Category Archives: Intellectual Property

Is it career-limiting to practise IP law?

This provocative thought is prompted by considering the careers of two prominent lawyers and judges, and comparing them with those of specialist IP judges. IP lawyers who become judges seem to reach a glass ceiling at appeal court level.

Baron Neuberger of Abbotsbury

Lord Neuberger, before he became President of the Supreme Court

Lord Neuberger, before he became President of the Supreme Court

IP Draughts calls as his first witness Lord Neuberger, the current President of the UK Supreme Court. Lord Neuberger has the necessary skill-set to have been a successful IP barrister, and in fact he has been involved in judging some of the leading UK patent cases of recent years. His scientific aptitude is demonstrated by a chemistry degree from Cambridge, while his clarity of thinking and writing can be seen in his judgments and speeches. When IP Draughts ran Lord Neuberger’s judgment in the recent patent case of Virgin Airways v Zodiac through the BlaBla Meter, he scored 0.15, which is a phenomenally good score. Instead, fate took David Neuberger to Falcon Chambers, a set specialising in property law.

A few years ago, IP Draughts sought advice from specialist insolvency counsel on behalf of a university client. The question was whether patents could be assigned to a spin-out company on terms that enabled an automatic reversion of the patents if the spin-out company went into liquidation.  This is a notoriously difficult objective to achieve. Counsel’s best line of argument – an assignment of a determinable interest – relied for authority on comments from Neuberger J in a non-IP case, Money Markets v London Stock Exchange [2002] 1 WLR 1150, where he said:

It does appear well established that an interest granted on the basis that is inherently limited on insolvency is recognised by the court. In other words, a determinable interest, that is an interest with a limitation until insolvency, is valid, see the discussions in Snell’s Equity, Underwood and Hayton, and Professor Goode’s book and the passage quoted above from Fry LJ in Ex p Barter, ex p Black, ex p Walker (1884) 26 Ch D 510 at 519–520. It must, I think, follow that an interest granted on the basis that it is inherently limited on some other event is effective, even if that event occurs on or after an insolvency.

A full discussion of this legal issue must wait for another day. IP Draughts’ general point is that Lord Neuberger’s stellar career has intersected with IP at various places, but he has not been a specialist IP barrister. Might his career have been more limited if he had practised at the IP bar? Would he have become Master of the Rolls and then President of the Supreme Court? Based on the precedents of specialist IP judges, IP Draughts wonders.

Viscount Alverstone of Southampton

Lord Alverstone

Lord Alverstone

IP Draughts’ second witness may be less familiar to present-day lawyers: Lord Alverstone, who was Lord Chief Justice from 1900 to 1913. His witness statement takes the form of a book of memoirs, titled Memories of Bar and Bench, published in 1914. Some years ago, IP Draughts’ friend Edmund Longshanks QC gave IP Draughts a second-hand copy of this book. Before his elevation to the Bench, Lord Alverstone’s name had been Richard Webster. Webster had a very successful career as a barrister, appearing in most of the leading patent cases of the day, and taking instructions from clients as diverse as Lord Kelvin, Thomas Edison and Florence Nightingale (and from leading firms of solicitors such as Linklaters). The summit of his career as a barrister was being appointed Attorney General, at which point he had to turn his hand to prosecuting criminal cases, including that of the famous murderer, Dr Crippen.

Dr Crippen

Dr Crippen

In his book, Lord Alverstone emphasised the importance to his career of not allowing himself to be typecast as a patent barrister. He maintained a broad commercial practice before becoming Attorney General. For instance, he handled many railway compensation cases (compensating landowners whose land was taken over by the railways) and was leading counsel in a Board of Trade enquiry into the Tay Bridge disaster.

Admittedly the world was less specialised in the late nineteenth century than it is today. But the lesson that IP Draughts takes from these two examples is that if you focus predominantly on IP law, you may find there are some natural limits to your judicial career, no matter how talented you are. IP judges in the UK seem to get no further than the Court of Appeal, while the summit of US IP judges’ careers may be to become Chief Judge of the US Court of Appeals for the Federal Circuit. It would be interesting to see a specialist IP judge in the Supreme Court of either jurisdiction.

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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. He is famous for writing 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 hereditary 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.

Instead of an IP minister, perhaps the Board of Trade should be revived, with one of its members responsible for leading on IP issues and briefing the Secretary of State and the Prime Minister. The selected individual would probably be a businessman or businesswoman with experience of IP. An advantage of this route is that they wouldn’t have to handle (and be suited for) the humdrum activities of a junior minister.

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 the 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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