Category Archives: Intellectual Property

Snow White and the Seven Dwarfs: What is the point of IP ministers?

snow whiteSince 2007, the UK Government has had a Minister for Intellectual Property. Or, to be accurate, it has had 7 ministers, each of whom has retained their position, on average, for about a year. The latest incumbent, Baroness Lucy Neville-Rolfe, was appointed earlier this month.

It sounds good that the Government is taking IP sufficiently seriously to have a minister-in-charge. But what does it mean in practice?

Clearly, the Government needs a responsible minister to steer legislation through Parliament. In practice, there need to be at least two ministers for the role, one in the House of Commons, and one in the House of Lords. Responsibility for steering the Intellectual Property Bill recently fell to Lord Younger in the House of Lords (the IP minister before Baroness Neville-Rolfe), and David (“Two-Brains”) Willetts in the House of Commons. Both have since lost their jobs as government ministers, but IP Draughts guesses that their performance on IP matters probably wasn’t the cause.

Steering IP legislation through Parliament doesn’t require the helmsman to have a formal title of IP Minister, as demonstrated by David Willetts’ performance of this task. So, what is the purpose of the named role?

Perhaps it is to coordinate Government policy in the field of IP? If that is the case, why is responsibility for IP policy split between the Department of Business, Innovation and Skills (where the IP minister is based), the Department for Culture (which is responsible for aspects of copyright policy) and the Department of Agriculture (which is responsible for plant breeders’ rights)?

Perhaps the IP minister is expected to be a champion for IP rights, and to make sure the Prime Minister “gets it”? But surely that has been the stated role of Mike Weatherley MP, the Prime Minister’s official adviser on IP?

It is not obvious that the Prime Minister needs an IP minister; he did very well to secure the life sciences division of the unified patent court for the UK, with no apparent involvement from an IP minister.

Perhaps the role is one “behind the scenes”, working within Government, and follows the mantra of Harry S Truman, that it is amazing what you can accomplish if you don’t care who gets the credit. If so, it would be good to know what the minister does, so that those of us who are involved in the IP world can provide information and support.

The late Alan Clark MP

The late Alan Clark MP

The late Alan Clark MP was a Government minister who never quite became a Cabinet Minister, and wrote some of the most entertaining political diaries of the 20th century. He was also, by his own confession, something of a shit in his personal life, but so what: the same was true of Picasso, and that fact doesn’t affect the quality of his art.

Clark’s diaries amusingly describe the drudgery of a junior minister’s official life. In part, according to Clark, the job is a training for higher office, and a probationary period to see whether you are fit to climb further up the greasy pole. In part, the junior minister’s role is to take on all the boring, politically unimportant, but somehow necessary duties that his boss, the Secretary of State, does not wish to spend time on.

This is a cynical view of the lot of a junior minister, but it is the only one that IP Draughts has seen clearly expressed. Nothing in the unimpressive performance of the 7 IP ministers leads him to a different view. In fairness, it is too soon to condemn Baroness Neville-Rolfe as she has only just started in the role.

If the Prime Minister, David Cameron, can be viewed as Snow White – the fairest of them all – for securing the life sciences division for the UK (and, as a bonus, hugely annoying the European Parliament in the process), which roles do the 7 IP ministers fill? IP Draughts would like to suggest the following casting:

Happy – Baroness Lucy Neville-Rolfe, who has resigned from directorships with Tesco and other companies in order to focus on her new role as IP minister.

Grumpy – Viscount Younger of Leckie, who was recently sacked as IP minister. IP Draughts can’t feel too sorry for this heir to the Younger’s brewing fortunes and the hereditory title that goes with it.

Sleepy – Lord Marland, who came before Lord Younger, and rose and sank without trace.

Sneezy – Baroness Wilcox. Apart from being Chair of the National Consumer Council, her job as IP minister seems to be the most noteworthy role she has had, at least if her Wikipedia entry is accurate. If she dislikes the title Sneezy (given for no other reason than that it was vacant), perhaps she would prefer the name that Walt Disney was originally planning to give to one of the seven dwarfs but abandoned as too boring: Jumpy?

Doc – David Lammy – the closest this group has to an intellectual. Not that it takes much: an LLM from Harvard means that he has more than one degree.  He is the only IP minister to come from the House of Commons; the rest have exercised their ministry from the Lords. He is probably the most dynamic of the bunch, but he wasn’t noticeable as IP minister.

