Jonathan DC Turner

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This page contains information about some of the cases in which I have acted, arranged under the following headings:

Intellectual Property

Patents

Copyrights

Trade marks, domain names and passing off/unfair competition

Confidential information

Competition and Free Trade Law

IT Law

Other commercial cases

 

Intellectual Property

 

Patents

 

PLG Research v Ardon International [1995] RPC 287 (Patents Court and Court of Appeal) - I acted for the successful patentee in this significant case on the interpretation of patent claims. 

 

The Court of Appeal held that further discussion of Catnic (the leading House of Lords authority) should be left to legal historians, and that English courts should henceforth pay more attention the developing European jurisprudence under Article 69 of the European Patent Convention and the Protocol on its interpretation. The House of Lords rejected the Defendants' petition for leave to appeal.

 

Subsequent UK decisions held that Catnic was still the controlling authority. However, in my influential article Purposive Construction - Seven Reasons Why Catnic is Wrong, I pointed out that a distinction should be drawn between the principle that construction should be purposive and the way that principle was implemented in the algorithm propounded in Catnic and developed by Hoffmann J (as he then was) in Improver v Remington. 

 

The House of Lords, led by Lord Hoffmann, accepted this distinction in Kirin-Amgen and observed that the Catnic/Improver algorithm is "more useful in some cases than in others". While this represents some progress, Lord Hoffmann's assumptions as to the purpose of patent claims, the persons to whom they are addressed and the intentions of patentees, can (and perhaps will) be criticised. 

 

Whatever the principles applied, I think it is fair to say that the PLG case marked something of a turning point from the relatively strict approach to construction of patent claims which had prevailed in England since Hoffmann J's decision in Improver to a more liberal approach, more consistent with practice in other European countries. 

 

The overall result of the PLG case - validity of all three patents in suit upheld, two of them held infringed - was also a significant departure from the trend of forty or so previous decisions of the English courts against patentees. 

 

Other legal issues in the PLG case included prior use, obviousness, directors’ liability, amendment, procedure on plant inspections, and use of disclosure and tactics in multi-jurisdictional patent litigation. I also assisted in the parallel proceedings in the United States and Italy. 

 

Technical issues in the case included extrusion of polymer nets and grids, molecular orientation of polycrystalline materials with complex geometries, X-ray diffraction techniques, and time-dependent tensile properties. 

 

Lux v Pike and Faronwise [1993] RPC 107 (Patents Court) – an action for infringement of patents relating to radar-controlled temporary traffic lights, in which I acted for the successful defendants. 

 

One issue in this case was whether whether the claimed inventions were excluded from patentability by analogy with business methods. It was held that a method of controlling traffic as such was excluded, but that the inventions were properly regarded as improvements in equipment which could be patented. 

 

Another issue was whether a claimed invention was disclosed by a trial (before the priority date) on a public road. It was held that the invention was thereby "made available to the public", since a passing expert could have deduced the mode of operation following observation and analysis, even though none did, and none was told that the trial was taking place, so that the possibility of anyone in fact working it out was very remote.

 

Other issues included obviousness and acquiescence (in that the patentee had encouraged the Department of Transport to specify or recommend the patented methods to other manufacturers without disclosing that it had applied for patents). 

 

Flexible Directional Indicators' Application [1994] RPC 207 (UK Patent Office and Patents Court) - the patent related to a successful invention of a resilient traffic bollard. An objection of obviousness over close prior art was overcome, but an attempt to broaden the claims which had been too restrictively drawn was rejected. 

 

Fleming Fabrications v Albion Cylinders [1989] RPC 47 (Patents Court and Court of Appeal) - in this case the patentee was granted an interim injunction to restrain infringement on the ground that it was liable to go bust if the defendant continued to market the allegedly infringing product.

 

 

Copyright and designs

 

Ashley Wilde v Stitchwell (Peter Smith J, 2003) - in this case I obtained judgment for infringement of UK copyright in a cushion cover design against two Turkish companies. Although their activities were mainly in Turkey, there was evidence that they had assisted in marketing the goods in the UK and the Court concluded that they had participated in a joint design to import and sell the infringing product in the UK. 

