Sunday, 25 October 2015

How to challenge a UDRP Decision

WIPO head office, Geneva
Author Melatron
Reproduced under a Creative Commons licence
Source Wikipedia

Jane Lambert

In my experience as a domain name dispute resolution panellist for the WIPO as well as a member of the Bar who has advised and settled pleadings for both complainants and respondents, most domain name disputes are straightforward. Moreover, most complaints are decided in favour of the complainant.  Of all the cases that have been referred to WIPO since 1999, some 21,399 or nearly 86.0% have resulted in a transfer to the complainant and 407 or 1.6% in a cancellation. A complaint has been denied in only 3,086 cases making 12.4% of the total (see Case Outcome (Consolidated): All Years on the WIPO website).

Those figures are hardly surprising as it is rare for a complaint to be defended and even rarer for a response to disclose any merit. It can therefore be said with some confidence that most panellists' decisions are likely to be right. Consequently, those decisions will not often be challenged but every so often a party is aggrieved at a decision and wants to take it further. There is an appeals procedure in Nominet's Dispute Resolution Service Policy for decisions in respect of ".uk" domains but not in ICANN's Uniform Domain Name Dispute Resolution Policy ("UDRP") for generic top level domain names such as those ending in ".com", ".org" or ".info". What happens if you or your client want to challenge a decision by a panellist appointed by the WIPO, the Czech Arbitration Court or any of ICANN's other domain name dispute resolution service providers?

The first point to remember is that the UDRP is a form of alternative dispute resolution but not full blown arbitration and therefore does not seek to oust the jurisdiction of the courts. My colleague David Bernstein of  Debevoise & Plimpton LLP in New York City once characterized the procedure pithily as an interim custody arrangement for domain names. Paragraph 4 (k) of the UDRP states:
"The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded."
As a condition for filing a complaint, paragraph 3 (b) (xiii) of the UDRP Rules requires complainants to submit with respect to any challenges to the jurisdiction of the courts of the country in which the registrar of the domain name or the respondent is domiciled.

The second point is that challenges have to be made very promptly. Paragraph 4 (k) of the UDRP provides:
"If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision."
"We", in this context, means the registrar.  The registrar is bound to implement a panellist's decision unless it receives from the respondent during those business days official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that the respondent has commenced proceedings against the complainant in a jurisdiction to which the complainant has submitted under paragraph 3 (b) (xiii) of the Rules. If the registrar receives such documentation within those 10 business days it will not implement the panellist's decision. Indeed, it will take no further action, until it receives satisfactory evidence of:
(i)  a resolution between the parties;
(ii) dismissal or withdrawal of the law suit
(iii) an order dismissing the law suit or finding that the respondent does not have the right to continue to use the domain name.
If the complainant agrees to submit to the jurisdiction of the English courts a challenge will usually be brought in the Chancery Division of the High Court of Justice, the Intellectual Property Enterprise Court ("IPEC") or a county court with a Chancery District Registry attached (see CPR 63.13 and paragraph 16 of the Part 63 Practice Direction). As IPEC including its small claims track is part of the Chancery Division there seems to be no reason in principle why a challenge should not be launched out of that court though the claimant might have difficulty in obtaining leave to serve the claim form outside the jurisdiction or in resisting an application to transfer the case to the multitrack.

The grounds upon which a UDRP decision may be challenged will vary. The WIPO lists a Selection of UDRP-related Court Cases on its website.  In Marchex Sales Inc. v. Tecnologia Barcaria S.A. (unreported), the most recent case on the list, the US District Court for the Eastern Division of Virginia, injuncted the registrar from transferring the disputed domain name to the defendant's bank which had been ordered by the majority of a three member panel in Case No. D2014-0834 Tecnologia Bancaria S.A. v. Marchex Sales Inc 24 Sept 2014 in what appears to have been a default judgment. Much the same seems to have happened in Walter v Ville de Paris 14 Sept 2012 (unreported) in respect of Case No. D2009-1278 Ville de Paris v. Jeff Walter 19 Nov 2009. However, challengers are not always successful as Patel v Endo Pharmaceuticals Inc, [2006] EWHC 3461 shows.  Often the case will turn on the construction of the registration agreement and sometimes on the validity of the trade mark.  Those seeking to challenge a domain name decision may also be able to take advantage of s.21 of the Trade Marks Act 1994 as a small English computer company did when threatened by a mighty US multinational in Prince Plc v Prince Sports Group Inc. [1998] FSR 21.

