Daiichi Pharmaceutical Co Ltd and another upheld the High Court’s decision that a patent on a chiral antimicrobial compound called levofloxacin was valid and so too was the supplementary protection certificate based on it. The appeal on validity was limited to obviousness over only one of the items of prior art cited at trial. Jacob LJ rejected the appellants’ submission (necessary given the Biogen approach to appeals – see Lord Hoffmann’s speech in Biogen v Medeva [1997] RPC 1 at p.45) that the trial judge had made an error of principle in holding that the invention was not obvious over that prior art. As for the SPC, that had been validly granted because levofloxacin was a new product for the purposes of the SPC Regulation. That regulation was sufficiently clear that there was no need to refer questions to the ECJ.

Court of Appeal on construction of construction fixings patent: Ancon Ltd v ACS Stainless Steel Fixings Ltd [2009] EWCA Civ 498, 16 June 2009

Court of Appeal on construction of construction fixings patent

In Ancon Ltd v ACS Stainless Steel Fixings Ltd [2009] EWCA Civ 498, 16 June 2009 the Court of Appeal reversed part of the decision of Patten J in the High Court, which had found that a patent was valid but not infringed. There was no appeal of the finding of validity. It feels like a reprise of all those cases on interpretation of claims.

The case concerned a patent for channel assemblies, in which a metal channel is cast into the concrete structure of a building. The head of a fixing (a bolt, perhaps) can be inserted and then turned to lock against the internal walls of the channel. The claims required that the head of the fixing had a “generally elliptical cone shape”, and the trial judge found the patent infringed because was not infringed because ACS’s product did not include a head having a generally elliptical cone shape. It looks very clever to me. Jacob LJ disagreed with the construction that Patten J had given this term, and held that the skilled person would consider the purpose of this feature in deciding what the patentee meant. That purpose was to achieve the locking action into the corners of the channel, so the shape of the top of the fixing, which did not come into contact with the channel, was immaterial.

So far so good, but the claim reads:

1. A channel assembly (21) adapted to be attached to a building structure, said channel comprising a spine (29), two side walls (28) and lips (27) defining a slot (25) in the channel and adapted to restrain a fixing in the channel, said spine (29) being provided with anchors (31) for casting into concrete, said side walls (28) being inclined inwardly towards the spine (29) and further including a fixing (30) having a head (33) with inclined sides characterised in that the head (33) has a generally elliptical cone shape.

The IPKat, fount of nearly all knowledge on this sort of thing, points out that the characterising clause was what distinguished the invention from the closest prior art, in opposition proceedings in the EPO. Without going into great detail, which it’s hard to do without graphical aids, the difficulty is that if those words are needed to distinguish the prior art, then surely they stipulate a feature that has to be present in an infringement. The purposive approach appears, perhaps, to have gone too far – though I don’t think the problem lies in an excess of meticulous verbal analysis of the sort that Lord Diplock warned against in Catnic.

The judgment, in which Waller LJ agreed with Jacob LJ, is even more unusual because the third judge was not ill. The parties were willing to accept the risks of having a hung decision. They might have got more than they bargained for.

Casenote: JN Dairies Limited v (1) Johal Dairies Limited (2) Gurbir Singh [2009] EWHC 1331

