IP threats: If it were not assize time, I would not take such language from you!

Apologies for the odd title.  This posting is about the threats provisions in UK IP legislation.  Thinking about this subject reminded IP Draughts of the above quotation, which is from a seventeenth century criminal case, Turberville v Savage, that IP Draughts half-remembers from law school.  The issue was whether a conditional statement amounted to a threat and therefore to common law assault.  Or something like that.

Reminiscing further, IP Draughts’ glittering career as a criminal barrister ended shortly after it started, in 1984.  As a pupil barrister he was sent to the Old Bailey to be stand-in counsel for a client, part-way through a criminal trial.  The client was charged with some serious firearms and assault offences. The offences related to a dispute between neighbouring businesses which occupied workshops beneath the arches of a railway bridge.  Classy stuff.

The evidence had been given, the judge had summed up, and the jury had been deliberating for some time.  Unfortunately, the client’s “proper” counsel couldn’t wait any longer for the jury, and had to attend another trial.  At short notice, IP Draughts had to read the papers and decide what to say in a plea in mitigation, if the jury found the client guilty.

Fortunately, IP Draughts’ client was found not guilty of all the serious charges (did counsel and judge know this was likely before agreeing that a 24 year old know-nothing could take over the case?).  All that was left was a conviction for possession of an unlicensed firearm, which was a shotgun that didn’t work.  IP Draughts’ oratory, in best Marshall Hall style, no doubt had a tremendous effect on the judge’s sentence.  The client received a conditional discharge, almost the lowest sentence that could be given.  IP Draughts claims all due credit for this sentencing victory.

Anyway, back to the real world.  As IP Draughts has previously reported, the Law Commission is undertaking a review of whether the provisions of UK IP legislation concerning threats should be revised or abolished.  These provisions are intended to prevent an IP owner from making unjustified threats to sue others for IP infringement.  By saying the wrong thing in pre-action correspondence, an IP owner may find himself being sued by the would-be defendant, as this case illustrates.  In addition, a party’s legal advisers can be sued for making threats, even if they are just putting forward their client’s position.

The IP Working Party of the Law Society, of which IP Draughts is a member, produced a report some years ago which recommended that these provisions be abolished. (The previous link – at Schedule E – is to a version of the recommendations in a Gowers response; the stand alone report not immediately findable on the Law Society website.)

The Law Commission has now considered the subject of threats and has come up with its provisional conclusions, on which it is inviting comments.  Its consultation papers can be found here.  The summary version of their consultation paper runs to 31 pages, so this is not a subject for the faint-hearted.  In a nutshell, the Law Commission’s proposals are either:

1. To revise the threats provisions rather than abolish them, but end the right to sue a party’s legal advisers; or
2. Move to remedies based on a more general concept of “unfair competition” which is familiar in civil code countries and in Canada.

Please make your views known to the Law Commission.  The deadline for making responses is 17 July 2013.  Responses should be made:

By email to: intel.prop@lawcommission.gsi.gov.uk; or
By post to: Julia Jarzabkowski, Law Commission, Steel House, 11 Tothill Street, London SW1H 9LJ.

How should a national IP centre be designed and branded?

Edward VIII was the British king who came to the throne in January 1936, but abdicated in December rather than forego marriage to Wallis Simpson, an American divorcee.  Popular history regards him as shallow and selfish, but with a nice line in gents’ tailoring.  He may also be the inventor of the Windsor knot, a method of tying a neck-tie.

He famously commented “something must be done” after seeing the poverty of South Wales miners during a royal visit.  This fatuous remark may be the closest a British royal has come to emulating the French Queen, Marie Antoinette.  According to Rousseau, she suggested that the starving citizens of Paris should switch to eating brioche, if the bread supply was running low.

Something must be done is a fair summary of the unthinking approach of the UK Government to intellectual property policy.  Successive trade ministers and prime ministers have recognised that IP is important for the UK economy, and that the Government should have a policy on IP that helps rather than hinders the economy.  But what should that policy be?

Well, obviously politicians can’t be expected to know the answer.  IP is a complex subject with lots of technical details, and excites few passions among the voters.  It would be a waste of time and energy for MPs to become expert in IP.  Instead, they commission journalists to write them lengthy reports on the subject, full of detailed recommendations.  Messrs Gowers and Hargreaves, please step forward to take a bow.

Sparkling IP policy idea or damp squib?

