Tag: Intellectual Property

DM-Drogerie Markt -V- OHMI – Disenos Mireia (M): ECFI 25 Jun 2015

References: T-662/13, [2015] EUECJ T-662/13, ECLI:EU:T:2015:434
Links: Bailii
ECJ Judgment – Community trade mark – Opposition proceedings – Application for the Community figurative mark M – Earlier Community word mark dm – Relative ground for refusal – No similarity between the signs – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009
Last Update: 08-Sep-15 Ref: 549576

Windows ‘R’ Us (Trade Mark: Inter Partes): IPO 8 Aug 2006

References: [2006] UKIntelP o22406
Links: Bailii
Coram: Mrs J Pike
ICO Section 5(2)(b): Invalidity action failed. Section 5(3): Invalidity action failed
Section 5(4)(a): Invalidity action failed. Section 56(2): Invalidity action failed
The applicant in these proceedings is the owner of a number of registered marks (UK & CTM) such as TOYS’R’US, MUMS’R’US, BABIES’R’US, ‘R’US etc in a range of classes. It also claimed extensive user of its marks, particularly TOYS ‘R’ US, but the evidence filed to support this claim was not well focused. In its evidence it also provided brief details of a number of disputes where a decision had been in its favour.
In these proceedings the registered proprietor did not respond to the filing of the application for invalidity.
Under Section 5(2)(b) the Hearing Officer accepted that there was some similarity between the respective marks because of the presence of the element ‘R’US but he was unable to find any goods of services within the applicant’s specifications which were identical or similar to the building elements in the registered proprietor’s Class 19 registration. He, therefore, went on to find that the applicant failed on this ground.
As regards the ground under Section 5(3) the Hearing Officer noted that the applicant had supplied very limited information about the extent of its reputation in the UK. However, even if he accepted that it had the necessary reputation in its mark TOYS’R’US, which he knew was likely to be the case from his own knowledge, he considered that there were considerable differences between the respective marks and bearing in mind the differences in the respective goods, he did not see that there was any likelihood that the registered proprietor would gain an unfair advantage or that there would be any detriment to the reputation of the applicant’s mark. The applicant thus failed on this ground.
The applicant also failed on the grounds under Sections 5(4)(a) and 56(2) because the Hearing Officer was of the view that its case was no stronger in respect of these grounds as compared to the other grounds dealt with above.
Statutes: Trade Marks Act 1994 5(2)(b)

Abernethy v Hutchinson; 17 Jun 1825

References: (1825) 1 H&Tw 28, [1825] EngR 653, (1824-1825) 1 H & Tw 28, (1825) 47 ER 1313
Links: Commonlii
Coram: Lord Eldon LC
An application was made to restrain the Defendants from publishing, in ‘The Lancet,’ Mr Abernethy’s Lectures, which had been delivered extemporally. Lord Eldon, at first, refused the application; but afterward granted an injunction, in the ground that there was an implied contract between him and the parties who attended his Lectures, that they should not publish them.
This case is cited by:

  • Cited – British Steel Corporation -v- Granada Television Ltd HL ([1981] AC 1096, [1981] 1 All ER 452, [1980] 3 WLR 774)
    The defendant had broadcast a TV programme using material confidential to the plaintiff, who now sought disclosure of the identity of the presumed thief.
    Held: (Lord Salmon dissenting) The courts have never recognised a public interest right . .
  • Cited – Prince Albert -v- Strange ChD ((1849) 1 H & Tw 1, 2 De G & SM 293, (1849) 1 Mac & G 25, Bailii, [1849] EWHC Ch J20, [1849] EngR 255, Commonlii, (1849) 41 ER 1171, [1849] EngR 261, Commonlii, (1849) 47 ER 1302, (1849) 2 De Gex & Sim 652)
    The Prince sought to restrain publication of otherwise unpublished private etchings and lists of works by Queen Victoria. The etchings appeared to have been removed surreptitiously from or by one Brown. A personal confidence was claimed.
    Held: . .

