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Intellectual Property - From: 1900 To: 1929

This page lists 69 cases, and was prepared on 08 August 2015.

 
Burberry's -v- Cording [1900] 26 RPC 693
1900


Intellectual Property, Torts - Other
Discussing the tort of passing off the court said: "The principles of law applicable to a case of this sort are well known. On the one hand, apart from the law as to trade marks, no one can claim monopoly rights in the use of a word or name. On the other hand, no one is entitled by the use of any word or name, or indeed in any other way, to represent his goods as being the goods of another to that other's injury. If an injunction be granted restraining the use of a word or name, it is no doubt granted to protect property, but the property, to protect which it is granted, is not property in the word or name, but property in the trade or goodwill which will be injured by its use."
1 Citers



 
 Walter -v- Lane; HL 1900 - [1900] AC 539
 
Magnolia Metal Co -v- Tandem Smelting Syndicate Ltd (1900) 17 RPC 477
1900

Lord Halsbury LC
Intellectual Property
"Going back . . . as far as the reign of Elizabeth the form of action which this Statement of Claim adopts has undoubtedly been a form of action in which if the right of a man to have the reputation of selling that which is his manufacture as his manufacture, the right to prevent other people fraudulently stating that it is their manufacture when it is not - if that right is infringed there is a remedy. That has, as I have said, ever since the reign of Elizabeth, been established in our Courts as being a right of action upon which anybody may sue who has a ground for doing so."
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1 Citers


 
In the matter of John Player & Sons' Application for a Trade Mark (1900) 18 RPC 65
1900

Cozens-Hardy J
Intellectual Property
The court considered a suituation where a company had applied to register its own trade mark again. Held: Cozens-Hardy J said that a second registration of the identical mark by the same proprietor was superfluous and absurd. It would "cumber the register needlessly and unnecessarily".
1 Citers


 
John Jamieson & Son Ltd -v- R S Johnston & Co Ltd (1901) l8 RPC 259
1901


Intellectual Property

1 Citers


 
Duke of Bedford -v- Ellis [1901] AC 1
1901
HL
Lord MacNaghten
Litigation Practice, Intellectual Property
Ellis and five others sued on behalf of themselves and all other growers of fruit, flowers, vegetables, roots or herbs to enforce rights conferred on them by the Covent Garden Act 1828 against the Duke of Bedford as the owner of the market. The Duke of Bedford obtained as trike out. The Court discharged that order on the undertaking of the plaintiffs to join the Attorney-General as a defendant. The Duke's appeal was dismissed.
Lord Macnaghten discussed whether the rule only applied to claims to some beneficial right of property and said "But it seems to me that there is no reason whatever for so restricting the rule, which was only meant to apply the practice of the Court of Chancery to all divisions of the High Court. The old rule in the Court of Chancery was very simple and perfectly well understood. Under the old practice the Court required the presence of all parties interested in the matter in suit, in order that a final end might be made of the controversy. But when the parties were so numerous that you could never "come at justice", to use an expression in one of the older cases, if everybody interested was made a party, the rule was not allowed to stand in the way. It was originally a rule of convenience: for the sake of convenience it was relaxed. Given a common interest and a common grievance, a representative suit was in order if the relief sought was in its nature beneficial to all whom the plaintiff proposed to represent. To limit the rule to persons having a beneficial proprietary interest would be opposed to precedent, and not, I think, in accordance with common sense."
1 Citers


 
Payton & Co Limited -v- Snelling, Lampard & Co Ltd [1901] AC 308
1901
HL

Intellectual Property
The House rejected a suggestion that a manufacturer of goods, which did not by their get-up make a false representation, would be liable for any passing-off which resulted.
1 Citers


 
Panhard et Levassor -v- Panhard Levassor Motor Company Ltd (1901) 2 Ch 513
1901

Farwell J
Intellectual property
French car manufacturers had established a reputation under their name in this country. The defendant company was formed not to take over the plaintiffs' goodwill, but to block the plaintiffs from entering this country. Held: Injunctions were granted requiring the defendants to change the name of their company and not to trade in that name, as to which: "The question of the plaintiffs' right to an injunction is covered by Collins Co v Brown ; but, apart from that authority, I should have thought it was plain that in a case such as I have stated this court would certainly interfere to protect a foreign trader who has a market in England, in the way I have specified, from having the benefit of his name annexed by a trader in England who assumes that name without any sort of justification."