Bashful – Baroness Morgan. She now has a more important role, and one to which she seems more suited in view of her career background, as Chief Executive of Breast Cancer Campaign, a leading UK charity.

Dopey – Lord Triesman, who lasted as IP minister for only a few months, before jumping ship to become Chairman of the (English) Football Association.

Part of the problem, in IP Draughts’ view, is defining what the role should be. There is probably more technical content for an IP minister to master than in many Government briefs, and  it would be good to have a minister with some intellectual clout as well as political influence. In fact, the technical content makes IP Draughts wonder whether a purely political ministerial appointment is quite right. He recalls the President of the Board of Trade, an ancient office whose title Michael Heseltine revived when he was Secretary of State for Trade and Industry (now the role held by Vince Cable, as Secretary for Business, Innovation and Skills). Originally, the Board of Trade was a committee advising Government. To quote Wikipedia:

In the 19th century the board had an advisory function on economic activity in the UK and its empire. During the second half of the 19th century it also dealt with legislation for patents, designs and trade marks, company regulation, labour and factories, merchant shipping, agriculture, transport, power etc.

It is also important to bear in mind that much of the UK legislation in the field of IP comes from Europe. IP Draughts is not convinced that the UK Government is properly set up to negotiate European legislation. For example, when IP legislation is negotiated by the UK Government in Europe, it seems to be handled by officials from the Foreign Office, to whom interested parties such as IP professionals have no direct access, instead having to deal with, for example, people in the UK IPO who, in turn, brief the Foreign Office representatives. IP Draughts hopes he has got this right; the lack of transparency on this issue makes it difficult to be certain. IP Draughts would much prefer there to be a single Government department, probably BIS, handling all legislative developments in the IP field in both the UK and Europe.

Therefore, in an ideal world, he would like to see an IP minister being a senior level Government appointment, perhaps with a title such as:

President of the Board of Trade and Secretary of State for Europe

 

 

 

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Get up, stand up, stand up for your IP rights

marleyEarlier this week, in the English High Court, a decision was handed down about whether copyright in various Bob Marley songs, including No Woman No Cry, transferred under a 1992 agreement. See BSI Enterprises Limited v Blue Mountain Music Limited [2014] EWHC 1690 (Ch), issued on 4 June 2014. The case involves the interpretation of a definition in an IP agreement, but there is nothing very remarkable about the judge’s decision. The case is mainly interesting for its facts.

Those facts are messy and complex and involve:

  1. Bob Marley writing songs but claiming that others wrote them, apparently to get around contractual obligations to a publisher. This is referred to in the case as the Misattribution Ploy.
  2. Chris Blackwell of Island Records giving evidence in a 2006 court case that certain songs were excluded from a 1992 agreement under which the Marley oeuvre was sold to Island Records. By implication, if he was correct, copyright in those songs remained with the seller. In the present case, Mr Blackwell again gave evidence, and said that he was mistaken on this point in his earlier evidence.
  3. As a result of that statement in 2006, the first claimant entered into an agreement to acquire the copyright in these and some other Bob Marley songs from the seller, and then licensed them to the second claimant.
  4. In the present case, the claimants sought a declaration that they were the owner and licensee respectively, of the copyright in the songs in question.

The outcome of this case depended on interpreting the definition of Composition and Catalogue in the 1992 agreement. More on that below.  But first, Chris Blackwell’s evidence in the earlier case, that certain songs were excluded from the 1992 agreement.  He now considered that he had been mistaken on this point, and explained that he had been tired after giving evidence for a couple of days.  The judge in the present case accepted that explanation and in any event thought Mr Blackwell’s opinion on the interpretation of the 1992 agreement was not relevant. This was a matter for the judge to decide.

