When is a secret not a secret?

Question: when is a secret not a secret? Answer: when everyone who wants to be told has a right to find out. This is the moral of a fascinating and really important decision of Mr Justice Arnold on Wednesday in the Patents Court, England and Wales, in LG Electronics Inc v Sony Europe Ltd, Sony Computer Entertainment Europe Ltd, Sony Computer Entertainment Inc and Sony Corporation.

LG sued Sony for infringement of three Blu-Ray patents. In these proceedings LG applied for summary judgment in relation to Sony's defence that LG's patents were invalid in light of an item of alleged prior art. The earliest priority date for any of those patents was March 2003.

Sony's defence was based on invalidity, basing its position on a document on DVD specifications for read-only discs which was available to the public in 1997.  According to LG, this 1997 document was not prior art that was capable of undermining its patents' novelty. The information in it was held by a standards body, the DVD Format/Logo Licensing Corporation, for the limited purpose of developing DVDs and related products. This document was only accessible by people who paid the required fee and signed a non-disclosure agreement. Accordingly it was not made available to the public.

Mr Justice Arnold refused the application for summary judgment. Among other reasons for doing so, he concluded that, even though he would accept LG's evidential submissions in support of confidentiality and the restriction of the use of the information in the 1997 document, a not-unrealistic possibility remained that Sony would be able to establish that all interested persons, who might want to manufacture under the standard, had an opportunity to gain knowledge of the contents of that document and to use that information for their own purposes.

Notes the IPKat: if a standard truly is a standard, everyone who wants to make any product that is governed by the standard has to make it in accordance with that standard -- or it wouldn't be standard.  What's more, since we allow the setting of standards and don't stigmatise them automatically as being anticompetitive clubs where information concerning the standard is pooled between club members so that no-one else can make products that conform to the standard, it would be not just anti-competitive but positively churlish to refuse to provide details of a standard to anyone who asks. Now, what sort of people ask for details of standards? Obviously, anyone who is interested in making DVDs.

This case raises another important question: is information which is available in the public domain to be treated as confidential for the purposes of patent law by virtue of the fact that it's labelled "confidential"? The answer must be "no": though the information may not be available to the public free, what the public does have is a known source for the information which will be available to all on similar, justifiable terms as of right.  In these circumstances, the purpose of the obligation of confidence is clearly only to ensure that a standards body is able to recover its own charges. That is quite different from an obligation of confidence designed to restrict the supply of information per se.

This case is not yet available on BAILII.  Merpel keeps hearing dire rumours of cases which have recently been posted on BAILII and then have suddenly disappeared again, apparently for "copyright reasons". She fervently hopes that copyright is not about to come into conflict with the public's interest in gaining access to the law, including decided cases with precedental value by which that public is bound. If any readers have experienced this phenomenon, will they please let Merpel know.

Blu-Ray here
Sting Ray here
Sugar Ray here
Catt Ray here

It works! Money-saver saves money litigating his trade mark

The IPKat is thinking of taking Mark with him the next
time he goes to The Old Nick for a pint of Badger, currently
the most extortionately expensive thing he does these days

The carpet of this Kat's little upstairs office has been festooned of late with a splendid selection of recent judgments from various jurisdictions which he has printed out with the best of intentions but hasn't yet had the chance to read, let alone write about. One such case is the "Money Saving Expert" litigation earlier this month in the form of Lewis v Client Connection Ltd [2011] EWHC 1627 (Ch). Fortunately, while the Kat was sitting at his computer wracked by his conscience and wondering which readers to disappoint, the following offering arrived, quite by chance, from his old friend Mark Weston (Matthew Arnold & Baldwin LLP), who has taken a keen interest in the saving of money and its point of intersection with intellectual property.  Mark writes:

"Be a money saving expert – go for a summary judgment, it’s cheaper!

To most people, the tag “Money Saving Expert” conjures up Martin Lewis – he of the “save-as-much-cash-as you-can-by-not-wasting-it-if-you-don’t-have-to” fame. He is known to talk as fast as that on his frequent television appearances, on his own show, on BBC Watchdog and elsewhere. And in those appearances, he frequently mentions his website www.moneysavingexpert.com which now has a dedicated following of over 5 million users [Says Merpel, with 5 million consumers all spending prudently and saving their cash, it's hardly surprising that the British economy is limping along]. As a successful consumer financial journalist, his numerous various newspaper columns also mention his website, which is used nationally by ever-increasing numbers for the money saving tips and tricks it promotes. In 2009 Lewis was the UK’s most searched-for person online. But this article is not an advert for Mr Lewis. It is about his successful day in court.

Lewis owns two UK registered trade marks for the word mark MONEY SAVING EXPERT dating respectively from 2004 and 2007. They both cover advisory services relating to financial matters provided via an internet website [if you haven't thought, hey, isn't that a trifle descriptive, give yourself a black mark -- but read on ...]. Client Connection Limited (CCL), operates a claims management business which uses cold-calling. Until last September, CCL was operating using the tag “Money Claiming Experts”. Say the different tags quickly. Get the difference? No, nor did a lot of people apparently.