In JN Dairies Limited v (1) Johal Dairies Limited (2) Gurbir Singh [2009] EWHC 1331 (Ch, Birmingham), 12 June 2009 HHJ David Cooke ruled that there was an actionable breach of confidence by the defendants concerning the claimant’s invoices. The dispute was between two competing wholesale dairy companies. The judge found that the second defendant, a former employee of the claimant, had taken the invoices, and the first defendant company had made use of them or the information in them to approach and negotiate with the claimant’s customers. The judge applied the three-step test in Coco v A N Clark (Engineers) Ltd [1969] RPC 41, as every judge faced with a breach of confidence does, and decided that the information had the necessary quality of confidence and that the defendant had breached his duty of confidence. However, the judge did not did not find the categorisation of information in Faccenda Chicken Ltd v Fowler [1987] Ch 177 helpful to the circumstances of this case, because the information had not been communicated: it had been “stolen”, or perhaps taken would be a better word. Anyway, the judge considered that the information in the claimant’s invoices about quantities of goods bought by a particular customer and the prices charged to him was information which possessed the necessary degree of confidentiality, and that the defendants were well aware that it was confidential when they took it. That satisfied the second element in the Coco Trinity. This was a trial of a preliminary issue, to determine whether there was an actionable breach, so perhaps we’ll hear more of it in the future although there’s not much to argue about now.

Article: European Union: ´Limitations On Imitations: No More Free Rides´ — The ECJ´s Recent Decision On Comparative Advertising

Reed Smith
European Union: ´Limitations On Imitations: No More Free Rides´ — The ECJ´s Recent Decision On Comparative Advertising

Via Mondaq

13 August 2009
Article by Emma Lenthall and Tina Sany-Davies

The European Court of Justice (“ECJ”) delivered a significant judgment on 18 June 2009 on whether cheap imitations of L’Oréal perfumes, which were clearly not the trade marked goods but were marketed in such a way as to ‘wink at’ L’Oréal’s well known brands, infringed L’Oréal’s trade marks and whether they were protected as permissible comparative advertising.

To read the article please click here… you may need to register (FREE) with Mondaq if you are not already registered. .

Casenote: Vestergaard Frandsen v Bestnet and others [2009] EWHC 657 (Ch)

In Vestergaard Frandsen v Bestnet and others [2009] EWHC 657 (Ch), 3 April 2009, Arnold J held that there was breach of the duty of confidence owed by a consultant to the company for which he had been working, when he went to work for a rival and took trade secrets with him.  The rival company was therefore in breach when it used the information obtained from the consultant.  The judgment explores the important boundary between trade secrets and the knowledge and experience that someone would gain in the course of their work.

The information concerned a mosquito net impregnated, very usefully, with insect repellent, and comprised test results and information about the best chemicals to use.  The defendants tried at first to have the action struck out as vexatious and an abuse of process, without success.  At trial, Arnold J held that the consultant, Dr Skovmand, owed the claimants a duty of confidence which formed part of the oral contract between them or (alternatively) was an implied term.

The judge enumerated no fewer than 11 reasons why there was a duty of confidence (paras 631 to 641), including:

• That Dr Skovmand was employed to develop new products;
• That he was subject to the company’s direction;
• That much of the work was done by employees of the company;
• That advice was taken from others (including chemical companies) as well as Dr Skovmand;
• That the claimants paid for the raw materials used in the development work;
• That most of the information in the database was paid for one way or another by the claimants;
• That the claimants paid for the compilation of the database itself;
• That Dr Skovmand handed over the database to the claimants when he left, and recognised in his goodbye letter to them that he should only use the information in the copy he retained for a limited purpose; and
• That it was clearly recognised that inventions made by Dr Skovmand in the course of his work for the claimants would belong to them.

Like an employee, Dr Skovmand would be entitled to use his own skill, knowledge and experience gained while working for the claimants for his own benefit or that of anyone else: but he could not use the claimant’s trade secrets.  The judge noted that this might not be true of all consultants.

As for what was a trade secret, Arnold J said there were several factors to be taken into account:

• the nature of the work: Dr Skovmand was employed in a role which was likely to produce inventions, which would belong to the claimants;
• the nature of the information: this comprised experimental results and deductions from them, which should be protected as trade secrets in the same way that formulas and manufacturing processes are;
• the attitude of the employer: the company was shown to regard the information in the database as confidential;
• steps taken to protect the information: there was abundant evidence that extensive steps were taken to keep the information secret;
• the separability of the information: the information in the database could be separated from Skovmand’s general store of knowledge and skill;the commercial value of the information; and
• the usage and practices of the trade: the little evidence available on this point suggested that the trade would treat information such as that on the database as being a trade secret.

