IPEC Small Claims Track IP Litigation in Wales

Author Ham II Licence CC BY-SA 3.0 Source Wikipedia Cardiff Crown Court

Jane Lambert

Suppose you are a photographer in Pwllheli and someone from Conwy copies one of your photos of Yr Wyddfa and posts it on his website without your permission.  You ask him politely to take it down but he ignores your emails calculating that it would be more trouble than it is worth for you to sue him.

You are pretty incensed and consider your options.  You google "IP", "enforcement", "wales" and find my article Enforcing Intellectual Property Rights 16 April 2019.  You discover that you have two choices. You can issue proceedings against him out of the Caernarforn Justice Centre as it is one of the Chancery District Registries mentioned in para 16.2 of the Part 63 Practice Direction or you can bring a claim in the Small Claims Track of the Intellectual Property Enterprise Court ("IPEC").

If you issue out of Caernarfon costs are unlimited even in the County Court.  The judges who hear your case may not be IP specialists.  The trial could take place at a hearing centre miles away from Caernarfon.  In the Small Claims Track, you would get a specialist judge and your liability for costs is limited to a few hundred pounds.  But IPEC is in London.  It has only tried a case outside the capital once in its history.  You and your opponent both live in North Wales.

From October 2019 there will be an alternative, The government has announced plans in the new Intellectual Property Enterprise Court Guide to appoint district judges in Cardiff, Manchester and the other Business and Property Courts outside London to hear IP cases in the Small Claims Track (see The New IPEC Guide 4 July 2019). I have discussed how this will be done in Cardiff in Small Claims Track IP Litigation in Bristol and Cardiff on 10 July 2019 in NIPC Severn and in Manchester in Small Claims Track IP Litigation in Manchester also on 10 July 2019 in IP Northwest.  For parties in North Wales, Manchester may be more convenient than Cardiff. Also, there is nothing to stop the district judge from hearing the action in Caernarfon or some other local trial centre if a court can be made available for him or her.

The key thing to remember whether you are a solicitor, patent or trade mark attorney litigator or litigant in person is to file through the CE-File System and choose Cardiff or Manchester.  There is a useful video below from the Courts and Tribunal Service that shows how to do it:


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Anybody wanting to discuss this article or IP litigation generally can call me on 020 7404 5252 during office hours or send me a message through my contact form.

"From Plants to Bio-Based Products" Motivation and Mutual Learning Workshop in Aberystwyth

Round table discussions in full swing at our @biovoices workshop today on #challenges & #opportunities for development and #scale-up of #biobased products in Wales @ibers_aber @RhondaMinerva @wefowales #collaboratingwithindustry pic.twitter.com/JJzHWdNH5z

— BEACON Wales (@beaconwales) June 19, 2019

Jane Lambert

Last Wednesday I attended a workshop in the William Davies Hall at the Institute of  Biological, Environmental & Rural Sciences ("IBERS") of Aberystwyth University. The theme of the workshop was "From Plants to Bio-Based Products The Challenges to and Opportunities for Development and Scale-up in Wales." The event was hosted by Beacon Biorefining in association with Minerva Communications Ltd and the Biovoices consortium. Over 50 stakeholders participated in the event representing the Welsh government, the universities, the professions and various sectors of Welsh agriculture and industry.

The attendees were seated on a number of tables each with its own moderator and rapporteurs.  Each table was asked to discuss four topics:

• Challenges - What are the issues preventing progression and development of bio-based sectors and products in Wales?
• Opportunities - What are the opportunities for the development of bio-based sectors and products in Wales?
• Success Stories - UK companies and industrial approaches to develop the bioeconomy that have reached higher TRL levels and market acceleration, and
• How to progress the Welsh bio-based sector? Top level points to share.

Each topic was introduced by one or more short presentations.  Prof. Iain Donnison, the director of IBERS welcomed the audience and set out the aims of the workshop. Speakers from Aber instruments, Beacon and other companies introduced their businesses and the work that they do. Those speeches showed the breadth of the bio-economy in Wales. Rob Elias of Beacon spoke of the business opportunities provided by the bio-economy while Ian Holmes of Innovate UK spoke of the funding opportunities. Joe Gallagher, head of industrial biotechnology at IBERS, spoke about some of the industrial projects in this sector from British Sugar's plant at Wissington to even more impressive installations in China and the USA.

