The Potential Infringements of Intellectual Property - Essay Example

?Intellectual Property Rights Infringements and Remedies in UK Law James & Jeremy vs. Richard Introduction James and Jeremy designed a car engine that runs entirely on electricity. They have invested a lot of time and money in designing the engine and would like to protect their ideas before they advertise their ‘revolutionary invention’. It is the first of its type. They tell a close friend, Richard, about the engine and that they plan to apply for patent protection. The next day Richard takes some of the engine designs from their workshop and speaks to three large car manufacturers about the possibility of developing an entirely electric fuelled car. James and Jeremy find out about the conversation after they receive phone calls from all three manufacturers. They are furious that he has consulted external companies without their consent. Aim This paper aims to investigate the potential infringements of intellectual property that James and Jeremy owned and to provide possible remedies that are available to them and to provide a legal advice to them for the future course of action. Objectives In order to achieve the aim of this paper, the paper will has following objectives to achieve: 1. To study the intellectual property rights in United Kingdom 2. To study the possible infringements of intellectual property rights. 3. To investigate the remedies that the victims of intellectual property rights theft can avail. 4. To provide a legal analysis as to the case of James and Jeremy. 5. To develop a legal advice for James and Jeremy to follow in order to seek remedies from the United Kingdom Courts, if any. Intellectual Property Rights Laws in the United Kingdom The term intellectual property refers to the intangible creations of mind which are given physical form and contains or overtime develops financial value (Barney & Green, 2001). For instance, when a person visualizes a design and then creates it on paper or on computer program, creates an intellectual property. This intellectual property can be protected from copycats or thieves who can steal it and then reproduce it for commercial gains (Bimal & Kumar, 2012). The owner of an intellectual property has the right to protect it from any potential infringements and seek remedies for it in case infringement has occurred. However, not all intellectual properties can be directly protected. The Trade Related Intellectual Property Rights (TRIPS) recognizes several types of intellectual property rights. These are: Patents, Designs, Copyrights, Trademarks, Trade Secrets, Integrated Circuits, Plant Breeders Rights, etc (Gaff, Loren & Spinnery, 2012). Most of them have to be applied for their grant and rest of the intellectual property right do not require such seeking. Instead, they are automatically created. Patent is a right that is granted by the Government of a country for an invention. Design is a right that protects the aesthetic and visual appearance of a product. The design right acknowledges the right of its owner and provides an exclusive right to make, use, copy, import or export or assign the design for any purpose he may deem fit. Copyrights is a right that is created automatically. It is a right not to copy a work that has been created by an author and has been reserved its ownership with that author. Trade secrets comprises of confidential information, documents, secret formulas, or any private information that if leaked to any one can create substantial loss to its owners (Chapman, 1986). For instance, the Coca Cola recipe is protected as a trade secret and has not been leaked for over a century now (Breach of Confidence, 2006). In case any of its employees or management who are privy to that secret formula have revealed the actual formula or sold it to someone for commercial gains would have incurred an intellectual property rights infringement (Risch, 2012). In legal terminology it is known as breach of confidence. In English law, the breach of confidence is derived from the doctrine of equity. Thus, a person whose confidence in another person was breached is entitled to a remedy. However, the Courts of England and Wales recognize the breach of confidence only when three conditions are fulfilled, namely: (1) the data or information stolen had the required degree of confidence, (2) the information was made available to the infringer in the circumstances that ascertain secrecy and (3) there arose a threat of damage, unauthorized disclosure or use of that information. In Coco v Clark [1969] RPC 41, the Court established these principles for a successful claimant in the case of breach of confidence (Synder, 2012). In the case Morison v Moat [1851] 9 Hare 492, the court held that Moat was guilty of breach of confidence as Morison satisfied all the three criterion for breach of confidence. Morison International invented ‘Morison Universal Medicine’ and granted the marketing and selling license of the medicine to Moat senior. Morison had thought that the drug composition was safe with Moat. However, Moat had transferred the knowledge to his son who started manufacturing the same drug. In this case, the court found that there was an obligation of confidence upon Moat which he should have maintained. Therefore, the court barred Moat from continuation of the drug manufacture. The obligation of confidence arises before the work has been converted from intangible to tangible form. For instance, in the case of an invention, the inventor has to share the information with the other people and Patent Office before the inventor files a patent application. In this case, an obligation of confidence arises on the third parties to ensure safety of the confidence that has been reposed in them. There are various