BPP University College Of Professional Studies Limited (BPP)
Distinction level CLIP notes. These comprehensive revision notes cover the lectures and SGS1-10 class activities, solutions and SGS slides. All statutory provisions and examinable cases are highlighted. Useful exam tips as provided by tutors are also included and marked in red. I sat the CLIP exam ...
BPP University College Of Professional Studies Limited (BPP)
Legal Practice Course
Commercial Law and Intellectual Property
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Commercial Law and Intellectual Property
Commercial Law & Intellectual Property
Contents
1. Copyright
2. Rights in Designs
3. Registered Trade Marks
4. Passing off and Confidential Information
5. Patents -
6. Exploitation of IP Right
7. Sale of Goods
8. International Sale of Goods
9. Online Commercial Contracts and International Jurisdiction
10. Competition Law
Key Legislation
Intellectual Property (SGS1-6)
Copyright Designs and Patents Act 1988 (‘CDPA’)
Registered Designs Act 1949 (‘RDA’)
Trade Marks Act 1994 (‘TMA’)
The Patents Act 1977 (‘PA’)
Art 69 of the European Patent Convention
Sale of Goods (SGS7-9)
Sale of Goods Act 1979 (‘SGA’)
Unfair Contract Terms Act 1977 (‘UCTA’)
Incoterms 2010
Regulation (EU) No 1215/2012 (‘Brussels Regulation’)
Regulation (EC) No 593/2008 (‘Rome 1’)
Electronic Commerce (EC Directive) Regulations 2002 (‘EC Regs’)
Competition law (SGS10)
The Competition Act 1998 (‘CA’)
Commission Notice (2014/C 291/01) (‘NAOMI’)
Commission Regulation (EU) No.330/2010 (Vertical Agreement Block Exemption
(‘VABE’))
Key: Examinable case/ Illustrative purposes only
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, Commercial Law and Intellectual Property
SGS1 – COPYRIGHT
Copyright
Copyright, Designs and Patents Act 1988
Protects use of work/ideas once physically expressed (not the ideas themselves)
Right subsists automatically for protected works – not registerable
Copyright is not a monopoly right!
Copyright infringement structure
1. Subsistence and ownership
i. Identify and categorise work
ii. Fixation required?
iii. Original?
iv. Authorship and duration
v. Ownership
2. Infringement
vi. Infringing act?
vii. Without owner’s consent?
3. Comparison
viii. Causal connection: objective similarities
ix. Substantial part
4. Defences
5. Remedies
1. Copyright Subsistence and Ownership
Step 1: Literary works: s.1(1)(a) and s.3 CDPA
Identify and Artistic works: s.1(1)(a) and s.4 CDPA
categorise the o s.4(1)(a): graphic works, photographs, sculptures and
type of work collages
o s.4(1)(b): works of architecture (including models)
o s.4(1)(c): works of artistic craftsmanship
Typographical arrangement of published editions: s.1(1)(c) and s.8
Step 2: is Literary, dramatic or musical works: s.3(2) CDPA
Fixation o No protection unless recorded
required? Other works:
o Not required as they are recordable by nature (e.g. artistic
works)
o e.g. a painting has to actually be painted; photograph is not a
photograph unless it is fixed!
Step 3: Literary, dramatic, musical or artistic works
Original? o Must be original: s.1(1)(a) CDPA
o Original = not copied
Typographical arrangements
o Originality not required: s.1(1)(c) CDPA
o BUT should not be reproduced: s.8(2) CDPA
Step 4: Author
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Authorship Identify author to establish duration
and Duration o s.9(1) CDPA: Author is the person who creates the work
o s.9(2)(d) CDPA: Author of typographical arrangements is the
publisher of the relevant edition
o s.10(1) CDPA: When two or more authors’ contribution to
the work is not distinct, there is joint ownership
Duration
Copyright for works is the end of the year in which the author dies +
70 years: s.12(2) CDPA
s.12(8)(a)(i): if there is joint authorship, the death of the author shall
be construed as a reference to the death of the last of them to die
s.15: Typographical arrangements of published edition 25 years from
the end of the calendar year in which the edition was first published
Step 5: Author of work is usually the first owner of the copyright in it:
Ownership s.11(1) CDPA
Exceptions:
Employer is copyright owner if employees work is created in the
course of employment s.11(2) CDPA
Creator owns copyright in commissioned works
o Commissioner should include a term in the contract which
assigns ownership of copyright; or
o Secure license to use the commissioned work
2. Infringement
Step 1: (1) A person has performed a restricted act specified in s.16(1) CDPA
Infringing act? o s.16(1)(a) and s.17: Copying (reproducing in any material
form)
o s.16(1)(b) and s.18: Issuing copies of the work to the public
o s.16(1)(c) and s.19: Performing, showing or playing the work
in public
o Note: there is no statutory definition of ‘public’! You would
need as much detail about the particulars of the event +
research case law. Spot some of the issues that point towards
it being ‘public’ like no. of people at venue, how admission
was gained etc.
