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"As my business continues to grow it becomes ever more apparent that I need to establish boundaries and expectations in my professional relationships. It had been nagging in my mind to do it for a while but having had a near-miss with a nasty legal issue I decided it was time to make the move. There was no question who I was going to turn to for this as I have known Shainul and Fortune Law for a few years and had never heard a bad word said against them. I have referred her several times to businesses that I know and love including a family business and Fortune Law have always delivered above expectations. 

Case Update : Is The Star Wars Stormtrooper Helmet A Work Of Sculpture?

In 2004, Ainsworth began producing replica helmets for public sale.  The exploitation of the helmet's design has been bitterly fought over between Ainsworth and Lucasfilm, George Lucas' production company, which has found significant success from merchandising over the years.

Under the Copyright Designs and Patents Act 1988, copyright subsists in works including "artistic works" which, in turn, include sculptures, irrespective of artistic quality.  There is no infringement of copyright where either (a) a design document has been exploited by creation of an article (i.e. 2D to 3D) or (b) where the copyright owner has industrially exploited the work (by producing more than 50 articles), it has marketed those articles in the UK, and 25 years have then passed.  These exceptions do not apply to sculptures.

If the helmet was therefore a sculpture, copyright in it would have been infringed and Ainsworth would be liable.

The Phantom Menace

The legal saga reached its first climax at the High Court in July 2008 where Lucasfilm:

1. Claimed English copyright infringement;
2. Sought an order that its US copyright had been infringed in England; and
3. Attempted to enforce a $20million judgment obtained in California for       infringement of US copyright in the US. 

It was held that Lucasfilm owned the copyright in the helmet, but that it was not a sculpture and therefore there was no infringement of that copyright.  Lucasfilm succeeded only on the second issue.

Attack of the Clones

In December 2009, Lucasfilm's appeals on the first and third issues were considered by the Court of Appeal but the appeal judge cloned the High Court's decisions.  It went further however - the decision on the second issue was reversed in favour of Ainsworth.  Lucasfilm appealed again.

Revenge of the Sith

Some three years after the first decision, the Supreme Court has now given judgment on the further appeals by Lucasfilm.  It needed only to decide on:

1. Whether the helmet was a "sculpture" and therefore avoided the infringement exceptions above; and
2. Whether the English courts had jurisdiction to decide on the infringement of US copyright in the UK.

Lucasfilm argued that of course the helmet was a sculpture: it was wholly artistic and had no practical function.  Although a helmet, it was absurd to think that it would actually be used in war. 

The Supreme Court, like the other courts, disagreed.  The helmet was both costume and prop but its primary function was utilitarian.  The Supreme Court likened the Star Wars films to historical war films in which "soldiers" wore uniforms and helmets which would never be described as works of art or sculptures.  They formed part of the film production.  As such, the helmet was not a sculpture and therefore the exceptions to copyright infringement applied.  Ainsworth was not liable.

On the second issue, the Supreme Court sided with the High Court and reversed the Court of Appeal's decision.  Whilst under relevant case law, claims in relation to land and registered rights such as patents should be heard in the country in which they are situated, European legislation provides that tortious claims (such as copyright infringement) should be heard in a defendant's jurisdiction (in this case, England) regardless of whether the claim originates in Europe.  The court could legitimately hold that Ainsworth had infringed the US copyright in the UK.  

Lucasfilm may yet get its revenge.

If you would like further advice on protecting copyright, asserting your moral rights in relation to any work, or dealing with any IP licensing matters, or if a copyright infringement dispute has been thrust upon you, please contact us by telephone on 020 7440 2540 or by e-mail at enquiries@fortunelaw.com.

The fact is that some of you may not have registered a trade mark which you use in the course of your business, whether to save costs or because you haven't found the time. You may not be aware, however, that you can still potentially prevent another's use of that mark. 

Whereas registration of a mark as a trade mark in the UK or as a Community Trade Mark (covering the EC) is by far the recommended option (giving 10 years' protection with scope for renewal, and being easier and more cost-effective to enforce), the tort of passing off allows a degree of protection for unregistered trade marks.  Further, it allows enforcement not just over a brand name, but also the identifying "get-up" of a product such as individual features of labelling and packaging.

The Elements of the Tort

Tort is the branch of law that imposes civil liability for breach of obligations imposed by law.  Examples include negligence, defamation, nuisance and, of course, passing off.

The classic form of passing off involves a three-part test which was developed in the "Jif Lemon" case (Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341), which considered a supermarket's use of a lemon-shaped/sized container to sell lemon juice.  The three elements are:

1. There is a goodwill attached to the goods or services you are selling. This would include the need to prove reputation (i.e. that the public associates your mark with your business) by examining how distinctive your mark is, how long and over what geographical area you have been trading, and the amount of publicity you have had.  


