Category Archives: Intellectual Property

Is elitism justifiable in IP?

no go areaLast week, IP Draughts briefly put his head above the safety of the trench by suggesting that professional knowledge and experience were necessary to take good decisions on IP issues. This week, he jumps out of the trench entirely and runs across no-man’s-land, wearing a large red arrow on his back.

In IP Draughts’ view:

  1. There is a collective attitude among some specialist IP practitioners, including judges, solicitors, patent attorneys and barristers, that could be described as an elitist approach to practising IP law. It is difficult to write down the precise recipe, but it is a mixture of academic aptitude, technical skills, professional attitudes, peer status and social conformity.
  2. Providing a good service to clients and taking good decisions in court doesn’t need this particular mixture of attributes. It acts as a barrier to diversity in the profession and as a barrier to communication with clients.

A couple of examples from IP Draughts’ experience will illustrate the point.

  • The selection of junior IP judges in the Copyright Tribunal and as Appointed Persons in trade mark and design matters. The individuals who were appointed to the latter role a few months ago are all talented individuals. But it is notable that they are all barristers, at least one of whom seems to be destined for higher office. IP Draughts knows talented and experienced solicitors who could do the job well but may not fit into the self-perpetuating ‘IP elite’ mould. IP Draughts wonders whether the selection process favoured IP barristers, despite the senior judiciary’s vocal support for solicitors to become judges. (For the record, IP Draughts did not apply and has no interest in applying for these roles, but he does know someone who was unsuccessful in the last round of applications.)
  • The diversity of the IP professions can be shown to have increased in recent years, when measured by things that are measurable, such as the number of women, non-whites, first generation graduates, and so on; but more needs to be done. An interesting take on this subject from Daniel Alexander QC appears in his interview with New Africa Analysis. In the areas that cannot be measured so easily, such as adherence to a set of self-perpetuating values that exclude people who don’t share those values, it is more difficult to determine whether progress is being made. One might assume that diverse people will mean diverse values, but is that the case? The Chartered Institute of Patent Attorneys has had two women presidents recently, and the current president, Andrea Brewster, is leading steps to improve diversity in the profession. But she recently felt obliged to stop writing a regular article in the CIPA Journal, which she had written for years, because of pressure from certain CIPA members. Her light-hearted, self-deprecating, humorous articles presented a different view of the IP profession and made it seem less dour and serious. But some members considered that the articles gave a bad impression of UK patent practitioners, particularly when written by the president of their profession, and complained loudly about them. It was inevitable that the articles stopped. IP Draughts hopes they will resume once Andrea’s term of office comes to an end.

To IP Draughts’ mind, these small examples illustrate a set of narrow, collective attitudes in which there is felt to be a single ‘right way to do things’. This is not to say that everyone in the IP professions shares these attitudes. But enough people do to make the attitudes influential.

eliteThe attitude is not unique to IP lawyers: it can be seen in other areas of commercial law. An extreme example, perhaps, was the appointment of the ‘brilliant’ Jonathan Sumption QC direct to the UK Supreme Court. Other current justices of the Supreme Court worked their way up through the ranks from (in the case of lawyers practising in England and Wales) the High Court to the Court of Appeal and then on to the Supreme Court.

Lord Sumption has also illustrated the point through his recent comments about the need to increase the number of women in the Supreme Court. He favours selection of the ‘best’ judges, rather than taking more active steps to increase the number of women.

Leaving aside the question of whether there should be any positive steps to improve diversity (and thankfully Lord Neuberger, the President of the Supreme Court, takes a more enlightened view than his colleague) Lord Sumption’s approach assumes that there is a clear and objective set of criteria for ‘best’. No doubt he would advocate criteria that play to his strengths, such as intellectual brilliance, long experience of courtroom advocacy at the highest level, and please don’t discriminate against Old Etonians. Alternative criteria, such as reasonable intellectual powers, moderate experience, social diversity, good judgment, commitment and a desire to learn and do the best job possible, may not cut much ice with someone of his traditional cast of mind.


Filed under Intellectual Property, Legal policy

Amateurism doesn’t work for IP

amateurismScenario 1: A university employs specialists to negotiate intellectual property (IP) contracts. But they tend to be relatively junior in the university hierarchy, and don’t have the ultimate decision-making authority, particularly if the academic most interested in the contract objects to their approach. Decisions are pushed upstairs to senior management who have little or no understanding of IP or contractual issues.

