Intellectual Property - 1985- 1989

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This page lists 52 cases, and was prepared on 28 October 2012.

Harris' Patent [1985] RPC 19
1985 Falconer J	Intellectual Property, Employment	Casemap 1 Citers
	Harris was the manager of the Wey valve department of his employer. In August 1978 he was told he would be made redundant, and left in December. In the meantime he devised an improvement to the Wey valve and applied for a patent in January 1979. The employer claimed to be entitled to the invention and instituted the requisite proceedings. The Hearing Officer decided that the invention belonged to Harris. Held: The employer's appeal failed. The court did not decide the question of whether section 39 is declaratory of the pre-existing common law, but said that sections 39(1) and (2) and 42(1) and (2) showed that Parliament intended that rights to an employee's invention "are to be governed by, and only by, the provisions of s.39". He did not rule out considering the pre-existing case law for guidance but "it is the provisions of section 39 to which regard must be had for the law governing any employee's invention made after the appointed day". The court asked what were his normal duties at the material time, and whether the invention in suit was made by him in carrying out those duties. As to the first issue the employee's duty of fidelity to his employer did not assist in the formulation of the actual duties which the employee is employed to carry out. As to the second requirement "that is to say, whether the circumstances were such that an invention might reasonably be expected to result from his carrying out those duties, Miss Vitoria submitted that the circumstances referred to in paragraph (a) must be the circumstances in which the invention was made; and it seems to me that submission must be right. Mr. Pumfrey, in the course of his argument, pointed out that the wording of the paragraph was "an invention might reasonably be expected to result" and not "the invention might" and so on. But plainly, the wording "an invention" cannot mean any invention whatsoever; it is governed by the qualification that it has to be an invention that "might reasonably be expected to result from the carrying out of his duties" by the employee. That wording applies equally to the second alternative in paragraph (a), that of "specifically assigned" duties falling outside the employee's normal duties; and, therefore, in my judgment the wording "an invention might reasonably be expected to result from the carrying out of his duties" must be referring to an invention which achieves, or contributes to achieving, whatever was the aim or object to which the employee's efforts in carrying out his duties were directed, in the case of alternative (i) of paragraph (a) his normal duties being performed at the time; in the case of alternative (ii) of paragraph (a) the specifically assigned duties, that is to say, such an invention as that made, though not necessarily the precise invention actually made and in question. The circumstances to be taken into account for the purposes of paragraph (a) of section 39(1) will, of course, depend on the particular case, but clearly a circumstance which must always loom large will be the nature of the employee's duties, either his normal duties or the specifically assigned duties, as the case may be. The nature of Mr. Harris's normal duties have to be examined, therefore, from this aspect also."
	Patents Act 1977 39(1)(a)

Windsurfing International Inc -v- Tabur Marine (Great Britain) Limited [1985] RPC 59; [1985] FSR 59
1985 CA Oliver LJ, Jacob J	Intellectual Property	Casemap 1 Citers
	A patent was challenged where the windsurfboard had been shown as a primitive prototype to have been built and used in public by a twelve year old boy. The court set out the four steps required to be taken when ascertaining the validity of a patent: "The first is to identify the inventive concept embodied in the patent in suit. Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question. The third step is to identify what, if any, differences exist between the matter cited as being "known or used" and the alleged invention. Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention." Jacob LJ elaborated on what was required to establish an inventive step for the purposes of registration of a patent: "It is the inventive concept of the claim in question which must be considered, not some generalised concept to be derived from the specification as a whole. Different claims can, and generally will, have different inventive concepts. The first stage of identification of the concept is likely to be a question of construction: what does the claim mean? It might be thought there is no second stage – the concept is what the claim covers and that is that. But that is too wooden and not what courts, applying Windsurfing stage one, have done. It is too wooden because if one merely construes the claim one does not distinguish between portions which matter and portions which, although limitations on the ambit of the claim, do not. One is trying to identify the essence of the claim in this exercise. "
	Patents Act 1949 32(1)(e)

EMI -v- Kudhail [1985] FSR 36
1985 CA	Litigation Practice, Intellectual Property	Casemap 1 Citers
	An order was sought against unnamed defendants involved in copyright piracy. Held: The court was prepared to make an order against the named defendant on his own behalf and as representing all other persons engaged in the activity of which complaint is made. The common link afforded by that activity and the common interest in wishing to remain anonymous is sufficient to justify the order.

Klissers Farmhouse Bakeries Ltd -v- Harvest Bakeries Ltd [1985] 2 NZLR 129
1985	Commonwealth, Intellectual Property, Litigation Practice	Casemap
	An interlocutory injunction should be granted to restrain behaviour where the plaintiff had a realistic prospect of success, and overall justice required one to be ganted.

Lion Laboratories Ltd -v- Evans [1985] QB 526
1985 CA Stephenson LJ, Griffiths LJ	Intellectual Property	Casemap 1 Cites 1 Citers
	Lion Laboratories manufactured and marketed the Lion Intoximeter which was used by the police for measuring blood alcohol levels of motorists. Two ex-employees approached the Press with four documents taken from Lion. The documents indicated that the Lion Intoximeter had faults which could have resulted in a significant number of motorists being wrongly convicted. Lion started proceedings against their ex-employees and Express Newspapers Limited to restrain disclosure of the information as to the faults. They obtained an interlocutory injunction restraining breach of confidence and infringement of copyright. The defendants appealed. Held: The Court of Appeal allowed the appeal. The documents contained confidential information it would have been a breach of confidence to publish the information in them and an infringement of copyright to publish the documents themselves unless there were defences which permitted that in the public interest. Stephenson LJ The judge was "right to make no difference between confidence and copyright for the purposes of this case" and "The problem before the judge and before this court is how best to resolve, before trial, a conflict of two competing public interests. The first public interest is the preservation of the right of organisations, as of individuals, to keep secret confidential information. The courts will restrain breaches of confidence, and breaches of copyright, unless there is just cause or excuse for breaking confidence or infringing copyright. The just cause or excuse with which this case is concerned is the public interest in admittedly confidential information. There is confidential information which the public may have a right to receive and others, in particular the press, now extended to the media, may have a right, and even a duty to publish, even if the information has been unlawfully obtained in flagrant breach of confidence and irrespective of the motive of the informer. The duty of confidence, the public interest in maintaining it, is a restriction on the freedom of the press which is recognised by our law, as well as by article 10(2) of the Convention for the Protection of Human Rights and Fundamental Freedoms (1953) (Cmd. 8969); the duty to publish, the countervailing interest of the public in being kept informed of matters which are of real public concern, is an inroad on the privacy of confidential matters." There were four considerations. ". . .The public are interested in many private matters which are no real concern of theirs and which the public have no pressing need to know. Secondly, the media have a private interest of their own in publishing what appeals to the public and may increase their circulation or the numbers of their viewers or listeners; . . . Thirdly, there are cases in which the public interest is best served by an informer giving the confidential information, not to the press but to the police or some other responsible body. . . . Fourthly . . . "there is no confidence as to the disclosure of iniquity": and in 1984 extends to serious misdeeds or grave misconduct, he submits that misconduct of that kind is necessary to destroy the duty of confidence or excuse the breach of it, and nothing of that sort is alleged against the plaintiffs in the evidence now before the court." and "What makes this case so special is that the plaintiffs' right to keep inviolate the secrecy of the information which the defendants wish to publish is undisputed, and the only question for interlocutory decision is whether that right is outweighed by the public interest, not in exposing persons who may be guilty of offences for which they have not been punished, but in disclosing the risk of the plaintiffs being instrumental in punishing other people for offences which they may not have committed." "The issue raised by the defendants is a serious question concerning a matter which affects the life, and even the liberty of an unascertainable number of Her Majesty's subjects and though there is no proof that any of them has been wrongly convicted on the evidence of the plaintiffs' Intoximeter, and we certainly cannot decide that any has, we must not restrain the defendants from putting before the public this further information as to how the Lion Intoximeter 3000 has worked, and how the plaintiffs regard and discharge their responsibility for it, although the information is confidential and was unlawfully taken in breach of confidence." Griffiths LJ: "The first question to be determined is whether there exists a defence of public interest to actions for breach of confidentiality and copyright, and if so, whether it is limited to situations in which there has been serious wrongdoing by the plaintiffs – the so-called 'iniquity' rule. I am quite satisfied that the defence of public interest is now well established in actions for breach of confidence and, although there is less authority on the point, that it also extends to breach of copyright: see by way of example Fraser v Evans [1969] 1 QB 349; Hubbard v Vosper [1972] 2 QB 84; Woodward v Hutchins [1977] 1 WLR 760 and British Steel Corporation v Granada Television Ltd [1981] AC 1096. I can see no sensible reason why this defence should be limited to cases in which there has been wrongdoing on the part of the plaintiffs. I believe that the so-called iniquity rule evolved because in most cases where the facts justified a publication in breach of confidence, it was because the plaintiff had behaved so disgracefully or criminally that it was judged in the public interest that his behaviour should be exposed. No doubt it is in such circumstances that the defence will usually arise, but it is not difficult to think of instances where, although there has been no wrongdoing on the part of the plaintiff, it may be vital in the public interest to publish a part of his confidential information. Stephenson LJ has given such an example in the course of his judgment. I therefore agree with Leonard J that it is not an essential ingredient of this defence that the plaintiffs should have been guilty of iniquitous conduct".

