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Lindsay Lane

 


Year of call: 1996

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Lindsay Lane read Natural Sciences and Law at Cambridge. She practises in all areas of intellectual property law including patents, trade marks, copyright, database rights, registered designs, design right, passing off and confidential information and in media and entertainment law. She is recommended in the Legal 500 and in Chambers and Partners for both intellectual property and media and entertainment.

Recent notable cases include the patent cases Accord v Medac and Generics v Richter Gedeon; Wade v BSkyB, a television format case; BBC v Eos, in the Copyright Tribunal and numerous cases brought on behalf of the Premier League for copyright infringement.

Other cases of note include Schutz v Werit in the Supreme Court, a patent case about making/repair; Phones 4u v Phone4u.co.uk in the Court of Appeal on trade mark infringement and passing off; Prince of Wales v Associated Newspapers, an action for copyright and breach of confidence relating to the publication of extracts from the Prince's diaries in the Mail on Sunday, and Eddie Irvine v Talksport, which established for the first time in the United Kingdom the right of celebrities to prevent false endorsement under the law of passing off. Lindsay has particular expertise in rights in databases having been instructed in BHB v William Hill and the various cases concerning rights in football-related data brought by Football Dataco.  

Lindsay is also co-author of Laddie, Prescott and Vitoria on The Modern Law of Copyright and Designs.

Patents

Lindsay appeared in the definitive authority on patent interpretation in the House of Lords Kirin Amgen v Hoechst Marion Roussel, a case relating to recombinant DNA technology; as well as in the Supreme Court in Schütz (UK) Ltd v Werit (UK) Ltd, on the issue of repair.  Other significant  patent cases include: Accord V Medac; Generics v Richter Gedeon and Generics v Yeda, all pharmaceutical cases, Menashe Business Mercantile Ltd v William Hill Organization Ltd, on jurisdiction; American Home Products Corp. v Novartis Pharmaceuticals UK Ltd, on second medical use; and Scanvaegt International A/S v Pelcombe Ltd, in the Court of Appeal.

Accord Healthcare Ltd v Medac Gesellschaft Fur Klinsche Spezialpraparate MbH [2016] EWHC (Pat) 24

Claim for invalidity in relation to a patent for a formulation of methotrexate for the treatment of inflammatory automimmune diseases. Junior Counsel for the Claimant.

Glass v Freyssinet Ltd [2015] EWHC 2972 (IPEC)

Patent infringement and validity case about a drug to treat multiple sclerosis. Junior Counsel for the Claimant

Generics UK Ltd v Richter Gedeon [2014] EWHC 1666 (Pat)

Claim for invalidity in relation to a dosage regimen patent for emergency contraception. Junior Counsel for the Defendant.

Generics (UK) Ltd v Yeda Research & Development Co Ltd [2012] EWHC 1848 (Pat)

Patent infringement and validity case about a drug to treat multiple sclerosis. Junior Counsel for the Claimant.

Schütz (UK) Ltd v Werit (UK) Ltd [2013] RPC 16

Patent infringement and validity case concerning intermediate bulk containers and the issue of repair which was ultimately resolved in the Supreme Court. Junior Counsel for the Claimant.
 

Kirin-Amgen Inc. v Transkaryotic Therapies Inc. [2005] 1 All ER 667

Appeal to the House of Lords on infringement, insufficiency and novelty of patent concerning recombinant DNA technology. Now the definitive authority on patent construction and infringement. Junior counsel for TKT.

Menashe Business Mercantile Ltd v William Hill Organization Ltd [2003] RPC 31

Appeal to the Court of Appeal on preliminary issue concerning jurisdiction in patent infringement. Junior counsel for Menashe.

Kirin-Amgen Inc. v Transkaryotic Therapies Inc. [2002] RPC 43

Application to amend patent. Junior counsel for TKT.

American Home Products Corp. v Novartis Pharmaceuticals UK Ltd [2000] RPC 547

Trial on infringement and sufficiency of Swiss form patent for the transplant drug, rapamycin. Junior counsel for AHP.

Scanvaegt International A/S v Pelcombe Ltd [1998] FSR 786

Appeal concerning the construction and infringement of a patent for a process for batching products. Junior counsel for Pelcombe.