 

This result may be contrasted with the recent patent case, Sabaf v MFI, where it was held that the foreign supplier was not jointly liable for infringing sales in the UK, even though it had assisted in marketing the products in the UK. The claimant in that case appealed to the House of Lords, but on a different point, that the foreign supplier had itself imported the goods into the UK by arranging the transport, which was rejected; Sabaf might have done better if it had appealed on the joint liability point.

 

Damages were assessed in the Ashley Wilde case by comparing the pattern of development of sales over time of the infringed design with those of other designs which were not infringed - a useful method in cases where no or inadequate disclosure is given by the defendants. See also Blackburn Borough Transport Limited v Bailey

 

Designers Guild v Russell Williams [2001] FSR 113 (House of Lords) - briefed on behalf of the claimant in this case following its defeat in the Court of Appeal, I worked with Alastair Wilson QC on the successful petition for leave to appeal and appeal to the House of Lords. 

 

The House unanimously held that the trial judge's finding of infringement should be restored. All members of the Judicial Committee emphasised that a trial judge's assessment on a question of this kind should not be disturbed unless he erred in principle. However, there were differences in analysis in the respective speeches, which may reflect an unarticulated conceptual difference as to whether the copyright work is the subject-matter itself (painting, text, music etc.) or the creative work and skill which is expended to produce it.

 

Lord Hoffmann made the striking observation that "Copyright law protects foxes better than hedgehogs". This refers to an epigram of the ancient Greek poet Archilogus - "The fox knows many things; the hedgehog knows one big thing" -  used as the title of an essay of Isaiah Berlin (originally called "Leo Tolstoy's Historical Scepticism") when it was republished by George Weidenfeld. The essay - a subtle critique of Marxist theory of historical determinism - contrasted "hedgehogs" (who consider that the tides of history are directed by major, inexorable forces) with "foxes" (who perceive history as consisting of many events which may be affected by the actions of individuals). According to Berlin, Tolstoy was a "fox" (in the detail of his narrative) who tried to be a "hedgehog" (in his didactic passages interspersed in the narrative). The essay gave rise to a parlour game in which participants would argue whether a particular person was a "hedgehog" seeking grand, unifying theories or a "fox" delighting in detail.  

 

So perhaps another reason for the differences in the speeches is that Lords Hoffmann and Millett are hedgehogs, whereas Lord Scott is a fox. And having previously had a reputation for successfully defending alleged infringers of copyright, Alastair Wilson and I may perhaps be regarded as poachers turned gamekeepers.

 

AntiquesPortfolio.com v Rodney Fitch [2001] FSR 345 (High Court, Neuberger J) – this decision is of interest for its observations on copyright in photographs, infringement by their use on the internet and the obligations of website designers. The judge held that copyright exists even in fairly ordinary photographs and is infringed by their exact reproduction on a website without the consent of the copyright owner. He also held that a website designer has an obligation not to include infringing material in a website design. 

 

Despite these adverse findings, acting on behalf of the designer, I successfully resisted the claimant's application for summary judgment and obtained summary judgment over the greater part of the counterclaim for unpaid fees and expenses, as well as an order for interim payment in relation to the remainder. Applying Esso v Milton, the judge declined to allow the Claimant to set off its claim against the counterclaim, on the ground that this would be unjust since it had failed to give details of quantum. This may be contrasted with Bim Kemi v Blackburn where the High Court and Court of Appeal accepted my submission that the decision in Esso v Milton turned on very special facts. 

 

Malgar v Leach [2000] FSR 393 (High Court, Scott V-C) – a number of interesting points were thrown up in this action for infringement of various intellectual property rights of a business of manufacturing slurry-handling equipment. 

 

One was whether directors should be punished for making false statements verified by statements of truth in interim injunction proceedings. The judge rejected an application to commit the directors for contempt, even though this was the sanction apparently provided under the CPR, which instituted such statements as an alternative to sworn affidavits. The judge held that, in the circumstances, contempt proceedings would be disproportionate, and that the witnesses would be sufficiently punished by the adverse impact on their credibility at trial. However, the absence of effective sanction revealed by this decision may detract from the value of unsworn witness statements. In this connection, it is interesting to note the greater weight attached to sworn statements by the WIPO panel chaired by Sir Ian Barker QC in KCTS.com. 