 
Commissioners of Inland Revenue -v- Muller & Co. Margarine [1901] AC 217
1901
HL
Lord Macnaghten, Lord Lindley, Lord Robertson
Commercial, Intellectual Property, Stamp Duty
The House considered the liability, or not, to stamp duty of an agreement made in the UK. Under the Stamp Act 1891 an agreement made in the UK for the sale of any estate or interest in any property except lands or property locally situate out of the UK was chargeable with ad valorem stamp duty. The particular agreement was for the sale of the premises of a wholesale manufacturing business which was carried on in Germany together with the goodwill of the business, all of whose customers were in Germany. Held: The goodwill was property locally situate outside the UK. Lord Macnaghten said: "It is very difficult, as it seems to me, to say that goodwill is not property. Goodwill is bought and sold every day. It may be acquired, I think, in any of the different ways in which property is usually acquired. When a man has got it he may keep it as his own. He may vindicate his exclusive right to it if necessary by process of law. He may dispose of it if he will - of course under the conditions attaching to property of that nature." and
"What is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of a good name, reputation, and connection of business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old established business from a new business at its first start. The goodwill of a business must emanate from a particular centre or source. However widely extended or diffused its influence may be, goodwill is worth nothing unless it has a power of attraction sufficient to bring customers home to the source from which it emanates. Goodwill is composed of a variety of elements. It differs in its composition in different trades and in different businesses in the same trade.”
Lord Lindley said: "Goodwill regarded as property has no meaning except in connection with some trade, business, or calling. In that connection, I understand the word to include whatever adds value to the business by reason of the situation, name and reputation, connection, introduction to old customers, and agreed absence from competition, or any of these things, and there may be others which do not occur to me. In this wide sense, goodwill is inseparable from the business to which it adds value, and, in my opinion, exists where the business is carried on. Such business may be carried on in one place or country or in several, and if in several there may be several businesses, each having a goodwill of its own."
Lord Robertson said: "I do not accede to the view that the goodwill is affixed or attached to the manufactory. Supposing that the products of the manufactory were all exported to England and sold to English customers, I should find it difficult to hold that the goodwill was out of England merely because the manufactory was. The application of the words "locally situate" would then present a different question, requiring, I should think, a different answer. Again, if the facts as to the distribution of the products were more complicated, as, for example, if the trade were diffused over England and other countries, then the location of the goodwill would be a more complex, although I do not by any means think an insoluble, problem.
I confess I find no repugnancy in affirming of the goodwill of a business that it is locally situate somewhere. It is, I should say, locally situate within the geographical limits which comprehend the seat of the trade, and the trade. That sounds like a very cautious statement, and fortunately it is enough for the present question. It seems to me that in the statute the distinction drawn is between what from a British point of view we should call British property and foreign property; and the goodwill of a business which begins and ends abroad is, I think, property locally situate outside the United Kingdom."
1 Citers


 
Britain -v- Hanks Bros and Co (1902) 86 LT 765
1902

Wright J
Intellectual Property
The plaintiff claimed copyright in a model soldier cast in metal as a statue. The defendant argued that the statute was intended to apply only to substantial works of art, such as busts, large sculptures and casts of copies of works recognised as works of art, and there was no artistic merit in the model soldiers in the sense contemplated by the Act. Held. The first question was whether the toy representation was "an artistic thing – an artistic production within the Act. Being a toy was not conclusive against its being a sculpture. Wright J said: "It is tolerably certain that some toys would not fall within the protection of the Act; and the question whether this soldier's or mounted yeoman's figure comes within it must be decided upon evidence as to its artistic character. The evidence before me is all one way. A war correspondent has been called who is at the same time an artist and has shown several of these figures to be artistic productions, in that the anatomy is good, and that the modelling shows both technical knowledge and skill. I see nothing to quarrel with in that statement. On the whole, therefore, although I have great doubt as to the meaning of the Act, I am prepared to hold that the production of a metal figure of a mounted yeoman such as this is good enough to be protected by the provisions of the Act if [certain other provisions] are complied with."
Sculpture Copyright Act 1814
1 Citers



 
 John De Kuyper & Son -v- W & G Baird Ltd; 1903 - (1903) 20 RPC 581

 
 Faulder & Co Ltd -v- Rushton; 1903 - (1903) 20 RPC 477
 
Dunlop Pneumatic Tyre Co Ltd -v- David Moseley & Sons Ltd (1903) 21 RPC 53
1903
ChD
Swinfen Eady J
Intellectual Property, Torts - Other
The defendant sold tyre covers which were an essential feature of a combination patent for tyres and rims. The tyre covers were adapted for use in the manner described in the patent, but not necessarily solely for use in that manner. The plaintiffs alleged that the defendant were liable for patent infringement as joint tortfeasors. Held: Swinfen Eady J said that most of the "covers would probably ultimately be used in one or other of" the patented method but that "those are not exhaustive of the purposes to which the covers may be put, and that they would be useful for other purposes in connection with other tyres."
1 Citers



 
 Reynolds -v- Herbert Smith and Company Ltd; CA 1903 - (1903) 20 RPC 123
 
British Vacuum Cleaner Co Ltd -v- New Vacuum Cleaner Co Ltd (1907) 2 Ch 312
1904

Parker J
Intellectual Property, Company
The plaintiff sought to restrain what it said was passing off by the defendant. The test to be applied in passing-off claims is whether there is such a close resemblance between the names as to be calculated to deceive. This is a question of fact. In such a case an injunction might be sought to restrain the use of a newly registered company's name, though Parker J refused one in this instance.
1 Citers



 
 Dunlop Pneumatic Tyre Co Ltd -v- David Moseley & Sons Ltd; CA 1904 - (1904) 21 RPC 274
 