Charles Jefferys v Thomas Boosey; 1 Aug 1854

References: [1854] EngR 816, (1854) 4 HLC 815, (1854) 10 ER 681, [1854] UKPC 28
Links: Commonlii, Bailii
Coram: Brougham, St Leonard LL
The object of 8 Anne, c. 19, was to encourage literature among British subjects, which description includes such foreigners as, by residence here, owe the Crown a temporary allegiance; and any such foreigner, first publishing his work here, is an ‘author’ within the meaning of the statute, no matter where his work was composed, or whether he came here solely with a view to its publication.
Copyright commences by publication; if at that time the foreign author is not in this country, he is not a person whom the statute meant to protect.
An Englishman, though resident abroad, will have copyright in a work of his own first published in this country.
B, a foreign musical composer, resident at that time in his own country, assigned to R, another foreigner, also resident there, according to the law of their country, his right in a musical composition of which he was the author, and which was then unpublished. The assignee brought the composition to this country, and, before publication, assigned it, according to the form required by the law of this country, to an Englishman. The first publication, took place in this country :
Held, reversing the judgment of the Court of Exchequer Chamber, that the foreign assignee had not, by the law of this country, any assignable copyright here in this musical composition.
Per Lords Brougham and St. Leonards.-Copyright did not exist at common law; it is the creature of statute.
This case cites:

Clarke v Tipping; 18 Apr 1846

References: [1846] EngR 548, (1846) 9 Beav 284, (1846) 50 ER 352
Links: Commonlii
Coram: Wigram VC
The Defendant had bribed the Plaintiff’s agent to make extracts of false entries from the books of the Plaintiff. The Plaintiff did not move for an injunction on the Defendant’s answer; but, on the cause coming on for hearing, it appeared that Clarke had filed another bill in the Rolls Court, and had obtained in that suit an inspection of those books; and therefore the bill was dismissed. But the principle that an agent could not be allowed to communicate the contents of his employer’s books to another person, and that that person could not publish the information so improperly obtained, was directly admitted by the Vice-Chancellor. A person guilty of bribery takes the knowledge he obtains with no better right to use it than the party communicating it; but here there is neither bribery nor fraud.
This case cites:

This case is cited by:

  • Cited – Prince Albert -v- Strange ChD ((1849) 1 H & Tw 1, 2 De G & SM 293, (1849) 1 Mac & G 25, Bailii, [1849] EWHC Ch J20, [1849] EngR 255, Commonlii, (1849) 41 ER 1171, [1849] EngR 261, Commonlii, (1849) 47 ER 1302, (1849) 2 De Gex & Sim 652)
    The Prince sought to restrain publication of otherwise unpublished private etchings and lists of works by Queen Victoria. The etchings appeared to have been removed surreptitiously from or by one Brown. A personal confidence was claimed.
    Held: . .
  • See Also – Clarke -v- Tipping ([1852] EngR 434 (A), Commonlii, (1852) 16 Beav 12)
    . .

Wilkins v Aikin; 4 Aug 1810

References: [1810] EngR 465, (1810) 17 Ves Jun 422, (1810) 34 ER 163
Links: Commonlii
The defendant was said to have copied works of the plaintiff. The court considered the defence of fair use.
This case is cited by:

  • Cited – Prince Albert -v- Strange ChD ((1849) 1 H & Tw 1, 2 De G & SM 293, (1849) 1 Mac & G 25, Bailii, [1849] EWHC Ch J20, [1849] EngR 255, Commonlii, (1849) 41 ER 1171, [1849] EngR 261, Commonlii, (1849) 47 ER 1302, (1849) 2 De Gex & Sim 652)
    The Prince sought to restrain publication of otherwise unpublished private etchings and lists of works by Queen Victoria. The etchings appeared to have been removed surreptitiously from or by one Brown. A personal confidence was claimed.
    Held: . .

Earl Cholmondeley v Lord Clinton; 3 Feb 1815

References: [1815] EngR 511, (1815) 19 Ves Jun 261, (1815) 34 ER 515
Links: Commonlii
An Attorney or solicitor cannot give up his client, and act for the opposite party, in any suit between them.
This case cites:

  • See Also – Earl Cholmondeley -v- Lord Clinton (Commonlii, [1789] EngR 567, (1789-1817) 2 Ves Jun Supp 570, (1789) 34 ER 1231)
    A solicitor even though he may not be continuing to act for a particular client, must never be permitted to disclose, to the injury of that client, matters of which he had learned whilst so employed. . .
  • See Also – The Earl of Cholmondeley -v- Lord Clinton (Commonlii, [1813] EngR 513, (1813) 2 Ves & Bea 113, (1813) 35 ER 262)
    . .
  • See Also – Earl Cholmondeley And Ann Seymour Damer -v- Lord Clinton And Others (Commonlii, [1815] EngR 448, (1815) G Coop 80, (1815) 35 ER 484)
    A solicitor for one of the parties in a suit cannot become the solicitor for the opposite party, though he is separated from the partnership which jointly were so employed on the other side, and the remaining partner still continues so employed, and . .

