3PB Intellectual Property barrister Faizul Azman provides an insightful article which aims to provide both employers and employees with a general understanding of intellectual property rights in a copyright work created in the course of employment.
- Clerk Name: David Fielder
- Clerk Telephone: 020 7583 8055
- Clerk Email: [email protected]
Faizul specialises in a broad range of intellectual property law including copyright and databases, trade marks, passing off, design rights, confidential information, domain names, and related areas of contract law, employment law and other commercial matters.
Examples of Faizul’s recent work include:
Trade marks and Passing Off
- Drafting an application for annulment of a Board of Appeal decision to the General Court arguing that the Board of Appeal had wrongly concluded there was a likelihood of confusion, and that the decision lacked any impartiality regarding an EU trade mark for a global car rental company.
- Drafting an application for annulment of a Board of Appeal decision to the General Court arguing that the Board of Appeal had wrongly concluded there was a likelihood of confusion regarding an EU trade mark.
- Advising and representing a large US cosmetic company in the UKIPO in relation to a Revocation hearing regarding two trade marks.
- Advising a UK business on the merits of resisting a trade mark Opposition in the UKIPO, whilst concurrently defending a claim for passing off in the High Court brought by a global media streaming service in relation to character merchandising.
- Advising on the merits of challenging the UKIPO’s preliminary view refusing a Proprietor’s request to exclude evidence on the basis it was received late, and that the volume of documents for evidence exceeded the specified threshold.
- Advising and representing a national printing business on the merits of bringing a claim for passing off and domain squatting relating to the registration and maintenance of a domain name specifically used by a competitor to divert custom to their main trading website.
- Drafting pleadings for one of Europe’s leading media and entertainment companies relating to the use of their trade marks on an illicit internet protocol television streaming service.
Copyright, Databases and Domain Names
- Advised and represented a company who owned copyright in music in a claim for copyright infringement when another music company alleged, they owned the music and had the right to licence the music. The claim was successfully transferred from the Intellectual Property List to the Intellectual Property Enterprise Court (“IPEC”).
- Drafting pleadings for one of Europe’s leading media and entertainment companies relating to copyright infringement when a defendant reproduced and made available to the public the claimant’s content/broadcast via an illicit internet protocol television streaming service, and for breach of contract of a settlement agreement.
- Advising a film director on the merits of a claim when the film he directed was assigned to a third-party by the production company which formed part of a claim/settlement agreement in a copyright infringement claim against them.
- Advising a former director of a company whether beneficial interest in a domain name and software development code passed to the Crown when the company was dissolved, and if so, whether any rights could be re-acquired without having to restore the company.
- Advising and representing an author in a copyright infringement claim following a breach of contract and selling and marketing the book after the publishing agreement was terminated.
- Drafting a Letter before Claim relating to infringement of marketing materials, a computer program and database.
- Advising a charity on the risks of infringement when using certain materials on social media.
Intellectual Property Rights and Employment
- Advising a software company which held government contracts on bringing an IP claim against their former employee when they provided a ‘replica’ computer program and database to a direct competitor. Faizul was later instructed to assist senior counsel (KC) in making amendments to pleadings already before the High Court for breaches of restrictive covenants by incorporating the IP issues.
- Advising and representing a defendant at a Case Management Conference in the IPEC relating to copyright infringement of two films created in the course of employment, breach of contract, and whether there was a valid assignment from a director of one of the films to the defendant.
- Advising a media company on whether there was copyright infringement when a director/film director of the media company set up a new competitor company and embedded hyperlinks of the films he directed on his website, and whether any acts of infringement was time-barred.
- Advising a professor at a university on the intellectual property of a film and aide memoir created to assist the public in using medical equipment.
Prior to joining Chambers, Faizul was a Senior Policy Advisor in the Copyright and Enforcement Directorate at the UKIPO where he managed and developed the UK’s copyright exceptions policy, responded to copyright enquiries, engaged with a range of stakeholders, and drafted briefing packs to senior government ministers and officials.
Whilst at the UKIPO, Faizul also represented the UK at the Standing Committee on Copyright and Related Rights at the World Intellectual Property Organisation in Geneva, and frequently represented the UK in EU working groups in Brussels to negotiate the legal text of a Directive and Regulation which implemented the Marrakesh Treaty into both EU and UK law (the copyright disability exception in the Copyright, Designs and Patents Act 1988).
Faizul has previously held high level security clearance and has also advised the Ministry of Defence and other government departments on intellectual property matters.
Faizul has worked on some high-level matters with multiple demands and pressures in his previous careers, and as a barrister. This puts him in a unique position to not only advise on the law, but to also identify potential reputational risks and non-legal/commercial opportunities to best serve his clients. He can quickly grasp the interplay between national and international legal frameworks which adds a further layer of expertise to both domestic and international clients.
Intellectual Property considerations and employment law1st Mar 2023
“Faizul’s advice was clear, on-point and focussed on what our client needed to do and he gave our client clear options as to the next steps our client could take. The advice Faizul gave was indeed relevant to the client’s own situation and what he wanted to achieve. We would be pleased to instruct Faizul in the future in relation to any internet domain/IP matter…” Solicitor
“Faizul did a great job” Solicitor
“Notwithstanding the result, my clients were very impressed with Mr Azman” Solicitor
“… As soon as we spoke, I realised I was in exactly the right hands. You did a great job putting me at ease even with the tech issues I was having. You must have been told before that you have a great bedside manner. Thank you so much for getting me over the final hurdle with such a great result… If the opportunity to recommend you ever comes my way I most definitely will” Lay Client
“… my experience of instructing Faizul has been very positive, and I did seek to instruct him again, though he was unavailable on this occasion… I look forward to instructing him again” Solicitor