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CIPIL Spring Conference 2016: The Essence of IP: Scope of Protection

Saturday 12th March 2016

As soon as it is thought necessary or desirable to extend legal protection of intellectual property beyond the use of an identical work, invention, design or trade mark or trade secret, the problem emerges of how to define the scope of protection. Each regime (patents, copyright, designs, trade marks and trade secrecy) faces similar questions: how to deal with colourable versions, where some elements are changed in an attempt to avoid infringement? How to identify the substance of the protected subject matter? How far to extend protection to the use of parts, variants, derivatives of the subject matter? And how to maintain the usefulness of any register to third parties, once the scope of any right becomes predicated on circumstances external to the register itself?

In each IP regime, the precise formulation of the questions varies. In patents, the question was historically largely considered in Britain in terms of whether the "equity" of the invention was reproduced, whether the pith and marrow had been taken and whether variants were mere "equivalents"? After implementation of the EPC into UK law, the issue has tended to be elided with that of interpretation of claims (Catnic, Kirin Amgen), though “squeeze” arguments often play a significant role in framing such interpretation. Moreover, a desire to the importance of the inventive component has crept back in to assessment of infringement through “making” (Schutz v Werit).

In relation to registered Community designs, the issue may be dealt with by Supreme Court in Magmatic, the "Trunki" case, in which one issue appears to be when and how additions to a design by a defendant fall to be treated when assessing whether designs share the same overall impression? Despite the fact that the test of infringement in the Design Regulation and Directive are said to turn on the effect on the “informed user,” both instruments specifically indicate that the scope of protection should take account of “the degree of freedom of the designer in developing his design.”

In registered trade mark law, parallel questions have emerged as to the relevance of distinctiveness (and reputation) in assessing similarity of marks and goods (post Canon), and the role of used in the marketplace in defining the scope of protection (Specsavers Int’l Healthcare v. Asda Stores, Case C-252/12; Spear and Mattel v Zynga [2015] EWCA Civ 290).

In copyright, the courts for some time asked whether a person had reproduced the essence or the important parts of the work. They also indicated that where originality was limited, protection would be "thin." More recently both ideas seem to be abandoned in favour of the view that any use of an original part leads inevitably to a finding of infringement (Case C-5/08 Infopaq Int v Danske Dagblades Forening (2009); Case C-145/10, Eva Maria Painer/Standard Verlags GmbH, [97] (“nothing in Directive 2001/29 or in any other directive applicable in this field supports the view that the extent of such protection should depend on possible differences in the degree of creative freedom in the production of various categories of works.”)

In relation to trade secrecy, jurisprudence has only scratched the surface of these issue of when using “part” of a trade secret infringes (Amber Size v Menzel), how far use of “derivative products” might infringe (Union Carbide; Ocular Sciences; Vestegaard), whether it matters how much the user had “added to” a secret (De Maudsley v Palumbo). The proposed EU Directive has proposed a test of whether goods “benefit to a significant degree from [a] trade secret.”

Taking inspiration from Mark Lemey and Mark McKenna’s important paper on “Scope of IP Rights” in US law, this one day conference explored these questions across the different IP rights in order to ascertain to what extent similar principles operate to help define the scope of protection. How far is the representation or claims on the register the key? How far does the inventiveness of a particular development inform decisions as to scope? How far do validity “squeezes” limit the scope of protection? Is use in the market relevant to ascertaining scope? What other factors come into play?

The programme was as follows and discussions took place at the end of each session:

Chair: Mr Justice Richard Arnold

Morning Sessions

Registered Rights

Michael Silverleaf QC (11 South Square) 'Fair Protection or Reasonable Certainty: Which is it to Be?'

Simon Malynicz QC (3 New Square) 'Not Just Black and White: Distilling the Ingredients of Trade Mark Scope'

Sara Ashby (Redd Solicitors LLP) 'Scope of Designs: Missed Opportunities, Mysteries and Misunderstood'

Unregistered Rights

Daniela Simone (University College London) The Scope of Copyright Protection in the UK – Where Are We Now?

Tanya Aplin (King’s College London) The Scope of Protection for Derivative and Partial Uses of Confidential Information

Afternoon Sessions

Comparative Approaches

Alexander Peukert (Frankfurt) The Scope of IP in Germany: Current Trends

Marco Ricolfi (Turin) IP Scope in Italy: Between Innovation and Continuity

Comparative and Policy

Dirk Visser (Leiden) The ABC of all IP : the Common Rule of Thumb for Determining the Scope of Protection of all IP Rights

Jeanne Fromer (NYC ) Ex Ante and Ex Post Scope in the U.S