In some cases, the university thinks it has solved this problem by forming an IP committee to take decisions. But the members of the committee, if they have any understanding of IP, perceive it from a very high level, and tend not (in IP Draughts’ limited experience) to fill the professionalism-deficit. Alternatively, some universities appoint a senior member of the management team to be responsible for enterprise activities; however, the person who is chosen tends to be an academic rather than a professional. A Deputy Vice Chancellor for Enterprise once complained to IP Draughts that he hated looking at contracts. IP Draughts is still mentally reeling from this statement, years after it was made.

Scenario 2: A trade organisation lobbies on a wide range of issues that affect their members. An IP policy issue comes up. Somewhere deep in the organisation is a person or team who understand IP, and they make sensible suggestions. But the lobbying is fronted by people who don’t have a deep understanding of the subject. They think they can handle it with their usual toolkit of personal charm and a two-page briefing note. But they don’t understand the subject well enough to do a competent job.

Scenario 3: A commercial lawyer, who has no real experience of thinking about and negotiating IP issues, negotiates an agreement that incorporates IP ownership and licensing terms. Unless they are very careful, they are likely to do a sub-optimal job on the IP terms. They will probably modify a template that they have found that contains IP terms. In one case that is on IP Draughts’ desk at present, they have used a published precedent that IP Draughts and his colleagues drafted, and some of the original wording of the precedent lies undisturbed, surrounded by devastation.

cioIn the business community, there have been debates about whether company boards of directors and senior management teams should include information technology (IT) specialists, given the importance of IT for many businesses and the complexity of the subject which makes it difficult for a non-specialist to understand. There are many published examples of large organisations spending millions on IT systems that don’t work. In US corporations, which sometimes appear obsessed with job titles that subtly discriminate between levels of seniority (president, vice president, executive vice president  and so on), this debate has sometimes focussed on whether corporations should have chief information officers, or CIOs.

This debate has some similarities with the issue that faces IP practitioners. IP Draughts knows dozens of IP lawyers who have the necessary IP experience and commercial insight to make high-quality business and policy decisions, whether in the context of universities, commercial companies or trade organisations. But rarely does he see them in general management roles. Perhaps they are not suited to those roles. When it comes to decision-making on IP-related topics, perhaps general managers should recognise their limitations, and delegate authority to the professionals.

How this should be done is not always clear. It is probably not workable to expect external law firms to take business decisions on behalf of their clients. An alternative model might be for organisations to delegate decision-making authority on technical subjects to an individual or committee. This could work if (1) genuine professionals are appointed, who have the necessary professional skills to understand the subject and take sound decisions on behalf of the organisation, and (2) their decisions are supported by the body that appointed them.



Filed under Intellectual Property, Legal policy, Legal practice

No royalties for trite infants’ rhyme

happy pay dayIP Draughts is a fool [/star].

IP Draughts is a fool [/star].

IP Draughts is moronic [/fantastic].

IP Draughts is a fool [/star].

Please don’t repeat these lyrics, in either version, or IP Draughts may be compelled to sue you for copyright infringement.

Or he may get his agent to demand $1,500 per use, depending on his mood.

It seems ridiculous that repeating the words of the song, Happy Birthday to You, could be an infringement of copyright, and require the payment of royalties to a well-known music publishing company. Yet that is what has been happening, apparently for decades, in the United States.

Yesterday, a court decision in California changed all that. The case has wrongly been described as deciding that the lyrics of this song are in the public domain. See, for example, this tweet from the Law Society of England and Wales today:


Unfortunately, the BBC (and therefore the Law Society) has it wrong. This case didn’t bring the Happy Birthday to You into the public domain. Rather, it said (among other things) that Warner/Chappell didn’t own the US copyright (if it existed) and therefore couldn’t sue people for copying the work.

Check the judge’s reasoning for yourself. The case is called Rupa Marya et al v Warner/Chappell Music, Inc, et al, Case No CV-13-4460–GHK (MRWx). It is a decision made by Chief United States District Judge King on September 22,2015 in the United States District Court for the Central District of California.

