The Trade and Cooperation Agreement and its impact on IP, Pharma and Medical Devices

The final Brexit agreement, the Trade and Cooperation Agreement (the “TCA”) was agreed between the UK and the EU on 24 December 2020. Within this agreement are provisions that set out the standards expected to be recognised (mutually) between the EU and the UK in relation to intellectual property (including SPCs and trade secrets). There are some provisions concerning pharmaceutical regulation and product standards, but overall there is a lack of mutual recognition, with the consequence that, for both pharmaceuticals and medical devices, there are now effectively two separate regimes for the EU and the UK.

Intellectual Property

The provisions on IP match or exceed those for IP set out in the various treaties to which the UK and EU have acceded (such as WIPO, WTO and TRIPS agreements).  These IP standards are to be maintained as a minimum. The cited objectives and scope in relation to intellectual property (see Title V) indicate the aims behind these provisions which are to:

(a) facilitate the production, provision and commercialisation of innovative and creative products and services between [the UK and the EU] by reducing distortions and impediments to such trade, thereby contributing to a more sustainable and inclusive economy; and

(b) ensure an adequate and effective level of protection and enforcement of intellectual property rights.

The provisions are intended to “complement and further specify the rights and obligations of each [of the UK and the EU] under the TRIPS Agreement and other international treaties in the field of intellectual property to which they are parties” and do not “preclude either [the UK or the EU] from introducing more extensive protection and enforcement of intellectual property rights than required under [this section of the TCA] provided that such protection and enforcement does not contravene [those provisions]”. However, there are aspects of current UK and EU IP law, such as the dilution provisions in trade mark law, to which the agreement does not refer, instead referring to the Paris Convention provisions on the protection of well known marks. Whether this will be a point of future divergence remains to be seen.

Both the UK and the EU also have the ability to develop their own exhaustion regimes. The provisions on geographical indications (“GIs”) indicate that a mutual future scheme has not be agreed although a review clause on GIs has, which provides that the UK and EU may (if both parties agree it is in their interests) use reasonable endeavours to agree rules for the protection and domestic enforcement of their GIs.

The UK Government’s Summary document that accompanies the TCA (see here) states that the agreement “includes mechanisms for cooperation and exchange of information on IP issues of mutual interest” and “retains regulatory flexibility for each [of the UK and the EU], enabling the UK to develop an IP system in line with [its] domestic priorities“, thus enabling the UK to diverge where it so requires.

We have already commented on the changes to the UK IP regime in the firm’s guide to Brexit here (see the IP section).

The Regulation of Medical Devices and Medicinal Products

Medical devices: The TCA has a chapter (4) (under Trade – Title I) on eliminating unnecessary technical barriers to trade which deals with conformity of standards. However, this only provides for an approach under which each party can agree that its standards bodies (including those relating to medical devices) will conform with international standards and will work together to influence those and to “foster bilateral cooperation with the standardising bodies of the other Party“.

For medical devices, it had been hoped that there would be at least mutual recognition of conformity assessment under which each of the EU and the UK would recognise the other’s certification bodies. However, as things stand, although Great Britain will continue to accept CE marked medical devices until 30 June 2023 those devices certified by the UK and marked as UKCA (standing for UK Conformity Assessed, as discussed in more detail in our post here), will not mutually recognised by the EU.

Medicinal Products: For medicinal products there is a dedicated annex in the TCA, Annex TBT-2 – Medicinal Products (the “Medicinal Products Annex”), which applies to all medicinal products listed in its Annex C, namely:

  • marketed medicinal products for human or veterinary use, including marketed biological and immunological products for human and veterinary use,
  • advanced therapy medicinal products,
  • active pharmaceutical ingredients for human or veterinary use,
  • investigational medicinal products,

with this list being subject to amended by the UK-EU Partnership Council (the main governing body for the agreement and supplementing agreements).

The aim of the Medicinal Product Annex is to “facilitate availability of medicines, promote public health and protect high levels of consumer and environmental protection in respect of medicinal products”.  To help achieve this aim, the Annex provides for:

  • the mutual recognition of Good Manufacturing Practice (“GMP”) inspections and certificates, meaning that manufacturing facilities do not need to undergo separate UK and EU inspections;
  • the individual inspection, on notice, by the EU or UK of each other’s facilities); and
  • for the suspension of the mutual recognition arrangements.

