AIPPI Event Report: Unjustified threats – are you threatening me?

“Michael
Hicks, of Hogarth Chambers, gave an AIPPI talk at Bird & Bird’s offices on the
changes brought in by the Intellectual
Property Unjustified Threats Act 2017 (the “Act”).

Threats
under the Act

Michael
discussed the changes made by the Act, which have been discussed by IPKat here and here.

The
below table was particularly helpful in showing how threats provisions under
the Act are structured for the various IP rights to which they apply:

A number of interesting points were raised at the
talk and the subsequent Q&A:

Common law

Before
running through the changes made by the Act, we were reminded of the common law
torts and other remedies that apply whether the communication in question is
actionable under the Act or not. These include:

–        
malicious falsehood;

–        
defamation;

–        
abuse of process;

–        
contempt of court;

–        
inducing breach of contract/causing loss by unlawful means.

The above torts can sometimes be difficult to
establish evidentially, but they are not subject to the exemptions and
protections provided by the Act. In addition, they apply to threats of actions
not covered by the Act, such as passing off.

Jurisdiction

A
threat was previously understood to mean a threat to bring proceedings in a UK
court. This was stated in Best Buy v Worldwide Sales Corporation [2000]FSR 686, in which Floyd J expressed concern about “exporting” the threats
provisions overseas.

This
has now been extended to cover threats to bring proceedings for an act done (or intended
to be done) in the UK – whether the proceedings are in a UK court or not. This
creates a clearer link to the UK for EU-wide rights, so that threats provisions
apply to, for example, patents that have effect in the UK and fall within the
jurisdiction of the UPC (in the future). Now to see when the UPC will be
implemented!

Online complaint procedures

The
Act doesn’t address the outstanding problem of whether taking advantage of
online complaints procedures, such as the ones on Amazon or eBay (“Vero
notices”), can amount to a threat.

Pumfrey
J has previously said (in Quads 4 Kids v
Campbell [2006] EWHC 2482 (Ch)) that a Vero notice is “a clear
arguable threat” and granted an interim injunction on this basis.

More
recently, (in Cassie Creations v Blackmore and Mirrorkool [2014] EWHC2941 (Ch) and T&A Textiles and Hosiery Limited v Hala Textile UK Limited
[2015] EWHC 2888) it was suggested that arguing that an eBay Vero notice may be
a threat is persuasive. However, this issue has not been laid to rest yet.

Safe harbour

If
the rights-holder can’t find the primary actor, communication with secondary infringers
may now be permitted for certain purposes. These include notifying them that a
right exists and providing details of it, and (importantly) asking for
information about primary infringers.

Interestingly,
the Act leaves it to the court’s discretion to identify new “permitted
purposes” as required. The Law Commission suggests that such enlargement
will be incremental and will continue to reflect that communication to
secondary infringers should be exceptional.

Professional advisors

Professional
advisors are no longer liable for threats actions under the new Act. This is
intended to prevent misuse of the threats provisions, as they can no longer be
used tactically to drive a wedge between a lawyer and their client.

The
professional advisor must have been be acting on client instruction, identify
the client, and be regulated by a professional body.

Some
have expressed concerns that the requirement to prove that the advisor acted on
client instructions would involve waiving litigation privilege, but the Law
Commission opines that the advisor only needs to show that they were instructed
to make the communication (i.e. send)
and not that they were instructed to make a threat.”