Georgie Clayton 2022 ©
CLIP – Consolidation
Introductory remarks
Core IPRs
IPR What it does / protects Subsist by registration? Automatically? Has the IPR been infringed?
Registration = must be applied for and accepted *Below is a common framework to follow but the precise elements will vary according to
onto the relevant register (Intellectual Property which IP right is alleged to have been infringed.
Register held at the IPO) for the property to
subsist
Automatically = must meet a series of questions
of fact to subsist
Copyright Protects an original work against being copied Automatically 1. Does the C have a right to bring a claim? i.e., subsistence, duration,
ownership
Designs Protects the appearance of a product provided it has By Registration or automatically
some individual character 2. What is the infringing act?
There can be no infringement if done with the right owner’s consent.
Unregistered Designs Automatically 3. Was the infringing act done in relation to C’s right?
Trade Marks Protects brands (names, logos, other insignia by By Registration 4. What is / are the defence(s)?
which a brand is known). Either:
a) Argue that one the elements of the infringement is absent
Passing off *not strictly speaking Common law tort protecting the goodwill in a N/A
an IPR business attributable to an (unregistered) trade mark b) Knock out the claim by invalidating C’s rights, often by way of counterclaim
Breach of confidence *not Equitable cause of action which may be relied upon N/A c) Common law of acquiescence – C knew about D’s conduct without objecting
strictly speaking an IPR to prevent disclosure or use of information per se
provided it is confidential
d) Statutory defence
Patents Protect inventions so that the inventor of an advance By Registration
in technology can prevent competitors from using 5. What remedies is C entitled to?
the invention provided strict patentability criteria can
be met
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,Georgie Clayton 2022 ©
Injunctive relief
Interim injunctions and search orders
Financial remedies (compensatory damages or account of profits)
Order for the delivery and destruction of property
Declaration of validity
When assessing the above IPR, adopt the following approach:
1. Subsistence and Duration 2. Ownership 3. Infringement
Has the right arisen in the first place? If the right subsists, who can claim to own it and be in a position to enforce What is the scope of the protection afforded by the right?
it?
Is a registration regime available, for which the thing your client seeks to What acts, precisely, can the owner prevent a third party from doing?
protect qualifies? Is this the original owner or has the property been transferred?
Given that most (but not all) IP rights expire after a fixed period, is the right in
question still in force?
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Copyright – CDPA 1988
= protects the form of an expression of ideas – ‘works’
!/! Copyright cannot be registered anywhere so in a copyright claim, C must prove (1) that copyright subsists and (2) that C owns such copyright.
1. Is there a Only certain categories of ‘works’ are protected – if a work does not fall within one of the below then it is not We must first establish that copyright subsists in [NAME]’s work.
work? protected by copyright
The [WORK] is a;
s.1.1 CDPA: Literary work: s. 1(1)(a)/ s. 3(1)
Subsistence
Literary works: Any work, other than a dramatical or musical work, which is sung, written, Dramatic work: s. 1(1)(a)/ s. 3(1)
s. 1(1)(a) and or spoken and includes: s.3(1)
s.3(1) (a) A table or compilation
Musical work: s. 1(1)(a)/ s. 3(1)
(b) A computer program
Artistic work: s. 1(1)(a)/ s. 3(1); more specifically [a graphic work: s. 4(1)(a)
OR a work of architecture: s. 4(1)(b) OR a work of artistic craftsmanship: s.
(c) Preparatory design material for a computer program 4(1)(c)]
(d) A database – copyright here protects the arrangement of its Typographical arrangement of a published edition: s. 1(1)(c) / s. 8
contents, vs. the individual items of content
A database is a collection of independent works, data or other
materials which are arranged in a systematic or methodical
way and are individually accessible by electronic or other
means.
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Case law states that ‘original literary work’ is a composite term signifying a
work which affords information, instruction, or pleasure: Exxon Corporation
Insurance Consultants [1982].
Does include: exam papers, application forms, calendars, catalogues, lists of
football fixtures, headlines, play scripts, lyrics.
Does not include: single words; titles
Dramatic A work of action, with or without words or music which is capable of
works: s. 1(1) performance before an audience and needs to be performed for its full
(a) and s.3 realisation.
It includes dance and mime: s. 3(1).
Musical A work consisting of music, exclusive of any words or actions intended to be
works: s. 1(1) sung, spoken or performed with the music: s. 3(1).
(a) and s.3
Does include: tune for a song.
Artistic works: Restricted to the below three categories: s. 4(1)
s. 1(1)(a) and
s.4
Graphic works, Works of Works of artistic
photographs, architecture: s. 4(1) craftsmanship: s. 4(1)
sculptures, and (b) (c
collages irrespective
of artistic merit and
the author’s
intentions: s. 4(1)(a)
Graphic work Includes fixed This category is not
includes: painting, structures, parts of defined by statute so
drawings, fixed structures, whether something is
engravings, etchings, models of the or not AC is a question
diagrams, maps, foregoing. of fact.
charts and plans,
casts or models
made for purposes Not all building Case law suggests that
of sculpture, etc works are works of this expression: (1) is a
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