As the only intellectual property specialist in the room I stressed the importance of protecting investment in technology, branding and design. One of the challenges affecting the bio-sector as much as the rest of the economy is that EU trade marks and Community designs and plant varieties will cease to apply to the UK if the UK leaves the EU without a withdrawal agreement on 31 Oct 2019. At the very least, holders of EU trade marks, registered Community designs and plant varieties will have to register national trade marks, designs and plant varieties. Separate proceedings will be necessary in the UK and EU if any of those IP rights is infringed simultaneously here and in one or more EU member states.

When asked what message the sector should give to the new prime minister, I suggested that the new government should think yet again about how to reduce the risks and costs of obtaining and enforcing IP protection, particularly if the UK has to withdraw from the Unified Patent Court and the unitary patent. Finally, I added that the food and farming sectors will have to get used to a national scheme for protecting designations of origin and will have to reacquaint themselves with national plant variety protection.

On a general level, there was a lot of enthusiasm for clusters. I argued that clusters required more than geographical proximity and that they have to be based on natural affinity rather than the wishes of civil servants. I pointed to clusters in the UK that worked such as Silicon Roundabout in London and the Cambridge Cluster. Those were more than a few university spin-offs and start-ups who happened to be in the same area. They were a community of entrepreneurs, angels, private equity and specialist financial and professional services sharing similar aspirations and a common enterprise culture.

I have detected signs of that happening - albeit on a very small scale - around Bangor with the Menai Science Park and the Pontio Arts and Innovation Centre. I had learned about some remarkable business successes in that region such as Halen Môn. The proprietors of that enterprise had diversified from running a sea zoo as a tourist attraction to extracting salt from seawater, creating entirely new products like smoky water. In a sense, their enterprise had moved full circle as they were attracting tourists to their extraction facility.  I suggested that something similar might be happening around Aberystwyth and other regions of Wales.

Anyone wishing to discuss this article or the issues mentioned in it should call me on 020 7404 5252 during office hours or send me a message through my contact form.

Copyright, Poetry and Wales

Jane Lambert

Copyright is a very useful intellectual property right. Unlike patents, trade marks and registered designs, copyright does not have to be registered with the Intellectual Property Office. It comes into being automatically in the UK as soon as the conditions for subsistence are met.  Copyright also subsists simultaneously in works that have been created by British nationals or residents in all countries that are party to an agreement with HM Government for the reciprocal protection of the literary and artistic works of each other's nationals or residents.

In this country, copyright subsists in original artistic, dramatic, literary or musical works, broadcasts, films and sound recordings and typographical arrangements of published works.  However, it has been argued before the Court of Justice of the European Union that copyright can subsist in the taste of a foodstuff because art 2 (1) of the Berne Convention defines"literary and artistic works" so as to include every production in the literary, scientific and artistic domain, whatever the mode or form of its expression may be (see my case note on Levolo Hengolo BV  v Smilde Foods BV ECLI:EU:C:2018:899, [2018] EUECJ C-310/17, EU:C:2018:899 (13 Nov 2018)).

"Artistic works" include architects' plans. artwork for surface decoration, logos, web pages, photographs and some high-value handicrafts such as apparel, furniture, jewellery, pottery and light fittings. "Dramatic works" can include screenplays and choreography as well as plays, "Literary works" can include computer code, directories, compilations of statistics, advertisements and brochures as well as poems and novels. "Films" can include animations and videos and "sound recordings" MP3 files.

Copyright confers on the author of a work, his or her employer or assignee the exclusive right to copy, publish, lend or rent, perform, communicate, translate or otherwise adapt the work without his or her licence.  There are a number of exceptions to that right and the copyright owner's licence can sometimes be inferred. However, anyone who does any of those things without such licence and outside any of the exceptions is said to infringe copyright. Copyright can also be infringed by importing, possessing, selling or offering for sale or hire, exhibiting or otherwise distributing an infringing copy of a copyright work knowing or having reason to believe it to be such.

Infringers can be sued for copyright infringement in the High Court or County Court sitting in Caernarfon, Cardiff or Mold, the Royal Courts of Justice in London or any of the other hearing centres in England where there is a Chancery  District Registry. Remedies can include an injunction (order of the court to stop, refrain from or occasionally do a specified act), destruction or delivery  up to the claimant of infringing copies, payment of damages for the claimant's loss or the surrender of the defendant's profits from the infringement, publication of the finding of infringement in the press or other media and reimbursement of the costs of bringing the claim.  Infringement on an industrial scale is also an offence carrying a maximum sentence of 10 years imprisonment, an unlimited fine or both.

