Category: Intellectual property

The Proportionality of Tobacco Packaging Restrictions on Autonomous Communication, Political Expression and Commercial Speech

The Lanyon Building, QUB
from the NILQ cover
The Summer 2018 volume of the Northern Ireland Legal Quarterly has been published this morning. Just in time for tomorrow’s seminar, and building on my earlier paper in the QUT Law Review, it contains the following piece by me:

“A Little Parthenon No Longer: The Proportionality of Tobacco Packaging Restrictions on Autonomous Communication, Political Expression and Commercial Speech” (2018) 69(2) Northern Ireland Legal Quarterly 175-211

This paper evaluates the constitutionality of statutory restrictions upon tobacco packing in Ireland. It concludes that public health and the protection of children constitute pressing and substantial reasons sufficient to justify the Public Health (Standardised Packaging of Tobacco) Act 2015 and Part 5 of the Health (Miscellaneous Provisions) Act 2017 as proportionate restrictions upon tobacco companies’ freedom of political expression protected by Article 40.6.1 of the Constitution and freedom of autonomous communication protected by Article 40.3.1.

In many respects, Ireland has been a world leader in tobacco control, from banning smoking in the workplace or in cars with children, to requiring standardised packaging. Part 1 introduces this article; it sets out the background to the 2015 and 2017 packaging legislation. Part 2 of this article, on restrictions, describes the restrictions in the packaging legislation. Part 3 of this article, on rights, provides a conspectus of the Irish constitutional speech rights engaged or burdened by these restrictions. This Part presents these rights as comprising a freedom of political expression in Article 40.6.1 of the Constitution and a freedom of autonomous communication in Article 40.3.1. Moreover, these two rights carry concomitant rights to keep silent and to be informed. Part 4 of this article, on reasons, considers the pressing and substantial reasons which the State may proffer to seek to justify the restrictions in the packaging legislation upon constitutional speech rights. Part 5 of this article, on standards of review, considers the extent to which the restrictions in the packaging legislation, motivated by concerns relating to public health and the protection of children, satisfy the current Irish version of the principle of proportionality. It also considers the extent to which the restrictions might satisfy other standards of review or scrutiny. Part 6 concludes this article, bringing together all of the strands of analysis in the previous Parts. And it concludes that, if the restrictions on constitutional speech rights in the Public Health (Standardised Packaging of Tobacco) Act 2015 and in Part 5 of the Health (Miscellaneous Provisions) Act 2017 are challenged by the tobacco companies, the courts will find that those Acts are constitutionally valid.

Attractive packaging is an important element of a product’s effective marketing. Indeed, so central has packaging been to the allure of smoking that Leonard Cohen could extol “the little Parthenon / of an opened pack of cigarettes”. Ireland has been in the vanguard of tobacco control worldwide. With the 2015 and 2017 packaging legislation, it continues to set a very important example. The constitutional validity of these packaging restrictions would underpin a crucial element of the Department of Health’s moves towards tobacco-free Ireland by 2025. And the pack of cigarettes, with large warning photos dominating standardized packaging, would be Cohen’s little Parthenon no longer.

An earlier version of the paper, under the title “Is Standardised Tobacco Packing a Proportionate Restriction on Constitutional Speech Rights”, was delivered at the ICON-S British and Irish Chapter Inaugural Conference, Trinity College Dublin, Ireland, on 5 September 2017.

Some forthcoming legislation on the administration of justice, cybercrime, education, intellectual property, and privacy

Government Buildings by night, via Wikipedia

Government Buildings,
Merrion Square, Dublin.
Image via wikipedia
Government Chief Whip Regina Doherty has announced the Government’s Legislation Programme for the Autumn Session 2016 (pdf). It is a considerable update of the programme published last June (pdf) when the government came into office.

The June programme had the feel of a holding document, published to get a new government to the Summer Recess. This programme has a far more substantial feel about, published to demonstrate the government’s confidence in its capacity to promote and enact legislation.

After the publication of the June programme, I examined proposed legislation from the Department of Education and Skills (here; and see also here), the Department of Jobs, Enterprise and Innovation (here; and see also here and here), and the Department of Justice and Equality (here and here). Under those headings, very little has changed. But there are some notable additions, not least of which is the Interception of Postal Packets and Telecommunications Messages (Regulation) (Amendment) Bill. All we are told is that work is underway on a Bill to “amend various pieces of legislation in respect of electronic communications”. There is no further explanation. This is probably the Bill to provide for further covert surveillance of electronic communications promised by the Minister earlier this Summer. It is also likely to cover incoming requests from overseas to access to data held in Ireland. It may also include preparatory work for the response to the investigations being carried out by retired Chief Justice John Murray and retired Supreme Court judge Nial Fennelly. However, at present, this is just speculation, so we shall have to wait and see what the Department has in mind.