This case is cited by:

Murray v Elliston; 3 May 1822

References: [1822] EngR 284, (1822) 5 B & A 657, (1822) 106 ER 1331
Links: Commonlii
The defendant represented Lord Byron’s tragedy of ‘Marino Faliero, Doge of Venice,’ on the stage, with some alterations from the printed tragedy.
Held: The manager of a theatre having publicly represented for profit a tragedy, altered and abridged for the stage, without the consent of the owner of the copyright, was not liable to an action, although the tragedy had been previously printed and published for sale.
‘The line of demarcation betwixt law and ethics must be strictly observed, and internal actions must not be made the objects of law. This doctrine was fully recognised by the Romans: whence the maxim, ‘Interna non curat praetor.’ When this fundamental distinction is violated, a door is opened at once to the most injurious and arbitrary invasions of the rights of individuals by the ruling power: and in general, wherever the judicial power is allowed to encroach too far on the widely extended domain of moral duties, it is in danger of becoming inconsistent and unjust.’
This case is cited by:

  • Cited – Prince Albert -v- Strange ChD ((1849) 1 H & Tw 1, 2 De G & SM 293, (1849) 1 Mac & G 25, Bailii, [1849] EWHC Ch J20, [1849] EngR 255, Commonlii, (1849) 41 ER 1171, [1849] EngR 261, Commonlii, (1849) 47 ER 1302, (1849) 2 De Gex & Sim 652)
    The Prince sought to restrain publication of otherwise unpublished private etchings and lists of works by Queen Victoria. The etchings appeared to have been removed surreptitiously from or by one Brown. A personal confidence was claimed.
    Held: . .

Southey v Sherwood And Others; 18 Mar 1817

References: [1817] EngR 351, (1817) 2 Mer 435, (1817) 35 ER 1006
Links: Commonlii
Coram: Lord Eldon
Lord Eldon refused an injunction to restrain the publication of Wat Tyler, because he held the work itself to be of an injurious tendency; but he maintained the principle, that, if the work had been innocent in its character, the author would have been entitled to the protection of the Court; and held, that an author had a property in an unpublished work, independently of the statute of 8 Anne, c. 19.
This case is cited by:

  • Cited – Prince Albert -v- Strange ChD ((1849) 1 H & Tw 1, 2 De G & SM 293, (1849) 1 Mac & G 25, Bailii, [1849] EWHC Ch J20, [1849] EngR 255, Commonlii, (1849) 41 ER 1171, [1849] EngR 261, Commonlii, (1849) 47 ER 1302, (1849) 2 De Gex & Sim 652)
    The Prince sought to restrain publication of otherwise unpublished private etchings and lists of works by Queen Victoria. The etchings appeared to have been removed surreptitiously from or by one Brown. A personal confidence was claimed.
    Held: . .

MacMillan v Thomas Reed; PatCC 1993

References: [1993] FSR 455
Coram: Mummery J
(Patents County Court) Both parties published almanacs for yachtsmen. The plaintiff claimed copyright infringement and an injunction.
Held: An injunction was granted. Enough had been done by the plaintiff to show that in creating the work at issue, it had relied upon work labour and skills invested in an earlier version of the work. There was no issue for trial as to originality, and an injunction was appropriate.
This case is cited by:

  • Cited – Ludlow Music Inc -v- Williams and others ChD (Bailii, [2000] EWHC 456 (Ch), [2001] EMLR 7, [2001] FSR 19)
    The claimant sought damages for copyright infringement in respect of two works which parodied a song to which they owned the rights.
    Held: The amount copied, being as much as a quarter of the original work, meant that the claim was . .

(This list may be incomplete)
Last Update: 11-Nov-15 Ref: 272767

Samuel v Rogers; 17 Feb 1864

References: [1864] EngR 257 (A), (1864) 1 De G J & S 396
Links: Commonlii
This was an appeal from a decision of Vice-Chancellor Wood refusing leave to serve the sole Defendant, who was described in the bill as resident at Dublin, out of the jurisdiction, with a copy of the bill and interrogatories, and notice of motion for an injunction ‘at Dublin or elsewhere in Ireland.’
The bill sought an injunction against the Defendant, restraining him from advertising for sale any articles of clothing under any name in which the word ‘Sydenham’, to the use of which, as a prefix, the Plaintiff claimed an exclusive right, occurred ; and from selling any articles of clothing as and for ‘Sydenham’ articles, and from selling or offering for sale any articles of clothing not manufactured by the Plaintiff, in such manner and form as to represent or lead to the belief that the same had been produced by the PIaintiff ; and for an account and costs.