o s.17(3): “dimensional shift” copying
(2) Who is the infringer? person who does or authorises another
to do restricted acts s.16(2)
o e.g. on the case of a music performance:
o Musician (playing the piece)
o Couple (who have asked for it to be performed)
o Company that put the piece online – giving the message
encouraging people to use and play piece
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, Commercial Law and Intellectual Property
Step 2: Does Infringing act is performed without license or consent of the owners:
so without the s.16(2) CDPA
owner’s
consent
Practical steps:
If unsure of ownership Take down photos + reshoot
Ask for assignment/license
If typographical arrangement Reproduce yourself (unless copyright exists in the
literary work)
3. Comparison
Step 1: Causal A third party will only infringe copyright if:
Connection o (1) He has access to the work in concern
between C & When did the claimant create it?
D’s work? When did the defendant have access to it?
When did the defendant create the work?
o (2) The work is objectively similar
NOTE: Proving both the above shifts the burden to the defendant
to prove the work is not a copy of the claimant’s work
If you can prove objective similarity BUT NO ACCESS, the burden
of proof remains with the claimant
Step 2: Has the infringing act been done in relation to a ‘substantial part’ of
Substantial the claimant’s work: s.16(3)(a)
Part o (1) Quantitative test
Large portion
o (2) Qualitative test
Copied a very important part of the work
Designers Guild
Causal connection: objective similarities
Once access is established:
i. Identify non-commonplace features in the C’s work that the C
says were copied. (The court will ignore unimportant parts of
the C’s work: e.g., in software, routine instructions for the
computer)
ii. Compare the two works, and decide whether the similarities
are sufficiently close, numerous and extensive so as not to be
merely coincidence
Substantial part
If, and only if, a causal connection is established, compare the works
again to decide whether this relates to a substantial part:
iii. Consider the part(s) of the claimant’s work identified at (i)
above, their cumulative effect and their importance to the
claimant’s work as a whole.
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, Commercial Law and Intellectual Property
The copied features must be a substantial part of the claimant’s work,
they need not be a substantial part of the defendant’s work, which
could look very different overall
4. Defences
Statutory fair dealing: ss28-40 CDPA
Recording for purposes of time-shifting: s.70 CDPA
Electronic copying: s.28A CDPA
o Transient or incidental and an essential part of a
technological process
Elements of the claim have not been made out:
o C does not have copyright in the work e.g. not original
o Work is not copied (e.g. summary of information)
o C consented to use of the work (i.e. implied license)
o D has copied an insubstantial part
5. Remedies
Injunction s.96(2) CDPA
Damages or an account of profits: ss.96-97 CDPA
o Note: s.97(1) damages unavailable in respect of innocent
infringer
o Additional discretionary damages may also be awarded:
s.97(2)(a)-(b)
Order for delivery up: s.99 CDPA
Destruction (OFDU & destruction most likely for pirated goods)
Interim injunction and/or search order
Moral Rights
Personal to the author and cannot be assigned
Author will retain moral rights even if copyright in the work is assigned
Arise in relation to literary, dramatic, musical or artistic works and films
o Do NOT arise in relation to sound recordings, broadcasts or typographical
arrangements
s.77 CDPA: Right arises when the work is exploited commercially.
The ‘paternity’ Examples:
right Right of the author of a book to be named when the book is
published or when made into a TV play
Right of an artist to be named when painting exhibited in public
Right of director to be named in credits for the film
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, Commercial Law and Intellectual Property
s.80 CDPA: Gives the author the right to prevent others from altering his/her work if
this would amount to a mutilation of the work or harm its reputation
The ‘right of and integrity.
integrity’
Example:
Director may rely on right to prevent a digitally manipulated
version of the film being released if the end result is a derogatory
treatment of the film
s.84 CDPA: Right to object to false attribution of work.
(20 years) Examples:
Successful claim made by former cabinet minister against The
Evening Standard for printing a spoof diary purporting to be
written by the minister himself.
s.85 CDPA Right of privacy of certain photographs and films; gives subject of a
photograph/film the right to prevent further use if it was commissioned
for private purposes
Example:
Wedding photographs
EXAM TIPS
Causal connection is answered very poorly
Designer’s Guild is very poorly applied; for top marks, ensure you conduct a
thorough analysis
Under Designer’s Guild need to show D had access AND objective similarity (and
explain what those mean)
Deal with defences briefly; majority of the marks come from stages 1-3
-
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, Commercial Law and Intellectual Property
SGS2 – RIGHTS IN DESIGNS
Registered Design Right
Registered Designs Act 1949
Protects outward appearance of product or part of product resulting particularly
from its lines, contours, colours, shape, texture and materials or its ornamentation
(Design = Appearance)
Monopoly right – Gives owner exclusive right to use and can be infringed without
having to prove copying! s.7(1)
Registerability Criteria
Step 1: Design is the appearance of the product – s.1(3) RDA
Identify the Design can be 2D! (e.g. logo)
design Focus on lines, contours, colour shape, materials etc. (e.g.