relationships that give rise to obligation of confidence, namely: 1) Contractual, 2) Confidence in trust, 3) Confidence in friendship, 4) Matrimonial. In Tournier v National Provincial & Union Bank of England [1924] the court held that unless the bank was required to disclose the customer’s information to public, the bank was obligated to keep the customers information private. In this case, the bank was under the contractual relationship with the customer which was an expressed clause to protect the private information of customers in confidence. In Hivac v Park Royal Science Instruments [1946] the court held that there is a possible risk of loss of information to the competitor firm Park Royal where Hivac's employees were working as part time employees. Here, the employees were contractually obligated to ensure that confidential information of Hivac is not shared with its competitors. The court in FSS Travel & Leisure v Johnson [1999] distinguished that skills, expertise and experience acquired in employment are not trade secrets. Judge Megarry stated that "the circumstances are such that any reasonable man standing in the shoes of the recipient of the information would have realized that upon reasonable grounds the information was given to him in confidence". In Seager v Copydex [1967] the Court of Appeal upheld claimants application on the grounds that Copydex has breach the confidence that Seager had reposed in him by discussing the stair carpet grip design even though the Court found the act as unintentional and unconscious one. In Lion Laboratories v Evans & Others [1984] the defendants satisfied the court that the disclosure of the information was in public interest. As a result, the defendants were allowed to publish hte details of the underlying problems in the equipment for the police that if not publish would keep the police relying on inaccurate information. In Hubbard v Vosper [1972] the court rejected the application of Hubbard as it found that the publication of the book on the Church of Scientology after Vosper had left the employment was in the public interest. Likewise, in the case Campbell v Mirror Group Newspaper [2004] the House of Lords upheld the application of the claimant on the grounds that the defendants had breached the confidence that extends to morality and private information. The right to privacy should be maintained as recognized by the Human Rights Act 1998. The Article 8 recognizes protection for the private family life and Article 10 protects freedom of expression. According to the Springboard Doctrine, Judge Roxburgh stated "a person who has obtained information in confidence is not allowed to use it as a springboard for activities detrimental to the person who made the confidential communication, and springboard it remains even when all the features have been published or can be ascertained by actual inspection by any members of the public." The Springboard Doctrine helps in identifying the nature of confidential information and any information that is part of the public domain lacks confidentiality if it is not the confidential information under springboard doctrine. In the case Woodward v Hutchins [1977] 2 All ER 751, the court rejected the claimant's application to prevent publication of their extramarital affairs as it was a common knowledge. In the case Attorney-general v The Observer [1989] the House of Lords denied injunction order for the prevention of the Spycatcher book's serialisation as the book was published and not a matter of confidentiality anymore. In the case Stephens v Avery [1988] the court upheld claimants application and found that the confidentiality of information is maintained until it is disclosed to a substantial number of people or it is an established fact. Therefore, when Stephen confided her secret with her friend Avery, she maintained her secrecy and Avery was under an obligation of confidence which she did not fulfill. The substantial number of people depends upon the nature and reasonable number in a case. In A v B [2003] and Douglas v Hello [2005] the court held that duty of confidence arise "whenever a person is in a situation where he knows or ought to now that the other person can reasonably expect his privacy to be protected". James and Jeremy vs. Richard Case Analysis In the case, Jeremy and James developed the car engine that was based on electricity and was never previously known. Thus, the car engine is an invention that seemed to have all the three criterion for patentability like its novel, involves an inventive step and has industrial application. The car engine based on electricity being a new thing qualified as novel. It was designed with a new method that was not used previously in any car engine. Thus, it qualifies the second test of inventive step and thirdly, it can be industrially manufactured on large scale. Thus, qualifying the third and final requirement of patentability. Assuming they went for a patent search from the UK Intellectual Property Office to ensure that there is no prior art available that is similar to their invention. Thus, they qualified all criterion of patentability. Furthermore, the design of the car engine on electricity was also new and contained individual character. The features and visual appearance of the car engine was initially designed on the paper and later on developed from the blue print. The blue prints automatically created copyrights in the image. Likewise, the unregistered design right or copyright-type design right was also created automatically. However, they shared their secret information with Richard who later on disclosed it with three manufacturers. When these manufacturers called James and Jeremy regarding the invention, they were furious. As they did not intend to disclose the invention