Scope of implied licence following joint venture negotiations

The Intellectual Property Enterprise Court (IPEC) has rejected a claim for copyright infringement and passing off by the owners of a jewellery business, finding that the acts complained of were within the scope of the implied licence granted to the defendants during joint venture negotiations.

It was agreed by the claimants and defendants that, when the parties began negotiations in late 2008, the claimants had goodwill in their business associated with their name “Hidden Jem” and a logo.

During 2009 preparations for the joint venture progressed between the parties and IPEC found that the claimants had granted the defendants a licence to use the “Hidden Gem” trade name, the logo and a particular photograph for any purpose which they might reasonably consider to be for the advancement of the joint enterprise.

Although the claimant’s trust in and friendship with the defendants later diminished, this could not retrospectively affect the nature of the licence. IPEC considered that the licence persisted until April 2010 when the claimants sent a letter of claim to the defendants.

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