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We’ve written quite a bit about Clause 13 of the Intellectual Property Bill on IPcopy but with the IP Bill now on the verge of its second reading in the Commons the time left to change the Bill is running out. The specific clauses and their wording will be discussed in the Committee stage of the Bill which may occur before Christmas.

It would be my preference for Clause 13 to be deleted in its entirety from the Bill for a number of reasons, one of which is discussed in more detail below. The intention behind the clause is to provide stronger rights for designers which is, of course, a laudable aim. However, I question whether this clause is the correct vehicle for those improved rights. Alternatives such as extending the small claims track of the Intellectual Property Enterprise Court to hear registered design cases would also enable registered design rights holders to bring cases more cost effectively. ACID themselves appear to have had great success with mediation which is a process that could be formalised and expanded in my view to provide another option to rights holders.

However, instead we have Clause 13 which will make it a criminal offence to copy a design. In this article we’ll look a little more at the forum that such cases will be heard in.

Criminal courts as a forum for design infringement

Currently registered design infringement cases are likely to be heard in the IPEC or the High Court. Criminal design cases however will be heard in criminal courts where the judges will lack the experience to assess validity and infringement issues (which may be raised as a defence) or to assess whether the design has been copied.

In a submission by a number of law professors, including Professor Sir Robin Jacob, to the UKIPO on the issue of criminal sanctions for the copying of designs, it was noted that:

“Criminal prosecutors and judges are apt to make the most straightforward blunders when handling intellectual property law”

Two cases are then highlighted in this submission, Higgs [2008] EWCA Crim 1324 and Gilham [2009] EWCA Crim 2293. In Gilham it is noted that in the context of what constitutes “substantial” copying of a copyright work:

“In that connection, it was submitted that the judge had wrongly directed the jury as to the meaning of “substantial” in the present context.”

There then follows a fairly long analysis of how the word “substantial” should be construed before the case ends with an interesting quote (my emphasis added):

“Lastly, we repeat with emphasis what Jacob LJ said in Higgs about the trial of cases involving recondite issues of copyright law before a jury. Cases that, for example, involve determination of difficult questions whether a copy is of a substantial part of a copyright work, can and should be tried in the Chancery Division before specialist judges. They can be so tried much more efficiently in terms of cost and time than before a jury, and questions of law can if necessary be determined on appeal on the basis of clear findings of fact. In appropriate cases, the Court will grant injunctive relief, and a breach of an injunction will lead to punishment for contempt of court. If the facts proven against a defendant show that he has substantially profited from criminal conduct, proceedings for the civil recovery of the proceeds of his crimes may be brought under Part 5 of the Proceeds of Crime Act 2002”

So it is fairly clear what the Court of Appeal thought of criminal courts being an appropriate forum for assessing copyright law and yet Clause 13 is considering bringing in a situation in which equally complex design cases will be assessed by a criminal court. Surely this is wrong. Criminal courts are not equipped to handle such cases and are bound to stray from the recognised caselaw and precedents in this area leading to more uncertainty for designers not less.

Will Criminal IP cases open the flood gates?

In response to criticism about Clause 13 a common counter argument is that criminal IP cases (in the copyright and trade mark arenas) have been brought infrequently and that therefore the suggestion by legal “theorists” that Clause 13 will result in a rash of criminal cases is unfounded. The ACID website even includes a link to a letter from one of their members to an MP that makes this very point.

If the ACID position is correct however it does make me question what they want the clause so badly for. If it’s not going to be used that often are they really suggesting that the mere presence of the clause will deter blatant copying?

The letter linked to above is interesting though. Despite suggesting the Clause 13 would not be used often the letter, in my opinion, is setting out a case for using the provision (despite the references to the deterrent effect of the clause)!

The fact that criminal courts may hear cases as complex as the Samsung v Apple design case (Samsung v Apple [2012] EWHC 1882 (Pat)) is frankly quite worrying and on this basis alone I think the rationale behind this clause should be rethought and the clause should be deleted from the IP Bill.

In addition to the above issues it is noted that there are plenty of other problems with clause 13, including whether the clause as written captures the legislative intent correctly and how the provisions of the clause may actually be deployed in practice.

So, what to do now? Well if you feel strongly about Clause 13 then you should write to your MP. The Parliament website “Find your MP” tool can be accessed here.

I said at the top of the article that I had a number of reasons for wanting to delete Clause 13. We’ll cover some more of those later in the week.

Mark Richardson 3 December 2013