E M Bowden's Patents Syndicate Ltd -v- Herbert Smith & Co [1904] 2 Ch 86
1904

Warrington J
Litigation Practice, Intellectual Property
Where an equitable assignee sues a third party, the assignor must be joined as a defendant. The Plaintiff as the equitable owner of a patent was given liberty to amend its pleading by joining the legal owner, (failing which the Plaintiff’s case would have been dismissed), but on terms that the Plaintiff paid the Defendant’s costs of the two days of hearing up to that point.
1 Citers


 
Slingsby -v- Bradford Patent Truck and Trolley Co [1906] WN 51; [1905] WN 122
1905


Intellectual Property
Equitable relief was refused for an infringement of copyright where the work made false statements with intention to deceive the public.
1 Citers



 
 Badische Anilin und Soda Fabrik -v- Hickson; HL 1906 - [1906] AC 419
 
Bile Bean Manufacturing Co -v- Davidson (1906) 23 RPC 725
1906
CS
Lord Justice-Clerk Lord Macdonald
Scotland, Intellectual Property
The second division refused relief against copyright infringement to a company which had perpetrated a deliberate fraud on the public by a series of false factual statements about its products. Lord Justice-Clerk Lord Macdonald said: 'No man is entitled to obtain the aid of the law to protect him in carrying on a fraudulent trade, but the cases quoted at the debate by the Lord Ordinary establish, as I think, very clearly that the courts have in the past given effect to the principle which allows nothing to the man who comes before the seat of justice with a turpis causa.'
1 Citers


 
Potter -v- Broken Hill Pty Co Ltd (1906) 3 CLR 479; [1906] HCA 88
20 Mar 1906

Griffith C.J., Barton and O'Connor JJ
Jurisdiction, Commonwealth, Intellectual Property
(High Court of Australia) (affirmed)
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[ Austlii ]
 
Re Lyle & Kinahan Ltd's Application (1907) 24 RPC 249 (CA)
1907
CA
Buckley LJ
Intellectual Property
Buckley LJ said: "The registration of a trade mark does not confer any right at all of the description there pointed to, but it does confer a right, and the only right is the right to prevent anybody else from using that trade mark for their goods, but it does not give the registered owner of the trade mark any right to use that trade mark if the trade mark would deceive. I conceive that if at the date when application is made to register a trade mark there is no good ground of objection upon the footing that it will be calculated to deceive, and if subsequently by alterations in the character of the business of the two parties respectively the use of the trade mark will be calculated to deceive and a passing-off action were brought by one party against the other, it would be no defence at all on the part of the owner of the registered trade mark to say - ‘Deception or no deception I am entitled to it because that is my registered trade mark’. That could not be advanced for one moment. In other words, the registration of a trade mark does not confer any right to do that which could not have been done irrespective of the trade mark, in the sense of doing any acts which would be competition in business. The only right which it confers is a right to restrain others from using that trade mark."
1 Citers


 
Iron-Ox Remedy Company Ld -v- Co-operative Wholesale Society Ld [1907] 24 RPC 425
1907


Intellectual Property
The plaintiffs, manufactureres of 'Iron-Ox Tablets' complained that defendants were selling 'Iron Oxide Tablets'. The defendants had been unable to obtain the plaintiffs goods for sale and therefore sourced and resold tablets containing Iron oxide, which was useless medecinally, but with other useful substances. The plaintiff's tablets contained no iron oxide. Others provided similarly named tablets, but some had been successfully restrained by the plaintiffs. Held: The defendants had not intended to satisfy a popular demand, but rather to supercede the plaintiff's trade, and this was not legitimate trading, having been chosen to cause confusion. The defendants were to be restrained from selling their product in this way.
1 Citers


 
In re Birmingham Small Arms Company's Application [1907] 2 Ch 396
1907

Kekewich J
Intellectual Property
The court was asked about the obligation to associate identical trade marks. Held: Kekewich J said that the omission of any reference to identical marks was probably a mistake: "it is impossible to my mind to conceive that the Legislature can have intended anything of that kind." Nevertheless the court was obliged to apply the actual words of the Act.
1 Citers



 
 British United Shoe Machinery Co Ltd -v- A Fussell & Sons Ltd; CA 1908 - (1908) 25 RPC 631
 
Tate -v- Fulbrook [1908] 1 KB 821
1908

Farwell J
Intellectual Property
Farwell LJ said of the Copyright Acts: "The Act creates a monopoly, and in such a case there must be certainty in the subject-matter of such monopoly in order to avoid injustice to the rest of the world." Copyright subsists in different categories of work, in particular, in literary, dramatic, musical or artistic works, but in order to obtain copyright protection it is necessary for the work to be in some tangible form because there is no protection for ideas.
1 Citers


 
Flour Oxidizing Co Ltd -v- Carr & Co Ltd [1908] 25 RPC 428
1908

Parker J
Intellectual Property
Application was made for a patent for using an apparatus previously disclosed as suitable for a different use. Held: Parker J said: "But where the question is solely a question of prior publication, it is not, in my opinion, enough to prove that an apparatus described in an earlier Specification could have been used to produce this or that result. It must also be shown that the Specification contains clear and unmistakable directions so to use it."
1 Citers