Macklin v Richardson; 5 Dec 1770

References: [1770] EngR 72, (1770) Amb 694, (1770) 27 ER 451
Links: Commonlii
A short-hand writer took down the words from the mouths of the actors on the stage playing the farce of ‘Love a la Mode’, and the Defendant afterward published them, and an injunction was granted to restrain him, on the ground that the author had not, by the public representation of the farce, parted with his exclusive right of publication.
This case is cited by:

  • Cited – Prince Albert -v- Strange ChD ((1849) 1 H & Tw 1, 2 De G & SM 293, (1849) 1 Mac & G 25, Bailii, [1849] EWHC Ch J20, [1849] EngR 255, Commonlii, (1849) 41 ER 1171, [1849] EngR 261, Commonlii, (1849) 47 ER 1302, (1849) 2 De Gex & Sim 652)
    The Prince sought to restrain publication of otherwise unpublished private etchings and lists of works by Queen Victoria. The etchings appeared to have been removed surreptitiously from or by one Brown. A personal confidence was claimed.
    Held: . .

(This list may be incomplete)
Last Update: 28-Feb-16 Ref: 374245

Millar v Taylor; 20 Apr 1769

References: [1769] EngR 44, (1769) 4 Burr 2303, (1769) 98 ER 201
Links: Commonlii
Yates J said: ‘It is certain every man has a right to keep his own sentiments if he pleases. He has certainly a right to judge whether he will make them public, or commit them only to the sight of his friends. In that state the manuscript is, in every sense, his peculiar property, and no man can take it from him, or make any use of it which he has not authorised, without being guilty of a violation of his property; and, as every author or proprietor of a manuscript has a right to determine whether he will publish it or not, he has a right to the first publication; and whoever deprives him of that priority is guilty of a manifest wrong, and the Court has a right to stop it.’
This case is cited by:

  • Cited – Prince Albert -v- Strange ChD ((1849) 1 H & Tw 1, 2 De G & SM 293, (1849) 1 Mac & G 25, Bailii, [1849] EWHC Ch J20, [1849] EngR 255, Commonlii, (1849) 41 ER 1171, [1849] EngR 261, Commonlii, (1849) 47 ER 1302, (1849) 2 De Gex & Sim 652)
    The Prince sought to restrain publication of otherwise unpublished private etchings and lists of works by Queen Victoria. The etchings appeared to have been removed surreptitiously from or by one Brown. A personal confidence was claimed.
    Held: . .

Pope v Curl; 17 Jun 1741

References: [1741] EngR 500, (1741) 2 Atk 342, (1741) 26 ER 608 (A)
Links: Commonlii
The defendant, on his answer being put in, moved to dissolve an injunction against his vending a book of letters from Swift, Pope,and others.
Held: A collection of letters as well as other books, is within the intention of the 8th of Queen Anne, the act for the encouragement of learning. The receiver of a letter has, at most, a joint property with the writer, and the possession does not give him a licence to publish.
This case is cited by:

  • Cited – Prince Albert -v- Strange ChD ((1849) 1 H & Tw 1, 2 De G & SM 293, (1849) 1 Mac & G 25, Bailii, [1849] EWHC Ch J20, [1849] EngR 255, Commonlii, (1849) 41 ER 1171, [1849] EngR 261, Commonlii, (1849) 47 ER 1302, (1849) 2 De Gex & Sim 652)
    The Prince sought to restrain publication of otherwise unpublished private etchings and lists of works by Queen Victoria. The etchings appeared to have been removed surreptitiously from or by one Brown. A personal confidence was claimed.
    Held: . .

Sports and General Press Agency v ‘Our Dogs’ Publishing Co: CA 1917

References: [1917] KB 125 CA
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.
This case is cited by:

  • Cited – Douglas etc -v- Hello! Ltd etc ChD (Bailii, [2003] EWHC 786 (Ch), Times 21-Apr-03, [2003] 3 All ER 996, [2003] EMLR 31)
    The claimants were to be married. They sold the rights to publish photographs of their wedding, but various of the defendants took and published unauthorised pictures.
    Held: The claimants had gone to lengths to ensure the commercial value of . .