Kalamazoo (Aust) Pty -v- Compact Business Systems Ltd (1985) 5 IPR 213; (1985) 84 FLR 101
1985 Thomas J	Commonwealth, Intellectual Property	Casemap 1 Cites 1 Citers
	(Supreme Court of Queensland) The case concerned the copying of a collection of accounting forms which when used together made up an accounting system. Some of the forms were intended to be used in a peg-board system in which writing on the top form was reproduced on the lower forms in a stack, the forms being held in the correct register by a system of punched holes, pegs and a clamp. Various collections of forms were sold by the plaintiffs, each collection being adapted for a particular purpose. Held: Layout, presentation and appearance may be the subject of copyright protection. A literary work is one that gives “information, instruction or pleasure in the form of literary enjoyment” and that is not a question of literary merit. Each collection or group of forms, designed to be used with each other, was entitled to protection as a compilation of the constituent forms even though the constituent forms were not wholly literary.
	Copyright Act 1911

Amstrad Consumer Electronics Plc -v- British Phonographic Industry Limited [1986] FSR 159
17 Jun 1985 ChD Whitford J	Intellectual Property	Casemap 1 Citers
	BPI as representative of copyright holders sought damages from the applicant saying that their two-deck cassette tape recording machines were tools for copyright infringement by deing designed to allow copying. The defendants now sought a declaration that the machines were lawful. Held: The declaration was refused. Amstrad were authorising infringement, were joint tortfeasors, and might be guilty of negligence and of inciting, procuring, aiding or abetting infringement contrary to law or equity.
	Copyright Act 1956

Amstrad Consumer Electronics Plc -v- British Phonographic Industry Limited [1986] FSR 159
29 Oct 1985 CA Glidewell LJ, Slade LJ, Lawton LJ	Intellectual Property, Torts - Other	Casemap 1 Cites 1 Citers
	Amstrad sought a declaration that their retailing of equipment with two cassette decks was not unlawful. A declaration was not granted because Amstrad might be guilty of a criminal offence. However in the absence of any evidence that Amstrad was acting in concert with members of the public, the Court thought that Amstrad's conduct was not tortious. Held: Thought the court disagreed with the trial judge's assertions as to et unlawfulness of Amstrad's actions, it refused a declaration. The concept of accessories is a familiar one in the criminal law, however, no authority shows that a person can be civilly liable as 'accessory' to the tortious act of another (whether the relevant tort arises under the common law or by virtue of statute) unless he is actually a joint tortfeasor or has procured or incited such act (as to which see below). The relevant question is simply whether Amstrad could be regarded as joint tortfeasor with those members of the public who infringed the copyrights. . The grounds upon which they are alleged to be joint tortfeasors are that . . 'the defendants knew before parting with each of the said machines that they were certainly (or in the alternative very probably) going to be used by members of the public to infringe one or more of the aforesaid copyrights to the damage of the copyright owners. Accepting that it has this knowledge, even this intention, does this render Amstrad itself an infringer and thus a joint tortfeasor? A long line of authority relating to patents but equally applicable to copyright, shows that it does not. There was no distinct tort of procuring or inciting infringement of copyright.
	Copyright Act 1956

Merlet and Another -v- Mothercare Public Ltd [1985] EWCA Civ 19
4 Nov 1985 CA Ackner, O'Connor, Slade LJJ	Intellectual Property	Casemap
	The plaintiff asserted copyright in a 'raincosy' which she said had been copied by the defendants.
	Link[s] omitted

Sevcon Ltd -v- Lucas CAV Ltd [1986] 1 WLR 462
1986 HL Lord McKay of Clashfern	Intellectual Property, Limitation	Casemap 1 Citers
	A claim was brought for the infringement of a patent. It was brought after the specification had been published but before the patent had been sealed. Held: Time might run from a date before the plaintiff was entitled to sue. The cause of action for patent infringement accrued after the application but before the grant. Lord McKay of Clashfern said: "If he were to institute proceedings for infringement before the patent for the invention was sealed, the procedural requirements of the proviso would not be satisfied but a statement of claim could not be struck out as disclosing no cause of action although it might be liable to be struck out as an abuse of the process of the court."
	Patents Act 1949 13(4)

Coca-Cola Co, In re [1986] 2 All ER 274; [1986] 1 WLR 695
1986 HL	Intellectual Property	Casemap 1 Citers
	The claimants had used the distinctive shape of their bottle to help advertise their soft drink. The registered design rights in the bottle had expired. Held: The House refused to allow trade mark law to be exploited and rejected the argument that the manufacturer of a beverage sold under a trade name had established a perpetual monopoly in and could prevent the copying of the shape of a bottle which was no longer protected by the Registered Designs Act 1949.

Associated Newspapers Group plc -v- News Group Newspapers [1986] RPC 515
1986 Walton J	Intellectual Property	Casemap 1 Cites 1 Citers
	The Sun printed copyright letters which had passed between the late Duke and Duchess of Windsor, but the exclusive rights to which had been obtained by another newspaper. As to dicta that use by a competitor is not fair: "That seems to be exactly what has happened in the present case. There is no blinking the fact that the Sun is trying to attract readers by means of printing these letters or extracts from letters."

