The 2020 edition of IP Stars has highlighted seven EIP partners as outstanding practitioners.
Heather McCann, Darren Smyth, Gary Moss, Jerome Spaargaren, Kathleen Fox Murphy, and Andrew Sharples have retained their rankings as “Patent Stars”, while Paula Flutter is named as both a “Patent Star” and “Trademark Star”.
Individuals are recognised by IP Stars following extensive research, including information submitted by firms, market feedback and publicly available information.
The COVID-19 outbreak is impacting people around the globe.The UK government has, like many other governments, been forced to take drastic action to curtail individuals’ movements to enforce social distancing. Whilst the government has more important priorities, it has decided that it is important to maintain access to justice through this crisis. However, maintaining the traditional approach to justice and the courts is simply not possible. This has had different consequences in different parts of the justice system.At the time of writing, no new jury trials are starting in England and Wales. For those working in large commercial litigation, the traditional trial consisting of the judge, the court staff, parties’ solicitors and counsel, witnesses, experts, and interested parties congregating in a single court room for several weeks is no longer possible.
From impossible to inevitable
With the traditional way of operating no longer possible the courts and lawyers have moved fast to adapt to new ways of providing justice. Fortunately, in the UK most people now have a computer connected to the internet with a microphone and camera. This has enabled the courts to move to video hearings at breakneck speed.
The government and courts have taken several steps to enable the use of video hearings in the courts to enable access to justice as well as to allow the public to watch proceedings, including:
The Coronavirus Act 2020 provides for the use of video links in criminal trials and certain magistrates hearings and for the recording of proceedings before the courts and the broadcasting of those to the general public.
The Civil Procedure Rules have also been updated with rules for video hearings in Practice Direction 51Y, which will remain in place during the crisis. These rules are there to ensure that there is continued public access to justice. They enable this by mandating that third parties must be given access to the hearings, where possible through access to the video conferencing software used for the hearing by the parties or, if that is not possible, through a recording of the proceedings;
The Judiciary of England and Wales have released a protocol on remote hearings in civil litigation. It emphasises the flexible nature of the courts and that the courts will consider any appropriate communication method and format, although the decision of whether to proceed with a hearing and in what format is a question for the judge. It states that video hearings will require the cooperation of the parties with the court listing office, court officers and the judge.
These steps have enabled video hearings to happen and be broadcast to the public. The most high-profile of these video hearings in the UK have been those at the Supreme Court, watchable by the general public on the court’s website, using rules on video hearings put in place only days before. Similar video hearings have also taken place before other courts, including the Court of Appeal and High Court.
This wholesale move of most hearings to videoconferencing by the court is unprecedented, and the scale of this change can be seen by comparing this to an experimental exercise undertaken by HMCTS in 2018 which involved only eight specially chosen tax appeals being determined by video conference.
The opportunity after the crisis
What will happen after the crisis, and in particular the view the Courts will take towards video hearings then, is unknown. However, these changes during the pandemic will give the judiciary and lawyers much greater experience in managing video hearings and awareness of when they are and are not feasible and appropriate. Those that watched the hearings before the Supreme Court on livestream will have noticed that they were able to proceed despite some minor technical difficulties, and the occasional tendency for some participants accidentally to talk over one another.
It seems likely that hearings will mostly revert to the traditional format after the crisis, albeit with greater use of video conferencing. The belief that witness testimony, cross examination and oral advocacy are best done in person runs deep in the English Court system. In addition, whilst videoconferencing technology has come on leaps and bounds, it does still occasionally go wrong. The low-tech solution of paper files and people in a room remains exceptionally robust. However, there are potentially situations where the court will be more likely to allow video hearings. For example, where it is difficult or expensive for witnesses to attend court as the witnesses are located abroad, or where a witness has mobility problems.
The change to the law to allow the proceedings of any court to be broadcast is likely to be one that is not reversed. There is public interest in certain proceedings, as demonstrated by the recent Supreme Court proceedings relating to Brexit and the Prorogation of Parliament, although broadcasting will probably only be relevant to a small number of proceedings such as high profile criminal or constitutional cases. Most barristers can probably therefore rest easy without the need to get themselves ready for TV.
Copyright can subsist in a fabric pattern after HHJ Hacon ruled that such designs constitute a work of artistic craftmanship.