IceTV Pty Ltd v Nine Network Australia Pty Ltd; 22 Apr 2009

References: [2009] AIPC 92-335, [2009] HCA 14, (2009) 239 CLR 458, (2009) 254 ALR 386, (2009) 83 ALJR 585, (2009) 80 IPR 451
Links: Austlii
Coram: French CJ
Austlii High Court of Australia – Intellectual property – Copyright – Literary work – Compilation – Infringement – Production by employees of Nine Network Australia Pty Limited (‘Nine’) of weekly schedules of television programmes to be broadcast on television stations within Nine Network (‘Weekly Schedules’) – Information from Weekly Schedules used by third parties, with licence from Nine, to produce ‘Aggregated Guides’ containing programme schedules for various television stations – Production by employees of IceTV Pty Limited of electronic programme guide for television using information from Aggregated Guides – Subsistence of copyright in each Weekly Schedule admitted – Alleged infringement of copyright by reproduction of substantial part of Weekly Schedules – Whether reproduction of ‘substantial part’ – Quality of part reproduced – Originality – Information/expression dichotomy – Appropriation of ‘skill and labour’ – Relevance of skill and labour devoted to programming decisions – Relevance of competing interests and policy considerations – Animus furandi.
Intellectual property – Copyright – Literary work – Compilation – Subsistence – Need to identify author, and time of making or first publication, of work – Originality – Kind of skill and labour required – ‘Sweat of the brow’ and ‘industrious collection’ compared with ‘creativity’.
Intellectual property – Copyright – Literary work – Compilation – Subsistence – Weekly Schedules produced using computer database – Whether database also work in suit – Whether Weekly Schedules same work.
Words and phrases – ‘animus furandi’, ‘author’, ‘compilation’, ‘information/expression dichotomy’, ‘originality’, ‘skill and labour’, ‘substantial part’.
This case is cited by:

International Flavors and Fragrances Inc; EPO 1984

References: [1984] OJ EPO 309
A patentee who wishes to complain of dealings in a product made by his patented process must rely on his process claim and article 64(2). The United Kingdom is the only Member State of the EPC which accepted product-by-process claims. The EPO will only accept a claim to a product defined in terms of its process of manufacture when the product is new in the sense of being different from any existing product in the state of the art but the difference cannot be described in chemical or physical terms: ‘This may well be the only way to define certain natural products or macromolecular materials of unidentified or complex composition which have not yet been defined structurally.’
This case is cited by:

Lord And Lady Perceval v Phipps; 3 Jun 1813

References: [1813] EngR 380, (1813) 2 Ves & Bea 19, (1813) 35 ER 225
Links: Commonlii
Copyright in private letters remained even after transmission and an injunction could be granted to prevent further repubication. However here where the defendant was relying upon the letters to disprove false allegations made against him, that copyright dissolved.
This case is cited by:

  • Cited – Prince Albert -v- Strange ChD ((1849) 1 H & Tw 1, 2 De G & SM 293, (1849) 1 Mac & G 25, Bailii, [1849] EWHC Ch J20, [1849] EngR 255, Commonlii, (1849) 41 ER 1171, [1849] EngR 261, Commonlii, (1849) 47 ER 1302, (1849) 2 De Gex & Sim 652)
    The Prince sought to restrain publication of otherwise unpublished private etchings and lists of works by Queen Victoria. The etchings appeared to have been removed surreptitiously from or by one Brown. A personal confidence was claimed.
    Held: . .

Duke of Queensberry v Shebbeare; 31 Jul 1758

References: [1758] EngR 214, (1758) 2 Eden 329, (1758) 28 ER 924 (B)
Links: Commonlii
The court considered the grant of an injunction to restrain publication of a manuscript of Lord Clarendon’s ‘History of the Reign of Charles the Second’ delivered to the defendant, but not for publication.
Held: The injunction was granted.
This case is cited by:

  • Cited – Prince Albert -v- Strange ChD ((1849) 1 H & Tw 1, 2 De G & SM 293, (1849) 1 Mac & G 25, Bailii, [1849] EWHC Ch J20, [1849] EngR 255, Commonlii, (1849) 41 ER 1171, [1849] EngR 261, Commonlii, (1849) 47 ER 1302, (1849) 2 De Gex & Sim 652)
    The Prince sought to restrain publication of otherwise unpublished private etchings and lists of works by Queen Victoria. The etchings appeared to have been removed surreptitiously from or by one Brown. A personal confidence was claimed.
    Held: . .