Trade Marks and Passing Off

Lindsay has appeared in many trade mark and passing off cases, including, most recently, 32Red Plc v WHG (International) Ltd, an inquiry as to damages; A&E Television Networks LLC v Discovery Communications Europe Ltd, a case about television channel names and Numatic v Qualtex, a passing off case about the shape of Henry vacuum cleaners. Other trade mark/passing off matters include UKTV v E! Entertainment (television channel names) and Phones 4u v Phone4u.co.uk (domain names). She acted for the claimant in Eddie Irvine v Talksport Ltd, where the right of celebrities to prevent false endorsement under the law of passing off was established definitively for the first time in the UK. Lindsay was also counsel for Chipie France in the Privy Council case on appeal from the Supreme Court of Mauritius, Sprints Ltd v Comptroller of Customs. She has wide ranging experience of appearing in the trade mark registry of the IPO, as well as advising in relation to OHIM proceedings. 

32Red Plc v WHG (International) Ltd (2013)

Junior Counsel for the defendant  in an inquiry  as to damages arising from trade mark infringement relating to an online casino.

A&E Television Networks LLC v Discovery Communications Europe Ltd  [2013] ETMR 32

Passing off and trade mark infringement trial. Junior counsel for the Claimant.

Numatic International Ltd v Qualtex UK Ltd [2010] RPC 25

Passing off case concerning the shape of Henry vacuum cleaners. Junior Counsel for the Defendant.

FIFA v Jules Rimet Cup Ltd (2009)

Junior counsel for FIFA in committal proceedings for breach of consent order made in a passing off case.

Cofra Holding AG v Alexander Brenninkmeijer (2008)

Application for summary judgment on the issue of bad faith in a dispute over the use of the mark CLEMENS EN AUGUST between C&A and a member of the Brenninkmeijer family. Junior counsel for the respondent.

UKTV Channel Management Ltd v E! Entertaintment Television Inc [2008] FSR 5

Counsel for the claimant in an application for an injunction/speedy trial in a case of trade mark
infringement and passing off involving television channel names.

Phones4U Ltd v Phone4u.co.uk Internet Ltd [2007] RPC 5

Counsel for the respondent in the Court of Appeal (and at trial) in an action for passing off and trade mark infringement brought by Phones4U against the defendant in respect of his registration and use of phone4u.co.uk.

Harrison’s Trade Mark Application (“CHINAWHITE”) [2004] FSR 13

Appeal to the High Court from the Trade Mark Registry on bad faith. Counsel for Teton Valley.

Eddie Irvine v Talksport Ltd [2003] 2 All ER 881

Appeal to the Court of Appeal on quantum awarded after passing off trial (see below). Junior counsel for Eddie Irvine.

Eddie Irvine v Talksport Ltd [2002] 2 All ER 414

Passing off trial relating to the use of a doctored photograph of Eddie Irvine on a leaflet sent to potential advertisers on Talk Radio. The case has established definitively for the first time in the UK the right of celebrities to prevent false endorsement under the law of passing off. Counsel for Eddie Irvine.

Sprints Ltd v Comptroller of Customs [2000] FSR 814

PrivyCouncil case, on appeal from the Supreme Court of Mauritius Trade mark opposition by Chipie France to application for registration of CHIPIE for clothing. Counsel for Chipie France.

Copyright, Database Rights and Design Rights

Highlights of Lindsay’s work in copyright include Football Dataco v Brittens Pools, the first case in the UK about database copyright which resulted in a reference to the CJEU, HRH Prince of Wales v Associated Newspapers Ltd, where she was junior counsel for the Prince of Wales in a case concerning the publication in the Mail on Sunday of extracts from his journal about the handover of Hong Kong; Robin Ray v Classic FM PLC, a leading authority on implied terms in licences and assignments of copyright; and Mackie Designs Inc. v Behringer Specialised Studio Equipment (UK) Ltd (circuit diagrams). Lindsay also has experience in the Copyright Tribunal, most recently in BBC v Eos, in which she appeared alone for the BBC in their application for interim relief and at the main substantive hearing.