For claims under £500,000 that can be tried in 2 days or less, there is a special court based in London which can sit in Wales known as IPEC (the Intellectual Property Enterprise Court).  Copyright claims of £10,000 or less can be heard in the small claims track of the Intellectual Property Enterprise Court. All other claims should be brought in the Chancery Divison of the High Court of Justice or the County Court.

An interesting Welsh copyright case is Pablo Star Media Ltd v Bowen [2017] EWHC 2541 which I discussed in Copyright in Photographs - Pablo Star Media v Bowen 15 Oct 2017 NIPC Law.  The defendant had posted Dylan Thomas's wedding photo on the VisitWales website where it was seen by only a handful of people before it was taken down.  An infringement action wa\s brought in the IPEC small claims track where the deputy district judge awarded the copyright owner net damages of £88.90. The copyright owner appealed to the Enterprise Judge who found no error on the part of the district judge and dismissed the appeal.  As this was a lower award than many would have expected I posted links to other articles and case notes for infringing copyright in photos online.

Last year, Ballet Cymru created two ballets to some of Dylan Thomas's most famous poems which were read by Cerys Matthews which they called Dylan Thomas - A Child's Christmas, Poems and Tiger Eggs.  I saw the show at the Stanley and Audrey Burton Theatre in Leeds and the Pontio Centre in Bangor and reviewed their performances in Ballet Cymru's Dylan Thomas Programme: The Company's Best Work Ever 13 Dec 2018 Terpsichore, Before their show in Leeds Ballet Cymru invited me and other ballet students to their workshop where they taught us their setting of In My Craft or Sullen Art  (see More than a Bit Differently: Ballet Cymru's Workshop and the Launch of the Powerhouse Ballet Circle 29 Nov 2018 Terpsichore.

Dylan Thomas is one of my favourite poets and Robert Burns is another.  Not owning a picture with a Dylan Thomas connection I resorted to this photo of my shaking hands with Burn's "Wee sleekit, cowran tim'rous beastie" in the gardens of the Robert Burns birthplace museum.  Anyone wishing to discuss this article or copyright, in general, should call me on 020 7404 5252 during office hours or send me a message through my contact form.

Pitch Perfect Number Two

M-SParc (Menai Science Park)

Author Jane Lambert
© 2018 Jane Lambert: all rights reserved 

Jane Lambert

I was at M-SParc, the Menai Science Park, in Anglesey yesterday for Pitch Perfect 2, the second event at which local entrepreneurs pitch for funding for their business propositions.  I attended the first Pitch Perfect on 1 March 2019 and wrote about it in A Good Way to Spend St David's Day on 2 March 2019 in NIPC News.  This event was smaller than the last one but the quality of the business proposals was no less impressive.

Instead of separate contests for big investments, startups and students which took place last time, there was only one competition for two prizes.  One was awarded by the audience from their £10 entry fees. The other was awarded by the management.  As before, votes were cast and questions were put to the competitors through sli.do. There was a panel of experts who questioned the competitors on the details of their proposals. The audience contained at least one local angel as well as bankers, business advisers, business owners and friends and supporters of the competitors.  I was accompanied by a client from Yorkshire who had become a friend and who is now exploring the scope for licensing and other transactions in Northwest Wales.

The audience's favourite was Sbarduno, a project to encourage science teaching in Wales.  Those workshops can be given in either English or Welsh. Awen Haf Ashworth who made the pitch for the proposal has taught science to her own pupils in both languages. She presented her proposal in Welsh.  Sbrduno overtook a proposal by two recent graduates to identify and promote dementia friendly holiday accommodation in North Wales. Many of the proposals were altruistic as well as commercially viable such as a video game for mental healthcare developed by two young students, a mobile road safety device which won the management award a QR link for locating services and next of kin for vulnerable individuals.  My personal favourite was a social network for university students which reminds me very much of Facebook and could be just as big.

As before, visitors were offered refreshments on arrival and chilli con carne and vegetarian chile were served between the presentations and awards.  Several of the competitors asked me about patents, trade marks, confidentiality and IP generally.  I promised to return later in the year with a patent attorney who could carry out searches and advise on patenting and other issues.  If possible we shall try to include a speaker from the IPO and a specialist insurance broker.