In Response Clothing Ltd v Edinburgh Woollen Mill Ltd  EWHC 148 (IPEC) the court considered whether copyright can subsist in a fabric pattern of wave-like ridges, referred to as the Wave Fabric.
Response Clothing had been a supplier to Edinburgh Woollen Mill of clothing featuring the Wave Fabric for three seasons. When Response sought to increase the price of the clothing, Edinburgh Woollen Mill rejected the price increase and supplied samples or swatches of the Wave Fabric to other potential suppliers.
Response claimed that copyright subsisted in the Wave Fabric and when Edinburgh Woollen Mill used new suppliers for the Wave Fabric, Response claimed infringement.
English copyright law dates back over 300 years. It has gradually developed from protecting only literary works, to a wider, but still discrete, list of works such as dramatic works, musical works and films. The category of work applicable in this case is ‘artistic work’ and to qualify for protection the Wave Fabric has to be a ‘work of artistic craftsmanship’.
What constitutes a ‘work of artistic craftsmanship’ was considered by the House of Lords in George Hensher Ltd v Restawhile Upholstery Ltd (1976). This was ‘not a straightforward case’ according to the Supreme Court, the judges agreeing in obiter that ‘it was difficult to identify the true principle of the judgment’. The Hensher case had laid down fairly narrow definitions for artistic craftsmanship; Lord Reid thought that a qualifying item would be a “durable useful handmade object” and Viscount Dilhorne stated it must be “something made by hand and not mass produced”. In the current case, HHJ Hacon went so far as to say that the Wave Fabric would not have been regarded by their lordships as a work of artistic craftsmanship. But, fortunately for the Claimant, the lack of clarity in Hensher led him to conclude that there are no binding principles from it that apply today.
In the recent Cofemel case, on a referral from the Portuguese Supreme Court, the CJEU considered whether a work had to have some ‘aesthetic effect’ in order to receive copyright protection. The CJEU took the view that the concept of requiring any work to have an ‘aesthetic effect’ was inherently subjective. This element of subjectivity brought an unacceptable risk that it could not be applied uniformly across the EU. With this in mind, the CJEU reinforced earlier decisions, such as the ruling in Levola, that the only criteria to be satisfied are that the work is original and an expression of the author’s own intellectual creation.
HHJ Hacon, in his judgment, balanced the restrictive approach in the aging Hensher case and the broader EU law. He noted a happy medium in the Bonz Group case, from the New Zealand High Court, which has been approved by English judges in other cases. In Bonz Group the judge held that a work of artistic craftsmanship must have some aesthetic appeal. HHJ Hacon’s own finding on copyright subsistence adopted Bonz Group with some clarification. Thus:
(i) it is possible for an author to make a work of artistic craftsmanship using a machine,
(ii) aesthetic appeal can be of a nature which causes the work to appeal to potential customers and
(iii) a work is not precluded from being a work of artistic craftmanship solely because multiple copies of it are subsequently made and marketed.
On this basis, given that the Wave Fabric has aesthetic appeal, it is entitled to copyright protection as a work of artistic craftsmanship.
The result of this case is a win for designers who will have protection for a wider spectrum of designs.
EIP celebrated winning two awards at the prestigious Managing IP Awards last night – UK Firm of the Year for Patent Contentious and Europe Cross-border Telecoms Patent Team of the Year.
It is the third year in a row that EIP has been presented with the UK Firm of the Year - Patent Contentious award.
The Managing IP Awards recognise remarkable achievements by firms and individuals in the past 12 months. EIP was recognised for our work for client Unwired Planet in a standard essential patent and FRAND litigation case against Huawei, which went before the Supreme Court in October 2019.
Gary Moss, Head of EIP Legal who lead the team, said: “These awards are recognition of the work which the EIP team has undertaken over the last few years on this landmark and ground breaking litigation, which has been acknowledged throughout the world as one of the leading cases in the area of FRAND and SEPs. The Supreme Court case was the culmination of no fewer than four major trials at first instance and two major appeals to the Court of Appeal over a period of five years. The team should feel justly proud that their hard work has been recognised in this way.
“I would also like to take this opportunity to congratulate the other firms with which we share the Cross-border award.”
EIP’s Cross-border award was shared with the other firms representing Unwired Planet in the UK and Germany, namely Osborne Clarke, df-mp and Fieldfisher.
Barrister Angela Jack lends her support to International Women’s Day 2020 and suggests that by creating a more equal workplace companies can retain talent.
