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James St.Ville

 


Year of call: 1995

James St Ville was called to the Bar in 1995. At Gray's Inn, he was awarded the Bird & Bird Award for Intellectual Property, the Moot Society Prize and the Prince of Wales Award. At St. John's College Cambridge he was a Morton Scholar and awarded 1st Class Honours in Engineering, Sir Joseph Larmor's Plate, the St.John's College Prize and the University IEE Institution Prize.

He is recommended as a Leading Junior in Intellectual Property by Chambers UK and Information Technology by the Legal 500 and is a chartered engineer with substantial commercial experience of electronics, optical communications and engineering.

James appears in patent, registered design, design right, copyright, database right, confidential information, computer contract and IT disputes many of which deal with complex engineering, electronics and software and is an author of Russell-Clarke and Howe on Industrial Designs (9th Edition, 2016) with Martin Howe QC and Ashton Chantrielle. He is regularly instructed in trade mark, passing off, data protection and threats actions, including domain name and internet disputes and appears in the High Court, Patents Court, Technology and Construction Court, Court of Appeal, Intellectual Property Enterprise Court (IPEC), UK IPO, EU IPO (formerly OHIM) and General Court of the EU. He is regularly instructed to appear against leading counsel and with juniors.

He  has expertise in areas of practice such as search orders, Norwich Pharmacal orders, disk imaging orders, delivery up of source code, ex-parte injunctions to identify and deal with computer hackers and other interim injunctions which need to be kept confidential,  third party disclosure, UK Border Agency seizures and disputes over letters of request and the examination of witnesses for the purpose of foreign proceedings.

James represents clients at mediations, advises in relation to IP disputes in other common law jurisdictions such as Singapore and Jersey, and has sat as an examiner in response to overseas letters of request.

His reported cases include Spin Master v. PMS [2017] WLR (principles applied by High Court to achieve proportionate management of registered design cases), Marks & Spencer v. Asda Stores [2017] FSR 11 (principles on which court applies costs management controls in patent and unregistered design right cases), Positec v. Husqvarna [2016] Bus LR 714, [2016] FSR 29 (disclosure on obviousness in patent actions under new CPR 31.5), Procter and Gamble v. Star Global [2016] RPC 19 (community trade mark dispute concerning parallel imports of branded fragrances products with tracking codes removed), VPG Systems v. Air-Weigh Europe [2016] FSR 4 (invalidity of patent for on-board vehicle weighing system), Alfa Laval v. Separator Spares [2013] 1 WLR 1110 (CA) (the leading case on the test for determining whether breach of confidence and copyright claims against former employees are ‘matters relating to individual contracts of employment’ under the Brussels I Regulation), Virgin v. Casey [2011] ETMR 35 (maintaining registration of “Carbon Virgin” for advertising services in the face of Virgin’s appeal), Ancon v. ACS Stainless Steel Fixings [2009] All ER (D) 148 (CA) (patent action and appeal about high strength channels and bolts), M Systems v. Trek [2008] RPC 18 (validity and amendment of the patent for the USB memory stick), Meridian v. IP Enterprises [2008] Info TLR 139 (CA) (implied terms concerning ownership of copyright in source code), Nichia v. Argos [2007] Bus LR 1753 (CA) (principles upon which disclosure should be ordered in patent actions), BSW v. Balltec [2007] FSR 1 (successfully resisting pre-action disclosure regarding equipment used in the offshore oil and gas industry), Quads4kids v. Campbell [2006] Info TLR 338 (illegitimate complaints about products sold on eBay and threats of design right infringement proceedings), IDA v. University of Southampton [2006] RPC 21 (CA) (substantial patent entitlement dispute), Premier League v. Panini [2004] 1 WLR 1147 (CA) (copyright in football club crests), CDW's Trade Mark Application [2003] RPC 30 (trade mark www.standupifyouhatemanu.com contrary to public policy), Collag v. Merck [2003] FSR 263 (confidential information and patent entitlement dispute regarding agrochemical formulations), Rohm & Haas v. Collag [2002] FSR 28 (CA) (agrochemical process patent) and Safari Trade Mark [2002] RPC 23 (alleged non-use negative by use under bare licence).