Lindsay considers rights in databases a particular specialism. She appeared as junior counsel for the BHB in The British Horseracing Board Ltd v William Hill Organization Ltd, the main authority on database right infringement and acted for Football Dataco and the Football Leagues in relation to various proceedings concerning the rights arising in football fixture lists and live data from football matches. She also acts for the Premier League in numerous actions against publications to enforce copyright in the premier league's logos.

Football Association Premier League v Luxton [2014] EWHC 253 (Ch)

Junior Counsel for the Premier League in an application for summary judgment to prevent a publican from communicating Premier League logos to the public via television screens.

Nintendo Co Ltd v PC Box Srl [2014] ECDR 6

Junior counsel for Nintendo in a reference to the CJEU from the Milan District Court relating to copyright circumvention devices.

Lilley v Chartered Institute of Management Accounts [2014] EWHC 2364 (Ch) and [2013] EWHC 1354 (Ch)

Successfully defended CIMA against proceedings for copyright infringement brought by a litigant in person.

Football Dataco Ltd v Sportradar/Stan James [2013] FSR 30, [2013] FSR 1 (and others)

Junior Counsel for the Claimant at trial, on appeal and in the CJEU in extensive litigation concerning whether rights subsist in football fixtures and in live data from football matches. Trial on joint liability for database right infringement in live data from football matches.

.HRH Prince of Wales v Associated Newspapers Ltd [2007] 3 WLR 222

Junior counsel for the Prince of Wales in proceedings for copyright infringement and breach of
confidence arising from the publication of extracts from the Prince’s journal about the handover of Hong Kong in the Mail on Sunday.

The British Horseracing Board Ltd v William Hill Organization Ltd [2005] RPC 13

Junior Counsel for the BHB in the first case referred to the CJEU on database right infringement.

Grewel and Elfenbein v Hairflair Magazines Ltd (2005)

Trial in the Patents County Court concerning copyright infringement in a song and sound recording. Counsel for Hairflair.

Mackie Designs Inc. v Behringer Specialised Studio Equipment (UK) Ltd. [1999] RPC 717

Application for summary judgment on a point of law: whether there was a defence available under s 51 of the CDPA in a case of alleged infringement of copyright in circuit diagrams. Junior counsel for Mackie Designs.

Robin Ray v Classic FM PLC [1998] FSR 622

Copyright infringement trial relating to a classical music catalogue commissioned for Classic FM. Case concerned whether the database was a work of joint authorship, whether it was produced pursuant to a contract of employment and whether the defendant had an implied assignment or licence. Junior counsel for Robin Ray.

Media and Entertainment

Chambers Directory reports that Lindsay is "very good with clients and very authoritative in court". She recently represented Paul Smith and Celador in a case about television format rights (Meakin v Celador) and MTV in a licencing dispute. In the past she has represented Eddie Irvine in Eddie Irvine v Talksport, which established for the first time in the UK the right of celebrities to prevent false endorsement under the law of passing off. Lindsay represented another high profile claimant in HRH Prince of Wales v Associated Newspapers Ltd, where she was junior counsel for the Prince of Wales in copyright infringement and breach of confidence proceedings relating to the publication in the Mail on Sunday of extracts from the prince’s journal about the handover of Hong Kong.

Wade v British Sky Broadcasting Ltd [2014] EWHC 634 (Ch)

Junior counsel for BSkyB in a breach of confidence case about television formats.

BBC v Eos (2013)

Counsel for the BBC in proceedings in the Copyright Tribunal including the first case on interim relief. Also appeared at the main substantive hearing which took place in Wales so that witnesses were able to give their evidence in Welsh with simultaneous translation.

HRH Prince of Wales v Associated Newspapers Ltd [2007] 3 WLR 222

Junior counsel for the Prince of Wales in proceedings for copyright infringement and breach of
confidence arising from the publication of extracts from the Prince’s journal about the handover of Hong Kong in the Mail on Sunday.

Eddie Irvine v Talksport Ltd [2003] 2 All ER 881

Appeal to the Court of Appeal on quantum awarded after passing off trial(see below). Junior counsel for Eddie Irvine.