Should anyone wish to discuss this article or domain name disputes generally, he or she should call me on +44 (0)20 7404 5252 during office hours, or send me a message through my contact form.

Saturday, 26 September 2015

Justice in Wales - what about Newport?

Jane Lambert

Instead of reflecting on a brilliant performance of Swan Lake at the Lowry by the Birmingham Royal Ballet, I spent much of Thursday evening reading Justice for Wales. That is the title of a pamphlet written by Sir Roderick Evans QC and others calling for the establishment of a separate judiciary and court system for Wales.  My copy came from my good friend and colleague David Hughes who is a member of my chambers' intellectual property team. I googled "Sir Roderick Evans QC" and "Justice for Wales" but was unable to find the publication on the worldwide web. The nearest I came was Top lawyers campaign for a separate justice system for Wales 23 Sept 2015 Wales on Line.

The pamphlet makes a good case for the reform of the English and Welsh justice system generally. For instance:
"In its report entitled ‘Doing Business 2015’, the World Bank ranked the UK only 36th in the world for ‘Enforcing Contracts – how judicial efficiency supports freedom of contract’. According to the World Bank, enforcing a low-to-mid value contractual claim in the UK typically costs 39.9% of the value of the claim. This compares unfavourably with Germany (14.4%), France (17.4%), Australia (21.8%) and the United States (30.5%)."
I have made similar points in relation to the cost of patent litigation (see Jane Lambert Why IP Yorkshire  10 Sep 2008 IP Yorkshire) although the situation has improved with the reform of the Patents County Court in 2010 (see Jane Lambert New Patents County Court Rules 31 Oct 2010 NIPC Law) and the launch of the small claims track in 2012 (see Jane Lambert Patents County Court - the New Small Claims Track Rules 20 Sept 2012 NIPC Law).

However the main point of the pamphleteers seems to be that
"the shared court system of England and Wales means that cases involving issues solely relating to Wales are routinely decided by courts in England and by judges with little or no connection to, or experience of, Wales or the law created by the National Assembly."
I am not persuaded that that actually happens very much in practice because litigants in Wales will wish to bring their cases in the nearest District Registry or County Court hearing centre but, even if it does, I am even less convinced that litigants in Wales would regard it to be a bad thing, Surely they want the best judicial talent for the resolution of their disputes regardless of the judge's residence or provenance and they are much more likely to find the best in a wide pool than a narrow one.

One lacuna in that pamphlet despite David's contribution is the absence of any reference to intellectual property. That is surprising as the Intellectual Property Office has been based in Newport since 1991. It employs over 1,000 people in that city and contributes considerably to the local economy and community in all sorts of other ways. Were the administration of justice to be devolved to the Welsh government there would be be pressure upon the United Kingdom government to return the IPO to London or at least to the other side of the Severn.

The reason for that pressure is that the needs of multinational companies would not be a priority in a separate Welsh justice system. The pamphlet makes that very clear:
"The existing jurisdiction of England & Wales may be the jurisdiction of choice for many litigants who otherwise have little territorial connection to the UK. The primary beneficiaries of that popularity, however, are London’s major commercial law firms. Indeed, the focus of the jurisdiction is increasingly fixed on London’s status as a centre for international litigation, at the expense of serving the needs of – and encouraging the growth of – homegrown businesses. By controlling our own justice system in Wales, we could make sure that the needs of international litigation did not take priority over the everyday business of the courts."
Yet it is multinational companies such as IBM, Dyson Technology and Broadcom Corporation that were the top three patentees in the UK in 2014 (see page 12 of IPO Facts and Figures 2013 and 2014 Calendar Years).

The Comptroller-General of Parents, Designs and Trade Marks exercises judicial as well as administrative functions which he delegates to a panel of hearing officers. At present appeals from their decisions lie to the Patents Court in patent and registered design matters and to the Chancery Division in trade mark matters. Were the IPO to remain in Newport after the establishment of a separate Welsh legal system the hearing officers would be Welsh tribunals subject to Welsh administrative law. It is unlikely that litigants in other parts of the UK and indeed the rest of the world would be content for their appeals to be determined in Cardiff where David is one of a very small number of lawyers known for their expertise in intellectual property law instead of London where the bulk of the patent bar is located and the needs of multinational companies are met.