The definition of Composition and Catalogue read as follows. I have highlighted some of the key passages in bold text:

1.8 ‘Composition’ and ‘Catalogue.’ The term ‘Catalogue’ shall mean all presently-existing musical compositions, or portions thereof, including cues, domestic or foreign, whether originally claimed or registered as a musical composition or as a part of a dramatic-musical work, consisting of lyrics and/or music whether or not registered in the United States Copyright Office or elsewhere, whether published or unpublished, written recorded by Robert N. Marley, Winston Peter McIntosh and/or Neville Livingstone, and/or certain musical compositions written or composed by Alfonso Pyfrom and/or Jimmy Norman (which were recorded by any of Robert N. Marley, Winston Peter McIntosh and/or Neville Livingstone), under their own names or under any pseudonyms, individually or as part of any collaboration between or among any of them or others (individually a ‘Composition’ and collectively the ‘Compositions’) and all right, title and interest in and to such Compositions, including all copyrights and renewals and extensions of copyrights thereto in all jurisdictions throughout the Universe, to the extent such compositions, copyrights, renewals and extensions are owned, controlled or administered, in whole or in part, by any member of Seller or by Seller’s Music Publishing Business as of the Closing Date, or from which any member of Seller or Seller’s Music Publishing Business receives income, including, but not by way of limitation, the Catalogue listed on Schedule 2 attached hereto. In furtherance of the foregoing, and not by way of limitation, the Compositions also include all musical compositions owned by Seller which were recorded by Robert N Marley (whether alone or in combination with any other artists).

The claimants argued that, because the songs in question had not been listed in Schedule 2, and because this was (they said) a deliberate omission, they were not subject to the 1992 agreement. The claimants’ counsel tried to argue that it was clear that there had been a deliberate omission, and that this was part of the factual matrix that should be taken into account when interpreting the wording of the 1992 agreement.

The judge preferred to find the meaning from the wording of the 1992 agreement itself. The definition did not limit itself to the songs listed in Schedule 2.  The above-quoted wording made clear “almost to the point of redundant repetition” that all Bob Marley songs were included in the definition, whether or not they were listed in Schedule 2. IP Draughts takes issue with the judge’s use of the word “almost”. The above wording goes well beyond the point of redundant repetition.

If any point of general legal interest arises from this case it is simply the following, well-known point: the English courts are very reluctant to allow evidence of what the parties might or might not have intended to influence their interpretation of a contract.  What matters is what a third party would understand the words used in the contract to mean.

simon saysRegrettably, the judge did not opine on whether a contract drafter who uses the term “including” needs to add words such as “without limitation” or, as in this case, the words “but not by way of limitation” in order to avoid an argument that the list that follows the word “including” could narrow the general sense of what goes before the word “including”. It is very common for contract drafters to use additional words of this kind, though leading contract drafting expert Ken Adams considers that such additions are unnecessary. As with many things that Simon Ken says, IP Draughts is coming round to his view, but has not quite got there yet, and still sometimes includes an interpretation provision in his contracts, stating that “including”, when used in the contract, means “including without limitation”.

 

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New UK Intellectual Property Act 2014

bitThe Intellectual Property Act 2014 received Royal Assent earlier this week, so is now enacted, but has not yet been brought into effect.  It will be brought into effect by statutory instrument, probably in October.

The Act is a rag-bag of detailed changes to the UK law of unregistered design right, registered designs, patents, and copyright, which the UK IPO considers will “modernise” the law. The UK IPO’s summary of those changes can be found here.

Only a few of those changes are of direct interest to this non-contentious IP lawyer, mainly the following:

  1.  To make the first owner of a commissioned design the designer rather than the commissioner. Under previous (and still current, until October) design laws, the party commissioning a design (ie the client) was the first owner of design right. This change will apply to both unregistered design right and registered designs, and will align the commissionerlaw in this area with the position for copyright. Under UK copyright law, the author is the first owner unless he is acting in the course of his employment. IP Draughts recalls when unregistered design right came in, in 1989, and has always thought it very odd that the rules were different for design and for copyright, respectively. It has only taken the Government 25 years to correct this confusing anomoly! See sections 2 and 6 of the Act.
  2. To introduce criminal offences for intentional copying of registered designs in the course of a business, and marketing of those copies. See section 13 of the Act.
  3. To allow patent marking by means of an internet link rather than providing patent numbers on the patented article. This is relevant to the question of recovering damages for infringement. See section 15 of the Act.
  4. To enable the Secretary of State to make arrangements to establish the Unified Patent Court in the UK. See section 17 of the Act.
  5. To introduce an exception from disclosure under the Freedom of Information Act 2000, in the case of certain information obtained from a research programme, so as to allow orderly publication of results at a later date. See section 20 of the Intellectual Property Act.

 

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Execution of IP assignments as deeds

mistakesA recent posting on the Solo IP blog, subsequently reported by IPKat, raised several questions about the valid execution of IP assignments (and specifically trade mark assignments) as deeds.

