Bob Marley: dud case lost again in Court of Appeal

IP Draughts has previously reported on a case in the English High Court, over the ownership of copyright in some Bob Marley songs, including No Woman No Cry.

The claimant lost that case and appealed. Last week, the Court of Appeal’s decision in the same case was handed down. In BSI Enterprises Ltd and another v Blue Mountain Music Ltd [2015] EWCA Civ 1151, the claimant lost again.

The central issue in the case was whether copyright in a set of Bob Marley compositions had transferred under an agreement made in 1992.  The songs were not mentioned by name in this agreement, unlike many other of Bob Marley’s songs. But the agreement included wording that broadened its scope beyond the named songs.

If the answer to that question was “no”, then copyright remained with the seller, and a later assignment from the seller to the claimant was effective. If the answer was “yes”, then the later assignment couldn’t transfer what the seller didn’t own. Thus, the case turned on an interpretation of the 1992 agreement.

The claimant’s counsel in the High Court, Hugo Cuddigan, had argued that the parties to the 1992 agreement had deliberately omitted the songs in question from a schedule to the 1992 agreement, and that this was part of the factual matrix in light of which the agreement should be interpreted. The judge at first instance rejected this argument, preferring to rely on the words of the agreement. These words made clear “almost to the point of redundant repetition” that all Bob Marley songs were included, whether or not they were listed in the schedule.

On appeal, the claimant had a new counsel, Madeleine Heal. She obtained permission from the court to base her case on a different argument. Her line was that a close analysis of the words of the agreement led to the conclusion that the songs in question were not covered by the assignment.

The agreement provided for the assignment of copyright in the Compositions, a term that was capitalised in the agreement. But what did this term mean? Clause 1 of the agreement set out a list of definitions. Clause 1.8 was headed “Composition” and “Catalogue”. The text of clause 1.8 included, at the end of a lengthy sentence, the words individually a “Composition” and collectively the “Compositions”. Admittedly the definition slightly muddled up the two terms, Composition and Catalogue, but the wording was broad in scope, and included the phrase including, but not by way of limitation, the Catalogue listed on Schedule 2 hereto. There is no suggestion in clause 1.8 that the definition of Composition is limited to the songs listed in Schedule 2.

According to Ms Heal, one shouldn’t look at the definitions clause to find the definition of Composition. Oh no, no, no, no. Instead, one should look at the warranty clause, which included, at clause 5.10, a warranty by the seller that “Schedule 2 contains a complete and accurate list of all the Compositions.”

Moreover, continued Ms Heal, a recital to the agreement stated that the seller wished to sell “certain” music publishing rights and interests, which proved that only some, and not all, of the seller’s interests were to be transferred.

Oh dear. Kitchen LJ’s mild response to these and similar arguments was that he was “unable to accept” them, they were “unsustainable”, he was “wholly unpersuaded”, and there was “nothing in this criticism”.

Thank goodness for small mercies.

To IP Draughts’ mind, the court at first instance and the Court of Appeal had a relatively straightforward task to interpret the 1992 agreement, and they performed it well. No new point of law arises from the case. There is no guidance that needs to be given to drafters in light of the case. It is an illustration of how far a party is prepared to go to try to protect its business interests, by pursuing a dud case all the way to the Court of Appeal.

 

 

 

 

Common pitfalls in IP licensing

Killashee House Hotel, a good location for an episode of the Avengers (the 1960s version)

IP Draughts spent yesterday on a day-trip to Dublin. To be more accurate, he attended a conference at the Killashee House Hotel in Naas, County Kildare, an hour’s drive from the airport.

He was there as an invited speaker at the Knowledge Transfer Ireland (KTI) conference on Licensing Intellectual Property: Strategies and Pitfalls.

By way of background, IP Draughts and his colleagues at Anderson Law have recently completed a writing project for Enterprise Ireland, an Irish Government agency. The fruits of that

Deirdre Kilroy; Ireland’s tropical rainforest can be seen in the background

project can be found on the KTI website. They consist of a large set of template agreements and commentary for use by Irish universities and industry. They form part of a public policy initiative of the Irish Government, set out in a document called Putting Public Research to Work for Ireland. Support on Irish law aspects of the project was provided by Deirdre Kilroy and her team at LK Shields, an Irish law firm.

The materials were commissioned by KTI’s Director, Alison Campbell OBE, PhD, who is well-known in the UK knowledge transfer community. Alison also organised and led the conference.