Faccenda Chicken Ltd -v- Fowler [1987] Ch 117; [1986] 1 All ER 625
1986 CA Neill LJ	Intellectual Property, Employment	Casemap 1 Cites 1 Citers
	The appellant plaintiff company had employed the defendant as sales manager. The contract of employment made no provision restricting use of confidential information. He left to set up in competition. The company now sought to prevent him using confidential information for this purpose. Held: The information and the advantage flowing from it was obtained through dishonesty. The court set down the obligations of employees after leaving their employment with regard to confidential information acquired by them. Except in special circumstances, there is no general restriction on an ex-employee canvassing or doing business with the customers of his former employer. The employer can only succeed on the basis of an implied term if he can show improper use of confidential information tantamount to a trade secret. The court must consider: "(a) The nature of the employment. Thus employment in a capacity where "confidential" material is habitually handled may impose a high obligation of confidentiality because the employee can be expected to realise its sensitive nature to a greater extent than if he were employed in a capacity where such material reaches him only occasionally or incidently. (b) The nature of the information itself. In our judgment the information will only be protected if it can be properly be classed as a trade secret or as material which, while not properly to be described as a trade secret, is in all the circumstances of such a highly confidential nature as to require the same protection as a trade secret eo nomine. . (c) Whether the employer impressed on the employee the confidentiality of the information . . (d) Whether the relevant information can be easily isolated from other information which the employee is free to use or disclose." and "It is clearly impossible to provide a list of matters which will qualify as trade secrets or their equivalent. Secret processes of manufacture provide obvious examples, but innumerable other pieces of information are capable of being trade secrets, though the secrecy of some information may be only short-lived. In addition, the fact that the circulation of certain information is restricted to a limited number of individuals may throw light on the status of the information and its degree of confidentiality." Neill LJ restated the classification provided at first instance. "(1) Where the parties are linked by a contract of employment, their obligations are governed by the contract between the employee and the employer. (2) In the absence of an express term, the obligations of the employee in respect of the use and disclosure of information are governed by implied terms. (3) While the employee remains in the employment of the employer, the implied obligations impose a duty of good faith or fidelity on the employee. The extent of the duty of good faith will vary according to the nature of the contract. The duty of good faith will be broken if the employee makes or copies a list of the customers of the employer for use after his employment ends or deliberately memorises such a list, even though (except in special circumstances) there is no general restriction on an ex-employee canvassing or doing business with customers of his former employer. (4) After the termination of employment, the implied obligations becomes more limited in scope. A former employee is not allowed to use or disclose information which is of a sufficiently high degree of confidentiality so as to amount to a trade secret. The obligation does not extend to all information obtained during his employment and in particular may not cover information which is only confidential in the sense that unauthorised disclosure of such information to a third party while the employment subsisted would be a breach of the duty of good faith. (5) In determining whether any item of information is protected by the implied term after termination of employment, all the circumstances would be taken into account and in particular the following factors would be considered : (a) The nature of the employment—If the employment is in a capacity where confidential material is habitually handled this may impose a high obligation of confidentiality because the employee could be expected to realise the confidential nature of the information. (b) The nature of the information itself—The information is only protected if it can properly be classified as a trade secret or material which is in all the circumstances of such a highly confidential nature as to require the same protection as a trade secret. (c) Whether the employer impressed on the employee the confidentiality of the information. The attitude of the employer towards the information provides evidence which may assist in determining whether or not the information can properly be regarded as a trade secret. (d) Whether the relevant information can be easily isolated from other information which the employee is free to use or disclose. The Court did disagree with Goulding J that an employer can restrain the use of information in his second category (namely confidential information) by means of a restrictive covenant. A restrictive covenant will not be enforced unless it is reasonably necessary to protect a trade secret or to prevent some personal influence over customers being abused in order to entice them away.

Williamson -v- Moldline Limited and Others (1986) RPC 556
1986	Intellectual Property	Casemap 1 Cites 1 Citers
	The purpose of a Scott-Paine order is to impose on a party attacking the validity of a patent the obligation to take reasonable steps to ensure that the full attack is put before the patentee at the earliest time. The imposition of that obligation is said to be justified by the `notorious expense and legal complexity' of patent actions. The onus of proving that new material could not have been found with reasonable diligence lies on the defendant.

Paterson Zochonis & Co -v- Merfarken Packaging Ltd [1986] 3 All ER 522
1986 CA Goff LJ	Intellectual Property, Damages	Casemap 1 Cites 1 Citers
	The normal measure of damages for copyright infringement is the amount by which the copyright is depreciated, by the infringement, as a chose in action.

Def Lepp Music -v- Stuart-Brown [1986] RPC 273
1986 Sir Nicolas Browne-Wilkinson V-C	Intellectual Property	Casemap 1 Citers
	A claim to infringement of copyright by acts performed in the Netherlands and Luxembourg was not justiciable in England, because such a claim cannot satisfy the double-actionability rule, namely, that the relevant acts must be actionable in the foreign state and England.

Allen & Hanburys Ltd -v- Generics (U K ) Ltd [1988] 2 All ER 454; [1986] RPC 203
1986 Lord Diplock	Intellectual Property	Casemap 1 Citers
	A licence: "passes no proprietary interest in anything; it only makes an action lawful which would otherwise have been unlawful."

Columbia Picture Industries -v- Robinson [1986] FSR 367
1986 Scott J	Intellectual Property	Casemap 1 Citers
	The plaintiffs sought an injunction to restrain the defendants from knowingly infringing copyright in any film for the time being belonging to them or of which they were exclusive licensees. Held: It would be wrong in principle to grant an injunction the scope of which the defendants could not know and could not discover. There was no provision in the Copyright Act 1956 for presumptions as to the subsistence of copyright and its ownership to arise from labels or marks fixed to films. Injunctions were granted in relation to copyrights to which it had been established in the action that existing members were entitled.
	Copyright Act 1956

British Leyland Motor Corporation Ltd -v- Armstrong Patents Co Ltd [1986] AC 577; [1986] 2 WLR 400; [1986] 1 All ER 850; [1986] UKHL 7
1986 HL Lord Bridge, Lord Templeman	Intellectual Property, Consumer	Casemap 1 Cites 1 Citers
	The claimant’s product was made from drawings. The drawings were protected as copyright artistic works. They were reproduced in a three dimensional form by the claimant’s own products. Someone who copied the claimant’s products indirectly copied the copyright drawings. Therefore there was infringement. Held: Copyright could not be used to prevent the manufacture or sale of spares for industrial items. Lord Bridge said that the owner of a car: "must be entitled to do whatever is necessary to keep it in running order and to effect whatever repairs may be necessary in the most economical way possible." This was a right "inherent in the ownership of the car itself". In the case of an exhaust pipe, he could exercise this right by producing a copy himself or instructing someone else ("the local blacksmith") to do so. The owners "right to repair" could be of value only if other people could manufacture copy exhausts which the motorist could acquire "in an unrestricted market". There was a "clear conflict of legal rights" between the owner's right of repair and the manufacturer's copyright. The question was which right "should prevail over the other". It was the right of the owner. Lord Templeman saw the right to repair as inalienable:- "Every owner of a car has the right to repair it. That right would be useless if suppliers of spare parts were not entitled to anticipate the need for repair. The right cannot, in my view, be withheld by the manufacturer of the car by contract with the first purchaser and cannot be withheld from any subsequent owner."
	Copyright Act 1911
	[ Bailii ]