Eddie Irvine v Talksport Ltd [2002] 2 All ER 414

Passing off trial relating to the use of a doctored photograph of Eddie Irvine on a leaflet sent to potential advertisers on Talk Radio. The case has established definitively for the first time in the UK the right of celebrities to prevent false endorsement under the law of passing off. Counsel for Eddie Irvine.

Music

Grewel and Elfenbein v Hairflair Magazines Ltd (2005)

Trial in the Patents County Court concerning copyright infringement in a song and sound recording. Counsel for Hairflair.

Broadcast

Wade v British Sky Broadcasting Ltd [2014] EWHC 634 (Ch)

Junior counsel for BSkyB in a breach of confidence case about television formats.

A&E Television Networks LLC v Discovery Communications Europe Ltd [2013] ETMR 32

Passing off and trade mark infringement trial. Junior Counsel for the Claimant.

UKTV Channel Management Ltd v E! Entertaintment Television Inc [2008] FSR 5

Counsel for the claimant in an application for an injunction/speedy trial in a case of trade mark infringement and passing off involving television channel names.

Other

Force India Formula One Team Ltd v 1 Malaysia Racing Team SDN BH [2012] RPC 29

Junior Counsel for the Claimant at trial and in the Court of Appeal in a claim for breach of confidence relating to the designs of a Formula One Car.

Sectrack NV v Satamatics Ltd (2007)

Junior counsel for the defendant in a case in the Commercial Court involving breach of confidence and contract.

Cray Valley Ltd v Deltech Europe Ltd (2003)

Breach of confidence trial concerning formulations and manufacturing instructions for resins. Junior counsel for Deltech.

R v MAFF, ex parte Monsanto PLC (Clayton Plant Protection intervening) [1998] 4 All ER 321

Judicial review of grant of approval for “me too” herbicide. Application for interim injunction pending reference to ECJ on the interpretation of Council Directive 91/414. Junior counsel for Clayton Plant Protection in the High Court and ECJ.

Examiner under part 34 CPR
Rockefeller University v Centocor Inc (2005)
• Pharmacia Corporation v Par Pharmaceutical Inc. (2003)

Lindsay also has experience in acting in mediations and arbitrations.
 

Additional Information

Education and Awards

1991-4: Newnham College, Cambridge BA (Hons) in Natural Sciences (physical) and Law (2:1)
1994: Winner, Cambridge University Law Society, De Smith Individual Mooting Competition
1994-5: European University Institute, Florence, Master’s in Comparative, European and International Law
1995-6: Inns of Court School of Law, Bar Vocational Course (Very Competent)
1995-6: Middle Temple Benefactors’ Scholarship
1996: Regional Finalist (Maastricht), European Mooting Competition
October 1996: Monckton Chambers, 4 Raymond Buildings
March 1997 Pupil supervisors: Stephen Richards (now Richards LJ) and Melanie Hall (European and administrative law)
April 1997-8: New Square, Chambers of Mark Platts-Mills QC
September 1997 Pupil supervisors: Daniel Alexander and James Mellor (intellectual property law)

Publications

Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs (Butterworths, 2011) Author.

A Guidebook to Intellectual Property (Sweet & Maxwell, 2004)
Author.

Practitioners’ Handbook of EC Law (The Bar Council, 1998)
Contributor.

Atkin’s Court Forms, Competition (Butterworths, 1999)
Contributor.

Bullen & Leake & Jacob’s Precedents of Pleadings (Sweet & Maxwell, 2000)
Contributor.

Atkin’s Court Forms, Copyright (Butterworths, 2001)
Contributor.

Seminars

• FFW: Trade mark litigation highlights (October 2014)
• BBC: IP lessons from the Football Data litigation (July 2014)
• Sweet & Maxwell Webinar: Proving confusion (March 2014)
• Allen & Overy: Making sense of exhaustion (March 2014)
 

Languages: Italian (fluent) and French (working knowledge)

Professional Memberships: Intellectual Property Bar Association, Chancery Bar Association.

