Three buses at once is too much for new patent rules

Science has long grappled with the problem of three buses coming at once. Amazingly, the new rules governing the Patents County Court (PCC) provide a solution, writes Giles Parsons, a solicitor at law firm Browne Jacobson LLP.

Heritage retailer Temple Island (TI) owns the copyright in a photograph of a bus near Westminster and is suing gift-packet tea provider New English Teas (NET) for using a similar photograph.

In court, a third image emerged when TI applied to amend their claim to refer to another photograph which they said was even more similar to NET’s photo, claiming it could have been “clandestinely” or “subconsciously” copied .

The court applied the cost-benefit test from the Civil Procedure Rules governing the Patents County Court. This says that material will only be admitted if the court is satisfied that the value of material in resolving issues justifies the cost of dealing with it.

The judge said that allowing the amendment would introduce a jungle of issues into an otherwise straightforward matter and would not help the claimant’s case – so the amendment was refused.

Litigants will be pleased to see active case management which narrows issues and save costs. But in this case, the existing claim lodged by TI has not been ruled out, rather the judge has said that the proposed amendments wouldn't have added much (if anything) to the case. The costs and complexity of introducing the amendment was just not proportionate the effect that the amendment would have on the case.

So for rights-holders who take action in the PCC, the message is – submit a well-pleaded claim to start with, and don’t try to overcomplicate things later.

Of course, it is still possible that NET may have infringed TI's intellectual property rights - the judge has not given a view on this at this stage.

However the judge has said that both parties are approaching the case in a 'sensibly proportionate manner', so hopefully this can be settled. And frankly, the case sounds like one which should. It seems that damages for the initial claim (which related to direct copying and which settled) are only around £5,000, and the costs incurred by both sides may alreadyoutweigh this sum.

Still, one of the problems could be that with photographs, it can be difficult to draw the line between what is protected by copyright and what is not protected.If it goes to trial, the judgment could be rather interesting to read, although I can't imagine that either party will be terribly interested in spending lots of money to watch lawyers labour an academic point!

That said, a key objective of the Patents County Court, which since October 2010 has been subject to a new judge and a new set of rules, is that cases should be dealt with proportionately.The effect of the new rules is slowly being seen, and if they are deemed a success, it's possible that a similar approach will be introduced for other types of cases.

Editorial image courtesy of Doug88888


5th July 2011

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