I have discussed the position of the Intellectual Property Office at some length because IP is my manor but there well may be other ministries and executive agencies with offices in Wales where the same concerns apply. The IPO, for example, shares an attractive woodland site on the city's outskirts with the ONS. A separate Welsh justice system may well make work for Welsh lawyers but it should not be at the expense of loyal and hard working Welsh civil servants or the businesses that supply them.

There are other concerns. At present Welsh intellectual property owners can bring their claims in the Intellectual Property Enterprise Court with its specialist judge and limits to the length of trials and recoverable costs. There is also a small claims track in IPEC with a simplified procedure and minimal court fees and recoverable costs. There is nothing like IPEC in Scotland or Northern Ireland. In those jurisdictions even relatively small claims have to be brought in the Court of Session or the High Court of Northern Ireland at enormous cost (see Jane Lambert Patent Litigation in Northern Ireland: Siemens AG v Seagate Technology 13 Aug 2011 NIPC Law). Would the Welsh government establish an IPEC for Wales when the Scottish and Northern Irish governments have failed to do so for their IP owners? It is possible but unlikely for who would be appointed to the bench and who other than David could appear before it?

It may be sensible to establish a Welsh justice system were we to adopt full blown federalism for the United Kingdom as in most of the jurisdictions mentioned in the "Can we do it?" section of the polemic, but unless and until we do become a federal state we should be very wary of disturbing an arrangement that has subsisted since 1535.

David's Response

One of the objectives of Justice for Wales is to provoke debate on whether a separate Welsh jurisdiction should be re-established. I am therefore pleased that Jane has joined the debate.

Jane says that the lack of any mention of Intellectual Property is a lacuna in our pamphlet. Indeed it is. Whether it is a lacuna that can sensibly be criticised is something on which she and I will have to differ. The pamphlet doesn't mention public procurement law, personal injury law, family law (other than a use of the word "family" in a section dealing with access to justice). It doesn't deal with housing law, healthcare law or planning law (other than mentioning their existence), even though they are devolved areas. The reason it does not is fairly simple. Justice for Wales is a document dealing with the justice system as a whole. That can only be understood as part of Wales' place within the United Kingdom's constitutional arrangements. As a Unionist (it probably doesn't take much googling to find out that I was one of the authors of the Society of Conservative Lawyers' paper "Our Quasi-Federal Kingdom"), a Conservative activist and a lawyer practising IP law (amongst other areas), I am aware of the importance of Intellectual Property to the prosperity of the UK and Wales. But the IP tail cannot be allowed to wag the constitutional dog. It cannot sensibly be argued that we ought to retain constitutionally flawed arrangements for the sake of IP. And such an argument assumes that a separate Welsh jurisdiction would necessarily be worse than the current joint one.

I doubt that Jane makes that assumption, as she accepts our critique of some of the shortcomings of the current joint Anglo-Welsh jurisdiction. What she does not accept, however, is (a) that the problem we pose of judges with little or no connection to or experience of Wales deciding Welsh cases in fact arises often or, (b) if it does, that it is objectionable.

The fact that cases arising in Wales can be heard by courts sitting in England, the fact that lawyers (whether they happen to have been born in Wales or not is not the point) who have chosen to base their professional and personal lives outside Wales are appointed to sit in this country, shows that it can happen as a matter of course. The judgment of the Supreme Court in the Recovery of Medical Costs for Asbestos DIseases (Wales) Bill [2015] UKSC 3 is a recent example of a highly regrettable approach to construing the Assembly's legislative competence - I critiqued it at a Public Law Project event earlier this year.

The English people - if their press and politicians are anything to go by - seem to have a certain resentment of judges in Strasbourg and Luxembourg making decisions that bind the UK. I don't say that Jane shares their attitude, but let us just accept for the moment that there is a significant body of political opinion that thinks it is a problem. Why? Well, is it not because countries tend to want their judges to be from their country? Apart from small countries in which population numbers cause problems (as someone who used to practice full-time in Gibraltar, and is still a consultant to a Gibraltar law firm, I know one such place well), most countries want their cases to be decided by people who understand the milieu from which they arise. The New South Wales judiciary is well-regarded, but would the people of England be happy if their disputes were regularly decided by judges flown in from Sydney? We don't need to go so far. Ireland is a common-law jurisdiction. Jane and I share chambers with some Irish silks, and excellent lawyers they are too. Would the people of Coventry like their cases decided by judges from Cork? I think the answer is obvious, and it involves no slur on the judiciary of Ireland to acknowledge it.