Windsurfing International -v- Commission C-193/83; [1986] EUECJ C-193/83
25 Feb 1986 ECJ	European, Intellectual Property
	Although the Commission is not competent to determine the scope of a patent, it is still the case that it may not refrain from all action when the scope of the patent is relevant for the purposes of determining whether there has been an infringement of article 85 or 86 of the treaty. Even in cases where the protection afforded by a patent is the subject of proceedings before the national courts, the Commission must be able to exercise its powers in accordance with the provisions of regulation no 17. The findings of the commission relating to the scope of a patent do not in any way pre-empt the determinations made later by national courts within their spheres of jurisdiction and are subject to review by the court of justice. That review must be limited to determining whether, in the light of the legal position existing in the state in which the patent was granted, the commission has made a reasonable assessment of the scope of the patent. The following clauses in patent licensing agreements do not fall within the specific subject-matter of the patent and are incompatible with article 85(1) of the treaty in so far as they restrict competition: quality controls to be exercised by the licensor either in respect of a product not covered by the patent or without being based on objective criteria laid down in advance, an obligation arbitrarily placed on the licensee only to sell the patented product in conjunction with a product outside the scope of the patent, a method of calculating royalties inducing the licensee to refuse to sell separately a product not covered by the patent, an obligation on the licensee to affix a notice of the patent to a product not covered by the patent, a no-challenge clause with regard to the licensor' s trade-marks and patents, and a clause prohibiting the licensee from manufacturing the patented product in a country where it has no patent protection. In order for an agreement between undertakings to be regarded as affecting intra-community trade within the meaning of article 85(1) of the treaty, it is not necessary for each individual clause to be capable of affecting such trade. Only if the agreement as a whole is capable of affecting trade is it necessary to examine which are the clauses of the agreement which have as their object or effect a restriction or distortion of competition.
	Link[s] omitted

Vicom/Computer-related invention [1987] OJEPO 14; (1986) T208/84; [1987] 2 EPOR 74
1987 EPOBA	European, Intellectual Property	Casemap 1 Citers
	The claimant sought a patent claiming a method for the digital processing of images and an associated apparatus (which might be a computer) for implementing the method. Held: The claims were not to a computer program as such: "Generally speaking, an invention which would be patentable in accordance with conventional patentability criteria should not be excluded from protection by the mere fact that, for its implementation, modern technical means in the form of a computer program are used. Decisive is what technical contribution the invention as defined in the claim when considered as a whole makes to the known art". "a method for obtaining and/or reproducing an image of a physical object or even an image of a simulated object (as in computer-aided design/computer-aided manufacturing … systems) may be used e.g. in investigating properties of the object or designing an industrial article and is therefore susceptible of industrial application. Similarly a method for enhancing or restoring such an image, without adding to its informational content, has to be considered as susceptible of industrial application" and hence would not be excluded from patentability. ". . a claim directed to a technical process which process is carried out under the control of a program ( . . in hardware or in software) cannot be regarded as relating to a computer program as such …, as it is the application of the program for determining the sequence of steps in the process for which in effect protection is sought". "Generally claims which can be considered as being directed to a computer set up to operate in accordance with a specified program (whether by means of hardware or software) for controlling a technical process cannot be regarded as relating to a computer program as such." Finally at [16] the Board described "making a distinction between embodiments of the same invention carried out in hardware or in software" as "inappropriate", as what is "decisive" is the "technical contribution which the invention described in the claim when considered as a whole makes to the known art".

McDonalds -v- Burger King [1987] FSR 112
1987	Intellectual Property, Damages	Casemap 1 Citers
	Where a trade mark or passing off claim succeeds at trial, the successful claimant is entitled to an inquiry as to damages unless the court is satisfied it would be fruitless.

Genentech's (Human Growth Hormone) Patent [1987] RPC 553
1987 ChD Whitford J	Intellectual Property	Casemap 1 Citers
	The applicant sought a patent for a hormone: "It is trite law that you cannot patent a discovery, but if on the basis of that discovery you can tell people how it can be usefully employed, then a patentable invention may result. This in my view would be the case, even though once you have made the discovery, the way in which it can be usefully employed is obvious enough. Let me take an example: you discover that a length of iron treated in a certain way will always point to the north. The way in which you can use this discovery to make a direction finding instrument may well be obvious but, based on your discovery you could get a patent for it."

Reckitt & Coleman Properties Ltd -v- Borden Inc [1987] FSR 407
1987 Walton J	Intellectual Property, Litigation Practice	Casemap 1 Citers
	Evidence as to the results of market research surveys was not admissible as expert evidence.

CBS Songs Ltd v Amstrad Consumer Electronics Plc [1988] Ch 61; [1987] RPC 42
1987 CA Nicholls LJ, Sir Denys Buckley	Criminal Practice, intellectual Property	Casemap 1 Cites 1 Citers
	Persons other than the Attorney General do not have standing to enforce, through a civil court, the observance of the criminal law as such. However, Sir Denys Buckley considered that such a claim might be maintained as a representative action because, as in Duke of Bedford: "the plaintiffs, and all the persons whom they purport to represent, have statutory rights of the same character under the Copyright Act 1956, which the action is designed to protect from infringement resulting from the conduct of the defendants which is complained of. They share, in my judgment, a common interest and a common grievance, such as Lord Macnaghten had in mind. The relief which is primarily claimed is injunctive in a form which would benefit the plaintiffs and all whom they purport to represent in the same way, that is to say, by protecting them from the risk of infringements incited by the defendants."
	Copyright Act 1956

Mothercare UK Ltd -v- Penguin Books [1988] RPC 113
1988 CA Dillon LJ	Intellectual Property	1 Citers
	The Trade Marks Act would only be concerned to restrict the use of a mark as a trade mark or in a trade mark sense, and should be construed accordingly. If descriptive words are legitimately registered [as a trade mark], there is still no reason why other people should not be free to use the words in a descriptive sense, and not in any trade mark sense.
	Trade Marks Act 1994

Stephens -v- Avery [1988] 2 WLR 1280; [1988] I Ch 449; [1988] 2 All ER 477
1988 ChD Sir Nicholas Browne-Wilkinson V-C	Equity, Intellectual Property	Casemap 1 Citers
	The parties had been friends and had discussed their sex lives. The defendant took the information to a newspaper and its editor, the second and subsequent defendants who published it. The plaintiff sought damages saying the conversations and disclosures had been confidential. The defendants appealed against a refusal to strike out the claim. Held: The defendants had published knowing that the material was disclosed in confidence. Though gross sexual immorality might not be protected from disclosure, information about sexual activites could be protected under a legally enforceable duty of confidence, where it would be unconscionable for someone who had received information on an expressly confidential basis to disclose it. It was up to the defendants to show that there had been no basis in law for the claim. They had failed to do so. However, the fact that all the conditions for relief have been established does not mean, in the case of a remedy in equity, that relief will automatically follow. The court has an equitable jurisdiction to restrain a breach of confidence independently of any right at law, and this is capable of protecting relationships outside that of husband of wife, though possibly only where the confidence was express. The fact that information may be known to a limited number of members of the public does not of itself prevent it having and retaining the character of confidentiality: "Information only ceases to be capable of protection as confidential when it is in fact known to a substantial number of people."

