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James Abrahams QC

 


Year of call: 1997
Year of silk: 2016

James Abrahams read Law at St Anne's College, Oxford where he obtained a BA and BCL. He was also a scholar of St Anne's and twice winner of the Law Prize. He was called to the Bar in 1997 as a scholar of Gray's Inn. James became a member of Chambers in 1999.

James specialises in all aspects of IP, including patents, copyright, design rights, moral rights, database and related rights, registered designs, trade marks, passing off and breach of confidence. He is particularly well-known for his work in high-technology, complex patent cases, having appeared in the large majority of the major electronics, telecommunications and smartphone patent cases of the last few years.

Major patent cases include:

• Rovi v Virgin Media and TiVo (EPG and set top box functionality)
• Microsoft v Motorola (email protocols)
• Ericsson v ZTE (mobile telecommunications)
• Xena v Cantideck (damages inquiry in respect of rolling loading platforms)
• Liversidge v Owen Mumford and Abbott (medical auto-injector devices)
• HTC v Apple (smartphone interfaces)
• HTC v IPCom (mobile telecommunications)
• Nokia v IPCom (mobile telecommunications)
• LG v Sony (Blu-ray players)
• Apple v Nokia (mobile telecommunications)
• Motorola v RIM (mobile telecommunications)
• Wake Forest v Smith & Nephew and Mölnlycke v Wake Forest (wound dressings)
• Phillips v Harvard (video coders/decoders)
• Halliburton v Smith (oil well drill bits)
• Nokia v InterDigital (mobile telecommunications)
• Ferag v Muller Martini (print finishing machines)
• Glaxo’s Patent (Seretide® inhalers)
• Intel v VIA (microprocessors and chipsets)

Other major cases include:

• IPC Media v Media 10 (trade marks)
• Total v You View (trade marks)
• Coward v Phaestos (automated hedge fund software copyright)
• PRS v B4U (copyright in Bollywood musical songs)
• The Da Vinci code copyright case, Baigent v Random House
• 19TV v Freemantle (copyright in the format of ‘Pop Idol’)
• IPC Media v Highbury (copyright in magazine covers)
• Honda v Neesam and others (parallel imports of Honda motorbikes)
• British Horseracing Board v William Hill (the first case in which the UK and European courts had to deal with the database right created by EC Directive 96/9).

 

Copyright, Database Rights and Design Rights

James has been involved  in copyright infringement cases concerning software (Destra v Comada, Coward v Phaestos),  The Da Vinci Code (Baigent v Random House); the television programmes The X Factor and Pop Idol (19TV v. Fremantle and Simon Cowell); and the design of Ideal Home magazine (IPC Media v Highbury). He also has extensive experience of design rights, including registered and unregistered designs under both domestic UK and Community legislation.

Copyright

Coward v Phaestos  [2013] EWHC 1292 (Pat)

Software for automated hedge fund trading. The dispute was between a hedge fund and a former director, and raised issues over who owned the software (which in turn raised complex issues of partnership, contract and company law), what rights each party had to use the software, copying, and reproduction of a substantial part.

There was an appeal on costs in which the Court of Appeal addressed the proper approach to the question whether a party had beaten an offer to settle in a non-money-case -see  [2014] EWCA Civ 1256.

PRS v B4U [2012] EWHC 3010 (Ch), [2013] Bus LR 664, [2013] FSR 19 (Vos J); [2013] EWCA Civ 1236, [2013] WLR(D) 385 (Court of Appeal)

Copyright action relating to songs written for Bollywood musicals. The case involved consideration of the operation of section 91 of the 1988 Act.

Destra v Comada [2013] EWHC 1575 (Pat)

Trial of a preliminary issue of ownership of software for financial trading.
 

