Tuesday, 11 August 2015

Copylaw: Publishing & Entertainment Law: Making Sense of Collaboration Agreements

My good friend Lloyd J. Jassin has written an interesting piece entitled "Making Sense of Collaboration Agreements: Double the Trouble or Half the Work?" on his Copylaw Publishing & Entertainment Law blog. Here's the first para and you can go to Lloyd's blog to read the rest:

Nearly everyone has heard the oft-repeated statistic that 50% of all marriages end in divorce. But what about creative marriages?  The odds are no better. Pity the poor expert, celebrity, author, playwright or screenwriter who enters into a creative partnership without thinking about the financial, emotional and practical challenges ahead of them.  If the relationship falters, a well-drafted collaboration agreement (written during the romance stage of the relationship) can be consulted.   If the relationship fails, that agreement will help for a clean break-up.

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Why India is not inventing

An interesting piece about innovation in India, by my great friend Santosh Vikram Singh of Fox Mandal in Bangalore. He writes: "Recently, while speaking at the convocation ceremony at Indian Institute of Science, (IISc) Bangalore, unarguably one of India’s most prestigious institutions, Mr. N.R. Narayana Murthy, Chairman Emeritus, Infosys, touched upon something that made many people uncomfortable. He asked if India’s premier academic institutions (specifically the IISc and IITs) had contributed in making our society and the world a better place? He did not shy away from asking directly if there was one invention from India that had become a household name across the globe" Read the rest here.

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Thursday, 6 August 2015

NIPC Law: Copyright in Commissioned Works: Atelier Eighty Two Ltd v Kilnworx Climbing Centre CIC and Others

Jane Lambert has written at some length about Atelier Eighty Two Ltd v Kilnworx Climbing Centre CIC and Others, in which the ownership of copyright in commissioned works is explored. No point in me repeating it.

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History lesson: Design protection in motor racing

An assignment I am busy with at the moment has reminded me of the 1978 case, Nichols Advanced Vehicle Systems, Inc. v Rees, Oliver and others [1979] RPC 127 (Chancery Division, Templeman J as he then was), on appeal [1985] RPC 445. (As the dates indicate, the appeal concerned various delays that had taken place in the proceedings.) It could alternatively be called Shadow v Arrows. Several disgruntled employees, and their financial backer Franco Ambrosio, left Shadow (whose debut in Formula 1 I remember, though I can't put a precise date on it from memory - in the early seventies - 1973, it turns out) and set up their own team, making up the name from the initials of their surnames, including that of their financial backer (Ambrosio, ReesOliver, Wass and Southgate completing the set. Alan Rees had been one of the founders of March a decade earlier, and that company also formed its name from the initials of its founders, the "M" being Max Mosley, but no intellectual property point arises from that coincidence). Unfortunately, they made up the design of their first car, the FA1, from the design of the Arrows DN9, and intellectual property points did arise from that.

I was delighted to see (not having appreciated it before) that the trial judge was Templeman J. A few years later, "Syd Vicious" was one of the Lords of Appeal who dealt BL a major blow in their litigation with Armstrong Patents Ltd - knocking a huge hole in copyright protection for designs, and paving the way for the New Deal in the Copyright, Designs and Patents Act 1988, the introduction of design right (now necessarily referred to as UK unregistered design right) and the near-exclusion of copyright from the designs field. But the reasons that drove the BL judgment, about spare parts, were not relevant to the Shadow case: there was no issue about the spare parts market.

The DN9 had been designed by Tony Southgate, who had been BRM's designer in their golden period between 1970 and 1972. The BRM P160, designed by him, held the distinction for 30 years of winning the fastest Grand Prix ever (Italy, 1971, driven by Peter Gethin, still the closest-ever finish) and exactly the same car (chassis no 1) also won the following year's Monaco Grand Prix, driven by Jean-Pierre Beltoise, who died last January. That remains, I think, the third-slowest grand prix since the advent of the World Championship in 1950, save for recent rain-delayed races where waiting for the rain to stop destroys the average speed. In 1972 the rain didn't delay the start, only the finish ...

