Friday, 14 August 2015

Exercising the right to be forgotten

Black Hole
Author Alain R
Source Wikipedia
Creative Commons Licence

Jane Lambert

In Right to be forgotten: a Transatlantic Dialogue 1 Aug 2015 NIPC Law I discussed the judgment in C‑131/12 Google Spain SL and Another v Agencia Española de Protección de Datos (AEPD) ex parte Costeja 36 BHRC 589, [2014] 3 CMLR 50, [2014] EMLR 27, EU:C:2014:317, ECLI:EU:C:2014:317, [2014] All ER (EC) 717, [2014] 3 WLR 659, [2014] ECDR 16, [2014] 2 All ER (Comm) 301, [2014] EUECJ C-131/12, [2014] 1 QB 1022, [2014] QB 1022 and Google's response to it. Yesterday I wrote about Judge Behrens's decision in Dawson-Damer and Others v Taylor Wessing LLP and Others [2015] EWHC 2366 (Ch) (6 Aug 2015) in Wilmslow versus the Bahamas: Dawson-Damer and Others v Taylor Wessing and Others 13 Aug 2015. Although Dawson-Damer was not a right to be forgotten case, it casts some light on how rights arising under the 1998 Act would be enforced.

What is the right to be forgotten?

As I observed in Right to be forgotten: a Transatlantic Dialogue the "right to be forgotten" amounts to nothing more than that search engine operators are "data controllers" and that statutes such as the Data Protection Act 1998 which implement the Data Protection Directive (Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data  OJ L 281 , 23/11/1995 P. 31 - 50) apply as much to them as they do to anyone else. Personal data are to be processed in accordance with certain "data protection principles" which are set out in Schedule 1. S.10 of the Act provides a right of action to prevent processing likely to cause damage or distress. S.13 provides a right to compensation for any damage resulting from non-compliance with the Act.  S.14 provides a right to rectification, blocking, erasure and destruction of personal data.

Applying the Data Protection Principles

Probably the most relevant data protection principle in right to be forgotten cases is the fourth:
"Personal data shall be accurate and, where necessary, kept up to date."
It was the generation of links to a newspaper advertisement of an auction of property that had been confiscated from Mr Costeja to pay his social security debts many years earlier that had prompted him to complain to the Spanish data protection authority. The advertisement gave an out of data impression of Mr Costeja's creditworthiness. Google was not responsible for uploading the advertisement to the internet but it was responsible for referring searchers to it.  The only way the impression could be corrected was by excluding the URL to the advertisement from the search results.

The Notice

S.10 (1) requires a data subject to serve a notice in writing on a data controller requiring him "to cease, or not to begin, processing, or processing for a specified purpose or in a specified manner, any personal data in respect of which he is the data subject." Google, Bing and Yahoo have all provided simple on-line forms requesting the removal of specified URLs from search results. Google's form is here.

Responding to the Request

A data controller is not bound to comply with a notice under s.10 (1). S,10 (3) requires him only to respond within 21 days of receiving a notice under subsection (1) (“the data subject notice”) by giving the individual who gave the data subject notice a written notice—
"(a)  stating that he has complied or intends to comply with the data subject notice, or
(b)   stating his reasons for regarding the data subject notice as to any extent unjustified and the extent (if any) to which he has complied or intends to comply with it."
In its FAQ Google explains how it deals with requests to remove references to URLs:
"In evaluating a request, we will look at whether the results include outdated or inaccurate information about the person. We’ll also weigh whether or not there’s a public interest in the information remaining in our search results—for example, if it relates to financial scams, professional malpractice, criminal convictions or your public conduct as a government official (elected or unelected).
Our removals team has to look at each page individually and base decisions on the limited context provided by the requestor and the information on the webpage. Is it a news story? Does it relate to a criminal charge that resulted in a later conviction or was dismissed? In order to demonstrate the scope of removal requests, we have included a section for request summaries on the Transparency Report."
As of today, Google has received 295,716 requests relating to 1,073,454 URLs. 36,891 requests in relation to 143,960 URLs were from the UK alone (see the Transparency Report).