Most of these recommendations are ignored by the politicians or fizzle out when exposed to scrutiny.  Which is just as well.  Many of the recommendations are half-baked, as any competent IP lawyer could have told them.  There were plenty of suggestions from IP lawyers, who spent hundreds if not thousands of hours in preparing submissions to these successive enquiries.  But the report authors didn’t choose to involve  IP lawyers directly in their investigations or in writing their reports.

When the politicians get these lengthy reports, they need help in understanding and implementing them.  So who do they turn to for that help?  Well, not IP lawyers, obviously!  Instead they turn to the only branch of Government that has direct experience of IP issues – the Patent Office.  After several rebranding exercises, they are now known as the UK Intellectual Property Office, although their expertise is strictly limited to certain types of IP that are registered – mostly patents and trade marks.

In fact, many of the policy issues that are currently under examination concern copyright, on which the IPO has no track record or special insight.  Be that as it may, the IPO is keen to develop its role as the custodian of UK IP policy.

Mobile office for IPO policy advisers

The tasks that the IPO is now asked to perform by Government vary widely and require different skill sets.  The skill set that the IPO has is at the intersection of the administrative – registering IP – and the highly technical – determining whether patents should be granted on inventions.  It is not really part of the central Whitehall policy machine, and its policy advisers have to spend many hours on the train, travelling from the IPO’s HQ in South Wales to London for meetings with their opposite numbers in BIS and other Government departments.

One of the tasks that has been given to the IPO is facilitating the development of a market in low-cost providers of IP services.  If ever there was a half-baked task, this is it.  How a group of technical civil servants are supposed to go about this task is not clear.  The IPO’s recent booklet, Business Support for SMEs – free inside the latest edition of the CIPA Journal – gives little clue as to what it is planning to do in this area.  Instead the booklet focuses on other sources of information and support, including the pro bono clinics that patent agents have run for many years.  IP Draughts suspects that the project has been quietly dropped.

Another task for the IPO is to educate the nation about IP.  The IPO has had some success in educating schoolchildren, after linking up with Aardman Animations, the company behind Wallace and Gromit.  But educating adults is a different matter.  For example one of the ideas that has been floated is to incorporate IP education into all degree courses.  IP Draughts doesn’t consider the IPO to be best placed to perform such a task.

There are plenty of other activities in the IP policy sphere at present, including the Hargreaves idea of a digital copyright exchange (DCE).  The Government has recently allocated £150,000 to a “Copyright Hub” which looks as though it may be a watered-down version of the DCE, providing information rather than a direct mechanism for licensing.  Again, it is unclear that the IPO is the right body to get involved in such an initiative.

So, if the IPO is not the right body to perform the myriad tasks that Government considers will support a national IP policy, what type of body should be involved?  IP Draughts proposes the following:

1. A National Centre for Intellectual Property should be established as an independent body.  For example, it might be incorporated by Royal Charter, with charitable status.  It should receive some funding from Government to enable it to get established and to cover the costs of those activities that are not realistically expected to be self-financing.  Perhaps, like the Copyright Hub, it could get some funding from the profits that the IPO makes in its IP registration services.  Or perhaps, like NESTA, it could get some National Lottery funding.
2. It is very important that this body should be at arm’s length from Government, and not subject to short-term political pressures (or ministerial whims) as civil servants so clearly are.  If David Cameron has his ear bent by representatives of Google over copyright in books, and sets a hare running over whether copyright policy should be changed, this body should be capable of saying that they think the idea is rubbish (if they do think that).  If Saint Cliff Richard persuades Government that it is a good idea to extend the duration of copyright in music recordings beyond 50 years, this body should be able to robustly oppose the idea if it thinks the idea is bad.
3. The body should be led by people who really understand IP.  By all means include people with industry experience such as Sir James Dyson, but don’t exclude people with technical expertise in IP, education, the needs of SMEs, etc.
4. The body should be organised in divisions or subsidiaries, which might cover the following areas, among others: (a) research and policy development, (b) Government relations, (c) international cooperation, (d) communications, including a really good website (something the IPO doesn’t have), and (e) education and training.  Each division should be run by specialists in the relevant field, eg education and training should involve university teachers and management trainers.  The education division might consider linking up with a leading university that understands IP, and might offer postgraduate qualifications in IP.

Over to you, readers.  Is this pie in the sky, or a good idea? And is there any chance of something like this body being established?