When Mr Southgate designed the Arrows FA1, he reproduced the drawings he had made for the DN9 and the judge held (in what must have been a fairly easy case to decide) that the differences between the designs were insufficient to provide a defence. The defendants argued that they were innocent infringers, and should not be liable to damages, but the judge observed that to sustain this argument they had to believe that they were not infringing, and in fact they only hoped that they weren't. Actually, because of the flagrancy of the infringement, he awarded additional damages, as well as an inquiry as to damages and an injunction which effectively obliged Arrows to produce a new car. Fortunately for them, they had foreseen the outcome of the case and designed and built a complete new car in 53 days, launching it only three days after the judgment, so didn't even miss a race. I suppose that back in the bad old days of Cosworth-Hewland kitcars that was possible, but still impressive.

Several years later, the inquiry as to damages having proceeded at a very leisurely pace (partly, no doubt, because Shadow had folded in the meantime), the matter came to the Court of Appeal: but that's another story, and not one that involves intellectual property.

Saturday, 25 July 2015

Change to transitional arrangements for the repeal of section 52

A news story on GOV.UK tells us that the statutory instrument to implement the repeal of section 52 - that's the section of the Copyright, Designs and Patents Act 1988 which shortens certain aspects of copyright protection when the work is applied industrially - has itself been repealed. It's only a few days since I posted a comment about the extended timescale for the repeal to come into operation (April 2020), remarking that it even allowed time for the repeal to be repealed. I doubt this has come about because someone read this blog. In fact, the official reason is that judicial review proceedings were being threatened, challenging the compatibility of the regulations with EU law, which of course is where this whole sorry episode started (with the copyright term directive and the perceived significance of the Arco lamps case, Case C-169/08 Flos v Semeraro).

Sadly, this doesn't mean that the government has seen sense. The website goes on to say:

The Government will launch a fresh consultation on revised transitional arrangements, including the date for implementing the repeal. A further announcement will be made when the new consultation is published.
I'll keep an eye open for it ... Pity if we don't the promised judicial review: that would have been much more interesting.

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Creative Commons for Patents

Creative Commons is usually associated - perhaps always associated - with copyright. But it goes further than that: I just happened across this Model Patent License, the title of which gives away its American origins although that's not a fatal flaw by any means. I thought readers might find the link useful, and so might I one day. I was tempted to include it in the IP module I am working on for the College of Law's Legal Practice Course, but it might be a bit left-field for that purpose.

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Sunday, 19 July 2015

Remedies for infringements of Standards-Essential Patents

In a nicely-balanced judgment in Case C‑170/13, Huawei Technologies Co. Ltd v ZTE Corp. and ZTE Deutschland GmbH (judgment here) (16 July) the Court of Justice held that the holder of a Standards-Essential Patent (or SEP, a term of art that is gaining currency very rapidly in this SEP-reliant age) can only have an injunction against an infringer if it has previously offered a licence on FRAND (a better-established term of art) terms. If the patentee has given an irrevocable undertaking to grant such a licence, it is not an abuse of a dominant position to seek an injunction and that would be prohibited by Article 102 TFEU, but the patentee has to get over a few hurdles before it is in the clear, to make sure that the right balance is struck between the interests of the patent owner and the would-be user.

First, the patentee has to alert the alleged infringer to the alleged infringement, and then it has to present a FRAND licensing proposal. If the alleged infringer carries on regardless, it will not be regarded (in the court's phrase) as having responded diligently to the proposal. It can only claim that there is an abuse of the patentee's dominant position if it has responded with a counter-proposal, offering FRAND terms (or, you might say, terms which are more FRAND, or FRANDER - there's a nice neoligism) of its own - because, of course, the only matter that can be in dispute is whether the purported FRAND terms qualify as such. Although that makes it sound far easier than it is: FRAND is not a binary, yes-or-no, matter - a wide range of terms might fall within the scope of what is fair, reasonable and non-discriminatory.

The court's approach, within its limits, nevertheless makes perfect sense: if your patent becomes the basis for a standard that everyone has to use, you have to accept that it is no longer a right to stop others from using it, merely a right to remuneration (which may be substantial). Everywhere in the IP field you can observe this shift from exclusive rights to a right to be paid for use: it happened in copyright even before the 1988 Act, when collective licensing suddenly took off with the creation of the CLA, and it was built into design right under Part III of the 1988 Act right from the start.