Across the European Economic Area (EU plus EFTA) as a whole Google has removed 41.3 % of the requested URLs from its search reports and refused to do so in respect of 58.7%. In respect of requests from the UK Google has removed 37.5% of the requested URLs and refused in the case of 62.5%. Examples of requests that Google has allowed are as follows:
"A man asked that we remove a link to a news summary of a local magistrate’s decisions that included the man’s guilty verdict. Under the UK Rehabilitation of Offenders Act, this conviction has been spent. We have removed the page from search results for his name."
"A victim of rape asked us to remove a link to a newspaper article about the crime. We have removed the page from search results for the individual’s name."
On the other hand the following have not been removed:
"A couple who was accused of business fraud asked us to remove articles about the crime. We did not remove the pages from search results."
"A high ranking public official asked us to remove recent articles discussing a decades-old criminal conviction. We did not remove the articles from search results."
Challenging a Search Engine Operator's Decision

One of Google's FAQ is "What happens if an individual disagrees with your decision?" Its answer is: 
"If we decide not to remove a URL from our search results, an individual may request that a local data protection authority review our decision."
There is no machinery under the Data Protection Act 1998 for the Information Commissioner to review a decision by a search engine operator not to delete a URL from a search report though there is nothing to prevent him from serving an enforcement notice under s.40 (1) upon a complaint from a data subject if he is satisfied that the operator has a data controller has contravened or is contravening any of the data protection principles. The main problem with referring a complaint to the Information Commissioner is that there are only so many complaints that the ICO can investigate.

The alternative is to bring proceedings for an order under s.10, compensation under s.13 or rectification, blocking, erasure and destruction of personal data in the High Court or County Court in England, Wales and Northern Ireland or the Court of Session or Sheriff's Court in Scotland.

It should be noted that while s.13 (1) confers an entitlement to compensation if an individual suffers damage by reason of any contravention by a data controller of any of the requirements of this Act s.10 (4) and s.14 (1) give the court a discretion as to whether or not to make an order compelling compliance with a notice under s.10 (1) or requiring the rectification, blocking, erasure and destruction of data.  Judge Behrens was not prepared to exercise a similar discretion in a subject access request under s.7 (9) in Dawson-Damer.

Further Information

If you want to discuss this article, the so-called "right to be forgotten" or data protection further, feel free to call me on 020 7404 5252 during office hours or use my contact form.

Thursday, 30 July 2015

IP Insurance for Business Conference

Jane Lambert

On 2 July 2015 the Intellectual Property Office held a conference on IP insurance for business at the offices of the Association of British Insurers in Gresham Street. As I have written a lot of articles about IP insurance over the last 10 years I attended the conference with my colleague Ruhi Sethi. Many of the great and the good in intellectual property were there including Mr Justice Arnold, the senior patents judge and Andrea Brewster, president of the Chartered Institute of Patent Attorneys.

Although the title of the conference was IP Insurance for Business its subject matter was very much wider, As you can see from the slides, only David Bloom of Safeguard IP and Dids Macdonld of ACID actually discussed IP insurance. I found Macdonld's speech particularly interesting in that she gave some details of an insurance scheme for ACID members which she had set up with Sybaris Legal and IP. That's the sort of deal I should like to negotiate for private inventors.

Mr Justice Arnold discussed different methods of dispute resolution. Dave Hopkins, Business Engagement Manager for the Intellectual Property Office, spoke about the services available from the IPO, Andrea Brewster proposed a triage scheme for advising small businesses on IP. Jeffrey Heasman argued for plain language in commercial contracts and insurance policies. Pippa Hall gave us lots of IP statistics. Nigel Swycher of Aistemos offered some tips on developing an IP strategy. Andrew Hildebrand mentioned mediation. Janis Makarewich-Hall gave us a progress report on the Unified Patent Court.

Those who attended the conference received a handout which included the following FAQ on IP insurance.