 

Another point was whether the Claimant (having obtained summary judgment on its claim of infringement of copyright in the price list, but not on the claim for infringement of design right in the equipment) could recover damages for lost sales of equipment allegedly caused by the circulation of the infringing price list. This kind of claim was rejected by Jacob J in Work Model v Ecosystems but that decision was distinguished by Master Bowles as a case where the brochure was not the effective cause of the lost sales. On the trial of a preliminary issue, he held that the Claimant was entitled to compensation for damage effectively and foreseeably caused by the infringement. 

 

Parmenter v Malt House [1993] FSR 680 (Court of Appeal) - instructed in this registered design case on behalf of the Defendant following its defeat at trial, I persuaded the Court of Appeal to permit the Defendant to amend the pleadings and introduce evidence of prior art discovered by the Defendant after the trial - even though the new information was provided by a witness who had been interviewed by the Defendant's solicitors before trial and had given evidence at the trial.

 

C&H v Klucznik [1992] FSR 421 (High Court, Aldous J) - this case primarily concerned claims of infringement of copyright in the design of a feeding trough for lambs, which succeeded in relation to the Defendant's original design but failed in relation to a modified design. However, the case is better known for the decision on the counterclaim for infringement of design right in the design of a fender used in outdoor piggery, this being the first court decision on a claim of infringement of the right introduced by the 1988 Act.

 

One aspect of the case has been misunderstood. It has been suggested that the Court was precluded from finding that design right in a particular aspect of the design (the roll bar) was infringed on the ground that this was not pleaded. This is not correct; the judge rejected a submission to this effect. 

 

To understand the case, it is necessary to appreciate that there was an issue as to who created the design and hence owned the design right. The judge's conclusion (expressed rather concisely at the end of a long judgment dealing primarily with the copyright issues) was as follows: if the design was regarded as the roll bar itself, it was not owned by the Defendant; if, on the other hand, it was taken to be the design of the whole article, then the differences in the Claimant's design sufficed to avoid infringement.  For further details, see my letter in [1997] EIPR 736

 

Entec v Abacus [1992] FSR 332 (High Court and Court of Appeal) - in this case I successfully appealed a decision of Hoffmann J who had granted an injunction against the Defendants on the ground that the defences were "extremely weak". The Court of Appeal considered that the defences were far from weak and that the balance of convenience was strongly against granting an injunction which would cause the Defendants' business to fold. 

 

The Defendants had admittedly cast the moulds for their septic tanks from the Claimant's product. However, the Claimant's drawings were essentially sketches with dimensions, and the Court of Appeal accepted that it was arguable that the Defendants had not reproduced a substantial part of what was visually significant in the drawings. 

 

One of the defences raised was that the extension of copyright to protect functional designs was an unjustified restriction on trade contrary to article 30 of the Treaty of Rome, particularly as the House of Lords had held in the Armstrong case that this was an accident, not intended by Parliament.  In the event, the Court of Appeal found in the Defendants' favour without hearing argument on the point. However, the prospect that they might have to do so may perhaps have concentrated their minds on the defences under domestic law. 

 

The Claimant's advisers had warned that they would seek costs against me personally if I pursued this allegedly frivolous appeal. I resisted this pressure, and in the event the boot was on the other foot.

 

Potton v Yorkclose [1990] FSR 11 (High Court, Millett J) – a decision of some importance on the remedy of account of profits for infringement of intellectual property rights, much referred to in the subsequent patent case Celanese International v BP [1999] RPC 203. 

 

A developer had built timber-framed houses based on designs provided by a timber supplier, but using another supplier's timber, hence without consent. The court accepted my submission on behalf of the timber supplier/ copyright owner that it was entitled to receive the increase in the value of the land resulting from the building of the houses less the cost of building them - not just the money saved by the developer in not engaging an architect to produce its own designs. 

