Intellectual Property Bill

The Intellectual Property Bill  is hardly news any more, and plenty has been written not only about it but about proposed amendments too. At 23 sections, it's a pretty short bill, and its brevity is closely associated with my first gripe about it - in fact, my first two gripes: why does it use the increasingly anachronistic appellation "intellectual property" in the first place, and secondly why use in the title an expression which already causes so much damage and confusion when in fact it touches on only two of the four main legal rights that fall under the very flexible heading, "intellectual property"? Why could it not have been called the Patents and Designs Bill, so its title would have reflected its subject matter? I was about to write that we had a Patents and Designs Act not long ago, and fortunately checked before I committed myself on that - fortunately, because I find that the only Patents and Designs Act on the statute book in fact dates from 1907, which even by my extensive definition cannot be considered "not long ago". Ah, there was another - in 1919 - which appears in the table of statutes in my copy of Morris and Quest, but I don't think that makes a big difference.

That gives away a large part of what I wanted to say about the Bill, too. Part 1 is headed "Designs" and Part 2, "Patents". Part 3, as is pretty usual with these things (it's probably in a word-processing template in Parliamentary Counsel's office) is headed "Miscellaneous" and Part 4 is "General".

Turning first to Part 1 (and I don't propose to say much about the other Parts), design law has been the worst can of worms in the intellectual property area (see, in the right context the expression has its uses) since at least Jill Knight MP's Design Copyright Act 1968, which cannot even be found on legislation.gov.uk - and at the same time my favourite. Repealing section 52 of the 1988 Act, one of the keystones in the dam which held back copyright and stopped it flooding the field of designs, was bad enough - I sense a classic bit of special pleading, and a lack of evidence-based policy-making, but then the same could be said of Part 3 of the 1988 Act which was written to keep car parts makers happy. Now the new Bill will mess about with some of the key concepts of Part 3, and the rules about ownership, and also tinker with infringements of registered Community designs.

First of all, the meaning of design. The Bill will delete the words "any aspect of" from the definition that is found in section 213(2) and also in section 51(3) (another important part of that dam), which tells us that the word "design" means "the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article." Shouldn't the words "the design of" be omitted too, to make the definition vaguely grammatical?

My good friend Jane Lambert, on her excellent NIPC blog, explains the ramifications so there is no point in me doing so too. Suffice to say that the government apprehends that design right owners tend to overstate the extent of their protection, which on the wording of the definition covers the design of trivial elements as well as important ones. If that's a problem, it's one that has been around since 1988. I can see why it might be desirable to tighten up the wording: I have always found the scope of UKUDR, as we should now refer to it, confusing, focusing as it does on the whole design of an article (by contrast with registered designs which protect novel features of a design) but then inviting us to look at parts of the article. But I do think the way to deal with the problem would have been to take out that reference to "part", and leave it to the courts to decide whether an infringer has taken a substantial part of the design.

Moving on, we come to the definition of "original", which the 1988 Act tells us does not include anything that is commonplace. Sounds reasonable, doesn't it? If something is commonplace, it can't be original. Whether a design be commonplace will now be determined by looking at qualifying countries, not the whole world: the definition will, after amendment, read

A design is not “original” for the purposes of this Part if it is commonplace in a qualifying country in the design field in question at the time of its creation and "qualifying country” has the meaning given in section 217(3).

Paragraph 10 of the Explanatory Notes (a document which, back in 1987 when the Copyright, Designs and Patents Bill was before Parliament, was worth its weight in gold, but now thanks to the Internet is instantly downloadable and indeed weightless) says that "there remains confusion as to the geographical coverage over which that meaning applies", a grammatically highly suspect proposition - and obviously composed by someone with a dangerous addiction to compound prepositions. "The amendment", it goes on, anthropomorphising it quite unnecessarily, "aims to remove that confusion by specifying that the meaning of “commonplace” applies to those countries defined under section 217 (3)". The Impact Assessment indicates that the rationale for this change is to achieve consistency with the Registered Designs Act 1949 (version 3). But the RDA deals with novelty, not originality (that, you may remember, was one of the big problems with version 1, which purported to deal with both), and “novelty” is measured across the whole of the European Economic Area. UKUDR applies to the EEA, and not many other places, so the Bill will achieve a degree of consistency in the geographical extent of the measurement: but because the measurement is of different attributes, making the geographical area the same is as pointless as comparing Cheddar chalk with Cheddar cheese.

Next, ownership of the design. UDR always differed from copyright in that when a design was commissioned UDR would belong to the commissioner - unlike in the copyright world, where the rights would remain with the creator. Given the nature of design work, this arrangment always seemed to me to make sense. Now, however, designers are the darlings of the IP system, and policy (evidence-based, I hope) demands that they retain the rights to their work. Well, things change over the course of 25 years, and we are no longer talking about designs for Morris Marina exhaust pipes (OK, we never were in the context of UDR, but you see what I mean), we are talking about designs for cool tablet computers. Perhaps this is a valid development.

