CITMA Seminar for Litigators

Our series of six sessions has been carefully developed to ensure that you gain a holistic understanding of today's most important questions in litigation practice.

IP protection for fictional characters following Shazam v Only Fools The Dining Experience and Others [2022]

• What is the “work” for the purposes of copyright and how definite must it be? 
• Where does it leave the old adage “no copyright in an idea"? 
• Is there any defense of parody in IP claims and where do the limits lie?

ABP Technology Ltd v Voyetra Turtle Beach Inc [2022]

• What issues arise when considering the well-known ploy of purchasing a third party’s earlier dated right to defeat an incoming claim?
• What are the lessons to be learned generally in relation to amendments to pleadings and when does seeking to obtain a tactical advantage tip into abuse of the court’s process?

Website blocking orders

• When are such applications appropriate and how is the application made? 
• What conditions must be fulfilled and what happens if the application is resisted?
• Who pays the costs and how is implementation policed by the claimant?  
• Blocking orders most relevant to copyright but are such orders available for other species of IP including trade marks and brand counterfeiting?

Protectable work under UK Copyright law – applying Coefmel in a domestic context

• What is a protectable work?
• What, post-Coefmel, is the reproduction right? 
• Is post Brexit -UK out of step? 
• How have the UK courts reacted? 
• What is the copyright/design interface post-Coefmel and post-Brexit?

NFTs and the Metaverse

• What are the potential IP causes of action and defences relating to NFTs and the metaverse and how is jurisdiction determined? 
• What are the potential contractual considerations?  What are the potential defences, for example implied license, descriptive or non-distinctive use, parody, exhaustion/”virtual repackaging”? 
• What are the potential remedies for the claimant – e.g. injunction, transfer, blocking, financial remedies?

Part 36

• Underlying policy and when should/may you want to make a Part 36 offer
• General offers to settle and making a Part 36 offer
• Accepting or rejecting a Part 36 offer
• Withdrawing or amending a Part 36 offer
• Consequences for accepting or rejecting a Part 36 offer
• Relationship to WP save as to costs communications

Thursday 3rd November

12pm - Michael Silverleaf KC, 11 South Square
IP protection for fictional characters following Shazam v Only Fools the Dining Experience and Others

Michael specialises in IP, IT, data protection and technical commercial litigation.

He has been a qualified mediator since 2003 and regularly conducts mediations in IP and technical commercial disputes.

He took silk in 1996 and is one of the most senior practitioners at the IP Bar.

During his career, he has appeared in many important and high profile cases including the phone hacking litigation in 2008-13.

He represented the UK government in the Silhouette case in the CJEU and has considerable expertise in the field of exhaustion of rights.

12.45pm - Iona Berkeley, 8 New Square
ABP Technology Ltd v Voyetra Turtle Beach Inc

Iona Berkeley has an excellent reputation as a leading Senior Junior in Intellectual Property matters.

She specialises in every aspect of IP, including trade marks, passing off, patents, copyrights, designs, confidential information, and associated areas such as media and entertainment, IP related international arbitrations and, contractual disputes and media and entertainment. She is a co-author of Kerly’s law of Trade Marks (16th and 15th Ed and associated supplements) and Laddie, Prescott and Vitoria, The Modern Law of Copyright (5th and 4th Ed).

The legal directories describe her as: “..very bright, extremely practical, user friendly and commercial” (Legal 500 2022); “..an excellent advocate who has the respect of opponents and the bench (Chambers & Partners 2018); and as having “..a brilliant mind and a wonderful manner with clients. She is enthusiastic and proactive and recognises issues quickly.” (Chambers & Partners 2021)

 1.30pm - Jaani Riordan, 8 New Square
Website blocking orders

Jaani Riordan practises in all areas of intellectual property and technology litigation, with particular expertise in disputes involving the Internet, computers and telecommunications.

He has a technical background in computer science, and acts in both IP and commercial disputes involving computer software and telecommunications.  Jaani is regularly instructed as sole and junior counsel in the High Court and Court of Appeal, and has appeared in the leading case on website blocking injunctions in the Supreme Court.

Jaani has substantial experience in all fields of intellectual property law, as well as disputes involving questions of jurisdiction, FRAND licensing, interim injunctions, and data protection.

He also holds a PhD in law from the University of Oxford, where his research examined internet wrongdoing.

Thursday 10th November

12pm - Maxwell Keay, 8 New Square
Protectable work under UK Copyright law – applying Coefmel in a domestic context

Maxwell specialises in all areas of intellectual property law including patents, trade marks, copyright and designs.

He was called to the Bar in 2013 and joined Chambers as a tenant in September 2014 upon successful completion of pupillage.

Maxwell appears regularly in proceedings before the High Court (including the Patents Court and general Chancery Division, Court of Appeal, IPEC (including the IPEC small claims track) and the IPO.

In 2015 Maxwell completed a secondment at a leading solicitors’ firm during which he worked on a variety of cases, particularly patent actions in the field of telecommunications. 

12.45pm - Gwilym Harbottle
NFTs and the Metaverse 

Most of Gwilym Harbottle’s practice is in IP and Media and Entertainment. His IP practice covers copyright and related rights (a particular expertise), trade marks and passing off, designs and data protection (including the GDPR).  He draws on both his IP and his Chancery/Commercial expertise when acting in Media and Entertainment disputes. He has advised and represented many of the leading copyright collecting societies and major brand owners. Recent interesting cases have concerned streamripping, cyberlockers, NFTs and online review sites.

He has extensive experience in High Court and IPEC litigation but has also been instructed in the Copyright Tribunal, as an expert witness on UK copyright law and by trade bodies to advise on proposed and new legislative developments. He continues to have a significant caseload in the Chancery/Commercial field, with a particular interest in real property law.

He is an editor of Copinger on Copyright (18th edn, 2021) and of the Copyright and designs sections of Clerk & Lindsell on Torts (23^rd edn, 2020).

1.30pm - Part 36 
Denise McFarland, 3 New Square

Denise has huge advocacy experience acting for parties before the UK Courts and in EU Courts and tribunals, including; the High Court of England and Wales (Court of Appeal and Supreme Court) the Intellectual Property Enterprise Court, or IPEC, the UK Intellectual Property Office, the Company Names Tribunal, the EU Intellectual Property Office, the EU Patent Office and the General Court of the European Union (Luxembourg) and appeals to the Court of Justice. She has also appeared before both the legal and technical Boards of Appeal and the Opposition Division of the EPO.

 

Rates

CITMA member - £165 (VAT exempt)
Standard - £205 (VAT exempt)

• Payment online via debit or credit card only; proforma invoices are not available.
• Full terms and conditions apply.
• Closing date: 10am, Thursday 2nd November.