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Fiona Clark

 


Year of call: 1982

Fiona’s practice covers all aspects of intellectual property law including related contractual and EC matters, breach of confidence and trade libel. However, she has a particular interest in copyright, designs (both registered and unregistered) and trade marks and has extensive experience of product branding and in media and entertainment law. She has also advised in connection with a number of comparative advertising disputes involving high street and internet retailers. Fiona's practice commonly involves cases with significant technical content, particularly in the fields of manufacturing, mechanical and construction engineering, computer software, architectural designs, jewellery and textiles.

In addition to appearing in the High Court and the Patents County Court, Fiona also appears regularly in hearings before the Intellectual Property Office and on appeal to the Appointed Person. She also regularly advises in connection with proceedings pending before OHIM and the OHIM Boards of Appeal, has appeared on appeals to the General Court and the Court of Justice of the European Union and has represented clients in numerous IP and related mediations.

Fiona is also the Editor of the Fleet Street Reports and the Reports of Patents, Trade Marks and Design Cases (from 2012) and is a contributor to a number of leading practitioner textbooks (including her roles as co-author of the current edition of Laddie, Prescott & Vitoria, The Modern Law of Copyright and Designs and Senior Editor of The Encyclopaedia of UK and European Patent Law) and was invited to take part in various patent and trade mark workshops and seminars as part of the IPR2 co-operation between the European Patent Office and China in 2009 and 2010.

Copyright and Designs

Fiona is a very experienced copyright and designs practitioner and is a co-author of the forthcoming edition of The Modern Law of Copyright and Designs. The preparation of this edition has involved considerable research in relation to the extensive and ongoing changes in the area of design law in particular. Fiona’s design practice covers everything from high-end fashion to designs for articles such as tents, plastic chairs, cigarette bins and airport trolleys. She also has an extensive copyright practice, having a wealth of experience advising not only on issues arising in relation to works created since the coming into force of the Copyright, Designs and Patents Act 1988 in 1989, but also in relation to older works where the 1911 and/or 1956 Acts may be of relevance. Fiona’s copyright clients range from the estates of literary giants, film companies and music publishers to mapmakers, architects and software suppliers.
 

Reported cases include:

Pendle Metalwares Ltd v Walter Page (Safeways) Ltd [2014] EWHC 1140, [2014] EWHC 1144, [2014] EWHC 1145 and [2012](Chancery Division)

Trial of an action for infringement of UK unregistered design right and Community unregistered designs relating to cigarette bins for outdoor use. The trial raised issues of both subsistence and infringement in a series of overlapping rights for different cigarette bin models in addition to extensive areas of factual dispute requiring extensive cross-examination. Infringement having been established, an inquiry as to damages then took place. The legal issues arising included the proper basis of assessment of damages and the extent of any additional damages in the light of the terms of the Enforcement Directive.
 

Oakley Inc. v. Animal Limited et al. [2006] RPC 9 (CA)

Preliminary issue in an action for infringement of registered designs as to the vires of the Registered Designs Regulations 2001 and the law applicable when assessing the validity of designs registered or applied for prior to the coming into force of those Regulations. Preliminary issue determined in the Defendant’s favour subject to a reference to the ECJ on proper construction of Directive 98/71/EC of 13 October 1998 on the legal protection of designs. (The Secretary of State intervened as an interested party). The parties later settled and no ECJ decision issued.

Scott v. Waterfall and TDK [2004] (Patents Court County)

Action for breach of contract, infringement of copyright and infringement of performers’ rights in relation to the use of early pop videos of The Sweet on DVD. Injunctive relief granted and damages and costs awarded.

Charly v. Immediate Records and Oldham [2002]

The Second Defendant (who represented himself at trial and was unsuccessful) was faced with applications for consequential relief. Applications for worldwide freezing orders and the delivery up of the masters of sound recordings held outside of the jurisdiction successfully resisted.

Sweeney (Trustee of Estate of James Joyce) v Macmillan Publishers Limited [2002] RPC 35

The Defendants published an edition of Ulysses prepared from Joyce’s working papers and manuscripts and edited to reflect a late rather than early twentieth century style. The matter was complicated by the fact that Ulysses went out of copyright in 1992 but came back in as a result of an EC Directive. The Defendants claimed that their work had been produced whilst Ulysses was in the public domain. The action was for infringement of copyright and passing off. The claim for copyright infringement succeeded and injunctive relief was granted.

Other noteable cases:

Norowzian v. Arks (No.1) (Ch D) [1998] FSR 394

Advertisement for a well known Irish stout was alleged to infringe the copyright in a both a film and a dramatic work in which the Claimant asserted copyright. Application to strike out the allegation of infringement of copyright in the film successful.

Azrak-Hamway International Inc.'s Application (Patent Office) [1997] RPC 134

Preliminary issue as to whether the licence of right provisions relating to copyright and design rights were void and of no effect as contrary to the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPs”) as part of Community law.

Ironside v. Attorney General (Ch D) [1988] RPC 197

Dispute arising from the exploitation of the decimal coinage designs by the Royal Mint. The main issue arising was whether the designs were the subject of Crown copyright.

  • What the Directories Say
  • "Very knowledegable"
    Legal 500 (Intellectual property) 2015

    "Insightful, dedicated and responsive"
    Legal 500 (Intellectual property) 2014