Further, the TCA also states that the EU and the UK should work together to implement agreed international guidelines and that any changes to either the UK or the EU’s regulation regime should be on 60 days’ notice and be subject to discussion by a Working Group on Medicinal Products, which will be established to enable mutual consultation. This Working Group on Medicinal Products will be under supervision of the Trade Specialised Committee on Technical Barriers to Trade, and will monitor and review implementation and ensure the proper functioning of the Medicinal Products Annex. It is noteworthy that the Medicinal Products Annex is specifically excluded from the TCA’s disputes mechanism, however, through its role in facilitating discussions and functioning as an appropriate forum for issues relating to Medicinal Products, it is hoped that it will be a sufficient mechanism to deal with any concerns.

When considering the confidentiality of information supporting applications for marketing authorisations (“MAs”), regulatory protection of pharmaceutical products, and Supplementary Protection Certificates (“SPC”) it is noteworthy that this is not included in the Medicinal Products Annex, but is included in the IP section (Title V) of the TCA.

  • In relation to regulatory data protection generally, the TCA requires that both the UK and the EU ensure that commercially confidential information submitted to obtain an MA is protected against disclosure to third parties, unless there is an overriding public interest or steps are taken to ensure the data is protected from unfair commercial use.
  • For the regulatory protections of data and market exclusivity, the TCA provides that, subject to any international agreement to which both the EU and the UK are party, and without prejudice to any additional periods of protection which either party may wish to provide for in its domestic law, these regulatory protections will be “for a limited period of time to be determined by domestic law”. This allows each of the UK and the EU to determine the length of such regulatory exclusivities under their own regulatory regimes.
  • For SPCs, the TCA records the agreement of both the UK and the EU to provide for further patent protection to compensate for the impact of regulatory administrative procedures but, again, the length of time is not stipulated.

The effect of these provisions is that they provide some comfort that these valuable forms of protection for medicinal products will be maintained by both the UK and the EU.

For detailed commentary on the new regulatory position for Pharma in the UK, and the impact on IP rights generally, see our series of posts on the HSF Intellectual Property Notes blog here.

Other provisions relevant to the pharmaceutical and medical device industry

The TCA also has provisions relating to the UK’s continued participation in EU programmes and on UK / EU cooperation on “serious cross-border threat[s] to health that are relevant for the pharmaceutical industry.

  • Subject to the UK making financial contributions, Part 5 of the TCA includes agreement on the UK’s continued participation in EU programmes, including the EU’s research and innovation funding programme, Horizon Europe.
  • UK / EU cooperation on serious cross-border threat[s] to health is covered by the TCA including agreement between the UK and the EU on emergency relief in relation to importation requirements, tax and road transport exemptions, and agreement to cooperate in relation to international health security systems.

Future developments

Although tariff free and quota-free trade has been agreed, there is little mutual recognition of regulatory provisions. This may not be the end of negotiations, with automatic reviews every 5 years written into the TCA and termination possible on 12 months’ notice.  See the HSF Brexit blog for further information, and our initial comments here.

Key contacts and authors

Jonathan Turnbull

Jonathan Turnbull
Partner, London
+44 20 7466 2174

Rachel Montagnon

Rachel Montagnon
Professional Support Consultant, London
+44 20 7466 2217

George McCubbin

George McCubbin
Senior Associate, London
+44 20 7466 2764

Priyanka Madan

Priyanka Madan
Associate - London
+44 20 7466 2986

Deepfakes: is seeing still believing?

The BBC thriller The Capture has captured the public’s imagination with its portrayal of the relationship between deepfakes and CCTV evidence, and the serious legal risks associated with this technology.

In a recent report published by non-profit research institute Data & Society, deepfakes were found to be “no new threat to democracy”, in that audiovisual media has always been manipulated, for a variety of purposes. What is new is the convincingness of deepfakes; the challenges associated with detecting them; and the risks associated with sharing deepfakes at speed and at scale on social media.

In this post we discuss the issues arising from such fakery and the possible legal counters.

What are deepfakes?

Put simply, deepfakes are fake videos created by artificially intelligent systems, predominantly trained using machine learning methods in order to generate or manipulate human bodies, faces and voices.

