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Digital Media, IP & Technology Law Insights

Legal analysis for founders, creators, technology businesses and brands across intellectual property, digital media, AI, platforms and commercial law.

PAIL Solicitors digital media, intellectual property and technology law insights
PAIL® INSIGHTS Ideas · Rights · Technology · Commercial Strategy
The Idea Behind PAIL® Insights

Why “My Way”?

Frank Sinatra’s My Way captures something fundamental about intellectual property: the distinction between an idea and the individual expression of it.

Copyright does not give someone ownership of an idea itself, but it can protect the particular way that idea is expressed through music, literature, art and other creative works.

That principle of creating, building and expressing something your way sits at the heart of this blog. PAIL® Insights explores the legal issues that arise when creativity, technology and commerce meet — and the rights, relationships and decisions that determine who can control and benefit from what has been created.

About the Blog

Practical Legal Insight for a Digital World

PAIL® Insights brings together legal analysis, practical guidance and commentary across intellectual property, digital media, AI and technology, creators and talent, reputation, platforms and commercial law.

The articles are written for founders, businesses, creators and professionals who need to understand not only what the law says, but how legal developments affect ownership, commercialisation, contracts, risk and growth.

Every article is written, reviewed or edited by Peter Adediran, Founder Solicitor at PAIL® Solicitors.

Written & Reviewed By Peter Adediran Founder Solicitor · Intellectual Property · Digital Media · Technology · Commercial Law
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Design rights infringement damages

 

Design rights infringement

Calculation of additional damages for design rights infringement 14 February 2014
 
Pendle Metalwares Ltd (T/A Thomas Barker & Son) v. (1) Walter Page (Safeway’s) Ltd (2) Empteezy Limited
 
Judgement: 14 February 2014

 

Before his Honour Judge Purle QC
 
This is the judgement on an inquiry as to damages for infringement of unregistered design rights (UK and Community), passing off and breach of copyright following a liability judgment of Mr. Stuart Isaac QC handed down on 31st July 2012.

The action itself related to cigarette bins for outdoor use. The issues included overlapping rights; infringement and subsistence; and extensive factual disputes. On liability the Judge found that the smoking bins had been copied from the claimants designs, imported and sold . The Judge rejected a defence by the defendants’ that one of their representatives had been a joint designer.
 
Here are a few interesting points raised in the Judgment.
 
The claimant relied on section 229(3) of the CDPA 1988 for its claim of additional damages. Under section 229(3) the court has power to award additional damages having regard to all circumstances of the case including flagrancy and accrued benefit. There are similar provisions relating to copyright infringement in the CDPA but 229(3) relates to design rights.

PurleJ did not draw a distinction between design rights and other infringements as he considered the principle to be the same.

If the judge is unable to draw inference of the number of infringing goods that were sold then instead of awarding lost profits on the order an award of a royalty rate would be more appropriate. This would produce a much lower level of damages.

PurleJ  referred to Kitchin J, in Ultrafame UK Limited v. Eurocell Building Plastics Limited [2006] EWHC 1344 (Pat) in assessing damages for patent infringement.

PurleJ  awarded an uplift of approximately 25% of the compensatory award, £13,000, in additional damages.

Interest at the rate of 3% above base was awarded. The measure of interest is not the measure that the claimant has infact paid but what a reasonable borrower in the claimant’s position might pay.

To obtain a quotation, please contact us at (020) 7305-7491 or at peter@pailsolicitors.co.uk. We would be delighted to assist you. Mr Peter Adediran is the owner and principal solicitor at PAIL® Solicitors.  Subscribe to our newsletter to get blog post updates and other information about the firm straight to your inbox.

 
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