Rickless -v- United Artists Corporation [1988] QB 40
1988 ChD Hobhouse J	Damages, Intellectual Property, Media	Casemap 1 Citers
	The Act created a private right to performers. Although it might appear to provide criminal sanctions only, performers had the right to give or withhold consent to the use of their performances and to enforce that right by action in the civil courts. This statutory right was not purely personal, but survived the death of the performer and vested in his or her personal representatives, so that in the absence of consent of a performer or his or her personal representatives, there was an actionable breach. A feature film (Trail of the Pink Panther – "Trail") starring the late Peter Sellers had been made by use of cutting floor clips from previous films made with his consent. In two films, The Pink Panther Strikes Again and Revenge of the Pink Panther his consent extended to the use in this way of the cutting floor clips, and ordered the producer companies to account for percentages of the gross receipts of Trail as sums derived from Strikes and Revenge. In the case of three films where there had been no consent, damages were awarded for breach, or inducing breach, of contract in the sum of $1,000,000.
	Dramatic and Musical Performers’ Protection Act 1958 1

Upjohn Pharmaceuticals Inc -v- Kerfoot [1988] FSR 1 6
1988	Intellectual Property	Casemap

IBM/Data processor network (1988) T6/83
1988 EPOBA	European, Intellectual Property	Casemap 1 Citers
	The Board considered an application for a patent apparently relating to a computer program. The "technical feature" of the claimed innovation was the removal of limitations of prior art systems with the result that the data processing system was more flexible and had: "improved communication facilities between programs and files held at different processors within the known network." Held: "The Board holds the view that an invention relating to the coordination and control of the internal communication between programs and data files held at different processors in a data processing system having a plurality of interconnected data processors in a telecommunication network, and the features of which are not concerned with the nature of the data and the way in which a particular application program operates on them, is to be regarded as solving a problem which is essentially technical."

Davis (J & S) Holdings -v- Wright Health Group [1988] RPC 403
1988 ChD Whitford J	Intellectual Property	Casemap 1 Citers
	The parties disputed the status in intellectual property law of a model of a dental impression tray. A cast was prepared from the model, and a final form prepared from the cast. The author, a professor, made a mock-up of materials but then drew from that and then someone else produced the actual first trays. Held: The judge rejected the submission that it was a sculpture largely on the grounds of its ephemeral nature. Whitford J observed how the notion of sculpture, and other artistic works, had been extended to a point where: "their meaning bears very little relation to the meaning which those not familiar with the law would give to those words."

BUD Trade Mark [1988] RPC 535
1988 Walton J	Intellectual Property	Casemap 1 Citers
	The applicant sought to register the mark 'BUD' as a trade mark in class 32 for beer. Objection was made under section 11. The parties had each disputed previously the others sales of beers under the name 'Budweiser'. Held: The opposition failed. The evidence showed that the use of Bud as a contraction for Budweiser was how drinkers of AB's or BB's beer each demanded the beer they wanted. Section 11 did not apply because "[w]hat would be the equity in refusing a person registration of a contraction of his proper trade mark, which cannot be complained of at all, which his customers are invariably, as the evidence runs, going to use. Of course precisely and exactly the same applies to AB's Budweiser and the use by their customers of BUD, but I cannot think that if the substantive mark of "Budweiser" in both cases can be fairly used, there can be any question of a court of equity at any time saying: "But you cannot possibly use the way in which your customers are going to describe it." The one must, as a matter of equity and justice carry the other."
	Trade Marks Act 1938 11

Merrill Lynch's Application [1988] RPC 1
1988 ChD Falconer J	Intellectual Property	Casemap 1 Citers
	The court rejected an application for a patent for, inter alia, a "data processing system for making a trading market in at least one security in which the system proprietor is acting as principal". Held: Falconer J said: "In my judgment, where an invention for which a patent is sought involves any of the matters specified in paragraphs (a) (b), (c) and (d) ("an excluded matter"), on its proper construction the qualification in section 1(2) does require of the Patent Office an initial enquiry and assessment as to whether the inventive step resides in the contribution of that excluded matter alone - if only that contribution of the excluded matter is the inventive step, the invention is not patentable by virtue of section 1(2). I endorse, therefore, the view of the principal examiner that in the determination of whether or not an application relates to an excluded thing it is necessary to take into account whether the non-excluded features are already known or obvious."
	Patetnts Act 1977 1(2)

IBM/Text processing (1988) T 115/85 T-115/85
1988 EPOBA	European, Intellectual Property	Casemap 1 Citers
	IBM sought a European Patent for a text processing program which caused a computer to give automatic visual indications about conditions within the computer. Held: As a mere technical effect, the claimed step was not within Art 52(2): "Generally the Board takes the view that giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem. The application proposes a solution to a specific problem of this kind namely providing a visual indication about events occurring in the input/output device of a text processor. The solution includes the use of a computer program and certain tables stored in a memory to build up the phrases to be displayed. Even if the basic idea underlying the present invention might be considered to reside in that computer program and the way the tables are structured, a claim directed to its use in the solution of a technical problem cannot be regarded in the Board's opinion as seeking protection for the program as such within the meaning of Article 52(2)(c) and (3) EPC. As stated by this Board already in its decision in case T 208/84 (OJ EPO 1987, 14-23) an invention which would be patentable in accordance with conventional patentability criteria should not be excluded from protection by the mere fact that for its implementation modern technical means in the form of a computer program are used. However, in this context it appears useful to the present Board to observe that it does not follow from this statement that conversely a computer program can under all circumstances be considered as constituting a technical means."

CBS Songs Limited -v- Amstrad Consumer Electronics Plc [1988] Ch 61
1988 CA Nicholls LJ	Intellectual Property	Casemap 1 Cites 1 Citers
	Persons other than the Attorney General do not have standing to enforce, through a civil court, the observance of the criminal law as such

CBS Songs Limited -v- Amstrad Consumer Electronics Plc [1988] 2 WLR 1191
1988 HL Lord Templeman	Intellectual Property, Torts - Other	Casemap 1 Cites 1 Citers
	"My Lords, joint infringers are two or more persons who act in concert with one another pursuant to a common design in the infringement. In the present case there was no common design. Amstrad sold a machine and the purchaser or the operator of the machine decided the purpose for which the machine should from time to time be used. The machine was capable of being used for lawful or unlawful purposes." and "My Lords, I accept that a defendant who procures a breach of copyright is liable jointly and severally with the infringer for the damages suffered by the plaintiff as a result of the infringement. The defendant is a joint infringer; he intends and procures and shares a common design that infringement shall take place. A defendant may procure an infringement by inducement, incitement or persuasion. But in the present case Amstrad do not procure infringement by offering for sale a machine which may be used for lawful or unlawful copying. . . . The purchaser will not make unlawful copies because he has been induced or incited or persuaded to do so by Amstrad. The purchaser will make unlawful copies because he chooses to do so."
	Copyright Act 1956