In the Data & Society report, deepfakes are distinguished from ‘cheap fakes’: fake videos made using package software or no software at all. Cheap fake techniques may include adjusting the timing of footage, deleting or cutting frames together, re-dubbing sound, or simply re-contextualising footage by changing narration, captions or video titles.

Once confined to academic research groups and Hollywood studios, deepfake technology is now accessible to anyone with enough computational resource to manipulate it. Consumer grade animation software can be used in conjunction with open source programs available on public repositories like GitHub to produce fakes of a similar quality to those created for legitimate purposes by computer scientists.

The first widely-known examples of amateur deepfakes appeared in November 2017, when a Reddit user called “deepfakes” uploaded a number of fake videos depicting celebrities’ faces grafted onto pornography.

Fake history

It is important to remember that audiovisual fakery is nothing new. Since the beginning of motion pictures, efforts have been made to create visual and audio effects using methods other than filming or recording them. Historically, these effects were achieved by manually altering existing footage in the cutting room, or later, in special effects departments. More recently, computer-generated imagery has advanced to a point where fakes in the film industry are now not only remarkably convincing, but commonplace – such as the recreated version of the late Carrie Fisher in recent Star Wars movies.

However, what is new is the potential for deepfake technology to help audiovisual fakery cross the line from expressive content to informative content.

Fake news

Fewer people now consume news via traditional methods such as reading newspapers, instead favouring audiovisual media such as 24/7 news channels or news apps on smartphones. In today’s digital age, news is no longer the exclusive remit of mainstream media coverage; many of us today also consume news via alternative resources, such as Twitter, reddit and other social media platforms.

This means that the phenomenon of fake news is not confined to text media alone, and whilst news articles written or published by unreliable sources are easily discredited, video content is much harder to argue with. Consequently, deepfake technology provides an opportunity for malicious actors to try to pass off fiction as fact. Technology now exists which makes it possible to synthesize entirely fake audiovisual performances by almost anyone, providing the “ability to put words and actions in the mouths and bodies of others”. For example, there have been several high-profile examples of deepfake videos featuring Barack Obama, such as the fake speech video created by researchers at Stanford University, and the “public service announcement” video warning against the dangers of deepfakes, created by BuzzFeed and American actor and comedian Jordan Peele.

However, it is not only public figures who are at risk of their images being faked. It only requires a few hundred images of training data to produce a reasonable quality deepfake, and in today’s digital age, there are plenty of images of most people publically available on their social media profiles. As such, it is relatively easy for any one of us to be “faked”.

It is important to note that fake news is a concern for cheap fakes and deepfakes alike – given the speed and scale at which information is transmitted via social media platforms, content can go viral before moderators, fact checkers, journalists and mainstream media are able to identify that content as being faked. The problem with deepfakes, though, is how much harder they are to detect, even with modern deepfake detection algorithms, which are not yet widely available.

This creates a risk that an unsuspecting journalist or unscrupulous mainstream media outlet may pick up a deepfake news story and perpetuate it via legitimate sources, thereby ‘validating’ the fake content as real news, with potentially harmful consequences.

Fake evidence

The possible implications of deepfakes on the reliability and admissibility of CCTV evidence in court were explored to devastating effect in The Capture: if seeing is no longer believing, do deepfakes change evidence as we know it?

Historically, courts have always struggled with new forms of evidence. For example, expert witnesses were required to justify the admissibility of photographic evidence to 19th century courts, despite its relative reliability as evidence compared with written witness statements and oral testimony.

That is not to say that audiovisual evidence is the same as ‘truth’ – such evidence can, and has, been manipulated in past trials, such as in the famous Rodney King case in the US, in which video evidence of a violent arrest was deliberately slowed in such a way as to undermine allegations of police brutality. The jury said that the slow video had “made all the difference”, and the police officers were acquitted. Consider the potential effects, then, of video ‘evidence’ which is not only manipulated, but which has been entirely fabricated by deepfake software, placing people at crime scenes or even depicting them committing crimes.

With not only CCTV, but photographs, dashcams, amateur footage, and the results of facial recognition software, all playing a potential role in court cases, there will be serious political, security and criminal implications if audiovisual evidence can no longer be trusted as proof.

Technical and legal counters

Whilst a limited amount of legislation dedicated to deepfakes exists in some jurisdictions (for example, Californian legislation which places restrictions on deepfakes depicting politicians within 60 days of an election), there is no UK legislation specifically designed to address deepfakes.

