LPC Course: CLIP Revision Notes 201
7
LPC Course
Commercial Law &
Intellectual Property
Revision Note
The framework of IP litigation
1. Does the claimant have the right to bring a claim?
2. What is the infringing act?
3. What is the scope of the claimant's right?
4. What is/are the defence(s)?
5. What remedies is the claimant entitled to?
Contents
1. Copyright ……………………………………………….… 2
2. Registered Design Right and Unregistered Design Right ……………………………………………….… 5
3. Registered Trade Marks ……………………………………………….… 10
4. Passing off and Confidential Information ……………………………………………….… 13
5. Patents ……………………………………………….… 15
6. Exploitation of IP Right ……………………………………………….… 17
7. Sale of goods ……………………………………………….… 19
8. International Sale of goods ……………………………………………….… 22
9. Online Commercial Contracts and International Jurisdiction ……………………………………………….… 25
10. Competition Law ……………………………………………….… 29
1
, LPC Course: CLIP Revision Notes 201
7
1. Copyright
1. Copyright Subsistence
Existence of Copyright
Step 1. 1. Literary works: s. 1(1)(a) and s. 3 CDPA1
Identify the 2. Artistic works: s. 1(1)(a) and s. 4 CDPA
‘Work’ (and Section 4(1)(a): graphic works, photographs, sculptures and collages
Categories the Section 4(1)(b): works of architecture (including models)
works) Section 4(1)(c): works of artistic craftsmanship
3. The typographical arrangement of published editions: s. 1(1)(c) and s. 8 CDP
Step 2. 1. literary, dramatic or musical works: s. 3(2) CDPA
Fixation No protection will be given to a literary, dramatic or musical work unless it has been
required? recorded “in writing or otherwise”.
If so, satisfied? 2. Other works
There is no fixation requirement for other kinds of work, which are recorded by their very
nature.
i.e. a painting
Step 3. 1. literary, dramatic, musical or artistic works
Whether It has A literary, dramatic, musical or artistic work must be "original" by definition: s.1(1)(a) CDPA
Originality Note: It simply means that the work originated from its author (it was his/her own work
and not copied from somewhere else).
2. typographical arrangements
Originality is not required (s.1(1)(c) CDPA) but it should not be reproduced to obtain right
(s.8(2) CDPA)
Step 4. 1. Who is the author?
Who is the To establish the duration of copyright in most categories of work you need first to identify
author and the author.
Check the s. 9(1) CDPA: The author is the person who creates the work
Duration of the s. 9(2)(d) CDPA: The author of typographical arrangements is the publisher of the
right relevant edition
s. 10(1) CDPA: when two or more authors’ contribution to the work is not distinct
joint authorship will arise
2. Duration of the right?
(1) In general
The term of copyright for primary works is the end of the year in which the author died plus
70 years: s. 12(2) CDPA.
(2) But
s. 12(8)(a)(i) CDPA: in a case of joint authorship, the death of the author shall be
construed as a reference to the death of the last of them to die
s. 15 CDPA: Typographical layout (typographical arrangements) of a published
edition 25 years from the end of the calendar year in which the edition was first
published.
Step 5. 1. In general
Ownership The author of a work is generally the first owner of the copyright in it: s.11(1) CDPA
(Who is the 2. Employee’s work: s.11(2) CDPA
owner of the Where a literary, dramatic, musical or artistic work is made by an employee in the course of
right?) employment, the employer is the first owner of the copyright, subject to any agreement to
the contrary
3. Commissioned works
There are no special rules in the CDPA in relation to commissioned works
1 Copyright Designs and Patents Act 1988
2
, LPC Course: CLIP Revision Notes 201
7
the creator will own the copyright in the first instance
It is important for a commissioner to include a term in the contract which transfers
(assign) ownership of copyright to it; or
At least the commissioner should secure a licence to use the work it commissioned
2. Infringement of copyright
Copyright Infringement Litigation
Step 1. Identify the claimant’s work and consider whether copyright subsists and whether the
Subsistence and claimant has the ownership of the right.