However, like all references to the Court of Justice, it leaves questions unanswered (usually because the questions weren't posed in the first place, which in turn is usually because they didn't arise in the case concerned so the referring national court had no reason to ask them). Can (as Laëtitia Bénard of Allen and Overy in Paris said to WIPR, that astonishingly inaccurate publication mis-spelling her surname) an injunction be blocked merely because the alleged infringer challenges the FRAND-ness (my word, not Ms Bénard's) of the offer? Will holding an SEP always place the patentee in a dominant position (a point made to WIPR by Axel Walz of King and Wood Mallesons, Munich)? How detailed does that "irrevocable undertaking" have to be (my own thought)? Given the growing frequency with which patents are already becoming standard-essential, which is likely to accelerate rapidly in the future, these are probably questions that we will see coming up before very long.
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Friday, 17 July 2015

Private copying regulations quashed

Back to the unfamiliar territory of the Administrative Court, where last month the regulations that made private copying of certain works (those of which the copier had lawfully acquired a copy) were unlawful. Now in British Academy of Songwriters, Composers and Authors Musicians' Union & Ors, R (on the application of) v Secretary of State for Business, Innovation and Skills & Anor [2015] EWHC 2041 (Admin) (17 July 2015) the same court has quashed the regulations, having left open after the first judgment what would be done.

Copies made since the permitted act was created in October last year will not become automatically unlawful, though it seems that any action brought in respect of such copies may proceed on the basis that they were not authorised. There will be no expedition to Luxembourg at the this stage. The government will presumably now try to work out how to pass legislation that will hold water - it will need to define what it means by de minimis, for one thing. Policy-based evidence-making won't cut it, and a good thing too.

Meanwhile, the record industry (which is the area principally affected by all of this) will continue not to take action for infringement when users "format shift" recordings. They have taken this view, as I understand it, for several years, which makes it odd to my mind that the government should have wasted time on legislation in the first place. Keep it as a threat, by all means, so that the industry is not tempted to rescind that concession, but surely that is enough.

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Wednesday, 15 July 2015

Rounding conventions: what is the value of 1?

Smith & Nephew Plc v Convatec Technologies Inc [2015] EWCA Civ 607 (24 June 2015) is a patent case which turns on how to read a numerical range. The patent, which related to wound dressings in which silver - a known antimicrobial agent - was applied to the fibres. To prevent discolouration, the patent specified the use of a binding agent, at a concentration between 1 per cent and 25 per cent.

The trial judge, Birss J, interpreted this (using the conventions that I thought I had remembered from school maths lessons) to mean between 0.95 per cent and 25.5 per cent. But the Court of Appeal knew better (or at least they picked up on the argument).

Of course, like all interpretations of patent claims, the right approach is that set out in the Protocol on Interpretation of Article 69 - which requires us to consider what the person skilled in the art would think the claim was intended to mean.

It came down to whether the right approach was a "whole number" approach or a significant figure approach. The whole number approach would say that 1 per cent means all figures greater than or equal to 0.5 per cent and less than 1.5 per cent - or to put it another way, all values that round to 1 per cent when expressed in a whole number. The significant figure approach was explained by Kitchin LJ, who started by noting that the rules formed part of the common general knowledge: 
    i) non-zero digits are always significant;
    ii) zeros between non-zero digits are always significant;
    iii) leading zeros are never significant; if a decimal point appears in a number then trailing zeros are significant (before or after the decimal point);
    iv) in the absence of a decimal point, trailing zeros are not generally significant unless stated otherwise either expressly or with a bar over the zero.
Applying these rules, 1 per cent indicates a range from 0.95 per cent to 1.5 per cent. It is asymmetric because the values that round to 1 must comprise two significant figures: if there's only one significant figure, you can't round it up or down. This is how Birss J got to the conclusion that the defendants' 0.77 per cent concentration did not infringe. He reckoned that the skilled person would use the significant figures approach. The Court of Appeal preferred to think that the skilled person would assume that the values were expressed to the nearest whole number, so there was an infringement.

