Taking a bite out of Apple

Following my colleague John McGonagle’s blog on the recent Samsung v Apple case in the High Court in London, there has been an interesting further development in this battle of the tech giants.

An order for Apple to publicise the decision of the High Court

As John noted in his blog, Samsung was successful in its application for a declaration by the Court that its Galaxy tablet did not infringe the registered design of Apple’s iPad. Now Samsung has returned to Court to successfully obtain an order that forces Apple to publicise the High Court’s decision on the Apple UK website for 6 months and in certain leading UK based press and magazines such as the Guardian, the Financial Times and T3.  This could obviously be damaging to Apple.  Not only will it have to publicise that the Samsung product does not infringe its iPad, but it is also effectively giving free advertising to a competing product. 

To the lay observer, this may be a surprisingly draconian order for the Court to make.  However, this is not the first time that such an order has been granted in an intellectual property case.  The basis for such an application is found in Article 15 of the IP Enforcement Directive 2004/48.  It states that:

Member States shall ensure that, in legal proceedings instituted for infringement of an intellectual property right, the judicial authorities may order, at the request of the applicant and at the expense of the infringer, appropriate measures for the dissemination of the information concerning the decision, including displaying the decision and publishing it in full or in part. Member States may provide for other additional publicity measures which are appropriate to the particular circumstances, including prominent advertising.

The article was given force in England by Practice Direction 26.2 to Part 63 of the English Civil Procedure Rules.  The equivalent enforcing legislation in Scotland is (Section 5 of the IP (Enforcement, etc) Regulations 2006).  

The rationale behind this Article is best explained by recital 27 of the Enforcement Directive which states that its purpose is:

To act as a supplementary deterrent to future infringers and to contribute to the awareness of the public at large, it is useful to publicise decisions in intellectual property infringement cases.

The eagle eyed amongst you will have noticed that the Article and the Recital state that the order may only be granted for “infringement proceedings” and it does not specifically say it may also be used in an application for a ‘declaration of non infringement’.  Perhaps it was not countenanced by the drafters of the Directive that the provision would be used by a pursuer in such circumstances?  Nevertheless, the English Court  interpreted the Directive in a wide manner and whilst recognising the distinction, it took a practical approach that the order could be made in favour of the successful party in infringement and declaration of non infringement proceedings.  The real question it had to answer was not whether the Court had jurisdiction to make such an order, but whether its power to do so should be exercised.

The Court’s justification for granting the order to publicise

In granting the order that Apple must publicise the English Court’s ruling of non-infringement in the UK, a key consideration was certain statements made by Apple in response to the Court’s decision.  Apple asserted that notwithstanding the  finding of non infringement, Samsung was guilty of ‘blatantly copying’ and that its Galaxy Tablets look a ‘lot like the iPhone and iPad’.   The Court accepted that Apple is entitled to express its opinion that the earlier decision was incorrect and that they could not be prevented from doing so under the freedom of speech provisions in Article 10 of the European Convention on Human Rights.   However, the Court also recognised that such statements could cause ‘commercial harm’ to Samsung  because of the innuendo that Samsung still infringed Apple’s designs, and in this case it decided that it was appropriate to make an order to publicise the judgment.     

One limitation is that in granting the order, the Court noted the differing decisions (some in favour of Apple, some in favour of Samsung) there have been in the various battles between the companies across Europe and in the US and it therefore limited the order to for Apple to publicise the judgment in the UK only.

The lesson?

The lesson in this case is that it could be dangerous to protest too much.  If Apple had accepted the Court’s decision without criticism, the Court may have found it more difficult to justify the order for publication which Samsung sought.   However, Apple may still feel ‘vindicated’ that it can continue to protest its innocence and criticise the Court’s ruling.  Perhaps a carefully constructed advertising campaign could minimise any damaging effect on the sales of Apple products caused by the necessity to publicise the decision.

Apple has already been granted permission to appeal the finding of non infringement and at the time of writing this blog there is no sign (either on its website or in the press) that it has complied with the Court order to publicise the decision.

Mark Cruickshank

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