 
 Poulton -v- Adjustable Cover and Boiler Block Co; CA 1908 - [1908] 2 Ch 430
 
Rey -v- Lecouturier [1908] 2 Ch 715
1908
CA

Intellectual Property

1 Citers



 
 Meters Limited -v- Metropolitan Gas Meters Limited; ChD 1910 - (1910) 27 RPC 721
 
British Westinghouse Electric and Manufacturing Company Limited -v- Braulik [1910] 27 RPC 209
1910
CA
Lord Haldane LC
Intellectual Property
Between 1904 and 1906 British Westinghouse supplied 8 steam turbines. They were defective in design and used excessive quantities of steam. The railway company did not reject them but reserved its claim to damages for breach of contract. In 1907 the railway company replaced them with more efficient turbines made by Parsons. The railway company claimed damages for the excessive fuel used while they were operating the British Westinghouse turbines and the whole cost of replacing them with Parsons turbines. The arbitrator found that the railway company had acted reasonably and prudently in acquiring the Parsons turbines to mitigate their continuing loss in using excessive fuel, but the Parsons turbines were so efficient that it would have been to the advantage of the railway company to replace the British Westinghouse turbines when they did, even if the latter had been in accordance with the contract specification. Held: The additional benefits gained by the railway company from acquiring the Parsons turbines, over and above what would have been their contractual entitlement as against British Westinghouse, had to be brought into account in calculating the damages. The House distinguished cases in which the plaintiff had received benefits which "did not arise out of the transactions the subject-matter of the contract." These were res inter alios acta. But where -"the person whose contract was broken took a reasonable and prudent course quite naturally arising out of the circumstances in which he was placed by the breach" it was necessary to look at any additional benefits which he thereby acquired and to "balance loss and gain."
A court must be careful of the danger of hindsight in assessing the obviousness of a patent.
1 Citers



 
 Rey -v- Lecouturier; HL 1910 - [1910] AC 262

 
 Meters Limited -v- Metropolitan Gas Meters Limited; CA 1911 - (1911) 28 RPC 157
 
Lever Bros -v- Mabro (1912) 29 RPC 225
1912


Intellectual Property
Passing off by substitution is where a trader having accepted an order for one brand supplies another brand in such a way that the customer is unlikely to notice the substitution and is misled.
1 Citers



 
 Pink -v- Sharwood; 1913 - (1913) 30 RPC 725

 
 Amber Size and Chemical Co Ltd -v- Menzel; 1913 - [1913] 2 Ch 239
 
Watson Laidlaw & Co Ltd -v- Pott Cassells and Williamson (1914) 31 RPC 104; 1914 SC (HL) 18
1914

Lord Shaw of Dunfermline, Lord Shand, Lord Kinnear, Lord Atkinson
Scotland, Intellectual Property
Damages were claimed for the infringement of a patent. The defender had sold 252 infringing machines sold in Java. The Lord Ordinary had given an unexplained award of £1,500, which the Inner House had doubled. The defendant appealed saying that but the pursuer had not shown that he would have made 252 additional sales. Held. Compensation is to be assessed on the basis of inference, conjecture and the like, by the exercise of sound imagination and the practice of the broad axe.
Lord Shaw said: "In the case of damages in general, there is one principle which does underlie the assessment. It is what may be called that of restoration. The idea is to restore the person who has sustained injury and loss to the condition in which he would have been had he not so sustained it. In the cases of financial loss, injury to trade, and the like, caused either by breach of contract or by tort, the loss is capable of correct appreciation in stated figures.
In a second class of cases, restoration being in point of fact difficult--as in the case of loss of reputation--or impossible--as in the case of loss of life, faculty, or limb--the task of restoration under the name of compensation calls into play inference, conjecture, and the like. And this is necessarily accompanied with those deficiencies which attach to the conversion into money of certain elements which are very real, which go to make up the happiness and usefulness of life, but which were never so converted or measured. The restoration by way of compensation is therefore accomplished to a large extent by the exercise of a sound imagination and the practice of the broad axe. It is in such cases, whether the result has been attained by the verdict of a jury or the finding of a single judge, that the greatest weight attaches to the decision of the court of first instance. The reasons for this are not far to seek… In all these cases, however, the attempt which justice makes is to get back to the status quo ante in fact, or to reach imaginatively by the process of compensation a result in which the same principle is followed."
As to the Java trade: "It is said in such a case: Where is the damage which the patentee has incurred? On the other heads of the case he has obtained his damages; but on this part, which covers a section of trade which in no circumstances he could have touched, he can have sustained no damage, because he would never have sold his patented articles within that section. The duty of an infringer is covered by the principle of restoration, and the patentee has surely been restored to as good a position as he was in before the infringement, or would have been in but for it, if he has been put into the same financial position as he would have occupied in that region of trade where alone he would have been operating.
It is at this stage of the case, however, that a second principle comes into play. It is not exactly the principle of restoration, either directly or expressed through compensation, but it is the principle underlying price or hire. It plainly extends--and I am inclined to think not infrequently extends-- to patent cases. But, indeed, it is not confined to them. For wherever an abstraction or invasion of property has occurred, then, unless such abstraction or invasion were to be sanctioned by law, the law ought to yield a recompense under the category or principle, as I say, either of price or of hire. If A., being a liveryman, keeps his horse standing idle in the stable, and B., against his wish or without his knowledge, rides or drives it out, it is no answer to A. for B. to say: "Against what loss do you want to be restored? I restore the horse. There is no loss. The horse is none the worse; it is the better for the exercise." I confess to your Lordships that this seems to me to be precisely in principle the kind of question and retort which underlay the argument of the learned counsel for the appellants about the Java trade."
Lord Shaw reviewed the working rules used to estimate the compensation to be awarded against an infringer, a task which he acknowledged would require “inference, conjecture and the like” and involved “the exercise of a sound imagination and the practice of the broad axe” One broader principle applied also, cases that: “wherever an abstraction or invasion of property has occurred, then, unless such abstraction or invasion were to be sanctioned by law, the law ought to yield a recompense under the category or principle, as I say, of price or hire. If A, being a liveryman, keeps his horse standing idle in the stable, and B, against his wish or without his knowledge, rides or drives it out, it is no answer to A for B to say: “Against what loss do you want to be restored? I restore the horse. There is no loss. The horse is none the worse; it is the better for the exercise.” He concluded that: “If with regard to the general trade which was done, or would have been done by the Respondents within their ordinary range of trade, damages be assessed, these ought, of course, to enter the account and to stand. But in addition there remains that class of business which the Respondents would not have done; and in such cases it appears to me that the correct and full measure is only reached by adding that a patentee is also entitled, on the principle of price or hire, to a royalty for the unauthorised sale or use of every one of the infringing machines in a market which the infringer, if left to himself, might not have reached. Otherwise, that property which consists in the monopoly of the patented articles granted to the patentee has been invaded, and indeed abstracted, and the law, when appealed to, would be standing by and allowing the invader or abstractor to go free. In such cases a royalty is an excellent key to unlock the difficulty, and I am in entire accord with the principle laid down by Lord Moulton in Meters Ld. V Metropolitan Gas Meters Ld. (28 R.P.C. 163). Each of the infringements was an actionable wrong, and although it may have been committed in a range of business or of territory which the patentee might not have reached, he is entitled to hire or royalty in respect of each unauthorised use of his property. Otherwise, the remedy might fall unjustly short of the wrong.”
1 Citers