As to the administration of justice, priority legislation to be published by the Department of Justice and Equality this session includes a Bill to make provision for periodic payment orders to replace lump sum damages, and a (hastily-promoted?) Bill to establish the long-awaited Judicial Council. Indeed, that Bill is expected to undergo pre-legislative scrutiny this session, as is a Bill to replace the Judicial Appointments Advisory Board with a new Judicial Appointment Commission – indeed, the cabinet agreed yesterday to bring forward the heads of such a Bill by November. All of these developments are very welcome – provided that the Appointments Bill permits legal academics to apply for appointment to be bench, especially at appellate level. It would not be difficult to draft the necessary legislative provisions, and there is no reason in principle not to do so.

As to cybercrime, first, the busy Department of Justice and Equality is promoting the Criminal Justice (Offences Relating to Information Systems) Bill 2016, to implement Directive 2013/40/EU on attacks against information systems. It is on the Dáil Order Paper, awaiting Second Stage. Second, in the ‘I’ll believe it when (if) I see it’ category is the long-promised and almost long-forgotten Cybercrime Bill to give effect to the Council of Europe Convention on Cybercrime 2001. Yes, you read that right, it’s a 2001 Convention. It is 15 years old, which is a lifetime online.

As to education, legislation envisaged at some stage from the Department of Education, but probably not in this session, includes the Higher Education (Reform) Bill and the longer-threatened Universities (Amendment) Bill (critiqued here, here, here, and here). And the Technological Universities Bill 2015 remains on the Dáil Order Paper, awaiting Committee stage.

As to intellectual property, pre-legislative scrutiny is expected shortly on the Knowledge Development Box (Certification of Inventions) Bill. Heads of a Bill to amend Article 29 of the Constitution to recognise the Agreement on a Unified Patent Court were approved on 23 July 2014, though, in the light of Brexit, a cautious approach for the time being may mean that other Bills may progress ahead of it from the Department of Jobs, Enterprise and Innovation to the Oireachtas. Finally, the Copyright and Related Rights (Amendment) (Miscellaneous Provisions) Bill has been “referred to committee” pre-legislative scrutiny. This is presumably the Joint Committee on Jobs, Enterprise and Innovation. However, the Bill is not in the pre-legislative scrutiny list for this session, so we probably won’t see it in committee before Christmas.

As to privacy, the most important piece of legislation mentioned in the Programme is the Data Protection Bill, to transpose the EU Directive 2016/680 and give full effect to the General Data Protection Regulation (Regulation 2016/679). Heads are expected before the end of 2016 (but I’m not holding my breath). A Data Sharing and Governance Bill will be published and sent for pre-legislative scrutiny, to mandate and facilitate lawful data-sharing and data-linking for all public bodies, and a Health Information and Patient Safety Bill go further in the context of health information. In both cases, the drafting will be tricky, not least because the Bills will have to be compliant with the decision of the Court of Justice of the European Union in Case C?201/14 Bara. The Criminal Records Information System Bill and the Passenger Name Record Bill implement EU obligations. However, in the case of the latter, since there is a challenge before the CJEU in respect of a related measure, a cautious approach for the time being may mean that other Bills may progress ahead of it from the Department of Justice and Equality to the Oireachtas.

Finally, it is heartening to see that work has commenced on a Bill to remove blasphemy from the Constitution, and interesting to see active proposals to establish an Electoral Commission and to amend the transfer of records in the National Archives from 30 years to 20 years.


Today is World Intellectual Property Day

WIPO IP days posterEvery April 26, the World Intellectual Property Organisation (WIPO) celebrates World Intellectual Property Day to learn about the role that intellectual property rights play in encouraging innovation and creativity:

This year, we are exploring the future of culture in the digital age: how we create it, how we access it, how we finance it. We will look into how a balanced and flexible intellectual property system helps ensure that those working in the creative sector and artists themselves are properly paid for their work, so they can keep creating.

To mark the day, Adapt Centre in Trinity is hosting an event on Technology, Freedom and Privacy in the 21st Century.

Intellectual property (IP) refers to creations of the mind for which the law affords exclusive protection. This legal protection can be provided by legislation (as in the case of patents, copyright, trademarks, and design rights) or at common law (as in the case of passing off, or the protection of trade secrets and other confidential information). Patents [main Irish Act here] largely protect inventions, and the ongoing disputes in courts all over the world between Apple and Samsung illustrate the centrality of patents to modern businesses. They are so important, in fact, that section 32 of the Finance Act 2015 (the 2015 Budget) a patent box, a special tax regime for IP revenues, to encourage research and development, innovation and invention. But patents can be pushed too far, if a patent troll acquires large bundles of patents, and then seeks to enforce them far beyond their original scope.