Sapheena Computing -v- Allied Collection Agencies OR 25 April 1988
25 Apr 1988 OR	Intellectual Property
	The plaintiffs were asked to develop a system to computerise the defendant's debt collection system. After the relationship broke down, the defendant did further work on the software. The plaintiff sued for infringement of their copyright in the software created. The defendant claimed that the copyright had become theirs. They pointed out that although for certain sorts of copyright works, the 1956 Copyright Act had made explicit that copyright remained in the creator and was not transferred to the commissioner, there was no corresponding provision for literary works, and by the 1985 Act, computer software had been given the status of a literary work. The court started from the position that copyright had not vested in the commissioners. Held: It was clear that the software house always intended continue development of the system, and to sell further copies to other customers. The ordinary business requirements suggested they would not have assigned any copyright to the defendants. There was no explicit assignment of copyright, and moreover no beneficial equitable interest in it became theirs either. There was no custom in the trade to suggest any obligation to supply source code. The standard was to deliver object code only. The relationship ended before the system was complete, and source code was left at the defendant's premises. Although usable, the program required to be completed. They sought to make use of the source code in their possession to work to complete the program. The judge held that when the relationship ended, the defendants had accepted the software in its condition at that time. There was no implied licence given to them to work further on the source code they retained.
	Copyright (Computer Software) Amendment Act 1985

Interlego AG -v- Tyco Industries Inc [1988] RPC 343; [1988] 3 All ER 949 PC; [1988] 3 WLR 678; [1988] 1 BLR 271; [1988] 2 FTLR 133; [1989] AC 217
5 May 1988 PC Lord Oliver of Aylmerton	Intellectual Property	Casemap 1 Cites
	Toy building bricks were manufactured by Lego in accordance with engineering drawings made for that purpose. One issue was whether new drawings made since 1972, altering the original drawings in various minor respects but added new information addressed to the purchaser in the form of written instructions, gave rise to a new and independent copyright. Held: Not every minor alteration created a new copyright. Skill, labour and judgment expended solely in the process of copying could not confer originality. There had to be some additional element of material alteration sufficient to make the work an original work. It was the quality rather than the quantity of the addition which merited protection. Lord Oliver of Aylmerton: "Take the simplest case of artistic copyright, a painting or a photograph. It takes great skill, judgment and labour to produce a good copy by painting or to produce an enlarged photograph from a positive print, but no one would reasonably contend that the copy painting or enlargement was an "original" artistic work in which the copier is entitled to claim copyright. Skill, labour or judgment merely in the process of copying cannot confer originality . . . There must in addition be some element of material alteration or embellishment which suffices to make the totality of the work an original work. Of course, even a relatively small alteration or addition quantitatively may, if material, suffice to convert that which is substantially copied from an earlier work into an original work. Whether it does so or not is a question of degree having regard to the quality rather than the quantity of the addition. But copying, per se, however much skill or labour may be devoted to the process, cannot make an original work. A well executed tracing is the result of much labour and skill but remains what it is, a tracing. Moreover it must be borne in mind that the Copyright Act 1956 confers protection on an original work for a generous period. The prolongation of the period of statutory protection by periodic reproduction of the original work with minor alterations is an operation which requires to be scrutinised with some caution to ensure that that for which protection is claimed really is an original artistic work."
	Link[s] omitted

CBS Songs Ltd -v- Amstrad Consumer Electronics Plc [1988] AC 1013; [1988] 2 WLR 1191; [1988] UKHL 15; [1988] 2 FTLR 168; [1988] RPC 567; [1988] 2 All ER 484
12 May 1988 HL Lord Keith of Kinkel, Lord Templeman, Lord Griffiths, Lord Oliver of Aylmerton, Lord Jauncey of Tullichettle	Torts - Other, Intellectual Property, Negligence	Casemap 1 Cites 1 Citers
	The plaintiffs as representatives sought to restrain Amstrad selling equipment with two cassette decks without taking precautions which would reasonably ensure that their copyrights would not be infringed by its use. Held: Amstrad could only be liable as a joint tortfeasor. If they were not a joint tortfeasor they would be under no tortious liability. A defendant who procures a breach of copyright is liable jointly and severally with the infringer for the damages suffered by the plaintiff as a result of the infringement. The defendant is a joint infringer if he intends and procures and shares a common design that infringement shall take place. A defendant may procure an infringement by inducement, incitement or persuasion. But in the present case Amstrad do not procure infringement by offering for sale a machine which may be used for lawful or unlawful copying and they do not procure infringement by advertising the attractions of their machine to any purchaser who may decide to copy unlawfully. Amstrad are not concerned to procure and cannot procure unlawful copying. The purchaser will not make unlawful copies because he has been induced or incited or persuaded to do so by Amstrad. The purchaser will make unlawful copies for his own use because he chooses to do so. Amstrad's advertisement may persuade the purchaser to buy an Amstrad machine but will not influence the purchaser's later decision to infringe copyright. . . . Generally speaking, inducement, incitement or persuasion to infringe must be by a defendant to an individual infringer and must identifiably procure a particular infringement in order to make the defendant liable as a joint infringer. Lord Templeman: "My Lords, I accept that a defendant who procures a breach of copyright is liable jointly and severally with the infringer for the damages suffered by the plaintiff as a result of the infringement. The defendant is a joint infringer; he intends and procures and shares a common design that infringement shall take place. A defendant may procure an infringement by inducement, incitement or persuasion. But in the present case Amstrad do not procure infringement by offering for sale a machine which may be used for lawful or unlawful copying. . . . The purchaser will not make unlawful copies because he has been induced or incited or persuaded to do so by Amstrad. The purchaser will make unlawful copies because he chooses to do so."
	Copyright Act 1956 - Performers' Protection Act 1972
	Link[s] omitted

Thetford Corporation And Others -v- Fiamma Spa And Others C-35/87; R-35/87; [1988] EUECJ R-35/87; [1987] 3 CMLR 266
30 Jun 1988 ECJ	European, Litigation Practice, Intellectual Property	Casemap 1 Citers
	The court considered a reference to the European Court on assumed where the domestic court had not yet established those facts. Europa In the present state of Community law, characterized by the absence of harmonization of the patents legislation of the Member States, and in the absence of international conventions in force providing to the contrary, Article 36 of the Treaty must be interpreted as not precluding the application of a Member State's legislation which recognizes the principle of relative novelty and provides that a patent granted for an invention may not be declared invalid by reason only of the fact that the invention in question appears in a patent specification filed more than 50 years previously. Where national law normally provides for the issue of an injunction to prevent any infringement, that measure is justified under Article 36 in so far as it aims to preserve the actual substance of the patent right.
	Link[s] omitted

Anchor Building Products Ltd -v- Redland Roof Tiles Ltd Unreported, 23 November 1988
23 Nov 1988 CA Fox LJ	Intellectual Property	Casemap 1 Citers
	When looking at a patents challenge the question was whether the absence of a feature mentioned in the claim was "an immaterial variant which a person skilled in the trade would have regarded as being within the ambit of the language."

Genentech I/Polypeptide expression [1989] OJ EPO 275; T-292/85
1989 EPO	Intellectual Property	Casemap 1 Citers
	The patentee claimed in general terms a plasmid suitable for transforming a bacterial host which included an expression control sequence to enable the expression of exogenous DNA as a recoverable polypeptide. The patentee had obviously not tried the invention on every plasmid, every bacterial host or every sequence of exogenous DNA. But the Technical Board of Appeal found that the invention was fully enabled because it could reasonably be expected to work with any of them.