Alison Campbell doing something funny with Richard Bruton T.D. Ireland’s Minister for Jobs, Enterprise & Innovation

The conference brought together about 160 specialists in technology transfer. It seemed as though most of the Irish KT community was present in the room, as well as representatives from Irish companies, both large and small.

IP Draughts spoke on the subject of common pitfalls in IP licensing. He described, in a suitably anonymised way, some of the problems that he had encountered in licensing deals between universities and industry, and how they might be avoided or resolved. His examples included the following:

1. Wrong type of transaction. Why assigning IP to a company, rather than licensing it, can cause difficulties, particularly if there are ongoing financial obligations such as royalties, and if the IP owner goes into liquidation and sells on the IP to a company that declines to pay the royalty. And why granting exclusive licences to several companies in different fields can cause problems if the fields are too close to one another. KT professionals should apply common sense to field definitions and not rely too heavily on academics telling them that field A is clearly different from field B.
2. Mismatch of expectations. How companies and universities sometimes approach licensing transactions with a completely different set of expectations and assumptions. Companies sometimes assume that a licensing deal involves them “buying” an asset that they will be free to exploit as they see fit, and expect the asset to be “clean”, eg free from IP infringement, and the seller to take some legal responsibility for the asset that they are selling. Whereas a university may assume that it is granting limited rights to a company to enable the fruits of academic research to be put into the public arena, and that it is entirely proper for the university as a public body to avoid all risks and costs associated with the grant of those rights, while at the same time retaining some legal controls to ensure that the IP is commercialised in an appropriate way. How communication of objectives at the outset may reduce the scope for misunderstanding and frustration.
3. Wrong mindset for negotiating deal. How both universities and companies can get reputations for being “difficult” and IP Draughts’ experience of the same concerns being expressed by both industry and universities. The importance of professional negotiations, and the need for training for academics, and perhaps senior management of universities, in how to conduct themselves in negotiations. Not allowing back-channels of communication between the company and academic, and through the academic to the university’s senior management, that undermine the work of the KT professionals. How to steer a middle ground between saying no to everything (which inexperienced negotiators sometimes do) and saying yes to everything (which senior management and academics sometimes press the negotiator to do, through lack of understanding of the issues).
4. Locked into a long-term, loveless relationship. How parties sometimes shun discussion of how they will “divorce” at the time of negotiating their agreement, and why it is important to have a “prenup”. In particular, why it is important to have clear performance and reporting obligations, termination rights for non-performance, a mechanism for resolving disputes over performance, and clear set of obligations on termination.  Also, why it is important to handle “exit” negotiations with a licensee in a professional manner to avoid delays and loss of patent life and secure appropriate compensation for early termination.

 

 

 

League table of UK transactional IP lawyers 2016

For the fourth year in a row, IP Draughts presents his annual table of tables, which lists transactional IP lawyers who are recommended in both IAM Patent 1000 and Chambers Directory. The latter was published today.

In IP Draughts’ view, this super-table is a crude but useful way of identifying most of the leading UK practitioners in the field of IP transactions. As Chambers does not specifically recommend UK transactional IP lawyers (as distinct from IP lawyers generally, and then only on a regional basis), its closest available listing is the UK national listing of transactional life science lawyers.  Although not perfect, and having a life science bias, the resulting list feels mostly right.

The 20 lawyers who feature on both lists in Autumn 2015 are as follows:

Laura Anderson – Bristows
Mark Anderson – Anderson Law
Malcolm Bates – Taylor Wessing
Richard Binns – Simmons & Simmons
Allistair Booth – Pinsent Masons
Alison Dennis – Fieldfisher
Patrick Duxbury – Wragge Lawrence Graham & Co
Jim Ford – Allen & Overy
Michael Gavey – Simmons & Simmons
Sarah Hanson – CMS Cameron McKenna
Gary Howes – Fasken Martineau
Mark A Lubbock – Ashurst
Nicola Maguire – Reed Smith
Lucinda Osborne – Covington & Burling
Daniel Pavin – Covington & Burling
Stephen Reese – Olswang
Chris Shelley – Penningtons Manches
Sally Shorthose – Bird & Bird
Julian Thurston – Baker & McKenzie
John Wilkinson – Reed Smith

Congratulations to all of you!

Is elitism justifiable in IP?

Last 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.

The 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.