Copyright [main Irish Act here] largely protects expressions in the form of original literary, dramatic, musical, artistic and other related works. The central premise from which copyright law has developed is that it is the potential reward provided by copyright that encourages the art, movie, music, programming and writing. In that sense, copyright law fosters and protects innovation. Moreover, copyright provides rights-holders legal protection for the artistic integrity of their works. Nevertheless, both of these justifications look not only to the rights-holder, but also to the public benefit of the work: the State affords copyright protection to rights-holders because a diverse range of work is for the public benefit or the common good; and the appropriate reward afforded to the rights-holder is not an end in itself, but rather the means to this diversity, competition and innovation. Ongoing reform processes in Ireland and the EU are designed to calibrate this balance more precisely, the better to meet the challenges posed by the digital world.

A trademark [main Irish Act here; consolidated here (pdf)] is a recognizable sign which identifies products or services of a particular source, and distinguishes them from those of others. In 2007, Apple Inc finally settled its long-running trademark dispute with The Beatles’ company, Apple Corps Ltd, in a deal that paved the way for Beatles’ music to be sold on iTunes. But the three decades of dispute pale into insignificance before the more-than-a-century-long dispute between Budweiser in the US and Budejovicky Budvar in the Czech republic, which has been fought out in courts in more than a 100 countries worldwide since 1907! In Ireland, the not-quite-so-long-running trademark dispute involving the Northern Ireland Tayto Group (entirely separate from the Republic of Ireland Group) has recently ended up in the Court of Justice of the European Union.

Design rights [main Irish Act here] protect the shape of a three-dimensional design. These rights prevent Dunnes Stores from copying the design of a Karen Millen dress A recent decision of the UK Supreme Court considered the extent of the design right protecting the Trunki ride-on suitcase for kids, holding that its design was not infringed by the not-similar-enough design of the Kiddee Case.

Passing off is a common law cause of action, which protects the goodwill of a trader from a misrepresentation that goods or services of another are connected it. It ensures that any vendor of lemon juice in a lemon-shaped container must make it clear to the ultimate purchaser that it is not Jif lemon in its famous lemon-shaped container, that Brennan’s bakeries cannot copying the packaging of McCambridge’s brown bread, and that Tophop cannot sell tee-shirts bearing Rhianna’s image without her consent.

Finally, the law relating to breach of confidence protects trade secrets. The classic case of breach of confidence involves the claimant’s confidential information, such as a trade secret, being used inconsistently with its confidential nature by a defendant, who received it in circumstances where she had agreed, or ought to have appreciated, that it was confidential.

Plainly, there is much to celebrate – so, happy World IP Day to all my readers.

The IPO takes down a scammer; and opens the door to restitution claims by rightsowners

Based on company calling itself the Intellectual Property Agency Ltd (IPAL) wrote to wrote to holders of patents and trademarks, reminding them that the right required renewal at the UK’s Intellectual Property Office (the IPO), and requesting a fee for the renewal which was considerably greater than the IPO’s.

It’s a pretty common scam. There are warnings against it not only on the website of the IPO, but also on the websites of Irish Patents Office, WIPO, the EU’s OHIM, and the US PTO. Of course, interposing between the IPO and rightsowners, and charging the rightsowners exorbitant fees to renew their patents and trademarks with the IPO, is certainly sharp practice, but it is not necessarily unlawful.

However, the line can be crossed. For example, in the US a criminal case has recently been commenced against the alleged principal in a mass mailing scam targeting holders of US trademarks. Again, in the UK, IPAL went a lot further than many of these scams, misrepresenting that it was the IPO (or, at the very least, officially connected with it). In the Comptroller-General of Patents, Designs and Trade Marks v Intellectual Property Agency Ltd [2015] EWHC 3256 (IPEC) (10 November 2015) (noted here on IPKat), HHJ Hacon held that IPAL had passed itself off as the IPO (the first plaintiff), and that IPAL had infringed trademarks in the IPO held by the Secretary of State for Business, Innovation and Skills (the second plaintiff). He also held that the second defendant, Mr Jonasson, the sole director and sole shareholder of IPAL and the registered owner of its website, was a joint-tortfeasor with IPAL, jointly liable for IPAL’s acts of passing off and trade mark infringement. Finally, he awarded an account of profits against the defendants:

The Account of Profits
39. … the table annexed to the Points of Claim … shows that IPAL received a total of £1,334,234 from rightholders who responded to its Reminder form and paid out £227,724 to the IPO to renew their rights. That translates into a gross profit of £1,106,510.

40. Neither of the Defendants filed a response to the Points of Claim and so they stand admitted. Had there been a response there may have been arguments about deductable costs and the extent to which I should assume that there was passing off and trade mark infringement in every case. Even then, I think the Defendants would have struggled to reduce their liability below the cap of £500,000 allowed in this court.

41. As it is, on the admitted Points of Claim in the account of profits I award the maximum permitted under the IPEC cap, namely £500,000.

An earlier passing off claim by the IPO against similar scammers had been settled, but this is the first to proceed to judgment. (more…)