positioning of amethyst on a pendant, curved shape of top etc)
Product = industrial or handicraft item, packaging, graphics etc s.1(3)
o Occupies 3D space
o Are human-made
Note: for a component of a product to have protection it must be
visible in normal use s.1B(8)(a)
Step 2: Is the Novelty
design new? Has the design been made available to the public? s.1B(5)
1B(2) RDA o Must be no design available which is identical or differs only
in immaterial details
Before the relevant date s.1B(7)
o RD = Date on which application is made
Exceptions & grace periods expired? s.1B(6)
o s.1B(6)(c) – 12 months for designer
o s.1B(6)(d) – 12 months for third party with license
o Note: If the product is not protectable by registration
because it falls outside of the grace period, you can rely on
UDR but it is weaker protection have to prove copying
Step 3: Does Individual Character
the design Is the overall impression it produces on the informed user
have different to existing designs available to the public?
individual o Overall impression
character? Probably need to look at existing designs to answer
s.1B(3) RDA definitively
Words like ‘distinctive’, ‘limited edition’ ‘one-off
unique design’ suggest individual character
o Informed user
More than the average consumer but not an expert
Step 4: Does Statutory Exclusions
the design s.1C(1) – Technical function; have to look that way to work
have fall o e.g. corkscrew (although note that the handle could be
within any designed in a variety of ways; there is design freedom here!)
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statutory s.1C(2) – ‘Must fit’; article connected to or placed around another
exclusions? article to perform its function
o E.g. lightbulb; although note exclusion of a particular feature
does not prevent the remainder of the design from being
registrable
s.1D – Design is not contrary to public policy/morality
Infringement
Step 1: Validity Ownership
and ownership Author is the person who creates it s.2(3) RDA
Author will be the first owner s.2(1) (Check who the reg’d proprietor
is)
Registration
IPO will NOT examine any design for novelty and will proceed
straight to registration
Registration is prima facie evidence the design was validly reg’d
Note: The owner of an earlier design will be able to bring an action
to invalidate a registration on the grounds of lack of novelty
s.11ZA(1)(a)
Duration
5 years from the date of application s.3C(1) and s.8(1)
Can be extended for 5 year periods up to a maximum of 25 years
s.8(2)
Check design reg’d in name of C
Check reg not expired + renewal fees paid
Step 2: (1) s.7(2) – provides a non-exhaustive list of activities that constitute
Infringing act use:
o making a product
o offering/ putting on the market
o importing or exporting such a product
o using such a product
(2) Will generally only infringe RDR if done for commercial purposes
s.7A(2)(a)
(3) WITHOUT CONSENT
Step 3: Defendant’s design must be compared with the claimant’s design as
Comparison of registered
designs If D’s design makes a different overall impression on the
informed user when compared to C’s registered design = NO
INFRINGEMENT
Who is the informed user?: Not average consumer but not an expert
o Could be a consumer if familiar with the products (e.g.
regular purchaser or trade buyer).
Remember: it is what is on the register that counts!!!
Step 4: Private acts done for non-commercial purposes s.7A(2)(a)
Defences Experimental purposes s.7A(2)(b)
Teaching purposes s.7A(2)(c)
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Use of component spare parts for repair of complex products s.7A(5)
– protects the market in spare parts from being monopolised
Prior use, in situations where two parties have independently
developed the same design which one has gone on to register s.7B
o Defence applies if D started commercialising the design in
good faith, or made serious and effective preparations to do
so before the C registered the same design
D can argue that C has not made out its case
o e.g. design creates a different overall impression
C’s design could never have been registered e.g. lacked
novelty/individual character s.11ZA
o Search for designs similar before date of application which
destroys novelty
Step 5: Injunction
Remedies Damages or account of profits (put the reg number on the product
so people can’t argue they weren’t aware of registration)
Order for destruction
Order for delivery up
Note: damages will not be available against the ‘innocent
infringer’ s.24B
Unregistered Design Right
Copyright Designs and Patent Act 1988
Protects SHAPES and CONFIGURATION whether internal or external of 3D designs
s.213(2) CDPA
Species of copyright Must prove deliberate copying
Gives basic protection to designs that do not deserve copyright protection (e.g.
functional items). THIS IS THE FALL-BACK WHEN NO OTHER RIGHTS APPLY
UDR subsistence
(1) Features of a design which are protectable under UDR – s.213(2)
o For purposes of UDR, design is a products 3D shape
(2) Criteria for protection:
o Design must:
Be Original – i.e. Not copied – s.213(1)
Not be common place in the field in question – s.213(4)
(3) Arises automatically when shape of an article is recorded in a ‘design document’
or by making it s.213(6)
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