 

Copyright, Database Right and Designs

Throughout his career James has been heavily involved in copyright, database right and design disputes, an area in which his technical expertise has come into its own. He recently appeared successfully in Spin Master v. PMS [2017] EWHC 1477 (principles applied by High Court to achieve proportionate management of registered design cases), Marks & Spencer v. Asda Stores [2017] FSR 11 (principles on which court applies costs management controls in unregistered design right and patent cases), Glendimplex v. Poundstretcher (copyright, design right and patent action concerning flame effect fires) and First Subsea v. Balltec (six week trial of claims including alleged infringement of UK unregistered design right, copyright, breach of confidence and fraud upon the court in relation to 3D CAD for deep-sea mooring equipment and pipeline recovery tools). Devonshire Pine Ltd v Day (a case about copyright, unregistered design right, reverse passing off and breach of e-commerce regulations in relation to pine furniture against Michael Edenborough QC) and Alfa Laval v Separator Spares [2013] 1 WLR 1110 in the High Court (against John Baldwin QC) and in the Court of Appeal (led by Martin Howe QC) in successfully resisting the joinder of Polish to dormant UK proceedings for breach of confidence and infringement of copyright in drawings for marine separator parts. He also acted for Playables in a substantial dispute over adapter cards for use with Nintendo DS and DS Light games consoles concerning border controls and customs seizures (Nintendo v. Playables) and in MinMeridian International v IP Enterprises, a Court of Appeal case concerning the source code of integrated forecasting software. James appeared in the Court of Appeal, led by Mark Platts-Mills QC, in FA FAPL Premier League v. Panini which established that a defence of incidental inclusion did not stop the copyright in club crests being used to restrain unlicensed publishers of football photographs in sticker books and magazines. He has since been instructed by the Premier League in FA Premier League v. LCD Publishing to restrain the use of unlicensed club based football magazines.

Spin Master v. PMS [2017] EWHC 1477.
Registered design case about well-known Bunchems toy. Principles applied by High Court to achieve proportionate management of registered design cases.

Marks & Spencer v. Asda Stores [2017] FSR 11.
Unregistered design right and patent action concerning expandable shirt cuffs. Principles on which court applies costs management controls in unregistered design right and patent cases.

First Subsea v. Balltec (2013-2015).
Six week trial of claims including alleged infringement of UK unregistered design right, copyright, breach of confidence and fraud upon the court in relation to 3D CAD for deep-sea mooring equipment and pipeline recovery tools.

Spin Master v Character Options and Brix N’ Clix (2015).
Registered design, community unregistered design right, copyright and passing off claim relating to extremely successful and well known flying toy.

Glendimplex v. Poundstretcher (2014).
Copyright, design right and patent action concerning flame effect fires.

Authors’ Licensing and Collecting Society v NLA Media Access (2014).
Copyright claim in relation to ALCS’s subscribers’ copyright in the NLA’s ClipShare service and eClips database.

Devonshire Pine v. Day (2013).
Alleged infringement of copyright, unregistered design right, reverse passing off and breach of e-commerce regulations in relation to furniture and brochures and web sites advertising them. Appeared against Michael Edenborough QC, successfully resisting application for summary judgment.

Alfa Laval v. Separator Spares
[2013] 1 WLR 1110 [2013] CP Rep 9 [2013] ILPr 10 [2013] ICR 455 [2013] FSR 22.
Alleged breach of confidence and infringement of copyright in drawings for marine separator parts. Test for determining whether breach of confidence and copyright claims against former employees are ‘matters relating to individual contracts of employment’ and within Articles 18(1) and 20 of the Brussels I Regulation.

Metso Minerals v. Ashton Bulk (2013).
Alleged breach of confidence and infringement of copyright in relation to CAD drawing system data and drawings of very large scale bulk handing equipment including railway tipplers and stacker-reclaimers.

Web Services Integration v. Watertrace (2012).
Data management, enrichment and validation systems. Alleged breach of software licencing and system hosting agreement accompanied by failure to allow inspection of computer systems in accordance with the contract. Appeared against James Ayliffe QC in successful application for summary judgment to compel inspection of computer system.