ownership Important Note: Copyright arises automatically if it satisfies the subsistence of copyright
Note: If your client wishes to pursue a claim for copyright infringement,
you should need to be able to show subsistence and ownership of copyright
Step 2. 1. A person does any restricted act and authorise another to do such act: s.16(2) CDPA
Any Infringing 2. Any restricted act and without Consent
act? Identify whether the defendant has done any restricted act under s.16 CDPA without the
owner’s consent (s.16(2)).
s. 16(1)(a) and s. 17: Copying (reproducing in any material form)
s. 16(1)(b) and s. 18: Issuing copies of the work to the public
s. 16(1)(c) and s. 19: Performing, showing or playing the work in public2
s.17(3): “dimensional shift” copying
Note: “dimensional shift” copying
For artistic works only,
(1) Copyright infringement can occur by “dimensional shift” copying
e.g. making a sculpture by using drawings (2D) to make a 3D sculpture
(s.17(3)).
(2) However, s.51 CDPA restricts the circumstances in which such copying will actually
amount to an infringement
The 3D item that the copier has produced is an artistic work in its own right.
Step 3. 1. A third party will only infringe copyright if:
Comparison He has access to the work in concern; and
A substantial part of the claimant’s work has been copied – s.16(3)(a)
Example: A substantial part?
(1) Quantitative test
One out of 2 verses has been taken;
The verse in question is the first verse which is more memorable;
The chorus is the most prominent element of the lyrics because of the
repetition
(2) Qualitative test
The element in question is a very important part of the work
Important Note: Copyright does not give the owner a monopoly in his/her work
2. In practice (Designers Guild):
the claimant must show a causal connection between his/her work and the defendant’s
the defendant’s work is objectively similar to the claimant’s; and
the defendant’s work was made at a time when the defendant had access to the
claimant’s work,
Example: objectively similar?
2 Q. whether a performance of a particular play was to the public … Check whether there is any harm to the
economic interests of the copyright’s owner
3
7
LPC Course
Commercial Law &
Intellectual Property
Revision Note
The framework of IP litigation
1. Does the claimant have the right to bring a claim?
2. What is the infringing act?
3. What is the scope of the claimant's right?
4. What is/are the defence(s)?
5. What remedies is the claimant entitled to?
Contents
1. Copyright ……………………………………………….… 2
2. Registered Design Right and Unregistered Design Right ……………………………………………….… 5
3. Registered Trade Marks ……………………………………………….… 10
4. Passing off and Confidential Information ……………………………………………….… 13
5. Patents ……………………………………………….… 15
6. Exploitation of IP Right ……………………………………………….… 17
7. Sale of goods ……………………………………………….… 19
8. International Sale of goods ……………………………………………….… 22
9. Online Commercial Contracts and International Jurisdiction ……………………………………………….… 25
10. Competition Law ……………………………………………….… 29
1
, LPC Course: CLIP Revision Notes 201
7
1. Copyright
1. Copyright Subsistence
Existence of Copyright
Step 1. 1. Literary works: s. 1(1)(a) and s. 3 CDPA1
Identify the 2. Artistic works: s. 1(1)(a) and s. 4 CDPA
‘Work’ (and Section 4(1)(a): graphic works, photographs, sculptures and collages
Categories the Section 4(1)(b): works of architecture (including models)
works) Section 4(1)(c): works of artistic craftsmanship
3. The typographical arrangement of published editions: s. 1(1)(c) and s. 8 CDP
Step 2. 1. literary, dramatic or musical works: s. 3(2) CDPA
Fixation No protection will be given to a literary, dramatic or musical work unless it has been
required? recorded “in writing or otherwise”.
If so, satisfied? 2. Other works
There is no fixation requirement for other kinds of work, which are recorded by their very
nature.
i.e. a painting
Step 3. 1. literary, dramatic, musical or artistic works
Whether It has A literary, dramatic, musical or artistic work must be "original" by definition: s.1(1)(a) CDPA
Originality Note: It simply means that the work originated from its author (it was his/her own work
and not copied from somewhere else).
