Don’t sue the messenger

From 1 October, the Intellectual Property (Unjustified Threats) Act 2017 offers new protection for professional advisers (including lawyers) involved in certain intellectual property disputes.

If the owner of a trade mark, patent or design thinks someone else is using their intellectual property without permission, they may be tempted to threaten legal action with a letter, social media post, or other communication. While these are not formal legal actions as such, making such threats can be very a effective deterrent strategy.

Because IP litigation can be both very expensive and commercially disruptive, most people will seek to avoid the cost and energy required to fight a court battle – even if they are confident that they are innocent. To address concerns that threats could be made without proper care, “threats provisions” were introduced into legislation in 1883. If someone finds themselves unjustifiably threatened with legal proceedings for alleged intellectual property infringement, they may be able to launch a counter-attack known as a “threats action.”

This protection is unique to only certain types of intellectual property, and serves to shield innocent businesses from intimidating behaviour. If successful, the threats action may result in an injunction against more threats, a public apology, and damages for injury to reputation.

But until recently, professional advisers – including lawyers – have been at risk of incurring personal liability, because any person could be sued for making an unjustified threat, even if it was simply made on behalf of a client. This is because any person making the threats could be sued – but “person” was not actually defined in statute (section 70A(1), Patents Act 1977). It could therefore be widely interpreted to the owner of the IPR in question, but their lawyers, too – as seen in Brain v Ingledew (a Firm) (No 3). 

It is easy to see how this could be awkward for a variety of reasons. To avoid being sued for an “unjustified threat,” lawyers may suggest skipping past the threatening letter and going straight to formal litigation. This may be confusing or unsatisfactory for a client, who might prefer to send a threat first in the hopes that it could resolve the issue out of court. Lawyers might also require an indemnity from their client, which could have a chilling effect on the relationship. The risk of having one’s lawyer being sued may also discourage an IP owner from asserting their rights in the first instance.

For the last several years, the Law Commission and the Information Commissioners Office have been reviewing these threats provisions, and considering amendments. They have determined that threats actions could be used tactically to drive a wedge between legal advisers and their clients, or to drive cases to court rather than encourage negotiations over settlement.

Accordingly, under the new Intellectual Property (Unjustified Threats) Act 2017  a new protection has been introduced for regulated professional advisers where they act on client instructions, and identify their client in the communication (s. 70D(3), PA 1977). The protection extends to non-UK and non-EU advisers, as well as in-house counsel.

Fake News? How about Fake Journalist™ 

Last week, the New York Times filed a lawsuit against Contessa Bourbon for causing substantial damage and injury to the paper’s business, goodwill and reputation. Despite having never worked for the Times, Contessa has been representing herself as one of their reporters – both in person, and on social media.

According to the lawsuit, Bourbon pretends to be a NYT reporter to gain access to press events: she recently interviewed US Education Secretary Betsy DeVos and the Turkish Ambassador under such pretenses. Despite receiving cease and desist letters from the Times previously, Bourbon continues her charade. She tweets about articles she claims to have written for the paper, and her profiles on Facebook, LinkedIn, and Instagram state that she is a NYT reporter.

However, with the exception of impersonating police officers or medical doctors (and in England, solicitors), simply pretending to be someone you’re not isn’t technically illegal. The problem impersonators and poseurs face is when they (almost inevitably) break laws concerning privacy matters, defamation, criminal fraud – or, in the NYT’s case – intellectual property.

Lord Hutchinson, barrister who defended “Lady Chatterley’s Lover,” dies aged 102

In October 1960, a jury formed at the criminal court in central London was asked to consider what would become one of the most important cases in modern English history. The trial concerned neither murder, treason, nor espionage, but the publication of D. H. Lawrence’s Lady Chatterley’s Lover by Penguin Books. In honour of Lord Jeremy Hutchinson QC, a member of the Penguin defence team who passed away yesterday, here is a reminder of why Regina v. Penguin Books was such an enormous decision for the freedom of expression.

First published in 1928Lady Chatterley’s Lover tells the story of a young married woman, Lady Constance Chatterley. Her husband, Sir Clifford Chatterley, is handsome and wealthy, but paralysed from the waist down after injuring himself in the First World War. In addition to his physical (read: sexual) limitations, Clifford neglects Constance emotionally: her frustration leads to her affair with the estate’s gamekeeper, Oliver. A particular sex scene and liberal use of strong language including “fuck” and “cunt” led to it being banned in several countries.

Reputation: Taylor Swift’s protections under American and English defamation law

this post is featured on the University of the Arts London’s intellectual property blog,

♫♬ Now we’ve got problems / and I don’t think we can solve them (without lawyers…)

The right to freedom of expression is not an absolute right: there are certain restrictions in place to protect an individual’s reputation. But those restrictions vary significantly, depending on which side of the Atlantic you’re on. Considering the shared legal traditions of the United States and Great Britain, their differences on the issue of free speech is surprising. 

In early September, PopFront published an article entitled “Swiftly to the alt-right: Taylor subtly gets the lower case kkk in formation.” Exploring the singer’s (somewhat convoluted, if not contrived) connections to the American alt-right, PopFront suggests Swift’s song “Look What You Made Me Do” resonates with Breitbart readers, Trump supporters, and white supremacists, et al. The article also shows a screenshot from Swift’s music video juxtaposed with a photo of Hitler, noting that “Taylor lords over an army of models from a podium, akin to what Hitler had in Nazi Germany.”

The Copyright Between Oceans?

Imagine you’re an author trying to get your screenplay made into a film, but despite giving Miramax Studios and Working Title copies of your script, you have no luck. Ten years later, you discover the theatrical trailer for an upcoming movie starring Michael Fassbinder, Alicia Vikander, and Rachel Weiss. Your heart sinks as you realise that your story has been stolen. What do you do? If you’re Joseph Nobile, you call a lawyer and sue Hollywood for copyright infringement.

In 2012, Margot Watts (writing as M.L. Stedman) published The Light Between Oceans, a novel about a lighthouse keeper and his wife, and their desperate longing for a child. Set primarily in 1920s Australia, Tom and Isabel find an infant washed ashore in a lifeboat after a storm, together with the corpse of the baby’s father. The novel explores the psychological and moral consequences of the couple’s choice to raise the baby as their own.