IP Newsletter - Bishop Group


IP Newsletter - Bishop Group
Autumn 2006
Page 1
Autumn 2006
Issue 9
IP Newsletter
IBM v Amazon.com
‘Big Blue’ launches patent cases in Texas
IBM has launched legal proceedings against Amazon.com in the
United States for infringing IBM’s intellectual property rights with
respect to five patents.
The suit is an unusual action on the
part of the company which has become
known by the avuncular nickname “Big
property is one of our core assets, and
represents the work product of tens of
thousands of scientists and engineers and
billions of dollars of investment.”
Its reluctance to litigate was noted in
the company’s announcement of its decision on 23 October, which stated:
“Dating back to September 2002, IBM
has notified Amazon.com numerous
times of the infringement, but Amazon.com has shown no willingness to
have meaningful discussions.”
He added: “When someone takes our
property, without our permission through
a licence, we have no option but to protect it through every means available.”
The patents concern the use of hypertext links, methods of linking to on-line
advertising and networking for on-line
content. Four of the five patents date
back to the 1980s.
Dr. John E. Kelly III
Dr. John E. Kelly III, Senior Vice
President of IBM Technology and Intellectual Property said: “IBM’s intellectual
The suits were filed in two District
Courts in east Texas. IBM holds more
than 40,000 patents worldwide and has
been awarded more U.S. patents than
any other company for the last 13 years.
Amazon.com Director of Corporate
Communications Patty Smith told the
Farncombe Newsletter: “As a general
rule, we don’t comment on active litigation outside of our regular court filings.”
Oldest U.K. brand
Syrup sweetens records book
Hip-Hop ‘Daddy’
ditches ‘Diddy’
EU court denies
Tesco’s claim
Farncombe celebrates
at British Library
The record book granted the title in September to the
product that bears the biblical quotation “out of the strong
came forth sweetness.”
Fake Pfizer drugs
raise safety fears
TightPod owner
squeezes Apple
The syrup came into being as a by-product of sugar refined by Scottish businessman Abram Lyle in London. It
was first sold in tins in 1885 and a million tins are now produced a year.
Fighting film piracy:
Billy Watson interview
GOLDEN Syrup is the oldest brand name in the U.K., according to the Guinness Book of Records.
Captain Scott took Lyle’s Golden Syrup on his 1910 polar expedition and research shows that today more than 85%
of the U.K.’s population immediately recognise the brand.
Autumn 2006
Page 2
EU court denies
Tesco’s claim
to ‘Metro’ mark
Hip-Hop ‘Daddy’
ditches ‘Diddy’
in Dearlove deal
TESCO has suffered a defeat over its
efforts to claim sole use of the “Metro”
HIP-HOP artist Puff Daddy, whose real name is
Sean Combs but is also known as P Diddy, agreed
in September to drop the use of “Diddy” in the
U.K. owing to another Diddy’s use of the name.
A European Union Court of Appeal
ruled in September that the Metro Group,
Germany’s largest supermarket chain,
could register its name as a trademark in
The Claimant was Richard “Diddy” Dearlove
who reached number 23 in the U.K. charts in 1997
with “Give Me Love.” Mr Dearlove has been
using the name since 1992.
Puff Daddy agreed to an out of court settlement of £110,000, but can still use the “Diddy”
name in the U.S.
Sean “Puff Daddy” Coombs
Google says it’s not a verb
HOOVER may be resigned to it, Argos
positively encourages it, but Google doesn’t like it.
The search engine company has been
firing off legal letters to media organisa-
Tesco opposed Metro’s attempt to
register the name in 1998, arguing that
Tesco already had trademark protection
for the Metro name attached to its convenience stores.
Tesco’s sole right to the name expired in July 2000. The Office for Harmonisation in the Internal Market
tions, warning them against using its (OHIM) cautioned that it must provide
proof for extended protection of the name
name as a verb.
before March 2003.
In June Google entered the Oxford
An appeal to OHIM resulted in a deEnglish Dictionary with “to google,” folcision
in Tesco’s favour, but the EU court
lowed by a July inclusion in Merriamoverturned that decision.
Webster’s Collegiate Dictionary.
Farncombe celebrates at British Library
FARNCOMBE International celebrated
its 20th anniversary with a reception at
the British Library on 4 October.
combe. Graham paid tribute to Jacqueline Lake, who founded the company.
ternational in 1999. Jacqueline has continued to work as Chief Operating Officer of Farncombe.
More than 100 guests gathered to
hear a welcoming address by Graham
Robinson, Managing Director of Farn-
Farncombe was acquired by corporate investigations company Bishop In-
A highlight of the evening was an
address by Gary Jones, Director of Legal
Affairs in Europe for Intel Corporation.
Graham Robinson
Jacqueline Lake
Gary Jones
Autumn 2006
Page 3
Workplace piracy could lead
to prosecution of directors
Peter Jamieson
The BPI believes that tougher enforceCOMPANY directors should become liable
for digital piracy in the workplace according ment should apply both to the music and to
to the chairman of a trade association for the computer software.
music industry.
The organisation surveyed 2,000 adults
Peter Jamieson, chairman of the British in the U.K., of which seven percent admitted
Phonographic Industry group (BPI) has to buying counterfeit CDs, although nearly
asked the government to place intellectual half of them said that they would have
property crime further up the agenda for bought legitimate versions if the fakes were
police and Trading Standards officers.
not available.
Mr. Jamieson told the Financial Times
A BPI report on counterfeit CDs re- that Trading Standards officers “lack the
ported in September that fakes were costing duty, power and resources to enforce copythe industry about £165 million in lost right and tackle organised and well-funded
sales—about 10% of the legitimate market. criminal networks.”