There are also changes to some exceptions to infringement provisions: design right will not be infringed by private acts, experiments and teaching, and for things done on visiting ships and aircraft. I fear that allowing experimental use will open Pandora's box, as designs don't have to be used in experiments in the same way that patents do - unless, for example, you're trying to build a bouncing bomb, but who does that these days? Perhaps I am wrong, but I can't get very excited about these provisions. The provisions about registered designs are a bit boring too, and it's late, so I will leave them to another time - if indeed I think it's worth telling you more.

The Impact of Lookalikes

One of my least favourite IP issues. The soi disant Intellectual Property Office has released a report on the impact of lookalikes, because everything must be measured and quantified in the interest of evidence-based policy-making (notwithstanding which, section 52 has been done away with). What this means is that the special pleading that started about the time of the Bill that became the Trade Marks Act 1994 is still going strong - and what that means is that nearly 20 years on the special pleaders haven't convinced anyone, but still hope to do so. Well, it worked with copyright in sound recordings ... What a way to build a legal system.

The issue of lookalikes is one that has been on the policy and business agenda for at least two decades. Well-known brands, and brand-owners' groups, have long advocated [for which read "pleaded for"] specific and adequate protection against lookalikes under United Kingdom law, particularly in the context of possible business-to-business harm. More recently, the issue has also become more prominent on the agenda of the European Union both in the context of so-called "freeriding" in relation to trade mark law, and with respect to possible unfair commercial practices.

 Maybe it's the fact that the EU is now seized of the matter that gives it a new lease of life, and leads to the waste of taxpayers' money on trying to collect some evidence that will convince someone instead of trying to reform trade mark law so it works for small businesses. But at least the evidence adduced here is at worst inconclusive, and at best pretty clear that on balance lookalikes aren't a problem for consumers, and not even much of one to brand owners. Excellent! Even better: the Consumer Protection from Unfair Trading Regulations 2008 already fill any need for legislation, or at least most of it.

The report is available from the Intellectual Property Office - 2013 web page.

Legal Writing Prof Blog: overcoming procrastination

The Legal Writing Prof Blog offers a couple of articles on overcoming procrastination which are obviously required reading for me: some of my readers might also benefit from them - but if your procrastination takes the form of reading my blog, or blogs, please don't allow me to interrupt you.

It strikes me that reading an article on overcoming procrastination is a bit of an oxymoron ...

Agreement on a Unified Patent Court, Cm 8653

The Agreement on a Unified Patent Court has been published by the government, as Cm 8653. A mere 66 pages, which these days wouldn't be long for a judgment: in the shops it would cost you £11.75, but as a download it costs nothing - the wonders of the Internet ...

I am intrigued to see the copyright notice on the inside cover: "Crown copyright 2013", it says. Section 163 tells us that Crown copyright subsists in a work made by Her Majesty or an officer or servant of the Crown in the course of his duties. Her Majesty can be ruled out as a possible maker of this work, but so too I imagine can officers and servants of the Crown - except in the very limited sense that someone has created the typographical arrangement of this published edition. Surely this is a European Union text, but the various Copyright (International Organisations) Orders do not mention the Union, any of the Communities. Interesting. No doubt there is a simple answer, just not one that is very obvious.

SDL Hair Ltd v Next Row Ltd & Ors [2013] EWPCC 31 (14 June 2013)

SDL Hair Ltd v Next Row Ltd & Ors [2013] EWPCC 31 (14 June 2013)  is a judgment of Mr Recorder Richard Meade (not another debutant intellectual property judge?) and concerns a patent for heating hair rollers. There is a lot in the 44-page judgment about inductive heating, which is quite interesting but not knowledge that many lawyers will be able to put into regular use. The upshot of the consideration of the physics was that there was no infringement, but there were also points to be considered about whether the claimant was an exclusive licensee and therefore entitled to sue, and whether certain threats were actionable (they were) and if so who was liable for some of them (an individual who had made a threat was held to be personally liable).

Destra Software Ltd v Comada (UK) LLP & Ors [2013] EWHC 1575 (Pat) (11 June 2013)

Destra Software Ltd v Comada (UK) LLP & Ors [2013] EWHC 1575 (Pat) (11 June 2013)  is a decision of Norris J in the Patents Court, concerning that old favourite ownership of copyright in computer programs. At 53 paragraphs, it feels short, and the impression is reinforced by the fact that it has no table of contents as so many judgments have these days. The question, as so often happens, was whether copyright in the software had been assigned to the commissioner, or whether the commissioner only had a licence to use it in certain ways (including, in this case, allowing customers to instal it on their servers, which is a bit of a novel issue).