University of Salford v. KPI Zone (2012).
Claim for breach of confidence and infringement of copyright and database right by forwarding emails and copying client contact database. Ex-parte order for imaging of computer systems and analysis of very substantial amounts of information from imaged hard disks.

Evac Chair v. Ferno (2011-2012).
Claim for infringement of UK unregistered design right and passing off in relation to the world’s leading evacuation chair.

Enterprise Documents Solutions v. Docworks (2011-2012).
Claim for specific performance of share sale agreement concerning document management software and counterclaim for infringement of copyright in that software.
 

MNC v. Kerckhaert (2011).
Action to restrain threats of community registered designs alleged to protect horseshoes.

Heywood Williams v. Easyfit (2010).
Successful registered design proceedings in relation to hinge fittings for doors.

Nintendo v. Playables (2010).
Acted for Playables in substantial case concerning urgent interim injunction application and ongoing High Court action over adapter cards for use with Nintendo DS and DS Light games consoles.

HMRC v. Playables (2009).
Acting for Playables in case concerning border controls and customs seizure and about adapter cards for use with Nintendo DS games consoles.

Gardline v. UTEC (2009).
Defending interim injunction application to restrain use of forms and procedures used to manage marine survey operations on board ships.

FA Premier League v. LCD (2008-9).
Action concerning football magazines - copyright in football club and Premier League badges - football club and Premier League trade marks - contracts controlling use of photographs taken at Premiership matches - alleged competition issues.

Module Co v. Laing O’Rourke (2008).
Pre-action disclosure concerning alleged infringement of copyright in hospital module building designs.

Storage Solutions v. Beacon Stream (2008).
Alleged threats of design right, patent and trade mark proceedings - responding to interim injunction application and action.

Meridian International v. IP Enterprises [2008] Info TLR 139 EIPR 475.
Appeal to the Court of Appeal - ownership of copyright in source code of integrated forecasting software - principles to be applied regarding security for costs in context of Conditional Fee Agreement details of which were not disclosed (in Court of Appeal). - preceded by speedy trial in High Court and interim injunction application which resulted in delivery up of the source code.

Duffy v. The Interactive Annual Report Company (2007).
Action concerning delivery up of source code for advanced website and website content management system.

EGroup v. Baker (2007).
For defendant in application for delivery up of source code in search engine and associated website.

Proteus Sports Cars v. Matker (2007).
Trial concerning confidential information in 3D CAD models of replica sports cars and breach of agent’s fiduciary duties.

Wild Rose v. Mercer (2007).
Musical, dramatic, choreographic and literary copyright in ice shows, design right in costumes, alleged breach of fiduciary duties - successful strike out.

BSW v. Balltec [2007] FSR 1.
Pre-action disclosure application in proposed action for patent infringement, copyright infringement, design right infringement and breach confidence in relation to pipeline recovery and offshore platform mooring equipment.

Intelligent Solutions v. Envision (2004-2007).
Copyright and confidential information in firmware and copyright and design right in electronic hardware for wireless building management systems.

Quads4kids v. Campbell [2006] InfoTLR 338.
eBay - registered designs - threats – injunction restraining illegitimate complaints made through e-bay’s Verified Rights Owners scheme, VeRO, which e-bay otherwise relied upon to stop legitimate trading.

River Island Clothing Company Limited (2005-2006).
High street fashion - numerous actions - Community unregistered design right and copyright claims against more than 20 defendants.

Manchester Metropolitan University v. Langtree Skillscenter (2005).
Copyright dispute concerning software for sophisticated supply chain analysis questionnaires.

Structherm v. Jarvis (2005).
Copyright in architectural drawings for pre-fabricated buildings.

FA Premier League v. Panini [2004] 1 WLR 1147, [2004] FSR 1 (CA).
Copyright in football club badges - football sticker albums and stickers - action shots of players - whether incidental use.Appeal to Court of Appeal.

Philips v. Salton (2004).
Copyright in software for coffee makers - authorisation - jurisdiction - parallel proceedings - service of part 20 claims out of jurisdiction.