Existing causes of action which could be relevant include:

  • Copyright and social media takedown requests

Currently, social media platforms such as Facebook, Twitter and Youtube, and website hosting companies, benefit from the ‘safe harbour’ principle under US and EU law, meaning that the platforms themselves can’t be held responsible for user content which infringes copyright so long as they have a process for notification and takedown of such content (most providers’ processes are governed by the US Digital Millennium Copyright Act, even if they are not US-based). Content creators can submit evidence of copyright infringement to the platforms (usually via standard-web based forms available on the platforms), and the platforms are then responsible for removing the infringing content.

This mechanism was recently used to remove a Kim Kardashian deepfake from YouTube, and thus offers photographers and filmmakers a relatively straightforward method of removing deepfakes which use their copyrighted work. Additionally, blocking injunctions may be available against internet service providers (ISPs) to tackle repeated and concerted attempts to post infringing content on websites.

However, use of copyright material is permitted under the Copyright, Designs and Patents Act 1988 in a considerable number of circumstances, including for purposes of reporting current events, caricature, parody or pastiche, meaning satirical deepfakes may be exempt from copyright claims. In addition, if only a part of the copyrighted work is used, there could be claims that the deepfake would be exempt under the ‘quotation’/extract provisions.

  • Image rights

Whilst celebrities enjoy the benefit of ‘image rights’ in some jurisdictions, which protect them from misuse of their likeness, these rights do not exist in the UK, so individuals whose images are used in deepfakes must seek other means of redress (often using passing off via false endorsement, as in the Rihanna v Topshop case [2013]). Depending on the context of the deepfake (e.g. if the deepfake is used in a commercial context), options may include bringing a claim under passing off/false endorsement or perhaps trade mark infringement if appropriate images are registered as trade marks.

  • Data privacy

Individuals’ images constitute personal data under Art 4(1) of the General Data Protection Regulation (‘GDPR’). As such, victims of deepfakes may also be able to enforce their data protection rights against the data controller, including the right to rectification (Art 16) and the right to erasure (Art 17). However, identifying the ‘data controller’ (or controllers) in the context of a deepfake video shared online via multiple platforms is unlikely to be a straightforward process.

  • Defamation, harassment and misuse of private information

These offer alternative causes of action in circumstances where the deepfake: would harm an individual’s reputation, amounts to harassment, or is pornographic (which would amount to private information, even though the information is false (McKennit v Ash [2006]).

Proposed measures to counter the “fakes” problem:

The shortcomings associated with existing options set out above are compounded by the fact that, even if the victim is able to make out a case, under one or more of these grounds, they may face difficulty in actually bringing their claim if, for example, the creator of the deepfake cannot be identified, or if there are jurisdictional obstacles.

Consequently, there are widespread calls for further legal and te counters to deepfakes. Potential counters being considered include:

  • Legislation requiring the identification or registration of content creators
  • Legislation forcing individuals to label manipulated content and fine those whose manipulative content is deemed harmful.
  • An improved regulatory and legislative framework around potential rights of action for victims, such as establishing image rights in the UK.
  • Adding invisible ‘noise’ to digital images which deepfake algorithms struggle to process, impacting the quality of the resulting deepfake content.
  • Tracking the provenance of content through use of distributed verification technology (such as Truepic, which uses blockchain technology to verify the authenticity of content).
  • Removing net neutrality for all packets carrying video data, in order to trace them to their real-life creators.
  • Embedding automated fake detection software on social media platforms, search engines and internet browsers.
  • Employing more content moderators and reconsidering platforms’ liability for their role in spreading fake content.
  • Raising awareness of fake audiovisual content and encouraging the public to interrogate their sources.

Summary

Whilst audiovisual manipulation is nothing new, whether in the context of news media or evidence in court, the advent of deepfake technology makes fake content much harder to identify. In a world where seeing is not necessarily believing, and where audiovisual footage is shared at speed and at scale on social media and other platforms, the risks associated with deepfakes and cheap fakes alike are becoming increasingly important to address.

