IP Update – March 2008

Stephan Weber of Sykes Anderson LLP reports

Sienna Miller v NGN Limited, Xposure Photo Agency and Warren Richardson

A recent case has brought a new twist on cases concerning paparazzi photographs. 

British actress Sienna Miller was on set filming the forthcoming “Hippie, Hippie Shake”.  One scene involved her and other actors jumping naked into a lake.  Despite considerable security being in place a paparazzo photographer managed to take surreptitious pictures of the naked Miller with a long lense camera. 

Those photographs were then sold by photo agency Xposure and published in the News of the World.  Miller brought injunction proceedings against the photo agency and the publisher and those claims were settled out of court.  However, Miller also brought proceedings against the paparazzo photographer.  When the latter failed to acknowledge service of the claim Miller sought judgment in default against him.  This was granted, with damages still to be assessed. 

As this was a judgment in default the court did not need to consider the extent of the liability of the photographer.  Later cases will need to establish whether paparazzi photographers will be held equally liable for the privacy invasion as those who publish their work.

While paparazzi photographers were until now hardly ever joined in privacy actions as defendants, they should not close their eyes to their potential liability.  Watch this space for further developments.

Community design right - Defence of innocent infringement not available 

J Choo (Jersey) Limited v Towerstone Limited

A recent case highlights that it can be advantageous for businesses to obtain Community design registration on top of registration in the UK.
 
The proprietor of a registered Community design right for a handbag brought infringement proceedings against the owner of a shop on Oxford Street that sold counterfeit handbags. 

The High Court granted summary judgment against the defendant, holding that the defendant’s bags infringed the claimant’s registered and unregistered Community design rights. 

The issue then turned on whether the claimant was entitled to damages as the owner of the shop argued to be an innocent infringer.  The court noted the anomalous position that while under the UK design right an innocent infringer has a defence to a claim for damages, there is no such defence under the Community design regime.  Although there appears to be no policy reason for this, it is indeed the current position.  Accordingly, the shop owner was liable for damages.

This case illustrates that businesses should obtain Community design protection in addition to UK registrations at least for their most important designs.