Making Infringers Publish Details of their Infringement

Since the introduction by the Ministry of Justice of Practice Direction 63 - Intellectual Property Claims a number of court decisions have implemented Section 26.2 in favour of IP rights owners.

The controversial Section 26.2 was introduced in response to EU Directive 2004/48 and provides that:

“Where the court finds that an intellectual property right has been infringed, the court may, at the request of the applicant, order appropriate measures for the dissemination and publication of the judgment to be taken at the expense of the infringer.”

Section 26.2 therefore provides an additional remedy for the owner of a patent, trade mark, design right, copyright, or other IP right that has been infringed. The infringer can be forced to make a public acknowledgement of the adverse judgment.

Unlike in defamation cases, where a publisher might issue a retraction on an obscure page of a publication on a single day, the English courts have proved willing, in some cases, to require continuous publication for much longer periods of up to 12 months.

In 32Red PLC v William Hill PLC and others, the High Court held that the defendants had infringed the claimant’s trade mark rights by use of “32Vegas” for an internet casino. Despite the defendants having abandoned the 32Vegas name and rebranding as 21Nova, the relief granted included a requirement for the defendant to publish details of the judgment on the replacement web site.

The Court of Appeal in Grimme Maschinenfabrik GmbH & Co KG v Derek Scott, held that the defendant had infringed the claimant’s patent for a machine for removing clods from potatoes.

In an order drafted by Jacob LJ read as follows:

“The Defendant shall disseminate and publish the judgement herein by taking, within 14 days of the date of this Order, the following steps and each of them:

(i) the Defendant shall for a continuous period of 6 months from the date of this Order publish upon the front page of his website [link here] a notice in the form annexed hereto, positioned such that the same is immediately visible upon the said webpage being accessed and of such a size as to be readily legible;

(ii) the Defendant shall send by first class post copies of the notice in the form annexed hereto to each person (whether legal or natural) to whom he has sold prior to the date hereof any items or articles the supply, possession and/or use of which would infringe [identified claims of] the Patent and for whom the Defendant has a business or personal address.”

While publication of an adverse judgment might be expect to have a negative impact on the publisher’s business, in this case it did allow the defendant to clarify that only one type of machine was held to infringe and to set out details of other machines that were unaffected by the judgment.

Details of both judgments remain on the defendants’ web sites at the time of writing.

Peter Gemmell