Joel Smith

Joel Smith
Partner, Head of Intellectual Property UK, London
+44 20 7466 2331

Laura Adde

Laura Adde
Associate, London
+44 20 7466 7491

Rachel Montagnon

Rachel Montagnon
Professional Support Consultant, London
+44 20 7466 2217

 

France adopts a confidentiality regime for the trade secrets relied upon in (patent) litigation

As part of the French Law on the Protection of Trade Secrets dated 31 July 2018, French lawmakers have finally adopted a long-awaited array of confidentiality rules covering the trade secrets that are being relied upon in cases that come before civil and commercial courts. Such provision was a requirement of the EU Trade Secrets Directive of 8 June 2016. These confidentiality rules have already been applied in patent litigation in a decision of the Paris Court of Appeal of 9 October 2018.

Until now, parties to patent litigation in France might have been reluctant and even precluded from providing confidential data, such as (i) their own financial data in the interests of calculating damages, or (ii) confidential contractual documents, as confidentiality could not be adequately preserved once these were relied upon as evidence in open court. This vulnerability has historically had a deterrent effect on efficient patent litigation in France compared to what was possible in other jurisdictions.

The following provisions went into force on 1 August 2018, marking a great improvement and quickly proving their worth in French patent litigation.

Article L. 153-1 of the French Commercial Code now provides that “Where, in the course of civil or commercial proceedings aimed at obtaining a pre-trial order of investigative measures before any proceedings on the merits, or in the course of proceedings on the merits, and the exhibit has been deemed to infringe or alleged by a party to the proceedings or a third party to be capable of infringing a trade secret, the court may take any of the following steps sua sponte or at the request of a participating or third party if the trade secret cannot be otherwise protected, without prejudice to the rights of defence: 1° Have the court alone review the exhibit, and if deemed necessary, order an expert opinion and request an opinion from each of the parties via a person authorized to assist or represent the party so as to decide whether to apply the protective measures set out in this Article; 2° Decide to limit the disclosure or production of the exhibit to certain parts thereof, order disclosure or production of a summary of the exhibit only, or restrict all parties’ access to a single individual person and a person authorized to assist or represent that party; 3° Decide that hearings will be held and the decision issued in chambers; 4° Adapt the grounds of the decision and the mode of publication thereof to the need to protect the trade secret.

In addition, Article L. 153-2 of the French Commercial Code provides that “Any person with access to an exhibit (or content thereof) that the court has deemed to be covered or likely to be covered by trade secret is bound by a duty of confidentiality and prohibited from any use or disclosure of the information in the exhibit. For a legal entity, this obligation […] applies to its representatives by law or pursuant to the articles of association and to any persons acting for the entity in court. Persons with access to the exhibit or its content are not bound by this duty either in their interactions with one another or with the aforementioned representatives of the entity that is party to the proceedings. Persons authorized to assist or represent the parties are not bound by this duty of confidentiality vis-à-vis said parties, except as provided in Article L. 153-1(1°). The duty of confidentiality does not expire at the end of the proceedings. It does expire, however, if a court issues a non-appealable decision that trade secrecy does not apply or where the information in question has since ceased to qualify as a trade secret or has become easily available.

The ability to rely on confidential data could be a game changer in future patent litigation in France, and the Paris Court of Appeal has already enforced these provisions to allow confidential license agreements to be disclosed while ensuring their confidentiality. The decision, dated 9 October 2018, was issued in a SEP/FRAND case, but its solution could apply across an extremely broad range of patent litigation cases in France. The operative part of the decision reads as follows:

Rule that the communication of these non-redacted documents, along with their possible schedules, will first be made between attorney’s only, that the attorneys will then revert to us – by 7 December 2018 at the latest – with their written observations on the excerpts or elements of those documents likely, on their opinion, to infringe or not a trade secret, such that we can decide, if relevant, to order one or several measures provided in paragraphs 2°, 3°, or 4° of Article L. 153-1 of the French Commercial Code.

Our London and Milan offices have also commented on the implementation of the Trade Secrets Directive in their respective jurisdictions on the Herbert Smith Freehills Intellectual Property Notes blog: see here for the UK and here for Italy.

Contact

Frédéric Chevallier

Frédéric Chevallier
Partner
+33153571360

TRADE SECRETS – SHORT VIDEO ON THE IMPACT OF THE NEW UK REGULATIONS IN IP AND EMPLOYMENT CONTEXTS

Here’s a short video made for Practical Law, in which Herbert Smith Freehills IP and Employment Professional Support Consultants, Rachel Montagnon and Anna Henderson, discuss the impact of the UK’s recent Trade Secrets (Enforcement etc) Regulations 2018 and practical approaches to protecting confidential information and trade secrets.