Cobbett v Ludlam, Executor of Oldfield; 26 Nov 1855

References: [1855] EngR 839, (1855) 11 Exch 446, (1855) 156 ER 906
Links: Commonlii
O, the defendant’s testator, instituted a suit in Chancery for the administration of the estate and effects of C, the plaintiffs testator. An order was made by the Court of Chancery, that the plaintiff be restrained by injunction from interferlng with the estate or effects of C. The plaintiff brought an action against the defendant for an alleged infringement by O of C’s copyright in certain books
Held: First, that the action was in disobedience of the order of the Court of Chancery, since the damages, when recovered, would be assets of C. in the plaintiff’s hands. Secondly, that under the 226th section of the Common Law Procedure Act, 1852, this Court had jurisdiction to stay proceedings in the action, although no writ of injunction had issued.
Statutes: Common Law Procedure Act 1852 226

Sir Charles Thompson And Others, Executors of Lord Chesterfield v Eugenia Stanhope, Widow, And John Dodsley; 23 Mar 1774

References: [1774] EngR 54, (1774) Amb 737, (1774) 27 ER 476
Links: Commonlii
Coram: Lord Apsley
Lord Apsley granted an injunction, on the application of Lord Chesterfield’s executor, to restrain the widow of his son from publishing letters which the son had received from Lord Chesterfield.
This case is cited by:

  • Cited – Prince Albert -v- Strange ChD ((1849) 1 H & Tw 1, 2 De G & SM 293, (1849) 1 Mac & G 25, Bailii, [1849] EWHC Ch J20, [1849] EngR 255, Commonlii, (1849) 41 ER 1171, [1849] EngR 261, Commonlii, (1849) 47 ER 1302, (1849) 2 De Gex & Sim 652)
    The Prince sought to restrain publication of otherwise unpublished private etchings and lists of works by Queen Victoria. The etchings appeared to have been removed surreptitiously from or by one Brown. A personal confidence was claimed.
    Held: . .

(This list may be incomplete)
Last Update: 04-Jan-16 Ref: 373910

Saunders And Benning v Smith And Maxwell; 22 Jun 1838

References: , [1838] EngR 772, (1838) 3 My & K 711, (1838) 40 ER 1100
Links: Commonlii
This case is cited by:

  • Cited – Prince Albert -v- Strange ChD ((1849) 1 H & Tw 1, 2 De G & SM 293, (1849) 1 Mac & G 25, Bailii, [1849] EWHC Ch J20, [1849] EngR 255, Commonlii, (1849) 41 ER 1171, [1849] EngR 261, Commonlii, (1849) 47 ER 1302, (1849) 2 De Gex & Sim 652)
    The Prince sought to restrain publication of otherwise unpublished private etchings and lists of works by Queen Victoria. The etchings appeared to have been removed surreptitiously from or by one Brown. A personal confidence was claimed.
    Held: . .

O (Peter) v F KG; 16 Dec 2003

References: [2006] ECDR 9
(Austrian Oberster Gerichtshof (Supreme Court)) The court considered a claim to copyright in photographs of grape varieties used as illustrations in a book. They were applying an approach to copyright based on the principle that the work must be the creator’s own intellectual creation.
Held: ‘In accordance with more recent jurisdiction of the finding Senate, photographs are to be considered photographic works in the sense of s.3(2) UrhG (Copyright Law), if they are the result of the creator’s own intellectual creation, with no specific measure of originality being required. What is decisive is that an individual allocation between photograph and photographer is possible in so far as the latter’s personality is reflected by the arrangements (motif, visual angle, illumination, etc.) selected by him. Such freedom of creation does certainly exist not only for professional photographers with regard to works claiming a high artistic level, but also for a lot of amateur photographers, who take pictures of everyday scenes in the form of photos of landscapes, persons and holiday pictures; also, such photographs shall be deemed photographic works, as far as the arrangements used cause distinctiveness. This criterion of distinctiveness is already met, if it can be said that another photographer may have arranged the photograph differently [ . . ]. The two-dimensional reproduction of an object found in nature is considered to have the character of a work in the sense of copyright law, if one’s task of achieving a representation as true to nature as possible still leaves ample room for an individual arrangement [ . . ].
This case is cited by:

Ann Paxton Gee v William Pritchard And William Anderson; 17 Jul 1818

References: [1818] EngR 605, (1818) 2 Swans 402, (1818) 36 ER 670
Links: Commonlii
The Lord Chancellor repudiated an argument that the publication of letters should be restrained, because their publication would be painful to the feelings of the Plaintiff; and said, ‘The question will be, whether the bill has stated facts of which the Court can take notice, as a case of civil property, which it is bound to protect.’
This case is cited by:

  • Cited – Prince Albert -v- Strange ChD ((1849) 1 H & Tw 1, 2 De G & SM 293, (1849) 1 Mac & G 25, Bailii, [1849] EWHC Ch J20, [1849] EngR 255, Commonlii, (1849) 41 ER 1171, [1849] EngR 261, Commonlii, (1849) 47 ER 1302, (1849) 2 De Gex & Sim 652)
    The Prince sought to restrain publication of otherwise unpublished private etchings and lists of works by Queen Victoria. The etchings appeared to have been removed surreptitiously from or by one Brown. A personal confidence was claimed.
    Held: . .