I would have preferred a more focussed agenda with discussions on alternative funding options like after-the-event insurance and litigation funding. It was good to talk abut alternative methods of dispute resolution but a trick was missed by not discussing the advantages of obtaining an examiner's opinion on the validity or infringement of a patent for £200 before contemplating proceedings, A favourable opinion may encourage an insurer to offer after-the-event cover or a litigation funder to bank roll an action, Finally, I was disappointed that nobody mentioned the Bar Council's Legal Costs Finance scheme which I discussed in Legal Cost Finance - Another Response to Sky Rocketing Court Fees 10 March 2015. They will help with the initial stages such as obtaining counsel's opinion or an application to the IPO for an examiner's opinion.

There were very few IP lawyers at the conference. Ruhi and I were the only members of the Bar and I spotted just a handful of law forms on the delegate list, Liz Ward of Vurtuoso Legal in Leeds was there but I spotted nobody from Bird & Bird, Bristows or Wragge Lawrence Graham. More importantly, there were not many patent agencies on the delegate list. As patent and trade mark attorneys prosecute patent, trade mark and design registration applications their co-operation i crucial if businesses are to take out IP cover.

Apparently, initial feedback was favourable which is good to hear. It was a good start to educating business on the advantages of IP insurance but a more focussed discussion could have been even better. Should anyone wish to discuss this article or IP insurance in general they should call me on 020 7404 5252 during office hours or use my contact form.

Friday, 22 May 2015

IP Mediation

Jane Lambert

Mediation can best be described as "chaired" or "facilitated" negotiation. It works because negotiations proceed through an intermediary known as "a mediator" who is often privy to information that neither party would disclose to the other. To show how mediation works I have uploaded two case histories: one on the resolution of a computer supply dispute and the other a trade mark opposition (see also Mediating Disputes from the Trade Marks Registry 1 Sept 2005 NIPC Law).

Both the courts and the Intellectual Property Office ("IPO") hearing officers expect parties to consider mediation or some other form of alternative dispute resolution before issuing proceedings. Both have power to penalize parties who fail to do so by, for example, disallowing costs that they would normally have awarded to the successful party or awarding more costs than they would otherwise have ordered the unsuccessful party to pay.

The IPO has recently updated its guidance to Intellectual Property Mediation. According to the guidance most types of IP dispute are appropriate for mediation.though it lists a few that are now. They include:
  • trade mark disputes concerning the distinctiveness of the mark
  • trade mark opposition and invalidation proceedings on absolute grounds. and
  • disputes involving IPO decisions e.g. refusal of a patent application or request for extension of time.
According to the guidance the benefits of negotiation to business are as follows:
  • "flexible - it is quicker and cheaper than litigation with a flexibility to allow parties to discuss issues outside the legal arguments (this could be particularly useful in cross-broader disputes)
  • less distraction - as mediation resolves disputes quicker than litigation, businesses will spend less time and energy away from their business activities
  • broader discussions - unlike a judge, the mediator will allow both parties to have their say in a less confrontational situation to gain a better understanding of each other’s positions and their differences and to explore all aspects of the dispute
  • creative solutions - a mediator does not impose a judgement, but rather will help the parties to reach creative compromises which they may or may not chose to make legally binding
  • opportunities - mediation offers the opportunity to maintain existing commercial relationships as well as the chance to forge new ones
  • no additional delays - in helping the parties focus on the real issues, mediation can save time even if the dispute eventually moves into litigation
  • no additional expense - mediation should not create additional expense as it can resolve the dispute with only a skeleton of the issues and legal representatives do not need to be present
  • reality check - a mediator can help all parties think through the consequences of not settling the dispute and the risks of litigation
  • high success rate - mediation has a high success rate. The large majority of mediations reach an agreement on the day and other disputes reach resolution subsequently as a direct result of the mediation process
  • reputation intact - whatever the outcome is, it will remain private (preserving business reputations) unlike a court judgement which will be published on the internet."
The IPO runs a specialist IP mediation service and I have participated in an IPO mediation as counsel (see Practice: Mediation in the IPO 2 Oct 2009 NIPC Law). The service was not used much for many years and the IPO considered terminating the service (see The End of Mediation? 4 June 2012 NIPC Law). Fortunately, it was relaunched (see The IPO's New Improved Mediation Service - will it make a difference? 7 April 2013 NIPC Law). The IPO also lists other mediation service providers and I am glad to say that I am on the list.

