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Martin Howe QC

 


Year of call: 1978
Year of silk: 1996

Martin Howe’s practice encompasses intellectual property and extends into wider fields of EU law and commercial and public law. He acted for the Secretary of State in the High Court and Court of Appeal in the tobacco standardised packaging case (R (BAT) v Sec of State for Health [2016] EWCA Civ 335), a judicial review case involving issues of intellectual property law, fundamental rights, free movement of goods under EU law, and the interpretation of TRIPS.

He is very experienced in higher courts. He appeared in the Hong Kong Court of Final Appeal in Tsit Wing v TWG Tea, the first trade mark case to reach that court, and in the UK Supreme Court in RFU v Viagogo, which dealt with the balance between the protection of personal data under the EU Charter of Fundamental Rights and the courts' powers to order disclosure of the identities of individuals alleged to have used a website to advertise tickets in breach of the terms and conditions of the ticket issuer.

He has conducted numerous cases in the CJEU, both IP related and relating to wider aspects of EU free movement and regulatory law. These include the first ever case about the so called 'Specific Mechanism' on parallel imports of pharmaceuticals from the EU Accession States (Merck v Sigma), the industry changing group of cases on trans border satellite broadcasting (FAPL v QC Leisure/Karen Murphy), the leading case on whether copyright prevents replication of computer program functionality and computer languages (SAS v WPL), on internet streaming of TV broadcasts (ITV v TVCatchup) on which the CJEU gave judgment on the second reference in March 2017, and the first ever case in the ECJ on circumvention of copy protection (Nintendo v PC Box). He conducts cases in the ECJ on references from the courts of other Member States (as in Nintendo v PC Box, from the Milan court) as well as from the UK.
He appears frequently in the Court of Appeal, as in Glaxo Wellcome UK Ltd v. Sandoz Ltd [2017] EWCA Civ 335 where he upheld a summary judgment by the defendants invalidating Glaxo’s EU Trade Mark based on a representation of its two-tone purple Seretide inhaler, on the ground that the nature of the registered mark was insufficiently clear from its representation to satisfy Article 4 of the EUTM; and in Robyn Rihanna Fenty v Arcadia Group (t/a Topshop) [2015] EWCA Civ 3, where he acted on behalf of the singer Rihanna in establishing a claim of passing off against Topshop for selling T shirts bearing an image of Rihanna.

He has a particular expertise in heavy technological cases, such as the internet, computers and IT, broadcasting and telecommunications technology, and biotech and pharmaceuticals: for details of his cases in these fields, see sections on Patents and on Copyright. 

His wide-ranging EU law practice focusses on free movement of goods and services and EU regulatory law. This has taken him to courts and tribunals outside the usual experience of IP practitioners, such as the Court of Appeal (Criminal Division), the Crown Court and the Admin Court on appeal - see section on EU Law.

He is the lead author of Russell Clarke and Howe on Industrial Designs (now in 9th Ed), and edited Halbury's Laws Title on Trade Marks. He is an Appointed Person to hear designs appeals from the UK IPO under the new appeal system of the Intellectual Property Act 2014.
 

Copyright, Database Rights and Design Rights

Martin’s copyright practice spans the hi-tech areas of IT and computer software, the internet, and telecommunications and broadcasting, as well as more traditional areas such as architectural copyright, magazine publishing and musical compilations.

Computer software and IT copyright (including video games)

Martin acted for the successful defendants in the ground-breaking software copyright dispute, Case C 406/10 SAS Institute Inc v World Programming Ltd [2012] 3 CMLR 4; [2012] RPC 31, where the CJEU sitting in Grand Chamber ruled that copyright in computer programs under the Software Directive 2009/24/EC does not prevent a competitor from replicating the functions of a program by observing its external behaviour, as well as ruling on the scope of the defence in Article 5(3) of the Directive which permits a lawful user of a program to investigate it to determine the ideas and principles which underlie it. He successfully carried through the implementation of the CJEU judgment in further stages of the proceedings which went to the Court of Appeal at [2013] EWCA Civ 1482; [2015] ECDR17; [2014] RPC 8.

Martin has acted in the only case so far to reach the CJEU on circumvention of technological copy-protection measures (‘TPMs’) Case C-355/12 Nintendo Co Ltd v PC Box SRL [2014] ECDR 6, where the Court ruled that protectable TPMs under Article 6 of Directive 2001/29 need not be located on the game chip itself but can be on the game console. He previously acted in proceedings in the UK where summary judgment was obtained against the sale of circumvention devices contrary to s. 296ZD and s. 296 of the CDPA 1988: Nintendo Co Ltd v Playables Ltd [2010] EWHC 1932 (Ch); [2010] ECDR 14; [2010] FSR 36.

He also acts in the protection of copyrights in video games, as in Nova Productions Ltd v Bell Fruit Games Ltd [2007] EWCA Civ 219; [2007] EMLR 14; [2007] RPC 25, where the Court of Appeal in a decision of wide ranging importance ruled on copyright in video games, including program code and artistic copyrights in generated images.