 

 

Trade marks, domain names and passing off/unfair competition

 

Blackburn Borough Transport Limited v Bailey and others (High Court, John Martin QC and HHJ Howarth) - in this Action I represented the Claimant, which provides bus services in Blackburn under the name "Blackburn Transport". The Defendants ran competing services. At first they used the names "Catch-me-Bus" and "Buzy-Buz", but they subsequently adopted the name "Blackburn Transport Ltd", having incorporated a company under this name. 

 

The Defendants argued that "Blackburn Transport" was generic and that the public could readily distinguish between their red buses and the Claimant's cream and green ones. Although they submitted that this was a question of fact which should be determined at trial and referred to the observation of Jacob J (as he then was) in Nutricia v Gilden that "you never can tell" whether there is a likelihood of confusion, I persuaded the Court that this case was sufficiently clear to justify summary judgment as to liability. 

 

On the inquiry as to damages, the Claimant contended that its loss of revenue caused by the infringement could be measured by comparing its revenue when the Defendants used the name "Blackburn Transport Ltd" with its revenue when the Defendants competed using acceptable names (see also the Ashley Wilde case). I also represented the Claimant in ancillary proceedings under section 423 of the Insolvency Act restraining the transfer of the First Defendant's house at an undervalue. The case eventually settled on the basis of a substantial payment by the Defendants to the Claimant. 

 

Victor888.com (WIPO Panel, Warwick Smith, Osborne, Sorkin, 11/11/2004) - the widely publicised 888.com online casino complained about the registration and use of the domain name victor888.com by Victor Chandler. I assisted Victor Chandler in its successful defence, which was based on the fact that 888 is a Chinese lucky number. As in KCTS.com, the Panel attached considerable weight to the sworn affidavit of the Respondent's director.

 

Bernardmatthews.co.uk (Nominet Expert, Ormand, 29/6/2003) - in this case the well-known turkey producer complained about the registration of the domain name bernardmatthews.co.uk by one Bernard Matthews. The Respondent said that he was entitled to register and use the domain name since it reflected his own name.

 

The Respondent's original name was Jason McCluskey, but he claimed to have changed it to Bernard Matthews. He said he chose "Bernard Matthews" because he had been given the nickname "Bernie" by friends on account of his strong Norfolk accent which called to mind the Complainant's advertisements featuring its eponymous founder and chairman. 

 

The turkey producer did not have a substantive website, but it used its domain name bernard-matthews.co.uk for email and there was a considerable amount of confusion. The respondent replied abusively to a number of emails sent to him, concluding with the name "Bernard Matthews", which correspondents took to be the company's chairman.

 

The company had complained unsuccessfully under Nominet's old dispute policy and had also commenced High Court proceedings (not instructing me) which it discontinued following unfavourable indications by Jacob J. I prepared a complaint to Nominet under its new dispute policy which was successful, despite a tenacious defence. The Respondent immediately brought County Court proceedings to reverse this decision, which had the effect of staying its implementation; the matter was then settled.

 

The case is of interest in showing that domain name dispute resolution policies may confer rights which are not provided by trade mark law.

 

Jonathan Ball v Eden Project Limited [2002] FSR 686 (High Court, Laddie J) - I acted for the Trust and operating company responsible for the Eden Project, a major visitor attraction in Cornwall comprising the largest greenhouses in the world. Ball, one of the project's co-founders, had registered the trademark "The Eden Project" and claimed to be entitled to fair remuneration for its use and for his efforts on behalf of the project. On my advice, the Trust and company applied for and obtained summary judgment ordering Ball to transfer the trademark to the company, on the grounds that he had registered it in his own name while a director. 

 

Domainregistry.biz (NAF, Dorf, 25/6/2002) - in this case I acted for the Respondent, arguing that the domain name was generic. This contention was rejected by the NAF Panelist, who ordered transfer under the applicable Uniform Domain Name Name Dispute Resolution Policy (UDRP). 

 

The Respondent then commenced proceedings to reverse this decision in the English High Court, to which the Complainant should have, but had not, submitted in the Complaint. The Complainant disputed jurisdiction, arguing that the UDRP rule requiring a submission to the jurisdiction either at the registrant's address or at the registrar's place of business if the registration agreement so provided did not apply since the registrant was also the registrar and there was therefore no agreement between them. The dispute was subsequently settled. 