 
Bowden Wire Ltd -v- Bowden Brake Co Ltd (1914) 31 RPC 384 HL(E)
1914


Intellectual Property
Trade Marks
1 Citers


 
Monckton -v- Pathe Freres Pathephone Ltd [1914] 1 KB 395
1914
CA
Buckley LJ
Intellectual Property
A performance of the musical work by the use of a record was found to be an infringing use and the record was sold for that purpose. Buckley LJ said: "The seller of a record authorises, I conceive, the use of the record, and such use will be a performance of the musical work."
1 Citers



 
 Gross -v- Seligman; 1914 - 212 F 930 (1914)

 
 In re Lind; Industrials Finance Syndicate Ltd -v- Lind; CA 1915 - [1915] 2 Ch 345

 
 Spalding (A G ) and Brothers -v- A W Gamage Ltd; HL 1915 - 84 LJ Ch 449; (1915) 32 RPC 273

 
 Cescinsky -v- George Routledge; 1916 - [1916] 2 KB 325

 
 University of London Press Ltd -v- University Tutorial Press Ltd; 1916 - [1916] 2 Ch 601

 
 Glyn -v- Weston Feature Film Co; 1916 - [1916] 1 Ch 261
 
Ewing -v- Buttercup Margarine Co Ltd [1917] 34 RPC 232
1917
CA
Lord Cozens-Hardy MR, Warrington LJ
Intellectual Property
The plaintiff sold margarine in retail shops, mainly in Scotland and the north of England. It had used the name ‘Buttercup Dairy Company’. The defendants proposed to sell margarine wholesale under the name ‘Buttercup Margarine Company’. Held: There had been a passing-off. Lord Cozens-Hardy MR: "[The defendants] assert their right to do what is complained of, and they file a great mass of affidavits, and they appear here in Court to assert their right to do what they have threatened and continue to do. They seek to justify it on the ground that the arm of the Court is not long enough to reach a defendant who takes a name or a word, which, in the view of the Court, who are judges of the fact, is calculated to deceive, unless it can also be shown that it is calculated to deceive in this sense’ that a person who would be a customer of the Plaintiff is induced to become a customer of the Defendants; and they say that this doctrine has no operation here, because they are wholesale people and the Plaintiff’s business is a retail one: and that it is true that they have fullest possible power under the Memorandum and Articles of Association to carry on a retail business, but at the present moment they have no such intention. I should be very sorry indeed that we were so to limit the jurisdiction of the Court. No doubt mere confusion, due to some acts of the defendants, would not be a cause of action. The case of Day v Brownrigg is a good illustration of that - but I know of no power, and I can see no principle for holding that a trader may not be injured, and seriously injured, in his business as a trader by a confusion which will lead people to conclude that the defendants are really connected with the plaintiffs or a branch of the plaintiffs’ business or in some way mixed up with them." Warrington LJ: "It seems to me that the Plaintiff has proved enough. He has proved that the Defendants have adopted such a name as may lead people, who have dealings with the Plaintiff, to believe that the Defendant’s business is a branch of, or associated with the Plaintiff’s business. To induce the belief that my business is a branch of another man’s business may do that other man damage in all kinds of ways. The quality of the goods I sell; the kind of business I do; the credit or otherwise which I might enjoy all those things may immensely injure the other man, who is assumed wrongly to be associated with me. It is just that kind of injury which what the defendants have done here is likely to occasion, and I think the learned judge is perfectly right."
1 Citers