Having spent time working for IBM and as a software programmer, he is fully on top of preparation of highly technical evidence and can undertake detailed technical cross examination on program code, as in Ibcos Computers Ltd v Barclays Mercantile [1994] FSR 275, Jacob J.

Copyright etc in broadcasting and telecommunications

Martin has a pre-eminent practice in the field of copyright, and other rights such as conditional access (decoder card) rights, relating to broadcasting by satellite and the internet. In recent years five of his cases in this field have gone to the CJEU, as well as many cases in the Court of Appeal and the High Court.

Case C-275/15 ITV Broadcasting Ltd v TVCatchup Ltd (Judgment 1 March 2017), concerned the retransmission via the internet of free-to-air terrestrial broadcasts. In the same case there was a previous preliminary reference Case C-607/11 reported at [2013] 3 CMLR 1 on the interpretation of “communication to the public” in Article 3 of Directive 2001/29, and proceedings in the High Court and the Court of Appeal reported at [2015] EWCA Civ 204; [2015] ECDR 16; [2015] FSR 28. As well as dealing with “communication to the public”, the case also clarified the circumstances in which infringement can occur through the making of transient copies of broadcasts or of copyright works included in broadcasts in the course of buffering and retransmission.

Martin acted in a linked series of cases about his clients' use of imported satellite decoder cards in pubs in the UK to give access to satellite broadcasts of Premier League matches carried on foreign satellite channels, which involved a conflict between the freedom to receive services across frontiers in the EU single market and the attempted use of copyright law and national criminal laws to prevent the showing of match content outside national territorial zones allocated to licensees of FAPL. This led to one of the most important judgments to affect broadcasting in Europe in the last quarter century, Joined Cases C 403/08 and C 429/08 Football Association Premier League v QC Leisure and Karen Murphy v. Media Protection Services Limited [2011] ECR I-9083, resulting in the quashing of the criminal conviction of his client, Portsmouth landlady Karen Murphy and the dismissal of most of the civil claims against the importers of decoder cards and end user publicans.

These cases involved issues of copyright law as well as the very specialist but important law on dealings in unauthorised decoders which give access to broadcasts under section 298 of the Copyright Designs and Patents Act 1988 and the Conditional Access Directive 98/84/EC. They covered a wide range of copyright issues, including the impact of the Satellites and Copyright Directive 93/83/EEC on the cross border reception of satellite broadcasts, the impact of Article 5 of Directive 2001/29/EC on transient copies created inside decoder circuitry and on TV screens, and the meaning of “communication to the public” in Article 3 of Directive 2001/29/EC. As well as IP rights, the cases involved important issues of free movement of goods and services under the TFEU and under competition law - see EU Law section.

Since the FAPL v QC Leisure judgment in Luxembourg, Martin has conducted several related cases in the Court of Appeal and in the QB Divisional Court:

FAPL v Luxton [2016] EWCA Civ 1097, about whether a defendant who uses a domestic decoder card obtained from another Member State can have a defence to copyright infringement if he was prevented from obtaining a commercial grade card as a result of an unlawful agreement to partition markets contrary to Article 101 TFEU;

R (Vuciterni) v Brent Magistrates Court [2012] EWHC 2140 (Admin); (2012) 176 JP 705; [2012] CTLC 171; [2013] LLR 138; Martin acted for an applicant to quash a search warrant under which foreign satellite decoder cards had been seized. The Divisional Court held that the warrant had been obtained by the Trading Standard Department as a result of material non-disclosure of the fact that foreign decoder cards were not intrinsically unlawful, and quashed the warrant.

FAPL v QC Leisure [2012] EWCA Civ 1708; [2013] FSR 20 where the Court of Appeal held that the defence under section 72 of the CDPA 1988 applied because the intention of Parliament was clear even if that produced a conflict with Directive 2001/29/EC as interpreted by the Luxembourg Court.

Turner v Stafford Crown Court [2011] EWHC 490 (Admin): conviction for using an imported satellite decoder card quashed by the Divisional Court because of failure by the Crown Court to consider the EU law defences.

His coverage of the internet includes advising on the defences under the E Commerce Directive (2000/31/EC), where ISPs and other entities host online materials uploaded by others, and jurisdictional issues, including exposure to US law under the Digital Millennium Copyright Act (DMCA).

Non-technical copyrights

In addition to his practice on the application of copyright law in these highly technical areas, Martin has extensive experience of copyright in more traditional non-technical subject areas. Some highlights of his practice are:

IPC Media v Highbury Leisure Publishing [2005] FSR 20 p434.Copyright in magazine designs, and alleged copying of the 'format' (appearance and design) of Ideal Home magazine by a competitor magazine called 'Home'.

Pro Sieben Media AG v Carlton UK Television Ltd [1999] FSR 610, Ct of Appeal. Copyright in television broadcasts and fair dealing defences, where short segment of film from one broadcaster incorporated in a TV programme on the subject of "chequebook journalism".

Robin Ray v Classic FM PLC [1998] FSR 622, Ch D (Lightman J). Copyright in master catalogue of musical tracks prepared by Robin Ray as consultant to Classic FM. Classic FM licensed its "format" including a playlist based on the catalogue to certain radio stations overseas. The Court rejected arguments that the catalogue was a work of joint authorship and that Mr Ray was acting as an employee rather than a self employed consultant, and held that Classic FM's implied licence under Mr Ray's copyright to use the catalogue compiled by him did not extend to making copies for the use of the overseas stations.