 

This case indicates the difficulties which can arise if a UDRP Panelist determines a complaint without insisting on a proper submission to a mutual jurisdiction in accordance with the applicable rule. 

 

KCTS.com (WIPO Panel, Barker QC, Page, Sorkin, 20/4/2001) - in this case I acted for the registrant of KCTS.com  which successfully resisted a complaint under the ICANN Dispute Resolution Policy by KCTS television of Seattle. The Panel held that the Complainant had not shown bad faith. Its reputation was not such that the Respondent must have known of it when registering the domain name, and the Panel attached considerable weight to the sworn affidavits of the Respondents' directors that they did not.  The Panel also noted that "evidence" provided by unidentified persons was of little assistance.

 

French Connection v Sutton [2000] ETMR 341 (High Court, Rattee J) - in this highly publicised case I successfully defended the registrant of the domain name fcuk.com against a summary judgment application by the retailer French Connection. The domain name was registered several days after French Connection launched a major advertising campaign using the word "fcuk", but the registrant's evidence was that he chose the name because of its equivalence to "fuck". The case was heard not long after the Court of Appeal upheld summary judgment against cybersquatters in BT v One-in-a-million, but the Judge accepted my submissions that the facts were different.

 

The observations of the court which attracted the greatest publicity concerned whether French Connection should be denied protection on the ground that the mark was offensive. Although some of the coverage implied that the judge was out of touch, the evidence was that the Advertising Standards Authority had banned French Connection's advertisements following surveys showing that 60% of the public found them objectionable and 77% considered that "fuck" should not be used in advertising.  

 

Arsenalfc.co.uk & ors v Champion Press (High Court) - in this case I acted for the registrant of a series of domain names such Arsenalfc.co.uk, Aston-Villafc.co.uk, Blackburnfc.co.uk etc, corresponding to nearly all of the clubs in the English Premier League at the time. The registrant pointed out that he was a keen football fan, who had written books about Liverpool fc, published a book about Manchester United fc, and had assembled a collection of thousands of reports of football matches. He said he intended to develop websites providing match reports and selling memorabilia. On the other hand, when challenged by Sheffield Wednesday, he had suggested that they acquire the relevant domain name from him for £95,000. The football clubs applied for summary judgment but withdrew the application after seeing my written argument. The case was subsequently settled.

 

World Online v Iomart (High Court) - a passing off case relating to names of internet access packages, in which I acted for World Online  

 

Localtel v Greatxcape (High Court, Park J) - proceedings for passing off, infringement of copyright, libel and trade libel arising out of rival claims to be the first provider of completely free internet access in the UK   

 

Reckitt & Colman v Borden [1990] 1 WLR 491 (High Court, Court of Appeal and House of Lords) - the Jif lemon case, a leading UK authority on passing off, in particular in relation to visual branding. The House of Lords held that a descriptive container (a plastic lemon for lemon juice) could acquire and had acquired a secondary meaning denoting the Jif brand, following many years exclusive use. 

 

Chelsea Man v Chelsea Girl [1987] RPC 189, [1988] FSR 217, [1989] RPC 111 (High Court and Court of Appeal) – in this case I was instructed on behalf of Chelsea Girl after they lost the action for passing off at trial. A number of issues  arose in the subsequent proceedings, including the proper scope of an injunction protecting goodwill in limited area; whether damages could be awarded for passing off on a royalty basis; whether an injunction in the form "restrained from passing off by the use of the name X ...." was breached by the use of the name X in the course of trade absent evidence of confusion; and concurrent rights to registered trade marks

 

 

Confidential information

 

ARC v Jones - in this case the Defendants were former directors and senior managers of the Claimant, who had set up a competing factory manufacturing concrete bricks while they were still directors and employees of the Claimant, in conjunction with a key sub-contractor of the Claimant who was also sued. Instructed on behalf of the Defendants after a hearing in which they were injuncted on the ground that their admitted conduct clearly overstepped the line, I obtained a stay from the Court of Appeal and persuaded a different judge at a subsequent hearing that the case against them was barely arguable. In preparing this case under pressure of time, I derived considerable assistance from my prior knowledge of pigment chemistry.