Before Pitch Perfect 2 my guest and I visited the premises of Halen Mon which are located on the coast a few miles from M-SParc. We joined a conducted tour where we watched a video, saw the evaporation trays and packaging facility and tasted the company's products.  It is an example of the new businesses that are transforming the economy of Northwest Wales.  Its brand is protected not only by trade mark registrations and the laws of passing off but also by Council Regulation (EC) No 510/2006 on protected geographical indications and protected designations of origin.

Anybody wishing to discuss this article or topics arising from it should call me on 020 7404 5252 during office hours or send me a message through my contact page.

IP and Dance

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Jane Lambert

I once heard Cerys Matthews describe Ballet Cymru as "the pride of Newport and the pride of Wales". I would not dissent except to add that that it is also the pride of the whole UK.  The reason I mention the company today is that it is about to perform Romeo a Juliet at the Riverfront Theatre in Newport. It will then visit Bangor, Brecon, Porthcawl and Milford Haven as well as venues in England.  The company will visit the Pontio Centre at Bangor on the 4 June.  I was at the Pontio the last time Ballet Cymru visited that venue and was almost as impressed by the centre as I was by the entertainment. Northwest Wales is beautiful and the M-SParc (the Menai Science Park) has created an environment for knowledge-based businesses to flourish but enterprising, innovative and creative people also need the arts. The Pontio delivers the best on stage and screen.

Ballet Cymru's production is a great show.  One of the best interpretations of Shakespeare's tragedy that I have seen.  It stands comparison with Birmingham Royal Ballet's, English National Ballet's, the Mariinsky's. Northern Ballet's, Scottish Ballet's and even the Royal Ballet's, all of which I know. I have seen and reviewed Ballet Cymru's Romeo a Juliet twice (see A Romeo and Juliet for Our Times 7 Nov 2016 and They're not from Chigwell - they're from a small Welsh Town called Newport 14 May 2013 Terpsichore).

Ballet Cymru is based in Rogerstone which is a township just outside Newport. It would be wrong to call it a suburb of Newport even though it is within that local authority's boundaries because the folk who live in that part of Wales have a strong sense of local identity. Caerleon is also within the city limits but it has existed since Roman times. One of Ballet Cymru's neighbours is the Intellectual Property Office  which describes itself as "the official UK government body responsible for intellectual property (IP) rights including patents, designs, trade marks and copyright."

Copyright protects the work of artists, broadcasters, composers, dramatists, filmmakers, publishers, recording studios other creative persons from unlicensed plagiarism and other exploitation.  Unlike patents, trade marks and registered designs, it does not have to be registered in the UK. The right comes into being automatically so long as the conditions for the subsistence of copyright are net. These are originality in the case of artistic, dramatic, literary and musical works and fixation and qualification in the case of all works. "Originality" used to mean independent skill and labour but is now intellectual creation.  "Fixation" means writing the work down or otherwise recording it. "Qualification" means the nationality or residence of the author or his employer or the place of publication. Basically, that includes a British national or resident or the national or resident of another country that provides reciprocal protection to the works of British authors under the Berne Convention or otherwise. 

Copyright is not necessarily infringed by making a similar work (see Davies v Wolverhampton Wanderers Football Club (1986) Ltd [2019] EWHC 1252 (Ch) (15 May 2019) which I discussed in Copyright: Davies v Wolverhampton Wanderers Football Club 25 May 2019 NIPC Law). It is infringed by copying or by doing in relation to the work one the other restrictive acts mentioned in s.16 of the Copyright, Designs and Patents Act 1988.  Similarity between two works and may suggest that there has been copying particularly when the author of the later work had the opportunity to see the earlier one but there may be many other reasons for such similarity such as functional exigency or sometimes mere coincidence.

A ballet is likely to consist of lots of copyright works.  There is the score for a start and then possibly the libretto.  Copyright can also subsist in choreography as a dramatic work so long as it is recorded in Benesch or some other notation (see my article Cracking Nuts - Copyright in Choreography 24 Nov 2011 IP Northwest).  The backdrop of the set and the designs of the fabric may well be original artistic works. There is also likely to be design right in the designs of the costumes and perhaps the props and sets. Finally, each and every one of the dancers and musicians has the right not to be filmed, taped or broadcast without consent under Part II of the 1988 Act (see Rights in Performances).

Actors tell each other to "break a leg" when they go on stage.  That is not really appropriate for dancers because they sometimes do.  They wish each other "toi, toi, toi", "chookas" or sometimes even "merde" instead.   Let's wish Ballet Cymru toi, toi, toi at the Riverfront tonight.   Do try to catch them on their tour of Wales if you possibly can.  If you want to discuss this article or copyright in general, call me on 020 7404 5252 during office hours or send me a message through my contact form.