Why, oh why, didn't the person who drafted the claims (and the description, of course, as it has to support the claims) either write "up to 25 per cent" or "1.0 to 25 per cent" (especially when the teaching of the patent was that as little as 0.01 per cent would do the trick)? I'm sure they had their reasons, just as the patent agent who wrote the Catnic patents had his reasons for writing "vertical" (or was it "vertically"?). However, in neither case are the reasons known, while in both of them the effect was significant, indeed determinative, in the patentee's favour in both cases, though only just in the earlier one. Cases like these cause me to reflect on the received wisdom about patent claims, that they are technical documents written for technical people and not suited to the sort of legal scrutiny that a conveyance should get (I forget the precise quote). But in fact they are complicated legal documents (often incredibly so) written by highly-trained professional patent agents (soi disant attorneys, indeed) and to my mind that means that meticulous verbal analysis (there, I remembered the words!) is entirely appropriate. And the Protocol is wrong!

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TVR Automotive v OHMI - TVR Italia (TVR ITALIA) (Judgment) [2015] EUECJ T-398/13 (15 July 2015)

In TVR Automotive v OHMI - TVR Italia (TVR ITALIA) (Judgment) [2015] EUECJ T-398/13 (15 July 2015) the General Court held that the OHIM Board of Appeal had been wrong to conclude that there was no genuine use of the TVR trade mark at the material time (February 2007) when the application in suit was filed by the applicant, an Italian company claiming somehow (and very optimisitically) to be the successor to the business of the then-defunct British sports car manufacturer. Its trade mark comprised a TVR logo (in familiar form) with the word "Italia" appended in smaller letters.

The true successor to TVR's business opposed the application, and the Italian company demanded evidence of use. The opposition was rejected in relation to the goods for which use had been shown - which was not all the goods in the application, but it was the important ones. The Italian company appealed, and then filed for revocation. The appeal was stayed while that was sorted out. The Cancellation Division rejected the application for revocation on the grounds that genuine use had been shown, and the Italian company appealed against that, but out of time so the opposition proceedings then went ahead: the appeal was upheld, on the basis that genuine use from 28 January 2003 to 27 January 2008 had not been proved.

The case was based on the non-use of the TVR trade mark, although there appears to be no allegation that such non-use had lasted for five years: and in any case one of the trade marks involved had not even been registered for five years at the time. It received short shrift from the Court, which took a rather different view of what constitutes "genuine use" in relation to specialised, low-volume motor cars, making me wonder how the case ever got to Luxembourg in the first place.

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Repeal of Section 52 CDPA

The misguided repeal of section 52, a paradigm case of policy-based evidence-making, now has a date (and has done for several months, but I only just got round to telling you): happily, it's not until 6 April 2020, which even leaves time to repeal the repeal, if the government ever sees sense.

The soi-disant Intellectual Property Office has published the results of the consultation here.

Transitional provisions, should the need arise, will protect those who have made copies taking advantage of the permitted act. The implementing legislation, when it comes, will give them an indefinite period of time after commencement in which to sell off existing copies, but prevent the manufacture or importation of new unlicensed copies. The legislation will leave people free to deal with existing copies after commencement. Sounds to me as if the first and the third cover similar territory, and the second is what the repeal is all about so hardly needs to be said.

So there will be protection for what I recall were referred to as vested rights back when the duration of copyright was increased, in the mid-nineties. It doesn't sound as if a date is going to be set from which you won't be able to stockpile what would be infringing copies if made or imported after the repeal - does this mean that one will be able to accumulate shedsfull of ersatz Arco lamps right up to the commencement date, and remain free to dispose of them thereafter? If so, it sounds like a daft arrangement. I will have to read more ...

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Monday, 13 July 2015

Implied covenants in assignments of intellectual property

For reasons too complicated to mention here, I found myself thinking about the implied covenants in assignments, covenants invoked by the magic words 'full title guarantee' or sometimes 'limited title guarantee'. The Law of Property (Miscellaneous Provisions) Act 1994 explains (at some length) what these ritual incantations mean in practice. I won't bore you with it all here, but I will post this link to the legislation for the benefit of anyone (like me) who needs to find it.

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