Millington v Fox; 23 Jan 1938

References: (1838) 40 ER 956, [1838] EngR 377, (1838) 3 My & Cr 338
Links: Commonlii
To establish passing off, it was no longer necessary to establish fraud in the use of a trading name, and it became dependent upon proof, inter alia, of misrepresentation.
This case is cited by:

  • Cited – Inter Lotto (Uk) Limited -v- Camelot Group Plc ChD ([2003] EWHC 1256 (Ch), Bailii)
    The claimant asserted that the defendant had infringed its goodwill in the name ‘Hot Picks’ the defendant argued that it was licensed to use the mark by the person who applied for its registration as a trade mark, and that the claim in passing off . .

IBM Corporation/Data processor network; EPO 1990

References: [1990] EPOR 91, 06/83
A new method of communicating between programs and data files within the computer, so that they operated effectively as a single entity, was held by the Board to be properly ‘regarded as solving a problem which is essentially technical’ and therefore it did not fall foul of art 52(2). While programs for computers were included in the items listed in Article 52(2), if the claimed subject matter had a technical character it was not excluded from patentability.
This case is cited by:

Laszkiewicz v OHMI – Capital Safety Group Emea (Protekt): ECFI 15 Jul 2014

References: T-576/12, [2014] EUECJ T-576/12
Links: Bailii
ECFI Judgment – Community trade mark – Opposition proceedings – Application for Community figurative mark PROTEKT – Community word marks PROTECTA – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation (EC) No 207 / 2009 – Article 75 of Regulation No 207/2009
Statutes: Regulation No 207/2009 75

Ultraframe (UK) Ltd v Eurocell Building Plastics Ltdand Another: CA 24 Jun 2005

References: [2005] EWCA Civ 761
Links: Bailii
Coram: Mummery, Jacob, Neuberger LJJ
Appeal against finding of non-infringement of patent.
This case cites:

Construccion, Promociones E Instalaciones -V- OHMI – Copisa Proyectos Y Mantenimientos Industriales: ECFI 4 Jul 2014

References: T-345/13, [2014] EUECJ T-345/13, ECLI: EU: T: 2014:614
Links: Bailii
Coram: M. Prek (Rapporteur), P
ECJ Judgment – Community trade mark – Opposition proceedings – Application for Community figurative mark ICC COPISA INDUSTRIAL – Spanish figurative mark earlier Cpi construccion promociones e instalaciones, and its trade name prior Construccion, Promotions e Instalaciones, SA-CPI – Relative grounds for refusal – Article 8 , paragraph 1 b), and paragraph 4 of Regulation (EC) No 207/2009 – No evidence of genuine use of the earlier mark – No evidence of use in the course of trade name previous trade

Young v White; 2 Dec 1853

References: [1853] EngR 1051, (1853) 17 Beav 532, (1853) 51 ER 1141
Links: Commonlii
To a bill for the infringement of a patent, the Defendant pleaded that the Plaintiff was not the first inventor. Held, that the Defendant need not answer any fact alleged by the bill, which would not be evidence to go to a jury on such an issue. As, for instance, the accuracy of the specification ; the novelty of the process ; the assignment af the patent ; the expenditure of money on it ; the obtaining Scotch and Irish patents for the process or allegations as to the opinions of third parties as to the invention, and the truth of the assertions of third parties respecting it, &c, &c.
On a motion for an injunction to restrain the alleged infringement of a patent, the Defendant insisted, first, on the invalidity of the patent; and, secondly, that he had not infringed it, and an action was directed. Afterwards, the Defendant pleaded in equity simply the want of novelty of the patent. This Court, on allowing the plea, gave the Plaintiff’ liberty to apply to modify the order made on the application for the injunction, so as to make it conformable to the issue tendered by the plea.

Hogg v Kirby; 15 Mar 1803

References: [1803] EngR 513, (1803) 8 Ves Jun 215, (1803) 32 ER 336 (B)
Links: Commonlii
Coram: Lord Eldon LC
Injunction to restrain publishing a Magazine as a continuation of the Plaintiff’s Magazine in numbers, and as to communications from correspondents, received by the Defendant while publishing for the Plaintiff ; not preventing the publication of an original work of the same nature, and under a similar title. The Plaintiff was proprietor of a work, published in monthly numbers under the title ‘The Wonderful Magazine’.
Held: In assessing damages in a passing off case, the court said, ‘what is the consequence in Law and in Equity? . . a Court of Equity in these cases is not content with an action for damages; for it is nearly impossible to know the extent of the damage; and therefore the remedy here, though not compensating the pecuniary damage except by an account of profits, is the best: the remedy by an injunction and account.’ The reason for the general rule in courts of equity that an injunction would be granted as a matter of course to restrain infringements of property rights was the inadequacy of damages as a remedy.’
This case cites:

  • See Also – Hogg -v- Kirby (Commonlii, [1789] EngR 1227, (1789-1817) 2 Ves Jun Supp 100, (1789) 34 ER 1013 (B))
    . .