Unilever Plc -v- Gillette (UK) Limited [1989] RPC 583
1989 CA Lord Justice Mustill	Intellectual Property, Torts - Other	Casemap 1 Cites 1 Citers
	Unilever claimed infringement of its patent. The court was asked whether there was a good arguable case against the United States parent company of the existing defendant sufficient to justify the parent company to be joined as a defendant and to serve proceedings out of the jurisdiction. Held: Section 60(1) of the 1977 Act, described which acts amounted to infringement. Lord Justice Mustill said: "In a case such as the present, where the infringement alleged includes (for example) the sale of the patented product made up into marketable form, and the importation of the product, a literal interpretation of the section might lead to the conclusion that only the person who has actually sold the product and imported it can be an infringer . . the law has developed. It has gone further than this, in two stages. The first stage concerned a general question in the law of tort, arising where two persons were acknowledged or found to have committed tortious acts which led to the same damage. The question was whether these persons had committed individual wrongs for which they were individually liable, or whether they had joined together in committing the same wrong. This was formerly of great importance, for there could only be one action in relation to one tort, so that judgment against one tortfeasor A would release any claim against the other tortfeasor B; and so also with any accord and satisfaction of the liability of A. The severity of this rule was mitigated by statute in 1935, but by then a jurisprudence had grown up concerning the distinction between joint and several tortfeasors. The most celebrated example of this is to found in . . The Koursk [1924] P 140 at 156 where three situations are identified where A might be jointly liable with B: i.e., where A was master and B servant; where A was principal and B agent; and where the two were concerned in a joint act done in pursuance of a common purpose. This list may not be exhaustive, but it forms the basis for all subsequent statements of the law. Thus far, the cases were concerned with the question whether A and B, acknowledged or found to be joint tortfeasors, were responsible individually or jointly for what had been done: The Koursk being a particularly acute case of such a dispute. " and "Brook v Bool has engendered curiously little in the way of subsequent reported authority, but no doubt has been cast in the intervening 60 years on the proposition that participation in a common venture may cause someone to become directly liable as a tortfeasor, together with the person who actually did the damage. The second line of authority concerns persons who are said to have jointly infringed a patent. Essentially this takes a situation where A is an infringer, and adds to it (via the authorities on joint tortfeasors) the possibility that B may also have infringed, not through any act which he himself has done, but by virtue of a common design with A. This also is a bold step, since it applies a common law doctrine to the interpretation of a statute. Nevertheless, in the light of C.B.S. Songs v Amstrad Consumer Electronics [1988] 2 WLR 1191 the principle is firmly established: for although it is true that the Amstrad case was concerned with the Copyright Act 1956, the statements in the leading speech of Lord Templeman, to which I shall later return, are applicable equally to the patent legislation, and indeed most of the authorities cited in support were drawn from the field of patents." Lord Justice Mustill: "My Lords, joint infringers are two or more persons who act in concert with one another pursuant to a common design in the infringement. In the present case there was no common design. Amstrad sold a machine and the purchaser or the operator of the machine decided the purpose for which the machine should from time to time be used. The machine was capable of being used for lawful or unlawful purposes." As to common design, he said: "I use the words 'common design' because they are readily to hand, but there are other expressions in the cases, such as 'concerted action' or 'agreed on common action' which will serve just as well. The words are not to be construed as if they formed part of a statute. They all convey the same idea. This idea does not, as it seems to me, call for any finding that the secondary party has explicitly mapped out a plan with the primary offender. Their tacit agreement will be sufficient. Nor, as it seems to me, is there any need for a common design to infringe. It is enough if the parties combine to secure the doing of acts which in the event prove to be infringements."

Genentech's (Human Growth Hormone) Patent [1989] RPC 147
1989 CA Mustill LJ, Purchas LJ, Dillon LJ	Intellectual Property	Casemap 1 Cites 1 Citers
	A patent claim for an important protein called Tissue Plasminogen Activator was objected to on the basis of the obviousness of the gene sequence. Held: The court considered the categories of exclusion in the context of what was said to be a discovery – namely the gene sequence which caused TPA to be expressed. A discovery as such is not patentable as an invention under the Act, but when applied to a product or process which, in the language of the 1977 Act, is capable of industrial application, the matter stands differently. Section 1(2) did not depart from the established principles. A particular DNA sequence was an "existing fact of nature, newly discovered". Table VI lay "at the heart of the invention", bit it was not the invention.
	Patents Act 1977 1(2)

Merrill Lynch's Application [1989] RPC 561
1989 CA Fox LJ	Intellectual Property	Casemap 1 Cites 1 Citers
	The court considered an application for a patent for a "data processing system for making a trading market in at least one security in which the system proprietor is acting as principal."
	Patetnts Act 1977 1(2)

Improver Corporation -v- Remington Consumer Products Ltd [1990] FSR 181; [1989] RPC 69
1989 ChD Hoffmann J	Intellectual Property	Casemap 1 Cites 1 Citers
	The invention was based upon the discovery that an arcuate rod with slits, when rotated at high speed, would take the hair off the skin by means of the opening and closing of the slits. The claim was to a rod in the form of an "helical spring" but the alleged infringer had found that an arcuate rod of vulcanised rubber with slits would do just as well. Held: The court set out the Protocol test for obviousness in a challenge to a patent. Hoffmann J said: "The proper approach to the interpretation of patents registered under the Patents Act 1949 was explained by Lord Diplock in Catnic Components Ltd v Hill & Smith Ltd . The language should be given a "purposive" and not necessarily a literal construction. If the issue was whether a feature embodied in an alleged infringement which fell outside the primary, literal or acontextual meaning of a descriptive word or phrase in the claim ("a variant") was nevertheless within its language as properly interpreted, the court should ask itself the following three questions: "(1) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no- (2) Would this (i.e. that the variant had no material effect) have been obvious at the date of the publication of the patent to a reader skilled in the art. If no, the variant is outside the claim. If yes - (3) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention. If yes, the variant is outside the claim. On the other hand, a negative answer to the last question would lead to the conclusion that the patentee was intending the word or phrase to have not a literal but a figurative meaning (the figure being a form of synecdoche or metonymy) denoting a class of things which included the variant and the literal meaning, the latter meaning, the latter being perhaps the most perfect, best-known or striking example of the class." The first two questions involved considerations of fact, but the last was a question of construction.
	Patents Act 1949

Genetech Inc's (Human Growth Hormone) Patent [1989] RPC 613
1989 Falconer J	Intellectual Property	Casemap 1 Citers
	The court considered an enabling disclosure: "… what has come to be called an 'enabling disclosure', that is to say, one sufficient, in the case of a claim to a chemical compound, to enable those skilled in the art to make the compound claimed"