 

One of the Defendants also owned a restaurant. Following this victory, he named one of the dishes "Faccenda Chicken" in honour of the leading case on which we relied.

 

 

Competition and Free Trade

 

Bim Kemi v Blackburn Chemicals - this case determined a point of some interest regarding the use of competition defences in commercial cases, as well as various commercial points mentioned below

 

The Claimant (Bim) claimed that my client (Blackburn) had repudiated an exclusive dealing agreement between them by refusing to supply Bim and supplying a competitor. Blackburn contended that the discussions had not concluded in a binding agreement, but if they had, the agreement had been repudiated by Bim in selling its own products instead of Blackburn's. Blackburn thus defended the action and counterclaimed for damages for Bim's breaches of the agreement, if made.

 

Shortly before trial, after Bim made substantial amendments to its case, Blackburn sought to amend its Defence to include pleas that the agreement (if made) was void for breach of article 81 of the Treaty of Rome and the UK Restrictive Trade Practices Act (RTPA, now repealed). The judge permitted the amendment, but ordered that all further issues in respect of these pleas should be stayed until after the trial of the other issues. 

 

Following the trial the Judge held that there was a contract, and that Bim had breached it, but that its breaches were not serious enough to amount to repudiation, from which it followed that Blackburn had repudiated it. Blackburn appealed to the Court of Appeal which held (against Blackburn) that there was a contract, but (in favour of Blackburn) that Bim's breaches were repudiatory, from which it followed that Blackburn had been entitled to refuse further supplies. The Court of Appeal also held that Bim's exclusivity in the relevant territory had lapsed since it had failed to meet targets, so Blackburn had been entitled to supply another distributor. Accordingly, the claim failed and the counterclaim succeeded, unless Bim could rely on the competition law points previously pleaded by Blackburn. The damages remained to be assessed.

 

Bim's petition for leave to appeal to the House of Lords from the decision of the Court of Appeal was refused. Blackburn then withdrew its pleas that the agreement was invalid and sought to proceed with the assessment of its damages under the counterclaim. Bim replied that no damages were payable since the contract was invalid under article 81 on similar grounds to those previously raised by Blackburn. 

 

Blackburn contended that Bim was barred by cause of action estoppel from pleading this as a new defence to liability on the counterclaim after liability had been determined. This contention was rejected by the High Court on the ground that Bim would only be barred if it amounted to an abuse of process, which it did not; and by the Court of Appeal on the rather different ground that the order before trial staying issues applied to all competition issues whether raised by Blackburn or Bim.

 

The case highlights one of the risks of relying on a competition defence in a commercial case which may go either way, depending on whether one party's conduct did or did not justify the other's refusal to perform.

 

John Bruce (OFT 17/5/2002) - I represented John Bruce Limited (JBL) in this investigation of price fixing in relation to vehicle brake slack adjustors. The investigation had been launched by the OFT following a complaint by another party about some other conduct. The OFT rejected that complaint but noticed from the papers that the complainant and JBL had apparently agreed to fix prices. (NB When thinking about making a complaint, remember: those in glass houses should not throw stones!)

 

The price-fixing was mainly vertical (resale price maintenance) but there were some horizontal aspects as well. It was adopted by JBL as part of a pro-competitive strategy to break into a market previously dominated by the patentee following the expiry of the patent. The OFT rejected arguments based on Remia v Nutricia and Volk v Vervaecke, that there was no appreciable effect on competition, and held that the Chapter I prohibition had been infringed. However, they accepted that there were strong mitigating circumstances so far as JBL was concerned and only a nominal fine was imposed on it. A somewhat greater fine was imposed on the complainant.

 

When I was instructed, I advised JBL to circulate its dealers immediately, withdrawing the pricing policy previously operated. This was just before the end of JBL's accounting year. Had the infringement continued for a few days longer, the fine would have been based on the much greater turnover in that accounting year (being the last accounting year prior to termination of infringement). 