Recent Activity

» Opinion of the Advocate General in Teva v. Gilead SPC case
» Teva UK Ltd v Merck Sharp & Dohme Corp [2017] EWHC 539 (Pat)
» Teva, Accord, Lupin, and Generics UK trading as Mylan v Gilead Sciences Inc.
» R (On the Application Of) British American Tobacco UK Limited & Others v The Secretary of State for Health [2016] EWCA Civ 1182
» FAPL v Luxton
» R (British American Tobacco UK Limited & Ors) v Secretary of State for Health
» Accord v Medac [2016] EWHC 24 (Pat)
» (1) Gareth Kevin Glass (2) Adrian Charles Roberts (3) Nigel Davison v Freyssinet Limited [2015] EWHC 2972 (IPEC)
» A Khan Design Limited v Stephen Horsley & Another [2014] EWHC 3019 (IPEC)
» Lilley v Euromoney Institutional Investor Plc & Anor [2014] EWHC 2364 (Ch)
» Generics (UK) Ltd (t/a Mylan) v Richter Gedeon Vegyeszeti Gyar RT [2014] EWHC 1666 (Pat)
» Nintendo Co Ltd v PC Box SRL Case C-355/12
» BBC -and- Eos
» 32Red v WHG
» Schutz (UK) Ltd v Werit (UK) Ltd [2013] UKSC 16
» A&E Television Networks LLC v Discovery Communications Europe Ltd [2013] EWHC 109 (Ch)

What the Directories Say

"She is an experienced counsel with a comprehensive and detailed knowledge of copyright law." "She has a very clear approach and is good at cutting through to what really matters"
Chambers & Partners (Intellectual Property) 2017

"Clever and efficient and delivers pragmatic advice"
Chambers & Partners (Media and Entertainment) 2017

"She is good to work with and has an impressive commercial approach."
Legal 500 (Intellectual property) 2017

"She really thinks about achieving the clients commercial goals in terms of timing and strategy."
Legal 500 (Media and entertainment) 2017

"Known for television copyright matters"
Legal 500 (Media and entertainment) 2016

"Very good for IPEC trials"
Legal 500 (Intellectual property) 2016

"Her advice was very helpful and very constructive." "She's an effective advocate and can drive the point home when she needs to"
Chambers & Partners (Media and Entertainment) 2016

"Composed, confident and practical, she's a persuasive advocate." "Very good under fire and gets the ear of the tribunal"
Chambers & Partners (Intellectual Property) 2016

"She has an excellent grasp of procedural and technical issues"
Legal 500 (Intellectual property) 2015

"Very smart and very tough. She is persistent in her advocacy, very commercial and great with clients" "She's sharp-witted and highly responsive" 
Chambers & Partners (Media and Entertainment) 2015

"Clients are very impressed by her personable manner and commercial outlook"
Chambers & Partners (Intellectual Property) 2015

 

 

  • What the Directories Say
  • "She is an experienced counsel with a comprehensive and detailed knowledge of copyright law." "She has a very clear approach and is good at cutting through to what really matters"
    Chambers & Partners (Intellectual Property) 2017

    "Clever and efficient and delivers pragmatic advice"
    Chambers & Partners (Media and Entertainment) 2017

    "She is good to work with and has an impressive commercial approach."
    Legal 500 (Intellectual property) 2017

    "She really thinks about achieving the clients commercial goals in terms of timing and strategy."
    Legal 500 (Media and entertainment) 2017

    "Known for television copyright matters"
    Legal 500 (Media and entertainment) 2016

    "Very good for IPEC trials"
    Legal 500 (Intellectual property) 2016

    "Her advice was very helpful and very constructive." "She's an effective advocate and can drive the point home when she needs to"
    Chambers & Partners (Media and Entertainment) 2016

    "Composed, confident and practical, she's a persuasive advocate." "Very good under fire and gets the ear of the tribunal"
    Chambers & Partners (Intellectual Property) 2016

    "She has an excellent grasp of procedural and technical issues"
    Legal 500 (Intellectual property) 2015

    "Very smart and very tough. She is persistent in her advocacy, very commercial and great with clients" "She's sharp-witted and highly responsive" 
    Chambers & Partners (Media and Entertainment) 2015

    "Clients are very impressed by her personable manner and commercial outlook"
    Chambers & Partners (Intellectual Property) 2015