IP Draughts would like to offer some thoughts on the points raised. As he understands the position under UK laws:

  1. Methods of transfer of ownership of IP. The main method of transfer of ownership of IP is by an assignment.  There are a couple of other methods, mainly automatic transfer to a dead person’s executors, and subequent transfer to a beneficiary in a will or on intestacy. See eg section 24(1) of the Trade Marks Act 1994, and section 30(2) and (3) of the Patents Act 1977.
  2. Formalities for assignment. Assignments of UK intellectual property must be in writing, and executed by the assignor. See eg section 24(3) of TMA 1994. Unlike the position under some former IP laws (eg, as IP Draughts understands it, the Patents Act 1949), there is no need under present UK IP laws for the assignment to be executed as a deed. Nor is there any need under IP laws (but see below) for consideration to be given for an IP assignment to be valid or for the assignment to be registered at the UK IPO.
  3. Underlying contract? Many IP assignments are made as part of a larger commercial transaction or relationship, eg if a consultant develops software for a principal, and assigns copyright in the software to the principal. Where an assignment forms part of a contract, the IP lawyer will typically be concerned to ensure that the contract is valid. One of the requirements for a binding contract under English law is that consideration should be given, or the contract should be executed as a deed. In the latter case, consideration is not required. If it is unclear what consideration is being given for an assignment that is part of a commercial transaction, a party’s lawyer will sometimes either (a) insert a nominal consideration in the written contract or assignment, or (b) execute the contract or assignment as a deed. Alternatively consideration may be found in the underlying relationship, eg if an assignment is made pursuant to an obligation in a binding consultancy agrement.
  4. Transfer of property by gift. However, it is not necessary for there to be a contract in order to pass title to personal property (including intellectual property). The transfer of property could be a gift. Dredging up his memories of undergraduate law, for a gift to be valid there must be an intention to give and an act of giving. The act of giving IP would seem to be demonstrated by signature and delivery of the assignment. In this situation, consideration would seem to be irrelevant. A cursory examination of the law in this area suggests that the donee must also accept the gift.  This seems like a good reason to have the assignee execute the assignment as well as the assignor, even though this is not required by UK IP laws, so as to provide evidence of acceptance. In any case, in international IP assignments, many countries require the assignee also to execute the assignment (eg this is a requirement for assigning an EPC patent application).
  5. Execution of an IP assignment as a deed. Parties sometimes choose to execute their IP assignment as a deed, eg because of concerns about consideration as mentioned above. As IP Draughts understands current law, a deed is a method of execution of a contract or other instrument. It is, perhaps, misleading to think of a deed as a different type of instrument; rather, it is a different means of executing the instrument, and involves different formalities, eg as to use of a seal (in a few cases), who must sign, requirement for formal delivery, etc. Clearly, if parties do intend to execute their assignment as a deed, they should comply with these formalities. It is no longer a surprise to IP Draughts how often reputable City law firms present deeds for execution that have incorrect signature blocks for universities, charities, government bodies and other “unusual” parties. In many cases, these bodies must use their official seal, even though the requirement to use a seal was abolished for Companies Acts companies and for individuals back in the 1980s. An illustration of this mistake can be seen in the very recent High Court case of Briggs v Gleeds, where the drafter of some pension deeds failed to use the correct signature blocks for execution by partners in a traditional partnership.
  6. Partial execution as a deed. Although he has no authority for this proposition, it seems to IP Draughts that one can have an instrument (eg assignment or contract) that is intended to be executed, and is validly executed, by one party as a deed and by the other party by simple signature (eg to acknowledge receipt). One would need to analyse the underlying transaction to know whether it is necessary for both parties to execute the instrument as a deed.
  7. perfectEffect of failure to comply with formalities for deeds. There are two, different problems that can arise: (1) the wrong signature blocks are used (as mentioned above), or (2) the right signature blocks are used, but the parties don’t complete them correctly, eg the space for a witness to sign is left blank, or the witness signs after the party signs, and without actually witnessing their signature. The latter class of problems tends to occur where a party doesn’t involve their lawyer in the signing process. As the discussion of earlier case law in the case of Briggs v Deeds, linked above, illustrates, such failures may or may not be fatal to the validity of the instrument. There is also a strand of case law in relation to “equitable assignments” of IP that don’t comply with the formalities, which may provide an escape route in some cases. IP Draughts would generally be very cautious about allowing a defective deed to be left unchallenged.

 

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