 
Sports & General Press Agency -v- "Our Dogs" Publishing Co [1917] KB 125 CA
1917
CA

Intellectual Property, Media
The plaintiff had sold to the Press photographic rights to a dog show. An independent photographer took pictures and sold them to the defendant, who published them. The plaintiff sought to restrain further publication. Held: An injunction was refused on the ground that the dog show organisers and the plaintiff could, by contract, have laid down, but had failed to lay down, conditions of entry or as to banning the use of unauthorised cameras.
1 Citers


 
Anderson -v- Lieber Code Co [1917] 2 KB 469
1917

Bailhache J
Intellectual Property
The court askeed whether there was a copyright in telegraph codes. The code consisted of 100,000 5-letter words that had been arrived at by generating 450,000 words, from which those that were unpronounceable and those that were likely to lead to an error in telegraphic transmission were eliminated. The 100,000 remaining words were used as a cipher. Held: 'there could be no doubt of the enormous utility of the book, and of the service rendered to anybody desirous of forming a telegraphic code by an undertaking which once and for all eliminated words liable to error, and supplied such a collection of the aptest words for telegraphic use.' The collection of codes was protected by copyright.
1 Cites

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British Reinforced Concrete Engineering Company Ltd -v- Lind (1917) 34 RPC 101
1917
ChD
Eve J
Intellectual Property
An assistant engineer created an invention from a visit to a colliery made in the course of his employment. He applied for and was granted a patent. The employer claimed to be entitled to the benefit of it. The employee resisted saying that he was employed to discharge the duties of a draughtsman or assistant engineer not to apply any inventive skill he might possess for the benefit of his employers. Held: The employer's claim succeeded: "In many cases the terms of the contract of service may in themselves be sufficient to determine whether or not the Patent belongs to the servant or to his employer. For example, the mere fact that this gentleman was engaged as an assistant engineer or as a draughtsman in the office of the Plaintiff Company would not have entitled the Plaintiff Company to claim for its benefit the advantages of any invention which the Defendant might have made, although the invention had been the result of knowledge and experience gained in their Office, and might even have been suggested by difficulties which had arisen in the Office, the existence of which had come to his knowledge by reason only of his having been employed there. But in dealing with the question whether or not a particular invention is to be retained by the servant or has been made by him for the benefit of the employer, it is necessary to regard not only the contract of service and the relative positions which the servant and the employer occupy hereunder, but the circumstances in which the particular invention was made. I do not think it is right here to limit the consideration to the fact that the ordinary duty of the Defendant would be the ascertaining of the matters to which I have referred, that is to say, to the ordinary scope of the work of an assistant engineer or draughtsman. Still less do I think it material to consider the wage at which he was engaged. I must regard also the particular circumstances and the particular piece of work entrusted to him, out of which this invention grew. Now, the net result is that after his visit of the 9th of November to the colliery he was employed by the Plaintiff Company to design, if he could, a form of lining which could comply with and meet the four specific and essential requirements enumerated in his report. In my opinion, from that moment the terms of his employment imposed upon him an obligation to place at the disposal of, and treat as the property of, the Company the best design which he could, by the exercise of his industry, skill, ingenuity, and inventive ability, produce for the purpose of complying with the essential conditions of the work on which he was employed."
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Austin -v- Columbia Gramophone Company [1917-23] MCC 398
1917

Astbury J
Intellectual Property
Infringement of the plaintiff's copyright in the music of the opera "Polly", written by John Gay as a sequel to "The Beggar's Opera" was alleged. A volume comprised the opera in prose form, with an appendix including simple airs with an added bass. These were traditional tunes at the time and Gay composed none of the music. The opera remained unknown and unperformed until 1922, when the plaintiff, in collaboration with a lyricist, arranged and composed the music by altering and extending the existing tunes to fit the new lyrics. The opera succeeded and the Defendants wished to produce the best airs on gramophone records. The Defendants' musical director picked out 20 tunes but the plaintiff had already reached agreement with another record company for the recording of parts of the opera as band music and refused a licence to the Defendants who then decided to proceed without his consent and sent their musical director to the British Museum to copy from the original Gay edition the tunes which they had selected for recording, in the hope of avoiding any copying of the plaintiff's own music. Held: The expert evidence indicated that the Defendants had deliberately harmonised the Gay material to resemble the plaintiff's work, though they had not taken the actual notes used by him. They had imitated his harmonisation to capture the impression made by his own music, on which the production's commercial success was based. This was sufficient to amount to an infringement of his copyright.
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 International News Service -v- Associated Press; 1918 - [1918] 248 US 215