Baigent v Random House (‘The Da Vinci Code’ case) [2006] FSR 719 (Peter Smith J); [2007] FSR 579 (Court of Appeal)

The authors of ‘The Holy Blood and the Holy Grail’ claimed that their copyright had been infringed by Dan Brown’s phenomenally successful thriller ‘The Da Vinci Code’. After a trial lasting in excess of 3 weeks, the case eventually turned on the extent to which copyright can protect ideas of a historical nature against use by others. The case was dismissed on the grounds that the matters complained of were not protectable by copyright and the Court of Appeal upheld this decision.

19TV v Fremantle and Simon Cowell (the ‘Pop Idol/X Factor’ case) (2005)

The claimant alleged that the television programme ‘The X Factor’ infringed its copyright in ‘Pop Idol’. The case settled at the door of the Court.

IPC Media v Highbury [2005] FSR 434

Alleged infringement of the copyright of Ideal Home magazine. The complaint related not to the words and pictures, but to the design and layout of the front cover of Ideal Home and some internal articles.

Pensher Security v Sunderland CC [2000] RPC 249 (Court of Appeal)

An action for infringement of copyright in the design drawings for reinforced doors. The Court of Appeal’s judgment set out a number of principles concerning secondary infringement of copyright.

UK and Community Design Right

Clinisupplies v Park (2012)

Design for a catheter pack. The case is notable for Arnold J’s judgment [2012] EWHC 3453 (Ch), [2012] WLR(D) 369 explaining when a design is too general to be protected.
 
T-Comedy v Principles (2009)

Designs for high-street fashion clothing.

Tekmar v Seadrift (2009)

Designs for cargo cranes.

Esprit v Primark (2008)

Designs for high-street fashion clothingand accessories.

Safestand v ZDN (2009)

Patent and designs for scaffolding equipment.

De Grisogono v Guess (2007)

Registered designs for watches.

River Island v Primark (2006)

Designs for high-street fashion clothing and accessories.

Baekert v Boylin (2006)

Designs for industrial roll cages.

Monsoon v Primark (2005)

Designs for high-street fashion clothing and accessories.

Database Right

British Horseracing Board v William Hill

The first case in which the UK and European courts had to deal with the database right created by EC Directive 96/9. At first instance Laddie J [2001] RPC 31, [2001] 2 CMLR 12 upheld BHB’s claim against William Hill’s use of names of the horses running in a race and the date, time and location of the race (all derived from BHB’s database) in its Internet betting business. The Court of Appeal [2001] EWCA Civ 1268, [2002] ECDR 41 referred eleven questions of interpretation of the Directive to the European Court of Justice. The Court of Justice’s judgment [2005] RPC 260, [2005] 1 CMLR 15, gave guidance as to what was protected by the database right and the meaning of “obtaining”, “verification”, “extraction”, “re-utilisation” and “(in)substantial parts”. The Court of Appeal applied the Court of Justice’s judgment, allowed William Hill’s appeal and dismissed the BHB’s claim [2005] RPC 883.

  • What the Directories Say
  • He is incredibly intelligent. He is a street fighter advocate who gets down to the nitty gritty and rolls his sleeves up. He always puts in the effort and is unafraid of the difficult cases- he gets the best out of them." "He is fantastic on paper and a very logical thinker. He is extremely hard working, has never let me down and makes it an easy working relationship"
    Chambers & Partners (Intellectual Property) 2017

    "A very clever barrister and a sharp opponent."
    Legal 500 (Intellectual Property) 2017

    "A tenancioius advocate and someone you want on your side"
    Legal 500 (Intellectual Property) 2016

    "A very astute and commercail senior junior, he's someone with excellent written and oral skills"
    Chambers & Partners (Intellectual Property) 2016

    "A very able and commercial barrister who produces quality pleadings"
    Legal 500 (Intellectual Property) 2015

    "He's astute and tactically excellent, and has great drafting skills" 
    Chambers & Partners (Intellectual Property) 2015

    "Confident, clear, tenacious and pragmatic, he has excellent written and oral skills."
    Chambers & Partners (Intellectual Property) 2014

    "Produces quality pleadings"
    Legal 500 (Intellectual Property) 2014