Judge King ‘bifurcated’ the trial, so we don’t yet know whether Warner/Chappell will be ordered to repay ‘millions of dollars of unlawful licensing fees’ as the plaintiff requested.




Filed under Intellectual Property

Who owns a Banksy mural?

art buffA recent case in the English High Court has seen a senior IP judge, Mr Justice Arnold, deciding on the ownership of a Banksy mural that was removed from the wall of a building.

The artist known as Banksy is famous for:

(a) retaining his anonymity;

(b) creating artwork in public places that could be viewed as graffiti, and sometimes has a political message, and which tends to have a high commercial value (hundreds of thousands of pounds); and

(c) causing his works suddenly to appear in unexpected places.

In recent years, a trend has developed of removing Banksy works from the walls on which they have been painted, and selling them at auction, sometimes to raise money for good causes.

The present case, The Creative Foundation v Dreamland Leisure Limited and others [2015] EWHC 2556 (Ch) concerns a mural known as Art Buff that appeared on the wall of a building in Folkestone, a seaside town in England.

art buff 2The tenants of the building, Dreamland Leisure, removed the mural, which involved taking a layer of the wall away, and sought to sell it at auction in the United States. The Creative Foundation sought an order for delivery up of the mural on the basis that it belonged to The Creative Foundation as assignee of the landlord’s interest.

In a case like this, we need to distinguish between the work of art, the copyright in the work, and the slice of wall on which it is painted. As Arnold J said in his judgment:

I should explain before proceeding further that, when I refer to the Mural in this judgment, I am generally referring both to the physical object and to the artistic work fixed on it. For the avoidance of doubt, I am not concerned with the copyright in the artistic work, which prima facie belongs to Banksy.

Thus, Arnold J found himself deciding a case on the respective rights of a landlord (lessor)  and a tenant (lessee) to materials that originally formed part of the demised premises but, when removed from the building, “revert to the status of chattels”. This is not part of the usual legal diet of an eminent IP judge.

After reviewing the cases, and the terms that could be implied into a lease of (real) property, he concluded:

In my judgment the term which is to be implied is that the chattel becomes the property of the Lessor. My reasons are as follows.

First, I consider that the default position is that every part of the property belongs to the Lessor. The Lessee only has a tenancy for a period of time. Thus it is for the Lessee show that it is proper to imply into the Lease a term which leads to a different result.

Secondly, in my view the mere fact that the Lessee is discharging its repairing obligation does not lead to the implication that it acquires ownership of such a chattel. Dreamland’s argument is based upon the Lessee’s need to be able to remove items generated by the act of repair from the premises. But that would only justify the implication of a term dealing with permission to remove (and, where appropriate, dispose of) such items. It does not justify the implication of a term transferring ownership of the items…

Thirdly, even if a term may be implied with respect to the ownership of (i) waste or (ii) chattels with no more than scrap or salvage value, it does not follow that it should be implied with respect to the ownership of a chattel with substantial value. Such a term would not be necessary, would not go without saying and would not be one that would satisfy the officious bystander test.

Fourthly, I do not consider that it makes any difference that the value is attributable to the spontaneous actions of a third party. It is fair to say that, whatever solution is adopted, one party gets a windfall. But who has the better right to that windfall? In my view it is the Lessor. …

Accordingly, I conclude that the Foundation is correct that the defence advanced in paragraph 13 of the Defence is unsustainable as a matter of law.

For the reasons given above, I conclude that the Foundation is entitled to summary judgment on its claim against Dreamland for delivery up of the Mural.

So, now we know. Though one might have expected copyright law to feature prominently in a dispute over a valuable artwork, in fact it came down to implying terms about the ownership of builders’ rubble in a routine property lease. IP Draughts wonders whether the drafters of property leases will, in future, include standard terms to deal with the ownership of works of art that are incorporated into the leased property without the knowledge or permission of either lessor or lessee.

The back story to this dispute is also interesting. It seems that Art Buff failed to sell at auction in the USA because its authenticity as a Banksy work had not been certified by a body associated with Banksy, known as Pest Control. Thus, questions of property law and copyright law were ultimately secondary to questions of provenance.





Filed under General Commercial, Intellectual Property, Legal Updates