A dispute can be referred to mediation only with the agreement of all parties. The best time to get such an agreement is before a dispute arises. Methods of resolving any disputes that may arise should be discussed when parties are negotiating their agreement or businesses are drawing up heir terms and conditions. This is the wording suggested by the WIPO:
"Any dispute, controversy or claim arising under, out of or relating to this contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall be submitted to mediation in accordance with the WIPO Mediation Rules. The place of mediation shall be [specify place]. The language to be used in the mediation shall be [specify language]."
If a dispute has already begun you will need a mediation agreement even if mediation has been ordered or recommended strongly by the court. Again, this is the WIPO' suggestion:
"We, the undersigned parties, hereby agree to submit to mediation in accordance with the WIPO Mediation Rules the following dispute:
[brief description of the dispute]
The place of mediation shall be [specify place]. The language to be used in the mediation shall be [specify language]."
We have three mediators in chambers who specialize in IP law. They are Anthony Connerty, Thomas Dillon and me. If you would like to discuss our services whether as mediators or as counsel with experience of IP mediation, please call us on +44 (0)20 7404 5252 during regular office hours. If you want to talk about this article or about IP or mediation in general you can get in touch through me contact form.

Thursday, 12 March 2015

Why Bother with IP?

Upon seeing the above presentation one of my Yorkshire clients sent me the following rant:
"Hello Jane,
I have just finished watching your Enforcing IPR talk.
Very impressive.
The UK law is so dysfunctional and financially prohibitive — serving only the financial elite.
I have to say, having listened to it, it reinforces what I have been saying to you for some time ...
Why bother with IPR?
I mean, why bother with protecting IPR if it is just not within financial reach to defend it?
ADR could be the beneficiary of such prohibitive costs, but not really.

For example, if one entity is more financially endowed than the other it actually is a strategy to threaten the other side with the court system, if only because they know it will bankrupt the other side.
The courts no longer represent fairness, or right over wrong.
The UK law is so dysfunctional and financially prohibitive — serving only the financial elite.
I feel quite depressed to be honest!
Kind regards"
There's a lot of truth in what my client said and I gave that talk before the cost of issuing a claim form for an injunction and unspecified damages soared by 421%.

Has anybody got any words of comfort?

Tuesday, 10 March 2015

Legal Cost Finance - Another Response to Sky Rocketing Court Fees

Jane Lambert

Yesterday the Ministry of Justice increased fees for issuing proceedings to 5% of the value of the claim for claims over £10,000 with a cap of £10,000 for claims of £200,000 or over.  For some claims that it is a whopping 622% increase in fees.  The statutory instrument that effects those increases is The Civil Proceedings and Family Proceedings Fees (Amendment) Order 2015 which is available only in draft on the website.

For entrepreneurs, designers and inventors this fees increase is very bad news because most IP infringement claims are for injunctions and unspecified damages. As I explained in Why "IP Yorkshire?" 10 Sept 2008  there is a correlation between patenting and the cost of enforcement. That is why this country consistently trails not only France and Germany in the number of European  patent applications but also the Netherlands with a third of our population and Switzerland with one eighth. It was because of that correlation that the government reformed the Patents County Court (the predecessor of the Intellectual Property Enterprise Court) in 2010 (see New Patents County Court Rules 31 Oct 2010) and introduced the small claims track (see Patents County Court - the New Small Claims Track Rules 20 Sept 2012). This swingeing increase threatens to undo all the good that has been achieved over the last 5 years.