JFA v. Oceancrown (2004).
Successfully resisting revocation proceedings in designs registry – cancellation under regulation 12(2). of the Registered Designs Regulations 2001.

Kahn v. Autopart (2003).
UK registered design action - alloy wheels.

Croll v. Tod (2003).
Royalties under consultancy agreement - preliminary issue on construction - counterclaim - designs for geodesic ray-domes - design right - breach of confidence.

Intranetics v. Cookson (2002).
Website - copyright infringement – confidential information - passing off - employee’s duty of fidelity.

Craftmatic v. Lumbamatic (2002).
Copyright in sales brochures for adjustable beds - disclosure of whereabouts of infringing works - additional damages - need for inquiry as to damages.

Randolph v. Abkco Music & Records (2002).
Action to enforce copyright in photographs of the Rolling Stone’s Rock ‘n’ Roll Circus which had been copied by Abkco without permission.

New Planet Solutions v. The Innovation Group (2001).
Breach of confidence – malicious falsehood - claimant’s right to supply software.

Acquila Electronics (2001).
Taxi meters - electronic circuits - design of taxi-meter display - design right - copyright - breach of confidence - employee’s duty of fidelity.

Trudi v. Alsuna (2000).
Children’s alphabet letters - registered design - validity – threats.

Marrioff v. The Channel Tunnel Group (2000).
Fire suppression systems - design right - copyright - confidential information.

Umbra Software v. Spencer (2000).
Computer software - commercial information - copyright - confidential information - employee’s duty of fidelity.

Dynamic Concepts v. Cable & Wireless (2000).
Antenna tower - copyright - work of architecture - parallel claim in Irish Law - whether substantial part taken.

Net Online v. Job Depot (1999).
Software for recruitment agencies - alleged copyright infringement - software chosen and operated by sub-contractor co-defendant.

Thomas Lloyd Mail Order v. Burden (1999).
Copyright in advertising photographs - photographs commissioned - terms of licence before and after CDPA 1988 came into force.

Morgan v. BBC [1998] 
Copyright in a screen play - opportunity to copy – whether similarity sufficient to infer copying.

Microsoft v. Backslash Distribution (1998). 
Copyright in software - trade mark infringement - constructive trust over fruits of copyright and trade mark infringement.

Microsoft v. Staud (1998).
Copyright in software - trade mark infringement - passing off - permission for use of disclosure to aid foreign police.

ETAL v. Critchley [1997] FSR 401.
Miniature electronic transformers - design right - “must fit” defence - data sheets - copyright - copying “little but often”.
 

  • What the Directories Say
  • "He is an absolute perfectionist with a real eye for detail, which is really useful for trade mark infringement cases." "He is extremely thorough and leaves no stone unturned. His preparation on every case is superb and detailed, and he has first-class drafting"
    Chambers & Partners (Intellectual Property) 2017

    "Especially noted for his skill in handling cases with dominant mathematical and technical elements" 
    Chambers & Partners (Information technology) 2017

    "He has excellent knowledge of technology and a keen eye for detail."
    Legal 500 (IT and Telecoms) 2017

    "His calm, forensic approach is absolutely invaluable"
    Legal 500 (IT and Telecoms) 2016

    "He has a keen eye for detail and is very thorough"  
    Chambers & Partners (Intellectual Property) 2016

    "A user-friendly and very experienced junior"
    Chambers & Partners (Information technology) 2016 

    "Excellent in advising on matters with an IP or contractual dimension"
    Legal 500 (IT and Telecoms) 2015

    "Displays incredible attention to detail, is very responsive, gives sound commercial advice and has excellent IT industry knowledge" 
    Chambers & Partners (Information technology) 2015

    "He leaves no stone unturned- he offers superb detailed preparation on every case and first-class editing"
     Chambers & Partners (Intellectual Property) 2015

    "Expertise in IT disputes involving engineering, electronics and software"
    Legal 500 (IT and Telecoms) 2014

    "Technically strong," he is "hard-working and on top of the detail"
    Chambers & Partners (Intellectual Property) 2014

    "He is very good on the technical side"
    Chambers & Partners (Information Technology) 2014