This case is cited by:

  • Cited – HM Attorney General -v- Blake (Jonathan Cape Ltd third Party intervening) HL (Gazette 17-Aug-00, Times 03-Aug-00, House of Lords, Bailii, [2000] UKHL 45, [2000] 4 All ER 385, [2000] 3 WLR 625, [2001] 1 AC 268)
    The author had written his book in breach of his duty of confidence. Having signed the Official Secrets Act, he accepted a contractual private law duty. After conviction as a spy, the publication of the book was in breach of the undertaking by not . .
  • Cited – Ludlow Music Inc -v- Williams and others ChD (Bailii, [2000] EWHC 456 (Ch), [2001] EMLR 7, [2001] FSR 19)
    The claimant sought damages for copyright infringement in respect of two works which parodied a song to which they owned the rights.
    Held: The amount copied, being as much as a quarter of the original work, meant that the claim was . .

Horne Engineering v Reliance Water Controls; 10 Jun 1999

References: [2000] FSR 90
Coram: Pumfrey J
cw Action for infringement of European patent relating to thermostatic mixing valve.
This case is cited by:

  • Applied – McGhan Medical Uk Ltd -v- Nagor Ltd and Biosil Ltd PatC (Bailii, [2001] EWHC Patents 452)
    The claimants had a patent for breast (and other) implants, the surface of which was claimed to be an improvement. They claimed infringement, and the defendant challenged the validity of the patent as lacking novelty, obviousness, and that . .

Gyles v Wilcox, Nutt and Barrow; 6 Mar 1740

References: [1740] EngR 77, (1740) Barn C 368, (1740) 27 ER 682, [1740] EngR 78, (1740) 2 Atk 141, (1740) 26 ER 489 (C), [1740] EngR 90, (1740) 3 Atk 269, (1740) 26 ER 957 (A)
Links: Commonlii, Commonlii, Commonlii
Coram: Lord Hardwicke LC
Ratio The plaintiff bookmaker was publisher of Matthew Hale’s Pleas of the Crown. The first and second defendants hired the third to abridge it and they began to published the result as Modern Crown Law. The plaintiff sought to restrain further publication.
Held: The application failed. ‘The Stat. of 8 A. cannot be said to tend to a monopoly. The Stat, of 8 A. shall be said to be made for the publick Benefit and Advantage, by reason that it tends to the Advancement of Learning. This Statute must not be construed strictly, but according to the Intention of the Legislature. When Complaints have been made of a Book’s being printed contrary to the Statute, the only Question has been, Whether it is the same Book with the former?’
Ratio The Lord Chancellor said of the Act: ‘ . . When Complaints of this Sort have come before the Court,the single Question has constantly been, Whether the second Book has been the same Book with the former ? And where the second Book has no otherwise differ’d from the former than by reducing or shortning the Stile, or by leaving out some of the Words of the first Book, the second Book has been construed the same with the former. But where the second Book has been an abridgment of the former, it has been understood not to be the same Book, and therefore to be out of the Act.’
. . and ‘Whether the second Book is the same Book with the former is a Matter of Fact, and a Fact of Difficulty to be determined. It is hard to say in what manner the Court ought to determine this Fact ; and his Lordship said he could not see how it could be determined but by reading both the Books over, and that would be hardly proper for him to do.’
Statutes: Statute of Anne 1708
This case is cited by:

  • Cited – Prince Albert -v- Strange ChD ((1849) 1 H & Tw 1, 2 De G & SM 293, (1849) 1 Mac & G 25, Bailii, [1849] EWHC Ch J20, [1849] EngR 255, Commonlii, (1849) 41 ER 1171, [1849] EngR 261, Commonlii, (1849) 47 ER 1302, (1849) 2 De Gex & Sim 652)
    The Prince sought to restrain publication of otherwise unpublished private etchings and lists of works by Queen Victoria. The etchings appeared to have been removed surreptitiously from or by one Brown. A personal confidence was claimed.
    Held: . .

(This list may be incomplete)

Last Update: 25-Mar-16
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