The judgment, in printable form, is a 166-page blockbuster.  Fortunately, most readers will be able to skip quickly to the legal analysis which starts on page 141 and contains extensive extracts from the caselaw.

Note on: Fisher v Brooker [2009] UKHL 41

Note on Fisher v Brooker [2009] UKHL 41

Lord Hope of Craighead, Lord Walker of Gestingthorpe, Baroness Hale of Richmond, Lord Mance, Lord Neuberger of Abbotsbury

The House of Lords, in its last batch of judgments before its metamorphosis into the Supreme Court, upheld Blackburne J’s judgment in Matthew Fisher v Gary Brooker which had been rather emasculated by the Court of Appeal. The interesting copyright point – that the organ part was worth 40 per cent of the song, basically, and surely few music fans would dispute that – was not in issue: what was being argued about was laches and estoppel. The time it took Matthew Fisher to pursue his claim has been the subject of much comment, but their Lordships and Ladyship (Lady Hale admitting to being able to remember the sixties, which I thought was evidence that the speaker couldn’t have been there: what were the other Lords doing at the time?) proceeded on the basis that there was no detriment to Gary Brooker. Quite the opposite: he enjoyed exclusive copyright in the music for many years during which, had Matthew Fisher moved a bit more speedily, he would only have had 60 per cent.  That benefit clearly outweighed any possible detriment, although their Lordships took the view that the laches claim was fatally flawed anyway.

In fact, Mr Fisher did not have it all his own way in the House of Lords.  Their Lordships did not reinstate the third declaration entirely: they asked the parties for further submissions on the matter of whether Essex Music’s rights had been validly assigned to Onward Music, which is however a bit of a sideshow.

The Court of Appeal’s judgment had, their Lordships thought, been inconsistent.  Lord Neuberger said that, granted that Mr Fisher originanlly owned 40 per cent of the musical copyright and had not been estopped from asserting it, there was no reason to deny him the right to seek an injunction or compensation for infringement of his copyright.  The Court of Appeal had taken the view that, on equitable grounds, it should refuse to declare that the right existed because he should not be entitled to seek an injunction.  Lord Neuberger said that if Mr Fisher applied for an injunction, it would be for the court to which the application was made to decide whether it would be oppressive, and he also made the point that the Court of Appeal would have denied him the opportunity to protect his 40 per cent copyright by obtaining an injunction against other infringers.  Just because there was no threat that Procol Harum or Gary Brooker personally would use the copyright in a way that Mr Fisher might want to stop did not mean that he should not be able to stop others.

Lord Neuberger’s opinion also made clear that there is no statutory time limit for bringing an action for infringement of copyright, which it is good to have confirmed – this is something that delegates on courses have asked me about in the past.  Their Lordships also held that the respondents’ reliance on the equitable doctrine of laches was irrelevant where what the claimant sought was a declaration relating to a property right – which is not equitable relief.  Even if laches were relevant, Lord neuberger said that the respondents would have to show acts during the period of delay that would mean the balance of justice justified refusing the relief.  Here there were omissions, not acts.

Lady Hale’s comment about delay had a little more to it: “As one of those people who do remember the sixties, I am glad that the author of that memorable organ part has at last achieved the recognition he deserves”, she said.   Am I wrong to think that lacks the impartiality that we expect from judges? Or are they entitled to stop being impartial when they have heard all the evidence? I suppose they have to, otherwise nothing would ever be decided.  But I too am glad that matthew Fisher has received proper recognition for a great contribution to popular music.

Intellectual property Law resource on Insite Law

Dr Peter Groves, a solicitor and author of the Ipso Jure blog is publishing his detailed text on Intellectual Property law.  This will be FREE to view and use and will be supported by case analyses, articles from the web and the latest news on Intellectual Property.