Key issues discussed are:

  • The new, common definition of a trade secret
  • What constitutes lawful and unlawful acquisition, use and disclosure of a trade secret
  • Practical steps businesses can take to protect confidential information
  • Considerations in relation to whistleblowing
  • Guidance around reverse engineering
  • Bringing a claim under the regulations
  • Remedies and provision for damages.
These new UK trade secrets regulations have implemented the Trade Secrets Directive ((EU) 2016/943) and came into force on 9 June 2018.  Also on our IP Notes blog, see our Milan office’s post on the Italian implementation of this Directive and our previous posting on implementation of the Directive in the UK.

Trade Secrets – added protection in force

The Trade Secrets (Enforcement, etc.) Regulations 2018 (the “Regulations”) came into force on 9 June 2018 and transpose Directive (EU) 2016/943 (the “Directive”) into UK law.

Summary:

  • The aim of the Directive is to create a level playing field by harmonising this area of law across the EU.
  • The UK already has well-developed legal protection for trade secrets governed by common law breach of confidence and by contract law.
  • A trade secret holder may now apply for remedies under breach of confidence in addition to or as an alternative to remedies under the Regulations.
  • Changes mainly concern limitation periods, procedural issues for the courts when hearing cases in relation to trade secrets and certain remedies.

Business Impact:

Businesses should continue to take steps to ensure that trade secrets are kept confidential and with limited access. This should be reflected in company policies, procedures and contractual provisions.

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Innovation Disruption and Technology – the legal and commercial issues for your business

Drawing on our practitioners’ experience and understanding of the intellectual property and technology issues facing our clients in the fast changing world in which we all now do business, we made innovation and disruptive technology the key themes at our 2018 IP Update Conference.

Described by one attendee as “The perfect mixture of commercial and legal content”, the event was held in our London offices in February 2018. We were joined by over 140 clients from the Technology, Banking, Consumer, Energy, Manufacturing, Media, Pharmaceutical & Healthcare, and Telecommunications sectors.

Click here for a briefing summarising the legal and commercial issues raised by the Herbert Smith Freehills presenters and our keynote speaker Kevin Mathers, Country Director at Google UK.

Our keynote speaker, Kevin Mathers, set the scene by discussing the current technological landscape for innovation and how Google looks at the future. Taking examples of how artificial intelligence, augmented reality and virtual reality are already being used by Google and looking at the major trends which will dictate our digital future. Kevin’s presentation was a great success, with attendees describing it as “really insightful and inspirational”; “engaging and interesting” and “stimulating and thought-provoking”.

The conference continued with sessions on

  • tackling the impact of AI on your business,
  • on-line risk,
  • open innovation,
  • interoperability and product standards, and
  • targeted advertising and the GDPR.

There was also a panel session at the end of the conference to discuss the issues facing businesses in relation to disruptive technology with contributions from partners and of counsel across the IP and IT practice areas and from several of our European offices.

Clients were impressed by the range of issues presented by the speakers and the practical approaches offered.

 

Joel Smith

Joel Smith
Head of IP - UK
+44 20 7466 2331

Rachel Montagnon

Rachel Montagnon
Professional Support Consultant, London
+44 20 7466 2217

 

UK HIGH COURT RULES ON COPYRIGHT PROTECTION OF TV FORMATS FOR GAME SHOWS

Summary

The High Court of England and Wales decided on 19 October 2017 that a particular television format document did not qualify for copyright protection as a dramatic work as its contents were unclear and lacking in specifics. Copyright protection has been notoriously difficult to obtain in respect of TV formats and the case contains useful guidance on the way television formats should be recorded or expressed in order to stand a chance of being protected by copyright as dramatic works. The High Court also considered that the TV format document was too vague and insufficiently developed to be protected as confidential information (Banner Universal Motion Pictures Limited v Endemol Shine Group Limited & others).