TightPod owner
squeezes Apple
Fake Pfizer drugs
raise safety fears
for U.K. patients
Apple Computers Inc. has been negotiating
with businesses making use of the word “pod.”
DRUG company Pfizer has introduced
new policies and technologies to protect the integrity of its medicines following the discovery of counterfeit
Pfizer medicines in the U.K.
In September the company agreed to pay
a woman in the United States to stop using the
word “pod” in the name of a protective case
she designed for laptop computers.
Terry Wilson, of Medford Lakes, New
Jersey, who sells the TightPod case over the
internet, said Apple contacted her after the
U.S. Patent and Trademark Office informed
her that she would receive the trademark.
The U.K.’s Medicines and Healthcare products Regulatory Agency
(MHRA) discovered the problem in its
supply chain and a public announcement was made in August.
Pfizer now accepts that the distribution system in Europe has been targeted by criminals. Kate Lloyd, Medical Director of Pfizer U.K., told the
Kate Lloyd
She would not say how much Apple, of
Cupertino, California, agreed to pay towards
costs of the name change.
press: “Patient safety is at risk if counIn an interview with the China Post she
terfeit products can easily be intro- said “I know that sounds like I’m a sell-out,
duced into the supply chain through but I don’t have the resources to litigate a
cross-border trade.”
trademark case.”
London borough wins
Hackney kicks Nike into touch
Hackney had threatened to sue Nike
HACKNEY council has won £300,000 after
a legal battle with Nike over the alleged earlier this year for allegedly using the
misuse of the London borough’s distinctive council’s rounded “H” logo without permission. Nike has said that its use of the image
was “inadvertent.”
The settlement was agreed in SeptemMayor of Hackney Jules Pipe said that
ber and included an apology from the international sportswear company, as well as an the money would be used to develop sports
agreement to pay the legal costs for the programmes and facilities for youngsters in
the area.
Jules Pipe
Autumn 2006
Page 4
Fighting film piracy
Expert says: ‘We are in for the long haul’
Billy Watson is a specialist Strategy Adviser for the U.K. Film Council. His key area
is film theft and IP infringement. In September this year he addressed the Film and
Music Piracy conference on the subject of piracy in the film industry.
What do you believe is the public’s attitude to film piracy?
What about the criminal aspect
of piracy?
Studies have found that the
average person tends to place film piracy
just below stealing office stationery. So
essentially it is viewed as a victimless
crime. The perception is that the film
industry is a wealthy, glamorous business that makes too much money.
That is another message and it
is more about saying: “Do you realise
that when you buy a DVD from a dodgy
market stall or a car boot fair or from
someone who comes around to your
office, there is a real possibility that you
are feeding local crime?”
Doesn’t the term ‘pirate’ give
the impression of a loveable rogue?
Many people may well be unaware of that. Can you elaborate?
It is very difficult to come up
with an alternative. You have to use a
language that people are familiar with.
Alternatives tend towards technical jargon like ‘counterfeit operator’ or ‘IP
theft’ but a lot of people don’t know
what IP means.
We do know that organised
criminal networks are involved. But
piracy is just one of a whole menu of
offences that they are committing. Organised criminals do not set themselves
up as pirates and pursue it as a single
activity, they are involved in other
things like drugs and people trafficking.
What do you think the public
needs to know about film piracy?
It involves identifying different
target audiences. Eleven to 14 year olds
are at a good age to understand that as
avid consumers they really don’t want to
damage the machinery that provides
them with a steady choice. We have
lined up lesson packs which will go out
to schools in January 2007.
Once people get to 15 or 16 you tend to
lose them until they reach their early
20s. So the next target group is aged at
21 to 35. The approach to this group is
still under discussion but it will probably
involve a mix. For example, to those
people who use the internet we could
highlight the risk of viruses infecting
their computer through file sharing.
Then there is the very real risk of identity theft, or the risk of compromising an
ISP account.
We know for example from the tragedy
of the cockle pickers in Morecambe
Bay, from the hearing held last year, that
the main guy was put away for that
crime; but his second-in-command was
involved in counterfeit DVDs.
What sort of numbers of pirated
DVDs are we talking about?
DVDs had been shipped in
from the Far East. Customs and the
police did a good job in stemming that
flow. So then pirates opted for what’s
called “in territory manufacture.” This
involves the renting of a residential
property and the setting up of say 20
multi-DVD burners. In each burner
there are 10 trays, so in one room you
have 200. They will then produce 200
disks every ten minutes. They tend to
run these burners in two twelve-hour
Billy Watson
shifts. So there would be DVD burners
continually going while digital printers
are running off sleeves and inserts.
What about the local pirate in a
street near me?
The local guy, who we tend to
call the ‘entrepreneur,’ is involved in the
manufacture and the distribution of
DVDs in his local community. He tends
to be seen as a bit of a Del Boy who is
not doing anything seriously wrong.
Now the ‘entrepreneur’ is not necessarily linked to organised or serious criminal activity, but more often than not he
will tend to be a benefit cheat and we
need to make that connection clear.
How will these messages be put
They will fall into two camps.
One is the criminal aspect and the other
is about respecting copyright. It is about
communication, education, enforcement,
technology and legislation. We are in
for the long-haul.
If you have any questions about this newsletter or Farncombe’s services please contact Graham Robinson or Trish De Spon
Sovereign House, 53 Broadwater Street West
Broadwater, Worthing, West Sussex BN14 9BY
Telephone: +44 (0)1903 820 802
Fax: +44 (0)1903 210 999
email: [email protected]