 
 British Actors Film Company Limited & co -v- Glover; 1918 - [1918] 1 KB 299
 
Weld-Blundell -v- Stephens [1919] 1 KB 520
1919
CA
Bankes LJ
Defamation, Intellectual Property
The exception to the obligation not to disclose confidential information is limited to the proposed or contemplated commission of a crime or a civil wrong.
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Weld-Blundell -v- Stephens [1920] AC 956
1920
HL
Lord Sumner, Lord Wrenbury
Intellectual Property, Damages
A physical cause may be irrelevant as a matter of law. The law is concerned not with causation, but with responsibility. Lord Sumner said: "more than half of human kind are tale-bearers by nature".
Where a legal wrong was committed without loss or damage being sustained, and a financial remedy was the only remedy available, the court could award a nominal sum.
Lord Wrenbury said: "It has, I think, long been settled law that if an act is manifestly unlawful, or the doer of it knows it to be unlawful, as constituting either a civil wrong or a criminal offence, he cannot maintain an action for contribution or for an indemnity against the liability which results to him therefrom."
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Albert -v- Hoffnung & Co Ltd (1921) 22 SR (NSW) 75
1921

Harvey J
Intellectual Property, Commonwealth
(Court of Appeal of New South Wales) 'Knowledge' means . . notice of facts such as would suggest to a reasonable man that a breach of copyright law was being committed."
1 Citers


 
Tate -v- Thomas [1921] 1 Ch 503
1921


Intellectual Property
It is not enough to claim joint authorship in a play that a contributor suggested a comic routine or a plot.
1 Citers


 
British Thomson-Houston Company Ltd -v- Corona Lamp Works Ltd (1922) 39 RPC 49
1922
HL
Lord Shaw of Dunfermline
Intellectual Property
The claim required the filament of tungsten used in the lamp to be "of large diameter". The Court of Appeal had accepted that the word "large" was ambiguous in that it did not enable the skilled person to decide when the claim was infringed. Held: The view of the Court of Appeal was rejected. If the skilled person reading a patent claim would quickly realise that one method would work and another would fail, the specification is not insufficient because the claim is expressed in terms broad enough to include both methods. "It is easy, whenever language of generality and relativity applicable to size, measure, weight or the like have been employed, to put puzzles which might indicate that, at certain points, you are at that thin strip of mechanical territory in which, on the one side, there might be failure, and, on the other, success. But the reply to such criticism is that that is not how practical men work. They work to achieve success, and if, adopting the broad lines laid down in a specification, they do not find any real difficulty in achieving success, this may not conclude the matter, but it goes far to show that the vagueness of the specification has not mislead them – practical people who were not seeking for failure but for success – had not caused the invention to fail to reach their mind, but has, on the contrary, for all practical purposes, guided them, and that without difficulty, towards the success which prior to that no experiment nor invention had achieved. I think there is no rule, whether of benevolent or malevolent construction, which should apply to patent specifications. A specification must take its rank among all ordinary documents which are submitted to a reader for his guidance or instruction, and a reader ordinarily intelligent and versed in the subject-matter. Such a reader must be supposed to bring his stock of intelligence and knowledge to bear upon the document, not unduly to struggle with it, but anyhow to make the best of it; if, as the result, he understands what the invention is, can produce the object and achieve the manufacture by the help of the written and drawn page, then the subject-matter of the invention cannot fail on the head of vagueness." and "And as to the facts of the present case, there is no one, from beginning to end of it, who denies that the description in the Specification could be followed so as to produce the effect so much and so long desired. The one lamp-maker in the case is Mr. Swinburne, and he says, in effect, and says truly, that the invention produced a revolution, that as for working it out its explanation was plain and simple, and that, with the Specification in hand, the article embodying the invention could be made. I attach no weight to the suggestion in argument that you may extend your experiments of large and small in such a way as to come to a point at which the merit evaporates, because in all such cases, in which there is an ambit of the application of a principle, there must, or there may, come a point which is, as I have said, the outer edge of that ambit. The answer to which is, there is nothing intricate in the experiment: keep in view what you want to achieve, apply the principle reasonably and you will have success. But do not blame the patentees for vagueness if he accepts the common-sense rule that in applying an invention within its successful ambit it is expected that those operating the manufacture will be honestly looking, not to failure, but for success in the range in which the principle is applied."
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Harold Drabble -v- Hycolite Mfg Co [1923-8] MCC 322
1923