Business Impact

  • The decision acts as a warning for TV format developers that generalised commonplace game concepts, even if they are supported by specific examples, will likely fall short of the requirements for copyright protection as dramatic works.
  • Television producers who acquire the rights to TV formats should ensure that TV format documentation is sufficiently detailed and is kept up-to-date as the resulting shows develop. It shows the importance of a format bible.
  • To qualify for copyright protection as a dramatic work, contents of TV formats should be clear, specific and contain elements forming a coherent recognisable framework capable of being reproduced into a distinctive show.
  • In order to increase chances of their formats being protected by copyright, developers/producers should think of including the following in their documentation:
    • where the action is to take place;
    • who the contestants should be and the selection process;
    • the length of the programme;
    • when the show should be aired;
    • the source of the prizes (if any); and
    • catchphrases, identified as such (it is not sufficient to simply list words or expressions).
  • One of the major difficulties in establishing the infringement of copyright in formats for game shows is showing that what has been copied is the expression of ideas, rather than pure ideas themselves.
  • While the High Court acknowledged the possibility for television formats (even if not fully developed) to be protected by the law of confidential information, information which is too vague, insufficiently developed and of a very general nature is unlikely to qualify for protection under the common law of confidential information.
  • Claimants who have been unsuccessful in proceedings in one country should beware of starting similar proceedings against identical defendants elsewhere, as they may be estopped from doing so and such proceedings may amount to an abuse of process.

Authors

Joel Smith

Joel Smith
Head of IP - UK
+44 20 7466 2331

Alexandra Morgan

Alexandra Morgan
Senior Associate, London
+44 20 7466 2808

New Unjustified Threats Regime in force from 1 October 2017

Threatening proceedings for intellectual property right infringement can sometimes backfire. In relation to patents, trade marks and designs, there is a right for any person aggrieved by the threat to bring an action against the threatener. The “aggrieved” person may not necessarily be the person directly threatened with proceedings, it could be anyone whose commercial interests are damaged by the threat – such as a manufacturer whose suppliers or distributors are threatened. Not only does the threats action expose the IP rights-holder to the risk of damages, it also turns the potential claimant into a defendant. This in turn creates a tension with the requirements of the Civil Procedure Rules to communicate a litigant’s case early before issuing proceedings, with rights holders more likely to sue first than to threaten first.

The new Intellectual Property (Unjustified Threats) Act 2017, which comes into force on 1 October, attempts to encourage more pre-action communication by detailing what an actionable threat is, whilst providing for “permitted communications” or communications for “permitted purposes” which cannot amount to an actionable threat. It harmonises the position across patent, trade mark and design rights (including providing for unitary patents and European patents under the proposed Unified Patent Court jurisdiction) and allows pursuit of information on primary infringers from secondary parties where reasonable efforts have been made to find the primary infringer already.

To watch a video on the new unjustified threats regime click here.

Summary and Business Impact

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3D Printing and IP – Herbert Smith Freehills publishes Practice Note on 3D printing published by Practical Law IP&IT

Our Practice Note on 3D printing published by Practical Law here: https://uk.practicallaw.thomsonreuters.com/Document/I3466c5d71a1711e798dc8b09b4f043e0/View/FullText.html?transitionType=SearchItem&contextData=(sc.Search)&firstPage=true&bhcp=1 provides an overview of the 3D printing industry and highlights the challenges for intellectual property (IP) rights-holders when seeking to enforce their rights if they are infringed by 3D printing processes and resulting products. The note also considers options for rights-holders faced with unauthorised online sharing of computer-aided design (CAD) files. Finally, there is a short overview of product liability issues.
As 3D printing technology becomes more advanced, the popularity of home production as an alternative to home delivery is likely to rise, making it important for both businesses and consumers to understand the legal implications of the technology. It is still too early to say whether sectoral legislation for 3D-printed products will be needed but it is clear that businesses will need to anticipate developments and act proactively, rather than waiting for the law to catch up to a fast-moving area.

Authors

Andrew Moir

Andrew Moir
Partner
+44 20 7466 2773

Rachel Montagnon

Rachel Montagnon
Professional Support Consultant, London
+44 20 7466 2217

Adam Ford

Adam Ford
Associate
+44 20 7466 2065

 

 

 

 

 

 

 

Trade Secrets in a post-Brexit world

In their article for PLC Magazine (October 2016), Joel Smith and Jessica Welborn discuss the continued importance of the consistent and effective protection of trade secrets for businesses operating across Europe post-Brexit and the impact the new Trade Secrets Directive, even in the post-Brexit era.

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