Law Commission announces a review of UK legislative provisions relating to threats of proceedings for intellectual property infringement

Law Commission webpage on unjustified threats, 16 May 2012

The Law Commission considers that the current legal framework relating to threats of infringement of intellectual property rights is inconsistent and complex, and makes it difficult for the parties concerned to discuss reasonable settlement.

The Commission plans to launch a consultation on whether to repeal, reform or extend the existing UK legislative threats provisions concerning patents, trade marks and designs. The project will look specifically at section 70 of the Patents Act 1977; section 26 of the Registered Designs Act 1949; section 253 of the Copyright, Designs and Patent Act 1988; section 21 of the Trade Marks Act 1994, paragraph 6 of the Community Trade Mark Regulations 2006 and regulation 2 of the Community Designs Regulation 2005 and will consider the balance between the rights of the proprietors of intellectual property interests and the rights of third parties so as to ensure that they are not subjected to an abuse of monopoly rights.

The consultation will be launched in February 2013 and a final report is intended to be published by March 2014.

Copyright Tribunal rules on reasonableness of fees payable by news monitoring Services

Following a protracted legal dispute between Meltwater and the Newspaper Licensing Agency ("NLA"), agreement has now been reached over the fees payable by news monitoring services to newspapers.

Meltwater provides a news clippings service to its clients, scanning news articles for certain words and providing news items concerning words to its clients. Meltwater bought a web database licence from the NLA to enable it to provide news aggregator services but challenged the fees NLA wished to charge.

In a legal dispute last year the Court of Appeal ruled that material on newspaper websites was protected by copyright. This meant that users of clipping services would require a licence from newspaper publishers to click on links to newspaper web pages in order to avoid copyright infringement.

The Copyright Tribunal was asked to determine the fees NLA could legitimately charge and ruled earlier this year that proposed fees were not reasonable in an interim decision.

NLA and Meltwater have now reached agreement on all outstanding matters and the Tribunal has accepted the licensing terms agreed. The terms include payment of a fixed annual rate based on number of employees who are end users or a variable rate based on the number of links the service provides to end users.

European Parliament rejects ACTA

On 4 July 2012, the European Parliament (EP) refused to give its consent to the conclusion by the EU of the Anti-Counterfeiting Trade Agreement (ACTA). The Agreement cannot now be concluded by the EU and neither the EU nor its individual member states can join ACTA.

The decision was expected after MEPs on a key European parliamentary committee recently voted to reject ACTA by 19 votes to 12.

(ACTA is an international treaty which aims to curb trade of counterfeited goods, including copyrighted material online.)

Communications Data Bill

The Bill:

Call for Evidence: notices/2012/july-2012/Snooping-Bill-CfE/

The draft Communications Data Bill, announced in the Queen's Speech, has been published by the Home Office. The Bill will enhance current communications data retention requirements (it is intended to cover 'modern' forms of communication such as VoIP and social networks, under the control of information society service providers, not currently covered by existing data retention legislation) and permit access to that data by law enforcement and other public authorities.

A Call for Evidence seeking public comment on the draft Bill has been launched. The deadline for responses is 23 August 2012.

Termination notice held served by only one of the joint licensors

Fitzhugh v Fitshugh [2012] EWCA Civ 694

When is a notice (purporting to terminate a licence agreement) invalid? According to the Court of Appeal in this recent case, when it is served by only one of the joint licensors to the agreement. In this complicated agreement, the other licensor was also one of the joint licensees.

Progress on Unitary EU patent falters

A unitary EU patent has been much debated in Europe recently. The main issue delaying progress is the creation of a unified patent litigation system.

On 29 June 2012, the European Council agreed that the Central Division of the Court of First Instance of the proposed Unified European Patent Court should be located in Paris, with two specialist divisions located in London and Munich. The London division is intended to deal with chemistry, including pharmaceuticals and life sciences, the Munich division will address mechanical engineering.

The European Council had agreed to recommend that Articles 6 to 8 of the proposed Unitary Patent Regulation should be deleted, thus removing the automatic right of litigants to refer questions on infringement law to the CJEU. Both industry and patent professionals had opposed the right to refer. Any referrals would likely add to the overall costs, length and uncertainty of patent litigation.

However, on 2 July 2012, the European Parliament decided to postpone the vote on the Council proposals as the Parliamentary rapporteurs considered that following the European Council's recommendation would "emasculate the proposals" and lead immediately to a reference to the CJEU.

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