to anyone until they have applied for patent protection for the invention. In this regard, the question arises that if James and Jeremy seek legal remedy from the Courts of England and Wales and Patents County Court, will they be able to establish the three conditions of breach of confidence? In this regard, when James and Jeremy shared the secret information with Richard, they expected it to remain secret with them until they have filed a patent application. Both of them made this clear to Richard who was their closest friend. Thus, the condition of degree of confidence and the arising of secrecy are achieved. Furthermore, the condition of threat of damage in financial terms to James and Jeremy as well as losing their patent and design protection due to the breach of confidence of Richard are sufficient grounds for maintainability of the legal remedy for James and Jeremy. Importantly, the Patents Act of 1977 mentions that the inventions that had been illegally disclosed to anyone continue to hold grounds for the patent protection. Thus, James and Jeremy still have their novelty maintained even though the three manufacturers are aware of that invention. However, there arises a potential threat from those manufacturers who may or may not develop similar car engine on electricity and seek patent protection for it (Feinberg & Roussiang, 1990). In order to stop them from doing so, James and Jeremy needs to seek legal remedy which are available to them in the shape of filing of civil suit for temporary or permanent injunction to bar Richard and the three manufacturers from manufacturing the same invention, in case they initiate such act. Applying the Springboard Doctrine in this case, it is found that Richard was in the situation where the information was transferred to him in confidence. Therefore, Richard was privy of confidential information and was not allowed under the Springboard Doctrine to disclose the information for the detriment of James and Jeremy. Furthermore, the obligation of confidence arose in this case as James and Jeremy shared their secret with Richard as he was their best friend. Here, the case of A v B [2003] and Douglas v Hello [2005] is applied. Richard was in the situation that he knew that he was made privy of secret information in the confidence of friendship and was likewise, obligated to maintain the confidence. In the case Stephen v Avery [1988] the court’s decision that the substantial number of people and the nature of the fact determine whether any confidential information is still intact is applicable here. James and Jeremy’s secret was not a well known fact and they only confided it with their best friend Richard. Therefore, the secret was still confidential and it was not in the public domain. Legal Advice Keeping in perspective the nature of the issues at hand, James and Jeremy are advised to undertake criminal proceedings against Richard and file a lawsuit for damages before the Patents County Court against Richard for breach of confidence. Furthermore, for the time being, James and Jeremy should make them sign non-disclosure agreement in which they agree not to disclose this invention to anyone and also not to manufacture it in anyway. Also, James and Jeremy have the option to opt for a case to put them back into the original position where no secret has been disclosed to anyone but maintains with James and Jeremy only. References Barney, MF & Green, B 2001, "Intelligent agent for identifying intellectual property infringement issues in computer network sites and method of operation thereof", Lucent Technologies, Inc. [Accessed 14 April 2012] Available at: Bimal, J & Kumar, PV 2012, "Intellectual property rights infringements and their impact over business strategies: perspective of IT industry in India", International Journal of Business Economics and Management Research, Vol.3, Iss. 3, pp:1-17. [Accessed 14 April 2012] Available at: Breach of Confidence, HSE. [Accessed 14 April 2012] Available at: Breach of Confidence, 2006. Lawdit Reading Room.[Accessed 14 April 2012] Available at: Chapman, J 1986, "California Uniform Trade Secrets Act: A Comparative Analysis of the Act and the Common Law", Santa Clara Computer & High Technology Law Journal, Vol.2, Iss.2. [Accessed 14 April 2012] Available at: Feinberg, RM & Roussiang, DJ 1990, "The economic effects of intellectual property rights infringement", The Journal of Business, Vol.63, No.1, pp.79-90. [Accessed 14 April 2012] Available at: Gaff, BM, Loren, RA & Spinnery, EA 2012, "Intellectual Property Part II", IEEE, Vol. 45, Issue 2, Pp: 9-11. [Accessed 14 April 2012] Available at: Guide to Patents County Court, 2010. Innovate Legal. [Accessed 14 April 2012] Available at: Helpman, E 1992, "Innovation, Imitation, and Intellectual Property Rights", National Bureau of Economic Research, Vol.61, No. 6, pp.1247-1280. [Accessed 14 April 2012] Available at: Moreham, NA 2010, "Breach of Confidence and Misuse of Private information: How do the two actions work together?", Media and Arts Law Review, p.265. [Accessed 14 April 2012] Available at: Navarro-Arribas, G & Torra, V 2012, "Information fusion in data privacy: A survey", ScienceDirect. [Accessed 14 April 2012] Available at: Norman, H 2010, "Intellectual Property", University of London. [Accessed 14 April 2012] Available at: Risch, M 2012, "An empirical look at trade secret law's shift from common to statutory law", Villanova Law/Public Policy Research.[Accessed 14 April 2012] Available at: Synder, NW 2012, "Putting Numbers to Feelings: Intellectual Property Rights Enforcement in China’s Courts—Evidence from Zhejiang Province Trademark Infringement Cases 2004–2009", Northwestern Journal of Technology and Intellectual Property, Vol.10, Iss.6. [Accessed 14 April 2012] Available at: Read More