2. A misrepresentation has been made by a business to the public (whether or not intentional) which leads or is likely to lead the public to believe that its goods or services are actually your goods or services. Other forms of passing off include misrepresentation as to business connection (for example, that the other business is an authorised distributor of your goods) or misrepresentation as to geographical origin, quality of product type (such as use of "Champagne" to describe sparkling wine not from that region).


3. Damage has been suffered (or is likely to be suffered) as a result of the erroneous belief caused by the other business' misrepresentation regarding the source of its goods or services. Damage could include the likelihood of direct loss of sales or damage to your reputation for quality.

Just to show that even small businesses can succeed in a passing off claim, consider the case of Redwood Tree Services Ltd v Warren Apsey t/a Redwood Tree Surgeons [2011] EWPCC 14, 13 May 2011 in which the claimant, a tree surgeon company, obtained an injunction to prevent the defendant, a local competitor, using the "Redwood Tree Surgeons" name in specific postcodes in which the claimant operated.

Passing off is a cause of action and therefore the three elements must be proved.  This is not true of trade mark registration which gives the exclusive right to use a mark.  Remedies granted can include an injunction not to use the mark, delivery up of all infringing goods, damages or an account of profits.

If you would like further advice on protecting your unregistered trade mark, or preferably on registration of your mark as a UK trade mark or Community Trade Mark, or if you have been accused of using someone else's mark, please do not hesitate to get in touch: 020 7440 2540 or enquiries@fortunelaw.com.

As many businesses increase their online exposure with Facebook pages and LinkedIn profiles, a new company's starting point will generally be a website to market its offering and attract customers.  A domain name is a form of electronic address for that website.  The majority of you will own one and it will be a valuable asset of your business. 

All domains fall under the administrative umbrella of the Internet Corporation for Assigned Names and Numbers (ICANN) which manages the domain name system, and contracts with the different registries around the world.  Nominet is the registry to which ICANN has delegated responsibility for the .uk domain, including the task of handling .uk disputes. 

So if you operate a software company under a brand, say, "Tech Wizard" and discover a website techwizard.co.uk, what can you do about it?

Nominet Dispute Resolution Service

The service is a cost-effective and simple method of resolving .uk disputes (as compared to the court system) based on the DRS Policy and Procedure, part of the Nominet Terms and Conditions which contractually bind all .uk registrants.

Issuing a complaint

You may initiate a complaint if you discover a domain name which either is:

• Similar or identical to a domain name in which you have enforceable rights (under English law or otherwise) such as a registered trade mark or the right to pursue a passing off action, i.e. you have a trade mark for "Tech Wizard"; or


•  An "abusive registration". An abusive registration is where the domain name in question was registered, acquired or has been used in a manner which takes or has taken unfair advantage of or has been unfairly detrimental to your rights.  Proof of this must be given, for example, evidence that the respondent:

1. Has registered or acquired the domain name to sell or rent it to you or a competitor for profit; to use it as a blocking registration; or for the purpose of unfairly disrupting your business;
2. Has used (or threatened to use) the domain name to pass it off as being yours, i.e. by selling its service under the "Tech Wizard" brand; or
3. Has registered multiple domain names which correspond to well known names or trade marks in which it has no rights, and the domain name is part of that pattern.

What can the respondent do?

Once your complaint has been forwarded to the respondent, it will have a chance to defend itself, for example, with evidence that it has used the domain name in connection with a genuine offering of goods or services; that it has been commonly known by that name or legitimately connected with a mark which is identical or similar to the domain name; that it has made legitimate non-commercial or fair use of the domain name (including tribute or criticism sites); or that the domain name is generic or descriptive and that is making fair use of it.

Resolution of the complaint

You may then submit a reply after which Nominet will conduct an informal mediation to try to settle the dispute.  Failing that, an independent expert will be appointed to review the submissions and make a decision. 

The expert may order a transfer of the domain name to you, that it be suspended or cancelled, or that no action be taken.  Alternatively, if the expert believes you are acting in bad faith to obtain the domain name, it may declare that you are "reverse domain name hijacking".  There is the right of appeal if necessary and any decision will be published.

Costs

Nominet's costs are £200 plus VAT for a summary decision or £750 plus VAT for a fully reasoned decision.  An appeal will cost £3,000 plus VAT.

Although the Nominet Dispute Resolution Service is designed to avoid legal costs and the Service, Policy and Procedure are all accessible and clear (http://www.nic.uk/disputes), if you do require advice or assistance in respect of a domain name which poses a risk to your business, please don't hesitate to contact us by telephone on 020 7440 2540 or by e-mail at enquiries@fortunelaw.com.