The recorder held (highlights added to make it more comprehensible, but really you have to read teh whole thing to get it):

1. I am in no doubt that under the contract that predated the Consultancy Agreement it was implicit that the copyright belonged to the commissioning entity and not to the contractor. I so conclude for the following reasons:-



a) The very foundation of the venture conducted by Comada (later Comada Cayman) was the MAT:ware software. The idea that the actual copyright in the MAT:ware software should not belong to Comada/Comada Cayman makes no more commercial sense than it did in IBCOS. MAT:ware is not a tool that is deployed in Comada's business: it is the very business itself. It is what the whole enterprise was about.

b) The object of the business was that MAT:ware should be exploited in whatever way proved to be beneficial. If an informed bystander had been asked "Does anyone have a veto over the way in which Comada Cayman exploits the software?" he or she would have said "Of course not: it is up to the company through its directors and shareholders what they do. Everyone's efforts in establishing the enterprise are reflected in their shareholdings and their individual contractual arrangements".

c) One of the principal means of exploiting the software was by licensing: it was necessary for Comada Cayman to have full rights of enforcement in multiple jurisdictions. That is secured by assignment but not by licensing.

d) The ultimate aim of the project was to dispose of the enterprise to the maximum advantage of the participants: it is necessary to the attainment of that goal that Comada Cayman should own the intellectual property rights and be able to dispose of them freely without requiring any purchaser of the business to negotiate with multiple Claimants to the copyright in the core product in order to gain complete control.

e) The MAT:ware software was a collaborative effort: it makes no sense for individual team members to retain property rights of any sort in what that member produced.

f) There cannot be any special implied term relating to what Mr Hughes produced because Mr Hughes never disclosed to any other participator either that he was creating something called "the Destra platform" or that he was incorporating part of it in the work that he was doing on the MAT:ware software. Implied terms are based on what is obvious given the common knowledge of the parties. You cannot create an implied term out of secret knowledge held by one party alone. That was the view I expressed in Burrows v Smith [2010] EWHC 22 (Ch) at paragraph [44]: and I adhere to it. That is why the actual decision in Clearsprings does not assist in this case: in Clearsprings it was common knowledge that in performing the commission the contractor would be using software that already existed.

Artistic performers to get stronger intellectual property protection

Artistic performers to get stronger intellectual property protection, a press release from the Patent Office announces, the medium for this stronger protection being a WIPO treaty that the UK signed on 12th inst.

Enterprise and Regulatory Reform Act commencement

The Government has announced when the copyright provisions of the Act will come into effect, or at least given some indicative dates. Sections 75 to 78 and Schedule 22 already came into force on 25 April 2013. BIS proposes that regulations to implement section 76 (Power to reduce duration of copyright in transitional cases) will be in force by April 2014, and that regulations to implement sections 77 (Licensing of copyright and performers’ rights) and 78 (Penalties under provision implementing Directive on term of protection) and Schedule 22 (linked to section 77) will come into force by October 2014.

As for section 74, which will repeal section 52 of the Copyright, Designs and Patents Act 1988, that requires further consultation, though the new Intellectual Property Bill looks as if it will make that otiose (on which subject, see David Musker's posting on the Class 99 blog the other day.

If the United Kingdom were to leave the EU ...

An interesting posting here on Mills & Reeve's technology law blog, even if the use of the subjunctive seems a bit hit and miss (and this is a very subjunctive topic): if the United Kingdom were to leave the European Union, which with a referendum promised no-one can say is impossible, what would happen to Community trade marks and Community registered designs? I sometimes think that nothing bad enough could happen to those two sub-species of intellectual property, which have done so much to clutter the place up with dubious rights, to the detriment of IP's reputation as a whole, such that even I might favour leaving the EU if we could be rid of them. But that's just me, perhaps. However, I think it's at least arguable that CTMs and CRDs, like the EU itself, have turned out to be big disappointments - bloated, elitist, and of little relevance to the small person or business. They all promised so much, and have delivered so little.

M&R - in fact, their Richard Plaistowe, although he didn't post the piece himself, curiously: perhaps in Biglaw you have someone to post stuff to your blog for you? - look at the precedent of Irish independence, which shows just how novel the dilemma is. Holders of UK trade marks and registered designs at that time were given 6 months in which to re-register in the State and retain existing priorities. Something similar might happen if we leave the EU.

Something similar might also happen if Scotland were to leave the UK - but that's not going to happen, is it? Ah, if only someone had listened to those who called for a federal Britain in a federal Europe back in the seventies.

Trade Marks and Registered Designs (Amendment) Rules 2013 (SI 2013 no 444)

This statutory instrument makes a few small amendments to the Rules, including providing that where a time limit has to be measured from the date on which an event occurs, the day on which that event occurs is not included when computing how much time has passed. It was made a few weeks ago, and came into force on 31 March.