2. typographical arrangements
Originality is not required (s.1(1)(c) CDPA) but it should not be reproduced to obtain right
(s.8(2) CDPA)
Step 4. 1. Who is the author?
Who is the To establish the duration of copyright in most categories of work you need first to identify
author and the author.
Check the s. 9(1) CDPA: The author is the person who creates the work
Duration of the s. 9(2)(d) CDPA: The author of typographical arrangements is the publisher of the
right relevant edition
s. 10(1) CDPA: when two or more authors’ contribution to the work is not distinct
joint authorship will arise
2. Duration of the right?
(1) In general
The term of copyright for primary works is the end of the year in which the author died plus
70 years: s. 12(2) CDPA.
(2) But
s. 12(8)(a)(i) CDPA: in a case of joint authorship, the death of the author shall be
construed as a reference to the death of the last of them to die
s. 15 CDPA: Typographical layout (typographical arrangements) of a published
edition 25 years from the end of the calendar year in which the edition was first
published.
Step 5. 1. In general
Ownership The author of a work is generally the first owner of the copyright in it: s.11(1) CDPA
(Who is the 2. Employee’s work: s.11(2) CDPA
owner of the Where a literary, dramatic, musical or artistic work is made by an employee in the course of
right?) employment, the employer is the first owner of the copyright, subject to any agreement to
the contrary
3. Commissioned works
There are no special rules in the CDPA in relation to commissioned works
1 Copyright Designs and Patents Act 1988
2
, LPC Course: CLIP Revision Notes 201
7
the creator will own the copyright in the first instance
It is important for a commissioner to include a term in the contract which transfers
(assign) ownership of copyright to it; or
At least the commissioner should secure a licence to use the work it commissioned
2. Infringement of copyright
Copyright Infringement Litigation
Step 1. Identify the claimant’s work and consider whether copyright subsists and whether the
Subsistence and claimant has the ownership of the right.
ownership Important Note: Copyright arises automatically if it satisfies the subsistence of copyright
Note: If your client wishes to pursue a claim for copyright infringement,
you should need to be able to show subsistence and ownership of copyright
Step 2. 1. A person does any restricted act and authorise another to do such act: s.16(2) CDPA
Any Infringing 2. Any restricted act and without Consent
act? Identify whether the defendant has done any restricted act under s.16 CDPA without the
owner’s consent (s.16(2)).
s. 16(1)(a) and s. 17: Copying (reproducing in any material form)
s. 16(1)(b) and s. 18: Issuing copies of the work to the public
s. 16(1)(c) and s. 19: Performing, showing or playing the work in public2
s.17(3): “dimensional shift” copying
Note: “dimensional shift” copying
For artistic works only,
(1) Copyright infringement can occur by “dimensional shift” copying
e.g. making a sculpture by using drawings (2D) to make a 3D sculpture
(s.17(3)).
(2) However, s.51 CDPA restricts the circumstances in which such copying will actually
amount to an infringement
The 3D item that the copier has produced is an artistic work in its own right.
Step 3. 1. A third party will only infringe copyright if:
Comparison He has access to the work in concern; and
A substantial part of the claimant’s work has been copied – s.16(3)(a)
Example: A substantial part?
(1) Quantitative test
One out of 2 verses has been taken;
The verse in question is the first verse which is more memorable;
The chorus is the most prominent element of the lyrics because of the
repetition
(2) Qualitative test
The element in question is a very important part of the work
Important Note: Copyright does not give the owner a monopoly in his/her work
2. In practice (Designers Guild):
the claimant must show a causal connection between his/her work and the defendant’s
the defendant’s work is objectively similar to the claimant’s; and
the defendant’s work was made at a time when the defendant had access to the
claimant’s work,
Example: objectively similar?
2 Q. whether a performance of a particular play was to the public … Check whether there is any harm to the
economic interests of the copyright’s owner
3