Happily there are things that can be done about it and I suggested some of them in How to enforce your IP claim after court fees sky rocket 7 March 2015 NIPC Inventors Club. These include making more use of

  • the small claims track by limiting damaging claims to £10,000, 
  • Intellectual Property Office tribunals and opinions service, 
  • established ADR schemes such as ICANN's Uniform Domain Name Dispute Resolution Policy and Nominet's Dispute Resolution Service for domain name disputes where they exist
as well as inserting arbitration and other dispute resolution clauses into licences and other agreements and taking out before-the-event insurance.

Today I can suggest another option which is payment by instalments through Legal Cost Finance ("LCF").  LCF is described by the Bar Council as "an innovative financial boutique that provides a payment solution tailored for the legal services market" which has entered a service partnership with the Bar. According to the Bar Council
"LCF provides an FCA regulated service to arrange ‘payment plans’ for consumers of barrister services on the basis of third-party credit agreements. This offers clients greater convenience, affordability and access to justice. In practice, LCF provides clients with the option of paying for legal services by instalments over extended periods, while ensuring lawyers enjoy full payments of their bills on time."
One advantage of this source of funding for clients is that it is not limited to litigation but is available for any type of legal service including non-contentious work.

On its home page LCF describes itself as an escrow partner of BARCO which is
"a third party company, owned and operated by the Bar Council, which manages the funds required to facilitate on-going legal services provided by lawyers in England and Wales."
It exists because barristers are prohibited from handling client funds under Rule C73 of the Code of Conduct in the BSB Handbook. In other words it performs the functions of a client account in a law firm thus expanding the scope of public access and litigation services provided by barristers.

In its Terms of Business LCF explains:
"As a condition of your ‘payment plan’, you hereby agree to deposit and maintain the funds in a designated Client Account as directed by us."
It continues:
"Clients who instruct barristers directly (pursuant to the Public Access Scheme) and need to make advance payments (on account) in respect of their legal case requirements, shall use BARCO (Bar Council’s escrow account service) for such purposes subject to BARCO’s Standard Framework Agreement."
In its news page LCF quotes the headline of an article about LCF in The Barrister magazine:
"Barristers risk losing their Public Access advantage – Unless essential steps are taken"
It continues:
"If barristers can provide a unique selling proposition by not only offering clients more affordable access to justice, but also easier payment terms, the public access trophy will be theirs for the taking.”
While I for one am very cautious about going into court without an experienced litigator behind me there are some cases and many circumstances where direct access is possible and in the best interests of the client. Also, it is very clear from other pages of LCF's website that it off its services to law firms and other authorized litigators. I shall certainly explore the use of LCF as I already do with before-the-event insurers and litigation funders (see Intellectual Property Litigation - the Funding Options 10 April 2013 NIPC Law).

If anyone wants to discuss this article or IP litigation in general he or she should not hesitate to contact me on 020 7404 5252 during normal office hours or use my contact form.

Friday, 13 February 2015

IALCI Seminar: Enforcing IPR in England and Wales

Jane Lambert

IALCI stands for The international association of lawyers for the creative industries. It was founded in March 2013, during Paris fashion week to provide useful and up-to-date business and legal know-how and solutions to the creative industries.  Its main goal is to enhance the collective knowledge of the creative industries, by organising seminars, webinars and Massive Open Online Courses (MOOCS), talks, google hangouts, podcasts, TV programmes about, and by publishing articles, newsletters, blogs and books on, business and legal topics of critical importance to the creative industries and entertainment sector.

One of those seminars took place on Tuesday, 10 Feb 2015 on the law of luxury goods series: intellectual property – how to protect, manage and monetize the know-how and intangible capital of luxury and fashion brands. Alexander Rozycki and I spoke at that seminar.  My presentation, which appears above, was one of three talks on enforcing intellectual property rights ("IPR") in Europe. The others were by Holger Alt of von Boetticher in Berlin who spoke on enforcing IPR in Germany and Annabelle Gauberti of Crefovi.

Holger and I had already worked together the previous weeks on behalf of a small Yorkshire company to pre-empt an ex parte injunction application in  Germany. If anybody wishes to discuss my presentation, the seminar or enforcement of IPR generally, call me on 020 7404 5252 or use my contact form.