 

Swan v ECS Avaya (OFTEL 6/4/2001) - in this complaint to OFTEL of abuse of dominant position contrary to Chapter II of the Competition Act 1998, I acted for the complainant, Swan, who develop and supply software for integrating telephone systems and computers (computer-telephony integration, CTI). ECS Avaya (formerly Lucent) supply PBXs. Having acquired a subsidiary which also supplies CTI software in competition with Swan, ECS Avaya adopted a policy of levying charges on the use of the PBX interfaces required for CTI, which Swan regarded as excessive and discriminatory. ECS Avaya did not have a dominant position in the market for PBXs, but it was argued that they did have a dominant position (indeed a monopoly) in the market for interfaces for their PBX.

 

The complaint was rejected on the ground that there was no separate market for interfaces for ECS Avaya's PBX, since (according to OFTEL) customers took into account the cost of CTI interfacing when deciding which PBX to acquire. An appeal was prepared but not pursued by Swan.

 

C3000 v Ricoh (EU Commission) - in this case I represented the complainant in a complaint to EU Commission of restrictions on parallel imports and maintenance of resale prices of CD-RW drives

 

An arbitration relating to international licensing of patents and trade marks - I represented the patentee in this case which raised major issues of US, EC and UK competition law, as well as US patent law and commercial issues.

 

Agreements settling international patent litigation - I prepared the notification to EC Commission and successfully responded to objections, arguing that substantial restrictions were justified since the settlement enabled the parties to work together in penetrating conservative markets with a new technology

 

Joint venture for the development and international marketing of pharmaceuticals raising issues of EC and US competition law, as well as patent law in various offshore jurisdictions, and international trade, tax, customs and VAT law

 

Entec v Abacus [1992] FSR 332 - see above

 

Kall-Kwik v Stock - in this case I acted for a franchisee who had set up another business allegedly in breach of the franchise agreement. The franchisor's application for summary judgment was withdrawn after I pleaded a substantial Defence and Counterclaim alleging breaches of the UK Restrictive Trade Practices Act and Article 85 of the Treaty of Rome. In contrast to a number of other cases involving Kall Kwik franchisees represented by different Counsel, my pleading was not struck out and the case was later settled.  

 

O'Connor v Bishops' Conferences of US, Canada, England, Ireland and Australia 670 F.2d 1035, DC Cir - this case concerned a claim that the Catholic Bishops of English-speaking countries had infringed US antitrust law by dividing up the world market in English language Catholic prayer books, in that they conspired to prevent parallel imports into the US of a prayer book published in Ireland for the Dominican Order. The Bishops contended that they were exercising their right of free speech in informing their congregants that the books were not approved for use in North America; and that either the Sherman Act must be interpreted as not abridging the right of free speech or it was unconstitutional. 

 

Acting on behalf of the English, Irish and Australian Bishops, we succeeded before the District Court in an application to strike out the claim. However, this was subsequently overturned by the Court of Appeal which observed: "Noone doubts the Church's right of free speech. But when the Church descends into the marketplace, it must abide by the rules of the marketplace."

 

 

IT Law

 

Computer Action v Patey Doyle  - successful claim by supplier of deduping software and facilities to recover outstanding fees and dismissal of counterclaim for alleged defects

 

Abingdon Carpets v DATEC - action against supplier of bespoke computer system for breach of contract, settled after 6 weeks of trial

 

Many of the intellectual property cases listed above concerned IT

 

 

Other commercial cases

 

Bim Kemi v Blackburn Chemicals (High Court and Court of Appeal) - this case has been discussed above

 

At an earlier stage in these proceedings, a significant decision of the Court of Appeal upheld my set-off of Blackburn's cross-claims for breaches of a licensing agreement (containing an arbitration clause) against Bim's claims for breaches of the later distribution agreement relating to different products. The Court of Appeal was prepared to go further than in Dole Dried Fruit and gave a restrictive interpretation of the "injustice" requirement which had been the focus of Esso v Milton. 

 

This may be contrasted with Antiquesportfolio.com v Fitch in which I successfully resisted set-off on the basis of Esso v Milton.    

 

Easton v Ford (Court of Appeal) - amendment of pleadings. This decision significantly qualified the observations in the House of Lords in Hansel v Ketteman and reaffirmed the principle that amendments should be permitted if they do not cause injustice to another party. I acted for the successful appellant (defendant).

 

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