counterfeiting and piracy

23 March 2010

Lord Justice Hooper chaired the proceedings while guest speakers included Martin Howe QC and Chris Oldknow from Microsoft to talk about International litigation

When Is It Good to Follow the Civil Path, or Indeed Better to follow the Criminal Alternative?

For our first event of the new decade, TIPLO chose to span the world of civil and criminal litigation and tempted a distinguished and high profile panel of expert speakers to take part in the debate under the published banner: “Counterfeiting and Piracy – To Sue or To Prosecute?”

Lord Justice Hooper attended his first ever TIPLO event and kindly chaired the proceedings. He is a leading member of the Court of Appeal criminal division. The first speaker introduced by Lord Justice Hooper was our very own TIPLO committee member and luminary of the IP Bar, Martin Howe QC. Martin is very well known for his range of work in all aspects of IP and particularly his in depth knowledge and experience in relation to aspects of EU law and Harmonisation. However, it is apparently a little known fact that in recent months he has been honing his skills at addressing the Juries of Northern England, and may have gained a new soubriquet as “Howe of the Bailey!”

Martin gave the audience an overview of the practise and procedure of the criminal justice and courts system, from the perspective of his experience of both the civil divisions and IP and those of the lower and higher criminal courts. He explained that in one of his most recent and lengthy cases, the criminal charges centred on the supply of “fake Viagra.”

He had nothing but praise for the excellence of the Court of Appeal (criminal division) and clearly had found his recent experience there to be entirely positive. He did admit to a little trepidation prior to his appearance before such an august panel of criminal specialists. And he admitted to expecting some difficulties when he “poked his nose into their area”. However, he said, the Lord Justices had a good knowledge of all pertinent IP law, asked “the right questions” were unfailingly polite and clear in their analysis. Unfortunately it seemed clear that Martin’s own view was that such excellence was not always exhibited in other levels of criminal court, in other parts of the country.

He spoke of the risk of “great variability” in the quality of understanding and justice in the specialist field of criminal IP proceedings, especially when in the “local magistrates and crown courts.” This is hardly surprisingly when certain such courts may have had no prior experience of such cases. However, it is clearly a factor to be borne in mind by those exercising a choice of forum and weighing the pros and cons of civil versus criminal proceedings.

He did remind his audience of largely civil law practitioners that the availability of “central funds” to support and re-pay the legal costs of both prosecutors and defenders in certain criminal cases was a clear difference in practise and procedure, and that the fact that most prosecutions are undertaken by the public authority bodies (e.g.; trading standards dept) mean that the rights holders costs may be minimal or non existent. He also commented on the stark differences between the remedies available. Explaining that criminal justice may deliver more “strong remedies” but that they may not be as “practical and useful in a commercial sense” to the rights holders.

Martin’s closing remarks and advice to rights holders was to reserve the route of criminal proceedings for cases where the issues (of law and fact) are “straightforward and clear” and there are “routine issues” rather than the prospect of “complex debate.” In Martin’s own experience he felt that many of the lower courts in criminal matters feel that it is necessary to dispose of matters on the basis of swift justice and they may resent having their lists “clogged up with legal IP wrangles” which they may see as more suited to the civil divisions.

Almost all of Martin’s comments were endorsed by the second main speaker: Chris Oldknow of Microsoft. It appeared that Chris had originally practised at the bar before joining Microsoft some years ago to spearhead their activities of anti-counterfeiting, and anti-piracy programmes. His address was refreshingly practical and peppered with real examples and anecdotal explanations of the choices and practical implications facing a leading IP-based multinational in the UK. He spoke of the historical shift away from distributions networks for pirated software amounting to tens of millions of pounds in lost revenue prevalent in previous decades, comparing this scenario to the modern scourge of “mini-scale” counterfeiting. With, as he put it, “people’s kids selling a dozen bootleg copies via the internet”. Chris cited the first question facing any rights holder as follows: What do we need to achieve and do we even need to go to court?