Cala Homes Ltd v McAlpine [1995] FSR 818, Laddie J. Copyright in architectural drawings for Cala's range of standard house types. The Court held that Cala's employed director who had supervised and directed the creation of the drawings was a joint author together with the outside architects who had actually drawn them under his supervision; hence Cala could sue for infringement when the drawings were later substantially copied by the architects for the use of a competing housebuilder.

Designs

Martin is the main author of Russell-Clarke and Howe on Industrial Designs (Sweet & Maxwell), the leading practitioner textbook on the protection of industrial designs via registered and unregistered design rights and artistic copyright, which still has significant application to the protection of industrial designs. Having produced the 6th to 8th Editions of Russell-Clarke on his own, Martin is assisted in the 2016 9th Edition by two other members of chambers, James St Ville and Ashton Chantrielle. Martin also has a part-time judicial role relating to designs, having been made an Appointed Person to hear designs appeals from the UK IPO under the new designs appellate jurisdiction created by the Intellectual Property Act 2014.

As a practitioner he will undertake designs cases of all kinds, including cases in IPEC, which is now the forum of choice for the economical disposal of all but the highest value or most complex designs cases. He has undertaking design cases relating to extremely varied areas of technology, from shaped charge warheads to fruit punnets, carpets, laminating machines, lamps and lighting, and garments.

Some examples of his varied designs practice are:

Sealed Air Ltd v Sharp Interpack Ltd [2013] EWPCC 23. A registered and unregistered design case relating to fruit punnets. At Martin’s suggestion and in order to speed up the proceedings and reduce the costs of this fairly simple case, cross-examination of the expert witnesses was dispensed with and the judge relied on his own comparison of the features of the parties’ punnets and the prior art.

Alfa Laval Tumba AB v Separator Spares International Ltd [2012] EWCA Civ 1569; [2013] FSR 22. Design rights relating to marine separator machines; this appeal involved arguments on jurisdiction under the Brussels Regulation - see page on EU Law.

Societa Esplosivi Industriali SpA v Ordnance Technologies (UK) Ltd [2007] EWHC 2875 (Ch); [2008] RPC 12; previous proceedings reported at [2004] 1 All E.R. (Comm) 619. Shaped charge designs for multiple warhead missiles The parties had been involved in joint projects involving the design and testing of multiple warhead systems including shaped charges for 'bunker busting' cruise missiles. The case involved the court ruling on the correct procedures to be followed when disclosure documents fall within the Official Secrets Act, and on the liability for joint tortfeasance of a director.

Stoddard Intnl Ltd v Wm Lomas Carpets Ltd [2001] FSR 848. Carpet designs.

Billhöfer Maschinenfabriek GmbH v TH Dixons [1990] FSR105. Design drawings for laminating machinery Issues of eye appeal and substantial part.

 

  • What the Directories Say
  • "He always does a good job and is very effective in court. He is highly persuasive and always clear and rational" "he is really user-friendly and judges respect him. He is a bright, enthusiastic and committed barrister"
    Chambers & Partners (Intellectual Property) 2017

    "As well as being a leader in the field generally, he has a detailed technical grasp of computing and digital technology"
    Chambers & Partners (Information Technology) 2017

    "He has in-depth knowledge of copyright in broadcasts, EU copyright law and great commercial understanding of the client's objectives. He provides clear strategic advice"
    Chambers & Partners (Media and Entertainment) 2017

    "A specialist in the IP field with particular expertise in EU law."
    Legal 500 (Intellectual Property) 2017

    "A very good advocate"
    Legal 500 (IT and Telecoms) 2017

    "Recommended for IP work with EU elements"
    Legal 500 (Intellectual Property) 2016

    "Experienced in technical IT disputes"
    Legal 500 (IT and Telecoms) 2016

    "Highly regarded for media disputes with an EU element"
    Legal 500 (Media and entertainment) 2016

    "He has an excellent reputation as one of the senior silks in this area"
    Chambers & Partners (Media and Entertainment) 2016

    "He's a very safe pair of hands who's good on complex scientific cases"
    Chambers & Partners (Information Technology) 2016

    "Has market-leading knowledge on broadcast copyright and is a first port of call for this type of work" "He has great commercial understanding of the client's objectives and provides clear, strategic advice"
    Chambers & Partners (Intellectual Property) 2016

    "An experienced silk on big technical issues"
    Legal 500 (IT and Telecoms) 2015

    "He is very bright and industry-aware"
    Legal 500 (Media and entertainment) 2015

    "A team player who is thoughtful, cerebral and respected by the judiciary"
    Legal 500 (Intellectual Property) 2015

    "A precise, detail-oriented authority on EU law, with a software programming background he uses to outstanding effect in tech-based IP cases"
    Chambers & Partners (Information Technology) 2015

    " A cerebral lawyer, who is also accessible and a pleasant person to have on the team"
    Chambers & Partners (Media & Entertainment) 2015