In December 2010, Lewis sued CCL for trade mark infringement under sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994. He sued for summary judgment – which is used when a case is so “open and shut” that a full trial is not needed. CCL used a common defence, counter-claiming that Lewis' trade marks were invalid because they were non-distinctive and descriptive of the services in question and asking for a declaration that this was so (this is based on section 3 of the Act which says that a trade mark must not be registered if, among other things, it is devoid of distinctive character or consists exclusively of signs designating a characteristic. CCL was asking for a declaration that the trade marks were invalid and should not have been accepted for registration in the first place).

Section 10(1) infringement happens when a third party uses, in the course of trade, a sign which is identical to the registered trade mark, for goods or services which are identical with those for which the trade mark is registered. This was a non-starter [someone should keep a score of how many times it's raised by perfectly serious lawyers when we all know it's a non-starter -- and whoever raises the argument in vain most often should be made to pay for the next round of drinks]. Lewis had argued that, at the start of CCL each cold call, the term “money claiming expert” (which CCL admitted using) was aurally identical with “money saving expert” - and any recipient of the cold call would not notice the difference in the phrases. CCL denied using, authorising or promoting the use of the term “money saving expert” on the telephone or otherwise. Mr Justice Norris said that investigation of possible aural similarity was needed – which was not something for a summary judgment claim. The court also doubted whether CCL's services were identical with the services covered by Lewis' trade marks. So “Strike one!”; this was a non-starter.

Section 10(2) infringement happens when a third party uses, in the course of trade, a sign which is (i) identical to the registered trade mark, for goods or services which are similar to those for which the trade mark is registered or (ii) similar to the registered trade mark, for goods or services which are similar or identical to those for which the trade mark is registered; and (in either case) there exists a likelihood of confusion on the part of the public - which includes the likelihood of association between the sign and the registered trade mark. 

The judge had more sympathy with this head of claim. The evidence consisted of witness statements from people who had been cold-called [or "called cold"?] by CCL, who had then contacted Lewis to complain (wrongly!) about being cold-called by Lewis’ organisation or to warn Lewis that someone else was using his “name”. CCL's tactic was to question the truth and reliability of these statements, saying it was a small sample and many did not show the necessary “confusion”, etc. 

Mr Justice Norris said that, if unchallenged, this evidence would be enough to prove the section 10(2) claim and he confirmed that he considered Lewis to have demonstrated that there was no real prospect of CCL successfully defending the claim at trial – which is the basis for a successful summary judgment claim. His reasoning was that CCL’s points all amounted to a hope that if there was a trial, some other evidence might turn up to paint a different picture to the witness statements presented. Further, CCL’s claim that some of the evidence showed a lack of confusion by witnesses about call origin was also irrelevant because Lewis only had to demonstrate a likelihood of confusion (i.e. not actual confusion) and this included the likelihood of association with Lewis' marks - which the judge said had been demonstrated beyond real challenge. Also, even though the sample of phone calls was small, it was right to infer that the aural similarity of the phrase used at the start of the cold calls was common to all the calls made. Finally, CCL’s argument that “MONEY SAVING EXPERT” was inherently descriptive (which reduced the likelihood of confusion) was wrong as the mark had acquired a highly distinctive character through use. Everyone, it seems recognises it. Game set and match to Lewis!

Section 10(3) infringement happens when a third party uses, in the course of trade, a sign which is identical with or similar to the registered trade mark where the trade mark has a reputation in the UK and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. The judge did not need to consider this as Lewis had already won under section 10(2). However, he did say that he would also have given summary judgment under section 10(3) as he considered that anyone who heard the name "Money Claiming Experts" would link it to Lewis’ mark, and that CCL’s use of its own phrase took advantage of and benefited from the power of attraction, reputation and prestige of Lewis’ marks. He said that a full trial would not reach any different conclusion. Finally, for good measure, he added that CCL’s cold-calling practices would have tarnished Lewis’ marks.

So Lewis won his legal victory – on the cheap – because, when all was said and done, the evidence demonstrated that witnesses identified Lewis - and only Lewis - with the name "money saving expert"".

The IPKat is quite fascinated by this, since he had innocently imagined that, while an application for summary judgment under s.10(1) [if relevant] or s.10(2) would be relatively straightforward, there would be enough arguable obstacles to an application under s.10(3) in respect of a trade mark which was not a leading consumer brand and which suffered from the handicap of being prima facie descriptive and therefore at least capable of being deployed in a descriptive non-trade-mark-use sort of way. Merpel says, if Mr Justice Norris is as robust as this in summary applications, it will be fun to see how he handles those pesky defendants who raise Euro-defences.

How to make money here
How to save money here
Money plants here; money spiders here