Lock International plc -v- Beswick [1989] 1 WLR 1268; (1989) 16 IPR 497; [1989] 3 All ER 373
1989 ChD Hoffmann J	Intellectual Property, Employment	Casemap 1 Citers
	Where the claimant seeks to prevent a former employee using some but not all information obtained during his employment, the employer must be specific as to the range of what is to be protected. Hoffmann J said: "Some employers seem to regard competition from former employees as presumptive evidence of dishonesty. Many have great difficulty in understanding the distinction between genuine trade secrets and skill and knowledge which the employee may take away with him. In cases in which the plaintiff alleges misuse of trade secrets or confidential information concerning a manufacturing process, a lack of particularity about the precise nature of the trade secrets is usually a symptom of an attempt to prevent the employee from making legitimate use of the knowledge and skills gained in the plaintiff's service. That symptom is particularly evident in this case. Judges dealing with ex parte applications are usually also at a disadvantage in dealing with alleged confidential knowledge of technical processes described in technical language, such as the electric circuitry in this case. It may look like magic but turn out merely to embody a principle discovered by Faraday or Ampere." and "The employee may not, after leaving his employment, make use of, in the words of Neil LJ [in Faccenda Chicken Ltd v Fowler [1987] 1 Ch 117 at 136]: ‘secret processes of manufacture such as chemical formulae . . or designs or special methods of construction . . and other information which is of a sufficiently high degree of confidentiality as to amount to a trade secret.’ On the other hand, there will be a good deal of other information which an employee could not without breach of duty disclose while he was employed but which he is free to use as part of his own skill and knowledge after his employment has ceased. It is therefore of the essence of a claim against an employee for misuse of confidential information that the employer should be able to identify with particularity the trade secret or similar confidential information to which he lays claim. The terms of any injunction must also be capable of being framed in sufficient detail to enable the defendant to know exactly what information he is not free to use on behalf of his new employer." In the context of any application to vary or discharge a search order it is permissible for the Court to refer to the fruits of the search: "I agree that in deciding whether the defendants have suffered injustice as a result of the order, I should not ignore evidence which the order itself has brought to light." and "Even in cases in which the plaintiff has strong evidence that an employee has taken what is undoubtedly specific confidential information, such as a list of customers, the court must employ a graduated response. To borrow a useful concept from the jurisprudence of the European Community, there must be proportionality between the perceived threat to the plaintiff's rights and the remedy granted. The fact that there is overwhelming evidence that the defendant has behaved wrongfully in his commercial relationships does not necessarily justify an Anton Piller order. People whose commercial morality allows them to take a list of customers with whom they were in contact when employed will not necessarily disobey an order of the court requiring them to deliver it up. Not everyone who is misusing confidential information will destroy documents in the face of a court order requiring him to preserve them."

In Re Smith Kline & French Laboratories Ltd [1989] 1 WLR 1
9 Feb 1989 HL Lord Bridge of Harwich, Lord Templeman, Lord Ackner, Lord Oliver of Aylmerton and Lord Lowry	Intellectual Property	Casemap 1 Cites 1 Citers
	The plaintiffs had applied for a product licence for a patented drug. To support its application, it supplied the authority with confidential information which the authority now sought to make use of the confidential information when considering later applications for licences for similar products. Held: The authority had a duty of public safety, and to ensure fair treatment of all applicants. That duty required it to make use of such information where required. EU law did not prevent such use since the regulations allowed the restrictions on such use to be overridden by national law.
	Council Directive (65/65/E.E.C.) 4.8 - Medicines Act 1968 (c. 67), 6 7(2) 20(1)(b) - Medicines (Medicines Act 1968 Amendment) Regulations 1977 (S.I. 1977 No. 1050) 4(3)
	Link[s] omitted

Regina -v- Royal Pharmaceutical Society of Great Britain, Ex Parte Association of Pharmaceutical Importers Joined cases 266 and 267/87; C-266/87
18 May 1989 ECJ	European, Intellectual Property
	Europa Free movement of goods - Quantitative restrictions - Measures having equivalent effect - Concept - Measures adopted by a professional body for pharmacy (EEC Treaty, Art. 30) 2. Free movement of goods - Derogations - Protection of public health -Rules prohibiting pharmacists from substituting a therapeutically equivalent medicinal product for that prescribed by the doctor - Whether acceptable (EEC Treaty, Art. 36) 1. Measures adopted by a professional body for pharmacy, in whose register all pharmacists must be enrolled in order to carry on their business, which lays down rules of ethics applicable to the members of the profession and which has a committee upon which national legislation has conferred disciplinary powers that could involve the removal from the said register, may, if they are capable of affecting trade between the Member States, constitute "measures" within the meaning of Article 30 of the EEC Treaty. 2. A national rule of a Member State requiring a pharmacist, in response to a prescription calling for a medicinal product by its trade mark or proprietary name, to dispense only a product bearing that trade mark or proprietary name may be justified under Article 36 of the Treaty on grounds of the protection of public health even where the effect of such a rule is to prevent the pharmacist from dispensing a therapeutically equivalent product licensed by the competent national authorities pursuant to rules adopted in conformity with Community law and manufactured by the same company or group of companies or by a licensee of that company but bearing a trade mark or proprietary name applied to it in another Member State which differs from the trade mark or proprietary name appearing in the prescription. Such a provision does not go beyond what is necessary to achieve the objective in view, which is to leave the entire responsibility for the treatment of the patient in the hands of the doctor treating him, who may often prescribe a given medicinal product for psychosomatic reasons.
	Link[s] omitted

Green -v- Broadcasting Corporation of New Zealand [1989] RPC 700; [1989] UKPC 26
18 Jul 1989 PC Lord Bridge	Intellectual Property, Commonwealth	Casemap 1 Cites 1 Citers
	The plaintiff had developed the program 'Opportunity Knocks' on British television. He claimed copyright in the general structure or format of a similar television programme in New Zealand. Held: It was not was a dramatic work protected by copyright. Lord Bridge said: "It is stretching the original use of the word "format" a long way to use it metaphorically to describe the features of a television series such as a talent, quiz or game show which is presented in a particular way, with repeated but unconnected use of set phrases and with the aid of particular accessories. Alternative terms suggested in the course of argument were "structure" or "package". This difficulty in finding an appropriate term to describe the nature of the "work" in which the copyright subsists reflects the difficulty of the concept that a number of allegedly distinctive features of a television series can be isolated from the changing material presented in each separate performance (the acts of the performers in the talent show, the question and answers in the quiz show etc.) and identified as an "original dramatic work". No case was cited to their Lordships in which copyright of the kind claimed had been established. The protection which copyright gives creates a monopoly and 'there must be certainty in the subject matter of such monopoly in order to avoid injustice to the rest of the world:' Tate v Fulbrook [1908] 1 KB 821, per Farwell J . . The subject matter of the copyright claimed for the "dramatic format" of "Opportunity Knocks" is conspicuously lacking in certainty. Moreover, it seems to their Lordships that a dramatic work must have sufficient unity to be capable of performance and that the features claimed as constituting the "format" of a television show, being unrelated to each other except as accessories to be used in the presentation of some other dramatic or musical performance, lack that essential characteristic."
	Link[s] omitted

BBC Enterprises Ltd -v- Hi-Tech Xtravision Ltd and Others
21 Dec 1989 CA Sir Nicolas Browne-Wilkinson V.-C., Staughton and Beldam L.JJ	Intellectual Property, Media	Casemap 1 Cites
	The plaintiff sold television entertainment through subscriptions. The broadcasts were protected by encryption. The defendant sold equipment which could unscramble the broadcasts. They were sued under the section. At first instance, the claim was struck out. Held: Programmes were received under the terms of the licence granted by the broadcaster. Those who had not paid were not so licensed, and the receptions were unlawful. Those who sold equipment designed to achieve this were acting in breach of the section. The claim was to proceed. cw Copyright - Broadcast - Unauthorised reception - Encrypted satellite transmission of television programmes - Sale of unauthorised decoders - Whether sale to persons "entitled" to receive programme
	Copyright Designs and Patents Act 1988 298(2)
	Link[s] omitted