Legal deposit of non-printed material

We don't have a copyright system that requires any form of deposit, of course, but there is a legal obligation on publishers to offer what they publish to the British Library, and if requested other institutions too. When I was editor of The Warwick Boar, now just The Boar, in or about 1976, we received a letter pointing out that we hadn't been sending them copies and alerting us to the substantial penalties that could be imposed if we remained in default. That was about my first experience of copyright law, albeit a rather peripheral bit of copyright law - that, and the problem we had when we used graphics cut from the Coventry Evening Telegraph for our "Spot the Ball" competition ... about which the less said the better: suffice to say that we did not copy the CET's photograph.

Nowadays, as editor of Motor Law, I send a copy of every issue of the newsletter to the British Library. I expect they find it a little more interesting than they used to find The Warwick Boar (though it has no "Spot the Ball" competition). If I am late getting the latest edition in the post, or if they just think I am (and given that, unlike most periodicals, the months named on the front cover are the months covered in the content, not the next month), they send me a letter asking where it is.

Increasingly, periodicals like Motor Law (and, no doubt, The Boar) are commonly distributed online. I find it much easier to upload a PDF to the website and send a link to subscribers, though yesterday it took me three goes to send a working link. But if this were the only channel by which such periodicals were distributed, the British Library would have nothing to put on its shelves (including virtual shelves), nothing for readers to consult. However, a solution to this problem is in hand: The Legal Deposit Libraries (Non-Print Works) Regulations 2013 (SI 2013 no 777) entitles the deposit libraries to a copy of online publications. There is, happily, an exemption for for micro-businesses, which certainly includes Motor Law Publications Ltd.

Novartis AG v Hospira UK Ltd [2013] EWCA Civ 583 (22 May 2013)

In Novartis AG v Hospira UK Ltd [2013] EWCA Civ 583 (22 May 2013) the Court of Appeal, consisting notably of three former Patents Court judges, Lewison, Kitchin and Floyd LLJ, restated the principles that apply to the grant of an interim injunction pending appeal where the claimant was not successful at first instance. Floyd LJ gave the judgment of the court, saying:

I would summarise the principles which apply to the grant of an interim injunction pending appeal where the claimant has lost at first instance as follows:

i) The court must be satisfied that the appeal has a real prospect of success.

ii) If the court is satisfied that there is a real prospect of success on appeal, it will not usually be useful to attempt to form a view as to how much stronger the prospects of appeal are, or to attempt to give weight to that view in assessing the balance of convenience.

iii) It does not follow automatically from the fact that an interim injunction has or would have been granted pre-trial that an injunction pending appeal should be granted. The court must assess all the relevant circumstances following judgment, including the period of time before any appeal is likely to be heard and the balance of hardship to each party if an injunction is refused or granted.

iv) The grant of an injunction is not limited to the case where its refusal would render an appeal nugatory. Such a case merely represents the extreme end of a spectrum of possible factual situations in which the injustice to one side is balanced against the injustice to the other.

v) As in the case of the stay of a permanent injunction which would otherwise be granted to a successful claimant, the court should endeavour to arrange matters so that the Court of Appeal is best able to do justice between the parties once the appeal has been heard.

The Court decided that the trial judge had been right to say that the best way of preserving the status quo pending trial would have been to grant an injunction (had one been necessary), but that he had been wrong to say that the same did not apply pending the appeal. The Court therefore allowed the appeal, granting the injunction until final judgment in the appeal or further order.

PA has a go at government over copyright

The Bookseller reports that Publishers' Association CEO, Richard Mollet, has criticised the government for its attitude to copyright. He says that other countries in Europe are "incredulous" at our government's attempts to weaken copyright protection. He would, wouldn't he? But as an author I think he's right to call the government to account. Copyright is not perfect but it does not need to be diluted as much as appears to be happening - especially if we are to attract lots of new technology businesses to Silicon Roundabout and other sites in this country ...

Button Moon creator wins in PCC

Button Moon (Photo credit: Wikipedia)

The BBC reports that Ian Allen, the creator of the children's TV series Button Moon which entertained at least some of my daughters all those years ago, has won a copyright infringement case in the Patents County Court. In fact it was a passing off case too (as you might well guess after reading the BBC piece), decided by Miss Recorder Amanda Michaels last week. I wonder whether this is Amanda's first published judgment? The case is Allen v Redshaw [2013] EWPCC B1 (15 May 2013) and I don't think it contains anything groundbreaking. The mere fact that the BBC reported it on their website is reason enough to mention it here, though.

It turns out that it isn't her first published judgment: I find there are a couple in the same piece of litigation, Ghias (t/a Griller) v Ikram (t/a the Griller Original) & Ors [2012] EWPCC 4 (26 January 2012) and [2012] EWPCC 3 (24 January 2012).