Summary: Our regular update on developments in the world of IP, featuring the US Supreme Court judgment on the design patent dispute between Samsung and Apple, a CJEU ruling in relation to indiscriminate data retention under national laws, a decision related to the overall costs cap in IPEC proceedings, Jaguar Land Rover’s win on the trade mark dispute over Defender and Star Trek’s copyright lawsuit.

Damages and Designs

The US Supreme Court has overturned an award of $400m in damages to be paid by Samsung to Apple in respect of design patent infringements relating to the appearance of its smart phones. Where only a component part of a product is protected by a design right, the damages may relate to that component part rather than to the whole product. The Federal Court will now have to decide the appropriate level of damages.

National Security and Data Protection

The CJEU has ruled that national laws requiring the indiscriminate retention of data are unlawful and that such retention can only be permitted if it is limited to what is strictly necessary, is clear and precise and has sufficient safeguards against the risk of misuse, amongst other requirements (the Tele2 Sverige AB case). This probably means that the newly enacted Investigatory Powers Act is non-compliant whilst the UK remains part of the EU.

IPEC Proceedings and Costs

Good news for litigants before the IP Enterprise Court. HH Judge Hacon has changed his former view expressed in OOO Abbott that the £50,000 overall cap on the amount of costs a claimant can recover from a defendant in IPEC cases takes precedence over the more favourable costs consequences if a claimant beats their own “Part 36 Offer” to settle a case. Following the Court of Appeal decision in Broadhurst v Tan, the judge confirmed in PPL v Hagan that the Part 36 rules apply over the cap.

Bad Faith and EU Trade Marks

Jaguar Land Rover have successfully defended an application to revoke their EU trade mark for DEFENDER on the grounds of bad faith. The applicant argued that their specification for “land vehicles; motor vehicles; motor land vehicles” was too broad since they only ever intended to use it for their particular Defender model. However, the UK Court held that the applicant had failed to propose a suitable narrower specification.

Films and Copyright

A US Judge has ruled that various well-known elements from Star Trek are protectable as copyright works, so that action could be taken against a company producing a new unauthorised Star Trek film. He found that some of the characters were protected by copyright, including Klingons and Vulcans, and that well-known elements such as the shape of the USS Enterprise, the uniforms, transporters and warp drive were also protectable, if not in themselves then in combination.