Describe your role at EIP
I’m an employed barrister working as a senior associate in the litigation team. I am involved in the teams putting together our litigation matters for court. I delegate work to associates, trainees and paralegals and work collaboratively in teams of up to ten people including a partner managing the case.
What are your main challenges?
The biggest challenges are keeping on top of the big picture and the details. Some of the litigation is big multi-jurisdictional litigation where it’s a fast-moving area of the law. You have to know what’s going on in the bit you’re dealing with, but you also need to know how that fits in with the client’s bigger picture and also how it fits into the legal landscape which is developing. There’s also a lot of detail in the work we are doing at EIP and you have to have an eye for that detail. You can’t do all of that yourself and you have to make sure you’re confident that you have asked other people to do the right things and they are confident they know what they are doing.
What career path have you taken?
My route has been non-typical. I wanted to do IP law when I was at Bar school and up until doing my degree I had followed a scientific route but I then did a law degree. I found when I was looking for pupillage I really should have done a scientific degree if I had wanted to do IP law. So I pursued a career as a barrister and ended up doing social housing law for over a decade. I found I enjoyed it and did that for ten years. I then looked for a change, wanted to be employed rather than self-employed and found that my litigation experience meant that I was of use to the EIP team even though I didn’t have a science degree.
International Women’s Day is about celebrating social, economic and political achievements of women. Which personal achievement are you most proud of?
I’m particularly pleased that whilst I took a long and winding route to get here I have ended up doing IP law which is what I wanted to do when I was at sixth form.
The common perception of the legal industry is that it’s male-dominated. What has been your experience in the firms you have worked?
When I was practising at the Bar and now, it’s not male dominated in terms of numbers but you do find the very senior roles tend to be male dominated and there are a lot of reasons for that. A lot it is historical and even if you have change, at the time that I came into the profession the people senior to me were pre that change and tended to be disproportionately male.
There are definitely problems with retaining women in the law, still. Having children is a real pressure point and the law is not always as flexible as it might be. I think it’s interesting that it can find a certain flexibility in other situations that it historically couldn’t find when looking at people with family commitments. Going way back there were barristers who would have been MPs or journalists and done something alongside heir work at the Bar and clerks could manage that but they couldn’t countenance the idea of somebody having caring responsibilities as well. That has changed enormously even in my time at the Bar and certainly looking at people who are employed as lawyers there has been massive change there and people are starting to realise they can be more flexible. Not all firms are as enlightened as EIP on that front.
Can you describe any initiatives you have seen or been involved in which promote a working culture of equality, diversity and inclusivity?
I’ve been involved with an organisation called The Sutton Trust who are doing a lot to try and help people from non-traditional backgrounds to get into the law and challenging a lot of the barriers that people from more privileged backgrounds don’t even realise exist in terms of connections to work experience and having the aspiration in the first place and knowing those careers are out there and available to you. I’ve been involved on and off for a number of years since when I was an independent barrister and EIP has been involved in various initiatives.
What simple things can everyone do to help create a more gender equal workplace?
My big one is use of language and thinking about the preconceptions that can come with the language you use. For example, even amongst the paralegals themselves they might refer to themselves as “the girls”. Equality cuts both ways; we have a male working in that team and I think it’s just being careful not to do that. Also not to refer to themselves as “girls” because I think it suggests where they see themselves in the hierarchy and that’s not necessarily where they should see themselves in the hierarchy – it makes them sound more junior.
The 2020 International Women’s Day campaign theme is #EachforEqual. What is your interpretation of that?
Equality generally is about equality of opportunity and that cuts all ways. It’s about making sure that women have equal opportunities in the workforce but also that men have equal opportunities to take on parental roles without barriers to that. There is a suggestion that if men ask for parental leave they run into the different but equal problems as women who are taking time off work. If you address those issues you reduce some of the systemic barriers, particularly to women who have children. There’s nothing to be gained from even unconscious bias against women with children because men with children might also make the same choices. If you have two people of a certain age where they might have children and you think either might go off on parental leave that shouldn’t then feed into how you differentiate between them.
Another big driver is recruiting and retaining the best people and not putting artificial barriers in their recruitment and retention procedures. The kind of haemorrhaging of women that goes on at the independent Bar is not in the industry’s best interests either because you plough all this energy and money into training people and then lose them at a level when they are starting to really contribute back. That’s a bad business decision as well.