Welsh University Start-Ups

Author J Newman & Co.
Source Wikipedia Aberystwyth University

 



















Jane Lambert

According to the BBC "universities in Wales are producing more graduate entrepreneurs than higher education generally across the UK(see Brian Meechan New business: Welsh universities' high start-up rate 2 May 2019). Having attended Pitch Perfect at M-SParc, having given talks there and at Aberystwyth University and having visited Bangor University's Pontio Arts and Innovation Centre, I am not surprised. Wales is a pleasant place to live, with fine research universities and, increasingly, a lively cultural scene.

But there is still more that can be done. Shortly before I spoke at the World IP Day celebration at MSParc I attended a presentation by Mo Aldalo, Tech Nation's Entrepreneur Engagement Manager for the North West at Sci-Tech Daresbury. I chatted with him briefly after his presentation, told him a little bit about M-SParc and its tenants and asked him whether Tech Nation would like to give a similar talk there. He replied that it would and I have followed that up with an email putting Mo in touch with M-SParc's management.

In my article Resources for Inventors and other Startups in Northwest Wales 5 Feb 2019 NIPC Inventors' Club I noted that "all the patent and trade mark attorneys in Wales practise in the south and mainly in and around Cardiff." The nearest ones appear to be in Chester and Liverpool and I shall try to persuade one of them to accompany me to Gaerwen when M-SParc holds another seminar on IP. Other speakers for the future could include a patent librarian to teach businesses owners and managers how to carry out simple patent, design and trade mark searches and an insurer specializing in IP insurance to talk about the various types of cover that are available.

Anyone wishing to discuss any of these topics should call me on 020 7404 5252 during office hours or send me a message through my contact page.

Helping Wales's Home Grown Inventors

Sir William Grove, Inventor

Author Lock & Whitfield
Source Wikipedia William Robert Grove

Jane Lambert

On the Inspiration page of its website, M-SParc (the Menai Science Park) notes that "Wales is home to some of the best scientists in the world".  Many such as Lyn Evans who was project leader of the large hadron collider at CERN are employed by organizations in the public or private sectors but there are also many others in all walks of life who simply have good ideas.

One such was Willian Robert Grove whose photo appears above.  He was a prolific inventor whose inventions include the gas voltaic battery which was the forerunner of the fuel cell, a technology upon which the world is likely to rely increasingly if it is to meet its carbon reduction targets. Like me, Grove was a barrister whose practice included patents. There are still plenty of inventors like Grove today and the government seeks to harness their potential in its industrial strategy (see "Harnessing the Potential of the UK's Home Grown Inventors" - The Government's Proposed Industrial Strategy 24 Jan 2017).

Such inventors do not get an easy time for all sorts of reasons.  It is one thing to create a new product or process but quite another to market it.  If an inventor tries to make and market his or her invention he or she has to go into business which is impossible for many.  Entrepreneurship and invention do not always - in my experience, rarely - go together.  If an inventor tries to license the invention to an established business he or she meets not invented here scepticism for he or she is, by definition, an outsider.

So what can private inventors do to lower the odds against success?  One thing that inventors in other parts of the UK have done is to learn from each other.  Inventors in Northwest England have formed Ideas North West which described itself as  "a membership group of Inventors based in the North West of England" with the aim of helping each other exploit their ideas for new products or services in order to gain commercial success.  They have their own invention promotion company called Ideas North North West Limited which appears to have helped several local inventors.

According to the Wessex Round Table of Inventors, there are similar groups in most parts of the United Kingdom though it seems none for Wales as yet.  There is already a lot of support available for inventors in North Wales around M-SParc and the Pontio FabLab as events like Pitch Perfect and last week's World IP Day celebrations show.  Those of us who took part in last week's seminar would like to build up a comprehensive support network like those provided by the British Library in London and Business and IP Centres in other English cities.  There will soon be another science park in Aberystwyth where similar networks could be developed and, of course, there is the Intellectual Property Office in Newport which already hosts regular patent clinics.

if, while such networks are being developed, any inventor needs help with patenting, licensing, enforcement or other legal issues or signposting to other services such as angels, product design engineers, IP tax experts and others, he or she should call me during office hours on 020 7404 5252 or send me a message through my contact page.