Jane says that "...Surely they (litigants in Wales) want the best judicial talent for the resolution of their disputes regardless of the judge's residence or provenance and they are much more likely to find the best in a wide pool than a narrow one".

Of course they want the best talent. But what does she mean by "best". Judging is not simply a matter the ability to process facts or memorise law - it involves judgment. Even if it were, an understanding of facts and of the witnesses who relate them to the court is best achieved with knowledge of the milieu from which those facts arise. This is related to the above point - the fact that a (wo)man might be an excellent Irish judge does not make him or her the "best" person to decide an English or Welsh case.

As for the size of the pool, plenty of countries or territories manage to run perfectly good judicial systems with lower populations than that of Wales. Those places include about 20 American states and Australian jurisdictions such as Western Australia, Tasmania or Northern Territory. The current Chief Justice of Australia practised in Western Australia before ascending to the bench, which suggests that Western Australia manages to produce acceptable judges.

Jane says that "Were the administration of justice to be devolved to the Welsh government there would be be pressure upon the United Kingdom government to return the IPO to London or at least to the other side of the Severn. The reason for that pressure is that the needs of multinational companies would not be a priority in a separate Welsh justice system....". She goes on to support that assertion with a quotation from the pamphlet that does not, in fact support it. But let us examine her assertion anyway.

Would there be pressure on the UK govt to take the IPO to "London, or at least the other side of the Severn"? Possibly. But there is no reason to think that the needs of multinational companies would not be important to a devolved Welsh jurisdiction. They would be - or at least I would be arguing that they should be, and I would expect those who joined me in signing the pamphlet to agree. What they ought not to be is subsidised by Welsh SMEs (or indeed English SMEs). The pamphlet criticises the increases in, and the structure of, court fees in our joint jurisdiction. Is it really right that the issue fee for a case worth £200,000 should be 5% of the case value, but only 0.3% for a case worth £3,000,000?

Let's look at another of Jane's arguments: "The Comptroller-General of Parents, Designs and Trade Marks exercises judicial as well as administrative functions which he delegates to a panel of hearing officers. At present appeals from their decisions lie to the Patents Court in patent and registered design matters and to the Chancery Division in trade mark matters. Were the IPO to remain in Newport after the establishment of a separate Welsh legal system the hearing officers would be Welsh tribunals subject to Welsh administrative law. It is unlikely that litigants in other parts of the UK and indeed the rest of the world would be content for their appeals to be determined in Cardiff where David is one of a very small number of lawyers known for their expertise in intellectual property law instead of London where the bulk of the patent bar is located and the needs of multinational companies are met."

This amounts to little more than a contention that "London knows best".

Jane and I share chambers in London. A number of other signatories of the pamphlet also have chambers in London. My colleagues there are excellent lawyers. But so are my colleagues in my Cardiff chambers (and my Gibraltar colleagues whilst we're at it). It would obviously be in the interests of Wales to retain the IPO and therefore to retain court procedures to allow IP disputes to be resolved cost-efficiently (we would not need to introduce anything, because we would start with what was in place the day before separation, to address another of Jane's points). Although a formal separation of the professions would be necessary (as ultimately we would be under the authority of different courts) and desirable (we could regulate our legal professions much less expensively than the joint jurisdiction does), no-one wants needless barriers in the way of cross-border practice. Of the four individuals who did the bulk of the drafting work on the pamphlet, 3 of us also have London chambers and would want to continue our cross-border practices. The likelihood is that one would simply have to take out a Welsh (or English) supplementary practising certificate.

Jane closes by saying "...unless and until we do become a federal state we should be very wary of disturbing an arrangement that has subsisted since 1535". But the point is that the arrangement hasn't subsisted since 1535. Wales had its own courts up until the 1830s. And the days when the law, or primary legislation at least, was the same in England & Wales have gone. The arrangements have changed. It is time that the justice arrangements caught up with them.”

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.