Intellectual Property

1 Citers


 
O Mustad & Son -v- Dosen and Another Unreported, 1923
1923
CA
Lord Justice Bankes, Lord Justice Atkin
Intellectual Property
There had been a discussion as to what a trade secret might be:- “The learned Judge discussed with the Jury what constitutes a trade secret, but of course it is no good discussing what constitutes a trade secret if the person who is the owner of the particular thing which is claimed to be a trade secret has never made a secret of it. For instance, it is no use suggesting that Thoring's machine was a trade secret if as a matter of fact Thorings had allowed people to inspect the machine during construction or had exhibited it at a trade exhibition or something of that kind. It is no use saying it is very valuable; it is no use saying it might have been a trade secret if I had locked it up and allowed nobody to have access to it, and allowed nobody except a particular man to know how it was constructed, and so forth. No evidence seems to have been given about it – well, I will not say no evidence seems to have been given about it but it seems to have been treated at the trial as though the machine was a trade secret of Thoring's, and a question was put to the Jury, and the only question put to the Jury was on the footing apparently that it was a trade secret, and that in spite of the fact that the only man who knew anything really about it (Dosen) did say, and said more than once in his evidence, that it never was a secret, and that Thorings never treated it as a secret, and that it was quite open to everybody in the works to know exactly what it was and how it had been made, and the progress it was making and all the rest of it. It does seem to me, when one is considering what ought to be done in this case, one cannot overlook the fact that there was before the learned Judge, and there was before Counsel, evidence that this machine really – if the point had been properly investigated – turned out not to be a trade secret at all. However, that point apparently has never been decided.” and “It seems to me that once the patent question is admitted to be open to the Defendants, it being admitted that the patent certainly covers the heart of Thorings' machine, no Injunction ought to be granted; it follows therefore that, the claim for damages being jettisoned, and upon the facts as they ultimately emerged, no Injunction ought to have been granted, the Plaintiffs must fail in the action and that the Verdict and Judgment must be set aside and must be entered for the Defendants”.
Lord Justice Atkin
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MacMillan & Co Ltd -v- Cooper (1924) 40 TLR 186; (1923) 93 LJPC 113
1923
PC
Lord Atkinson
Intellectual Property
The purpose of copyright is to protect from misappropriation the skill and labour of the author which is expended on the production of the original work. Anyone can copy the source material. As regards copyright in textbooks containing excerpts from existing works with notes for students: "it is the product of the labour, skill and capital of one man which must not be appropriated by another, not the elements, the raw material, if one may use the expression, upon which the labour and skill and capital of the first have been expended. To secure copyright for this product it is necessary that labour, skill and capital should have been expended sufficiently to impart to the product some quality or character which the raw material did not possess, and which differentiates the product from the raw material."
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 O Mustad & Son -v- Dosen and Another; O Mustad & Son -v-Allcock; HL 1924 - [1964] 1 WLR 109; [1963] 3 All ER 416

 
 Smith -v- Grigg Ltd; CA 1924 - [1924] 1 KB 655 CA; 93 LJKB 237; 130 LT 697; 41 RPC 149; 68 SJ 561; 40 TLR 248

 
 Joseph Rodgers & Sons Ltd -v- W N Rodgers & Co; 1924 - (1924) RPC 277

 
 Performing Right Society Limited -v- London Theatre of Varieties Limited; HL 1924 - [1924] AC 1; [1923] All ER Rep Ext 794

 
 Evans -v- E Hulton & Co Ltd; ChD 1924 - [1923-8] MCC 51; (1924) 131 LT 534

 
 British Oxygen Company Limited -v- Liquid Air Limited; 1925 - [1925] 1 Ch 383
 
Falcon -v- Famous Players Film Co [1926] 2 KB 474
1926
CA
Bankes LJ, Atkins LJ
Intellectual Property
The defendants hired a film to a cinema. The film was based on the plaintiff's play. Held: The defendants infringed the plaintiff's exclusive right conferred by the 1911 Act to authorise a performance of the play. The hirer sold the use which was capable only of being an infringing use.
Bankes LJ followed Monckton v. Pathe Freres Pathephone Ltd. and Evans v. Hulton, to accept that for the purpose of the Act of 1911 the expression "authorise" meant "sanction, approve, and countenance", saying: "to 'authorise' means to grant or purport to grant to a third person the right to do the act complained of, whether the intention is that the grantee shall do the act on his own account, or only on account of the grantor;"
Atkins LJ said: "to 'authorise' means to grant or purport to grant to a third person the right to do the act complained of, whether the intention is that the grantee shall do the act on his own account, or only on account of the grantor;"
Copyright Act 1911
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Chappell & Co Ltd -v- DC Thomson & Co [1928-35] Mac CC 467
1928
ChD
Farwell J
Intellectual Property
In a claim for copyright infringement, the lack of artistic value in a work was irrelevant.
1 Citers


 
BTH Co Ltd -v- Metropolitan Vickers Electrical Co Ltd [1928] 45 RPC 1
1928

Lord Dunedin
Intellectual Property
Lord Dunedin construed the claim in question and proceeded to consider the Tesla Patent, the alleged anticipation of the patent claim: "Now that being my view of the Claim, I turn to Tesla, and what I have to ask myself is this - Would a man who was grappling with Rosenberg's problem, without having seen Rosenberg's Patent, and who had Tesla's Specification in his hand, have said: "That gives me what I wish?" I do not think he would. I do not think it would have occurred to him that Tesla had actually solved a problem which was not before him by one of his arrangements used in a particular way - for that must be done, the switches must be operated in a certain procession - in a machine which was intended to solve another problem altogether."
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